Nine Network Australia Pty Ltd v IceTV Pty Ltd - [2007] FCA 1172

FEDERAL COURT OF AUSTRALIA
Nine Network Australia Pty Ltd v IceTV Pty Ltd [2007] FCA 1172
COPYRIGHT – literary work – compilation – television program schedules – applicant (‘Nine’) records program title, time of broadcast, additional program information and synopses in schedules – respondent (‘Ice’) has no direct access to schedules – weekly version of the schedules (‘the Weekly Schedule’) sent to third parties (‘the Aggregators’) for publication in aggregated television program guides (‘the Aggregated Guides’) – admission that copyright subsists in the Weekly Schedule – whether copyright in a single day and time and title information only – compilation must be considered as a whole – no separate copyright in time and title information or single day – mere information – late changes not included in the Weekly Schedule – no copyright in Late Change Notices
COPYRIGHT – originality of compilation – preparatory skill and labour in selecting and ordering programs for broadcast – skill and labour in form of weekly schedule including selection, arrangement and expression of information there included
COPYRIGHT – effect of aggregation of information on copyright subsisting in compilation – aggregation does not destroy copyright in compilation – Aggregated Guides are separate and distinct compilations – product of the Aggregators’ skill and labour – incorporate Nine’s preparatory skill and labour
COPYRIGHT – infringement – electronic program guide produced by Ice (‘the IceGuide’) – differences in form and content between the IceGuide and the Weekly Schedule – whether IceGuide infringes Nine’s copyright – alleged reproduction of a substantial part of the Weekly Schedule in the course of making and updating the IceGuide – initial IceGuide templates compiled by independent inquiry – synopses independently researched and drafted – repetition in Nine programming from week to week – IceGuide schedules developed by copying same day in a previous week and checking time and title information in Aggregated Guides for variations in programming – scope for variation in selection, arrangement and expression of information in a television guide – distinguishable from a “whole of universe” case – form and content both relevant to infringement – similarity and extent of copying – substantial part measured by reference to the originality of the work allegedly taken – question of fact and degree – consideration of the interests which copyright protects in a compilation – synopses qualitatively important – late changes to programming not part of the Weekly Schedule – “slivers” of time and title information taken from aggregated guides not of sufficient quality or quantity to amount to a reproduction of a substantial part – Ice is not a broadcaster – no taking by Ice of Nine’s skill and labour of placing programs so as to maximise viewers – no taking by Ice of Nine’s skill and labour in form of the Weekly Schedule – no reproduction of a substantial part of the Weekly Schedule – no infringement
COPYRIGHT – alleged communication to the public of the Weekly Schedule – copyright owners “public” includes IceGuide subscribers – Ice determines content of data communicated – alleged authorisation of subscribers’ acts of infringement – no infringement as no reproduction of the Weekly Schedule in the course of making and updating the IceGuide
COPYRIGHT – unjustified threats of infringement – leave sought by Ice at hearing to file cross-claim alleging unjustified threats – whether proceedings for unjustified threats of copyright infringement can be commenced while infringement proceedings on foot – “threat” ceases once infringement proceedings are commenced – no entitlement to claim damages resulting from commencement and prosecution of proceedings – no utility in injunction or declaration where infringement proceedings dismissed – short period between threats and proceedings – no evidence of damages – discretion exercised to refuse leave
Copyright Act 1968 (Cth) ss 10(1), 14(1), 21(1A), 22(6), 31, 32, 36, 202
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NINE NETWORK AUSTRALIA PTY LIMITED (ACN 008 685 407) v ICETV PTY LIMITED (ACN 003 552 216) AND ICETV HOLDINGS PTY LIMITED (ACN 117 626 338)
NSD 935 OF 2006
BENNETT J
9 AUGUST 2007
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 935 OF 2006

BETWEEN:

NINE NETWORK AUSTRALIA PTY LIMITED
(ACN 008 685 407)
Applicant

AND:

ICETV PTY LIMITED (ACN 003 552 216)
First Respondent

ICETV HOLDINGS PTY LIMITED (ACN 117 626 338)
Second Respondent

JUDGE:

BENNETT J

DATE OF ORDER:

9 AUGUST 2007

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The application is dismissed.
2.Leave to file a second cross-claim is refused.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 935 OF 2006

BETWEEN:

NINE NETWORK AUSTRALIA PTY LIMITED
(ACN 008 685 407)
Applicant

AND:

ICETV PTY LIMITED (ACN 003 552 216)
First Respondent

ICETV HOLDINGS PTY LIMITED (ACN 117 626 338)
Second Respondent

JUDGE:

BENNETT J

DATE:

9 AUGUST 2007

PLACE:

SYDNEY

INDEX
INTRODUCTION........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .... [1]
Nine........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...... [1]
The Aggregators........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ... [3]
Ice........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ . [4]
THE ISSUES........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .... [5]
THE NINE COPYRIGHT WORK(S)........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .... [10]
Creation of the Nine Schedules........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .. [10]
Selection, arrangement and ordering of programs........ ........ ........ ........ ........ ........ ........ [11]
Preparing and distributing the Nine Schedules........ ........ ........ ........ ........ ........ ........ ..... [17]
Late Changes........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .. [25]

Copyright in the Nine Schedules........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ [27]
Copyright in the Weekly Schedule........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .. [28]
Copyright in other formats of the Nine Schedules........ ........ ........ ........ ........ ........ ........ . [32]
Does copyright subsist in individual columns and days of the Weekly Schedule?........ [34]

The skill and labour protected by the copyright........ ........ ........ ........ ........ ........ ........ ........ . [45]
THE EFFECT OF AGGREGATION........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .... [57]
HWW........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ . [58]
Skill and labour of HWW........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....... [65]

Pagemasters and eBroadcast Australia........ ........ ........ ........ ........ ........ ........ ........ ........ ....... [67]
Late Change Notices........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .. [71]
Differences of look, feel and content........ ........ ........ ........ ........ ........ ........ ........ ........ ........ . [73]
Contractual arrangements........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ... [76]
Are the Aggregated Guides separate and distinct copyright works?........ ........ ........ ........ . [84]
THE ACTIVITIES OF ICE........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .... [94]
The Ice technology, the IceGuide and its uses........ ........ ........ ........ ........ ........ ........ ........ ... [98]
Receiving the IceGuide........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ [104]
The IceGuide display and uses........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..... [106]
The Pimp and Widget........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ... [113]

INFRINGEMENT........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ [116]
Creation of the initial templates........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....... [120]
Creation of each day’s IceGuide and updating of information in the Ice Database........ [138]
“Predicting it over”........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..... [139]
Entering program, episode titles and synopses into the Ice Database........ ........ ........ [154]
Late Changes to the IceGuide........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...... [157]
Accuracy........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....... [160]
Review of Ice’s software........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....... [167]
Consideration........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....... [168]

Does Ice reproduce the Weekly Schedule in the course of making and updating the IceGuide? [177]
Principles........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..... [178]
Consideration........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....... [186]
What is the interest that Nine’s copyright protects?........ ........ ........ ........ ........ ........ [194]

The remaining alleged infringements........ ........ ........ ........ ........ ........ ........ ........ ........ ....... [213]
The other infringements by reproduction........ ........ ........ ........ ........ ........ ........ ........ ..... [216]
The communication infringement........ ........ ........ ........ ........ ........ ........ ........ ........ ........ . [221]

LEAVE TO FILE THE SECOND CROSS-CLAIM FOR UNJUSTIFIED THREATS..... [226]
SUMMARY OF FINDINGS........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....... [239]
The Weekly Schedule is the copyright work........ ........ ........ ........ ........ ........ ........ ........ ... [240]
The Aggregated Guides are separate compilations........ ........ ........ ........ ........ ........ ........ .. [242]
Ice does not infringe copyright in the Weekly Schedule........ ........ ........ ........ ........ ........ . [243]
REASONS FOR JUDGMENT
INTRODUCTION
Nine

The applicant (‘Nine’) decides the order in which television programs are broadcast by stations within the “Nine Network” (‘the Nine Programming’). Those stations include TCN-9 Sydney, GTV-9 Melbourne, QTQ-9 Brisbane and NTD-8 Darwin. Nine also provides content and branding rights to affiliates including metropolitan stations NWS-9 Adelaide, STW-9 Perth and to regional broadcasters such as WIN Wollongong and NBN Newcastle. Nine acquires the rights to television programs which it believes will appeal to audiences. It selects dates and times to broadcast those programs with an eye to maximising viewers. It drafts or obtains short descriptors (‘synopses’) about the programs. Nine then records the Nine Programming in various formats (‘the Nine Schedules’) for distribution prior to broadcast to stations within the Nine Network, its affiliates and the viewing public. Those formats differ in appearance and content.
A “broadcast week” in the television industry commences on a Sunday and ends on a Saturday. Viewers are typically informed of the date and time of a proposed broadcast, together with additional program information such as program classification, consumer advice and synopses, by television program guides published prior to the broadcast of a program. Nine does not itself publish such guides.
The Aggregators
That task is relevantly facilitated by three third parties: HWW Limited, eBroadcast Australia and Pagemasters Pty Ltd (together ‘the Aggregators’). Nine supplies the Aggregators with a weekly schedule of the Nine Programming, two to three weeks prior to any given broadcast week (‘the Weekly Schedule’). The Weekly Schedule contains time and title information for one broadcast week, additional program information and synopses. The Aggregators aggregate the information provided by Nine in the Weekly Schedule with the program schedules provided by other Australian free to air television channels, namely the ABC, SBS and stations within and affiliated to the Seven and Ten networks. Television program guides with information for all free to air channels (‘the Aggregated Guides’) are then published in publications such as TV Week and on websites such as the Yahoo!7 TV Guide, published at <au.tv.yahoo.com/tv> (‘the Yahoo7 Guide’). The Aggregators are advised by Nine of any late changes to the Nine Programming so that such changes can be incorporated into the published guides.
Ice
The first respondent (‘Ice’) provides a subscription based “electronic program guide” (‘EPG’) for television called “the IceGuide”. The IceGuide when uploaded on subscribers’ devices displays details of the television programs scheduled to be broadcast by free to air television stations, including stations within the Nine Network, for the coming 6, 7 or 8 days. It is essential to Ice’s business model that those details are accurate. Ice does not, however, receive information from Nine or the Aggregators about the time, date and title of programs proposed to be broadcast by Nine. It says that it “predicts” that information for inclusion in the IceGuide based on its observations of Nine’s past programming behaviour and knowledge of the television industry. Ice then “checks” its “predictions” against publicly available program guides, that is, the Aggregated Guides. If there is a discrepancy as to program title, date and time as between the IceGuide and the Aggregated Guides, Ice generally (but not always) amends the IceGuide to reflect the published guides.
THE ISSUES
Nine asserts that copyright subsists in the Nine Schedules as compilation literary works within the meaning of s 10(1) of the Copyright Act 1968 (Cth) (‘the Act’). It submits that any doubt as to whether copyright so subsists was extinguished by the Full Court decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491. The infringement allegations are founded on the assertion that Ice appropriates the ‘skill and labour of authorship’ of Nine in compiling the Nine Schedules by reproducing program time, title and date of broadcast information from the publicly available Aggregated Guides.
Nine alleges that the IceGuide includes a close to 100% reproduction of the time and title information in the Nine Schedules, as updated by any late changes and that the activities of Ice in producing and disseminating the IceGuide involve five acts of infringement of the copyright in the Nine Schedules. The second respondent (‘Ice Holdings’) is said to be jointly liable for those acts of infringement.
The allegations are denied by Ice. Ice does not dispute that copyright subsists in the Weekly Schedule. Ice asserts that it did not (and does not) copy the Weekly Schedule in creating and updating the IceGuide. It denies taking all or a substantial part of the Weekly Schedule. It denies that Nine owns independent copyright in components of the Weekly Schedule and submits that other Nine Schedules are not relevant to the proceedings. Ice also seeks leave to file a cross-claim alleging that Nine has made unjustified threats of copyright infringement (‘the second cross-claim’). An earlier cross-claim was discontinued.
Ice drafts its own synopses for inclusion in the IceGuide, which differ in content to those in the Weekly Schedule. There is no suggestion that those synopses infringe Nine’s copyright.
The proceedings raise the following issues for determination:
·What is the identity of the Nine work(s) in which copyright subsists?
·What is the effect of aggregation on the copyright subsisting in the Nine work(s)?
·Did Ice copy the Nine work(s) when it created the first templates for the IceGuide?
·Do Ice’s present activities infringe Nine’s copyright?
·Should Ice be granted leave to file the second cross-claim?
THE NINE COPYRIGHT WORK(S)
Creation of the Nine Schedules

