IceTV Pty Limited & Anor v Nine Network Australia Pty Limited

[2008] HCATrans 358

[2008] HCATrans 358

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S415 of 2008

B e t w e e n -

ICETV PTY LIMITED

First Appellant

ICETV HOLDINGS LIMITED

Second Appellant

and

NINE NETWORK AUSTRALIA PTY LIMITED

Respondent

FRENCH CJ
GUMMOW J
HAYNE J
HEYDON J
CRENNAN J
KIEFEL J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON FRIDAY, 17 OCTOBER 2008, AT 10.01 AM

(Continued from 16/10/08)

Copyright in the High Court of Australia

FRENCH CJ:   Yes, Mr Bannon.

MR BANNON:   Thank you, your Honour.  Your Honours, could I return to the question of how one identifies the skill and labour which is relevant to the question of the originality of the work introduced by this submission, that the answer lies in a consideration of the relevant statutory provisions.  Could I firstly go to section 32(1) of the Act which provides:

(1)Subject to this Act, copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author:

(a)was a qualified person at the time when the work was made; or

(b)if the making of the work extended over a period – was a qualified person for a substantial part of that period.

So one gets out of that the following; firstly, the concept of originality, secondly, the definition of “literary work”, thirdly, the notion of “author” and, fourthly, the notion of “making”.  Section 32(1)(b) is particularly important in light of the discussion I was debating yesterday, particularly as to the question of what one does with intermediate pieces of paper.  I will attempt to re‑address that question in a perhaps more statutorily satisfactory manner.

GUMMOW J:   This is not an unpublished work.

MR BANNON:   Quite so, but the next elements are section 32(2):

(2)Subject to this Act, where an original literary, dramatic, musical or artistic work has been published:

(a)copyright subsists in the work; or . . . 

if, but only if:

certain things.  So that what (2) provides is some additional qualifications.  In other words, the elements in 32(1) are not irrelevant to the concept, but publication has some different consequences.  The other section is section 35.  Section 35(6) also has the element of making as dealing with the question of ownership.  In terms of making, section 22 is relevant.  Section 22(1) provides that:

A reference in this Act to the time when, or the period during which, a literary, dramatic, musical or artistic work was made shall be read as a reference to the time when, or the period during which, as the case may be, the work was first reduced to writing or to some other material form.

Then in the definitions there is the definition, of course, of “literary work” in section 10 which includes:

(a)a table, or compilation, expressed in words, figures or symbols; and

(b)a computer program –

At the time of the 1968 Act the wording was “includes a written table or compilation.”  It was subsequently amended by virtue of the 1984 Act, and I will hand up a memorandum to that, if I may.  The relevant paragraph I can foreshadow.  I will come to the cases a bit later this morning.  Data Access refers to this.  Paragraph 24 is, for present purposes, relevant.  It provides on page 8 that:

“Literary Work”

24.      This replaces the existing definition that “literary work includes a written table or compilation.  That definition is understood as meaning –

and I should have emphasised that saying a written table of compilation –

That definition is understood as meaning that tables or compilations which have “literary form”, being expressed in writing, are covered as literary works whereas other possible compilations (for example, of musical or artistic works) would not be covered by the definition.

25.      However, because the definition of “writing” in section 10 refers to a mode of representing or reproducing words, figures, or symbols in a visible form, the present definition would not cover tables or compilations which, though of literary form in the sense that they were expressed in words, figures or symbols –

That is important and that is consistent with the history of the notion of literary form –

were not in a visible form because, for example, they were stored on magnetic tape or in a computer.

26.      By removing the requirement that tables or compilations be in a visible form it is made clear that a computerised data bank, for example, may be treated as a compilation being a literary work.  It is also important because data is often stored in a computer as a table.  These changes are consistent with the definition of material form (see below) . . . 

28.      The definition of “material form” is new and makes it clear that material form includes such methods of fixation as storage or reproduction on magnetic tape, read only –

et cetera.  Your Honours will notice in the current definition of “literary work” the words “or visible form” do not appear.  The reason for that is explained in the Copyright Amendment (Digital Agenda) Bill 1999 Explanatory Memorandum which became the 2000 Act.  If I can hand up copies of that.  I have just copied the front page and the relevant portion.  It is paragraph 19 under item 12 and that says:

Item 12 amends s 10(1) by omitting the words “whether or not in a visible form” from paragraph (a) of the definition of “literary work”.  The amendment gives effect to Recommendation 2.04(a) of the CLRC Computer Software Report that the words be removed as they are superfluous on the basis of the operation of ss 32(1) and 22 and the definition of material form in s 10(1).  These provisions have the net effect of providing that copyright will subsist in works stored invisibly, and the inclusion of the words “whether or not in visible form” in the definition of literary work is therefore unnecessary.

Then if one goes to the current definition of “material form” one sees that it is:

material form, in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part –

et cetera.  So the point was that the logic of the removal of “written” and “whether visible or not” form as disclosed in the 1984 explanatory memorandum still applies to the current Act.  Its removal from the definition of “literary work” is simply explained that it is unnecessary because the same concept is picked up in the definition of “material form” and hence the taking advantage of the subsistence or the recording of any literary work in a computer database – sorry.....for the benefit of all literary works, whether it be a compilation or whether it be any other form of literary work.  Then “works of joint authorship” was referred to yesterday, and perhaps I should specifically go to it.  It means:

work of joint authorship means a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors.

Lastly, in the statutory provisions, section 10(2A) –

GUMMOW J:   Is there any judicial discussion of this concept of the contribution not being separate in the definition of “work of joint authorship”?

MR BANNON:   There is, we would respectfully submit, a helpful discussion by Justice Laddie in Cala Homes, which is on our list and I was going to go to, and there is an extensive discussion of the matter in Milwell v Olympic, which I am also going to go to, which is a Full Federal Court decision which discussed the concept there as well.  I think there is a more recent judgment of Justice Laddie which is referred to in Ms Ginsburg’s article in the Concept of Authorship and Comparative Copyright Law, which I was also going to refer to, which also addresses this concept of authorship.  I think I am foreshadowing where I am going on the cases. 

By having done the statutory exercise I am going to go back and finish my work on the facts and then go through the cases, but I can foreshadow that in Sands & McDougall v Robinson there is a discussion in there which I had not completely focused on which discusses the concept of authorship.  After considering Walter v Lane, a passage often looked at, it goes on and describes the mental effort as being the relevant exercise.  What I am about to say seeks to draw on that to try and draw together what I was saying yesterday but perhaps in a, if I may say so against myself, a more cohesive way, having regard to the statutory principles.

Having identified those provisions, it is accepted as an admission on the pleadings, but generally speaking, that the literary work is the weekly schedule which has been identified.  We submit that it was made over a period of time, as the Act contemplates, and that was not a point I made at all well yesterday.  The point of time at which it is finalised is a point of time when it is contained in the Nine program database and at that point in time it existed in material form.  Can I go to some additional evidence on the creation, which is that of Ms Wieland, which assists with trust in making this point.  It is in volume 2 of the appeal book at page 961. 

There are other parts in it which are relevant to the general issue, so I will refer to them in passing before I come precisely to this point which I just made.  So at page 961 Ms Wieland describes the role of Mr Healy and her working with Mr Healy.  Paragraph 11 generally describes the process by which she attends to her work on the day time and off peak program schedules.  Subparagraph (a) refers to the creation of electronic spreadsheet described in (a) and (b) and then in (c) there is a section there, she says based on her knowledge of prime time schedule and conversations with Mr Healy, she also enters into her document some prime time material, although she is not directly responsible for that. 

