The pre-1911 cases
28 In Matthewson v Stockdale (1806) 12 Ves 270 (33 ER 103) an interlocutory injunction protecting the plaintiff's copyright in a directory of "all the names and appointments on the Indian Establishment" (at 276 (ER 105)) survived a motion for dissolution. The case is distinguishable on its facts in that the plaintiff had composed the entries, as to which there was scope for variance, and prepared an alphabetical index. Nonetheless, Lord Erskine LC only reluctantly accepted that copyright subsisted. His Lordship said (at 273 (ER 104)):
"Thinking it dangerous to carry this doctrine of copyright too far, the turn of my mind would lead me to a different decision of this case from that, which, following what I find the established law, I mean to give. Several cases have occurred, in which it was at least as difficult to maintain copyright; and yet it has been maintained."
The Lord Chancellor referred to cases of a map of an island and a chart of the English Channel, and said that there was no room for originality on such subjects, yet acknowledged that considerable expense and labour had in fact been protected by the law against "servile imitation". The Lord Chancellor was referring to considerable expense and labour in the antecedent identification of the facts to be described. To this extent, Matthewson v Stockdale lends some support to the subsistence of copyright in the telephone directories.
29 Longman v Winchester (1809) 16 Ves Jun 269 (33 ER 987) was also an unsuccessful motion to dissolve an interlocutory injunction. The work was described as "containing lists of the Houses of Peers and Commons, &c". There was verbatim copying by the defendant. The Lord Chancellor stated (at 270-271 (ER 987)):
"I cannot go the length of stating the proposition, that copyright cannot subsist in a work of this description: nor would I disturb the Injunction upon that ground without putting them to a trial. Assuming, that there may be a copyright, there is not much difficulty in the rest of the case. Take the instance of a map, describing a particular county; and a map of the same county, afterwards published by another person: if the description is accurate in both, they must be pretty much the same: but it is clear, the latter publisher cannot on that account be justified in sparing himself the labour and expense of actual survey, and copying the map, previously published by another."
His Lordship concluded (at 272 (ER 988)):
"... I have said nothing, that has a tendency to prevent any person from giving to the public a work of this kind; if it is the fair fruit of original labour: the subject being open to all the world: but if it is a mere copy of an original work, this Court will interpose against that invasion of copyright."
Longman v Winchester supports the availability of copyright to protect industrious collection of the information to be recorded, even if the form of expression is inevitable.
30 The Literary Copyright Act 1842 (UK) (5 & 6 Vic c45) ("the 1842 UK Act") contained provisions relating to copyright in "books" (as defined), and defined "copyright" for the purposes of the construction of that Act, to be:
"The sole and exclusive Liberty of printing or otherwise multiplying Copies of any Subject to which the said Word is herein applied."
The 1842 UK Act did not state that copyright did not exist independently of that Act or expressly identify the circumstances in which it did exist. There was no reference to originality, but there were several references to a book's "author". For example, s 3 provided that the copyright in every book published after the passing of the 1842 UK Act and in the lifetime of its author should subsist for the lifetime of the author plus seven years and should be the property of the author and his assigns. Until Walter v Lane [1900] AC 539 (discussed below), the pre-1911 English cases on the subsistence of copyright in compilations made scant, if any, reference to the terms of the 1842 UK Act.
31 The fact that some facts would or might be described by independent authors in the same or similar words was referred to in Spiers v Brown (1858) 6 WR 352. The plaintiff was the author of a two-volume dictionary, comprising English-French and French-English parts, and an abridgment of the dictionary for school children. He alleged that the defendant had infringed the copyright in the French-English part and in the abridgment.
32 Vice Chancellor Wood dismissed the bill for an injunction. He referred (at 352) to the difficulty which arose in cases such as dictionaries, directories, calendars and Court Guides, which:
"not only related to a subject common to all mankind, but ... the mode of expression and language [of which] was necessarily so common that two persons must, to a very great extent, express themselves in identical terms ..."
The Vice Chancellor saw the issue for decision as whether the defendant had not made more than legitimate use of the plaintiff's work, and decided he had not.
33 The case is quite unlike the present one in which Desktop has taken the whole of Telstra's directory, then rearranged and added to the data recorded in it.
