Telstra Corporation Ltd v Phone Directories Co Pty Ltd
[2010] FCA 44
•8 February 2010
FEDERAL COURT OF AUSTRALIA
Telstra Corporation Limited v Phone Directories Company Pty Ltd
[2010] FCA 44
Citation: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 Parties: TELSTRA CORPORATION LIMITED (ACN 051 775 556) and SENSIS PTY LTD (ACN 007 423 912) v PHONE DIRECTORIES COMPANY PTY LTD (ACN 059 776 091), AUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN 078 856 318), ADAM HARGRAVES, GLENN HARGRAVES, DANIEL STOTEN and LOCAL DIRECTORIES PTY LTD (ACN 130 550 971) File number: VID 276 of 2007 Judge: GORDON J Date of judgment: 8 February 2010 Catchwords: INTELLECTUAL PROPERTY – whether copyright subsists in White Pages and Yellow Pages directories as original literary works – central concepts under the Copyright Act 1968 (Cth) – centrality of authorship – whether the contributions to the directories involved the necessary independent intellectual effort or sufficient effort of a literary nature Words & Phrases: “author”, “independent intellectual effort”, “original”, “sufficient effort of a literary nature” Legislation: Copyright Act 1968 (Cth)
US Free Trade Agreement Implementation Act 2004 (Cth)Cases cited: Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339
Autodesk Inc v Dyason (1992) 173 CLR 330
Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd (No. 1) [1995] FSR 818
Data Access Corporation v Powerflex Services Pty Ltd (1999) 202 CLR 1
Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491
Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637
IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 254 ALR 386
Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348
Hollinrake v Truswell [1894] 3 Ch 420
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29
Levy v Rutley (1871) LR 6 CP 523
Liftronic Pty Ltd v Unver (2001) 179 ALR 321
Macmillan and Co Ltd v Cooper (1923) 1B IPR 204
Metwally v University of Wollongong (1985) 60 ALR 68Microsoft Corporation v DHD Distribution Pty Ltd (t/as Austin Computers) (1999) 45 IPR 459
Microsoft Corporation v PC Club Australia Pty Ltd (2005) 148 FCR 310
Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436
Prior v Lansdowne Press Pty Ltd (1975) 12 ALR 685
Robinson v Sands & McDougall Pty Ltd (1916) 22 CLR 124
Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49
Sawkins v Hyperion Records Ltd (2005) 64 IPR 627
Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2001) 51 IPR 257
University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601
Vawdrey Australia Pty Ltd v Krueger Transport Equipment Pty Ltd (2009) 83 IPR 1
Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) (2009) 177 FCR 61
Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479
Waterlow Publishers v Rose (1989) 17 IPR 493William Hill (Football) Ltd v Ladbroke (Football) Ltd [1980] RPC 539
Davison, The Legal Protection of Databases, (2003)
Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs, (3rd ed, 2000)Date of hearing: 21-23, 26 and 29 October 2009 Date of last submissions: 9 November 2009 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 347 Counsel for the Applicants: Mr R Macaw QC, Mr A Ryan SC and Mr S Rebikoff Solicitor for the Applicants: Mallesons Stephen Jaques Counsel for the Respondents: Mr C Golvan SC and Dr S Ricketson Solicitor for the Respondents: Middletons
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 276 of 2007
GENERAL DIVISION
BETWEEN: TELSTRA CORPORATION LIMITED (ACN 051 775 556)
First ApplicantSENSIS PTY LTD (ACN 007 423 912)
Second ApplicantAND: PHONE DIRECTORIES COMPANY PTY LTD (ACN 059 776 091)
First RespondentAUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN 078 856 318)
Second RespondentADAM HARGRAVES
Third RespondentGLENN HARGRAVES
Fourth RespondentDANIEL STOTEN
Fifth RespondentLOCAL DIRECTORIES PTY LTD (ACN 130 550 971)
Sixth Respondent
JUDGE:
GORDON J
DATE OF ORDER:
8 FEBRUARY 2010
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
By 4:00pm on 12 February 2010, the parties are directed to bring in a proposed minute of consent orders to give effect to these reasons for decision. If the parties are unable to agree on a proposed minute of consent orders, the proceeding will be listed for further hearing at 9:30am on 15 February 2010.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.
INDEX TO REASONS FOR JUDGMENT
CONTENT
PARA NOS
I
INTRODUCTION
[1] – [5]
II
THE COPYRIGHT ACT - THE PROPER STARTING POINT
[6] – [30]
A. The Copyright Act in Context
[7] – [10]
B. Central Concepts in the Copyright Act
[11] – [28]
C. International Response to Copyright Protection of Relational Databases
[29] – [30]
III
APPLICANTS’ APPROACH TO THE QUESTION OF SUBSISTENCE REJECTED
[31] – [45]
IV
THE APPLICATION OF DESKTOP MARKETING
[46]
V
FACTS
[47] – [54]
A. Overview
[55] – [59]
B. The Development of Computer Systems
[60] – [87]
1. Prior to 2001 and 2003
[61] – [71]
(a) WPD
[62] – [66]
(b) YPD
[67] – [71]
2. Genesis Computer System
[72] – [81]
3. Supporting Systems
[82] – [86]
4. Conclusions
[87]
C. The Rules
[88] – [166]
1. Introduction
[88] – [89]
2. What are the Rules?
[90] – [92]
3. The Parts of the Rules
[93] – [118]
(a) The WPD Rules
[95] – [105]
(b) The YPD Advertising Rules
[106] – [112]
(c) The Product Standards
[113] – [118]
4. Creation of the Rules
[119] – [122]
5. How the Rules are Used
[123] – [128]
(a) POST and Listing Maintenance
[129] – [148]
(b) Book Extract and Book Production
[149] – [161]
6. Conclusions
[162] – [166]
D. Identity of Authors
[167] – [173]
1. Sensis Employees
[168] – [169]
2. Contractors
[170] – [173]
E. Production of a Particular WPD
[174] – [268]
1. Existing Listing
[175] – [211]
(a) Creating the initial listing record
[175] – [179]
(b) Obtaining updated listing information
[180] – [192]
(c) Entering the updated information into the database
[193] – [205]
(d) Checking the updated listing record after entry in the database
[206] – [210]
(e) Other amendments to existing listings
[211]
2. New Listing
[212] – [243]
(a) Service orders
[213] – [227]
(b) Customer contact
[228] – [237]
(c) Sales contact
[238] – [242]
(d) Checking the new listing after entry
[243]
3. Publication of the WPD
[244] – [268]
(a) Verification of listing information prior to publication
[244] – [251]
(b) Extraction and presentation of listings
[252] – [259]
(c) Verification of listings after extraction
[260] – [262]
(d) Typesetting and pagination of the directory
[263] – [268]
F. Production of a Particular YPD
[269] – [325]
1. Existing Listing
[269] – [299]
(a) Creating the initial listing record
[269] – [273]
(b) Obtaining updated listing information
[274] – [283]
(c) Entering the updated information into the database
[284] – [292]
(d) Checking the updated listing record after entry in the database
[293] – [295]
(e) Other amendments to existing listings
[296] – [299]
2. New Listing
[300] – [306]
(a) Obtaining new listing information and creating a new listing record
[300] – [305]
(b) Checking the new listing after entry
[306]
3. Publication of the YPD
[307] – [325]
(a) Verification of listing information prior to publication
[307] – [310]
(b) Extraction and presentation of listings
[311] – [317]
(c) Verification of listings after extraction
[318] – [320]
(d) Typesetting and pagination of the directory
[321] – [325]
G. Changes in the WPD and YPD Production Process Over Time
[326] – [329]
VI
ANALYSIS
[330] – [344]
A. Identity of the Work
[331] – [332]
B. Authorship
[333] – [338]
C. First Publication of the Work
[339]
D. Originality
[340] – [344]
VII
THE PRE-GENESIS DIRECTORIES
[345] – [346]
VIII
ORDERS
[347]
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 276 of 2007
GENERAL DIVISION
BETWEEN: TELSTRA CORPORATION LIMITED (ACN 051 775 556)
First ApplicantSENSIS PTY LTD (ACN 007 423 912)
Second ApplicantAND: PHONE DIRECTORIES COMPANY PTY LTD (ACN 059 776 091)
First RespondentAUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN 078 856 318)
Second RespondentADAM HARGRAVES
Third RespondentGLENN HARGRAVES
Fourth RespondentDANIEL STOTEN
Fifth RespondentLOCAL DIRECTORIES PTY LTD (ACN 130 550 971)
Sixth Respondent
JUDGE:
GORDON J
DATE:
8 FEBRUARY 2010
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
INTRODUCTION
The question for determination is whether copyright subsists in the White Pages (WPDs) and Yellow Pages (YPDs) directories published by the applicants, Telstra Corporation Limited (ACN 051 775 556) (Telstra) and Sensis Pty Ltd (ACN 007 423 912) (Sensis) (collectively, the Applicants). These proceedings, commenced on 5 April 2007, concern the WPDs listed in Annexure A and the YPDs listed in Annexure B (collectively, the Works). The first date of publication of each directory is listed in the Annexures. Publication dates range from 2000 to 2009.
Many thought that the issue in these proceedings – whether the WPDs and YPDs published by the Applicants satisfy the requirements of the Copyright Act 1968 (Cth) (the Copyright Act) to attract the statutory monopoly granted by that Act – might have been resolved by the decision of the High Court in IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 254 ALR 386 (IceTV). It seems they were mistaken. The Respondents say it was. The Applicants say it was not.
Although a number of the WPDs and YPDs for particular regions published by the Applicants are bound together (the co-bound volumes), the Applicants contend that each WPD and each YPD is a separate work. In fact, the Applicants contend that the elements or components of the directories that satisfy the requirements of the Copyright Act as “original literary works” are the listings, enhancement of listings and arrangement of listings (in the case of WPDs) and the listings, headings, enhancement of listings and arrangement of listings under headings (in the case of YPDs). Having abandoned its claim with respect to the Headings Book (the list of headings under which entries in the YPDs are entered), Senior Counsel for the Applicants described the claim in the following terms:
In the case of the White Pages directories the compilation involves the expression, including the content, form and arrangement of information in individual listings, and the overall arrangement of individual listings into the whole. Insofar as the Yellow Pages directories are concerned, the same observation is apt, but in addition there is the element that arrangement occurs under headings and includes therefore cross-references …
No broader claim was made.
On 16 June 2009, I directed that the question of whether copyright subsists in the Works be determined as a preliminary question. The Applicants filed 91 affidavits in relation to that issue alone.
