Copyright
Case Note: Desktop Marketing
Systems Pty Ltd v Telstra Corporation Limited
John Lambert
Nov 2002
This case first appeared on the Lancaster Buildings website
The threshold of originality for the subsistence of copyright was the issue before the full Federal Court in this appeal. Even though English copyright law now differs significantly from Australian law in that reg 5 (a) of The Copyright and Rights in Databases Regulations 1997 introduced a distinction between databases and other compilations and inserted a statutory definition of originality for databases, the decision is important to UK readers for exhaustive analyses of virtually every English and Australian authority on compilations since Matthewson v Stockdale (1806) 12 Ves 270 (33 ER 103) from which Lindgren and Sackville distilled general formulations of principle on originality in general and the originality threshold for subsistence of copyright in compilations in particular.
The Issue
R was the Australian national telephone company which had published white and yellow pages directories from its subscriber records. It was conceded that A had copied those directories to produce CD-ROMs that reproduced the names and addresses of R's business subscribers and arranged them by trade adopting many of the same headings as the yellow pages directories. There were a number of differences between R's format and A's, the most significant being that A's arrangement was national whereas R's was local. There was no dispute that 'if industrious collection' was enough for copyright to subsist in a compilation of facts R had satisfied that requirement. The question was whether "mere "industrious collection and arrangement in a trite format of publicly available information", as distinct from an intellectual contribution in terms of selection or arrangement could satisfy the requirement of originality.
The Judgment
The Court found for R. Two substantial judgments were delivered by Lindgren and Sackville JJ with observations mainly on the decision of the US Supreme Court on Feist Publications Inc v Rural Telephone Service Co Inc 499 US 340 (1991) from Black CJ. After reviewing the authorities, Lindgren J concluded that
"there is no principle that the labour and expense of collecting, verifying, recording and assembling (albeit routinely) data to be compiled are irrelevant to, or are incapable of themselves establishing, origination, and therefore originality; on the contrary, the authorities strongly suggest that labour of that kind may do so (cf Matthewson v Stockdale; Longman v Winchester; Kelly v Morris; Scott v Stanford; Morris v Ashbee; Cox v Land and Water Journal Company; Morris v Wright; Hogg v Scott; Ager; Collis; Weatherby; ACP v Morgan; Autospin; and the recent Indian case, Burlington's Home Shopping Ltd v Chibber (1995) Patent & Trademark Cases 278 (noted in Pravin Anand, "Burlington's Home Shopping Ltd v Chibber" (1995) 6 Ent L Rev 159, in which the Delhi High Court, not following Feist, held that a computer database of mail order customers (names, addresses, telephone and fax numbers) was protected as a compilation within the definition of literary work)."
In his honour's view, compilations of telephone numbers in directories offered two special benefits which justified copyright protection. The first was the assurance that the universe has been thoroughly explored, and that all members of it have been captured. A telephone directory including every subscriber was manifestly more valuable than one including nearly all. The judge referred to that benefit as "the whole-of-universe certification." The second benefit, complementing the first, was an intelligible arrangement of the data compiled.
The court considered Feist and subsequent US and Canadian decisions but was not persuaded that the Federal Court, "at the intermediate appellate level, should depart from the long course of Anglo-Australian authority" summarized above. Lindgren J added that if that was to be done, it had to be by the High Court of Australia.
Threshold of Originality
Relying on Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49, Lindgren J observed that the concept of originality is correlative with that of authorship. The test of originality is whether the work was not copied, but originated from the putative author. This test is not "all or nothing" but raises a question of fact and degree as to the extent of the putative author's contribution to the making of the particular literary work in question. Authorship, and hence originality, does not require novelty, inventiveness or creativity, whether of thought or expression, or any form of literary merit. One must apply the test of originality to the literary work, including a compilation, in which copyright is claimed to exist, as a whole, rather than dissecting it and applying the test to the individual parts. His honour might have added that that approach constitutes an important difference between American and Commonwealth copyright law.
Originality in Compilations
Sackville J added his own conclusions on originality with respect to compilations. In his view, a compilation will ordinarily be an original literary work for copyright purposes only if the compiler has exercised skill, judgment or knowledge in selecting the material for inclusion in the compilation, as with a collection of commentaries, or in presenting or arranging the material, as with a births and deaths column. A compilation of factual information will ordinarily be an original literary work for copyright purposes only if the compiler has undertaken substantial labour or incurred substantial expense in collecting the information in the compilation. If copyright is to subsist, the compiler must also show that his labour or expense exceeds a minimum threshold (see G A Cramp & Sons Ltd. v Frank Smythson Ltd. [1944] AC 328 and Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479). Such labour or expense need not be confined to preparing or presenting the compilation in material form provided that it was incurred for the purpose of producing the compilation (William Hill (Football) Ltd. v Ladbroke (Football) Ltd. [1964] 1 WLR 273),
Infringement
There was a difference in emphasis between Lindgren J and Sackville J on what constitutes an infringement of copyright in a compilation. They both agreed that such copyright will be infringed only where a substantial part of the copyright work is taken and that substantiality is to be determined by reference to the originality of the part of the work taken. Sackville J was of the view that where originality in a factual compilation is found, in whole or in part, in the compiler's labour or expense required to collect the information, infringement depends on the extent to which the collected information has been appropriated by the alleged infringer and to that extent, too, the issue of infringement involves matters of fact and degree. In Lindgren J's view, what was of importance was not the quantity of the factual information but the benefit of R's whole-of-universe certification.
