YPG IP Limited v Yellowbook.com.au Pty Ltd HC Auckland CIV 2007-404-2839
[2010] NZHC 943
•31 May 2010
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
CIV-2007-404-2839
UNDER The Copyright Act 1994, The Fair Trading
Act 1986 and The Trade Marks Act 2002
BETWEEN YPG IP LIMITED First Plaintiff
ANDYELLOW PAGES GROUP LIMITED Second Plaintiff
ANDYELLOWBOOK.COM.AU PTY LTD First Defendant
ANDDAVID KHOURY Second Defendant
ANDROBERT G COLES Third Defendant
Hearing: 29 and 30 March 2010
Appearances: M C Hayes for Plaintiffs
C Elliottt for First and Second Defendants
Judgment: 31 May 2010
JUDGMENT OF COOPER J
ON INTERLOCUTORY APPLICATIONS OF FIRST AND SECOND
DEFENDANTS
This judgment was delivered by Justice Cooper on
31 May 2010 at 3.00 p.m., pursuant to r 11.5 of the High Court Rules
Registrar/Deputy Registrar
Date:
Solicitors:
A J Park, PO Box 565, Auckland
Ellis Terry, PO Box 10932, The Terrace, Wellington 6011
Copy to:Clive Elliott, PO Box 4338, Auckland 1140
YPG IP LIMITED AND ANOR V YELLOWBOOK.COM.AU PTY LTD AND ORS HC AK CIV-2007-404-
2839 31 May 2010
Introduction
[1] The plaintiffs in this proceeding assert intellectual property rights in respect of the business directory known as the Yellow Pages that has been published in a printed form since 1959 and in an electronic form on the internet since 1997. The first plaintiff claims to be the owner of the goodwill and reputation in the name YELLOW PAGES, trade marks for the name YELLOW PAGES and the colour yellow trade mark as used exclusively in relation to business directory services in New Zealand. The first plaintiff maintains that it licenses this claimed intellectual property to the second plaintiff. The second plaintiff claims to be the owner of copyright arising from the creation of the printed and online Yellow Pages directories.
[2] The second plaintiff alleges that the first and second defendants have breached copyright by reproducing the second plaintiff’s “Copyright Works” in a material form, publishing and making available in New Zealand the YELLOW BOOK Directory of New Zealand businesses and/or the YELLOW DUCK Directory of New Zealand businesses. It seeks a declaration that those directories infringe the Copyright Works, injunctions, an order requiring the first and second defendants to deliver up or destroy the defendant’s directories on oath, damages or an account of profits, additional damages under s 121(2) of the Copyright Act 1994, interest and costs.
[3] The Copyright Works are described in paragraph 15.1 of the second amended statement of claim, which states:
The Second Plaintiff’s Copyright Works comprise, inter alia:
(a) an ontology of business classifications used to describe goods or services provided by businesses listed in both the printed and online YELLOW PAGES Directories which are set in a hierarchy;
(b) a list of geographical classifications used to describe the location of businesses listed in the online YELLOW PAGES Directory which is set in a hierarchy; and
(c) a database of business listings, detailing the businesses names and contact details including addresses, telephone numbers and/or email addresses, where the ontology of business classifications and list of
geographical classifications have been applied to each individual business listing listed in the online YELLOW PAGES Directory.
[4] Other causes of action are pleaded against the first and second defendants alleging trade mark infringement, and breach of the Fair Trading Act 1986. Similar claims are advanced against the third defendant who has taken no part in the present argument. In the balance of this judgment the references to “the defendants” are to the first and second defendants.
[5] There are presently outstanding interlocutory applications made by the plaintiffs and the defendants. Both applications were set down for hearing on 29 and
30 March but for a number of reasons, including the time needed to hear them, I heard argument then only on the application by the defendants. The plaintiffs’ application was heard on 17 and 18 May and will be the subject of a separate judgment.
The application by the first and second defendants
[6] In their application dated 11 March 2010 the defendants sought orders requiring the plaintiffs to provide further discovery, to facilitate inspection of certain documents, to provide a more explicit statement of claim particularising their allegations or, in the alternative, to answer interrogatories set out in the application. Mr Elliottt clarified in argument that the orders were sought only against the second plaintiff.
[7] The orders sought were set out in detailed schedules which were attached to the application and are also attached to this judgment. Schedule 1 listed the documents sought on discovery, Schedule 2 dealt with the orders sought facilitating inspection, Schedule 3 with the requested particulars and Schedule 4 the proposed interrogatories. The second plaintiff did not oppose orders being made in respect of some of the items in the Schedules and I have indicated those by italicising them in the attached Schedules.
[8] Although the defendants seek a number of different orders there are common underlying issues. These are based on the fact that the defendants deny the existence
of the claimed copyright and assert, alternatively, that any copyright would necessarily be of limited scope since the works consist of a database made up of public information and no skill and judgment was expended in the creation of the works. It is against this background that the defendants claim that the plaintiffs have failed to discover all relevant documentation relating to:
(a) the manner in which the alleged copyright works were created; (b) how and when this occurred;
(c) the extent to which each contribution was the result of more than one author and over a period of time;
(d) the extent to which those processes were automated;
(e) the extent to which ongoing contributions were computer generated; and
(f)the extent to which contributors’ contributions to the listings were governed by and applied in accordance with content and format rules.