For the reasons that follow, copyright does not subsist in any Work. None is an original literary work. By way of summary:
1.among the many contributors to each Work, the Applicants have not and cannot identify who provided the necessary authorial contribution to each Work. The Applicants concede there are numerous non-identified persons who “contributed” to each Work (including third party sources);
2.even if the human or humans who “contributed” to each Work were capable of being identified (and they are not), much of the contribution to each Work:
2.1was not “independent intellectual effort” (IceTV 254 ALR 386 at [33]) and further or alternatively, “sufficient effort of a literary nature” (IceTV 254 ALR 386 at [99]) for those who made a contribution to be considered an author of the Work within the meaning of the Copyright Act;
2.2further or alternatively, was anterior to the Work first taking its “material form” (IceTV 254 ALR 386 at [102]);
2.3was not the result of human authorship but was computer generated;
3.the Works cannot be considered as “original works” because the creation of each Work did not involve “independent intellectual effort” (IceTV 254 ALR 386 at [33]) and / or the exercise of “sufficient effort of a literary nature”: IceTV 254 ALR 386 at [99]; see also IceTV 254 ALR 386 at [187]-[188].
THE COPYRIGHT ACT – THE PROPER STARTING POINT
Throughout these reasons for decision, reference is made to the provisions of the Copyright Act in force over the period in dispute – 2000 to 2009. It should be noted that in 2005 the Copyright Act was amended by the US Free Trade Agreement Implementation Act 2004 (Cth) (the US Free Trade Act). Pursuant to Sch 9 Pt 10 item 186 of the US Free Trade Act, the definition of “material form” was substituted to no longer require a work or adaptation of a work to be capable of reproduction in order to have copyright protection: see the Explanatory Memorandum to the US Free Trade Agreement Implementation Bill 2004 at para [668]. Nothing in this case turns on that amendment.
A. THE COPYRIGHT ACT IN CONTEXT
As the reasons of the High Court in IceTV 254 ALR 386 demonstrate, it is necessary to begin the enquiry into the issues about subsistence (and ownership) of copyright at the proper starting point – the Copyright Act.
Several fundamental propositions are provided for by the Copyright Act and, in particular, Pt III of the Act. First, as s 8 of the Copyright Act relevantly provides, “copyright does not subsist otherwise than by virtue of [the Copyright] Act”. Copyright is a form of statutory monopoly: IceTV 254 ALR 386 at [11], [15], [22], [28] and [65]-[71].
Secondly, a balance is struck between monopoly (on the one hand) and promotion (and protection) of originality in new works (on the other hand): IceTV 254 ALR 386 at [24]-[26] and [71].
Thirdly, that balance is struck by statutory language that (a) is not precise (IceTV 254 ALR 386 at [68]-[69]) and (b) has permitted (if not encouraged) resort to metaphors and rhetoric (IceTV 254 ALR 386 at [31] and [69]-[70]). Metaphor and rhetoric do not provide a proper starting point. They are no more than attempts at descriptions of result. Such approaches find no support in the Copyright Act.
B. CENTRAL CONCEPTS IN THE COPYRIGHT ACT
Next, a number of central concepts in the Copyright Act, and how they interrelate, need to be examined.
Those concepts are “literary work”, “original” and “author”. Part III of the Copyright Act (ss 31 to 83) deals with “Copyright in Original Literary, Dramatic, Musical and Artistic Works”. Division 1 of Pt III is concerned with the nature, duration and ownership of copyright in these works.
Section 32(1) provides that, subject to the Copyright Act:
copyright subsists in an original literary … work that is unpublished and of which the author:
(a) was a qualified person at the time when work was made; …
(Emphasis added).
A “qualified person” means an Australian citizen or a person resident in Australia: s 32(4).
Section 32(2) provides that, subject to the Copyright Act:
[w]here an original literary … work has been published:
(a) copyright subsists in the work; or
…
if, but only if:
(c)the first publication of the work took place in Australia;
(d)the author of the work was a qualified person at the time when the work was first published; or …
(Emphasis added).
A reference to “an author of a work”, in relation to a work of joint authorship, is a reference to all authors of the work: s 78. The references in s 32 of the Copyright Act to “the author of the work” in relation to a work of joint authorship are to be read as references to any one or more of the authors of the work: s 79. Copyright subsists in a work until the end of 70 years after the end of the calendar year in which the author of the work died: s 33(2).
“Literary work” is defined in s 10(1) to include:
(a)a table, or compilation, expressed in words, figures or symbols; and
(b)a computer program or compilation of computer programs.
Subject to s 35(6), the author of a literary work is the owner of any copyright subsisting in the work: s 35(2). Section 35(6) provides that where a literary work is made by the author pursuant to the terms of his or her employment by another person under a contract of service, that other person is the owner of the copyright subsisting in the work.
The nature of a copyright right is defined in s 31 as the exclusive right “in relation to a work” (including a literary work) to do all or any of the following acts:
(i) to reproduce the work in a material form;
(ii)to publish the work;
(iii)…
(iv)to communicate the work to the public;
(v)…
(vi)to make an adaptation of the work; …
The expression “material form” in relation to a work is defined in s 10(1) to include (cf [6] above):
any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced).
The centrality of authorship is self evident.
1.The “theoretical underpinnings” of the Copyright Act strike a balance between rewarding authors of original literary works against policy considerations concerning “the public interest in maintaining a robust public domain in which further works are produced”: IceTV 254 ALR 386 at [24] and [71]. The genesis of copyright legislation in England was to protect the rights of authors of work from the reproduction of their work without their consent: see IceTV 254 ALR 386 at [25].
2.The Copyright Act fixes on the author: ss 32, 33, 35 and 127 of the Copyright Act; IceTV 254 ALR 386 at [22]-[25] and [96]-[97] and Vawdrey Australia Pty Ltd v Krueger Transport Equipment Pty Ltd (2009) 83 IPR 1 at [147] per Lindgren J.
3.The author is the person or persons who bring the work into existence in its material form: s 10(1), 31 and 32 of the Copyright Act and IceTV 254 ALR 386 at [26], [33] and [98]-[99]. To be considered as an author of a literary work the person or persons must have exercised “independent intellectual effort” (IceTV 254 ALR 386 at [33] and [48]) and / or “sufficient effort of a literary nature” (IceTV 254 ALR 386 at [99]).
4.The Copyright Act provides for the possibility of joint authors: s 10(1) of the Copyright Act and IceTV 254 ALR 386 at [23] and [100]. A “work of joint authorship” requires that the literary work in question “has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors”: s 10(1) of the Copyright Act; see also Levy v Rutley (1871) LR 6 CP 523 at 529 per Keating J; Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd (No. 1) [1995] FSR 818 at 835-836 per Laddie J; Prior v Lansdowne Press Pty Ltd (1975) 12 ALR 685 at 688 per Gowans J.
5.The Copyright Act also provides for compilations – the bringing into existence of a literary work which gathers and organises material from various sources: IceTV 254 ALR 386 at [72], quoting William Hill (Football) Ltd v Ladbroke (Football) Ltd [1980] RPC 539 at 550 per Diplock LJ. The fact a work is a compilation will itself inform the issues of authorship to be considered: IceTV 254 ALR 386 at [99]. The author or authors will be those who gather or organise the collection of material and who select, order and arrange its fixation in material form: ss 10(1), 31 and 32 of the Copyright Act and of IceTV 254 ALR 386 at [73]-[74] and [99]. However, it is a question of fact and degree which one or more of them will have expended “sufficient effort of a literary nature” to be considered an author under the Copyright Act: IceTV 254 ALR 386 at [99].
6.Original works emanate from authors: ss 32, 33 and 35 of the Copyright Act and IceTV 254 ALR 386 at [22], [24], [33], [48] and [96]. Authorship and originality are correlatives: IceTV 254 ALR 386 at [33], [34], [47]-[49], [52] and [54]. In that context, as mentioned in [20(3)] above, “originality” under the Copyright Act “means that the creation (ie the production) of the work required some independent intellectual effort” and / or the exercise of “sufficient effort of a literary nature”: IceTV 254 ALR 386 at [33], [47]-[48] and [99]; see also at [187]-[188] and discussion of the need for some “creative spark” and exercise of “skill and judgment”. The phrases adopted are different. However, each phrase confirms that for a work to be sufficiently original for the subsistence of copyright, “substantial labour” and / or “substantial expense” is not alone sufficient. More is required. What that more is will, of course, vary from case to case but must involve “originality” by an identified author in an identified work. Where the expression of the work is dictated by the nature of the information the subject of expression without such effort, it will go against a finding of originality: IceTV 254 ALR 386 at [42] and [170].
7.The Copyright Act does not protect facts, ideas or information contained in a work, to ensure a balance is struck between the interests of authors and those in society: IceTV 254 ALR 386 at [28] and the cases cited therein. The Copyright Act does not provide protection for skill and labour alone: IceTV 254 ALR 386 at [49], [52], [54] and [131].
8.The Copyright Act protects the particular form of expression of the information: IceTV 254 ALR 386 at [26], [28], [40], [70], [102] and [160]; Hollinrake v Truswell [1894] 3 Ch 420 at 424 per Lord Herschell LC; Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) (2009) 177 FCR 61 at [17] per Emmett J; see also Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29 at [40], [41] and [212]. Copyright is not given to reward work distinct from the production of a particular form of expression: IceTV 254 ALR 386 at [28] and [31]. Accordingly, it is “unhelpful to refer to the ‘commercial value’ of the information, because that directs attention to the information itself rather than to the particular form of expression”: IceTV 254 ALR 386 at [31] and [166].
9.As compilations often contain facts and information, it is necessary to focus on the nature of the skill and labour required to create the work and ask whether it is directed to the originality of the particular form of expression: IceTV 254 ALR 386 at [31], [33], [47]-[48], [52] and [54].
10.“Fixation” or identification of the original work is essential: ss 8 and 31-35 of the Copyright Act and IceTV 254 ALR 386 at [15], [24]-[28] and [102]-[105]. Copyright does not subsist in a work unless and until the work takes a material form: IceTV 254 ALR 386 at [26] and [103].
As explained above (see [20(6)]), originality is closely tied to authorship. It requires that works originate with an author and that “the creation (that is the production) of the work [involve] some independent intellectual effort, but neither literary merit nor novelty or inventiveness as required in patent law”: IceTV 254 ALR 386 at [33] and [48]. This view is consistent with a long line of authority: see University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608-609 per Peterson J; Robinson v Sands & McDougall Pty Ltd (1916) 22 CLR 124 at 132-133 per Barton J; Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 at 52 per Isaacs J; Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 511 per Dixon J; Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637 at 651 per Upjohn J; Autodesk Inc v Dyason (1992) 173 CLR 330 at 347 per Dawson J; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 379 per Gummow J; Data Access Corporation v Powerflex Services Pty Ltd (1999) 202 CLR 1 at [22], [95] and [122] per Gleeson CJ, McHugh, Gummow and Hayne JJ; Sawkins v Hyperion Records Ltd (2005) 64 IPR 627 at [31] per Mummery LJ; Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) (2009) 177 FCR 61 at [18] per Emmett J.
