Nine Network Australia Pty Ltd v IceTV Pty Ltd

1. The application is dismissed. 2. Leave to file a second cross-claim is refused. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA

INDEX INTRODUCTION.................................................................................................................... [1] Nine....................................................................................................................................... [1] The Aggregators..................................................................................................................... [3] Ice......................................................................................................................................... [4] THE ISSUES............................................................................................................................. [5] THE NINE COPYRIGHT WORK(S)..................................................................................... [10] Creation of the Nine Schedules............................................................................................. [10] Selection, arrangement and ordering of programs........................................................ [11] Preparing and distributing the Nine Schedules.............................................................. [17] Late Changes.................................................................................................................. [25] Copyright in the Nine Schedules........................................................................................... [27] Copyright in the Weekly Schedule.................................................................................. [28] Copyright in other formats of the Nine Schedules......................................................... [32] Does copyright subsist in individual columns and days of the Weekly Schedule?......... [34] The skill and labour protected by the copyright...................................................................... [45] THE EFFECT OF AGGREGATION...................................................................................... [57] HWW.................................................................................................................................. [58] Skill and labour of HWW................................................................................................ [65] Pagemasters and eBroadcast Australia.................................................................................. [67] Late Change Notices............................................................................................................ [71] Differences of look, feel and content..................................................................................... [73] Contractual arrangements..................................................................................................... [76] Are the Aggregated Guides separate and distinct copyright works?........................................ [84] THE ACTIVITIES OF ICE..................................................................................................... [94] The Ice technology, the IceGuide and its uses........................................................................ [98] Receiving the IceGuide................................................................................................. [104] The IceGuide display and uses..................................................................................... [106] The Pimp and Widget................................................................................................... [113] INFRINGEMENT................................................................................................................. [116] Creation of the initial templates............................................................................................ [120] Creation of each day's IceGuide and updating of information in the Ice Database................. [138] "Predicting it over"..................................................................................................... [139] Entering program, episode titles and synopses into the Ice Database......................... [154] Late Changes to the IceGuide...................................................................................... [157] Accuracy....................................................................................................................... [160] Review of Ice's software............................................................................................... [167] Consideration............................................................................................................... [168] Does Ice reproduce the Weekly Schedule in the course of making and updating the IceGuide?[177] Principles...................................................................................................................... [178] Consideration............................................................................................................... [186] What is the interest that Nine's copyright protects?................................................ [194] The remaining alleged infringements..................................................................................... [213] The other infringements by reproduction..................................................................... [216] The communication infringement................................................................................. [221] LEAVE TO FILE THE SECOND CROSS-CLAIM FOR UNJUSTIFIED THREATS......... [226] SUMMARY OF FINDINGS................................................................................................ [239] The Weekly Schedule is the copyright work........................................................................ [240] The Aggregated Guides are separate compilations............................................................... [242] Ice does not infringe copyright in the Weekly Schedule........................................................ [243]

Nine 1 The applicant ('Nine') decides the order in which television programs are broadcast by stations within the "Nine Network" ('the Nine Programming'). Those stations include TCN-9 Sydney, GTV-9 Melbourne, QTQ-9 Brisbane and NTD-8 Darwin. Nine also provides content and branding rights to affiliates including metropolitan stations NWS-9 Adelaide, STW-9 Perth and to regional broadcasters such as WIN Wollongong and NBN Newcastle. Nine acquires the rights to television programs which it believes will appeal to audiences. It selects dates and times to broadcast those programs with an eye to maximising viewers. It drafts or obtains short descriptors ('synopses') about the programs. Nine then records the Nine Programming in various formats ('the Nine Schedules') for distribution prior to broadcast to stations within the Nine Network, its affiliates and the viewing public. Those formats differ in appearance and content. 2 A "broadcast week" in the television industry commences on a Sunday and ends on a Saturday. Viewers are typically informed of the date and time of a proposed broadcast, together with additional program information such as program classification, consumer advice and synopses, by television program guides published prior to the broadcast of a program. Nine does not itself publish such guides.

The Aggregators 3 That task is relevantly facilitated by three third parties: HWW Limited, eBroadcast Australia and Pagemasters Pty Ltd (together 'the Aggregators'). Nine supplies the Aggregators with a weekly schedule of the Nine Programming, two to three weeks prior to any given broadcast week ('the Weekly Schedule'). The Weekly Schedule contains time and title information for one broadcast week, additional program information and synopses. The Aggregators aggregate the information provided by Nine in the Weekly Schedule with the program schedules provided by other Australian free to air television channels, namely the ABC, SBS and stations within and affiliated to the Seven and Ten networks. Television program guides with information for all free to air channels ('the Aggregated Guides') are then published in publications such as TV Week and on websites such as the Yahoo!7 TV Guide,published at ('the Yahoo7 Guide'). The Aggregators are advised by Nine of any late changes to the Nine Programming so that such changes can be incorporated into the published guides.

Ice 4 The first respondent ('Ice') provides a subscription based "electronic program guide" ('EPG') for television called "the IceGuide". The IceGuide when uploaded on subscribers' devices displays details of the television programs scheduled to be broadcast by free to air television stations, including stations within the Nine Network, for the coming 6, 7 or 8 days. It is essential to Ice's business model that those details are accurate. Ice does not, however, receive information from Nine or the Aggregators about the time, date and title of programs proposed to be broadcast by Nine. It says that it "predicts" that information for inclusion in the IceGuide based on its observations of Nine's past programming behaviour and knowledge of the television industry. Ice then "checks" its "predictions" against publicly available program guides, that is, the Aggregated Guides. If there is a discrepancy as to program title, date and time as between the IceGuide and the Aggregated Guides, Ice generally (but not always) amends the IceGuide to reflect the published guides.

THE ISSUES 5 Nine asserts that copyright subsists in the Nine Schedules as compilation literary works within the meaning of s 10(1) of the Copyright Act 1968 (Cth) ('the Act'). It submits that any doubt as to whether copyright so subsists was extinguished by the Full Court decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491. The infringement allegations are founded on the assertion that Ice appropriates the 'skill and labour of authorship' of Nine in compiling the Nine Schedules by reproducing program time, title and date of broadcast information from the publicly available Aggregated Guides. 6 Nine alleges that the IceGuide includes a close to 100% reproduction of the time and title information in the Nine Schedules, as updated by any late changes and that the activities of Ice in producing and disseminating the IceGuide involve five acts of infringement of the copyright in the Nine Schedules. The second respondent ('Ice Holdings') is said to be jointly liable for those acts of infringement. 7 The allegations are denied by Ice. Ice does not dispute that copyright subsists in the Weekly Schedule. Ice asserts that it did not (and does not) copy the Weekly Schedule in creating and updating the IceGuide. It denies taking all or a substantial part of the Weekly Schedule. It denies that Nine owns independent copyright in components of the Weekly Schedule and submits that other Nine Schedules are not relevant to the proceedings. Ice also seeks leave to file a cross-claim alleging that Nine has made unjustified threats of copyright infringement ('the second cross-claim'). An earlier cross-claim was discontinued. 8 Ice drafts its own synopses for inclusion in the IceGuide, which differ in content to those in the Weekly Schedule. There is no suggestion that those synopses infringe Nine's copyright. 9 The proceedings raise the following issues for determination: · What is the identity of the Nine work(s) in which copyright subsists? · What is the effect of aggregation on the copyright subsisting in the Nine work(s)? · Did Ice copy the Nine work(s) when it created the first templates for the IceGuide? · Do Ice's present activities infringe Nine's copyright? · Should Ice be granted leave to file the second cross-claim?

Creation of the Nine Schedules 10 The facts in issue narrowed throughout the course of the hearing and were largely agreed.

Selection, arrangement and ordering of programs 11 Nine generally broadcasts between 24 and 30 programs daily, or between 168 and 210 programs weekly, including items of news and current affairs, drama, children's programs, light entertainment and quiz programs, lifestyle and reality programs, sports programs and one-off special events such as the TV Week Logie Awards. 12 Mr Michael Healy, the Director of Programming at Nine and Ms Penny Wieland, Program Executive, describe the process of creating and recording the Nine Programming. Mr Healy and Ms Wieland make multiple decisions with respect to the selection, arrangement and ordering of the programs to be broadcast. Mr Healy explains the different factors that are taken into account in making those decisions. These factors include the acquisition of new programs locally and overseas to meet current viewer preferences and trends, audience size and demographic appeal, leading programs, competitor programming, ratings and windows in which broadcast rights are available, as well as statutory and contractual obligations. 13 Ms Wieland is primarily responsible for the daytime and off-peak period while Mr Healy works on the prime time (6:00 pm to midnight). The selection, arrangement and ordering of programs by Mr Healy and Ms Wieland take place well in advance of the dates being scheduled. It involves time spent by Mr Healy every working day and approximately 80% of Ms Wieland's working week. Other Nine employees assist with the various genres of programming, with reviewing programs and determining classifications and consumer advice. 14 Strategic changes may be made to the Nine Programming up to a few days before the date of a broadcast, depending on competitor programming. Changes are also made to the Nine Programming in response to ratings information, which is received for 40 weeks of the year and reviewed by Nine daily. The responsibility for final decisions on all issues of program scheduling for Nine rests with Mr Healy, subject to consultation with the head of the Nine Network. 15 Decisions involve consideration of the program schedule from a yearly, seasonal, weekly and daily perspective. Nine's annual planning process relates mainly to the forward planning of the acquisition of programs. Sports broadcast rights, which occur on a seasonal timetable at different times of the year, are also taken into account. The Nine Programming is then developed so as to ensure variety and balance in programming across each week, with emphasis placed on appealing to the 25-54 and 16-39 year old age groups to reflect advertising demand. Also taken into consideration is the suitability of programs in particular time slots, the requirement for children's programming and Australian content quotas. Each day in the Nine Programming is also individually developed and considered against competitor programming to maximise and retain viewers. 16 The work done and skill, labour and judgment exercised in selecting material for inclusion in the Nine Programming are directed to Nine's programming or broadcasting activities.

Preparing and distributing the Nine Schedules 17 The Nine Programming is recorded in various formats by Nine (the Nine Schedules) in preparation for internal and external distribution prior to any given broadcast week. 18 Prime time programs are selected and arranged by Mr Healy using a large notebook containing blank grids ('the Grid'). Each page represents a week of the year and is divided into seven vertical columns (one for each day of the week). Horizontal half-hour segments represent the timeslots. Once he has decided where to schedule a program, Mr Healy writes the relevant program name (or an abbreviation) onto the Grid using a pencil to permit changes and amendments. "Fixed events", such as the TV Week Logie Awards, are entered into the Grid first, followed by sporting events. Programs that are broadcast at the same time each week are then entered (for example, National Nine News) before the remaining slots are filled. 19 Daytime and off-peak programs are arranged by Ms Wieland using an Excel spreadsheet ('the Spreadsheet') which is also configured to show separate pages for each week of the year. The Spreadsheet pages have seven vertical columns representing each day of the week and are divided into 49 half-hour segments beginning at 6:00 am each day and finishing at 6:00 am the following day. During the period from 6:00 am to 3:30 pm a number of programs are episodes of serial programs. For example, at 1:00 pm on Friday 16 June 2006, episode number 10,148 of Days of our Lives was broadcast. Ms Wieland selects and enters the programs for daytime and off-peak timeslots directly into the Spreadsheet. 20 Approximately three to four weeks prior to the commencement of any given broadcast week, Mr Heath Forrest (Nine's Schedule Co-ordinator) transposes the entries in the Spreadsheet and the Grid into a third document called the "Master Paper Grid". This document is effectively a consolidated version of the Spreadsheet and the Grid. Annexure 'A' to these reasons sets out one page of the Master Paper Grid for the broadcast week commencing 11 June 2006. During the same period, the programming entries in the Master Paper Grid are entered by Mr Forrest into a program database on Nine's computer network ('the Nine Database'). The entry or "dumping" of information into the Nine Database grants access to the Nine Programming to Nine personnel outside the programming department, namely local affiliates of Nine such as NWS-9 Adelaide and STW-9 Perth. Access is not given at this stage to WIN, NBN or the Aggregators. 21 Approximately 17 days prior to the commencement of a broadcast week most of the Nine Programming for that week will have been completed; those parts that remain incomplete are marked "TBA" in the documents described above. Mr Forrest and Ms Wieland check that all available information has been included and add additional information if necessary. Mr Forrest also amends the Nine Database to reflect differences in programming between TCN-9 Sydney, GTV-9 Melbourne and QTQ-9 Brisbane. 22 The Nine Schedules are electronically produced from the Nine Database in preparation for distribution in four further formats: · The "First and Final Schedules", which provide the Nine Programming for two consecutive weeks: The Nine Programming as recorded in this format does not include synopses but does include information not found in some other formats, such as internal catalogue codes. The catalogue codes are used by Nine to identify and retrieve programs for the purposes of broadcasting. A copy of one page of the "First and Final Schedules" for the broadcast week commencing Sunday, 11 June 2006 is Annexure 'B' to these reasons. · "Excel" and "text" formats: The Weekly Schedule is disseminated in these formats. A copy of one page of the Weekly Schedule for the broadcast week commencing Sunday, 11 June 2006 in Excel format is Annexure 'C' to these reasons and a copy of one page of the Weekly Schedule for the same broadcast week in text format is Annexure 'D'. The Excel and text format versions are in tabular form. They include program synopses in the final column. · The "Nine Program Guide": The Nine Program Guide is a printed version of the Nine Programming for a single broadcast week produced from the Nine Database. It is in tabular form, similar in appearance to the text format and includes synopses in the final column. 23 About 17 days before any given broadcast week, the Master Paper Grid is distributed by fax to all stations within the Nine Network and to other stations that obtain Nine content. The Excel and/or text formats of the Weekly Schedule are also sent to Pagemasters. A few days later, the Nine Program Guide is distributed to various departments and people within Nine, together with hard copies of the First and Final Schedules. At that time Excel and text formats of the Weekly Schedule are emailed to HWW and eBroadcast. 24 The Excel and text formats of the Weekly Schedule are the only version of the Nine Schedule sent to the Aggregators and, through the Aggregators, to the public. They are in weekly format and include program synopses.

Late Changes 25 Mr Healy and Ms Wieland continue to amend the Nine Programming after distribution of the Weekly Schedule to the Aggregators. Nine advises the Aggregators of changes or additions to the Nine Programming by "Late Change Notices". The Late Change Notices contain information that is not included in the Weekly Schedule and may include movie titles not advised for strategic reasons. The Weekly Schedule may simply have 'DETAILS: TO BE ADVISED' in that timeslot. Late Change Notices are typically issued by Nine every week and may be issued up to and including the day on which a program is scheduled to be broadcast. They may notify a change to program line-up, or program information such as classification or duration. An example of a Late Change Notice for 11 May 2006 is Annexure 'E' to these reasons. Ms Wieland exhibits to her affidavit the Late Change Notices issued by Nine between 1 April 2005 and 10 August 2006 in electronic form. There were in excess of 600. 26 The Aggregated Guides may have been published by the time of receipt of a Late Change Notice. The Aggregators update the Aggregated Guides from time-to-time to reflect changes as notified by the Late Change Notices.

Copyright in the Nine Schedules 27 Ice accepts that the creation of the Nine Schedules gives rise to a literary work in which copyright subsists under the Act. At issue is the identity of the compilation(s) of program information in which copyright subsists and against which Ice's activities are to be assessed for the purposes of infringement. Nine accepts that the Nine Programming does not attract copyright until it is reduced into a material form. That would include the Weekly Schedule and the other formats of the Nine Schedules, such as the Master Paper Grid, discussed above. The Nine Programming may also be recorded as a collocation of words and symbols in the Nine Database. Ice does not have access to the Nine Database.

Copyright in the Weekly Schedule 28 There is no dispute that a compilation is a literary work for the purposes of the Act. That is expressly provided for in s 10(1) of the Act. The Weekly Schedule in Excel or text format, as a compilation, comes within the description of a literary work as explained by Lindgren J in Desktop at [160]. It is the result of the operation, action or labour of a person or other agent and a product of exertion, labour, judgment, skill or activity. I shall refer, generally, to this compendiously as "skill and labour". 29 Section 32 of the Act relevantly provides for the subsistence of copyright in an original literary work. Desktop establishes that a compilation of factual information may be an original literary work and attract copyright protection under the Act if the author 'has exercised skill, judgment or knowledge in selecting the material for inclusion in the compilation...or in presenting or arranging the material' or 'has undertaken substantial labour or incurred substantial expense in collecting the information recorded in the compilation' (Desktop at [409] per Sackville J). The preparatory skill and labour to bring about the Weekly Schedule includes the skill and labour of the selection of programs, their placement and ordering in the Nine Programming and the adjustment of the programs to allow for inclusion of special events and differing length of time of those special events and of movies. Ice accepts that sufficient skill and labour is undertaken in the creation of the Weekly Schedule so as to render it an original literary work. It will be necessary later to consider the nature and extent of that skill and labour in some detail. 30 A literary work is deemed published if 'reproductions of the work…have been supplied (whether by sale or otherwise) to the public' (s 29(1)(a) of the Act). Subject to the Act, copyright subsists in unpublished (s 32(1)) or published s (32(2)) original literary works. There is no suggestion that the authors of the Weekly Schedule are other than qualified persons (s 32(1)(a); s 32(2)(d)). 31 Ice admits by its amended defence that copyright subsists in each Weekly Schedule prepared and distributed since 2001. There is no need to address Nine's submission that copyright subsists in the whole body of its programming schedules since 1 November 1956. The activities of Ice relevantly began in 2004. Whether or not those activities constitute an infringement is to be determined by reference to the copyright subsisting in the Weekly Schedules published since then. It is those works, in which Nine has copyright, that Ice is alleged to have copied directly. The Weekly Schedule is the only compilation produced by Nine that is relevant for the purpose of assessing any copying and any taking of Nine's skill and labour.

