Universal Press Pty Ltd v Provest Ltd
[1989] FCA 375
•20 JULY 1989
Re: UNIVERSAL PRESS PTY LIMITED
And: PROVEST LIMITED AND BROTHERS PUBLISHING PTY LIMITED
No. G136 of 1989
FED No. 375
Intellectual Property
COURT
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Hill J.(1)
CATCHWORDS
Intellectual Property - Copyright - action for infringement of copyright in street directories - motion by respondent for striking out statement of claim or alternatively seeking certain particulars - whether there exists an arguable issue as to whether copyright subsists in relation to individual maps within the directory - whether there exists arguable issue as to whether copyright exists in directory as an original work - whether particulars sought by respondent necessary to meet applicant's case.
Copyright Act 1968: s.92
HEARING
SYDNEY
#DATE 20:7:1989
Counsel and Solicitors A J Bannon instructed by
for Applicant: Clayton Utz
Counsel and Solicitors J M Ireland instructed by
for Respondent: Baker & McKenzie
ORDER
The first respondent's motion dated 20 June 1989 be dismissed.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
JUDGE1
The first respondent by notice of motion moves the Court to strike out the applicant's statement of claim or alternatively to provide answers to certain particulars sought by the first respondent. The motion came on for hearing before me on 30 June 1989 when after argument had proceeded for some time I adjourned the hearing of the motion to enable the applicant to amend the statement of claim and to enable the first respondent to seek particulars, should it be so advised, of any matters arising out of the statement of claim as so amended.
Thereafter the applicant has filed an amended statement of claim and a further amended statement of claim and the respondent has requested further particulars and the applicant has responded to some of those particulars and refused to given answers to others. Henceforth I shall refer to the further amended statement of claim as "the statement of claim" and unless otherwise stated, references to the particulars sought and the applicant's reply thereto shall be taken as references to the most recent request for particulars and the reply thereto.
To understand the dispute between the parties it is necessary to refer to the substantive issue as it appears from the statement of claim and copies of some of the relevant publications referred to.
The applicant is the present publisher of a street directory known as "Gregory's Sydney Street Directory". It is also the current proprietor of two other street directories, "UBD Sydney Street Directory" and "Weldon's Street Directory of Sydney". The first respondent is alleged to be the publisher of two street directories known as "Premier Guide Greater Sydney Street Directory 1989 Edition" and "Premier Greater Sydney Street Directory Compact Edition". The history of each of the directories now published by the applicant differs in detail but for present purposes it is sufficient to concentrate on the Gregory's Street Directory as the problem said to arise with respect to that publication is repeated with each of the other publications, notwithstanding the differences in detail which arise from the different histories of each publication. Accordingly, I will limit my comments to that part of the statement of claim which deals with the "Gregory's Sydney Street Directory".
There have, it is alleged, since 1934 been 53 editions of a street directory bearing the name "Gregory's Sydney Street Directory". Each of them, it is pleaded, contained a series of maps charting, one assumes, the streets of Sydney, suburb by suburb.
It would seem that at the time of the first edition each map, contained therein was in all respects original and novel. Such a map is referred to as a base map. In subsequent editions alterations might be made to the base map to reflect new streets created by new subdivisions, or to reflect the closure of streets, the building of schools, the creation of parks and the like. Thus by the time one comes to the 53rd edition it would be possible that a map of a particular suburb would bear little resemblance to the original base map. It is, of course theoretically also possible that the map used in the 53rd edition was identical to the base map of that suburb used in the first edition or at least virtually the same with only marginal alterations.