Moreover, at [47] and [48] of IceTV 254 ALR 386, French CJ, Crennan and Kiefel JJ stated:
[47]Much has been written about differing standards of originality in the context of the degree or kind of “skill and labour” said to be required before a work can be considered an “original” work in which copyright will subsist. “Industrious collection” or “sweat of the brow”, on the one hand, and “creativity”, on the other, have been treated as antinomies in some sort of mutually exclusive relationship in the mental processes of an author or joint authors. They are, however, kindred aspects of a mental process which produces an object, a literary work, a particular form of expression which copyright protects. A complex compilation or a narrative history will almost certainly require considerable skill and labour, which involve both “industrious collection” and “creativity”, in the sense of requiring original productive thought to produce the expression, including selection and arrangement, of the material.
[48]It may be that too much has been made, in the context of subsistence, of the kind of skill and labour which must be expended by an author for a work to be an “original” work. The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort. …
(Emphasis added, citations omitted).
Similar warnings were contained in the joint judgment of Gummow, Hayne and Heydon JJ at [187] and [188]:
[187]… This concerns the submission by the Digital Alliance that this Court consider the Full Court’s decision in Desktop Marketing and, to the contrary of Desktop Marketing, affirm that there must be some “creative spark” or exercise of “skill and judgment” before a work is sufficiently “original” for the subsistence of copyright.
[188]It is by no means apparent that the law even before the 1911 Act was to any different effect to that for which the Digital Alliance contends. It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years. These reasons explain the need to treat with some caution the emphasis in Desktop Marketing upon “labour and expense” per se and upon misappropriation. However, in the light of the admission of Ice that the Weekly Schedule was an original literary work, this is not an appropriate occasion to take any further the subject of originality in copyright works.
(Citations omitted).
As these passages make clear, care must be taken not to extend the notion of originality beyond that which the Copyright Act was and is intended to protect.
During the hearing, the Respondents often submitted that a particular alleged contribution to the Works was too “remote”. I do not consider that approaching the question of subsistence of copyright is assisted by seeking to classify the contribution as “remote” or “too remote”. How would you assess it – by activity, by time spent, temporally to the ultimate production of each Work? The extent to which individual authors contribute to a work is a matter of fact, and attempting to craft legal rules applicable to that factual inquiry is something to be approached with caution: see Macmillan and Co Ltd v Cooper (1923) 1B IPR 204 at 212-3 per Lord Atkinson; Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339 at [38] per Finkelstein J.
The central question is whether the alleged contribution involved independent intellectual effort and / or sufficient effort of a literary nature (see [20(3)] and [20(6)]) and whether the skill and labour required for the creation of the work was directed to the originality of the particular form of expression (see [20(8) and (9)]). Again, this is a factual matter to be determined on the circumstances of the particular case: see Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 289-290 per Lord Devlin; Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436 at [21]-[24]; see also Data Access Corporation v Powerflex Service Pty Ltd (1999) 202 CLR 1 at [123] per Gleeson CJ, McHugh, Gummow and Hayne JJ.
Finally, particular challenges are created by the use of information technology, and particularly databases, in the creation of compilations which may or may not be protected as literary works. As noted above at [20(10)], the identification of the work in question is pivotal. At [151]-[152] of IceTV 254 ALR 386, Gummow, Hayne and Heydon JJ discussed, without conclusively determining, some of the considerations involved where the work in question is an electronic database, based on the observations of Professor Davison in his work The Legal Protection of Databases (2003). What guidance was offered can be summarised as follows:
1.Creating and updating an electronic database requires decisions to be made regarding the construction of the database, as human thought contributes to the scheme for the database and the conception of how the material would look to the external user; and
2.A claim of authorship over a database is based upon the consideration of the possible outcomes of input into the database. The choice of software used in the database determines the operation of the database and the data included.
In other words, a claim of authorship in a database may arise where a person (an author) determines how a database will function and be expressed. The independent intellectual effort expended in making those determinations might go to the originality of the particular form of expression of the work (namely, the database).
Therefore, completion of the following steps will assist in determining whether copyright subsists in a given work:
1.Identify the work in suit: see [20(10)] and [27] above.
2.Identify the author or authors of the work: see [20(1)-(6)], [21] and [25] above. (In certain circumstances a work can be the subject of a presumption of authorship: s 127 of the Copyright Act).
3.Determine when the first publication of the work occurred: see [20(10)] above and s 32(2)(c) of the Copyright Act.
4.Identify how the work is original: see [20(6)-(9)], [21]-[24] and [26] above.
C. INTERNATIONAL RESPONSE TO COPYRIGHT PROTECTION OF RELATIONAL DATABASES
The Works in issue are the product of what is known as a “relational database”. Internationally, courts and legislatures have recognised that these kinds of works are not often capable of copyright protection consistently with the principles earlier identified. As a result, other jurisdictions have developed specific legal protections to deal with them. In IceTV 254 ALR 386 at [135]-[138], Gummow, Hayne and Heydon JJ described the specific legal protections adopted by the European Union as follows:
[135]In 1996 the Directive of the European Parliament and of the Council on the Legal Protection of Databases (the Directive) was adopted by the European Union (EU). It is significant for the issues on the present appeal that the Australian legislation has no counterpart.
[136]Of the genesis of the Directive, Professor Cornish has written:
At once excited and alarmed by the capacity of digitization to store massive files of information and of the internet to deliver it in individually requested packages, the publishing industry, and, by its side, music and films, secured a Database Directive from the EU.
Whilst “traditional copyright” respecting compilations was carefully confined and fixed upon the effort that went into the selection and arrangement in a compilation, the new right was “accorded directly to the investor in a database”.
[137]The Directive defines “database” to mean “a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means”. Chapter III of the Directive relevantly provides for the implementation of a “sui generis” right for the “maker” of a database who shows there has been a “substantial investment” in either the obtaining, verification or presentation of the contents of the database and for that right to extend to prevention of the extraction and/or re-utilisation of the whole or of a substantial part of the database, subject to certain exceptions and lawful uses.
[138]The Directive also provides in Ch II for Member States to afford protection to databases which, “by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation” (emphasis added). However, the position of “the author” in Ch II may be contrasted with that of “the maker” in Ch III. In explanation of the latter, recital 39 states:
Whereas, in addition to aiming to protect the copyright in the original selection or arrangement of the contents of a database, this Directive seeks to safeguard the position of makers of databases against misappropriation of the results of the financial and professional investment made in obtaining and collection [of] the contents by protecting the whole or substantial parts of a database against certain acts by a user or competitor.
(Footnotes omitted).
As the High Court observes, there is no counterpart in Australian law. It is not open to me to ignore the express words of the Copyright Act to expand protection consistent with that set out in the Directive as summarised by the High Court. That is a matter for Parliament and, in my view, a matter which they should address without delay.
APPLICANTS’ APPROACH TO THE QUESTION OF SUBSISTENCE REJECTED
The Applicants adopted a different approach to resolving the question of subsistence of copyright in the Works.
The Applicants started with, and indeed seemed ultimately to travel no further than, the proposition that once you have identified the work (and established its first publication in Australia), all that is required for subsistence of copyright is to identify some intellectual effort in the ultimate creation of the works without the need to identify the author or authors of the work. As the Applicants’ counsel submitted, “one is concerned with the activities which have been performed, not the precise identity of the persons who have performed them …”.
The Applicants’ approach was summarised in their written submissions in the following terms:
[265]… [C]opyright subsists in each Work, if the Work is an original work, because the first publication of the work took place in Australia: section 32(2)(a) & (c) [of the Copyright Act].
[266]Each Work is an original literary work because, as earlier submitted, some intellectual effort is shown to have been applied by persons who contributed to the creation (production) of the Work.
[267]It makes no sense to say, in those circumstances, that copyright does not subsist unless one can identify all of the authors.
[268]“Authorship” and “Original Works” are correlatives. But all that is necessary is to show sufficient contribution for originality. Plainly, that may be done without identifying the name of every author.
(Footnotes omitted).
I reject the Applicants’ approach to the question of subsistence.
As noted above, authorship is central to the determination of whether copyright subsists. To suggest that copyright does not require the identification of authors where a work is sufficiently original (howsoever that question of originality is to be answered) puts the cart before the horse. It ignores the fact that it is the original work of an author or authors who contribute to the particular form of expression of the work and reduce the work to a material form that is the act giving rise to the statutory protection of copyright. The Applicants’ approach appears to relegate the role of an author or authors in determining subsistence of copyright to some minor variable, useful only in “[showing] that an author is a qualified person” where the work is unpublished, establishing “the duration of exclusive rights comprised in the copyright” of “old works” “where competing claims of ownership are made” or where “doubt exists as to the identity of the work”. Such a contention is surprising and untenable. It is contrary to the express words of the Copyright Act and the copyright regime described by all judges of the High Court in IceTV 254 ALR 386. As a result, the way in which the Applicants’ shaped their overall case was unfortunately misdirected and cannot be supported.
The Applicants’ submissions also referred to ss 128 and 129 of the Copyright Act (albeit at [269]-[280] of their written submissions). After the paragraphs extracted above under the heading “Authorship and Identification”, the written submissions continued:
[269]The following statement in [Laddie, Prescott, Vitoria, The Modern Law of Copyright and Designs (Third Edition, 2000), at 118] supports these propositions:
“The definition of a literary work includes a compilation, and the author of such a work is the person who gathers or organises the collection of material and who selects, orders and arranges it. However, it is possible that there might be no identifiable author, in which case the statutory presumptions may have to be relied upon.”
[270]Section 129 deals with the case where the publication of a literary work is anonymous. A publication is anonymous where the author is not identified. The effect of the section is that if it is not established that the identity of the unidentified author is generally known or can be ascertained by reasonable enquiry the work is presumed to be an original work.
[271]Section 129 shows that the inability to identify the authors of a literary work does not mean that copyright does not subsist. On the contrary it is presumed to subsist.
[272]Section 128 also contemplates that copyright may subsist in a literary work which has no identifiable author [Waterlow Publishers Ltd v Rose (1989) 17 IPR 493, 503]. Were it otherwise, no presumption could arise.
[273]There may be a need to identify authors in the following cases:
(a)where the work is an unpublished work and it is necessary to show that an author is a qualified person [For example, see Gummow J et al at [101] in IceTV 254 ALR 386];
(b)where (in the case of old works) a question arises concerning the duration of the exclusive rights comprised in the copyright; and
(c)where competing claims of ownership are made.
[274]None of these issues are relevant here.
[275]IceTV shows that identification of the authors may also be required if doubt exists as to the identity of the work in which copyright is said to subsist. Again, that point is not relevant here.
Section 128 of the Copyright Act
[276]The applicants also rely upon section 128 of the Copyright Act which provides that:
“Where, in an action brought by virtue of this part in relation to a literary, dramatic, musical or artistic work, (no name purporting to be that of the author ... appeared on copies of the work as published) but it is established:
(a)that the work was first published in Australia and was so published during the period 70 years that ended immediately before the commencement of the calendar year in which the action was bought; and
(b)that a name purporting to be that of the publisher appeared on copies of the work as first published;
then, unless the contrary is established, copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright at the time of the publication.”
