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Copyright in compilations and databases – “more than just numbers”

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Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 (8 February 2010)

On 8 February 2010, Justice Gordon of the Federal Court of Australia further entrenched the difficult path that potential copyright owners must take in order to gain protection for compilations and databases in Australia.  In this case, Telstra Corporation Limited (‘Telstra’) commenced copyright infringement proceedings against Phone Directories Company Pty Ltd in relation to the Telstra White and Yellow Pages telephone directories (the ‘directories’).

Her Honour held that copyright did not subsist in the directories as Telstra was unable to prove clear authorship of its directories, and the directories failed to meet the required test for originality in order to gain copyright protection.  Even though this decision is likely to be appealed, it carries a number of implications for parties wishing to protect commercially valuable databases and compilations of information.  In particular the Court found that for a work to be subject to copyright protection you must:

“Start with the work.  Find its authors.  They must have done something, howsoever defined, that can be considered original”.

This decision highlights two important areas of copyright protection:

Authorship
The first aspect of this decision highlights the need for employers and compilers of data and information to ensure clear job descriptions, water tight employment contracts and assignments of copyright (in the case of contractors).  In order to determine copyright in a compilation or database, it is essential that the party seeking copyright protection is able to identify authors and attribute them to the work in question.  Her Honour did not expect names and addresses of authors.  She did, however, require Telstra to attribute an author to each element in the process of compiling the directories.  Unfortunately for Telstra, given there were so many parties involved in compiling the directories and the fact that they contributed over a period of many years, Telstra was unable to determine who the actual authors were.

Even if Telstra could identify the authors, originality of the copyright work also needs to be addressed.

Originality
In order for a compilation or database to acquire copyright protection, it must pass the tests for originality.  For a literary work such as a directory, the work must result from ‘independent intellectual effort’ and/or have ‘sufficient effort of a literary nature’ made by those who are the authors of the work.  It is important to note that this effort must have occurred prior to the work taking its ‘material form’.  Telstra was unable to show that the directories were in a ‘material form’ as there was no other way of displaying the information other than in the table form as appears in the directories.  Furthermore, the systems that Telstra used in preparing the directories have the opposite effect on creativity by limiting the fields and variables available to its authors.

Implications
Moving forward, our clients will need to maintain strong employment contracts and reporting processes in order to track the work contributed to their compilations or databases by each of its contributors.  With regards to contractors there will need to be clear assignments of copyright for the contractor’s contributions.  This is only to satisfy the authorship aspect of copyright as clients still have the more onerous task of satisfying the originality elements required to obtain copyright protection.

In order for the compilation or database to meet the requirements of originality, clients will need to show that there is originality in the final form of the database, not merely a list or table compiled through effort.  It must be more than just ‘sweat of the brow’; it must combine that with a ‘creative spark’ and some ‘skill and judgement’, a level of originality.  In essence it is a combination of the international approaches of the EU, United States and Canada which when combined sets a very high bar in order to prove originality.  It means that clients with compilations and valuable databases will now need to place greater emphasis on the creativity they use to display the information.

This decision does not limit other forms of intellectual property protection that may be available for compilations and databases. For assistance in developing strong employment contracts, drafting copyright assignments and assessing the steps you need to take to protect your valuable compilations and databases please contact one of our Intellectual Property lawyers.

Author:  James Hurlston