IceTV Pty Ltd & Anor v Nine Network Australia Pty Limited

[2008] HCATrans 308

[2008] HCATrans 308

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S231 of 2008

B e t w e e n -

ICETV PTY LTD

First Applicant

ICETV HOLDINGS LIMITED

Second Applicant

and

NINE NETWORK AUSTRALIA PTY LIMITED

Respondent

Application for special leave to appeal

GUMMOW J
KIRBY J
KIEFEL J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON TUESDAY, 26 AUGUST 2008, AT 10.16 AM

Copyright in the High Court of Australia

MR J.M. IRELAND, QC:   May it please the Court, I appear with my learned friends, MR S.C.G. BURLEY, SC and MR J.S. COOKE, on behalf of the applicant.  (instructed by Bartier Perry)

MR A.J.L. BANNON, SC:   May it please the Court, I appear with my learned friend, MR J.M. HENNESSY, for the respondent  (instructed by Gilbert & Tobin Lawyers)

GUMMOW J:   Yes, Mr Bannon, we will hear from you first.  Are we right in thinking that there is a recent further judgment on some costs questions in this litigation on 20 August?

MR BANNON:   Yes, there is a recent further judgment in relation to a matter as to whether something was left for remitter for the trial judge, but it does not affect any of the issues which are before this Court.

GUMMOW J:   No.  Would the orders in any way be caught up in this Court on a grant of special leave?

MR BANNON:   If there was a grant of special leave, the orders could be dealt with on the papers readily.

GUMMOW J:   All right.  I will not say any more about it now.  Yes, go on.

MR BANNON:   Your Honours, Ice conceded at the trial, correctly, that the originality of Nine’s weekly schedules lay, at least in part, in the skill and labour invested in the decision to screen particular programs at particular times.  That is something which is recorded in the Full Court judgment.  The Full Court found that the skill and labour which had been invested in the determination of which programs would screen at which times was relevant to the originality of the weekly schedules.  That finding is consistent with a line of authority which was reflected in the House of Lords decision in Ladbroke.  It has been consistently applied ‑ ‑ ‑

GUMMOW J:   Yes, on the question of Ladbroke, actually, the House of Lords endorsed the majority of the Court of Appeal but Lord Diplock dissented, did he not?

MR BANNON:   In the Court of Appeal?

GUMMOW J:   Yes.

MR BANNON:   Yes, I think that might be right.

GUMMOW J:   One can unearth it in [1980] RPC 539. The Court of Appeal had reversed Mr Justice Lloyd Jacob, did they not?

MR BANNON:   I think that is right, your Honour, yes.

GUMMOW J:   What I am putting to you is that do not think that in this Court William Hill is the end of a rainbow.

MR BANNON:   No.  It depends on which issue it is which the applicant seeks to take up to the Court, but to the extent the issue as to whether or not preparatory work which is relevant to the formulation of a literary work is something which can invest in literary work originality, we submit that was a principle which was confirmed in Ladbroke but has been consistently applied in cases both before and after.

GUMMOW J:   There is real question of what this notion of originality means in this “electronic age”, is there not?

MR BANNON:   We submit no issues as to electronics comes up in this case because the exercise which was engaged in by the Nine network staff was to prepare a document, which was the Nine weekly schedule, which was a step by step process, as a result of consideration, discussion, working out what statutory obligations had to complied with, what program would be regarded as entertaining for particular ranges of viewers and/or ultimately obtaining advertising revenue.  That process ultimately resulted in the preparation of a written document, namely, the weekly schedule, which was available, true it was, in computer format as well, but ultimately it was a standard fare literary work in the form of a compilation.

GUMMOW J:   I am just looking at the application book at page 128 under the heading “Issues”.

MR BANNON:   Yes.

GUMMOW J:   That is an accurate statement, is it not, of the way the Full Court saw it?  As I read the draft notice of appeal, Mr Ireland complains about his client’s treatment on both issues.

MR BANNON:   This is at paragraph 83?

GUMMOW J:   Reproduction of a substantial part.

MR BANNON:   Quite so.

GUMMOW J:   And so‑called causal link.

MR BANNON:   Yes.

GUMMOW J:   There is not a word about causal link as such in the Act, is there?

