No Copyright Held in Phone Directories

06 November 2012

The High Court’s decision in IceTV v. Nine Network Australia has now been applied to phone books: the Federal Court has no copyright subsists in the White Pages and Yellow Pages directories, according to Tim Brookes, a partner, and Marlia Saunders, a lawyer, at Blake Dawson.

In the case, Telstra Corporation Limited v. Phone Directories Company Pty Ltd, Brookes and Saunders write that the directories were found not to be original literary works because the applicants, Telstra and Sensis, could not identify the authors of the directories and substantial parts of the directories did not have human authors; and even if the people who contributed to the directories could be identified, much of their contribution was not independent intellectual effort or substantial effort of a literary nature.

“This decision, if not overturned, will result in organisations finding it extremely difficult to establish copyright in many significant and commercially valuable databases,” said Brookes. “Organisations will need to consider whether other practical and legal protections are available to them if they want to prevent the use of their databases by third parties.”

Telstra and Sensis, publishers of the directories, brought suit against Phone Directories for infringement of copyright in the directories, claiming that each directory was an original literary work as a compilation of listings, enhancement of listings, arrangement of listings and headings, relating to the names, addresses and telephone numbers of residential or business customers for particular geographical areas.

“Throughout the judgment, Justice Gordon repeatedly emphasised the importance of the concept of an ‘author’ in copyright law in Australia,” Brookes says. “In particular, she observed that the theoretical basis for copyright is to strike a balance between rewarding authors of original literary works against encouraging authors to produce new works.”

On this basis, Brookes said, the Court found there is a need to identify the authors of a work in order to show subsistence of copyright, and that the applicants had failed to do this.

“Although evidence was produced by the applicants, including a list of authors of certain sample directories and affidavits from individuals who were said to be authors of one or more of the directories, this was held to be deficient because not all authors had been included in the list or affidavits, some current employees were listed but it was unclear whether they had in fact contributed to the relevant directories at all, plus many of the individuals identified played only a limited role in contributing to the directories,” Brookes said. “Further, contractors also contributed towards the directories, but an assignment of intellectual property had not been obtained in favour of the applicants for all such contractors.”

The Court, said Brookes, noted that courts and legislatures in other countries have recognized that databases are not often capable of protection under copyright law, and have developed specific legal protections to deal with this issue. “In 1996, the European Union introduced a directive that provides for a sui generis right for the maker of a database who shows there has been a substantial investment in the contents of the database, which allows them to prevent the extraction of the whole or a substantial part of the database, subject to lawful uses and other exceptions,” Brookes wrote. “Justice Gordon observed that there is no counterpart to this under Australian law, and suggested that Parliament should address this matter without delay.”