Focus: Intellectual Property – October 2008
Copyright in factual compilations
In brief: The
High Court recently granted IceTV Pty Ltd special leave to appeal the Full
Federal Court decision in Nine Network v IceTV,
foreshadowing a wholesale review of the extent to which factual compilations
attract copyright protection. Partner Miriam Stiel
- Background
- Round one – first instance Federal Court case
- Round two – Full Federal Court appeal
- Round three – off to the High Court
- The next round
How does it affect you?
- The issue of copyright in factual compilations has taken on increasing urgency in the digital information age.
- Common examples of factual compilations include reference materials such as telephone and business directories, timetables, sporting fixtures and sales catalogues.
- Organisations that compile and publish factual compilations in print or online are concerned to protect any copyright interests in those compilations. At the same time, other organisations are recognising commercial opportunities in developing applications and services that draw on information contained in those compilations.
- Australian copyright law currently offers broad protection to factual compilations. The decision in this special leave application indicates that the High Court will scrutinise, and may redefine, the extent of that protection.
Background
Nine Network v IceTV 1 concerns an electronic program guide (EPG) for free-to-air television, created by IceTV Pty Limited (Ice) and provided on a subscription basis (via download) to consumers. The EPG, known as the IceGuide, is used in conjunction with a digital personal video recorder (PVR) or a PC operating as a media centre. The IceGuide enables subscribers to view free-to-air television program listings for the coming six, seven or eight days on their television or computer screens, and program their PVR or media centre to record upcoming shows.
The IceGuide incorporates the program listings for Australian free-to-air television stations, including those operated by Nine Network Australia Pty Limited (Nine). At the time that the proceedings were commenced, Ice reproduced the program listings for the ABC and SBS under an agreement with those stations but had been unable to enter into similar agreements with Nine or the other free-to-air networks.
For its part, Nine selects and acquires rights to programs for stations within its network and decides when, and in what order, those programs will be aired, with the view to maximising viewers. This information is recorded in a variety of schedules, including one that contains program titles and air times, additional information (such as ratings) and synopses, for the relevant Sunday to Saturday broadcast week (the weekly schedule). Two to three weeks before the relevant broadcast week, Nine sends the weekly schedule to a number of television program guide aggregators (the aggregators), which aggregate the weekly schedule with the program schedules provided by other Australian free-to-air networks. The resulting aggregated guides are published by either the aggregators or by the aggregator's clients in a variety of mediums, including print and online (the aggregated guides).
Round one – first instance Federal Court case
Nine claimed that the IceGuide infringed Nine's copyright in Nine's program schedules, including the weekly schedules.
Nine's primary claim (upon which Nine's other four claims depended) was that Ice had reproduced a substantial part of Nine's schedules, including the weekly schedules, by reproducing time and title information in the course of creating and updating the IceGuide.
Ice gave evidence that it developed the initial IceGuide template by means of a 'torturous' multi-stage process, which involved independent inquiry and relied heavily on prediction. Ice contended that, while the process of updating the IceGuide involved referring to various publicly available aggregated guides to verify program time and title information, this did not amount to the taking of a substantial part of Nine's copyright works.
Justice Bennett found that the relevant works for the purposes of the proceedings were the weekly schedules, as Ice did not have access to any of Nine's other schedules. While Ice did not have direct access to the weekly schedules, it had indirect access by way of the publicly available aggregated guides.
Her Honour found that copyright subsisted in the weekly schedules as original literary works within the meaning of section 32 of the Copyright Act 1968 (Cth). In arriving at this conclusion, her Honour affirmed the principle set out in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd2 that copyright subsists in factual compilations where 'skill and labour' (or 'sweat of the brow') was invested in selecting and presenting the content.
Justice Bennett found, however, that Ice had not infringed Nine's copyright in the weekly schedules when it created or updated the IceGuide.
In assessing whether Ice had infringed Nine's copyright, her Honour adopted the approach taken by the Full Federal Court in Desktop, that copyright infringement of a factual compilation is tested by reference to the interest that copyright is intended to protect, which must be assessed on a case-by-case basis.
Justice Bennett found that the skill and labour in selecting and arranging the programs for broadcast was 'preparatory' to the exercise of skill and labour in preparing the weekly schedules. Her Honour reasoned that the skill and labour in making broadcasting decisions was primarily expended for the purpose of maximising viewers, rather than producing a compilation. Accordingly, Justice Bennett found that the relevant skill and labour that should be protected in the circumstances was the skill and labour associated with the form and content of the weekly schedules.