Copyright in other formats of the Nine Schedules 32 Other formats of the Nine Schedules vary in form and content from the Weekly Schedule. For example, the First and Final Schedules are in landscape form and include internal catalogue codes. They do not include the synopses. 33 The only compilations to which Ice has had access for the purpose of creating, updating and disseminating the IceGuide are the Aggregated Guides. They are produced, in the manner described below, by the aggregation of the Weekly Schedule with program information provided by other networks. There is no suggestion that Ice or the Aggregators has or had access to or have reproduced the Master Paper Grid or the First and Final Schedules. These schedules may attract copyright protection from, for example, unauthorised copying by a person within the Nine Network or its affiliates. That is not, however, relevant to these proceedings.

Does copyright subsist in individual columns and days of the Weekly Schedule? 34 The Weekly Schedule contains the time and title information for a seven day broadcast week. It gives program starting times, program titles and, where relevant, episode titles for each day. The Weekly Schedule also contains additional program information, including whether the program or episode is a repeat or live, format information (for example, 'WS' for widescreen and 'HD' for high definition), the classification (for example 'PG' for parental guidance, 'M' for mature), consumer advice information (for example 'Frequent Course Language [L]') and program or episode synopses. The synopses have a literary element. 35 The information included in the Weekly Schedule is set out in columns for each day (see, eg Annexure C). The first two columns comprise program time and title information. The third and fourth columns comprise additional program information. The fifth and final column contains the synopses. The arrangement of the Weekly Schedule is in a particular way: · as a broadcast week from Sunday to Saturday under each "day"; · as a day, from 6:00 am to 5:59 am the next day; · in tabular form; and · in columns, with each column containing certain information as described above. 36 Nine asserts the subsistence of copyright in three literary works: (1) a compilation of program time and title information only; (2) a compilation of program time, title and additional program information; and (3) a compilation of program title and additional program information, together with the synopses issued by Nine. Nine relies on two alternative editions of these works: a daily and a weekly edition. The primary compilation on which Nine relies is the daily compilation of program time and title information only. Ice submits that to construe daily or weekly compilations of time and title information, without synopses, as copyright literary works is to adopt a '[r]ussian doll' approach of 'looking inside a copyright protected compilation for some smaller sub-set of the information and awarding it the status of an independent copyright compilation'. 37 In determining the subsistence of copyright, it is necessary to consider works such as anthologies and compilations as a whole (Desktop at [99], [152] and [160] per Lindgren J; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273). In Ladbroke, for example, an argument that copyright attached to individual components of the compilation was rejected by the House of Lords (276-7 per Lord Reid, 284 per Lord Evershed, 285 per Lord Hodson and 291 per Lord Pearce). The relevant compilation was a fixed odds football betting coupon, issued weekly. Their Lordships said that the whole coupon, there considered in the context of a consideration of the originality of the compilation, was to be treated as a single compilation. 38 In Network Ten Pty Limited v TCN Channel Nine Pty Limited (2004) 218 CLR 273 at [75], McHugh A-CJ, Gummow and Hayne JJ considered that 'a television broadcast' for the purposes of s 87 of the Act included the programs 'put out to the public, the object of the activity of broadcasting, as discrete periods of broadcasting identified and promoted by a title'. Their Honours rejected the notion that any image or sound broadcast by way of television in the course of those programs satisfied the statutory description. This suggests that the manner in which an author presents a copyright work may assist in determining what that work is. 39 Section 10(1) of the Act relevantly defines a literary work to include 'a table, or compilation, expressed in words, figures or symbols'. The work that Nine relevantly produces is the Weekly Schedule. It is that work that is disseminated to the Aggregators. The compilation is expressed in words, figures and symbols that describe, in their totality, time and title information, additional program information and the synopses for a complete broadcast week. 40 The first two columns of the Weekly Schedule, the time and title information, although part of the whole compilation, are not purveyed by Nine and have not been shown to have any commercial value to Nine or the Aggregators. The evidence establishes that the synopses, which can be said to contain the "literary component" of the Weekly Schedule, require time and attention, are important and of commercial and promotional significance. Mr Healy states that he sees them as being a form of promotion for new programs. Nine considers it important that the synopses included within the Weekly Schedule are correct. 41 Nine submits that, were it to create and publish a daily schedule consisting only of time and title information, that would be a copyright protected compilation under the Act. However, that is not what the Weekly Schedule is. The Act provides for the subsistence of copyright in compilations of information, not mere information per se. The fact that copyright may subsist in the Weekly Schedule as a whole does not mean that it attaches to the individual facts referred to or the component parts therein (Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479per Latham CJ at 498 and Dixon J at 511). 42 Nine accepts that a proper identification of the copyright work takes account of the way in which the copyright owner packages or presents its work. Nine submits, however, that the identification must take account of the way in which Nine knows the work is going to be delivered to the consumer. Nine relies upon the fact that the published Aggregated Guides, in print and electronically,discard or hide synopses to varying degrees, while the time and title information always appears. It submits that its intention is that the Weekly Schedule 'be published [by the Aggregators] with primary emphasis on the time and title information, and on a daily basis, especially in the digital environment'. However, the fact that a reader may make use of a part of the compilation does not of itself change the nature of the copyright which subsists in the Weekly Schedule an original literary work. That compilation, as supplied to the Aggregators, is not limited to time and title. Nor is it limited to just one day of the relevant broadcast week. 43 Each of the sets of information contained in the Weekly Schedule, including the days in the broadcast week, the additional program information and the synopses, are a part of that compilation. The purpose of the Weekly Schedule is to impart the totality of that information to the Aggregators and, in turn, the public. Nine's operational activities are, as Ms Wieland agreed, 'geared to [a] week to week basis'. The Weekly Schedule, built up each week by Mr Healy and Ms Wieland, inevitably includes the synopses and the additional program information. These, in turn, are an integral part of the relationship between the information in and the design of the Weekly Schedule. The Weekly Schedule is the only relevant work to leave Nine. It is the work sent to the Aggregators. It is, with all of the information it includes, the way in which Nine, for good commercial reasons, presents the collocation of information. The totality of the information there included is necessary because it is required by the Aggregators and is also provided to the Aggregators by Nine's competitors for the purposes of the Aggregated Guides that are made available to the public. 44 Nine can claim copyright in the Weekly Schedule. It cannot claim copyright in the components of the Weekly Schedule as if they are separate compilations. They are not.

The skill and labour protected by the copyright 45 As noted, s 32 of the Act provides for the subsistence of copyright in original literary works. The test of originality is whether the work was not copied, but originated from the putative author (Desktop at [160] per Lindgren J). Copyright in a factual compilation is infringed where a person reproduces the copyright work or a substantial part of that work. In this context, '[s]ubstantiality is…determined by reference to the originality of that part of the work taken by the alleged infringer' (Desktop at [409] per Sackville J). It follows that, while the subsistence of copyright in the Weekly Schedule is accepted, an understanding of the nature and extent of Nine's skill and labour of authorship of the Weekly Schedule is fundamental to the question of infringement. 46 The extent of an author's contribution to the making of a factual compilation is a question of fact and degree (Desktop at [160]). In this case, there are two sets of skill and labour exercised by Nine and its employees in the creation of the Weekly Schedule. First, the skill and labour of selecting and arranging the programs to be shown on Nine to attract viewers to programs in the different timeslots and to meet competitors' programs. For the purposes of these proceedings, this is the "antecedent" or "preparatory" skill and labour in the sense discussed in Ladbroke at 287-8 per Lord Hodsonand Desktop at [132] and [160] per Lindgren J, [371] and [409] per Sackville J. Secondly, there is the skill and labour of drafting the synopses, selecting and arranging the additional program information such as classifications and consumer advice and recording, weekly, all of the information into documentary form, the Weekly Schedule. 47 Ice accepts that copyright subsists in the Weekly Schedule by virtue of the skill and labour in the scope of selection of programs, the decision to move or replace existing programs, the adjustment of times, program changes, the mode of expression and in the arrangement of the information by Nine. The work of Mr Healy and Ms Wieland and their colleagues at Nine in preparing each Weekly Schedule is not in dispute. Each Weekly Schedule "emanates" from them (Desktop per Sackville J at [396]). 48 Relatively little information about the preparation and inclusion of synopses by Nine was included in Nine's evidence. Nine devotes skill and labour to producing and preparing synopses for inclusion in the Weekly Schedule. It emerged in cross-examination that Mr Holman, Mr Forrest and occasionally Mr Healy draft synopses for inclusion in the Weekly Schedule. Synopses are also obtained from the producers or publicists for some programs. The synopses are entered into the Nine Database and change each week. They are reviewed by Mr Holman and Ms Wieland before publication of the Weekly Schedule. Ms Wieland may instruct Mr Holman to make amendments to correct typographical or grammatical errors, or to change the description of a program or episode. 49 In T R Flanagan Smash Repairs Pty Ltd v Jones (2000) 102 FCR 181, Hely J observed that copyright may even subsist in compilations that consist entirely of existing material. Originality may lie in the selection or arrangement of such material 'provided that sufficient skill, judgment and labour was involved' (at [29]). Any of the latter three may be sufficient for the work to be original (Desktop per Lindgren J at [159]). 50 The author of a compilation does not acquire copyright in the facts that have been published. The facts do not originate from the author. If the selection or arrangement of the facts involves sufficient skill or labour then the form of selection or arrangement is protected. If there is sufficient work done or expense incurred in gathering the facts, that is also protected (Desktop at [313] per Sackville J citing the primary judge, Finkelstein J in Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2001) 181 ALR 134 at [64]; see also Desktop at [409] per Sackville J). 51 In Desktop, copyright attached to the compilation by reason of the labour of collecting, verifying, recording and assembling the data and not by reference to the form of the compilation, the alphabetical manner of presentation of the data. The former but not the latter was what originated from the putative author (see, eg Desktop at [438] per Sackville J). In that case, a telephone directory of subscribers in alphabetical order did not permit selection in ordering or expression of the information. Nine submits that, similarly, it is the collocation of information in the Weekly Schedule that is protected. It is the selection of things to be shown in chronological order, as opposed to the order itself, that constitutes the relevant skill and labour to be protected. There must be copying and sufficient resemblance but in such a case, form is not important (Desktop at [223] per Lindgren J). Nine relies on the fact that copyright protection is medium and technology neutral and that is provided for in the Act (eg, s 21(1A) and s 24). Nine submits that the mere input of material into a database cannot deprive the author of copyright protection. 52 The skill and labour involved in making a factual compilation is likely to vary in each case. As described by Ice, pieces of information are brought together; the selection of that information to the exclusion of other items and the association of pieces of information, one with the other in a line or table creates an intelligible relationship between the pieces of information. The usefulness of the pattern created by the compiler is achieved by the choices that were made and judgment exercised about the individual pieces of information and the relationship between them. There is sufficient skill, judgment and labour in the selection of information and in the mode of expression of the Weekly Schedule, in the presentation of the data after the preparatory work of program selection and arranging is done, to attract copyright protection in that arrangement and presentation. As will become apparent, there is scope for variance in the content of synopses, the selection of additional program information and the overall manner of presentation of the compilation as a whole. The detail of the underlying subject matter, the work in choosing the program for each timeslot is not relevant to the compilation once the "timetable" is prepared, much in the same way that the history of the rolling stock of a rail carrier is not relevant to a train timetable. 53 Infringement of a factual compilation is tested by reference to the interest which the copyright is intended to protect (Desktop at [223] per Lindgren J). In Desktop, that interest was the labour and expense of gathering together in one place the details of all the members of the given universe of all telephone subscribers in a region - the skill and labour in collecting, extracting and verifying the data compiled. Although the constituent parts of the resulting compilation of those names in alphabetical order are inevitably arranged in the same way, the compilation was thereby protected. 54 Where there is skill and labour not only in the obtaining or collection of the material but also in the form of arrangement, or where there may be more than one arrangement of the obtained material, it does not follow that any form of arrangement will infringe. Cambridge University Press v University Tutorial Press (1928) 45 RPC 335 is illustrative of this principle. In Cambridge, there was no infringement of a collection of 13 essays where the collection was included in a later work with an additional seven essays, in different order and with different notes and introductions. 55 Nine relies on what it describes as the high level of protection in Australia afforded to 'industrious collection[s] of facts' or'"sweat of the brow" compilations organised in an orthodox or natural manner (cf the position in the United States of America as outlined in Feist Publications Inc v Rural Telephone Service Co Inc (1991) 499 US 340). Nine submits that the preparatory skill of the thinking and the planning and the skill of setting down the program time and title in material form as a compilation are not to be separated. That may be the case where, as in Desktop, the skill and labour was in the collection of the data and the form of the compilation followed from that collection and the nature of the work. It does not follow where the skill and labour of collection of information was preparatory to the further exercise of skill and labour of creation of the arrangement of that information in the Weekly Schedule. Nine's submission also ignores the correct characterisation of the skill and labour employed in the creation of the Weekly Schedule, as the arranging in a single document of not only the order of the programs and their time and title which followed from the creation of the Nine Programming, but also the additional program information and the synopses and the arrangement of the different sets of data. 56 Accordingly: (a) Where sufficient skill and labour is expended in gathering the material for inclusion in the compilation, but not in the form of presentation or arrangement of the material because the form is dictated by the nature of the material, that skill and labour is protected. This was the relevant skill and labour protected in Desktop. (b) Where the form of presentation or arrangement of a compilation is a product of the skill and labour of the author, it is that form that is protected. (c) Copyright subsists in the Weekly Schedule as an original work by reason of both "types" of skill and labour.

THE EFFECT OF AGGREGATION 57 As I have said, the Weekly Schedule is not issued to the public. It is relevantly sent to HWW, eBroadcast and Pagemasters, the Aggregators who aggregate the information therein with comparable information obtained from other television broadcasters, from 17 (Pagemasters) to 14 (eBroadcast and HWW) days before the start of the broadcast week. The Aggregated Guides are published in: · print (eg, magazine TV Week and newspaper The Sydney Morning Herald); · online (eg, ('the YourTV Guide')); · mobile phone content services (eg, the Vodaphone Mobile Phone Guide); · the Channel 4 Digital Guide; and · an EPG provided by Foxtel to its subscribers ('the Foxtel Digital Guide').

HWW 58 HWW receives the Weekly Schedule from Nine pursuant to an agreement made in December 2003 and amended in May 2005 ('the HWW Agreement'). HWW aggregates the program information of all free to air broadcasters into a more merchantable product. It is part of HWW's business model that it supply aggregated information. Mr Paul Marshall was the Chief Executive Officer of HWW from August 2002 until shortly prior to the hearing of these proceedings. I accept Mr Marshall's evidence that there is no paying market for information of what is intended to be broadcast on Nine alone. The process of aggregation involves HWW receiving information on a weekly basis from 257 channels. This includes over 100 free to air channels, of which five are part of the Nine Network and, Nine contends, others are affiliates. The data sets provided to HWW by the television channels vary between channels. HWW extracts program information using a proprietary software application and uploads the information from the respective schedules into its database ('the HWW Database'). The HWW database has 31 separate fields of information for each program, only some of which (14) are populated with information which emanates from the Weekly Schedule. The 31 separate fields for each program are: '[1] Channel ID, [2] Channel Name, [3] Event ID, [4] Date, [5] Time, [6] Program ID, [7] Title, [8] Preamble, [9] Episode title, [10] Synopsis, [11] Genre, [12] Sub Genre, [13] Year, [14] Country, [15] Language, [16] Director, [17] Cast, [18] Classification, [19] Consumer Advice, [20] Episode Number, [21] Closed Captions, [22] Widescreen, [23] High Definition, [24] Colour, [25] Repeat, [26] New Episode, [27] Final, [28] Live, [29] Premier, [30] Series Return, and [31] Duration.' 59 The data received in the Weekly Schedule are "separated" and entered into the relevant HWW fields. Fields not filled automatically with information provided by the networks are filled by a default mechanism operating on HWW's programming system. Examples of fields of information not provided by Nine but populated by the default mechanism include genre and duration for programs other than movies. HWW then conducts over 60 checks of the data contained within the fields. Where those checks show discrepancies in the data, manual sub-edits are conducted by HWW staff. HWW checks the data for spelling, grammar, consistency and completeness. Corrections made by HWW's content team include the deletion of swear words, superlatives or defamatory material from the synopses. Such amendments are made according to general rules which HWW applies to data received from all channels. 60 HWW disseminates the information in the Weekly Schedule for aggregated publication in the YourTV Guide on HWW's own website. It also disseminates program listings information to third party clients for publication by them in other Aggregated Guides. 61 The YourTV Guide comprises 9 days of program listings (today, the two previous days, and the following six days) and includes a standard display of channel name, broadcast time and date, program and episode titles, program genres, instance information (eg, premiere, repeat, final, live etc), program duration, classification, consumer advice and synopses. Updates occur each day at approximately 1:45 am. Viewers can access the YourTV Guide in aggregated or single network format. Synopses are not visible when the guide is viewed in aggregated format but become visible in a separate pop-up window when the user mouse clicks on the name of the program. The YourTV Guide also displays a copyright notice. That notice states that HWW publishes the aggregated TV program listings 'under licence from the TV channels' and that the various non-aggregated TV guides 'have many copyright owners', including the Nine Network. 62 Clients who receive aggregated program listings data from HWW publish that information in television guides online (eg, the News Interactive website at ), as part of their mobile telephone services (eg, Telstra, Vodaphone and Optus) and, in the case of Foxtel, in an EPG (the Foxtel Digital Guide). HWW provides different aggregated program listings information to its clients, depending on their specific requirements. In the case of some clients, entire online television program websites have been developed by HWW. 63 One client of particular relevance to these proceedings is Yahoo Australia & NZ Pty Ltd ('Yahoo'). HWW supplies Yahoo with program listings information pursuant to a written agreement ('the Yahoo Agreement') on a rolling 5 business day feed for publication in the Yahoo7 Guide. As it wants the Yahoo7 Guide to have its own "look and feel", Yahoo takes only listings data from HWW. Television program listings are visible for eight days in advance in the Yahoo7 Guide. As with the YourTV Guide, program synopses are visible but only when the user mouse clicks on the name of the program. By way of example: Mouse clicking, where indicated, would then cause a synopsis to appear in a separate pop-up window for The Apprentice. 64 The Yahoo7 Guide includes links to the copyright notice displayed on the YourTV Guide and states 'Copyright © yourTime 2006'; 'Copyright © 2006 Yahoo! Australia & NZ Pty Limited' and 'Copyright © HWW Limited'.