34 In Hotten v Arthur (1863) 1 H & M 603 (71 ER 264) the plaintiff, a bookseller, collected very old and curious books and issued catalogues from time to time in respect of his collection. The catalogues were not mere lists of the books and their prices, but contained, in a great majority of instances, a short account of a book's history or contents or an anecdote concerning it. In granting an injunction, the Vice Chancellor, Sir W Page Wood, remarked that the catalogue was not "a mere dry list of names, like a postal directory, Court guide, or anything of that sort, which must be substantially the same by whatever number of persons issued and however independently compiled" (at 607-608 (ER 265-266)). That is to say, the Vice Chancellor distinguished the case from a case such as the present one, because there was some scope for variance in mode of expression. Hotten v Arthur therefore says nothing to the issue calling for our decision.
35 The first of "the three Morris cases" was Kelly v Morris (1866) LR 1 Eq 697. Kelly owned and published the "Post-office London Directory"; the defendant, the "Imperial Directory of London 1866". The plaintiff's work was updated and issued annually. It had come to contain twelve divisions or directories, and, excluding advertisements, comprised 2483 pages "indexed externally in a manner invented for the Plaintiff, and first used by him in his directory" (at 697). Sir W Page Wood VC stated (at 701-702):
"In the case of a dictionary, map, guide-book, or directory, when there are certain common objects of information which must, if described correctly, be described in the same words, a subsequent compiler is bound to set about doing for himself that which the first compiler has done. In case of a road-book, he must count the milestones for himself. In the case of a map of a newly-discovered island (the illustration put by Mr Daniel) he must go through the whole process of triangulation just as if he had never seen any former map, and, generally, he is not entitled to take one word of the information previously published without independently working out the matter for himself, so as to arrive at the same result from the same common sources of information, and the only use that he can legitimately make of a previous publication is to verify his own calculations and results when obtained. So in the present case the Defendant could not take a single line of the Plaintiff's Directory for the purpose of saving himself labour and trouble in getting his information." (my emphasis)
This passage clearly supports the subsistence of copyright in the present telephone directories: the Vice Chancellor contemplated protection of the compiler's labour and expense of getting the factual information to be compiled, regardless of the absence of scope for variance in mode of expression. The case is one of many nineteenth century cases in which copyright protection is supported by reference to general statements that one may not appropriate the fruit of another's labour or reap where one has not sown. It is, however, noteworthy that shortly after the passage set out above, the Vice Chancellor observed (at 702) that in fact the plaintiff had "adopted a very ingenious form of arrangement, which [was] to be found in no other directory that [had] been produced, except the Defendant's". Accordingly, although the passage set out above applies to the telephone directories with which we are concerned and supports the subsistence of copyright in them, Kelly v Morris is factually distinguishable from the present case.
36 Scott v Stanford (1867) LR 3 Eq 718 concerned statistical returns of the Coal Market of the City of London ("the Corporation") published by the plaintiff who was the Corporation's clerk and registrar. The plaintiff extracted the statistics from the books of the Corporation with its authority. Indeed, the Corporation allowed him the exclusive right to compile, print and publish the returns showing the quantity of imports into London from various collieries, as part of the remuneration attached to his appointment. The defendant published a work which included a chapter of coal statistics and acknowledged the plaintiff's work as their source.
37 The Vice Chancellor, Sir W Page Wood, noted that the subsistence of the plaintiff's copyright had been "only faintly impugned" (at 723). He observed (at 723):
"he has, at the expense of much time and labour, compiled and arranged, in very clear and lucid order, the vast mass of information accruing every day as to the importation of coal into the City ... It appears to me quite immaterial whether he has been assisted in the compilation by his own clerks, or by those of the Corporation. A great deal of time and labour must have been spent in this compilation, more, indeed, than in the case of a directory or guide; and there can be no doubt that he is entitled to be protected in the fruits of his labour."
The case is readily distinguishable from the present one. The form of the compilation originated with the plaintiff and was not inevitable. Indeed, the only issue as to subsistence appears to have been whether the plaintiff or the Corporation was the "author" of the work. Nevertheless, what the Vice Chancellor seems to have treated as calling for protection was the plaintiff's labour in selecting, extracting and compiling the information.
