On 22 April 2009, the High Court of Australia delivered its judgment in the case of IceTv Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14 (hereafter “IceTV“. The appeal by IceTV Pty Limited (“IceTV“) was upheld unanimously by a court comprising French CJ, Gummow, Hayne, Heydon, Crennan and Kiefel JJ. The court found that IceTV’s use of program title and time information originating from Nine Network Australia Pty Limited (“Nine“) did not infringe Nine’s copyright in its published programming schedules.

Significance of the case

The IceTV case has been a running saga in Australian copyright law for several years. The case is significant for several reasons. First, it is an important indication of the present High Court’s views on several open issues of copyright law which have been in flux in recent years. The bench which sat on IceTV encompass all but one (Bell J) of the present court, which has changed significantly in the last couple of years. Specifically, the case was a decisive statement of the court’s view on copyright’s protection of labour and time, versus the need for a “creative spark”, in compilations, an issue with increasing ramifications in the digital age. While the case considered this issue in the context of copyright infringement, and specifically the question of what constitutes a “substantial part” of a work, their Honours provided a strong indication of their views of the parallel issue in the context of subsistence of copyright.

Background

IceTV’s main product is a digital program schedule, which subscribers could use to program their digital video recorders to record specific shows and skip over ads. To create the schedule, IceTV employees started by noting the TV schedule over a 3 week period by actually watching the programs. Every week, they would use the previous week’s actual schedule as a base to predict the next week’s schedule. In the final step, they would check the schedule against the published TV schedule (the “Aggregated Guides”), as published in magazines and newspapers. It would then modify some titles and times, e.g. for movies and one-off programming changes, to match the published guides. These Aggregated Guides are made by “Aggregators”, who combine schedules sent to them by the TV networks. The schedules as sent out by Nine, for example, contained the TV schedule with title and time information, as well as synopses of the programs and other details. IceTV conceded from the start that Nine owned copyright in the schedule, but denied that it had taken a “substantial part” of the work so as to infringe the copyright. In the result, the High Court held for IceTV, agreeing that the title and time information taken was not a substantial part of the work and that no copyright was infringed.

Approaching copyright

The High Court criticised the approach taken by the full Federal Court, which focussed on the “interest” protected by copyright. The High Court warned that such an approach made it tempting to slip into a high level of abstraction. The higher the level of abstraction taken, the more likely that attention will be inappropriately focussed on the idea, or the facts, that underlie the work, rather than the expression of the work itself.

Under the full Federal Court’s approach, for example, the “interest” protected by a copyright over a compilation like Nine’s schedule might be seen as Nine’s commercial interest in its proprietary programming decisions. Thus, the “appropriation” by IceTV of Nine’s “skill and labour” in making these programming decisions made out the infringement. While arranging the program information required little skill and modest labour, according to this analysis, the much greater skill and labour in making the programming decisions was what copyright protected. In taking the programming order, names and times, IceTV took advantage of a “substantial” part of Nine’s overall “work”, and thus infringed Nine’s copyright.

The High Court emphasised that analysis must be firmly rooted in the first principles of copyright law. That is, copyright protects expressions, not ideas; expressions, not facts. In the context of compilations of facts, especially, it was not helpful to consider the essential “interest” of the copyright owner in the work; nor was it helpful to repeat the mantra “what is worth copying is worth protecting”. Nine’s copyright protected only the precise expression of the programming information in the form of the program schedule; the programming decisions, being statements of future intention, were underlying facts. The only “skills and labour” which mattered was that which went into creating that expression, as distinct from the underlying facts. Thus, the signficaint “skills and labour” that might have gone into making the programming decisions were not relevant to the schedule. While significant skills and labour might have gone into writing the synopses, for example, the arrangement of program titles (generally not made up by Nine) into chronological order (an obvious order) did not require much skills and labour.

Implications for finding infringement

There are several implications for finding infringement of copyright flowing from this approach.

First, it is important to identify the elements of subsistence of copyright, even if subsistence is conceded. In particular, in the context of a compilation as here, it is skills and labour of the author which elevate a prosaic arrangement of facts into a work subjec to copyright. In the present litigation, the parties, including the trial and appeals judges, made no distinction between the joint authors, who must be natural persons, with the owner, who is Nine, their employer. This, according to the High Court, led to the confusion between the skills and labour that went into the work, as opposed to the (irrelevant) skills and labour expended by other employees of Nine in making programming decisions.

Secondly, originality is important in asessing whether an alleged infringer has taken a “substantial part”, so as to make out infringement. Copyright protects an “original” expression. Where a work contains both original (or creative) and non-original (information) elements, copyright vests in the whole work, but it is the taking of original parts that makes out infringement. In application, what is observed is a continuous spectrum. Had IceTV taken the synopses, for example, which were wholly creative elements written by the authors of the schedule, a modest taking would have made out the taking of a “substantial part” and thus infringement. However, when it comes to less original and more factual information, a great degree of taking is required to make out the taking of a “substantial part”.

