Melway Publishing v Robert Hicks Pty Ltd - [2000] HCATrans 320

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Melbourne No M1 of 2000

B e t w e e n -
MELWAY PUBLISHING PTY LTD
Appellant
and
ROBERT HICKS PTY LTD (Trading as AUTO FASHIONS AUSTRALIA)

Respondent

GLEESON CJ
GUMMOW J
KIRBY J
HAYNE J
CALLINAN J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON THURSDAY, 3 AUGUST 2000, AT 9.38 AM

(Continued from 2/8/00)

MR NETTLE: If the Court please and very briefly before my learned friend continues, concerning the matter of the injunction, because of events which have occurred the respondent considers it is unlikely that an injunction will any longer be of utility. For that reason it wishes not to trouble the Court unnecessarily with considerations which in all probability need not necessarily to be decided. In the circumstances, if it assists in a determination of the true issues in the case, it would consent to an order that the injunction be dissolved.

May I add, however, that the concession, of course, is without any concession as to any lack of propriety in the injunction and against a background of facts under which the appellant abandoned before the Full Court the pursuit of its criticism of the form of injunction ordered by the trial judge. If the Court please.

GLEESON CJ: One of the arguments that was advanced on the part of the respondent in the Queensland Wire Case was that if the Court had had to undertake the task of actually framing an injunction it might have had its attention directed to some of the difficulties in the case of the appellant. We note what you say but there will still have to be consideration given presumably in considering the merits of the arguments on either side to how you would go about framing an injunction to deal with the conduct of the appellant.

MR NETTLE: With all respect, your Honour, I understand that. I wished only that the Court be seized of the facts which are now different to those as they were at the time at which the order was first made. If the Court please.

GLEESON CJ: Yes, Mr Burnside.

MR BURNSIDE: May it please the Court, last night I had submitted that “take advantage of” means simply to get some benefit of the conduct by reason of the possession of substantial market power. It is, after all, an ordinary English phrasal verb and, if I may adopt an example used in the Queensland Wire Case, one may take advantage of fine weather to mow the lawn, which does not mean you cannot mow the lawn when the weather is not fine; it is just that the job is less unpleasant and the advantage ‑ ‑ ‑

KIRBY J: It could have used the words “misuses its position” or an expression of that kind, indicating a pejorative use of the market power, but all it said was “take advantage of”.

MR BURNSIDE: Yes, and the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2000] HCATrans 320
Decision Date

CaseChat Overview and Summary

Melway Publishing Pty Ltd (Melway) appealed to the High Court of Australia against a decision of the Full Federal Court concerning the infringement of its copyright in a street directory. The dispute arose from the publication of a rival street directory by Robert Hicks Pty Ltd (Hicks), which Melway alleged had copied substantial parts of its copyrighted work.

The High Court was required to determine whether Hicks had infringed Melway's copyright. This involved considering the nature of copyright protection afforded to compilations such as street directories, the test for substantiality in copyright infringement, and the extent to which a compiler can rely on existing works in creating a new compilation. Specifically, the court had to assess whether the alleged copying constituted an appropriation of the skill, labour, and judgment of the copyright owner, or merely the use of factual information that was in the public domain.

The majority of the High Court, comprising Gleeson CJ, Gummow, Hayne, and Callinan JJ, held that copyright subsists in a street directory as a compilation, protecting the skill, labour, and judgment exercised in its creation. However, they found that the factual information contained within the directory, such as street names and locations, was not protected by copyright. The court distinguished between the expression of ideas and the ideas themselves, concluding that Hicks had not copied the expression of Melway's work but had independently gathered and presented factual information. Kirby J dissented, arguing that the extent of copying was such that it did amount to infringement.

The appeal was allowed, and the orders of the Full Federal Court were set aside.

Orders