[9] Mr Elliottt submitted that unless the relevant documents exist and are discovered the plaintiffs will not be able to establish that copyright subsists in the alleged works and that the works are owned by the plaintiffs. He also refers to a statement in Copinger and Skone James on Copyright (15th ed, Sweet & Maxwell, London, 2005) at [7.27(j)]:
“... that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright.”[1] It is, therefore, often important to isolate what it is the real worth of a work from the copyright point of view, in particular what parts of the work constitute the original contribution of the author and thus represent the skill or labour of his creation.
[1] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 W.L.R. 273 at 293.
[10] Mr Elliott argued that in accordance with this statement of the law the plaintiffs need to specify each individual authorial contribution so that questions of the degree of original effort can be assessed. It is implicit in this approach, and Mr Elliottt argued, that the parts of the alleged work cannot be divorced from the whole.
[11] Mr Elliott placed considerable emphasis in argument on the decision of the Federal Court of Australia in Telstra Corporation Ltd v Phone Directories Company Pty Ltd.[2] In that case, the Court had to decide whether copyright subsisted in the White Pages and Yellow Pages published by Telstra Corporation Ltd in Australia, between 2000 and 2009. The Court directed that issue to be determined as a preliminary question. It was held that copyright did not subsist, because the works were not original literary works. Gordon J summarised the reasons for that conclusion at [5]. They included the fact that Telstra could not identify who had
provided the necessary authorial contribution to each work. It was conceded that there were numerous persons who had made a contribution who were not identified. Even if the authors could be identified, Gordon J found (at [2.1]) that much of the contribution made was not “independent intellectual effort” or alternatively “sufficient effort of a literary nature” as required by the High Court of Australia’s
decision in IceTV Pty Ltd v Nine Network Australia Pty Ltd.[3] Further, much of the
contribution to each work was not in fact the result of human authorship, but was computer generated. Gordon J also held that the works could not be considered as “original works” because the creation of each work did not involve independent intellectual effort or sufficient effort of a literary nature. Mr Elliott submitted that similar reasoning was applicable in the present case. He noted that the plaintiffs had discovered few, if any, documents going to the issues of subsistence and originality, in particular failing to discover the documents in the categories set out in paragraph [8] above.
[2] Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2010] FCA 44 (8 February 2010).
[3] IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14.
[12] Mr Elliott also referred to observations made by the Supreme Court in Henkel KGaA v Holdfast New Zealand Ltd.[4]At [38], delivering the judgment of the Court, Tipping J said:
[38] The threshold for originality is a low one and it can be material for other purposes how original the work is; that is, how much skill and labour has gone into its creation. In general terms, the greater the originality, the wider will be the scope of the protection which copyright affords and vice versa.
[4] Henkel KGaA v Holdfast New Zealand Ltd [2007] 1 NZLR 577 at [38] and [41].
[13] And at [41]:
[41] As we observed earlier, it may be relevant for infringement purposes to determine how much skill and labour went into the making of the copyright work. This point can have particular relevance in arrangement cases. The skill and labour which has given rise to the arrangement is what gives the work its originality, and if that skill and labour is not great, another arrangement of the same unoriginal underlying features may not have to depart greatly from the copyright arrangement in order to avoid infringement.
[14] Mr Elliott argued that the same approach is required in the case of “compilations”, as in arrangement cases. Given the clear need for the defendants to be able to test the originality of the works, the plaintiff must, he submitted, specify the works’ original aspects, and state who contributed to that. The authors should be identified so that the defendant can make further inquiry, if necessary by speaking to them, so as to verify what work they performed.
The plaintiff’s opposition
[15] Mr Hayes submitted for the plaintiffs that the Yellow Pages directories are compilations of data, noting that they are therefore within the definition of “compilation” in s 2 of the Copyright Act and, consequently, are a “literary work” within the definition of that term in s 2. The directories comprise a database structure storing a collection of data. The structure is defined by a “schema” which is a compilation of data fields containing name, address and contact details of individuals and companies. The data stored in the database is a compilation of business listings together with characterising “attributes”, each attribute being stored in a separate database field.
[16] He relied on Henkel KGaA v Holdfast New Zealand Ltd to submit that originality is to be assessed in accordance with common law principles and that while more than minimal skill and labour is required, the threshold for originality is a low one. He submitted that a work is original if it is not copied from another work[5] and does not infringe the copyright in another work.[6] He submitted that originality
[5] University of London Press v University Tutorial Press [1916] 2 Ch 601 at 609 and see Copyright Act 1994, s 14(2)(a).
[6] Copyright Act s 14(2)(b).
requires the independent expenditure of skill, judgment, capital and labour and that
in the case of a compilation, copyright will subsist if skill and capital is expended “sufficiently to impart to the product some quality or character which the raw material did not possess, and which differentiates the product from the raw material”.[7] He argued that, in compilations, the skill, labour and judgment necessarily lies in the selection or arrangement of the components of the database structure and its contents. The question is whether the work as a whole is original
and Mr Hayes argued that, contrary to Mr Elliott’s submission, it is not permissible to determine whether a work as a whole could support copyright by dissecting the whole to determine whether parts are original and could support copyright in themselves.[8] Mr Hayes also submitted that as with an arrangement case, in a compilation case the work should not be dissected so as to remove matters which in themselves might have no originality. In this respect, Tipping J observed in Henkel
at [47]:
Later the Judge correctly identified that the claimed originality lay in the arrangement of a number of unoriginal features. But the Judge then proceeded to say that the trial Judge had failed “to remove from the collocation matters of no originality”. With respect, that is not the way to approach an arrangement case. If the Court were to do what Baragwanath J appears to have suggested, nothing would be left. An arrangement case is concerned with the author’s arrangement of features which in themselves have no originality. The originality lies in the arrangement. To remove from the arrangement matters of no originality would, in these circumstances, leave nothing to arrange; all that would be left would be a blank sheet of paper.
