IceTV Pty Limited & Anor v Nine Network Australia Pty Limited
[2008] HCATrans 356
[2008] HCATrans 356
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 THURSDAY, 16 OCTOBER 2008, AT 10.27 AM
Copyright in the High Court of Australia
MR J.M. IRELAND, QC: May it please the Court, I appear with MR S.C.G. BURLEY, SC and MR J.S. COOKE on behalf of the appellants. (instructed by Bartier Perry)
MR A.J.L. BANNON, SC: May it please the Court, I appear on behalf of the respondent with my learned friends, MR R. COBDEN, SC and MR J.M. HENNESSY. (instructed by Gilbert & Tobin)
MR D.K. CATTERNS, QC: May it please the Court, I appear with my learned friends, MR A.J. RYAN and MR S.M. REBIKOFF, for Telstra Corporation Limited, seeking leave to intervene or appear as amicus. (instructed by Mallesons Stephen Jaques)
Your Honours, I have spoken to our friends and if the Court chose to grant us leave we would seek to address the Court for about 15 minutes at the conclusion of the respondent’s address and before our learned friends for the appellants addressed in reply. May it please the Court.
MR R.J. WEBB, SC: May it please the Court, I appear for Australian Digital Alliance Limited on its application to make submissions to the Court as amicus. (instructed by Baker & McKenzie)
FRENCH CJ: Thank you. The intervention applications I think are opposed. Is there anything that anyone wishes to say in respect of them in opposition?
MR IRELAND: Your Honour, we have put our short note in writing, in an effort to speed things up, filed on 13 October. I hope the Court has been provided with that. That is the appellant’s submissions on the proposed interventions.
FRENCH CJ: Yes.
MR IRELAND: Your Honour, we would rely on those written submissions and, in particular, we wish to emphasise that the application by Telstra seems to us, with the greatest respect, to be a case of wanting to have its cake and eat it too having participated in a particular way in the Desktop decision in relation to which there was an application to this Court for special leave which Telstra itself then resisted. Now the stance is reversed and it wishes this Court to entertain submissions from it against the possibility that something may occur in this case which presents what could only be dicta which it finds unpalatable. As we have submitted in writing, your Honour, we submit that Telstra should not be given that luxury in this proceeding.
FRENCH CJ: Thank you, Mr Ireland. The Court is of the view that it may be assisted by giving leave to Telstra and the Australian Digital Alliance to appear as amicus. On that basis presumably Mr Webb would follow Mr Ireland? Yes, all right. Yes, Mr Ireland.
MR IRELAND: Your Honour, because of the tentative nature of the outcome of the applications that the Court has just dealt with, we have not been able to agree final allocations of time, but I think in an informal way we have judged that if the two amici – as they now have become – participate in oral argument which, of course, is implied in what your Honour has just said, that there will still be adequate time for the matter to conclude, so long as their participation is within reasonable bounds, by which we thought something in the order of 15 minutes to half an hour at the most.
FRENCH CJ: Thank you, Mr Ireland.
MR IRELAND: There is just one thing, your Honour, that follows from the ruling which I perhaps would mention. We have not ourselves responded – and this is specifically to Telstra’s submission – because again of the indeterminate nature of the application. We will do our best to be in a position to do that in reply overnight.
GUMMOW J: You have overnight now.
MR IRELAND: But I wanted to make clear that our written material does not cover that ground. Your Honours, the case, as your Honours will have seen, involves consideration of just what the Copyright Act 1968 means when it uses the word “compilation” and what the consequences of that word are within the framework of the Act generally and, significantly, what considerations arise in assessing the question of infringement of a compilation work.
GUMMOW J: You might want to know who the author was, might you not?
MR IRELAND: Yes, your Honour.
GUMMOW J: To start at the beginning in a rather simplistic – who were the authors? I assume that Mr Bannon’s client relies on 35(6) of the Copyright Act, although that is not pleaded anywhere that I can see. Where are the authors? You are perhaps not the right person to ask, I suppose.
MR IRELAND: No, your Honour. I think, if I can respond to it though, there was a series of people who were employed by Channel Nine who participated in various ways in the creation, to use perhaps a neutral word, of what ultimately became the weekly schedule, and that is the copyright work in suit.
There were affidavits from a Ms Wieland, Mr Healy, and some other material which indicated that a gentleman called Mr Forrest had written up one of the documents which came into being along the way, the work in suit being, at least according to our submissions, a finally developed work probably over a period of about a year through about five or six different stages or documents.
GUMMOW J: The reason why I mentioned it – you see, if we are going to get to Fiest, as we are on the written material, the reasoning in Fiest is very influenced by the US constitutional provision which talks about authors, and it focuses the mind. I am not sure it has been focused in this case.
MR IRELAND: To answer your Honour’s question more directly, I think it was accepted, and it is recorded in the judgment below and in the statement of facts that is before this Court, that it was conceded that, for example, Mr Healy and Ms Wieland were Australian citizens and hence qualifying persons for the purposes of any issue of authorship. It was also conceded that they at least were, as it were, potential contributors to ownership on the part of the company itself.
GUMMOW J: There is a reference to anonymous publication in the statement of claim. What is all that about?
MR IRELAND: I will leave Mr Bannon to answer that one, your Honour.
GUMMOW J: Paragraph 13.
MR IRELAND: Of the plan.
GUMMOW J: Do not stay to deal with it now.
Perhaps I can start with the compilation itself, that is, the document called in the judgments below the “weekly schedule”. Mr Healy’s affidavit, your Honours, is contained in volume 1 of the appeal books and if one goes there to page 514 there is what is described in the judgments below as the “Excel version” of the weekly schedule. If one goes to page 532, which is the next document within that book, one sees what is called the “text version” of the weekly schedule.
Your Honours will see it is not of consequence which of those one looks at. They are not for the same period so the entries are not the same, but your Honours see immediately what might be called the layout of this document comprising, as it does, basically five columns of information, the first of which on the left‑hand side is a reference to the time of day. The second column of information is what is referred to as the “title information”. The first one on page 514 at which I am looking, for example, is a television program called Make Way for Noddy and under that Noddy Has a Difficult Day. Noddy Has a Difficult Day is what is referred to in the evidence as an “episode title”.
Then as one travels to the right there is a third column which has what might be called some kind of broadcast information or additional information about that program. One immediately learns that Make Way for Noddy was to be a repeat of a program. The fourth column includes other information. In the example I have taken there appears G and (S); G I think is a classification rating. Then in the fifth and last column – and this varies in its extent as your Honours look down the page – there is some kind of narrative which sometimes is short and sometimes runs up to about 10 lines, I think, one sees that, which is what is referred to in the evidence as the “synopsis” or “synopses”.
FRENCH CJ: The (S) refers to the fact it is part of a series, does it?
MR IRELAND: That is so, your Honour, I think. I will just have that checked. I think that is right, your Honour. I am sorry, I am wrong. That is to indicate that that particular transmission has availability of subtitles. Sometimes those are technical pieces of information and sometimes they are what we might call more generally classification details.
Your Honours will see immediately also that this document, commencing at 514, occupies many pages. Pages 514 and 515 cover the projected programs for, in this case, 7 May 2006, which is a Sunday. Typically, I think universally, the so‑called television week runs from Sunday to Saturday the following week. As one passes over the pages, one sees comparable material for each day between Sunday, 7 May and Saturday, 13 May. The entire weekly schedule, that is, the copyright work in suit, is in this example the document that runs from pages 514 to 531 in the Excel version. In the text version, which I have mentioned – it is, in fact, the following week, not the same week. It runs from 532 through to 556. Each of those is a single copyright work for the purposes of this litigation. Your Honours will also notice that the clock, as it were, starts at six in the morning rather than at midnight and runs through to six the following morning or just before. Your Honours, that is the work in suit.
HEYDON J: Can I just ask you a question about something the trial judge said? On page 4517 of volume 10 in paragraph 47, she said that you accept that “copyright subsists in the Weekly Schedule”, which you just said was a single work –
by virtue of the skill and labour in the scope of selection of programs, the decision to move or replace existing programs –
Just pausing there. Now, you made no such concession on the pleadings. Did you ever make any such concession?
MR IRELAND: No, your Honour, we do not. We say that that is a mistake of the trial judge which is then not only taken up but fortified in the Full Court, when one comes to that. We have scoured the material so far as we can, including the transcripts and written submissions, and we would challenge our learned friend to point to such a concession.
HEYDON J: But those first two integers would be totally inconsistent with your case, would they not?
MR IRELAND: That is right, I agree with that.
CRENNAN J: May I ask a related question, I think. In relation to the weekly schedule and Mr Healy’s evidence on page 429, paragraphs 86 to 89, I just wanted to understand whether it was put that the labour and skill that is referred to in those paragraphs, was that put as feeding into the collective authorship, if I could put it that way, of the weekly schedules or is it something quite separate directed to skill and labour associated with things like ratings issues or something of that sort?
MR IRELAND: Your Honour, as we read Mr Healy’s evidence, as we have read it throughout, he does not discriminate between those matters. There is a long explanation in his affidavit about all the things that he does in his capacity as director of programming, starting from escapades overseas to purchase series from American production companies right through to the slightly more less exciting task of writing some squares on a piece of paper which ultimately become after a couple of other emanations this weekly schedule.
It has always been put on the other side that the skill and effort applicable – and it will be apparent for our learned friend’s submissions – is a whole range of activities starting with the idea to go and negotiate for a program to the planning of a day, to the adjustment of things according to market responses, all of these things, and so to answer your Honour’s question part of our fundamental case is that all of that, the latter part of which was called in the judgments below the preparatory work or the antecedent work, ought not to have been taken into account. That is our primary position because our primary submission is that the relevant skill and labour, if one comes to evaluate it in those terms, in assessing a compilation copyright work is the skill and labour in producing that compilation and not in all the business decisions and antecedent activities that may have, in one sense, have been precursors to the creation of that compilation.
CRENNAN J: Is there anywhere identified in Mr Healy’s evidence the precise authorial role, if I can put it that way, in relation to the compilation itself?
MR IRELAND: If I could ask your Honours, please, to look at paragraph 110. This takes the story up a ‑ ‑ ‑
GUMMOW J: Page, Mr Ireland?
MR IRELAND: I beg your Honour’s pardon, page 434, paragraph 110 of Mr Healy’s affidavit. After a long description of Ms Wieland’s role and that of Mr Healy himself, the section commencing on 433, “Finalising and Editing the Schedules”, and then over on 434 in paragraph 110:
Following any further changes which myself or Ms Wieland may make, which would be recorded in the Master Paper Grid, Mr Forrest then enters the information from the Master Paper Grid into a program database on Nine’s computer network (the Nine Program Database). This is referred to as “dumping” the Schedule, and it is the first point in the process at which anyone outside the Programming Department can see the proposed schedule.
So, it looks as if it might be Mr Forrest who is engaging in, with the use of his computer or the Nine computer database and database, what might be characterised as an act of authorship, as we would ‑ ‑ ‑
CRENNAN J: Giving a material form to all this program information.
MR IRELAND: For the first time.
CRENNAN J: For the first time.
MR IRELAND: Your Honours will appreciate that on the other side they say that as these different grids and tables are created with different information but having in common what is described as time and title information there is what might be treated as a progressive building up of the final work. We contest that. We say it is true to say that what has been given the label “time and title information” appears in earlier schedules which are used for quite different purposes. The first thing we say about that is – and this was a matter of some debate in the Full Court – that because the time and title information has had other roles in other documents, it is not fresh or new for the first time in the work in suit.
GUMMOW J: Mr Ireland, can I just ask you this. Is there any suggestion of joint authorship in this case?
MR IRELAND: No.
GUMMOW J: Section 78 and following in the Act deals with joint authorship and section 81 with anonymous joint authorship. It seems to be suggested against you there is a number of actors involved. Is it suggested that they are joint authors of something?
MR IRELAND: I suppose it is, but as your Honour I think has already said, none of this was ever pleaded, developed. You will not see a word of it in the ‑ ‑ ‑
GUMMOW J: It becomes important, because you want to work out how long the copyright lasts. Is it the oldest or the youngest joint author? I have forgotten. Anyhow, there is special provision about that.
MR IRELAND: Yes, that is true. The youngest, I think. Your Honour, could I deal with this question of the earlier presence of time and title information. I would seek, with your Honours’ permission, to hand up just two pages of exchange in the Full Court, that is, pages 87 and 88 of the argument.
HAYNE J: In aid of what proposition, Mr Ireland?
MR IRELAND: In aid of the proposition that the question of the significance of the time and title information having occurred in earlier documents they say was not live. Your Honour, we would respectfully disagree with that. This is a passage in the Full Court. Justice Sackville at the top of page 87 of the two pages I have just provided:
SACKVILLE J: But I rather thought that you were now making a separate and distinct point, that is that in determining the substantiality of the taking accepting that you need to do it as her Honour did by reference to the entirety of the copyright work you give relatively little weight, perhaps no weight, I am not sure, to the preparatory work involved in compiling the time and title information. Why? Because that was already recorded in the grid and now it has found its way into the weekly schedule as a component thereof. What I am trying to follow is why you give little weight to that preparatory work just because it was recorded in a grid and has since been transferred into the weekly schedule as a component thereof.
MR IRELAND: Because it is not original to that compilation.
SACKVILLE J: Why does that matter?
MR IRELAND: Because the search in all compilation cases is for originality in the senses that your Honour has discussed, all of your Honours discussed in the Desktop case.
SACKVILLE J: Well, does that mean if I am an author and I have a handwritten manuscript for my chapters and I make . . .
If you have got a handwritten manuscript and then it gets sent to the printers in the olden days and you get proofs in the olden days. Maybe it can still work with computers and then there are some corrections made . . .
MR IRELAND: And then you get a galley proof.
SACKVILLE J: Yes, and then what finishes up is a slightly amended version of the manuscript but it is really only just corrections.
MR IRELAND: Your Honour is right, your Honour is right.
SACKVILLE J: So does this mean that there is no relevant originality in the final version of the book because all originality has been subsumed and exhausted in the manuscript?
MR IRELAND: No, it doesn’t mean that and that’s because it’s a literary work dealing with a conventional time. When you’re looking at copyright compilations there’s no conventional creativeness in it. You can look at a draft of a judgment of Justice Sackville and you can say, this is pretty good, it’s not up [to] the usual standard but it’s pretty good, and then it can be refined by your Honour ‑ ‑ ‑
Then his Honour responds to that and I go on:
MR IRELAND: The draft is done and it’s nearly there and the eloquence is there but your Honour revises it and adds to it and there’s a better outcome as a literary work. No sensible person looking at the two would say, well, that’s a different literary work but when you have a compilation copyright which has got some time and title information you add to it a whole host of other things. The significance of the originality is of a different [type] so that the master grid is not a draft of the Nine weekly schedule, that’s the point, it’s not a true analogy. That was my answer to Mr Burley and that’s my answer to your Honour.
So this question of the earlier appearance of what is called time and title information, in the documents to which I am about to take the Court now, has been of live significance.
Could I take your Honours just quickly then in the same volume, that is volume 1, page 507. Page 507 is what is referred to in Mr Healy’s evidence as “the grid”. You will see that is virtually blank at that stage. That is in his handwriting. It is a starting point for a compilation of sorts. It runs over to 508 - that is part of the same document. If your Honours go to 509, here is a thing which is called “the spreadsheet” in the evidence, and that is Ms Wieland’s work. She was responsible for what were called the non‑prime time programs, I think. Your Honours might appreciate that there are certain parts of the television day that are treated as prime time. I think it runs from about six o’clock at night into the evening.
Part of Ms Wieland’s task was to prepare this schedule that one sees at 509, which dealt with, in terms of programming information, including the relevant time and title information, what were called the “non prime programs” including what the judgments refer to as “strip programs”, which were repetitive programs that occurred day after day and had in some cases at that time slot for years.
Then one passes over, please, to 510 and 511, which is the next document. This was what was referred to as the “master paper grid”. This was produced by Mr Forrest – I referred to that piece of evidence a little while ago at page 405 – where he wrote up yet another compilation, as we would have it, which included the same time and title information and also other information, some of it applicable to Channel Nine’s own internal purposes such as program identification numbers. Then the next step is exemplified at page 512, the next page. This is a screen shot, as it is described by Mr Healy at appeal book 434, paragraph 110, of part of the Nine database. So that when all this material was collected, it goes into a computer database, and this - the Court has it – 512 and 513, is an example of one piece of print-out for a particular day in relation to – at 512 one particular program for Little Red Tractor, episode title “Bang Bang” and so on, other information.
In the case of the document 513, that is showing not only the Sydney station’s details for certain programs on the morning of Saturday, 21 May 2006, your Honours see, running down this time and title information there, but it also has information referable to other regional stations – GTV, QTQ, NWS, STW and so on; those are part of the Nine Network. So this is something that one can obtain by pushing a particular button and asking for particular information from the database.
Now, what happens then – I have taken your Honours already to page 514 and following, what – Mr Forrest waves his magic wand over the database and what is produced is the document at 514 in its Excel form and that is the work in suit. The purpose of taking that little time to take your Honours through those various grids and so on is to show that the time and title information which appears finally at columns one and two of the weekly schedule is the same time and title information that we have seen in these earlier things. Some of those documents were produced six to nine months before the weekly schedule itself.
The next piece of evidence, if I could get the evidence out of the way in terms of particular references, I would seek to take your Honours to is what the respondent did. Your Honours know from reading the judgment the respondents – that is the appellants here – had a thing called the Ice Guide and, your Honours, the Ice Guide is found, for example, if your Honours could go to volume 7, at page 3161 which is a fold out page, it has to be unravelled. This was a document in evidence before the trial judge and what it does is to attempt to set up – as an example, your Honours see in the middle of the page there is Nine Network. That is an excerpt from what your Honours now recognise as the weekly schedule. In that case it is 11.30 “THE FOOTY SHOW LATE” and other information.
Then either side of it there are two groups of what are called screen shots, three in each case. Do your Honours have that one? On the left it says “MICROSOFT MEDIA CENTRE – ICE GUIDE” and there are three screen shots there, and on the right‑hand side of the page there is “TOPFIELD – ICE GUIDE” and there are three there. Just to explain the difference, there are various types of equipment that can be used to display the Ice Guide information and the way in which it is presented will vary according to the type of equipment which is employed.
The main series which the evidence discusses are the Microsoft Media Centre and the Topfield equipment. So the purpose of this is to illustrate the comparability, if you like, between one portion of the weekly schedule and the Ice Guide in operation. So in terms of The Footy Show one sees a first screen on the left under the heading “MICROSOFT MEDIA” which is a range of programs for all of the available stations for Friday, 29 September. Your Honours see the green highlighted “The Footy Show (AFL)”, that is the comparable entry; not The Footy Show Late, but The Footy Show (AFL).
Just so that your Honours understand, and this is common ground, what one sees on the third screen is almost all proprietary material to the appellants. The thing that is in common and on which the Full Court founds its decision, in this example, is the appearance of “11.30” and the comparable entry, “11.30PM”, on the second screen, the use of “The Footy Show (AFL)” as an equivalent, they would say, for “THE FOOTY SHOW LATE”. That is the common expression of information. It is not precisely the same, but that is as good as it gets, as it were, in terms of comparability of expression.
As your Honours can see, the layout of the Ice Guide exemplified in the Microsoft Media Centre example, we would say, is entirely different. I will not go through the detail, but on the Topfield‑Ice Guide, which is the other side of the page, one sees another display of similar information through the Topfield equipment. Once again, the three screens, just so I can make it clear – the lady in the picture is called Kerri-Anne Kennerley. She has nothing to do with The Footy Show. That is distracting.
CRENNAN J: If you did not call it The Footy Show, you might run into section 52 of the Trade Practices Act, might you not?
HAYNE J: There are two forms of Footy Show, even though New South Welshmen may not admit it, Mr Ireland.