In the statement of claim the applicant's case is pleaded (so far as the Gregory's Directory is concerned) as follows:
"6 (a) Each edition of the Gregory's Directory;
(b) each individual map contained in each edition of the Gregory's Directory; and
(c) each of the base maps reproduced in each edition of the Gregory's Directory was:
(d) made by a person or persons:
(i) who were at the relevant time Australian citizens and/or Australian residents; and/or
(ii) in pursuance of the terms of their employment by the Applicant or a predecessor in title of the Applicant under a contract of service and/or
(iii)who are predecessors in title of the Applicant;
(e) first published in Australia; and/or
(f) (with the exception of the 1st to 7th editions and the individual and base maps in respect thereof) first published in Australia during the period of 50 years that ended immediately before the commencement of 1989 being the calendar year in which these proceedings were commenced with the name of the Applicant or a predecessor in title of the Applicant appearing on published copies thereof as the publisher and without a name purporting to be that of the author appearing thereon.
7. (a) Each edition of the Gregory's Directory; and/or
(b) each individual map contained in each edition of the Gregory's Directory; and/or
(c) each of the base maps reproduced in each edition of the Gregory's Directory constitutes an original artistic and/or literary work in which copyright subsists.
8. The Applicant is the owner of the copyright in each of the works referred to in paragraph 7. ...
19. Each of the Respondents without licence consent or permission of the Applicant has reproduced and/or has procured and authorised the reproduction of and/or has threatened to reproduce and/or procure and authorise the reproduction of:
(a) the 53rd edition of the Gregory's Directory and/or, in the several alternatives, respectively each of the 52nd to 1st editions of the Gregory's Directory; and/or
(b) all or in the alternative certain of the individual maps contained in the 53rd edition of the Gregory's Directory and/or, in the several alternatives, all or in the alternative certain of the individual maps contained in respectively each of the 52nd to 1st editions of the Gregory's Directory; and/or
(c) all or in the alternative certain of the base maps reproduced in the 53rd edition of the Gregory's Directory and/or, in the several alternatives, all or in the alternative certain of the base maps reproduced in respectively each of the 52nd to 1st editions of the Gregory's Directory; and/or ... Particulars The reproduction or reproductions is or are contained in or comprised by the publications entitled "Premier Guide Greater Sydney Street Directory 1989 Edition" and "Premier Greater Sydney Street Directory Compact Edition".
20. Without the licence consent or permission of the Applicant each of the Respondents has compiled published offered and exposed for sale and sold by way of trade the reproductions referred to in paragraph 19 and has authorised and procured others so to do or has threatened to so publish, offer and expose for sale, sell authorise and procure.
21. In making, authorising and procuring the said reproductions and in publishing, offering and exposing for sale and selling by way of trade those reproductions as alleged and by procuring and authorising others so to do, the Respondents, knowing that the Applicant was the owner of copyright in each of the works referred to in paragraphs 7, 12 and 17 and that such works were the product of considerable care, skill, labour and expense, nevertheless reproduced and procured and authorised the reproduction of those works in the Respondents' publication for their commercial benefit and in deliberate and flagrant disregard of the Applicant's rights or alternatively with reckless indifference to them.
22. In the premises the Respondents have infringed and/or threaten to infringe and/or will continue to infringe the Applicant's copyright in each of the works referred to in paragraphs 7, 12 and 17 above."
The first respondent submits that except insofar as the statement of claim alleges that the applicant has copyright in the base maps and an infringement of that copyright, it discloses no arguable cause of action and should be struck out. In particular it is submitted, no arguable claim for copyright can subsist in relation to the "individual maps" referred to in the statement of claim, which appear to be no more than copies of particular base maps, nor can an arguable claim be made out for copyright to exist in each edition. The consequence would be to strike out paragraphs 6(a) and (b), and 7(a) and (b).
Further, or in the alternative, the first respondent seeks particulars of alterations or modifications of each of the maps contained in each edition, and "the manner in which "each individual map" represents an alteration or modification from any map previously published in a Gregory's Directory".