Skill and labour of HWW 65 A team of approximately ten HWW staff members work on the provision of HWW's television content and program data management services and the compilation of its own aggregated program guide, the YourTV Guide. This involves: · HWW receiving the information from the schedules provided by the various free to air networks (one of which is the Weekly Schedule). · HWW "separating" the data contained in those schedules into the relevant HWW fields. This is done by a software application that has been written by HWW specifically for each network's unique data. · Adding fields of data to those provided by the television networks (in the case of Nine, information may be added to 17 data fields; in some cases the field will simply record a null (rather than technical) value). · Aggregating the different data sets, which vary from time to time for each individual program broadcast by the 100 or so free to air television channels. · Updating the YourTV Guide and its customers with late changes issued by the networks. · Customising guides and/or content feeds to suit particular customer specifications. · Distributing content feeds to individual customers at different times as required. For example, Yahoo requires its feed on a rolling 5 business day basis and also receives intra-daily feeds where there are program changes. 66 Mr Marshall's evidence, which I accept, is that HWW does not add much data to those received from the networks. HWW does, however, make a lot of corrections. It also conducts research where data are missing in order to fill incomplete (null) fields, such as genre or duration. HWW's "Ingestion Manager", Ms Janet Cottee, explained that not every incomplete field will be filled; depending on the client's requirements, data may be disseminated with a default value. For example, the default for field '[15] Language' is English. The development of automated systems providing for greater efficiency is, according to Ms Cottee, the result of 'six years worth of development work'.

Pagemasters and eBroadcast Australia 67 The evidence of the activities of Pagemasters and eBroadcast is less detailed than for HWW. 68 Pagemasters provides aggregated program guides to newspapers and print publications such as TV Week. It receives the Weekly Schedule pursuant to an unwritten arrangement which has been in place with Nine since approximately 1994. Prior to that date, Nine delivered the Weekly Schedule directly to print media publishers who, in turn, provided it to Pagemasters for reformatting. Nine began delivering the Weekly Schedule directly to Pagemasters in around 1994, for distribution efficiency. 69 eBroadcast Australia distributes an aggregated online program guide which is published on websites such as ('the OurGuide') and . Nine provides the Weekly Schedule to eBroadcast pursuant to an agreement dated July 2004 ('the eBroadcast Agreement'). 70 The evidence of the activities of the Aggregators was primarily based upon the activities of HWW and the submissions as to aggregation were based on that evidence. Where I refer to the activities of the Aggregators, I refer to the activities of HWW, as modified where appropriate by the evidence of the activities of the other Aggregators.

Late Change Notices 71 Nine declines to include the information the subject of Late Change Notices in the Weekly Schedule sent to the Aggregators. Nine acknowledges that the appropriation of the information in a Late Change Notice is not, on its own, an appropriation of the skill and labour of authorship of the compilation. Nine submits that the late changes are 'corrigenda, revisions, or emendations of a subsisting larger work'. However, it is the skill and labour of the Aggregators that is engaged to insert that information into the Aggregated Guides. There is no assertion by the Aggregators of a taking of their skill and labour. 72 In the alternative, Nine characterises the late changes as divorced from and separate to the act of revising the underlying copyright work but as attracting their own copyright over a week-long period. While that information is a relatively small quantitative part of the totality of information, it is qualitatively important for Nine. As already noted, such information may be withheld from the Weekly Schedule for competitive reasons. However, Ice does not access the Late Change Notices. Ice refers to the information as to late changes when it accesses the Aggregated Guides. The Late Change Notice is no part of the Weekly Schedule. It is merely a notice or, over the week, a series of notices. If there is no copyright in news as such but only in the form in which it is expressed (Walter v Steinkopff [1892] 3 Ch 489), it follows that there is no copyright in the subject matter of the Late Change Notices. Further, the Late Change Notices are not themselves incorporated into the Aggregated Guides but only the information that they contain.

Differences of look, feel and content 73 A simple visual comparison of the Yahoo7 Guide and the YourTV Guide with the Weekly Schedule in Excel and text formats confirms that there are significant differences of "look, feel, and content" between those guides and the Weekly Schedule. For example: · The information in the Yahoo7 Guide and YourTV Guide is not selected, expressed or arranged in a broadcast week; it is in daily format. · The time and title information is arranged in a horizontal grid rather than vertical columns. The synopses and some of the additional program information, although present, is not set out in the grid. That information only becomes visible when selected in a pop-up window. · A "day" is expressed as a calendar day rather than from 6:00 am to 5:59 am the next day. · Program finish times, duration and genre are displayed in the Yahoo7 Guide and the YourTV Guide. This information, save for the genre of movies, is not included in the Weekly Schedule. · The YourTV Guide discloses the program country and links to official program and related websites. · The YourTV Guide discloses, where applicable, the program cast. · Closed captions, widescreen and high definition are not expressed by abbreviations in the YourTV Guide and the Yahoo7 Guide. 74 It would seem that the synopses included in the Weekly Schedule are in most cases incorporated in substantially the same or abbreviated form in the Aggregated Guides. A comparison of the program synopses as included in (relevantly) the Weekly Schedule, the YourTV Guide, the Yahoo7 Guide and OurGuide for a randomly selected day (4 October 2006) showed that OurGuide had the same synopses as the Weekly Schedule (save for two shortened synopses). HWW made minor edits to the synopses provided by Nine, which were reflected in the YourTV Guide and two other guides sourced from HWW, including the Yahoo7 Guide. 75 Nine first contended that the only changes to the Weekly Schedule are authorised by Nine and carried out by HWW and its recipients in an "amanuensis-type" role or as a "scribe". Nine later conceded, however, that it is not simply done by HWW as a "scribe".

Contractual arrangements 76 Nine submits that HWW simply puts 'a layer of fresh copyright' on the revised Weekly Schedule which is assigned back to Nine when, on instructions from Nine, HWW incorporates, on a running basis, the Late Change Notices. The submission is elucidated by reference to the terms of the HWW Agreement. 77 Nine is contractually bound to supply HWW with 'Nine Listings Content' under the HWW Agreement for each '7 day period commencing on Sunday and ending Saturday' within the term of the agreement. The HWW Agreement relevantly defines "Nine Listings Content" to mean: 'a list of television programs prepared by or for Nine which provides Program Information about the television programs which are scheduled to be Broadcast by Nine…and includes: (a) the Program Information; (b) separate from the Program Information, the format in which Program Information is presented or arranged in the list…' (emphases added) "Program Information", in turn, is defined to mean 'information about a television program (which may include, for example, the program's title and identification or description of actors)', the intended date and time of broadcast, classification information and 'any other information which may assist a potential viewer in selecting the television program for viewing'. This would include additional program information and the synopses. 78 The Weekly Schedule, including the manner and form in which it is presented, would fall within the definition of Nine Listings Content. HWW is relevantly licensed under the HWW Agreement to "integrate" the Nine Listings Content with third party content to create Aggregated Guides, subject to certain conditions. Under the HWW Agreement, HWW owns all intellectual property rights in the Aggregated Guides created by it, subject to: · HWW acknowledging that all applicable intellectual property rights in the Nine Listing Content are owned by Nine; and · HWW assigning to Nine all rights in edits made to the Nine Listing Content. This would include amendment to include the information in the Late Change Notices. Under the HWW Agreement, HWW may supplement the Nine Listings Content with additional information, such as movie or program reviews. Nine does not acquire any copyright in such additions. 79 The fact that Nine retains ownership of rights in the Nine Listing Content under the HWW Agreement does not mean that it owns copyright in the time and title information included in the Aggregated Guides. The relevant compilation produced by Nine that is protected by the Act is the Weekly Schedule. For the reasons earlier given, neither the time and title information itself nor the Late Changes Notices are an original literary work within the meaning of the Act. Nine may retain ownership of the Weekly Schedule under the HWW Agreement but the copyrightwhich vests in any aggregated guide created by HWW is the property of HWW. 80 The provisions of the eBroadcast Agreement as to copyright ownership are in relevantly the same terms as the HWW Agreement, save for one matter. There is no express provision that Nine does not acquire copyright in additions. 81 The Yahoo Agreement between HWW and Yahoo provides that HWW owns or is licensee of all rights, title and interest in the content provided to Yahoo for display in the Yahoo7 Guide. No right of ownership of that content is conferred on Yahoo. Yahoo does, however, retain copyright in the "look and feel" of the Yahoo7 Guide. 82 A confidential agreement between Pagemasters and a third party for the supply of aggregated 'TV Listings pages' was also in evidence. [This sentence has been removed to preserve confidentiality]. 83 According to Ms Wieland, no one at Nine is presently charged with the responsibility of supervising the output of HWW, Pagemasters or eBroadcast or their respective clients.

Are the Aggregated Guides separate and distinct copyright works? 84 It is common ground that Ice has regard to aggregated television guides when updating the IceGuide, in particular: (1) The YourTV Guide; (2) The Yahoo7 Guide; and (3) The OurGuide. 85 The use that Ice makes of the aggregated compilations is considered later. 86 Nine relies on the fact that, after the Weekly Schedule is aggregated by HWW and updated by the Late Change Notices under licence, 'copyright in the consolidated version of the [Weekly Schedule]' reverts to Nine. Nine asserts that the Aggregators are merely "sub-publishers". However, Nine accepts that, while the "sub-publishers" publish time and title, they have a "level of determination" that they apply as to whether they link time and title information with additional information or not. Indeed, that is somewhat of an understatement when one considers the activities of HWW. Nine relies upon this to support its submission that "time and title" is a candidate for independent copyright protection. 87 Nine accepts that the Aggregators use information additional to the Weekly Schedule. Nine also accepts that the ultimate presentation of the information depends on the style of publication of the Aggregators or their clients. 88 Professor James Lahore and Warwick Rothnie, Copyright and Designs (Butterworths, subscription service) at [6040] describe a compilation as 'a work formed by the collection and arranging together of pre-existing materials, or of data that are selected, co-ordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship'. Recognising that the definition of a "collective work" in the Act only has statutory force in relation to works made before 1 May 1969, the authors contrast a compilation and a collective work as defined in s 204(2) of the Act. That definition is: 'collective work means: (a) an encyclopaedia, dictionary, year book or similar work; (b) a newspaper, review, magazine or similar periodical; or (c) a work written in distinct parts by different authors, or in which works or parts of works of different authors are incorporated.' (original emphasis) 89 Compilations include collective works but they are conceptually different in scope. In the latter but not the former, the contributions may themselves constitute separate and independent works produced by different authors, in addition to the authorship of the collection as an original work (at [20,010]). More than one copyright may subsist: the copyrights of the authors of individual contributions and the copyright of the arranger or publisher of the work as a whole. Where a compilation is not a collective work, 'the compiler is in general the sole author of the compilation as an original work' (emphasis added) (at [20,010]). Neither Nine nor Ice characterised the Aggregated Guides as "collective works". This is understandable in the statutory context. However, irrespective of the terminology, this accords with the concept that Nine relies on in submitting that the fact of aggregation does not destroy or affect Nine's copyright in so much of the Weekly Schedule as is incorporated in the Aggregated Guides. 90 Once HWW works with the individual compilations it receives from the various networks to vary and add to the information, each compilation is effectively "de-compiled" and a new compilation is produced. That, too, necessarily includes not only the information received from Nine but also the information from the other free to air channels. This is not merely a change in form or medium. It is a fundamental change in the nature and content of the compilation itself. The aggregated compilations of listings information produced by HWW set up more complex and subtle relationships between the information they contain. The same may be said of the other Aggregators. While I accept that HWW assigns back to Nine any changes to the Nine Listings Content it is conceded that the new compilation is owned by HWW. The same position applies under the eBroadcast Agreement. 91 The process of aggregation does not "destroy" Nine's copyright in the Weekly Schedule. The Weekly Schedule remains a copyright work but it is separate and distinct from the Aggregated Guides, which are themselves original literary works and copyright protected compilations. The Aggregated Guides are: · different commercial products to non-aggregated schedules. Users of the Aggregated Guides may elect to view program listings information in a single station format with, for example, the YourTV Guide or the Vodaphone Mobile Phone Guide. However, that is the choice of the user of the aggregated guide. The Channel 4 Digital Guide chooses to present time, title and classification information only. That is not what Nine chooses to present to the Aggregators in the Weekly Schedule. · the product of the expenditure of skill and labour by content aggregators (such as HWW) and certain customers (such as Yahoo) in the creation and maintenance of Aggregated Guides which themselves attract copyright protection. · customised compilations for publication on the internet, with changed style and format significantly different from that of the Weekly Schedule so as to give rise to independent and claimed (as set out in copyright notices) copyright protection. 92 Ice accesses the Aggregated Guides which are original compilations. Nine asserts that Ice engaged in wholesale copying of the time and title information in the Aggregated Guides. This is denied by Ice and will be considered later in these reasons, but Ice accepts that it takes information from those guides for the purposes of updating the IceGuide. 93 The Aggregators integrate, edit and add to the information for inclusion in the Aggregated Guides and determine the arrangement of that information. There is no claim by the Aggregators that Ice has infringed their copyright. The Aggregates "stand between" Ice and the taking of the skill and labour of the creation of the Weekly Schedule. However, it can be said that the preparatory skill and labour protected by the copyright in the Weekly Schedule remains as Nine's preparatory skill and labour for that part of the Aggregated Guides.

THE ACTIVITIES OF ICE 94 The IceGuide was created using templates developed by Ice in 2004. Nine contends that Ice copied a published aggregated guide containing the Weekly Schedule to create the templates. The alleged copying was of the time and title information, which Nine submits represents a substantial part of the Weekly Schedule. If that copying took place, Nine says, the requisite causal connection is established. Ice contends that it did not copy but created its templates by watching the broadcast programs and writing down the title of the programs and the days and times at which they were shown. 95 Nine submits that Ice's activities in creating, preparing and disseminating the IceGuide involve five acts of copyright infringement: 1. A reproduction of a substantial part of the Nine Schedules (including the Weekly Schedule) in the course of making and updating each IceGuide. 2. A reproduction of the Nine Schedules (including the Weekly Schedule) in the course of storing successive infringing IceGuides in Ice's database and on servers controlled by it. 3. A reproduction of the Nine Schedules (including the Weekly Schedule) onto the processing memories or hard drives of subscribers' personal computers ('PCs') or "Media Centres", or alternatively Ice's authorisation of subscribers' acts of reproduction. 4. A communication to the public of the Nine Schedules (including the Weekly Schedule) as part of the IceGuide to subscribers via the internet. 5. An authorisation of a subscriber's reproduction of the Nine Schedules (including the Weekly Schedule) when a subscriber transmits the infringing IceGuide from his or her personal computer to a personal video recorder ('PVR'). 96 Nine submits that the first act of infringement 'lies at the heart of the other acts of infringement. Without it, they are not made out. If it is made out, they follow'. 97 In order to deal with the infringement allegations, it is necessary to have an understanding of the Ice technology, the IceGuide and its uses.

The Ice technology, the IceGuide and its uses 98 Stations within the Nine Network broadcast their signal in analogue and digital format. The parties agree that the latter format provides a better quality signal and enhanced program features but requires the use of: · A fully integrated digital television; or · An analogue television used in conjunction with a digital set top box decoder ('set top box'), which converts digital signals into analogue format; or · A digital television compatible PC, which can receive and display digital television signals on the computer monitor. 99 Personal video recorders allow users to record television programs on a hard drive within the device. Recorded programs can then be stored and subsequently replayed. Although PVRs are in this sense similar to traditional video recorders, there are differences between the two devices. Digital hard drives produce near perfect reproductions of the original program which are not degraded by subsequent viewings. Further, it is not necessary to fast-forward or rewind a reel of video tape to move through a series of recorded programs; users can move forward or backwards at high speed or "jump" between recordings. 100 Television programs can also be recorded using a "Media Centre". Media Centres are computers with hardware and / or software that allows for digital TV receiving and recording capacity. PCs functioning as Media Centres use an operating system designed to facilitate use of the PC for music, photos, video and live and recorded television. Television programs may be recorded onto a hard drive within the Media Centre. 101 EPGs allow a television program schedule to be viewed on the screen of a television set or computer. The program schedule is presented on-screen in the form of a list or chart showing the different programs available on individual or multiple channels. EPGs can be configured to update the program schedule daily so that the viewer sees the program schedule for the day on which the guide is being viewed, together with a future period. Some EPGs show a program schedule for seven or more days into the future; others show only the name and timeslot for the program currently being broadcast and the next program coming up. 102 Not all EPGs are "interactive". For example, the Channel 4 Digital Guide shows program schedules for each of the free to air television networks including program title, time and classification information but the viewer cannot manipulate or navigate through that information. Nor can programs be selected for viewing or recording. 103 "Interactive EPGs", by comparison: · can be used to select programs for recording; · contain program listings for a period of up to 8 days; · allow viewers to navigate through weekly program schedules; · allow viewers to scroll through or across program titles and select programs for future recording by the digital PVR; · are integrated with the set top box and PVR; · allow viewers to add programs to a planner which notifies them of programs scheduled to be broadcast and changes the TV to the selected channel before a particular program commences screening.

Receiving the IceGuide 104 The IceGuide is an interactive EPG which operates in conjunction with certain digital PVRs and some PCs operating as Media Centres. It is the only commercially available EPG in Australia which can be used to record programs with different PVR devices and Media Centres. 105 In order to receive the IceGuide, a subscriber's PVR or Media Centre must first be connected to the Internet. The IceGuide data is held by Ice in a database ('the Ice Database'). A PVR or Media Centre can be programmed to regularly and automatically connect to that database and "fetch" and download the latest version of the IceGuide for a six to eight day period. Different users fetch different subsets of the universe of data contained in Ice Database. For example, if a user wants to view the IceGuide for Sydney channels only, data relating to Melbourne channels will not be fetched. The IceGuide data is encoded for transmission over the Internet and the manner of receipt of that data varies depending on the hardware used. After the data is fetched by the PVR or Media Centre, it is stored in text files on the hard drive of the device. A normal day-to-day IceGuide user would not access or print out the IceGuide in text format.