[7] MacMillan & Co. Ltd v Cooper (1924) 40 TLR 186 at 188 per Lord Atkinson.
[8] Henkel KGaA v Holdfast New Zealand Ltd above n 4 at [40] and Ladbroke (Football) Ltd v William
Hill (Football) Ltd above n 1 at 485.
[17] Mr Hayes submitted that the directories consist of a database with neither a fixed structure nor fixed contents, since it is continuously updated. Skill and labour was expended not only in creating the original work, but on an ongoing basis as it is updated, and in verifying and culling the business listings as appropriate. He argued that the directories are original in the skill, judgment, labour and capital expended in designing and compiling the database and the selection of the business classifications as fields for the database, the creation and selection of each classification label or heading to populate the fields and the selection of the headings appropriate for each business listing in the database.
[18] Since the directories were first published in New Zealand they were a literary work qualifying for copyright under s 19 of the Copyright Act.
[19] The different approaches of the parties to the issues of subsistence and originality were reflected in their respective positions in relation to the present applications.
Further particulars
[20] It will be convenient to deal first with the request for the further particulars set out in Schedule 3. The second plaintiff agreed to provide the particulars sought in items 1, 2, 3(a) and 6 to 9 (inclusive) of Schedule 3, but it opposed the balance.
[21] In relation to the particulars sought in items 3(b) to (d), the second plaintiff resists the application on the basis that to provide the particulars sought would be to divide its copyright works into component parts. Relying on Henkel, which it says endorsed the approach of the House of Lords in Ladbroke, it submits that that is not a correct approach. It maintains that copyright, if it exists at all, exists in relation to the work as a whole.
[22] Mr Elliott referred to a number of cases which set out general principles in relation to particulars decided under r 5.21 of the High Court Rules and its predecessors emphasising that the pleadings must define the issues and inform the parties in advance of the case they have to meet to enable them to take the necessary steps to deal with it. One case to which he referred was Ecolab Ltd v Johnson Wax
Professional New Zealand,[9] in which Morris J referred to the complicated factual
[9] Ecolab Ltd v Johnson Wax Professional New Zealand HC Auckland M423/02, 6 December 2002
context which must often be considered in copyright infringement cases and said that both parties should be required to provide detailed particulars so as to allow adequate preparation. He continued at [16]:
In order to defend this case, the defendants will need to know which specific component of each of the parts mentioned in the pleadings has been copied, or substantially copied, by the defendants as alleged by Ecolab.
Accordingly, further particulars relating to those components must be provided.
[23] Mr Elliott also referred to Krone (New Zealand) Technique Ltd v Connector Systems Ltd,[10] another case involving a claimed breach of copyright in which Master Williams QC ordered interrogatories (in lieu of particulars) requiring the plaintiffs to state detailed information relating to the design of technical equipment, explanations of the dimensions of its design, whether the plaintiffs knew of similar designs being used elsewhere, whether the design had been developed by reference to other
documents, whether or not there had been revisions of the drawings, what changes had been made and when and why the changes had been made. There were further interrogatories allowed as to the authors of the drawings, whether any revisions had been made and if so, the names of the authors of the revisions. The orders were made notwithstanding that providing the answers would require research going back to 1978.
[10] Krone (New Zealand) Technique Ltd v Connector Systems Ltd (1992) 4 TCLR 325.
[24] I consider that Mr Elliott’s argument overlooks the fact that the plaintiffs’ claim as pleaded in relation to the Copyright Works (defined in paragraph 15.1 of the amended statement of claim) relates to the whole of the directories. It is the ontology of business classifications, the list of geographical classifications and the database of business listings as they form part of the business and geographical
classifications that comprise the alleged Copyright Works.[11] The Court is not
presently asked, as was the case in Telstra, to decide whether or not the claim for copyright in the works as a whole can be sustained.
[11] Mr Hayes confirmed in argument that the words “inter alia” in the opening line of paragraph 15.1 of the amended statement of claim are not intended to embrace anything beyond subparagraphs (a), (b) and (c) that follow. Further, the word “including” in line 2 of paragraph 15.1(c) does not imply that other matters are included in the phrase “contact details”.
[25] The defendants assert copyright cannot subsist because the directories cannot properly be described as original literary works and because they are not the result of sufficient expenditure of skill and capital or, to adopt the Australian formulation, “independent intellectual effort” or “sufficient effort of a literary nature”. But what matters for present purposes is that the claim advanced by the second plaintiff - that
copyright subsists and has been breached - is a claim advanced in relation to the whole of the work, or a substantial part of it.
[26] In Ladbroke at 277-278, Lord Reid observed that in a compilation case “originality is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation”. And earlier, also at 277, Lord Reid said:
A wrong result can easily be reached if one begins by dissecting the plaintiffs’ work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that because the fragments taken separately would not be copyright, therefore the whole cannot be. Indeed, it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright.
