Telstra and its Sensis subsidiary have lost an appeal against an earlier Federal Court decision that said its White and Yellow Pages are not protected by copyright laws.
Telstra launched Federal Court action against Local Directories, which distributed directories in Queensland, the Northern Territory and New South Wales, back in 2007 on the grounds that it had infringed copyright by reproducing data found in the phone books.
However, the telco giant lost the original case in February, when Justice Michelle Gordon said a lack of “creative spark” in the creation of the directories meant they were not afforded copyright protection.
“None of the works were original. None of the people said to be authors of the works exercised ‘independent intellectual effort’ or ‘sufficient effort of a literary nature’ in creating the Works,” Gordon said.
Telstra appealed that decision, but in a judgement handed down yesterday by Chief Justice Patrick Keane its appeal was dismissed.
Keane essentially agreed with Gordon’s position, effectively ruling that the fact that the director databases were compiled by Sensis’ computer system, known as Genesis. The lack of human involvement in the compilation meant the creative spark needed for copyright protection was not there.
“The compilation of the directories was overwhelmingly the work of the Genesis Computer System or its predecessors. The selection of data and its arrangement in the form presented in each directory occurred only at “the book extract” or “book production” process. The compilations which emerged from the operation of the computer system do not originate from an individual or group of individuals. Indeed, none of the individuals who contributed to the production of the directories had any conception of the actual form in which they were finally expressed.”
Kean said, “the mere collection of data cannot be sensibly regarded as compilation. I would also suggest that the editorial correction of errors at the proofing stage of a compilation cannot be regarded as authorship.”
Intellectual property expert Jack Dolphin from Actuate IP said the decision was widely expected in the legal fraternity, but it was unlikely to lead to a rush of business ventures copying factual data such as real estate listings, or names and addresses, or maps.
“I think you’ve got to remember that every case is different, and especially when you are dealing with creative spark you’ve got to look at every case on the facts.”
While Sensis says it is disappointed by the decision as is now considering its options – including seeking leave to appeal to the High Court – Chief Justice Keane wrote in his judgement that Australia could protect database companies by putting in place laws similar to those that exist in Europe for the specific protection for database compilations.
Sensis was Telstra’s best-performing division in 2009-10, producing a 4.3% increase in earnings before interest and tax to $1.1 billion.
James was the editor and publisher of SmartCompany and LeadingCompany for five years. He is now the Australian Financial Review‘s companies & markets editor, and a former BRW editor.