38 The second of the three Morris cases was Morris v Ashbee (1868) LR 7 Eq 34. Morris, who had been the unsuccessful defendant publisher of "The Imperial Directory of London 1866" in Kelly v Morris, was now the compiler of "The Business Directory of London". He sought to restrain publication by Ashbee of a rival directory "The Merchants' and Manufacturers' Pocket Directory of London 1868". Morris's work comprised the names and occupations of the merchants, traders and other persons carrying on business or residing in London and environs. The names were contained in a classified list of the various trades and professions arranged in alphabetical order, and also in another list in alphabetical order by names (the similarity to Yellow Pages and White Pages Directories respectively is noteworthy). As well, the directory contained advertisements and "extra lines" of business descriptions for those willing to pay for them. The plaintiff's copyright was not in terms denied or its existence distinctly put in issue.
39 The Vice Chancellor, Sir George Giffard, finding for the plaintiff, stated (at 40-41):
"The plaintiff incurred the labour and expense first of getting the necessary information for the arrangement and compilation of the names as they stood in his directory, and then of making the actual compilation and arrangement, and, though each individual who paid might no doubt have his own name printed in capital letters or with the same superadded lines wherever he chose, neither one nor all of them could authorize the cutting of a series of slips, or the taking of the names as arranged, from the Plaintiff's directory, and the use of them in the printing of a rival work. ... the substance of the judgment [in Kelly v Morris] is, that in a case such as this no one has a right to take the results of the labour and expense incurred by another for the purposes of a rival publication, and thereby save himself the expense and labour of working out and arriving at these results by some independent road. If this was not so, there would be practically no copyright in such a work as a directory. ... The simple upshot of the whole case is, that the Plaintiff's directory was the source from which they compiled very material parts of theirs, and they had no right so to resort to that source. They had no right to make the results arrived at by the Plaintiff the foundation of their work or any material part of it, and this they have done." (my emphasis)
Although the Vice Chancellor referred in the first sentence to the labour of actually composing the compilation as well as to the antecedent labour of getting the information to be compiled, there is no suggestion that the latter alone, if sufficient, would not have attracted copyright protection. Indeed, the latter part of the passage discusses only the labour and expense of "working out and arriving at [the] results". The passage supports the subsistence of copyright in Telstra's directories.
40 In Cox v Land and Water Journal Company (1869) LR 9 Eq 324, the plaintiff published "The List of Hounds" in his "Field" newspaper and sought an injunction restraining the defendants from publishing "The Hunting Field of 1870" in their "Land and Water Journal". The plaintiff's list comprised particulars of the various packs of hounds in the United Kingdom, including the name of each hunt, the nearest town convenient for strangers, the number of hounds in the pack, the hunting days, the names of the masters, huntsmen and whips, and the address of the kennel.
41 Vice Chancellor Malins observed that the hunting days and the names of the masters of hunts and of the huntsmen were well-known, but that the whips were not, "being numerous and obscure persons" (at 332). The Vice Chancellor assumed, for the purposes of an application for an interlocutory injunction, that the law regarding compilations of factual information had been correctly stated in Kelly v Morris and Morris v Ashbee. He said (at 332):
"It is clear that in this case the getting the names of masters of hunts, the numbers of hounds, the huntsmen, and whips, and so forth, is information open to all those who seek to obtain it; but it is information they must get at their own expense, as the result of their own labour, and they are not to be entitled to the results of the labours undergone by others. And this is the principle of Kelly v Morris."
Again, it was the getting of the factual information to which reference was made as attracting copyright protection, although no doubt there was, as a matter of fact, some scope for variance in the form of expression of the compilation. The getting of the information is comparable to Telstra's collection of details of telephone subscribers. Cox v Land and Water Journal Company supports the subsistence of copyright in the present directories.