[277]The presumption operates in the present case [For example, see Waterlow Publishers Ltd v Rose (1989) 17 IPR 493, 503: “… a compilation perhaps represents the most obvious case in which commonly, no name of an author appears on copies of a published literary work. It seems to me possible that, in enacting s 20(4), the legislature contemplated that, inter alia, specifically in the case of compilations, cases might arise where there was no identifiable author, but copyright might none the less subsist in the relevant literary work.”]
The Works were first published in Australia in the relevant period and each of the Works bore a notation “(c) Telstra Corporation Limited” on each page and a notation “this directory is produced by Sensis Pty Ltd for Telstra Corporation Limited” in the terms and conditions of use found in each directory and the statement that “this publication is copyright...”. No name purporting to be that of an author appeared on the Works as published.
[278]In Microsoft Corporation v DHD Distribution Pty Ltd (1999) 45 IPR 459 Lehane J considered the provision and adopted the definition “published” found in the Macquarie Dictionary, which reads:
“... to issue or cause to be issued in copies made by printing or other processes for sale or distribution to the public as a book, periodical, map, piece of music engraving or the like”.
[279]Conti J adopted the same meaning in Microsoft Corporation & Ors v PC Club Australia Pty Ltd & Ors (2005) 67 IPR 262.
[280]The applicants contend that the abovementioned notations identify the first applicant as the person who caused to be issued copies of the directories. It follows that the respondents bear the onus of disproving subsistence and ownership of copyright in the present case. Given that the presumption arises where the author is not identified in a work as published, the Respondent cannot disprove subsistence by pointing to the lack of identification of all authors.
(Footnotes in brackets).
In my view, the Applicants’ reliance upon ss 128 and 129 is misplaced. Each section reinforces the importance of identifying the author or authors of the work in suit. In understanding the operation of the presumptions it is important to note the distinction between identifying an author or authors of the original work and the identity of the author or authors of the original work. Lest it be overstated, the Copyright Act fixes on the author or authors: see [20(2)] above. If an author or authors (within the meaning of the Copyright Act) cannot be identified at all, in contradistinction to a situation where the author’s or authors’ exact identity cannot be identified, copyright cannot subsist. On a reading of ss 128 and 129, it is the latter situation to which the Copyright Act is directed. If the Applicants’ submissions were accepted, these sections would be wholly or substantially otiose. Accordingly, the presumptions do not apply in this case and are irrelevant.
However, whether or not the presumptions apply, there are other reasons to reject the Applicants’ reliance upon them. Firstly, the Applicants’ construction of ss 128 and 129 does not reflect the balance struck by the Copyright Act between monopoly (on the one hand) and promotion (and protection) of originality in new works (on the other hand) (see [9] above).
Secondly, the passage cited from Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (3rd ed, 2000) 118 (Laddie) does not support the Applicants’ contentions. At its highest, Laddie suggests it may be necessary in particular instances to rely upon the statutory presumptions. In the present case, the presumptions have little or no role to play where the question of subsistence of copyright in each of the Works is the issue between the parties and has been the subject of extensive evidence (91 affidavits from the Applicants and two affidavits from the Respondents).
Thirdly, the presumption provided for by s 128 of the Copyright Act does not advance the Applicants’ submissions. All but one of the Works was tendered in evidence (that one work being the 2004 / 2005 YPD for the Mackay and Whitsundays district). Each of the Works tendered in evidence bore a notation “© Telstra Corporation Limited” or “© Telstra” on almost every page containing listing information, a notation “this directory is produced by Sensis Pty Ltd [or, as appropriate, “Pacific Access Pty Ltd”] for Telstra Corporation Limited” in the terms and conditions of use found in each directory and the statement that “[t]his publication is copyright ...” (noting that across the co-bound volumes in evidence, there was some variation in the wording depending upon whether the terms and conditions were referring to the YPD and WPD together or separately). No name purporting to be that of an author appeared on the Works as published and the evidence disclosed that each of the Works was first published in Australia in the relevant period.
Moreover, the Applicants seem to ignore a number of important facts and matters. It was they who filed the evidence on the question of subsistence. That was their choice. They are bound by their decision: Metwally v University of Wollongong (1985) 60 ALR 68 at 71; Liftronic Pty Ltd v Unver (2001) 179 ALR 321 at [44] per McHugh J. In my view, that evidence rebuts the presumption that copyright exists in the Works for the reasons identified earlier: see [11] to [28]. That the Applicants chose to go into evidence and not rely on the presumption is not surprising – the alternative was for the Respondents to have sought to rebut the presumption which necessarily would have entailed complex case management orders requiring the Applicants to disclose the materials to enable the Respondents to seek to rebut the presumption. Put simply, the Applicants’ submission falls between two stools – it seeks to rely upon evidence to establish the subsistence of copyright to a point and then when it gets too difficult (legally or factually) they resort to the presumptions.
Finally, s 129 deals with two specific situations – where the author has died and where the author is anonymous or pseudonymous. Neither situation is present here. Put another way, the pre-conditions to the operation of the section have not been satisfied by the Applicants. Further, s 129 itself only gives rise to a presumption of originality and the location of first publication, not to the identity of the author or authors, or of subsistence of copyright in the work: cf s 128 of the Copyright Act. For that reason the provision has no relevance and may be put to one side.
The cases referred to by the Applicants in relation to the statutory presumptions add little. Waterlow Publishers v Rose (1989) 17 IPR 493 involved a dispute about who the relevant author of a particular section of a compilation was where there existed two alternatives. Slade LJ (at 503) found that the author could be identified as Waterlow Publishers, either as an independent author or co-author, or alternatively a statutory presumption in similar terms to s 128 applied. The presumption was not decisive in the dispute and it was not argued in that case that an author could not be identified at all. In Microsoft Corporation v DHD Distribution Pty Ltd(t/as Austin Computers) (1999) 45 IPR 459 at [1], the applicants only offered evidence to prove the preconditions in s 128 of the Copyright Act. Further, the respondents did not offer any evidence or submissions in opposition to the applicant’s reliance on the presumption. In Microsoft Corporation v PC Club Australia Pty Ltd (2005) 148 FCR 310, the applicants did not lead evidence of authorship or originality, but (as in Microsoft Corporation v DHD Distribution Pty Ltd(t/as Austin Computers) (1999) 45 IPR 459) only offered evidence to prove the preconditions in s 128 (see at [61]). Further, the respondents argued in order to attempt to rebut the presumption that the only person with the right to create the computer program the subject of the copyright dispute was a related company of the applicant’s based in the USA (see at [7] and [38]). Accordingly, none of the cases referred to dealt with a situation where the very fact of authorship, as a central concept necessary to establish according to the Copyright Act, is in dispute. In any event, each case must be read in light of IceTV 254 ALR 386 and the principles referred to at [20] above.
Whether the Applicants could claim ownership in the intellectual property of the Works was an issue that arose throughout the course of the hearing. Copyright in a literary work made by an employee is ordinarily owned by the employer: s 35(6) of the Copyright Act. The Applicants had three responses. First, they submitted that any question of ownership was not relevant to the question of subsistence. Secondly, the Applicants submitted the question itself was “at the margins” as the evidence established that where there was any “gap” in ownership (such as where contractors who were not employees of Sensis were engaged to work on the production of the Works), that “gap” was of a relatively minor consequence. Finally, the Applicants submitted that if a person or entity other than one of the Applicants had contributed to one or more of the Works, then that person was simply a co-owner (regardless of whether that person or entity was capable of being identified) and, as a co-owner, the Applicants were entitled to move to protect the copyright without the consent of the other co-owner.
These submissions should be rejected. It would be absurd to assume that I am bound only to determine whether copyright subsists in the Works whilst ignoring any question of ownership. Copyright is a form of property created by statute for the benefit of the author or authors who, in the absence of some other arrangement, is the owner or are the owners of the work. Whether or not the Applicants are owners of the copyright (if any) in the Works is a matter to be determined by the evidence. The Applicants’ evidence on this issue comprised in excess of 91 affidavits. Simply accepting the Applicants’ assertion that their evidence demonstrates ownership of intellectual property and that the issue is “at the margins” is unhelpful. As I have said earlier, I am bound to determine the matter in accordance with the evidence presented. It is not a matter that can be ignored or be the subject of presumptions.
THE APPLICATION OF DESKTOP MARKETING
Before turning to the facts, mention must be made of the decision of the Full Court of the Federal Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 (Desktop Marketing). In that decision, copyright was found to subsist in certain editions of WPDs and YPDs. The Applicants submitted that the resolution of the present case remains governed by the outcome in Desktop Marketing 119 FCR 491 and that the High Court’s comments on copyright subsistence in IceTV 254 ALR 386 should be regarded as obiter dicta. I reject that contention. Firstly, IceTV 254 ALR 386 is binding authority on the proper interpretation of the Copyright Act. The reasoning of both plurality judgments establishes principles of law beyond copyright infringement. Secondly, the High Court directly warned of the need to treat Desktop Marketing 119 FCR 491 with particular care: see IceTV 254 ALR 386 at [52], [134], [157] and [188]. Thirdly, Desktop Marketing 119 FCR 491 did not deal directly with the issue of authorship. Rather, all issues in respect of copyright had been conceded other than that of originality. In fact, Finkelstein J (at first instance) questioned the assumptions the parties had made about authorship: Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2001) 51 IPR 257 at [4]. Finally, the facts of this case are significantly different. The WPDs and YPDs in question are different. Moreover, the Genesis Computer System which stored the relational database and which was used in the production of some of the WPDs and YPDs in issue in these proceedings (after September 2001 in the case of YPDs and late 2003 in the case of WPDs) was not in use in Desktop Marketing 119 FCR 491. (The Genesis Computer System is considered in detail at [60]ff below).
FACTS
The application of the principles identified earlier takes place within a factual matrix that does not lend itself to easy answers. It is that factual matrix to which I now turn.
Telstra is a telecommunications carrier which connects subscribers to its fixed line and mobile telephony networks for a fee. Like other carriers such as Optus, Vodafone and AAPT, Telstra collects and maintains subscriber information. Sensis, Telstra’s wholly owned subsidiary, operates a business of publishing telephone directories (the directories business). The directories business is the core of Sensis’ business.
Each year Sensis publishes WPDs (residential and business) and YPDs (classified) across Australia. In 2007, Sensis published 55 WPDs and 86 YPDs covering the whole of Australia. The directories were published in metropolitan, regional and local areas. Of the regional directories, 46 were co-bound: see [3] above. Directories for 11 of those defined geographical areas are at issue in these proceedings, and date back to 2000: see Annexures A and B. Sensis produces a directory for each region every year, identifiable by a particular “issue” number. Sensis aims to deliver a WPD and YPD to every Australian home and business.