The facts in issue narrowed throughout the course of the hearing and were largely agreed.
Selection, arrangement and ordering of programs
Nine generally broadcasts between 24 and 30 programs daily, or between 168 and 210 programs weekly, including items of news and current affairs, drama, children’s programs, light entertainment and quiz programs, lifestyle and reality programs, sports programs and one-off special events such as the TV Week Logie Awards.
Mr Michael Healy, the Director of Programming at Nine and Ms Penny Wieland, Program Executive, describe the process of creating and recording the Nine Programming. Mr Healy and Ms Wieland make multiple decisions with respect to the selection, arrangement and ordering of the programs to be broadcast. Mr Healy explains the different factors that are taken into account in making those decisions. These factors include the acquisition of new programs locally and overseas to meet current viewer preferences and trends, audience size and demographic appeal, leading programs, competitor programming, ratings and windows in which broadcast rights are available, as well as statutory and contractual obligations.
Ms Wieland is primarily responsible for the daytime and off-peak period while Mr Healy works on the prime time (6:00 pm to midnight). The selection, arrangement and ordering of programs by Mr Healy and Ms Wieland take place well in advance of the dates being scheduled. It involves time spent by Mr Healy every working day and approximately 80% of Ms Wieland’s working week. Other Nine employees assist with the various genres of programming, with reviewing programs and determining classifications and consumer advice.
Strategic changes may be made to the Nine Programming up to a few days before the date of a broadcast, depending on competitor programming. Changes are also made to the Nine Programming in response to ratings information, which is received for 40 weeks of the year and reviewed by Nine daily. The responsibility for final decisions on all issues of program scheduling for Nine rests with Mr Healy, subject to consultation with the head of the Nine Network.
Decisions involve consideration of the program schedule from a yearly, seasonal, weekly and daily perspective. Nine’s annual planning process relates mainly to the forward planning of the acquisition of programs. Sports broadcast rights, which occur on a seasonal timetable at different times of the year, are also taken into account. The Nine Programming is then developed so as to ensure variety and balance in programming across each week, with emphasis placed on appealing to the 25–54 and 16–39 year old age groups to reflect advertising demand. Also taken into consideration is the suitability of programs in particular time slots, the requirement for children’s programming and Australian content quotas. Each day in the Nine Programming is also individually developed and considered against competitor programming to maximise and retain viewers.
The work done and skill, labour and judgment exercised in selecting material for inclusion in the Nine Programming are directed to Nine’s programming or broadcasting activities.
Preparing and distributing the Nine Schedules
The Nine Programming is recorded in various formats by Nine (the Nine Schedules) in preparation for internal and external distribution prior to any given broadcast week.
Prime time programs are selected and arranged by Mr Healy using a large notebook containing blank grids (‘the Grid’). Each page represents a week of the year and is divided into seven vertical columns (one for each day of the week). Horizontal half-hour segments represent the timeslots. Once he has decided where to schedule a program, Mr Healy writes the relevant program name (or an abbreviation) onto the Grid using a pencil to permit changes and amendments. “Fixed events”, such as the TV Week Logie Awards, are entered into the Grid first, followed by sporting events. Programs that are broadcast at the same time each week are then entered (for example, National Nine News) before the remaining slots are filled.
Daytime and off-peak programs are arranged by Ms Wieland using an Excel spreadsheet (‘the Spreadsheet’) which is also configured to show separate pages for each week of the year. The Spreadsheet pages have seven vertical columns representing each day of the week and are divided into 49 half-hour segments beginning at 6:00 am each day and finishing at 6:00 am the following day. During the period from 6:00 am to 3:30 pm a number of programs are episodes of serial programs. For example, at 1:00 pm on Friday 16 June 2006, episode number 10,148 of Days of our Lives was broadcast. Ms Wieland selects and enters the programs for daytime and off-peak timeslots directly into the Spreadsheet.
Approximately three to four weeks prior to the commencement of any given broadcast week, Mr Heath Forrest (Nine’s Schedule Co-ordinator) transposes the entries in the Spreadsheet and the Grid into a third document called the “Master Paper Grid”. This document is effectively a consolidated version of the Spreadsheet and the Grid. Annexure ‘A’ to these reasons sets out one page of the Master Paper Grid for the broadcast week commencing 11 June 2006. During the same period, the programming entries in the Master Paper Grid are entered by Mr Forrest into a program database on Nine’s computer network (‘the Nine Database’). The entry or “dumping” of information into the Nine Database grants access to the Nine Programming to Nine personnel outside the programming department, namely local affiliates of Nine such as NWS-9 Adelaide and STW-9 Perth. Access is not given at this stage to WIN, NBN or the Aggregators.
Approximately 17 days prior to the commencement of a broadcast week most of the Nine Programming for that week will have been completed; those parts that remain incomplete are marked “TBA” in the documents described above. Mr Forrest and Ms Wieland check that all available information has been included and add additional information if necessary. Mr Forrest also amends the Nine Database to reflect differences in programming between TCN-9 Sydney, GTV-9 Melbourne and QTQ-9 Brisbane.
The Nine Schedules are electronically produced from the Nine Database in preparation for distribution in four further formats:
·The “First and Final Schedules”, which provide the Nine Programming for two consecutive weeks: The Nine Programming as recorded in this format does not include synopses but does include information not found in some other formats, such as internal catalogue codes. The catalogue codes are used by Nine to identify and retrieve programs for the purposes of broadcasting. A copy of one page of the “First and Final Schedules” for the broadcast week commencing Sunday, 11 June 2006 is Annexure ‘B’ to these reasons.
·“Excel” and “text” formats: The Weekly Schedule is disseminated in these formats. A copy of one page of the Weekly Schedule for the broadcast week commencing Sunday, 11 June 2006 in Excel format is Annexure ‘C’ to these reasons and a copy of one page of the Weekly Schedule for the same broadcast week in text format is Annexure ‘D’. The Excel and text format versions are in tabular form. They include program synopses in the final column.
·The “Nine Program Guide”: The Nine Program Guide is a printed version of the Nine Programming for a single broadcast week produced from the Nine Database. It is in tabular form, similar in appearance to the text format and includes synopses in the final column.
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.
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. They are in weekly format and include program synopses.
Late Changes
Mr Healy and Ms Wieland continue to amend the Nine Programming after distribution of the Weekly Schedule to the Aggregators. Nine advises the Aggregators of changes or additions to the Nine Programming by “Late Change Notices”. The Late Change Notices contain information that is not included in the Weekly Schedule and may include movie titles not advised for strategic reasons. The Weekly Schedule may simply have ‘DETAILS: TO BE ADVISED’ in that timeslot. Late Change Notices are typically issued by Nine every week and may be issued up to and including the day on which a program is scheduled to be broadcast. They may notify a change to program line-up, or program information such as classification or duration. An example of a Late Change Notice for 11 May 2006 is Annexure ‘E’ to these reasons. Ms Wieland exhibits to her affidavit the Late Change Notices issued by Nine between 1 April 2005 and 10 August 2006 in electronic form. There were in excess of 600.
The Aggregated Guides may have been published by the time of receipt of a Late Change Notice. The Aggregators update the Aggregated Guides from time-to-time to reflect changes as notified by the Late Change Notices.
Copyright in the Nine Schedules
Ice accepts that the creation of the Nine Schedules gives rise to a literary work in which copyright subsists under the Act. At issue is the identity of the compilation(s) of program information in which copyright subsists and against which Ice’s activities are to be assessed for the purposes of infringement. Nine accepts that the Nine Programming does not attract copyright until it is reduced into a material form. That would include the Weekly Schedule and the other formats of the Nine Schedules, such as the Master Paper Grid, discussed above. The Nine Programming may also be recorded as a collocation of words and symbols in the Nine Database. Ice does not have access to the Nine Database.
Copyright in the Weekly Schedule
There is no dispute that a compilation is a literary work for the purposes of the Act. That is expressly provided for in s 10(1) of the Act. The Weekly Schedule in Excel or text format, as a compilation, comes within the description of a literary work as explained by Lindgren J in Desktop at [160]. It is the result of the operation, action or labour of a person or other agent and a product of exertion, labour, judgment, skill or activity. I shall refer, generally, to this compendiously as “skill and labour”.
Section 32 of the Act relevantly provides for the subsistence of copyright in an original literary work. Desktop establishes that a compilation of factual information may be an original literary work and attract copyright protection under the Act if the author ‘has exercised skill, judgment or knowledge in selecting the material for inclusion in the compilation...or in presenting or arranging the material’ or ‘has undertaken substantial labour or incurred substantial expense in collecting the information recorded in the compilation’ (Desktop at [409] per Sackville J). The preparatory skill and labour to bring about the Weekly Schedule includes the skill and labour of the selection of programs, their placement and ordering in the Nine Programming and the adjustment of the programs to allow for inclusion of special events and differing length of time of those special events and of movies. Ice accepts that sufficient skill and labour is undertaken in the creation of the Weekly Schedule so as to render it an original literary work. It will be necessary later to consider the nature and extent of that skill and labour in some detail.
A literary work is deemed published if ‘reproductions of the work…have been supplied (whether by sale or otherwise) to the public’ (s 29(1)(a) of the Act). Subject to the Act, copyright subsists in unpublished (s 32(1)) or published s (32(2)) original literary works. There is no suggestion that the authors of the Weekly Schedule are other than qualified persons (s 32(1)(a); s 32(2)(d)).
Ice admits by its amended defence that copyright subsists in each Weekly Schedule prepared and distributed since 2001. There is no need to address Nine’s submission that copyright subsists in the whole body of its programming schedules since 1 November 1956. The activities of Ice relevantly began in 2004. Whether or not those activities constitute an infringement is to be determined by reference to the copyright subsisting in the Weekly Schedules published since then. It is those works, in which Nine has copyright, that Ice is alleged to have copied directly. The Weekly Schedule is the only compilation produced by Nine that is relevant for the purpose of assessing any copying and any taking of Nine’s skill and labour.
Copyright in other formats of the Nine Schedules
Other formats of the Nine Schedules vary in form and content from the Weekly Schedule. For example, the First and Final Schedules are in landscape form and include internal catalogue codes. They do not include the synopses.
The only compilations to which Ice has had access for the purpose of creating, updating and disseminating the IceGuide are the Aggregated Guides. They are produced, in the manner described below, by the aggregation of the Weekly Schedule with program information provided by other networks. There is no suggestion that Ice or the Aggregators has or had access to or have reproduced the Master Paper Grid or the First and Final Schedules. These schedules may attract copyright protection from, for example, unauthorised copying by a person within the Nine Network or its affiliates. That is not, however, relevant to these proceedings.
Does copyright subsist in individual columns and days of the Weekly Schedule?
The Weekly Schedule contains the time and title information for a seven day broadcast week. It gives program starting times, program titles and, where relevant, episode titles for each day. The Weekly Schedule also contains additional program information, including whether the program or episode is a repeat or live, format information (for example, ‘WS’ for widescreen and ‘HD’ for high definition), the classification (for example ‘PG’ for parental guidance, ‘M’ for mature), consumer advice information (for example ‘Frequent Course Language [L]’) and program or episode synopses. The synopses have a literary element.
The information included in the Weekly Schedule is set out in columns for each day (see, eg Annexure C). The first two columns comprise program time and title information. The third and fourth columns comprise additional program information. The fifth and final column contains the synopses. The arrangement of the Weekly Schedule is in a particular way:
·as a broadcast week from Sunday to Saturday under each “day”;
·as a day, from 6:00 am to 5:59 am the next day;
·in tabular form; and
·in columns, with each column containing certain information as described above.
Nine asserts the subsistence of copyright in three literary works:
(1) a compilation of program time and title information only;
(2) a compilation of program time, title and additional program information; and
(3)a compilation of program title and additional program information, together with the synopses issued by Nine.
Nine relies on two alternative editions of these works: a daily and a weekly edition. The primary compilation on which Nine relies is the daily compilation of program time and title information only. Ice submits that to construe daily or weekly compilations of time and title information, without synopses, as copyright literary works is to adopt a ‘[r]ussian doll’ approach of ‘looking inside a copyright protected compilation for some smaller sub-set of the information and awarding it the status of an independent copyright compilation’.
In determining the subsistence of copyright, it is necessary to consider works such as anthologies and compilations as a whole (Desktop at [99], [152] and [160] per Lindgren J; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273). In Ladbroke, for example, an argument that copyright attached to individual components of the compilation was rejected by the House of Lords (276-7 per Lord Reid, 284 per Lord Evershed, 285 per Lord Hodson and 291 per Lord Pearce). The relevant compilation was a fixed odds football betting coupon, issued weekly. Their Lordships said that the whole coupon, there considered in the context of a consideration of the originality of the compilation, was to be treated as a single compilation.
In Network Ten Pty Limited v TCN Channel Nine Pty Limited (2004) 218 CLR 273 at [75], McHugh A-CJ, Gummow and Hayne JJ considered that ‘a television broadcast’ for the purposes of s 87 of the Act included the programs ‘put out to the public, the object of the activity of broadcasting, as discrete periods of broadcasting identified and promoted by a title’. Their Honours rejected the notion that any image or sound broadcast by way of television in the course of those programs satisfied the statutory description. This suggests that the manner in which an author presents a copyright work may assist in determining what that work is.
Section 10(1) of the Act relevantly defines a literary work to include ‘a table, or compilation, expressed in words, figures or symbols’. The work that Nine relevantly produces is the Weekly Schedule. It is that work that is disseminated to the Aggregators. The compilation is expressed in words, figures and symbols that describe, in their totality, time and title information, additional program information and the synopses for a complete broadcast week.
The first two columns of the Weekly Schedule, the time and title information, although part of the whole compilation, are not purveyed by Nine and have not been shown to have any commercial value to Nine or the Aggregators. The evidence establishes that the synopses, which can be said to contain the “literary component” of the Weekly Schedule, require time and attention, are important and of commercial and promotional significance. Mr Healy states that he sees them as being a form of promotion for new programs. Nine considers it important that the synopses included within the Weekly Schedule are correct.
Nine submits that, were it to create and publish a daily schedule consisting only of time and title information, that would be a copyright protected compilation under the Act. However, that is not what the Weekly Schedule is. The Act provides for the subsistence of copyright in compilations of information, not mere information per se. The fact that copyright may subsist in the Weekly Schedule as a whole does not mean that it attaches to the individual facts referred to or the component parts therein (Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 per Latham CJ at 498 and Dixon J at 511).
Nine accepts that a proper identification of the copyright work takes account of the way in which the copyright owner packages or presents its work. Nine submits, however, that the identification must take account of the way in which Nine knows the work is going to be delivered to the consumer. Nine relies upon the fact that the published Aggregated Guides, in print and electronically, discard or hide synopses to varying degrees, while the time and title information always appears. It submits that its intention is that the Weekly Schedule ‘be published [by the Aggregators] with primary emphasis on the time and title information, and on a daily basis, especially in the digital environment’. However, the fact that a reader may make use of a part of the compilation does not of itself change the nature of the copyright which subsists in the Weekly Schedule an original literary work. That compilation, as supplied to the Aggregators, is not limited to time and title. Nor is it limited to just one day of the relevant broadcast week.

