The High Court this morning refused Telstra's application for leave to appeal the Full Federal Court's decision in Telstra Corporation Limited v Phone Directories Company Pty Ltd,1 which had found that the Yellow Pages and White Pages directories are not capable of protection under the Copyright Act 1968. Today’s refusal is a set back for companies looking to protect their databases and compilations from unauthorised adaptations.
The Full Federal Court's decision
For a compilation to be protected by Australian copyright law, it must be “original”,2 that is it must be the product of “independent intellectual effort”3 exerted by its authors. The question before Justice Gordon at first instance and the Full Federal Court on appeal concerned the nature of this effort where computers had played a substantive role in producing the final published form of a work. In upholding Justice Gordon’s decision, the Full Federal Court held that:
- the human effort involved in the ‘collection phase’ of listings data for the White Pages and Yellow Pages directories was not directed to the creation of the material or final published form of the directories, and was therefore irrelevant for the purposes of establishing originality; and
- that the effort exerted in the ‘extraction phase’—that is, the processing by a computer program of the collected listings data to produce print-ready files for each regional directory—did not originate from an individual or group of individuals, but rather from a computerised process of storing, selecting, ordering and arranging the data to produce the directories in their published form. The Federal Court emphasised that it was the extraction phase work that constituted the relevant effort for the purposes of originality.
Telstra's submissions before the High Court
Appearing before Justices Gummow and Bell of the High Court this morning, counsel for Telstra submitted that the Full Federal Court had erred in its focus on the human effort involved in the extraction phase. It was submitted that the entire process of gathering and filtering listing information, as well as the selection and programming of rules to produce the final work, should have been considered by the Full Federal Court in assessing the level of independent intellectual effort involved, not just the efforts of the person who “pushed the button” to run the extraction programs.
The High Court was invited to examine the tests to be applied in these circumstances, with counsel for Telstra observing that these principles were of increasing importance given the commercially-valuable role that databases play in the emerging internet economy and noting the lack of High Court jurisprudence on the issue. Justices Gummow and Bell, however, refused Telstra’s application for leave to appeal the Full Federal Court’s findings.