Each WPD and YPD lists the names, addresses, telephone numbers and other information in relation to residential and / or business customers for a particular geographic area. Telstra’s WPDs contain residential and business listings. Revenue is derived by persuading customers (primarily business customers) to upgrade their free entry (FE) with more complex information or other enhancements for a fee.
In the case of the YPDs, revenue is derived by persuading business customers to upgrade their FE with more complex information or other enhancements for a fee. Business customers in the YPDs can also advertise under multiple headings. Business customers are entitled to one FE but must pay for any additional standard entries under different headings.
In the 2006 financial year, the YPDs and WPDs generated more than 80 per cent of Sensis’ profits. This translated to revenue of more than $1 billion from YPDs and almost $300 million from WPDs. The vast majority of Sensis’ revenue derived from the directories business comes from the YPDs.
The method by which information appears in a particular directory depends on whether the entry:
1.is to appear in a WPD or a YPD;
2.is a new listing for a particular directory (new listing), or a listing which has appeared in a previous issue of that directory (existing listing); or
3.is a complimentary FE or a paid additional or enhanced entry.
The “system” by which each type of listing is included in a WPD or a YPD is described below under the following headings:
A Overview
B The Development of the Computer Systems1. Prior to 2001 and 2003
(a) WPD;
(b) YPD;2. Genesis Computer System
3. Supporting Systems
4. Conclusions
C The Rules
1. Introduction
2. What are the Rules?
3. The Parts of the Rules
(a) The WPD Rules;
(b) The YPD Advertising Rules;
(c) The Product Standards;4. Creation of the Rules
5. How the Rules are Used
(a) POST and Listing Maintenance;
(b) Book Extract and Book Production;6. Conclusions
D Identity of Authors
1. Sensis Employees
2. Contractors
E Production of a Particular WPD
1. Existing Listing
(a) Creating the initial listing record;
(b) Obtaining updated listing information;
(c) Entering the updated information into the database;
(d) Checking the updated listing record after entry in the database;
(e) Other amendments to existing listings;2. New Listing
(a) Service orders;
(b) Customer contact;
(c) Sales contact;
(d) Checking the new listing after entry;3. Publication of the WPD
(a) Verification of listing information prior to publication;
(b) Extraction and presentation of listings;
(c) Verification of listings after extraction;
(d) Typesetting and pagination of the directory.F Production of a Particular YPD
1.Existing Listing
(a) Creating the initial listing record;
(b) Obtaining updated listing information;
(c) Entering the updated information into the database;
(d) Checking the updated listing record after entry in the database;
(e) Other amendments to existing listings;2. New Listing
(a)Obtaining new listing information and creating a new listing record;
(b)Checking the new listing after entry;
3.Publication of the YPD
(a) Verification of listing information prior to publication;
(b) Extraction and presentation of listings;
(c) Verification of listings after extraction;
(d) Typesetting and pagination of the directory.G Changes in the WPD and YPD Production Process Over Time
A. OVERVIEW
The following description is “system” based for a number of reasons. First, the Applicants’ evidence was prepared and filed on that basis. Specific (and, the Respondents submitted, incomplete) evidence was filed in relation to only two co-bound volumes – Cairns for 2008 / 2009 and Kempsey / Port Macquarie for 2009 (the Sample Directories). However, the Applicants alleged that the “contributions of individuals … [was] consistent across the directories, and also over a considerable period of time”.
Secondly, the evidence disclosed that much of the system was automated. The production of the WPD and YPD is undertaken by members of a division within Sensis known as the Directory Solutions group. In general terms, the production of a WPD and a YPD involves the following steps:
1.For each directory, customer information is obtained from various sources, including service orders received from telecommunications carriers such as Optus, Vodafone, AAPT, the customer’s previous WPD or YPD listing, personnel spotting potential new customers and direct contact from the customer. It will be necessary to consider these sources separately in further detail below.
2.From no later than October 2003, the listing information has been entered into a database on a computer system known as the Genesis computer system (the Genesis Computer System). (The computer systems that predated the development of, and what were the precursors to, the Genesis Computer System are described in further detail below: see [61] to [71]).
3.In many cases, the listing information is entered automatically by the Genesis Computer System. In other cases, some of the listing information is manually entered into the database. Mr Beardshaw, employed as an External Interfaces Analyst by Sensis, gave affidavit evidence that of the approximately 12 million services orders received annually, 15 per cent (or 1.8 million) require some manual processing. Such numbers should be understood in their context – even certain types of manual listings can be processed in their hundreds each day. (There was a persistent lack of clarity as to the meaning and weight of statistics throughout the evidence in this matter. For example, various statistics were provided as to the number of amendments made to listing data, but many of these amendments would not flow through to the actual directories themselves (they may involve changes to “paperwork”). This results in confusion as to the conclusions to be drawn from such figures). A separate record is created for each directory in which the listing is to appear.
4.As the listing information is entered into the database, automatic checks are conducted by the Genesis Computer System to ensure that the information is complete, accurate, and in a form which complies with what are known as collectively the Rules (see [88] below). The development of this and associated computer systems and their significance is explained in more detail in Part B below. The Rules and their significance is explained in more detail in Part C below.
5.There are separate rules for the WPDs and YPDs. The Rules govern the content and presentation of listings. If the listing includes a display advertisement, the advertisement is created in a separate database and checked for accuracy and compliance with the Rules. Again, as far as this is relevant to the matters in dispute, it is the subject of further discussion in Part C below.
6.The WPDs and the YPDs are produced on a rolling schedule throughout the year. The production of a new issue of a WPD or YPD begins when the listing information which appeared in the previous issue of that directory is carried over and converted into listing information for the next issue of the directory. This process is known as “rollover”. The rollover process creates a “template”, or the “starting point”, for the next issue of the directory. The Respondents provided evidence that detailed, through a selection of examples, that a significant proportion of listings in the WPD and the YPD are repeated each year. It was the evidence of the Applicants’ witnesses that “a significant part of [the Sample Directories] would be constituted by data which is repeated from the previous year”.
7.The rollover process is automated. It involves running two computer programs (known as “batch applications”) over the Genesis database which causes the Genesis Computer System to create a new record relating to the upcoming directory for every listing which appeared in the previous issue of the directory. The new record contains the listing details which were used to produce the customer’s previous listing together with updated information for that customer such as new advertising rates (for paid listings) or an updated heading (for a YPD listing).
8.Prior to publication of a particular directory, further checks are carried out to identify any errors in the content or appearance of the listing which will appear in the directory. These checks are conducted by the Genesis Computer System using electronic searches and any corrections required are made manually.
9.The publication of the directory involves the extraction of the listing information stored in the Genesis Computer System database for that directory, and the presentation and arrangement of that information in accordance with specifications programmed into the Genesis Computer System and designed to give effect to the requirements of the Rules.
10.Once the listings have been extracted and arranged in the format in which they are to appear by the Genesis Computer System, they are combined with the other elements of the directory and arranged on pages which are typeset and paginated.
11.The completed directory is then printed and distributed.
Different personnel are responsible for each of the above activities, depending on the type of listing and the directory in which it is to appear. Moreover, some of these activities are conducted by contractors who are not employees of Sensis. Their significance is explained in Part D below.
These activities have remained essentially unchanged since the introduction of the Genesis Computer System in October 2003. Prior to the introduction of the Genesis Computer System, the same activities were undertaken but separate computer systems were utilised for the production of the WPDs and YPDs.
To the extent there are differences in the systems, the evidence disclosed that the Genesis Computer System has streamlined some processes which previously could only be undertaken manually.
Much of the process outlined in [56] above is discussed in more detail in Parts E and F below. The description of the facts in those sections is primarily drawn from a summary prepared by the Applicants. The Respondents reviewed the summary and identified areas of disagreement due to alleged omissions and inaccuracies. However, there are certain factual aspects to the issues in dispute that require separate and more specific analysis. These areas are the development of the relevant computer systems (Part B), the significance of the Rules (Part C) and the identity of certain authors (Part D).
B. THE DEVELOPMENT OF THE COMPUTER SYSTEMS
As described earlier (see [56(2)]-[56(4)] above), integral in the creation of each Work since 2001 / 2003 was the Genesis Computer System. The Genesis Computer System “sits at the centre of most of Sensis’ directory-related operations” and interacts with a number of other systems used in the production of the WPD and the YPD. Given the significance the Genesis Computer System and the other supporting systems have in creating the Works, they require separate analysis.
PRIOR TO 2001 AND 2003
Prior to 2003, the CONDOR computer system was used in the production of the WPD and prior to 2001, a separate computer system, the Integrated Directory System (IDS), was used in the production of the YPD.
(a) WPD
Before the mid 1980s, Telstra’s predecessor (Telecom) had two different systems for managing the data and publishing the WPD. One system, designed by Telstra’s own information technology group, the National Directory Services (NDS), was used in New South Wales. Another system was used for the other States. The second system involved the extensive use of a manual card system to maintain customer listing data.
In 1984, the NDS established a directory development group to draft the specification for a “national, computerised system for the publication of the WPD”. In 1986, a US-based company called Amdocs Inc (Amdocs) commenced work to supply the system. Eventually Amdocs supplied the NDS with the CONDOR system to meet its objective.
The CONDOR system was based on Amdocs own proprietary software (named ADS/SALES II) for the publication of classified business directories. The software was then customised by Amdocs to suit the Australian environment and the requirements of alphabetical directories. Amdocs also developed a suite of programs to convert data from the existing compilation systems. In general terms, CONDOR replaced systems which were based on handwriting information on to directory cards and paper service orders with a system where editors were able to key new listings and changes directly into the computer database.
The first books produced using CONDOR were the Hobart and Burnie directories published in July 1987. By June 1989, each directory nationally had been published once. Over the subsequent years, development of CONDOR continued. Amdocs carried out the coding and programming.
Telstra was granted “a perpetual, non-exclusive, non-assignable and non-transferable licence to use the ADS/SALES II System … in the production of the [WPD]”. Unsurprisingly, all proprietary rights in the ADS/SALES II System remain vested in Amdocs. However, “separately defined modules developed by [Amdocs] for [Telstra]” or modules previously designed by Telstra were, or remained, Telstra’s property. The Applicants did not identify which module or modules of the CONDOR system remained or became the property of Telstra. As a result, the Applicants did not identify the function or functions performed by the modules owned by Telstra and the balance of the computer system owned by Amdocs.
(b) YPD
Between late 1988 and early 1989, Telstra employed two main contractors to perform the sales and marketing function and two main contractors to compile the YPD. Each contractor owned and operated its own system.
Around this time Telstra decided to take over operations and control of the YPD.
In late 1989, Amdocs was engaged by Telstra to provide the IDS. Telstra’s evidence was that:
In its initial operational form, … IDS retained about 70 per cent of Amdocs’ basic system and 30 per cent was rebuilt. As with CONDOR, Amdocs retained ownership of the intellectual property rights to its basic system and Telstra [owned] the rights to the enhancements.
