Focus: Copyright in factual compilations
24 April 2009
In brief: The High Court of Australia has unanimously upheld an appeal by IceTV Pty Limited and IceTV Holdings Limited in IceTV Pty Limited v Nine Network Australia Pty Ltd1, finding that Ice did not reproduce a substantial part of Nine's television program schedules in its electronic program guides. Partner Miriam Stiel (view CV), Senior Associate Amanda Andreazza and Lawyer Katherine McMahon report.
How does it affect you?
- Organisations which compile and publish factual compilations may not enjoy the copyright protection they previously thought, unless they can demonstrate that sufficient skill and labour has gone into putting the compilation together and expressing it in a particular way, regardless of its commercial value, and can identify all of the authors who have taken part in that process.
- Third parties now have greater scope to use another organisation's compilation in developing applications and services that draw on facts contained in the compilation without a licence from the copyright owner, even if the organisation expended time and resources in compiling those facts as part of the compilation.
The High Court's decision marks the end of a 3-year battle between the free-to-air television network and the independent electronic program guide provider. Nine commenced copyright infringement proceedings against Ice in 2006. Ice was successful at first instance, but that decision was unanimously overturned on appeal to the Full Federal Court. In late 2008, Ice sought and was granted special leave to appeal to the High Court and the much anticipated final decision was handed down on 22 April 2009.
For Ice, the decision means that it can continue to provide its electronic program guides to its subscribers without a licence or authorisation from Nine.
More broadly, the decision indicates that it is not the commercial value of a compilation of factual material which is relevant in determining the scope of copyright protection which the compilation attracts. Rather, protection will be afforded on the basis of the form in which that information is expressed.
Background
IceTV provides a subscription-based electronic television programme guide (EPG), for use with digital personal video recorders (PVRs) or PC media centres. The EPG, known as the IceGuide, is delivered to PVRs or media centres via the internet and, once uploaded onto devices, enables subscribers to view free-to-air television program listings for the coming six to eight days and to record those programs if they are not able to watch them at the time they are aired. At the time that the proceedings were commenced, Ice had agreements with the ABC and SBS to reproduce their listings in the Ice Guide, but had been unable to negotiate similar agreements with the other free-to-air networks, including Nine. Nine's commercial interest in the litigation was said to stem from the fact that the IceGuide enables skipping of advertisements which would result in lost revenue for Nine.
For its part, Nine selects and acquires rights to programs for stations within its network, and decides when, and in what order, those programmes will be aired. The resulting information is recorded in a computer database, supplemented with additional program detail information (such as ratings) and synopses and provided to television program guide aggregators in the form of a weekly schedule. The aggregators then combine the weekly schedule with comparable schedules supplied by other free-to-air networks to produce aggregated programme guides which are published by either the aggregators or their clients in a variety of media including print and online.
The manner in which Ice prepared the IceGuide was relevant to Nine's case. Ice gave evidence that it created and updated the IceGuide through a multi-stage process. The process relied heavily on independent inquiry and prediction, but to the extent that Ice was unable to predict time and title information, it sourced that information from various publicly available aggregated guides.
It was this stage in the process that was of particular concern to Nine. Nine claimed that by reproducing time and title information from the aggregated guides, Ice had copied (albeit indirectly) a substantial part of Nine's weekly schedules, which Nine contended were original copyright works.
Ice accepted that copyright subsisted in each weekly schedule as an original literary work, but denied that it had reproduced a substantial part of Nine's weekly schedules. It also denied that reproduction from an aggregated guide was a reproduction of Nine's weekly schedule for infringement purposes.
The High Court's decision, delivered in two separate judgments, focused on the issue of substantiality. In light of the findings made, the High Court did not need to address the issue of indirect infringement.
Substantiality
The question of whether the time and title information taken by Ice was a substantial part of Nine's weekly schedule was answered in the same way, but for slightly different reasons, in the two separate judgments.
The High Court confirmed the long-held principle that the question of substantiality depends on the quality rather than the quantity of the part that has been taken, which in turn involves an assessment of the originality of the part which has been taken.