Subparagraph (d) over the page at page 962 at about line 10 she refers to her discussions with Mr Healy and a Mr Downs as to what programs people were talking about.  Subparagraph (e) she starts to insert the programs, (f) in considering late and weekend programming she reviews timeslots based on surrounding programs as part of that collocation consideration:

what type of program should be scheduled in that timeslot to maximise the audience and fit –

et cetera, consider ratings –

I look at the programs we have available in the Nine Program Library, including the ratings those programs have achieved in the past;

(g)the task of selecting the programs and arranging them into the Nine Program Schedules is an ongoing task which involves changes to individual program timeslots, and I am often moving programs from one timeslot to another in the Electronic Programming Grid especially on weekends.  I do this directly on my computer, and I make repeated changes as I go through the scheduling process –

and she has discussions with Mr Healy or Mr Downs in doing that exercise.  Paragraph 13 she says:

13.I have observed that Mr Forrest transposes the program entries for that Broadcast Week, by hand, from the Electronic Programming Grid, consolidating them into a master paper grid (the Master Paper Grid).  The Master Paper Grid is a paper pad that is identical to Mr Healy’s Paper Programming Grid.

And a copy of those pages is at page 977.  Can I just ask your Honours to go to that.  You see there at 977 that truly has time and title basically.  Then 14, coming back to 963:

14.Once Mr Forrest has completed the task of transposing the Nine Program Schedule into the Master Paper Grid from the Electronic Programming Grid, the Master Paper Grid usually contains the final details for most of the programming . . . 

15.If a timeslot had not been filled at that stage for whatever reason . . . TO BE ADVISED” . . . 

17.Mr Forrest is also responsible for adding some detailed program related information into the Master Paper Grid, such as episode numbers and names . . . He also cross-checks . . . At the same time as he does this, Mr Forrest starts entering all of the information for TCN-9 only from the Master Paper Grid into a customized program database located on Nine’s computer network . . . 

18.Mr Holman then inserts any available synopses which he obtains from the Nine Genre Heads, Nine Production Officers, or outside production companies or distributors into the Nine Program Database.  I have observed Mr Holman carrying out that task.

So that is just to emphasise that the attachment of the synopses happens when the thing is in the database.  Then 19:

19.      Mr Forrest and I then go through the draft Nine Program Schedule as it appears on my Electronic Programming Grid on either the Thursday afternoon or Friday morning . . . to check that all available information has been included.  All subsequent amendments that I make at that stage to the Nine Program Schedule are then recorded by me, in the Electronic Programming Grid ‑ ‑ ‑

GUMMOW J:   We can all read this, Mr Bannon, but whereabouts do we find in here what you say is the point at which the work comes into is made?

MR BANNON:   First sentence of paragraph 20.  So at that point it has got the net input from each of herself, Mr Healy, Mr Forrest and Mr Holman in terms of the synopses.

FRENCH CJ:   Is there any of this that is not reflected accurately in the fact findings by the trial judge?

MR BANNON:   Yes, and in the Full Court, but perhaps not in quite the same detail ‑ ‑ ‑

GUMMOW J:   In fairness to them, that may be because the statement of claim was just elusive as to.....You do not get to paragraph 20 on page 964 by reading the statement of claim.  There are these things called program guides which are just up there in some ethereal sense.

MR BANNON:   I think that, if I may say this overnight, perhaps it may be fortuitous, the Full Court reasoning is correct because it has focused correctly on what is the work and who are the authors of the work.  I hear what your Honour says, that it may have been assisted by perhaps a closer identification of the statutory concepts by reference to authorship and making but, be that as it may, the material is all there.

In terms of what happens next, the dumping process is simply described in the next sentence as a making available.  So then in 23 she says “Mr Holman produces a printed version”, which is the guide of the schedule.  Then 28, there are various formats, and then (b) and (c) are the two ones which have been the subject of material.  Then, over at page 966, 33(b), the schedules are emailed to the aggregators, and then 34.  That is all on that.

CRENNAN J:   Is that the first publication on this analysis?

MR BANNON:   Yes, that is so. 

GUMMOW J:   Which paragraph deals with the aggregators?

MR BANNON:   Paragraphs 33 and 34.

GUMMOW J:   This is the first publication?

MR BANNON:    Yes.  If I could then come back to volume 1 at page 108.  This is the cross‑examination of Ms Wieland.  At about line 13 my learned friend asks a question:

And by that date – can I ask you to go to page 40.  Still within your bundle, the bundle associated with your affidavit . . . Now this is a document commencing at page 29 that runs through to page 45.  And you can identify that document?

I do not need to go back to it.  That is pages 1003 to 1019.  That is the Excel version of the document to which we have taken many times –

You see the words XCEL?---Yes.

Is that your handwriting?---No.

Is this document . . . something which you produced for the purpose of the case?---No.

GUMMOW J:   What are we looking at this for, Mr Bannon?

MR BANNON:   To demonstrate in the next question that that document is the document on the computer, on the database, because she says:

It is generated from our programming system.  It is just another form of the guide which is emailed out.

The same question and answer is directed at about line 40 to the text version, about 45:

It is the same thing.  It is generated from our programming system and that is emailed out. 

The document referred to there is the text version at volume 2, 1020.  The purpose of taking you to that is to say consistently what we – whether we said it clearly enough before, but we think the findings do actually say this, is that the work, which everyone agreed copyright subsisted, was the work which was in material form made over a period of time but in final material form on the database.  The two pieces of paper which were published – it was published by making it in another material form which was a piece of paper and sending it out.  It did not become a different work.  It was just another form of the same work.  So that is the first proposition I wish to establish and make clear. 

GUMMOW J:   It is just a pity this is only emerging in the final Court of Appeal, but anyhow it is better later than never.

MR BANNON:   Whether it is by design or fortuitous, the findings actually reflect this.

CRENNAN J:   The work is in two material forms; in the database and as published?

MR BANNON:   That is right, but in the process of its creation it is going through a number of material forms, but it is not finalised until that material form in the database.

CRENNAN J:   That is what you are claiming copyright in, that version?

MR BANNON:   Yes.

CRENNAN J:   And as published you are saying, well, it is the same document?

MR BANNON:   The same document, yes.

CRENNAN J:   Or “same work”, you are saying, I suppose, is better than “document”.

MR BANNON:   I think, if I may say so, the focus on the concept of work, which is an intellectual concept in which statutory rights exist ‑ ‑ ‑

CRENNAN J:   It is a product of mental effort.

MR BANNON:   Yes.  It has to be reduced to material form before you get rights, but it is the same work which is published, albeit on a piece of paper.  But that is not without significance.  Justice Gummow would say it is critical, but it is not without significance for a number of the issues in the case which I will attempt to address.  Having regard to those questions and having regard to the findings that there was no debate between us, ultimately that was the work and what was sent out was simply, as I say, a piece of paper in which that work was embodied.

Having identified the work – and then again still attempting to answer the questions debated yesterday – then one can further identify it as a compilation.  It is a compilation because it is composed of a number of elements.  Could I go to page 532 in volume 1 and identify what we say the elements are.  I have said it orally, but perhaps it is a bit more precise to do it by reference to the piece of paper.  At page 532, the first page, what we submit are the elements which make up this compilation are, firstly, the time.  Obviously they are numerals which are well known and the concepts of time are well known.