The IceGuide display and uses 106 Once a user has configured his or her PVR or Media Centre to "fetch" data from the Ice Database and activated an IceGuide subscription, the IceGuide may be displayed on the television screen or monitor by pressing a button. The viewer can then: · view program schedules for all free to air networks in Australia, including the Nine Network, on-screen for a period of six to eight days from the current date; · use a remote control to scroll through the on-screen program schedule, highlight a particular program on the screen, and then by pressing a button on the remote control, select that program for recording on the PVR or Media Centre; · order the recording of the program for a single or repeated occasion; and · view a list of recorded programs and retrieve programs from the hard drive for viewing. 107 Each PVR or Media Centre has its own proprietary EPG formats. These determine the "look" of the IceGuide and the way that the IceGuide is displayed on the screen of that device. The display formats available to the user typically include multiple channel, single channel or single program. 108 By way of example, using a "Topfield" brand PVR, the IceGuide that appears on the screen in single channel format is: As can be seen, this display includes: · Channel number ('9') and channel name ('NINE DIGITAL'). · Current time, date and day of the week ('10:06, 28/09/2006 (Thu)'). · The current program title ('The Footy Show (AFL)') together with start and end times ('23:30 ~ 02:00') and the date and day ('28/09 (Thu)'). · Start and end times for the 5 programs scheduled to be broadcast directly after the program currently screening. · A television inset ("picture-in-picture", or "PIP") moving image of the program currently screening on the channel. 109 Using the Topfield PVR's remote control, the user can scroll down the boxes containing the program titles or times. As the user continues to scroll, additional boxes, containing the program title and time of successive programs proposed to be broadcast, will appear. 110 Underneath the "PIP" inset is a separate blue text box containing the name of the program, sometimes an episode name (eg, 'Grand Final Show') and the synopses. As the user scrolls down the boxes containing program names using the remote control, each program title is highlighted and the synopsis, depending on its length, is party or entirely visible. The full synopsis can be viewed by selecting the program. For example: 111 Some of the more obvious differences between the IceGuide and the Weekly Schedule include: · The IceGuide is interactive. · The IceGuide displays aggregated program listings information when viewed in multiple channel format. · The information in the IceGuide is not selected, expressed or arranged in a broadcast week of Sunday to Saturday. Viewers can view program schedules for 6, 7 or 8 days in advance. · Although the viewer can "scroll through", the emphasis as to time and title information is on the program currently screening and the programs which immediately follow. · The synopses have a different commercial purpose. They may contain criticism of individual programs and the use of humour. 112 It was agreed that, although the IceGuide display format differs depending on the PVR or Media Centre used and the format chosen by the user, each PVR or Media Centre displaying the IceGuide for a particular channel is able to display: · program titles; · episode titles; · program starting times; · program ending times; · program duration; · program genres; · program synopses; · program classifications; · whether the program was a repeat; and · program technical information, including whether it was "Widescreen", "Closed Caption", or "High Definition" for that channel. The evidence shows, however, that in some instances, information as to genre and technical matters (eg, 'CC' for "Closed Captions") visible using a Media Centre will not be visible using a Topfield PVR device.

The Pimp and Widget 113 The IceGuide is also available to subscribers on a test trial basis through a service marketed as the "Personal Interactive Media Planner" ('Pimp'). The Pimp is intended to enable users to control and program PVRs or Media Centres remotely using a mobile phone or the internet. 114 Ice has also developed a service called the "Widget". The Widget can be downloaded by any person (not just subscribers) from Ice's website using a PC and is a small, desktop application. It displays television program listings for the next 7 days for all the free to air channels on the PC screen. 115 Little attention was devoted to the Pimp and the Widget in the course of the hearing. Nine described them as 'the tail end of the case' and accepted that the Court's findings in respect of the IceGuide would follow through to the Pimp and the Widget. It is unnecessary to refer to them further.

INFRINGEMENT 116 Copyright in a literary work is infringed where a person, not being the owner of the copyright and without licence, does or authorises the doing in Australia of any act comprised in the copyright (s 36(1) of the Act). The owner of the copyright in a literary work has the exclusive right to do the acts set out in s 31(1)(a) of the Act. These acts relevantly include 'to reproduce the work in a material form' (s 31(1)(a)(i)) and 'to communicate the work to the public' (s 31(1)(a)(iv)). An 'infringing copy' is defined in s 10(1) to mean, relevantly, a reproduction of the work, or of an adaptation of the work'. Infringement by reproduction is usually said to require first, a "sufficient degree" of similarity between the two works and, secondly, that there is a "causal connection" between the two works (Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd (2005) 225 ALR 57 at [173]-[174] per Crennan J; Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529 at 531 per Hill J; Desktop at [220] per Lindgren J). A reproduction of the whole or a substantial part of the work is an infringement (s 14(1)(b)) of the Act). 117 Program information for every program broadcast on SBS and the ABC is provided to Ice by agreement with those entities. Ice attempted to enter similar arrangements with networks Nine, Seven and Ten. Those approaches failed and Ice sought legal advice with a view to developing a technique for building an EPG that did not infringe third party intellectual property rights. Ice's objective was to begin with 'a clean sheet of paper' and 'build both a system and a methodology of creating an ultimate program guide' without infringing copyright. It endeavoured to implement that objective. 118 It cannot be said, and Ice does not assert, that Ice has conducted itself in the absence of knowledge of Nine's claim or potential claim to copyright in the Weekly Schedule. Ice took legal advice and conducted itself with the express purpose of avoiding an allegation of copyright infringement. 119 In order to create the IceGuide, Ice created templates which were entered into the Ice Database. The templates formed the basis for Ice's methodology of "predicting over" the IceGuide from the same channel and day in a previous week to create successive IceGuides. The creation of the IceGuide needs to be examined in stages: (a) The creation of the initial templates. (b) The method of creation of each day's IceGuide and the updating of the information in the Ice Database, including the incorporation of late changes.

Creation of the initial templates 120 It is at law open to a person to ascertain the facts recorded in a compilation by independent inquiry and to compile his or her own compilation containing the results of that inquiry. So long as the second compiler does not copy the first compilation, there would be no infringement of any copyright in that compilation 'any more than the existence of copyright in a photograph of a scene signifies that there is copyright in the scene itself, which, therefore, a later photographer is not at liberty to photograph from the same viewpoint' (Desktop at [26] per Lindgren J). 121 The work in which copyright subsists for the purposes of these proceedings is a compilation - the Weekly Schedule. Nine does not claim copyright in these proceedings in its television broadcasts (cf s 87 of the Act) or the programs themselves. To the extent that Nine's employees expend skill and labour in connection with Nine's television programming activities, its relevance is as preparatory skill and labour expended in the creation of the Weekly Schedule. The broadcast of the programs in the sequence in which they are recorded in the Weekly Schedule is not the publication of the Weekly Schedule (cf s 29(1)(a) of the Act) nor the communication of that compilation to the public. The copying down of those publicly aired programs, their titles and the times of their commencement and completion by watching television, without reference to the compilation, does not establish the necessary causal connection between the work in which copyright is claimed and the result of that copying, even if the resulting work is similar or identical to the Weekly Schedule. Anyone viewing the result of the work of the selection and ordering of programs, even if it is subject to copyright, is free to start with that public source and from that source to produce his or her own work. 122 In Desktop, Lindgren J examined in detail a number of cases and secondary materials from which the following principles or observations are presently relevant: · A work is original if the work was not copied, but originated from the putative author (at [47]). · A person is not prevented from undertaking the original labour of recording a subject "open to all the world", for example a map of a geographical area (Longman v Winchester (1809) 16 Ves Jun 269 at 272; 33 ER 987 at 988 cited in Desktop at [29]). · The mere publication of information that was open to all the world to publish is not an infringement of another's right (Leslie v J Young & Sons [1894] AC 335 at 340-1, cited in Desktop at [54]). · 'The owner of copyright has, in short, no monopoly in the subject-matter. Others are at liberty to produce the same result, provided they do so independently and, though they are not the first in the field, their work is none the less "original" in the sense in which that word is used in the Copyright Act 1911' (Halsbury's Laws of England (2nd ed, 1932, vol 7) at 521, cited in Desktop at [107]). · The fact that some facts would or might be described by independent authors in the same or similar words may necessarily follow from the subject matter and is not restrained by copyright (Spiers v Brown (1858) 6 WR 352, cited in Desktop at [31]-[32]). · Copying is not an "all or nothing" test. The degree of copying can be taken into account, that is, the degree to which the copyright work was not copied but originated with the putative author and the amount of that author's contribution to bringing a new work into being (Desktop at [96]). · If a person is to carry out original labour, no part of another compilation can be taken (Kelly v Morris (1866) LR 1 Eq 697, cited in Desktop at [35]). There is no right to make the results of another's skill and labour the foundation of a subsequent compilation or any material part of it (Morris v Ashbee (1868) LR 7 Eq 34, cited in Desktop at [39]). 123 Mr Mitchell Rilett is Ice's "Content Manager". His evidence is that Mr Peter Vogel and Mr Russell Gilbert of Ice approached him in July 2004 and instructed him in August 2004 to create a seven day television schedule independently of any published guide. Mr Rilett was not provided with specific ground rules but understood that the objective was to create a template guide that did not copy the guides in which the commercial television networks had copyright. Neither Mr Vogel nor Mr Gilbert gave evidence in these proceedings. 124 Nine contends that the initial reproduction was made by Ice in late September 2004, when Mr Rilett had recourse to and copied Aggregated Guides that displayed, inter alia, the information set out in the Weekly Schedule. It is not suggested that Ice had direct access to the Weekly Schedule or any other format of the Nine Schedules. 125 Mr Rilett was living in Adelaide in August 2004 and began work by preparing from his memory a handwritten list of over 100 programs. Once that task was complete, Mr Rilett watched television for approximately three weeks. He described this exercise as 'torture'. He kept a notepad by the television and recorded by hand details of the programs screened including name, channel, day of broadcast, start time, sometimes the duration, classification and whether the program offered closed captions, widescreen and/or sometimes high definition ('the Notebook Guide'). Mr Rilett continued watching television until he had noted the programs for a 24-hour period for each day of the week for the three commercial free to air networks. While creating the Notebook Guide, Mr Rilett also researched and wrote descriptions of the programs into a descriptions list. This required him to have recourse to Internet search engines and websites to find information about the content of the programs. Mr Rilett says that he did not consult published television guides for those descriptions. Mr Rilett no longer has the Notebook Guide and it was not in evidence. His descriptions list was in evidence. 126 Mr Rilett then created templates for each of the Sydney channels Nine, Ten and Seven. He used Microsoft Excel to create seven documents for each Sydney station (one for each day of the week) and called them the "Templates for Sydney". The templates were populated with the information he had recorded in the Notebook Guide including program name, movie slot times, durations, genres, classifications and whether the programs offered closed captions, widescreen and/or sometimes high definition. 127 Because the Templates for Sydney were based on Mr Rilett's viewing observations in Adelaide, he made modifications to exclude programs specific to Adelaide. Around September 2004, Mr Rilett then compared the Templates for Sydney with the published Aggregated Guides for Sydney, including the YourTV Guide. He said that he noted a "slight variation" between his templates and the published guides and amended the Templates for Sydney accordingly. There is no documentary trail evincing the extent of the changes Mr Rilett made to the Templates to Sydney to reflect the Aggregated Guides to which he had recourse. 128 Charts showing the relationship between various stations within each of the networks were also created by Mr Rilett. Mr Rilett confirmed his views of how the programs on the various stations in one network differ from each other by comparing the schedules in Aggregated Guides for stations outside Sydney and using the templates he had created for Sydney stations. This enabled him to create local programming and parent channel relationship guides. The charts and the relationship guides were in evidence. 129 Nine rejects Mr Rilett's explanation as to the process he undertook in preparing the amended Templates for Sydney. It tendered a table comparing Mr Rilett's templates with TV Week as published for the weeks commencing 13 September 2004 and 27 September 2004. The table relevantly shows that the program time and title information in the amended Templates for Sydney closely follows the entries for Nine in TV Week for the week commencing 27 September 2004 including, for example, the inclusion of a one-off pilot program, Andy Richter Controls the Universe, scheduled for broadcast on Nine on Tuesday, 28 September 2004 at 02:05 am. Similar observations can be made in respect of channels Seven and Ten. The amended Templates for Sydney do not follow TV Week so closely for the week commencing 13 September 2004. 130 Nine submits that the 'extraordinary correlation' between the amended Templates for Sydney and TV Week supports an "overwhelming" inference that Mr Rilett fully populated his templates with program time and title information taken from an aggregated guide, such as that appearing in TV Week, sometime around 27 September 2004. This inference is said to be supported by the assertion that, in order to provide Mr Vogel and Mr Gilbert with an idea as to the level of detail that he was proposing to incorporate into his templates, Mr Rilett undertook a "dummy run" which did involve wholesale copying of the whole of the Weekly Schedule, including time and title information, for the week commencing 13 September 2004 from an aggregated guide. The dummy schedule was sent by Mr Rilett to Mr Vogel and others by email dated 9 September 2004. The email notes that synopses for the dummy schedule were'taken from Aust sources as no point (for this exercise) for originality'. There is no suggestion that the dummy schedule was used in any way to populate the Templates for Sydney or the IceGuide. Mr Rilett explained the purposes of the dummy schedule. No inference can be drawn from the dummy schedule to support the assertion of wholesale copying from an aggregated guide into the amended Templates for Sydney. Accordingly, the precise source of the information in the dummy schedule is not relevant to determining the source of the information in the IceGuide. 131 I accept that there is a very close correlation between the program time and title information in the amended Templates for Sydney and in TV Week for the week commencing 27 September 2004. There are, however, also differences of content consistent with Mr Rilett's explanation. For example, the TV Week entry for Thursday, 30 September 2004 at 2:50 am lists Nine Presents: Shannon Noll on Nine while the amended Templates for Sydney list a 'Movie' between 1:00 am and 3:00 am; on Friday, 1 October 2004, TV Week lists The Bernie Mac Show on Nine at 3:30 am while the amended Templates for Sydney list Guthy-Renker Australia at that time. As to form, TV Week uses a 12 hour clock, while the amended Templates for Sydney use a 24 hour clock. 132 I accept Mr Rilett's explanation as to the source of the program time and title information included in the amended Templates for Sydney. I accept that Mr Rilett populated those templates with program time and title information derived from the Notebook Guide he prepared. I accept that Mr Rilett created his own template of programs by watching television in Adelaide over a period of about 3 weeks in about August 2004 and recording what he saw and the time at which each program was shown. His evidence of that experience and his voluntary description of it as "torture" was compelling. Mr Rilett compiled his templates from his watching of Adelaide television. He created the Templates for Sydney based upon that watching of television and his experience in programming and in the television industry generally. He removed programs specific to Adelaide, compared those templates with published Aggregated Guides for Sydney and amended the time and title information in them accordingly. The Templates for Sydney as amended were in evidence. The similarity as to time and title between those templates and TV Week for the relevant period is consistent with Mr Rilett's evidence that he amended the templates by reference to the published guides. The differences (while not extensive) contradict the assertion of wholesale copying. 133 Mr Rilett has significant experience working in the television industry, including past experience working as a Senior Presentation Coordinator for an Australian commercial television network. His instructions were to create a television program schedule for a period of seven days independently of any published television guide. He said that he created his templates based on his knowledge of the industry and the three weeks he spent watching television. Mr Rilett described the process he undertook to prepare the amended Templates for Sydney in detail. 134 While Nine challenged Mr Rilett's evidence, I note that Mr Rilett is not a substantial shareholder in Ice Holdings and no sufficient reason was established for him to exaggerate his achievements. Further, Ice deliberately took steps to attempt to overcome claims of copyright infringement and the formation of an independent template was an important aspect of that basis of Ice's business plan. The evidence, including documents tendered by Nine, evinces a clear intention on behalf of Ice to devise and implement a system to avoid infringement. 135 For all of these reasons, Nine's assertion that Mr Rilett embarked on an exercise of wholesale copying of time and title information from the published guides to produce the amended Templates for Sydney is rejected. 136 The amended Templates for Sydney were completed by Mr Rilett by 25 October 2004. His evidence is that they were then incorporated, with his programs descriptions list, into the Ice Database by Mr Gilbert in November 2004. Using the Ice Database and associated computer programs, Mr Rilett then commenced compiling 24-hour television program guides for channels Seven, Nine and Ten Sydney and Melbourne for each day of the calendar week, six days ahead of when the programs were scheduled to be broadcast. Additional regions were added to the Ice Database and IceGuides created for additional channels throughout Australia before the actual launch of the IceGuide in April 2005. While Nine complains that, in the absence of direct evidence, it is impossible to determine the extent to which Ice undertook "one big update" of the time and title information in Mr Rilett's templates before it went live in April 2005, this is answered by Mr Rilett's evidence, which I accept. Mr Rilett explained, in response to that proposition: 'No. From around about November I was doing guides every day, okay. I actually thought we went live. I did I swear, I thought we were live. In fact I was a bit cranky with these two guys come April when they told me about some upcoming launch date and I took a double-take and said, you know, I've been doing this every day seven days a week since November.' 137 The process Mr Rilett undertook to create IceGuides over this period is one that continues today. That process is as follows.

Creation of each day's IceGuide and updating of information in the Ice Database 138 Ice employs five staff to create and maintain IceGuide program listings information. Those persons include Mr Rilett, Ms Suzanne Langford, Ms Samantha Tai, Ms Madeleine Doyle and Ms Kiriaki Orfanos. Mr Rilett, Ms Tai and Ms Langford are responsible for compiling program listings information for the IceGuide for programs broadcast on the Nine, Seven and Ten networks.