MR IRELAND: I know, your Honour, and we are glad to see that the Adventurers from Melbourne did not do too well in the other form. That is called PiP, or Picture in Picture, and that is just what is going on at the time you happen to take the screenshot. So do not be distracted by Ms Kennerley. That is my recommendation.
GUMMOW J: So what was taken? What page are you on?
MR IRELAND: What was taken was the conjunction, they would say, of “11.30” – does your Honour see the “NINE NETWORK” in the middle of the page? “11.30” – that is the time.
HEYDON J: “11.30 PM, The Footy Show (AFL)” – that is the vital ‑ ‑ ‑
MR IRELAND: Yes, that is all. As it happens, in the Topfield example on the right, it is not even written in the 12‑hour clock. It is “23.30” there.
CRENNAN J: Well, Nine does not even refer to AFL, does it?
MR IRELAND: No. That is what I am saying. So that gives one at least an impression of the look of the two things. We say it is fundamental to a comparison for infringement purposes that one is entitled, as the judge did ‑ ‑ ‑
CRENNAN J: I suppose you did not get this far, but should we have some understanding of how the damages claim was put, in these circumstances?
MR IRELAND: That is still in store for us, if ‑ ‑ ‑
CRENNAN J: That is what I thought.
MR IRELAND: There is only an injunction on foot at the moment.
CRENNAN J: Yes.
MR IRELAND: It was one of those splitting of liability and any ‑ ‑ ‑
CRENNAN J: Yes.
HEYDON J: On your understanding, what is the economic purpose of this litigation? How would victory help Mr Bannon? I understand how defeat would not help you, but how would victory help Mr Bannon’s client?
MR IRELAND: Your Honour, I could speculate about that. What it means is that they can commercially licence their so‑called EPG – their program to whomsoever they want and they can form commercial alliances as to whom they wish to be able to provide a service of the type that my client provides because Channel Nine is an essential component of any commercially useful service.
HEYDON J: Things were different when the statement of claim or the application was filed, but if you lost this appeal you could carry on as before except that you would make mistakes on some slivers.
MR IRELAND: That is right. The overall submission we would make ‑ ‑ ‑
GUMMOW J: But will you be enjoined from describing in the program, “At 11.30 is The Footy Show”?
MR IRELAND: No.
GUMMOW J: If you described it as something else you might be in trade practices trouble, as Justice Crennan was putting to you.
MR IRELAND: In trouble, that is right. I think we would have to adhere to – I mean, there are some witty little aspects of this. You will see if you look at this that when we come to write our own synopses we are not always complimentary about Channel Nine’s programs, but that is just a bit of commercial banter, I think. That does not entail, I hope ‑ ‑ ‑
HAYNE J: The banter was on display in The Footy Show synopsis.
MR IRELAND: That is on display?
HAYNE J: Yes, The Footy Show synopsis is ‑ ‑ ‑
FRENCH CJ: It is not so much a synopsis as a sort of bagging.
MR IRELAND: Swipe. Yes.
CRENNAN J: But there is no copyright claim in relation to the synopses.
MR IRELAND: No. It is common ground that they have their – so, the synopsis, for what it is worth ‑ ‑ ‑
CRENNAN J: They are one of the differences in the ‑ ‑ ‑
MR IRELAND: That is right, in Nine’s work the synopsis, relevantly, which forms part of its copyright compilation is in that middle panel, “Join hosts Garry Lyon” et cetera.
CRENNAN J: Yes.
MR IRELAND: What Ice writes is its own work - its own, as it were, take on that show. The only thing that is taken is the conjunction of “11.30” and the title of the show in that example.
CRENNAN J: The words “The Footy Show”?
MR IRELAND: Yes.
CRENNAN J: Because, one has “THE FOOTY SHOW LATE” and one has “The Footy Show (AFL)”.
MR IRELAND: That is right. It is helpful, I think – if your Honours go in volume 10 to page 4595 to see that – and this flows from what your Honour Justice Crennan I think had in mind which is the form of order that was made, ultimately ‑ ‑ ‑
FRENCH CJ: It was after remitter back to the trial judge, yes.
MR IRELAND: After remitter, correct, your Honour. Your Honours see that the form of order, which reflects what I have been saying, at line 22 is in the definition of “Nine Program Time and Title Information”. It is the “Nine Program Time and Title Information” that cannot be reproduced under order 4 overleaf and it is:
the respectively associated dates, titles and intended starting times for the transmission of the applicant’s respective television programs –
That is the limit of the restraint, in conformity with the conclusion of the Full Court, contrary to that of the trial judge, that the time and title information constitutes a substantial part of the relevant work, nor should it be thought, if I have given this impression, that we took all the time and title information.
The trial judge – and I will come to this in more detail – is at pains to show that the manner in which the Ice Guide, my client’s product, is produced is at its heart a self-contained and independent exercise. Where the trouble starts, if I can use that expression, on the other side is that there was a checking process which was undertaken and some number of cases, after looking at published guides, some changes were made to the original, inoffensive prediction of IceTV and it is, as it were, the changes to make the Ice Guide more accurate that is said to be the infringing act. So it is not as if - if this impression is left it is false. It is not as if there was a taking of the first two columns in any sense, in any viable sense, but rather, what the trial judge referred to – Justice Heydon has mentioned the word already – slivers of information from the weekly schedule viewed as a whole.
Can I just give one example of that, your Honour – this is my final detailed reference to the evidence – this will be found in volume 4, if your Honours have that available. At page 1757 commences an affidavit from Mitchell John Rilett, who was the appellant’s witness. He was the person who carried out some initial work in 2004, watching Channel Nine’s programs over a period of weeks, referred to by him and taken up by the judge I think in the judgment as “the torture period”. Mr Rilett, from his armchair and with his notepad, eventually produced a current and generally accurate summary of what was going out over Channel Nine.
GUMMOW J: Is there any distinction between the first and second appellants, between the two Ice companies?
MR IRELAND: Your Honour, the second appellant is the parent of the first. The work was done - as it were, the business was conducted by the first appellant, IceTV Pty Ltd. There is an outstanding issue which is not yet determined upon a joint tortfeasor claim. That has been held in abeyance. So there is no actual final finding against the second appellant, Ice Holdings, at this stage.
GUMMOW J: The injunctive relief went against the first, did it?
MR IRELAND: Yes, and we gave – I think I can say this, it is common ground – because of the pendency of this appeal, we, the second appellant, gave a “without admissions” undertaking pending the determination - the resolution if it has to be resolved, assuming we fail here, of the position on the joint tortfeasor claim. That is still outstanding and it is still in the hands of Justice Bennett, should she need to embark upon it.
GUMMOW J: How does the first appellant turn all this to account? How does it make its money?
MR IRELAND: I do not know if your Honour knows – there is a thing called Foxtel, which is a cable service and you pay a fee per month for a subscription. In the same way IceTV has its own subscribers in large numbers and it provides these feeds of the program, associated with effectively a computer that will record, because the beauty of this system – and Foxtel is the same – is that one can at last become liberated from the timing of the television broadcaster and you can record programs and watch them at a different time.
HEYDON J: That is the main purpose of it then, is it - automatic recording for later playing?
MR IRELAND: Yes, and you have to have a convenient and flexible program and all you do with either of these – I think Foxtel is the same – you just push a button and it automatically says, “When that comes up record it” and you can say “Do that every week” or you can say “Do it every Thursday”, or “Do it at six o’clock every night, or every time you see this program, record it”. So it is quite a flexible system.
HEYDON J: If the slivers were wrong it might just record the wrong program or half the wrong program, or an undesired program?
MR IRELAND: Or it might not record one at all, I suppose. Yes, there are a number of technical possibilities, your Honour.
HEYDON J: I have another question about the evidence if you have finished your evidentiary points?
MR IRELAND: I just wanted to go to one thing, your Honour, but please?
HEYDON J: No, you finish ‑ ‑ ‑
MR IRELAND: I just wanted to show your Honours what the changes may typically involve. As part of Mr Rilett’s affidavit - I have just shown your Honours the first page – one can pass over to page 1764 where Mr Rilett has, in paragraph 26 at the top of that page – he is describing what he did when he made an adjustment by reference to what are called the “aggregated guides”. I just want to show your Honours as a matter of fact what happens.
I noted that the Ice Guide for Channel Nine Sydney for Saturday, 23 September 2006 indicated that “Nightline” started at 12.25 am and finished at 12.55 am. In contrast the EPG’s indicated that “Nightline” started at 12.15 –
What he is saying there is that he has predicted, in the first instance, that Nightline would start at 12.25. I think the reason for this can be understood in this way. There is often a late movie and there are different length movies. Nightline is a program apparently which typically follows the movie, therefore, if you do not know the movie and the movie’s length you might not be able to predict the expected start time of Nightline.
CRENNAN J: But the little problem in relation to predicting over.
MR IRELAND: Yes. Well, it is not entirely accurate, but we say it is ‑ ‑ ‑
CRENNAN J: Yes, predicting over may turn out not to be entirely accurate, for that reason that the movies vary and ‑ ‑ ‑
MR IRELAND: That is right. I am just giving your Honours an example of why that is so. So what he then explains in paragraph 26 is the process by which he changes his first draft, as it were, for the Ice Guide from showing a 12.25 start for Nightline to adjusting it to conform with three published guides which he has looked at, at this stage, to pull it back to 12.15.
GUMMOW J: One thing I did not understand about the evidence - do we have explained to us the significance of permitted commercial advertising timeslots? How many minutes in every hour can be devoted to advertising?
MR IRELAND: Your Honour, the commercial ‑ ‑ ‑
GUMMOW J: How many minutes in every hour can be devoted to advertising?
MR IRELAND: Yes. That is never announced, for very good reasons.
GUMMOW J: I know. Is it in here?
MR IRELAND: No, it is not.
GUMMOW J: Is it in this material?
MR IRELAND: It is never made public.
FRENCH CJ: It is Broadcasting Authority guidelines, is it not?
MR IRELAND: I am sorry, your Honour?
FRENCH CJ: Broadcasting Authority guidelines?
MR IRELAND: Of course. There are a maximum number of minutes per hour that – I do not know what it is, but ‑ ‑ ‑
GUMMOW J: But they are flexible to some degree, are they not?
MR IRELAND: I am sorry?
GUMMOW J: They are flexible to some degree?
MR IRELAND: Yes, I think that is right.
GUMMOW J: Depending upon the time of day?
MR IRELAND: Yes.
GUMMOW J: That could impact on when the late movie finishes.
MR IRELAND: It could do, your Honour, but that is not – I accept what your Honour has just said.
GUMMOW J: Deafening silence in all this material about what seems to be ‑ ‑ ‑
MR IRELAND: Well, you do not announce to your audience when the ads are going to be on because they will turn them off, that is the problem.
HEYDON J: But it is notorious that television commercial stations often have delays in the programs.
MR IRELAND: They overrun.
HEYDON J: They overrun. How does your business operation cope with that?
MR IRELAND: It cannot, I do not think, ultimately. For example, if they let ‑ ‑ ‑
HEYDON J: So if it says start at 12.15, this deponent having changed it to 12.15, if it overran it might get a bit of something that was not wanted and not get the end of the Nightline program.
MR IRELAND: That is right. What is happening here is Nine has publicised that Nightline will go out earlier – it will go to 12.15. He has hypothesised it will go out at 12.25 because perhaps a week or two earlier the movie sort of ended at that time. Neither 12.25 nor 12.15 might be, in fact, correct because the station does not always run precisely to its scheduling and you know one gets a little extra time in football matches and things and the news get delayed. We have all seen that sort of example. I am sure your Honour Justice Gummow has been annoyed by that circumstance.
GUMMOW J: No, no, I am just wondering what commercial imperatives are. This is a commercial television station with a commercial licence and it lives off advertising revenue to some degree surely.
MR IRELAND: To just add to my answer to Justice Heydon, the other commercial imperative, of course, is that the more, they would say, renegade systems there are like this, the more possible it becomes for their advertisers to be either skipped through because the machine will skip through an ad. Once it is recorded, if you are looking at a postponed television recording, the machine that we offer gives the opportunity to run through the ads quickly.
HAYNE J: Fast forward button
MR IRELAND: Fast forward button.
HEYDON J: But that is a decision by the actual viewer. It is not an automatic consequence.
MR IRELAND: No, no, it is not, but what it means is that Channel Nine is then getting viewers – its advertisers are paying for their ads to be seen, the advertising revenue supports the station and if it this leakage, as they would have it, happens, there are examples of advertisements not being effective because they are being eliminated or run through quickly.
HEYDON J: They are dealing with a huge problem by taking a funny little adventitious copyright point.
MR IRELAND: Correct. Absolutely correct.
HEYDON J: In the way the case has fallen out.
MR IRELAND: Yes, and that is putting it fairly, from their purposes, if they want to achieve the object that I have just described.
CRENNAN J: Is there anything in the licensing arrangements which requires a licensed provider of television to accurately tell the public about the times or the titles of programs and so forth?
MR IRELAND: I think it is an industry question rather than a ‑ ‑ ‑
CRENNAN J: An industry guideline?
MR IRELAND: Yes, because, you see, it manifests itself in this way. One of the features of this case is the so‑called aggregated guide. In my day one used to pick up the paper and see when the television programs – most of the world now apparently looks at these online guides. So you can look at the your computer and bring up an aggregated guide. But Channel Nine’s imperative is it must be there because if someone is looking at an aggregated guide they want their choice to be amongst the choices offered, and that is why the aggregator’s role is very important because the aggregators dictate to an extent the format in which the compilation has to be presented because it has to be able to be assimilated with the feed, if you like, from other ‑ ‑ ‑
CRENNAN J: From other channels.
MR IRELAND: ‑ ‑ ‑ channels like Channel Seven, Two and the like, so that the thing can work, in a technical sense, harmoniously.
CRENNAN J: In a common format.
MR IRELAND: In a common format.
HAYNE J: But for purposes more than bare information, for the purpose of enabling recording.
MR IRELAND: Correct.
HAYNE J: That is the kicker in it.
MR IRELAND: Yes, and also because it is compatible with these computer systems.
HAYNE J: For recording, yes.
MR IRELAND: For recording purposes. But also, apparently, your Honour, I think the evidence is there, people just use their computers as your Honour and I might use a newspaper to sort of look up information of this type and when someone wants to see what is on at – “I will be going home at 12 o’clock for an hour and what is on?” Channel Nine must, imperatively, from its commercial point of view, must be there as one of the options on offer. It is a dreadful world.
HEYDON J: Have we finished with Mr Rilett?
MR IRELAND: Almost. Two more pages, page 1962. I am just showing your Honours the shifting of the time and Nightline. Page 1962, that is his original prediction of Nightline to go out at – it says, “00:25” but that is 12.25. Does your Honour see that, at about line 13? This is part of the IceTV computer system which is used to create the Ice Guide. If one goes over to – it is just two more pages, your Honour - at 1976 we can see there the actual act of how it comes about that they revise the time and you can see there it says “Revise Show” so this is part of the manipulation of the computer. The start time on the left‑hand page is “12:25” and then there is a button down at the bottom that says “Update”, “Apply changes” and things and then we go over the page and if you push the button over the page at 1977 and it has now become “12:15”. Does your Honour see that?
CRENNAN J: Yes.
MR IRELAND: So that is how it is physically done. Then, finally, at 2097 we now see the equivalent of 1962 with the Nightline show has now been pulled back to 12:15. That is how it is done, as a matter of technicality. That is all I wanted to say on those facts.
HEYDON J: Could I ask you a question about the Full Court’s judgment on page 4642?
MR IRELAND: Yes, your Honour.
HEYDON J: In paragraph 102 their Honours say that:
one object of the process engaged in by Mr Healy and Ms Wieland was to produce the Weekly Schedules . . . In other words, Nine engaged in the so-called preliminary work, precisely in order to create the compilation in which it claims to have copyright.
In 103 the paragraph concludes that:
Mr Healy and Ms Wieland had in mind that a purpose of the exercise was the use of the result to create the Weekly Schedules.
MR IRELAND: Yes, “a purpose”.
HEYDON J: You accept that?
MR IRELAND: No.
HEYDON J: Did the judge make that finding?
MR IRELAND: No, she did not.
HEYDON J: Is there evidence to support that finding that the Full Court seems to embrace?
MR IRELAND: No. Her Honour made a different finding which I will come to in a minute which has been extrapolated by the Full Court there.
HEYDON J: If this is inconvenient we can return to it later?
MR IRELAND: I will be better organised then.
HEYDON J: Yes, but I ‑ ‑ ‑
MR IRELAND: I am conscious of that paragraph, your Honour, and what its implications are.
HEYDON J: That is an important aspect of their Honours’ reasoning, is it not?
MR IRELAND: Yes, it is.
I think I have referred in my response to Justice Crennan to the role of the aggregators and the aggregated guides. The Full Court dealt with this at paragraph 23 of its judgment where they said – and there is no quarrel with this – at page 4511 of volume 10:
About 17 days before any given broadcast week, the Master Paper Grid is distributed by fax to all stations within the Nine Network and to other stations that obtain Nine content. The Excel and/or text formats of the Weekly Schedule are also sent to Pagemasters. A few days later, the Nine Program Guide is distributed to various departments and people within Nine, together with hard copies of the First and Final Schedules. At that time Excel and text formats of the Weekly Schedule are emailed to HWW and eBroadcast.
Just to tell your Honours, Pagemasters, HWW and eBroadcast are all part of that group which is referred to as the aggregators. Pagemasters is a print version and HWW and eBroadcast are web‑based guides – internet‑based guides. It says in paragraph 24:
The Excel and text formats of the Weekly Schedule are the only version of the Nine Schedule sent to the Aggregators and, through the Aggregators, to the public.
I wanted to pause there and make submissions with respect to the consequences of that. First, it is common ground, and it is clear from that finding and all of the evidence, that my client never sees the work itself, never sees the weekly schedule. What it sees is the aggregated guide which, in a sense, contains some similar information, from Nine and also it sees three of those typically. The evidence is that when this changing or checking process was carried out in cases where it was applied, there was a rule of thumb that we would look at three published guides, there was some qualification to this, but generally speaking would adopt those changes.
GUMMOW J: I will just stop you there for a moment. The aggregators are some form of licensee, are they?
MR IRELAND: Of the copyright, yes. The agreements are in the evidence. I can take you to them if they are needed.
GUMMOW J: Do they pay a fee for that? Some form of their licence ‑ ‑ ‑
MR IRELAND: I think the money goes in the other direction. I think the stations pay the – I am not sure, your Honour. I will need to check it. Can I check that?
CRENNAN J: But they are authorised by the channels ‑ ‑ ‑
MR IRELAND: Of course they are.
CRENNAN J: ‑ ‑ ‑ to use the time and title of all the channels.
MR IRELAND: There is a contract, a licence, between HWW to take the prototype and Channel Nine which says clearly enough – we say begs the question – that Nine retains its copyright in the weekly schedule. But it also says that HWW has its copyright in the aggregated guide, as you might anticipate. To answer your Honour Justice Gummow’s question, for the purpose of incorporating the Nine weekly schedule into an aggregated guide there is a copyright licence on foot.
CRENNAN J: Do the aggregators take then the synopses that emanate from the channels themselves for the purposes of the aggregated guides?
MR IRELAND: Largely, yes, although there was some evidence that they tidy them up from time to time or alter them, but largely, yes, is the answer to your Honour’s question.
CRENNAN J: That text obviously will be part of the licensing or authorisation of the aggregators.
MR IRELAND: Yes, that is so.
CRENNAN J: Thank you.
MR IRELAND: The point I wanted to make is this and this is perhaps a fairly important issue in the case. There is disagreement between us as to whether this is a factual compilation. The expression “factual compilation” is used. Because there are plenty of cases in the books that say that someone can go and find out the information for themselves from other sources and put it all together and the shortcut you cannot take is to avoid the exercise.
That assumes that what is being compiled is a series of facts or information. Perhaps those words could, for these purposes, be used interchangeably. We say this is information and it is also facts, if it matters, for this reason, that what is contained at any moment in the Weekly schedule is Nine’s statement of its present intention as to what is going to go out at a particular time and the consequent details of what that program is about and what it entails. That is a fact, we would say, just as the state of…..is a fact. State of mind and state of intention are conventional facts. They are not unalterable, because we know – and I have not mentioned this yet, but there are things called late change notices.
