Australia: Copyright in Databases – No Copyright in White and Yellow Pages

Last Updated: 15 March 2010
Article by Steven Goodman

1. Background

There has for a long time been a fierce debate as to whether databases should be protected by copyright. Developers of databases argue that protection is required to encourage them to invest. Users of databases argue that copyright should not protect factual information because it prevents that information being used efficiently.

There has also been a great deal of uncertainty as to whether certain databases are in fact protected by copyright.

The policy debate and legal uncertainty has not been confined to Australia. In the US the pendulum seems to have swung against protecting databases (Fiest Publication v Rural Telephone Service Co Inc [1991] USSC 490). In Europe protection has been provided via a separate EU Directive (EU Directive on the Legal Protection of Databases 96/9/EC of 11 March 1996). In Australia the position is still unclear.

The most valuable and also most widely recognised databases in Australia are the White and Yellow Pages owned by Telstra (and its subsidiary Sensis). Telstra generates significant revenue from its directory businesses. For example in 2006 it generated more than $1.3 billion. Telstra has spent considerable amounts on developing its directory databases. For example its implementation of the Genesis computer system which is used to maintain and update the databases cost over $300 million. It is no surprise then that Telstra has gone to great lengths to argue that these databases are protected by copyright.

In 2002 Telstra ran a case against Desktop Marketing to the full federal court and it secured a favourable judgement to the effect that copyright subsists in the White and Yellow Pages (Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491). However in 2009 in IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 254 ALR 386 the High Court of Australia cast significant doubt on the correctness of the Desktop Marketing case.

2. The Decision

This year in Telstra Corporation V Phone Directories Company Pty Ltd [2010] FCA 44 Telstra had another opportunity to secure a favourable decision. Unfortunately for Telstra Justice Gordon in the Federal Court followed the reasoning in the IceTV case and found that copyright does not subsist in the White and Yellow pages.

In this case Phone Directories cleverly required Telstra to prove which individuals provided the authorial contribution to each work. Although it was clear that many individuals were involved in producing the databases Telstra struggled to identify the specific authors. This requirement of proving which individuals created a copyright work is a common issue in copyright litigation. In most cases companies struggle to identify the specific individuals because they are either unknown or have left the company or they were contractors and there is quite often no agreement with the contractor to secure copyright ownership.

In addition to losing on the issue of authorship Justice Gordon went further and found, based on the Ice TV reasoning, that the databases cannot be considered as original works because their creation did not involve "independent intellectual effort" and/or the exercise of "sufficient effort of a literary nature". In making this finding the judge seemed to be heavily influenced by the fact that the databases were largely computer generated.

If the reasoning in this case is applied to other databases it is difficult to think of a relational database that would be protected by copyright as virtually all relational databases are largely computer generated. The rules which determine the structure of the database are human generated but that does not seem to have been sufficient to establish copyright in this case.

Justice Gordon recognised in the case that relational databases will often not be capable of copyright protection and she referred to the European legislative solution and expressed a view that parliament in Australia should address the issue without delay.

3. An Appeal

Telstra have initiated an appeal of the Phone Directories case to the full Federal Court and regardless of the outcome it is likely that the case will proceed to the High Court so the law in this area is far from clear.

There are really two key issues (both of which require clarity to be provided by the High Court):

  • Is it necessary to prove specific authors of a work to prove copyright ownership by a corporate employer of individuals that created the work?
  • What is meant by "independent intellectual effort" or "sufficient effort of a literary nature" in the context of establishing subsistence of copyright in a relational database or in other words what degree and type of effort is enough to secure copyright protection for a relational database?

4. An Opinion

In my opinion, a corporate employer should not have to prove the specific authors of a work. To require this would make it very difficult to establish copyright in any substantial work created for a corporate. It should be sufficient if you are able to prove that your employees created a substantial part of the work, regardless of their specific identity.

With respect to what is meant by "independent intellectual effort" or "sufficient effort of a literary nature" in the context of establishing subsistence of copyright in a relational database in my opinion the degree of effort should be minimal and any type of effort should be sufficient (whether creative or not). Anything more leaves a position of great uncertainty as to what is meant by these terms. The effort in establishing the rules for a relational database should be considered to be sufficient even if the rules are not creative.

If this opinion is accepted then relational databases will generally be protected by copyright. Consideration should then be given to the issue of encouraging efficient use of information. There are many government departments and agencies in Australia that hold information which they obtain or generate as part of their statutory role as well as companies that obtain information due to their monopoly position. Examples include postal and bar code information held by Australia Post, spatial data held by State and Commonwealth agencies (and controlled companies) as well as telephone number and related information held by Telstra. In my opinion consideration should be given to requiring these agencies and companies by legislation to make this information (including updates of it) available free of charge to a publicly available database (in a standard format) that can then be accessed and used by companies that wish to develop value added products, including competing databases.

5. New Legislation

In addition to appealing the Phone Directories case, as the judge suggested in the case itself, Telstra is also likely to lobby government to introduce specific legislation to protect databases in line with what has occurred in Europe. However, it is by no means clear from a policy perspective that such legislation should be introduced especially considering the position in the US where relational databases are generally not protected and the valid policy arguments against protecting databases of factual information.

6. Implications for Database Owners

The key message for database owners is that it will be difficult for them to protect their databases through copyright. Therefore they need to carefully consider other forms of protection including:

  • Confidentiality - keep the database confidential and ensure confidentiality agreements are in place with users
  • Contract - secure protection via contractual arrangements with users
  • Physical - build physical and technical protections that make it difficult to copy the database
  • Updating - retain the ability to update the database so that copies quickly become out of date

In addition, database owners should also maximise their chance of securing copyright protection by keeping records of authors and the work they performed and ensuring that contracts are in place with all contractors with suitable copyright assignment provisions.

7. Implications for New Entrants

The key message for new entrants is that, even though there is now a decision in the Federal Court to the effect that there is no copyright in the White and Yellow Pages, the issue has not been finally resolved due to the pending appeal and also due to the risk of government legislation in this area. Therefore new entrants need to take great care in developing their strategy. New entrants also need to take care not to breach confidentiality or contractual obligations they may have.

Despite the very real risks and uncertainty that still exists for new entrants in my opinion we can expect new entrants to enter the market in an attempt to capture some of the over $1 billion generated by Telstra from its directories business as well as to capitalise on the undoubted very real business opportunities to offer new value added products (especially over the internet).

8. Conclusion

The issue of copyright in databases is far from resolved in Australia. Telstra has lost a case at first instance in the Federal Court. However, an appeal is underway and government intervention is a possibility. There is no doubt that the issue is a very important one for developers and users of databases as well as for looming new entrants.

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.

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.

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.