"Predicting it over" 139 Preparation of the IceGuide schedule for a given broadcast day and commercial channel typically begins by causing Ice's software to "transfer" a past IceGuide schedule from the same day of the week in a previous week to use as a "source schedule". This is generally done six days ahead of any given broadcast day. The source schedule is often taken from one week earlier although there are exceptions, especially in summer. For example, if cricket was broadcast on Nine last Monday but no match is scheduled for the coming Monday, Ice staff may use a non-cricket day as the source schedule, such as the Monday two weeks earlier. 140 The term used within Ice for the process of selecting a source schedule and transferring the program schedule from that day to the day for which a new IceGuide is to be created is "predicting it over". Preparing an IceGuide schedule by "predicting it over" involves, in broad terms: · Accessing Ice's software by entering a secure part of the Ice website. The operator causes a screen titled 'Channels' to appear, which lists all of the channels covered by the IceGuide. · Selecting the channel for which a new IceGuide schedule is to be created. This causes a screen to appear which lists all the days for which an IceGuide schedule for that channel is currently available in Ice's database. Clicking on a button labelled 'Predict' causes a new screen to open, headed 'Predict Schedules'. · Selecting an IceGuide schedule for a particular channel and day to use as the source schedule and entering the channel and date details. · Selecting the channel and entering the date and times for the "destination schedule"; that is, the channel and day for which a new IceGuide schedule is to be created. · Clicking an on-screen button labelled 'Predict' at the bottom of the 'Predict Schedules' webpage. This causes the program listings in the source schedule to be reproduced in the destination schedule for the channel and day for which the schedule is being created. 141 The above steps create a starting template or copy for the destination schedule. The starting template will have the same program time and title information (including movies) as the source schedule, except that the software replaces episode titles with question marks ('?') where the source channel and the destination channel are the same. If the source channel and destination channel are different, the episode titles are reproduced. This enables, for example, a complete schedule for GTV-9 Melbourne (including episode titles) to be created from the finalised IceGuide schedule for TCN-9 Sydney for that day. The same episode titles are produced in the expectation that the episodes shown in Melbourne will likely be the same as those shown in Sydney. In providing Nine's solicitors with a demonstration of the process used to create the IceGuide, Ms Tai used TCN-9 Sydney as the source schedule to create IceGuides for GTV-9 Melbourne and WIN in Tasmania for that day. 142 As Ice submits, the process of "predicting it over" using Ice's software proceeds on the assumption that 'the structure of television broadcasting is such that the daily content of the commercial broadcasters for a particular day in this week is likely to be substantially replicated on the same day next week or on the same day in two weeks time'. This assumption obviously has its limitations, as changes in programming occur from week to week. 143 The parties disagree as to the proper characterisation of historical records of past Schedules. Ice submits that the evidence shows 'a high degree of predictability of the shape of Nine's television day and a high degree of consistency and repetition in the shows placed in [the] key timeslots on comparable days of the week'. It points out, for example, that since the relevant activities of Ice began in 2004 to the time of hearing, on Mondays to Fridays: · The Today show has been followed at 9:00 am by a morning show hosted by Kerri-Anne Kennerly, a cooking show at 11:30 am and a one hour American talk show (Dr Phil) at 12 noon. · The afternoons are occupied by long running American serials Days of Our Lives and The Young And The Restless commencing at 1:00 pm, followed by US talk show Entertainment Tonight at 3:00 pm and the children's program New McDonald's Farm at 3:30 pm. · The early evening is occupied by family interest shows; at the time of hearing Antiques Roadshow and Bert's Family Feud leading up to the National Nine News at 6:00 pm. · Series that are shown in the evening, whether made locally or overseas, commonly remain in Nine's schedule for months and sometimes years. Examples include CSI, Miami Vice and McLeod's Daughters. 144 Ice places particular emphasis on the number of "Strip Programs" broadcast between 6:00 am and 7:00 pm, Mondays to Fridays. Ms Wieland and Mr Healy identified Strip Programs as programs broadcast Mondays to Fridays, five days a week. Examples include Today, Days of Our Lives and The Young And The Restless. Nine also takes account of the repetitive nature of these programs in preparing the Weekly Schedule. For example, preparation of the Spreadsheet by Ms Wieland involves cutting and pasting Strip Programs from week to week. At the time of hearing, Ms Wieland had copied Strip Programs into the Spreadsheet up to 2008. It could be said that Mr Wieland "predicts" the continuation of the Strip Programs. 145 A historical comparison of Nine programming as published in TV Week for fourteen daytime timeslots (6:00 am to 7:00 pm inclusive) for Mondays in early to mid October from three, five, seven, 11, 15, 21 and 25 years ago, and then every five years until 45 years ago showed (disregarding episode titles): · One variation in program time and title between Monday 9 October 2006 and Monday 16 October 2006. · Eleven variations in program time and title between Monday 6 October 2003 and Monday 16 October 2006 (six programs were scheduled in different timeslots; five were not scheduled at all). · Twelve variations in program time and title between Monday 15 October 2001 and Monday 16 October 2006 (three programs were scheduled in different timeslots; nine programs were not scheduled at all). · No programs have always appeared in the same timeslots. · National Nine News, at 6:00 pm, is the only program which has remained in its timeslot for 21 years. · Strip Programs such as The Young And The Restless and Days of Our Lives have been shown at different timeslots during their run. 146 While the evidence descended into a great deal of detail by way of comparison of television programming over the years, the basic facts are not really in issue. At least since 2004, when Ice's activities commenced, there has been some consistency in Nine's programming, in particular between 6:00 am and 7:00 pm, Monday to Friday. There is a high degree of predictability on a daily or weekly basis of Strip Programs to be aired in those times. Both Nine and Ice assume, as a starting point for their own activities, that these programs will continue from week to week. The respective schedules to be prepared are populated accordingly. 147 Nine rejects any suggestion that its copyright protection should be diminished by the fact that some parts of the Weekly Schedule remain constant from week to week. It emphasises the evidence of Ms Wieland that all programs are subject to ongoing review; programs are continually removed and replaced. While there is a degree of repetition, decisions made to retain Strip Programs and consider their timing still involve the exercise of a measure of skill and labour. Ratings information, for example, would be taken into account. 148 The fact that many of the programs shown weekly on Nine are "boilerplate" or Strip Programs does not deprive the Weekly Schedule of copyright protection in the selection of those programs or their continuance in the time and date on which they are shown. It is relevant, however, to Ice's evidence on the preparation by Mr Rilett of his templates and the "prediction" that is made by copying Strip Programs from week to week for the purposes of the IceGuide. 149 Changes in Nine's programming from week to week are incorporated into the IceGuide as follows. Having created a starting template, Mr Rilett, Ms Tai or Ms Langford open a number of online aggregated program guides such as the Yahoo7 Guide, the YourTV Guide and the OurGuide. They then compare the program listings information in the starting template with the published guides. Where the Ice operator finds that the time or title of a program listed in the starting template differs from the entry in the published guides, amendments are made to the template in almost all cases, so that the IceGuide displays the same program titles and times shown in the published guides. There is a verbal rule that three sources must be open and referred to before any amendment is made to the IceGuide. 150 By way of example, Mr Rilett used the IceGuide for TCN-9 Sydney for Saturday, 16 September 2006 as the source schedule to create an IceGuide for TCN-9 Sydney for Saturday, 23 September 2006. "Predicting over" the source schedule using Ice's software caused the starting template for 23 September 2006 to contain the same program listings information as the source schedule, save for date and episode information. Mr Rilett then accessed the YourTV Guide, the Yahoo7 Guide and the OurGuide and set about comparing Ice's "prediction" with the published guides. In the course of his comparison, Mr Rilett: · changed the start time for Nightline from 12:25 am to 12:15 am to reflect the information in published guides; · deleted the movie Lansky, which was scheduled to appear at 12:55 am in the IceGuide but was not in the published guides; · added the movie The Inspectors at 12:45 am to the IceGuide, based on the information in the published guides; · changed the start time in the IceGuide for the Late Show with David Letterman from 3:05 am to 2:35 am, based on the information in the published guides; · added the program Entertainment Tonight to the IceGuide at 3:30 am, based on the information in the published guides; · changed the IceGuide time for The Shapies from 7:30 am to 7:35 am, based on the information in the published guides. Mr Rilett also reduced the duration of The Shapies from 35 to 30 minutes; · added a program of five minutes duration to the IceGuide at 7:30 am, based on the information in the published guides. That program was titled Kids' WB on Nine in the published guides but was titled Classic Looney Tunes by the IceGuide, which uses that name as a generic cartoon program title instead of Kids' WB on Nine; · ignored the published guides' indication that The Batman would be broadcast at 8:05 am, 8:40 am and 9:20 am and instead left the IceGuide starting template's indication that Classic Looney Tunes would be broadcast at these times. Mr Rilett disregarded the published guides as he determined that TCN-9 Sydney may not broadcast The Batman at that time by reason of the program not being suitably rated for viewing during children's hours; · added the episode title Big for the program The Shak, based on the information in the Yahoo7 Guide; · added the episode title Reanimator for the program Deadly, based on information in the Yahoo7 Guide. Mr Rilett noted that the IceGuide correctly indicated that Deadly was "Widescreen" ('WS') and that the Yahoo7 Guide had mistakenly not so indicated; · added the episode title Happy Birthday Rosie for the program Sleepover Club, based on information in the YourTV Guide, and selected "Widescreen" for this program after noting that the Yahoo7 Guide so indicated and reviewing program information published by Digital Broadcasting Australia on its website www.dba.org.au; · added the episode title Red Hot Chilli Peppers for the program Backstage Pass, based on information in the OurGuide; · replaced the program Speed Machine with the program The Car Show, starting at 12 noon, based on information in the published guides and selected a "G" classification for this program based on his own experience; · replaced Movie: The Adventures of Robin Hood with Movie: The Sea Hawk (Errol Flynn) and adjusted the start time to 12:30 pm based on information in the published guides. Mr Rilett also selected "R" (repeat) for this program based on his own knowledge (despite the published guides not indicating the same); · added the episode title Billy Joel-Twelve Gardens Live for the program Nine Presents based on information in the OurGuide and selected "R" (repeat) based on his own knowledge (despite OurGuide not indicating the same). Mr Rilett also amended the duration of the program to 15 minutes; · added an episode title for the show Getaway by reading the program synopsis for Getaway in the YourTV Guide and choosing the most appropriate title from a list drawn from Ice's database by Ice's software (the publicly available EPGs do not include episodes title for Getaway but the IceGuide does); · left the episode title blank for Garden Gurus, based on the fact that the OurGuide indicated there was no episode for the program; · added an episode title for Talk to the Animals by reading the program synopsis for Talk to the Animals in the Yahoo7 Guide and choosing the most appropriate title from a list drawn from Ice's database by Ice's software (the publicly available EPGs do not include episodes title for Talk to the Animals but the IceGuide does); · added the episode title Second Preliminary Final to the Rugby League program entry, based on information in the Yahoo7 Guide; · deleted Movie: Execution Decision, which was scheduled in the starting template to commence at 10:15 pm, based on the published guides; and · added the movie Training Day to be screened at 10:15 pm, based on the published guides. Mr Rilett noted that the YourTV Guide indicated that Training Day would be screened in "High Definition" and amended the IceGuide accordingly. 151 This represented a change to program title, time or episode on the basis of information observed in the Aggregated Guides for 17 of the 31 timeslots in the final IceGuide for Saturday 23 September 2006. Mr Rilett's evidence, which I accept, is that he tends to make fewer adjustments to the Ice Guide when compiling it for weekdays. Taking Strip Programs and series programs, which are largely shown on weekdays into account, that would be expected. In demonstrating to Nine's solicitors the creation of an IceGuide for TCN-9 Sydney for Monday, 2 October 2006, Ms Tai made changes to program title, time or episode for 13 out of the 29 timeslots in the final IceGuide for that day. These numbers do not necessarily reflect changes made in response to information in the Weekly Schedule. Late changes will not have been included in the Weekly Schedule but in Late Change Notices (eg, prime time movies). 152 When making changes of this nature, Ice staff do not copy type information directly into the IceGuide. Rather, they search the Ice Database for programs or episode titles already within the database. Searching for programs across the database using Ice's software generates an on-screen list of program titles. A program sought to be included in the destination schedule can then be selected by the click of a mouse. The start time is selected or amended using drop-down boxes which incorporate a range of available times. Clicking a button marked 'Update Show' then causes the software to insert the program into the destination schedule. Episode titles are similarly presented by Ice's software in a list accessible to the operator and available for selection. If the program or episode the operator wants to insert into the IceGuide does not appear in the list of program or episode titles already in the Ice Database, it must be added to the Ice Database using a separate screen titled 'Add New Program'. 153 Ice relies upon the means of entry of data into the IceGuide. These means were, Ice acknowledges, devised to avoid copyright infringement. The processes include using hard coded elements from mandatory drop down boxes in updating the IceGuide to reflect the Aggregated Guides and using additional screens to add program names to the database for subsequent selection, rather than keying a title directly into a schedule. The purpose of adopting these procedures is not the point. The skill and labour protected by the copyright may be taken by means other than direct entry or a "copy and paste" procedure. The taking of that skill and labour is not avoided by the adoption of these techniques.

Entering program, episode titles and synopses into the Ice Database 154 Program and episode titles are entered into the Ice Database by Mr Rilett and Ms Doyle for selection by Ice staff when creating the IceGuide. Ms Doyle is a part-time television program description writer employed by Ice. In researching new programs and episodes to add to the IceGuide database, Ms Doyle and Mr Rilett do not refer to Australian published television guides. Mr Rilett refers to American television network EPGs that are publicly available over the internet to determine programs that may be broadcast by Australian commercial networks in the future, but which have not yet been disclosed. Ms Doyle, by comparison, researches and enters new episode titles into the Ice Database for programs currently being broadcast in Australia. 155 Synopses are provided by the ABC and SBS and drafted for the commercial stations by Ms Doyle and Ms Orfanos, who work in a secure part of the Ice website. Ms Doyle reviews a list of "programs and episodes without descriptions" generated by Ice's software. Programs in that list are those which have been added to the Ice Database and which need descriptions. Ms Doyle drafts synopses in order of priority starting with programs or episodes that have a scheduled broadcast date, then movies and one-off programs, followed by series and sports programs. A variety of research sources, such as reference books and websites, are reviewed in the course of drafting synopses. For example, in drafting synopses for movie "classics", Ms Doyle may refer to Halliwell's Film & Video Guide 2002; in drafting a synopsis for the Seinfeld episode "The Pool Guy", Ms Doyle referred to reviews of that episode published online at and . Where there are no relevant research sources, synopses are "made up". Ms Doyle and Ms Orfanos are not permitted to have regard to Australian television guides and must record the sources they have used to draft each synopsis. In this way, a list of resources for each program is readily available for drafting further synopses. 156 Access rights to the Ice Database are divided between those staff involved in drafting the synopses and staff involved in predicting time and titles for inclusion in the IceGuide. For example, Mr Rilett drafts the majority of synopses for sports programs but does not have access rights to enter those synopses into the Ice Database; he emails the synopses to Ms Doyle or Ms Orfanos for inclusion in the IceGuide. Conversely, Ms Doyle and Ms Orfanos do not have a right of access to change the scheduling of programs.

Late Changes to the IceGuide 157 Ms Langford has been an employee of Ice since April 2005. Each day, she relevantly determines whether late changes must be made to the IceGuide for TCN-9 Sydney and/or GTV-9 Melbourne by comparing the IceGuide for the upcoming 60-hour period with listings in the YourTV Guide. Where she finds a difference as to program name, timeslot, episode title or duration, she amends the IceGuide to show the same name, time, episode or duration as the published guide. If late changes are required to be made in Sydney and/or Melbourne, Ms Langford typically compares the listings information in the Yahoo7 Guide with the information in the IceGuide for other stations within the Nine Network for the corresponding time period where the change was necessary. Again, where Ms Langford finds a difference as to program name, timeslot, episode title or duration for other channels in the Nine Network, she amends the IceGuide accordingly. Ms Langford estimates that, on average, she causes approximately 5 - 10 late changes to be made to the IceGuide per week across all channels in all regions. 158 Such amendments are again made by using a series of different screens and functions made available by Ice's software, rather than by direct entry into the Ice Database. Where Ms Langford makes a late change to an episode title and cannot find that title in the Ice Database, she enters the title into the Ice Database. By clicking a field titled 'Missing desc's' and marking the episode title with a double asterix, Ms Doyle and Ms Orfanos are alerted to the fact that it is necessary for them to draft a synopsis as a matter of priority. 159 Late changes may also be made in response to information obtained by Mr Rilett from an "online forum" published on Ice's website and the Television Programming News; these may contain comments from writers alerting the reader to amended broadcast line-ups and late changes to the Nine Programming. Mr Rilett estimates that he updates the IceGuide approximately two to five times each week on the basis of comments contained in the Ice forum and/or the Television Programming News.

