Nine Network Australia Pty Ltd v IceTV Pty Ltd

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA

INTRODUCTION 1 The Full Court allowed an appeal by the applicant ('Nine') in relation to a claim of infringement of copyright in Nine's television program schedules by the respondents ('Ice'), (Nine Network Australia Pty Limited v IceTV Pty Limited [2008] FCAFC 71). The Full Court remitted the proceedings to me as the primary judge 'for hearing and determination consistently with these reasons for judgment' (at [129]). Briefly, the matter related to copyright in Nine's television program schedules and the use by Ice of Nine's information in its subscription based electronic program guide for television (the 'IceGuide').

FORMS OF ORDER 2 The parties have presented different versions of the appropriate orders to be made, each said to reflect the Full Court's reasons. Some of the differences between the orders have been resolved but others have not. I will make the orders that are agreed and consider in these reasons only those orders that are not agreed. As Nine was the successful party in the appeal, it is appropriate that I have regard, initially, to the orders that Nine proposes and the reasons advanced for the form of those orders and then consider Ice's objections and the form of orders proposed by Ice. 3 A form of orders as proposed by Nine that takes account of those orders that are agreed and highlights those disputed by Ice is as follows: In these orders the following terms have the following meanings: Additional Program Detail Information means any one or more of the following details: (a) episode titles; (b) episode numbers; (c) information about the currency of programs; (d) information about the formats in which programs are to be broadcast; (e) closed captioning information for the hearing impaired; (f) program classification information; and (g) consumer advice. Aggregated Guide means the published television program guide containing information for all free to air channels, including the applicant's channels, that is produced by any of the Aggregators where the guide has been created, in part, by using one or more Nine Weekly Program Schedules provided by the applicant to the Aggregator. Aggregators means HWW Limited, eBroadcast Australia and Pagemasters Pty Limited or any publisher of any other aggregated television guide (printed, electronic or otherwise) whose publication includes the Nine Weekly Program Schedule under licence from the applicant. IceGuide means the first respondent's television program schedules, whether known by that name or otherwise, and includes all versions of the IceGuide including IceGuide Widget and IceGuide PIMP. IceTV Database means the first respondent's database used in the preparation of its IceGuide. Nine Weekly Program Schedules means the applicant's weekly television program schedules which comprise: (a) Nine Program Time and Title Information; (b) Additional Program Detail Information; and (c) Nine Synopses. Nine Program Title and Time Information means the respective associated dates, titles and intended starting and finishing times for the transmission of the applicant's respective television programs. Nine Synopses means descriptive information about individual television programs included in a Nine Weekly Program Schedule. THE COURT DECLARES THAT: 1 The applicant is the owner of the copyright in the Nine Weekly Program Schedules. 2 The first respondent has infringed the copyright in certain of the Nine Program Schedules, by: (a) reproducing in a material form; (b) authorising the reproduction in a material form of; (c) communicating to the public; substantial parts of those Nine Weekly Program Schedules, without the licence of the applicant. THE COURT ORDERS THAT: As against the first respondent 3 The first respondent, whether by itself, its servants or agents or otherwise, be permanently restrained from infringing copyright in any of the Nine Weekly Program Schedules by: (a) reproducing in a material form; (b) authorising the reproduction in a material form of; (c) communicating to the public; or (d) authorising the communication to the public of, the whole or a substantial part of any Nine Weekly Program Schedules (whether made before or after the date of the making of this order), without the licence of the applicant. 4 Without limiting order 3 above the first respondent, whether by itself, its servants or agents or otherwise, be permanently restrained from using for the purpose of producing the IceGuide the whole or a substantial part of a Nine Weekly Program Schedule to the extent published in any Aggregated Guide in a manner that: (a) reproducesing in a material form; (b) authorisesing the reproduction in a material form of; (c) communicatesing to the public; or (d) authorisesing the communication to the public of, Nine Program Time and Title Information (including in the form of the IceGuide), to the extent that such information reproduces the whole or a substantial part of the Nine Weekly Program Schedule, without the licence of the applicant., PROVIDED THAT it will not be a breach of this order for the first respondent to observe the broadcast of the applicant's television programs and write down or use the results of that observation, including the times and titles of these programs. 5 The first respondent, whether by itself, its servants or agents or otherwise, be permanently restrained from deriving any Nine Program Time and Title Information including from any published guide (including any Aggregated Guide), for the creation or production of the IceGuide. 6 The first respondent, whether by itself, its servants or agents or otherwise, delete forthwith from any television program schedules (of which it has electronic copies including in the IceTV Database) all Nine Program Time and Title Information (but not the program and episode titles for any of the applicant's television programs) entered from 1 December 2005 to the date of this order Suspension 7 The operation of orders 34 to 57 inclusive be suspended until 5.00 pm on 1726 June 2008 for the purpose of permitting the first respondent to seek a stay of those orders, if advised. 4 Some of the detail in this latest version of the form of orders was not the subject of submission.

