Tuesday 09 February 2010
Federal Court rules no copyright in Yellow and White Pages
In a landmark decision handed down in the Federal Court today Justice Gordon held that Telstra had failed to
establish that copyright subsists in the contents of the Yellow Pages and White Pages telephone directories.
Telstra and Sensis alleged the publishers of 'Local Directories' distributed in Queensland, Northern Territory and New
South Wales had infringed copyright by reproducing entries in the Yellow Pages and White Pages telephone
directories.
Justice Gordon held that Telstra's claim failed as Telstra was unable to identify who were the authors of the contents
of directories in question, and no "independent intellectual effort" of "sufficient effort of a literary nature" of those who
made a contribution was identified. Further, the fact that the contents of the directories were largely computer
generated, rather than the result of human authorship was a relevant factor.
Justice Gordon emphasised the relationship between authorship and originality in copyright law, "You must identify
authors, and those authors must direct their contribution … to the particular form of expression. Start with the work.
Find its authors. They must have done something, howsoever defined, that can be considered original. The
Applicants have failed to satisfy these conditions. Whether originality be the product of some "independent intellectual
effort" and/or the exercise of "sufficient effort of a literary nature" or involve a "creative spark" or the exercise of "skill
and judgement", it is not evident in the claim made by the Applicant".
The decision was eagerly awaited following the High Court's judgment in IceTV v Nine Network in April 2009, which
emphasised the importance of analysing whether copyright subsists by reference to the tests set out in the legislation,
rather than trying to mould the existing laws to protect something which was not a "work" within the definition of the
legislation. Justice Gordon acknowledged that the protection of such data compilation works such as phone
directories ought be a matter for future consideration of Parliament.
Implications of the judgment will be far reaching. Works which are data compilations, such real estate auction results,
timetables, sporting fixtures and other valuable compilations, which take a lot of work and cost money to compile,
especially where such works are computer generated, are likely to be affected.
Middletons partner Tony Watson, who acted for Local Directories in the case, said "This decision will have a
significant impact on compilers of databases. The belief that such works are protected by copyright has been clearly
dispelled by this decision. The mere fact that a significant amount of labour or significant money has been expended
in producing a work does not make it capable of copyright protection".
About Middletons
In the modern commercial world, standing still is not an option. Middletons is a full service Australian commercial law
firm.
Our clients are serviced by over 500 employees, including 300 legal advisers, from our offices in Melbourne, Perth
and Sydney.
We have extensive experience acting for industry leaders, major corporations and government on groundbreaking
legal transactions in Australia and internationally. Our commercial expertise and knowledge in specific industries
ensures we add value to our clients’ businesses.
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Further information
Tony Watson
Partner
T: +613 9640 4331
F: +613 9205 2055
M: 0418 358 384
E: tony.watson@middletons.com
Jeremy Hyman
Media and Communications Manager
T: +612 9513 2451
F: +612 9513 2399
M: +614 49 953 890
E: jeremy.hyman@middletons.com
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