Background

Nine executives create a “Weekly Schedule” for each week, showing the order of programmes on each day (amongst other things), and these schedules are sent to the “Aggregators”, who produce television guides for use by the public. IceTV makes an electronic programme guide called IceGuide, but unlike the Aggregators, they have no licence from Nine to do so. Instead, to create their IceGuide, an IceTV employee watched lots of television to create templates for each station (possible because television programming tend to be regular and predictable), and week by week variations would then be corrected by reference to the public Aggregated Guides. IceTV took time and title information from the Aggregated Guides, as there would have been no other way that they could have found these out before the shows actually screened.

Section 31 of the Copyright Act 1968 grants to copyright owners of a work (which includes a compilation) the exclusive right to reproduce the work in a material form. The whole of the work does not have to be copied; it suffices that a “substantial part” is copied (s 14), and just what is a “substantial part” is the million dollar question in this litigation.

At first instance, before Bennett J in the Federal Court, IceTV won, but this decision was reversed on appeal to the Full Federal Court before Black CJ, Lindgren and Sackville JJ. Their Honours held that a substantial part had in fact been reproduced by the taking of time and title information, as Nine had expended a great deal of skill and labour in the selection and arrangement of the programmes, and this preparatory skill and labour should not be separated out from the relatively modest skill and labour in actually writing down the programmes into the form of the Weekly Schedules. Subsequently, IceTV appealed to the High Court to reverse the Full Federal Court decision.

The High Court decision

There were two joint judgments, both coming to the same conclusion, but the reasoning in each differs somewhat. The first is the judgment of French CJ, Crennan and Kiefel JJ, and the second is that of Gummow, Hayne and Heydon JJ. (For convenience of exposition, I will, with due respect to the other judges, refer to these judgments as the judgments of French CJ and Gummow J, respectively.)

The first point to note is that this case differs from the earlier case of Desktop Marketing Systems v Telstra (2002) 119 FCR 491, a decision of the Full Federal Court composed identically to the Full Federal Court decision in IceTV. In Desktop Marketing, Telstra was able to show that copyright in the White and Yellow Pages had been infringed by the defendant, who made searchable CD-ROM products that contained data derived from those telephone books. In that case, the issue was whether copyright subsisted in the White and Yellow Pages, that is, whether those works were protected by copyright at all. However, in IceTV, IceTV had conceded that copyright subsisted in Nine’s Weekly Schedules, and only contested that it had copied a “substantial part” of those works. As always, the question of whether copyright subsists in a work and the question of whether a “substantial part” has been taken are two separate questions, although the issues often intermingle. This concession probably irritated the High Court to no end, with Gummow J stating that the concession appears to have “distracted attention from the necessary part these principles must play” in the resolution of the dispute.

Of the two, the judgement of French CJ is probably the clearest in elucidating the difference between the questions of subsistence of copyright and whether the part taken was a substantial part, and the analysis is rather orthodox. French CJ reiterated that for subsistence of copyright, the Copyright Act only requires that that the work be “original” (s 32), and originality for this purpose means that the literary work “originated” with the author; that is, the author must not have copied it from someone else. Whether it has any literary merit or whether it is novel does not matter. In Desktop Marketing, it was said that whether copyright subsists in a compilation depends, in a significant way, on the amount of labour, capital, expense or skill expended in the making of the compilation. Here, however, French CJ said that 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”, because the Act only requires that the work originate with the author.

In the context of infringement, on the other hand, French CJ repeated the well-worn mantra that whether the material copied is a substantial part depends on the “quality” of what was copied, and not just on the quantity taken; furthermore, a factor critical to the assessment of “quality” is the “originality” of what was copied. He said that just as with subsistence of copyright, “originality” means that the part reproduced has to have originated from the author, but in the context of infringement, it also has a broader meaning. You need to consider the originality of the expression of what was taken. Why is that so? It is because of the fundamental idea that copyright only protects the expression of information, but not the information itself; you cannot copyright a fact or an idea, just the expression of that fact or idea. Here, French CJ stated that the time and title information, being in chronological order, which was obvious and prosaic, was not in a form that required any kind of mental effort. The expression lacked the requisite originality for it to constitute a substantial part. Nine submitted that it expended a great deal of skill and labour in preparing the schedule of programmes, an argument that had won favour in the Full Federal Court. This was said to be irrelevant for two reasons. Firstly, the skill and labour had to be directed to the originality of the form of expression, and secondly, although consideration of the amount of skill and labour might help determine whether the expression was original, the latter is the ultimate question.

Turning to Gummow J’s judgment now, he touched on a number of additional issues that we will dispense with first. Nine had submitted in the High Court, for the first time, that the relevant work in suit was the Nine Database rather than the Weekly Schedules; even though there were difficulties with this argument, the appeal could be dealt with without resolving this issue. In addition, Gummow J was also critical of the emphasis on “Nine’s skill and labour”, because copyright in a work comes about from the exertions of its human authors, even if the copyright is then immediately assigned by way of an employment contract.