42 The third Morris case was Morris v Wright (1870) LR 5 Ch App 279. Morris again asserted copyright in his publication "The Business Directory of London". James VC granted, and subsequently dissolved, an interlocutory injunction. Morris appealed against the dissolution. Giffard LJ affirmed the Vice Chancellor's decision on the basis that on the evidence, the defendants had used the plaintiff's work only to direct them to other sources of information (cf Pike v Nicholas (1869) LR 5 Ch App 251), whereas in Kelly v Morris and Morris v Ashbee there had been direct copying. Giffard LJ said that the substance of the judgment in Kelly v Morris was that in a case such as that before him:
"no one has a right to take the results of the labour and expense incurred by another for the purposes of a rival publication, and thereby save himself the expense and labour of working out and arriving at those results by some independent road." (at 286)
Again the Court relied on notions of unfair competition, but, again, no doubt there was in fact scope for a spark of creativity in mode of expression, whereas there is not in the present case. Nonetheless, the passage set out above supports the subsistence of copyright in telephone directories.
43 In Hogg v Scott (1874) LR 18 Eq 444, the plaintiff was the author and proprietor of a book called the "Fruit Manual" from which the defendant had copied, frequently verbatim, and at other times with slight or merely colourable alterations. Vice Chancellor Hall granted an injunction on the authority of Kelly v Morris and Morris v Wright, stating (at 458):
"The true principle in all these cases is, that the Defendant is not at liberty to use or avail himself of the labour which the Plaintiff has been at for the purpose of producing his work - that is, in fact, merely to take away the result of another man's labour, or, in other words, his property."
The expression "for the purpose of producing his work" is akin to the expression "for the purposes of a rival publication" of Morris v Wright (above): neither suggests that one kind of labour will serve to give rise to copyright and that another will not. The statement is broad enough to encompass Telstra's labour in producing telephone directories.
44 Dicks v Yates (1881) 18 Ch D 76 was not a compilation case but involved a somewhat extended consideration of the concept of originality before it was introduced as an express condition of copyright protection by the Copyright Act 1911 (UK) ("the 1911 UK Act"). The plaintiff published in serial form in a weekly periodical a tale intituled "Splendid Misery; or, East End and West End" by one, C H Hazlewood. The defendant subsequently commenced publishing in a weekly newspaper issued by him a tale by Mrs Maxwell, commonly known as Miss Braddon, intituled "Splendid Misery". The evidence showed that a novel called "Splendid Misery" had been published in 1801, that it had enjoyed a large circulation and that second-hand copies of it could still be encountered.
45 Jessel MR thought there could not be copyright in "the common English words" used by the defendant, "Splendid Misery", which, it will be recalled, formed only part of the title to the plaintiff's work, and which, his Lordship remarked, had been used as the actual title of a novel as far back as in 1801. Later (at 89) the Master of the Rolls stated:
"Now I do not say that there could not be copyright in a title, as, for instance, in a whole page of title or something of that kind requiring invention. However, it is not necessary to decide that. But, assuming that there can be copyright in a title, what does copyright mean? It means the right to multiply copies of an original work. If you complain that a part of your work has been pirated, you must shew that that part is original, and if it is not original, you have no copyright. How can the title 'Splendid Misery' be said to be original, when the very same words for the very same purpose were used nearly eighty years ago? The suggested answer is 'People have forgotten that old novel'. But that is not the point. Did the title become public property? If you go by the analogy of the patent law, it is very strong against the Plaintiff, because complete prior publication of an invention in England destroys the claim for novelty on the part of the patentee. I say complete publication, because there have been cases where it was held that a general description was not sufficiently complete and specific to prevent a title in the second inventor. But there is another circumstance. In the case of patentees, where there is a question of originality, you must prove that the alleged inventor was the inventor. In this case, Mr Hazlewood being dead, and it having been shewn that the title was known many years ago, Mr Hazlewood could not be called, and no one else has been called, to shew that Mr Hazlewood invented the title, or that he did not copy it, as he might have done, from the old novel. Therefore in this case, even assuming you could establish a right to the title as original, if it was reinvented you have no evidence of the re-invention, but you have evidence of the prior publication. It seems to me, therefore, on that ground also that the action must be dismissed." (my emphasis)
46 Lush LJ stated (at 92-93):
