Telstra Corporation Limited v Desktop Marketing Systems Pty Ltd

1 The principal issue in this case is the extent to which copyright can subsist in the white pages telephone directories and the yellow pages telephone directories that are published by the applicant, Telstra Corporation Ltd (Telstra). 2 Telstra, then known as Australian and Overseas Telecommunications Corporation Limited, was incorporated under the Corporations Law of the Australian Capital Territory. One of its functions was to control all domestic telephone services: see s 14 of the Australian Telecommunications Corporation Act 1989 (Cth) and s 11 of the Australian and Overseas Telecommunications Act 1991 (Cth). Previously those services had been provided by Australian Telecommunications Commission, a statutory corporation and, before that, by the Postmaster-General. In 1997, the Commonwealth enacted legislation to permit competition in the provision of telephone services. Telstra is one of the organisations that was granted a licence to provide those services. It is a condition of its licence that Telstra will annually publish white pages telephone directories by geographic area that integrate alphabetically the names, addresses and telephone numbers of all telephone subscribers in the area. Telstra is under no obligation to publish yellow pages directories but, as I will explain, there is good commercial reason for it to do so. 3 The work involved in the creation of both the white pages directories and the yellow pages directories is undertaken by employees of Telstra and its wholly owned subsidiary Pacific Access Pty Ltd (Pacific Access). It will be necessary briefly to describe the nature of that work. However, there is no need to identify separately the work performed by Telstra and Pacific Access, for any copyright that might subsist in the subsidiary has been assigned to Telstra. 4 There are literally hundreds of appropriately trained or qualified employees who make some contribution towards the production of a telephone directory. When the nature of the work they do is described, there arise three relevant questions to the subsistence of copyright: (a) Must a copyright work have an author? (b) Does a telephone directory have an author? (c) Is every employee who contributes to the final product a joint author of the directory? These are difficult questions for which there are no ready answers. These matters will not be elucidated by this judgment. Although I raised these issues during argument, the case was contested on the apparent assumption that it was either unnecessary for Telstra to establish that a telephone directory has an author, or that those involved in its preparation are joint authors. I will proceed as if these assumptions are correct. But they may not be. As to the need for an author see Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49. As to whether a directory akin to a telephone directory has an author see Waterlow Publishers Ltd v Rose [1995] FSR 207. As to the meaning of joint author, see the definition of "work of joint authorship" of the Copyright Act 1968 (Cth); see also Wiseman v George Weidenfeld & Nicholson Ltd [1985] FSR 525, 527; Fylde Microsystems Ltd v Key Radio Systems Ltd [1998] FSR 449, 455; Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd [1995] FSR 818, 835-836; Ray v Classic FM PLC [1998] FSR 622, 636. 5 In Australia copyright is conferred by the Copyright Act 1968 (Cth). By s 32(2) copyright subsists in "an original literary, dramatic, musical or artistic work" that is published if the first publication of the work took place in Australia, the author was a qualified person when the work was first published or, if the author has died, was a qualified person before his or her death. By s 32(1) copyright subsists in an "original literary, dramatic, musical or artistic work" that is unpublished if the author was a qualified person when the work was made or, if the making of the work extended over a period, was a qualified person for a substantial part of that period. For the purposes of the Copyright Act a literary work includes "a table, or compilation, expressed in words, figures or symbols": see the definition of "literary work" in s 10. 6 The white pages directories and the yellow pages directories have been published. Copyright in them is claimed under s 32(2). There are also books described as "headings books", which I will describe in a moment. They are unpublished. Copyright in the headings books is claimed under s 32(1). Telstra says that each directory and headings book is a literary work, being a compilation. 7 The first respondent, Desktop Marketing Systems Pty Ltd (DtMS), which is sued for infringement, and the second respondent, Mr Andrzej Scibor-Kaminski, a director of DtMS who is alleged to have procured that infringement, deny copyright. They concede that each condition for the establishment of copyright has been satisfied apart from the requirement that the directories and headings books be "original" . 