FEDERAL COURT OF AUSTRALIA
Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149
IN THE FEDERAL COURT OF AUSTRALIA | |
DATE OF ORDER: | |
WHERE MADE: |
THE COURT ORDERS THAT:
1. The appeal be dismissed with costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court’s website.
VICTORIA DISTRICT REGISTRY | |
GENERAL DIVISION | VID 147 of 2010 |
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA |
BETWEEN: | TELSTRA CORPORATION LIMITED (ACN 051 775 556) First Appellant SENSIS PTY LTD (ACN 007 423 913) Second Appellant
|
AND: | PHONE DIRECTORIES COMPANY PTY LTD (ACN 059 776 091) First Respondent AUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN 078 856 318) Second Respondent ADAM HARGRAVES Third Respondent GLENN HARGRAVES Fourth Respondent DANIEL STOTEN Fifth Respondent LOCAL DIRECTORIES PTY LTD (ACN 130 550 971) Sixth Respondent
|
JUDGES: | KEANE CJ, PERRAM AND YATES JJ |
DATE: | 15 December 2010 |
PLACE: | MELBOURNE |
REASONS FOR JUDGMENT
keane cj:
1 In Australia copyright is a creature of the Copyright Act 1968 (Cth) (the Act). The monopoly in copyright subsists only insofar as the Act provides. Because the terms of the Act reflect the intention of the Berne Convention for the Protection of Literary and Artistic Works to protect the rights of authors, copyright subsists in a literary work only by virtue of the authorship of that work by an individual or individuals. It may be that if the author of a work is the employee of another person, ownership of the copyright may vest in the employer; but copyright in a literary work can subsist only if it originates from an individual. This case highlights the difficulty confronting a claim to copyright in a literary work which is compiled by an automated process.
2 In these proceedings, the learned trial judge determined, as an issue separate from the other issues in the case, the question whether copyright subsists under the Act in the White Pages Directory (WPD) and the Yellow Pages Directory (YPD) published by Telstra Corporation Limited and Sensis Pty Ltd (the appellants). The question concerned regional WPDs and YPDs dating back to the year 2000 for 11 different regional areas of Australia. Her Honour determined the question in the negative.
3 The appellants’ case is that each WPD and YPD is an original literary work. In particular, each directory is said to be a compilation consisting of the expression of the information in individual listings in their particular form and arrangement and in the overall arrangement of the individual listings, and, additionally in the case of the YPD, in the cross-referencing of the information under subject matter headings.
4 Numerous individuals, some identified and some not, contributed to the work preparatory to the compilation of each of the WPDs and YPDs, but the compilations were brought into the form in which they were published primarily by an automated computerised process. No claim was made by the appellants to copyright in the computer database or software.
5 The trial judge approached the determination of the question by reference to the decision of the High Court of Australia in IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 239 CLR 458. Her Honour held at [2010] FCA 44 at [5]:
For the reasons that follow, copyright does not subsist in any Work. None is an original literary work. By way of summary:
1. among the many contributors to each Work, the Applicants have not and cannot identify who provided the necessary authorial contribution to each Work. The Applicants concede there are numerous non-identified persons who “contributed” to each Work (including third party sources);
2. even if the human or humans who “contributed” to each Work were capable of being identified (and they are not), much of the contribution to each Work:
2.1 was not “independent intellectual effort” (IceTV 254 ALR 386 at [33]) and further or alternatively, “sufficient effort of a literary nature” (IceTV 254 ALR 386 at [99]) for those who made a contribution to be considered an author of the Work within the meaning of the Copyright Act;
2.2 further or alternatively, was anterior to the Work first taking its “material form” (IceTV 254 ALR 386 at [102]);
2.3 was not the result of human authorship but was computer generated;
3. the Works cannot be considered as “original works” because the creation of each Work did not involve “independent intellectual effort” (IceTV 254 ALR 386 at [33]) and / or the exercise of “sufficient effort of a literary nature”: IceTV 254 ALR 386 at [99]; see also IceTV 254 ALR 386 at [187]-[188].
6 In this Court, the principal argument of the appellants is that, because each directory is a literary work published in Australia, the only question to be answered is whether it is an original literary work; this question can be answered, they say, without identifying any particular author much less all the authors. That is said to be because copyright in a work first published in Australia can subsist by virtue of s 32(2)(c) of the Act if the work is original in the sense of not being a copy. The appellants contend that it can be inferred that intellectual effort of some kind was applied by some individual or individuals in the production of each directory so that it can be said to be an original literary work. They argue that, neither the decision in IceTV, nor the reasons given by the High Court in that case, compels, or points to, a different conclusion in this case.
7 The principal contention of the respondents is that the directories were compiled, not by the individuals engaged to facilitate the process, but by a computerised process of storing, selecting, ordering and arranging the data to produce the directories in the form in which they were published.
8 In my respectful opinion, the principal contention of the respondents should be accepted, and the decision of the trial judge should be upheld for that reason. In order to explain the reasons for my opinion, I propose to set out the relevant provisions of the Act, then set out the facts as found by the learned trial judge, and then proceed to discuss the arguments agitated by the parties on the appeal to this Court.
THE ACT
9 By virtue of s 8 of the Act, copyright subsists exclusively “by virtue of” the Act. Any claim to copyright must be grounded squarely in the provisions of the Act: Pacific Film Laboratories Pty Limited v The Commissioner of Taxation of the Commonwealth of Australia (1970) 121 CLR 154 at 166-168.
10 By virtue of s 10(1) of the Act, a compilation is a “literary work”. The expression “literary work” is defined by s 10(1) of the Act to include:
(a) a table, or compilation, expressed in words, figures or symbols;
11 Section 32(1) of the Act provides that, subject to the Act:
copyright subsists in an original literary…work that is unpublished and of which the author:
(a) was a qualified person at the time when the work was made;
12 As I have mentioned, the appellants rely upon s 32(2)(c) of the Act as the basis for this contention that copyright subsists in the works. Section 32(2) of the Act provides that, subject to the Act:
where an original literary…work has been published:
(a) copyright subsists in the work;
…
if, but only if:
(c) the first publication of the work took place in Australia;
13 Because the appellants contend, albeit by way of an alternative to their principal contention, that the WPD and YPD are works of joint authorship by many individuals, it is necessary to note that the expression “work of joint authorship” is defined by s 10(1) of the Act to mean “a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of other authors.”
14 By virtue of s 78 of the Act, a reference in the Act to “the author of a work” is, in relation to a work of joint authorship, a “reference to all the authors of the work.” By reason of s 79 of the Act, the references in s 32 to “the author of the work” are to be read as references to any one or more of the authors of the work.
15 Section 35(2) of the Act provides that, subject to s 35(6), the author of a literary work is the owner of any copyright subsisting in the work. Section 35(6) provides that where a literary work is made by the author pursuant to the terms of his or her employment by another person under a contract of service, that other person is the owner of the copyright subsisting in the work.
16 Under s 31 of the Act, copyright is the right “in relation to a work” to, inter alia, “reproduce the work in a material form”.
17 Section 10(1) of the Act defines the term “material form” in relation to a work to include:
any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced).
18 Section 22(1) of the Act provides:
22 Provisions relating to the making of a work or other subjectmatter
Literary, dramatic, musical or artistic works
(1) A reference in this Act to the time when, or the period during which, a literary, dramatic, musical or artistic work was made shall be read as a reference to the time when, or the period during which, as the case may be, the work was first reduced to writing or to some other material form.
19 The appellants also invoke provisions of the Act which facilitate proof of the subsistence and ownership of copyright in a literary work, without proof of the matters referred to in s 32(2)(c) of the Act. In this regard, s 128 of the Act provides relevantly:
128 Presumptions in relation to publisher of work
Where, in an action brought by virtue of this Part in relation to a literary…work…it is established:
(a) that the work was first published in Australia and was so published during the period of 70 years that ended immediately before the commencement of the calendar year in which the action was brought; and
(b) that 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 at the time of the publication.
the facts
20 Telstra collects and maintains information in relation to the names and addresses of its subscribers. Sensis, a wholly owned subsidiary of Telstra, conducts the business of publishing the WPD and YPD throughout Australia.
21 Each WPD and YPD lists the names, addresses, telephone numbers and other information in relation to residential or business customers for a particular geographic area. In the case of the WPD, the entries are free, but revenue is earned by persuading customers to add enhancements to their free entries for a fee. In the case of the YPD, revenue is earned in the same way and by taking advertisements for customers under multiple headings.
22 The learned trial judge described in detail the system whereby the directories are produced. Her Honour’s understanding of the factual position was derived from 91 affidavits filed by the appellants in order to establish the circumstances of the publication of the WPD and YPD. The process is described broadly in her Honour’s findings at [56] that:
1. The production of the WPD and YPD is undertaken by members of a division within Sensis known as the Directory Solutions Group.
2. For each type of directory, customers’ listing information is obtained from a variety of sources.
3. Since October 2003 the listing information has been entered into a database on a computer system known as the Genesis Computer System. In most cases this listing information is entered into the database automatically, but in about 15 per cent of cases it is entered manually.
4. As listing information is entered into the database, automatic checks are conducted by the Genesis Computer System to ensure the completeness and accuracy of the information and that the information is in a form which complies with a set of prescriptive guidelines that control the content and presentation of listings in the WPD and YPD; these guidelines are referred to as “the Rules”. The Rules regulate the font, colour schemes and spacing of words and entries, and prohibit the use of certain words or phrases. There are separate Rules for the WPD and YPD.
5. The WPD and YPD are produced on a rolling schedule throughout the year. In each case the production process commences with the listing information which appeared in the previous issue of a directory. That information is carried over and converted into listing information for the next issue of the directory. This process, which is known as “rollover”, produces a “template” or “starting point” for the next issue of the directory. Thus a significant part of each directory is constituted by data repeated from the previous year’s directory.
6. Rollover is an automated process which involves running two computer programs over the Genesis database. This causes the Genesis Computer System to create a new record for the next directory for every listing which appeared in the previous issue of the directory. The new record includes the listing details used to produce the customers’ previous listing entry together with updated information for that customer such as new advertising rates or an updated heading.
7. Prior to publication of a new directory, the Genesis Computer System carries out checks to identify errors in the content or format of the listing for the new directory. Any corrections which are required are made manually.
8. The listing information stored in the Genesis Computer System database is corrected and presented in accordance with the Rules. The listings thus extracted and formatted are then combined and arranged on pages which are typeset and paginated.
9. The completed directory is then printed and published.
23 The fixing, in material form, of all of the listings and advertisements in the form in which they appear in the published directory (known as the “galley file”) first occurs at the stage of the process described as “book extract” and “book production”. These processes are automated as was explained by her Honour at [149]-[156]:
These two processes contribute to the creation of what was referred to as the “galley file”, which contains all of the listings and in-column advertisements in the form and sequence in which they will appear in the printed directory (noting that this does not include display advertisements). Ms Dawes, a manager in Print Content and Conversion at Sensis, stated that “it is … at the Book Extract stage that the listings in a particular [WPD] or [YPD] assume the form in which they will ultimately appear in the printed directory”. She admitted during cross examination that its organisation is “all automated”.
These software routines, in conjunction with the reference tables, use the Rules to apply and determine the appearance and order of the information stored in the Genesis database. For example, a table described as a “Keyword Table” defines how characters and symbols are to be interpreted for the purposes of sorting. A specific instance includes the “$” symbol – the table contains information that, when associated with the Book Extract routine, will sort such an entry as “dollar” (see [98] above).
Ms Dawes went further regarding the automated sorting process undertaken by Book Extract, and how it extracts listing information and other publishing information for a specific directory from the database and related reference tables. Her evidence was that the Book Extract routine performs four major steps:
1. Heading Extract – this process searches the database and extracts all headings which have listings or advertisements under them in the designated directory, as well as their associated sub-headings and cross-references. It also includes notes headings. It is only used for the YPD;
2. Listings and Advertising Extract – this process searches the database and extracts all listings and other advertising information which are to appear in the designated directory, applying the Rules to determine which components of each listing should be included and how they should appear;
3. Sorting – this process sorts the extracted listings and headings information according to the Rules; and
4. File generation and reporting – this process saves the extract into what is known as a CMP file and generates a report of all listings that failed to extract.
With respect to step 3 outlined in [151] above, the application of these Rules involves the software checking whether the listed elements appear in any of the relevant tables, and then managing the listing in accordance with the instructions contained within the table. In certain circumstances, the instruction contained in the listing record can override the sorting Rules contained in the tables. As is evident, the production of the galley file to this point has been almost entirely automated.
As mentioned elsewhere (see [254] and [317] below), the production of the galley file involves a number of “reports” that are run to identify errors or anomalies in listings and advertisements (including for example ensuring that display advertisements will appear in the correct position according to the Rules). After the galley file has been extracted (which involves entering various commands into a computer), further reports are run to ensure that the listings to be printed in the directory have been extracted correctly from the database and that they comply with the Rules. The error indications are largely automated…Where the Genesis Computer System identifies issues, they are usually corrected manually in POST or at the source of the error.
…
Some manual checks are undertaken, examples of which (for the WPD) include checking the beginning of each alphabetical section to ensure the correct alphabetical order exists and correcting “dependant word listings” (which include common pre-fixes such as “Le” and “Mc”) using a checklist.
After the galley file has been built, “Late Change Requests” are managed. There was little evidence as to how many “Late Change Requests” were specifically actioned with respect to the Works. For example, Mr Vormwald, who worked as a Publishing Co-ordinator that contributed to the Cairns 2008 / 2009 YPD, gave evidence regarding a single instance, and then asserted that he actions 50-150 such requests per regional YPD. Again, software is used to ensure compliance with the Rules, and where Sensis workers are involved in this process, the software ensures uniform compliance with predetermined aspects of the Rules.
24 After the processes of “book extract” and “book production” are completed, the directories must be paginated. In this regard, her Honour explained at [157]-[158]:
[T]he directories must be paginated and typeset. Mr Stewart, a Paginator, provided evidence of his experience in this role. The Paginator paginates and typesets the directories. Pagination refers to the process of determining the layout of the listings and advertisements that appear on each page of any given directory. Typesetting refers to the process whereby graphic advertisements stored in the Ad Production Database are incorporated into the paginated pages of a directory. The Paginator’s role requires a number of steps before the tasks outlined above are completed. I do not propose to outline them all here. For present purposes, it is sufficient to note that much of the work involves the automated production of draft versions of sections of a given directory, sorted to comply with the Rules, then the manual checking and editing of this draft. In the words of Mr Stewart (describing his role when paginating):
The system will assist me in paginating the book by starting me off. So I will tell the system where I want to start, so going through the process, I will tell it a start page. I will ask the system then to produce some pages for me and then I’ll go in, into my online pagination system and manually change them or agree [with] them as we move through the book.
This pagination process relies heavily upon the RTMS system…and upon a piece of software described as “Pagination Prod”. Pagination Prod has a function that will “score” a given page out of 100 based on the compliance level with the Rules. Mr Stewart attempts to edit each page to achieve a result as close to 100 as possible. In achieving that objective, Mr Stewart must at times apply certain rules whilst violating others.
25 Prior to the introduction of the Genesis Computer System in October 2003, the same operations which it performs were computerised, but were undertaken by separate computer systems. Further, the Genesis Computer System streamlined some mechanical processes which previously were performed manually.
26 The computer systems used in the production of the WPD and YPD were the result of the work of various entities over a number of years. Telstra and Sensis were the ultimate purchasers of these systems but only in a few cases was the software in question created by their employees.
