IceTV Pty Limited v Nine Network Australia Pty Limited

IceTV Pty Limited v Nine Network Australia Pty Limited - [2009] HCA 14 - HCA 2009 case summary — Zoe

[15]

The respondent, Nine Network Australia Pty Limited ("Nine"), is engaged in the business of acquiring, distributing, selecting and scheduling programmes to be broadcast by various free-to-air television stations within the "Nine Network". The scheduling of programmes to be broadcast involves the use of a database on Nine's computer network ("the Nine Database"). Approximately two weeks prior to the commencement of each week of broadcasting, an employee of Nine supplies certain third parties known as "Aggregators" with a schedule of programmes to be broadcast on Nine Network stations in that week (a "Weekly Schedule"). Each Weekly Schedule is produced from the Nine Database.
Each Weekly Schedule contains various elements, including particulars of the time and title of programmes to be broadcast ("time and title information"). The Aggregators use the Weekly Schedule, together with comparable material provided by other Australian television broadcasters and independently obtained material, to produce "Aggregated Guides", which are schedules of programmes to be broadcast on various television stations, for publication in various media.
The first appellant, IceTV Pty Limited ("IceTV"), commenced trading in 2005. It is a wholly owned subsidiary of the second appellant, IceTV Holdings Limited ("IceTV Holdings"). They are not broadcasters.
The primary business of IceTV is the provision, via the Internet, of a subscription-based electronic programme guide for television known as the "IceGuide". When downloaded onto certain devices, which are available for purchase by consumers in Australia, the IceGuide displays details of programmes scheduled to be broadcast by free-to-air television stations for the coming six to eight days, including stations in the Nine Network.
Over the period relevant to this appeal, when preparing the information to be included in the IceGuide for a given day, employees of IceTV used information included in the IceGuide for a previous day[1] and then compared this with published Aggregated Guides. Where there was a discrepancy as to the time and title information, the IceGuide was amended to reflect the Aggregated Guides in almost all cases. It is this use of the Aggregated Guides that is in issue in this appeal.

[16]

This appeal arises out of proceedings brought by Nine in the Federal Court of Australia against IceTV and IceTV Holdings for infringement of copyright. Although Nine's case at trial was broader in several respects, relevantly to this appeal Nine alleged at trial, on appeal to a Full Court of the Federal Court of Australia ("the Full Court") and on the first day of hearing in this Court that: each Weekly Schedule was a "compilation" and therefore a "literary work", within the meaning of s 10(1) of the Copyright Act 1968 (Cth) ("the Act"); each was an "original" literary work, in which copyright subsisted, within the meaning of s 32 of the Act; Nine was the owner of that copyright; and IceTV infringed that copyright by taking part of the time and title information from the Aggregated Guides and including it in the IceGuide, as this constituted a reproduction (albeit an "indirect reproduction") in a material form of a "substantial part" of the copyright work, within the meaning of s 14(1)(b) of the Act. The claims involved alleged reproduction of time and title information week by week. Nine sought declaratory and injunctive relief against IceTV and IceTV Holdings, as well as damages or an account of profits and additional damages pursuant to s 115(4) of the Act.
For their part, IceTV and IceTV Holdings accepted that copyright subsisted in each Weekly Schedule as an original literary work. However, they denied that IceTV had reproduced, in a material form, a substantial part of any Weekly Schedule in issue and denied that reproduction from any Aggregated Guide was a reproduction of any Weekly Schedule.
Accordingly, both the primary judge (Bennett J)[2] and the Full Court (Black CJ, Lindgren and Sackville JJ)[3] dealt with this matter on the basis that the subsistence of copyright in the Weekly Schedules was admitted. The dispute was treated below as one to be resolved, first, by a determination of whether the time and title information which was reproduced constituted a "substantial part" of the Weekly Schedules and, secondly, by consideration of the "indirect reproduction" issue. Both the primary judge and the Full Court essentially approached the question of whether IceTV had reproduced a substantial part of any Weekly Schedule by identifying the "skill and labour" which was expended on creating the Weekly Schedules, then asking whether IceTV had "appropriated" Nine's skill and labour. The primary judge and the Full Court reached opposite conclusions on the point essentially because of different approaches to identifying the relevant skill and labour in question: the primary judge considered that skill and labour in making programming decisions was not relevant and that there was not a reproduction of a substantial part; the Full Court considered that this skill and labour was relevant and that there was a reproduction of a substantial part.
There was a change in direction on the second day of hearing in this Court. Nine sought to recharacterise the relevant original literary works as the "Nine Database", a matter explained by Gummow, Hayne and Heydon JJ[4]. IceTV and IceTV Holdings contested that recharacterisation.
We agree with Gummow, Hayne and Heydon JJ that the appeal should be allowed. In the light of the reasons which follow, it is unnecessary for us to consider the "indirect reproduction" issue. The facts and the relevant legislation have all been set out in the reasons of Gummow, Hayne and Heydon JJ. They do not need to be repeated here except as necessary to explain our reasons.