Sometimes, for what were described as strategic commercial reasons, the weekly guide – in the description I have given your Honours, we are up to the point where the aggregators have now got the weekly guide – is lacking in some information. They hold back some details. The way that they convey those to the aggregators is by means of what are called late change notices. The late change notices are sent through after the aggregator guide itself has been compiled by the aggregator. They form no part of the copyright work, they are afterthoughts, but it illustrates the point that the weekly schedule really is the current publicly stated intention, if you like.
The other side make a lot of the fact that it is under licence, and that is what Justice Gummow was quickly appreciating, but we say that it is in the public domain. Once the aggregators have done their work and put the thing out on the Internet, these are public facts. By looking at the aggregated work, we are doing something analogous to the research which the textbook cases say is necessary.
There is another separate argument which we advance with respect to the effect of the aggregated guides, and that is that it destroys the causation. I think your Honours may have already glanced, perhaps, at that aspect of our argument, and I will come back to that. But as a separate point, we do emphasise that once these albeit licensed guides are put to the public for the commercial purposes of Channel Nine, to get the information out there, they represent a resource to which we are entitled to have access to do what is described as the check and change procedures.
Can I just give your Honours the reference to these late change notices? I am not going to go to it, but the primary judge in her judgment at paragraph 25, which is found at appeal book 10, page 4511, deals with the late changes. Also, the strategic withholding of information to which I have referred is dealt with by the primary judge at paragraph 14 of her judgment, which is appeal book 10, page 4508.
An example of a late change notice is found in the same volume, volume 10, annexed to her Honour’s judgment as annexure E at 4590. These are the things that are sent to the aggregators after the compilation of the aggregated guides and then they are just fed into the computer and an adjustment is made.
HEYDON J: It does not seem a very strategic decision, that one. Then, of course, it is not some great new story or particularly attractive program. Amazing Medical Stories go and Missing Persons Unit comes in.
MR IRELAND: Your Honour, there are a lot of others in the evidence. I can give your Honour references to them. The evidence given by the witness has made it clear, for example, that Channel Nine thought it was useful to hold back initially the big movies that it was going to show and it would then promote them on air and make them the subject of a late change notice. Why? I am not sure.
HEYDON J: There is an element of misleading and deceptive conduct in this. You misrepresent your intention knowing that, in fact, you are going to put on the big film, or can be. It is not true of ‑ ‑ ‑
MR IRELAND: Your Honour, we were gentle with them about that. At one stage we threatened to cross‑claim for misleading conduct because of the feigning of what was going on, but that was not pursued; I think rightly in the end. So I have then covered the late changes, I have covered the matter of the effect, as we would submit it, of the publication through the aggregated guides of this information and its availability on our argument as a perfectly permissible resource for what turns out to be some, on the trial judge’s findings, relatively minor modification of our predicted guides. If I could come then to some of the legal issues.
HEYDON J: If you were right about that, a witness who watched the television for three months and composed the templates would not have had to do that.
MR IRELAND: Probably.
HEYDON J: So it is a secondary argument really?
MR IRELAND: Well, it is just this, your Honour, that to the extent that the criticism is some moral criticism that we have taken something that was secret, the facts do not bear it out. One, because we never saw the weekly guide and, two, because Nine chose to publicise the information and, critically for the purposes of my argument, the information is not in the form of the copyright work and this is perhaps the hardest concept in the case.
The judge does not really deal with it in a crisp way. What is said is, notwithstanding the aggregation, nonetheless the work is somehow within the aggregated guides. Now, we contested that at trial, we contested it in the Full Court. We said that that is meaningless in the case of a compilation. The fact that you have got common information, that is, time and title information, present does not mean that in any realistic sense that the work is found within those guides.
CRENNAN J: That might have been an error in relation to what labour and skill you are talking about.
MR IRELAND: Yes. Because our primary position has been that it is the act of compiling that gains attention and not all this remote preparatory work.
CRENNAN J: Of course, now you are addressing the objective similarity argument, are you not?
MR IRELAND: That is right.
CRENNAN J: The causation point.
MR IRELAND: That is right. Section 14 of the Copyright Act, of course, is what this case is really about. Section 14 says:
Acts done in relation to substantial part of work or other subject‑matter deemed to be done in relation to the whole –
that is the heading. Section 14(1) provides:
unless the contrary intention appears:
(a)a reference to the doing of an act in relation to a work or other subject‑matter shall be read as including a reference to the doing of that act in relation to a substantial part of the work or other subject‑matter –
This is the doctrine of substantiality, the universality of which was upheld by this Court in the Ten Network Case where the task before your Honours was similar and the argument was put that alone among all copyright subject matters, television broadcasts were protected as effectively single images and, therefore, there was no room for a doctrine of substantiality under section 14. The Judges I think, by majority in that case, rejected that proposition. Now, the question then becomes in the case of a copyright compilation work, what is it about the work that controls this notion of substantiality?
HAYNE J: Before you come to that, is it sensible to ask the question, compilation of what?
MR IRELAND: Compilation?
HAYNE J: Of what?
MR IRELAND: Of what? My answer to your Honour is, yes. The word “compilation” is found, as your Honours recall, as part of the definition of “literary work”.
HAYNE J: Just so.
MR IRELAND: It says – and these words are important – “a table, or compilation, expressed in words, figures or symbols”.
HAYNE J: Yes.
MR IRELAND: So that it gives you a clue to expression ‑ ‑ ‑
HAYNE J: Yes, but compilation of what in this case? You have a timetable, you have a schedule, a proposed schedule, to which you attach various pieces of commentary, but it is a compilation of what?
MR IRELAND: All of those things, all of the elements. Let me try and defend why. I have shown your Honours the weekly schedule. The first column is time. In a sense that is a variable. The next column is title and then there is episode and then there are the attributed program characteristics and finally a synopsis. All of those columns to the right of time travel together. The conjunction of time and title, of course, is a valuable piece of information, but it is certain that all the columns have contributing effect to the compilation. It is there as a statement by the television company of all of the aspects of the program that it wishes to convey for whatever commercial or perhaps regulatory – I do not know whether, for example, the censorship thing has to be put, but the evidence was a little bit unclear on that. That is more of an industry regulation than a statutory requirement. But a bundle of pieces of information about particular programs are selected and compiled together, including synopsis, description of the program. We have seen that there can be competing views of synopses.
CRENNAN J: There is a real difference though in the type of material that is being compiled. A difference between time and title on the one hand, which is information or more fact as you would put it, and a synopses on the other which involves an author writing a text, as it were.
MR IRELAND: Correct.
CRENNAN J: So there is a difference in the bits of the compilation that I think Justice Hayne might have been taxing you about.
MR IRELAND: Yes, there is, but we would say that all of those elements are, in the end, part of the compilation.
CRENNAN J: Does it matter that what you take is in the information part of the compilation rather than what I will call the creative text of the synopses? Does that matter for the purposes of the substantiality doctrine?
MR IRELAND: No, we would say not. We would say that the substantiality analysis must entail giving full effect to the whole of the elements of the compilation. What they have done on the other side, and the Full Court accepted it, is effectively give enormous prominence to the time and title conjunction and, for all relevant purposes, ignore the rest. Perhaps it is appropriate at this point to illustrate the way in which the Full Court does this. Could I ask the Court, please, to go to the Full Court’s judgment at paragraph 102 on page 4642 of volume 10? At this part of the judgment, the Full Court is reaching its conclusions on the substantiality question. At 102:
The primary Judge in the present case made no finding that Nine did not intend to create a compilation based on its programming decisions. On the contrary, her Honour’s findings make it clear that one object of the process engaged in by Mr Healy and Ms Wieland was to produce the Weekly Schedules for distribution to the Aggregators licensed by Nine. In other words, Nine engaged in the so‑called preliminary work precisely in order to ‑ ‑ ‑
GUMMOW J: That is the problem:
Nine engaged in the so‑called preliminary work –
Nine is not an author.
MR IRELAND: No.
in order to create the compilation in which it claims to have copyright.
GUMMOW J: We are not talking about some commercial enterprise which generates a copyright. It is an obvious proposition, but it creeps in here, you see?
MR IRELAND: Yes, it does.
GUMMOW J: You just look at some aggregated activity and you say ‑ ‑ ‑
MR IRELAND: All the actors within the company – they are doing things like soldier ants all around the place and now a copyright work is yielded by the combined efforts and anxieties of them all. That is the proposition, but we say ‑ ‑ ‑
GUMMOW J: Yes.
FRENCH CJ: It all congeals together under section 35(6).
MR IRELAND: Yes. That is what is put against us. But in the case of compilation works, where information is being drawn perhaps from various sources and through various people’s employment, it does become quite important to identify what is the constitutive act that you give attention to. Even if one is entitled to say – and therefore the conventional analysis is: look for your author. Was he employed? Where is the author? Did he do the relevant work to constitute the copyright work, in the case of a compilation?
GUMMOW J: And was he or she a qualified person?
MR IRELAND: That is right. That is the conventional analysis, your Honour.
GUMMOW J: I do not know whether it is conventional; it seems to be required by the law.
MR IRELAND: Can I go over then to 4644, paragraph ‑ ‑ ‑
CRENNAN J: The next sentence is important, I think, in 102.
MR IRELAND: Yes.
CRENNAN J: It is said by the Full Court that:
It is not to the point that (as her Honour found) the skill and labour expended by Nine on making programming decisions were not primarily expended for the purpose of producing a compilation.
MR IRELAND: Your Honour, we say that it was precisely – it was to the point. Then they go on:
Contrary to her Honour’s implicit finding, Nine and Ice were competitors in the sense that each was seeking to derive profit -
What has happened here is that in assigning significance to this work, this so‑called skill and labour, of a more remote type the Full Court has accepted that her Honour’s finding was irrelevant as to the prime purpose for which the work was done. Can I just then pass over to page 4644 and try and explain the way in which the Full Court then promotes this theory. On page 4644 at paragraph 109 there come a series of epithets now. At paragraph 109:
The time and title information incorporated by Nine in its Weekly Schedules was a crucial element of the compilation . . . it was the time and title information that formed the centrepiece of the Weekly Schedules. Everything else in the compilation was subsidiary to that information.
Then over on the opposite page, paragraph 113 of the Full Court’s decision at line 41:
It is true that the Weekly Schedule recorded more than simply the time and title information. But that information was the foundation of the Weekly Schedules.
These epithets are then used to transmogrify the information into a protectable work. We would say that there is no reasoning there, simply the coining of phrases contrary to her Honour’s much more, with respect to the Full Court, attentive look at the significance of time and title information within the compilation as a whole. We would say to that degree we are justified in submitting that the Full Court’s reasoning on the substantiality issue really is less sophisticated than the trial judge’s. These words that I have just referred to – “foundation”, “centrepiece” “crucial element” ‑ ‑ ‑
HEYDON J: Just going up one paragraph from 113 to 112, there is a sentence I did not understand when I read it – speaking of the templates:
But those templates, derived from the source schedules accessed by Ice, lacked the crucial time and title information that would make the templates useful.
Are those the templates that were devised by the witness who watched Channel Nine for three months? What are the templates that lack the time and title information? I thought those templates had it.
MR IRELAND: I do not think there are any, your Honour.
HEYDON J: Then what does that sentence beginning “But” mean?
CRENNAN J: It is a reference to what Mr Rilett was doing, I thought.
MR IRELAND: I had read it slightly differently, because Mr Rilett’s templates had time and title. There cannot be any argument to the contrary. What I think the Full Court is referring to here is the difference between what is predicted over, because the previous sentence says:
The so‑called ‘predicting it over’ process adopted by Ice enabled it to construct the starting templates.
CRENNAN J: Perhaps “crucial” in that sentence means “exact” ‑ ‑ ‑
MR IRELAND: It does, yes.
CRENNAN J: ‑ ‑ ‑ as in for that particular week.
MR IRELAND: So I think Justice Heydon has got ‑ ‑ ‑
HEYDON J: But you know that on the last Saturday of September in every year there will be a big football game in Melbourne and probably on the first Sunday in October every year there will be a big one in Sydney. You know that will be on television. Those would be the sort of starting template‑type material, would they not, that Mr Rilett composed?
MR IRELAND: Well, it is a bit more than that because Mr Rilett was highly qualified and experienced in the industry. He knew, particularly after his armchair exercise, by August 2004 he knew very closely – and it is not what was likely to be forthcoming and that is reinforced in this way, that there was evidence to show that for Channel Nine, which was the relevant program, during the weekdays that their pattern of broadcasts was almost repetitive. I think there were some examples, including one that on one particular day the television audiences were happy to watch the 4,000th version of something that rejoiced in the name Home and Away or Days Of Our Lives or something. So that these things in some measure were entrenched and it did not just extend to the rugby league match.
HEYDON J: No, quite, but I can understand the proposition that those templates lacked occasional pieces of time and title information because of changes.
MR IRELAND: But, in my respectful submission, it is not the templates which were the product of the armchair work that are being referred to here, because predicting it over was the first step, what one thought would be a comparable day as a starting point.
FRENCH CJ: Predicting it over‑operated upon the templates he created, did it not?
MR IRELAND: Correct, yes.
FRENCH CJ: That is what the trial judge effectively describes at 4542 and following.
MR IRELAND: Correct, your Honour.
KIEFEL J: The Full Court is dealing with the templates as if they are more or less in draft before they are settled.
MR IRELAND: Yes.
KIEFEL J: As you would a pleading.
MR IRELAND: Yes, thank you, your Honour. So I think the reference there is to, as it were, improving upon the first draft and, of course, that is what the respondents rely on. They say full accuracy, or the greatest possible accuracy, was important and therefore if you tidied up three or four or five that is as important as if you tided up 50 because what you want is the most accurate guide you can get. We say that that is a mistake, that one has to look at, in copyright terms, compilation copyright terms, one has to look at all of the elements of the compilation, which is why I made the submission in answer to Justice Hayne’s question, and work out just what was taken. We submit, in a way I will seek now to develop, that the trial judge in quite a sophisticated way took all of this into account.
CRENNAN J: To be fair to the Full Court, it looks as though what they are addressing in these passages is that debate about substantiality turns on quality not quantity.
MR IRELAND: Yes.
CRENNAN J: So that perhaps explains what they are saying in these paragraphs.
MR IRELAND: Yes, but the quality they are looking at is some sort of business imperative. It is not quality in a copyright sense. That is our response to that.
CRENNAN J: You are back to your information argument.
MR IRELAND: Yes.
CRENNAN J: Or fact argument.
MR IRELAND: In paragraph 113 of the Full Court’s judgment on page 4645 and carrying over to paragraph 115 on the following page, is the whole of the Full Court’s analysis on the issue of substantiality.
What they seize on are two - statistics is what they really are. They say at line 36:
In the examples cited by her Honour, Ice made 17 changes to 31 timeslots in the final IceGuide for Saturday, 23 September 2006 and approximately 12 or 13 changes to 29 timeslots for Monday, 2 October 2005.
I think that should be 2006, actually.
GUMMOW J: Where are you reading from Mr Ireland?
MR IRELAND: I am sorry, paragraph 113, on page 4645.
GUMMOW J: Thank you.
MR IRELAND: So that these were the two examples the judge gave. Your Honours, the trial judge’s consideration of these matters was much, we would say, more thoroughgoing. At paragraph 150 of the trial judge’s decision at page 4549, her Honour at the foot of 4549 at about line 49 says:
By way of example, Mr Rilett used the IceGuide for TCN‑9 Sydney for Saturday, 16 September 2006 as the source schedule to create an IceGuide for TCN‑9 Sydney for Saturday, 23 September 2006. “Predicting over” the source schedule using Ice’s software caused the starting template for 23 September 2006 to contain the same program listings information as the source schedule, save for date and episode information.
Then her Honour goes on to deal individually with each of the changes and, for example, the first one that her Honour deals with is the one I have already illustrated to your Honours, that is the pulling back of “Nightline from 12:25 am to 12:15 am”. Do your Honours remember that? I showed you the underlying evidence to that. The next one:
·deleted the movie Lansky, which was scheduled to appear at 12:55 am in the IceGuide but was not in the published guides;
·added the movie The Inspectors at 12:45 am to the IceGuide, based on the information in the published guides;
·changed the start time…
·added the program –
and so on. Her Honour goes individually through each of these items. Then it concludes at paragraph 151 over the page at 4552:
This represented a change to program title, time or episode on the basis of information observed in the Aggregated Guides for 17 of the 31 timeslots –
That is the passage in her Honour’s judgment upon which the Full Court is drawing at paragraph 113 that I have already referred to.
HEYDON J: We are looking at substantiality and quality is important. Many of these changes were of programs being shown to no one but sleeping dogs. I mean, they have very few people watching in the middle of the night.
MR IRELAND: Yes.
HEYDON J: Does that matter?
MR IRELAND: That might matter, your Honour. The point about it is, though, that some of these changes were ignored. For example, if one goes back to page 4550 in the middle of paragraph 150 of her Honour’s judgment the dots points are there. At line 38, Mr Rilett:
ignored the published guides’ indication that The Batman would be broadcast at 8:05 am, 8:40 am and 9:20 am and instead left the IceGuide starting template’s indication that Classic Looney Tunes would be broadcast –
This is an illustration of - it was not a wholesale adoption mechanically of what was found in the aggregated guides. There was an element of judgment applied. Also, if I can go across the page to 4551, still within paragraph 150:
left the episode title blank for Garden Gurus, based on the fact that the OurGuide indicated there was no episode for the program –
Now, that is not a copying. So what her Honour has done in a detailed way is to go through the typical sorts of changes and attribute to them, we would say, a much more subtle significance than the Full Court has done. The Full Court has simply said, well, here is an example her Honour took with 17 out of 31 adjustments. Also things like episode titles. Sometimes one has episode titles associated with a program title. I can give your Honours an example, but there would be, for example, cases where the program has a name which is always used and particular episodes have individual names and then there is some synopsis or patter which describes the individuality of that episode.
For the Ice Guide to add an episode title, and there are many cases where that happened – if your Honour looks at 4551, running down the first, second, fifth, sixth, seventh, eighth and ninth are all adding episode titles or changing episode titles. Her Honour took this into account in a subtle way, but there is a significance to be attributed to adding an episode title to an existing and correct statement of the program’s time and title; it is a different quality of change to changing a program altogether. But the Full Court reflects none of that attention to detail in its, we would say, quite bald conclusions, based upon the raw numbers. So it is, your Honour, we say that the Full Court has miscarried its function in reversing the trial judge.
Your Honour, not on our list, if I could have permission to supply it, but it is referred to in our written submissions is the House of Lords decision in Designers Guild. It is referred to by the Full Court and I want to make a point about that. So, could I hand up copies of Designers Guild Ltd v Russell Williams (Textiles) [2001] 1 All ER 700. If I could have permission to hand that up, your Honour?
GUMMOW J: What do we get out of this case?
MR IRELAND: Your Honour, this is a case in which Lord Bingham and also Lord Hoffman say that the findings of a trial judge on an issue of substantiality ought to be respected. The facts do not really matter, your Honour, I can just confine myself to the statements of principle. Lord Bingham of Cornhill says at 702 at letter d:
The Court of Appeal upheld this challenge. But in doing so, as it seems to me, it fell into error. First, by analysing individual features of the two designs and highlighting certain dissimilarities the court failed to give effect to the judge’s conclusions, not challenged before it, that the similarities between the two designs were so marked as to warrant a finding that the one had been copied from the other. While the finding of copying did not in theory conclude the issue of substantiality, on the facts here it was almost bound to do so. Secondly, the Court of Appeal approached the issue of substantiality more in the manner of a first instance court making original findings of fact than as an appellate court reviewing findings already made and in very important respects not challenged. It was not for the Court of Appeal to embark upon the issue of substantiality afresh, unless the judge had misdirected himself, which in my opinion he had not.