27 As to the Genesis Computer System, the trial judge explained at [126]-[128]:
The Genesis Computer System is comprised of a number of programs, relevantly including:
1. Publisher’s Online System (POST) – a graphical user interface used by Sensis workers to enter and update listing and other customer information in the Genesis database…
2. Listing Maintenance – the application which governs the processing of listings data received from telecommunications carriers (known as “service orders”)…
3. Book Extract – the program which governs the sorting and collation of listings for inclusion in a particular WPD or YPD…
4. Book Production – the program that governs the pagination and typesetting of the directory…
Sitting behind these applications are what was referred to as “reference tables”. Many of the Rules applied by the Genesis Computer System rely on the reference tables and the information contained in them to determine whether a particular action is valid or invalid (relevantly, by reference to the Rules). The reference tables are stored in a central location known as the Reference Tables Management System (RTMS). The development of the tables themselves was undertaken by reference to the business rules contained in the WP Rules and YP Advertising Rules. The development of the tables has occurred over a number of years, with an unidentified portion of the more stable Rules having been represented in the tables for a considerable period of time (relevantly, prior to 2000).
Many hundreds of reference tables exist within the Genesis Computer System, but only a subset impact upon the listing information in the YPD and WPD.
28 The trial judge gave, at [129-131], some further detail in relation to the POST and Listing Maintenance programs:
POST acts as the primary mechanism by which information is entered or keyed into the Genesis Computer System. Listing Maintenance is the program through which certain listings are automatically processed, for example, where no change is required to the listing of service orders. Automatic validity checks are undertaken by these computer applications, and should the information fall outside the expected range of information to go into a certain field (which is determined by the reference tables), that entry will not be accepted by the system. In the case of manual entries, POST will not allow a record to be finalised should certain fields be empty, limits the number of options from which someone can choose when entering information of a particular kind (for example, by using drop-down menus) and uses the reference tables to check the range of valid entries of a given type of information. In other words, the individual entering data is usually notified if something is incomplete or if it is invalid, which is determined by reference tables that are constructed to assist in the automated implementation of the Rules. The Applicants accepted that there is a large amount of computer-aided error correction.
Of significance also was the role of the Error Maintenance System. The Error Maintenance System is a program designed to search for errors on a daily basis in the listing information stored in the Genesis database (see [86] above). Although no definition of “errors” was provided, from the examples it is apparent that an error will often include a situation where the ultimate listing contravenes some aspect of the Rules. The Error Maintenance System operates by identifying errors, without any human involvement, that have been entered and assigning them to be corrected.
There are a number of different ways that information is received from a customer and can be entered into POST by personnel employed in various capacities…
29 The evidence did not establish who had created or customised, in whole or in part, the computer systems including the Genesis Computer System. No claim was made for copyright in the database of the Genesis Computer System or the software which is used in its operation.
30 In relation to the Rules to which reference has been made, the trial judge made the following detailed findings at [90]-[93]:
At their most basic level, the Rules are a set of prescriptive guidelines that control, dictate, restrict and / or prohibit the content and presentation of listings in the WPD and YPD. They regulate the font used. They regulate the proper abbreviations of words. They regulate the colour schemes applied. They regulate the spacing between words and individual entries. They regulate the acceptability or otherwise of the use of particular words or phrases. It is unclear who created the Rules. But it is clear that everyone is bound by them.
The Rules are directly or indirectly automated. They are directly automated in the sense that the Rules are programmed into the Genesis Computer System (or supporting systems) so that the information entered into those systems is in a form which complies with the Rules. This commonly arises in three broad situations. First, when Sensis’ workers enter information into the Genesis database, the Rules, as applied by the Genesis Computer System and supporting systems, provide limited choice to those workers regarding the content, format and features of the presentation of that information. In the vast majority of cases, workers are unable to go outside the bounds of those choices as the system through which they enter this information does not allow them to. While the information may be manually entered, it could not be said that this was not an automated function. Secondly, the Rules, as applied by the Genesis Computer System (or supporting systems), check the information entered to ensure it conforms with the Rules. Thirdly, the Rules, again as applied by the Genesis Computer System (or supporting systems), designate and influence the format and arrangement of the information entered as it finally appears in the WPD and YPD.
The Rules are also indirectly automated. There are, in certain circumstances, instances of human intervention in the application of the Rules. For example, an Artist may prepare and update graphic advertisements in the WPD and YPD and an Editor is responsible for ensuring that those advertisements comply with the Rules (see [143]-[144] below). The Paginator paginates and typesets the directories, often to ensure the pages of the directories, which have been first created by the Genesis Computer System, comply with the Rules (see [157]-[161] below). The overarching process is designed to ensure that decisions that violate the Rules are as rare as possible. In the vast majority of cases, any human intervention is directed to ensuring the content and presentation of listings complies with the Rules.
…
[T]here are three parts of what generally are considered the Rules:
1. the WPD Rules which control, dictate, restrict and / or prohibit the content and presentation of entries in the WPD. For example, in relation to the placement of names, the WPD Rules govern government and business listings, what font listings can and should appear in, rules surrounding the listing of mobile phones, 18 services, 13 services and others, and rules regulating the use of “Mc” and “Mac”, “Mt” and “Mount”, and “St” and “Saint”, among many other things;
2. the YPD Advertising Rules which are similar to the WPD Rules but they also control, dictate, restrict and / or prohibit the content and presentation of advertisements, for example the position priority of display advertisements; and
3. the Product Standards which control, dictate, restrict and / or prohibit certain sensitive material, particularly regarding advertisements, such as the acceptability or otherwise of the use of certain words or phrases in, for example, adult advertising, abortion / pregnancy termination / family planning services and party plan selling.
31 The trial judge concluded that the compilation of the directories was essentially an automated process. Her Honour said at [334]-[335]:
[A]lthough the Applicants tendered 91 affidavits from individuals who were said to be “authors” of one or more of the Works, the affidavits did not cover the range of people who would have made a contribution to the Works or cover the entire period the subject of the claim. Moreover, some of the 91 individuals had a limited (or non-existent) role in contributing to the Sample Directories and of those who did contribute, the nature of the contribution was certainly not of a nature to be described as “independent intellectual effort” or “sufficient effort of a literary nature”.
Moreover, these affidavits made clear that there are substantial parts of the directories that do not have human authors…are automated to the extent that human involvement is minor…or have authors who cannot be ascertained (for example, much of the rollover component of the directories…).
32 In relation to whether the directories were original works, the automated nature of the process again loomed large. The trial judge said at [340]-[344]:
None of the Works were original. None of the people said to be authors of the Works exercised “independent intellectual effort” or “sufficient effort of a literary nature” in creating the Works. Further, if necessary, the creation of the Works did not involve some “creative spark” or the exercise of the requisite “skill and judgment”. I accept that production of the directories is a large enterprise populated by many contributors (ignoring for the moment the determinative difficulties with authorship outlined above). Many of the witnesses gave evidence that was direct and appropriate, and I accept that they work hard in their respective capacities.
However, these facts are not relevant to the Applicants’claim [and] substantial labour and expense is not alone sufficient to establish originality. The evidence established that the “system” by which the directories are produced is designed to limit originality, not provide for it. Where it can be automated, it has been. Where it cannot, Sensis workers are required to act consistently with the Rules and all work is subject to a multiplicity of checks to ensure that consistency. The weight of the evidence demonstrated that the tasks performed by individuals applying the Rules were mechanical in nature and often were able to be completed in large numbers swiftly. The Rules are followed and applied. Moreover, the Rules themselves are not complicated. It would be hard to conceive of how many of the Rules could be otherwise constructed given that the purpose of the directories is to (a) enable someone to find a listing and (b) to allow customers to enhance their listing if so desired. Above all, the Rules are fashioned to allow for ease of reference and to make accommodations for customers who are willing to enhance their listings. The Rules reflect the underlying commercial context of the directories: see IceTV 254 ALR 386 at [51].
…
Authorship and originality are correlatives. The question of whether copyright subsists is concerned with the particular form of expression of the work. You must identify authors, and those authors must direct their contribution (assessed as either an “independent intellectual effort” of a “sufficient effort of a literary nature”) to the particular form of expression of the work. Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original. The Applicants have failed to satisfy these conditions. Whether originality be the product of some “independent intellectual effort” and / or the exercise of “sufficient effort of a literary nature”, or involve a “creative spark” or the exercise of “skill and judgment”, it is not evident in the claim made by the Applicants.
33 The trial judge rejected an alternative claim by the appellants that the directories were the product of joint authorship on the part of all the individuals whose efforts contributed to the production process. Her Honour said, at [337]-[338]:
[S]erious questions arise as to whether it is appropriate to refer to the gamut of individuals said to be authors of these Works as “joint authors”. The evidence demonstrated time and again that many of the staff perform their function separately from and often oblivious to the function of others…There is therefore a real question over whether there was the requisite level of collaboration between those workers to be considered joint authors: see s 10(1) of the Copyright Act. However, given the simple and undeniable fact that the Applicants have failed to prove the identity of the authors who contributed to the Works, it is unnecessary to consider this matter further.
Even if the authors of the Works could be identified with sufficient clarity and certainty (and they cannot), the people suggested to be the authors of the Works did not exercise “independent intellectual effort” and / or “sufficient effort of a literary nature”. A majority of the creation process of the WPD and the YPD was heavily automated. Human intervention was regulated and controlled according to either the various computer systems in place including the Rules…Further, the contribution of the people suggested to be authors of the Works was anterior to the work taking its material form. Very few people had any part to play in the final presentation of the Works or the particular form of expression of the information. Those people, again, could not have been said to have exercised “independent intellectual effort” and / or “sufficient effort of a literary nature”…
(Original emphasis.)
34 The appellants do not dispute the trial judge’s findings of primary fact. They argue, however, that her Honour erred in the significance attributed by her Honour to these findings in reaching her ultimate conclusion that the compilation of the directories was automated rather than the product of the intellectual effort of individuals. It is convenient at this point to refer to her Honour’s findings in relation to the relationship between the activities of the individuals engaged in the production of the directories and the automated compilation of the works. These findings show that the activities of individuals are organised to provide input to the computerised processes which produce each directory, and to make more or less mechanical refinements to that product.
35 As to the work of WPD telesales consultants and account executives, her Honour said at [189]:
When the customer has made a decision about what form of listing to place in the forthcoming issue, the consultant records the relevant listing details and arranges for the listing records to be created or updated within the Genesis database. As part of this process, the sales consultant confirms whether the listing information stored in the database is correct or needs to be updated, and that the listings the customer wishes to place comply with the requirements of the Rules. As detailed in Part C above, sales consultants apply both “content-driven” Rules and Rules dealing with the presentation and appearance of listings. In addition, each type of listing enhancement has a discrete set of entry and appearance criteria set out in the Rules.
36 As to the functions of advertising data specialists (ADS), her Honour said, at [195]-[199]:
The process of updating an existing listing in the database involves calling up the customer’s record in the database and changing the information which will be used to generate the listing in the forthcoming issue of the directory using POST.
Each customer record in the Genesis database contains a number of different sections, including sections for the customer’s contact details, payment details and the directories in which the customer’s listings appear. The Genesis database also retains historical information about the details the customer has had published in any previous directory.
The “Listing Details” part of the record contains the information which is used to generate the customer’s listings. If the customer has more than one listing (for example, a WP listing and a YP listing, or two WP listings with different details), a separate record is stored in the database for each listing. A separate record is also stored for each issue of the directory in which that listing is to appear. An entry of a listing in a particular issue of a directory is known as an “item”. The “item” describes the type of listing which will appear in the specific issue of the directory, using the information stored in the “Listing Details” part of the record (for example, whether it will appear in bold type or capitals). If a listing is to be placed under three different headings, there will be three “items” linked to the same listing. This is also known as the “UDAC” for the entry. As noted in [135] above, “UDAC” stands for “Universal Directory Advertising Code”. There is a UDAC for every type of entry in the WPD and YPD, including a first entry or FE. An “item” is automatically generated for a first entry or FE.
The information which is held in the “Listing Details” section of the customer’s record includes the customer’s listed name (including any courtesy title), listed address (including the street number, street name, street type, locality name, state and postcode), listed telephone number (including area code, exchange prefix and line number, as well as the type of number, such as standard or mobile) and (for YPD listings) the initial heading under which the listing is to appear. It also includes any additional information which is to appear as part of the listing (such as an email address or other additional text).
To update the listing, the ADS calls up the item that will have been created for the forthcoming issue of the directory as part of the rollover process, and changes the details for the associated listing in accordance with the instructions obtained from the customer by the sales consultant, and the requirements of the Rules (see [140]-[144] above). As the ADS changes the information, it is automatically checked by the Genesis Computer System against reference tables stored in the RTMS containing all of the valid range of entries for that type of information. The Applicants accepted that there is a large amount of computer-aided error correction.
37 As to the work of customer operations associates, her Honour said, at [224] and [226]:
The Customer Operations Associate must then review the listing details to ensure that they are accurate, comply with the customer’s instructions and the relevant requirements of the Rules. If there are changes to be made to the listing information, those changes are automatically checked by the Genesis Computer System as they are entered against the same reference tables used by the Listing Maintenance application to check service order information. If there are no changes to be made to the listing information, the Customer Operations Associate creates a new “item” in relation to the listing by selecting the “WP Auto Scope” option. This enables the listing to appear as an FE [Free Entry] in the next issue of the WPD to which the listed address relates.
…
In addition to creating new FEs, Customer Operations Associates also deal with amendments to new and existing listings, and the removal of listings for disconnected customers, silent lines, and addresses which are suppressed in accordance with the requirements of the Rules.
38 As to the work of customer care consultants, her Honour said, at [232] and [235]:
The process of creating a new WPD listing involves creating a new record for the customer, with its associated listing information, in the Genesis database using the POST interface. This requires the Customer Care consultant to request the POST interface to create a new customer record, and then to fill in the details of that record based on the information obtained from the customer and the requirements of the Rules. This involves the same basic steps as updating an existing listing...
In addition to creating new FEs, Customer Care consultants are also responsible for handling requests to amend new or existing WPD listings (provided that the change is a simple one and does not involve any change to the advertising spend) and to cancel FEs (provided that the customer is not already assigned to a particular sales consultant).
39 In relation to the tasks of verifying the accuracy of the listing information to be published in the directories, and ensuring that it complies with the form of expression required by the Rules, her Honour found as to WPD publishing co-ordinators, at [247]-[251] and [260]-[262]:
[M]embers of the Publishing team known as “Publishing Co-ordinators” run a number of automated reports to identify any errors in the listing information which will be used to produce the listings that will appear in the directory. These reports are designed to ensure that the listing information is accurate and that the listings will appear in the sequence and format required by the Rules.
The reports which are run by the Publishing Co-ordinators are also known as the Book Close reports…They include:
1. Caption Arrangement Discrepancy Report and Numeric Dummy Header Report: these reports are designed to identify errors which would cause caption listings to appear incorrectly in the printed directory. A caption listing is a listing with more than one telephone number or an additional line of text.
2. Doctor Report: this report contains a list of all listings for doctors in the directory. It is designed to identify those that have not been entered into the database in such a way to ensure they are ordered by the individual’s surname, rather than the courtesy title “Dr”.
3. CSV / PLA Report: this report is designed to identify all listings which have been designated to be sorted out of alphabetical sequence, such as listings starting with a numeral or a symbol. For such listings, the Sensis worker creating the listing is required to specify how the listing is to be sorted in the “Place Listing As” (or “PLA”) field of the listing record. The PLA field is an instruction to the system to override the automated sorting rules for that finding name. The CSV / PLA Report is used to ensure that the order of these listings complies with the requirements of the Rules.
4. Invalid Bracing Report: This report is designed to identify errors which would cause braced listings to appear incorrectly in the printed directory. Braces are brackets which are used to group entries where there are more telephone numbers than listing lines or more listing lines than telephone numbers.
