The Full Federal Court’s landmark decision this week in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149 suggests that the ‘sweat of the brow’ – the expending of skill and labour in creating a database or other work – is not, of itself, sufficient to attract copyright protection under the Copyright Act 1968 (Cth). Something more is required – that something being that the work in question must originate from some independent intellectual effort of a (human) author.
Telstra’s undoing, it seems, was its reliance on a highly computerised process used for producing the White Pages and Yellow Pages directories. Chief Justice Keane, and Justices Perram and Yates, unanimously upheld Justice Gordon’s first instance decision that copyright does not subsist in Telstra’s directories (you can find our alert on the Federal Court first instance decision here).
Why Telstra appealed
Telstra asserted that Justice Gordon ought to have found that copyright subsisted in the directories. This was on the basis 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 effort in identifying and advising on the selection of material for inclusion, how it should be presented, and in ensuring the completeness and accuracy of those entries and their ultimate presentation in the directories, constituted original intellectual effort;
- failed to appreciate that original intellectual effort was involved in the use of computer systems to give effect to certain ‘rules’ encoded in Telstra’s computer systems (these rules were used to identify and correct anomalies in the directories); and
- wrongly disregarded the original intellectual effort required for the maintenance and operation of the various computer systems used in the production of the directories.
The central concept of 'authorship'
The Full Court rejected Telstra’s arguments, and approved Justice Gordon's emphasis on the relationship between authorship and originality under Australian copyright law. In doing so, it accepted the respondent’s argument 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 … data’.
It mattered not, according to the Full Court, that Telstra had expended considerable time, effort and cost in collecting and verifying the directories’ constituent facts. Rather, what mattered was whether the individual author(s) of the directories created a work that was an original expression of those facts. The Court held that this could not be the case, as the directories were brought into the form in which they were published primarily through an automated process.
In the words of Chief Justice Keane:
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 ...His Honour held that the activities of individuals in the gathering of the data, its transmission to the Genesis Computer System (which processed and stored the data), and the verification and pagination of the directories, were simply not sufficient intellectual effort to constitute the activity of ‘compilation’ for the purposes of the Copyright Act.
Telstra argued, in the alternative, that the directories were produced by the ‘collaboration of the individuals involved in compiling them’ and were therefore works of 'joint authorship' under the Copyright Act. The Full Court also rejected this argument, holding that the contributions of each of the groups of individuals responsible for producing the directories were made quite separately, and was not ‘collaboration’ of the kind contemplated in the definition of ‘joint authorship’ under the Copyright Act.
Presumption of copyright subsistence
Section 128 of the Copyright Act provides (in summary) that if a literary work was first published in Australia and a name purporting to be that of the publisher appeared on copies of the work as first published, then, unless the contrary is established, copyright will be presumed to subsist in the work and the person whose name so appeared will be presumed to have been the owner of that copyright.
In attempting to circumvent the ‘authorship’ requirement, Telstra argued that the presumption in section 128 should apply in the present case, since its name appeared on the directories when they were first published in Australia.
The Full Court rejected this assertion, finding that there is simply no scope for section 128 to operate in circumstances where the evidence showed that copyright does not subsist in a particular work – which was the case in relation to the directories.
Looking forward – the protection of databases in Australia
In an age where automated processes reign supreme, humans craft ‘rules’ for machines to execute. This Full Court’s decision has confirmed that many databases simply will not meet the requirements for copyright to subsist (an outcome that many thought to be the result of the High Court’s earlier decision in IceTV Pty Ltd v Nine Network [2009] HCA 14).
Chief Justice Keane recognised that the decision ‘may give rise to a perception of injustice’ on the part of those whose databases have been appropriated – but it is a matter for the legislature to determine whether statutory reform should be adopted (for example, along the lines of the European Union’s 1996 Database Directive).
An appeal to the High Court by Telstra is unlikely, given the approach taken last year by the High Court in the IceTV decision. No doubt, Telstra and other businesses who rely on databases will push for legislative reform – and in the meantime will adopt ever more vigilant technical measures (to prevent website scraping) and ever more onerous contractual measures (to proscribe users from data mining).
Partner: Paul Kallenbach
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