Secondly, the name of the program, in that case “MAKE WAY FOR NODDY”.  Thirdly, the episode title, if there is one.  Fourthly, if I can aggregate the repeat G, (S), as described in the evidence, is additional program information; and, fifthly, the synopsis.  Whatever else a compilation might embrace, there seems to be no doubt on the authorities that a compilation which involves selection and arrangement of elements, whether it be symbols or words, is a literary work.  That is consistent with our obligations under Berne and TRIPS.

Can I just say in passing, honouring the obligations in Berne and TRIPS requires doing at least that on behalf of authors.  There is nothing in Berne and TRIPS saying you may not protect more, but you have to at least protect that and so that if you protect the compilation which involves selection or arrangement, you are honouring TRIPS.  You are not dishonouring TRIPS or Berne by passing legislation which protects a compilation which does not involve a selection or arrangement.

What we do say is that this is a compilation which involves a selection of those elements which I have identified and their arrangement in the sense of arrangement – a name of a particular program next to a particular time and before or after different other times.  I think Justice Heydon asked me yesterday where we clearly set out this point of collocation in our submissions.  I gave one reference, in paragraph 35.  I should have added two other references, paragraph 24, the third‑last sentence.

HEYDON J:   Paragraph 24.

MR BANNON:   Paragraph 24, the second‑last sentence:

The key element of the work is the selection of programs and their arrangement –

It may suffer the vice of greater compression than that to which are unknown.

HEYDON J:   What is the other one?

MR BANNON:   My last one is 54, the second‑last sentence:

IceTV did not merely take the individual pieces of underlying time and title information from the Weekly Schedules, it reproduced the selection and arrangement of that information in the IceGuide, that is, the collocation of certain titles within certain timeslots –

That argument was so advanced in the Full Court and at trial.  Having identified then what we say is the work, having identified its nature as a compilation and having identified the features which make it in this case a compilation, the next step in the process is to ask, who are the persons who made those elements appear?  Who are the persons responsible for those elements appearing in that arrangement?  We submit, answering that question identifies the authors, bearing in mind the statutory requirement of the word “original”.  The persons who selected and arranged ‑ ‑ ‑

GUMMOW J:   And the statutory requirement of non‑separation of contribution from the definition of “work of joint authorship”.

MR BANNON:   Yes, I accept that, your Honour.  So the persons who  selected and arranged the time and title to appear, we submit, on the evidence and, indeed, as found by both the trial judge and the Full Court and, indeed, as agreed, were Mr Healy and Ms Wieland and we submit that they are joint authors.

FRENCH CJ:   But the selection process for the purposes of defining the creation of the compilation starts with existing stock.  This comes back to a question I put to you yesterday, we do not go back earlier than that and look at how clever they were in acquiring a particular program.

MR BANNON:   Yes.  If I did not beat it sufficiently yesterday, I am beating a full scale retreat from Los Angeles, as I will endeavour to ‑ ‑ ‑

CRENNAN J:   What is the start of the relevant process for copyright for making the work?

MR BANNON:   Can I endeavour to answer that in the process of which ‑ ‑ ‑

GUMMOW J:   I think when you are answering that, Mr Bannon, in a way the perhaps elusive word in your written submissions is “the selection”.  I am looking at paragraph 24.

MR BANNON:   Yes, I will do that.

GUMMOW J:   What is it that commences “the selection”?

MR BANNON:   I have come to the Court here today via Damascus and I fully ‑ ‑ ‑

FRENCH CJ:   Blind, or ‑ ‑ ‑

GUMMOW J:   I hope you have recovered your sight.

CRENNAN J:   You are back on your horse.

MR BANNON:   I fully embrace the necessity for identifying authors because that is the key to identifying who is responsible for the elements and therefore then asking the question, what is the work that they did which caused them to make appear in the literary work the relevant elements and at that point I will endeavour to answer the question as to precisely what it is.

HEYDON J:   But the process can begin six to nine months before actual broadcast?

MR BANNON:   In this case, as it turns out, yes, because ‑ ‑ ‑

HEYDON J:   Are there not some programs that are not acquired until after that period has begun to run?

MR BANNON:   Yes. 

HEYDON J:   Does that not mean you have to go back to Los Angeles or to the sporting bodies in Melbourne and Sydney or to the people who make drama and so forth in Australia?

MR BANNON:   The way we would approach it is that the – if one, as I say, works back from the words and symbol which appear in the literary work, one then has to ask the question, who caused those particular words to appear where they do in that literary work?  What one sees is a process whereby on different pieces of paper they start building up to a single week which results in a finalised document and includes, as Mr Healy says, some pencilled annotations and not pencilled annotations.  In almost every instance one of those annotations will be included once the stock is available or, at least, one could conceive of this circumstance that they put it in because they believed they were going to get it and had not quite got it.  But the key is the causing of a particular word to appear in the literary work because that is the act of authorship.  It does not have to be a physical thing.  Mr Healy could have directed one of his staff to put it into the computer. 

So the answer to your Honour’s question, because the work is not finalised until it is at that point in time identified, it could be that there has been acquisition in the meantime, but once acquired a person will say, we will put that program here on this day in a particular timeslot.  But we would respectfully submit we do not need to go to Los Angeles and we do not need to go to the AFL offices to attract a sufficient degree of selection and judgment as to make the decision to put it in and when to put it in.

HEYDON J:   That point may go nowhere.  My point is simply that Mr Healy’s skill is not only in the arrangement and selection of existing material, it is in the actual procurement of the material to fill a vacuum.

MR BANNON:   Yes, I fully accept that and with the benefit of that acceptance, but perhaps overnight realisation, the sentence which attracted some discussion yesterday at the foot of her Honour’s judgment where her Honour said – perhaps I should go to it directly.  Volume 10, page 4571.

HEYDON J:   Paragraph 208, the third‑last sentence.

MR BANNON:   Yes, I think the last sentence:

The skill and labour expended for the purposes of maximising the benefit of the broadcasting is not coextensive with that –

and, yes, the sentences immediately above that, as your Honour says:

For example, Mr Healy or Ms Wieland may spend a great deal of time, skill and labour in deciding whether to purchase a new series from the United States, negotiating the purchase and deciding the timeslot in which it should be broadcast –

So that one can recognise that her Honour was correctly saying that the skill and labour, the purpose of maximising broadcasting may include spending lots of money flying to Los Angeles and negotiating, bringing to bear all sorts of skills.  That could fairly be described as part of the skill and labour involved in conducting a broadcasting business, but there is a difference; they are not coextensive.  Her Honour in that passage is not saying that the selection process in the judgment in deciding to put a particular program in at a particular time is not also part of this considerable skill and judgment, it is just that it is a subset of the full labour and exercise.

FRENCH CJ:   On the case you are now putting to us the selection process begins when they decide the timeslot in which it should be broadcast to maximise viewers?

MR BANNON:   Or decide to broadcast it at all and in the timeslot.

FRENCH CJ:   But for the purposes of the creation of the schedule, it may define a timeslot?

