Australia: Middletons successfully defends client as the High Court shuts the door on Telstra
Last Updated: 5 September 2011

The High Court today refused Telstra's application for special leave to appeal from the Full Federal Court's decision that copyright did not exist in its listings for its Yellow Pages and White Pages telephone directories. The Full Federal Court's decision was delivered in December 2010, and stands as authority for the proposition that works that are largely computer generated will not have the required originality to be protected as copyright works.

Lisa Egan, a partner of Middletons who acted for Local Directories successfully defended Telstra's application to the High Court, said "The impact is far reaching - Australian courts will not protect works which are compiled principally by automated means, no matter how much labour and expense has gone into producing such compilations. The downfall in Telstra's case was its inability to identify human authors who had undertaken the tasks which produced the listings in the printed directories, rather these tasks were largely computer generated."

Ms Egan said, "The High Court has today shut Telstra out from any further avenues of appeal on the question of whether copyright subsists in its listings in the White Pages and Yellow Pages directories. In February 2010, Justice Gordon determined that no such copyright subsisted. This decision was upheld on appeal by the Full Federal Court, and an appeal from that decision was today denied by the High Court."

The Courts' finding focuses the protection of copyright works on the principles enshrined in the Copyright Act, and the need to establish a work is original, which in turn requires authors. The Full Federal Court has made it clear that this requirement is one for human authors, rather than computers. The case demonstrates that the courts will not allow the boundaries of copyright law to be stretched to protect works which bear no "independent intellectual effort" or "sufficient effort of a literary nature" of identifiable human authors.

Ms Egan said "The case brings to an end a long running dispute over copyright in phone directories. The impact of the decision is wide reaching as it can affect any data compilations of essentially factual information. This can include sporting fixtures, real estate auction results and timetables. If such works are largely computer generated, with human authors not contributing to the material form of the compilation, then it is unlikely that copyright law in Australia will prevent the compilation from being copied. Businesses who deal in this sort of information may need to look carefully at their business model to ensure they are operating in a way which is still capable of attracting copyright protection."

Ms Egan added, "Comments from the High Court today echoed the sentiments of the Chief Justice in the Full Federal Court's decision, that works such as those which Telstra was seeking to protect have been given legislative protection in Europe, however this is not the law in Australia and whether or not it should be is a matter for Parliament to decide."

"The implications for businesses that generate databases of purely factual information is not all doom and gloom. There may need to be some attention given to the means by which their works are brought into material form and where possible human effort must be meaningfully directed to the reduction of the work in material form in order for these works to continue to benefit from protection under Australia's copyright regime."

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