[24]

The conduct alleged to infringe copyright arises in the following way.
As noted above, subscribers to IceTV's services could program compatible devices to connect over the Internet to a database maintained by IceTV and download the latest version of the IceGuide for an upcoming six to eight-day period. The precise visual appearance of the IceGuide varied between devices and was not determined or influenced by IceTV or IceTV Holdings. Indeed, at the user's choice, the IceGuide could be displayed on a device in different visual formats containing different information.
The initial information to be included in the IceGuide was generated by an employee of IceTV watching television over a period of time, obtaining information about programmes from the Internet and reviewing published Aggregated Guides. In this appeal, no complaint is made by Nine about this process.
Nine's complaint concerns the process by which each day's IceGuide schedule had been created since April 2005. In essence, an employee of IceTV would use an IceGuide schedule from a previous day, compare it to a number of Aggregated Guides and, in almost all cases where there was a difference as to the time and title information, amend the IceGuide schedule accordingly. It is alleged that this reproduction of time and title information, to be included in the IceGuide, constituted a reproduction of a substantial part of the Weekly Schedule (or the Nine Database) which was the source of the information. The alleged reproduction involved the use of the words, figures and symbols, and the chronological arrangement, in which the time and title information was expressed.
Assuming copyright subsists in the Weekly Schedule (as admitted by IceTV and IceTV Holdings) and in the Nine Database, each Weekly Schedule (and each week's version of the Nine Database) is accepted by Nine in this Court to be a separate copyright work. If there were no reproduction of a substantial part from any of the individual works, the conclusion must be that there was no infringement of copyright in any of the works. The fact that there was "systematic copying" of time and title information over a period of time, from many of the individual works, does not alter that conclusion[11]. To the extent that there are nineteenth century cases to the contrary[12], they should not be followed. It is sufficient for the purposes of discussing infringement in this appeal to focus on a single Weekly Schedule (or a single week's version of the Nine Database), as what is said will apply to all of them.

[26]

The "author" of a literary work and the concept of "authorship" are central to the statutory protection given by copyright legislation, including the Act.
Undoubtedly, the classical notion of an individual author was linked to the invention of printing and the technical possibilities thereafter for the production of texts otherwise than by collective efforts, such as those made in mediaeval monasteries. The technological developments of today throw up new challenges in relation to the paradigm of an individual author. A "work of joint authorship", as recognised under the Act, requires that the literary work in question "has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors"[13]. As in other cases where the facts resemble those under consideration here[14], the Weekly Schedules (and the Nine Database) were the result of both a collaborative effort and an evolutionary process of development, involving in this instance both manpower and the use of computers. However, nothing in these reasons turns on any conclusion as to the precise identity of the author or authors of those works.
In assessing the centrality of an author and authorship to the overall scheme of the Act, it is worth recollecting the longstanding theoretical underpinnings of copyright legislation. Copyright legislation strikes a balance of competing interests and competing policy considerations[15]. Relevantly, it is concerned with rewarding authors of original literary works with commercial benefits having regard to the fact that literary works in turn benefit the reading public.
In both its title[16] and opening recitals[17], the Statute of Anne of 1709[18] echoed explicitly the emphasis on the practical or utilitarian importance that certain seventeenth century philosophers attached to knowledge and its encouragement in the scheme of human progress[19]. The "social contract" envisaged by the Statute of Anne, and still underlying the present Act, was that an author could obtain a monopoly, limited in time, in return for making a work available to the reading public.
Whilst judicial[20] and academic[21] writers may differ on the precise nature of the balance struck in copyright legislation in different places, there can be no doubt that copyright is given in respect of "the particular form of expression in which an author convey[s] ideas or information to the world"[22].
The particular form of expression here was the Weekly Schedule (or the Nine Database). The balance spoken of above is important in the present context because, generally speaking, no copyright could be claimed in a programme title alone[23] and the time at which a programme will be broadcast is a single item of quotidian information.
Copyright does not protect facts or information[24]. Copyright protects the particular form of expression of the information, namely the words, figures and symbols in which the pieces of information are expressed[25], and the selection and arrangement of that information[26]. That facts are not protected is a crucial part of the balancing of competing policy considerations in copyright legislation. The information/expression dichotomy, in copyright law, is rooted in considerations of social utility. Copyright, being an exception to the law's general abhorrence of monopolies[27], does not confer a monopoly on facts or information because to do so would impede the reading public's access to and use of facts and information. Copyright is not given to reward work distinct from the production of a particular form of expression[28].
These concepts are relevant to the determination, called for by the Act, of whether a part reproduced is a "substantial part" of a work in which copyright subsists.

[37]

The Weekly Schedule (and the Nine Database) as a whole involves orderly arrangement of its various elements and the evidence showed choices were made about what programmes were included or excluded. As a whole, it is an original (ie not copied) collocation of both information and creative material.
However, the expression of the time and title information, in respect of each programme, is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited[58]. Expressing a title of a programme to be broadcast merely requires knowledge of the title, generally bestowed by the producer of the programme rather than by a broadcaster of it. Expressing the time at which a programme is broadcast, for public consumption, can only practically be done in words or figures relating to a 12 or 24-hour time cycle for a day. The authors of the Weekly Schedule (or the Nine Database) had little, if any, choice in the particular form of expression adopted, as that expression was essentially dictated by the nature of the information. That expression lacks the requisite originality (in the sense explained) for the part to constitute a substantial part.
Counsel for Nine sought to place importance upon the reproduction not only of time and title information in respect of each programme, but also of the chronological arrangement of the time and title information for various programmes. Whether a selection or arrangement of elements constitutes a substantial part of a work depends on the degree of originality of that selection or arrangement[59]. In this case, a chronological arrangement of times at which programmes will be broadcast is obvious and prosaic, and plainly lacks the requisite originality.
These considerations lead to the conclusion that the part of the Weekly Schedule (or the Nine Database) alleged to have been reproduced was not a substantial part. Something must be said, then, of the relevance of "skill and labour" to this question and how it may lead to error.