5. Numerics Report: This report contains a list of all listings in a particular directory containing numerals in the listed name but that do not have an entry in the PLA field. It is used to ensure that these listings are sorted correctly and in accordance with the requirements of the Rules.
6. Cross-Reference Report: This report contains a list of all listings in a particular directory that contain cross-references. It is used to ensure that these listings comply with the requirements of the Rules.
7. Silent Line Axis / Genesis Comparison Report: This report is designed to identify silent lines which have inadvertently been marked for publication in the directory, so that these listings can be removed if appropriate.
Any errors identified by the Book Close reports are corrected by members of the Publishing team or are directed to the Print and Online Operations team.
In addition, staff of the Customer Operations group run the following additional error reports after the Public Close date for a particular directory:
1. Courtesy Title in Finding Name Report: This report is designed to identify errors which would cause listings to be sorted by courtesy title, rather than finding name, contrary to the requirements of the Rules.
2. Duplicate Business Number Report: This report identifies duplicate business listings in the directory.
3. Too Many Initials Residential Report: This report identifies complimentary listings that have been inserted with more initials than are permitted under the Rules.
Any errors identified by these reports are corrected by members of the Customer Operations group.
…
After the galley file has been created, Publishing Co-ordinators run further reports to ensure that the listings to be printed in the directory have been extracted correctly and that their appearance will comply with the requirements of the Rules. Where the Genesis Computer System identifies issues, they are corrected manually in the galley file by the Publishing team.
In addition to these automatic checks, Publishing Co-ordinators also conduct a series of manual checks, known as “alpha checks” on the galley file (see [155] above), including:
1. checking the beginning of each alphabetical section to ensure that the listings in each section appear in the correct alphabetical order (for example, ensuring that a customer with the name “A Thompson” does not appear under the letter “A”);
2. checking that the galley file has been built correctly and that there are no listings that commence before the letter “A”;
3. checking that the listings beginning with courtesy titles such as “Mr” or “Ms” are sorted correctly (these titles cannot appear at the start of a listing unless it is a registered business name);
4. checking that all dependent-word listings (ie, listings with prefixes such as surnames beginning with “Van” or “De La”) are sorted correctly; and
5. checking that no anomalous listings have been placed at the end of the “Z” section as a result of an incorrect PLA.
After the galley file has been built, Publishing Co-ordinators also action “Late Change Requests”. These are requests from various groups within Sensis such as Customer Care, Customer Operations and Print and Online Operations to update customers’ details after the LLAD. On average, Publishing Co-ordinators can make anywhere between zero and 25 late change requests in each regional WPD each year (being composed of some thousands of listings).
40 As to the role of paginators in respect of each galley file, her Honour said, at [263], [266]-[267] and [323]:
Once the galley file is ready for pagination, the Publishing Co-ordinators release the galley file to members of the publishing team known as the “Paginators” (see also [157]-[160] above). The pagination process involves determining the layout of the listings and display advertisements that appear on each page of any given directory, in accordance with the requirements of the Rules. The typesetting process involves the automated incorporation of display advertisements from the Ad Production Database into the paginated pages of the directory, and the pages being converted into a final PDF format for publication. These processes are conducted separately for each WPD and YPD, even where they are co-bound into a single volume. The role of Paginators in respect of any WPD or YPD is the same regardless of the region that the directory covers.
…
After pagination, the final structure of the directory is determined by adding the number of pages of listings to the initial structure of the directory and determining how many pages in total the directory is to contain. For printing purposes, the number must be divisible by eight, so the number of pages is adjusted accordingly by reducing the number of information pages or increasing the overall number of pages with filler advertisements.
The final stage in the publication process is typesetting of the paginated pages. This involves bringing the display advertisements from the Ad Production Database into the paginated pages and converting the pages into the format in which they will be provided to the printers. This is also initiated by running a software routine, known as Typesetting Page Production, via RTMS.
…
As mentioned at [160] above, a YPD generally takes longer to paginate than a WPD (between 1.5 to 2.5 days), due to the fact that the classified section of the directory contains more listings (and therefore more pages that require checking and / or repagination) and the Rules governing the positioning of display advertisements are more complex than those that apply to the alphabetical sequence of the directories.
41 As to the work of YPD telesales consultants and account executives, her Honour said, at [278]-[279] and [292]:
The role of a YPD sales consultant is broadly the same as that of a WPD sales consultant. In particular, YPD sales consultants also apply the “Six Step Consultative Sales Process” to ascertain the customer’s business needs and make recommendations to the customer about the form that their listing or listings should take in the next issue of the directory…This includes making recommendations about the customer’s first entry listing, as well as any enhanced or additional listings.
However, in addition to ascertaining what form of listing or listings will best suit the customer’s need, the role of the YPD consultant is also to assist the customer to place their listing under an appropriate heading. This requires the consultant to be aware of the range of headings that relate to the products and services provided by the customer (these are known as “allied headings”) and to advise the customer. It is also a requirement of the Rules that the listing placed by the customer relate to the business activity described by the heading. Accordingly, the Account Executive attempts to ensure that the products and services described in the listing fall within the heading category under which the listing will appear.
…
When a customer’s listing information has been obtained by a telesales consultant, the consultant records the listing details in the form of a voice recording and enters the details into the Genesis database using the POST interface, just like a WPD telesales consultant.
42 As to the work of contract verification specialists, her Honour said, at [290]:
If the contract passes the SCC’s quality check, it is forwarded to the Print and Online Operations group. There, it is received and checked by a CVS. The role of the CVS is to conduct a more detailed review of the information contained in the contract, and to ensure that the listing information contained in the contract is consistent, accurate and complies with the Rules. There are approximately 37 staff employed in this role nationally, located in the same centres as the other members of the Print and Online Operations group. Like the other members of the Print and Online Operations group, the CVS team includes employees and contractors (see Part D(2) above).
43 As to the activities of the “checking the checkers team”, her Honour said, at [294]:
[I]n addition to the checks conducted on YPD contracts before the listing information is entered into the Genesis database, there is also a team of three Sensis personnel known as the “Check the Checkers” team who are responsible for reviewing a 10 per cent sample of the listing records for YPD customers created or updated by ADS and the display advertisements created or updated by Artists and checked by Editors (see [145] above). The team comprises one permanent employee and two contractors supplied by external recruitment agencies (see Part D(2) above). This team checks to ensure that the listing record created by the ADS or Artist accords with the customer’s instructions and with the requirements of the Rules.
44 As to the activities of the customer changes consultants, her Honour said, at [299]:
If the customer contacts Sensis by letter, facsimile or email, then the changes will be made by members of the Changes group. A national team of approximately 38 employees is responsible for making changes to YPD listing details in response to requests from customers. The team consists of approximately 27 Customer Changes Consultants (who perform a role similar to that of an ADS) seven Artists and Editors, management and support staff. Customer Changes Consultants update listing information in the Genesis database using the POST interface in the same way as ADS or Customer Care consultants, having regard to the requirements of the Rules. The role of a Customer Changes Consultant is the same in relation to any YPD regardless of the region that the directory covers.
45 As to the work of the YPD publishing co-ordinators, her Honour said, at [309] and [318]:
Also like the WPD directories (see [248] above), a series of reports are run prior to the extraction of listing information to ensure that the listing information is accurate and will appear in the sequence and format required by the Rules. In the case of the YPDs, these reports are run…before Book Extract. Some of these reports are equivalent to reports run in relation to the WPD. Others have no equivalent in relation to the WPD:
1. Delimiter Inconsistency Report: this report is designed to identify errors in the placement of a delimiter in the “finding name” for a listing which would cause it to appear in an incorrect sequence in the printed directory.
2. DSP Report: this report is designed to identify errors in the positioning of display advertisements in the printed directory. These advertisements are the subject of separate positioning rules, depending on the size and date of placement of the advertisement.
3. Brand Report: this report is designed to identify all listings in the relevant directory that have brand names within the listing (ie, where the name in the listing does not necessarily correspond to the name of the business). It is designed to ensure that these listings have been capitalised correctly and will appear in the correct sequence in the printed directory.
4. Check No Print Report: this report is designed to identify errors in the designation of paid listings for publication. All listings that are to be published in the directory must be marked with a status of “Publish”.
5. Invalid Items Report: this report is designed to identify listings that are allocated under headings that no longer exist, and will therefore not appear in the printed directory.
6. Graphic Items in Caption Report: this report is designed to identify errors in the appearance of listings containing graphic items (such as a logo).
7. CSV Special Characters Report: this report contains a list of all listings that have inverted commas in the listed name but do not have a PLA. Without a PLA to override the sorting rules applied at Book Extract, these listings will not appear in the correct sequence in the directory.
8. BTR / BTEN Report: this report is designed to identify bold type listings that have been incorrectly designated as a caption listing, which would cause them not to appear in the correct format in the printed directory.
…
After the galley file has been created, Publishing Co-ordinators run further reports to ensure that all of the listings and display advertisements which are to be printed in the directory have been extracted correctly and that their appearance will comply with the requirements of the Rules. If there are errors identified at this stage, they are either corrected by the publishing team or by members of the Print and Online Operations group.
46 As to the activities of lead management team, her Honour said, at [240]-[241]:
Where a lead for a new customer is entered into the Lead Management Tool, Sensis personnel within a team known as the Lead Management team are responsible for verifying the information entered into the Lead Management Tool, creating a provisional customer record for the customer in the Genesis database (if one does not already exist), and allocating the customer to a sales consultant in accordance with the relevant allocation policies. There are currently 13 members of the Lead Management team, approximately half of whom are contractors (see Part D(2) above).
The provisional customer record is created using the POST interface based on the information submitted with the lead. It is effectively a “draft” record or “shell” for the customer which contains some or all of the customer’s listing details but remains to be finalised by the sales staff to whom the lead is allocated. Provisional records are only created for customers who have not previously appeared in any WPD or YPD, and therefore do not exist in the Genesis database. These are known as “DNE” (Do Not Exist) customers.
47 In relation to the tasks of devising and implementing the computer systems that give effect to the form of expression and presentation required by the Rules, her Honour found as to the roll-over operation, at [175]-[176]:
The rollover process for the next issue of a WPD is initiated by personnel scheduling the relevant batch applications to be run via the RTMS in the Genesis Computer System. The rollover process is usually commenced as soon as the previous issue of the directory has been extracted from the Genesis database and is being readied for publication. The steps taken for the rollover are the same in relation to each WPD regardless of the geographic region that the WPD covers.
…the rollover process creates a template or first draft which is, in significant part, a repetition of substantial parts of the previous directory. As Mr Pagnin, a Business Analyst employed by Sensis, said in evidence, the previous year’s directory “constitute[s] the core of the [following] directory”.
48 Her Honour rejected an attempt by the appellants to rely upon the presumption as to the subsistence of copyright erected by s 128 of the Act. Her Honour held that, in point of principle, the appellants’ reliance upon s 128 was misplaced. Her Honour gave several reasons for that conclusion. It is sufficient for present purposes to refer to her Honour’s reasons at [39] and [41]:
[T]he presumptions have little or no role to play where the question of subsistence of copyright in each of the Works is the issue between the parties and has been the subject of extensive evidence (91 affidavits from the Applicants and two affidavits from the Respondents).
…
[T]he Applicants seem to ignore a number of important facts and matters. It was they who filed the evidence on the question of subsistence. That was their choice. They are bound by their decision…Put simply, the Applicants’ submission falls between two stools – it seeks to rely upon evidence to establish the subsistence of copyright to a point and then when it gets too difficult (legally or factually) they resort to the presumptions.
(Original emphasis.)
THE ARGUMENTS OF THE parties IN THIS COURT
49 The appellants, in contending that the learned trial judge ought to have determined that copyright does subsist in the WPD and YPD, argue that her Honour ought to have held that copyright subsists in these works because they are original literary works in terms of s 32(2)(c) of the Act and their first publication took place in Australia. The appellants say that the learned trial judge erred in failing to appreciate that the necessity for the identification of authors spoken of in IceTV is concerned only with the question whether the works are original and in treating the identification of the authors as if it were a separate pre-condition for the subsistence of copyright.
50 The appellants argue that the trial judge ought to have held that, notwithstanding the computer automation involved in the production of the Works, the extent of the contribution of individual authors to the production of the WPD and YPD was not such as to detract from the subsistence of copyright in the WPD and YPD. The appellants argue that the learned trial judge ought to have held that it is not necessary to identify all of the individuals who contributed to the compilation of each WPD or YPD, “provided that intellectual effort or productive thought has been shown to have been applied by individuals involved in producing the expression of the work”. The appellants say that her Honour erred in holding that none of the individuals involved in compiling the WPD and YPD exercised “independent intellectual effort” or “sufficient effort of a literary nature” to be regarded as authors of the works, and that therefore the works were not “original literary works” in terms of s 32 of the Act. In particular, it is said that her Honour:
failed to appreciate that the effort of the individuals involved in selecting, ordering and arranging the information in material form was original intellectual effort;
failed to appreciate that the intellectual effort of the individuals involved in identifying and advising upon the selection of material for inclusion and the form in which that material should be presented, in creating entries containing that material, and in ensuring the completeness and accuracy of those entries and their ultimate presentation in the WPD and the YPD was original intellectual effort;
failed to appreciate that original intellectual effort was involved in the use of computer systems to give effect to the Rules;
wrongly disregarded original intellectual effort directed to the application of the Rules and the maintenance and operation of the various computer systems used in the production of the WPD and YPD.
51 The appellants argue, in the alternative, that her Honour erred in failing to hold that each of the WPDs and YPDs were produced by the collaboration of the individuals involved in compiling them and were therefore works of joint authorship under the Act.
52 The appellants also argue that her Honour erred in holding that the presumption of the subsistence of copyright under s 128 of the Act had been rebutted by the evidence
53 The principal focus of the respondents’ argument is upon the nature of the WPDs and YPDs as compilations expressed in words, figures, or symbols. It is each compilation as a whole with which one is concerned to ask whether it originated from an individual. They argue that each compilation was not fixed in its material form until the stage in the production process at which the galley files are produced and this compilation was effected by the Genesis Computer System. The WPDs and YPDs do not exist in a material form until this stage of the process: indeed they do not even exist as a concept in the mind of any individual, save at a high level of generality far removed from the actual form and content of each compilation. The works, being compilations, did not exist at all until this stage of the process. On this view, the conclusion is irresistible that the actual compilation was effected by the Genesis Computer System.
54 As to the appellants’ fall-back position that the directories are works of joint authorship, the respondents rely upon the trial judge’s conclusion that the directories are not the product of collaborative authorship by the individuals who provide input to the automated process of compilation or corrections to matters of detail in the compilations produced by that process.
55 As to the appellants’ reliance upon s 128 of the Act, the respondents rely upon the trial judge’s conclusions relating to the production of the directories, established by the evidence, to show that the presumptive operation of s 128 had been displaced.
CONSIDERATION OF THE ARGUMENTS
General Observations
56 It is worth repeating at the outset the point that the work in suit in this case is not the Genesis database from which the WPD and YPD are derived, nor the software that is deployed in the storage and reproduction of the information presented in the form of the compilations being the WPD and YPD. Rather the works in suit are the WPDs and YPDs for each regional area. Whether copyright subsists in these works depends on whether each of these works is an original literary work.
57 Next, it may be accepted, for the sake of argument, that there is force in the appellants’ criticism of the trial judge’s insistence on the identification of all the “authors”. One may accept that identification by name of each and every author is not necessary in order to make out a claim that copyright subsists under s 32(2)(c): what is necessary, however, is that it be shown that the work in question originates from an individual author or authors.