Each of the sets of information contained in the Weekly Schedule, including the days in the broadcast week, the additional program information and the synopses, are a part of that compilation. The purpose of the Weekly Schedule is to impart the totality of that information to the Aggregators and, in turn, the public. Nine’s operational activities are, as Ms Wieland agreed, ‘geared to [a] week to week basis’. The Weekly Schedule, built up each week by Mr Healy and Ms Wieland, inevitably includes the synopses and the additional program information. These, in turn, are an integral part of the relationship between the information in and the design of the Weekly Schedule. The Weekly Schedule is the only relevant work to leave Nine. It is the work sent to the Aggregators. It is, with all of the information it includes, the way in which Nine, for good commercial reasons, presents the collocation of information. The totality of the information there included is necessary because it is required by the Aggregators and is also provided to the Aggregators by Nine’s competitors for the purposes of the Aggregated Guides that are made available to the public.
Nine can claim copyright in the Weekly Schedule. It cannot claim copyright in the components of the Weekly Schedule as if they are separate compilations. They are not.
The skill and labour protected by the copyright
As noted, s 32 of the Act provides for the subsistence of copyright in original literary works. The test of originality is whether the work was not copied, but originated from the putative author (Desktop at [160] per Lindgren J). Copyright in a factual compilation is infringed where a person reproduces the copyright work or a substantial part of that work. In this context, ‘[s]ubstantiality is…determined by reference to the originality of that part of the work taken by the alleged infringer’ (Desktop at [409] per Sackville J). It follows that, while the subsistence of copyright in the Weekly Schedule is accepted, an understanding of the nature and extent of Nine’s skill and labour of authorship of the Weekly Schedule is fundamental to the question of infringement.
The extent of an author's contribution to the making of a factual compilation is a question of fact and degree (Desktop at [160]). In this case, there are two sets of skill and labour exercised by Nine and its employees in the creation of the Weekly Schedule. First, the skill and labour of selecting and arranging the programs to be shown on Nine to attract viewers to programs in the different timeslots and to meet competitors’ programs. For the purposes of these proceedings, this is the “antecedent” or “preparatory” skill and labour in the sense discussed in Ladbroke at 287–8 per Lord Hodson and Desktop at [132] and [160] per Lindgren J, [371] and [409] per Sackville J. Secondly, there is the skill and labour of drafting the synopses, selecting and arranging the additional program information such as classifications and consumer advice and recording, weekly, all of the information into documentary form, the Weekly Schedule.
Ice accepts that copyright subsists in the Weekly Schedule by virtue of the skill and labour in the scope of selection of programs, the decision to move or replace existing programs, the adjustment of times, program changes, the mode of expression and in the arrangement of the information by Nine. The work of Mr Healy and Ms Wieland and their colleagues at Nine in preparing each Weekly Schedule is not in dispute. Each Weekly Schedule “emanates” from them (Desktop per Sackville J at [396]).
Relatively little information about the preparation and inclusion of synopses by Nine was included in Nine’s evidence. Nine devotes skill and labour to producing and preparing synopses for inclusion in the Weekly Schedule. It emerged in cross-examination that Mr Holman, Mr Forrest and occasionally Mr Healy draft synopses for inclusion in the Weekly Schedule. Synopses are also obtained from the producers or publicists for some programs. The synopses are entered into the Nine Database and change each week. They are reviewed by Mr Holman and Ms Wieland before publication of the Weekly Schedule. Ms Wieland may instruct Mr Holman to make amendments to correct typographical or grammatical errors, or to change the description of a program or episode.
In T R Flanagan Smash Repairs Pty Ltd v Jones (2000) 102 FCR 181, Hely J observed that copyright may even subsist in compilations that consist entirely of existing material. Originality may lie in the selection or arrangement of such material ‘provided that sufficient skill, judgment and labour was involved’ (at [29]). Any of the latter three may be sufficient for the work to be original (Desktop per Lindgren J at [159]).
The author of a compilation does not acquire copyright in the facts that have been published. The facts do not originate from the author. If the selection or arrangement of the facts involves sufficient skill or labour then the form of selection or arrangement is protected. If there is sufficient work done or expense incurred in gathering the facts, that is also protected (Desktop at [313] per Sackville J citing the primary judge, Finkelstein J in Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2001) 181 ALR 134 at [64]; see also Desktop at [409] per Sackville J).
In Desktop, copyright attached to the compilation by reason of the labour of collecting, verifying, recording and assembling the data and not by reference to the form of the compilation, the alphabetical manner of presentation of the data. The former but not the latter was what originated from the putative author (see, eg Desktop at [438] per Sackville J). In that case, a telephone directory of subscribers in alphabetical order did not permit selection in ordering or expression of the information. Nine submits that, similarly, it is the collocation of information in the Weekly Schedule that is protected. It is the selection of things to be shown in chronological order, as opposed to the order itself, that constitutes the relevant skill and labour to be protected. There must be copying and sufficient resemblance but in such a case, form is not important (Desktop at [223] per Lindgren J). Nine relies on the fact that copyright protection is medium and technology neutral and that is provided for in the Act (eg, s 21(1A) and s 24). Nine submits that the mere input of material into a database cannot deprive the author of copyright protection.
The skill and labour involved in making a factual compilation is likely to vary in each case. As described by Ice, pieces of information are brought together; the selection of that information to the exclusion of other items and the association of pieces of information, one with the other in a line or table creates an intelligible relationship between the pieces of information. The usefulness of the pattern created by the compiler is achieved by the choices that were made and judgment exercised about the individual pieces of information and the relationship between them. There is sufficient skill, judgment and labour in the selection of information and in the mode of expression of the Weekly Schedule, in the presentation of the data after the preparatory work of program selection and arranging is done, to attract copyright protection in that arrangement and presentation. As will become apparent, there is scope for variance in the content of synopses, the selection of additional program information and the overall manner of presentation of the compilation as a whole. The detail of the underlying subject matter, the work in choosing the program for each timeslot is not relevant to the compilation once the “timetable” is prepared, much in the same way that the history of the rolling stock of a rail carrier is not relevant to a train timetable.
Infringement of a factual compilation is tested by reference to the interest which the copyright is intended to protect (Desktop at [223] per Lindgren J). In Desktop, that interest was the labour and expense of gathering together in one place the details of all the members of the given universe of all telephone subscribers in a region – the skill and labour in collecting, extracting and verifying the data compiled. Although the constituent parts of the resulting compilation of those names in alphabetical order are inevitably arranged in the same way, the compilation was thereby protected.
Where there is skill and labour not only in the obtaining or collection of the material but also in the form of arrangement, or where there may be more than one arrangement of the obtained material, it does not follow that any form of arrangement will infringe. Cambridge University Press v University Tutorial Press (1928) 45 RPC 335 is illustrative of this principle. In Cambridge, there was no infringement of a collection of 13 essays where the collection was included in a later work with an additional seven essays, in different order and with different notes and introductions.
Nine relies on what it describes as the high level of protection in Australia afforded to ‘industrious collection[s] of facts’ or ‘“sweat of the brow” compilations organised in an orthodox or natural manner (cf the position in the United States of America as outlined in Feist Publications Inc v Rural Telephone Service Co Inc (1991) 499 US 340). Nine submits that the preparatory skill of the thinking and the planning and the skill of setting down the program time and title in material form as a compilation are not to be separated. That may be the case where, as in Desktop, the skill and labour was in the collection of the data and the form of the compilation followed from that collection and the nature of the work. It does not follow where the skill and labour of collection of information was preparatory to the further exercise of skill and labour of creation of the arrangement of that information in the Weekly Schedule. Nine’s submission also ignores the correct characterisation of the skill and labour employed in the creation of the Weekly Schedule, as the arranging in a single document of not only the order of the programs and their time and title which followed from the creation of the Nine Programming, but also the additional program information and the synopses and the arrangement of the different sets of data.
Accordingly:
(a)Where sufficient skill and labour is expended in gathering the material for inclusion in the compilation, but not in the form of presentation or arrangement of the material because the form is dictated by the nature of the material, that skill and labour is protected. This was the relevant skill and labour protected in Desktop.
(b)Where the form of presentation or arrangement of a compilation is a product of the skill and labour of the author, it is that form that is protected.
(c)Copyright subsists in the Weekly Schedule as an original work by reason of both “types” of skill and labour.
THE EFFECT OF AGGREGATION
As I have said, the Weekly Schedule is not issued to the public. It is relevantly sent to HWW, eBroadcast and Pagemasters, the Aggregators who aggregate the information therein with comparable information obtained from other television broadcasters, from 17 (Pagemasters) to 14 (eBroadcast and HWW) days before the start of the broadcast week. The Aggregated Guides are published in:
·print (eg, magazine TV Week and newspaper The Sydney Morning Herald);
·online (eg, <yourtv.com.au> (‘the YourTV Guide’));
·mobile phone content services (eg, the Vodaphone Mobile Phone Guide);
·the Channel 4 Digital Guide; and
·an EPG provided by Foxtel to its subscribers (‘the Foxtel Digital Guide’).
HWW
HWW receives the Weekly Schedule from Nine pursuant to an agreement made in December 2003 and amended in May 2005 (‘the HWW Agreement’). HWW aggregates the program information of all free to air broadcasters into a more merchantable product. It is part of HWW’s business model that it supply aggregated information. Mr Paul Marshall was the Chief Executive Officer of HWW from August 2002 until shortly prior to the hearing of these proceedings. I accept Mr Marshall’s evidence that there is no paying market for information of what is intended to be broadcast on Nine alone. The process of aggregation involves HWW receiving information on a weekly basis from 257 channels. This includes over 100 free to air channels, of which five are part of the Nine Network and, Nine contends, others are affiliates. The data sets provided to HWW by the television channels vary between channels. HWW extracts program information using a proprietary software application and uploads the information from the respective schedules into its database (‘the HWW Database’). The HWW database has 31 separate fields of information for each program, only some of which (14) are populated with information which emanates from the Weekly Schedule. The 31 separate fields for each program are:
‘[1] Channel ID, [2] Channel Name, [3] Event ID, [4] Date, [5] Time, [6] Program ID, [7] Title, [8] Preamble, [9] Episode title, [10] Synopsis, [11] Genre, [12] Sub Genre, [13] Year, [14] Country, [15] Language, [16] Director, [17] Cast, [18] Classification, [19] Consumer Advice, [20] Episode Number, [21] Closed Captions, [22] Widescreen, [23] High Definition, [24] Colour, [25] Repeat, [26] New Episode, [27] Final, [28] Live, [29] Premier, [30] Series Return, and [31] Duration.’
The data received in the Weekly Schedule are “separated” and entered into the relevant HWW fields. Fields not filled automatically with information provided by the networks are filled by a default mechanism operating on HWW’s programming system. Examples of fields of information not provided by Nine but populated by the default mechanism include genre and duration for programs other than movies. HWW then conducts over 60 checks of the data contained within the fields. Where those checks show discrepancies in the data, manual sub-edits are conducted by HWW staff. HWW checks the data for spelling, grammar, consistency and completeness. Corrections made by HWW’s content team include the deletion of swear words, superlatives or defamatory material from the synopses. Such amendments are made according to general rules which HWW applies to data received from all channels.
HWW disseminates the information in the Weekly Schedule for aggregated publication in the YourTV Guide on HWW’s own website. It also disseminates program listings information to third party clients for publication by them in other Aggregated Guides.
The YourTV Guide comprises 9 days of program listings (today, the two previous days, and the following six days) and includes a standard display of channel name, broadcast time and date, program and episode titles, program genres, instance information (eg, premiere, repeat, final, live etc), program duration, classification, consumer advice and synopses. Updates occur each day at approximately 1:45 am. Viewers can access the YourTV Guide in aggregated or single network format. Synopses are not visible when the guide is viewed in aggregated format but become visible in a separate pop-up window when the user mouse clicks on the name of the program. The YourTV Guide also displays a copyright notice. That notice states that HWW publishes the aggregated TV program listings ‘under licence from the TV channels’ and that the various non-aggregated TV guides ‘have many copyright owners’, including the Nine Network.
Clients who receive aggregated program listings data from HWW publish that information in television guides online (eg, the News Interactive website at <entertainment.news.com.au>), as part of their mobile telephone services (eg, Telstra, Vodaphone and Optus) and, in the case of Foxtel, in an EPG (the Foxtel Digital Guide). HWW provides different aggregated program listings information to its clients, depending on their specific requirements. In the case of some clients, entire online television program websites have been developed by HWW.
One client of particular relevance to these proceedings is Yahoo Australia & NZ Pty Ltd (‘Yahoo’). HWW supplies Yahoo with program listings information pursuant to a written agreement (‘the Yahoo Agreement’) on a rolling 5 business day feed for publication in the Yahoo7 Guide. As it wants the Yahoo7 Guide to have its own “look and feel”, Yahoo takes only listings data from HWW. Television program listings are visible for eight days in advance in the Yahoo7 Guide. As with the YourTV Guide, program synopses are visible but only when the user mouse clicks on the name of the program. By way of example:

Mouse clicking, where indicated, would then cause a synopsis to appear in a separate pop-up window for The Apprentice.

The Yahoo7 Guide includes links to the copyright notice displayed on the YourTV Guide and states ‘Copyright © yourTime 2006’; ‘Copyright © 2006 Yahoo! Australia & NZ Pty Limited’ and ‘Copyright © HWW Limited’.
Skill and labour of HWW
A team of approximately ten HWW staff members work on the provision of HWW’s television content and program data management services and the compilation of its own aggregated program guide, the YourTV Guide. This involves:
·HWW receiving the information from the schedules provided by the various free to air networks (one of which is the Weekly Schedule).
·HWW “separating” the data contained in those schedules into the relevant HWW fields. This is done by a software application that has been written by HWW specifically for each network’s unique data.
·Adding fields of data to those provided by the television networks (in the case of Nine, information may be added to 17 data fields; in some cases the field will simply record a null (rather than technical) value).
·Aggregating the different data sets, which vary from time to time for each individual program broadcast by the 100 or so free to air television channels.
·Updating the YourTV Guide and its customers with late changes issued by the networks.
·Customising guides and/or content feeds to suit particular customer specifications.
·Distributing content feeds to individual customers at different times as required. For example, Yahoo requires its feed on a rolling 5 business day basis and also receives intra-daily feeds where there are program changes.
Mr Marshall’s evidence, which I accept, is that HWW does not add much data to those received from the networks. HWW does, however, make a lot of corrections. It also conducts research where data are missing in order to fill incomplete (null) fields, such as genre or duration. HWW’s “Ingestion Manager”, Ms Janet Cottee, explained that not every incomplete field will be filled; depending on the client’s requirements, data may be disseminated with a default value. For example, the default for field ‘[15] Language’ is English. The development of automated systems providing for greater efficiency is, according to Ms Cottee, the result of ‘six years worth of development work’.
Pagemasters and eBroadcast Australia
The evidence of the activities of Pagemasters and eBroadcast is less detailed than for HWW.
Pagemasters provides aggregated program guides to newspapers and print publications such as TV Week. It receives the Weekly Schedule pursuant to an unwritten arrangement which has been in place with Nine since approximately 1994. Prior to that date, Nine delivered the Weekly Schedule directly to print media publishers who, in turn, provided it to Pagemasters for reformatting. Nine began delivering the Weekly Schedule directly to Pagemasters in around 1994, for distribution efficiency.
eBroadcast Australia distributes an aggregated online program guide which is published on websites such as <ourguide.com.au> (‘the OurGuide’) and <ebroadcast.com.au>. Nine provides the Weekly Schedule to eBroadcast pursuant to an agreement dated July 2004 (‘the eBroadcast Agreement’).