[38]

Not every piece of printing or writing which conveys information will be subject to copyright. For a long time, and precisely because compilations often contain facts, it has been commonplace to enquire what skill and labour was required in the preparation of a compilation[60]. That question has arisen in the context of considering whether copyright subsists at all in a compilation as well as being relevant to a later inquiry as to the "quality" of any material taken from a copyrighted work.
In Feist Publications Inc v Rural Telephone Service Co Inc[61] the Supreme Court of the United States considered the compatibility of two propositions: first, that compilations of facts are generally copyrightable, and secondly, that facts were not copyrightable. This case involves the same tension between those two propositions. "Originality" was a constitutional requirement that was the source of Congress's power to "secur[e] for limited Times to Authors … the exclusive Right to their respective Writings"[62]. It was recognised, however, that copyright in a factual compilation is necessarily "thin"[63] because the standard for originality should not be such that copyright owners have a monopoly on facts or information. Ultimately the decision turned in a significant degree on the view that "[t]he primary objective of copyright is not to reward the labor of authors, but '[t]o promote the Progress of Science and useful Arts.'"[64] The exclusion of ideas and information from copyright protection has been codified in the United States[65].
Much has been written about differing standards of originality in the context of the degree or kind of "skill and labour" said to be required before a work can be considered an "original" work in which copyright will subsist[66]. "Industrious collection" or "sweat of the brow", on the one hand, and "creativity", on the other, have been treated as antinomies in some sort of mutually exclusive relationship in the mental processes of an author or joint authors. They are, however, kindred aspects of a mental process which produces an object, a literary work, a particular form of expression which copyright protects. A complex compilation or a narrative history will almost certainly require considerable skill and labour, which involve both "industrious collection" and "creativity", in the sense of requiring original productive thought to produce the expression, including selection and arrangement, of the material[67].
It may be that too much has been made, in the context of subsistence, of the kind of skill and labour which must be expended by an author for a work to be an "original" work. The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort. Be that as it may, as noted previously, since the subsistence of copyright need not be considered in this appeal, the relevance of skill and labour to that inquiry need not be considered further.

[39]

In the context of infringement, in particular the determination of whether a part reproduced is a "substantial part", a matter often referred to is whether there has been an "appropriation" of the author's skill and labour[68]. As already noted, both the primary judge and the Full Court adopted that approach in this case. However, it is always necessary to focus on the nature of the skill and labour, and in particular to ask whether it is directed to the originality of the particular form of expression[69].
Nine relied on British Broadcasting Co v Wireless League Gazette Publishing Co ("Wireless")[70], Football League Ltd v Littlewoods Pools Ltd ("Littlewoods")[71], Ladbroke[72] and Independent Television Publications Ltd v Time Out Ltd ("Time Out")[73] for the proposition that it does not matter if the skill and labour is directed to matters other than a particular form of expression for the purposes of assessing the substantiality of the part reproduced.
However, in Wireless, there was no real analysis of the question of infringement, which appears to have been treated as bound up with a "fair dealing" defence abandoned by the defendant[74]. In Littlewoods, importance was attached to the reproduction of not only the information, but also its arrangement, and to the fact that essentially the whole of the work in suit had been reproduced[75]. In Ladbroke, Lord Evershed expressly rested his decision as to infringement upon the aspects of expression of the betting coupon in question, not the skill and labour in deciding what bets to offer[76]. The other members of the House of Lords (except for Lord Devlin, who did not discuss infringement) relied on the aphorism, referred to above, that "what is worth copying is prima facie worth protecting"[77]; but it is significant that the reproduction was more extensive than in this case and included reproduction of aspects of arrangement. In Time Out, appropriation of skill and labour was not mentioned in the context of infringement. The focus was instead on the commercial value of the information alleged to have been reproduced from the broadcasting schedule in question, in that it concerned peak viewing times and omitted references to programmes which would be known by viewers to be broadcast at fixed times[78]. With respect, that focus was upon the information itself, rather than the particular form in which it was expressed.
Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error[79]. The error is of a kind which might enable copyright law to be employed to achieve anti‑competitive behaviour of a sort not contemplated by the balance struck in the Act between the rights of authors and the entitlements of the reading public[80]. The Act mandates an inquiry into the substantiality of the part of the work which is reproduced. A critical question is the degree of originality of the particular form of expression of the part. Consideration of the skill and labour expended by the author of a work may assist in addressing that question: that the creation of a work required skill and labour may indicate that the particular form of expression adopted was highly original. However, focussing on the "appropriation" of the author's skill and labour must not be allowed to distract from the inquiry mandated by the Act. To put aside the particular form of expression can cause difficulties, as evidenced by Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd[81].
It is not seriously in dispute that skill and labour was expended on producing the Weekly Schedules (and the Nine Database). The evidence disclosed considerable skill and labour involved in programming decisions. There was a contest about whether it mattered if some of the skill and labour expended was directed to business considerations[82]. Plainly, the skill and labour was highly relevant to matters such as advertising revenue. It is not difficult to understand that questions of the timing of particular broadcasts are crucial for advertising revenues. The fact that business considerations inform the decision to adopt a particular form of expression will not necessarily detract from the originality of that form of expression.
However, the critical question is whether skill and labour was directed to the particular form of expression of the time and title information, including its chronological arrangement. The skill and labour devoted by Nine's employees to programming decisions was not directed to the originality of the particular form of expression of the time and title information. The level of skill and labour required to express the time and title information was minimal[83]. That is not surprising, given that, as explained above, the particular form of expression of the time and title information is essentially dictated by the nature of that information.