58 It may also be accepted that the level of intellectual effort necessary to produce an original literary work is not required to rise to the level of “creativity” or “inventiveness”. In determining whether a literary work is original, the focus of consideration is not upon creativity or novelty, but upon the origin of the work in some intellectual effort of the author.
59 That having been said, there can be no doubt that a person who is “a mere scribe” is not an author for the purposes of the Act: see Walter v Lane [1900] AC 539 at 554; Sands & McDougall Proprietary Limited v Robinson (1917) 23 CLR 49 at 54-55. The name and address of a particular subscriber does not relevantly “originate” with an employee who takes a note of these details from the subscriber. This information is factual in its nature: it is not “created” by the person who merely records it: see Feist Publications Inc v Rural Telephone Service Co Inc (1991) 499 US 340 at 347. Nor does the form of the compilation originate with the individual who engages the mechanical processes to produce the compilation.
60 With those general observations in mind, I turn now to a consideration of the decision of the High Court in IceTV and its implications for the determination of the present case.
IceTV
61 In IceTV, Nine Network Australia Pty Ltd (Channel Nine) alleged an infringement of its copyright in literary works being compilations which were weekly schedules of television programmes. Channel Nine’s weekly schedules involved the use of a database on Channel Nine’s computer network to produce each weekly schedule of programmes stating times and titles for a broadcast week. The weekly schedules also contained other information including classification, consumer advice information and programme synopses. These weekly schedules were used by aggregators who obtained similar information from other broadcasters to produce aggregated guides.
62 IceTV produced an electronic programme guide for television which, when downloaded, displayed details of Channel Nine’s programmes and times of broadcast. Channel Nine alleged that this conduct by IceTV infringed Channel Nine’s copyright in its weekly schedules by reproducing in a material form a substantial part of each weekly schedule. The guide prepared by IceTV reflected the date, time and title information from the relevant aggregated guide. The alleged infringement consisted of the indirect reproduction of the words, figures and symbols, and the chronological arrangement, in which the time and title information was espoused.
63 IceTV conceded that copyright subsisted in each of Channel Nine’s weekly schedules, but denied any infringement. The matter in issue was whether the time and title information which was reproduced by IceTV was a “substantial part” of the weekly schedules.
64 The learned trial judge in that case rejected Channel Nine’s claim of infringement on the ground that IceTV had adopted its own form of presentation of the time and title information, and had drafted its own additional information such as synopses of programmes. Her Honour held that the time and title information did not bear substantial importance in relation to the originality of the weekly schedules as a whole.
65 The Full Court of the Federal Court allowed Channel Nine’s appeal holding that there was a reproduction by IceTV of the time and title information which was the “centrepiece” of Channel Nine’s weekly schedules. The reasoning of the Full Court focused upon the appropriation by IceTV of the benefit of the skill and labour of Channel Nine’s employees.
66 The High Court of Australia reversed the decision of the Full Court of the Federal Court. The reasons of the High Court make it clear that a general concern to prevent the appropriation of the skill and labour of another should not obscure the limited basis on which the monopoly in copyright is conferred by the Act. French CJ, Crennan and Kiefel JJ said at (2009) 239 CLR 458 at [28]:
Copyright does not protect facts or information. Copyright protects the particular form of expression of the information, namely the words, figures and symbols in which the pieces of information are expressed, and the selection and arrangement of that information. That facts are not protected is a crucial part of the balancing of competing policy considerations in copyright legislation. The information/expression dichotomy, in copyright law, is rooted in considerations of social utility. Copyright, being an exception to the law's general abhorrence of monopolies, does not confer a monopoly on facts or information because to do so would impede the reading public's access to and use of facts and information. Copyright is not given to reward work distinct from the production of a particular form of expression.
(Footnotes omitted).
67 Similarly, Gummow, Hayne and Heydon JJ emphasised that an inquiry focused upon “Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error”, (2009) 239 CLR 458 at [52].
68 As to the importance of authorship in relation to the protection of copyright afforded by the Act, French CJ, Crennan and Kiefel JJ said at [22]-[26]:
The “author” of a literary work and the concept of “authorship” are central to the statutory protection given by copyright legislation, including the Act.
…
In assessing the centrality of an author and authorship to the overall scheme of the Act, it is worth recollecting the longstanding theoretical underpinnings of copyright legislation. Copyright legislation strikes a balance of competing interests and competing policy considerations. Relevantly, it is concerned with rewarding authors of original literary works with commercial benefits having regard to the fact that literary works in turn benefit the reading public.
In both its title and opening recitals, the Statute of Anne of 1709 echoed explicitly the emphasis on the practical or utilitarian importance that certain seventeenth century philosophers attached to knowledge and its encouragement in the scheme of human progress. The “social contract” envisaged by the Statute of Anne, and still underlying the present Act, was that an author could obtain a monopoly, limited in time, in return for making a work available to the reading public.
Whilst judicial and academic writers may differ on the precise nature of the balance struck in copyright legislation in different places, there can be no doubt that copyright is given in respect of “the particular form of expression in which an author convey[s] ideas or information to the world”.
(Footnotes omitted.)
69 To similar effect are the observations of Gummow, Hayne and Heydon JJ at [95]-[97]:
Something should be said respecting two fundamental principles of copyright law and their treatment in the course of the litigation.
…
The first principle concerns the significance of “authorship”. The subject matter of the Act now extends well beyond the traditional categories of original works of authorship, but the essential source of original works remains the activities of authors. While, by assignment or by other operation of law, a party other than the author may be owner of the copyright from time to time, original works emanate from authors. So it was that in Victoria Park Racing and Recreation Grounds Co Ltd v Taylor, Dixon J observed:
Perhaps from the facts a presumption arises that the plaintiff company is the owner of the copyright but, as corporations must enlist human agencies to compose literary, dramatic, musical and artistic works, it cannot found its title on authorship. No proof was offered that the author or authors was or were in the employment of the company under a contract of service and that the book was compiled or written in the course of such employment.
Key provisions of Pt III of the Act fix on “the author”. Examples include the requirement for the author of unpublished works to be a “qualified person” for copyright to subsist (s 32(1)), the fixing of copyright duration by reference to the death of the author (s 33), and the conferral of copyright upon the author subject to the terms of employment or contractual arrangements under which the author labours (s 35). In the latter respect, s 35(6) relevantly provides:
Where a literary...work...is made by the author in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright subsisting in the work by virtue of this Part.
(Footnotes omitted.)
70 Gummow, Hayne and Heydon JJ went on to discuss the concept of authorship in the context of computer-generated works and works of compilation produced by the efforts of more than one individual. Their Honours said at [98]-[99]:
Like the Copyright Act 1956 UK (the 1956 Act) in its original form, the Act does not define the term “author” beyond the statement that in relation to a photograph it is the person who took that photograph. As a result of changes made by the 1988 UK Act, in relation to a work “author” means the person “who creates it”; in the case of a “computer-generated” work this is taken to be “the person by whom the arrangements necessary for the creation of the work are undertaken”. No such provision is made in the Australian statute, but the notion of “creation” conveys the earlier understanding of an “author” as “the person who brings the copyright work into existence in its material form”.
Where a literary work is brought into such existence by the efforts of more than one individual, it will be a question of fact and degree which one or more of them have expended sufficient effort of a literary nature to be considered an author of that work within the meaning of the Act. If the work be protected as a “compilation”, the author or authors will be those who gather or organise the collection of material and who select, order or arrange its fixation in material form. May there be joint authors of the one original work, rather than several authors each of a distinct work?
(Footnotes omitted.)
71 It is convenient to pause here to note their Honour’s reference to the availability of the protection of copyright in a compilation to “the author or authors…who gather or organise the collection of material and who select, order or arrange its fixation in material form.” Their Honours were referring to the individuals who are engaged in the task of compilation of the work considered as a whole. Their Honours were also making the point that authorship of a compilation encompasses a number of tasks. In this Court, there was a dispute between the parties as to whether their Honours’ description of the activities involved in compilation should be read disjunctively or conjunctively. I respectfully consider that their Honours’ description must be read conjunctively: the mere collection of data cannot be sensibly regarded as compilation. I would also suggest that the editorial correction of errors at the proofing stage of a compilation cannot be regarded as authorship.
72 In order to answer the question whether a literary work is an original literary work in the sense of being the product of human authorship, one must focus on the precise work in which copyright is said to subsist. In IceTV, Gummow, Hayne and Heydon JJ said relevantly at [102]-[105]:
It is well established that copyright does not subsist in a work unless and until the work takes some material form, so that protection:
does not extend to the ideas or information contained in the work and a balance is struck between the interests of authors and those of society in free and open communication.
Section 32 lays down the requirement for identifying the original work of the author. This relevantly provides for copyright to subsist in unpublished works where the author was a qualified person “at the time when the work was made” (s 32(1)(a)) and for copyright to subsist in published works where the “first publication” took place in Australia (s 32(2)(c)). In the case of the former, the time of making means the first reduction to “writing” or “some other material form” (s 22(1)) while “publication” occurs by supply of reproductions of the work to the public (s 29(1)). Publication may be done anonymously (s 34) and special provision is made for the copyright duration in respect of such works (s 34(1)). However, this has no application if the identity of the author of the work is generally known or can be obtained by reasonable inquiry (s 34(2)).
The definitions of “material form” and “writing” are (s 10(1)):
material form, in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced).
...
writing means a mode of representing or reproducing words, figures or symbols in a visible form ...
…
The exclusive rights comprised in the copyright in an original work subsist by reason of the relevant fixation of the original work of the author in a material form. To proceed without identifying the work in suit and without informing the inquiry by identifying the author and the relevant time of making or first publication, may cause the formulation of the issues presented to the court to go awry.
(Footnotes omitted, emphasis in original.)
73 In IceTV, originality was explained by French CJ, Crennan and Kiefel JJ, in the context of subsistence of copyright (2009) 239 CLR 458 at [33]:
The requirement for copyright subsistence that a literary work be “original” was first introduced into the Copyright Act 1911 (Imp), although it had already been recognised at common law. Originality for this purpose requires that the literary work in question originated with the author and that it was not merely copied from another work. It is the author or joint authors who bring into existence the work protected by the Act. In that context, originality means that the creation (that is the production) of the work required some independent intellectual effort, but neither literary merit nor novelty or inventiveness as required in patent law.
(Footnotes omitted, emphasis in original.)
74 This understanding of originality echoes that of Peterson J (and cited by Gibbs CJ in Computer Edge Proprietary Limited v Apple Computer Inc (1986) 161 CLR 171, at 182-3) in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, at 608-10:
The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work – that it should originate from the author.
the earlier authorities
75 Cases decided prior to the 1911 Copyright Act (UK) had emphasised the need to protect the value of skilled labour and expense which had gone into compilation. Vice-Chancellor Sir George Giffard said in Morris v Ashbee (1868) LR 7 Eq 34 (at 40-1):
The plaintiff incurred the labour and expense first of getting the necessary information for the arrangement and compilation of the names as they stood in his directory, and then of making the actual compilation and arrangement…no one has a right to take the results of the labour and expense incurred by another for the purposes of a rival publication, and thereby save himself the expense and labour of working out and arriving at these results by some independent road.
76 Sir W Page Wood VC (as Lord Hatherley then was) said in Kelly v Morris (1866) LR 1 Eq 697, at 701-2:
In the case of a dictionary, map, guide-book, or directory, when there are certain common objects of information which must, if described correctly, be described in the same words, a subsequent compiler is bound to set about doing for himself that which the first compiler has done. In case of a road-book, he must count the milestones for himself. In the case of a map of a newly-discovered island…he must go through the whole process of triangulation just as if he had never seen any former map, and, generally, he is not entitled to take one word of the information previously published without independently working out the matter for himself, so as to arrive at the same result from the same common sources of information, and the only use that he can legitimately make of a previous publication is to verify his own calculations and results when obtained. So in the present case the defendant could not take a single line of the Plaintiff's Directory for the purpose of saving himself labour and trouble in getting his information.
77 In Walter v Lane [1900] AC 539, a speech (delivered in public by Lord Rosebery) was copied in shorthand by a reporter and then reported in The Times. A permanent injunction was granted to stop the defendant from copying this report. Chief among their Lordships’ considerations was that the defendants should not be able to “reap where they have not sown” (see Lord Davey at 552, Lord Halsbury at 545).
78 These and other authorities were discussed at length, and in depth, by Lindgren J in the Full Court of the Federal Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491. Having reviewed the authorities, Lindgren J said, at [160]:
Decisively for the present case, there is no principle that the labour and expense of collecting, verifying, recording and assembling (albeit routinely) data to be compiled are irrelevant to, or are incapable of themselves establishing, origination, and therefore originality; on the contrary, the authorities strongly suggest that labour of that kind may do so: cf Matthewson v Stockdale; Longman v Winchester; Kelly v Morris; Scott v Stanford; Morris v Ashbee; Cox v Land and Water Journal Co; Morris v Wright; Hogg v Scott; Ager; Collis; Weatherby; ACP v Morgan; Autospin and the recent Indian case, Burlington's Home Shopping Ltd v Chibber (1995) Patent & Trademark Cases 278 (noted in Pravin Anand, “Burlington's Home Shopping Ltd v Chibber”, (1995) 6 Ent L Rev 159, in which the Delhi High Court, not following Feist, held that a computer database of mail order customers (names, addresses, telephone and fax numbers) was protected as a compilation within the definition of literary work).
79 The reasoning of all the judges of the High Court in IceTV requires a revision of the relevance of skill and labour to the subsistence of copyright. In IceTV, French CJ, Crennan and Kiefel JJ said at (2009) 239 CLR 458 at [47]:
Much has been written about differing standards of originality in the context of the degree or kind of “skill and labour” said to be required before a work can be considered an “original” work in which copyright will subsist. “Industrious collection” or “sweat of the brow”, on the one hand, and “creativity”, on the other, have been treated as antinomies in some sort of mutually exclusive relationship in the mental processes of an author or joint authors. They are, however, kindred aspects of a mental process which produces an object, literary work, a particular form of expression which copyright protects. A complex compilation or a narrative history will almost certainly require considerable skill and labour, which involve both “industrious collection” and “creativity”, in the sense of requiring original productive thought to produce the expression, including selection and arrangement, of the material.
It may be that too much has been made, in the context of subsistence, of the kind of skill and labour which must be expended by an author for a work to be an “original” work. The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort. Be that as it may, as noted previously, since the subsistence of copyright need not be considered in this appeal, the relevance of skill and labour to that inquiry need not be considered further.
(Footnotes omitted.)
80 Their Honours commented further regarding the relevance of skill and labour with regard to infringement at (2009) 239 CLR 458 at [52]-[54]:
Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error. The error is of a kind which might enable copyright law to be employed to achieve anti-competitive behaviour of a sort not contemplated by the balance struck in the Act between the rights of authors and the entitlements of the reading public. The Act mandates an inquiry into the substantiality of the part of the work which is reproduced. A critical question is the degree of originality of the particular form of expression of the part. Consideration of the skill and labour expended by the author of a work may assist in addressing that question: that the creation of a work required skill and labour may indicate that the particular form of expression adopted was highly original. However, focussing on the “appropriation” of the author’s skill and labour must not be allowed to distract from the inquiry mandated by the Act. To put aside the particular form of expression can cause difficulties, as evidenced by Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd.
…
[T]he critical question is whether skill and labour was directed to the particular form of expression of the time and title information, including its chronological arrangement. The skill and labour devoted by Nine’s employees to programming decisions was not directed to the originality of the particular form of expression of the time and title information. The level of skill and labour required to express the time and title information was minimal. This is not surprising, given that, as explained above, the particular form of expression of the time and title information is essentially dictated by the nature of that information.
(Footnotes omitted.)