Definition of "Additional Program Detail Information" 5 This definition provides for different categories of information, such as episode titles and program classification information. Nine wishes the definition to mean 'any one or more of the following details'. Ice submits that it should mean the 'following details'. Ice's concern seems to be that the definition descends to individual episode titles. It seems to me that Ice's concern can be allayed and Nine's interest protected by defining "Additional Program Detail Information" to mean 'any one or more of the following categories'.

Definition of "Aggregators" 6 The definition originally proposed by Nine was limited to the named aggregators the subject of evidence in the proceedings, namely HWW Limited, eBroadcast Australia and Pagemasters Pty Limited. Nine's present definition of "Aggregators" means 'HWW Limited, eBroadcast Australia and Pagemasters Pty Limited or any publisher of any other television guide (printed, electronic or otherwise) whose publication includes the Nine Weekly Program Schedule'. Ice's definition requires the television guide to be an aggregated television guide and one whose publication includes the Nine Weekly Program Schedule under licence from Nine. The definition of "Aggregators" is relevant because the term "Aggregators" is included in the definition of "Aggregated Guide", which features in the proposed orders. 7 The evidence of Ice's activities concerned its access to aggregated guides published by the named aggregators in order to update the weekly television programmes in its IceGuide. The named aggregators are all publishers of aggregated television guides. There was no evidence that any of the aggregators published other than an aggregated television guide. Accordingly, it seems to me appropriate to include that qualification in the orders. 8 I see no good reason, however, to restrict the definition of Aggregators to publishers who publish the guides under licence from Nine. Some aggregators may, for example, publish under licence from other aggregators. Accordingly, I will not include Ice's suggested phrase 'under licence from the applicant' in this definition.

Definition of "Nine Program Time and Title Information" 9 Nine defines "Nine Program Time and Title Information" to include starting and finishing times for the transmission of Nine's television programmes. The television guides the subject of evidence included, as time and title information, dates, titles and intended starting times. They did not include finishing times. There is no basis for including finishing times in the definition and accordingly I shall delete this from the final orders.