[46]

The commercial interest which has given rise to this appeal is the control sought by the respondent ("Nine") over the use of the programme schedules for television transmissions by its network ("the Nine Network"). The appellants (together "Ice") challenge the decision on 8 May 2008 of the Full Court of the Federal Court (Black CJ, Lindgren and Sackville JJ)[85] that there has been reproduction of a "substantial part" of original literary works in which copyright subsisted under the Copyright Act 1968 (Cth) ("the Act"). These works were compilations represented by the television programme schedules for the Nine Network. The "substantial part" was the programme title, date and time of broadcast, including the episode title where relevant ("time and title information").
The primary judge (Bennett J) dismissed the action brought by Nine[86] and so made no finding as to whether the second appellant ("Ice Holdings") was jointly liable for any infringement by the first appellant ("IceTV"). In a supplementary judgment[87] delivered on 20 August 2008 the Full Court indicated that among the issues remitted to the primary judge was that of infringement by Ice Holdings.
This Court granted leave to Telstra Corporation Limited and to Australian Digital Alliance Limited ("the Digital Alliance") to appear each as amicus curiae.
Ice seeks the reinstatement of its success at first instance in the Federal Court. Bennett J held that there had been no reproduction of a substantial part of the compilations. For the reasons which follow, her Honour reached the correct result and her decision should not have been set aside in the Full Court.
A critical passage in the reasoning of the Full Court appears under the heading "Principles"[88]. This includes two propositions as follows. The first is that "[t]he quality of what is taken must be assessed by reference to the interest protected by the copyright". The second is that "[i]n the case of a literary work, including a compilation, the quality relevant for the purpose of substantiality is the literary originality of what has been copied". Both propositions draw upon the speech of Lord Hoffmann in a case decided under the Copyright, Designs and Patents Act 1988 (UK) ("the 1988 UK Act"), Newspaper Licensing Agency Ltd v Marks & Spencer plc[89], although, with respect to the first proposition, Lord Hoffmann relied[90] upon what had been said by Sackville J in Nationwide News Pty Ltd v Copyright Agency Ltd[91].
Ice submits that, if an "interest analysis" be adopted, then the "interest" protected by the copyright in the Nine programme schedules lies in the particular form of their final expression rather than, as the Full Court indicated[92], in large measure in antecedent or preparatory work to fix programming schedules. Ice contends that the Full Court thus adopted an inappropriate focus for determination of the issue of reproduction of a "substantial part" of the schedules.
It will be necessary to consider later in these reasons the correctness and utility of the two propositions drawn from Newspaper Licensing. At this stage it is sufficient to indicate that the criticism by Ice of the reasoning of the Full Court is well based and to turn to the relevant provisions of the Act.

[50]

The development of the law in the United States was much influenced by the judgment of Story J in Emerson v Davies[96] and reference was made to it by Isaacs J in Sands & McDougall Pty Ltd v Robinson[97]. Story J, perhaps oddly to the modern reader, drew from analogies in patent law. He likened the inventor of a new combination of old integers to the author of a compilation drawn from existing works by the employment of research and skill, and the copyright infringer whose unauthorised taking was "substantial" to the patent infringer who took by "subterfuge" what later would be called the "pith and marrow" of the invention[98].
The present significance of Emerson lies not in an immediate analogy between contemporary copyright and patent law. Rather, the detailed reasons given by Story J direct attention to the competing interests involved in the conferral by intellectual property laws of rights of statutory monopoly, and the imprecision of criteria devised by legislatures to strike a balance between those competing interests.
That imprecision is apparent not only in the terms "compilation" and "substantial part", but extends to what have been seen in the case law as the conceptual underpinnings of the protection by the Act of original literary, dramatic, musical and artistic works. The importance attached in the nineteenth century to the protection by injunction of legal rights, provided they were proprietary in nature[99], encouraged the treatment by the courts of copyright as the reward for productive labour; hence the use in some of the cases of the agricultural metaphor of sowing and reaping. That metaphor also relieved the courts from the perceived hazards involved in adjudicating upon aesthetic qualities of literary and other works. (But there remained the difficulties associated with the expression "a work of artistic craftsmanship"[100].)
The agricultural metaphor is still encountered in the case law. For example, in Designers Guild Ltd v Russell Williams (Textiles) Ltd[101] Lord Bingham of Cornhill said:

[107]

