The Full Federal Court of Australia has rejected Telstra's appeal1 that copyright subsists in its valuable yellow and white pages directories.
For owners of directories, compilations and databases, this decision confirms it is difficult to rely on copyright for protection, meaning new strategies are required to protect valuable information works. We recommend owners review their copyright protection measures and seek clarity and advice on new IP protection, commercialisation and enforcement strategies.
Users now have greater access and rights to use these directories, compilations and databases, opening up new opportunities for IT developers. For example, developers of iPhone applications are now free to use the information/data from timetables, directories and other data listings to develop their products (not the software or layout - unless not original).
This decision, while it impacts on copyright owners (e.g. publishers) and users, provides further clarification and greater certainty regarding the right to use informational works.
As previously reported2, Australian copyright law is tracking towards harmonisation with US copyright law in the context of database, directory and information style works. This means greater certainty for our global clients and moves away from database rights as enshrined in EU law.
Key 'take aways' from the Full Federal Court's decision include:
- New markets for new products. Software developers, and other developers of third generation products, now have 'free' access to the information/data in a range of database and compilation works previously assumed to be protected by copyright and thus unavailable.
- Further stimulus for government initiatives to open up public sector data. The certainty afforded by this decision removes an important barrier for the Commonwealth Government3 and other State and Territory Governments seeking to make valuable information available under open licensing models.
- Greater focus on carefully planned IP strategies. Enforcement of IP rights in informational works is more difficult and will be contingent upon businesses having developed and implemented carefully structured IP protection strategies. For example, greater emphasis will be required on protecting data through technological means, contract and, where possible, via obligations and systems of confidentiality.
- Authorship and Originality of expression are the new 'kings' of copyright protection for compilation style works. Copyright will, in limited circumstances, still apply to informational style works but careful planning around the development of these works will be critical. The High Court's landmark decision last year in IceTV4 demonstrates the importance of originality being directed towards elements of expression of the information and this most recent Full Federal Court decision highlights the importance of identifying relevant human authors - something which Telstra failed to do in the context of its directories.
- New laws? As we have previously predicted, we continue to believe that we can expect Telstra (and other owners of valuable database works) to lobby government for legislative change for the intro
SUMMARY OF THE CASE AND KEY FINDINGS
To recap on the facts of this case, Telstra and Sensis claimed that copyright in their White Pages and Yellow Pages directories (Directories) had been infringed by Phone Directories Company Pty Ltd who published a competing product.
Given the comments made by the High Court in the IceTV decision regarding the subsistence of copyright in databases, Justice Gordon agreed to determine the issue of subsistence of copyright in the Directories first. In attempting to prove its case, Telstra relied on ninety-one affidavits from various witnesses who were involved in the process of preparing and publishing the Directories. This evidence showed that the production of the Directories was a largely automated process.
Gordon J found that copyright did not subsist in the Directories. Her Honour found that Telstra was unable to identify an 'author' of any of the Directories as none of the witnesses contributed the necessary independent intellectual effort to be considered an 'author'. Her Honour also found that Telstra's system of preparing the Directories (i.e. the highly automated process) was designed to inhibit originality, which meant that the Directories did not meet the required standard for copyright to subsist.
KEY REASONS FOR THE FULL FEDERAL COURT'S DECISION
In holding that no copyright exists in the Directories the Court commented:
- Sweat of the brow is no substitute for originality. The Full Federal Court has again emphasised the traditional copyright dichotomy that copyright protects originality of expression of information, not information itself. Sweat of the brow and investment in the collection of information is no substitute for originality. While this can produce harsh results - i.e. the 'legitimate' misappropriation of another's investment, Chief Justice Keane has confirmed that this is not the concern of copyright. Hence the need for other legal strategies – e.g. as referred to above.
- Human authorship is critical. Fundamental to the existence of copyright in computer generated works such as databases, is the need to identify human authors who are responsible for the selection and expression of the data. Although humans were ultimately in control of the software that Telstra used to create the directories, it was held that the software, not the individuals, that shaped the material form of expression in the directories.
For this to go further Telstra will now need to seek special leave to appeal to the High Court of Australia.
1 Telstra Corporation Limited v Phone Directories Company Pty Ltd  FCAFC 149 (15 December 2010)
2 See our February 2010 copyright update at http://www.dlaphillipsfox.com/content/upload/files/IPT_update_DPF2063_19_Feb_2010_U.pdf
3 See for example details of the government 2.0 initiative at www.finance.gov.au
4 IceTV Pty Limited v Nine Network Australia Pty Limited  HCA 14 (22 April 2009)
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