Proposed Order 4 10 I raised with the parties my concern that the restraint was in terms of 'a substantial part' of the Nine Weekly Program Schedule. I agree with what was said by Lockhart J in ICI Australia Operations Pty Limited v Trade Practices Commission (1992) 38 FCR 258 at 249 that injunctions 'should be granted in clear and unambiguous terms which leave no room for the persons to whom they are directed to wonder whether or not their future conduct falls within the scope or boundaries of the injunction'. There is or is likely to be a difference of opinion as to what constitutes a substantial part, by reference to particular times and titles. The parties referred me to orders that have been made in other cases concerning infringement of copyright and in particular Universal Music Australia Pty Ltd v Cooper [2005] FCA 1878 where Tamberlin J made orders restraining the respondents in terms of 'the whole or a substantial part of any of the sound recordings'. Nine also submits that it is appropriate to make orders utilising statutory expressions (Sterling Winthrop Pty Ltd v R & C Products Pty Ltd (1994) ATPR 41-308). 11 Both Nine and Ice assure me that they consent to an order by reference to "a substantial part" of the Nine Weekly Program Schedules. Ice's consent is given with the understanding that 'contempt proceedings are not appropriate for the determination of questions of construction of the injunction or the aptness of the language in which they are framed' (ICI at 259 per Lockhart J). Nine emphasises that the understanding of the orders is in the context of the proceedings as a whole and framed by those proceedings (Welcome Real-Time SA v Catuity Inc (No 2) [2001] AIPC 91,736 at [9] per Heerey J). Nine and Ice submit that it is for the parties to ascertain the meaning of "substantial part" by reference to the Full Court decision. In those circumstances, I will make the order by reference to "substantial part". 12 The Full Court (at [108]) confirmed the finding that Nine's copyright was in each Weekly Schedule as a whole. The Full Court concluded (at [109]-[110]) that it was the time and title information that formed the centrepiece of the Nine Weekly Program Schedules and that it was the accuracy of the time and title information that was essential to Ice's business model. As the Full Court noted (at [113]), the time and title information 'was the foundation of the Weekly Schedules' and confirmed that the taking of even a small quantity or a portion of the copyright work can still be the taking of a substantial part of the work (at [114]). However, the Full Court did not say that each and every piece of information as to time or title constituted a substantial part of the copyright work. The Full Court rejected the description of "slivers of information" as diverting attention from the relevant criteria for determining substantiality (at [116]). The Full Court directed its attention to Ice's methodology and the end result of its checking and updating process. 13 The order restrains Ice from using the copyright work (the Nine Weekly Program Schedule) or a substantial part of the copyright work, being the Nine Program Time and Title Information. Clearly, Nine is entitled to restrain Ice from using its program and time and title information in the way described in the evidence, as set out in Nine Network Australia Pty Ltd v IceTV Pty Ltd (2007) 73 IPR 99. To frame the order as proposed by Ice, in terms of the use of the Nine Program Time and Title Information 'to the extent that such information reproduces…a substantial part of the Nine Weekly Program Schedule', raises further uncertainty, despite the fact that each party professes to understand what it means. 14 The appropriate order, it seems to me, should not be limited to what is presently called the IceGuide. Ice makes no secret of the fact that it seeks to continue its business in a way that it believes does not infringe Nine's copyright. In so doing it may continue to produce a guide that does not equate to the IceGuide. I am not satisfied that the definition of "IceGuide" in the proposed orders overcomes that problem. 15 The order I propose is as follows: Without limiting order 3 above the first respondent, whether by itself, its servants or agents or otherwise, be permanently restrained from using (including for the purpose of producing the Ice Guide) the whole or a substantial part of the Nine Weekly Program Schedule in a manner that: (a) reproduces in a material form; (b) authorises reproduction in material form of; (c) communicates to the public; (d) authorises a communication to the public of, the Nine Program Time and Title Information (whether made before or after the date of the making of this order) without the licence of the applicant. 16 I would consider inserting, after Nine Weekly Program Schedule, the words 'to the extent published in any guide, including any aggregated guide', if Nine or Ice requests. 17 The proviso in the proposed order, which begins "provided that…", was proffered by Nine after I expressed concern that the order would include matters found not to be infringement of copyright. An example was the watching of television by Mr Rilett and the copying down by him of the time and title of the broadcast shows that he watched. Ice asks that that proviso not be included. Ice points out that there are other circumstances which should the subject of any proviso. As the proviso would be to Ice's benefit and Ice does not wish it to be included, I will not include the proviso.

Proposed Order 5: Can Nine restrain Ice from using any Nine Program Time and Title Information? 18 Proposed order 5 is in terms of restraint from 'deriving any Nine Program Time and Title Information including from any published guide'. It follows from what I have said that Nine is not entitled to restrain Ice from using any time and title information, from any published source. In my view, Nine's interests are protected by Order 4. The prohibition in that order is not limited to any particular source of Nine Program Time and Title Information. I will not make this order.

Proposed Order 6: Is Ice required to delete episode titles? 19 Nine seeks an order that Ice delete all Nine Program Time and Title Information, entered from 1 December 2005 to date. As defined, that only extends to the titles of the television programs themselves, as associated with dates and starting times but not episode titles. Ice obtained episode titles from sources other than the Aggregated Guides and the Nine Weekly Schedules from, for example, internet publication of the episode titles of continuing series which had already been broadcast in the United States. The proposed amendment was inserted by Ice after submissions. As it clarifies the proposed order by way of exclusion, I will include it.