81 Gummow, Hayne and Heydon JJ were of a similar opinion, saying at (2009) 239 CLR 458 at [130]-[131]:
[S]everal points should immediately be made concerning the focus by the primary judge and the Full Court upon the skill and labour “of Nine” in their treatment of infringement.
The first is to emphasise the dangers when applying the Act of adopting the rhetoric of “appropriation” of “skill and labour”. A finding that one party has “appropriated” skill and labour, of itself, is not determinative of the issue of infringement of a copyright work. The Act does not provide for any general doctrine of “misappropriation” and does not afford protection to skill and labour alone.
(Footnotes omitted.)
82 The dicta in IceTV shift the focus of inquiry away from a concern with the protection of the interests of a party who has contributed labour and expense to the production of a work, to the “particular form of expression” which is said to constitute an original literary work, and to the requirement of the Act “that the work originates with an author or joint authors from some independent intellectual effort”.
desktop marketing
83 The appellants place particular reliance upon the decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491. In that case the Full Court of the Federal Court held that telephone directories were “original” works in which copyright subsisted because “Telstra had undertaken substantial labour and incurred substantial expense” ((2002) 119 FCR 491 at 599) in compiling and presenting the details of telephone subscribers in a particular region. It was held that there had been an infringement of this copyright by reason of the appropriation of “the benefit of Telstra’s substantial labour and expense” ((2002) 119 FCR 491 at 535-536, 600).
84 In Desktop Marketing at (2002) 119 FCR 491 at [25]-[159], Lindgren J reviewed the English and Australian cases on the subsistence of copyright in compilations. It is important to appreciate that these cases were concerned principally with the issue of the sufficiency of intellectual effort necessary to the subsistence of copyright in a work. None of these cases were concerned with the impact of automation on the process of compilation. Desktop Marketing itself was not concerned with the impact of automation on the process of compilation. The only issue considered in Desktop Marketing in relation to the subsistence of copyright concerned the sufficiency of intellectual effort in compilation necessary for the subsistence of copyright. In the resolution of this issue, the protection of the skill and labour involved in compiling a work was regarded as the decisive consideration. The reasons of the High Court in IceTV for the determination of the present case indicate authoritatively that too much emphasis on protecting another’s skill and labour is apt to skew the enquiry as to the subsistence of copyright away from the centrality of authorship.
85 In Desktop Marketing the subsistence of copyright in the telephone directories was in issue only in relation to the sufficiency of intellectual effort necessary to characterise a work as original. The implications of automation for the subsistence of copyright did not arise for consideration. For that reason it cannot be treated as decisive of the question for determination in this case. There is reason to regard the assumptions on which the court proceeded in Desktop Marketing with scepticism. In IceTV Gummow, Hayne and Heydon JJ said of the decision in Desktop Marketing, at [134]:
However, a reason to treat the decision in Desktop Marketing with particular care appears from the reasons of the trial judge. Finkelstein J had observed:
There are literally hundreds of appropriately trained or qualified employees who make some contribution towards the production of a telephone directory. When the nature of the work they do is described, there arise three relevant questions to the subsistence of copyright: (a) Must a copyright work have an author? (b) Does a telephone directory have an author? (c) Is every employee who contributes to the final product a joint author of the directory? These are difficult questions for which there are no ready answers.
Finkelstein J went on to explain that the parties had sought to elucidate none of those issues in the litigation, with the consequence that, as here, the relevant author or authors of the work in suit remained unidentified.
86 On behalf of the appellants, it is argued that this case can be decided in favour of the respondents only if all the cases which have upheld claims to copyright in compilations (which are collected in Desktop Marketing) can be said to have been wrongly decided. But that is not so. None of those cases, nor Desktop Marketing itself, involved automated compilation as opposed to compilation by individuals. The decision of this Court in Desktop Marketing (and the older cases to which it referred) did not advert at all to the effect of an automated process in the making of the compilation in respect of which copyright was said to subsist.
the appellants’ principal argument
87 The appellants argue that s 32(2)(c) does not, in contrast to s 32(1), speak of authorship. But even where copyright subsists by virtue of s 32(2)(c), it subsists only in an original literary work, that is to say, a literary work which originates in the intellectual effort of an individual. The appellants’ principal argument can be seen, I think, to involve two basal propositions: first, the proposition of law that the activities said in IceTV at [99] to be involved in compilation must be understood disjunctively; and, secondly, the proposition that the activities of individuals in the gathering of data, its transmission to the Genesis Computer System, and the checking and pagination of the galley files produced by Genesis, are of such significance as to warrant the conclusion of fact that those activities constituted the compilation of the directories.
88 I am unable to accept either of these propositions. The first involves a misunderstanding of what was said in the relevant passage from IceTV. The second proposition is denied by the central importance of the automated process to the compilation of the directories.
89 The compilation of the directories was overwhelmingly the work of the Genesis Computer System or its predecessors. The selection of data and its arrangement in the form presented in each directory occurred only at “the book extract” or “book production” process. The compilations which emerged from the operation of the computer system do not originate from an individual or group of individuals. Indeed, none of the individuals who contributed to the production of the directories had any conception of the actual form in which they were finally expressed.
90 In my respectful opinion, the decision of the trial judge must be upheld on the basis that the findings of primary fact made by her Honour establish that the WPDs and YPDs are not compiled by individuals but by the automated processes of the Genesis Computer System or its predecessors. That being so, it is neither necessary nor relevant to seek to come to a conclusion as to the sufficiency of the intellectual effort deployed by those individuals who provide data input to the computerised database. Their activities are not part of the activity of compilation: they do not select, arrange and present that data in the form in which it is published.
JOINT AUTHORSHIP
91 I respectfully agree with the trial judge that the directories cannot be regarded as a work of joint authorship.
92 The contributions of individuals discussed in her Honour’s findings may have been precursors to the compilation of the directories but they were not part of the actual compilation. Moreover, the work of these individuals was not collaborative. It was, no doubt, organised to facilitate the production of the directories but this organisation was not collaboration of the kind contemplated by the definition of joint authorship, and the contribution of each of the groups of individuals referred to earlier was made quite separately.
the presumption in section 128 of the act
93 For the purposes of s 128 of the Act, there is a difference between the conclusion that there is insufficient evidence to support a conclusion one way or the other as to whether copyright subsists in a work, and the conclusion that such evidence as has been adduced precludes the conclusion that copyright subsists in accordance with those requirements. There is scope for the operation of s 128 in the first case, but not in the second: see Microsoft Corporation v PC Club Australia Pty Ltd (2005) 67 IPR 262 at 296.
94 The evidence which was adduced at trial did not leave the trial judge in the state of agnosticism involved in the first case: rather, her Honour was persuaded to the conclusion that, on the facts as proved, copyright did not subsist. That being so, there was no scope for the operation of s 128 of the Act.
CONCLUSION AND ORDERS
95 In my respectful opinion, the decision of the trial judge was correct.
96 The reasons of the High Court in IceTV authoritatively establish that the focus of attention in relation to the subsistence of copyright is not upon a general concern to prevent misappropriation of skill and labour but upon the protection of copyright in literary works which originate from individuals. In this case copyright was said to subsist in the directories as compilations, but the directories were not compiled by individuals.
97 In IceTV the High Court recognised, at [52] and [135]-[139], that this focus may give rise to a perception of injustice on the part of those whose skill and labour has been appropriated. Whether or not that means that legislative reform of the kind adopted in the European Union by the Directive of the European Parliament and of the Council on the Legal Protection of Databases is warranted is a matter for the legislature. This Court can give effect to the statutory monopoly conferred by the Act only in conformity with the terms of the Act.
The appeal must be dismissed with costs.
I certify that the preceding ninety-seven (97) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Chief Justice Keane. |
Associate:
IN THE FEDERAL COURT OF AUSTRALIA | |
VICTORIA DISTRICT REGISTRY | |
GENERAL DIVISION | VID 147 of 2010 |
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA |
BETWEEN: | TELSTRA CORPORATION LIMITED (ACN 051 775 556) First Appellant SENSIS PTY LTD (ACN 007 423 913) Second Appellant
|
AND: | PHONE DIRECTORIES COMPANY PTY LTD (ACN 059 776 091) First Respondent AUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN 078 856 318) Second Respondent ADAM HARGRAVES Third Respondent GLENN HARGRAVES Fourth Respondent DANIEL STOTEN Fifth Respondent LOCAL DIRECTORIES PTY LTD (ACN 130 550 971) Sixth Respondent
|
JUDGES: | KEANE CJ, PERRAM AND YATES JJ |
DATE: | 15 DECEMBER 2010 |
PLACE: | MELBOURNE |
REASONS FOR JUDGMENT
Perram J:
1. Introduction
98 I have had the advantage of reading in draft the reasons for judgment of both the Chief Justice and Yates J and, in what follows, I record the substantial assistance I have derived from those judgments in clarifying my own thoughts. The appellants are the publishers of the White and Yellow Pages directories which are books containing comprehensive listings of telephone numbers. The question in the appeal is whether they are works in which copyright inheres under the Copyright Act 1968 (Cth) (“the Act”). The learned primary judge held that they were not. In my opinion, her Honour was correct to arrive at that conclusion and the appeal should be dismissed with costs.
2. Originality and authorship
99 By s 32(2) of the Copyright Act 1968 copyright subsists in original literary works in a number of circumstances including, relevantly, that first publication of the work took place in Australia. There is no dispute in this case that the directories were all first published in Australia. The interpretation provision of the Act (s 10) defines the expression “literary work” to include “a table, or compilation, expressed in words, figures or symbols”. There was no dispute in the present appeal that the directories were compilations so that the sole issue in the appeal is whether the directories were “original” works.
100 On the question of what is “original” some propositions are well-established. First, although the Act does not define “original” it is accepted that it means “originated” (i.e. made for the first time and not copied) by an “author” (IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at [33] (“IceTV”)); secondly, leaving aside the position of photographs, for which separate provision is made, the “author” must be an actual person (for reasons including, inter alia, the fixing of the duration of the monopoly by reference to the author’s life: s 33 of the Act) (IceTV at [97]); thirdly, to qualify as an author that person must bring to bear some “independent intellectual effort” (IceTV at [33]) or “sufficient effort of a literary nature” (IceTV at [99]); fourthly, the effort called for by the Act falls well short of requiring either the fashioning of works of literary merit (in the traditional sense obtaining to literature) (IceTV at [33]) or the inception of those exhibiting inventiveness (IceTV at [33]). The point of the copyright monopoly is the encouragement of new works not good works.
3. Relevance of skill and labour not directed to the creation of the material form
101 Applied to the directories in suit these principles engender debate about their authorship. The information in the directories was collected through processes which I would accept involved human industry and the results of which were stored in a substantial and sophisticated database. However, the creation of the material form of the directories was carried out by a computer program overseen by persons who had no substantive input into those forms. The questions which arise are, therefore, two. First, granted that there must be independent intellectual effort or sufficient effort of a literary nature, is that effort required to be directed at the creation of the material form of the work (here the form of the directories) or does it suffice that the effort was directed at some anterior activity (here the collection of information presented in the directories)? Secondly, if the intellectual effort must be directed at the creation of the material form of the directories, was there sufficient human effort involved in that process in this case to mean that the directories were reduced to a material form by an author or authors?
102 Those questions inevitably necessitate an appreciation of just how these telephone directories were composed. The learned primary judge was burdened by a great weight of evidence about the manner in which two of the directories were created (and those two directories served as representative examples for a larger number of other directories). Her Honour considered all of this body of material and made detailed findings of fact none of which were challenged before this Court. At the risk of oversimplification there were, in effect, three processes involved. The first involved the maintenance, updating and editing of a database containing customer details (the Collection Phase). The second involved the extraction from that database of information for each directory and the sublimation of that information into an electronic form which constituted substantially the form of the ensuing directory (the Extraction Phase). The third process involved the typesetting of that form and the physical production of the directories (the Production Phase). One may, I think, dispense with the Production Phase at the outset. There will be cases where the layout of a document is, in fact, itself a literary work. One well-known example of the truth of that proposition is afforded by the example of the football coupons in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273. However, in such cases, originality in the layout must be evidenced and this will require the demonstration of some independent intellectual effort or sufficient effort of a literary nature. I do not think that the organisation of the pages of a telephone directory exhibits activity of that kind. There may be cases where the typesetting of one literary work involves the creation of another (the layout of a newspaper may be one example). However, the layout of a telephone directory is essentially dictated by the material form of the work being printed.
103 I would accept, however, that there was intellectual effort at the Collection Phase. The evidence showed that the business structure of the appellant Sensis (which was responsible for the production of the directories) was complex and that a significant number of employees worked away on a daily basis updating the very many entries in the directory. Many others were involved in quality control. Some of this work was ministerial; other parts of it involved seeking to persuade customers to enlarge or embellish their entries. What was involved was the full panoply of activities which one might expect to attend the collection and maintenance of customer information for telephone directories prepared for a country of twenty or so million people. Much of this activity, but by no means all of it, was automated. Computers and databases were ever-present but on no view would the Collection Phase have been able to proceed without the involvement of significant human activity.
104 The question then is whether that human industry is relevant to the issue of the directories’ originality. I think the answer to that question is that it is not. Whatever else might be said of the kind of efforts required of an author, they must be efforts which result in the material form of the work. The important creative steps which involve the fashioning of the ideas on which a literary work’s ultimate form rests are not actions which the Act counts as authorial and this is because what is protected by the copyright monopoly is the form of a work and not the ideas which presage or prefigure it. And this is so even if those ideas can plainly be discerned in the fabric of the material form. The travels reduced to a touring guide, the toils in the library underpinning a substantive work of history and the life led which finally results in an autobiography are not authorial activities however essential they might be to the creation of the work in question. No doubt the quality of many literary works will be much enhanced if their form reflects ideas of sophistication or merit but those ideas go not to the work’s originality for copyright purposes save only to the limited extent that they show that the work is not copied from elsewhere. Much skill and hard work – “sweat of the brow” – may be involved in the steps preparatory to the making of the material form of a work but those labours are not what is protected by copyright and are relevant only to show that the work is not copied.
105 That is not, however, to put at nought such ideas but only to emphasise that the skill and labour in a copyright context must always be fixed upon the creation of forms and not ideas: “The essence of literary copyright is proprietary protection (in the form of exclusive rights to do acts restricted by the copyright in the work) for a literary work in recognition of the investment of effort, time and skill in reducing it into material form, such as words, signs and symbols”: Baigent v Random House Group Ltd (2007) 72 IPR 195 at [141] per Mummery LJ cited with approval in IceTV at [49] per French CJ, Crennan and Kiefel JJ (my emphasis). Subject to one matter, the same perspective on the connexion between authorship and reduction into material form may be observed in the reasons of Gummow, Hayne and Heydon JJ in IceTV who thought (at [98]) that the word “author” conveyed the notion of “the person who brings the copyright work into existence in its material form”.
106 It is true that the decision of this Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 is to the contrary. In that case, having conducted an exhaustive review of the authorities Lindgren J (with whom Black CJ agreed) described the course of prior authority this way: “there is no principle that the labour and expense of collecting, verifying, recording and assembling (albeit routinely) data to be compiled are irrelevant to, or are incapable of themselves establishing, origination, and therefore originality; on the contrary, the authorities strongly suggest that labour of that kind may do so” (at [160]). The other member of the bench, Sackville J, reached essentially the same conclusion (“the course of authority in the United Kingdom and Australia recognises that originality in a factual compilation may lie in the labour and expense involved in collecting the information recorded in the work, as distinct from the “creative” exercise of skill or judgment, or the application of intellectual effort” (at [407]).