Both judgments criticised the approach taken by both Justice Bennett at first instance and the Full Federal Court in determining the question of substantiality by focusing on whether or not Ice had misappropriated the benefit of Nine's skill and labour in creating the weekly schedules. The lower courts had reached different conclusions because of their divergent views as to what skill and labour was relevant. While the High Court ultimately agreed with Justice Bennett's finding that Nine's efforts which had been directed to selecting and arranging programs for broadcast were not to be taken into account for the purpose of assessing substantiality, it came to its decision by different routes.
Chief Justice French and Justices Crennan and Kiefel emphasised the importance of the particular form in which the underlying facts which make up the compilation are expressed and held that it was only skill and labour directed to that expression which could be taken into account. While conceding that the weekly schedules as a whole involved the orderly arrangement of various elements and that skill and labour were expended on producing them, their Honours noted that the way in which the time and title information was conveyed was essentially dictated by the nature of the underlying information and found that the expression of that information lacked sufficient mental effort or exertion to satisfy the originality requirement for the purpose of copyright infringement.
Justices Gummow, Hayne and Heydon also reflected on the 'extremely modest skill and labour' involved in setting out the programs which had been selected for broadcast by Nine. Their Honours held that the court's focus should not be on the part of the compilation which has been copied but on a comparison between what was taken and the work as a whole. Adopting this approach, their Honours found that the originality of Nine's weekly schedules was not to be found in the provision of time and title information but in the selection and presentation of the work as a whole and that the latter had not been reproduced by Ice.
Their Honours referred to the EU's adoption of a database directive aimed at protecting the appropriation of labour and skill involved in collecting independent works and arranging them in a systematic way such as a database and noted that there was no counterpart under Australian law. In the absence of such a 'database right', their Honours held that matters relating to the misappropriation of Nine's skill and labour were not relevant to determining the issues in this case.
Both judgments were influenced by underlying policy considerations in determining the scope of copyright protection. Chief Justice French and Justices Crennan and Kiefel were concerned to preserve the rights of the reading public in accessing and using facts and information. Justices Gummow, Hayne and Heydon focused on the technology at the heart of this dispute and the interests of television viewers in the dissemination by means of new technology of program listings rather than the commercial value which the time and title information may have had to Nine.
Implications
Although the High Court did not make any findings on the extent to which copyright subsisted in the weekly schedules because of admissions made by Ice, it seems clear from the findings made on infringement that there has been a scaling back of the protection which Australian copyright law provides to creators and publishers of compilations. This may prompt affected organisations to lobby for amendments to the legislation to introduce database rights in Australia similar to those which exist in the United Kingdom.
At a practical level, creators of compilations should consider whether they do, or can, express their compilations in an original way. The greater the original productive thought which has gone into determining the particular form in which the facts are expressed in a compilation, the greater the protection. There may be some factual compilations which, by their very nature, cannot be expressed with any level of originality and so they will not be protected by copyright law.
Comments made by the court also emphasise the importance of being able to identify precisely both the compilation in which copyright is said to subsist and all of the authors of that copyright work. This may be particularly difficult where the facts contained in the compilation are regularly updated; where an organisation records the same factual material in more than one form of compilation; and where the process of creation of the compilation involves both a large number of people and significant use of technology. Creators of compilations who wish to protect their copyright will need to keep full records of the whole process of preparation of the relevant compilations.
Organisations who wish to make use of existing compilations in producing their own works have greater scope to do so in light of this decision. However, whether or not third-party use of a compilation will constitute copyright infringement must still be considered on a case-by-case basis, taking into account the nature of the original compilation and the way in which the facts contained in it are to be used.
Footnotes
Published 24 April 2009
For further information, please contact:
- Miriam StielPartner,
Sydney
Ph: +61 2 9230 4614
Miriam.Stiel@aar.com.au - Tim GolderPartner,
Melbourne
Ph: +61 3 9613 8925
Tim.Golder@aar.com.au - Peter JamesPartner,
Brisbane
Ph: +61 7 3334 3360
Peter.James@aar.com.au - Ted MarrPractice Manager - Greater China Intellectual Property,
Beijing
Ph: +86 10 8518 8128
Hong Kong
Ph: +852 2903 6210
Ted.Marr@aar.com.au