Suspension of the Orders 20 Ice seeks to have the operation of the orders suspended until such time as it can do one of two things: 1. investigate whether it can continue in business if these orders come into effect, pending its application for special leave to the High Court; or 2. if it forms the view that it cannot so continue in business, make an application for a stay of the operation of the orders. 21 The matter has been listed before a Judge of the Court on 25 June 2008, in relation to another aspect of the orders made by the Full Court. Nine does not oppose the suspension of the orders but will only consent to that operating until 17 June, for the purpose of permitting Ice to seek a stay of the orders. 22 In my view, no particular prejudice has been shown if the further, short period of time applies. As the matter has been listed before a Judge who was a member of the Full Court on the appeal, who would not need to familiarise himself with the subject matter of these proceedings, it seems to me that the more convenient course favours the later date.

CONCLUSION 23 The form of orders proposed by the parties are partially agreed and the parties have resolved some of the differences between them. The form of orders I propose is: In these orders the following terms have the following meanings: Additional Program Detail Information means any one or more of the following categories: (a) episode titles; (b) episode numbers; (c) information about the currency of programs; (d) information about the formats in which programs are to be broadcast; (e) closed captioning information for the hearing impaired; (f) program classification information; and (g) consumer advice. Aggregated Guide means the published television program guide containing information for all free to air channels, including the applicant's channels, that is produced by any of the Aggregators where the guide has been created, in part, by using one or more Nine Weekly Program Schedules provided by the applicant to the Aggregator. Aggregators means HWW Limited, eBroadcast Australia and Pagemasters Pty Limited or any publisher of any other aggregated television guide (printed, electronic or otherwise) whose publication includes the Nine Weekly Program Schedules. IceGuide means the first respondent's television program schedules, whether known by that name or otherwise, and includes all versions of the IceGuide including IceGuide Widget and IceGuide PIMP. IceTV Database means the first respondent's database used in the preparation of its IceGuide. Nine Weekly Program Schedules means the applicant's weekly television program schedules which comprise: (a) Nine Program Time and Title Information; (b) Additional Program Detail Information; and (c) Nine Synopses. Nine Program Time and Title Information means the respective associated dates, titles and intended starting times for the transmission of the applicant's respective television programs. Nine Synopses means descriptive information about individual television programs included in a Nine Weekly Program Schedule.

THE COURT DECLARES THAT: 8. The applicant is the owner of the copyright in the Nine Weekly Program Schedules. 9. The first respondent has infringed the copyright in certain of the Nine Program Schedules, by: (a) reproducing in a material form; (b) authorising the reproduction in a material form of; (c) communicating to the public; substantial parts of those Nine Weekly Program Schedules, without the licence of the applicant. THE COURT ORDERS THAT: As against the first respondent 10. The first respondent, whether by itself, its servants or agents or otherwise, be permanently restrained from infringing copyright in any of the Nine Weekly Program Schedules by: (a) reproducing in a material form; (b) authorising the reproduction in a material form of; (c) communicating to the public; or (d) authorising the communication to the public of, the whole or a substantial part of any Nine Weekly Program Schedules (whether made before or after the date of the making of this order), without the licence of the applicant. 11. Without limiting order 3 above the first respondent, whether by itself, its servants or agents or otherwise, be permanently restrained from using (including for the purpose of producing the IceGuide) the whole or a substantial part of the Nine Weekly Program Schedule in a manner that: (a) reproduces in a material form; (b) authorises the reproduction in a material form of; (c) communicates to the public; or (d) authorises the communication to the public of, the Nine Program Time and Title Information (whether made before or after the date of the making of this order) without the licence of the applicant. 12. The first respondent, whether by itself, its servants or agents or otherwise, delete forthwith from any television program schedules (of which it has electronic copies including in the IceTV Database) all Nine Program Time and Title Information (but not the program and episode titles for any of the applicant's television programs) entered from 1 December 2005 to the date of this order. Suspension 13. The operation of orders 3 to 5 inclusive be suspended until 5.00 pm on 25 June 2008 for the purpose of permitting the first respondent to seek a stay of those orders, if advised. 24 As noted above, some of the detail in this version of the form of orders was not the subject of submission. Accordingly, I gave the parties the opportunity to make further written submissions if they so wished. That occurred. Upon consideration of those submissions and further oral submissions, I made orders in a form agreed by the parties. I certify that the preceding twenty-four (24) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Bennett.

Associate: Dated: 25 June 2008 Counsel for the Applicant: R Cobden SC, J M Hennessy

Counsel for the Respondents: J M Ireland QC, J S Cooke

Date of Hearing: 5 June 2008, 12 June 2008