GUMMOW J: I am not sure about that. It is a question of law. You are construing the statute, section 14 of the Copyright Act.
MR IRELAND: I accept that that is one approach, your Honour, but the Full Court actually refer to Lord Bingham in paragraph 107. I just wanted to point something out about that, because not unexpectedly the submission was made that they should leave well enough alone, and on the question of – that it was a matter in which the judge had an advantage.
GUMMOW J: What is the advantage?
MR IRELAND: Well, your Honour, the advantage is that the trial judge has sat and listened ‑ ‑ ‑
GUMMOW J: What advantage did Mr Justice Lawrence Collins have in the Designers Guild Case?
MR IRELAND: Well, I can elaborate that, your Honour, by reference to Lord Hoffmann’s speech, which the Full Court did not refer to. There is a heading, if I may, your Honour, in the speech of Lord Hoffmann.
GUMMOW J: A visual comparison.
MR IRELAND: I was thinking rather of “THE APPELLATE FUNCTION”, 707. Does your Honour see that?
GUMMOW J: That depends on what the relevant statute is that governs the Court of Appeal’s appeals. It is a statutory appeal.
MR IRELAND: Yes.
GUMMOW J: What is common law notion? I do not know whether they have section 75A of the Supreme Court Act (NSW) or what they have.
MR IRELAND: I think what ‑ ‑ ‑
GUMMOW J: It is pretty dangerous to approach these - it seems to me, at this level of generality, but anyhow.
HEYDON J: Is there not a difference between comparing designs and looking at schedules of changes, the changes in particular lines?
MR IRELAND: I think there is, your Honour.
HEYDON J: So that whether Designers Guild is right or wrong, it does not really bear on the present.
MR IRELAND: We would say it is an a fortiori case. What Lord Hoffmann says - and if I can just complete the reference to that - at 707D:
Secondly, because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse a judge’s decision unless he has erred in principle. I agree with Buxton LJ in Norowzian v Arks Ltd (No 2)[1999] IP & T 223 at 230-231 when he said:
‘ . . . [W]here it is not suggest that the judge has made any error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court ‑ ‑ ‑
GUMMOW J: There is a policy, a silent policy, here of stamping out too many appeals.
MR IRELAND: Well, your Honours have done a bit of that in Fox v Percy.
CRENNAN J: What if there is no error of principle but the judge’s decision on substantiality is patently unsustainable?
MR IRELAND: If the judge’s decision is unsustainable, then the Full Court would have jurisdiction to review it, but would have to give better and more convincing reasons than the Full Court did in this case, in my respectful submission, because the judge has looked at the subtleties of what was taken, paid attention to the individual significances of what was taken, whereas the Full Court at best has attributed some kind of statistical value to it, and that is paragraph 113.
FRENCH CJ: It might depend in a particular case on whether the trial judge’s evaluation – because it is an evaluative judgment in the end – is based upon a forest of detail and nuance that the appeal court is not exposed to at the same level that the trial judge has been.
MR IRELAND: That is certainly this case.
FRENCH CJ: That is not so much a question of principle; it is really a question of practicality, is it not?
MR IRELAND: And degree perhaps.
FRENCH CJ: Yes.
MR IRELAND: We would say that if the approach – I will not say the principle enunciated by Lord Hoffman in Designer’s Guild – has application to accrediting significant weight to the trial judge’s evaluation in any case, then it has that application in a case such as the present because there were what I have called nuances in connection with the changes that were made that her Honour much better understood.
GUMMOW J: I am thinking of Burge v Swarbrick. If you are right, we probably should not have intervened in Burge v Swarbrick.
MR IRELAND: I was not going to mention that case for exactly that reason, your Honour.
GUMMOW J: Exactly. I do not know what Lord Hoffman would have made of that case.
MR IRELAND: Mr Garnsey was in that case and he is very persuasive.
GUMMOW J: Yes, that is right.
HEYDON J: This is a fairly desperate argument, is it not? You just say Justice Bennett’s reasoning was sound, period, and the Full Court’s was defective.
MR IRELAND: I do.
HEYDON J: The argument you have been advancing might be used in relation to rather weak reasoning by a trial judge to say, “Maybe you might not like it much and the Full Court didn’t like it much, but you shouldn’t have interfered”.
MR IRELAND: Yes, you are stuck with it.
HEYDON J: Well, you do not say that.
MR IRELAND: No, I do not. This is a belt and braces argument. As far as I am concerned, your Honour ‑ ‑ ‑
GUMMOW J: We think you should drop the belt and the braces and get on with it.
MR IRELAND: Drop the braces or drop the belt?
GUMMOW J: Yes, get on with it.
MR IRELAND: Then I will. I do not think we need to say any more about that. I have lost my place, your Honour. I wanted to then come, if I may, to Ladbroke.
HAYNE J: With a view to demonstrating what?
MR IRELAND: With a view to demonstrating, as we would perhaps encapsulate in our submissions in reply, that the difference of view among the courts in that case, placing the trial judge and Lord Diplock in one camp and the members of the House of Lords in the other, as to the relevance of antecedent work was a difference in point of fact. All of their Lordships, I am seeking to submit, in Ladbroke accepted, on proper analysis, that there will be cases where there is what modern language would call a disconnect between certain elements of work done earlier, in a sense, towards the compilation and the relevant matters that may be given significance and attention in assessing substantiality.
Ladbroke is a case where the issue of substantiality was not determined by the trial judge. Justice Upjohn, as his Lordship then was, I think, although he is accredited with the promotion by the House of Lords, did not get to substantiality. His Honour held that the unoriginality of the – it is Mr Justice Lloyd Jacobs, I am sorry – that his Lordship did not get to the question of infringement because there the coupon failed on an assessment of the subsistence of copyright where the originality issue, of course, was similar or comparable.
Perhaps I need say no more than this at this stage because I can refer your Honours to our reply submissions as a shorthand way of making this, paragraphs 12 to 14. We submit, your Honours, the difference between the House of Lords and Lord Diplock was not a difference of principle. The House of Lords treated the preparation of the William Hill betting coupon as a single act. For example, at page 278 of the report Lord Reid says:
Their business was to devise a coupon which would appeal to the betting public, and its form and arrangement were not something dictated by previous decisions about the nature of the bets to be offered.
In other words, the relevant act of creation of the coupon entailed the devising of the bets. It was all part of one process because, as the House of Lords points out, the coupon once it was finished was the very ware, the very stock in trade, of the bookmaker. The whole of their effort in devising the bets was in order to have a coupon to send out to use in trade.
The betting coupons are reproduced in the Court of Appeal, that is, in the 1980 Reports of Patent Cases volume. Both sides with increasing fervour seem to have, it looks like, actually blown up the coupons themselves because they are reproduced in the Reports of Patent Cases, but they are not easy to see. Could we just hand up for your Honours’ use some blown up copies of the coupons so that I can just make one point, because it is rather difficult to see in the report.
The interesting thing about Ladbroke is that the list of fixtures – do your Honours have those papers I have just handed up, if I might go to them? The interesting thing is the list of fixtures was something, of course, which was devised by the football league and the list of fixtures is the games which are listed down about four‑fifths on the left‑hand side. It was common ground that that was not copyright to William Hill. That was akin to another copyright work being integrated into this compilation.
The things that in the end resulted in the success of the action were the headings. Do your Honours see “NOTHING BARRED” and then some odds, “8‑1”, “12‑1”, “THREE DRAWS”, “50‑1” – this is on the plaintiffs’ coupon - “THREE RESULTS 200:1”, “FOUR AWAYS THREE DRAWS”. It was the headings that have been copied to the extent seen on the – if your Honours look at the defendants’ coupon which is the third page in the bundle I have just handed up. So, “NOTHING BARRED” becomes “ABSOLUTELY NOTHING BARRED!” The results 8-1, 12-1, 50-1 and 200-1 have been adopted, although strangely enough everyone accepts at every level that the calculation of those odds was individual.
In the plaintiffs’ coupon there is “FOUR AWAYS THREE DRAWS” and that becomes “AWAYS LIST THREE DRAWS” if your Honours see in the defendants’ coupon. There the odds change a little - “70‑1” in one example becomes “66‑1”. That was the nature of the compilation in that case but the importance of the case for our present purposes is to say that nobody suggests that what might be called antecedent, preparatory or background work must always be taken into account and so it becomes a question of fact in each case and the facts in this case which were determinate in the Full Court were the conclusions that Justice Crennan pointed out to me in paragraph 109 of the Full Court’s judgment:
The time and title information incorporated by Nine in its Weekly Schedules was a crucial element of the compilation –
Also I refer to paragraph 102 where the Full Court says:
The primary Judge in the present case made no finding that Nine did not intend to create a compilation based on its programming decisions. On the contrary, her Honour’s findings make it clear that one object of the process engaged in by Mr Healy and Ms Wieland was to produce the Weekly Schedules –
We say that is not enough. We say that once one had made the finding that - I am sorry. The first sentence expresses an absence of a finding, in other words, there was no positive finding against the respondents in this Court that they “did not intend to create a compilation”. The second sentence, “On the contrary, her Honour’s findings make it clear that one object” is not something her Honour said, but it is a conclusion drawn by the Full Court and we would say there is an undistributed middle there in those two sentences.
HEYDON J: What findings did they have in mind, do you know? Could you ‑ ‑ ‑
MR IRELAND: I could speculate.
HEYDON J: What is the matter which is undistributed?
MR IRELAND: The matter which is undistributed is that – her Honour makes no finding one way or another. Her Honour does not find that there was an intention to create a compilation nor does her Honour find that there was no intention to create a compilation. It is at the time of the programming decisions that we are talking about. That is the relevance of all this because it is by this mechanism that the Full Court gets the programming decisions into the relevant skill and labour in this paragraph. We would say that that really is a logical error for the Full Court to move from the first sentence to the second.
Perhaps the Full Court has in what the primary judge said at 208 of her Honour’s reasons which is found at page 4571 of the appeal book. After reference to Desktop, her Honour says, at line 19 :
Nine is, like Telstra in Desktop, in the position of possessing the material for inclusion in the compilation because of the effort of collating the time, title, additional program information and the synopses to be compiled. That information is collated, however, not solely for the purpose of creating a literary work ‑
I think that is the finding their Honours were referring to –
the Weekly Schedule. The main purpose of the work done by Mr Healy and Ms Wieland and the others at Nine is to determine the Nine Programming ‑
This gets a bit difficult because “Nine Programming” is a defined term, we would say sometimes crating difficulties in defining terms like that. Her Honour defines that, just so your Honours have the definition, right at the beginning of the judgment in paragraph 1. Nine Programming, for her Honour’s purposes, at page 4505 of the appeal book means:
the order in which television programs are broadcast by stations within the “Nine Network” .
So when her Honour uses the defined term “Nine Programming” in paragraph 208 of her judgment, that is what she seems to be referring to.
HEYDON J: And she repeats the definition.
MR IRELAND: And she repeats it, “the order of programs to be broadcast”. I will return now to paragraph 208 at line 27, if I may:
Having said that, it is also the case that the creation of the Weekly Schedule involves sufficient skill and labour so as to be an original literary work in which copyright subsists and that is not disputed by Ice. Nine’s skill and labour in determining the Nine Programming resulted in the broadcast of those programs ‑ ‑ ‑
GUMMOW J: Nine does not have skill and labour, terribly sorry.
MR IRELAND: No –
and the information for inclusion in the Weekly Schedule. Ice does not engage in broadcasting.
and so on. I think, to answer your Honour Justice Heydon’s question, that those are the findings upon which the Full Court is placing an interpretation and a consequence in paragraph 102 of its decision.
HEYDON J: The really tricky thing would be, for all I know, the decades of experience of Mr Healy and Ms Wieland in trying to work out what programs to show when. Those are decisions they make of a difficult kind. Once the decisions are made, the rest is mechanical. As you conceded, it is enough for an original literary work, but it is an entirely different enterprise.
MR IRELAND: Yes. We would also say this, your Honours. What has to be given attention finally in the assessment of originality which feeds into the evaluation of substantiality is what it is in relation to the copyright compilation that has given rise to it being in that form and in this case what it is that has given rise to the copyright compilation, that is, the weekly schedule, being in the particular form it takes is the requirements of the aggregators, because it has to be compatible and there are certain contractual requirements which I can go to if necessary, things that have to be included.
CRENNAN J: I suppose the Full Court in 102 is applying Desktop, inasmuch as Desktop stands for two related propositions that when you are considering a compilation the labour and skills involved in collecting the information is just as much to be taken into account as the labour and skill in producing the actual compilation, and then the related finding that follows from that, that if you take that approach to the copyright and you do take into account the labour and skill in collecting and recording and so on, the information, then you do not worry so much when you are assessing the reproduction as to whether it is visually similar or matters of that sort. So in a sense I think if you wanted to deal with this by reference to the points in the headnote in Desktop – they are points five and nine – but in a way the Full Court here is applying that approach in Desktop, I think, so I am interested to know what you say about that reasoning in Desktop – by the Full Court, I mean.
MR IRELAND: The Full Court ultimately said in our case, the present case before you, that there had been an awful lot of talk about Desktop but it was beside the point because this was a different kind of compilation, and it was a different kind of compilation because this was a case in which the form of the work and its intricacies were matters of significance. It was not a banal alphabetical listing of things that took a long time to chase out.
CRENNAN J: But one difference between the Full Court and Justice Bennett seems to arise out of how you assess Mr Healy’s tasks, for example, as some sort of author in relation to the compilation.
MR IRELAND: Yes, that is so; there is a difference.
CRENNAN J: That has a bearing on how you assess substantiality, I think.
MR IRELAND: I think it does as well, your Honour.
CRENNAN J: It goes back to Justice Hayne’s point, I think, that parts of the material in the compilation are information or fact, whereas the synopses are obviously different.
MR IRELAND: Yes.
CRENNAN J: But, of course, as you say, correctly, one assesses the whole compilation when assessing substantiality.
MR IRELAND: There is perhaps a difficult question of how one formulates a balance between the disparate elements of a compilation in applying the test of substantiality arising under section 14 of the Act.
HAYNE J: There are no doubt many traps if one starts to break up the compilation, recognising that there are such traps. This compilation, which we observe at page 514 of the appeal book, could be described as a compilation of the proposed schedule or timetable of programs, associated classification information and synopses, but much of the debate that we observe in the reasoning of the Full Court seems to treat the association of time and program as if that itself or the recording of the association between time and program was itself a compilation or the act of compilation by some identified author or, more accurately, an act of compilation by someone who is not identified but seems to be slid back into the programming executives who are taking the decision that Days of Our Lives episode 3,000, et cetera, will in fact yet again be shown at whatever hour of the day it is during the weekdays. Now, hence the question, compilation of what? What is the work, who is the author, or who are the authors, et cetera? That must, I suspect, be the platform on which the whole argument ultimately has to be built.
MR IRELAND: Yes, your Honour. We have said in a variety of ways in our written submissions, and I think I have said it again this morning, that the emphasis of the Full Court is to – and, indeed, the respondent’s arguments prevailed in this respect – concentrate almost entirely upon what is called – I have quoted the words, the centrepiece, the crucial element, all of this, which is the association of time and title.
HAYNE J: Yes, but strip out the epithets as you urge us to do, is it your submission that what the Full Court appears to be saying is that what I described as the association between time and program, is part of, is a step in, is an aspect of, the compilation that is for consideration in identifying the work?
MR IRELAND: We have said two things about that. First of all, the association of time and program, to use your Honour’s phrase, is something that well pre‑dates this compilation. That is perfectly plain.
CRENNAN J: And it required labour and skill?
MR IRELAND: Yes. There was also the final act, the real act of compilation of this weekly schedule which appears to be the work done by Mr Forrest, on the evidence as we have it, in pushing particular buttons on the computer to bring into being the document that your Honour Justice Hayne referred me to at page 514 and following. It is a spreadsheet. One has in various compartments in the soup of data in a computer certain pieces of information. You then devise the spreadsheet so that you put in what you select and you leave out what you do not select. That is what compilation means in almost a mechanical sense there. But what one does have to do, finally and uniquely for the purposes of this compilation, is to designate just what these things will be that appear together and having in mind, as I have said ‑ ‑ ‑
HAYNE J: You are creating an ordinary form relational database.
MR IRELAND: Yes.
HAYNE J: That is all you are doing.
MR IRELAND: And that is why we say that when you start talking about the decision to spend yet more money on the golf this year and all of these things that have been talked about of such high business importance, you are just in the wrong area of discourse. I should have referred specifically – I was going to and I may not have, your Honours – to paragraph 105 of Mr Healy’s affidavit which is found at volume 1 of the appeal books at page 433. I may have referred to this, I meant to. That is where:
Mr Forrest transposes the program entries in the Electronic Programming Grid and my –
that is Healy’s –
entries on the Paper Programming Grid into a master paper grid (the Master Paper Grid). The Master Paper Grid is not the same . . . Mr Forrest writes the entries for each program into the Master Paper Grid by hand –
That is where one sees a true creation by Mr Forrest, an identified author, in that example of the Master Paper Grid, which associates time and title information – time and program information, to use your Honour Justice Hayne’s phrase – for the first time. All that is happening in the work in suit is that that has been carried over, that association is established and it has been carried forward into the weekly schedule. We would say that one pays attention to that in valuing that association as an element of the compilation, that it is an act of association which has already been done and it is simply carried forward here, just as ‑ ‑ ‑
CRENNAN J: Desktop would in a way seem to sanction – taking into account that labour and skill.
MR IRELAND: It does, and that is because in Desktop there is no second stage to concentrate on. It is a banal, inevitable, listing alphabetically of the data. But as the Full Court tells us, and we accept this, that is not this case. It may be that the Full Court, the members of whom were the same, as your Honour realises, as in this case, have applied a similar approach to the problem at hand in these proceedings as to the different problem in hand in Desktop itself.
Your Honour, we obviously rely on the written submissions. I especially wanted to emphasise the primary argument that we make, and that is that a construction of the Copyright Act in connection with meaning to be given to compilation and the relationship between section 14 and a compilation work is in conformity, we would say, with Australia’s obligations under the Berne Convention and TRIPS. This is a matter we have developed in some detail in our written submissions.
We say, in particular, that Article 10(2) of TRIPS is perfectly clear in saying that one does not get a compilation right in connection with pure data. It is the organisation of data in that way that attracts the copyright. What we are putting forward as to our primary argument here, and that is that one gives attention only to the compilation aspects of relevant work, sits perfectly well with the international obligations and there is no reason to suggest, and none has been offered on the other side, at least in their written arguments at this stage, why these recent amendments to the Copyright Act, including the 1994 amendments, which effectuated TRIPS for this country, would have been made in defiance of those distinctions and those obligations.
GUMMOW J: Are you going to say anything about causation?
MR IRELAND: Yes, that is my final topic, your Honour. As to causation – I have already touched on the status of the aggregated guides. We say that the judge’s finding at trial was correct; that the aggregators effectively – she uses the word “decompile the work”. They decompile the work. It is true that she found, in a sense, that Nine’s weekly schedule was to be located or found within the aggregated guides, but we would suggest, your Honour, that once you reach the conclusion that the aggregated guides – which are so much more, of course, even in relation to the Nine element of those guides because the aggregate has increased the fields of information up to 31 from a basic 17, so there is an enormous amount of work done in adding to the information which must be recognised, we would say, even if you disregard the other channels, as a much more sophisticated compilation of information – that once all that happens, there is a nonsense involved in saying that the aggregated guide can constitute or represent an intermediate copy of the work.
The response that has come often in these cases is well if you have, for example, a house plan which is the work in suit and somebody copies the house itself then nobody doubts that that is an indirect copying. Equally, if you have a plan for a machine tool or part – if you copy it, reverse engineer the tool itself nobody doubts that that counts as an intermediate copy and there are cases that support those propositions, both here and in other jurisdictions.