MR BANNON:   Well, yes, at the point in time they say - there are two possibilities, or maybe there are more than two, but at least this possibility that Channel Nine has a library of material which it can use at any time.  Minds may differ as to whether it is a good idea to use some of it, but obviously we are not in that position.  But they may be talking, we have got that old Family Feud, let us bring that out again, and they make a decision, we will broadcast that and we will put that on on Wednesdays.  So at that point in time that is a decision to say we will show that again and we will put that in the schedule.

It is conceivable that they could make a decision to pencil in AFL games before they have got the rights in that six‑month schedule, but they are very confident because of the amount of money they bid that they are going to win, but that exercise of deciding to broadcast it and pencil it in would be part of the creation of the literary work.  Perhaps completing the capability to provide that or honour that selection may involve going to Melbourne and negotiating and that would not be part of the creation of the literary work, although it would be part of the exercise of the broadcasting service.

FRENCH CJ:   Part of the selection may be provisional, it may change according to circumstances and the body of stock that it is available to them.

MR BANNON:   Yes, absolutely.  But it involves judgment and skill, we would say, which is enormous, but whether it is enormous or not, it is substantial.

CRENNAN J:   This argument reminds me a bit of the Da Vinci Code argument in England where the claim is that one novelist has taken a plot essentially from another literary work and, I suppose, it could be argued that the plot was the key element of the work.  One could always imagine a novelist or even a writer of a work of non‑fiction saying, “Well, my central theme has been taken.  My architecture has been taken.  I put enormous intellectual effort into the central theme”.  This gets back to your key element argument.  But at the end of the day, all you are asking yourself, are you not, in a case like this is, what is the relevant material in both works that we are looking at to determine copying?

MR BANNON:   Certainly.  I agree.

CRENNAN J:   It is, in your case, you know, 12.15 and a title opposite.  There just seems to me on that novel analogy to be some difficulty in investing so much in the intellectual effort of the programming as a key element of the compilation when you think of that analogy with a fight over a plot.  The fact is no one would necessarily be able to successfully claim copyright infringement because a plot outline happened to turn up in another novel, because at the end of the day, it is always that question, what bits are in the infringing work that are said to have been copied from the other work?

MR BANNON:   I accept that.  But I must say, if I may say so, what this case, if it was not already, or perhaps it always was and I never realised it, represents an opportunity to put on a statutory basis what perhaps has been taken as read for a long time, including Ladbroke and cases before it, where language has been used, perhaps in the right direction but without perhaps the right precision, to explain why it is that work does invest a compilation or any literary work with originality.  The process of identifying the work and then working out what its elements are, working out who its authors are and then working out what they did to create that is an analysis which is precise, accords with the statutory language and explains Ladbroke. 

It explains the Canterbury Park Racecourse race program case we have had in New South Wales for many years.  It explains Littlewoods, the football list.  But it puts it on a proper basis and will assist, if our submission is right as to the analysis, and I do not claim any credit for it other than perhaps it being suggested by certain members of the Court yesterday that I should look more closely at the statutory provisions, but it assists in defining what sort of work is relevant to establishing originality by identification of the author and, once you do that, you can work out (a) whether you have got copyright; (b) having done that, on the question of substantial part, you ask what parts are taken, which I accept, your Honour, is simply a fairly mechanical exercise seeing where are the matching bits.  Then you ask, to answer the question which has been embraced by this Court and in Ladbroke, a substantial part is determined by quality and that has been said to be in the sense of originality.

CRENNAN J:   The changes, of course, that you have pointed to, the statutory changes, were to take into account the difficulties in old paradigms of literary work in an age where material can be stored on a computer.

MR BANNON:   Yes.

CRENNAN J:   I do not think you are contending, are you, that the statutory changes have made some difference in relation to the need to look at whether something in which there is a claim of copyright is in fact a fact or information?

MR BANNON:   No, I agree.  I do not think it changes the nature of the compilation.

CRENNAN J:   No.  It might have the result, I suppose, that you would have an exclusive right to reproduce the time and the title.  Just putting aside the fact that it is part of a compilation, the net effect would be – leaving aside the substantiality issue, that is the end result, is it not?

MR BANNON:   Quite.  If we are wrong, of course, it means they did not have to go through the exercise they did engage in.  They could have just copied the whole thing. 

HAYNE J:   The root proposition that you, I suspect, have to embrace is that a decision – you can add the word “business” decision but that may colour it – a decision about sequence or relationship of elements once recorded in material form is a compilation.

MR BANNON:   Yes.  We accept, as I have said plenty of times, that the synopsis is part of the compilation.

HAYNE J:   In this case there happened to be a synopsis.

MR BANNON:   Yes, in this case.  I mean, there was discussion yesterday about the paper grid.  Having looked back at the paper grid, I suppose, you could argue that it would be an easier case on infringement because it has the time and title which was reproduced in the database and then embodied later, but that would not be an appropriate way of dealing with it because we were not intending that to be our final document, the making process was still engaged in.  So, as I say, we do not shy from the fact that – although we did not plead this, but I accept that additional joint authors who were making an inseparable contribution to the final work were those gentlemen who went and got the program classification and also the synopses as well. 

In terms of the level of judgment and skill that involved, we would submit it is of a lesser order – certainly the program classification – and even the synopses collecting the right one from the relevant producer again is likely to be of a lower order, which will have some bearing on the question of once you have identified the parts which are reproduced, whether or not they are of sufficient quality.  The only question I might add in relation to the computer provisions is to say that certainly in the explanatory memoranda there is healthy statutory recognition of the fact that compilations are alive and kicking as copyright works which are entitled to be protected.

CRENNAN J:   I think there is no doubt about that.

MR BANNON:   And that the fact that they are stored on computers is a statutory recognition that these databases are compiled and put on computers – that is a second point – and it could not include massive amounts of material, but obviously mere size and mere aggregation is not something which is going to give you copyright work.  You still have to do some active origination and identify the authors for the purpose of doing that.  Also, thirdly, it has some bearing, we submit, that it is a statutory recognition that if the compilation is a compilation by reference to association of elements, as we have described, the fact that it can be pulled out, for example, in a text format, it can be pulled out with some lines on it, but it is the same work, rather suggests one is moving away from a suggestion there is a particular form element in the work which is relevant to its character as a compilation, which is a point which, we respectfully submit, we say it was overemphasised by our learned friends, and which affected the learned trial judge’s assessment of infringement.

CRENNAN J:   It is not right to say, is it, that if this argument of yours is wrong, IceTV could copy holus bolus because the moment they copied your compilation, there would be no real argument about infringement.

MR BANNON:   We would hope so.

CRENNAN J:   I am talking about copying the whole of it, with the synopses.  That would not be a difficult issue.  So it is not really right to say that, if your argument is wrong, they can copy it.  That is not really the result.

MR BANNON:   I accept that.  If they just publish time and title, we still have to answer the question, is that a substantial part?  It arises every time.

FRENCH CJ:   When you talk of moving away from form, is that a way of dealing with the sort of feel and content observation that her Honour made?

MR BANNON:   Yes.

FRENCH CJ:   So if we move too far away from form, we get to a situation where any constellation of facts in a particular relationship, whatever form they take, is protected?

MR BANNON:   Yes.  That is why we accept we are defined by the relationship which we identify in our compilation, which is a relationship of a time with a particular episode and a particular program information and a particular synopsis and a selection of those.  But provided that relationship is maintained in any reproduction, then there is a reproduction of it.  Of course, if they scrambled everything, even though you could find on a piece of paper every single word but next to Hogan’s Heroes was the description of, you know, history of the Second World War ‑ ‑ ‑

FRENCH CJ:   They are assuming maintenance of the relationship between the facts on the line, as it were.