MR BANNON:   No.

GUMMOW J:   Some gloss on the word “reproduction”, is it not?

MR BANNON:   Well, it has always been the position that reproduction requires two elements.  One is access to the copyright work and, secondly, the outcome must in fact be a substantial reproduction.

GUMMOW J:   Exactly.

MR BANNON:   But in terms of whether the electronic world plays a role in this case, we respectfully submit, no, in this sense.  As I say, the substantial amount of work went into the production of what was a compilation which involved fundamentally and critically the association of particular words, namely, the title of the program with a particular time.

There is much emphasis in our friend’s submissions to say that this is all about form.  It is not about form in the sense of moving things around in a way which presents in a particular way.  The substance of the matter is the expression in a material form of the product of the work which went into it is the association of a particular time with a particular program.  Now, we submit that is original work.  It is not the collection of known facts.  It is a creation of something which fits clearly the definition of literary work, being a compilation.

The next question is, the IceTV Guide, did that involve or contain a substantial reproduction of that work?  On the findings, for every day they took more than half the time and title information, that was the critical information.  It satisfies the test endorsed by this Court in Data Access, adopting Sir Anthony Mason’s expression of the test in Autodesk Inc v Dyason (No. 2) which involves questions of importance, that is, importance of the part taken to be original work.

GUMMOW J:   Yes, now, what does importance mean in this particular setting?

MR BANNON:   Well, the combination of importance qualified by the sense of originality.  What we do know in this case is the parts which were taken were the very parts, as the Full Court found, which Ice could not predict.  In other words, what Ice could predict in this draft schedule it would produce were the bits which had not changed from week to week.  The only bits they copied were the bits they could not predict.  The bits they could not predict were the parts which reflected changes to the ongoing schedule.  That appears at 139 of the application book, paragraph 115.  In other words, the only bits they took were the bits they could not predict.  They were the very bits which were invested with the highest degree of originality.

GUMMOW J:   What did Justice Bennett say on this point you are now making to us?

MR BANNON:   Her Honour simply said it was a question of slivers, they were too small.  Well, as the Full Court correctly observed, we respectfully submit, the learned trial judge either discounted or put no account of the skill and labour invested in the association of particular times with particular titles, treating that as preparatory work and work not directed to the production of copyright work.

GUMMOW J:   Yes, what is wrong with that?

MR BANNON:   Well, that would involve, for example, an author of a book doing drafts, scraps of paper all around the house, but the ultimate object is to produce a copyright work which is a book, but has to defend the case, no, your book is simply a mechanical ‑ ‑ ‑

GUMMOW J:   This is not a book, Mr Bannon.

MR BANNON:   No, that is so, but it is a literary work.

GUMMOW J:   It is a much humbler form of enterprise, from a view of ascetics at any rate.  That has always been the elephant in the room in compilation cases, has it not, from the time of Cramp v Smythson in the 1940s.

MR BANNON:   But as Justice Whitford confirmed in the case we have referred to, Time Out, this is not a collection of known facts.  This is more like a ‑ ‑ ‑

GUMMOW J:   In every compilation case I have ever been involved in people always start using examples of books.  It generates a psychological response.

MR BANNON:   One tries to speak to authors.

GUMMOW J:   I am not criticising you for doing it.

MR BANNON:   In The Panel Case in the High Court dealing with the question of television broadcast and working out what the broadcast was, the Court said, what is the intended output?  What is the intended product, in other words, the basis as to whether it was all day or one frame?  The Court said, looking at the television programs, it is designed and packaged to be viewed as a particular program.  Now, that is a test which applies across all copyright works.  When one asks the question here from the Channel Nine point of view, what was their intention in undertaking all this preliminary work, it was to produce a weekly schedule which was to be sent to the aggregators, but that was a final copyright work from their point of view when it left their premises.

So, in those circumstances, it is the nature of work, as we say, whether it describes as a compilation or not, is still necessarily a literary work which is invested with a high degree of skill and labour.  I mean, I know it is not a ‑ ‑ ‑

GUMMOW J:   Well, a high degree of expense maybe.

MR BANNON:   Well, but it is much more than that, your Honour, because it is like a catalogue.  It is the key.  This is the selling guide of the station. 