8 There is debate as to the meaning of "originality" in copyright law. Everyone agrees that for a work to be "original" it must be independently created by the author; that is, it must not be copied from another work. But there is a further requirement. The disagreement concerns the nature of that requirement. There are two schools of thought. On the one hand there are those who say that copyright will only protect intellectual effort, and unless there is at least some intellectual labour in the creation of a work, it cannot be "original". The point was eloquently made in argument by M Merlin, appearing before the Court of Cassation, in France, in a case that considered whether there could be copyright in a compilation comprising extracts of devotional writings by eminent churchmen. The lower court (the Correctional Tribunal of Lyons) decided that there could only be copyright in the first conception of a work and not in one that had been copied. The tribunal held that neither the plan nor the arrangement of the book gave it the character of a new work. The proprietor appealed. M Merlin argued that copyright applied to works that are the fruit of the conceptions of genius and also to the productions of intelligence; and that the lower court's decree confounded a compilation that is the fruit of taste, intelligence and exquisite and ingenious combination and arrangement, with a compilation that implied nothing but an expenditure of time, research, and infatiguable patience in copying word for word. The court held that the law extended to selections, compilations and other works of that nature when they require in their execution, discernment, taste, learning and intelligent labour: Merlin, Rep de Jurisp, title Contrefaçon, s xi, cited in Curtis on Copyright (1847) at p. 177 (fn 2); for the English translation see Copinger on Copyright, 2nd ed. (1881) at p. 40 . 9 On the other hand there is a school that argues that at least in respect of a compilation, the originality requirement will be satisfied if there has been some effort expended in producing the work, especially effort in gathering or collecting the factual data that is reproduced, though there be no ingenuity in the arrangement or presentation of that data. 10 The respondents argue for the former position and submit that the compilations in question fall into the latter category, whereby they cannot be the subject of copyright and the case against them should be dismissed. In one sense, Telstra straddles both schools. It says that industrious collection of factual data will be sufficient to attract copyright but in any case its directories are the product of intelligent work and will pass the test set by adherents of the first school. These are the issues that must be resolved. 11 It is convenient first to say something about the work that is involved in producing a telephone directory. A casual reader of a directory might be surprised to learn of the complexities involved in its preparation. What can only be described as an enormous volume of evidence has been tendered on this issue. This is not surprising having regard to the defence raised by the respondents. Yet a good deal of the material is plainly irrelevant and need not burden this judgment. 12 There is an annual white pages directory and an annual yellow pages directory for each of fifty-five areas. In some areas, for example capital cities, the white pages directory and the yellow pages directory are published separately. In other areas, say in country regions, they are bound together. Each white pages directory contains a section of "information pages" comprising text and artwork. The index to the white pages of one directory indicates that the "information pages" include: a list of emergency telephone numbers; information about the cost of telephone calls; information about international telephone calls; advice on how to make operator assisted telephone calls; information about Telstra; information about the Australian Communications Authority; a listing of community and welfare services; advice regarding certain medical emergencies; a list of abbreviations of place names; a listing of area codes and post codes; and a listing of government and community services. This is not a complete description but is sufficient for present purposes. The white pages also has a directory containing the name, address and telephone number of every subscriber in the area, apart from those with a "silent" number. A subscriber is entitled to a basic listing free of charge but may purchase a more prominent listing (for example a listing in bold type). A yellow pages directory also contains "information pages" in addition to a directory. The directory is a listing of businesses grouped under headings describing the business activity. The headings appear alphabetically and the businesses are listed, also alphabetically, beneath the appropriate heading with their address and telephone number. A business that is listed in a white pages directory is entitled to one free listing in the yellow pages directory for the area. A business subscriber may purchase an enhanced entry. Typically an enhanced entry is one where the business name is printed in bold, in a box, as part of an advertisement, or placed under more than one heading. In some directories as many as 35 per cent of subscribers have purchased enhanced entries. The income derived from the sale of enhanced entries in the yellow pages directory covers the cost of producing both the white pages directory and the yellow pages directory and returns a profit. 