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Judgment Template Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited [2002] FCAFC 112 FEDERAL COURT OF AUSTRALIA BLACK CJ, LINDGREN & SACKVILLE JJ BLACK CJ: 1 I agree that the appeal should be dismissed with costs for the reasons given by Lindgren J and Sackville J, and add the following observations. 2 Ground of appeal 14 was that the primary judge should have found, on the evidence, that Telstra’s industry: “was not in collecting but was principally and relevantly limited to receiving (as a matter of monopolistic entitlement), checking, maintaining and publishing data.” 3 This ground was developed in par 14 of Desktop’s outline written submissions, which, omitting footnotes and the references to them, was as follows: “In this case the Judge erred in holding that the Respondent had satisfied the ‘industrious collection’ test for subsistence of copyright because, on the evidence, such industry as there was on the part of the Respondent was not in collecting, but principally and relevantly limited to receiving (as a matter of statutory monopolistic entitlement) data. The whole basis of the so-called ‘industrious collection’ approach is to protect the industry of a party from a commercially unfair free ride by copyists. There is no free ride here. All ‘industrious collection’ cases (especially those relied upon by Telstra) were ones where: (a) the copyist could have, with sufficient industry, replicated the database. That is not so here. No amount of industry could replicate the Telstra database because of the privileged position Telstra enjoys in granting lines and telephone numbers on the condition that the subscriber proves such information and updates it as requested. (b) The plaintiff was commercially disadvantaged by the copyist’s activities. Here Telstra is statutorily obliged to and does produce and distribute the directories free of charge, and thus there can be no suggestion of commercial damage to Telstra. If there is any unfairness, it is the result of Telstra refusing to provide access to its database on reasonable terms despite an obligation to do so.” (emphasis in the original) The point was not substantially elaborated upon in oral submissions but was raised again in written submissions in reply. 4 In Feist Publications Inc v Rural Telephone Service Co Inc 499 US 340 (1991), referred to in the judgments of the other members of the Court, Rural Telephone Services Co (“Rural”) was a certified public utility which, as a condition of its monopoly, published white pages and yellow pages directories and provided them free of charge to its subscribers. 5 In delivering the opinion of the United States Supreme Court, O’Connor J (at 362) observed that, in preparing the white pages directories, Rural simply took the data received from its subscribers and listed the data alphabetically by surname. Her Honour made that observation in support of her description of the “end product” as “a garden-variety white pages directory, devoid of even the slightest trace of creativity”. Her Honour also referred (at 363) to the fact that Rural was “required [to publish the names and telephone numbers of its subscribers] by the Kansas Corporation Commission as part of its monopoly franchise”. Her Honour made that observation in support of her view that there was no “selection” by Rural of the data to be published. 6 The considerations relied on by Desktop may thus point against the existence of a “spark of creativity”, but once that test of originality is rejected the question is whether a particular form of labour is determinative in attracting copyright protection. The reasons in Feist provide no ground for concluding that Telstra’s various forms of labour (collecting/receiving, verifying, recording, computer-aided assembling) should not suffice to attract copyright protection. 7 Turning then to the lines of authority in Australia and England, it is true that in most if not all of the so-called “industrious collection” cases the effort and expense applied by the author of the compilation included effort and expense in the collection of the data from external sources. This occurred by way of research (Hogg v Scott (1874) LR 18 Eq 444, Ager v Peninsular & Oriental Steam Navigation Co (1884) 26 Ch D 637, Collis v Cater, Stoffel & Fortt Ltd (1898) 78 LT 613, G A Cramp & Sons Ltd v Frank Smythson Ltd [1944] AC 329, Elanco Products Ltd v Mandops (Agrochemical Specialists) Ltd [1979] FSR 46, Harpur v Lambourne (1999) 45 IPR 213); extraction from independent written sources (Scott v Stanford (1867) LR 3 Eq 718, T M Hall & Co v Whittington & Co (1892) 18 VLR 525, Leslie v J Young & Sons [1894] AC 335, H Blacklock & Co Ltd v C Arthur Pearson Ltd [1915] 2 Ch 376); survey, canvassing or solicitation (Kelly v Morris (1866) LR 1 Eq 697, Morris v Ashbee (1868) LR 7 Eq 34, Morris v Wright (1870) LR 5 Ch App 279, Cox v Land and Water Journal Company (1869) LR 9 Eq 324, Weatherby & Sons v International Horse Agency & Exchange Ltd [1910] 2 Ch 297, Waterlow Publishers Ltd v Rose (1989) 17 IPR 493); annotation and documentation of events (Walter v Lane [1900] AC 539) or a combination of such activities (Canterbury Park Race Course Co v Hopkins (1931) 49 SR(NSW) 27, Mander v O’Brien [1934] SASR 87, Winterbottom for the Western Australian Turf Club v Wintle (1947) 50 WALR 58). 