By Gulley Shimeld*
As published in ART+law, December 2001
The copyright protection of databases has been under debate internationally for some time. A recent decision of the Federal Court, Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd1, has clarified that in Australia only a low level of creativity and originality is required for protection.
Data bases can be protected under the Copyright Act as literary works. For the purposes of the Copyright Act a literary work includes "a table, or compilation, expressed in words, figures or symbols". In this case the literary works under consideration were the White Pages and Yellow Pages published by Telstra and various unpublished Telstra headings books.
For a work to be protected under the Act it must, amongst other requirements, be original. Originality implies independent creation by an author as well as a second criteria. The exact nature of the second criteria was however, up for debate, particularly in Australia. In America "intellectual labour" fulfills the criteria however in the UK effort expended in collecting the work ("industrious collection") is sufficient.
The issue of intellectual effort vs industrious collection in determining originality was at the heart of this case.
There is no copyright in a fact. Databases are made up of collections of facts therefore copyright protection of databases must be on the basis of the form in which the copyright owner has published the facts (collection) rather than the underlying facts. Even when a database is protected any person who wishes to publish the same facts is free to do so. It is just that the person will have to collect the facts themselves.
Breach of copyright for a protected database occurs when the way that the defendant has displayed the information, or the important aspects of it, is in substance the same as portrayed in the plaintiff's work.
In this case Desktop published three CD ROMS including a basic CD Phone Directory, a more sophisticated phone directory and a marketing directory. Desktop admitted that the primary data for these CDs came from Telstra's directories and that information had been input by large teams in the Phillipines.
Telstra claimed copyright in the whole of the collected data, ordered in a particular way on the basis that industrious collection of factual data should be sufficient to attract copyright. In any event Telstra also argued that the directories were the result of considerable judgement, skill and intellectual effort.
If protected by copyright Telstra argued that the Desktop's CD ROMs were sufficiently similar to the directories to constitute a breach of copyright.
There are policy arguments for and against a finding originality based on industrious collection. If copyright is granted on the basis of industrious collection the copyright owner's ability to prevent others from appropriating information in compilations of facts severely limits the ability of later authors to build upon earlier works. However where intellectual effort is the basis of originality the progress of information can be threatened because the investment of time and money that is required to produce collections of factual materials that are essential to the economy may be compromised.
In this case Judge Finkelstein followed the English line of authority and found that industrious collection was sufficient to attract copyright and accordingly that the directories were protected by copyright. Since all the headings as well as the listings beneath the headings had been taken by Desktop and the appearance of the headings and the listings in the CD - ROM were sufficiently similar to constitute a reproduction, his honor found that Desktop were in breach of copyright.
Thus it was held that the sufficient similarity requirement is not concerned merely with quantity being produced but whether the way the alleged infringer displays the information is in substance the same as the copyright protected work. Here it was found that the "substance" of the information taken from Telstra's works had been reproduced in the CD ROMs.
The decision confirms that for databases to be protected in Australia originality will be met on the basis of industrious collection. For protected databases users may now need to obtain permission from the owner of copyright in the database if they want to copy, adapt or transmit a database.
The decision has been appealed and is presently before the Full Federal Court. Arts Law notes that the decision as it stands is inconsistent with international developments including the EU directive of the protection of databases and recent UK legislation. The decision has been appealed and it remains to be seen whether Federal Parliament or future Australian Courts will take a different approach to the protection of information databases, perhaps more in line with the developing international position which bases protection on "the author's own intellectual creation".2
1 [2001] FCA 612
2 Article 3, Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases.
This article was sourced from Freehills newsletter available at www.Freehills.com.au
* Gulley Shimeld is a para-legal at the Arts Law Centre of Australia
