11 February 2010
The Federal Court has held that Telstra's phone directories are not literary works protected by the Copyright Act because there is no clear authorship and no originality, throwing into doubt the copyright protection for any database (Telstra Corporation Limited v Phone Directories Company Pty Ltd  FCA 44).
How are the directories produced?
Telstra and Sensis produce the Yellowpages and Whitepages directories from its database.
The computer systems used to handle the information are the result of the work of various entities over a number of years, including third party contractors working with Telstra/Sensis employees, who customised existing products to suit the Telstra/Sensis needs.
Those needs included applying Telstra/Sensis' internal rules to the information. For example, the ordering of Mc / Mac surnames is determined by a rule which is programmed into the relevant software. The rollover of last year's directory to form the basis of this year's is governed by the rules. The font and size of your free entry in the White Pages, or the enhanced entry you pay for, is governed by the rules. Where an individual involved in making the directories makes a choice, it is in accordance with these pre-determined rules.
The information in the directories is (mostly) rolled over from last year's. Changed or new information about individuals and businesses will be entered into a database by different people, some of whom are not employees but contractors, or even automatically by the computer system. Other tasks include validating information, identifying errors, and reviewing the pagination to ensure it complies with the rules.
Why isn't this protected by copyright?
It's trite but bears repeating - copyright protects the original expression of facts or ideas, not the ideas or facts themselves. In the case of literary copyright, such expression has to be the result of the intellectual effort of an "author". So the issue is not whether Telstra/Sensis spent a lot of time collecting and checking facts, but whether the author or authors of the directories created a work that was an original expression of those facts.
Justice Gordon in the Federal Court said there were four steps to take in determining if there was copyright in the directories:
Telstra and Sensis had no problems in identifying the work or its publication. They came unstuck on authorship and originality.
Authorship: Telstra and Sensis simply could not identify all the people whom they alleged were the authors. Even if they could identify all the alleged authors, they possibly would not be "joint authors" under the Act, as they don't collaborate with each other - many of the staff perform their function separately from and often oblivious to the function of others. Even if all those hurdles could be overcome, substantial parts of the directories don't even have human authors, as they were generated by the computer systems.
Originality: Let's assume that every part of the directories had been created by an identifiable person, and not generated by a computer. Could it be said that they exercised “independent intellectual effort” or “sufficient effort of a literary nature” in creating the directories? Was there a “creative spark” or the exercise of “skill and judgment”? The answer is no - in fact, the Telstra/Sensis system was designed to prevent originality by the humans involved in the production of directories. The rules are uncomplicated and are applied consistently.
So how can your database be protected?
"Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original."
With those simple words, Justice Gordon showed how tough the task will be for database owners to get copyright protection.
This decision is not entirely unexpected. When the High Court's decision in Ice-TV was handed down last April, we said that a possible result would be that some databases might not even meet the basic requirements for copyright protection, particularly that of authorship. This decision has confirmed that view.
So how can you ensure your database is protected, and not suffer the fate of Telstra and Sensis?
First, know your author or authors. This will be particularly challenging for older databases that have been built up over years. Telstra and Sensis tried to show this by listing various people who had worked on the database, but the Ice-TV decision (followed by this one) suggested that the key could lie in showing how a person (an author) determines how a database will function and be expressed - for example, the person who decides what material will be included and how it will be recorded and presented.
Secondly, the independent intellectual effort expended by the author in making those determinations might go to the originality of the particular form of expression of the work (that is, the database).
It may, however, still be difficult to prevent others from copying the content of a factual database if they express those facts in a different way.
The decision will likely be appealed given the importance of directories to Sensis' business.
Through legislative amendments, copyright has been expanding in recent times - for example, the creation of an exclusive communication right, anti-circumvention provisions and longer terms of protection. The courts seem to be looking more closely at the criteria that must be satisfied to enjoy these more expansive monopoly rights, bearing in mind the "public interest in maintaining a robust public domain in which further words are produced" (the High Court in the Ice-TV case). Directories and potentially other databases may now fall short.Australia is not unique in this respect. One possibility adopted in other countries is the creation of a new form of copyright that specifically protects databases. This could have a lower threshold of subsistence and a lesser period of protection. However, it would require legislative amendment.