IceTV Pty Ltd v Nine Network Australia Pty Ltd
Organisations that claim to own copyright in databases of information such as telephone directories, programme guides and sporting fixtures may have to think again as a result of a recent decision of the High Court. The comments of the Court do not change the current law because the suggestion that there was no protection by copyright was not central to the actual decision. However, these comments could be used in subsequent cases to undermine rights currently claimed by database owners.
The Court rejected a claim by the Nine Network that an electronic programme guide marketed by IceTV infringed the copyright in the Nine Network's own weekly programme schedule. Although the substance of the decision was unanimous, the six judges split into two groups of three and each group gave a separate set of reasons. Therefore the law is not clear on whether database users can reproduce any substantial part of a database without the owner’s consent.
“Substantial part” test
In order to make out its claim of copyright infringement, one of the elements that the Nine Network had to prove was that IceTV had reproduced a ‘substantial part’ of Nine’s weekly schedule in IceTV’s ‘IceGuide’.
It is a well established principle of copyright law that it is the quality, rather than the quantity, of what is taken that determines whether a substantial part of the original has been reproduced by the infringer. Both judgments held that any copying that had occurred did not involve the reproduction of a ‘substantial part’ of the Nine Network’s weekly schedule. Nine’s claim failed for this reason.
The decision itself is significant, especially for the television and advertising industries. However, incidental comments made by the members of the Court in their separate reasons are potentially equally important for database owners and other businesses operating in a broader range of content industries.
“Sufficient skill and labour” test
In 2002, in Desktop Marketing v Telstra, the High Court (differently constituted) held that copyright in a database will exist if the owner has expended sufficient skill and labour in compiling it.
Three members of the Court in the IceTV case stated that this approach to copyright needs to be treated 'with some caution.' In addition, they endorsed the original trial judge's statement that the labour and resources expended by Nine were mainly directed to the conduct of its business in broadcasting programmes that would attract viewers, and that the actual production of Nine's weekly schedule required only 'extremely modest' skill and labour. The other three members of the Court made similar comments about the minimal degree of skill and labour required to produce parts of Nine’s weekly schedule.
No protection?
There is a strong suggestion overall in the judgment of Justices Gummow, Hayne and Heydon, that they would have been prepared to consider whether or not Nine's weekly schedule, or at least some parts of it, was not protected by copyright at all. However, the Court was not required to rule on this issue because at an early stage in the original trial, IceTV had conceded that copyright did subsist in Nine’s weekly schedule and was owned by Nine.
Until the law is clarified, database users should not assume that the law will be changed and should not assume that they can reproduce any substantial part of a database without the owner's consent. They should also remember that the question of what amounts to a ‘substantial part’ is judged according to the quality of what is copied, not the quantity. Ultimately, unless Parliament enacts legislation to deal with the issue, it is likely that the question of whether copyright subsists in a database and, if so, and at what point copyright arises, will be resolved by further litigation.
Examples of organisations that could be affected include Telstra (in particular its White Pages directories) and sporting organisations such as the AFL and the NRL which control access to and use of their fixtures on the basis that they are protected by copyright. For example, it could be argued on the basis of the comments of some members of the Court that the AFL and NRL fixtures are not protected by copyright because the skill and labour expended by the organisations is directed to their business of organising football matches in a manner that will maximise crowd attendances and TV ratings and that the production of the fixture itself does not require the necessary skill and labour to make it a copyright work.
by Paul Noonan