[27] I consider that the approach urged by Mr Elliott, which would effectively require the second plaintiff to particularise a claim it does not intend to advance, would run counter not only to those observations, but also to what was said by Tipping J in Henkel at [47] to which I have earlier referred. The second plaintiff does not base its claim to copyright in the individual business listings but in the compilation, and the arrangement and classification of the listings in the directories. Such a claim does not depend on the nature or quality of individual listings in the directories. Whether the claim as advanced can be sustained and whether the New Zealand Courts will follow the approach in Telstra Corporation Ltd v Phone
Directories Company Pty Ltd[12] are questions for the trial, not to be resolved at an
interlocutory stage. But the plaintiffs cannot be required on an application such as the present to give particulars of their claims on the basis of arguments they do not intend to assert.
[12] Telstra Corporation Ltd v Phone Directories Company Pty Ltd above n 2
[28] For these reasons, I will not order the further particulars sought in items 3(b)
to (d) of Schedule 3.
[29] In items 4(a) and (b) the defendants seek particulars requiring the second plaintiff to identify each and every entry included within the Copyright Works and to state whether copyright exists in the whole of that entry and, if it exists only in respect of aspects of each entry to identify such aspects and to specify the authorial contribution. Once again, I consider that this is a wrong approach having regard to the nature of the second plaintiff’s claim.
[30] Mr Hayes noted that to order the particulars sought would require reference to over 200,000 business listings and submitted that to require that would be oppressive. But he also made the point that the Works as a whole will be discovered and the particulars provided in answer to items 1, 2 and 3(a) will further specify the ambit of the claim for copyright. I do not consider that the further particulars sought are necessary given that the second plaintiff’s claim is in respect of the Works as a whole.
[31] Mr Elliott accepted that to order the particulars sought in item 5 would be repetitive having regard to the terms of item 1, which the plaintiffs are to provide and I will not make an order in terms of that item.
[32] As to items 12 and 13, the particulars sought require specification of the basis upon which the second plaintiff claims an entitlement to ownership of the alleged copyright in relation to each alleged author and each alleged work, and full particulars of the author’s employment or contractual relationship with the plaintiffs. The second plaintiff resists giving these particulars on the basis that paragraph 16 of the second amended statement of claim sufficiently states the particulars of the claim, and on the basis that there is no requirement in New Zealand law that the second plaintiff identify particulars such as those sought by reference to each author or contributor.
[33] Paragraph 16 of the second amended statement of claim provides as follows:
16. Copyright in the Second Plaintiff’s Copyright Works is valid and subsisting.
Particulars
16.1 The ontology of business classifications for the YELLOW PAGES Directories has been created over many years, starting in 1959, by employees of the Second Plaintiff during the course of their employment, or by employees of its predecessors in business. The ontology is a living work and it continues to be revised by employees of the Second Plaintiff and by employees of a company called Directory Consulting Australia Pty Limited (Directory Consulting) under contract to the Second Plaintiff. The employees of Directory Consulting were/are domiciled in Australia. The employees of the Second Plaintiff and its predecessors in business were/are New Zealand citizens. 16.2
It was an express term of the contract between the Second Plaintiff and Directory Consulting that ownership of the copyright subsisting in updates and revisions to the ontology recommended by Directory Consulting’s employees would vest in the Second Plaintiff.
16.3
The geographical classifications for the online YELLOW PAGES Directory were created in or around 1996/97 by employees of the Second Plaintiff, during the course of their employment with the Second Plaintiff or by full-time employees of its predecessors in business. The list of geographical classifications is a living work and it continues to be revised by employees of the Second Plaintiff. The employees of the Second Plaintiff and its predecessors in business were/are New Zealand citizens.
16.4
The database of business listings for the YELLOW PAGES Directory has been created over many years, starting in 1959, by employees of the Second Plaintiff, during the course of their employment with the Second Plaintiff or by employees of the Plaintiffs’ predecessors in business. The database of businesses is a living work and it continues to be revised by employees of the Second Plaintiff. The employees of the Second Plaintiff and its predecessors in business were/are New Zealand citizens.
16.5
The Second Plaintiff’s Copyright works are original, in the sense that they were not copied from any other work, and are the product of the various authors’ time, labour, skill and judgment.
[34]
It is
for the plaintiffs to frame the case that they wish to advance.
The
paragraph sets out the basis of the second plaintiff’s claim as to why copyright is valid and subsisting. I do not consider that anything more should be required. In particular, I do not consider that the second plaintiff can properly be required to state the names of authors or in relation to each author an identification of the basis upon which the second plaintiff claims entitlement to the ownership of the copyright; it must be sufficient, as the plaintiffs have done, to refer to groups of employees of the second plaintiff and its predecessors and of Directory Consulting (referred to in paragraph 16.1 of the amended statement of claim), on a collective basis.
[35] Mr Elliott pointed out that the second plaintiff did not claim that the directories are computer-generated works with the consequence that the plaintiff needs to refer to a person or persons who created the work: s 5(1) of the Act. However, in a case such as the present where there is apparently no real challenge on the “ownership” issues as such,[13] that does not require that names of persons be
[13] Paragraph 10 which is the relevant paragraph of the statement of defence simply puts the second plaintiff to proof that it is the owner of the copyright.
stated.[14] Mr Elliott drew my attention to the decision in Henkel at first instance[15]
[14] Nor is this a case where it would be necessary for the plaintiff to establish that copyright has not expired by reference to named individual contributors to the Works.