Into considerations of originality ties considerations of skills and labour. In compiling facts, it is the degree of skills and labour applied which lends what was factual information the requisite originality for copyright. The High Court emphasised that what mattered was the skills and labour that was directed towards coming up with the particular form of expression of the work. In the case of the programming time and title information, according to the High Court, the authors of the schedule generally took the title of the program as given, and the time as determined by those making programming decisions, and then arranged them chronologically, an obvious order. As such, not a great deal of skills and effort went into the expression of the compilation in respect of program time and title. While a great deal of skills and labour might have gone into making the underlying programming decisions, those skills and that labour was not directed towards coming up with the particular form of expression of the work, and thus, not relevant when assessing the originality of what was taken. Thus, IceTV, in taking a modest amount of that information, did not take a substantial part of the copyright work. It did not infringe Nine’s copyright.

Implications for subsistence of copyright

This case dealt with finding infringement of copyright, not subsistence. That copyright subsisted over the work in question was conceded from the start. Nevertheless, subsistence of copyright was on everyone’s mind, and in particular, the decision of the full Federal Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited (2002) 119 FCR 491 (“Desktop Marketing“).

In that case, the full Federal Court (composed identically with the full Federal Court bench that heard IceTV) decided that copyright subsisted in the White Pages directory because of the skills and effort that went into the work, a time- and capital-consuming endeavour, even though the arrangement of names and addresses into alphabetical order was an obvious and prosaic form. The decision in Desktop Marketing stands in contrast to the way this issue, often called “sweat of the brow”, is dealt with by the US Supreme Court in Feist v Rural Publishing, where no copyright was found to subsist in a telephone directory, a mere arrangement of facts.

Though subsistence was not a direct issue in IceTV, most commentators hoped the High Court would clarify the issue. Partly motivated by this, the Australian Digital Alliance and the Telstra Corporation both appeared as amicus curiae. Accordingly, the High Court did comment on the issue of subsistence.

First, the Court emphasised that subsistence required “originality”. This means that the work must have originated with the author, and not merely copied. “Originality” meant that the work must have taken some “independent intellectual effort” by the author or joint authors.

For compilations of facts, it is emphasised that facts are not copyrightable, but compilations are. Two kinds of effort go into making a compilation (and most other types of works) – “industrial collection” or “sweat of the brow” on the one hand, versus “creativity”. However, it is a false dichotomy to treat the two as opposites, one copyrightable and the other not. Nevertheless, the court opined that what is commonly called a “creative spark”, which can be manifest as the exercise of skills and judgment, is a necessary element of the originality that lends a work its copyrightable nature.

Thus, while subsistence of copyright was not an issue here, Gummow, Hayne and Heydon JJ concluded without deciding that “[i]t may be that the reasoning in Desktop Marketing is out of line with the understanding of copyright law over many years”.

Conclusion

IceTV represents a clear indication from the High Court of its preferred approach to copyright, especially in the context of compilations. The emphasis on first principles, and the caution against an inappropriately high level of abstraction, returns clarify to analysis which, in recent years, has become mired by confusion. Copyright is an artificial right, created by statute for policy reasons. It is a creature of the economic context in which it is found: it seeks to encourage creativity and innovation by giving authors a commercially valuable right, limited in time, to exploit the products of their intellectual effort. This uneasy balance means that it is tempting, and easy, to slip into confusion over what, precisely, is being protected. The emphasis on precise legal distinctions is one way to maintain the balance.

Though merely obiter, the discussion on originality in the subsistence of copyright, and particular on the reasoning in Desktop Marketing provides important guidance for copyright law in Australia. Without deciding, the High Court has signalled a willingness to settle the issue of “sweat of the brow” in a manner that is more in line with the generally accepted view in accordance with Feist

At the same time, subtle differences can be detected between the two joint judgments (one by Gummow, Hayne and Heydon JJ, and the other by French CJ, Crennan and Kiefel JJ). Gummow, Hayne and Heydon JJ placed greater emphasis on first principles and the need to clearly delineated ideas from expressions, expressions from facts, the original from the unoriginal, and labour from skills. By contrast, French CJ, Crennan and Kiefel JJ saw a continuum, with the original more worthy of protection than the merely laborious, and with a greater taking required to make out “substantial part” of the unoriginal compared to the creative. It may be that, should the issue in Desktop Marketing return to the High Court in the near future, these subtle differences will play a more dynamic part in the Court’s reasoning and judgment.