8 As the discussion of these cases in the judgments of the other members of the Court shows, however, they do not turn upon the circumstance that the effort and expense applied was in the collection, rather than receipt, of data. In general, they turn upon a reluctance of the Courts to allow unfair advantage to be taken of the outlays of another in originating a work. 9 In any case, to conclude that Telstra “receives” rather than “collects” the data is to pay insufficient attention to the fact that, even in the case of the White Pages, Telstra receives the data only because it has undertaken the effort and expense of setting up and maintaining systems to get the data from both new and existing subscribers. In a real sense, Telstra does collect the data for the purpose of its compilations and certainly the process can aptly be described as “collecting/receiving”. 10 There was no submission by Desktop that Telstra did not employ substantial labour and funds in the production of its directories and no such submission could reasonably have been made. There was much evidence before the learned trial judge that it did so and his Honour gave a brief summary of the labour involved, most of it relating to computer programs and databases but including also references to considerable and continuing involvement by editors and other people. Desktop’s submission is that Telstra’s labour, extensive as it might be, was nevertheless of a kind that cannot establish originality. That submission is not supported by the lines of Australian and English authority. Moreover, if accepted, it would involve the illogical result that work of “industrious collection”, understood in a narrow sense focussing on the activity of collection, would, even if of the quite limited nature considered in some of the earlier cases, serve to found copyright protection for a compilation, whilst the laborious and costly computer-aided compilation activity engaged in by Telstra would not do so. The submission should be rejected. 11 Whether the same result would follow if the compilation in issue were produced from data harvested from transient information flows by an established computer program is, of course, a separate question. This case turns on its own facts. 12 I should add that I see no reason why copyright protection should be denied to Telstra by reason of its work in producing its directories being facilitated by obligations arising under statute or because it had an obligation, also arising under statute, to produce the directories. LINDGREN J: 13 I gratefully adopt Sackville J’s account of the background facts and of the relevant provisions of the Copyright Act 1968 (Cth) (“the Act”). 14 Telstra Corporation Ltd (“Telstra”) alleges in its further amended statement of claim (“the Pleading”) that Desktop Marketing Systems Pty Ltd (“Desktop”) infringed its copyright in the White Pages Directories, the Yellow Pages Directories (the “Directories”) and the Headings Books referred to in Annexures A, B and C respectively to the Pleading. Annexure A identifies the 1996-1999 White Pages Directories for all 55 Australian Telstra directory regions. Annexure B identifies the 1997-1999 Yellow Pages Directories for those 55 regions. Annexure C identifies two Headings Books, one intituled “Metropolitan Directories” and the other “Regional & Local Directories”, in each case for 1997 and for 1998. 15 Both the White Pages Directories and the Yellow Pages Directories included information pages as well as their respective directory sections. The Yellow Pages Directories also included graphics, enhancements and advertisements. Desktop copied the data contained in the directory sections of the White Pages Directories and the Yellow Pages Directories, and separately stored those two bodies of data in databases. Desktop did not, of course, have access to Telstra’s Heading Books. However, it copied headings from the Yellow Pages Directories, using them as descriptions of the lines of business of subscribers whose details it took from those Directories. In this way the headings that were copied formed part of the database founded on the Yellow Pages Directories. Accordingly, Telstra’s case in respect of the Headings Books is one of indirect infringement. Desktop did not copy any of the information pages, graphics, enhancements or advertisements. 16 This case is concerned with the element of “originality” in respect of compilations of factual information.
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