Nine Networks Australia Pty Limited (Nine) in the course of its business creates a series of schedules (both daily and weekly), which sets out the programs that Nine will broadcast in any given week (Nine Schedule). The Nine Schedules identify the programs to be broadcast, the times of the broadcasts, and synopses of the programs being broadcast. The Nine Schedules are created and sent to various 'aggregators', such as TV Week, who collect similar information from other television broadcasters and aggregate and publish that information. Commercially sensitive information regarding scheduling is sometimes released closer to the date of broadcast and the aggregators are provided with documents identifying the changes to the schedule.
Ice TV Pty Limited (Ice) provides a subscription service that gives its subscribers (via download) with an electronic program guide (Ice Guide). The Ice Guide shows the details of the television programs scheduled to be broadcast by the free-to-air television broadcasters over the coming seven to eight days. The Ice Guide may be used in conjunction with third party hardware or software (such as Microsoft’s Windows Media Center Edition) to enable the user to pre-select specific free-to-air television programs and record those programs for later viewing. Ice does not receive the program information from the television broadcasters; rather it predicts the shows that will be scheduled by using historical information regarding the broadcasting schedule. Ice then uses the material distributed by the aggregators to check the accuracy of its scheduling as shown in the Ice Guide and make any changes necessary to reflect late changes to the schedules, made by the broadcasting companies. Ice also writes its own synopses for each television program.
Nine commenced proceedings in the Federal Court claiming that Ice had infringed Nine's copyright in the Nine Schedule by creating and distributing the Ice Guide.
A summary of the claims
Nine claimed copyright in both the daily and weekly Nine Schedules as a compilation literary work which is protected under the Copyright Act 1968 (Cth) (Act).
Nine alleged that Ice:
- reproduced a substantial part of the Nine Schedules in making and updating the Ice Guide;
- reproduced the infringing material on IceTV's servers and on subscribers' equipment;
- communicated the Ice Guide to the public via the internet; and
- authorised subscribers reproduction of the Nine Schedules when transmitting the Ice Guide.
The claims were such that if the first claim was not made out, the others could not succeed.
Summary of the decision
The Federal Court (Bennett J) dismissed Nine's first claim of infringement. Accordingly, the Federal Court dismissed all of Nine's other claims as they were necessarily dependent on the first claim.
The Federal Court applied the principles set out in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 (Desktop) to assist in deciding this case. Desktop concerned whether telephone directories produced by Telstra (essentially factual compilations) satisfied the threshold of 'originality' for protection under the Act.
The Federal Court in IceTV held that both the Nine Schedules and the aggregators’ material were protected under the Act as 'compilations'. In doing so, the Federal Court followed Desktop in stating that a compilation will be protected if:
- the form of presentation, or arrangement, of a compilation is a product of the skill and labour of an author; and/or
- sufficient skill and labour is applied in gathering the material for inclusion in the compilation.
Both elements were present in this case. However, the Federal Court, in line with previous case law, found that while copyright can subsist in a compilation, it does not subsist in the facts contained in that compilation.
Even though copyright was found to subsist in the Nine Schedules and the material provided by the aggregators as compilations, the Federal Court found that there was no infringement. This was because:
- Ice used independent enquiry (i.e. its own observations) to create the Ice Guide, rather than copying the Nine Schedules (in fact it did not have access to those schedules); and
- Ice only used 'slivers' of the material created by the aggregators (it was found that copyright did not subsist individually in these 'slivers'), which did not amount to a substantial part of the work (which is required for a reproduction to infringe copyright under the Act). Whether a reproduction is substantial will also depend on the quality of what is taken and in this case, it was significant that Ice's synopses were not copied.
In relation to the latter point, the court considered that the relevant skills and labour that should be protected in the circumstances was the form and content of the compilations. Given that the content was not copied, and as the form and layout of the Ice Guide was completely different from the Nine Schedules, it could not be said that the Ice Guide reproduced a substantial part of the Nine Schedules.
Impact of the decision
This case affirms the previous law relating to copyright in compilations and clarifies the concept of what constitutes a reproduction of a substantial part of a compilation. Furthermore, while this case is chalked up as a win for Ice, this may be short-lived, as the case effectively sets down a formula for minimising the risk that an electronic programming guide will infringe another person’s copyright. Armed with this, competitors of Ice may now, by adopting the Ice formula, launch their own electronic programming guides and competing products in this emerging market.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
