Australia: A Change In Direction Of Copyright Law In Compilations – Icetv Succeeds Against Nine Network In The High Court

Last Updated: 29 April 2009
Article by Michael Grosser

On 22 April 2009, the High Court of Australia (IceTV Pty Limited v Nine Network Australia Pty Limited), handed down a decision in favour of IceTV Pty Limited (IceTV) in its long running copyright dispute with the Nine Network Pty Limited (Nine), overturning the May 2008 decision of the Full Court of the Federal Court of Australia.

This decision has the potential to significantly influence and change the landscape of copyright law in Australia in relation to databases and compilations. In particular, this decision will impact on information technology and other copyright based industries, as it will open the door for innovators and second comers to develop data for new uses.

Further, the High Court has now set Australia on a track which will bring us closer into line with the European Union and the USA's law on this issue by questioning the correctness of the Full Federal Court's decision in Desktop Marketing v Telstra Corporation (Desktop Marketing).

Nature of the dispute

The dispute centred on IceTV's use, in its electronic programming guides (EPG), of information obtained from Nine's weekly television schedules (and through certain aggregated guides) and whether information in the schedules (as opposed to the whole schedule) was protected by copyright.

Nine alleged that copyright subsisted in its weekly television schedules, which contained the time and title information for a seven day broadcast week, including the start times, programme titles and episode titles. It also contained additional programme information such as format information and the classification. This schedule was provided to aggregators, such as TV Week and was then published in print.

IceTV provides a subscription based EPG called the IceGuide. Such EPGs are used in conjunction with personal video recorders (PVR) which are used to record and store TV shows. One of the benefits of such devices is that viewers have the option of 'skipping' advertisements.

The IceGuide displays details of television programmes scheduled to be broadcast on free to air television stations. However, IceTV did not receive information from Nine. Rather, it had created the IceGuide with a clear intention to avoid copyright infringement. The IceGuide was created after an IceTV employee had watched television for over three weeks to develop a template for each television station. Once created, these templates were uploaded into a database. This database was updated each week based on IceTV's observations on Nine's past programming behaviour and knowledge of the television industry. IceTV then checked its predictions with the other aggregated guides, such as TV Week. Any discrepancies would usually result in the IceGuide being amended. When making such amendments, IceTV first searched its own database to determine whether it could use its own work, rather than copying the aggregated guides.

Nine alleged that IceTV's reproduction of some of the time and title information constituted copyright infringement. Central to this issue was whether the reproduction of the information from the schedule, rather than reproduction of the entirety of the schedule, constituted a reproduction of a substantial part of Nine's copyrighted work. The commercial interest at stake in this litigation was that a large proportion of Nine's revenue derived from advertisements broadcast during television programmes could be diminished by the proliferation of EPGs and PVRs, such as IceTV's, as they enable viewers to skip advertising.

Federal Court decision at first instance

At first instance, her Honour Bennett J found that IceTV did not infringe copyright in the weekly schedules prepared by Nine in reproducing programme titles and times in the IceGuide.

This finding was based on an analysis of the 'skill and labour' said to be protected by copyright. Her Honour found that there were two steps of skill and labour executed by Nine and its employees in the creation of the weekly schedule. The first step was the skill and labour of selecting and arranging the programmes to be shown on Nine. This was 'antecedent' or 'preparatory' skill and labour. The second step was the skill and labour of drafting the synopses, selecting and arranging the additional programme information, and recording all of the information into documentary form. Her Honour found that copyright protected the skill and labour expended in gathering material for inclusion in the compilation and in the form of the presentation of the data. Thus, when the test for copyright infringement was applied, the Court should consider whether IceTV had copied both the form of presentation as well as the data contained in Nine's schedules.

On this basis, the Court found that IceTV had only taken 'slivers' of information when it updated the IceGuide and had not copied the form of the schedule. As such, a substantial part of Nine's weekly schedule had not been copied therefore copyright had not been infringed.

Full Court of the Federal Court decision

The Full Court of the Federal Court of Australia took a different approach. That Court found that the skill and labour expended by Nine was part of a single process leading to the creation of the copyright work as the written record of Nine's programming decisions and the associated programme information. This meant that the interest protected by copyright was not confined to the collection and arrangement of data. Rather, the labour expended in selecting the data to be included and selecting the programmes and the time of those broadcasts, was also protected. Therefore, any and all information in the schedule (not only the schedule or compilation as a whole) was to be protected. Thus, any reproduction of the time and title information contained in Nine's weekly schedule was, according to the Full Federal Court, an appropriation of Nine's labour and expense in preparing the programming.

The Full Court held that the time and title information of the programmes used by IceTV amounted to a substantial part of Nine's copyright work because they were 'crucial elements' of the work and were the result of a 'great deal of skill and labour' and to take such was a misappropriation of Nine's labour and expense of preparing the programming (not just the schedule).

High Court decision

The High Court, by a 6-0 majority, overturned the Full Court of the Federal Court's decision and reinstated the original finding that IceTV did not infringe copyright in the weekly schedules prepared by Nine.

The High Court's decision was delivered in two judgments, although there were many commonalities, in particular each of the judges held that:

  • Copyright does not protect facts or information, but rather the form of expression of the facts or information. The form of expression includes the words, figures and symbols used to express the information, and the selection and arrangement of the information.
  • In determining whether copyright has been infringed, the Court should not focus on whether or not a party has 'appropriated' the skill and labour of a party. Such a finding is not determinative of the issue. Rather, the focus should be on whether there has been a substantial reproduction of the original copyright work.