"I take it to be established law that to be the subject of copyright the matter must be original, it must be a composition of the author, something which has grown up in his mind, the product of something which if it were applied to patent rights would be called invention. Nothing short of that would entitle a man to copyright. Now, can it be said there is anything original in these two words? I suppose there is hardly a person who has grown to maturity in this country who has not read them hundreds of times and heard them spoken hundreds of times. To my mind 'Splendid Misery' is a hackneyed phrase. Moreover, it is in evidence that about eighty years ago a novel was published with that very title, and that, though it is out of print, second hand copies are still to be met with. If, therefore, we were to go no further back than that, the title has been known to the public for at least eighty years, and I cannot help thinking that the phrase originated many years before that. It was one likely to be coined in a very early age, and is one which, as I said before, most persons must have read and heard hundreds of times. That of itself is enough to determine the case. There is nothing original in the title. There is nothing in it that indicates any intellectual effort. There is nothing more than the taking up a phrase which had long been in public use. It had become public property, and it is impossible that a person can appropriate it and claim copyright in it." (my emphasis)
47 I have referred to Dicks v Yates at some length because, at first instance in Robinson v Sands & McDougall Pty Ltd (1916) 22 CLR 124 ("Robinson") (discussed at [89]-[90] below), Barton J treated Jessel MR and Lush LJ as having attached to the notion of "original" the meaning "not copied, not imitated" (at 132-133). As will be seen below, a "not copied/originating from the putative author" test of originality has now become firmly established. (It is necessary to be cautious in referring to the law of patents not to suggest that the ideas expressed in a literary work must be novel or that the form of expression of them must show inventiveness, and neither Jessel MR nor Lush LJ did so.)
48 In Ager v Peninsular & Oriental Steam Navigation Co (1884) 26 Ch D 637 ("Ager"), the defendant admitted that the plaintiff had copyright in "The Standard Telegram Code", a book of about 100,000 words, arranged alphabetically, which the plaintiff had selected from eight languages, specially compiled with a view to correct telegraphic transmissions. Kay J stated (at 642):
"Applying the usual test [his Lordship cited Scott v Stanford and Kelly v Morris], it seems to me that the Plaintiff must have expended a great deal of time and labour in this compilation, that what the Defendants are doing is to avail themselves very largely and unnecessarily of the labour and research of the Plaintiff without adequately recompensing him, ..."
The compilation involved the exercise of skill and judgment in selecting the words to be compiled and is therefore factually distinguishable from the present whole-of-universe case. But the language "labour and research" is entirely appropriate to refer to the industrious collection involved in a whole-of-universe factual compilation.
49 Another "selection" case decided at about the same time was Macmillan & Co Ltd v Suresh Chunder Deb (1890) 17 I LR (Calc Series) 951 (which was cited with approval by the Privy Council in Macmillan & Co Ltd v K & J Cooper ("Macmillan v Cooper") (1923) LR 51 Ind App 109). The case concerned an anthology of poems, "The Golden Treasury of Songs and Lyrics". Copyright in the works included in the anthology had long since lapsed. Nonetheless, the Privy Council noted in Macmillan v Cooper that the Judge in the case, Sir Arthur Wilson, had correctly held that there was copyright in the anthology. Sir Arthur Wilson had stated (quoted in Macmillan v Cooper at 122):
"Such a selection as Mr Palgrave has made obviously requires extensive reading, careful study and comparison, and the exercise of taste and judgment in selection. It is open to anyone who pleases to go through a like course of reading, and by the exercise of his own taste and judgment to make a selection for himself. But if he spares himself this trouble and adopts Mr Palgrave's selection, he offends against the principle."
There were also the "usual" more general references in Sir Arthur Wilson's judgment to the prohibition against taking the result of another's labour. The feature of the exercise of skill, judgment and taste in selection distinguishes anthology cases from the present whole-of-universe case.
50 The earliest Australian compilation case to which we were referred was T M Hall & Co v Whittington & Co (1892) 18 VLR 525. Entries in the books of the Victorian Registrar-General were accessible to all on payment of a fee. The plaintiffs published a pamphlet, "Hall's Mercantile Gazette", each day from Monday to Friday and weekly on Saturdays when the issue was a weekly compilation from the previous five days' issues. The publication consisted of factual information collected principally by searches made at public registry offices, and presented in the form of bills of sale and notices of intention to file bills of sale, stock mortgages and their renewals, contracts, insolvencies and so on. The defendant published the "Federal Traders' Protection Gazette", which included notices of intention to file bills of sale which he had copied from the plaintiffs' publication.