The proper test to be applied to determine whether the relevant provisions of the statement of claim should be struck out is not in dispute. It is agreed, in accordance with what was said in General Steel Industries Inc v. Commissioner for Railways (NSW) (1964) 112 CLR 125, at pp 129-120 that before a statement of claim will be struck out it must be clearly demonstrated that the applicant's case is so obviously untenable that it cannot possible succeed. Should, on the other hand there be a real question to be determined, whether of fact or law, the statement of claim should not be struck out. As Barwick CJ observed at p 130:
"... great care must be exercised to ensure that under the guise of achieving expeditious finality a plaintiff is not improperly deprived of his opportunity for the trial of his case by the appointed tribunal."
It is beyond dispute that as each initial base map was prepared, copyright existed in that base map as an original artistic or perhaps literary work. Where an original map is subsequently altered there will be a question of fact involved in determining whether the map as altered has become a new original work or whether it remained the old work. As the Privy Council pointed out in Interlego AG. v. Tyco Industries Inc (1989) 1 AC 217 at pp 262-3, mere copying of a work will not produce an original artistic or literary work:
"Skill, labour or judgment merely in the process of copying cannot confer originality ... There must in addition be some element of material alteration or embellishment which suffices to make the totality of the work an original work. Of course, even a relatively small alteration or addition quantitatively may, if material, suffice to convert that which is substantially copies from an earlier work into an original work. Whether it does so or not is a question of degree having regard to the quality rather than the quantity of the addition. But copying, per se, however much skill or labour may be devoted to the process, cannot make an original work. A well executed tracing is the result of much labour and skill but remains what it is, a tracing. Moreover it must be borne in mind that the Copyright Act 1956 confers protection on an original work for a generous period. The prolongation of the period of statutory protection by periodic reproduction of the original work with minor alterations is an operation which requires to be scrutinised with some caution to ensure that that for which protection is claimed really is an original artistic work."
The first respondent then submitted that an edition of a street map was analogous to an anthology of poems: copyright existed in the individual maps assuming them to be "original" works; copyright existed in the anthology as a whole (i.e. in the edition) but only so far as that comprised the arrangement or compilation, i.e. the order of the poems, title page and indices. It was said and no doubt correctly, that if the copyright in a poem contained in the anthology were infringed, the publisher or compiler of the anthology was not as such the owner of the copyright entitled to sue; rather it was the author of the poem who (in the absence of assignment of copyright) was entitled to bring proceedings. So too in the present case it was the owner of the copyright in the maps whose rights were infringed, it being not suggested that the maps in the first respondent's publications were published in the same order as those of the applicant or that the indices were reproduced. A mere glance at the publications confirms this.
Although the first respondent's submissions do have some weight, the question in my view is far from unarguable. For example, there will be a question, be it one of fact only or be it a mixed question of fact and law is immaterial, which requires to be answered before the submission of the first respondent could be accepted: that is the identification of the original literary or artistic work in which the copyright infringed is said to subsist.
By way of example, a dictionary might be prepared chapter by chapter. Each chapter could in one sense be said to be complete in itself if it listed all the words in the language commencing with a particular alphabetical letter; yet no one would suggest that the relevant copyright in the event of infringement existed as such in each chapter. The relevant literary work in which copyright subsisted would be seen to be the dictionary itself. This does not necessarily preclude the possibility that copyright might also exist in the chapter. Another example, suggested by the facts of University of New South Wales v. Moorehouse (1974-75) 133 CLR 1, is a novel containing a series of chapters each of which is self contained although when read together those chapters can be seen as a complete novel. In such a case a question could well arise as to whether each chapter was to be seen as an original literary work with the edition being seen to confer only a compilation copyright or whether the original literary work was in fact the whole book. The problem is particularly acute if, as in the case of Mr Moorehouse's book, the chapters had been independently published before the novel as a whole had been published.
Generally the question will be irrelevant, especially if the same author produces both the chapters and the book and if no chapter was published independently of the others. In the present case the question of identification of the work assumes a greater significance, both because the authors of individual maps may have differed over time and because individual maps appearing in the 53rd edition may be identical to maps appearing in the 52nd or earlier editions.