The evidence of the activities of the Aggregators was primarily based upon the activities of HWW and the submissions as to aggregation were based on that evidence. Where I refer to the activities of the Aggregators, I refer to the activities of HWW, as modified where appropriate by the evidence of the activities of the other Aggregators.
Late Change Notices
Nine declines to include the information the subject of Late Change Notices in the Weekly Schedule sent to the Aggregators. Nine acknowledges that the appropriation of the information in a Late Change Notice is not, on its own, an appropriation of the skill and labour of authorship of the compilation. Nine submits that the late changes are ‘corrigenda, revisions, or emendations of a subsisting larger work’. However, it is the skill and labour of the Aggregators that is engaged to insert that information into the Aggregated Guides. There is no assertion by the Aggregators of a taking of their skill and labour.
In the alternative, Nine characterises the late changes as divorced from and separate to the act of revising the underlying copyright work but as attracting their own copyright over a week-long period. While that information is a relatively small quantitative part of the totality of information, it is qualitatively important for Nine. As already noted, such information may be withheld from the Weekly Schedule for competitive reasons. However, Ice does not access the Late Change Notices. Ice refers to the information as to late changes when it accesses the Aggregated Guides. The Late Change Notice is no part of the Weekly Schedule. It is merely a notice or, over the week, a series of notices. If there is no copyright in news as such but only in the form in which it is expressed (Walter v Steinkopff [1892] 3 Ch 489), it follows that there is no copyright in the subject matter of the Late Change Notices. Further, the Late Change Notices are not themselves incorporated into the Aggregated Guides but only the information that they contain.
Differences of look, feel and content
A simple visual comparison of the Yahoo7 Guide and the YourTV Guide with the Weekly Schedule in Excel and text formats confirms that there are significant differences of “look, feel, and content” between those guides and the Weekly Schedule. For example:
·The information in the Yahoo7 Guide and YourTV Guide is not selected, expressed or arranged in a broadcast week; it is in daily format.
·The time and title information is arranged in a horizontal grid rather than vertical columns. The synopses and some of the additional program information, although present, is not set out in the grid. That information only becomes visible when selected in a pop-up window.
·A “day” is expressed as a calendar day rather than from 6:00 am to 5:59 am the next day.
·Program finish times, duration and genre are displayed in the Yahoo7 Guide and the YourTV Guide. This information, save for the genre of movies, is not included in the Weekly Schedule.
·The YourTV Guide discloses the program country and links to official program and related websites.
·The YourTV Guide discloses, where applicable, the program cast.
·Closed captions, widescreen and high definition are not expressed by abbreviations in the YourTV Guide and the Yahoo7 Guide.
It would seem that the synopses included in the Weekly Schedule are in most cases incorporated in substantially the same or abbreviated form in the Aggregated Guides. A comparison of the program synopses as included in (relevantly) the Weekly Schedule, the YourTV Guide, the Yahoo7 Guide and OurGuide for a randomly selected day (4 October 2006) showed that OurGuide had the same synopses as the Weekly Schedule (save for two shortened synopses). HWW made minor edits to the synopses provided by Nine, which were reflected in the YourTV Guide and two other guides sourced from HWW, including the Yahoo7 Guide.
Nine first contended that the only changes to the Weekly Schedule are authorised by Nine and carried out by HWW and its recipients in an “amanuensis-type” role or as a “scribe”. Nine later conceded, however, that it is not simply done by HWW as a “scribe”.
Contractual arrangements
Nine submits that HWW simply puts ‘a layer of fresh copyright’ on the revised Weekly Schedule which is assigned back to Nine when, on instructions from Nine, HWW incorporates, on a running basis, the Late Change Notices. The submission is elucidated by reference to the terms of the HWW Agreement.
Nine is contractually bound to supply HWW with ‘Nine Listings Content’ under the HWW Agreement for each ‘7 day period commencing on Sunday and ending Saturday’ within the term of the agreement. The HWW Agreement relevantly defines “Nine Listings Content” to mean:
‘a list of television programs prepared by or for Nine which provides Program Information about the television programs which are scheduled to be Broadcast by Nine…and includes:
(a) the Program Information;
(b) separate from the Program Information, the format in which Program Information is presented or arranged in the list…’ (emphases added)
“Program Information”, in turn, is defined to mean ‘information about a television program (which may include, for example, the program’s title and identification or description of actors)’, the intended date and time of broadcast, classification information and ‘any other information which may assist a potential viewer in selecting the television program for viewing’. This would include additional program information and the synopses.
The Weekly Schedule, including the manner and form in which it is presented, would fall within the definition of Nine Listings Content. HWW is relevantly licensed under the HWW Agreement to “integrate” the Nine Listings Content with third party content to create Aggregated Guides, subject to certain conditions. Under the HWW Agreement, HWW owns all intellectual property rights in the Aggregated Guides created by it, subject to:
·HWW acknowledging that all applicable intellectual property rights in the Nine Listing Content are owned by Nine; and
·HWW assigning to Nine all rights in edits made to the Nine Listing Content. This would include amendment to include the information in the Late Change Notices.
Under the HWW Agreement, HWW may supplement the Nine Listings Content with additional information, such as movie or program reviews. Nine does not acquire any copyright in such additions.
The fact that Nine retains ownership of rights in the Nine Listing Content under the HWW Agreement does not mean that it owns copyright in the time and title information included in the Aggregated Guides. The relevant compilation produced by Nine that is protected by the Act is the Weekly Schedule. For the reasons earlier given, neither the time and title information itself nor the Late Changes Notices are an original literary work within the meaning of the Act. Nine may retain ownership of the Weekly Schedule under the HWW Agreement but the copyright which vests in any aggregated guide created by HWW is the property of HWW.
The provisions of the eBroadcast Agreement as to copyright ownership are in relevantly the same terms as the HWW Agreement, save for one matter. There is no express provision that Nine does not acquire copyright in additions.
The Yahoo Agreement between HWW and Yahoo provides that HWW owns or is licensee of all rights, title and interest in the content provided to Yahoo for display in the Yahoo7 Guide. No right of ownership of that content is conferred on Yahoo. Yahoo does, however, retain copyright in the “look and feel” of the Yahoo7 Guide.
A confidential agreement between Pagemasters and a third party for the supply of aggregated ‘TV Listings pages’ was also in evidence. [This sentence has been removed to preserve confidentiality].
According to Ms Wieland, no one at Nine is presently charged with the responsibility of supervising the output of HWW, Pagemasters or eBroadcast or their respective clients.
Are the Aggregated Guides separate and distinct copyright works?
It is common ground that Ice has regard to aggregated television guides when updating the IceGuide, in particular:
(1)The YourTV Guide;
(2)The Yahoo7 Guide; and
(3)The OurGuide.
The use that Ice makes of the aggregated compilations is considered later.
Nine relies on the fact that, after the Weekly Schedule is aggregated by HWW and updated by the Late Change Notices under licence, ‘copyright in the consolidated version of the [Weekly Schedule]’ reverts to Nine. Nine asserts that the Aggregators are merely “sub-publishers”. However, Nine accepts that, while the “sub-publishers” publish time and title, they have a “level of determination” that they apply as to whether they link time and title information with additional information or not. Indeed, that is somewhat of an understatement when one considers the activities of HWW. Nine relies upon this to support its submission that “time and title” is a candidate for independent copyright protection.
Nine accepts that the Aggregators use information additional to the Weekly Schedule. Nine also accepts that the ultimate presentation of the information depends on the style of publication of the Aggregators or their clients.
Professor James Lahore and Warwick Rothnie, Copyright and Designs (Butterworths, subscription service) at [6040] describe a compilation as ‘a work formed by the collection and arranging together of pre-existing materials, or of data that are selected, co-ordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship’. Recognising that the definition of a “collective work” in the Act only has statutory force in relation to works made before 1 May 1969, the authors contrast a compilation and a collective work as defined in s 204(2) of the Act. That definition is:
‘collective work means:
(a) an encyclopaedia, dictionary, year book or similar work;
(b) a newspaper, review, magazine or similar periodical; or
(c)a work written in distinct parts by different authors, or in which works or parts of works of different authors are incorporated.’ (original emphasis)
Compilations include collective works but they are conceptually different in scope. In the latter but not the former, the contributions may themselves constitute separate and independent works produced by different authors, in addition to the authorship of the collection as an original work (at [20,010]). More than one copyright may subsist: the copyrights of the authors of individual contributions and the copyright of the arranger or publisher of the work as a whole. Where a compilation is not a collective work, ‘the compiler is in general the sole author of the compilation as an original work’ (emphasis added) (at [20,010]). Neither Nine nor Ice characterised the Aggregated Guides as “collective works”. This is understandable in the statutory context. However, irrespective of the terminology, this accords with the concept that Nine relies on in submitting that the fact of aggregation does not destroy or affect Nine’s copyright in so much of the Weekly Schedule as is incorporated in the Aggregated Guides.
Once HWW works with the individual compilations it receives from the various networks to vary and add to the information, each compilation is effectively “de-compiled” and a new compilation is produced. That, too, necessarily includes not only the information received from Nine but also the information from the other free to air channels. This is not merely a change in form or medium. It is a fundamental change in the nature and content of the compilation itself. The aggregated compilations of listings information produced by HWW set up more complex and subtle relationships between the information they contain. The same may be said of the other Aggregators. While I accept that HWW assigns back to Nine any changes to the Nine Listings Content it is conceded that the new compilation is owned by HWW. The same position applies under the eBroadcast Agreement.
The process of aggregation does not “destroy” Nine’s copyright in the Weekly Schedule. The Weekly Schedule remains a copyright work but it is separate and distinct from the Aggregated Guides, which are themselves original literary works and copyright protected compilations. The Aggregated Guides are:
·different commercial products to non-aggregated schedules. Users of the Aggregated Guides may elect to view program listings information in a single station format with, for example, the YourTV Guide or the Vodaphone Mobile Phone Guide. However, that is the choice of the user of the aggregated guide. The Channel 4 Digital Guide chooses to present time, title and classification information only. That is not what Nine chooses to present to the Aggregators in the Weekly Schedule.
·the product of the expenditure of skill and labour by content aggregators (such as HWW) and certain customers (such as Yahoo) in the creation and maintenance of Aggregated Guides which themselves attract copyright protection.
·customised compilations for publication on the internet, with changed style and format significantly different from that of the Weekly Schedule so as to give rise to independent and claimed (as set out in copyright notices) copyright protection.
Ice accesses the Aggregated Guides which are original compilations. Nine asserts that Ice engaged in wholesale copying of the time and title information in the Aggregated Guides. This is denied by Ice and will be considered later in these reasons, but Ice accepts that it takes information from those guides for the purposes of updating the IceGuide.
The Aggregators integrate, edit and add to the information for inclusion in the Aggregated Guides and determine the arrangement of that information. There is no claim by the Aggregators that Ice has infringed their copyright. The Aggregates “stand between” Ice and the taking of the skill and labour of the creation of the Weekly Schedule. However, it can be said that the preparatory skill and labour protected by the copyright in the Weekly Schedule remains as Nine’s preparatory skill and labour for that part of the Aggregated Guides.
THE ACTIVITIES OF ICE
The IceGuide was created using templates developed by Ice in 2004. Nine contends that Ice copied a published aggregated guide containing the Weekly Schedule to create the templates. The alleged copying was of the time and title information, which Nine submits represents a substantial part of the Weekly Schedule. If that copying took place, Nine says, the requisite causal connection is established. Ice contends that it did not copy but created its templates by watching the broadcast programs and writing down the title of the programs and the days and times at which they were shown.
Nine submits that Ice’s activities in creating, preparing and disseminating the IceGuide involve five acts of copyright infringement:
1.A reproduction of a substantial part of the Nine Schedules (including the Weekly Schedule) in the course of making and updating each IceGuide.
2.A reproduction of the Nine Schedules (including the Weekly Schedule) in the course of storing successive infringing IceGuides in Ice’s database and on servers controlled by it.
3.A reproduction of the Nine Schedules (including the Weekly Schedule) onto the processing memories or hard drives of subscribers’ personal computers (‘PCs’) or “Media Centres”, or alternatively Ice’s authorisation of subscribers’ acts of reproduction.
4.A communication to the public of the Nine Schedules (including the Weekly Schedule) as part of the IceGuide to subscribers via the internet.
5.An authorisation of a subscriber’s reproduction of the Nine Schedules (including the Weekly Schedule) when a subscriber transmits the infringing IceGuide from his or her personal computer to a personal video recorder (‘PVR’).
Nine submits that the first act of infringement ‘lies at the heart of the other acts of infringement. Without it, they are not made out. If it is made out, they follow’.
In order to deal with the infringement allegations, it is necessary to have an understanding of the Ice technology, the IceGuide and its uses.
The Ice technology, the IceGuide and its uses
Stations within the Nine Network broadcast their signal in analogue and digital format. The parties agree that the latter format provides a better quality signal and enhanced program features but requires the use of:
·A fully integrated digital television; or
·An analogue television used in conjunction with a digital set top box decoder (‘set top box’), which converts digital signals into analogue format; or
·A digital television compatible PC, which can receive and display digital television signals on the computer monitor.
Personal video recorders allow users to record television programs on a hard drive within the device. Recorded programs can then be stored and subsequently replayed. Although PVRs are in this sense similar to traditional video recorders, there are differences between the two devices. Digital hard drives produce near perfect reproductions of the original program which are not degraded by subsequent viewings. Further, it is not necessary to fast-forward or rewind a reel of video tape to move through a series of recorded programs; users can move forward or backwards at high speed or “jump” between recordings.
Television programs can also be recorded using a “Media Centre”. Media Centres are computers with hardware and / or software that allows for digital TV receiving and recording capacity. PCs functioning as Media Centres use an operating system designed to facilitate use of the PC for music, photos, video and live and recorded television. Television programs may be recorded onto a hard drive within the Media Centre.
EPGs allow a television program schedule to be viewed on the screen of a television set or computer. The program schedule is presented on-screen in the form of a list or chart showing the different programs available on individual or multiple channels. EPGs can be configured to update the program schedule daily so that the viewer sees the program schedule for the day on which the guide is being viewed, together with a future period. Some EPGs show a program schedule for seven or more days into the future; others show only the name and timeslot for the program currently being broadcast and the next program coming up.
Not all EPGs are “interactive”. For example, the Channel 4 Digital Guide shows program schedules for each of the free to air television networks including program title, time and classification information but the viewer cannot manipulate or navigate through that information. Nor can programs be selected for viewing or recording.
“Interactive EPGs”, by comparison:
·can be used to select programs for recording;
·contain program listings for a period of up to 8 days;
·allow viewers to navigate through weekly program schedules;
·allow viewers to scroll through or across program titles and select programs for future recording by the digital PVR;
·are integrated with the set top box and PVR;
·allow viewers to add programs to a planner which notifies them of programs scheduled to be broadcast and changes the TV to the selected channel before a particular program commences screening.
Receiving the IceGuide
The IceGuide is an interactive EPG which operates in conjunction with certain digital PVRs and some PCs operating as Media Centres. It is the only commercially available EPG in Australia which can be used to record programs with different PVR devices and Media Centres.