On the issue of infringement, Gummow J was critical of the emphasis on the appropriation of skill and labour in determining whether copyright has been infringed. This is because the Act does not afford protection to skill and labour alone and there is no general doctrine of “misappropriation”. He said that there is a need to treat with some caution the emphasis in Desktop Marketing upon “labour and expense” and upon misrepresentation, but this was not an occasion to reconsider the issue of subsistence of copyright. He stated that the primary judge was correct when she stressed that the preparatory work was directed to the conduct of Nine’s business. He also made reference to the process of “predicting it over”, where IceTV did not just copy information from the Aggregated Guides but sought to independently recreate as much of the information as possible.

Analysis

With respect, the judgment of Gummow J et al. is probably not as decisive or as clear as that of French CJ et al. While both judgments are critical of the emphasis on raw skill and labour, undirected at expression or the production of an original work, Gummow J muddied the water with his reference to “predicting it over”. It is unclear, I think, the amount of weight he placed upon the fact that IceTV used templates in an attempt to minimise the amount of information that they had to copy from the Aggregated Guides, if it was sufficient to decide the case on the basis that the time and title information lacked sufficient originality of expression. Furthermore, while he stated that the conclusions reached by the primary judge with regards to substantiality were correct, it is unclear which aspects of Bennett J’s reasoning he would adopt. For instance, she had found that Nine’s purpose was not to create a literary work, and thus the preparatory skill and labour in determining the order of programmes was not co-extensive with the skill and labour in creating the Weekly Schedule. But since when was intention or purpose relevant in copyright? Bennett J also focussed largely the appropriation of skill and labour, an approach Gummow J said needed to be approached with caution.

However, it is clear from both judgments that the High Court did not consider this the appropriate time to reconsider subsistence of copyright in compilations, as opposed to infringement. Thus, Desktop Marketing is not directly overruled, and the question of whether the de minimis requirement of creativity in the American case of Feist Publications v. Rural Telephone Service 449 U.S. 340 is good law in Australia will have to wait. I would argue that the decision in Desktop Marketing with regards to compilations is inconsistent with the law relating to other literary works. Just as the amount of skill and labour expended in historical research culminating in an original literary (non-compilation) work has no bearing on the subsistence of copyright in that literary work (such as in Baigent v Random House Group [2007] EWCA Civ 247, The Da Vinci Code case), it makes sense that nothing should turn on the preparatory skill and labour expended in the collection or preparation of data that goes into a compilation. That is, of course, unless the process of collecting the data somehow impacts upon the expression of that data, such as through discriminatory selection and arrangement.

Going back to the question of infringement, however, it would appear that the court has reached the conclusion (doctrinally-sound, I would argue) that a substantial part is taken only when some of the original expression has been taken, and that the question of skill and labour cannot subsume that fundamental question. In this case, because the time and title information was in such a prosaic form that it contains no modicum of original expression, the taking of such information could not have constituted the taking of a substantial part. Because the emphasis is on quality not quantity, it probably safe to say that there is no infringement even if a large amount (of what contains no original expression) is taken. Even if the Weekly Schedules contain only the time and title information (and did not contain other things like ratings and synopses), IceTV would not have infringed Nine’s copyright. Even if the Weekly Schedules contain some original, non-prosaic form of expression, if IceTV reproduced the time and title information in a prosaic form, I would argue that, again, there is no infringement.

So what of Desktop Marketing? If preparatory skill and labour is irrelevant to the question of originality in relation to whether a part is a substantial part, then it could be argued that it is incongruent for it to be relevant to the issue of subsistence of copyright. However, IceTV impacts upon the question of subsistence of copyright in a more indirect fashion. Take the White Pages from Desktop Marketing for instance. Suppose that we conclude that copyright subsists in the White Pages, even though the arrangement of names, addresses and phone numbers is prosaic and contains no original expression. But the taking of those names, addresses and phone numbers, being in a prosaic form, could not constitute a substantial part, even if you take the entire lot, because no original expression has been taken. One has to wonder whether it makes sense for copyright to subsist in the work if the taking of the entire work does not constitute an infringement; the concept of originality in the context of subsistence cannot be entirely distinct from that in the context of infringement. (The same might not be able to be said for the Yellow Pages and the unpublished Headings Books though.)

Ultimately, this case demonstrates the difficulties posed by the idea/expression dichotomy when it comes to compilations and functional works, where the expression and the idea can be rather inseparable. It is particularly problematic for emerging technologies that need other people’s data to function. The case of the iPhone developer accused of infringing RailCorp’s copyright in its train timetables comes to mind. While it could be said that in the case of Desktop Marketing, the defendant could have, in theory, recreated the information in the phone books by knocking on everyone’s doors, in the case of a train timetable or a TV schedule, independent recreation will not get you very far. The copyright holder’s monopoly in these cases, in a real way, extends to the facts themselves, and the decision in this case goes far in showing what legitimate use can be made of another’s compilation of facts or data.

Conclusion

The High Court has revisited the question of what it means to take a “substantial part” of a compilation, preferring to speak of the taking of any original expression, rather than the “appropriation” of another’s skill and labour. Skill and labour, while a useful proxy, is not a substitute for that fundamental question. Furthermore, that skill and labour should be directed at original expression. Desktop Marketing, authority for the question of subsistence of copyright in a compilation, remains to stand another day, but as Gummow J et al. wrote, “It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over the years.” It may be too early to set the vultures loose, but it may not be long before the bones of Desktop Marketing are picked clean.