51 Holroyd J described the plaintiff's process of searching at the Registrar-General's office, of noting in summary form the documents read there, and of exercising judgment and discrimination in deciding what to collect. His Honour said that the operation allowed "room for thought" and was "not merely mechanical" (at 531). He continued (at 531-532):
"In general in condensing the materials out of which the plaintiffs' pamphlets were composed considerable time and labour were consumed, and a certain dexterity and expertness in the art of condensation were called into play. This was true also of the notices of intention as regarded time and labour; and I should say that, although the skill exercised was probably less in this subject than in some others, yet it was appreciable."
His Honour concluded as follows on the issue of the subsistence of copyright (at 537):
"These pamphlets, as I have already found, were not mere transcripts of entries contained in the books of the Registrar-General, but compilations derived from sources accessible to everybody, or to everybody who could pay the fees where fees were exacted. Time and trouble, money and skill, were expended upon them, and they were fit subjects for copyright."
In contrast, the compilation with which we are concerned consists of a transcription of information provided by telephone subscribers which allows no "room for thought" and is "merely mechanical". But the fact that selection, judgment, skill, taste, ingenuity or arrangement may be referred to as justifying copyright protection in one case does not signify that industrious collection will not serve that purpose in another.
52 In Leslie v J Young & Sons [1894] AC 335, the House of Lords held that:
· a person who published in no particular order, the timetables issued by railway companies, leaving out stations considered not of sufficient importance or interest, did not acquire copyright in the collection; but
· a person who published abridged information about train services in connection with circular tours of a particular locality acquired copyright in that material.
53 The appellant was the proprietor of "Leslie's Time Tables and Diary", a monthly penny railway timetable affecting the Perth district. His circular tour information occupied only four pages out of about forty of his book. In support of his claim of copyright, he relied on his skill and labour in condensing into a small space a huge mass of information.
54 Lord Herschell LC stated in relation to the collection of the timetables themselves (at 340-341):
"The information in these time-tables was of course derived by the pursuer from sources which were as open to the defenders as to himself, and he does not and cannot claim any right to the information as such; he can only claim copyright in them, if they are the result in some respect or other of independent work on his part, and if advantage has been substantially taken by the defenders of that independent labour. The mere publication in any particular order of the time-tables which are to be found in railway guides and the publications of the different railway companies could not be claimed as a subject-matter of copyright. Proceedings could not be taken against a person who merely published that information which it was open to all the world to publish and to obtain from the same source.
…
I do not think it can be said that as regards these tables there has been an appropriation by the defenders of the pursuer's work such as to entitle the pursuer to complain, and to obtain the interdict which he claims. The real truth is, that although it is not to be disputed that there may be copyright in a compilation or abstract involving independent labour, yet when you come to such a subject-matter as that with which we are dealing, it ought to be clearly established that, looking at these tables as a whole, there has been a substantial appropriation by the one party of the independent labour of the other, before any proceeding on the ground of copyright can be justified." (my emphasis)
By way of contrast, the Lord Chancellor thought the tourist and excursion tables exhibited "independent labour" and were "entitled to be regarded as an original work" (at 342). Lords Watson and Shand gave judgments generally to the same effect.
55 The case does not distinguish between one kind of independent labour and another. Rather, it distinguishes between the insufficiency of the appellant's labour in collecting and reprinting the timetables themselves and the sufficiency of its labour in providing the abridged information about the circular tours. The telephone subscriber details with which we are concerned are not generally available and Desktop does seek to take advantage of Telstra's labour in collecting and publishing them. On the other hand, it does not seek to take advantage of Telstra's alphabetical arrangement of the data: Desktop's objective is to take the data in all the individual entries into its database.
56 A catalogue of stock sold by a chemist and druggist, Collis, was held to be the subject of copyright in Collis v Cater, Stoffell & Fortt Ltd (1898) 78 LT 613 ("Collis"). Collis, prepared annually a catalogue arranged under various headings and sub-headings. The catalogue for 1898 contained the heading "Drugs and Chemicals, including Veterinary Medicines and Photographic Chemicals". Under that heading, articles were listed in alphabetical order with their prices. The catalogue also contained annotations. In its own catalogue, the defendant copied the heading mentioned, the items under it including their prices, and the plaintiff's annotations.
