In the wake of the High Court's decision in IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14 (IceTV), a recent decision of the Full Federal Court has provided some helpful guidance on when a compilation will be an original literary work protected by copyright.
In Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd [2012] FCAFC 162 the Full Federal Court upheld the primary judge's finding that Tonnex International Pty Ltd (Tonnex) had infringed the copyright of Dynamic Supplies Pty Ltd (Dynamic) in a compatibility chart for printer and computer consumables.
This compatibility chart was embodied in an electronic file called the 'March 2008 CSV file' which was used to upload the chart to Dynamic's website. It featured certain product information arranged in columns, laid out to facilitate cross-referencing and customer searches via the website. All of the information in the chart had been taken from the one source, Dynamic's inventory database (the Navision database).
Dynamic's case was that by copying information from Dynamic's website, Tonnex had reproduced a substantial part of the March 2008 CSV file in compatibility charts accompanying various price lists released by Tonnex in 2008, 2009 and 2010.
The key issue at trial and on appeal was whether the March 2008 CSV file was an original literary work within the meaning of section 32 of the Copyright Act 1968 (Cth).
Was the March 2008 CSV file an original literary work?
At first instance, Yates J identified three key principles for determining whether a compilation is an original literary work. These principles were endorsed by the Full Federal Court on appeal, and drew on recognised authorities, including (in particular) the decision in IceTV. The principles were:
- original works must come from authors (in the sense that they cannot have simply been copied);
- the work must be the result of human intellectual endeavour, which means:
- the work 'must have required some independent intellectual effort or exercise of sufficient effort of a literary nature for its creation'; but
- the work need not show any 'literary merit nor novelty or inventiveness as understood in patent law'; and
- copyright will protect the particular form of expression that is the compilation, but will not protect 'mere facts, ideas or information contained in a compilation'.
Dynamic initially sought to argue that the March 2008 CSV file was the result of the joint authorship of two Dynamic employees, Mr Campbell and Ms Sacristan. It also argued that a number of other employees could be joint authors because of their involvement in entering product information into the Navision database. The gist of Dynamic's argument was that it was unnecessary to make a definitive decision on the identity of the authors of the March 2008 CSV file, as all possible authors were Dynamic employees and so Dynamic would in any event, own the copyright by virtue of section 35(6) of the Act.
Yates J did not accept this argument at trial, though instead concluded that while Ms Sacristan and other employees had played a part in the creation and maintenance of the Navision database, the compatibility chart had been authored by Mr Campbell alone.
Was the work the result of human intellectual endeavour?
This second issue formed the basis of Tonnex's main ground of appeal. Tonnex argued that the primary judge had erred in finding that Mr Campbell had exercised more than a negligible amount of skill and judgment in creating the March 2008 CSV file (this being sufficient to make it an original literary work).
Yates J held that it was irrelevant that the information in the compatibility chart had only come from the Navision database. Mr Campbell had still exercised judgment by selecting which information would be useful to customers searching a website for product information, and by arranging that information in a way that would be most convenient for customers.
On appeal, Tonnex challenged the evidence Mr Campbell had given at trial, saying that the thrust of his evidence had been that the intellectual effort was exerted in relation to the compiling of the Navision database, not the compatibility chart. The Full Federal Court rejected this submission, saying that Tonnex had misunderstood the effect of Mr Campbell's evidence. Their Honours stressed that it was Mr Campbell's selection and arrangement of the information (in the CSV file) that was decisive in this case, not the information itself.
Was the form of expression more than just mere facts, ideas or information?
Dynamic's arguments on the subsistence of copyright were bolstered by evidence of other compatibility charts that were laid out in very different ways, while still containing the same basic information. Yates J held that here, unlike in IceTV, the particular information did not dictate the form it was expressed in. His Honour remarked:
... simplicity itself may be a virtue and does not deprive a work of originality for copyright purposes, unless that simplicity is a demonstration of the absence of skill or effort in the circumstances.This finding distinguished the case from IceTV, where the High Court held that there was no originality in the form of expression of a television program schedule, as 'a chronological arrangement of times at which programmes will be broadcast is obvious and prosaic, and plainly lacks the requisite originality'.
Other grounds of appeal
On appeal, Tonnex also sought to have the matter remitted to the trial judge in light of what it claimed was further evidence about the authorship of the another file which Mr Campbell had referred to in his evidence at trial (the tab delimited file). The tab delimited file was a price list issued by Dynamic featuring a compatibility chart which Tonnex argued had substantial similarities in composition to the March 2008 CSV file.
The Full Federal Court declined to remit the matter to the trial judge, but nevertheless made some observations about the tab delimited file and the March 2008 CSV file. Their Honours observed that possibly one of these works was created from the other, or perhaps they were both originally created as one work, but either way there was no reason why both works could not be copyright works. Their Honours said that, at the very least, copyright subsisted in one of these works and Tonnex had infringed the copyright in that work.
Conclusion
This case provides some much needed guidance in the wake of the High Court decision in IceTV. Yates J's reasoning, approved by the Full Federal Court, followed the High Court's approach by considering whether the form of expression of the compilation is the result of some 'independent intellectual effort' on the part of the author (or authors). Unlike IceTV, here the Court found that the author had exerted intellectual effort in selecting and arranging information, and that that effort was not negligible.