[15] Henkel KGAA v Holdfast Manufacturing Ltd HC Auckland CIV-2003-404-002641, 5 November 2004.
where Harrison J referred at [13] to evidence that had been given by the director of an Italian design company that he and his team had carried out the relevant development work on the adhesive packaging which was the subject matter of the dispute in that case. Mr Elliott referred to other passages of the judgment in which there was discussion of evidence about the extent of their contributions to the design; Mr Elliott argued that the case was an example of the need for there to be sufficient evidence of authorial contribution to the claimed copyright works. That may be true as a matter of evidence, but I am not persuaded that it requires as a matter of law (or pleading) that the names of individual authors be identified.
[36] Items 14 to 17 of Schedule 3 are particulars requested in relation to paragraph
18 of the second amended statement of claim in which it is alleged that the first and/or second defendant, without licence or consent of the second plaintiff, reproduced the second plaintiff’s Copyright Works in a material form. The particulars sought require the second plaintiff to state specific parts of the Copyright Works that have been copied.
[37] The particulars given in the second amended statement of claim refer to publications in New Zealand of the first and/or second defendant’s YELLOW BOOK Directory of New Zealand businesses and YELLOW DUCK Directory of New Zealand businesses. It is alleged that those directories use an ontology of business classifications to describe goods or services provided by businesses listed in alphabetical order under geographical classifications, a list of geographical
classifications and a database of business listings, detailing name, and contact details in respect of each individual business listing. It is then alleged that:
18.3The ontology of business classifications and database of business listings are copies of the whole or a substantial part of the Second Plaintiff’s Copyright Works.
[38] Paragraph 19 of the second amended statement of claim pleads that without discovery, the second plaintiff is unable to particularise all instances of infringement by the defendants but it claims relief in respect of all such acts.
[39] Mr Hayes submitted that, as with the defendants’ request to isolate the individual component parts of the second plaintiff’s works, under items 4(a) and (b) of Schedule 3, it is inappropriate for the defendants to request the second plaintiff to identify each and every specific part or listing in the works that are alleged to have been copied by the defendants. He argued that the question of whether the defendants have reproduced a substantial part of the second plaintiff’s Copyright Works will not be a quantitative assessment but a qualitative one based on a comparison of the whole of the second plaintiff’s works and those published by the defendants.
[40] Once again, the plaintiffs rely on Henkel and in particular what Tipping J said at [44]:
It is not necessary for the plaintiff to show that the defendant copied the whole of the copyright work or that the copying was exact. It is enough if the plaintiff demonstrates that the defendant copied a substantial part of the copyright work. This can sometimes be a difficult matter of evaluation and is usually the most difficult question which arises in copyright cases.… As it has helpfully been put, what must have been copied is the essence of the copyright work.[16]
[16] Bleiman v News Media (Auckland) Ltd [1994] 2 NZLR 673 at 678 per Gault J: “It is often said that the test is whether the essence of the copyright work has been taken: See Laddie, Prescott and Vittoria The Modern Law of Copyright (1980) para 3.36: Taypar Pty Ltd v Santic (1989) 17 IPR 146,
152.”
[41] I am not prepared to order the particulars sought in paragraphs 14 to 17. Once again, the reasons reflect the nature of the case that the second plaintiff intends to advance in respect of its claimed breach of copyright. The focus is on copying of the whole (or a substantial part) of the work. In those circumstances, there would be
no point in requiring the second plaintiff to particularise its case to the level of detail which would be required if the defendants’ application were granted.
[42] I am also not prepared to order the particulars sought in items 10 and 11. In broad terms, again I do not consider the particulars are relevant to the case the second plaintiff intends to advance. As to that, Mr Hayes made it plain that the plaintiff will rely at trial on s 19(1)(a) of the Copyright Act whereby a literary work qualifies for copyright if it is first published in New Zealand. Further, having regard to paragraph 16 of the second amended statement of claim it is not necessary for the second plaintiff’s case that individual authors should be named, for the reasons already discussed.
[43] In the result, I order that the second plaintiff must give the further particulars sought in items 1, 2, 3(a) and 6 to 9 (inclusive) of Schedule 3, but the defendants’ application for further particulars is otherwise declined.
[44] I note that in argument the parties recorded their agreement that the further particulars sought in item 6 of Schedule 3 could be provided by reference to the document marked “RM-60”, attached to the affidavit of Tina Louise Miller sworn on
17 May 2007.
Interrogatories
[45] I turn next to the application for an order that the second plaintiff answer the interrogatories set out in Schedule 4. In this case the second plaintiff has stated that it will attempt to provide answers to the interrogatories at items 1 to 9(a) and 10 to
16 of Schedule 4. It opposes the application insofar as it relates to items 9(b) and 17 to 26.
[46] The discussion above in relation to the requested particulars enables this and the following parts of the application to be dealt with more briefly. The reasons advanced by the second plaintiff in opposition to the interrogatories rest on the same bases that apply to the equivalent requests for particulars. As to item 9(b), the interrogatory would require an answer in relation to the identity of individual authors
and the date of their contributions “if it is alleged that copyright exists in any particular aspects of the writings, notation, listings or entries …”. I accept the second plaintiff’s submission that it is not necessary having regard to the nature of the second plaintiff’s claim for it to provide details of individual authors or their contributions, again for the reasons already discussed. The copyright claimed is in relation to the matters set out in paragraph 15.1 of the amended statement of claim.