13 Telstra says that considerable judgment, skill and intellectual effort is required to produce a white pages directory. With regard to that part of the directory that contains the subscriber information, Telstra describes the work as selecting the areas to be covered by each book; choosing the publication date for each book; establishing, monitoring and developing the rules for the arrangement and appearance of the listings; collating, checking and ordering the listings; and designing the complex entries and other enhancements. 14 When a person takes out a new subscription for a telephone line, that person's name, address and telephone number is entered into a computer program known as Axis. This program was developed for Telstra at great cost to replace an earlier program that was difficult to use. When the subscriber information is entered into Axis, it is classified into entries that must be manually edited (such as silent lines) and those that do not need editing. The latter entries are formatted by editors. Axis transfers the information to another database, Condor, which stores all residential and business listings. The information in Condor is verified. If an entry is rejected it is manually checked. The Condor program sorts the listings into their alphabetical order. To deal with anomalous or unusual names (eg those beginning with Mc or Mac), an editor can override the program. The entries are subjected to further processing, principally to correct errors notified by subscribers or by directory assistance operators. 15 The information in Condor is transferred to a graphics compilation and typesetting system where the printing process begins. Editors proofread every line of the proof pages to detect error, including errors in formatting and layout as well as checking once again for silent lines. If any changes have to be made immediately before printing, the production department makes them on a graphics compilation and typesetting system. Unlike Condor, this system has no validation process so all entering has to be done manually, for example, entries have to be alphabetised manually. When corrected, the proof pages are sent to the publisher, which produces the printing plates from them; from these plates it prints the directories. The pages are then bound and dispatched for distribution. 16 A yellow pages directory is produced in much the same way as a white pages directory. There are, however, some differences that should be identified. First, it is necessary to choose the heading under which each entry is to appear. Generally the subscriber chooses the heading, in some cases after recommendation by a sales person who is trained to sell advertising space. Second, Telstra has sales staff who solicit businesses for enhanced entries and advertisements. The staff are trained to deal with subscribers' requirements as well as to take account of Telstra's interests. Third, the graphics that appear in an advertisement in a yellow pages directory are not stored in Condor but in a separate database. 17 Three different categories of yellow pages directories are produced, a metropolitan directory, a regional directory and a local directory. There are differences in the headings in each category of directory. The headings are taken from the unpublished headings books, there being a headings book for each category of yellow pages directory. The books are designed to cater for all businesses and industries, to produce appropriate groupings of a particular business entry (for example retail or wholesale), to be sufficiently specific but not too narrow, to use appropriate language, and to reflect regional and national usage. Each headings book contains only an alphabetical list of headings below which there is a list of "see also" and "cross reference" headings, as well as allied headings. For example in the headings book for the 1998 metropolitan yellow pages there is the following entry: "ACCOMMODATION INQUIRY SERVICES See also Flats - Agents REAL ESTATE AGENTS Flat Sharing Holiday Accommodation House Sharing Share Accommodation" In this example, the primary heading is "Accommodation Inquiry Services". That heading appears in the 1998 metropolitan yellow pages directory. The entry "See also Flats - Agents" means that the yellow pages directory contains listings under this heading, where one could expect to find similar businesses. The heading "Real Estate Agents" (an allied heading) means that the yellow pages directory contains listings under this heading, but the businesses might be slightly different. The cross-reference headings of "Flat Sharing", "Holiday Accommodation", "House Sharing", and "Share Accommodation", indicate that the yellow pages directory contains these entries in its index, but not in the body of the directory. They refer the user to a related primary heading. The sales staff use primary headings to inform businesses of possible headings. They use the allied headings to suggest to subscribers other categories where its listings could be placed if the subscriber does not wish to be listed under the suggested heading or wishes to be listed under multiple headings. 