MR BANNON:   Exactly.  I resist the proposition that it has to be in a particular line, in that it can be vertical or ‑ ‑ ‑

FRENCH CJ:   No, the particular relationship.

MR BANNON:   Yes, I accept that.

CRENNAN J:   What if a competitor – I suppose this is a bit unrealistic – decided to screen the same movie at the same time and put that in their program?  Is that going to be an infringement of your compilation?

MR BANNON:   If they did not produce in a material form a copy of the same schedule, then they would not.

CRENNAN J:   What if they published it, let the newspapers publish that at 12.15 they are going to show Hogan’s Heroes and you also, as it happens, will be showing Hogan’s Heroes at 12.15?

MR BANNON:   If all they published was that fact, then the question would arise, have they taken a substantial part of our work?  It is likely that they would not have because they would not have taken the collocation.  They would not have taken it as part of a relationship and a schedule.

CRENNAN J:   But to any reader it looks exactly the same.

MR BANNON:   It depends how it reads.

CRENNAN J:   If the collocation that you are asserting rights has as its key element the time and the title, they have taken it, have they not, if they make that decision?

MR BANNON:   Not by simply screening the show.

CRENNAN J:   No, by publishing that fact in a newspaper.

MR BANNON:   If they say Channel Ten is going to screen Hogan’s Heroes – well, yes, it could be an independent creation issue.  In other words, if they decide we are going to screen the same show, Hogan’s Heroes – it is unlikely they would because ‑ ‑ ‑

CRENNAN J:   Well, say, three of them in the same order.

MR BANNON:   They would not have the same  ‑ ‑ ‑

CRENNAN J:   I know it has a slightly fanciful element, but I just want to use the example to test whether that would be an infringement of your compilation.

MR BANNON:   I suppose the way to look at it is this, if they make a programming decision to screen a particular program at a particular time ‑ ‑ ‑

CRENNAN J:   Suppose they did it by accident?

MR BANNON:   Again, they have to use our work and copy our work, substantial reproduction.  So if they decide to screen a program at the same time and they know they are going to screen it and they say, “Let’s advertise this”.  Go to the advertiser, “Can you advertise the fact we are going to do this” ‑ ‑ ‑

CRENNAN J:   Is that an innocent infringement?

MR BANNON:   No, because they are not copying our work.  They are reporting what they propose to do.  They are not looking at our work and saying, “I see a part of that.  I am going to copy that in my work.”  The big problem here, we submit, for us is they are seeking to do exactly what we have done in this creation. 

Can I just perhaps go back to that exercise I was discussing.  As I say, Mr Holman, the level of his contribution I accept it existed and was an inseparable part of the exercise but we submit that it did not involve the same degree of judgment as Healy and Wieland.  One could also subdivide the Healy and Wieland skill up to a point by saying to the extent they reselected strip programming, in other words, decided to keep something as it was, that might involve a lesser degree of skill and judgment, although it still involves an element of judgment. 

Your Honour Justice Gummow may recall in the Interlego v Croner Trading issue that post‑69 drawings were the subject of a debate as to whether they attracted copyright.  The author of those drawings, a Mr Pucek, had made some slight but important variations to a pre‑existing Lego brick.  The case was mainly concerned with the application of section 22.  The House of Lords said we are not going to give you a copyright in those slight variations because that would give you a perpetual monopoly in copyright.

The Full Federal Court said, no, that is wrong because it is not a monopoly.  You can always go back, in effect, and copy the old work once it gets out of copyright, but in that the Full Court found that there was sufficient skill in deciding to keep certain lines in the drawing and add different things to them.  So there is always an ongoing decision, coming back to the programming schedule, even to keep a strip program involves some judgment but one may accept it is a lesser level of judgment. 

Perhaps to take up the remark made by Justice Heydon yesterday, perhaps the amount of intellectual effort invested in midnight to dawn programming may be of a lesser order because you cannot afford to have your employees spending too much time on that exercise.  But when you look at changes from week to week, almost a fortiori, they involve a higher degree of skill and labour.

GUMMOW J:   Do you have a citation of Lego?

MR BANNON:  Yes, 39 FCR 348 and post‑1969 drawings and the “perpetual monopoly” point is discussed at about page 379.

HAYNE J:   Can I just take you back to this understanding of compilation?  Relevantly it is the organisation of the sequence or relationship between time and program.  Is that right?

MR BANNON:   Yes, plus the other two elements.

HAYNE J:   There is, you say, a compilation in the sense of the establishment of that relationship between elements?

MR BANNON:   Yes. 

HAYNE J:   That compilation is ultimately expressed in words and symbols, et cetera?

MR BANNON:   Yes.

HAYNE J:   You shift your focus to the establishment of the relationship, rather than the expression, do you not?

MR BANNON:   I think that the relationship is part of the expression.

HAYNE J:   Your second proposition which you began with was that the schedules constituted the programming decisions, that is, you have for your argument, do you not, to compress – you would say permissibly, indeed you would say necessarily – the decision about sequence or relationship with the recording of it in material form and you say what, that is an observation about the limits of human memory?

MR BANNON:   It is an observation about the fact that the judgment involved in that decision is attributable to the decision to record particular words and symbols in the document.

HAYNE J:   But the focus of the argument – a necessary focus for your argument – is upon the establishment of the relationship between elements.  Is that right?

MR BANNON:   Yes.

GUMMOW J:   A relationship indicating what?

MR BANNON:   A program title being screened at a particular time.

HAYNE J:   That Days of Our Lives will be at 1300 hours every weekday or whatever it is.

MR BANNON:   It is a weekly schedule so it involves screening.  I suppose the elements are one, screen it at all ‑ ‑ ‑

GUMMOW J:   It indicates a future event?

MR BANNON:   Yes one, screen it at all; two, on a particular day; three, at a particular time; four, before and after every other program.

GUMMOW J:   It indicates a particular event, relative to sequential and anterior events?

MR BANNON:   Yes.

FRENCH CJ:   And it does not matter whether that relationship is expressed lineally, vertically, in circles ‑ ‑ ‑

MR BANNON:   Yes, that is right.

FRENCH CJ:   ‑ ‑ ‑ or a spiral, it is still your work?

MR BANNON:   Yes, and it does not matter if it is expressed in handwriting or print, good handwriting or bad handwriting, in large bold print, in higgledy‑piggledy letters, putting flowers all over it or in different colours.

CRENNAN J:   If it was expressed in a narrative and somebody else reproduced the time and the title, there would be no copyright infringement, would there?  It would be very unlikely to be, because what would have been extracted from the narrative is two pieces of information.

MR BANNON:   It depends what the narrative consists of, perhaps.

CRENNAN J:   I mean a paragraph of prose.

MR BANNON:   Yes.  That may well be right, yes.

GUMMOW J:   Or a statement to a policeman as to what you were doing at a particular time and where you were.

MR BANNON:    Yes.

HAYNE J:   “I was watching Days of Our Lives ‑ ‑ ‑

CRENNAN J:   “I was watching Days of Our Lives at 12.15.”

MR BANNON:   It is a long time since I have had to do that, your Honour.