Accuracy 160 The evidence includes an analysis by Mr Cameron Andrews, a solicitor, of the TCN-9 Sydney time, program and episode title information displayed in the IceGuide and the Weekly Schedule as distributed in text format to HWW on or about 14 days before each broadcast week. 161 The first limb of the analysis involved a comparison of the six weeks beginning on Monday 8 May 2006 and ending on Saturday 17 June 2006 ('the first comparison'). Throughout this period, Mr Andrews downloaded the IceGuide each Monday for the week commencing that day. He then compared the IceGuide programs listings information with the Weekly Schedule as updated by him to include Late Change Notices issued before the day on which the IceGuide was downloaded. Late Change Notices issued on or after that day were disregarded. 162 Excluding the Lotto and "back-to-back programs", the IceGuide listed 1,063 out of 1,068 programs in the correct timeslot during the first comparison period. Of the five incorrect entries, he ascertained that three were corrected by Ice before the broadcast date of the affected program. The timeslot for "back-to-back programs" always differed as the IceGuide listed such programs in single, rather than multiple, timeslots. For example, the Weekly Schedule for Saturday, 13 May 2006 in text format listed Make Way for Noddy in two, separate 10 minute timeslots whereas the IceGuide for that day lists Make Way for Noddy in a single, 20 minute timeslot. The listings for Lotto also always differed as the IceGuide never included the Lotto during the first comparison period. Differences of program title considered to be "minor" by Mr Andrews (eg, Hotel Babylon (UK) rather than Hotel Babylon) were not taken into account for the purposes of his comparison. 163 Similarities in episode title, repeat and classification information were also observed. It is unnecessary to set out the detail of those similarities here. Mr Andrews did not compare the synopses. 164 The second limb of the analysis considered a four week period between Sunday 18 June 2006 and Saturday 8 July 2006 ('the second comparison'). Mr Andrews downloaded the IceGuide daily during this period and compared it with the Weekly Schedule as updated by him to include all Late Change Notices. By downloading the IceGuide daily, Mr Andrews was able to compare the IceGuide for each day as first published six to eight days in advance ('first available IceGuide) and as last published on the day of broadcast ('last available IceGuide') with the Weekly Schedule as updated. 165 Again excluding Lotto and "back-to-back programs", the first available IceGuide identified the correct program names and timeslots for 700 out of 710 programs broadcast during the second comparison period. All but two programs were listed with the correct name and timeslot by the publication of the last available IceGuide. The two incorrectly listed programs were each the subject of Late Change Notices which were not reflected in the IceGuide. Two further Late Change Notices, each relating to changes in episode information, were also not reflected in the last available IceGuide. 166 Mr Andrews' analysis was, in effect, that every piece of information in the IceGuide's program time and title listings only appeared after it had been published by one of Nine's authorised sources. That, of itself, does no more than provide the basis for an inference to be drawn. Mr Andrews' evidence established that, over the total 10 week period analysed, the IceGuide showed a different program or time only four times in 1,778 programs. Nine relies upon the inference of copying that arises where there is exact correspondence between the copyright work and the accused work and the opportunity to copy by way of access to the copyright work. That exact correspondence as to time and title is explained by Mr Rilett's creation of the amended Templates for Sydney and Ice's acknowledged access to the Aggregated Guides which are, in turn, updated to include the Late Change Notices.

Review of Ice's software 167 A review of the Ice's computer program was undertaken by Mr Rodney McKemmish, a computer forensic specialist and director of Australia Pty Ltd. Mr McKemmish was provided with the source code for the computer program and the affidavit material filed in these proceedings. He also attended a demonstration conducted at Ice's premises on 26 September 2006. Ten tests were conducted in the course of that demonstration. Mr McKemmish prepared a report for Nine expressing his opinion as to how the Ice computer program worked and whether it had predictive capacity. Mr McKemmish relevantly reported in summary that, in his the view, the Ice computer program: · Delivers basic data management capabilities; in effect, a "front-end" which allows a user to access data held in database tables that contain information about programs, episodes, channels, ratings etc. · Uses web pages to allow the user to interact with the data in the database tables. · Facilitates the building of TV program schedules by copying program information from a starting date and time (the source schedule) and applying the same information to a destination period and channel (the destination schedule). The copied schedule information is subjected to a simple filtering process, whereby if the source and destination channel are the same, then only series information (and not the specific episode information) will be copied. If the source and destination channels are different, then the episode information is copied without change. · Does not contain any predictive algorithm or predictive model; it copies a previous instance of a program schedule. Changes to the copied schedule are effected by means of a manual process that involves comparisons with external sources of information on the internet. · Has been designed to allow a user to select specific show, series and episode information by means of pre-defined lists built from the information contained in the various tables. Mr McKemmish accepted that, taken on a basic level, the Ice computer program enables a level of prediction of the following week's program based on one instance of historical data.

Consideration 168 Ice operators "predict" Nine's programming by copying the IceGuide for the same day in a previous week. That previous schedule is built upon Mr Rilett's templates, as varied over subsequent updates which occur in the following way. The Ice operators check each entry on the copied-over schedule by reference to various Aggregated Guides on the internet and make changes accordingly. This occurs more than once before the programs are broadcast and changes are made to reflect variations in the Nine Programming from week to week and late changes. This results in an IceGuide schedule which contains time and title information (but not additional program information or synopses) that may be more than 99% similar to that part of the Aggregated Guides that reflects the Weekly Schedule and updating by Late Change Notices. They differ from each other because of the actions of the Aggregators and because late changes may not have been included. The timing of Ice's access to the Aggregated Guides will affect the fact of and timing of the inclusion of late changes in programming. 169 In order to update the IceGuide, Ice staff access not only the Aggregated Guides but also other material publicly available on the internet to obtain information on episode content and description. This material is used, for example, to add programs to the Ice Database in anticipation of their broadcast and in the preparation of Ice synopses. It is also a source of information about episodes of serials that are shown in sequence. 170 Ice cannot know with certainty the details of Nine's programming without access to the Aggregated Guides. Ice is not a direct recipient of the Weekly Schedule as prepared by Mr Healy and Ms Wieland. Ice cannot know, for example, specific movies or one-off programs until their inclusion in Nine programming is determined by Nine, included in the Weekly Schedule or a Late Change Notice and incorporated into an aggregated guide. 171 While a number of programs are repeated at the same time each week, the evidence shows that over an extended period of time, programs may be replaced or their timeslot varied. This, in turn, affects the extent to which it has been necessary for Ice to amend the information originally compiled in the templates that Mr Rilett produced around September 2004. For example, for Sunday 1 October 2006, only three programs in the Nine Programming as recorded in TV Week were in the same timeslot as in the amended Templates for Sydney; for Friday 6 October 2006, all of the program timeslots between 7 pm and 4 am in the Nine Programming were different; for Saturday 7 October 2006, five programs had timeslots common to the Nine Programming and the amended Templates for Sydney. 172 Ice accesses different online Aggregated Guides to update its schedule. These sites do not publish identical information and the information is presented in differing formats. Each of the internet guides accessed by Ice are based on the Weekly Schedule, as received by HWW or eBroadcast. HWW edits the additional program information and the synopses. There is little evidence about the nature of the changes, if any, that eBroadcast makes to the information it receives in the Weekly Schedule. Such evidence as there is suggests few, if any, changes are made, apart from the shortening of some synopses. 173 Ice accesses primarily the YourTV Guide and the Yahoo7 Guide, which are both derived from HWW content. Ice asserts that there is no direct copying from the online Aggregated Guides. It says that it adopts and compares information and makes a decision to accept a change or addition or not. Ice relies on the fact that adjustments are made using Ice's software to draw from data which typically already exists in the Ice Database. Ice conducts its own research into, for example, the episodes in a particular series and includes each of the episodes in the Ice Database. It drafts its own synopses. 174 The IceGuide is a product of Ice's skill and labour and, in particular: (a) Mr Rilett's creation of the amended Templates for Sydney. (b) Mr Rilett's analysis of the broadcast relationships between different channels. (c) The development of Ice's proprietary software. (d) The manipulation of Ice's database by Ice operators using Ice's software. (e) The use of the amended Templates for Sydney as the foundation source IceGuide schedules for creating all other destination IceGuide schedules. (f) The skill and labour of Ice's schedulers (Mr Rilett, Ms Tai and Ms Langford) who use Ice's software to draw data from Ice's database to create IceGuide schedules for each channel covered by the IceGuide for each 24 hour period of time. (g) The use of Mr Rilett's analysis of broadcast relationships between different channels by Ice's operators in the process of "predicting over" to create valid IceGuide schedules using IceGuide data drawn from Ice's database. (h) The skill and labour of Ice's researchers (Ms Doyle and Ms Orfanos) in researching and writing program and episode synopses. (i) The implementation of late changes by Ms Langford by reference to the Aggregated Guides and updates by Mr Rilett using information from the Ice forum and the Television Programming News. (j) The on-going use of Mr Rilett's skill and labour in managing Ice's scheduling and researching of the IceGuide. The expenditure of Ice's skill and labour may provide the basis for a claim to compilation copyright in the IceGuide but does not, of itself, answer Nine's claim of infringement. 175 There is a difference between Ice's activities and those of Desktop Marketing Systems Pty Ltd, the infringer in Desktop. Desktop Marketing admitted that it took names, addresses and telephone numbers from the Telstra directories, as well as headings. Where the originality in the compilation lies in the skill and labour involved in collecting, verifying, recording and assembling the data, there is a reproduction of a substantial part of the copyright protected work where the great bulk of the information was taken, although the form of presentation of data is not adopted. 176 Nine's skill and labour of the Weekly Schedule derives not only from the selection and ordering of programs for broadcast but also in the work of Ms Wieland and the Nine staff who collect and prepare information for insertion into the Weekly Schedule, including additional program information and synopses. In such circumstances, the form and content of the presentation of the data are not pre-determined by the nature of the compilation and are not irrelevant to infringement.

Does Ice reproduce the Weekly Schedule in the course of making and updating the IceGuide? 177 Nine contends that Ice's recourse to the Aggregated Guides to check the Nine Programming and update the IceGuide involves a reproduction of a substantial part of the Weekly Schedule and, therefore, an infringement. In its submission, the fact that the program listings information in the IceGuide is presented differently on subscribers' Media Centres or PVRs from the manner of presentation of the Weekly Schedule is irrelevant.

Principles 178 Infringement is not necessarily avoided where material is simply checked with the data subject for verification or where the arrangement is different (Waterlow Publishers Ltd v Rose (1989) 17 IPR 493 cited in Desktop at [346] per Sackville J). However, the concept that the taking of a single line of a directory for the purpose of saving labour and trouble amounts to an infringement was a 'famous but excessive admonition' (Desktop at [405] per Sackville J referring to Kelly at 701-2 per Sir W Page Wood VC). The fact that copyright may exist in a compilation does not mean that it exists in the individual facts referred to therein (Victoria Park at 498 per Latham CJ and at 511 per Dixon J). The taking of line of a directory will not be sufficient for infringement if it does not constitute a substantial part (s 14(1) of the Act; Waterlow Directories Ltd v Reed Information Services Ltd (1990) 20 IPR 69 per Aldous J at 73, cited in Desktop at [347] per Sackville J). However, copyright in a compilation may be infringed by appropriating 'an undue amount of the material, although the language employed be different or the order of the material be altered' (Laddie H, Prescott P, Vitoria M, Speck A and Lane L, The Modern Law of Copyright and Designs (3rd ed, 2000) at paras 3.88 and 3.90, cited in Desktop at [375] per Sackville J). 179 Nine relies on the decisions in which British courts have found infringement of copyright in television or radio guides. In British Broadcasting Company v Wireless League Gazette Publishing Company [1926] 1 Ch 432, the British Broadcasting Company ('BBC') began publishing its own daily programs for the ensuing week each Friday in the Radio Times. The published material gave the day and hour of each performance and certain additional information. The preparation, arrangement and editing of the actual programs involved considerable time, skill and labour, although the preliminary work of fixing the times, engaging the artists and choosing the items had been done some time beforehand. Justice Astbury held that there was copyright in the compilation of the seven advance daily programs from which the defendants selected and deliberately copied items. His Lordship found that the defendants had, by copying the published program listings, infringed copyright in the Radio Times. Justice Astbury observed that there was still infringement where less than the whole of the compilation was taken but did not give this aspect any detailed consideration because there had been "wholesale copying" (at 443). 180 In Independent Television Publications Limited v Time Out Limited [1984] FSR 64,daily program schedules of programs to be broadcast by channels including the BBC were compiled for publication in weekly format in the TV Times and the Radio Times. It was accepted that 'a great deal of time, energy and skill' was expended in producing the schedules for the programs ultimately listed in the two publications (at 66). The defendants took the date, title and time of transmission information 'either wholly from'the published weekly schedules or 'possibly occasionally only checked' the information they published by reference to those guides (at 67, 73). They published all or some of the information taken from the published schedules in Time Out, together with synopses which were independently drafted. The defendants accepted that sufficient skill and labour was invested in the production of the daily program schedules to justify a claim to copyright but argued that that 'what is being done…is no more than creating information'. Mere information, it was submitted, could not be the subject of copyright protection. The issue for determination was whether the schedules did any more than create information. Mr Justice Whitford rejected the submission that the program schedules were mere information that could not be protected by copyright (at 72). His Lordship also considered that a substantial part of the daily program schedules had been taken but recognised that what constituted a substantial part was a question of degree, depending on quantity taken and the importance of what was taken (at 73). It was accepted that selection on "a very limited basis" would not amount to infringement (at 74). The fact that synopses were added did not negate a finding of infringement. His Lordship emphasised that a person is free to start with a public source and from that source to produce his or her own work which may correspond very closely with the copyright work of the earlier author (at 69). 181 In neither of these two cases was there not only an absence of wholesale copying but also the checking of information against a third party aggregated guide, the checking of a selection of listed items and that selection being of the information for a given entry and the number of entries in the compilation. The cases illustrate that copying is an important factor and that it is a matter of fact and degree to ascertain whether there has been a taking of a substantial part. Each case turns on its own facts. While Independent Television Publications and Wireless League Gazette are examples that have fallen on one side of the line, they are not determinative of these proceedings. 182 Where the manner of presentation is the basis for the attraction of copyright, it may be that a presentation of the same information in different form would not infringe (Victoria Park per Dixon J at 511). In such circumstances there may not have been a taking of a "substantial part", which is assessed by reference to the quantity and the quality of what is taken and the inter-relationship between them (Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 at [70] per Lindgren J, cited in Gold Peg at [170]). It is a question of fact and degree (Crennan J in Gold Peg at [190]; also emphasised by McHugh and Kirby JJ in dismissing an application for special leave to appeal from the Full Court in Network Ten Pty Limited v TCN Channel Nine Pty Limited [2005] HCATrans 842). A defendant may rework the work of a plaintiff, capturing the ideas used or facts referred to but in a way that does not infringe because it is not a substantial reproduction. It may constitute a new original work. The taking of a substantial part of a copyright work will vary depending on the nature of the work and the degree of originality of the original work (Skybase at 532 per Hill J, with whom French J agreed). The'originality of that part of the work taken by the alleged infringer' is critical (Desktop at [409] per Sackville J). 183 The originality of a compilation may lie in the selection or arrangement of the information. It also may reflect the skill and labour of gathering the facts. As already noted, in the present case, the Weekly Schedule reflects both. It is only the originality of expression that is relevant, not the originality of the idea the subject of the expression (Donoghue v Allied Newspapers Limited [1938] Ch 106 at 110 per Farwell J). It must be determined whether the part that is taken is an essential or material feature of the whole work, regarded as a copyright work; that is, 'whether the part or parts taken represent a substantial part of the labour, skill and judgment of the author that made the whole work "original"' (Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378 at [55] per Wilcox and Lindgren JJ). As one should not dissect a work to determine if a part could be protected by copyright standing alone (Ladbroke at 277 per Lord Reid), so it is inappropriate to dissect the work for the purposes of infringement. The correct approach is to decide whether the work as a whole is protected by copyright and then to determine whether the work or a substantial part of the work as a whole has been taken. 184 The underlying principle is that the law of copyright does not give an exclusive right to state or describe particular facts (Victoria Park at 498 per Latham CJ). Substantial reproduction and causal connection are separate and cumulative requirements for a finding of infringement (Desktop at [399] per Sackville J). If a causal connection is shown, it is then necessary to assess whether the allegedly infringing work can fairly be said to be so sufficiently similar to the first that it is but a reproduction (Skybase at 533 per Hill J, with whom French J agreed). While copying is an essential element in providing the requisite causal connection between the copyright work and the alleged infringement, copying does not, of itself, determine whether or not there has been the taking of a substantial part. Not every act of copying is an infringement of copyright. It is also necessary to establish the appropriate subject matter for copyright, what is original and whether there has been a taking of a substantial part (Network Ten 218 CLR 273 at [14]-[17] per McHugh A-CJ, Gummow and Hayne JJ). 185 In Gold Peg, Crennan J discussed the assessment of infringement. The first inquiry was to look to the similarities between two works, "which is a question of degree, taking into account the originality and essential nature of the elements which are found" (at [174]). The second inquiry was whether there had been actual copying. Her Honour considered it "instructive" whether the products would compete in the market. If actual copying were found, the next step was to ask whether a "substantial part" was copied (at [179]). The taking of a substantial part may occur in circumstances where quite small portions of a work are taken (at [188]); it is a question of quality rather than quantity. The quality of what is taken reflects the importance which the part taken bears in relation to the copyright work as a whole. It is not relevant to have regard to the importance that the part taken forms of the defendant's work (at [189]). Justice Crennan considered the factors relevant to determining substantial part to include originality, whether the purpose of the taking was to save labour and the effect of the taking in the market for the plaintiff's work (at [191]-[192]).