We say the difference is this, that in both of those cases – one the house and the other the part or component – the object absolutely yields the copyright work. But here it cannot be said that the aggregated guide yields the copyright work. If one had access to the aggregated kind one would not know which elements of the copyright work in the weekly schedule were present and which were not. So, there is no basis upon which one can say that assuming everything else against us that taking from the aggregated
guide entails taking from a copy of the work – an intermediate copy of the work – and hence, any taking was not taking from the work in suit and hence the basic element of reproduction, and hence infringement, has not been demonstrated.
CRENNAN J: Cannot infer actual copying?
MR IRELAND: That is right.
CRENNAN J: Are you going to say anything about Feist?
MR IRELAND: No, I will leave that to brighter minds. If your Honours please.
MR WEBB: Your Honours, the submissions that the ADA wishes to put to the Court as amicus are tolerably completely set out in our written submissions which the Court has, and I do not propose to take more than a moment to commend those submissions to you and to say something very shortly flowing from what has been said against those submissions by the respondent in its written reply and, in particular, to confine what I want to say principally to the question of originality and the way that notion ought be approached, having regard to the decisions of the US Supreme Court in Feist and Canadian Supreme Court in CCH Canadian.
Could I say this firstly. It is said by everybody at the Bar table that author and originality or the requirement that a work be original as provided for in the 1968 Act, are correlative and we agree with that. Of course, we find that that is a taking off point for a consideration of the comparative law provisions.
It is the requirement for authorship that carries with it the requirement for a work to be an original work and when one goes from that proposition to the US and Canadian decisions, one sees that it is thereto that requirement that the work be the product of authorship – authorial expression, as we put it in our written submission – that carries with it the requirement for a close focus on precisely what is done by the author as author in making the work in question.
GUMMOW J: I am not sure whether it was referred to in your written submissions. There is a paper by Professor Jane Ginsburg on this point called “The Concept of Authorship” in 2003 52 DePaul Law Review 1063 which is easily accessible on Heinonline, I think, where she deals with the difference between what she says is the United Kingdom and Australia and the United States and Canada and they are questions sweat of brow and the attempted corporatisation of copyright creation, if I can put it that way.
MR WEBB: Yes, your Honour. That is a passage that we extracted in our submissions at, I think, paragraph 57.
HEYDON J: No. That is Professor Gervais.
MR WEBB: I am sorry, your Honour. We do not have a reference to the work that your Honour is then referring to.
GUMMOW J: Professor Ginsburg’s writings are useful, because she comes to Australia quite often and she is across the field in United States and Australian law in these matters.
MR WEBB: What we say, your Honour, is that when one looks at the facts in this case and sees the approach of the Court to a consideration of the activities of the whole of the company in its business undertaking towards the making of a broadcast, the Court is losing sight of the fact that what is required is an original work of an author which is to be found in some material emanation, and that when one loses sight of the fact that one has to focus on the authorial expression, look at the work in question and assess it having regard to the author’s work on the making of the copyright matter, one is drawn into this territory where protection is given to a business undertaking and its information.
In our submissions, we have, and been criticised for it, referred to the balancing of interests, that is, the author’s interest and the public interest, in the copyright law. We would say, your Honours, that there is no uncertainty about that matter. It has been always the case that the balancing of the public’s interest in the creation of works of learning and their free distribution in society is to be balanced against the author’s interest in the work he creates. What we say is that when one shifts from focusing on the author and what the author does to actually make the copyright matter to some more general consideration of the interest of a business in the product of its business undertaking, then one is losing sight of the public interest in the information and its free circulation.
GUMMOW J: This is your paragraph 73 in some respects.
MR WEBB: Yes, your Honour. When we say that that has always been a balance that the Copyright Act has sought to strive to protect, we say that one can find it well prior to the 1911 Act and the Berne Convention, of course, for example, in the title of the Statute of Anne, and that when one comes to the legislative words in the 1968 Act, that is, author originality and substantiality, those words, in addition to express provisions formatted such as fair basis, have their work to do in protecting the balance.
We say quite simply that the balance is protected within the notion of originality. Much has been reasoned in Feist and in CCH Canadian by requiring something more than just mundane labour to generate some product.
CRENNAN J: The labour and skill idea was a convenient way of making it clear that post 1911 you did not have to have literary merit, but with a compilation you did have to have some, even minimal, labour skill going into producing the material form in which the information was presented.
MR WEBB: Quite so, your Honour, and of course the law always recognised the general law before the statute as well, that quality of expression, for example, was not the concern of the law.
CRENNAN J: Yes.
MR WEBB: But, rather, that there had to be appropriate authorial endeavour in the production of the work, and that involves, in the words of the Berne Convention, intellectual activity if you like, which will suffice to produce an original work provided certain minimum requirements are met. When one gets to the realms of compilation – and the Court has our submissions on how each type of work has to be considered separately when one gets to this question ‑ ‑ ‑
CRENNAN J: Do you say anything about Desktop in relation to this point which I take it you are suggesting that one can be led erroneously into over‑protecting business information, once the focus is taken off authorial contribution to a material form. Then that has an impact in relation to assessing a reproduction because that leads to the idea then that with a reproduction visual similarity, for argument’s sake, is not particularly important and so on and so forth.
MR WEBB: Well, your Honour, in Desktop which confined itself largely, but not exclusively to - when the Full Court confined itself largely, but not exclusively to compilation cases, we say what they were doing was tracing through cataloguing the cases, if you like, and looking at what was enough in each particular case. That led then to the conclusion that mere mundane labour was enough, having regard to and trying to make sense of what is really a disparate array of approaches. When one stops and picks examples from the authorities and compares them one can see how, in every case, in fact, the courts were doing what we say the Full Court failed to notice. So, for example, we refer in our argument to Walter v Lane [1900] AC 539 which was the ‑ ‑ ‑
GUMMOW J: They seem to, no doubt correctly, have taken the view that there was some skill involved in taking it down in shorthand as Lord Rosebery was speaking to the mob?
MR WEBB: That is so, your Honour, and all of the majority were of that view, articulated it differently in each case. Even when one looks at the dissenting judgment one sees that his Lordship dissents on the basis that the stenographer’s art was by then, in his view, so highly developed that it was a completely mundane process of transcription, if I could put it that way. That was the dissenting judgment of Lord Robertson.
CRENNAN J: Nevertheless, overall the case really stands for the proposition, does it not, that you can certainly have a compilation of copyright cases, which would include information that is in the public domain?
MR WEBB: Yes, yes, that is so, your Honour, but I was going to say in leaving Walter v Lane that one can see in that case that what infuses the judgments as well is the view that it was important for the masses to have the collective speeches publicly uttered as widely available as possible, and it, we would respectfully submit, shows the way in which the courts always balance those interests when looking at infringement and subsistence together.
One can contrast it with Macmillan v Cooper, a case which came shortly after and in which the Court relied – that was a decision of the Privy Council in 1923, so after the 1911 Act, where the Privy Council was there considering whether the reproduction or the copying of selections from Plutarch’s Life of Alexander or the relevant translation was an infringement or not, and one can see from the report of the decision that the Court found that exactly the same extracts were selected for the same market, that is, for the same school market, and nevertheless found that there was no copyright in that compilation.
CRENNAN J: Are you making a point that the time and title information is information the public needs or something of that order?
MR WEBB: Well, your Honour, no. We are in a world where these utilitarian works have to be recognised and accepted, and it is not a matter of need that dictates whether or not copyright is going to be recognised. I am not suggesting to your Honours that an evaluative judgment in every case as to the public interest in the sort of information that you are looking at in a compilation will dictate the outcome of the case. But what I do urge upon the Court is that the failure to recognise that as a matter of general concern for copyright in every case is the public interest in the dissemination of the information leads to the erroneous acceptance that to be original a work only has to be produced through some mundane activity.
FRENCH CJ: Mr Webb, perhaps that might be a point at which we can adjourn and let you finish after lunch?
MR WEBB: Thank you, your Honour.
FRENCH CJ: All right, the Court will adjourn until 2.15 pm.
AT 12.53 PM LUNCHEON ADJOURNMENT
UPON RESUMING AT 2.15 PM:
FRENCH CJ: Yes, Mr Webb.
MR WEBB: Thank you, your Honour. It follows from what I was saying before the luncheon adjournment in relation to the need to focus on the author and the product of his or her authorial expression that it was important in this case, as in every case, to look at the compilation, the subject of suit, that is to say, the weekly schedule, which the Court has been taken to this morning and to ascertain both the question of originality and substantiality by reference to that work.
This morning your Honour Justice Hayne raised the question, what was the compilation in suit and asked the question whether it was the association of title and program information within the weekly schedule, that is to say, the two columns in question, as I apprehended it. The important point is, we submit, that the associations of time and title by their arrangement in the columns is part only of the total compilation and it is important to recognise, we submit, that in the judgment the Full Court regarded that arrangement, the achievement of the associations by those columns, as completely mundane. In the judgment of the Full Court at 4648 in paragraph 119 where they were dealing with the question of infringement the Court said this:
It is true that her Honour found that the form and presentation of the data incorporated in the Weekly Schedules were not predetermined by the nature of the compilation. Her Honour pointed out that a television program schedule could be presented in a variety of ways and might or might not include vertical columns. Even so, the similarities between the columnar format of the Weekly Schedules and the single channel format of IceGuide is hardly surprising. The use of columns for program times and titles is a very obvious way of presenting the material, perhaps almost as obvious as the alphabetical listing of subscribers in Desktop Marketing.
So we say it is plain that the Full Court was not focused on the arrangement ‑ ‑ ‑
HAYNE J: Are these submissions for an amicus, are they, or are they submissions that travel beyond those for an amicus?
MR WEBB: Well, your Honour, I seek only to make this point which I hope is within the proper bounds of my submissions as an amicus that what the court was doing was dealing with the information in its consideration, in its judgment rather than looking at the compilation, that is, in this case, the manner of conveying the information via with columnal arrangement.
In relation to how Desktop may have influenced the thinking of the court in this case, something that your Honour Justice Crennan was asking me before the adjournment, we refer to our written submissions at paragraph 37 where we emphasise that the court in Feist was enunciating a principle which is not limited to what the Full Court here calls “sweat of the brow” cases. If I could ask the Court to go to again the judgment, this time at 4637 at paragraph 89, there is there set out the court’s description of the work that the court was faced with in Desktop Marketing. At paragraph 92 on the next page 4638 that it seeks to draw a distinction between that work and this by saying that:
Unlike Desktop Marketing, the present case does not involve a compilation of existing facts. No one outside Nine would have been able to compile the precise programming recorded in the Weekly Schedules in advance of their creation and dissemination.
So that the court, it is clear from that paragraph, does think ‑ ‑ ‑
GUMMOW J: It may have been confidential information.
MR WEBB: Yes.
GUMMOW J: But it may still have been a fact, I suppose.
MR WEBB: That is right. The court thought it was dealing with a different case. We would say that there was no relevant distinction between them. The information was relevantly a fact, that is, the time and title information. An illustration of that is found in Littlewoods, where the judge accepts the proposition that the selection of the members of the Ashes team for the MCC for the next tour created facts in the relevant sense that were not in the public universe. The point is that once a business decision is made to broadcast at a particular time a particular program, it is a fact and it is ultimately a fact which finds its way into the weekly schedules as compilations.
As your Honour Justice Gummow says, the realms of confidential information may provide some protection to that information in the hands of Nine while it remains in fact confidential, but this case is based upon the public dissemination of the information and, we would say, represents and attempts to control the information in a way which reflects an imbalance ‑ ‑ ‑
GUMMOW J: And long after perhaps it ceased to be confidential, if it ever were.
MS WEBB: Yes, your Honour. Your Honour, we would say the case is propounded on the distribution of the weekly schedules of the aggregator and its use after it is in the public domain through that means, so that it is certainly no longer confidential at the relevant time. The fact of a statement to broadcast at a particular future moment is a fact just as much as any other.
Your Honours, then we say this in part by way of our explanation as to why we are here. In our submissions at paragraph 6 we refer to a paper of the Royal Society in 2003 and the footnote 7 to that paragraph sets out a description of the concern that constituent members of the ADA have as research bodies inter alia with the sort of issue that the Court is confronted with here. Your Honours will see from that passage that, of course, databases are compilations which are frequently, and increasingly frequently, the means for containing information, dissemination and use in the research community.
GUMMOW J: Does what you say at paragraph 81 connect with what you are saying at paragraph 6 as to the limits of a database directive?
MR WEBB: Your Honour, what we say in paragraph 81 is that, to adopt the phrase coined by Feist or in Feist, that is, compilations afford thin protection, that is, to the selections or whatever it is that brings together the information, one has to be astutely careful about assessing the scope of the copyright protections per means of originality having regard to the need for the accessibility of the information that is now routinely embodied in electronic databases.
GUMMOW J: What was happening in the William Hill Case referred to there at footnote 103?
MR WEBB: I am sorry, your Honour.
GUMMOW J: Footnote 103. It seems to be an epic litigation between the British Horse Racing Board and William Hill. He seems to have gone off to Europe and come back again.
MR WEBB: I am sorry, your Honour.
GUMMOW J: What was it about? Do we get any use out of it?
MR WEBB: No, your Honour, one does not get much use, we submit, in this debate out of the sui generis database law and a consideration of it, but that decision is an example of a case in which the investment of the research work which produced the contents of the database did not contribute to the generation of the right in the database.
GUMMOW J: It is reported in [2005] RPC 35.
MR WEBB: Yes. In their submissions in reply the respondents refer to the definition of “material form” now in the Copyright Act which contemplates that a work, including a compilation, may be embodied in a device whether or not it can be reproduced from the material form or the material embodiment and we say that that is salutary as well. It again makes clear that the legislature is leaving within the concept of “author” and its correlative originality questions as to whether enough is done in relation to one of these electronic databases to create a copyright in it.
It demands close attention, we say, to the nature of the copyright work, that is the compilation, and a requirement for satisfaction that the author’s work in creating the compilation, that is the authorial work, is sufficient to create a work which will impact on the availability of the contents of the database at large.
Your Honours, in our submissions we refer to both the test for originality in Feist and CCH Canadian. We set them out in paragraphs 35 and 54 of our submissions, respectively, and we do not there articulate a clear preference for the correct approach between them to originality and its content although we express a preference for Feist, that is the test which requires an element of creativity or creative spark, to ‑ ‑ ‑
FRENCH CJ: Do you not suggest the Canadian cases have effectively applied their criterion as though they were applying Feist?
MR WEBB: Yes. There is that debate and that may be the fact. We express, despite that possibility, the preference for Feist because we say that by focusing on the notion of creativity by an author you more clearly tie the author’s activity to the authorial work than might otherwise be the case if one talks merely about skill and judgment and by that means overcome, we would respectfully submit, the problem that arises when there is a question as to whether business activity which is likely to inevitably find its way into some electronic store, likely to be a database of some sort, is going to contribute, ultimately, to an emanation from that database. Your Honour, subject to any question that arises, that is what we wanted to submit.
FRENCH CJ: Thank you, Mr Webb. Yes, Mr Bannon.
MR BANNON: Thank you, your Honour. The first proposition which we contend is one which we submit is supported by the facts, by the finding of the Full Court and, indeed, by concessions and pleadings, and that is this; that substantial skill and labour was exercised by two individuals, identified both in pleadings and particulars, in the creation of the weekly schedules and that those schedules themselves constituted ‑ ‑ ‑
GUMMOW J: Are you saying those two individuals are the authors?
MR BANNON: Yes.
GUMMOW J: Among others, or prominently ‑ ‑ ‑
MR BANNON: There could be argument about that, but ultimately we would submit it does not matter, but that the schedules themselves constituted the programming decisions. In other words, the process of creating the schedules was the same process as the making and finalisation of the programming decisions. The resulting compilation was the work distributed both externally as well as used operationally internally; hence, there is no factual basis for any distinction between skill and labour directed to programming decisions and skill and labour directed to creation of the weekly schedules.
We respectfully submit that the Full Court’s encapsulation of the finding that the work of Mr Healy and Ms Wieland was directed inevitably to the creation of the weekly schedules was the only conclusion available on the evidence, and that the learned trial judge’s distinction between two purposes ultimately on analysis was a distinction between two purposes in creating the same work, and the purpose does not affect the existence of copyright in a work. Its creation does. The purpose of its creation does not.
The starting point to understand that submission is firstly the pleadings, in volume 1 of the appeal book at page 41. We firstly, at page 41, paragraph 6 of the pleading, pleaded that Nine had at all material times produced, and continues to produce, programmed schedules, and a defined term is used. Each of them comprises (a), (b) and following. It describes basically the three subsets, “time and title ‑ ‑ ‑
GUMMOW J: Just a minute. The heading is misleading, is it not, or inadequate?
MR BANNON: Subsistence and ownership?
GUMMOW J: Yes. It leaves out a step.
MR BANNON: We do pick it up, because I was horrified by your Honour’s remark having regard to the assistants to my right that we could have made this mistake. But paragraph 15 – a combination of 10, 11 and 15 picks up authorship and, indeed, contract for service. We did not specifically refer to 35(6) – could have, arguably should have, but the wording, we respectfully submit ‑ ‑ ‑
GUMMOW J: But these are anonymous persons.
MR BANNON: Anonymous – 13 is explicable by reference to the fact that we pleaded, as particulars to 9A on page 43 – in fact they served as particulars both to 9 and 9A – schedules going back to 1956. In other words, what we were attempting to address, and we no longer press because it does not matter, was Mr Rilett’s argument that he had produced independently – there is a factual issue as to whether he actually watched or whether he had, in the process, sneaked constant looks at publications of our earlier schedules, and so we were relying on each schedule we had ever produced against the possibility someone might argue that increments to that schedule perhaps did not have their own independent copyright and hence the potential was available to rely on all copyright works. There are cases where that has been done, and some are on our list. But, in any event, that explains the anonymous part. We had to cover against that possibility.
I should just point out, in paragraph 9 we did attempt and failed in seeking to argue a dissection into multiple copyright works of our weekly schedule by, in effect, suggesting you could look at it as a work which consists solely of program and title, then additional information. That attempt was vigorously resisted by our learned friends, and said no and they denied paragraph 9. Paragraph 9A ultimately became the guiding allegation because 9A pleaded that the combination of all of the material was literary work and an original work. That was the issue on which the respondent to the proceedings, the appellants, were happy to join because obviously, as is always often the case in these situations, they wished to broaden the copyright work, the copyright owner often tries to narrow it, each with a view to making their task easier on the infringement argument. But 9A was admitted.
The question of authorship was pleaded in 10. Then 11 and 12 just referred to a question of revision, and again we did not succeed on that part and we no longer pursue it. Paragraph 13 fundamentally was directed to the many ones gone past. Then in 14, by reason of those facts and matters, copyright was said to subsist. Then 15:
Each of the persons referred to in paragraphs 10 and 11 above is or was an employee –
Then in 16, by reason of those circumstances, we were the owner.
GUMMOW J: But we still do not know who they are.
CRENNAN J: Can I just ask you this ‑ ‑ ‑
MR BANNON: Sorry, your Honour.
CRENNAN J: I will let Justice Gummow finish what he was saying.
MR BANNON: We provided particulars, I was going to say.
CRENNAN J: In relation to the Nine – which are the works in suit ‑ ‑ ‑
MR BANNON: Ultimately 9A, your Honour.
CRENNAN J: Nine program schedules I was referring to.
MR BANNON: Yes.
CRENNAN J: Well, in 9A(a) the Nine program schedules created in relation to each day and each week since 1956 I did not quite follow that and I wanted to ask whether there was evidence, perhaps in Mr Healy’s material, that somehow the Nine program schedules that are the works in suit derive from program schedules that go back to 1956?
MR BANNON: No, ultimately no. What was accepted, and ultimately we agreed, was that the Nine program schedules were the weekly schedules to which your Honours had been taken.
CRENNAN J: Yes, see that is from certain dates in May in 2006?