107 It is also true that there is a passage in IceTV which is capable of being read as providing support for the notion that labour and skill in a collection may constitute an act of authorship. The passage in question is from the reasons of Gummow, Hayne and Heydon JJ in IceTV at [99] and is a statement that in the case of compilations “the author or authors will be those who gather or organise the collection of material and who select, order or arrange its fixation in material form” (my emphasis). The appellants contended that this means that the range of persons available to fulfil the authorial function extends not only to those who reduced the work to material form but, importantly, also to those who gathered and organised the collection of the material. So viewed, the sentence describes a list of possible authors (“the author or authors”) and the word “and” is to be seen as merely conjoining elements on a list.
108 That reading derives support from the decision in Desktop but despite that I do not think that this is what Gummow, Hayne and Heydon JJ had in mind. One of the interesting consequences of the many decisions finding ultimate expression in Desktop is that it is possible to have a compilation which is held to be original (by reason of the hard work of those collecting the materials) without an author ever having been identified. Gummow, Hayne and Heydon JJ held the view, however, that the significance of “authorship” was one of “two fundamental principles of copyright law” (at [95]-[96]). The inability of the Desktop approach to identify the author was thought by Gummow, Hayne and Heydon JJ to be seen as “a reason to treat the decision in Desktop Marketing with particular care” (at [134]). Also inconsistent with the appellants’ reading of their Honours’ reasons is the fact that the balance of the reasons display an anxiety to underscore the significance of the material form of a work both as the endpoint of authorship and as the subject matter of the right to copy itself. Thus, (at [98]) their Honours appeared to suggest that at a general level the author might be “the person who brings the copyright work into existence in its material form”. Indeed, their Honours’ entire treatment of this question is to be found under the heading “Authorship and Material Form” and it was in that context that they identified a principle relating to material form (at [102]) which concerned “the requirement for the subsistence of copyright of “fixation” of the original work in a material form. It is well established that copyright does not subsist in a work unless and until the work takes some material form, so that protection ‘does not extend to the ideas or information contained in the work and a balance is struck between the interests of authors and those of society in free and open communication’” (citing Copinger and Skone James on Copyright (1999, 14th ed), vol 1 at 101 [3.74]).
109 It seems unlikely, given that context, that their Honours intended that gathering and organising the collection of material was, by itself, an authorial activity. Such a conclusion would be contrary to the apparent thrust of the balance of their Honours’ reasons. It is worth noting that the source in part of the sentence in question (that is at [99]) is set out in footnote 160 to their Honours’ judgment and it cites as the source of the principle Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (1995, 2nd ed), vol 1 at 550 [11.11]. However, the statement which there appears is different to the statement in their Honours’ reasons for it is neither couched in the plural nor does it contain any reference to fixation in material form. The passage in question is: “…the author of such a work is the person who gathers or organises the collection of material and who selects, orders and arranges it.” (cf. IceTV at [99]): “the author or authors will be those who gather or organise the collection of material and who select, order or arrange its fixation in material form”). For completeness, the same passage as appears in the second edition also appears in the third addition: Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (2000, 3rd ed), vol 1 at 118 [3.94].
110 The definition of literary work concerning compilations in The Modern Law of Copyright and Designs has been the subject of judicial consideration before. Of the same definition appearing in an earlier edition, Slade LJ observed that the authors had cited no authority to support it (Waterlow Publishers Ltd v Rose (1989) 17 IPR 493 at 500 (“Waterlow Publishers”)) and in view of the absence of full argument or citation of supporting authority his Lordship preferred “to express no concluded view as to the correctness or otherwise of Laddie’s definition of the author of a compilation” (at 502). Those reasons appear to have been delivered ex tempore so it is perhaps a mistake to read too much into them. The point for present purposes, however, is that that history of the definition makes it even less likely that their Honours were intending thereby to endorse the approach in Desktop. Indeed, the insertion of the reference to “fixation in material form” only emphasises their Honours’ concern to keep analysis focused on the subject of the monopoly, namely, the material form.
111 For that reason, I do not read the passage in question in the way for which the appellants contend. There remains, of course, the question of what role their Honours did have in mind for the contribution of those who gather or organise the collection of material. The sentence certainly suggests their efforts are not irrelevant. French CJ, Crennan and Kiefel JJ also thought that skill and labour in the collection of information for a compilation to be relevant (“A complex compilation or a narrative history will almost certainly require considerable skill and labour, which involve both “industrious collection” and “creativity”, in the sense of requiring original productive thought to produce the expression, including selection and arrangement, of the material”: IceTV at [47]). Because “original” in this context merely means originated rather than copied I take this only to mean that the efforts which attend the collection of the material for a compilation may well show the compilation itself to be “original” in that sense. That is, skill and labour in collection is likely to show that the compilation originated from the “author” rather than being copied.
112 Once one accepts that the focus of the copyright is on the creation of the material form by an author it is analytically difficult to identify any role for labour or skill in the collection of material beyond the question posed by the statute, namely, whether the work is “original” in the sense of not being copied from elsewhere. Any role for skill and labour in the process of collection which extends beyond that is inconsistent with the emphasis given in IceTV to the reduction of a work into a material form. It follows that, beyond showing that the directories were original in the sense of not having been copied, the activities in the Collection Phase are not relevant to assessing whether those who reduced the directories to material form did so with sufficient independent intellectual or literary effort. To the extent that Desktop requires a contrary conclusion it should be overruled. It is inconsistent with considered dicta of a majority of the High Court which bind this Court: Farah Constructions Pty Ltd v Say-Dee Pty Ltd (2007) 230 CLR 89 at [134] per the Court.
5. Authorship and computers
113 Who were the people who reduced these directories to their material form? Material form matters because a work is made when it is first reduced to writing or “some other material form” (s 22(1) of the Act). Further, “material form” by s 10 includes “any form (whether visible or not) of storage of the work…” which, plainly enough, will cover the situation where a work is first assembled as a computer file. In this case, there is no doubt that the directories first took on a material form when a computer file known as the “galley file” was generated which contained the full listing as it would appear for each directory (without the art work). This occurred as a result of the Extraction Phase. I have no doubt if the galley file (or some physical analogue of it) had been generated by humans this would have meant that the directories were original works. Since the Act stipulates that compilations are literary works it follows generally that those who reduce a compilation to material form are likely to be its authors provided there is sufficient intellectual or literary effort involved in the process of reduction. In this case, the putting together of each directory required the application of a large number of internal house rules, the extraction of relevant customer entries from a much larger database of all customers and the sorting into relevant formats. The work involved might not be regarded as highly creative but that is not the test, particularly where the literary effort required must be that which attends the creation of a compilation rather than, for example, a novel or a history. Had the tasks been attended to manually an original work would have ensued.
114 The difficulty in this case is not that the efforts which might have gone into the production of the galley file could not be sufficient acts of an appropriate quality to count as acts of authorship. Rather, the difficulty is that those tasks were not carried out by humans but by computer programs. The trial judge found – and it is not disputed – that the production of the galley file was almost entirely automated. There were some minor aspects of checking which subsequently occurred after the production of the galley file but even these too were largely automated.
115 Detailed evidence was led before her Honour about the mechanism by which the material form of the directories was created. The manager of Print Content and Conversion at Sensis, Ms Dawes, gave evidence that it was at “the Book Extract stage that the listings in a particular White Pages or Yellow Pages directory assume the form in which they will ultimately appear in the printed directory”. The Book Extract stage was the consequence of running a program known as the Book Extract routine. Ms Dawes described the Book Extract process as involving two stages:
First, the listings information is selected from the database, in accordance with pre-determined extract parameters and exclusion rules (many of which rely on the information contained in tables). Then, the extracted information is sorted according to predefined criteria (which also rely on the information contained in tables). At the conclusion of the process, an electronic file is generated containing all of the extracted listing information in the order in which it is to appear in the directory. This file is known as the CMP file, and it provides the listing content for the galley file.
116 Ms Dawes identified two named individuals who performed this task. These were two publishing co-ordinators called Mr Mark Vormwald and Mr Stewart Cooper. Mr Cooper gave very precise evidence about how he ran the Book Extract routine to produce the galley file. Because his evidence lies at the epicentre of the question of the reduction of the directories into a material form I will set the relevant portions of it out:
….in order to extract the galley file for the 2009 Port Macquarie White Pages directory, I undertook the following steps:
(a) On my desktop, I opened the following folders in sequence: RTMS, Production-Operational, Operational Systems, Publishing, Book Extract, Book Extract.
(b) I then double clicked on the ‘Book Extract” to enter this folder. I then selected “Modify” and filled in all relevant details in the window that appeared. The details included:
(i) the job record comprising the book code and the type of report run (in the case of the 2009 Port Macquarie White Page directory, the job record was N09WE);
(ii) the printer to which the extract is to print;
(iii) the run date for the extract which was 11 December 2008. The reports are generated overnight and thus it is important to insert the date before the day the report is required;
(iv) the product code, being each directory’s identification code (N09W denotes the Port Macquarie White Pages directory); and
(v) section code, being WP for a White Pages directory.
…..
RTMS automatically extracts the relevant listing information from Genesis into the galley file. Once RTMS has conducted the extract of the information in order to build the galley file (which as mentioned above usually happens overnight), the Book Extract Report and the Gallery Error Build Report (discussed in greater detail below) will then automatically print. From that point on, I can also access the built galley file through POST.
I take the steps described in paragraph[s] 70 to 74 above to extract and build the galley file for any directory I work on, regardless of the region encompassed by the directory. I caused the book extract and the galley build for the 2008/2009 and the 2009/2010 Cairns issues of the White Pages directory in the same manner.
117 There is, no doubt, that if any humans can be said to have reduced these directories to material form it is Messrs Vormwald and Cooper. It is correct to say that they were in control of the software. But that control did not involve Mr Vormwald or Mr Cooper in shaping or guiding the material form of the directories. They were not using the software, as perhaps a novelist uses a word processor, to give form to an idea already conceived. Instead, they were giving instructions at the very highest level about the principal parameters of the directories, namely, the year and the location to which each related. Neither gentleman conceived the material form of the directories; neither had the need, for the Book Extract routine was designed to relieve humans of that, no doubt, tedious task. It is true that intellectual effort went into the operation of the software by these two gentlemen but that effort was not directed to the incarnation of the material form of the directories.
118 The Act does not presently deal explicitly with the impact of software on authorship (although this is not so in the United Kingdom: s 9(3) Copyright, Designs and Patents Act 1988 (UK)). But 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. However, care must taken to ensure that the efforts of that person can be seen as being directed to the reduction of a work into a material form. 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. But there will be cases where the person operating a program is not controlling the nature of the material form produced by it and in those cases that person will not contribute sufficient independent intellectual effort or sufficient effort of a literary nature to the creation of that form to constitute that person as its author: a plane with its autopilot engaged is flying itself. In such cases, the performance by a computer of functions ordinarily performed by human authors will mean that copyright does not subsist in the work thus created. Those observations are important to this case because they deny the possibility that Mr Vormwald or Mr Cooper were the authors of the directories. They did not guide the creation of the material form of the directories using the programs and their efforts were not, therefore, sufficient for the purposes of originality.
119 The consequence of those conclusions is that the directories were not copied from elsewhere but neither were they created by a human author or authors. Although humans were certainly involved in the Collection Phase that process antedated the reduction of the collected information into material form and was not relevant to the question of authorship (other than to show that the works were not copied). Whilst humans were ultimately in control of the software which did reduce the information to a material form, their control was over a process of automation and they did not shape or direct the material form themselves (that process being performed by the software). The directories did not, therefore, have an author and copyright cannot subsist in them.
6. Operation of the presumption in SECTION 128
120 I turn then to the question of s 128 of the Act upon which the appellants placed some reliance. It appears in a division of the Act headed “Proof of facts in civil actions” amongst a number of provisions which, compendiously, create certain presumptions about copyright. Section 128 deals with what may be presumed about the copyright in a work where it is only shown that the work was first published in Australia by an identified publisher. It is relevant in this case because the appellants did succeed in establishing at trial that their directories were first published in Australia by an identified publisher. The section provides:
Where, in an action brought by virtue of this Part in relation to a literary, dramatic, musical or artistic work, the last preceding section does not apply, but it is established:
(a) that the work was first published in Australia and was so published during the period of 70 years that ended immediately before the commencement of the calendar year in which the action was brought; and
(b) that 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 at the time of the publication.
121 There is no issue that the “last preceding section” did not apply (it deals with what may be presumed where a work is published with a name purporting to be that of an author upon it and in this case only the name of the publisher appeared). There is also no issue but that subsections (a) and (b) were satisfied. The debate between the parties centres on what the words “unless the contrary is established” mean. The appellants say that those words mean that unless the respondents showed that there was no copyright in the directories then it was presumed that there was. The respondents, on the other hand, submitted that the appellants had elected to go into evidence and the evidence which they led plainly showed that the works were not ones in which copyright subsisted. The appellants were prevented from relying on s 128 by reason of their election to go into evidence but even if that were not so the evidence itself showed that the contrary had been established.
122 The “contrary”, of course, is the idea that copyright does not inhere in the work in question. The presumption in s 128 is not enlivened where that concept is “established”. That word does not refer to an attempt at proof, or the presence of prima facie evidence; rather, it refers to a fact as having been proven “on the balance of probabilities” (Microsoft Corporation v PC Club Australia Pty Ltd (2005) 148 FCR 310 at [84] per Conti J. I would not read “established” as referring to the satisfaction of some level of proof such as a prima facie demonstration, for that is not what “established” means. It connotes, rather, that a fact has been proven to the satisfaction of the Court.
123 The subject of “established” is not expressed which reflects the fact that the statute does not prescribe who must establish what. What it requires is an assessment of what has been proven on the evidence before the Court. Notions of onus or burden in that context are inapposite. The Court is to ask whether the “contrary has been established”. If it has not, the Court is to presume that copyright subsists in the manner dictated. The presumption thus revealed is not, therefore, one of those presumptions which may compete with actual evidence. It is rather a dictated legal outcome unless the Court makes a particular finding. The respondents drew attention to a reference in Cross on Evidence (2010, 8th ed) at [7280] to the judgment of Lamm J in the Missouri Supreme Court in Mackowik v Kansas City, St J & CBR Co 94 SW 256 (1906) at 262:
Presumptions may be looked on as the bats of the law, flitting in the twilight, but disappearing in the sunshine of actual facts.
124 It follows, however, that I do not think s 128 is one of those kinds of presumption. For completeness, the decision in Waterlow Publishers should again be noted. There, speaking of the English equivalent of s 128, Slade LJ said (at 503):
Apart from cases where a literary work is published anonymously with the deliberate intention of concealing the name of the true author, a compilation perhaps represents the most obvious case in which commonly, no name of an author appears on copies of a published literary work. It seems to me possible that, in enacting s 20(4), the legislature contemplated that, inter alia, specifically in the case of compilations, cases might arise where there was no identifiable author, but copyright might none the less subsist in the relevant literary work.
125 The learned authors of the second edition (and the third edition) of Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (1995, 2nd ed), vol 1 at 550 [11.11] ((2000, 3rd ed), vol 1 at 118 [3.94]) cite this (in the sentence immediately following that which is cited with approval at [99] of IceTV) and say “[h]owever, it is possible that there might be no identifiable author, in which case the statutory presumptions may have to be relied upon.” I would not read s 128 as being directed especially to compilations. It will apply to any case in which its preconditions are satisfied.
126 In this case, the evidence showed that those who reduced the directories to material form did not exert sufficient effort of a literary nature or sufficient intellectual effort to constitute them as authors. Accordingly, the directories could not be “original” works and s 32 could not apply to them. It was, therefore, established that they were works in which copyright did not inhere. Section 128 therefore was not enlivened because the contrary was shown.
