IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14.

Synopsis  

In a landmark decision on Australian copyright law, the High Court recently overturned a decision of the Full Federal Court and unanimously held that IceTV had not infringed the Nine Network’s copyright in its television schedules.  

FACTS OF THE CASE  

At the centre of the dispute was the IceGuide, an electronic program guide (“EPG”) first produced by IceTV in 2005. The IceGuide is a subscription-based service which provides subscribers with a weekly or daily television guide for free-to-air digital television. IceTV manually produced the first version of its IceGuide by observing (over a 3-week period) the time and day on which free-to-air television programs were broadcast, and using those observations to predict what a particular week's television program schedule was likely to be. Each week’s IceGuide was created using the previous week’s guide as a template to predict which programs would be shown on which channel and at what time. IceTV obtained episode information and program synopses from sources such as the official websites for various television programs. As the final step in the creation of the IceGuide, IceTV staff checked the IceGuide against the television guides published in newspapers, magazines or online (“the Published Televison Guides”) to determine the accuracy of the IceGuide and to correct any last-minute changes in programming.  

It was this final step in the creation of the IceGuide that the Nine Network (“Nine”) alleged was an infringement of its copyright. Nine asserted that it owned copyright in its own weekly televison programming schedules (“the Weekly Schedules”), and that IceTV had infringed its copyright in those Weekly Schedules by reproducing a substantial part of them, namely the time and title information for the shows that were scheduled to be broadcast, without authorisation from Nine.  

At first instance, Justice Bennett of the Federal Court held that IceTV had not infringed Nine's copyright as it had not reproduced a substantial part of the Weekly Schedules. The Full Federal Court overturned that decision in May 2008, holding that a substantial part of Nine’s Weekly Schedules had been reproduced by IceTV without Nine’s authorisation.  

THE DECISION  

The High Court’s decision (handed down in two separate judgments), focussed on the question of what Australian copyright law is designed to protect. The Court emphasised that copyright law is not designed to protect facts, but rather to protect the way in which those facts are expressed. In this case the “facts” were the pieces of program time and title information obtained by IceTV from the published television guides. The “expression” of those facts was the arrangement of that information into Nine's Weekly Schedules, in chronological order.  

The High Court did not have to decide whether or not the Weekly Schedules themselves were actually protected by copyright law, as IceTV had conceded that copyright subsisted in the Weekly Schedules and that Nine owned that copyright. The High Court was asked to consider whether IceTV's conduct in taking time and title information for selected programs (including Channel Nine programs) from the Published Television Guides in order to improve the accuracy of the IceGuide, involved taking a substantial part of Nine's Weekly Schedules. If a substantial part had not been taken, there could be no copyright infringement. The High Court unanimously held that IceTV had not infringed Nine's copyright. The Court delivered its reasons in two separate judgments.  

French CJ, Crennan and Kiefel JJ held that the expression of the time and title information taken by IceTV from Nine’s Weekly Schedules was not sufficiently original so as to constitute a substantial part of Nine’s copyright. This was because their Honours did not consider that there was any substantial originality in the arrangement of the time and title information in chronological order, in Nine's Weekly Schedules. To the extent that any skill and labour had been invested by Nine's employees in arranging the time and title information in the Weekly Schedules, that skill and labour was considered to be minimal in relation to expressing that information.  

Gummow, Hayne and Heydon JJ held that although IceTV had appropriated Nine's skill and labour in the Weekly Schedules, it did not mean that IceTV had infringed Nine's copyright. Their Honours said that the relevant question, for copyright purposes, was whether the material that had been taken was sufficiently original so as to attract copyright protection. In their Honours' view, the originality in the Weekly Schedules lay in the selection and presentation of the Schedules as a whole (including time and title information, synopses and other additional programme information), not in the expression of the time and title information itself.

In both judgments the Court emphasised that when determining whether a substantial part of a copyright work has been reproduced, the assessment of substantiality must be made qualitatively as well as quantitatively. Further, French CJ, Crennan and Kiefel JJ held that it was “unhelpful”, when determining substantiality, to refer to the “commercial value” of the information that has been taken, because it directs attention to the information itself, rather than to the expression of that information.  

CONCLUSION  

The IceTV decision may signal a shift in Australian copyright law in relation to the concept of originality, away from protecting any work in which “labour and expense” has been invested, towards an approach which is closer to the United States' position, in which it is harder to obtain copyright protection for factual compilations.  

The decision demonstrates the High Court's concern that Australian copyright law has begun to stray outside its traditional boundaries, perhaps as a result of a misplaced focus on the misappropriation of skill and labour. The underlying message from the High Court appears to be that just because significant time and money has been spent creating or compiling a valuable work such as a compilation or database, does not mean that the work can, or should, be protected under copyright law. The judgments in the IceTV decision also evidence a desire by the High Court to return to a “first principles” approach to copyright law, to ensure that copyright protection is granted only to material which is truly intended to be covered by copyright legislation, regardless of its commercial value or importance.  

However, the IceTV decision also leaves Australian copyright law in a state of flux, at least in relation to copyright protection of factual compilations. The impact of this decision on the activities of Australian businesses, in an age where the creation and manipulation of factual compilations has become more prevalent and commercially important, remains to be seen.  

So, to borrow a phrase from the world of television programming: stay tuned for further developments.