Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 (8 February 2010)

There was a copyright order issued in the Federal Court of Australia that I have been meaning to write about for some time. Copyright infringement suits concerning phone directories provide a constant battle ground for the originality standard.This is true in many countries, and you can see a vibrant dialogue between courts that crosses national boundaries.

The Full Federal Court of Australia addressed the originality standard for factual compilations in a phone books case when it distinguished the U.S. and Australian Copyright Acts in Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited [2002] FCAFC 112 (15 May 2002). The Court found that the word “original” in Section 32 of the Australian Copyright Act did not require the “intellectual effort or creative spark on which Feist insists.” The Full Court, instead, held that a phone directory “satisfie[d] the requirement of originality because of the labour and expense involved in the compilation.”

The Full Court revisited the originality standard from Desktop six years later in Nine Network Australia Pty Limited v IceTV Pty Limited [2008] FCAFC 71 (8 May 2008). In IceTV, the Full Court found that under the Australian Copyright Act originality “means that the creation (ie the production) of the work required some independent intellectual effort, but neither literary merit, nor novelty or inventiveness as required in patent law.” The Full Court, at the end of its decision, further noted that the originality standard from Desktop Marketing “may be” “out of line with the understanding of copyright law over many years” that there must be some creative spark or exercise of skill and judgment before a work is sufficiently original for the subsistence of copyright. The issue of originality was not directly litigated in IceTV so the tribunal ultimately was not forced to address whether Desktop was still controlling.

In early February, the Federal Court of Australia in Melbourne (Gordon, J.) directly addressed whether Desktop was still good law. Telestra, A publisher of yellow and white pages directories, brought suit against a rival publisher. (Telestra was also the plaintiff in Desktop.) Telestra alleged that the defendant had infringed its copyright in the compilation in its directories, including “the content, form and arrangement of information in individual listings, and the overall arrangement of individual listings,” and, in certain works, cross-references.

There were two questions at bar: whether Telestra had shown that it was the author of the directories; and more generally, whether the directories contained sufficient originality to merit copyright protection under the Australian Copyright Act of 1968.

Telestra had employed a large number of contractors, many of which it couldn’t identify, to assist in the preparation of the directories. There were “significant gaps” in the contractor agreements Telestra presented to the Court. Telestra argued that, even if it could not identify the contractors, and didn’t have agreements with the contractors, the directories were joint works. The Court rejected the argument:

[S]erious questions arise as to whether it is appropriate to refer to the gamut of individuals said to be authors of these Works as “joint authors”. The evidence demonstrated time and again that many of the staff perform their function separately from and often oblivious to the function of others . . . There is therefore a real question over whether there was the requisite level of collaboration between those workers to be considered joint authors: see s 10(1) of the Copyright Act. However, given the simple and undeniable fact that the Applicants have failed to prove the identity of the authors who contributed to the Works, it is unnecessary to consider this matter further.

The Court also made the broader finding that the directories at issue did not contain sufficient originality to merit copyright protection.

I accept that production of the directories is a large enterprise populated by many contributors (ignoring for the moment the determinative difficulties with authorship outlined above). . . . However, these facts are not relevant to the Applicants’ claim and, as explained at [20(6)] above, substantial labour and expense is not alone sufficient to establish originality. The evidence established that the “system” by which the directories are produced is designed to limit originality, not provide for it.
Where it can be automated, it has been. Where it cannot, Sensis workers are required to act consistently with the Rules and all work is subject to a multiplicity of checks to ensure that consistency. The weight of the evidence demonstrated that the tasks performed by individuals applying the Rules were mechanical in nature and often were able to be completed in large numbers swiftly. The Rules are followed and applied. Moreover, the Rules themselves are not complicated. It would be hard to conceive of how many of the Rules could be otherwise constructed given that the
purpose of the directories is to (a) enable someone to find a listing and (b) to allow customers to enhance their listing if so desired.

The decision included a plea to Parliament.

It is not open to me to ignore the express words of the Copyright Act to expand protection consistent with that set out in the Directive as summarised by the High Court. That is a matter for Parliament and, in my view, a matter which they should address without delay.