MR BANNON: At any period of time covered by the proceedings, covering the conduct of Ice. So that about, I think, 17 days out from the actual program we issued to our aggregators weekly schedules which contained, as has been shown, time, title, additional program information, plus synopses and that that went to the aggregators and that they, shortly after that date, published those in combination with receiving similar works from other channels and that is what was copied.
CRENNAN J: But in relation to Mr Healy’s evidence about what an evolutionary process this was, did the evidence reveal – let me just pick an example – that these Nine program schedules which were in suit exactly resembled program schedules, say, from 1956 which also had in them time and title information?
MR BANNON: There was evidence as to the extent to which what was described in the evidence as “strip programming” had been around, but ‑ ‑ ‑
CRENNAN J: That is for non prime time material is it?
MR BANNON: No, repetitive programs like the news, Days of Our Lives, Good Morning Australia, or something or other and the like. But the process of creation – and I am going to take your Honours through the evidence, if I may – would involve creating a new work by means of a combination of paper and Excel sheets put into a database, something which was directed to the upcoming weekly schedule. By reference to, yes, certainly, the fact that they had done the news, for example, for the last six years at 6.00 pm they would certainly put that in.
I suppose, in a sense, his evidence indicates that keeping something the same was something which was actively considered all the time. In other words, even though the news had been running for however many years at 6.00 pm, the evidence actually showed it used to be famously at 7.00 but moved it to 6.00, we all accept it at 6.00, ut, for example, over the last five years Channel Ten has had it at 5.00. So that, for example, even the consideration of deciding to keep something the same is part of the programming decision. So, yes, there is no doubt the evidence either assumed or implicitly accepted that there was a drawing on knowledge of what had been done before, but it was not in the sense of simply copying over an existing schedule.
CRENNAN J: Like railway timetables for different years might have independent copyright?
MR BANNON: Quite. In terms of the particulars we provided, at page 70 the answer for the particulars commences and at page 72 under heading 2, evidence of authorship has been served. It said:
For the sake of clarity, Nine confirms that the authors . . . are Mr Michael Healy and Ms Penny Wieland, both of whom are Australian residents and have at all relevant times been employees of Nine.
They are “also the authors of the late changes documents”. Then there is a reference to anonymous publication, but in the scheme of things it does not arise. Then over on page 75 there is also a reference to – paragraph 10 saying, look, we have provided you with affidavits so that you really have enough information anyway and that would accommodate the circumstance to the extent it might otherwise have been relevant. Those affidavits indicate the extent of involvement of two other Nine employees, namely Mr Forrest and Mr Holman, we would say primarily but it ultimately, we would say, does need to be debated, that the guiding minds of the production of the schedule were Mr Healy and Ms Wieland.
For example, Mr Forrest getting the two parts and aggregating them into one document and then putting it on a database, which was then continued to be worked on by Ms Wieland and Mr Healy, including shifting things around, until it was finalised – that work would not constitute authorship, and indeed Ms Ginsburg’s article might support that view. But even if it did, they were employees and it did not matter. But certainly in terms of identifying the various persons who had a contributing input, they were identified in the evidence and they were addressed. Work of joint authorship is defined ‑ ‑ ‑
GUMMOW J: Were these works of joint authorship?
MR BANNON: They clearly were. They were works of joint authorship because each had a contributing role. Of course, in addressing the conceptual question of the relevance and appropriateness of ‑ ‑ ‑
GUMMOW J: Now, there were four candidates as joint authors?
MR BANNON: We would say perhaps primarily two, but potentially four.
HEYDON J: Mr Holman, for example, added the synopses. Mr Healy and Ms Wieland never composed any synopses, or at least Mr Healy does not say so.
MR BANNON: Yes. I think that is probably right. But I think Mr Healy may have told him to.
HEYDON J: Mr Forrest put in quite a lot of information as a result of his own endeavours.
MR BANNON: Yes.
HEYDON J: Mr Healy and Ms Wieland did not.
MR BANNON: Quite.
HEYDON J: Does this not suggest that the ultimate weekly schedule – the whole copyright work – the real author is Holman and Forrest?
MR BANNON: No. I must say we would strongly reject that, for the detailed reason of the evidence, which I will go to, because as I was saying, at best – I withdraw that. There is no doubt – for example, I think it was Mr Holman who added perhaps synopses but some additional program information.
HEYDON J: Mr Holman will usually add any synopses that are required where necessary, obtaining it from the genre heads, production officers, outside production companies and distributors. Are they authors?
MR BANNON: No, because that would be pre‑existing material. There would be an independent copyright in that material, one would imagine, and that is part of the compilation process.
GUMMOW J: There may be a problem, Mr Bannon, in that there is a commercial enterprise with a number of steps and a number of actors which produces an end commercial result. The question is, how is that readily fitted within the structure of copyright when you are trying to find an original work which has an author or joint authors? They might not be so much joint authors as sequential actors, if you see what I mean?
MR BANNON: Your Honour, it is an interesting question and I think it is fair to say, because our focus on the infringement side was on time and title, one may – I am sorry ‑ ‑ ‑
GUMMOW J: One cannot shut one’s mind perhaps because one has then got to grapple with the notion of substantiality.
MR BANNON: But in terms of the process of creation, it was fully developed in the affidavit material in the sense of identifying potential persons who may have been involved, to the extent any creative writing work was done within Channel Nine, and I include in that not only the writing of a synopsis or writing of a name of a title of a program, that all came within Channel Nine to the extent it was drawn from somewhere else. Take, for example, Channel Nine obviously buys in programs from overseas or even local production companies. Those production companies will have named the program, they will have named the episodes as well. In many instances they will have the synopses as well.
What gives this compilation, we submit, copyright protection is the judgment exercised, in this industry as well, in compiling particular programs to be shown at particular times; not only at particular times, but in a sequence which is demonstrated by the programs which appear before it and after it. Once that decision is made, and that is the key decision, yes, there are some consequential steps which inevitably must occur for the process to be complete. One of those consequential steps is adding the program, whether its PG, et cetera. Undoubtedly that has to happen and it goes in and it is part of the copyright work.
Equally, we accept, and it was accepted in evidence, that a synopses has to be added because that is what we want to go out as part of the document, and it is clearly part of the copyright work, and we accept that any question of infringement must be examined by reference to the whole work including the synopsis. But to the extent we did not within Nine draft the synopsis, we do not claim copyright in that synopsis per se, nor do we claim copyright in the title of the program per se, we did not draft it, but our decision, which was only our decision – when I say “our”, our employees – was, in the exercise of judgment which comes from years of broadcasting, having to comply with broadcasting requirements, having to assess what market we are after, getting advertising dollars, maintain ratings, balance the budget, all that experience results in a process of determining to collocate particular entries in a table, and the tiger in the table is the time and the title and even if it is more words at the end in terms of the synopsis, it is the tail.
That judgmental process of deciding to put particular programs in particular times in sequence with other programs is a process which (a) produces a compilation and (b) involves at every level, however one poses the test, skill, judgement, selection, to achieve or satisfy a test of originality. Ultimately, our complaint is not that they have taken a fact or an information, they have not, for example, written an article saying, guess what, Channel Nine is going to put the cricket on again at 6.30, how dull is that, for the whole of summer, what they have done – how do you take a part of a collocation which consists of a schedule in the way described? You take a part by taking its feature as a collocation and that is exactly what they did because they used those parts, that feature, in their own collocation and one can look at it at three different levels at the infringement level.
One can look at it entry by entry and that is sufficient for our purposes. We say, inevitably we must win because the very things they could not predict – if there is a test of substantiality based on originality – the very things they could not predict almost by definition are the most original parts. There is a second way of looking at that. Not only when they take a single entry are they taking that particular collocation at a particular time, they are taking that as part of a sequence which exactly matches both before and after what we have got.
So, even assuming in their favour they have managed to predict the other elements, part of our collocation is not only that we are showing, for example, Wide World of Sport at 6.30 pm, it is Wide World of Sport after four programs which go before it and followed by other programs, which the evidence demonstrates is all part of the process of trying to attract audiences. It is a suite. So if one tries to draw analogies in the sense of combination patents, that is the collocation. They take not only the entry they could not have, they take it in combination with the bit before and afterwards. So, all this talk about taking information and fact, we respectfully submit, is really well wide of the mark. They take exactly what we took, why we created it.
HEYDON J: But that is before and afterwards. They are not infringing are they? Is that not what was worked out independently of looking at the guides? That is independently of the slivers, if I can use that expression.
MR BANNON: Yes. If we are right that we have copyright protection by reason of our collocation, and we submit that was not an issue, but that is what it is, you cannot actually divorce and identify – perhaps I will start again. We are quite happy for the matter to be decided based on looking at what is described as slivers, but we say the incapable of prediction entries. But we submit as a second level in the alternative or if need be in furtherance that that collocation of itself, even though they have managed to brick the other bits, actually forms part of the collocation that they could not predict because it is part of the combination. Because with the benefit of that bit they did not predict, they have a complete picture, which is our exact suite.
HEYDON J: It is probably my own inattention, I do not recollect this line of thinking being represented in the Full Court’s judgment?
MR BANNON: One of the great advantages of minds being focused.
HEYDON J: And I do not recall it being represented in your written submissions, but I could be wrong.
MR BANNON: We have. In terms of the bits above and below, I think paragraph 35 of our submissions identify – if I have got the paragraph right – the importance of the collocation element. No, that is not the right paragraph.
HEYDON J: At line 7 it mentions the word “collocations”.
MR BANNON: Yes, 35.
HEYDON J: It is going to demonstrate a merit, if I can use that expression, of what the Channel Nine officers did. Is it really relevant to an infringement argument that you are propounding in relation to collocations?
MR BANNON: Because the question of substantial part on current authorities says you look at quality, the substantiality of it – well, perhaps it more goes to de‑emphasise that submission I have just put, the so‑called question of sliver. I think your Honour was indicating earlier that it does not really matter that you have a few gaps in your program and you get a few things wrong. What the Full Court correctly said is, yes, it does matter, because the value of these things is they are accurate. They are an accurate representation of our suite of programs and if you have inaccurate gaps, sure enough your business has the potential to fall away. Indeed, they could not actually sell it because they would be effectively saying – they could only honestly say here is a program guide which quite frankly we have got to tell you has got gaps in it. The business would not exist.
FRENCH CJ: You are right to say that your identification of the decision‑making process with the production of the compilation which takes the form, no doubt, of an internal instruction as to what is to be shown and when would have the effect that one could infringe copyright in the compilation simply by sitting down and recording the programs, listing the programs as they appear in the way that Mr Rilett did.
MR BANNON: But that would not involve, your Honour, a reproduction of the schedule because one would be recording then the fact that on a certain day Channel Nine displayed X. What our schedule is, is a predictive – or statement of intention that my friend described it, I am happy to accept that – of what we propose to do as a matter of future indication. Indeed, showing the program would not be described as a performance of the literary work in any sense and so that simply recording the programs would not involve a reproduction. Indeed, that question was addressed by the learned trial judge who found that to do that process was not a copying, and we do not challenge that, but I think that that is referred to a couple of times in her Honour’s judgment.
CRENNAN J: Is not the skill and labour of matching a title, in which there is no copyright obviously to a time, a business decision in relation to ratings and advertising and matters of that sort? I do not quite understand how that is directed to the material form of the compilation other than the fact that those two bits of information are in the compilation. Am I making myself clear? In other words, I am troubled by the use of skill and labour, which does not seem to have a great deal to do with the final form of the compilation with the synopses and all the rest in it, because it seems to have everything to do with ratings and advertising and the order in which programs do best in terms of your obvious revenue imperatives and matters of that sort. I just do not perfectly understand how you are saying, well, that is the skill and labour that will give originality in the total compilation.
MR BANNON: We would say if that is all it were, it would still be enough, and perhaps I can come back to that.
CRENNAN J: Yes. I do understand that is what you are saying in terms of your main claim in relation to infringement.
MR BANNON: It is not just a business decision because the evidence demonstrates and, in fact, my friend cross‑examined to this effect, that the weekly schedule’s importance – whether it is its prime or however you put it – is how it presents to the public. A literary work is defined, or the cases have indicated that a literary work is something that provides information or instruction.
CRENNAN J: You mean the visual look of the weekly schedule?
MR BANNON: Not so much the look, but the information it conveys as to what the suite of programs is going to be. If it is an attractive suite of programs in the sense of, “If I watch Channel Nine today or whatever, I am going to have a great day’s viewing because I can watch these programs which I love and I can see the sequence. That is good. I can do all those in about an hour or three hours. I do not have to wait around for four hours to watch that. That is terrific. I will watch that”, how that appears in the sense of the information it conveys is critical to our business. It is critical to actually convey those programs ‑ ‑ ‑
CRENNAN J: But the aggregated guides show all the programs, do they not, at the same timeslot?
MR BANNON: Absolutely. Well, the aggregated guides do both. The electronic ones you can bring up individual channels.
CRENNAN J: You can, yes.
MR BANNON: You can also show them in multi‑channel. We were going to check who pays who for the aggregated guides, but there is no doubt it is in our interests to have aggregated guides accurately reflect what our compilation shows because our business cannot succeed if we cannot tell – subject to the people who will turn on any TV at any time and just watch it – as to which, even if there are significant numbers of people, there are not enough to make the business go around – you have to be able to inform people of what your suite of programs is. So it is not the form of how they appear. It does not matter whether they are big letters or short letters. It does not matter if there are spaces. It is irrelevant whether it is horizontal or vertical or going around and around in a circle.
CRENNAN J: What are the damages if somebody else informs the public about your programs?
MR BANNON: It depends how they do it, of course. If they take a substantial part of our compilation, then the damages may be, for example, a reasonable licence fee. If we do not charge a licence fee to somebody, that may have a consequence. But there are at least conditions in the aggregator licence agreement which say, you shall not change our time and title information. I do not think we have a condition about synopses. They can fiddle around with that, but time and title, they are obliged not to change it.
HAYNE J: Does not the debate that you have just been having with Justice Crennan focus attention upon the precise content in the first two propositions you began your address with?
MR BANNON: Yes.
HAYNE J: My note was that there was substantial skill, et cetera, of two individuals in the creation of the weekly schedules, and the second proposition was that the weekly schedules constituted the programming decisions.
MR BANNON: Yes.
HAYNE J: Do I accurately understand the propositions?
MR BANNON: Yes.
HAYNE J: In what sense are you using the expression “weekly schedule” in that first proposition? At times in response to the questions asked of you by Justice Crennan you spoke of it in terms suggesting that it was the suite of programs, the sequence of programs, the notion of putting program X after the news at six, et cetera.
MR BANNON: Yes.
HAYNE J: Is your first proposition a proposition directed to the series of works of which page, whatever it is, 515 is an example?
MR BANNON: Yes.
HAYNE J: And confined to that?
MR BANNON: Yes. In the sense that we accept that our copyright work is – that is the work which leaves our premises.
HAYNE J: Yes. If that be so, if your first proposition is thus confined to that material representation, which I understand is where we have got to so far, in what sense does that schedule constitute the programming decision?
MR BANNON: Because the evidence shows – I am going to take the Court through it, identify it at least – that Mr Healy would start, for example, with a piece of paper and he would think in his mind, sometimes after talking to various people, “I will put in for example, Days of Our Lives as it has been, 10 o’clock for the next two weeks” or whatever, and that will go in. Whether he does it or his secretary does it, that will go in. Then there might be a whole series of blanks. He might have a chat with Ms Wieland, she is doing off peak and he is doing prime time. She has her own document going. Then they will look at what other things they have to do, and on their own separate pieces of paper they will fill that in. They get melded, consolidated, because they have both been directed to that consolidated thing, or unit. They end up at a database. Ms Wieland’s evidence is – and I think Mr Healy’s is the same – once it is in there they still look at it, and they say – they talk amongst each other, and they say “Is this good?” They look at the competition, and they will move it around.
HAYNE J: They look at their work and after six days they say, “This is good”, yes.
MR BANNON: But there are many decision‑making processes which go on. There are geniuses who will conceptualise a complete proposition or a complete chemical formula, and then in the one blow they will put it down on a piece of paper. There are people, more human, who go through the process of using paper and a pen or, in these days, the computer keys as part of the thinking process and part of recording it. I venture to say it perhaps happens with judgment writing. But, be that as it may – and I will come to this, but there is a part of Lord Justice Diplock’s, as he then was, judgment in [1980] RPC in Ladbroke, where his Lordship says “Here you have a conceptualisation of a bet. The words used” or “the figures used to write down the bet, having been conceived on a piece of paper, is a mundane process”.
Once you work it out in your head, writing it down is mundane. You do not get copyright in what you wrote down. That view has never been followed anywhere else in the world. It was not followed in England. It fragments the process of creation and it, we would respectfully submit, is a fundamentally incorrect approach to copyright law.
CRENNAN J: More interesting ‑ ‑ ‑
MR BANNON: It would be the death of copyright law, if I may say so; it involves a complete fallacy if perhaps you could claim credit to ‑ ‑ ‑
GUMMOW J: You cannot have an incomplete fallacy, Mr Bannon.
MR BANNON: I was going to suggest it might be his – to add to his earlier fallacy – a fragmentation fallacy because that is exactly what it is. It is fragmentation, fragmenting a process in a completely impermissible way and I would say it would be the death of copyright because almost the cleverer people who can conceptualise something and just simply have to put it down know, or the simpler the proposition they conceptualise the more mundane and unskilled is the process of writing it down.
CRENNAN J: But there are plenty of dicta and I think – bearing in mind even say the first Ladbroke decision – Lord Evershed and so on, plenty of observations made from time to time that there can be quite distinct processes where there is labour and skill in calculating odds and wagers and things that are going to be relevant to your competitiveness in the market or the attractiveness to your customers and all the rest of it, but a quite distinct skill in preparing a betting form in the actual compilation.
MR BANNON: Ladbroke – and perhaps this is coming back to the question your Honour asked of me earlier – but as I say the actual information we convey is of significance, not only operationally, but the sequence and information which it conveys is critical to our whole process and satisfies any version of literary work one would want. But the mere fact that something has a mere utilitarian value and may simply reflect a decision, a business decision, does not mean it does not attract copyright.
CRENNAN J: No, but what have Mr Healy and Ms Wieland got to do with the compilation, as distinct from working out what sequence of programs is going to be attractive to the customers and competitive, and so forth?
MR BANNON: Because it is eo instanti the same thing.
CRENNAN J: I mean I understand they are directing their skill to making a decision about matching a title and a time. But the compilation is a lot more than that. The compilation is a material form; that is what I do not understand, I must confess is quite how you are translating their skill and labour to the material form in which copyright is claimed, that is to say the Nine weekly schedules.
MR BANNON: What is absolutely clear is in no individual’s head or no combination of individuals’ heads is there something which is described as the Nine programming as a conceptualised complete suite of programs and times which exist before it is written down. The evidence does not show that at all.
CRENNAN J: Are you not sort of running into that old fuzzy line between ideas and material form, expressing an idea and so on?
MR BANNON: Well, I was going to say that there is nothing which is the unexpressed complete idea here. It does not exist. The decisions, both in terms of the physical work they do, but also in the direction they give in saying this document – which is the schedule – shall appear in the following way, namely, this program shall appear next to this timeslot, which shall be followed by this, that is the decision they make which is a decision which is directed to how the compilation will appear.
Why they decide that the words “Days of Our Lives” will be next to “6.30 pm” involves the exercise of skill and judgment, and that is original work. If they do not say, put that there, nobody will do it. It certainly will not be Mr Forrest, it certainly will not be Mr Holman. It will not be anybody else. They are the ones. It is simply the same if somebody dictates to a personal assistant. Your table, your article, your drawing – perhaps drawing is not a good example – your table, article or compilation shall appear in this way, “Write that down.” “I cannot write, you know, I am crippled. I cannot” – whatever reason, but, “Put that in”.