It is not disputed that Nine’s employees expend skill and labour in the content and arrangement of the Weekly Schedule in the form in which it is sent to the Aggregators.
Nine contends that, once Mr Healy has decided on the order of the programs best to suit Nine’s commercial and strategic interests, the time and title information in the Weekly Schedule is, in the words of Lindgren J in Desktop at [21], a “whole of universe case” – a case where there was no selection of the subscribers to be included in the directory and where the directory permitted only one mode of arrangement of the factual information and only one mode of expression of the individual entries. In such a case, anyone exploring the same universe would discover the same factual information and would, inescapably, produce a directory relevantly identical in form, as well as in content, to Telstra’s (at [22]–[24]).
In Desktop, the originality of the compilation lay in the labour and expense of collecting the information to be compiled. The copyright attached to the Telstra directories by reason of that skill and labour and not because of the skill and labour of the manner of arrangement of the compilation. Lindgren J noted at [23] that, more commonly, there is some “scope for variance” in the manner in which the individual pieces of factual information are recorded, in the selection of the factual details to be compiled and in the arrangement of the compilation as a whole.
Unlike Desktop, different content and modes of expression and arrangement may be utilised for a television program schedule. A day’s programs may commence at midnight or 6 am, the program may be in a 12- or 24-hour format and the number of days shown in advance may vary. The format may be horizontal or vertical. There exists a scope for variance in the manner of recording of time and description of title. Some columns may not be present in some guides. There is greater scope for variance in the recording of and choice of additional program information to be included. The additional program information and what is included in such information is not preordained. It is a matter of choice whether to include the fact of digital or analogue broadcast, censor rating, black and white or colour. There is the opportunity, here availed of by Ice, to change totally the synopses for each program. The IceGuide has significant differences of form and content.
Nine submits that adding information, albeit complex information and in quantity, does not avoid infringement. For the mere adding of information, that may be so. However, the submission does not take into account the fact that the adding of information may affect the compilation as a whole and the interrelationship of its component parts, so as to affect not only the quantity but also the quality of what it conveys. It is a question of fact and degree.
Recognising that copyright in this compilation is defined by the attributes of selection, expression or arrangement, Ice contends that the copyright subsists in the Weekly Schedule by virtue of each of those attributes. In the circumstances of this case it then follows, according to Ice, that infringement is assessed against each of the attributes of selection, expression and arrangement and, if one of these is missing or not preserved in the Aggregated Guides to which Ice has recourse, there can be no reproduction of the Weekly Schedule by Ice. If, by that submission, Ice submits as a general proposition that there is no infringement of a compilation unless each of the selection, expression and arrangement are reproduced, then that is inconsistent with Lindgren J in Desktop. While the attributes of selection, expression and arrangement have all been exercised in the creation of the Weekly Schedule, a taking of any one of those attributes may be sufficient to constitute the taking of a substantial part of the work as a whole, if the requisite skill and labour have been appropriated.
Further, it is not a question of saying whether the expression “skill, judgment and labour” is conjunctive or disjunctive. It is the correlation between what is being taken by the alleged infringer and what is original and thereby attracts protection under s 32 of the Act. If a work is sufficiently original so as to attract protection but skill and labour is only expended in one of those attributes, it is against that attribute that infringement is measured.
The connection between the particular form of skill and labour and the attraction of copyright protection was emphasised by Black CJ in Desktop at [6]. Justice Lindgren also noted the distinction between the labour and expense of obtaining the information, the necessary information for the arrangement and compilation and then of the actual making of the compilation. 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, 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 – the order of programs to be broadcast. 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 and the information for inclusion in the Weekly Schedule. Ice does not engage in broadcasting. Ice did not take the broadcast information in the Weekly Schedule to create the amended Templates for Sydney. It obtained that information by watching television and writing down the time and title of Nine programs, creating its own additional program information and synopses and amending its templates by reference to the Aggregated Guides. 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. For example, Mr Healy or Ms Wieland may spend a great deal of time, skill and labour in deciding whether to purchase a new series from the United States, negotiating the purchase and deciding the timeslot in which it should be broadcast to maximise viewers. Once that decision is made, the time and title of that program is determined for the purposes of the Weekly Schedule. The skill and labour expended for the purposes of maximising the benefit of the broadcasting is not coextensive with that expended for the purposes of the creation of the copyright work.
The compiler of the Weekly Schedule of Nine programs is not necessarily the same person who determines the programming, the time and tile of the programs and is the author or originator of the facts recorded in the compilation. Once the programs are broadcast, the time, title, nature and content of those broadcast programs are available to the public. A person wishing to compile a schedule of those broadcast programs by viewing them and recording all of that information does not, in the making of that second compilation, appropriate the work of the creator of the record of the programs in the Weekly Schedule. It is similar to a speech and the report of the speech (Walter v Lane [1900] AC 539, cited in Desktop at [68] per Lindgren J); they are two different things and the authors are relevantly two different persons.
The skill and labour of creating the Aggregated Guides accessible to the public, including Ice, is in the content and the form in which the information is there presented. The Aggregated Guides are separate compilations of which the Nine programming information or “Nine Listings Content” represents only a part. They are created by the independent skill and labour of the Aggregators and do not reflect the precise content and arrangement of the Weekly Schedule. Nine does not claim copyright in the Aggregated Guides but says that it retains copyright in so much of those guides as contains the Nine Programming, which was contained in the Weekly Schedule. Ice does not appropriate the skill and labour expended by Nine in arranging the format or the content of the additional program information and the synopses. It created its own templates. It accesses the Aggregated Guides. Ice adopts its own format and provides its own content. It amends the time and title information for some programs that it has not “predicted” correctly. It utilises its own skill and labour, via its software system, to insert that information into the IceGuide. It does not take the skill and labour attributable to the form of the compilation. It does not take sufficient of the skill and labour of the content of the Aggregated Guides, let alone the Weekly Schedule, to constitute a substantial part.
In order to ascertain whether the taking of the slivers of time and title information, individually and cumulatively for a given week constitutes the taking of a substantial part of Nine’s copyright work as it forms part of the Aggregated Guides, a number of factors must be taken into account:
·Ice does not access the Weekly Schedule but the Aggregated Guides.
·The time and title information of the Weekly Schedule does not include the information the subject of the Late Change Notices.
·As Ms Wieland stated, prime-time movies are never included in the Weekly Schedule and new programs may not be included. They are the subject of Late Change Notices.
·Strip programs may be scheduled for broadcast in the same timeslot by Nine for months and sometimes years.
·Programs with episodic series are also often scheduled in the same timeslots for extended periods of time. As already noted, for these programs, the time and title information may be of less qualitative importance than the synopses.
·Each compilation, the Weekly Schedule, the Aggregated Guides and the IceGuide includes the additional information and the synopses.
·Ice refers to the whole of the time and title information in the Aggregated Guides but only takes “slivers” of it. Those “slivers” do not bear substantial importance in relation to the originality of the Weekly Schedule as a whole.
·The synopses are, for each of the Weekly Schedule and the IceGuide, original works with commercial importance.
·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 of the information.
·Ice does not take the arrangement or form.
·Ice expends its own skill and labour and original work in the creation of the IceGuide which is not derived from Nine’s copyright. This includes the creation of the templates, the software to amend the guide, the decisions on what to include in updating and amending the guide, the writing of the synopses and the presentation of the data.
In assessing what Ice does take as a matter of fact and degree, I am of the view that it does not represent a substantial part of the Weekly Schedule. It follows that Ice does not reproduce a substantial part of the Weekly Schedule as it appears in the Aggregated Guides or a substantial part of the Aggregated Guides in the course of making and updating the IceGuide.
The remaining alleged infringements
I have found that Ice does not reproduce a substantial part of the work in which copyright subsists, the Weekly Schedule, in the course of making and updating the IceGuide. Nine accepts that it follows that the second to fifth allegations of infringement must fail. Although it is unnecessary to comment further, I would add the following observations.
Nine conceded during the hearing that the last infringement is ‘[t]he communication to the computer and the arrival [of the IceGuide] on the hard disk’. Accordingly, the allegation that there has been an authorisation by Ice of subscribers to reproduce the Weekly Schedule when transmitting the IceGuide from their PC to a PVR is not in issue. Nine is not relying on the action of any user.
The IceGuide can be made to appear by users in the different formats that are permitted by particular brands of PVR or Media Centre. This may be in a multiple channel, single channel and single program format. Program schedules may be viewed on-screen for a period of six to eight days from the current date. Programs may be selected and recorded. The IceGuide data are stored in files on the hard drive of the user’s device as a text file. That text file has a different format and appearance to the IceGuide and is used by the PVR or Media Centre in order to display the IceGuide.
The other infringements by reproduction
Nine alleges:
·A reproduction of the Nine Schedules (including the Weekly Schedule) in the course of Ice storing successive infringing IceGuides in the Ice Database and on servers controlled by it.
·A reproduction of the Nine Schedules (including the Weekly Schedule) onto the processing memories or hard drivers of subscribers’ PCs or Media Centres, or alternatively Ice’s authorisation of subscribers’ acts of reproduction.
In response, Ice points out that there is no evidence as to the structure of the Ice Database nor any evidence that the IceGuide is stored on users’ PVRs or Media Centres in any format other than text files. Nine’s Convergent Technologies Manager, Mr Joshua Lowcock, explained that there is no requirement for databases to be arranged in a particular way. Data are stored as a series of electrical impulses. The manner of selection, expression and arrangement of the Weekly Schedule would need to be reproduced, Ice submits, for there to be a reproduction in the Ice Database or in the text files. Ice submits that infringement is not established by finding the elements of a compilation somewhere, randomly, on a hard drive or in a database. It is said to follow that the second and third acts of infringement cannot be made out.
If the making and updating of the IceGuide had constituted an infringement, the fact that data may be transmitted and stored by Ice and its subscribers in different formats to the Weekly Schedule would not necessarily mean that the other reproduction allegations would fail (Desktop at [443] per Sackville J). As has earlier been emphasised, if copyright attaches to preparatory skill and labour and not to format, the format of reproduction is not determinative of infringement. Consistent with this principle, s 21(1A) of the Act, on which Nine relies, provides that a work is taken to be reproduced if it is converted into or from a digital or other electronic machine-readable form, and any article embodying the work in such a form is taken to be a reproduction of the work.
In my view, it does not matter what intermediate steps are involved in the passage of data from the IceGuide server to the destination machine, be it a PVR or Media Centre, nor the protocol that the relevant machine has in respect of receiving data. The question is whether the skill and labour in the production of the Weekly Schedule has been appropriated. I accept, for example, that had the first infringement allegation been made out, in the absence of evidence to the contrary, the text files which sit on a subscriber’s PC in a folder on the hard disk would be a reproduction and, therefore, an infringing copy, of the Weekly Schedule for the purposes of the third infringement allegation. That is so whether Ice is considered to have made the reproduction of the text files itself or authorised that reproduction by its subscribers.
Accepting that there is no reproduction or substantial reproduction of the Weekly Schedule on the hard drives of subscribers’ PCs or Media Centres, authorisation does not arise. If there is such reproduction, the facts support the contention that Ice “authorises” the reproduction of the Weekly Schedule by users of the IceGuide within the meaning of s 36 of the Act. It “sanctions, approves and countenances” such activity (The University of New South Wales v Moorhouse (1975) 133 CLR 1 at 12-13 per Gibbs J and at 20-21 per Jacobs J). Ice encourages use of the IceGuide and is, at best, indifferent as to whether the Weekly Schedule is reproduced on the hard drives of subscribers’ PCs or Media Centres (Australasian Performing Right Association Ltd v Metro on George Pty Ltd (2004) 210 ALR 244). Ice has the power to prevent such reproduction and takes no steps to do so. The actions of Ice are not dissimilar to those of the proprietor of software made available from websites enabling copying and communication of sound recordings (Universal Music Australia Pty Ltd v Sharman License Holdings Ltd (2005) 220 ALR 1).
The communication infringement
Nine alleges that Ice’s communication of the Weekly Schedule to subscribers via the internet infringes the exclusive rights provided by s 31(1)(a)(iv) of the Act. To communicate a work is to make the work available online or transmit the work electronically, whether over a path or combination of paths, provided by a material substance or otherwise (s 10(1) of the Act).
The requirement under the Act that the “communication” must be “to the public” means “to the copyright owner’s public” (Telstra Corporation Limited v Australasian Performing Right Association Limited (1997) 191 CLR 140). Ice submits that Ice’s subscribers cannot be considered to be Nine’s “public” because ‘Nine could not reasonably expect payment from anyone…for receipt by [Ice] subscribers of the [Weekly Schedule]’. It points to Mr Marshall’s evidence that there is no paying market for a program guide in non-aggregated format. This does not address Nine’s contention. Nine’s public includes persons who wish to view Nine’s programs. This would include Ice subscribers. Indeed, if it did not, there would be no commercial reason for Ice to include Nine program listings information in the IceGuide.
Ice also points to s 22(6) of the Act which relevantly provides that a “communication” is taken to have been made by the person responsible for determining the content of the communication. That person is said to be the subscriber rather than Ice. Ice relies on the fact that users determine the regularity by which data are downloaded and the subsets of IceGuide data that are downloaded (eg, Sydney rather than Melbourne channels). It follows, Ice submits, that there has been no relevant “communication” by Ice.
The IceGuide is made available online in such a way that it can be electronically transmitted as a result of a request by the user of the IceGuide. The fact that a user may elect to download the IceGuide for only some channels and determine the regularity of “fetch” is not to the point. The content of such data as is downloaded is plainly “determined”, “formulated” or “created” by Ice (Universal Music Australia Pty Ltd v Cooper (2005) 150 FCR 1 at [74] per Tamberlin J). That satisfies s 22(6) of the Act.
It follows that, had the first infringement been made out, I would have been of the view that Ice communicates the Weekly Schedule to the public within the meaning of s 31(1)(a)(iv) of the Act.
LEAVE TO FILE THE SECOND CROSS-CLAIM FOR UNJUSTIFIED THREATS
At the hearing, Ice sought leave to file the second cross-claim seeking a declaration, injunction and damages for unjustified threats pursuant to s 202 of the Act. Leave is required because Ice did not comply with O 5 r 9(1) of the Federal Court Rules (O 5 r 9(2)). Nine opposes leave being granted on the basis that the right to bring the cross-claim does not arise under s 202 and that the discretion should be exercised to refuse leave where Ice sought to file the cross-claim on the second day of hearing. Nine reserves its right to object to the cross-claim as drafted.