While the pleading did not distinguish the categories of Nine Program Schedules by identification of the relevant time of first making or first publication, the evidence showed a sequence of seven steps whereby information of the kind just described was progressively reduced into a variety of material forms in the period before each "broadcast week". A "broadcast week" commenced on a Sunday and ended on the following Saturday.
The evidence established that Nine's Director of Programming, Mr Michael Healy, commenced the sequence and first wrote by hand the programme name (or an abbreviation) for programmes proposed to be broadcast during "prime time" (6:00 pm to 10:30 pm) into a notebook called the "Paper Programming Grid". Each page of the notebook represented a separate week of the year, divided into the seven days and half hour timeslots, and was populated by Mr Healy with programme and sometimes episode titles up to six to nine months in advance of broadcast. A pencil was used for this task, so that the time and title information so recorded could readily be revised as changes were made to the programme line‑up for commercial reasons.
Step two appeared from the evidence of Program Executive Ms Penny Wieland. This involved her recording time and title information for programmes proposed to be broadcast in the daytime (6:00 am to 6:00 pm) and off-peak (10:30 pm to 6:00 am) timeslots. Programme and sometimes episode titles and numbers were inserted by her into an Excel "spreadsheet" she maintained on her computer, again divided into weeks, days and timeslots and populated well in advance of broadcast. Ms Wieland also populated her spreadsheet with time and title information for prime time programmes, which she derived from discussions with Mr Healy or her own knowledge of Nine's programming.
Step three occurred three to four weeks prior to each broadcast week and involved another Nine employee, Mr Heath Forrest. He transposed by hand the time and title information for that week from Mr Healy's grid and Ms Wieland's spreadsheet into a further paper document called "the Master Paper Grid". A separate Master Paper Grid was prepared by Mr Forrest for each broadcast week. He completed the grid by adding further episode titles and certain other "additional program detail information" such as currency information. However, other "additional program detail information", such as classification and consumer advice, does not appear to have been included in Mr Forrest's Master Paper Grid.
Step four commenced once Mr Forrest had completed transposition of the information from the grid and the spreadsheet into the Master Paper Grid. This involved the commencement of manual entry by Mr Forrest of that information into a customised programme database located on Nine's computer network ("the Nine Database"). The evidence was largely silent as to the structure of the Nine Database or the manner of its operation.
The evidence showed that, while these steps were taking place, other staff at Nine were responsible for collating other of the "additional program detail information" and the synopses. Mr Brian Feeney and Mr Richard Lyle of the Programming Department prepared classification information for programmes proposed to be broadcast in accordance with the Commercial Television Industry Code of Practice. Synopses were also drafted by Mr Justin Holman, Mr Forrest and occasionally Mr Healy, or obtained from Nine staff known as the "Genre Heads" and "Production Officers", or outside producers or distributors. The evidence did not reveal who was responsible for entering the classification and consumer information into the Nine Database, but did explain the entry by Mr Holman of the synopses.
Steps five and six assumed particular importance in the development of Nine's argument in oral submissions in this Court[143].
The key actor in step five again was Mr Forrest. Upon completion of entry of all available information for the relevant broadcast week into the Nine Program Schedule, the evidence was that he "dumped" that information into the Nine Database thereby granting access to persons who worked outside the Programming Department but within, or in affiliation with, Nine. Those within Nine who were given this access could then view the proposed programme schedule on the internal computer network at Nine. Access allowed Nine's marketing, publicity and sales departments to plan their sales and marketing strategies. It also permitted stations other than TCN-9 Sydney, GTV-9 Melbourne and QTQ-9 Brisbane to access and amend the Nine Database to include local material or make changes for their individual stations.
Step six, the penultimate step, occurred 17 to 14 days ahead of each broadcast week. It comprised the production of the document referred to by the primary judge and the Full Court in their reasons as the "Weekly Schedule". This was done by Mr Holman. He generated the Weekly Schedule from the Nine Database in both the "Excel" and "text" format and emailed that document to three third parties, identified as "the Aggregators".
The information recorded in a material form in the Weekly Schedule appears from the first page of the "Excel" format disseminated to the publishers of the Aggregated Guides ("the Aggregators") for the broadcast week commencing Sunday, 11 June 2006[144]. This read:
As can be seen, the five columns of the Weekly Schedule included time and title information (columns 1 and 2), additional programme information (columns 3 and 4), and the synopses (column 5). It is not readily apparent that any one or more of the items treated above as "title information" (column 2) would qualify as an original literary work by itself. The same must be so of the time information of column 1. The synopses in column 5 may have had that character, but they were not reproduced in the IceGuide.
Before turning to the seventh and final step, attention should be given to the role of the Aggregators as recipients of the Weekly Schedule. The primary judge found that the purpose of the Weekly Schedule was to impart the totality of the information therein to the Aggregators. They were responsible for extracting and publishing in the Aggregated Guides the totality of the information in the Weekly Schedule alongside like information provided by other free to air television stations.
The final step in the relevant sequence of evidence involved the revision of the time and title information after provision of the Weekly Schedule to the Aggregators. The evidence showed that the Weekly Schedule occasionally was issued to the Aggregators with timeslots marked "Details: TO BE ADVISED" and late changes to programming made for competitive and other reasons. Mr Healy explained:

[111]

Upon the concession of Ice as to subsistence of copyright in the Weekly Schedule, the primary judge held that the relevant work in suit was each Weekly Schedule published by Nine since IceTV commenced its activities in 2004. Her Honour held that the Weekly Schedule was a "compilation" literary work which expressed the time and title information, the additional programme information and the synopses for each day of the relevant broadcast week. Each of the categories of information included in the Weekly Schedule was there for good commercial reason. Bennett J rejected the submission of Nine that distinct copyrights subsisted in mere components of the Weekly Schedule, such as the time and title information of the first two columns.
As to infringement, the primary judge found that (i) IceTV never took the synopses and did not take the whole of the time and title information from the Aggregated Guides; (ii) IceTV had copied no more than "slivers" of time and title information from the Aggregated Guides in order to maintain and update the IceGuide; and (iii) the slivers in question did not bear substantial importance in relation to the originality of the Weekly Schedule as a whole. This led the primary judge to the conclusion that IceTV had not reproduced a substantial part of the Weekly Schedule, with the consequence that the alleged infringement was not established and the application was dismissed.
It should be noted that the primary judge recorded that the case on infringement was founded on the assertion that IceTV had appropriated the "'skill and labour of authorship' of Nine" (emphasis added). Her Honour's findings in this respect were critical to the conclusion that there had been no reproduction of a "substantial part" of the Weekly Schedule.
Bennett J explained that the relevant "skill and labour" of Nine included both the skill and labour of making decisions as to the selection and arrangement of programmes for broadcast in particular timeslots (referred to as the "preparatory" skill and labour) and the later "skill and labour" in drafting the synopses and selecting and arranging the time and title information, the additional programme information and the synopses in the form of the Weekly Schedule once the preparatory work was done.
As to the former, the primary judge found that the preparatory "skill and labour" involved the consideration by Mr Healy and Ms Wieland of many factors, such as viewer preferences and trends, audience size and demographic appeal, contractual and regulatory obligations, competitor programming and ratings information. However, she also found that the primary purpose here was not to produce a literary work, but rather, to produce a programme line-up that would maximise viewers (and hence advertising revenue). The conclusion followed that the skill and labour in determining the programme line‑up was not co‑extensive with the skill and labour in creating the Weekly Schedule. IceTV was not a broadcaster and there was accordingly no relevant "appropriation" by it of the skill and labour of placing programmes. IceTV adopted its own form of presentation of the time and title information and drafted its own synopses and thus had not taken sufficient of "Nine's skill and labour" so as to have infringed by copying "slivers" of time and title information.
In the Full Court, the findings by Bennett J as to the identity of the relevant works in suit went unchallenged. The primary issue was whether the copying by Ice of time and title information from publicly available Aggregated Guides constituted the reproduction of a substantial part of the Weekly Schedule. After setting out the "Principles" identified earlier in these reasons, the Full Court turned its attention to this issue under the heading "Assessing the Primary Judge's Views on Ice's Appropriation of Nine's Skill and Labour"[145].
It was in the assessment of this topic that a critical difference of opinion emerged in the reasoning of the Full Court. The Full Court explained[146]:

[116]

Before turning to the submissions presented in this Court, several points should immediately be made concerning the focus by the primary judge and the Full Court upon the skill and labour "of Nine" in their treatment of infringement.
The first is to emphasise the dangers when applying the Act of adopting the rhetoric of "appropriation" of "skill and labour"[148]. A finding that one party has "appropriated" skill and labour, of itself, is not determinative of the issue of infringement of a copyright work. The Act does not provide for any general doctrine of "misappropriation"[149] and does not afford protection to skill and labour alone.
In the present case, the alleged infringement was identified in the reproduction of a substantial part of the relevant copyright "work" (ss 36(1), 31(1)(a)). To speak of the "appropriation" of "Nine's skill and labour", rather than attending to the relevant "original" work of the author or authors, was to take a fundamental departure from the text and structure of the Act. In particular, while s 35(6) might have produced the consequence that Nine was the relevant copyright owner after identification of the relevant "author" or "authors", notions of the "skill and labour" of Nine were irrelevant to the existence of its title to the copyright and to the assessment of "substantial part".
The second point is that the conduct of the litigation in this manner reflected the decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd[150]. That case decided that telephone directories were "original" works in which copyright subsisted because "Telstra had undertaken substantial labour and incurred substantial expense"[151] in compiling and presenting the details of telephone subscribers in a particular region. Infringement was identified in the appropriation of "the benefit of Telstra's substantial labour and expense"[152].
However, a reason to treat the decision in Desktop Marketing with particular care appears from the reasons of the trial judge. Finkelstein J had observed[153]:

[128]

Nine submitted that this analysis reflected the findings of the Full Court. But two points should be made here.
The first point is that the proposition now advanced by Nine, that the work in suit was a single work reflected in the Nine Database, does not appear from the elliptical references to "the Nine Program Schedules" in the pleadings. As a consequence, issues of the kind to be described below were not agitated at any stage in the Federal Court.
The second point is to emphasise the difficulties of adapting the provisions of Pt III of the Act to cases such as the present, where multiple works and authors might be identified and the requisite expression of "authorship" of each may be dictated by a specific commercial objective. The point is illustrated sufficiently by contrasting the provisions of the Act and the evidence with the proposition that "the work" was a single work represented in the Nine Database and "first published" upon dissemination to the Aggregators of the Weekly Schedule in "Excel" and "text" format.
The combined effect of s 32(1), s 22 and the definition of "material form" is to provide for subsistence of copyright in an unpublished literary work at the time or period of first fixation in a material form by a qualified person, whether then "visible or not". Thus, copyright might subsist in the Nine Database as a "compilation" upon the time of "dumping" by Mr Forrest, notwithstanding that the relevant expression of "words, figures or symbols" might then have been invisible to the human eye (s 10(1)). Further, the Act provided for "first publication" (s 32(2)(c)) to occur upon supply of a reproduction of "the work" to the public (s 29(1)), as might be done by dissemination to the Aggregators of the Weekly Schedule. However, the relevant reproduction for the purposes of first publication must be of the whole (s 29(2)) rather than merely a substantial part (cf s 14(1)). A work is taken to be reproduced if converted into or from a digital or other machine‑readable form; any article embodying the work in such a form is to be taken to be a reproduction of the work (s 21(1A)).
The evidence showed that the words, figures or symbols which comprised the Nine Database were not co‑extensive with those which comprised the Weekly Schedule. For example, the evidence showed that each programme was allocated a short "Catalog" code (eg, "NODD01") and that Mr Forrest keyed these into the Nine Database prior to generation of the "Excel" and "text" format of the Weekly Schedule. The catalogue codes permitted the cross‑referencing by Nine of the time and title information with its internal tape library in a further schedule called "the First and Final" schedule. This comprised a collocation of the catalogue codes, the time and title information and certain other information, and was also generated from the Nine Database for this purpose prior to each broadcast week. However, the catalogue codes had no utility to the Aggregators or the public and accordingly were omitted from the "Excel" and "text" format of the Weekly Schedule.
The requirement in s 29(2) of the Act for publication by reproduction of the whole work is significant. The presence of catalogue codes in the Nine Database, but not the Weekly Schedule, points, when assessing infringement, against the former being the same compilation work as the latter. Further, assuming the Nine Database and the Weekly Schedule to be distinct literary works, questions inevitably arise as to whether the author of the latter would be identified with the author of the former and whether the requisite "originality" of each might differ in the assessment of infringement.
In this respect, the absence of evidence of the structure and manner of operation of the Nine Database becomes significant. There was evidence that Mr Forrest and Mr Holman were each involved in transposing information into the Nine Database. However, the evidence did not indicate how the Nine Database operated to select, arrange and present that information into the "Excel" and "text" format of the Weekly Schedule (step six), or who was responsible for designing the Nine Database so as to achieve that function.
Further, while the evidence described the giving of access to information in the Nine Database ("dumping") as enabling persons with this access to view or in some cases modify the proposed programme schedule (step five), there was no evidence about how the information in the Nine Database came to be assembled in the way it was when those persons viewed it or sought to modify it. Nor was there evidence about who it was who decided that information should be assembled in this way.
The relevant issues which this situation presents are elucidated by Professor Davison in his work The Legal Protection of Databases[165] as follows:

[135]