Consideration 186 The Weekly Schedule and the IceGuide are each similar in the time and title content for Nine programs but are not similar in the totality of the information included nor in the form of presentation of the data. Ice did not copy the whole of the information for insertion into the IceGuide but there has been the taking of time and title information from the Aggregated Guides by checking and updating of the IceGuide. Ice staff access those guides and choose whether to replace the time and/or title information in the starting template for each day with information from the Aggregated Guides. 187 If each "sliver" or element of the Nine compilation is entitled to copyright protection, Ice accepts that it cannot defend these proceedings. Ice submits that a piece of information about, for example, a change in episode sequence is not a copyright protected work but 'at best, a tiny star in the galaxy of a compilation'. This accords with Victoria Park. Nine accepts that a single "sliver" of information, such as the programming over five days at 8 pm, does not amount to a substantial part of the Weekly Schedule nor of the Aggregated Guides. 188 The Aggregated Guides publish a substantial part of the information set out in the Weekly Schedule. Nine retains copyright in the Weekly Schedule. The skill and labour invested in a compilation may continue to be protected even where that compilation is integrated into or extended to become a different compilation which is itself protected by copyright. Nine asserts that the Aggregators' publication is as a 'sub-publisher' of the Weekly Schedule, authorised by Nine. Nine contends that, in updating its guide by reference to the Aggregated Guides, Ice is taking a substantial part of its copyright work. 189 The IceGuide does not replicate the content or form of the Aggregated Guides. The differences in content are primarily in the additional program information and the synopses. Those sets of information from the Weekly Schedule are not necessarily replicated in the Aggregated Guides. For example, synopses are edited and may be shortened. Importantly, the Aggregated Guides also contain information from the Late Change Notices. That information is not included in the Weekly Schedule sent to the Aggregators. The form and arrangement of the IceGuide is different to that of the Aggregated Guides and different, in turn, to the form and arrangement of the Weekly Schedule. Accordingly, neither the content nor the format of the Weekly Schedule is replicated in the IceGuide. 190 The Weekly Schedule and the Aggregated Guides contain not only time and title information but also additional program information and synopses. Ice may reject the additional program information in the Aggregated Guides as incorrect on the basis of its own knowledge or research and never takes the synopses. Disregarding Ice's assertion that it does not "take" any information as it does not copy, but amends time and title information from its own database after checking the published guides, Ice does not take the whole of the time and title information from the Aggregated Guides. It uses so many 'slivers' of information as are necessary to update those parts of the IceGuide. The Nine program information forms only a part of the aggregated program information for all of the networks represented in the Aggregated Guides. 191 Ice has not taken a quantity of information sufficient of itself to amount to a substantial part of the content of the Aggregated Guides or of the Weekly Schedule, considered as a whole. It has not taken the form of either compilation. The basis of the Ice subject matter is derived not from the Weekly Schedule but from the Templates for Sydney and later iterations. To the extent that there are similarities of form, they are dictated by the nature of the subject matter. 192 Nine contends that the quality of the time and title information, its importance in the context of a schedule of programs to be broadcast and the importance of the accuracy of a published program guide are sufficient to make the taking of the information necessary to check and update the IceGuide the taking of a substantial part of the Weekly Schedule. The accuracy, from week to week, is reflected not only in changes recorded in the Weekly Schedule but also in the subject matter of the Late Change Notices. Over 600 Late Change Notices were issued between 1 April 2005 and 10 August 2006. A single Late Change Notice may contain information for more than one program change. While the time and title of a program to be broadcast in one week that was not broadcast in a previous week may be qualitatively important, for series or episodic programs which form a significant part of the Nine Programming, the time and title may be of little importance and the synopses may be more important. In terms of the originality of the information included in the Weekly Schedule and in the Aggregated Guides, Nine has not established that, as a whole work, the time and title information is qualitatively more important than the synopses. When the originality of the component parts of the Weekly Schedule are considered, Nine has not established that, for the purpose of the compilation itself, the time and title information, determined for the purpose of broadcasting, has a greater claim to originality than the synopses created for the purpose of insertion into the compilation. Nine has not demonstrated that, qualitatively, the nature of the information taken or used by Ice constitutes a substantial part of the whole compilation. I am not prepared to infer that it is. 193 The skill and labour expended by Nine referable to the changing data to which Ice refers is not primarily expended for the purpose of producing a literary work, the compilation, but for the purpose of broadcasting programs in an order so as to maximise viewers. There is not a relevant appropriation of that skill and labour by Ice in composing the IceGuide. Ice gains the benefit of the preparatory work by Mr Healy and Ms Wieland in deciding on the positioning and identity of the Nine programs and, for a program that is not the subject of a Late Change Notice, the recording of that program by Nine into the Weekly Schedule. It can be said that Ice copies "slivers" of information. Over an extended period of time, the impact of the constant updating may have both a quantitative and qualitative effect on the accuracy of the IceGuide. However, for any given day or week the information taken is not of sufficient quantitative nor qualitative significance to be characterised as a substantial part of the whole of the Nine compilation, the Weekly Schedule. It is of even less significance if the subject matter of the Late Change Notices, which are not part of the compilation supplied by Nine to the Aggregators, are excluded. For the reasons earlier given, they should be so excluded.

What is the interest that Nine's copyright protects? 194 Justice Lindgren approached the test of infringement in Desktop by a consideration of the interest which copyright is intended to protect in the particular case (at [223]). In Desktop, it was the skill and labour of gathering together in one place the details of all of the members of a given universe - all the telephone subscribers in a region. The manner of arrangement of the details was then "inevitable" or "predictable" and involved little work. 195 In the present case, the interest which copyright is intended to protect is not necessarily a single interest. Potential candidates suggested by the evidence include: · The skill and labour of placing programs so as to maximise viewers. · The skill and labour of recording the Nine Programming into a material form (the Weekly Schedule) for distribution to the Aggregators and, in turn, the public. · Control of the timing of the release of program information for competitive reasons. · Control of the ability to record programs broadcast by stations within the Nine Network and its affiliates. · Control of the content of the published program information and to ensure that the published compilation is accurate. 196 The copyright subsisting in the Weekly Schedule as an original literary work will not necessarily protect each of these interests. Section 31 of the Act prescribes the exclusive rights that comprise the copyright in such a work. For present purposes, the relevant right is the exclusive right to reproduce the work in a material form (s 31(1)(a)(i) of the Act). 197 Nine relies upon the fact that Ice competes with it directly, in the sense that Nine sub-licenses its program listings information through HWW to Foxtel for use in an EPG, the Foxtel Digital Guide. Ice does provide its subscribers with the ability to record Nine programs in digital format, other than by subscription to Foxtel. However, it is not part of Nine's pleaded case that copyright subsists in its television broadcasts or the programs themselves. Nine's copyright in the Weekly Schedule does not extend to protect the interests in the broadcast and recording of those programs that are listed in the compilation (Ricketson S, The Berne Convention for the protection of literary and artistic works: 1886-1986 (1986) at 299, cited in Desktop at [74] per Lindgren J). Those interests are not protected by the compilation but by the copyright which subsists, if established, in Nine's television broadcasts and the programs themselves as copyright works. For example, 'there may be copyrights under Pt IV [of the Act] in a cinematograph film which is the subject of a television broadcast, and the film may utilise the copyrights under Pt III [of the Act] in, for example, original dramatic and musical works' (Network Ten 218 CLR 273 at [31] per McHugh A-CJ, Gummow and Hayne JJ). 198 Ice does not take the skill and labour of placing programs in that it plays no part in the placement of programs. It is not in competition with Nine to attract viewers in the sense of competition with other television networks. It does not have access to information from the Weekly Schedule until that information is released to the Aggregators and published by them in the Aggregated Guides. It does not take from Nine the timing of the release of the information, as Nine chooses when to provide the Late Changes Notices to the Aggregators for inclusion in the published Aggregated Guides. Ice's business plan requires it to be accurate. Mr Rilett may reject specific time and title information in the published guides and substitute his own listing of a program, although there is no evidence to suggest that this is other than an infrequent occurrence. 199 In determining whether a defendant has taken a substantial part in quality of a work, the impact of the copying on the interest protected by the copyright is relevant (Lahore J and Rothnie W, Copyright and Designs at [34.130]). This, in turn, may make take account of the commercial interests of the copyright owner and whether the parties are in competition, as well as whether there has been a taking of skill and labour. However, the reference point is the original work for which protection is claimed. A compilation is the collection, assembly and arrangement of chosen information into a single entity. Cases addressing the taking of a part of an artistic work, for example a line in a poem or a refrain in a musical work, may address substantial part and the quality and quantity taken differently. 200 The question is one of protection of the relevant skill and labour (Desktop at [235] per Lindgren J citing Laddie J in Autospin (Oil Seals) Ltd v Beehive Spinning (a firm) [1995] RPC 683 at 697-8). Once sufficient skill and effort have been expended in working out the information and writing it down, the compilation so created is a literary work and protected by copyright. As put by Lindgren J at [238]: '[t]he relevant principle is that where copyright protection is attracted to a compilation of factual information by the labour of collecting, verifying, recording and assembling the data and not by reference to the form of the compilation, reproduction does not require formal resemblance, and the notion of a substantial part of the compilation is not defined by reference to its form.' (emphasis added) It follows that where the relevant skill and labour is referable also to the form of the compilation, the notion of a substantial part of the compilation is also defined by reference to its form. 201 It is not disputed that Nine's employees expend skill and labour in the content and arrangement of the Weekly Schedule in the form in which it is sent to the Aggregators. 202 Nine contends that, once Mr Healy has decided on the order of the programs best to suit Nine's commercial and strategic interests, the time and title information in the Weekly Schedule is, in the words of Lindgren J in Desktop at [21], a "whole of universe case" - a case where there was no selection of the subscribers to be included in the directory and where the directory permitted only one mode of arrangement of the factual information and only one mode of expression of the individual entries. In such a case, anyone exploring the same universe would discover the same factual information and would, inescapably, produce a directory relevantly identical in form, as well as in content, to Telstra's (at [22]-[24]). 203 In Desktop, the originality of the compilation lay in the labour and expense of collecting the information to be compiled. The copyright attached to the Telstra directories by reason of that skill and labour and not because of the skill and labour of the manner of arrangement of the compilation. Lindgren J noted at [23] that, more commonly, there is some "scope for variance" in the manner in which the individual pieces of factual information are recorded, in the selection of the factual details to be compiled and in the arrangement of the compilation as a whole. 204 Unlike Desktop, different content and modes of expression and arrangement may be utilised for a television program schedule. A day's programs may commence at midnight or 6 am, the program may be in a 12- or 24-hour format and the number of days shown in advance may vary. The format may be horizontal or vertical. There exists a scope for variance in the manner of recording of time and description of title. Some columns may not be present in some guides. There is greater scope for variance in the recording of and choice of additional program information to be included. The additional program information and what is included in such information is not preordained. It is a matter of choice whether to include the fact of digital or analogue broadcast, censor rating, black and white or colour. There is the opportunity, here availed of by Ice, to change totally the synopses for each program. The IceGuide has significant differences of form and content. 205 Nine submits that adding information, albeit complex information and in quantity, does not avoid infringement. For the mere adding of information, that may be so. However, the submission does not take into account the fact that the adding of information may affect the compilation as a whole and the interrelationship of its component parts, so as to affect not only the quantity but also the quality of what it conveys. It is a question of fact and degree. 206 Recognising that copyright in this compilation is defined by the attributes of selection, expression or arrangement, Ice contends that the copyright subsists in the Weekly Schedule by virtue of each of those attributes. In the circumstances of this case it then follows, according to Ice, that infringement is assessed against each of the attributes of selection, expression and arrangement and, if one of these is missing or not preserved in the Aggregated Guides to which Ice has recourse, there can be no reproduction of the Weekly Schedule by Ice. If, by that submission, Ice submits as a general proposition that there is no infringement of a compilation unless each of the selection, expression and arrangement are reproduced, then that is inconsistent with Lindgren J in Desktop. While the attributes of selection, expression and arrangement have all been exercised in the creation of the Weekly Schedule, a taking of any one of those attributes may be sufficient to constitute the taking of a substantial part of the work as a whole, if the requisite skill and labour have been appropriated. 207 Further, it is not a question of saying whether the expression "skill, judgment and labour" is conjunctive or disjunctive. It is the correlation between what is being taken by the alleged infringer and what is original and thereby attracts protection under s 32 of the Act. If a work is sufficiently original so as to attract protection but skill and labour is only expended in one of those attributes, it is against that attribute that infringement is measured. 208 The connection between the particular form of skill and labour and the attraction of copyright protection was emphasised by Black CJ in Desktop at [6]. Justice Lindgren also noted the distinction between the labour and expense of obtaining the information, the necessary information for the arrangement and compilation and then of the actual making of the compilation. Nine is, like Telstra in Desktop, in the position of possessing the material for inclusion in the compilation because of the effort of collating the time, title, additional program information and the synopses to be compiled. That information is collated, however, not solely for the purpose of creating a literary work, the Weekly Schedule. The main purpose of the work done by Mr Healy and Ms Wieland and the others at Nine is to determine the Nine Programming - the order of programs to be broadcast. Having said that, it is also the case that the creation of the Weekly Schedule involves sufficient skill and labour so as to be an original literary work in which copyright subsists and that is not disputed by Ice. Nine's skill and labour in determining the Nine Programming resulted in the broadcast of those programs and the information for inclusion in the Weekly Schedule. Ice does not engage in broadcasting. Ice did not take the broadcast information in the Weekly Schedule to create the amended Templates for Sydney. It obtained that information by watching television and writing down the time and title of Nine programs, creating its own additional program information and synopses and amending its templates by reference to the Aggregated Guides. The question is not whether Ice took the skill and labour which is expended in programming decisions but whether it took the skill and labour of creating the copyright work. For example, Mr Healy or Ms Wieland may spend a great deal of time, skill and labour in deciding whether to purchase a new series from the United States, negotiating the purchase and deciding the timeslot in which it should be broadcast to maximise viewers. Once that decision is made, the time and title of that program is determined for the purposes of the Weekly Schedule. The skill and labour expended for the purposes of maximising the benefit of the broadcasting is not coextensive with that expended for the purposes of the creation of the copyright work. 209 The compiler of the Weekly Schedule of Nine programs is not necessarily the same person who determines the programming, the time and tile of the programs and is the author or originator of the facts recorded in the compilation. Once the programs are broadcast, the time, title, nature and content of those broadcast programs are available to the public. A person wishing to compile a schedule of those broadcast programs by viewing them and recording all of that information does not, in the making of that second compilation, appropriate the work of the creator of the record of the programs in the Weekly Schedule. It is similar to a speech and the report of the speech (Walter v Lane [1900] AC 539, cited in Desktop at [68] per Lindgren J); they are two different things and the authors are relevantly two different persons. 210 The skill and labour of creating the Aggregated Guides accessible to the public, including Ice, is in the content and the form in which the information is there presented. The Aggregated Guides are separate compilations of which the Nine programming information or "Nine Listings Content" represents only a part. They are created by the independent skill and labour of the Aggregators and do not reflect the precise content and arrangement of the Weekly Schedule. Nine does not claim copyright in the Aggregated Guides but says that it retains copyright in so much of those guides as contains the Nine Programming, which was contained in the Weekly Schedule. Ice does not appropriate the skill and labour expended by Nine in arranging the format or the content of the additional program information and the synopses. It created its own templates. It accesses the Aggregated Guides. Ice adopts its own format and provides its own content. It amends the time and title information for some programs that it has not "predicted" correctly. It utilises its own skill and labour, via its software system, to insert that information into the IceGuide. It does not take the skill and labour attributable to the form of the compilation. It does not take sufficient of the skill and labour of the content of the Aggregated Guides, let alone the Weekly Schedule, to constitute a substantial part. 211 In order to ascertain whether the taking of the slivers of time and title information, individually and cumulatively for a given week constitutes the taking of a substantial part of Nine's copyright work as it forms part of the Aggregated Guides, a number of factors must be taken into account: · Ice does not access the Weekly Schedule but the Aggregated Guides. · The time and title information of the Weekly Schedule does not include the information the subject of the Late Change Notices. · As Ms Wieland stated, prime-time movies are never included in the Weekly Schedule and new programs may not be included. They are the subject of Late Change Notices. · Strip programs may be scheduled for broadcast in the same timeslot by Nine for months and sometimes years. · Programs with episodic series are also often scheduled in the same timeslots for extended periods of time. As already noted, for these programs, the time and title information may be of less qualitative importance than the synopses. · Each compilation, the Weekly Schedule, the Aggregated Guides and the IceGuide includes the additional information and the synopses. · Ice refers to the whole of the time and title information in the Aggregated Guides but only takes "slivers" of it. Those "slivers" do not bear substantial importance in relation to the originality of the Weekly Schedule as a whole. · The synopses are, for each of the Weekly Schedule and the IceGuide, original works with commercial importance. · The skill and labour engaged in by Nine for the creation of the time and title information is skill and labour that is expended for the purposes of broadcasting and as preparatory skill and labour for the purposes of the compilation. · The skill and labour expended and the originality of the Weekly Schedule relate not only to the information contained in that schedule but also to the arrangement and form of the information. · Ice does not take the arrangement or form. · Ice expends its own skill and labour and original work in the creation of the IceGuide which is not derived from Nine's copyright. This includes the creation of the templates, the software to amend the guide, the decisions on what to include in updating and amending the guide, the writing of the synopses and the presentation of the data. 212 In assessing what Ice does take as a matter of fact and degree, I am of the view that it does not represent a substantial part of the Weekly Schedule. It follows that Ice does not reproduce a substantial part of the Weekly Schedule as it appears in the Aggregated Guides or a substantial part of the Aggregated Guides in the course of making and updating the IceGuide.

The remaining alleged infringements 213 I have found that Ice does not reproduce a substantial part of the work in which copyright subsists, the Weekly Schedule, in the course of making and updating the IceGuide. Nine accepts that it follows that the second to fifth allegations of infringement must fail. Although it is unnecessary to comment further, I would add the following observations. 214 Nine conceded during the hearing that the last infringement is '[t]he communication to the computer and the arrival [of the IceGuide] on the hard disk'. Accordingly, the allegation that there has been an authorisation by Ice of subscribers to reproduce the Weekly Schedule when transmitting the IceGuide from their PC to a PVR is not in issue. Nine is not relying on the action of any user. 215 The IceGuide can be made to appear by users in the different formats that are permitted by particular brands of PVR or Media Centre. This may be in a multiple channel, single channel and single program format. Program schedules may be viewed on-screen for a period of six to eight days from the current date. Programs may be selected and recorded. The IceGuide data are stored in files on the hard drive of the user's device as a text file. That text file has a different format and appearance to the IceGuide and is used by the PVR or Media Centre in order to display the IceGuide.