You are the decision‑maker as to how the document is created and what information it conveys. There are no other people who fulfil that. The fact that there may be other individuals who could also be joint authors does not detract from the proposition that they are authors and any other candidates of creating this literary work for all Nine employees, so we have copyright. We respectfully submit that it is essential, to understand the submission, to look at the evidence and, indeed, the findings and along that road I think I had got to identifying those particulars. Could I also add, however, the defence, which starts at page 57 and at page 58 and the answer at paragraph 9A is:
(a)that each week for a number of years since 2001 Nine has prepared and distributed a weekly television program guide one example of which appears –
at those pages, and again, that is exactly the same form as the 514, et cetera.
(b)that each such weekly television program guide is an original literary work by way of compilation within the meaning of the Copyright Act, 1968;
save as aforesaid the respondents do not admit the allegations contained therein.
In answer to the allegations contained in paragraph 10 –
which is authorship –
the respondents:
(a)refer to the particulars supplied . . .
(b)admit that Michael Brian Healy and Penny Wieland were involved in the preparation of part of the Identified Nine Works referred to in particular B, subjoined to paragraph 9 . . .
(c)deny that Mr Healy and Ms Wieland were the only persons involved . . .
(d)otherwise do not admit –
With particulars (b) subjoined to 9, I think because 9A came in afterwards, the only candidate for that is back on page 43, which is particular B at the bottom of page 43:
the sample contained in Exhibit CGA‑8 to the Affidavit of Cameron Graeme Andrews –
which I can tell your Honours is again another example of the document your Honours have been referred to several times, the page reference to which is volume 2, starting at page 756. I do not think I need to take your Honours to it, but it is the same weekly schedules we have seen.
So one has that position. Then so far as concessions are concerned, there was a document requested by the learned trial judge which was factual background, which your Honour invited the parties to agree. That appears in volume 10, page 4441. What happened was that we proffered a document and they agreed with many parts of it, but in the absence of absolute agreement, her Honour directed that the parties deliver a document which indicated parts agreed by – or parts not agreed by reference to underlining. So, for example, their document starts at 4441 and it is dated 20 December 2006. The course of events is the trial finished – evidence finished in about October 2006, final addresses were on 30 November, and I think each party delivered these documents. Theirs is 4441. Ours starts a bit earlier at 4387.
At 4449 under the heading “NINE PROGRAM SCHEDULES”, everything which is not underlined represents agreement. You will come to an underlined bit every now and then. Sometimes the agreement consists of each party’s stated position of course. Paragraph 30 refers – this is the respondent’s second sentence:
Ice objected to the use of defined expressions such as “Nine Program Schedules” –
Now, the reason for that is, as I say, we were trying to argue that you could subdivide the schedules into just time and title and the other ones. I think we had a go at daily as well. We had a number of different versions. Ice disputed that and her Honour agreed with Ice, namely that it is the weekly schedule, which we have all been taking reference to. Then 31:
Nine’s position is that the copyright work . . . is a compilation of the name and timeslot . . . IceTV’s position is that there is only one copyright work that is owned by Nine that is the subject of the proceedings which IceTV says is the Nine Program Schedule which is a compilation comprising materials selected, expressed and arranged as exhibited in CGA-8.
As I say, that is volume 2, page 756 –
It is a weekly schedule commencing on a Sunday and ending on a Saturday. IceTV’s position is that the so-called “versions” or “forms” of Nines Program Schedule are simply subsets of its weekly Nine Program and are not relevant for consideration in these proceedings.
We are now in furious agreement on that proposition. Then over the page at 4450, 35:
The “versions” of the Nine Program Schedule sent from Nine to external parties such as program aggregators (who are described in more detail below) . . . are in tabular form, including a final column –
and, again, that reference “PSW-1, pp 5-73” is at volume 2, page 979. Again, it takes the same form as we have seen. Paragraph 36:
Nine Network’s Director of Programming, Mr Michael Healy, is primarily responsible for the Nine Program Schedule –
The short point is these references to the Nine program schedule are what they say is the document which is actually distributed, and the evidence is only consistent with this proposition, as I will endeavour to demonstrate -
for prime time programming –
Over the top of the next page -
Mr Healey is responsible for the final decisions on all issues . . . subject to consultation with Mr Eddie McGuire –
Paragraph 37:
Mr Healy and Ms Wieland work closely together in developing the Nine Program Schedule –
bear in mind the definition of “works and joint authorship” –
Ms Wieland follows up and provides details for programs Mr Healy selects, including sometimes identifying and selecting episodes . . . spends time on the creation of the Nine Program Schedule every working day . . . 80% of her working week –
et cetera. Paragraph 38 we could probably skip over. Paragraph 39:
In the creation of the Nine Program Schedule, Mr Healy and Ms Wieland are assisted by Nine’s Genre Heads for the various genres of programming -
One may accept that there can sometimes be a blurry line in trying to identify the individuals who are actually making a contribution. It can be difficult. It is plain you do not have to push the pen, but it is also equally plain you have to be directly involved in the decision which results ‑ ‑ ‑
GUMMOW J: Paragraph 41 may give the game away a bit. It says, “The process of creating the Nine Program Schedule”.
MR BANNON: Yes, exactly.
GUMMOW J: Some commercial activity.
MR BANNON: Be that as it may ‑ ‑ ‑
GUMMOW J: Just going back to what Justice Crennan was raising with you, a possible way of looking at it is then to say what you are seeking protection for is what the database directive calls a substantial investment in building up a database. What paragraph 41 is talking about is the substantial business investment that goes on, and I can see that, likewise 42, 43. That would be relevant if we were in the world of the database directive, because that is what the directive talks about, but that is not necessarily the sort of activity that Justice Crennan was putting to you when one is talking about the copyright system. There may be an answer to that, but it is that point which I think you should try and grapple.
MR BANNON: I will endeavour to do so. Can I just direct attention to 40? They are both employees of Nine –
meaning that it is common ground that if their efforts and those of their assistants result in the creation of copyright subject‑matter, copyright subsists in it and is owned by Nine.
The only qualification there is the sense that we are debating to whether you could direct it to the weekly schedule or subsets of the weekly schedule. The process of creating that is identified there.
HEYDON J: Just so I can understand it, the underlining means the proposition is not agreed, “and those of their assistants”?
MR BANNON: Yes. They were saying there were other assistants who – and therefore I accept ‑ ‑ ‑
HEYDON J: But is it common ground that those assistants are Australian citizens?
MR BANNON: Yes, and were employees of Nine. Then everything is set out in 41 and obviously I do not need to go through that. In 42:
The creation of each Nine Program Schedule involves Mr Healy and Ms Wieland making multiple decisions with respect to the selection, arrangement and ordering of the programs to be screened, and involves them thinking about the schedule from a yearly, a seasonal, a weekly and a daily aspect. Nine has an annual planning process –
We have to take into account all those things.
GUMMOW J: Paragraph 43 is significant too.
MR BANNON: That is absolutely right, and we fully accept that. We do not hide from it being a business decision. Equally, we do not hide from the fact that authors as page turners write books with a view to making money. Every word they write, be it salacious, be it controversial, is directed to selling, and it can have the most massive business decision element in it. Ultimately, we respectfully submit, it does not detract from copyright. Indeed, it may well be, provided it is judgment involved in creating something which falls within the definition of literary work, it all goes in aid of originality and ultimately, we would say, assessment of any question that arises on infringement. Obviously all of it is important and it is all set out in the evidence and, conveniently, the footnotes are there. I was going to take your Honours through a couple of the paragraphs of the affidavits just to indicate where it is. I do not have to spend too much time.
One can see at page 4455 that the underlining indicates their position and this was not directed to any argument to say there is some problem with our copyright because you have not got the authors. There is no question about that. What that was directed to is trying to emphasise that there are other important parts of the schedule such as the synopses which has to be taken into account in assessing the question of substantial part.
But that is that issue and whatever view we may have taken previously, we fully accept that those parts are part of the work and have to be assessed in the ordinary way on the question of substantial part. But the underlining that reflects that issue. Then 47:
The process of creating and finalising the Nine Program Schedules involves a number of stages, including –
That, and one can see at page 4456 distributing the schedules and 48:
After distribution of the Nine Program Schedule to aggregators, the following additional work is done by Nine –
And 49 and 50, et cetera. Then perhaps I should jump to paragraph 57 on page 4458 there is a reference to formats. There is the Excel format, the text format referred to. Your Honours have been taken to both of those. There was another argument about a first and final format, we had another argument on that. That has all gone by the wayside now. The formats which were sent Excel and text to the aggregators we all agree that is what they are. But they are simply the same thing as the document or literary work which is a compilation which is created by the investment – whether it is for a business purpose or whether it is all about making money, it does not matter – it involves an original work in the sense that nobody else has done it; it is all their own work. They contribute to it as authors because they are the people who say this should go in, whether they write it in by hand; often they do and, thirdly, as it turns out it is an extraordinarily creative process, whatever one thinks of TV.
GUMMOW J: Creative, you said.
MR BANNON: I am sorry, your Honour?
GUMMOW J: What do you mean by creative?
MR BANNON: If I can respectfully say, that is a fair question.
GUMMOW J: This is copyright rhetoric language.
MR BANNON: It is, it undoubtedly is and perhaps if I just interpose here. What is interesting in reading Feist is they talk about a spark of creativity, but based on the context of, they say, you have to be original in the sense of originate – there is another sentence later in the judgment, I will probably come to this tomorrow morning briefly – or the creator. So in Feist the language has gone from creator to creativity. Now “creator” means the same as “originator”. Our jurisprudence, as accepted by this Court, is to be original. All you have to do is be the one who creates it in the sense of makes it.
“Creativity”, I accept, is a bad word to use to the extent the old authorities have used “skill” and “judgment”. In terms of “judgment” it holds a high degree of judgment to determine which program to be slotted in and at which time; massive amounts of judgment. We only need a tiny bit, but if you needed much, we have got it in bucket loads.
FRENCH CJ: Presumably that is focused largely on the prime time period, is it?
MR BANNON: Not necessarily, but certainly there is a lot of focus on that.
FRENCH CJ: It is outside that area you tend to find the strip programs and so forth.
MR BANNON: That is true.
GUMMOW J: One of the deficiencies, one of the absences in all this material is advertising relativities. We are not told anything about that. What the Chief Justice was just putting to you is critical, obviously. It is going to cost you more at seven o’clock than it is at 2.00 am.
MR BANNON: The evidence undoubtedly includes evidence to say one of the objects is to keep advertisers happy and get in revenue which is a combination of ratings and also a selection of programs.
GUMMOW J: There is nothing to tell us about how the rating system works, either - that is all assumed - in any detail.
MR BANNON: I will see what is precisely said about that.
GUMMOW J: These are things, I imagine, that would be absolutely central to the skill and awareness of these authors.
MR BANNON: Absolutely. I accept that. But, just because the very fact that channels do not – I will be coming to 422, paragraph 56 deals with the topic of ratings but can I just address the question of significance of prime time. As we all know, TV was not always a continuous medium. It would start at six and finish at midnight or perhaps even earlier in the early days, but you cannot be a competitive television station these days unless you are 24 hours and, yes, the people who watch during the night certainly it is not prime time but no station can afford to treat them with complete disrespect because that is still a revenue‑raising time and we do not wish – it is like a bank, you want to get revenue out of all your customers, and so do we.
The amount of money you can vest in a particular time obviously depends on the extent of your viewing audience, but it does not mean you not seeking to compete and seeking to attract audiences. Equally, morning shows. The particular form of advertising is going to be directed to the particular audience. Mid‑morning shows equally. But we do not, for example, suggest there is any proper basis of saying the mere fact that something is early in the morning means it is not still a significant part of our suite of programs because we would respectfully submit it is.
Could I then perhaps just say this. I think just before I go to the underlying evidence – before I leave that agreed fact document there is something else I just wish to mention. There is a part of it which appears at 4444. Paragraph 15 at the bottom of the page identifies the fact that we grant a licence to Foxtel. …..quite actually says that we grant a licence but the evidence is that - I can give that reference - so that the Foxtel IQ system which is a licensed recipient of our program guide and I think of the other stations as well enables recording but it is what is described as a closed system, you cannot copy it on a hard copy of your own which would enable export elsewhere in digital form, for example, over the Internet. You cannot copy our program using that IQ system and send it all around the world or send a program down to Melbourne - and one particular notorious program which was not supposed to be shown in Melbourne.
FRENCH CJ: This is because of this encryption?
MR BANNON: Because I think it is either encryption or they just do not have the hard disk to retain it. But, in any event, obviously there is a commercial interest that we have and other stations have in that. I think the evidence indicates, and I will try and find this, that Foxtel, although it has a fast forward system – you can skip over ads, you have to actually do it – their system offers – and this appears from AB 4 at 1646 – this is the document issued by IceTV seeking to raise money. At 1646 under the heading 3.2 “Business Overview” there is a description under “Business Overview”:
IceTV’s objective is to supply a subscription service to homes which allows Subscribers to better manage their Free-to-air television . . .
Media Centres and DVRs are new consumer devices that can bring modern home media together on one box with a single remote control. Depending on the Media Centre or DVR, users can watch and record television, play CDs and DVDs, view and burn content from digital and video cameras to DVD, load music into their iPod and even connect to the internet –
et cetera. Then over the next page, 1647, under the heading “The IceGuide”, 3.4:
IceTV’s primary service is the provision of an EPG, called the IceGuide. IceGuide is typically used with compatible Media Centres or set-top-box based DVRs . . . IceGuide liberates consumers from the programming schedules imposed on them by the Free-to-air television networks . . .
With IceGuide, Subscribers can schedule a week’s viewing in advance, enabling them to watch their favourite shows at a time that most suits them. This concept of ‘time-shifting’ . . . frees consumers from network schedules. A 30 second skip facility available on many Media Centres and DVRs means that viewers can watch their chosen programme avoiding other unwanted content.
In other words, if you use Ice, you can do two things which you cannot do with Foxtel. It is you can record and burn – and, of course, under the Copyright Act now you are entitled to do that as a home‑taper – but, of course, in the facility of getting that digital copy you can do with it what you will, you just cannot control this process that is being distributed. Secondly, and perhaps more importantly, these centres have the skip facility. Now, this is an automatic thing of fast‑forwarding.
So that when one talks about the commercial imperative or the commercial sense of these proceedings, if they are entitled to do what they have done in the past, this enables them to promote this as a service of means of viewing this, our programs, time‑shifted in a way you do not have to watch ads. A bit like the old debate that still rages in relation to musical downloads, everything should be free. It is a beautiful world, we should all be free. At the end of the day, we could all wish it was, but the cold hard facts are to have a commercial television station, there has to be advertising revenue. While it may be a beautiful thing to watch without ads, we have a commercial interest, which serves those people who do not do this facility, it obviously serves their own commercial purpose, in funding what we do by advertising revenue.
Again, if they have a system which says use our guide, we guarantee you about 70 per cent or maybe sometimes 60 per cent of the things will be right, we are not going to sell it to anybody. There is no dispute about copyright, that is why, we respectfully submit, the substantial part question inexorably must be answered – well, we would submit, inexorably must be answered in our favour, but I will come to that in due course.
Could I then identify the evidence relating to Mr Healy and others. Firstly, it appears in volume 1 commencing at page 415. At the foot of that page under the heading “NINE PROGRAM SCHEDULES” paragraph 21 refers to his responsibility; 22 is the selection:
My aim is to create a schedule for each day which will preset a program line‑up that will attract and maximize viewers ‑
Over the page, paragraph 23, he tries:
to provide some variety and balance . . . a cohesive weekly viewing schedule that will appeal to, attract and sustain large audiences –
Plainly, this is in circumstances where a schedule can be viewed by people.
GUMMOW J: Is there any indication as to how these operatives go about determining whether the aim is successful?
MR BANNON: As to?
GUMMOW J: How do they tell whether they are attracting and maximising viewers?
MR BANNON: Ratings.
GUMMOW J: I know, but is that system explained?
MR BANNON: That is referred to ‑ ‑ ‑
GUMMOW J: One might know from one’s past life that it is quite a complicated business.
MR BANNON: Quite.
HEYDON J: Page 423.
MR BANNON: Pages 422, 423, 58.
HEYDON J: Altering the program or dropping a program.
CRENNAN J: I think in agreed facts it is explained that some changes in programming are directly related to Mr Healy’s consideration of ratings.
MR BANNON: Yes; absolutely.
GUMMOW J: Is there any connection with late changes with this rating system – indicated in this material, I mean.
HAYNE J: Paragraph 60, 423, is it not? Six Feet Under moving.
FRENCH CJ: And 59.
MR BANNON: There is a general section on late changes too, somewhere, that I am just trying to identify. Pages 435, 436 – particularly 436, I think. Page 122 might be an example, and 123. If I could perhaps at an appropriate time, your Honours, go back to paragraph 24 at page 416, where he describes his objective in creating a program schedule for each day and each week is to achieve an arrangement that will have strong appeal. That schedule is, as I say, eo instanti, the same operational work as is distributed. In terms of satisfies classic tests of pure literary works in the sense of something which appeals, it is exactly what it is doing. It should not come as a surprise to your Honours that people will pick up the TV guide and look at it and see how good the programs look. Then in 26 he says that examples of the Nine program schedule for the period is produced; pages 1 to 66 – that is pages 440 and following. Again, that is another copy of the same document we have been referred to.
CRENNAN J: What about 27, the programming department in Sydney? Is that Mr Healy and Ms Wieland, is it?
MR BANNON: Yes. He is the head of programming. Back on 410A, he is the director of programming and he was certainly at Willoughby. In 6(d), for example, he was finalising for all States, in effect. In (f) he refers to managing staff and operations of the programming department at Nine, 412.
GUMMOW J: Do we see this in the Full Court judgment or are you in notice of contention territory, this analysis you are laying out so well before us.
MR BANNON: It is laid out by her Honour.
GUMMOW J: And the Full Court?
MR BANNON: They do the same thing, but not as extensively.
HEYDON J: Your argument really is that the schedules constituted the programming decisions and the identity between them, there is only one purpose. The Full Court in paragraph 102 says one object is this and another object is that. It is a different approach.
MR BANNON: In 102, it actually says, the third sentence:
In other words, Nine engaged in the so‑called preliminary work precisely in order to create the compilation in which it claims to have copyright.
GUMMOW J: It is this word “preliminary” that looks a bit odd, really.
MR BANNON: That is true, because it is, eo instanti, the same thing. It is not to the point we are not primarily expended – in fact, if one reads this judgment, the Full Court actually – and one discerns a touch of bafflement that you can say primarily for one versus the other. But they say it does not matter, in the sense they do not tackle full on the fact that her Honour said primarily versus subsidiary. They said it is sufficient on Ladbroke tests and similar authority, but it is one of the purposes. But that sentence I just read out reveals what their true finding of – and paragraph 111 on page 4645, the last sentence, at about 10:
The skill and labour expended by Nine were part of a single process leading to the creation of the copyright work as the written record of Nine’s programming decisions and the associated program information.
That finding is not challenged in this Court. It could not be challenged because it was effectively agreed in those agreed facts which I have taken your Honour to.
GUMMOW J: No, but 111 is under a heading “Conclusions on Substantiality”.
MR BANNON: Yes. But, your Honour, as I say – and I have not quite finished – going through the evidence, as I was saying, there is one and the same thing. I will come to this. Her Honour’s, if I may so, judgment got off to a false start in paragraph 1, the very part which my learned friend took your Honours to, where her Honour defined in the first sentence the Nine programming. That then translated into the last sentence, “Nine then records the Nine Programming”. The evidence did not support that. That sequential step did not exist. It would involve Lord Diplock’s genius conceptualising in his or her head the whole programming and then using new words to write it all down.
HEYDON J: But the Full Court laid a lot of stress on the importance of the title and the time, crucial and so on. Are you submitting that Mr Healy could not remember the title and the time for all the programs shown by Channel Nine at any particular time? A man like that would know without it being written down.
MR BANNON: I would submit that.
HEYDON J: So you say he would not know?
MR BANNON: To stand here and deliver a week’s scheduling – sorry perhaps I am answering - I am erecting too high an obstacle. In answer to your Honour’s question at a point in time ‑ ‑ ‑
HEYDON J: If you said to Mr Healy, “Look, tomorrow, what programs are on?” he would answer that faultlessly.