The effect of s 14(1)(a) of the Act is that an infringement by reproduction of a work may result from the reproduction of "a substantial part of the work". The word "substantial" has been said to be "not only susceptible of ambiguity" but to be "a word calculated to conceal a lack of precision"[169]. However that may be, which of the various possible shades of meaning the word bears in a provision such as s 14 of the Act will be determined by the context[170]. With respect to s 14, that context includes the matters of development of copyright law to which reference has been made earlier in these reasons[171].
The Full Court stated that a finding of substantiality depended much more on the quality than the quantity of that which had been copied. That starting point is in accordance with authority[172]. However, the "quality" relevant in the case of a literary work, including a compilation, was said to be "the literary originality of what has been copied"[173]. That quality was to be assessed by reference to "the interest protected by the copyright". The origin of these latter two propositions in Newspaper Licensing[174] has been described earlier in these reasons[175].
Neither proposition is satisfactory and each is apt to mislead.
The proposition that in a case such as the present one looks to the literary originality of what IceTV copied, rather than to the Weekly Schedule as a whole, in answering the question whether IceTV reproduced a substantial part of the Weekly Schedule, shifts consideration to an extraneous issue. This is whether what the primary judge called the "slivers" of information may themselves be classified as original literary works. The issue requiring the comparison between what was taken and the whole of the work in suit may be distorted by a meditation, inspired by Desktop Marketing[176], upon the protection given by the Act against misappropriation of any investment of skill and labour by the author. In the present case, the temptation then is to classify the slivers each as original literary works. An important proposition may be overlooked. This is that the statutory requirement that the part of a work taken must be substantial assumes there may be some measure of legitimate appropriation of that investment.
A collateral matter should be put to one side. The case law does disclose that special difficulty has been encountered in considering the relationship between the phrase "a substantial part" in s 14(1) of the Act and the definition in s 10(1) of that species of "literary work" which is a "computer program", being:

[138]

It was in this context, of the infringement of computer programs, that in Data Access Corporation v Powerflex Services Pty Ltd[177], Gleeson CJ, McHugh, Gummow and Hayne JJ disfavoured a "but for" analysis which treated as essential for the purposes of substantiality each of the many necessary integers in a computer program, so that the presence of any one of them indicated the taking of a substantial part; such an analysis was overly protective of the interests of the owners of the copyright in that species of literary work, and overlooked the need for some process of qualitative abstraction of the material features of the computer program in question in order to determine any issue of substantiality under s 14(1) of the Act. But the special considerations that are present in cases such as Data Access are not found here. Use of the term "functionality" in compilation cases is unhelpful.
The proposition that the Court should look to "the interest" which the copyright protects invites processes of reasoning to which there applies the warning by Judge Learned Hand in Nichols v Universal Pictures Corporation[178]. This is to the effect that the more remote the level of abstraction of the "interest", the greater the risk of protecting the "ideas" of the author rather than their fixed expression. That risk appears to have been realised in the reasoning of the Full Court.
The Full Court approached the issue of substantiality at too high a level of abstraction, and in doing so tipped the balance too far against the interest of viewers of digital free to air television in the dissemination by means of new technology of programme listings. The Full Court did so by treating the issue of substantiality as dominated by an "interest" in the protection of Nine against perceived competition by Ice.
The Full Court emphasised the apparent commercial value of the time and title information in the conduct of the business of the Nine Network. On the one hand, the time and title information was a "central element of [Nine's] business as a television broadcaster" while the synopses and additional programme information were of little or no value, whether commercially or as a repository of programming information[179]. Moreover, Nine and Ice were "competitors in the sense that each was seeking to derive profit from the dissemination of the time and title information"[180].
The Act operates in the general legal milieu. Section 9(3) recognises this in specifying that the statute does not affect the operation of the law relating to breaches of confidence. No litigation alleging breach of confidence could successfully have protected the time and title information at any rate after it left the control of Nine and reached the Aggregators. None was attempted. To the contrary, the Digital Alliance submitted that this litigation was an attempt to use the copyright law to control the further dissemination of information after it had reached the public domain.
The Act also may have to be read with Pt IV of the Trade Practices Act 1974 (Cth)[181] and with any conditions from time to time imposed upon licensees under the Broadcasting Act.
(It may be noted that provision now is made, by amendments to the Broadcasting Act in 2006[182], for industry codes and industry standards respecting the provision of information for the purpose of compiling electronic programme guides[183]. Further, in the United Kingdom, s 176 of the Broadcasting Act 1990 (UK) imposes a duty to make available programme information to any publisher, subject to the settlement of terms of payment by the Copyright Tribunal[184].)
It is unnecessary to pursue any of these considerations here, save to make several points. First, evidence was not led to establish any relevant "market" in which Nine and Ice competed; nor did the evidence establish that the time and title information was of greater value (however assessed) in that market than the synopses or additional programme information. Secondly, any consideration of the objectives of competition law may favour the interests of Ice rather than Nine. The decision of the European Court of Justice in Radio Telefis Eireann and Independent Television Publications Ltd v Commission of the European Communities[185] was that reliance upon copyright law to found the refusal of the appellants to provide programming schedules of Irish and British television to the publisher of a weekly television guide was an abuse of a dominant position within the sense of Art 86 of the Treaty of Rome. Thirdly, to speculate upon matters of commercial competition as indicative of the "interest" protected by the Act distracts attention from the closer consideration required to what is now the case based upon the significance of step five and step six in the processes leading to the production of the Weekly Schedule.
The primary judge approached the issue of substantiality correctly when she stressed that the detailed and lengthy preparatory work involved in what are identified in these reasons as steps one through to four was directed to the conduct of the business of the Nine Network in broadcasting programmes which would attract viewers. Likewise the making of late programme changes, as Mr Healy explained[186].
There remained what the Full Court accepted was "the extremely modest skill and labour"[187] in setting down the programmes already selected and in taking what may now be identified as steps five and six.
If the Weekly Schedule be seen in that light, several propositions advanced by Ice should be accepted. First, it ought, in a case such as the present, and to reprise the theme of Lord Herschell LC in Leslie v Young & Sons[188], to be clearly established by Nine that, looking at the Weekly Schedule as a whole, there has been a substantial reproduction in the particular use by IceTV of the Aggregated Guides to access the time and title information.
Secondly, in assessing the quality of the time and title information, as components of the Weekly Schedule, baldly stated matters of fact or intention are inseparable from and co‑extensive with their expression. It is difficult to discern the expression of thought in statements of which programmes will be broadcast and when this will occur. If the facts be divorced from the other elements constituting the compilation in suit, as is the case with the use by IceTV of the time and title information, then it is difficult to treat the IceGuide as the reproduction of a substantial part of the Weekly Schedule in the qualitative sense required by the case law.
Thirdly, it is important also to ask whether IceTV acted as it did in preparing the IceGuide with animus furandi, to take from the Aggregated Guides the time and title information to save itself from effort on its part[189]. This invites further attention to the business plan and methods adopted by Ice and to the matter of "predictions".