HAYNE J:   “The accused then said ‑ ‑ ‑

MR BANNON:   Of course, in all of this, in working out who is the author and what they did, one has to bear in mind that the fundamental test is origination:  who was it who originated, if that is a word, the appearance of that element in that compilation in that fashion?  I think that that analysis, if it be accepted, would happily answer why the LA negotiation is not part of a work of authorship because it is not the process of the author directing that a particular word appear in a particular schedule at a particular time.  If that be accepted and the Court were to indicate that, then that would, if I may say so, provide important guidance in a number of cases, not only in understanding cases like Ladbroke and the many cases which have followed it and the many cases which have preceded it.

GUMMOW J:   Where would it leave Desktop?

MR BANNON:   That is a very interesting question.  I was going to come to Desktop.  Ultimately what I would say about Desktop is the ‑ ‑ ‑  

GUMMOW J:   To put it another way, where would it leave the reasoning in Desktop?

MR BANNON:   Justice Lindgren’s encapsulation of the cases which go forward is, if I may say so, entirely orthodox and consistent with what I have just described because his Honour recognises the essential question is originality and that the originality must come from the authors and you have to identify what the authors did to create, to originate the work.  Of course there may be a departure between us in this country and Feist as to whether you need selection in some sort of judgmental exercise or whether mere labour is enough.

One can see that the difference between – the word “compilation”, whatever it means, where one could recognise it, it is not a mere stacking.  In other words, you cannot, with physical exertion, shove a whole lot of things into a room in effect or on a piece of paper.  It involves some sort of organisation.  But if that organisation in that sense involves labour, it may still satisfactorily answer the question of origination, as has been accepted by this Court and over many years, is of the original work of somebody.

So that Desktop, if it went – the principles applied by Justice Lindgren and Justice Sackville we submit are correct.  Whether enunciated, I have not – the question as to whether they went through the process sufficiently precisely to say – I am not saying that their Honours, but anybody went through the process sufficient to say “Who were the authors and what did they actually do and when they were doing what they did, could that fairly be said to be part of the work of causing certain words to appear in a literary work?”  The difficult questions about the LA trip are – I do not know whether they arose as a matter of fact in that case and whether there was a concession made as to who the authors were - I have it on report that there was a concession made as to certain matters.  So that the very questions we have been debating may not have arisen.

So Desktop could well be correct if it was re-run again today and come to the same result, provided you could identify who the authors were and what they were doing.  There may be issues, for example – one of the cases we have cited is the Bradshaw Guide of Railway Stations.  Now, that would involve someone perhaps in those days rattling around the countryside and checking where a station was and what the name was.  Now, that would be labour, not involving a particular skill, but if that was the person who said ‑ ‑ ‑

GUMMOW J:   What year was Bradshaw?

MR BANNON:   1913, I think, about that sort of period.

GUMMOW J:   Was it?  As late as that?

MR BANNON:   Blacklock v Pearson [1915] 2 Ch 376. So you could understand that if that activity was directed to finding out the correct name, it may just involve complete labour but it may be original activity.

This brings me to the next point which is my attempt to answer in perhaps a more constructive way Justice Heydon’s question yesterday about scraps of paper and things.  Transposition work – I think an example I gave yesterday was to have a composer write down on scraps of paper a concerto or whatever but may say to somebody, “Put that all together, but in the same order”.  That process of transposing, as was a lot of Mr Forrest’s work, is not actually origination activity because it is mere copying.  So he is not an author.

The reason he is not an author is not because he is not pushing pen but it is because he is not undertaking work of origination.  He is not a person who is causing – he was not the originator of particular notes to appear in the ultimate work or, in our case, he was not the cause of particular programs to appear at particular times.  He just transposed the works of others.

We submit that makes the exercise that I was suggesting would be some sort of terrorist activity of running a copyright case quite irrelevant because once, as I say, one identifies the work one asks when it was made; one identifies the authors; and to the extent you have pieces of paper, that may just indicate that the work is in the process of being made.  The mere fact that you transpose from one piece of paper to another does not invite arguments to say, “That was there before so therefore it is not original”, because the cases would indicate that mere transposition is not originating work, so you do not have the problems I was indicating.

We do not have a master grid piece of paper problem because to the extent there was transposition that was not the work of origination.  It all fits neatly, happily with the statutory scheme and is a much better answer than some of the answers I gave yesterday – he said quietly.  Really, the encapsulation of that is to say that the focus on the author, the nature of the work and a real understanding of originality truly does inform the process correctly and it demonstrates why the – we did have an original work and I know we have debated this question but obviously directed ultimately towards answering the question in substantial part.  But it is an important exercise for that purpose.  We do in fact obviously have a work of originality, which is admitted.

Perhaps I will just address briefly this business decision point.  I will come to it in Ladbroke because there is a precise statement by Lord Devlin who said it does not matter whether it is a business decision or not.  When one identifies the work and the author and asks what the author did to contribute to the creation of the work, one simply asks is that original activity, did it involve skill and judgment?

The fact that it was done for a business reason, we submit, is not a statutory question which is posed and does not inform it one way or another.  Perhaps a way of testing that would be to say that I, as a very – if I have done something consistently all my life it is to watch a lot of television.  I could want to proffer advice to Mr Stokes or others as to what I would regard as an ideal weekly schedule, and I could draw up my own weekly schedule which would include programs which are known, indeed, episode titles, and I could go to websites and find what the synopses were and put it all together and either do it for my own benefit, just to talk about it with friends, or I could send it to a newspaper and say, “This is what would be a good schedule”, or I could send it to a TV station and say, “Why don’t you think about this?”

If I did that, we submit, for the reasons I have generally developed, I would have copyright in that work.  It would be an odd outcome if Mr Healy did it, but because in fact he was doing it more usefully than I was doing it, he or his employer did not get copyright.

My attention has been drawn to Telstra v Desktop 181 ALR 134 at first instance, which is probably not on your Honours’ list of authorities, paragraph [4] of Justice Finkelstein’s judgment, and perhaps if I can read out these four or five sentences:

There are literally hundreds of appropriately trained or qualified employees who make some contribution towards the production of a telephone directory.  When the nature of the work they do is described, there arise three relevant questions to the subsistence of copyright:  (a) Must a copyright work have an author?  (b) Does a telephone directory have an author?  (c) Is every employee who contributes to the final product a joint author of the directory?  These are difficult questions for which there are no ready answers.  These matters will not be elucidated by this judgment.  Although I raised these issues during argument, the case was contested on the apparent assumption that it was either unnecessary for Telstra to establish that a telephone directory has an author, or that those involved in its preparation are joint authors.

GUMMOW J:   Who is the primary judge in that?

MR BANNON:   Justice Finkelstein.  So that that probably tells one that – it may explain - I do not know.  I am not here to defend Telstra.  I am not here to bury them, but the principles set out by the Full Court we would respectfully submit are absolutely correct and with the benefit of that assumption it may have been hard to come to any different conclusion. 

Although I accept we have been hopefully more precise in elucidating this argument today, if one goes to the Full Court judgment, as I say, whether by – perhaps despite my efforts – at 10, 4614, paragraph 15 their Honours describe the activity of Nine and it does use the composite expression “Nine” throughout that paragraph, and the last sentence:

Each day’s program is individually developed.

