The Federal Court has this week handed down another important decision on Australian copyright law. The decision of Justice Gordon in Telstra Corporation Limited v Phone Directories Company Pty Ltd ( FCA 44 (8 February 2010)) follows in the footsteps of the High Court decision last year in IceTV Pty Limited v Nine Network Australia Pty Limited 1 and departs from the Full Federal Court’s earlier decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd 2.
In summary, Justice Gordon held that copyright did not subsist in the particular White Pages and Yellow Pages directories which were the subject of the proceedings. Justice Gordon considered that copyright did not subsist in the White Pages and Yellow Pages as they were not original literary works. Her Honour summarised her reasons for this conclusion in the following way:
- among the many contributors to the White Pages and Yellow Pages directories, Telstra and Sensis did not and could not identify who provided the necessary authorial contribution to each publication. Telstra and Sensis conceded there were numerous non-identified persons who ‘contributed’ to each publication (including third party sources)
- even if the human or humans who ‘contributed’ to each publication were capable of being identified (and her Honour considered they were not), much of the contribution to each publication:
- was not ‘independent intellectual effort’ and/or ‘sufficient effort of a literary nature’ for those who made a contribution to be considered an author of the publication within the meaning of the Copyright Act
- further or alternatively, was anterior to the publication first taking its ‘material form’
- was not the result of human authorship but was computer generated, and
- the White Pages and Yellow Pages directories could not be considered as ‘original works’ because the creation of each publication did not involve ‘independent intellectual effort’ and/or the exercise of ‘sufficient effort of a literary nature’. Rather, her Honour considered that the evidence showed that the ‘system’ by which the directories were produced was designed to limit originality and not provide for it.
Justice Gordon’s judgment focuses heavily on the issue of authorship and the need to be able to identify the authors of the literary works in issue. Her Honour considered this issue to be essential for copyright to subsist in the White Pages and Yellow Pages directories, and that Telstra and Sensis had failed to identify these authors.
Following the High Court in IceTV, Her Honour emphasised that copyright is not given to reward work distinct from the production of a particular form of expression. The central question is whether the alleged contribution involved independent intellectual effort and/or sufficient effort of a literary nature and whether the skill and labour required for the creation of the work was directed to the originality of the particular form of expression.
This case is particularly important for creators of compilations of factual materials such as databases. It highlights the difficulties which database owners will have in proving authorship and the requisite degree of originality in order to prove that copyright subsists in their compilation. Currently copyright is the only means by which database owners can seek to protect their databases in Australia. Unlike Europe, for example, Australia does not have a database right to provide another means to protect the huge investments that are made in compiling databases.