[139]

Nine relied upon the decision of Whitford J in Independent Television Publications Ltd v Time Out Ltd[190]. However, the publishers of Time Out had decided to "take a short cut"[191] and there had been wholesale copying of dates, titles and times from the TV Times and the Radio Times published by the commercial and public broadcasters respectively[192].
Bennett J found that IceTV had proceeded in a very different manner. The objective of IceTV had been to start with "a clean sheet of paper" and develop an EPG without infringing third party intellectual property rights. IceTV obtained legal advice as to how this might be done and began by creating templates of the daily programming of the Sydney channels Nine, Ten and Seven ("the Sydney templates"). The author of the Sydney templates was IceTV's Content Manager, Mr Mitchell Rilett.
The Sydney templates included seven spreadsheets populated with time and title information and additional programme information for programmes broadcast by TCN‑9 on each day of the broadcast week. Nine alleged at trial that this information had been copied from the publicly available guides. However, Bennett J found that Mr Rilett created the Sydney templates by watching television over a period of three weeks in August 2004 and recording the time and title of the programmes then broadcast; his evidence of that experience and description of it as "torture" were found by her Honour to be compelling. The primary judge went on to find that Mr Rilett compared his templates with the publicly available guides in September 2004, noted a "slight variation" in the time and title information, and amended the Sydney templates accordingly.
In this Court, the alleged copying of time and title information was identified not in the creation or amendment of the Sydney templates, but in the making and updating of successive IceGuides built upon those templates. This commenced in October 2004, when Mr Rilett transposed the information in the Sydney templates into a computer database maintained by IceTV ("the Ice Database") and began using IceTV's software to compile 24‑hour guides for the commercial networks for each day of the calendar week, six days ahead of when the programmes were scheduled for broadcast.
The findings of the primary judge and the evidence supported the identification of three tasks required to populate the IceGuide schedules with time and title information for the Sydney station, TCN‑9.
Task one was to cause IceTV's software to create a "starting template" populated with time and title information copied from a past IceGuide schedule for TCN‑9 Sydney for the same day of a previous week. This was done by Mr Rilett or one of two other IceTV staff, Ms Suzanne Langford or Ms Samantha Tai. By way of example, the primary judge explained[193]:

[150]

To amend the time and title information in the starting template, Bennett J found that IceTV staff searched the Ice Database for programmes or episode titles previously included in that database. This was done by causing IceTV's software to generate an on‑screen list of available programme titles. Start times could be selected or amended using on‑screen "drop‑down boxes", while mouse‑clicking buttons marked "Revise" or "Update Show" caused the software to insert new starting times or programme titles into the IceGuide schedule. Episode titles were similarly presented by IceTV's software in a list available to the operator and available for selection for inclusion in the IceGuide schedule. If, at the time of amendment of the starting template, the programme or episode had not been previously added to the Ice Database, it could be added using IceTV's software.
The third and final task was to capture late changes to Nine's programming. The primary judge found that this was done by Ms Langford, who undertook a daily comparison of the time and title information in the IceGuide schedule with the listings in the YourTV Guide for the up‑coming 60‑hour period. Late changes were also inserted by Mr Rilett in response to information obtained from his review of a website styled Television Programming News and from messages posted by subscribers on an online forum maintained on IceTV's website.
The evidence showed the same three tasks were performed to create IceGuide schedules for other stations in the Nine Network, subject to one variation in task one. This comprised the use of a different channel within the Nine Network as the source schedule. Thus, IceGuide schedules for GTV‑9 in Melbourne were made by "predicting over" time and title information derived from the IceGuide schedule for TCN‑9 for the same day. In the expectation that the same episodes would be shown by the various stations in the Nine Network, episode titles were retained by IceTV's software where the source schedule channel was different from the destination channel. The evidence included a chart prepared by Mr Rilett documenting the relevant "source schedule" for the various stations within the Nine Network. However, for each new schedule, it remained necessary to repeat task two and cross‑check the time and title information with online, publicly available guides.
One further point concerning the making and updating of the IceGuide should be noted. This concerns the source of the IceGuide synopses. Bennett J found that the synopses appearing in the IceGuide for the Nine Network were drafted by two IceTV staff, Ms Madeleine Doyle and Ms Kiriaki Orfanos. Reference books such as Halliwell's Film & Video Guide 2002 and websites were consulted for this purpose, but Ms Doyle and Ms Orfanos were not permitted to have regard to the published guides. The primary judge found that IceTV's synopses had a different commercial purpose from that of Nine, as evidenced by the use of humour or criticism. For example, the IceGuide synopsis for the Nine programme The Footy Show (AFL) on 28 September 2006 read:

At a glance

Court

Decision date

Before

Catchwords

Source

Catchwords

Judgment (274 paragraphs)

Parties

Legislation Cited (7)

Cases Cited (48)