GUMMOW J:   No doubt about that.  No doubt about the commercial importance of it, that is one thing.

MR BANNON:   But if they do not get the menu right, the whole station business does not work and the menu, be it the same as the sales catalogue, is reflected in the program guide.  So all the work, as the Full Court found ‑ ‑ ‑

GUMMOW J:   But if they are looking at the commercial realities, one thing that goes on, is it not, is the desire to keep to yourself fairly closely precise details of timing so that your competitors, as it were, could be caught napping as to their own programming at the same timeslot and you could have a bit of a coup.

MR BANNON:   No, that does not work.  There is about two weeks out that the program guides were sent to aggregators.  There were late changes.

GUMMOW J:   Yes, that is what I mean.

MR BANNON:   But, as the Full Court found, if one pulled out the late changes from the aggregated guide, it made no difference to the conclusion of substantial reproduction because the late changes were so minimal.

GUMMOW J:   They might be commercially significant, that is what I am putting to you.

MR BANNON:   One can fully accept that, but on the analysis of the facts of this case in terms of a vehicle it will not be determined like that because the Full Court found an analysis of late changes were so insignificant that it did not detract from, as I say, the almost 50 per cent taking per day of time and title information.

GUMMOW J:   What is the significance of any of the reasoning in the United States in Feist for this case?

MR BANNON:   We submit none because again that is a case which is related to commonplace information which is identifiable and can be drawn together.  This is the original creation of, in effect, a game plan, a menu for a restaurant, a catalogue.  This is at its purest form an original creation and to describe it and dismiss it as a compilation ‑ ‑ ‑

GUMMOW J:   I realise there is common ground here that the weekly schedules are a literary work, but would that be necessarily so in the United States in the light of Feist or other cases they may have?

MR BANNON:   I cannot answer that categorically, but we would submit it is because, as I say, it is not a copy of known information, it is not a pulling together.

GUMMOW J:   I suppose what I am putting to you is, maybe some of the considerations that underpin the approach in Feist conceivably could underpin an approach to the notion of substantiality at the later stage in our law.

MR BANNON:   Well, your Honour, for the reasons I have indicated, we would submit not.  As I say, there is no public interest defence of copyright.  There are a myriad of fair dealing defences, none of which have been sought to have been taken advantage of.  There is no argument about implied licence.  To the extent that there is a stepping back to say, well, this is your TV program, how can you stop somebody else using it, we submit to the extent it is – as we know, copyright is a pure creature of a statute – to the extent that there is a substantial reproduction, that is the end of it.  As I say, there are specific defences which deal with that.  It is not a case to be concerned one way or another as to the breadth or the consequences of this.  It is a pure question of statutory construction.

GUMMOW J:   Yes, you may well be right, Mr Bannon, ultimately, but one is just a little concerned that Justice Bennett in a long and careful judgment came to an opposite result.

MR BANNON:   But informed, we respectfully submit, as confirmed by the Full Court, by incorrect considerations.  Justice Bennett came to the same result as we sought on indirect copying, it was just a question of substantiality.  As the Full Court said, one of the errors her Honour, we respectfully submit, made was to say, to test whether it is a substantial part is – we have to show that the synopses were more important than the time and title and, we submit, with the greatest respect, your Honour, that is clearly wrong.  In other words, her Honour was not assessing the matter by reference to Feist type of considerations. 

The other matter which the Full Court identified as an error was her Honour’s dismissal of the preparatory work and we say that, apart from being the longstanding authority as a matter of fact here, all this work was directed to the production of this and that is the time and title information.  The most original part was the parts they took.  It is crucial, it is important, it satisfies the tests long held in this Court and, with the greatest respect, this is a very, very clear case of copyright infringement.

The fact that there was a trial judge who came to a different conclusion once her Honour’s reasons, with the greatest respect, are analysed, we submit that it should not deter your Honours from viewing the matter as a clear case where established principles have applied to clear facts ‑ ‑ ‑

GUMMOW J:   Now, there is some statement of principle by Lord Hoffman, is there not, in a House of Lord case? 

MR BANNON:   Yes, that has been referred to by my learned friends.

