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
Most Read Contributor in Australia, September 2016

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Michael Grosser
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.