Nine issued letters of demand to Ice and Ice Holdings on 28 April 2006 which, Ice contends, threatened Ice with an action or proceeding in respect of an infringement of copyright. Nine commenced proceedings for infringement on 15 May 2006. As at that date, there was no longer a threat, the threat had been “made good” by commencement of the proceedings.
The Act provides a statutory cause of action for groundless threats of infringement, even if made bona fide (Nine Films & Television Pty Ltd v Ninox Television Ltd (2005) 146 FCR 144 at [48] per Lindgren J). Section 202 relevantly provides:
‘(1)Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding in respect of an infringement of copyright, then, whether the person making the threats is or is not the owner of the copyright or an exclusive licensee, a person aggrieved may bring an action against the first‑mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he or she has sustained, unless the first‑mentioned person satisfies the court that the acts in respect of which the action or proceeding was threatened constituted, or, if done, would constitute, an infringement of copyright.
…
(4)The defendant in an action under this section may apply, by way of counterclaim, for relief to which he or she would be entitled in a separate action in respect of an infringement by the plaintiff of the copyright to which the threats relate and, in any such case, the provisions of this Act with respect to an action for infringement of a copyright are, mutatis mutandis, applicable in relation to the action.’
Nine contends that Ice cannot, as a matter of procedure and of statutory construction, commence proceedings by way of originating process or cross-claim once proceedings for infringement have commenced. Nine submits that the commencement by it of the action for infringement “extinguishes” the existence of the threat of an action or proceedings in respect of an infringement of copyright.
There are a number of indicia in s 202 that assist in determining the scope of application of the section:
·The threat is of an action or proceeding. The action or proceeding cannot have commenced before the threat is made. Once the proceedings for infringement are commenced, the threat no longer exists.
·The threat must be unjustifiable, that is the acts in respect of which the complaint is made do not constitute an infringement of copyright.
·The words ‘threatens’ and ‘making the threats’ in s 202(1) are in the present tense.
·An action for groundless threats may be commenced by a “person aggrieved”, that is, standing to bring the action is not restricted to the recipient of the threat. In Avel Proprietary Ltd v MulticoinAmusements (1990) 171 CLR 88 at 118 McHugh J observed that the evident object of the section is to enable a “person aggrieved” by the threat of legal proceedings to obtain a determination as to whether the activities in respect of which an action or proceeding is threatened are an infringement; it prevents the “Sword of Damocles” hanging over the head of the threatened person (Avel Proprietary Ltd (1990) 171 CLR 88 at 104 per Dawson J).
·The remedies provided for are a declaration that the threats are unjustifiable, an injunction against the continuation of the threats and damages. These remedies relate to the threats and not to any action or proceeding for infringement of copyright.
·The remedies are not available if the acts do constitute an infringement of copyright.
·Not only is it a defence that the acts constituted infringement, a defendant in an action for unjustifiable threats may counterclaim, effectively as an action for infringement (s 202(4)).
·There is no provision for an action or a cross-claim for the unjustified or unjustifiable commencement of an action for infringement of copyright.
The prerequisite in s 202(1) is that a person is threatened with an action or proceeding. This refers to a proceeding not yet brought. “Threat” imports an intention to bring an action or ‘an indication of probable evil to come’ (Macquarie Dictionary (4th ed, 2005)). That is the commencement of the proceedings threatened. Once the proceedings have been commenced, the threat to commence those proceedings has ceased. The link between the threat and the commencement of legal proceedings and the need for a statutory remedy in the context of the comparable s 121 of the Patents Act1952 (Cth) (then in force) was commented upon by von Doussa J in Townsend Controls Pty Ltd v Gilead (1989) 14 IPR 443 at 448. His Honour said that the purpose of the section was to provide a statutory remedy where a person makes a threat instead of enforcing the claimed monopoly by instituting proceedings for infringement.
The history of the section suggests that it was concerned to deter unjustified threats themselves, threats that did not result in infringement proceedings or could not be justified by actual infringement; threats made to ‘frighten away competitors or to damage such persons less directly, by threatening to sue their customers or suppliers as joint tortfeasors’ (Ricketson S and Creswell C, The Law of Intellectual Property: Copyright, Designs & Confidential Information (Lawbook Co., subscription service) at [2.195]; Avel Pty Ltd v Intercontinental Grain Importers Pty Ltd (1996) 65 FCR 154 at 159)). It is a right extended to the threatened person not generally available to those threatened with an action for a civil wrong.
Section 202 does not specifically provide for a cross-claim in an infringement action, only for the commencement of an action. However, by O 5 r 1(1) of the Federal Court Rules, a respondent:
‘may cross‑claim against an applicant for any relief to which the respondent would be entitled against the applicant if the applicant were a respondent in a separate proceeding commenced in the Court by the respondent for that purpose.’
Ice did not bring its action when the threats were current. Had it brought the action, Nine would have undoubtedly availed itself of the entitlement in s 202(4) of the Act to bring an action for infringement by way of cross-claim. I do not see that Ice would have been precluded from bringing a cross-claim under s 202(1) just because Nine filed its proceedings first. It is important, however, to make it clear that Ice at no time has the right under s 202 to claim for any remedy that is not based upon the threats. To the extent that those threats were directed to Ice, they ceased upon the commencement of proceedings by Nine. Section 202 does not entitle Ice to claim damages resulting from the commencement of these proceedings.
There remains the question of discretion to permit Ice to file the second cross-claim. The parties relied on written submissions only. Where those submissions refer to correspondence not in evidence but without objection, I will accept the summary of that correspondence. In the history of these proceedings, Nine points out that Ice did not provide for a cross-claim in consent orders. Subsequently, Ice filed a cross-claim (‘the first cross-claim’) without leave but that cross-claim did not include a claim for unjustified threats under s 202. Approximately ten days before the commencement of the hearing, approximately five months after the commencement of proceedings, Ice notified Nine that it “reserved its rights” to commence proceedings pursuant to s 202(1) if Nine were unsuccessful in establishing its allegations of infringement. Ice had notified Nine that the first cross-claim was to be withdrawn some six weeks prior to the commencement of the hearing but it did not formally seek leave to discontinue that cross-claim until the second day of the hearing, when it also sought leave to file the second cross-claim.
The threats were not made to a third party but to Ice and Ice Holdings. The time between the threats being made (28 April 2006) and the commencement of proceedings (15 May 2006) is short. There is no evidence of any damage that flowed to Ice in that intervening time. Ice has particularised the damages claimed but it is not clear whether such damage occurred prior to the commencement of proceedings. Ice has not demonstrated that there is any utility in a declaration or injunction under s 202(1) once Nine’s claim for infringement is dismissed. Nine submits that Ice’s failure to alert it to the possibility of the second cross-claim prior to the commencement of the hearing may have resulted in prejudice. While there is no evidence of such prejudice, had Nine known that Ice intended to proceed under s 202(1), there may well have been actions that it might have taken or considered taking. Nine was entitled to know the totality of the case before the second day of the hearing.
While the second cross-claim would not prolong the existing application by Nine, permitting Ice to file the second cross-claim would prolong the proceedings between the parties. The injustice to Nine if the second cross-claim were filed would, it seems to me, to be out of proportion to the injustice to Ice if leave is refused (Incentive Dynamics Pty Ltd (In Liquidation) v Robins [1998] FCA 1046 per Mansfield J). Ice contends that, if leave is refused, it could commence separate proceedings under s 202. That is, of course, a matter for Ice. Such a right lessens the injustice that Ice might otherwise suffer if it were totally precluded from exercising its rights under the section.
In the circumstances and in the exercise of my discretion, I decline to grant leave to Ice to file the second cross-claim.
SUMMARY OF FINDINGS
For the reasons I have given, the application should be dismissed. For convenience only, a summary of my findings follows.
The Weekly Schedule is the copyright work
The work produced by Nine that is relevant to these proceedings is the Weekly Schedule. The Weekly Schedule is a product of Nine’s skill and labour in selecting and ordering programs for broadcast. It is also a product of Nine’s skill and labour in presenting or arranging the information therein in the form chosen by Nine. That skill and labour includes the synopses drafted or edited by Nine. Ice accepts that copyright subsists in each Weekly Schedule as an original literary work (s 32 of the Act).
Each of the components of the Weekly Schedule, including the days of the week, program time and title, additional program information and the synopses, are an integral part of that compilation. Copyright subsists in the compilation as a whole. Nine cannot claim copyright in the time and title information for a single day or week as if that information were itself a separate compilation. Nor can Nine claim copyright in its Late Change Notices. The Late Changes Notices are neither accessed by Ice nor included in the Weekly Schedule.
The Aggregated Guides are separate compilations
The Aggregators integrate the information in the Weekly Schedule with comparable information obtained from other free to air networks for publication in the Aggregated Guides. The aggregation of information does not “destroy” Nine’s copyright in the Weekly Schedule. It does, however, result in the creation of the Aggregated Guides: compilations which are themselves separate and distinct from the Weekly Schedule. The Aggregated Guides are a product of the skill and labour of the Aggregators and their clients (eg, Yahoo). They differ in form and content to the Weekly Schedule. It can, however, be said that the preparatory skill and labour protected by the copyright in the Weekly Schedule remains as Nine’s preparatory skill and labour for that part of the Aggregated Guides.
Ice does not infringe copyright in the Weekly Schedule
It is open at law to a person to ascertain the facts recorded in a compilation by independent inquiry and to compile his or her own compilation on the basis of that independent inquiry (Desktop). This is what Ice did during the “torture period” in 2004, when Mr Rilett developed the Templates for Sydney by watching television for three weeks and recording the details of the programs screened including name, channel and day of broadcast. Mr Rilett did not copy from the Aggregated Guides to create the Templates for Sydney.
The Templates for Sydney were entered into Ice’s database and formed the basis for the IceGuide. Mr Rilett amended the time and title information in those templates prior to their entry into the Ice Database by reference to the Aggregated Guides. That means of amendment of information in the Ice Database continues today. Ice operators “predict over” a past IceGuide schedule from the same day of the week in a previous week to make a new IceGuide for that day. This involves use of Ice’s software and the drawing of information in Ice’s database. Ice checks each entry for the new IceGuide by reference to the Aggregated Guides and makes changes to the time and title information to reflect weekly variations in Nine’s programming and late changes. The result is the creation of an IceGuide schedule which contains time and title information (but not additional information or synopses) that may be more than 99% similar to that part of the Aggregated Guides that reflects the Nine Programming.
Nine submits, as its primary case, that the making and updating of the IceGuide in this manner has resulted in the reproduction of a substantial part of its copyright work. This is a question of fact and degree to be tested by reference to the similarity between the works, the extent of actual copying, the quality and originality of what is taken and the interest which the copyright protects. Each case turns on its own facts.
Nine relies heavily on Desktop. Desktop was, however, a “whole of universe” case. A telephone directory permits no selection of the subscribers to be included and only one mode of arrangement and expression of the factual information therein. The interest that the copyright protected in Desktop was the skill and labour of gathering together in one place the details of all of the members of a given universe – the telephone subscribers in a region. By reason of the subject matter, the manner of alphabetical arrangement of the information was inevitable.
Different content and modes of expression and arrangement may be utilised for a television schedule. The Weekly Schedule, the Aggregated Guides and the IceGuide each differ in their manner of selection, expression and arrangement. It follows that form and content are each relevant to the question of infringement.
Ice does not engage in broadcasting. It does not take the skill and labour of placing programs in an order that appeals to viewers in that Ice plays no part in the placement of programs. It does not take the format of the Weekly Schedule. It does not take synopses from the Weekly Schedule. It conducts its own research and drafts its own synopses.
Ice does take slivers of time and title information each day from the Aggregated Guides. For the reasons I have set out in detail, Ice does not reproduce a substantial part of the Weekly Schedule in so doing.
It follows that Ice has not infringed Nine’s copyright in the course of making and updating the IceGuide. Nine accepts that, in these circumstances, the other infringement allegations must also fail.
Ice is not precluded from bringing a claim for unjustified threats of copyright infringement pursuant to s 202(1) of the Act because Nine commenced proceedings for infringement before such a claim was made. However, for the reasons I have given, leave to file the second cross-claim is refused.
I will hear from the parties before making orders as to costs.