IDS commenced operational use in January 1993 and was continuously developed.
With effect from 1 July 1997, Telstra outsourced its WPD business to Pacific Access Pty Ltd (Pacific Access), the predecessor of Sensis (Pacific Access changed its name to Sensis in August 2002). The aim of Telstra’s outsourcing its WPD business was to integrate the data that supports the WPD and the YPD.
GENESIS COMPUTER SYSTEM
In 1997, Pacific Access “began to explore options” to replace the CONDOR system (used in the production of WPD) and the IDS (used in the production of YPD) with a single, integrated directory production system. The eventual implementation of the Genesis Computer System took more than five years and cost in excess of $300 million.
Amdocs was approached to tender for the replacement of CONDOR and IDS. Amdocs offered a new system known as “NewGen” (NewGen). This system “provided by Amdocs” was approved by the Telstra board to replace the existing systems.
NewGen underwent what was then described as an “extensive period of development in order to customise the ‘generic’ directory production system created by Amdocs to meet the specific needs of Sensis’ [WPDs] and [YPDs]”. To reflect the changes in the system with the integration of WPD and YPD data, the system was eventually renamed “Genesis”. Due to delays in the implementation of the project, the Genesis Computer System was implemented in two phases – in 2001 for YPDs and 2003 for WPDs.
The implementation of, and support for, the Genesis Computer System, including the modifications referred to earlier, was governed by an IT Services Provision Agreement between Pacific Access (as agent for Telstra) and Amdocs signed on 17 May 1998 (the First IT Agreement). Due to delays in the implementation of the project and the decision to split it into two phases (for the YPD and then the WPD), this agreement was re-negotiated in 2002 (the Second IT Agreement) (collectively, the IT Agreements).
The IT Agreements were provided to the Court on a confidential basis. Although there were differences between the IT Agreements, those clauses relating to the intellectual property regime established under the IT Agreements were relevantly similar.
As acknowledged by the Applicants, the intellectual property in the Genesis Computer System is divided between Amdocs and their “Customer” (defined in the IT Agreements as Telstra through its agent Pacific Access). The IT Agreements established that the original software provided by Amdocs remained Amdocs’ intellectual property, whereas Telstra would own or be assigned the intellectual property of software modifications made at their request. Where one party had the benefit of the intellectual property of a certain aspect of the system, its use by the other was governed through the grant of a licence on conditions.
As with its predecessors (see [61] to [71] above), which parts of the Genesis Computer System remained or became the property of Telstra were not identified. As a result, the Applicants did not identify the function or functions performed by those parts owned by Telstra and the balance owned by Amdocs.
There are however two further difficulties. The Applicants’ evidence described the process by which modifications were made to the Genesis Computer System throughout its development. That evidence disclosed that only some, not all, of the software modifications made throughout the development process were recorded and identifiable. Ms Dawes, a Manager of Print Content and Conversion at Sensis, stated that “the development process for the Genesis [Computer] [S]ystem involved reviewing the functional specifications prepared by Amdocs for its generic system, identifying gaps in those specifications, and then requesting changes in order to fill those gaps … ”. However, Ms Dawes further stated that “… it appears that not all changes requested by Sensis were identified [and] … [a]ccordingly, I am not able to identify with precision which aspects of the system were implemented at the request of Sensis”.
The same problems exist in relation to the Genesis database. “Customer Data” and “Customer Database” were defined terms in the IT Agreements. The IT Agreements provided, in essence, that any databases established (and the information contained in those databases) by or on behalf of Telstra (again, through its agent Pacific Access) were the intellectual property of Telstra. However, even then, the IT Agreements further provided that the “generic databases” used by Amdocs remained their intellectual property.
As is apparent, an undefined but not insignificant proportion of the Genesis Computer System was not the intellectual property of the Applicants. The Genesis Computer System was an amalgamation of original software and modifications with the intellectual property divisible between Amdocs and Telstra, with the grant of licences to Telstra (through its agent) governing the use of those aspects of the system that were not their intellectual property. Further, determining who had the benefit of the intellectual property of some aspects of the system is uncertain. Modifications were made at the request of the Applicants but not all those modifications were recorded. Which entity or entities can correctly be said to have the benefit of the intellectual property of those unidentified modifications is a difficult, if not impossible, task. Although I accept that significant modifications were made to the Genesis Computer System at the request of one or more of the Applicants, the evidence does not support the conclusion that the intellectual property in the whole or any specific part of the Genesis Computer System belongs to one or more of the Applicants.
SUPPORTING SYSTEMS
As noted earlier, there are other non-Genesis computer systems that are used in the production of the Works. One system is the “Straight Through Processing” (STP) function. STP was described as “a function built into a computer system by Sensis called “Workflow Imaging and Integration” … designed to act as a bridge between the computer system used by [YPD] Account Executives, known as Siebel, and the computer system which holds customer listing information, Genesis”. STP’s function is to check “every contract that is submitted to identify whether it is potentially eligible for STP (because it involves no change to the listing or other advertising for the customer)”.
The Applicants submitted that “Sensis personnel were directly responsible for the design of computer programs which interact with the Genesis system to achieve certain functions…”. The evidence did not support that assertion. For example, Mr Breitenbach, employed by Sensis as an Application Support Manager since 2007, gave evidence that he managed Sensis’ relationships with various IT vendors, including Aipex, that “Aipex [had] developed for Sensis the computer application that runs STP” and “[r]epresentatives of Sensis and Aipex worked together on implementing STP until about October 2006, when the functionality was released in its final form”.
Beyond the general statement that Sensis and Aipex “worked together”, Sensis’ role in designing the functionality is unclear. The evidence did not establish that Sensis personnel were “directly responsible for the design of [the] computer program”. However, even assuming in favour of the Applicants that Sensis extensively directed the modifications required to implement STP, the evidence did not disclose whether the resulting software was the subject of an intellectual property regime established by agreement between Aipex and Sensis and if so, the terms of that agreement.
Another software tool used in the production of the Works was the “Book Close” reports developed by employees of Quantum IT (described as a small information technology consultancy company) from June 2001. Although some reporting tools already existed in the Genesis Computer System, they were the subject of enhancement and new reports were developed (the Book Close reports are discussed further at [248] and [309] below). Again, the description of the development of the Book Close reports poses more questions than it answers. Although one of the individuals responsible for the development of the software eventually became a Sensis employee, the initial development of the program was conducted by Quantum IT in response to the business requirements and directions of Sensis. Again, whether the resulting software was the subject of an intellectual property regime established by agreement between Quantum IT and Sensis and if so, the terms of that agreement were not disclosed.
The Applicants, in purchasing and implementing the suite of computer systems used in the production of the Works, often prescribed rigorous requirements and were active in ensuring that the software produced met those requirements. On at least one occasion (with regard to software referred to as the Error Maintenance System), employees of the Applicants designed and implemented software without the assistance of external parties. However, not every aspect of the supporting systems were created in that manner.
CONCLUSIONS
The various computer systems (including the Genesis Computer System), were the result of the work of various entities over a number of years. Although the Applicants, as the ultimate purchaser of such systems, were often responsible for prescribing and overseeing implementation of the requirements, only in a few cases was the software designed and created by the Applicants’ employees. Although the computer systems were not relied upon as an independent copyright work in this proceeding, the Applicants did rely upon the intellectual effort of Sensis employees in customising the programs. On the evidence before the Court, it is not possible to determine who created and had the benefit of the whole or any part of the various computer systems (including the Genesis Computer System) at any particular time.
C. THE RULES
INTRODUCTION
An essential part of the Applicants’ case was the development and implementation of the Rules which were described by the Applicants as:
[R]ules and policies … which govern the content and presentation of listings, the objectives of which include accuracy, uniformity of content and presentation, conformity with Federal and State laws and ethical standards of advertising, and provision of consistent, equal and fair treatment to customers.
The Rules were in fact comprised of three parts – the YPD Advertising Rules (the YPD Advertising Rules), the WPD Entry Policy and Rules (the WPD Rules) and Sensis’ Product Standards (the Product Standards) (collectively, the Rules).
On the first morning of the hearing, Senior Counsel opened the Applicants’ case by stating:
… [W]e would say of that set of rules [the WPD Rules] that it’s a complex set of rules that governs the expression of the material compiled in the White Pages listings, including the selection and arrangement of that material. The rules allow for material to be entered in certain circumstances and prohibit entry in other circumstances. A judgment has to be made by somebody in Sensis about whether those criteria have been satisfied.
There is an exercise therefore of judgment and discretion in selecting the material for inclusion. There is also, we would say, an element of intellectual effort involved in understanding and applying the rules. The understanding and application involves the Sensis representative, who is trained for this purpose, being able to explain to the customer what is available in the way of material for entry and the way in which it will appear if entered and it involves the exercise of intellectual effort on the part of the representative in ensuring that material, which has been entered, complies with the rules.
WHAT ARE THE RULES?
At their most basic level, the Rules are a set of prescriptive guidelines that control, dictate, restrict and / or prohibit the content and presentation of listings in the WPD and YPD. They regulate the font used. They regulate the proper abbreviations of words. They regulate the colour schemes applied. They regulate the spacing between words and individual entries. They regulate the acceptability or otherwise of the use of particular words or phrases. It is unclear who created the Rules. But it is clear that everyone is bound by them.
The Rules are directly or indirectly automated. They are directly automated in the sense that the Rules are programmed into the Genesis Computer System (or supporting systems) so that the information entered into those systems is in a form which complies with the Rules. This commonly arises in three broad situations. First, when Sensis’ workers enter information into the Genesis database, the Rules, as applied by the Genesis Computer System and supporting systems, provide limited choice to those workers regarding the content, format and features of the presentation of that information. In the vast majority of cases, workers are unable to go outside the bounds of those choices as the system through which they enter this information does not allow them to. While the information may be manually entered, it could not be said that this was not an automated function. Secondly, the Rules, as applied by the Genesis Computer System (or supporting systems), check the information entered to ensure it conforms with the Rules. Thirdly, the Rules, again as applied by the Genesis Computer System (or supporting systems), designate and influence the format and arrangement of the information entered as it finally appears in the WPD and YPD.
The Rules are also indirectly automated. There are, in certain circumstances, instances of human intervention in the application of the Rules. For example, an Artist may prepare and update graphic advertisements in the WPD and YPD and an Editor is responsible for ensuring that those advertisements comply with the Rules (see [143]-[144] below). The Paginator paginates and typesets the directories, often to ensure the pages of the directories, which have been first created by the Genesis Computer System, comply with the Rules (see [157]-[161] below). The overarching process is designed to ensure that decisions that violate the Rules are as rare as possible. In the vast majority of cases, any human intervention is directed to ensuring the content and presentation of listings complies with the Rules.