16       The two executives responsible for selecting, arranging and ordering –

So that although it does not pick up the Holman and Forrest contributions as described, nevertheless, it does focus correctly on authorship although perhaps not quite expressly saying that.  Paragraphs 17, 18, and 19 describe the process through to 21 and then one jumps, as we have seen before, to paragraph 102 on page 4642.

GUMMOW J:   Does it isolate the time of making and the step of first publication which you have isolated for us this morning?

MR BANNON:   No.  Yes, I think it actually does say – I am sorry, if I could go back to 4615 and paragraph 20:

The database was used to create schedules in various formats.

Now, it does not have that same precision of time but it is fair to say they may not have been assisted by that but it is indicating that the – 20 and 21 are indicating that what was on the database – as published, were publications of what was on the database, so, as I say, perhaps more good luck than good management on our part that the findings were actually correct but perhaps not as explicit as could have been.  Then, 22 is the ‑ ‑ ‑

GUMMOW J:   Paragraph 22 is the first publication.

MR BANNON:   Yes, although they say “not issued to the public”, no one raised the question of the publication in the copyright sense, but obviously they were published.  Then, going to 102 – I know these paragraphs have been taken to, but again it is focused on the activities of the authors and we say that is correct, obviously.  And 103 recognises, although without specifically saying it, that LA and AFL negotiations may not count.  But then the last sentence is a correct application of principle. 

Then 109, everything in 109 we say is correct, including the last sentence.  It does not have the analysis of saying, what was the skill and labour involved in those particular elements, but perhaps it is implicit in it.  It comprehends what her Honour found as well, that this document was both an external information and an internal instruction, both elements of which are part of the classic definition of a literary work.  Then 111 is important, that was the creation of the process.  Then, over at 115:

When the quality of the material taken by Ice is considered, the substantiality of the part taken becomes even clearer.  Ice took, via the Aggregated Guides, precisely the pieces of information that reflected the exercise of skill and labour by Nine in determining the program for a particular day or other period.  It presumably takes a modest degree of skill and judgment to keep a particular program in the same timeslot each day or week, month after month.  It takes much more skill and judgment to structure a complete programming schedule . . . appropriated the most creative elements –

So that was, we respectfully submit, a correct application of the approach, and by reference to author conduct, whereas her Honour by contrast ‑ ‑ ‑

CRENNAN J:   In 115 their Honours do not really focus on the compilation, do they?

MR BANNON:   I am sorry, your Honour?

CRENNAN J:   In 115, their Honours are focusing on the exercise of skill and labour in determining the program for a particular day or period.  That is not really tied to the compilation, is it, except inferentially, I suppose?

MR BANNON:   Yes.  Perhaps it is inferentially, but:

to keep a particular program in the same timeslot each day or week –

that is referring to the compilation –

more skill and judgment to structure a complete programming schedule for a given period.  Ice’s use of material derived from the time and title information . . . appropriated the most creative elements of the skill and labour utilised by Nine –

namely, the bits that they could not predict.  As we have said in our written outline, her Honour actually said that the parts which could not be predicted, the changes, may well be invested with a higher degree of originality and hence may be more substantial, but her Honour did not act on that finding.  We refer to this in our submissions at paragraph 26.  Perhaps staying with the appeal book, at paragraph 192 of her Honour’s judgment at page 4566 at about line 20 her Honour says:

While the time and title of a program to be broadcast in one week that was not broadcast in a previous week may be qualitatively important –

that is, if it is not broadcast in a previous week it may be qualitatively important –

for series or episodic programs which form a significant part of the Nine Programming, the time and title may be of little importance –

So, in other words, her Honour in that sentence is saying if it is not the same repeated program, then it may be qualitatively important, but her Honour said that lots of other things are not.  Now, we agree, we can embrace that, but when it came to working out – as I will go to on the evidence on infringement – the paths they took, the very paths they took were the ones which were changed from week to week.  So if her Honour acted on that finding, or that consideration, we would have succeeded, and that is the consideration which the Full Court acted on.

HAYNE J:   Line 2684.

MR IRELAND:   Thank you, your Honour, I am sorry.  So there was a commitment to that position at that stage.  I think the argument ranged – it is fair to my learned friend – a little more widely this morning.  In our submission, your Honour, these are not works of joint authorship, but it does not matter.  The definition of “work of joint authorship” – this is section 10:

work of joint authorship means a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors.

CRENNAN J:   I suppose another way of putting it might be to ask whether the labour and skill in relation to the database is authorial labour and skill in relation to the compilation.

MR IRELAND:   Yes.  So we would say, your Honour, that there are lots of tasks that are done – the writing of the synopses in one department, the genre information in another.  Those things are still identifiable within the compilation when you get it, so they are separate, if it matters, from the contribution of other authors.  Certain people have certain tasks.  The layout of the schedule, the weekly schedule, which is under discussion includes the outcome of those tasks as it applies to particular programs, but one is able to identify, in our respectful submission, the relevant contributions.  You may not know the names of the people that did one job or the other, but it is not like a joint judgment where it is impenetrable just who contributed what.  The thing is a whole, an indivisible whole, everyone is responsible for it.  It is that sort of situation.  It would be a paradigm of a work of joint authorship, we would say.

FRENCH CJ:   So you see your vat, to use your metaphor, as containing strings of elements in a relationship, time, title, episode title, supplier, rating, all that sort of stuff, and maybe even a synopsis and then for the purposes of the creation of the weekly schedule what happens is out of each of that for each program a subset of the elements are taken out.

MR IRELAND:   Yes, is chosen.

FRENCH CJ:   But the relationship between the elements that are taken out is already defined by the work done previously?

MR IRELAND:   Yes, that is so.  That is as we simply put the case on the facts.  What is happening in the respondent’s case is – and they convinced the Full Court of this – that by attributing pre-eminence to the time and title association they control this information even though the copyright protection lies at – which they sue, which was admitted from the outset.  We had a big battle about the Russian doll argument, whether there were lots of little copyrights within the weekly schedule.  They lost that argument, therefore they have driven to the position where one has to look at the weekly schedules as the work and then one looks to questions of substantiality and reproduction in the manner that we have already covered in‑chief.

If it matters, our learned friend also coined the word, the phrase, “eo instanti” - he said it four times, I will not attempt to give the page references because they will be wrong, in which he said, “Well, it is a rather long instant” because on his case the instant lasts for nine months.  We say that that announcement should be rejected, your Honours.

The only other matter upon which I wanted to reply, we wanted to reply, is Mr Catterns’ contribution.  I thought to brighten things up I would ask your Honours to permit me to ask Mr Burley to follow on that.

FRENCH CJ:   Yes, very well.

MR IRELAND:   If your Honours please.

FRENCH CJ:   Thank you, Mr Ireland.

MR BURLEY:   If it please the Court.  Your Honours, in anticipation of there being limited time we have prepared a document to hand up, responding to our friend’s reply submissions.  I wonder if I could hand that together with some materials to which I will make reference shortly.  Just to save multiple exercises of handing up, if I can do them all at once?

FRENCH CJ:   This is responding to Mr Catterns?

MR BURLEY:   Yes, responding solely to Mr Catterns.  The first is some reply submissions and then some extracts from the Berne Convention and TRIPS.

GUMMOW J:   What is all this going to induce apart from a sense of either déjà vu or despair?