57 North J rejected the defendant's submission that the plaintiff's catalogue was not entitled to copyright protection because it was a bare list of goods and prices. His Lordship justified protection by reference to the wrongfulness of appropriating that which had cost another "expense and trouble" (at 615 - elsewhere on the same page, variously, "expense and trouble", "expense and trouble", "trouble or expense", "expense and labour", "expense and trouble"). His Lordship thought the issue for decision governed by the law as to residential or trade directories, which he described as "settled".
58 There are certain distinctions between the facts of Collis and those of the present case. The catalogue did not purport to be only a list of goods in fact stocked at a moment of time, that is to say, a compilation of information as to past or present facts: it stated under the heading "Patent Medicines and Proprietary Preparations", "any new preparation not in stock will be procured to order with as little delay as possible". Moreover, the annotations, the headings and the prices all indicate that the form of expression of the catalogue was not inevitable: the compiler decided what those matters were to be. These points of distinction, however, did not have to be addressed. The indiscriminate references to "expense" and "trouble" are at least consistent with the subsistence of copyright in a telephone directory.
59 Walter v Lane is the last case to be considered prior to the passing of the 1911 UK Act and its implementation in Australia as from 1 July 1912 by s 8 of the Copyright Act 1912 (Cth) ("the 1912 Australian Act"). The case may represent the high point of the line of authority supportive of the proposition that one can be the "author" of a work without scope for variance in expression.
60 Lord Rosebery made public speeches which reporters of The Times took down in shorthand. Later they wrote out their notes and corrected, revised and punctuated their reports for publication. The speeches were published in The Times verbatim as they had been delivered. In a book, the defendant reproduced The Times reports, substantially verbatim.
61 Curiously, the case is the first one of those discussed to date to be decided expressly by reference to the 1842 UK Act's requirement that copyright in a "book" (as defined) should exist only if there was an "author" of it. Each "Sheet of Letterpress" of The Times on which the reports appeared was a "book" within the statutory definition of that word.
62 Approaching the question for decision in a manner that characterised so many of the nineteenth century cases, the Lord Chancellor stated (at 545):
"My Lords, I should very much regret it if I were compelled to come to the conclusion that the state of the law permitted one man to make profit and to appropriate to himself the labour, skill, and capital of another. And it is not denied that in this case the defendant seeks to appropriate to himself what has been produced by the skill, labour, and capital of others. In the view I take of this case I think the law is strong enough to restrain what to my mind would be a grievous injustice. The law which I think restrains it is to be found in the Copyright Act, and that Act confers what it calls copyright - which means the right to multiply copies - which it confers on the author of books first published in this country."
Unlike the Court of Appeal, his Lordship thought the reporters as much "authors" as the compilers of a residential street directory had been held to be. He rejected a proposition embraced by the Court of Appeal that to be an author of a book one had to be its "original composer", noting that the expressions "original composition" and "original composer" did not appear in the 1842 UK Act. (As noted below, the word "original" was to be introduced to qualify the works protected by copyright with the enactment of the 1911 UK Act.)
63 The Lord Chancellor saw the case as raising the sole question:
"whether this book (to use the language of the statute), printed and published and existing as a book for the first time, can be copied by some one else than the producers of it (I avoid the use of the word 'author'), by those who have not produced it themselves but have simply copied that which others have laboured to create by their own skill and expenditure." (at 547).
In my view, this formulation of the question is important. The reporters' final records of the speeches were a "book" and since they were printed and published and existed as a book for the first time, they attracted copyright protection. In this sense they were original and this sense of the word was to prevail in Anglo-Australian jurisprudence.
64 His Lordship rejected the proposition that the 1842 UK Act required "originality either in thought or in language" (at 548), and said that one must not read that Act as if it contained the word "original". Consistently with later authority (see for example, Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 ("Sands & McDougall") (discussed below at [89]-[92]), his Lordship rejected the proposition that copyright protection was attracted only by originality of thought or idea or by the inventiveness required by the patent laws. But as the passage set out above touching on originality makes clear, when his Lordship also said that the 1842 UK Act did not require, by its use of the word "author", "originality ... in language", he must have had in mind "inventive" or "imaginative" or "distinctive" language.