The other infringements by reproduction 216 Nine alleges: · A reproduction of the Nine Schedules (including the Weekly Schedule) in the course of Ice storing successive infringing IceGuides in the Ice Database and on servers controlled by it. · A reproduction of the Nine Schedules (including the Weekly Schedule) onto the processing memories or hard drivers of subscribers' PCs or Media Centres, or alternatively Ice's authorisation of subscribers' acts of reproduction. 217 In response, Ice points out that there is no evidence as to the structure of the Ice Database nor any evidence that the IceGuide is stored on users' PVRs or Media Centres in any format other than text files. Nine's Convergent Technologies Manager, Mr Joshua Lowcock, explained that there is no requirement for databases to be arranged in a particular way. Data are stored as a series of electrical impulses. The manner of selection, expression and arrangement of the Weekly Schedule would need to be reproduced, Ice submits, for there to be a reproduction in the Ice Database or in the text files. Ice submits that infringement is not established by finding the elements of a compilation somewhere, randomly, on a hard drive or in a database. It is said to follow that the second and third acts of infringement cannot be made out. 218 If the making and updating of the IceGuide had constituted an infringement, the fact that data may be transmitted and stored by Ice and its subscribers in different formats to the Weekly Schedule would not necessarily mean that the other reproduction allegations would fail (Desktop at [443] per Sackville J). As has earlier been emphasised, if copyright attaches to preparatory skill and labour and not to format, the format of reproduction is not determinative of infringement. Consistent with this principle, s 21(1A) of the Act, on which Nine relies, provides that a work is taken to be reproduced if it is converted into or from a digital or other electronic machine-readable form, and any article embodying the work in such a form is taken to be a reproduction of the work. 219 In my view, it does not matter what intermediate steps are involved in the passage of data from the IceGuide server to the destination machine, be it a PVR or Media Centre, nor the protocol that the relevant machine has in respect of receiving data. The question is whether the skill and labour in the production of the Weekly Schedule has been appropriated. I accept, for example, that had the first infringement allegation been made out, in the absence of evidence to the contrary, the text files which sit on a subscriber's PC in a folder on the hard disk would be a reproduction and, therefore, an infringing copy, of the Weekly Schedule for the purposes of the third infringement allegation. That is so whether Ice is considered to have made the reproduction of the text files itself or authorised that reproduction by its subscribers. 220 Accepting that there is no reproduction or substantial reproduction of the Weekly Schedule on the hard drives of subscribers' PCs or Media Centres, authorisation does not arise. If there is such reproduction, the facts support the contention that Ice "authorises" the reproduction of the Weekly Schedule by users of the IceGuide within the meaning of s 36 of the Act. It "sanctions, approves and countenances" such activity (The University of New South Wales v Moorhouse (1975) 133 CLR 1 at 12-13 per Gibbs J and at 20-21 per Jacobs J). Ice encourages use of the IceGuide and is, at best, indifferent as to whether the Weekly Schedule is reproduced on the hard drives of subscribers' PCs or Media Centres (Australasian Performing Right Association Ltd v Metro on George Pty Ltd (2004) 210 ALR 244). Ice has the power to prevent such reproduction and takes no steps to do so. The actions of Ice are not dissimilar to those of the proprietor of software made available from websites enabling copying and communication of sound recordings (Universal Music Australia Pty Ltd v Sharman License Holdings Ltd (2005) 220 ALR 1).

The communication infringement 221 Nine alleges that Ice's communication of the Weekly Schedule to subscribers via the internet infringes the exclusive rights provided by s 31(1)(a)(iv) of the Act. To communicate a work is to make the work available online or transmit the work electronically, whether over a path or combination of paths, provided by a material substance or otherwise (s 10(1) of the Act). 222 The requirement under the Act that the "communication" must be "to the public" means "to the copyright owner's public" (Telstra Corporation Limited v Australasian Performing Right Association Limited (1997) 191 CLR 140). Ice submits that Ice's subscribers cannot be considered to be Nine's "public" because 'Nine could not reasonably expect payment from anyone…for receipt by [Ice] subscribers of the [Weekly Schedule]'. It points to Mr Marshall's evidence that there is no paying market for a program guide in non-aggregated format. This does not address Nine's contention. Nine's public includes persons who wish to view Nine's programs. This would include Ice subscribers. Indeed, if it did not, there would be no commercial reason for Ice to include Nine program listings information in the IceGuide. 223 Ice also points to s 22(6) of the Act which relevantly provides that a "communication" is taken to have been made by the person responsible for determining the content of the communication. That person is said to be the subscriber rather than Ice. Ice relies on the fact that users determine the regularity by which data are downloaded and the subsets of IceGuide data that are downloaded (eg, Sydney rather than Melbourne channels). It follows, Ice submits, that there has been no relevant "communication" by Ice. 224 The IceGuide is made available online in such a way that it can be electronically transmitted as a result of a request by the user of the IceGuide. The fact that a user may elect to download the IceGuide for only some channels and determine the regularity of "fetch" is not to the point. The content of such data as is downloaded is plainly "determined", "formulated" or "created" by Ice (Universal Music Australia Pty Ltd v Cooper (2005) 150 FCR 1 at [74] per Tamberlin J). That satisfies s 22(6) of the Act. 225 It follows that, had the first infringement been made out, I would have been of the view that Ice communicates the Weekly Schedule to the public within the meaning of s 31(1)(a)(iv) of the Act.

LEAVE TO FILE THE SECOND CROSS-CLAIM FOR UNJUSTIFIED THREATS 226 At the hearing, Ice sought leave to file the second cross-claim seeking a declaration, injunction and damages for unjustified threats pursuant to s 202 of the Act. Leave is required because Ice did not comply with O 5 r 9(1) of the Federal Court Rules (O 5 r 9(2)). Nine opposes leave being granted on the basis that the right to bring the cross-claim does not arise under s 202 and that the discretion should be exercised to refuse leave where Ice sought to file the cross-claim on the second day of hearing. Nine reserves its right to object to the cross-claim as drafted. 227 Nine issued letters of demand to Ice and Ice Holdings on 28 April 2006 which, Ice contends, threatened Ice with an action or proceeding in respect of an infringement of copyright. Nine commenced proceedings for infringement on 15 May 2006. As at that date, there was no longer a threat, the threat had been "made good" by commencement of the proceedings. 228 The Act provides a statutory cause of action for groundless threats of infringement, even if made bona fide (Nine Films & Television Pty Ltd v Ninox Television Ltd (2005) 146 FCR 144 at [48] per Lindgren J). Section 202 relevantly provides: '(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding in respect of an infringement of copyright, then, whether the person making the threats is or is not the owner of the copyright or an exclusive licensee, a person aggrieved may bring an action against the first‑mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he or she has sustained, unless the first‑mentioned person satisfies the court that the acts in respect of which the action or proceeding was threatened constituted, or, if done, would constitute, an infringement of copyright. … (4) The defendant in an action under this section may apply, by way of counterclaim, for relief to which he or she would be entitled in a separate action in respect of an infringement by the plaintiff of the copyright to which the threats relate and, in any such case, the provisions of this Act with respect to an action for infringement of a copyright are, mutatis mutandis, applicable in relation to the action.' 229 Nine contends that Ice cannot, as a matter of procedure and of statutory construction, commence proceedings by way of originating process or cross-claim once proceedings for infringement have commenced. Nine submits that the commencement by it of the action for infringement "extinguishes" the existence of the threat of an action or proceedings in respect of an infringement of copyright. 230 There are a number of indicia in s 202 that assist in determining the scope of application of the section: · The threat is of an action or proceeding. The action or proceeding cannot have commenced before the threat is made. Once the proceedings for infringement are commenced, the threat no longer exists. · The threat must be unjustifiable, that is the acts in respect of which the complaint is made do not constitute an infringement of copyright. · The words 'threatens' and 'making the threats' in s 202(1) are in the present tense. · An action for groundless threats may be commenced by a "person aggrieved", that is, standing to bring the action is not restricted to the recipient of the threat. In Avel Proprietary Ltd v Multicoin Amusements (1990) 171 CLR 88 at 118 McHugh J observed that the evident object of the section is to enable a "person aggrieved" by the threat of legal proceedings to obtain a determination as to whether the activities in respect of which an action or proceeding is threatened are an infringement; it prevents the "Sword of Damocles" hanging over the head of the threatened person (Avel Proprietary Ltd (1990) 171 CLR 88at 104 per Dawson J). · The remedies provided for are a declaration that the threats are unjustifiable, an injunction against the continuation of the threats and damages. These remedies relate to the threats and not to any action or proceeding for infringement of copyright. · The remedies are not available if the acts do constitute an infringement of copyright. · Not only is it a defence that the acts constituted infringement, a defendant in an action for unjustifiable threats may counterclaim, effectively as an action for infringement (s 202(4)). · There is no provision for an action or a cross-claim for the unjustified or unjustifiable commencement of an action for infringement of copyright. 231 The prerequisite in s 202(1) is that a person is threatened with an action or proceeding. This refers to a proceeding not yet brought. "Threat" imports an intention to bring an action or 'an indication of probable evil to come' (Macquarie Dictionary (4th ed, 2005)). That is the commencement of the proceedings threatened. Once the proceedings have been commenced, the threat to commence those proceedings has ceased. The link between the threat and the commencement of legal proceedings and the need for a statutory remedy in the context of the comparable s 121 of the Patents Act 1952 (Cth) (then in force) was commented upon by von Doussa J in Townsend Controls Pty Ltd v Gilead (1989) 14 IPR 443 at 448. His Honour said that the purpose of the section was to provide a statutory remedy where a person makes a threat instead of enforcing the claimed monopoly by instituting proceedings for infringement. 232 The history of the section suggests that it was concerned to deter unjustified threats themselves, threats that did not result in infringement proceedings or could not be justified by actual infringement; threats made to 'frighten away competitors or to damage such persons less directly, by threatening to sue their customers or suppliers as joint tortfeasors' (Ricketson S and Creswell C, The Law of Intellectual Property: Copyright, Designs & Confidential Information (Lawbook Co., subscription service) at [2.195]; Avel Pty Ltd v Intercontinental Grain Importers Pty Ltd (1996) 65 FCR 154 at 159)). It is a right extended to the threatened person not generally available to those threatened with an action for a civil wrong. 233 Section 202 does not specifically provide for a cross-claim in an infringement action, only for the commencement of an action. However, by O 5 r 1(1) of the Federal Court Rules, a respondent: 'may cross‑claim against an applicant for any relief to which the respondent would be entitled against the applicant if the applicant were a respondent in a separate proceeding commenced in the Court by the respondent for that purpose.' 234 Ice did not bring its action when the threats were current. Had it brought the action, Nine would have undoubtedly availed itself of the entitlement in s 202(4) of the Act to bring an action for infringement by way of cross-claim. I do not see that Ice would have been precluded from bringing a cross-claim under s 202(1) just because Nine filed its proceedings first. It is important, however, to make it clear that Ice at no time has the right under s 202 to claim for any remedy that is not based upon the threats. To the extent that those threats were directed to Ice, they ceased upon the commencement of proceedings by Nine. Section 202 does not entitle Ice to claim damages resulting from the commencement of these proceedings. 235 There remains the question of discretion to permit Ice to file the second cross-claim. The parties relied on written submissions only. Where those submissions refer to correspondence not in evidence but without objection, I will accept the summary of that correspondence. In the history of these proceedings, Nine points out that Ice did not provide for a cross-claim in consent orders. Subsequently, Ice filed a cross-claim ('the first cross-claim') without leave but that cross-claim did not include a claim for unjustified threats under s 202. Approximately ten days before the commencement of the hearing, approximately five months after the commencement of proceedings, Ice notified Nine that it "reserved its rights" to commence proceedings pursuant to s 202(1) if Nine were unsuccessful in establishing its allegations of infringement. Ice had notified Nine that the first cross-claim was to be withdrawn some six weeks prior to the commencement of the hearing but it did not formally seek leave to discontinue that cross-claim until the second day of the hearing, when it also sought leave to file the second cross-claim. 236 The threats were not made to a third party but to Ice and Ice Holdings. The time between the threats being made (28 April 2006) and the commencement of proceedings (15 May 2006) is short. There is no evidence of any damage that flowed to Ice in that intervening time. Ice has particularised the damages claimed but it is not clear whether such damage occurred prior to the commencement of proceedings. Ice has not demonstrated that there is any utility in a declaration or injunction under s 202(1) once Nine's claim for infringement is dismissed. Nine submits that Ice's failure to alert it to the possibility of the second cross-claim prior to the commencement of the hearing may have resulted in prejudice. While there is no evidence of such prejudice, had Nine known that Ice intended to proceed under s 202(1), there may well have been actions that it might have taken or considered taking. Nine was entitled to know the totality of the case before the second day of the hearing. 237 While the second cross-claim would not prolong the existing application by Nine, permitting Ice to file the second cross-claim would prolong the proceedings between the parties. The injustice to Nine if the second cross-claim were filed would, it seems to me, to be out of proportion to the injustice to Ice if leave is refused (Incentive Dynamics Pty Ltd (In Liquidation) v Robins [1998] FCA 1046 per Mansfield J). Ice contends that, if leave is refused, it could commence separate proceedings under s 202. That is, of course, a matter for Ice. Such a right lessens the injustice that Ice might otherwise suffer if it were totally precluded from exercising its rights under the section. 238 In the circumstances and in the exercise of my discretion, I decline to grant leave to Ice to file the second cross-claim.

SUMMARY OF FINDINGS 239 For the reasons I have given, the application should be dismissed. For convenience only, a summary of my findings follows.

The Weekly Schedule is the copyright work 240 The work produced by Nine that is relevant to these proceedings is the Weekly Schedule. The Weekly Schedule is a product of Nine's skill and labour in selecting and ordering programs for broadcast. It is also a product of Nine's skill and labour in presenting or arranging the information therein in the form chosen by Nine. That skill and labour includes the synopses drafted or edited by Nine. Ice accepts that copyright subsists in each Weekly Schedule as an original literary work (s 32 of the Act). 241 Each of the components of the Weekly Schedule, including the days of the week, program time and title, additional program information and the synopses, are an integral part of that compilation. Copyright subsists in the compilation as a whole. Nine cannot claim copyright in the time and title information for a single day or week as if that information were itself a separate compilation. Nor can Nine claim copyright in its Late Change Notices. The Late Changes Notices are neither accessed by Ice nor included in the Weekly Schedule.

The Aggregated Guides are separate compilations 242 The Aggregators integrate the information in the Weekly Schedule with comparable information obtained from other free to air networks for publication in the Aggregated Guides. The aggregation of information does not "destroy" Nine's copyright in the Weekly Schedule. It does, however, result in the creation of the Aggregated Guides: compilations which are themselves separate and distinct from the Weekly Schedule. The Aggregated Guides are a product of the skill and labour of the Aggregators and their clients (eg, Yahoo). They differ in form and content to the Weekly Schedule. It can, however, be said that the preparatory skill and labour protected by the copyright in the Weekly Schedule remains as Nine's preparatory skill and labour for that part of the Aggregated Guides.

Ice does not infringe copyright in the Weekly Schedule 243 It is open at law to a person to ascertain the facts recorded in a compilation by independent inquiry and to compile his or her own compilation on the basis of that independent inquiry (Desktop). This is what Ice did during the "torture period" in 2004, when Mr Rilett developed the Templates for Sydney by watching television for three weeks and recording the details of the programs screened including name, channel and day of broadcast. Mr Rilett did not copy from the Aggregated Guides to create the Templates for Sydney. 244 The Templates for Sydney were entered into Ice's database and formed the basis for the IceGuide. Mr Rilett amended the time and title information in those templates prior to their entry into the Ice Database by reference to the Aggregated Guides. That means of amendment of information in the Ice Database continues today. Ice operators "predict over" a past IceGuide schedule from the same day of the week in a previous week to make a new IceGuide for that day. This involves use of Ice's software and the drawing of information in Ice's database. Ice checks each entry for the new IceGuide by reference to the Aggregated Guides and makes changes to the time and title information to reflect weekly variations in Nine's programming and late changes. The result is the creation of an IceGuide schedule which contains time and title information (but not additional information or synopses) that may be more than 99% similar to that part of the Aggregated Guides that reflects the Nine Programming. 245 Nine submits, as its primary case, that the making and updating of the IceGuide in this manner has resulted in the reproduction of a substantial part of its copyright work. This is a question of fact and degree to be tested by reference to the similarity between the works, the extent of actual copying, the quality and originality of what is taken and the interest which the copyright protects. Each case turns on its own facts. 246 Nine relies heavily on Desktop. Desktop was, however, a "whole of universe" case. A telephone directory permits no selection of the subscribers to be included and only one mode of arrangement and expression of the factual information therein. The interest that the copyright protected in Desktop was the skill and labour of gathering together in one place the details of all of the members of a given universe - the telephone subscribers in a region. By reason of the subject matter, the manner of alphabetical arrangement of the information was inevitable. 247 Different content and modes of expression and arrangement may be utilised for a television schedule. The Weekly Schedule, the Aggregated Guides and the IceGuide each differ in their manner of selection, expression and arrangement. It follows that form and content are each relevant to the question of infringement. 248 Ice does not engage in broadcasting. It does not take the skill and labour of placing programs in an order that appeals to viewers in that Ice plays no part in the placement of programs. It does not take the format of the Weekly Schedule. It does not take synopses from the Weekly Schedule. It conducts its own research and drafts its own synopses. 249 Ice does take slivers of time and title information each day from the Aggregated Guides. For the reasons I have set out in detail, Ice does not reproduce a substantial part of the Weekly Schedule in so doing. 250 It follows that Ice has not infringed Nine's copyright in the course of making and updating the IceGuide. Nine accepts that, in these circumstances, the other infringement allegations must also fail. 251 Ice is not precluded from bringing a claim for unjustified threats of copyright infringement pursuant to s 202(1) of the Act because Nine commenced proceedings for infringement before such a claim was made. However, for the reasons I have given, leave to file the second cross-claim is refused. 252 I will hear from the parties before making orders as to costs. I certify that the preceding two hundred and fifty-two (252) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Bennett.

Counsel for the Applicant: R Cobden SC and J M Hennessy

Counsel for the Respondents: J M Ireland QC, S C G Burley and J Cooke

Solicitor for the Respondents: The Argyle Partnership

Date of Hearing: 16-20 October 2006, 30 November 2006