In brief

  • Copyright does not subsist in the white pages or yellow pages according to the Full Federal Court, which has affirmed the trial judge’s decision in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44.1
  • The impact of this case is that publications which are created largely through an automated computer program will likely be found to lack the necessary human authorial input to qualify for copyright protection.
  • This decision is significant for businesses that publish works which derive from databases of information generated through a partly automated computer process. Examples of such businesses include television companies and directories services for employment, car sales, real estate or professional services.

Recommended actions

We recommend that businesses who may be affected by this decision review their processes used to generate their publications to seek to ensure that:

  • there is sufficient human authorial input
  • the contribution of people who work on the publication is not separate from the contribution of others, and
  • there is a system for recording the identity and contribution of people who work on the publication.

We also recommend that businesses investigate other legal causes of action and technological solutions to prevent misuse of their data, for example the potential scraping of their data from the internet.  

Introduction

On 15 December 2010, the Full Federal Court handed down its reasons for judgment in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149. The question for the court was whether copyright subsists in Telstra’s yellow pages and white pages telephone directories. In three separate judgments, the members of the court upheld the first instance decision of Justice Gordon that copyright does not subsist in the white pages or yellow pages.

The copyright works that the court was asked to consider were the white pages and yellow pages directories in the form in which they are published, being compilation works. The court was not asked to consider whether Telstra’s computer database (from which the white pages and yellow pages were ultimately derived) or the relevant computer software, were copyright works.

Authorship

The primary basis on which the court held that copyright did not subsist in the directories was that they were overwhelmingly produced through an automated computer process. The human input involved in their creation was found to be of a relatively trivial nature and ancillary to the actual creation of the directories. As the Copyright Act requires a human author, it does not protect telephone directories which, on the facts in this case, were found to have no human author.

On the question of when works produced through a computer will be capable of copyright protection, Justice Perram noted:

a computer program is a tool and it is natural to think that the author of a work generated by a computer program will ordinarily be the person in control of that program. […] Software comes in a variety of forms and the tasks performed by it range from the trivial to the substantial. So long as the person controlling the program can be seen as directing or fashioning the material form of the work there is no particular danger in viewing that person as the work’s author. (at [118])

Unfortunately for businesses that create copyright works through the use of computers, there is no bright line which designates the point at which the human input is too far removed from the creation of the work for that work to be afforded copyright protection.

Presumption of copyright subsistence

The court agreed with the primary judge that the presumption in section 128 of the Copyright Act did not apply to Telstra. Section 128 provides, in summary, that if a literary work was first published in Australia and a name purporting to be that of the publisher appeared on copies of the work as first published, then ‘unless the contrary is established’ copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright.

Telstra argued that this presumption of copyright subsistence should apply to the directories because its name appeared on them when they were first published in Australia. However, the court disagreed, holding that the ‘contrary has been established’ because the evidence put on by Telstra showed that copyright did not subsist in the works and therefore the presumption had no application in these circumstances.

Concerning trend in copyright cases

This judgment is the expected consequence of the High Court’s reasoning in IceTV v Nine Network (2009) which changed the law of copyright in relation to compilation works by holding that the ‘sweat of the brow’ approach to originality no longer applied in Australia. That judgment cast doubt over whether telephone directories would continue to be protected by copyright in Australia.

Following the reasoning in IceTV v Nine Network it has generally been more difficult for applicants to establish copyright in their works in Australia. Interestingly, IceTV v Nine Network was a case in which the respondent (IceTV) actually conceded that copyright subsisted in Nine’s weekly television schedules, which goes to show how much this area of the law has changed in recent times. After all, it was only in 2002 that the Full Federal Court held that copyright did subsist in telephone directories—eight years later that position has been reversed.

It is arguable that the focus in recent copyright judgments on authorship issues (including issues of joint authorship, the role of computers, and the necessity of precisely identifying the authors of the work) does not adequately take account of the realities of how many large businesses operate. For example, the high numbers of staff who may be involved in creating works and the role of computer programs, which are often commissioned by and customised for the organisation, to produce compilation works.

There is no public policy reason why works of industrious compilation should not be protected in the same way that traditional literary works, such as novels, are protected through the Copyright Act. This full court judgment in Telstra v Phone Directories hinges on the precise wording of the legislation which requires a human author of the copyright work. Given this, it is likely that the Federal Government will now come under additional pressure from lobby and industry groups to amend the Copyright Act to remedy this perceived deficiency in the Act. The trial judge in Telstra v Phone Directories called for Parliament to address the issue of database protection ‘without delay’.

One glimmer of hope for copyright owners is that the full court in Telstra v Phone Directories suggested that in copyright cases it is not necessarily vital to identify each and every author of the work by name. The court noted that what is necessary is to show that a work has individual authors, rather than necessarily proving the precise identity of those authors. This appears to contrast with reasons handed down recently in Fairfax v Reed2 and this clarification of the law is positive for copyright owners.

At the date of this article, Telstra is within time to seek special leave to appeal to the High Court.