I certify that the preceding two hundred and fifty-two (252) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Bennett.
Associate:
Dated: 9 August 2007

Counsel for the Applicant: R Cobden SC and J M Hennessy

Solicitor for the Applicant: Gilbert + Tobin

Counsel for the Respondents: J M Ireland QC, S C G Burley and J Cooke

Solicitor for the Respondents: The Argyle Partnership

Date of Hearing: 16-20 October 2006, 30 November 2006

Date of Final Submissions: 20 December 2006

Date of Judgment: 9 August 2007
ANNEXURE ‘A’
ANNEXURE ‘B’
ANNEXURE ‘C’
ANNEXURE ‘D’
ANNEXURE ‘E’

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 935 OF 2006

JUDGE:	BENNETT J
DATE OF ORDER:	9 AUGUST 2007
WHERE MADE:	SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 935 OF 2006

JUDGE:	BENNETT J
DATE:	9 AUGUST 2007
PLACE:	SYDNEY

Counsel for the Applicant:	R Cobden SC and J M Hennessy
Solicitor for the Applicant:	Gilbert + Tobin
Counsel for the Respondents:	J M Ireland QC, S C G Burley and J Cooke
Solicitor for the Respondents:	The Argyle Partnership
Date of Hearing:	16-20 October 2006, 30 November 2006
Date of Final Submissions:	20 December 2006
Date of Judgment:	9 August 2007