[47] Similarly, paragraphs 17 to 22 ask further questions in relation to the individual authors, their nationality or residence status, their employment status, and the nature, extent and date of their contributions. I consider that the interrogatories should not be ordered for the same reasons earlier given in respect of the equivalent requests for further particulars.
[48] Again, I am not prepared to order that the interrogatories in items 23 to 26 of Schedule 4 for the same reasons as those given in dealing with the request for further particulars in items 14 to 17 of Schedule 3.
[49] In summary, I order that the second plaintiff provides answers to the interrogatories at paragraphs 1 to 9(a) and 10 to 16 of Schedule 4 but otherwise dismiss the defendants’ application.
Further and better discovery
[50] The second plaintiff agrees to provide further and better discovery of the documents identified in items 2 and 4 of Schedule 1. With respect to item 24 the second plaintiff submits that the relevant documents have already been discovered. The issue turns on the same issue as to the nature of the second plaintiff’s copyright claim, and I am satisfied that the second plaintiff does not need to discover any additional material under this item.
[51] As to the balance of the application, the second plaintiff objects to providing the requested further discovery for the same reasons that have been canvassed in relation to the request for particulars and interrogatories. Once again I uphold the second plaintiff’s objections and decline to order the discovery of the items to which
the second plaintiff objects for the reasons earlier discussed in relation to the other parts of the application.
[52] Consequently the only order that I am prepared to make on this part of the application is that the second plaintiff discover the documents identified in items 2 and 4 of Schedule 1.
Inspection
[53] The orders sought in Schedule 2 were that the plaintiffs provide original and separate versions of the business and geographic listings identified in paragraph
15.1(a) and (b) of the amended statement of claim together with a “full, complete and unmodified version, example or copy of the plaintiffs’ database in its original database format such as SQL, Oracle, or MySQL”.
[54] Mr Hayes advised that the relevant portions of the database can be discovered in the Oracle format but sought suitable terms for inspection protecting the security of the database and its confidentiality including an appropriate undertaking from the defendants’ expert before inspection occurred. He attached e-mail correspondence and a draft “confidentiality undertaking deed” and sought that the Court order inspection subject to terms that he had set out in an e-mail to Mr Elliott.
[55] Mr Elliott noted in reply that it was likely the parties would be able to agree to terms of inspection and I was left unclear as to whether an order of the Court was required. If terms have been agreed, well and good. If not, I reserve leave for the parties to file further submissions on this issue and I invite such submissions from the defendants within five working days and from the second plaintiff within three working days of receipt of the defendants’ submissions.
Summary
[56] I make orders as set out in [43], [49] and[52].
Costs
[57] The defendants have succeeded only on those parts of the application where the second plaintiff has consented to the orders sought. In the circumstances my preliminary view is that the second plaintiff is entitled to its costs on the application. However, in case there is any relevant issue of which I am presently unaware that might affect that outcome, I reserve leave to the defendants to file a memorandum seeking to persuade me to a different view within ten working days. If no such memorandum is filed, then the defendants should have their costs calculated on a Category 2 Band B basis. Any dispute as to the quantum of such costs may be resolved by the Registrar.
Paragraphs 15 and 16
SCHEDULE 1
In relation to the second plaintiff’s Copyright Works (the "Copyright Works")
referred to in paragraphs 15 and 16 of the second amended statement of claim dated
20 March 2009 and the denial paragraph 16 of the first and second defendants’ statement of defence dated 6 May 2009, the following documents relate to the issue of subsistence and originality.
1.All documents specifying, identifying or relating to the contributions made by individual authors or co-authors (whether employees, contractors or otherwise) which occurred prior to the Copyright Works taking their material form.
2.All written agreements with contractors or other third parties, relating to work or contributions made by such contractors, third parties or other individual/s or entity relating to the production of the Copyright Works including contracts, agreements notes and correspondence directed to this issue.
3.All documents which specify, identify or relate to the persons responsible initially producing, amending or updating the listings in the Copyright Works so as to enable identification of the specific contributions made and by reference to one or more particular authors in each and every case.
4.All documents specifying, identifying or relating to the structure and arrangement of the plaintiffs’ database.
5.All documents specifying, identifying or relating to any information given by customer requests, telecommunication companies, internet service providers and third parties that supply raw or other data for the creation or amendment of any listing or geographical classification.
6.All documents specifying, identifying or relating to the production of new category classifications and identifying how the categories in the plaintiffs’ database are assembled.
7.All documents specifying, identifying or relating to each of the persons in the two preceding paragraphs and their relationship with the plaintiffs along with any documentation such as employment contracts, independent contractor agreements, and assignments of copyright, if any.
8.All documents specifying, identifying or relating to the acquisition of listing data, geographical classification and category classifications or otherwise from telecommunication providers, service providers and other third parties dealing in telecommunications customer information and the acquisition, processing and use of that data or information by the plaintiffs.
9.All documents specifying, identifying or relating to how electronic software import programmes and manual processes are used by telecommunication provides, service providers and other third parties to validate the base data for import extraction to the plaintiffs’ core software systems.
10.All documents specifying, identifying or relating to the process of how the automated feed from telecommunication companies, service providers and other third parties is used to update existing business listings appearing in the plaintiffs’ database.