THE PARTS OF THE RULES
As stated at [88] above, there are three parts of what generally are considered the Rules:
1.the WPD Rules which control, dictate, restrict and / or prohibit the content and presentation of entries in the WPD. For example, in relation to the placement of names, the WPD Rules govern government and business listings, what font listings can and should appear in, rules surrounding the listing of mobile phones, 18 services, 13 services and others, and rules regulating the use of “Mc” and “Mac”, “Mt” and “Mount”, and “St” and “Saint”, among many other things;
2.the YPD Advertising Rules which are similar to the WPD Rules but they also control, dictate, restrict and / or prohibit the content and presentation of advertisements, for example the position priority of display advertisements; and
3.the Product Standards which control, dictate, restrict and / or prohibit certain sensitive material, particularly regarding advertisements, such as the acceptability or otherwise of the use of certain words or phrases in, for example, adult advertising, abortion / pregnancy termination / family planning services and party plan selling.
In addition, YPD listing information is checked on a daily basis by the reports run by the Error Maintenance System, in the same way as WPD listing information.
(e) Other amendments to existing listings
The listing information for existing YP listings can also be amended as a result of the receipt of a service order from a telecommunications carrier or direct contact from the customer. However, because Sensis attempts to contact all existing customers during the course of a sales canvass, in practice amendments to YP listings are primarily handled by sales staff and / or other staff within the Customer Care group.
If a YPD customer contacts Sensis to request a change to the listing information for an existing listing, then which Sensis staff member is actually responsible for updating the listing information in the Genesis database depends on how the customer contacts Sensis, the nature and complexity of the changes, and whether the customer has been assigned to a designated Sensis sales consultant.
If the customer contacts Sensis over the telephone, then the changes will be made by:
1.the customer’s sales consultant, if one has been assigned;
2.staff of the Customer Care group, if no consultant has been assigned and the changes are relatively minor;
3.staff of the Changes group, if no consultant has been assigned and the changes are more substantial (this group is described in more detail at [299] below); or
4.staff of the Cancellations group, if no consultant has been assigned and the customer indicates a desire to cancel their advertising.
If the customer contacts Sensis by letter, facsimile or email, then the changes will be made by members of the Changes group. A national team of approximately 38 employees is responsible for making changes to YPD listing details in response to requests from customers. The team consists of approximately 27 Customer Changes Consultants (who perform a role similar to that of an ADS) seven Artists and Editors, management and support staff. Customer Changes Consultants update listing information in the Genesis database using the POST interface in the same way as ADS or Customer Care consultants, having regard to the requirements of the Rules. The role of a Customer Changes Consultant is the same in relation to any YPD regardless of the region that the directory covers.
NEW LISTING
(a) Obtaining new listing information and creating a new listing record
Listings for new YPD customers are obtained in the same manner as listings for new WPD customers. In particular, the listing information for new YPD listings can be sourced from:
1.service orders received from telecommunications carriers;
2.contact initiated by the customer; or
3.sales leads.
In practice, however, sales leads have a greater significance for the YPD than they do for the WPD because there are many more paid customers in relation to the YPD and because there is greater scope for Sensis workers to “spot” prospective new customers for the YPD.
YPD telesales consultants can generate leads for other Sensis sales consultants, either by reviewing local media or online publications, or by referring prospective paying customers to other sales consultants, depending on the customer’s likely advertising spend. There is also a dedicated team of “spotters” within Sensis. In addition, Account Executives can “spot” leads by physically identifying a new business (for example, by recognising a new sign) while they are out visiting customers.
Where a lead is generated for a customer that did not previously exist in the Genesis database, a provisional listing for the customer will be created by the Lead Management team in the same manner as described at [239] – [242] above in relation to a WPD listing. YPD sales consultants attempt to ascertain the customer’s needs and advise the customer about the most appropriate form of listing in exactly the same manner as they do in relation to existing customers. Ms Walsh stated that there is often more advice required in the case of new customers “because they are new to business in some instances, so you actually become more of a counsel”. If the sales consultant is a telesales consultant, the consultant will update the provisional listing in the Genesis database using the POST interface in the same way as they update an existing listing.
If the sales consultant is an Account Executive, the consultant will record the customer’s listing information in the form of a written contract and provide that contract to members of the Print and Online Operations group to update the listing details in the database. However, all contracts for new customers are paper contracts submitted manually and checked by an SCC and CVS before being entered by an ADS because, as new customers, they did not exist on the Genesis database at the start of the sales canvass and so contracts for these customers will not have been
pre-prepared in electronic form.
Where new listings are sourced via service orders or customer contact, the listing record will be created by a member of the Customer Operations group or Customer Care group in the same manner as a WPD listing record: see [213] – [237] above.
(b) Checking the new listing after entry
New YP listing records are checked after entry in the same manner as existing listing records (see [243] above).
PUBLICATION OF THE YPD
(a) Verification of listing information prior to publication
The publishing process for the YPD is similar to that for the WPD (see [244]-[251] above). Members of the Publishing team are responsible for the publication of both directories, although there are Publishing Co-ordinators who are dedicated to the production of the WPDs or YPDs respectively. The role of Publishing Co-ordinators in respect of any YPD is the same, regardless of the geographic region that the directory covers.
Like the WPDs, the YPDs are produced on a rolling schedule, with the publication process beginning after the “Public Close” date for a particular directory and the extraction of listing information into the galley file occurring after the LLAD.
Also like the WPD directories (see [248] above), a series of reports are run prior to the extraction of listing information to ensure that the listing information is accurate and will appear in the sequence and format required by the Rules. In the case of the YPDs, these reports are run after the LLAD but before Book Extract. Some of these reports are equivalent to reports run in relation to the WPD. Others have no equivalent in relation to the WPD:
1.Delimiter Inconsistency Report: this report is designed to identify errors in the placement of a delimiter in the “finding name” for a listing which would cause it to appear in an incorrect sequence in the printed directory.
2.DSP Report: this report is designed to identify errors in the positioning of display advertisements in the printed directory. These advertisements are the subject of separate positioning rules, depending on the size and date of placement of the advertisement.
3.Brand Report: this report is designed to identify all listings in the relevant directory that have brand names within the listing (ie, where the name in the listing does not necessarily correspond to the name of the business). It is designed to ensure that these listings have been capitalised correctly and will appear in the correct sequence in the printed directory.
4.Check No Print Report: this report is designed to identify errors in the designation of paid listings for publication. All listings that are to be published in the directory must be marked with a status of “Publish”.
5.Invalid Items Report: this report is designed to identify listings that are allocated under headings that no longer exist, and will therefore not appear in the printed directory.
6.Graphic Items in Caption Report: this report is designed to identify errors in the appearance of listings containing graphic items (such as a logo).
7.CSV Special Characters Report: this report contains a list of all listings that have inverted commas in the listed name but do not have a PLA. Without a PLA to override the sorting rules applied at Book Extract, these listings will not appear in the correct sequence in the directory.
8.BTR / BTEN Report: this report is designed to identify bold type listings that have been incorrectly designated as a caption listing, which would cause them not to appear in the correct format in the printed directory.
Any errors identified by the Book Close reports are corrected by staff in the Print and Online Operations group.
(b) Extraction and presentation of listings
Like the WPDs, the extraction of the listing information for YPDs and the creation of the galley file is undertaken using the Book Extract routine: see [252] – [259] above.
The Book Extract process for the YPD involves the same two stages as occur in relation to the WPD. However, there are additional processes which occur at each stage, due to the presence of headings and the need to arrange display advertisements in accordance with separate positioning rules.
In addition to listing information, the Book Extract routine for YPDs also extracts all of the headings which have listings under them in the designated directory, as well as their associated sub-headings and cross-references.
It also extracts alternative headings that do not in fact have listings under them but are designed to have the appearance of headings (for example, there is a heading in every directory for “Police Emergency” which simply states “see inside front cover”). These are known as “Must Appear”, “Notes” or “Fictitious” headings.
The headings are collated into a separate file known as the “Headings In Progress” file, which is combined with the CMP file at the Book Production stage to form the galley file.
During the sorting process, the Book Extract routine applies priority rules to the placement of display advertisements, in order to give effect to the requirements of the Rules. It also arranges each of the listings in alphabetical sequence under their various headings, applying Rules that are similar to those that apply to the WPD.
The galley file for a YPD is created by running the Book Production routine through RTMS in the same way as for a WPD: see [259] above.
(c) Verification of listings after extraction
After the galley file has been created, Publishing Co-ordinators run further reports to ensure that all of the listings and display advertisements which are to be printed in the directory have been extracted correctly and that their appearance will comply with the requirements of the Rules. If there are errors identified at this stage, they are either corrected by the publishing team or by members of the Print and Online Operations group.
The YPD Publishing Co-ordinators also conduct the same sorts of manual checks on the galley file as are undertaken by WPD Publishing Co-ordinators: see [261] above. These include checks on specific headings, checks on listings beginning with the letter “A” (to ensure that these listings are arranged in the correct sequence), and checks on sensitive headings.
After the galley file has been built, YPD Publishing Co-ordinators also action “Late Change Requests”, just like WPD Publishing Co-ordinators: see [262] above. On average, Publishing Co-ordinators make between 50 and 150 late change requests in each regional YPD each year.
(d) Typesetting and pagination of the directory
The pagination and typesetting process for the YPD is similar to that followed for the WPD, although as noted above (see [263]) it is conducted separately for each directory, even where they are co-bound. The role of Paginators in respect of any YPD or WPD is the same, regardless of the geographic region that the directory covers.
To the extent there are differences in the process, they relate to:
1.the fact that different Rules apply to the WPDs and YPDs; and
2.the larger variety of display advertising available to YPD advertisers.
As mentioned at [160] above, a YPD generally takes longer to paginate than a WPD (between 1.5 to 2.5 days), due to the fact that the classified section of the directory contains more listings (and therefore more pages that require checking and / or repagination) and the Rules governing the positioning of display advertisements are more complex than those that apply to the alphabetical sequence of the directories.
The pagination for YPDs is usually conducted in increments to avoid the need to repaginate the entire directory in the event of an error.
The typesetting process is the same for both directories: see [267] – [268] above.
G. CHANGES IN THE WPD AND YPD PRODUCTION PROCESS OVER TIME
There has been no material change in the production process for the WPDs and YPDs since the introduction of the Genesis Computer System in October 2003:
1.the rollover process has not changed, although the process of allocating customers to sales consultants has become less labour intensive as a result of the use of electronic contracts;
2.the receipt and processing of service orders occurs in substantially the same way as that which applied even before the introduction of the Genesis Computer System, although the mechanisms for filtering service orders have become more sophisticated and enabled Sensis to choose how to filter service orders using tables, without requesting amendments that needed to be programmed into the software;
3.the role of a sales consultant in obtaining and verifying customer information, and making recommendations about the form of listings is the same, although aspects of the process have become more streamlined and the range of advertising options available to the customer has increased;
4.the checking of listing information before and after it is entered into the database is largely the same, although the titles of roles have changed and new roles to perform this function have been introduced;
5.the entry and updating of listing information in the database has remained largely unchanged, although the names of the groups responsible for the entry of data have varied; and
6.the publication process has remained relatively unchanged, although since the introduction of the Genesis Computer System it has become a fully electronic process and additional tools have been developed to enable members of the publishing team to identify errors in the content or appearance of listings in the directories. Mr Cooper indicated that under CONDOR and IDS, he would go through the same processes to produce the Book Extract and galley file, and that he considered the Genesis Computer System to be “no more or less automated” than the CONDOR / IDS system. Mr Vormwald gave evidence to similar effect.
