Telstra v PDC special leave

The High Court (Gummow and Bell JJ) refused Telstra’s special leave application this morning.

Young QC for Telstra ran hard on the concurrent findings that there was human skill and effort in the collection and verification of the data. However, that ran up against Yates J‘s findings at [167] – [169] and Keane CJ’s findings at [89] – [90].

At [113], Perram J had said:

Had the tasks been attended to manually an original work would have ensued.

Which might seem a very strange, technology specific approach to take in this day and age.

Bell J, however, challenged Young QC about the difference between “computer-assisted” and “computer-generated”. Gummow J at one point stated, you need a database directive.

One might wonder whether allowing special leave in this case would have thrown any light on the differences in approach between the two judgments in IceTV. In November, the Full Federal Court is scheduled to hear an appeal in Dynamic Supplies. Who knows whether it will get there or not. If it did, however, it might present an interesting vehicle for exploring the new world which IceTV ushered in.

Still no copyright in (telephone) directories DownUnder

The Full Court (Keane CJ, Perram and Yates JJ) have dismissed Telstra’s appeal in the Phone Directories case.

First impressions.

Given the (arguably) disparate reasoning in the 2 judgments in IceTV, the Chief Judge has to weave a rather tricky path. His Honour nonetheless clearly recognised:

[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. ….

[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”.

Keane CJ then distinguished Desktop Marketing:

[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.

(See also per Yates J at [177].) Accordingly, Keane CJ advanced as the principal reason for dismissing the appeal:

[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.

Similarly, Yates J said:

[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.

See also [165] and [167].

Perram J appears to have reached the same point albeit by what may rather be a somewhat different route. First, his Honour was willing to accept that the labour and effort spent in collecting, verifying and correcting the information may have assisted in establishing that the directories were original in the limited sense of not being copied from some other source. However, it did not qualify as “independent intellectual effort” (IceTV at [33]) or “sufficient effort of a literary nature” (IceTV at [99]” since it was not directed to the reduction of the collected data into the material form comprised of the directories. (See [104] and [112].)

Ultimately

[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.

Accordingly, as there were no human authors of the directories, they were not original works.

In taking this approach, it seems likely that it will prove very difficult for those using computer systems to store and manipulate data and to produce complicated “print outs” to claim copyright in those products.

On a more cheerful note, Keane CJ and Perram J both recognised the impracticality of a requirement that a copyright claimant must identify all the human authors by name.

Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149

Lid dip “Rounders1990” (who presumably must update himself to “Rounders2010”).

Copyright fest in Melbourne

IPRIA and CMCL at Melbourne Uni. are holding a half-day forum on 18 March on:

  • iiNet
  • Larrikin (Down Under)
  • Telstra v PDC

Speakers are:

 

David Brennan, Melbourne Law School
Melissa de Zwart, University of South Australia
David Lindsay, Monash University
Beth Webster, Intellectual Property Research Institute of Australia
Philip Williams, Frontier Economics
Details and registration here.

No copyright in telephone directories DownUnder

Gordon J, sitting at first instance, has ruled that copyright does not subsist in Telstra’s White Pages directories or Yellow Pages directories confirming the revolution wrought by IceTV.

There are 347 paragraphs and time does not permit careful analysis at this stage. According to the summary in [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 [2009] HCA 14; 254 ALR 386 at [33]) and further or alternatively, “sufficient effort of a literary nature” (IceTV [2009] HCA 14; 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 [2009] HCA 14; 254 ALR 386 at [102]);
2.3 was not the result of human authorship but was computer generated;
the Works cannot be considered as “original works” because the creation of each Work did not involve “independent intellectual effort” (IceTV [2009] HCA 14; 254 ALR 386 at [33]) and / or the exercise of “sufficient effort of a literary nature”: IceTV [2009] HCA 14; 254 ALR 386 at [99]; see also IceTV [2009] HCA 14; 254 ALR 386 at [187]- [188].

It may be particularly interesting to see why copyright did not subsist in the Yellow Pages directories, which were classified directories.

At [46], her Honour explained why Desktop Marketing no longer represented the law in Australia following IceTV (here and here):

Before turning to the facts, mention must be made of the decision of the Full Court of the Federal Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112; (2002) 119 FCR 491 (Desktop Marketing). In that decision, copyright was found to subsist in certain editions of WPDs and YPDs. The Applicants submitted that the resolution of the present case remains governed by the outcome in Desktop Marketing [2002] FCAFC 112; 119 FCR 491 and that the High Court’s comments on copyright subsistence in IceTV [2009] HCA 14; 254 ALR 386 should be regarded as obiter dicta. I reject that contention. Firstly, IceTV [2009] HCA 14; 254 ALR 386 is binding authority on the proper interpretation of the Copyright Act. The reasoning of both plurality judgments establishes principles of law beyond copyright infringement. Secondly, the High Court directly warned of the need to treat Desktop Marketing 119 FCR 491 with particular care: see IceTV [2009] HCA 14; 254 ALR 386 at [52], [134], [157] and [188]. Thirdly, Desktop Marketing [2002] FCAFC 112; 119 FCR 491 did not deal directly with the issue of authorship. Rather, all issues in respect of copyright had been conceded other than that of originality. In fact, Finkelstein J (at first instance) questioned the assumptions the parties had made about authorship: Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 612; (2001) 51 IPR 257 at [4]. Finally, the facts of this case are significantly different. The WPDs and YPDs in question are different. Moreover, the Genesis Computer System which stored the relational database and which was used in the production of some of the WPDs and YPDs in issue in these proceedings (after September 2001 in the case of YPDs and late 2003 in the case of WPDs) was not in use in Desktop Marketing [2002] FCAFC 112; 119 FCR 491. (The Genesis Computer System is considered in detail at [60]ff below).

Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44