The High Court also cast real doubt over the correctness of the approach adopted in the Full Federal Court decision in Desktop Marketing. In that case, the Full Court had determined that copyright subsisted in the White and Yellow Pages as a result of Telstra's labour and expense in collecting, verifying, recording and assembling the subscriber data. Indeed, such is the importance of the IceTV case that Telstra (and the Australian Digital Alliance) appeared as friends of the Court.

Separate forms of expression

Three of the judges expressly found that the skill and labour expended by Nine in making decisions regarding programming was separate from the expression of these programming decisions in the form of the programming guides. Their Honours made the distinction between the originality of the programming decisions and the originality of the expression in material form of the decided weekly programme in guides or schedules.

The skill and labour expended by Nine in determining its television programming was directed by business decisions such as the need to attract viewers and advertising revenue. Their Honours regarded this skill and effort as significant. Once made however, the expression and publication of decided programming, in the form of weekly schedules, was separate. Therefore, the skill and effort expended by Nine in preparing the weekly programming guides or schedules, once it had made the programming decisions, was minimal.

Therefore, any reproduction of the time and title information (or facts/individual data contained) in the IceGuide was not a substantial reproduction of the skill and labour involved in creating Nine's weekly schedule.

Substantiality and copyright infringement

The other three judges held that the Full Court had approached the issue of substantiality at too high a level of abstraction and, in doing so, tipped the balance struck by copyright law too far against the interest of viewers of digital free to air television in the dissemination by means of new technology of programme listings.

In assessing whether a substantial part of copyright protected work has been copied, Courts must focus on the 'originality' of the work. In this case, the originality lay in the selection and presentation of the time and title information, together with additional programme information and synopses to produce the weekly schedule as a whole. Therefore, the portion of Nine's material that was alleged to have been infringed, the time and title information, which IceTV was alleged to have copied, lacked the essential element of originality for it to be considered a substantial part of Nine's weekly schedule compilation.

As a result, IceTV's reproduction of some of the information contained in Nine's programming guides was not a reproduction of a substantial part of Nine's original work (ie the entire weekly schedule).

Some issues will have to wait until next time

This decision has raised a number of complex issues and questions that were not finally determined in the reasons for judgment of the High Court (although some indication has been given in some cases as to the Court's thinking). In particular:

  • Authorship: IceTV admitted that copyright subsisted in Nine's schedules. However, one of the issues that emerged in the High Court's reasoning was that neither at trial nor in the Full Court was there any finding of the identity of the authors (or joint authors) of the schedule. The High Court raised questions as to whether or not a database, such as the weekly programming schedule, actually has an author in the copyright sense as, for example, the data may be organised by a computer. This issue informs both subsistence and infringement issues as it relates to identifying the original work that is said to be infringed.
  • Subsistence: IceTV's admission as to subsistence of copyright also meant that the High Court was unable to complete a comprehensive analysis of the test for subsistence of copyright in these types of works.
    Desktop Marketing had set Australia on a course where only a low level of originality was required in order for copyright to subsist, which pushes us out of line with other jurisdictions like the US and the EU, which require a higher level of originality in relation to subsistence. Comments made in the IceTV decision have questioned the correctness of this decision. Indeed, the High Court's comments that 'it may be that the reasoning in Desktop Marketing ... is out of line with the understanding of copyright law over many years', suggest that if Desktop Marketing was heard now, a very different decision would be reached.
    This leaves the door open to a further development of the law that will bring Australia closer to US and EU law.
  • Systematic copying: The High Court noted that the systematic copying of the information over a period of time was not a relevant consideration; the issue was whether the copying was of a substantial part.
  • Decompilation: While IceTV argued that the information it obtained from Nine was decompiled into a different form of expression, the High Court did not address this issue as it had already determined in IceTV's favour based on the issue of substantiality. This issue of decompilation may be explored further by the High Court in future decisions.
  • Re-use and verification of facts: IceTV created the IceGuide through its own skill and labour. The IceGuide was then checked against the aggregated guides and if differences were observed, it was often amended. Each of the Courts in this litigation assumed that this verification of information constituted copying. However, there are arguments to suggest that such conduct should not amount to copyright infringement.

Implications of this decision

Importantly, the High Court has affirmed the principle that copyright does not protect facts, only the compilation as a whole, if the compilation is 'original' and otherwise meets the requirements for subsistence of copyright.

This decision will have wide ranging implications for information aggregators, publishers and innovators in Australia.

Based on the findings of the High Court, new applications of existing published data can be developed and previously locked sources of data can be used in new forms of development and reproduction.

For example, information "aggregators", those who access information available, from published sources such as the Internet, print newspapers and television, and then incorporate portions of this available information in their own material, can take comfort from this decision that, in most cases, they are not infringing copyright by doing so (provided that they are not taking a substantial part).

The decision is also likely to directly facilitate greater publication of simple data such as tide times, weather observations, train timetables and government data. The recently reported matter involving the use of New South Wales train timetable information within an iPhone software application is an example of the type of business activity that will be impacted by the High Court's decision.

It is also clear that the High Court's disapproval of Desktop Marketing in relation to subsistence will mean that Australian Courts will continue to develop the test for originality of compilations which will bring us closer to our trading partners in the US and the EU.

Phillips Fox has changed its name to DLA Phillips Fox because the firm entered into an exclusive alliance with DLA Piper, one of the largest legal services organisations in the world. We will retain our offices in every major commercial centre in Australia and New Zealand, with no operational change to your relationship with the firm. DLA Phillips Fox can now take your business one step further − by connecting you to a global network of legal experience, talent and knowledge.

This publication is intended as a first point of reference and should not be relied on as a substitute for professional advice. Specialist legal advice should always be sought in relation to any particular circumstances and no liability will be accepted for any losses incurred by those relying solely on this publication.

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Michael Grosser
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