Further, the same essential activities were undertaken prior to the implementation of the Genesis Computer System, albeit with separate computer systems. The principal difference between the Genesis Computer System and the system it replaced is that it stores listing information in relation to both WPD and YPD customers, enabling a single operation and format and operators of the system to have an integrated view of a Sensis customer.
To the extent there have been changes in the production process, they have primarily been directed toward removing labour-intensive elements of the process, making it more efficient and flexible, and eliminating the scope for human error.
The Rules which are applied by Sensis personnel throughout the production of the directories have also remained largely unchanged. The 1999 version of the Rules required substantially the same considerations to be applied to the entry, content and appearance of listings.
ANALYSIS
In light of the relevant principles (see [7]-[30] above), the conclusions previously stated (see [31]-[46], [87], [162]-[166], [169] and [171]-[173] above) and the production process of each of the Works (see [174]ff), it is now necessary to follow the steps outlined at [28] above.
IDENTITY OF THE WORK
The Works were identified: see [1] above. The alleged copyright was identified – the Applicants submitted that each Work was an “original literary work” comprised of the listings, enhancement of listings and arrangement of listings (in the case of the WPDs) and the listings, headings, enhancement of listings and arrangement of listings under headings (in the case of the YPDs) (see [3] above).
The Works did not include “any reference to the elements of the introductory pages, such as the Government index, prior to the listings part of the directories.”
AUTHORSHIP
The issue is whether the Applicants, on the basis of joint authorship in the directories, have been able to identify the joint authors. This is essential for copyright to subsist in the Works. Manifestly, they have not. Evidence as to the identity of the so-called authors was approached in a number of ways. Firstly, the Applicants filed a list of “authors” of the Sample Directories. That list was deficient for the reasons outlined at Part D(1) above.
Secondly, although the Applicants tendered 91 affidavits from individuals who were said to be “authors” of one or more of the Works, the affidavits did not cover the range of people who would have made a contribution to the Works or cover the entire period the subject of the claim. Moreover, some of the 91 individuals had a limited (or non-existent) role in contributing to the Sample Directories and of those who did contribute, the nature of the contribution was certainly not of a nature to be described as “independent intellectual effort” or “sufficient effort of a literary nature”.
Moreover, these affidavits made clear that there are substantial parts of the directories that do not have human authors (for example, many of the service order listings – see [129] above), are automated to the extent that human involvement is minor (for example, see the evidence of Ms Speranza at [135] and of the Publishing Co-ordinators at [153]), or have authors who cannot be ascertained (for example, much of the rollover component of the directories – see [175]-[176] above). There were many more examples.
Thirdly, there are many individuals who might be considered joint authors who were not Sensis employees, who were not identified and who were not joined as parties to the proceeding (see Part D above).
Finally, serious questions arise as to whether it is appropriate to refer to the gamut of individuals said to be authors of these Works as “joint authors”. The evidence demonstrated time and again that many of the staff perform their function separately from and often oblivious to the function of others (see for example the discussion of the role of Validators at [136] above and the summary of the evidence of Ms Walsh at [141]). There is therefore a real question over whether there was the requisite level of collaboration between those workers to be considered joint authors: see s 10(1) of the Copyright Act. However, given the simple and undeniable fact that the Applicants have failed to prove the identity of the authors who contributed to the Works, it is unnecessary to consider this matter further.
Even if the authors of the Works could be identified with sufficient clarity and certainty (and they cannot), the people suggested to be the authors of the Works did not exercise “independent intellectual effort” and / or “sufficient effort of a literary nature”. A majority of the creation process of the WPD and the YPD was heavily automated. Human intervention was regulated and controlled according to either the various computer systems in place including the Rules (see Part V Sections B and C above). Further, the contribution of the people suggested to be authors of the Works was anterior to the work taking its material form. Very few people had any part to play in the final presentation of the Works or the particular form of expression of the information. Those people, again, could not have been said to have exercised “independent intellectual effort” and / or “sufficient effort of a literary nature”: see [20(3)] above.
FIRST PUBLICATION OF WORK
The Applicants submitted that the Works were first published in Australia. This submission was not the subject of argument and there are no reasons to doubt that the requirement in s 32(2)(c) of the Copyright Act has been met.
ORIGINALITY
None of the Works were original. None of the people said to be authors of the Works exercised “independent intellectual effort” or “sufficient effort of a literary nature” in creating the Works. Further, if necessary, the creation of the Works did not involve some “creative spark” or the exercise of the requisite “skill and judgment”. I accept that production of the directories is a large enterprise populated by many contributors (ignoring for the moment the determinative difficulties with authorship outlined above). Many of the witnesses gave evidence that was direct and appropriate, and I accept that they work hard in their respective capacities.
However, these facts are not relevant to the Applicants’ claim and, as explained at [20(6)] above, substantial labour and expense is not alone sufficient to establish originality. The evidence established that the “system” by which the directories are produced is designed to limit originality, not provide for it. Where it can be automated, it has been. Where it cannot, Sensis workers are required to act consistently with the Rules and all work is subject to a multiplicity of checks to ensure that consistency. The weight of the evidence demonstrated that the tasks performed by individuals applying the Rules were mechanical in nature and often were able to be completed in large numbers swiftly. The Rules are followed and applied. Moreover, the Rules themselves are not complicated. It would be hard to conceive of how many of the Rules could be otherwise constructed given that the purpose of the directories is to (a) enable someone to find a listing and (b) to allow customers to enhance their listing if so desired. Above all, the Rules are fashioned to allow for ease of reference and to make accommodations for customers who are willing to enhance their listings. The Rules reflect the underlying commercial context of the directories: see IceTV 254 ALR 386 at [51].
Consistent with that conclusion, the Applicants could not point to which work by a given individual was to be considered relevant in establishing originality. The work of many of these individuals that was said to constitute the relevant effort was ancillary to or divorced from the production of the directories in their material form, or was not directed to the directories in suit. For example, Ms Galizia was described as a “significant witness” by the Applicants. I reject that characterisation. Ms Galizia admitted that she made no direct contribution to the Sample Directories. Many of the Rules that she oversaw had been in place for a significant period of time prior to her starting in her role. What contribution to the Rules she made was limited. How she and her team oversaw the application of the Rules was vague and, again, it was by no means clear how that work contributed to the directories the subject of the claim. Ms Galizia was not alone in her predicament. Evidence of Account Executives, CVSs, ADSs, Programmers, Editors, Paginators and a host of other roles was amassed to provide evidence of originality by attrition.
It is not sufficient to demonstrate the subsistence of copyright by asserting that someone (and I do not accept that such a person has been found in this matter), who may in certain broad circumstances, in an unspecified number of relevant instances, have done an act that constitutes some unknown contribution to a work in question “no matter how unimpressive” will be enough to make good the Applicants’ claim.
Authorship and originality are correlatives. The question of whether copyright subsists is concerned with the particular form of expression of the work. You must identify authors, and those authors must direct their contribution (assessed as either an “independent intellectual effort” of a “sufficient effort of a literary nature”) to the particular form of expression of the work. Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original. The Applicants have failed to satisfy these conditions. Whether originality be the product of some “independent intellectual effort” and / or the exercise of “sufficient effort of a literary nature”, or involve a “creative spark” or the exercise of “skill and judgment”, it is not evident in the claim made by the Applicants.
THE PRE-GENESIS DIRECTORIES
The changes to the system by which the directories have been produced over the period of the claim are outlined at [326] to [329] above. The findings I have made at [333] to [344] relate to the period during which the Genesis Computer System has operated. However, as noted earlier, a number of the Works in suit pre-date the Genesis Computer System.
The position regarding the subsistence of copyright in the directories created prior to the introduction of the Genesis Computer System is no different. Much of the process was the same and all that the Genesis Computer System did was streamline that process (see [328] above). Ultimately, it must be recalled that the Applicants’ evidence was directed in most part to the Sample Directories and the findings in these reasons for decision reflect that fact.
CONCLUSION
For those reasons, I do not consider that copyright subsists in any of the WPDs listed in Annexure A or any of the YPDs listed in Annexure B. I will direct the parties to bring in a proposed minute of orders to give effect to these reasons for decision by 4:00pm on 12 February 2010.
I certify that the preceding three hundred and forty-seven (347) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gordon.
Associate:
Dated: 8 February 2010
ANNEXURE A – WPDs
Book Date New South Wales Ballina, Casino, Coffs
Harbour, Grafton, Lismore,Murwillumbah
2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Forster, Gloucester,
Kempsey, Lord Howe Island,
Nambucca, Port Macquarie,Taree, Wauchope
2000, 2001, 2002, 2003, 2004,
2005, 2006, 2007, 2008, 2009
Newcastle 2007 / 08,2008 / 09 Northern Territory Northern Territory 2000 / 01 , 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Queensland Cairns 2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Gold Coast 2008 / 09 Rockhampton, Mackay,
Gladstone, Whitsundays,
Emerald & LongreachDistricts
2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Sunshine Coast, Gympie,
Caboolture Districts
2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Townsville, Mount Isa,
Cloncurry, HughendenDistricts
2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
The entries in bold are Sample Directories.
ANNEXURE B – YPDs
Book Date New South Wales Ballina, Casino, Coffs
Harbour, Grafton, Lismore,Murwillumbah
2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Forster, Gloucester,
Kempsey, Lord Howe Island,
Nambucca, Port Macquarie,Taree, Wauchope
2000, 2001, 2002, 2003, 2004,
2005, 2006, 2007, 2008, 2009
Newcastle 2007 / 08, 2008 / 09 Northern Territory Northern Territory 2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04
Alice Springs 2005 / 06, 2006 / 07, 2007 / 08, 2008 / 09 Darwin 2005 / 06, 2006 / 07, 2007 / 08, 2008 / 09 Queensland Cairns 2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Gold Coast 2008 / 09 Mackay & Whitsundays Districts 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Rockhampton, Mackay,
Gladstone, Whitsundays,
Emerald & LongreachDistricts
2000 / 01 Rockhampton, Emerald, Gladstone & Longreach Districts 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Sunshine Coast, Gympie,
Caboolture Districts
2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
Townsville, Mount Isa,
Cloncurry, HughendenDistricts
2000 / 01, 2001 / 02, 2002 / 03,
2003 / 04, 2004 / 05, 2005 / 06,2006 / 07, 2007 / 08, 2008 / 09
The entries in bold are Sample Directories.
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