Her Honour found that the IceGuide was significantly different to the weekly schedules in both form and content. She also found that Nine had not established that the time and title information was qualitatively more significant in terms of originality than other components of the weekly schedules, in particular, the synopses. These findings led Justice Bennett to conclude that, although Ice had indirectly copied 'slivers' of time and title information from the weekly schedules, it had not appropriated sufficient of the skill and labour invested by Nine in creating the weekly schedules and had therefore not reproduced a substantial part of those works.
Further, Justice Bennett rejected Nine's submission that copyright additionally subsisted in individual components of the weekly schedules, as separate compilations.
Round two – Full Federal Court appeal
Nine successfully appealed the first instance decision.
The Full Court of the Federal Court (Chief Justice Black and Justices Lindgren and Sackville) found that Justice Bennett had erred in concluding that Ice had not appropriated sufficient of the skill and labour invested by Nine in creating the weekly schedules.
The Full Court held that the skill and labour in selecting and arranging programs for broadcast could not be separated from the 'extremely modest' skill and labour Nine had expended in preparing the weekly schedules. The two sets of skill and labour were part of a 'single process' leading to the creation of those compilations and the originality of the works lay in large part in the first set of skill and labour. The Full Court held that it was not to the point that the skill and labour in selecting and arranging the programs for broadcast was primarily expended for a purpose other than producing the weekly schedules.
The court held that the time and title information contained in the weekly schedules was a 'crucial element' of those works, irrespective of whether it was qualitatively more important in terms of originality than other components, such as the synopses. It acknowledged that the taking of a small part of a copyright work can nevertheless amount to a reproduction of a substantial part of the work, especially where the reproduction occurs systematically and on a regular basis.
The Full Court ultimately concluded that 'this was a case of indirect copying of a substantial part of a copyright work'.
Round three – off to the High Court
On 26 August 2008, the High Court granted Ice special leave to appeal the decision of the Full Federal Court.
Comments made by Justice Gummow during the special leave application hearing indicate that we are set to see a wholesale review of the extent to which factual compilations attract copyright protection under Australian copyright law.
While it is impossible to say whether that review will result in any fundamental changes to the current approach, Justice Gummow indicated that counsel for both parties should prepare to 'deal with this matter thoroughly and without any reticence in starting at the bottom'. His Honour recommended that counsel familiarise themselves with various journal articles from the United States and the United Kingdom, as well as the US case, Feist Publications Inc v Rural Telephone Service Co Inc3, in which the US Supreme Court held that for a factual compilation to be considered original, at least a small amount of creativity must have been invested by the author and that 'sweat of the brow' is not, on its own, sufficient to satisfy the originality requirement. The US Supreme Court's concern with the 'sweat of the brow' approach was that it eschews 'the most fundamental axiom of copyright law – that no one may copyright facts or ideas'.
The US Supreme Court's decision in Feist was considered at length by the Full Federal Court in Desktop. Justice Sackville noted that the decision 'reflects considerations peculiar to the US' and owed much to the US Supreme Court's construction of the language of US Copyright Act 1976. His Honour held that 'policy considerations by no means compel the conclusion that the approach in Feist should be followed in Australia'. His Honour separately cautioned that refusing factual compilations copyright protection carries with it the potential that the compiler 'will be deprived of the incentive to undertake work that may prove to be of great value'. As his Honour noted, one of the ways in which other jurisdictions have addressed this issue is by establishing a specific regime for databases, for example the Databases Regulations (UK), which gives database authors the right to prevent copying and unauthorised use of the database. In the UK, this unique property right, known as the 'database right', subsists in a database if 'there has been a substantial investment in obtaining, verifying or presenting the contents of the database' and applies regardless of whether the database is a copyright work'.
The next round
No doubt all of these issues will be considered by the High Court when Ice and Nine reconvene for the substantive hearing of the appeal.
Just five years ago, the High Court refused a special leave application in relation to the Federal Court's decision in Desktop. At the special leave hearing, Desktop Marketing Systems argued that the court should follow Feist. The special leave application was refused on the grounds that it would enjoy insufficient prospects of success.
During the special leave application hearing in this case, Justice Gummow expressed the view that 'there is a real question of what this notion of originality means in this "electronic age"'. Five years is a long time in the 'electronic age' and we must watch this space to see whether the policy considerations that are relevant today lead to the conclusion that Australia should follow Feist and pare back the copyright protection enjoyed by factual compilations under Australian law.
Footnotes
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
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