MR BANNON: I do not know the answer to that, your Honour, but I would expect it would be surprising if he made too many errors. Whether he got all the times right ‑ ‑ ‑
HEYDON J: He might get the odd child’s program wrong perhaps, but ‑ ‑ ‑
MR BANNON: Not Noddy, we have heard about it so many times. But I think the point I am making is perhaps a slightly different one, namely was there a two‑step process where there was a conceptualised unexpressed programming schedule for a week which was in anyone’s head, which was then mechanically simply written down? The evidence does not support that process and so therefore there was no two‑step process; it was one and the same process. I should add, your Honour, not ‑ ‑ ‑
HEYDON J: But you are only dealing with part of the work. The other parts of the work were mechanical - it is unfair to them to say so to Mr Holman and so on – were, as part of a much less skilful and important type of activity, compiled.
MR BANNON: I accept that. The key – we accept that is our case, that the synopses and the other stuff they follow automatically. On the odd occasion it may be that somebody will write a synopsis, a new synopsis, and obviously on that occasion that may involve some work, but for the purposes of the real issues in the case, that is neither here nor there. But I accept what your Honour says.
The point of that is notwithstanding her Honour did that, we submit that encapsulation infected a process of reasoning which – occur with different amplitudes, various times in the judgment there are times when the skill and effort related to the creation of the programming gets emphasis and other times it gets de‑emphasised. We ultimately respectfully submit that at the end of the day the Full Court was right in assessing her Honour’s analysis as de‑emphasising the skill and labour in relation to the selection of programs and times, but notwithstanding what I have described, hopefully not unfairly, as a de-emphasis of it, her Honour did find that the skill and labour was directed to the creation of the literary work and did so, we respectfully submit, at least five times.
That appears – we have referred to this in our written outline at 35, but can I just take your Honours to the parts of the judgment which we say – not 35, I should say paragraph 6 of our written outline. The first such example, we respectfully submit, is at paragraph 29 of the judgment, which is at 4512, at about line 39:
The preparatory skill and labour to bring about the Weekly Schedule includes the skill and labour of the selection of the programs, their placement and ordering in the Nine Programming and the adjustment of the programs to allow for inclusion of special events –
That is a finding of fact. That is completely consistent with the evidence. The next reference is at paragraph 121 which is at 4539:
To the extent that Nine’s employees expend skill and labour in connection with Nine’s television programming activities, its relevance is as preparatory skill and labour expended in the creation of the Weekly Schedule.
Another finding of fact. Paragraph 176 at page 4560:
Nine’s skill and labour of the Weekly Schedule derives not only from the selection and ordering of programs for broadcast but also in the work of Ms Wieland and the Nine staff who collect and prepare information for insertion into the Weekly Schedule –
So the “not only” means it includes. Next, paragraph 208 at 4571 at about line 22. There is the sentence:
That information is collated, however, not solely for the purpose of creating a literary work, the Weekly Schedule. The main purpose –
is X, but obviously that first sentence, “not solely” includes partly. Then, lastly, 4573 in paragraph 211, the fourth last bullet point, at about line 30:
The skill and labour engaged in by Nine for the creation of the time and title information is skill and labour that is expended for the purposes of broadcasting and as preparatory skill and labour for the purposes of the compilation.
The skill and labour expended and the originality of the Weekly Schedule relate not only to the information contained in that schedule but also to the arrangement and form –
So we count five times her Honour made a finding, the effect of which was a purpose at least of the work was the creation of the copyright work. That is why paragraph 103 of the Full Court judgment says – her Honour, in effect, although said it was not the primary purpose said it was a purpose. I think your Honour Justice Heydon asked my learned friend, was there a finding by her Honour to that effect? We say five times so.
CRENNAN J: Well, at 4571 at about where you were looking at paragraph 208, her Honour says the, “information is collated, however, not solely for the purpose” and so on. But then in her next sentence says:
Having said that, it is also the case that the creation of the Weekly Schedule involves sufficient skill and labour so as to be an original literary work –
That seems to be focusing on the quite separate perhaps skill and labour in relation to the preparation of the material for the compilation, that is to say, the material for which the information is presented, a distinction which, as I mentioned, Lord Evershed makes very clearly in the original Ladbroke Case.
MR BANNON: We respectfully submit that having said that, he is qualifying the main purpose. In other words, although the main purpose her Honour finds is programming decisions, having said that, it is also the case that the creation involves as to be an original literary work. That is harking back to the sentence before.
CRENNAN J: Well, just one possibility is it goes to the further skill and labour in relation to making the compilation. That is the point I was trying to get at.
MR BANNON: There is no doubt my learned friend put forcefully, and her Honour accepted, that there was skill and labour in something called “the form” of the weekly schedule. We are going to address that. But that was in fact relied upon by my learned friend and accepted by her Honour as a factor diminishing our capacity to achieve a conclusion of infringement.
CRENNAN J: If you look at about line 40, still on 4571, her Honour says:
The question is not whether Ice took the skill and labour which is expended in programming decisions but whether it took the skill and labour of creating the copyright work.
That is where her Honour has a different approach from that of the Full Court in paragraphs 102 to 109, I think from ‑ ‑ ‑
MR BANNON: And this is what I would regard as the de‑emphasis part. But it cannot detract from the parts in the same paragraph and the multiple references before which, we submit, support the only factual conclusion available, namely that the skill and labour, albeit is a programming decision, is eo instanti the creation of the copyright work. You just cannot divorce the two. If your Honour’s construction of that paragraph is correct, and I am not suggesting otherwise, that really just suggests there is an inconsistency within the judgment, and we have respectfully ‑ ‑ ‑
CRENNAN J: Not really. I would think it is an emphasis in her Honour’s decision which affects her finding about substantiality.
MR BANNON: That is the way we put it too, if I may say so, namely that we say her Honour de‑emphasises the skill and labour in the creation of the work which is related to the selection of time and title and everything which flows with it.
But what her Honour was persuaded by was the suggested skill and labour in the format of the table. Let it be assumed that one has skill and labour both in determining what material should be in that and the order it should be, but there is additional skill and labour in setting out a particular format. We pose this question rhetorically. If you apply two sets of skill and labour to a document, do you actually end up with a lesser copyright than if you do not add a form?
Let it be assumed, for example, that we apply skill and labour as to the content for the reasons we indicated but did nothing about the form, put it in tacking type, I do not know, we did not have fancy lines around it, we had ugly spacing, whatever, let it be assumed we did that. Does that person have a lesser copyright ‑ ‑ ‑
CRENNAN J: No, why would it not be a skill and labour in relation to the concept and the ideas and the business decisions in relation to what will attract advertising revenue? So the placing of the titles, which, of course, belong to people in LA who have given a title to the movie and so forth in some instances, the giving of a time to the title is not really to do with the material form. That is what her Honour is picking up on, is it not, when she is talking about what she is doing if she is looking at the skill and labour of creating a copyright work as distinct from the business effort of working out what is the most efficacious way from a business investment point of view of presenting programs and the order in which they are presented and so on? I mean, it is not hard to understand that a great deal of skill and labour goes into Mr Healy’s efforts in relation to that.
MR BANNON: We submit that you start with the proposition that is – this is to the question of looking at the sections of the statute – is there a literary work here? Yes, there is a literary work, that is admitted. We have described it as a compilation. You could have arguments about that because I think, as Justice Hayne says, to the extent that compilation may – I am not sure it does, but it is conceivable compilation could exclude somebody writing an original bit as well. Whatever be it, the absolute correct characterisation certainly compiles no names of episodes and figures on the time clock which are known and associates them in a correlation, or a collocation, and it may also add a bit of original commentary as well from time to time. It does not stop it being a literary work. It may mean it is some sort of hybrid of a compilation plus something else, but for present purposes it does not matter.
That is step one; do we have a literary work? Is it original? This Court has said “original” simply means it is your own work. It does not say you have to have a creative spark. There is a debate at the Bar table as to precisely what a compilation involves, but ‑ ‑ ‑
CRENNAN J: Well, the starting point always is a lot of the information in a compilation will not be original. It would be rather ordinary, or quotidian or whatever time of the day that something is going to be shown. So, really, the reference to labour and skill is connected to a finding of originality in a compilation which, in its individual parts, may be a particular selection of arrangement of a whole lot of material, none of which has any originality. So the labour and skill is in relation to the material form in respect of which the information is presented, rather than labour and skill in concepts and ideas that are related to business matters.
MR BANNON: But material form does not refer to form. Material form refers to ‑ ‑ ‑
CRENNAN J: Expression of idea, if you like, as distinct from the idea per se.
MR BANNON: Yes. One goes back to Justice Peterson in Cambridge University. Your Honour says you do not get copyright in ideas but you get it in the expression of it but it does not have to have a novel form. In other words, an author can – a copyright is infringed, for example, gets copyright whether he uses good handwriting or bad handwriting, nice typeface or not nice typeface, and it is ‑ ‑ ‑
CRENNAN J: Just talking about, then, the expression of the idea versus the idea simpliciter.
MR BANNON: Yes. The expression of the idea here is ‑ ‑ ‑
CRENNAN J: What is it about what Mr Healy’s skill and labour is directed to that relates to the expression of an idea or relates to the compilation?
MR BANNON: The first and only time it reduced to a material form is his – it is an idea, creative effort, judgment, that out of zillions of possibilities or many, many possibilities, we choose to show this program on this particular day at this particular time before and after a number of other programs. That is actually a literary work, it is a compilation. It only exists because someone has made that selection. That collocation gives it originality. There is no other skill and labour involved. There is nothing – I was going to take your Honours to this – there is nothing about the form of this. We just set this out in a chronological order. There is no fancy typeface. There are no columns like Ladbroke. One cannot conceive of any skill and labour other than the decision to make these collocations.
HEYDON J: There are Mr Healy’s first two columns and then there are the next three columns that are worked on mechanically by other people that Mr Healy has nothing to do with.
MR BANNON: Yes, I have consistently left that out and I accept ‑ ‑ ‑
HEYDON J: I mean, your arguments might well be powerful if the work you were seeking to claim protection for was just the first two columns. I know you have alleged other things that had not worked, but 9A alleges five columns, seven days.
MR BANNON: But all that, we respectfully submit, would result in is potentially at least an argument that we have not identified all the joint authors.
HEYDON J: But is the problem not that because you have broader copyright than what you would prefer, to take a substantial part of it is a harder thing to do?
MR BANNON: Quite, and we accept that. I am happy to deal with that. We do address that and we do that. We live with the fact that we have got other parts of this work. We are obviously completely content to fight on the front that we have to face up to the fact that the parts taken do not include the whole part. But, indeed, what your Honour has indicated there is the very fact that not much skill and labour attached to adding the other bits to the parts which try skill and labour. Let us assume for argument’s sake that the effort of adding those bits is skill and labour which entitles joint authorship to those individuals as well, all it means is it is still our copyright. That was not a part of the issue. But, in a sense, it may reinforce and help our argument as to what is the substantial part because the additional bits do not involve much skill and labour. In a sense, we embrace what your Honour says for perhaps the reason we see it; whether or not it is so put forward.
HEYDON J: The expression of the first two columns is not the hard thing. The thinking up of the first two columns is the hard thing. That is where a lifetime’s judgment and experience of Mr Healy comes into it.
MR BANNON: Quite. We accept that. But this is the first and only expression of it, then we get copyright.
HEYDON J: I am not sure about that. There was a lot of writing down before we got to page 514.
MR BANNON: Well, this is not a point which was taken ever before the trial, but leave that be aside ‑ ‑ ‑
HEYDON J: It does not seem to be alone.
MR BANNON: - - - your Honour is really directing to a question, perhaps an enormously important question, of copyright generally, is the circumstance where somebody uses multiple bits of paper with the intention of producing a particular work. There is nothing which remotely resembles what is intended as the final work into existence before the final schedule in the database.
FRENCH CJ: Once you settled on form, time and title determine everything except the content of the synopsis, is that right?
MR BANNON: Yes. I mean, I know that there can be sometimes resistance to this proposition, but there are analogies in any literary work. Compilations are not second citizens. It depends how much skill and labour goes into them. But you could have multiple authors of a book, for example, and between them they may decide “you write chapter 1, you write chapter 2, you write chapter 3” and they will each do their own scribble on pieces of paper, maybe they will be half done. No one would suggest that what they do which is directed to creating a final work is itself a copyright work because it is intended to be consolidated. In the case of Mr Healy and Ms Wieland, to the extent they work independently, it is only with the intention of the thing being consolidated, a consolidation process which is done in an amanuensis style fashion by Mr Holman.
If copyright cases were to be run on the basis, for example, as a musical work and the modern day equivalent of Mozart is written down on a few scraps of paper, various bars of a musical score, and he leaves it to the technically able but musically ungifted person to put it altogether and write it out in nice notation, says, deal with this, who is the author? Does it mean that it does not have copyright because all that person is doing is collecting the pieces of paper of the genius and putting them into one form?
When the Beatles come up with a song in session, not one of them can read music, let alone write it, and it is conceived with the collaboration maybe over many hours, maybe over many weeks, let us try that song again, they nail it, then they say to Sir George Martin, “George, can you fix that, write it out, we cannot write music?” Or maybe the Beatles have – Revolution, allegedly John Lennon wrote a couple of the verses on a tablecloth and it had to be taken with him, in a restaurant, and he brought with it, scraps like that.
The process of dissecting or fragmenting the development of a copyright work, we submit, is contrary to historical analysis, but it also, we respectfully submit, would not address what is sought to be protected, and what is sought to be protected is to identify what is the literary work in this case. So you ask, what is a literary work? What was intended to be created? In this case what was intended to be created was a weekly schedule.
Albeit people may have been doing it on draft pieces of paper, et cetera, bits and pieces which were always intended to be combined, you do not lose copyright in that intended final work because you may have had bits of it incomplete, which ultimately some of it gets changed, which can later be described on an analysis historically saying, “But look at this, but over here you had already written that down there, I can find that over here. I am sorry, that is not copyright”. That would be a process which we say which would be antithetical to a proper analysis of the Act, it would be antithetical to the interests of protecting original work. It is contrary to Ladbrokes and the cases which precede it and, we submit, it is not an approach which would be accepted.
HEYDON J: Can I ask you a slightly different question. The value of the work done before the compilation, does one include within that Mr Healy’s activities in deciding what to purchase and negotiating the purchase and dealing with owners of material? Do you limit your attention merely to his thinking in Sydney as he surveys a range of old material and material that has just been acquired and other rights that may be available, or do you extend it to the whole of his yearly activities?
MR BANNON: Yes. I do not have a satisfactory answer to that question. I do not think I can categorically say yes or no. One can see the problem with, for example – as I say this, it is hard to see that it can be so regarded, namely, a commercial negotiation with somebody in Los Angeles and you have got a lawyer there, et cetera, and you are sitting across a table and what is being negotiated is a contract. One would hardly think that what is being negotiated is part of a step in necessarily the making of a copyright work. It is probably the farthest thing from their minds. So I think in that, for example, disengaged analysis, I would say no.
One could conceive of a situation where, for example, Channel Nine says, “We are getting belted in the ratings by Channel Seven. They have got a home renovation program. We do not have one. We have got to get one in there at 7 o’clock on Sunday night. Let’s find somebody to put it in”. That process of making the decision to say “Let’s go and find a home renovation program”, that process, we would submit, would be part of it. The consequential part of actually doing the negotiation probably is not.
CRENNAN J: You mean, let us find a home renovation program as distinct from the home renovation program that is ultimately found? I am just trying to understand how far a monopoly goes in relation to the ideas which, as you are putting it, get first translated into a – a first expression of the ideas, if you like.
MR BANNON: It is not a monopoly, your Honour.
GUMMOW J: We have to look at section 32, do we not, and ask ourselves – if it is an unpublished work, we ask ourselves when the work was made;, if it is a published work, we ask when it was first published.
MR BANNON: Yes. That does focus one back to ‑ ‑ ‑
GUMMOW J: The notion of publication has an idea of supply of copies. If it is unpublished you ask when it was first made. There is no terror in the prospect you were holding out to Justice Heydon, it seems to me, about scraps of paper and so on. You just ask when was it first made. You can have a debate about it and the judge will tell you.
CRENNAN J: It is not a monopoly, but it is exclusive right to reproduce, Mr Bannon. So you need to understand in relation to this idea that you have an exclusive right to reproduce a compilation because the labour and skill that involve the business concepts that are first translated into the compilation need to be taken into account.
MR BANNON: Perhaps, your Honours Justice Crennan and Justice Heydon, I think that there is a limit to how far back you can go in the process. I would accept that. The conception that a particular program should be on a particular day is something which is much closer to the time than some negotiation.
GUMMOW J: Are these said to be published or unpublished works? Published works, surely?
MR BANNON: Published.
CRENNAN J: The first time the weekly schedules go out to the aggregate.
MR BANNON: Yes.
GUMMOW J: When were they first published? What step was the first publication?
MR BANNON: When they went to the aggregates.
GUMMOW J: I would have thought so.
FRENCH CJ: So when you speak of selection and arrangement to make the compilation, focusing on selection, selection is from the stock you have or selection goes – selection does not go back as far as the decision to go for a particular program?
MR BANNON: It becomes more difficult the further back one goes, I accept that.
FRENCH CJ: Yes.
HAYNE J: The process is described in paragraph 94 at page 431 where the process is said to go back a very long way because the programming is happening a long way in advance, six to nine months forward.
MR BANNON: That could include that process, provided one had a particular program in mind. Perhaps I could just indicate where I am heading. I had got part way through the affidavit of Mr Healy and perhaps I could just give these references. At 418 I was just going to emphasise what is in paragraphs 33 to 36. At the bottom of 419, 42; 429, 86, 87 and 88; at the bottom of that page at paragraph 90, all the way through it and including 96 at 431; 105 is the entry process; 110 on 434; and in particular 113 at the bottom of 434 and 435, the effect of which is to say what is sent out is the very thing which is the product of the selection and judgments to which reference has been made, so that there is no factual difference between the work which constitutes the work which is distributed and the work which is a reflection or a constitution of the programming decisions which are made.
My learned friend cross‑examined Mr Healy effectively to the same effect, page 83, line 42 and over the whole of 84, the effect of which is the purpose of all the work done is to create a guide, a key purpose of which is it to be published to attract viewers. So that the argument no one was cross‑examined to the effect to say what you were intending to create was some intermediate piece of paper and that’s what you were – and that was an object in itself. Your object in everything you did was to create this weekly schedule, and that was the thing which you wanted other people to see and attract viewers. That is why I say it is hard to countenance an argument now to suggest on a factual basis that there is some intermediate, at best, drafted incomplete work which was the true copyright work.
If the issue of course had been raised squarely, which it was not, one could have pleaded in the alternative those works, but at the end of the day, it is the incorrect approach anyway because, really, as this Court said in the Panel Case, in trying to analyse what a broadcast was, you effectively look at what was intended to be conveyed to the public, which was not individual images but a program consisting of a start and a finish. That was intended to be the finished product, and that same approach would apply here and has been applied in a number of other cases, reference to which I can give your Honours tomorrow.
FRENCH CJ: Mr Bannon, roughly how much longer do you think you will be tomorrow:
MR BANNON: A little while, if I am permitted. There were a number of cases I was going to take your Honours to, even if I do it fairly briefly by referring to particular parts, and then obviously a significant – I was going to go briefly to Feist, to Desktop. I was also going to go perhaps a little ‑ ‑ ‑
FRENCH CJ: I am not wanting to preclude you from doing any of those things.
MR BANNON: No. Perhaps another two hours.
FRENCH CJ: We will resume hearing this matter at 10 o’clock tomorrow morning.
MR BANNON: Thank you, your Honour.
FRENCH CJ: The Court will adjourn to 9.15 am tomorrow morning.
AT 4.20 PM THE MATTER WAS ADJOURNED
UNTIL FRIDAY, 17 OCTOBER 2008
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