7. Identification of authors
127 It remains to note one matter. The appellants submitted that the learned primary judge had erred by holding that they failed because they had not identified each individual author. I do not believe her Honour made such a finding. To the contrary, her Honour said “[i]f an author or authors…cannot be identified at all, in contradistinction to a situation where the author’s or authors’ exact identity cannot be identified, copyright cannot subsist”: Telstra Corporation Ltd v Phone Directories Co Pty Ltd (2010) 264 ALR 617 at [37]. I do not read her Honour, therefore, as having required that the appellants literally name the authors but only that they demonstrate that the authors existed. If I am wrong in my reading of the primary judge’s reasons, however, I would not accept that it is necessary to identify each author. All the Act requires in the case of s 32(2) is that there be an original work first published in Australia. The necessity for there to be an original work carries with it the necessity for there to be an author or authors but all that needs to be demonstrated is that such persons exist. Their identification is not legally required by the concept of an original work. The statement by Gummow, Hayne and Heydon JJ in IceTV that “[t]o proceed without identifying the work in suit and without informing the inquiry by identifying the author and the relevant time of making or first publication, may cause the formulation of the issues presented to the court to go awry” (at [105]) is, I think, a counsel of wisdom rather than a legal stipulation.
8. Disposition of appeal
128 The appeal should be dismissed with costs.
I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram. |
Associate:
Dated: 15 December 2010
IN THE FEDERAL COURT OF AUSTRALIA | |
NEW SOUTH WALES DISTRICT REGISTRY | |
GENERAL DIVISION | VID 147 of 2010 |
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA |
BETWEEN: | TELSTRA CORPORATION LIMITED (ACN 051 775 556) First Appellant SENSIS PTY LTD (ACN 007 423 913) Second Appellant
|
AND: | PHONE DIRECTORIES COMPANY PTY LTD (ACN 059 776 091) First Respondent AUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN 078 856 318) Second Respondent ADAM HARGRAVES Third Respondent GLENN HARGRAVES Fourth Respondent DANIEL STOTEN Fifth Respondent LOCAL DIRECTORIES PTY LTD (ACN 130 550 971) Sixth Respondent
|
JUDGES: | KEANE CJ, PERRAM AND YATES JJ |
DATE: | 15 December 2010 |
PLACE: | MELBOURNE |
REASONS FOR JUDGMENT
YATES J:
129 I agree that the appeal should be dismissed.
130 In my view the primary judge was correct in concluding that the relevant compilations in the White Pages Directories (WPDs) and the Yellow Pages Directories (YPDs) for particular regions, as published by the appellants, were not original literary works for copyright purposes. The primary judge advanced a number of reasons for coming to that conclusion, including that much of the contribution to each work was not the result of human authorship but was computer-generated: at [5(2.3)]. In my view that finding alone justified the conclusion to which her Honour came on the question of copyright subsistence and is determinative of this appeal.
131 The appellants claim that copyright subsists in each work as a “compilation”, as comprehended by the definition of “literary work” in s 10(1) of the Copyright Act 1968 (Cth) (the Act). Each work of that kind was said to be the listings, enhancement of listings and arrangement of listings (in the case of the WPDs) and the listings, headings, enhancement of listings and arrangement of listings under headings (in the case of the YPDs). The primary judge noted that the appellants made no wider claim. Other elements or parts of the directories were not claimed to be part of the work or a work in which copyright was claimed. The primary judge also noted that the appellants had abandoned a claim with respect to an alleged work identified as “the Headings Book”, which comprises the list of headings under which entries in the YPDs are made.
132 The form of the copyright work in each case was said to be represented by the published form of the relevant compilation in each regional directory. Each regional directory was identified in a schedule to the primary judge’s reasons. Significantly, the appellants relied upon publication (that is, the supply of reproductions to the public: see s 29(1)) of each such work as the connecting factor for copyright subsistence. In this regard s 32(2)(c) of the Act relevantly provides that copyright subsists in an original literary work if the first publication of the work took place in Australia. This is significant because, by relying on first publication in Australia as the connecting factor, it was not necessary for the appellants to resort to any other connecting factor to prove the subsistence of copyright. In particular, it was not necessary for the appellants to address the question of authorship as presented by s 32(2)(d) and (e) which requires demonstration that the author of the work was a qualified person at the time when the work was first published or, if the author died before that time, was a qualified person immediately before his or her death. However, this did not absolve the appellants from dealing with the question of authorship as it related to the question of copyright subsistence more generally.
Authorship and originality
133 Originality lies at the heart of the subsistence of copyright in works because, as s 32 of the Act makes clear, copyright only subsists in works – in this case a literary work – where the work is “original”. As the primary judge correctly recognised, original works, for copyright purposes, emanate from authors: see at [21] and the long line of authority there referred to. The primary judge correctly identified the relevant chain of inquiry at [344] of her reasons, as follows:
Authorship and originality are correlatives. The question of whether copyright subsists is concerned with the particular form of expression of the work. You must identify authors, and those authors must direct their contribution (assessed as either an “independent intellectual effort” of a “sufficient effort of a literary nature”) to the particular form of expression of the work. Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original…
134 In relation to works, an author is, under Australian law, a human author. So much is made clear (if it be doubted) by s 33 of the Act which conditions the duration of copyright on the year of the author’s death. Section 34, which deals with the duration of copyright in anonymous and pseudonymous works, and which conditions duration on first publication (rather than the death of an author), does not compel a different conclusion. See also the presumptions created by s 129 of the Act which make plain that the concept of authorship in respect of works means human authorship.
135 Significantly authorship (as it is understood in the context of works) plays no role in relation to the subsistence of copyright in subject-matter other than works. In that milieu the making of the subject-matter can play a central role: see ss 89(2), 90(2) and 91 of the Act in relation to sound recordings, cinematograph films, television broadcasts and sound broadcasts, which fix on the making of the relevant subject-matter by a qualified person who may be, in this context, a body corporate incorporated under a law of the Commonwealth or of a State. First publication in Australia can also play a role in relation to the subsistence of copyright in that subject-matter: see ss 89(3) and 90(3). In the case of published editions of works, copyright will subsist if the first publication of the edition took place in Australia or if the publisher was a qualified person (including a qualified person that is a body corporate) at the date of the first publication of the edition: see s 92(1).
136 Under United Kingdom copyright legislation, specific recognition is given to works that are computer-generated. In the case of literary, dramatic, musical or artistic works that are computer-generated, the author is taken to be the person by whom the arrangements necessary for the creation of the work were undertaken: see s 9(3) of the Copyright, Designs and Patents Act 1988 (UK). This conceptual framework is akin to that adopted in Australian copyright law with respect to subject-matter other than works. However, it has no corresponding recognition in Australian copyright law as it pertains to works.
137 Recognising that authorship denotes human authorship, two further presently-relevant concepts emerge. First, the test for originality is whether the work originated from the author in the sense that it was not copied by the author: Robinson v Sands & McDougall Pty Ltd (1916) 22 CLR 124 at 132-133; Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 at 52; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 291; Bookmakers’ Afternoon Greyhound Services Ltd v Wilf Gilbert (Staffordshire) Ltd [1994] FSR 723 at 731. As Lindgren J observed in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 at [92] the test must be applied to the thing to which the legislation attaches copyright protection. In this case this means the identified compilations represented in the published form of each regional directory as a WPD or a YPD: does each compilation originate from an author or authors? Secondly, the origination must involve human intellectual endeavour. This is not to say that originality means novelty as, say, understood in the law respecting patents for inventions. It does mean, however, that the creation of the work must be the product of a human intellectual process. These propositions were not disputed by the appellants.
138 In IceTV, Gummow, Hayne and Heydon JJ described the nature of authorship in compilations. Their Honours said at [99]:
Where a literary work is brought into such existence by the efforts of more than one individual, it will be a question of fact and degree which one or more of them have expended sufficient effort of a literary nature to be considered an author of that work within the meaning of the Act. If the work be protected as a "compilation", the author or authors will be those who gather or organise the collection of material and who select, order or arrange its fixation in material form…
139 It is plain that their Honours, in that passage, were describing the scope of relevant activity encompassing authorial contribution. However, the context in which their Honours described those activities shows that “fixation”, as an act or event, is a sine qua non for copyright to subsist. In that connection their Honours, quoting from Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 218 CLR 273 at [51], said (at [102] omitting references):
The second principle is related to the first and concerns the requirement for the subsistence of copyright of "fixation" of the original work in a material form. It is well established that copyright does not subsist in a work unless and until the work takes some material form, so that protection:
"does not extend to the ideas or information contained in the work and a balance is struck between the interests of authors and those of society in free and open communication".
140 Thus whilst activities such as gathering or organising the collection of material may be relevant authorial activities for copyright purposes, those activities are not of themselves, once engaged in, the subject matter of copyright protection. It is the fixation in material form of the “work” that attains copyright protection for the “work” in that particular form. In IceTV French CJ, Crennan and Kiefel JJ remarked at [28]:
Copyright is not given to reward work distinct from the production of a particular form of expression.
141 Although IceTV was concerned with the issue of copyright infringement (subsistence of copyright having been admitted), that issue raised the need to consider the notion of originality. This was because, in deciding whether a substantial part of the copyright work had been reproduced, consideration had to be given to the quality of that part assessed against the work as a whole. In that connection French CJ, Crennan and Kiefel JJ quoted with approval the following passage from Ladbroke (Football) Ltd at 293:
The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement.
(emphasis added by their Honours)
Their Honours continued (at [37]):
This means that where the part reproduced did not originate with the author, so that the author would not have copyright in the part standing alone, the part reproduced will not be a substantial part.
142 In IceTV it was necessary to embark on the further inquiry as to the degree of originality in the expression of the part of the works reproduced because it was accepted that the part reproduced did originate with the author or authors of the works in suit: see at [37] and [40].
143 IceTV underscores the centrality of authorship to copyright subsistence in works. Authorship is an essential characteristic of originality for copyright purposes. This was correctly recognised by the primary judge in the present case.
The production of the directories and the making of the works
144 The primary judge made detailed findings concerning the production of a particular WPD ([174]-[268]) and the production of a particular YPD ([269]-[325]). These findings were made against the important background fact that listing information was entered into a database of a computer system known as the Genesis Computer System. Other non-Genesis computer systems were also used in the production of the WPDs and YPDs. The primary judge found at [87]:
The various computer systems (including the Genesis Computer System), were the result of the work of various entities over a number of years. Although the Applicants, as the ultimate purchaser of such systems, were often responsible for prescribing and overseeing implementation of the requirements, only in a few cases was the software designed and created by the Applicants’ employees. Although the computer systems were not relied upon as an independent copyright work in this proceeding, the Applicants did rely upon the intellectual effort of Sensis employees in customising the programs. On the evidence before the Court, it is not possible to determine who created and had the benefit of the whole or any part of the various computer systems (including the Genesis Computer System) at any particular time.
145 It is not necessary to set out the detail of the findings that were made. It is sufficient to note the general nature of those activities that were carried out by employees of the second appellant and, in relation to some activities, contractors who were not employees of the second appellant.
146 In the case of the production of a particular WPD the primary judge considered the involvement of individuals in, and made findings about, creating an initial listing record; obtaining updated listing information; entering updated information into the database; checking updated listing records after entry into the database; making other amendments to existing listings; obtaining new listings through service orders, customer contact and sales contact; checking new listings after entry; and verifying listing information prior to publication.
147 In the case of the production of a particular YPD the primary judge considered the involvement of individuals in, and made findings about, creating an initial listing record; obtaining updated listing information; entering updated information into the database; checking updated listing records after entry into the database; other amendments to existing listings; obtaining new listing information and creating a new listing record and checking the new listing after entry; and verifying listing information prior to publication.
148 These activities involved individuals engaging with the relevant computer systems, including the Genesis Computer System, that were in place. This interaction was regulated by certain rules, specifically the YPD Advertising Rules, the WPD Entry Policy Rules, and Sensis’ Product Standards (collectively, the Rules). The primary judge at [90] described the Rules as follows:
At their most basic level, the Rules are a set of prescriptive guidelines that control, dictate, restrict and / or prohibit the content and presentation of listings in the WPD and YPD. They regulate the font used. They regulate the proper abbreviations of words. They regulate the colour schemes applied. They regulate the spacing between words and individual entries. They regulate the acceptability or otherwise of the use of particular words or phrases. It is unclear who created the Rules. But it is clear that everyone is bound by them.
149 The primary judge found that the Rules were directly or indirectly automated. They were directly automated in the sense that they were programmed into the Genesis Computer System (or supporting systems) so that the information entered into those systems was in a form that complied with the Rules. The Rules were also indirectly automated in the sense that, in certain circumstances, there was human intervention in the application of the Rules. The primary judge gave as an example the case of an artist preparing updated graphic advertisements in the WPD and YPD where an editor was responsible for ensuring that those advertisements complied with the Rules. The primary judge found (at [92]) as follows:
The overarching process is designed to ensure that decisions that violate the Rules are as rare as possible. In the vast majority of cases, any human intervention is directed to ensuring the content and presentation of listings complies with the Rules.
150 The appellants did not dispute the primary judge’s findings of fact. They submitted, however, that the primary judge down played or dismissed the role of the second appellant’s employees and the application of their intellectual effort in the various tasks they undertook, which, according to the appellants, was intellectual effort “applied at every stage of the process of compilation”. The appellants included, in that regard, the role of the second appellant’s employees in selecting, customising, maintaining and operating the computer systems involved in the production of the directories.
151 Leaving aside, for one moment, the activities of this lastmentioned group (to which I will make further reference), the other activities of the second appellant’s employees, generally speaking, were directed to and resulted in the collection, entry and manipulation of data in the database of the Genesis Computer System. This data, as stored in the system, was intended to be used as the resource from which a large number of specific and individual regional telephone directories, as either WPDs or YPDs, were to be produced. Each directory, and hence each relevant compilation, was different in form. However no directory was fixed in material form until after data had been extracted from the Genesis Computer System database in a process known as “Book Extract”. The primary judge found (at [252]) that it was at this stage that the listing information stored in the Genesis Computer System database was converted into a listing in the form in which it ultimately appeared in the published directory. There was no challenge to this finding. This is a critical finding because, as noted above, each claimed copyright work is the compilation (as identified by the appellants) in its published form. That particular form of expression did not exist in the Genesis Computer System database.
152 The critical path by which each directory (and hence each compilation) came to assume its particular form of expression was described at [253]-[268] of the primary judge’s reasons in the case of the WPDs and at [311]-[325] in the case of the YPDs.
153 In the case of the WPDs, the primary judge (at [253]-[259]) found as follows:
253 The Book Extract process involves running a software routine over the Genesis database. This software routine creates an electronic file, known as the CMP file, containing all of the listings which are to appear in the designated directory collated in the order in which those listings are to appear in that directory. The CMP file is used to create an automatic electronic proof of the directory, known as the galley file. The galley file contains all of the listings and in-column advertisements in the format and sequence in which they will appear in the directory, but none of the display advertisements.
254 The Book Extract process involves two stages. First, the listing information for the nominated directory is automatically extracted from the database, in accordance with appearance and suppression rules that have been programmed into the Book Extract routine. These rules govern which components or elements of each listing should be included in the directory and how they should appear (ie, whether they should be abbreviated or appear in full), and are designed to give effect to the requirements of the Rules.
255 The application of these appearance and suppression rules depends on factors such as:
1. whether the listing is to appear in its “local” directory (ie, the directory which relates to the listed address) or is to appear in a “foreign” directory;
2. whether the listing is to appear in its own state or Numbering Plan area (this determines whether the area code or state is included in the listing); and
3. whether the listing has been designated with an “Omit” indicator in the database (for example, because the listing is a caption listing or qualifies for the address to be “suppressed” in accordance with the requirements of the Rules).