GUMMOW J:   I think it is in the judgment.  Yes, at page 131.

MR BANNON:   That is a statement made in the context of published edition copyright, or the UK equivalent, typographical arrangement.

GUMMOW J:   Yes.

MR BANNON:   Picking up what was said by Justice Sackville in Nationwide News.

GUMMOW J:   What was that case about?

MR BANNON:   Again, that was about published edition copyright.

GUMMOW J:   Yes.

MR BANNON:   The point made by Justice Sackville and picked up by the House of Lords was that the interest to be protected must be looked at in determining questions of substantial reproduction.

GUMMOW J:   Yes, now, what does that phrase mean?

MR BANNON:   Effectively that says you go back and look at what is the copyright being protected.  What is the nature of the copyright?  The nature of the copyright and published edition copyright is not the text or the words but the form in which they are finally printed.  The Court of Appeal in the UK case had said in a fight about whether there had been infringement of the published edition copyright in a newspaper there was a substantial reproduction if there is a whole copy of cut out bits of an article.  The House of Lords said, no, that is the wrong approach because typographical arrangement is limited to the way those articles appeared in relation to each other on a particular page and once you cut out an individual article you destroyed that relationship. 

So once one considered the nature of the copyright it was quite clear in that case one way or another whether or not there had been an infringement.  But that does not advance the case.  The Full Court here was correct in relying on it.  One looks at the nature of the copyright being protected here, literary copyright which requires originality.  We had the originality, the quality test is satisfied.

GUMMOW J:   The reason I raised it with you is in the United States there is a body of quite astute analysis of what they say is rhetoric and reality in copyright law and we talk about interest protected may be an illustration of what they are talking about.

MR BANNON:   Your Honours, we say this is a very plain vanilla case.  We look at what the High Court has said about originality and quality.  We say, here are some words, this is not altered copy.  One of the issues which can arise is so‑called altered copy, in other words, you see some words and you change them a little bit.  This is not altered copy, this satisfies a plain vanilla test.  There is nothing new about this.  This is not an appropriate vehicle for consideration of any wider principle.

GUMMOW J:   Thank you.  Yes, Mr Ireland.

MR IRELAND:   Your Honour, the nature of a compilation which is a subset of literary works in the section 10 definition under the Copyright Act is a creature of its own.  We submit that what is protected, ultimately, is a decision on the part of an author to put together a number of elements.

GUMMOW J:   The very word “author”, you see, is part of the copyright rhetoric, is it not?

MR IRELAND:   Your Honour, there has to be an author to be a work.

GUMMOW J:   I know the Act uses the term, but it has certain emotive baggage with it.

MR IRELAND:   Yes, it does.  There was mention of the published edition copyright section 92.  We say that the compilation copyright is much akin to that.  One gets a number of constituents or integers and puts them together in a particular way.  It is that framework, or that layout in the end, or that complete group of choices that has, I think as your Honour remarked in argument in the Data Access, a connection that gives the copyright compilation its assets.  What has happened here, the copyright compilation is observable in this case in the application book, at least in extract, at page 92 in the primary judge’s decision.  What you see there is annexure C on the left‑hand page which is one of 14 pages of the work.

GUMMOW J:   “Make Way for Noddy”.

MR IRELAND:   Yes, “Make Way for Noddy”, your Honour, and then under that “Little Red Tractor” if you are still awake.  Annexure D is on the right‑hand page in another form.  That is the sort of schedule that was put together.  You can see there is some narrative, which is peculiar to the respondents.  What was taken were some of the times and titles.  So six o’clock “Make Way for Noddy” might have been one of those.  I am not saying it was.  In some of those 14 times a document of that length were taken.

The Full Court says time and title information is very important because if you know that you know everything.  We say that that compilation document has a number of features which are put together as a commercial product on behalf of Channel Nine to be integrated with other television stations in what is described as an aggregated guide.  That is done for two purposes; one for the channel to get out to the public in the form of usually now internet services a useful statement of what is coming up and, secondly, to be competitive because the aggregators have a function of putting all this together.  So the Channel Nine material goes into a much larger product which appears comparatively on the network.  What the Full Court has done is to neglect the essence of the compilation, attribute overwhelming significance to those first two items taken in some particular cases.