A book containing maps of the streets of Sydney may, as a matter of fact, be prepared from a large map or maps which for convenience of printing is or are broken down into smaller grids each occupying a page. The precise facts in the present case are not before me. The book may be intended by those preparing it to be an entirety with each page being seen to be a component part of that entirety, which entirety includes the indices which make the directory useful. If these were the facts it seems to me not unarguable that the book as a whole would be seen to be the original work and the question of infringement be tested by whether the infringing copy is a reproduction of a substantial part of the street directory as a whole.
If the issue be one of fact the appropriate question may well be whether the reasonable man upon seeing a reproduction of a particular page of the Gregory's Street Directory would readily characterise what he saw as but a page of a street directory or whether he would more readily characterise it as a map standing on its own. So far as my researches have shown there has, however, been no case which has yet considered the question how such a characterization should be undertaken. That of itself suggests that the applicant's case is far from being futile.
The case law when examined gives some support to the submissions of the applicant. In Kelly v. Morris (1866) 1 LR (Eq) 697, a case concerning an alleged infringement of copyright in respect of a business directory containing not only names and addresses in London but apparently an atlas of the streets of that city as well, the Court seemed to treat the infringement as being an infringement of the street directory rather than of the individual maps contained in it. At p 702 the Court said:
"With respect to the "Street Directory" in which the plaintiff has adopted a very ingenious form of arrangement, which is to be found in no other Directory that has been produced, except the defendant's, I hold it to be clearly established - from the identity of mistakes in the number of houses and the names of their occupants, and also in the breaks and intersections in the streets - that the defendant has taken its list of streets from the Plaintiff's Directory."
In Walter v. Lane (1900) AC 539, at p 554, the leading case on the issue of originality, Lord James of Hereford illustrated the compilation of a street directory as an example of the production of an original work. In Geographia Ltd v. Penguin Books Ltd (1985) 11 FSR 208, a case concerning an alleged infringement of the Daily Telegraph map of the world, the map itself was treated as the whole work and the question of infringement tested by asking "whether what in fact has been taken amounts to a substantial part of the Daily Telegraph map considering the map as a whole work" (at p 211).
In Cary v. Faden (1799) 5 Ves Jun 24, 31 ER 453, the Lord Chancellor, considering what appears to have been a street directory, spoke in terms of the book itself being the work rather than the original drawings from which the maps in the book were produced. In Carnan v. Bowles 2 Bro CC 80, 29 ER 45, both Lord Thurlow and Lord Kenyon regarded a road book (apparently a street directory) as being entitled to the protection of the law. Their Lordships did not talk in terms of the maps from which the book was prepared. So too in Cary v. Kearsley 4 Esp 168, 170 ER 679, Lord Ellenborough again spoke of copyright existing in the book itself rather than the maps from which the book was prepared.
In University of New South Wales v. Moorehouse to which reference has already been made, the copying was of one of twenty stories printed in the book "The Americans, Baby" authored by Mr Moorehouse. Each of the stories had been first published in magazine form before being published in book form. Jacobs J referred to the infringement as being an infringement of the copyright in the book itself and Mason J left open the question. Even if the street directory be seen as a compilation, it does not necessarily follow that the fact that the infringing copies were in a different order in the first respondent's publication to those in the applicant's publications, requires that there was no infringement of copyright in the directory itself. In Football League Ltd v. Littlewoods Pools Ltd (1959) 1 Ch 637 Upjohn J, as his Lordship then was, left open the question whether there would have been an infringement of the plaintiff's chronological fixtures list if the order had been scrambled. However, in Demerara Turf Club v. Phang (1963) 6 WIR 177, it was held that the publication in the defendant's coupon of a list of names of all horses in a race taken from the plaintiff's programs and coupon but in a scrambled form, nevertheless constituted an infringement.