65 The Lord Chancellor saw no difficulty in the view that the reporters were authors or that there could be as many copyrights as reporters, and he referred to the painting or photographing of a favourite view by several painters or photographers.
66 Lord Davey, Lord James of Hereford and Lord Brampton gave independent concurring judgements, while Lord Robertson dissented.
67 Lord Davey also observed (at 551) that each sheet of letterpress of The Times constituted a "book" within the 1842 UK Act and that since it was the reporter who had brought into existence the sheet of letterpress which the defendant had copied, the reporter was the "author" of it.
68 Lord James of Hereford said (at 553-554):
"Whilst the Act supplies no definition of the word 'author', and whilst it may be difficult for any judicial authority to give a positive definition of that word, certain considerations controlling the meaning of it seem to be established. A mere copyist of written matter is not an 'author' within the Act, but a translator from one language to another would be so. A person to whom words are dictated for the purpose of being written down is not an 'author'. He is the mere agent or clerk of the person dictating, and requires to possess no art beyond that of knowing how to write. The person dictating takes a share in seeing that the person writing follows the dictation, and makes it his care to give time for the writing to be made. But an 'author' may come into existence without producing any original matter of his own. Many instances of the claim to authorship without the production of original matter have been given at the bar. The compilation of a street directory, the reports of proceedings in courts of law, and the tables of the times of running of certain railway trains have been held to bring the producers within the word 'author'; and yet in one sense no original matter can be found in such publications. Still there was a something apart from originality on the one hand and mere mechanical transcribing on the other which entitled those who gave these works to the world to be regarded as their authors.
Now, what is it that a reporter does? Is he a mere scribe? Does he produce original matter or does he produce the something I have mentioned which entitles him to be regarded as an 'author' within the Act? I think that from a general point of view a reporter's art represents more than mere transcribing or writing from dictation."
Lord Brampton observed (at 556) that the preparation of the reports:
"involved considerable intellectual skill and brain labour beyond the mere mechanical operation of writing."
His Lordship continued (at 556-557):
"That the reports so published were 'books' within the meaning of the Copyright Act is undisputed; the great contention throughout the case has been whether the reporters were the 'authors' of them, for unless they were they could not acquire any copyright in them, the 3rd section of the Act conferring property in the copyright of a book only upon its author and his assigns. North J, before whom the case was first heard, held that although the reporter had no property in the speeches, he was entitled to copyright in his reports of them. The Court of Appeal reversed his ruling, and in a considered judgment emphatically stated that mere reporters were clearly not 'authors' of what they report, that the Act was passed to protect 'authors' not reporters, that a mere publisher of another man's verbal utterances could not acquire a copyright as the author of such publication, and they held 'that in order that the first publisher of any composition may acquire the copyright in it he must be the author of what he publishes, or he must derive his right to publish from the author by being of owner of his manuscript, or in some other way.' I can find nothing in the Act which compels me to assent to this view. A speech and the report of it are two different things, and the author of the one and the author of the other are presumably two different persons. The author of a speech is the author of language orally uttered by himself. The author of the report of a speech is the author of a writing containing the substance or the words of that speech. The speech must precede the report of it. The oral speech is not a 'book', the written report is. The book is the subject of copyright under s 3, and the property in such copyright in a book is in its author."
69 In dissent, Lord Robertson insisted that authorship required some element of composition or arrangement or structuring by the putative author, and rejected the appellants' submission that the owner of a phonograph which recorded a speech, who then recorded it in writing and published it as a written report of the speech, would have copyright in that report.
70 The fact that Walter v Lane was decided prior to the introduction into the legislation of an express requirement of originality coupled with the references in the speech of Lord Herschell to the absence of such an express requirement, has led to the suggestion that the case might have been decided differently if it had been decided after and under the 1911 UK Act (see Lady Helen Robertson v Harry Lewis (trading as Virginia Music) [1976] RPC 169 at 174). But their Lordships' approach of inquiring whether there was a sheet of letterpress, within the definition of "book" in the 1842 UK Act, which had originated as such with the copyright claimant betokens the very kind of originality which was to become accepted in Anglo-Australian law under the modern statutory formula "original literary work".