MR BURLEY:   Your Honour, only to the question of the emphasis given in those treaties as adopted by Australia to arrangement, selection of arrangement, in the context of compilations, as opposed to what we would see our friend as devaluing that to the point of vanishing, and emphasis only on skill and effort in the context of those.  So, your Honours, if I could hand up those very briefly.  I will come to the additional material shortly, your Honours.

Your Honours, as we understand it, our friend’s submission in relation to the meaning of “compilation” is one which, as I said a moment ago, is to emphasise the concept of selection and de‑emphasise the importance of arrangement and form in that context.  In our submission, in the context of the Copyright Act, the role of authorship in selection and a reduction to a material form, as required under section 31(1)(i), is one which is properly the subject of focus, and the work of the author lies in giving origination to that particular form as opposed to a general collection of information as a result.  We would emphasise what Justice Gummow mentioned in posing a question earlier today in relation to the Sands McDougall decision, that passage of Lord Eldon’s in Wilkins v Aikin, that a person who engaged in the “mental operation deserving the character of an original work” is the author of such a work.

The Telstra submission, as we understand it, would leave skill and effort as the sole criteria for determining a compilation, or the primary criteria for determining that, without sufficient regard to the arrangement itself.  In the bundle handed up, the first one to which I make reference is the Berne Convention, and I perhaps do not need to take your Honours to it directly, but to note that Article 2 of the Convention identifies:

The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression –

We would emphasise the form of expression there.  Then, skipping over the subparagraphs, referring to sub‑Article (5), where there is reference to:

Collections of literary or artistic works such as encyclopaedias and anthologies which, by reason of the selection and arrangement of their contents, constitute intellectual creations shall be protected as such, without prejudice to the copyright in each of the works forming part of such collections.

We have footnoted this in our submissions in‑chief but the French translation of collection, as originally appeared, is in fact compilation.

GUMMOW J:   Are you saying that these international provisions are reflected in the English legislation about the database provision?

MR BURLEY:   Your Honour, I am addressing the Australian position in relation to it.  The English treaty provisions – and I cannot give your Honour a definitive answer about that – possibly relate also European treaty obligations and I would not trespass into that field, but in relation to the next document handed up which is again an extract ‑ ‑ ‑

GUMMOW J:   The reason why I asked was that that refers to the intellectual creation of the author. 

MR BURLEY:   Yes.

GUMMOW J:   Are you saying that that idea is also found in Berne and TRIPS?

MR BURLEY:   No, we do not draw quite so much from Berne and TRIPS.  Sticking to the text of those treaties, the second document, which is the TRIPS reference, provides in Part 1 the general provisions and basic principles and in Article 10 of that, which appears on page 1414 of Appendix 9 in the hand up, is entitled, “[Computer Programs and Compilations of Data]” and dealing with compilations of data in subparagraph 2:

Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations –

your Honour, I pause there and note those words –

shall be protected as such.  Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.

The TRIPS agreement as set out there was entered in 1994 and endorsed in 1995 in Australia.  However, since that agreement there have been a number of amendments to the 1968 Copyright Act, including significantly the one immediately following the World Trade Organization Amendments Bill – the agreement rather, which is reflected in the next document, which I handed to your Honours entitled Copyright (World Trade Organization Amendments) Bill 1994 which became an Act of the same name.  That Bill records in its preface under the heading “REASONS”, the third paragraph down that:

This Bill will enable Australia to comply with the obligations in regard to copyright under the Agreement on Trade‑Related Aspects of Intellectual Property Rights (TRIPS).

No amendment was effected in the subsequent amendments to the Copyright Act by reason of entry into TRIPS, nor indeed any other subsequent amendment to the Act.  In our respectful submission, that is because Parliament was satisfied that is international treaty obligations were met by reason of the current wording of compilation and the form of the definition of “literary work” in the Act.  That gives sufficient flexibility to accommodate and recognise the importance of the selection or arrangement or the form, as we would submit it, of a compilation.  We have footnoted some further references to some articles about those materials which I will not repeat, but they are in our submissions in reply. 

In our submission, regardless of the commercial environment or value to the copyright owner of information, the question first and foremost in an understanding of the word “compilation” in the context of the Copyright Act is directed to the form of the compilation and its arrangement.

That moves into the question of substantial part or originality and it appears that our friends for Telstra, and we are in agreement, that the Court’s decision in the Data Access Case requires that there be an identification of the nature of the work, or the nature of the interest, as variously expressed.  Where we depart, of course, is in the definition of that.  We would respectfully submit that the first question, if asked and answered, is that a compilation protects a form of arrangement, primarily, an originality of that, then the originality of the information per se is not the relevant question.

In that regard, we pray in aid Lord Pearce’s judgment in the Ladbroke decision at page 293, which our friends for Telstra recite in paragraph 44 of their submissions, which emphasises the notion that when considering a quality of reproduction that when a work is robbed of its collocation then it may lose its character of originality.  We submit that applies in the present case.

FRENCH CJ:   I hear the word “collocation” is being expanded to cover relationships between whether they are defined in an electronic database or on a piece of paper.

MR BURLEY:   Yes, your Honour, and so we would say that a classic example, perhaps, of where a compilation protects the particular arrangement and intersection between particular components which have been brought together is to be contrasted with the particular items of information which, when robbed of their collocation, are not independently protectable.

CRENNAN J:   Can you have a collocation of two bits in a total of 14 pieces of information?

MR BURLEY:   We would submit that it is always a question of fact, one would say, as to the substantiality, but where there are two pieces arranged together in the context of a very much larger collocation, it is highly unlikely that that would be regarded as a collocation.

CRENNAN J:   Standing alone.

MR BURLEY:   Standing alone – or, indeed, as in many of the examples in the present case, one item of information standing by itself.  Our friend for Telstra expressed concerns about Feist, which concerned its own particular business interests that do not directly, in our submission, relate to the present case.  However, we do submit that whilst the statutory and constitutional position in the United States is clearly different, as a matter of principle, two points at least might be drawn from Feist as being directly applicable in the current case. 

First, and this is reflected in our submissions at paragraph 7, Feist’s insistence that compilations have a form of arrangement in order to attract protection is consistent with those matters which I have been submitting on until now.  That does not provide any surprising conclusions.  Secondly, the protection afforded to such compilations is, as the Supreme Court described it, thin and does not extend to all means by which the information itself is conveyed or the information itself.  There is elasticity in the definition of “compilation” to accommodate the concepts in Feist, in our submission. 

The particular concept of the contrast between an idea and the form of its expression has been recognised in this Court on a number of occasions which we have referred to but including the Network Ten Case and, as we say in our reply submissions at footnote 9 in the Canadian authorities referred to there.  Our friends made some submissions in relation to Ladbroke which do not reflect a huge divergence between their position and ours.

GUMMOW J:   It may be that the English cases started to go in a particular direction with the Time Out Case in [1984] FSR 64.

MR BURLEY:   Yes.  Perhaps the influence of Europe or some other factor, but in our submission that approach tended to diverge from a focus on formal arrangement which, in our submission, would be the preferred version.  My friend, Mr Ireland, reminds me that below we did make the submission that Time Out was wrongly decided.  If it please the Court.

FRENCH CJ:   Thank you, Mr Burley and counsel.  The Court will reserve its decision.  The Court will adjourn until 10.15 am on Tuesday, 4 November in Adelaide.

AT 3.12 PM THE MATTER WAS ADJOURNED