11.All documents specifying, identifying or relating to content and advertising instructions, rules and protocols.
12.All documents specifying, identifying or relating to software or other tools used to ontologically and geographically categorise listings, along with computer programmes to enter and extract the listings from their databases, and to check the information before entry and after extraction.
13.All documents specifying, identifying or relating to contractors or third parties relating to the production of or ownership of copyright in any product/output produced from such software or computer programmes, including the Copyright Works.
14.All documents specifying, identifying or relating to listing or data manipulation "rules", namely those which govern the acquisition, content and presentation of listings.
15.All documents specifying, identifying or relating to manual entries made by person/persons in accordance with any "rules" as referred to in paragraphs 12 and 15 of Schedule 1 and detailing how and when any such manual entries occur.
16.All documents specifying, identifying or relating to the process of bringing a previous year's database through into a new year's version of the plaintiffs’ database including identifying in each relevant year the extent to which the database comprised the previous year's listings was used to produce a new record for the coming year and the extent to which it included updated information (such as a new category headings or pricing plans).
17.All documents specifying, identifying or relating to the checking of individual or grouped listings by computer to identify any errors in content or appearance and the correction of any errors.
18.All documents specifying, identifying or relating to how and by whom each business listing is loaded onto the plaintiff’s website.
19.All documents specifying, identifying or relating to the relationship between the online business directory and the printed directory database.
20.All documents specifying, identifying or relating to log files identifying hits or visits to the plaintiffs’ website or database during the relevant period of alleged infringement namely January 2004 to April 2007.
21.All documents specifying, identifying or relating to website statistics and any subsequent analysis identifying the traffic and number of the hits to the plaintiffs’ website during the period in which the defendants are alleged to have copied the database as specified in the preceding paragraph, such website statistics and any subsequent analysis, including but not limited to common segmentations such as countries and time of day.
22.All documents specifying, identifying or relating to the bogus listing in the plaintiffs directory of Ray Parker, including but not limited to when this listing was added to the plaintiffs’ online directory and when it was removed.
23.All documents specifying, identifying or relating to the plaintiffs and/or their predecessor in business licensing to third parties as to the use the contents of the plaintiffs’ databases and in particular any documents that identify such licensing arrangements and the revenues earned or fees charged for such activities.
Paragraph 18
In relation to paragraph 18 of the second amended statement of claim dated 20
March 2009 the following documents relate to the allegation of copying the whole or a substantial part of the Second plaintiff’s Copyright Works (the "Copyright Works").
24. All documents specifying, identifying or relating to those parts of the
Copyright Works alleged to have been copied.
1.Provision of original and separate versions of the business and geographic listings identified in paragraph 15.1 (a) and (b) of the plaintiffs’ amended statement of claim.
2.A full, complete and unmodified version, example or copy of the second plaintiff’s database in the original database format such as SQL, Oracle, or MySQL.
Paragraph 15.1
In relation to paragraph 15.1 of the plaintiffs’ amended statement of claim of 20
March 2009 and the allegation that the Second Plaintiff’s Copyright Works comprise, “inter alia” three categories of works and the three works or categories of works particularised in paragraphs (a) – (c) inclusive of paragraph 15.1, the first and second defendants require full particulars in relation to each of the works, namely:
1.The type of work in which copyright is claimed and the legal characterisation of the respective work within the meaning of the Copyright Act 1994.
2. Identification by name or discovery document number each of the Copyright
Works or any work/s forming a part thereof.
3. Whether copyright is claimed in the:
a. Copyright Works as a whole;
b. individual entries within any given Copyright Works forming a part thereof;
c. any particular part of the Copyright Works or any work/s forming a part thereof; and or
d. the Copyright Works on their own or in conjunction with any other work/s (and if so, specifying such other work/s and the nature of the connection).
4. In relation to the Copyright Works:
a. identify each and every writing, notation, listing or entry which are included within the Copyright Works;
b. State, in relation to each of the writings, notation, listing or entries, whether it is alleged that copyright exists in the whole of the writing, notation or entry;
c. If it is alleged that copyright exists in only aspects of the writings, notation, listing or entries identify each and every aspect of the authorial contribution in relation to which it is alleged that the plaintiffs’ have copyright protection.
5.In relation to each Copyright Works work/s or any work/s forming a part thereof the specific provision of the Copyright Act 1994 pursuant to which rights are claimed.
6.In paragraphs (a) and (b) of paragraph 15.1 full particulars as to these hierarchies.
7.In paragraph (c) of paragraph 15.1 and reference to a database detailing the business names and contact details, which are said to include "addresses, telephone numbers and/or e-mail addresses” particulars of any specific further matter, if any, included within the above classes or categories of information/data.
8.The specific date or dates of each of the Copyright Works in which copyright is claimed.
9.The specific date or dates of any antecedent works upon which copyright in the Copyright Works is based.
10.The name/s of each of the alleged author/s of the Copyright Works and identification of entitlement of each as qualified persons.
11.In relation to each alleged author particulars of the nature, extent and date of each alleged authorial contribution to each of the Copyright Works.
12.In relation to each alleged author and each alleged work an identification of the basis upon which the plaintiffs claim an entitlement to ownership of the alleged copyright in the Copyright Works.
13.In the event that the alleged authors are/were employees of the plaintiffs’ or were otherwise contractors, full particulars of the employment or other contractual relationship between the parties.