GUMMOW J:   The first two items being?

MR IRELAND:   That is the time and the title, the first two columns.  That is betrayed, we would respectfully suggest, in at least three places in the Full Court’s judgment.  At application book 140, paragraph 117, which commences at about line 40, the Full Court says:

The primary Judge also relied on her finding that Ice did not take the arrangement or form of Nine’s time and title information.  This aspect of her Honour’s reasoning, embraced by Ice, requires a somewhat more detailed response.

Then these words –

We assume, for this purpose, that some similarity in arrangement or form must be shown to establish that Ice reproduced a substantial part of Nine’s copyright work ‑

If there was any doubt – and this is the first time at which doubt is expressed – that some similarity in arrangement or form must exist, then that is the beginnings of real error, we would say.

GUMMOW J:   I just wonder what is the baggage of this phrase “preparatory work”.  There is a commercial decision to be made as to what programs, I guess, in children’s television, if one can use that expression, to go on at these times in the morning. 

MR IRELAND:   I mean, it goes wider than that.  They say, we have our television day, we plan it ahead, we are going to have in the morning the television programs, we are going to have the Today show at six o’clock – although that has gone, I think.  We are going to have the six o’clock news at night as a sort of boilerplate event.  All of these things then work together.  There is a fascinating series in the afternoons which have run to thousands of episodes and which people still apparently watch.  It is the structure of the day with the order of events.

GUMMOW J:   But that is dictated by purely commercial rating considerations, I suppose.

MR IRELAND:   Yes, it is.  We say, your Honour, that ultimately the document that is produced, with all its facets, including synopses, is a copyright work that is not just the end product of these early decisions.  The judge says they are in many respects too anterior to contribute heavily.  She does not discount them completely.  She says the fact that you have decided to keep having the news at six o’clock at night on Channel Nine, which has been for only 20 years, just does not count sufficiently for the purpose of analysing that table with all of its intricacies.  It is a question of evaluation.

What the Full Court says is, no, the information is very important.  That information of what is to go on at what time is very important and they say therefore has a greater significance than the judge attributed.  We say that the error in taking that approach lies in a neglect of all of the components of the compilation.  In other words, one looks at the compilation, sees all of its aspects and says – then there is another facet which I should mention.  These time and title elements are not original in the copyright sense.  They have been through at least four other documents before they get there. 

So when one composes this document you are taking up old news, in a sense, because the proof was that the time and title, the program decision on the time it would be broadcast was made I think three documents before this compilation was made.  This was not a new piece of information.

GUMMOW J:   Does this go to the so‑called causation point, does it?

MR IRELAND:   It does in part, your Honour.  The so‑called causation point – your Honour is quite right, the word does not appear in the Copyright Act – is simply this.  Nobody seems to doubt that ‑ ‑ ‑

GUMMOW J:   It was first used by Lord Justice Willmer in one of the music cases, I think.

MR IRELAND:   Yes.  It has also found great popularity in the architects plans cases where one says, well, the builder never sees the architects plan to plagiarise that, rather, he goes into the house and he measures the room and the bay window and replicates those.  The Full Court has said in a number of cases – not this Court I think – that that is a case of indirect copying.  That is the paradigm, I think, in this area of the law.  But we say indirect copying of what?  The information of time and title which was taken to the degree it was by us was lost and reconstructed in this aggregated guide.  It was information common to that guide which had its history in the Channel Nine schedule, but we did not take it from the Channel Nine schedule.  That is the so‑called indirect copying point.  Could I just give your Honour two more references to the Full Court.  One is in application book 143 at paragraph 128 which is about line 36.  They say this:

It is correct, as Ice submits and her Honour found, that the Aggregated Guides as a whole were significantly different in look, feel and content to the Weekly Schedules.

The weekly schedules are the respondent’s product.

GUMMOW J:   This metaphor “look, feel and content”, I know it is often used.  Where does that come from?

MR IRELAND:   Look, feel and content I think is something that is borne out of the advertising industry, the look and feel of things.  You will not find that expression in the Copyright Act.

GUMMOW J:   I think it has been used in cases.

