Nine Network Australia Pty Limited v IceTV Pty Limited

THE ISSUES 1 The main issue in this appeal is whether the primary Judge correctly rejected the claim by the appellant ('Nine') that the respondents ('Ice') had infringed Nine's copyright in its television program schedules. There is no dispute that the schedules are compilations and constitute original literary works in which Nine holds copyright. Specifically, there is no dispute that Nine holds copyright in the 'Weekly Schedules' it distributes selectively to so-called 'Aggregators' approximately two weeks before the commencement of the relevant broadcast week. However, her Honour held that Nine had not established that Ice, which provides a subscription-based 'electronic program guide' ('EPG') for television called 'IceGuide', has reproduced a substantial part of Nine's copyright works. 2 Nine's case rested on the first two columns of the Weekly Schedules (an example of which is reproduced [21] below). These columns set out, for a future broadcast week, the time slot for each program to be broadcast and the program and episode title for that time slot. (The material contained in these columns was referred to in the proceedings as 'time and title information'.) Nine claimed that Ice had indirectly copied time and title information from the Weekly Schedules. Ice had done this by obtaining time and title information from the "Aggregated Guides" compiled by Aggregators from (among other sources) the Weekly Schedules. Specifically, Nine alleged that Ice infringed its copyright in the Weekly Schedules by filling in or confirming otherwise incomplete draft programming schedules from the time and title information incorporated in the Aggregated Guides. 3 Nine claimed that it had invested very considerable skill and labour in making the programming decisions recorded in the Weekly Schedules. This skill and labour gave the compilations their character as original literary works, even though the Weekly Schedules contained a good deal of additional information. The benefit of this skill and labour was precisely what Ice had appropriated by its activities. It was not part of Nine's case that any particular skill and labour went into the form in which the Weekly Schedules recorded the time and title information or the other material set out in the various columns. 4 The relief sought by Nine included: · declarations; · permanent injunctions restraining Ice, among other things, from creating or offering IceGuide to subscribers, to the extent that it contains the Weekly Schedules or any substantial part of them, without Nine's licence; · damages or an account of profits; and · additional damages pursuant to s 115(4) of the Copyright Act 1968 (Cth) ('Copyright Act'). 5 Consistently with her Honour's holding on the question of infringement, she dismissed Nine's application. Nine's notice of appeal seeks an order setting aside the order dismissing the application. Although the notice of appeal also asks this Court to make the orders sought in the application, Nine's submissions do not address the form of relief that would be appropriate should the appeal succeed. Consequently, if Nine's appeal succeeds the matter will need to be remitted to the primary Judge to determine the form of relief to which Nine is entitled. 6 Nine argues on the appeal that the conclusion reached by the primary Judge was affected by several errors. They are said to be the following: · in determining the nature of the interest protected by Nine's copyright in the Weekly Schedules, her Honour did not pay sufficient regard to the skill and labour expended by Nine in selecting the programs to be broadcast and the times at which they should be broadcast; · her Honour incorrectly characterised the Weekly Schedules as compilations of factual information, when they in truth presented new material derived in consequence of original work performed within Nine; · in determining whether Ice had reproduced a substantial part of Nine's copyright works, her Honour had not undertaken the requisite comparison between the Weekly Schedules and IceGuide and had incorrectly focussed on material added by Ice to the material it had taken indirectly from the Weekly Schedules; and · in any event, her Honour placed too much emphasis on differences in form between the Weekly Schedules and IceGuide, rather than concentrating on the critical material taken by Ice, namely the time and title information. 7 Ice supports the primary Judge's reasoning, although it has also filed a notice of contention seeking to uphold her Honour's conclusion on a ground rejected by her. The principal contentions advanced by Ice are as follows: · her Honour correctly recognised that Nine had exercised two distinct kinds of skill and labour to produce the Weekly Schedules: skill and labour in selecting and arranging television programs for each week and skill and labour in incorporating into the Weekly Schedules information such as the classification of programs, consumer advice and synopses; · her Honour correctly regarded the first category of skill and labour as merely preparatory to the creation of the Weekly Schedules which she properly regarded as compilations of information; · her Honour correctly concluded that, insofar as Ice took time and title information from the Weekly Schedules for the purposes of preparing IceGuide, that information was insubstantial having regard to the actual extent of copying, the quality and originality of what was taken and the nature of Nine's interest protected by its copyright in the compilation; and · while it was true that IceGuide accurately listed time and title information, her Honour correctly found that this reflected the multiple sources used by Ice to check its information, many of which were not referable to the Weekly Schedules. 8 Ice's notice of contention disputes the primary Judge's finding that Ice took portions of Nine's compilation and contends that her Honour erred in finding that there was 'a relevant causal connection' between the Weekly Schedules and IceGuide. The factual basis for this contention is that Ice had no access to the Weekly Schedules themselves. Instead, it updated and completed templates for IceGuide by referring to Aggregated Guides prepared by the Aggregators to whom Nine supplied the Weekly Schedules under licence (other television broadcasters providing comparable information to the Aggregators). Ice says that the Aggregated Guides are separate copyright works and that access by Ice to a subset of the information (the time and title information), shorn of the expression and arrangement in the Weekly Schedules, could not supply the necessary causal connection with the copyright work.