Paragraph 18
By reference to paragraph 18 of the second amended statement of claim dated 20
March 2009, and the allegation of copying of the whole or a substantial part of the
Second Plaintiff’s Copyright Works (the "Copyright Works").
14.By reference to each and every specific part or listing in the Copyright Works particularise the specific part or listings alleged to have been copied by the first and second defendants.
15.By reference to the immediately preceding paragraph, specify whether or not it is the entire part or listing that has been copied and if only a part, exactly which part.
16.By reference to the two immediately preceding paragraphs specify the specific part or listing in the first and second defendants’ directory alleged to have been copied.
17.By reference to the immediately preceding paragraph, specify whether or not it is the entire part or listing that has been copied and if only a part, exactly which part.
SCHEDULE 4
Paragraph 15.1
In relation to paragraph 15.1of the plaintiffs’ amended statement of claim and the allegation that the Second Plaintiff’s Copyright Works comprise, “inter alia” three categories of works and the three works or categories of works particularised in paragraphs (a) – (c) inclusive of paragraph 15.1 the first and second defendants require the plaintiffs to answer specified interrogatories in relation to matters in question in this proceeding.
The specified interrogatories are as follows:
1.By reference to the name of or discovery document specify each and every part of the Copyright Works or any work/s forming a part thereof?
2.What (please describe in unambiguous, comprehensive and explicit technical terms) is the full, complete and unmodified form in which the plaintiffs’ database resides in day to day use?
3.What (please describe in unambiguous, comprehensive and explicit technical terms) is the full, complete and unmodified form in which the plaintiffs’ database resides and is accessible to members of the public?
4.What (please describe in unambiguous, comprehensive and explicit technical terms) is the full, complete and unmodified form in which the plaintiffs’ business and geographic listings identified in paragraph 15.1 (a) and (b) of the plaintiffs’ amended statement of claim reside in day to day use?
5.What (please describe in unambiguous, comprehensive and explicit technical terms) is the full, complete and unmodified form in which the plaintiffs’ business and geographic listings identified in paragraph 15.1 (a) and (b) of the plaintiffs’ amended statement of claim resides and is accessible to members of the public?
6. Do the plaintiffs claim copyright in the:
a. Copyright Works as a whole;
b. individual entries within any given Copyright Works forming a part thereof;
c. any particular part of the Copyright Works or any work/s forming a part thereof; and or
d. the Copyright Works on their own or in conjunction with any other work/s?
7.If the answer to any part of question 6 above is yes, specify in relation to each part of the question such other work/s and the nature and extent of the connection?
8.In relation to each part of question 6 above specify in relation to each part the extent to which authors cooperated or worked together to create the Copyright Works or any part thereof identifying in each case the nature and extent of the cooperation or joint effort, if any?
9. In relation to the Copyright Works:
a. in relation to each and every part, what is the particular form of expression of each writing, notation, listing or entry;
b. if it is alleged that copyright exists in any particular aspects of the writings, notation, listing or entries identify each and every aspect of the authorial contribution in relation to which it is alleged that the plaintiffs’ have copyright protection, state the date on which it occurred and identify the author responsible for the said contribution?
10.In paragraphs (a) and (b) of paragraph 15.1 of the amended statement claimed references made to hierarchies. What are these hierarchies, who created them and on what specific dates did this occur?
11.In paragraph (c) of paragraph 15.1 of the amended statement of claim reference is made to a database detailing the business names and contact details, which are said to include "addresses, telephone numbers and/or e-
mail addresses”. It is any specific further matter included within the above classes or categories of information/data?
12.If the answer in the immediately preceding question is yes please specify what this further matter is, when it was created, who created it and on what specific dates this occurred?
13. On what specific date or dates was each of the Copyright Works created?
14.If the Copyright Works referred to in the immediately preceding paragraph were created on a number of dates specify each of the dates and state what contributions were made on these dates and by whom?
15.Are the Copyright Works original in their entirety or are they based on material part on earlier works?
16.If the answer to the immediately preceding paragraph is yes, please identify the antecedent works and specify in relation to each and every part of the Copyright Works the extent to which they are based on the said antecedent works?
17. Who (specify each person's full name) are each of the alleged author/s of the
Copyright Works?
18.At the relevant date that the said authors contributed to the Copyright Works what was each of their nationality or residence status?
19.At the relevant date that the said authors contributed to the Copyright Works were they employees or independent contractors to the plaintiffs or their predecessors?
20.If the authors were employees in relation to each at the relevant time what was their employment status?
21.If the authors were independent contractors or had some other form of arrangement with the plaintiffs or their predecessors what was this arrangement?
22.In relation to each alleged author what was the exact nature, extent and date of each alleged authorial contribution to each of the Copyright Works?
Paragraph 18
By reference to paragraph 18 of the second amended statement of claim dated 20
March 2009, and the allegation of copying of the whole or a substantial part of the
Second Plaintiff’s Copyright Works (the "Copyright Works").
23.By reference to each and every specific part or listing in the Copyright Works what specific part or listings are alleged to have been copied by the first and second defendants?
24.By reference to the immediately preceding paragraph, is it the entire parts or listings that have been copied and if only a part, exactly which part?
25.By reference to the two immediately preceding paragraphs what is the specific part or listing in the first and second defendants’ directory alleged to have been copied.
26.By reference to the immediately preceding paragraph, if it is not the entire part or listing that has been copied but only a part, exactly which part?
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