MR IRELAND:   Yes, but one will not find it in the Copyright Act.  Look and feel is something that advertisers or marketing people love to talk about.

KIRBY J:   It sounds like a little bit of rhetoric too.

MR IRELAND:   Yes, it is.  Then it goes on, your Honour, and we point to this strongly:

If it matters, the form of the reproduction of that information bore significant similarities ‑

If it did not matter, then somebody has the notion of copyright and compilation terribly wrong, we would say.  You cannot just look at pieces of information that happen to be in a copyright work and say that if they are common to the plaintiff and the defendant’s product, then infringement occurs.  We would say there has been a real error of principle here.  There is an effort on the other side to pass this off to the Court as a factual case.  We have at least the repost to that that the trial judge who found the facts found them in a different direction.  The reform of the facts that occurs in the Full Court involves some fast footing in terms of the significance of anterior work.  We would say that this is a suitable vehicle for special leave.

GUMMOW J:   Yes, Mr Bannon.

MR BANNON:   Your Honours, I regrettably have not brought the case up, but at AB169 we cite in support at line 40 SW Hart v Edwards Hot Water Systems, this Court’s decision about causal connection.

GUMMOW J:   Yes.  What was the subject matter in Hart?  Drawings, was it not?

MR BANNON:   Drawings of a water system, I think, yes.

GUMMOW J:   Yes, the water heater.

MR BANNON:   I cannot now remember whether the expression “causal connection” was used.

GUMMOW J:   It may have been.

MR BANNON:   I have a feeling it was.

GUMMOW J:   Yes.  It all started before that with Lord Justice Willmer with In a Little Spanish Town, I think.

MR BANNON:   Yes.  Secondly, on the intermediate copy, as we have said in our submissions, there was actually a finding that the intermediate copy, the aggregated guides, reproduced all of the time and title information in the intermediate guide.  So if it is a requirement that the intermediate work is a substantial reproduction, it plainly was, but as a matter of fact, it is not a requirement because one can be listening to the radio to somebody reading out a book and one can write it down and you could infringe copyright that way, even though you have no access to the work and you were listening to an oral delivery of it.

So far as the form point is concerned, again repeatedly, with respect, my friend says there is something different about the form; the look and feel, the look and feel expression, as the word “sliver”.  The author is the man on my immediate left.  That is how they got into the judgment, look and feel and sliver.  That was the way in which it was sought to deflect attention from the fact that ‑ ‑ ‑

GUMMOW J:   Anyhow, you say the game is up now?

MR BANNON:   The game is up.  If I could just very briefly, one refers to what is our copyright work by way of an example as set out at 108 which your Honours have already looked at, but this is the critical thing.  This is whether one believes it or not and whether one can really believe it.  People spend hours and hours and hours of executive time working out whether it would be a good idea to keep this program in the same way or not.

GUMMOW J:   I am sure, yes.

MR BANNON:   Of course, I think as your Honour may recall in the Interlego Case in the Full Court, the fact that hours were spent in making only small changes to Lego bricks, that decision to keep some lines was an important decision.  But, relevantly, when one talks about form, there is nothing about form in this, it is just a table.  The important part of this table is the association of time with a program; that is the key.  So when one goes over to their product at 114AB, it is not the world’s greatest copy, but one

can get the sense of it.  Guess what?  What did they do?  They put the time next to the program title.

GUMMOW J:   Well, why not?

MR BANNON:   Exactly, but the suggestion that there is some funny look or feel thing which takes away an infringement, with the greatest respect, has no basis in law.

GUMMOW J:   There will be a grant of a special leave in this matter.  The Court will allow one and a half to two days, I think, and we expect to have the assistance of counsel to deal with this matter thoroughly without any reticence in starting at the bottom, so to speak, and we expect counsel to be familiar with the academic writing in this field.  They have already been referred, I think, to an article by Dr Deazley in [2004] Intellectual Property Quarterly 121.  There is also what may be a useful article by Professor Sterk in Michigan Law Review for 1996, Volume 94, pp 1197 called Rhetoric and Reality in Copyright Law.  There is a lot of other material out there as well.  I hope the arguments will be informed with all of that, at least in a suitable background.

AT 10.49 AM THE MATTER WAS CONCLUDED