256 Many of these determinations, in turn, depend on the application of reference tables. To apply the relevant appearance or suppression rule, the Book Extract routine has been programmed to check the listed information against the information in the table and present the listing accordingly, depending on the result (see [126]-[127] above). As Mr Peterson said “when we run the book extract, when we print the book, it looks at the table and sees how it should be presented. So it drags the information out of that table to do the presentation.”
257 For example, there is a “Locality Appearance table” which contains a list of the “local” directory for every locality in Australia. Depending on whether or not the locality of the listing in question is local to the directory which is being extracted, the Book Extract routine will either include the name of the locality in full, print an abbreviated form of the locality, or omit the locality entirely (this occurs, for example, in capital cities where the locality is the same as the name of the directory). If the listing is to be abbreviated, the name of the abbreviated locality is taken from a table known as the Locality table, which contains a list of all recognised localities and their abbreviations.
258 After the listing elements have been extracted and their appearance determined, the Book Extract routine then sorts the listings according to sorting rules also designed to give effect to the requirements of the Rules. For example, a prefix is included as part of the first word of a listing even if it is separated from the second part of the name by a hyphen (this means that “De Groot” and “De-Bug” will usually be sorted in the same way), unless a Sensis staff member has elected to override the sorting rules by using the PLA field. As with appearance and suppression rules, the application of many of the sorting rules involves the software checking whether the listed elements appear in any of the relevant tables, and then dealing with the listing accordingly. Again, this process is almost entirely automated.
259 The Book Extract process is initiated by the Publishing Co-ordinators requesting the Book Extract routine to be run in relation to a particular directory via the RTMS. After the listings have been extracted and arranged in the CMP file, the Publishing Co-ordinators create the galley file by running a separate routine known as Book Production ... The Book Production routine builds the galley file and arranges the contents of the Book Extract in columns within the galley file in preparation for typesetting and pagination. Every line in the galley file has a discrete number, made up of the Item ID for the particular entry in the directory and a number indicating its place in the galley file.
154 After the galley file has been created, various reports are run to ensure that the listings have been extracted correctly and that their appearance complies with the Rules. If necessary, corrections are made manually. Additionally certain manual checks are made and “Late Change Requests” are actioned. These are to update customer details after a date called the “Last Listing Activity Date”. The primary judge found that, on average, each year publishing co-ordinators can make anywhere between zero and 25 Late Change Requests in each regional WPD, which will have some thousands of listings: see at [260]-[262].
155 The galley file is then paginated and typeset.
156 Prior to pagination the initial structure of the directory is determined by the publishing and marketing teams. The initial structure specifies the number of information pages the directory is to contain, the number of map pages, and the number of pages that the marketing team wishes to include in the directory (such as advertisements used to promote the second appellant’s products and services). These elements or components of the directories are not elements or components of the original literary works claimed by the appellants (which are the listings, enhancement of listings and arrangement of listings, in the case of WPDs). The initial pagination of the directory is achieved by running a software routine known as “Batch Pagination”. After pagination, the final structure of the directory is determined by adding the listings to the initial structure of the directory and determining how many pages in total the directory is to contain. The number of pages must be divisible by eight (for printing purposes). If necessary the number of pages is adjusted accordingly by reducing the number of information pages or increasing the overall number of pages with filler advertisements. The typesetting process involves the automated incorporation of display advertisements from a database into the paginated pages. The pages are then converted into a final PDF format for publication: see at [263]-[268].
157 In the case of the “Book Extract” process, as it applies to the YPDs, the primary judge (at [311]-[317]) found as follows:
311 Like the WPDs, the extraction of the listing information for YPDs and the creation of the galley file is undertaken using the Book Extract routine: see [252] – [259] above.
312 The Book Extract process for the YPD involves the same two stages as occur in relation to the WPD. However, there are additional processes which occur at each stage, due to the presence of headings and the need to arrange display advertisements in accordance with separate positioning rules.
313 In addition to listing information, the Book Extract routine for YPDs also extracts all of the headings which have listings under them in the designated directory, as well as their associated sub-headings and cross-references.
314 It also extracts alternative headings that do not in fact have listings under them but are designed to have the appearance of headings (for example, there is a heading in every directory for “Police Emergency” which simply states “see inside front cover”). These are known as “Must Appear”, “Notes” or “Fictitious” headings.
315 The headings are collated into a separate file known as the “Headings In Progress” file, which is combined with the CMP file at the Book Production stage to form the galley file.
316 During the sorting process, the Book Extract routine applies priority rules to the placement of display advertisements, in order to give effect to the requirements of the Rules. It also arranges each of the listings in alphabetical sequence under their various headings, applying Rules that are similar to those that apply to the WPD.
317 The galley file for a YPD is created by running the Book Production routine through RTMS in the same way as for a WPD: see [259] above.
158 Once again, after the galley file has been created, various reports are run, checks are made and late change requests are actioned. The primary judge found that, on average, publishing co-ordinators made between 50 to 150 late change requests in each regional YPD each year. Pagination and typesetting processes (substantially similar to those described for a WPD) are then undertaken: see at [318]-[325].
159 The appellants did not dispute the findings made by the primary judge with respect to the “Book Extract” process as it applied to WPDs and YPDs.
160 It is important to note a distinction between the production of a directory and the making of each claimed copyright work. Copyright is claimed in each work identified as a compilation which finds its form of expression in its particular WPD or YPD. However, each WPD and YPD is much more than the copyright work that is claimed. Copyright is not claimed, for example, in the form of expression of the information pages or the map pages or works in the form of advertisements.
The parties’ submissions
161 The appellants submitted that they had proved that each WPD and YPD was a work that was the result of sufficient effort of expression or the effort of “those who gather or organise the collection of material and who select, order or arrange its fixation in material form” for them to be held to be original works for copyright purposes. They submitted that, although the activities of selection and ordering can be “anterior”, they can still be activities of a type relevant to the ultimate form of a copyright work. They submitted that, on the evidence, there was much human collection, selection, verification, ordering and expression involved in the making of each work. They submitted that none of the works would have come into existence in the form in which they were ultimately published without the actions of the second appellant’s employees.
162 They submitted that to the extent that aspects of the system had been automated, that automation was built into the system at the direction of the second appellant’s employees and its application to particular directories had been controlled by the second appellant’s employees choosing which items of listing information were to be received automatically, specifying when and in what format they were to be extracted and presented for publication, and checking and collecting the output prior to sending the final product for publication. They submitted that, although it was a complex and sophisticated computer system, the Genesis Computer System was nevertheless nothing more than a tool, which was utilised by the second appellant’s employees to create the works in accordance with the requirements of the Rules. They submitted that the Genesis Computer System was merely a complicated example of making a work with the aid of such proprietary programs as Word, AutoCAD, Garage Band or Photo Shop.
163 On the other hand the respondents submitted that the appellants had failed to properly address the issue of authorship of the compilations. They submitted that the work of individuals, as relied upon by the appellants, was directed towards the making of the Genesis Computer System database from which individual regional directories could be extracted. However, no claim for copyright protection and infringement of that copyright had been made in relation to that database or any related computer programs. They submitted that the compilations for the directories in suit were made by the “Book Extract” process. Human interactions at this stage were in relation to production and editorial issues. Accordingly, it was the extraction of the lists of entries for particular directories that was the first relevant step for the purpose of considering originality and authorship.
CONSIDERATION
164 The starting point must be the identification of the alleged copyright work. That starting point is critical because it is only at that point that one can ask and then consider the question: is this an original work? It is only by looking back from that vantage point that one can identify and assess the nature and quality of the acts that can be said to contribute to the material form of the work for which copyright is claimed. In the case of a compilation the relevant acts are of those who gather or organise the collection of material and who select, order or arrange its fixation in material form: Ice TV at [99]; see also Waterlow Publishers Ltd v Rose (1989) 17 IPR 493 at 500. Of necessity, those acts must be the acts of an author or authors.
165 I would not, therefore, accept, without qualification, the respondents’ submission that the extraction of the list of entries for particular directories is the first relevant step for the purpose of considering authorship and the originality of the works in question. Undoubtedly extraction was an essential step in the making of the relevant compilation in each case. However, the respondents’ posited first step initiates a process of inquiry that looks forward to an end-point that is the reduction to material form of the claimed copyright work, whereas the identification of the claimed copyright work must be the starting-point for the inquiry. If that starting-point is not taken then the inquiry is skewed by ignoring antecedent acts that may be relevant acts of authorship in relation to the work in question.
166 In my view the work of the second appellant’s employees is relevant to the consideration of whether each work, as a compilation, was an original literary work for copyright purposes. However, as I have noted, this work was more in the nature of collecting, entering and manipulating data to provide the fabric (the Genesis Computer System database) out of which each identified compilation in the WPDs and YPDs was to be fashioned. In this sense it can be seen that those activities contributed to the making of each claimed copyright work. However, significantly, the selection, ordering and arrangement of information to fix the compilation in its material form was computer-generated by the Genesis Computer System.
167 Contrary to the appellants’ submission, the Genesis Computer System was not a mere tool utilised by the second appellant’s employees for this purpose. To describe the functioning of the system in this way obscures the fact that the activities carried out by the Genesis Computer System in the “Book Extract” process were transformative steps that were obviously fundamental to the making of the compilation in each case. It was those activities that resulted in each compilation taking the form that it did. Those activities replaced what would otherwise have been, no doubt, the extensive work of individuals deploying their respective intellectual resources and capacities to select, order and arrange the listings as they appeared in each WPD or YPD, albeit in accordance with specifically mandated rules and procedures. When carried out by individuals, activities of this kind undoubtedly would have been of an authorial nature and would have been counted as an essential contribution to the making of the compilation in each case. However, in the present case, these activities, essentially, were not those of an author for copyright purposes. The appellants, no doubt for good commercial reasons, effectively supplanted the involvement of authors in carrying out those transformative steps.
168 In this connection it is not to the point that the second appellant’s employees were also involved (as the appellants submitted) in selecting, customising, maintaining and operating the computer systems that were deployed in the production of the directories, including particularly in relation to the “Book Extract” process. Those activities are akin to educating, training or instructing individuals, and maintaining a sufficient number of them, to carry out the discrete activities of selecting, ordering and arranging material to create the individual compilations. However, the two bodies of activity should not be confused for one another. It may well be, of course, that the activities of the second appellant’s employees, in this regard, have resulted in the creation of other works (for example, a computer program or a compilation of computer programs) that are protected by copyright. However, no such claims have been made in this proceeding.
169 No doubt questions of fact and degree are involved in forming a judgment about whether a work is an original work for copyright purposes: see, for example, the effect of the authorities summarised in Desktop Marketing by Lindgren J at [160] (proposition 7). Similar questions arise in forming a judgment about authorship: IceTV at [99]. Leaving aside the possibility of non-authorial contributions that are, overall, and in context, insignificant or inconsequential, it is essential to a finding of originality for copyright purposes that the work be one that is properly characterised as originating from an author or authors. In my view, the compilations claimed in this case cannot bear that characterisation. The contribution of the essentially computer-generated “Book Extract” process was of such overwhelming significance to the expression in material form of each compilation that none of the compilations can be properly characterised, overall, as a work that originates from an author or authors, even though elements of authorial contribution are present. It follows, in my view, that none of the works can be an original work for copyright purposes. Thus copyright cannot subsist in those works.
170 This conclusion makes it unnecessary to consider the additional contribution of other computer-generated activities (such as the rollover process) to the making of each compilation.
OTHER MATTERS
The decision in Desktop Marketing
171 The appellants relied on the decision in Desktop Marketing and submitted that it should be followed with the result that, in the present case, copyright should be found to subsist in the identified compilations, contrary to the conclusion of the primary judge.
172 The decision in Desktop Marketing does not compel a different conclusion to the one reached by the primary judge on the issue of copyright subsistence.
173 Desktop Marketing dealt with the question whether the Act’s requirements of originality and authorship, in the case of a compilation of factual information, can be satisfied by proof of the labour and expense of collecting, verifying, recording and assembling data to be compiled in a routine format or whether those requirements necessitated “intellectual effort” or a “creative spark” in respect of one or more of the form of the individual entries, the selection of the elements to be included in the compilation or the arrangement of the compilation as a whole: see Lindgren J at [18] and [160]. Sackville J at [273] identified Desktop’s position to be that the mere “industrious collection and arrangement in a trite format of publicly available information” could not satisfy the requirements of originality in the absence of an intellectual contribution in terms of the selection or arrangement of the compilation.
174 It can be seen that a significant issue in Desktop Marketing was the scope for variance in selection, expression or arrangement in compilations of factual information and whether copyright subsists in the form of a trite presentation as opposed to one involving “intellectual effort” or a “creative spark” to produce something more. In light of the issues there presented, the Full Court decided that the course of authority supported the position that originality in a factual compilation may lie in the labour and expense involved in the collection of information to be recorded in a compilation and other related activities, although no particular judgment or skill was involved: see Black CJ at [1] (agreeing with the separate reasons given by Lindgren and Sackville JJ); Lindgren J at [160] (proposition 10) and [165] and Sackville J at [407].
175 At first instance, in Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2001) 181 ALR 134, Finkelstein J (at 136) observed:
There are literally hundreds of appropriately trained or qualified employees who make some contribution towards the production of a telephone directory. When the nature of the work they do is described, there arise three relevant questions to the subsistence of copyright: (a) Must a copyright work have an author? (b) Does a telephone directory have an author? (c) Is every employee who contributes to the final product a joint author of the directory? These are difficult questions for which there are no ready answers.
176 In IceTV at [134] Gummow, Hayne and Heydon JJ drew attention to these observations and regarded them as a reason to treat the Full Court decision in Desktop Marketing “with particular care”.
177 Although the facts of Desktop Marketing involved the computer-assisted making of compilations found in telephone directories, the point raised so starkly by the respondents in the present case, namely the identification of activities that are distinctly non-authorial from those that are, arguably, authorial, and the consequence of that issue for determining copyright subsistence, were not the focus of attention. Desktop Marketing can be seen to have been decided by reference to the very specific issues that had been presented for determination by the Full Court.
The presumption in s 128
178 Finally, an issue arose as to the significance for the present case of the presumption in s 128 of the Act with respect to the subsistence of copyright. The section provides as follows:
Presumptions in relation to publisher of work
Where, in an action brought by virtue of this Part in relation to a literary, dramatic, musical or artistic work, the last preceding section does not apply, but it is established:
(a) that the work was first published in Australia and was so published during the period of 70 years that ended immediately before the commencement of the calendar year in which the action was brought; and
(b) that 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 at the time of the publication.
179 The appellants submitted that they had the benefit of this presumption. In particular they submitted that the presumption places on a defendant the burden of establishing that the work in suit is not original. It can be seen, however, that the presumption is not a conclusive presumption; it operates “unless the contrary is established”. Here the appellants adduced extensive evidence that was found in 91 affidavits. A large number of these deponents (23) were cross-examined. The respondents also adduced evidence, although that evidence was not as extensive as that adduced by the appellants. An issue arose between the parties as to whether the presumption continued to have any application in these circumstances. In my view it is not necessary to answer that question. If it be assumed that the presumption continued to have application, the primary judge was entitled to have regard to the extensive body of evidence before her, whether adduced by the appellants or the respondents. That evidence dealt with what may be classified as the authorial and non-authorial contributions to the making of the compilations. That evidence established “the contrary”, namely that copyright did not subsist in the compilations because much of the contribution to each work was not the result of human authorship but was computer-generated.
DISPOSITION
180 I agree with the orders proposed by Keane CJ.
I certify that the preceding fifty-two (52) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. |
Associate:
Dated: 15 December 2010