In my view these cases taken in conjunction with the logical necessity of determining what a work is as a matter of fact lead inexorably to the conclusion that the applicant has a quite arguable case of maintaining the existence of copyright in the book or "edition" itself and of infringement of that copyright independently of such case, if any, as it may also have for asserting ownership of copyright in the individual maps and infringement by copying of that copyright.
I should here make reference to s.92 of the Copyright Act 1968 which provides for copyright to subsist in a published edition of a literary, dramatic, musical or artistic work not being merely a reproduction of a previous edition of the same work where the first publication of the edition took place in Australia or the publisher of the edition was a qualified person at the date of the first publication of it. That section was said from the Bar Table to be relied upon by the applicant as well although it is not pleaded. In any event I do not think it is necessary to consider whether that section in the present circumstances adds anything to the applicant's case.
It follows that I would not strike out paragraphs 6(a) and 7(a) of the statement of claim, relating to the Gregory's Directory, nor the comparable paragraphs relating to the other directories.
Returning to the question of copyright in the maps there is, as I have already indicated, some difficulty in distinguishing between a copyright in each individual map of an edition and copyright in the base maps reproduced. Copyright exists only to the extent that the map in question is an original work. When a base map is produced, copyright undoubtedly exists in that base map. If the base map is reproduced in an edition without alteration copyright could not exist in the map reproduced, for the reproduction lacks novelty and originality. If the base map is altered so that there is a new original work created copyright exists in the altered map. This, it is which is printed.
The pleader appears to have used the expression "base map" to refer to original maps which are reproduced without alterations and the expression "individual maps" as referring to the maps as published. It is clear from the two editions before me that not all individual maps in the 53rd edition are mere reproductions of a map in the 52nd edition but that some maps may be mere reproductions. This would have the consequence that no finding could be made that copyright exists in each individual map of the 53rd edition although it is possible that some at least of such maps are sufficiently original to be the subject of copyright.
I know nothing of the remaining editions. But the fact that the pleader pleads facts that are or may be wrong is not a ground for the pleading to be struck out prior to the trial and more especially if the material before the Court on the strike out application does not enable the Court to know the truth of the assertion as a whole.
Accordingly I would not strike out paragraphs 6(b) and 7(b) of the statement of claim or the corresponding paragraphs relating to the other directories.
I turn now to the question of particulars which is tied up with the question whether revisions of the base maps themselves create new original works so that copyright exists in the revised maps: the "individual maps" of the pleading.
The first respondent has sought to obtain from the applicant particulars showing the extent of changes in the "base maps" as they vary from edition to edition. The applicant submits that the first respondent is not entitled to these particulars. Implicit in the submission is that to provide the particulars would be an onerous undertaking: explicit is that ultimately it would put the applicant to unnecessary expense and not advance the case of the first respondent.
The first respondent points to Elram International Actuators v. Fluid Power Engineering (1984) FSR 151 and Rexnold Inc v. Ancon Ltd (1983) FSR 662 in support of its submissions. In the former a plaintiff was required to particularize all antecedent drawings, used by the draftsman of the drawing in respect of which copyright was alleged; in the latter Whitford J sitting in the Chancery Division pointed out the significance of antecedent drawings where a claim for novelty is made.
The applicant seeks to meet the argument of the first respondent in this way. It alleges that all persons who worked on the preparation or on the modification of base maps were either employees or were such that copyright in the base maps and any variations thereof, if the latter were new works, passed to the applicant. They say therefore that it would be unnecessary to meet the applicant's case for the first respondent to be supplied the particulars sought. There is indeed much to be said for this submission.
But if this be not so, the applicant in my view need only make available for inspection by the first respondent copies of the earlier editions of the works from which the variations in each edition can be detected if the respondents regard the matter as critical to their case. In these circumstances I do not propose to order the applicant to supply to the first respondent the particulars of the extent of changes in the base maps as they vary from edition to edition. In so doing I assume that such inspection will be given when discovery is completed by the applicant.
Accordingly I would dismiss the first respondent's motion. I will hear argument as to costs.
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