18 Headings books have been developed over many years. Until 1995 an internal committee, the Yellow Pages National Headings Committee, was responsible for updating the headings books. In 1995 a private contractor was engaged to undertake that work on the basis that any copyright is assigned to Pacific Access. Each headings book is revised annually. Requests for changes to headings are usually made by the listed entities, users, industry associations, regulatory bodies or government departments. In the last few years more than 700 requests for change were received annually. On rare occasions, the committee in charge of the headings makes changes on its own initiative as a result of directory research, changes in terminology and anticipated needs of users and advertisers. In deciding whether to make a requested alteration, the headings committee considers whether others had made similar requests, how it would affect current listings (i.e., if the change is minor, for example, a cross-reference, the headings committee is more willing to make the change), surveys households and those companies affected, consults The Macquarie Dictionary and sometimes conducts desktop research. Telstra also has an on-line product similar to the yellow pages directory and a voice operated yellow pages directory; the headings committee considers the search requests from these two sources in making changes. For those in charge of assessing possible headings changes, long experience with the headings structure is important because only those with experience can gauge a proposed change's significance. In deciding whether to make a change, consideration is given to the subscriber's wishes, to an assessment of what readers of the directory will find most useable, to the effect on completeness of coverage and to the financial implications of a change. For example, there will be a financial impact if two headings are created where there is currently only one, and when two or more headings are combined. Usually somewhere between ten and forty changes are made each year. 19 Telstra claims that DtMS has infringed its copyright in certain directories published between 1996 and 1999 and the headings books produced between 1996 and 1998. These are not the first directories and headings books produced by Telstra. The case has been argued on the basis that there have been sufficient changes made by way of alterations and additions to all later directories and headings books to enable copyright to subsist if the works are capable of copyright: Black v Murray (1870) 9 SC 353. What then is the conduct that is said to constitute infringement of any rights that subsist over these books? 20 The alleged infringing works are three CD-rom computer software products that have been produced and are being sold by DtMS. Stored in each CD-rom is what Mr Scibor-Kaminski has described as "yellow and white pages listings data". One product is called CD Phone Directory. It contains a list of the name, address and telephone number of every telephone subscriber in Australia. The names are listed alphabetically within each postcode number, and the postcodes are ordered sequentially, beginning with 0800 for Darwin. A person wishing to obtain the address or telephone number of a subscriber can search by name. If there is more than one subscriber with that name, the name, address and telephone number will be displayed in postcode order, and alphabetically within each postcode. 21 The second product is called Phonedisk. It contains the same information as the CD Phone Directory but the searching functions are more sophisticated. For example, the data may be searched by telephone number to obtain the name and address of a subscriber. It is also possible to search for subscribers within a particular postcode, and by proximity to the post office. Once a search has been conducted, the result can be printed or saved. 22 The third product, known as Marketing Pro, is the most commercially valuable product. Marketing Pro consists of eight different editions representing different geographical areas. There is one national edition, four state editions and three city editions. Mr Scibor-Kaminski has described the product as containing "enhanced yellow and white pages listing data". As regards business (yellow pages) listings, in addition to each business being grouped by type as in the yellow pages, it is also categorised by reference to the American Standard Industrial Classification Code and its Australian and New Zealand counterparts, the Australian Standard and Industrial Classification Code and the Australian New Zealand Standard and Industrial Classification Code. These codes divide all classifiable activities into three levels. First there are the principal divisions such as: Agriculture, Forestry and Fishing; Mining; Construction; and Manufacturing. Taking the first heading, Agriculture, Forestry and Fishing, that is divided into four groups: 01- agriculture; 02- services to agriculture, hunting and trapping; 03- forestry and logging; 04- commercial fishing. The next level subdivides the categories further. For example, 01- agriculture is subdivided into 011- Horticulture and fruit growing; 012- Grain, sheep and beef cattle farming; 013- Dairy cattle farming; 014- Poultry farming; 015- Other livestock farming; 016- Other crop growing. There is a third level. For example, 011- Horticultural and fruit growing is subdivided into the following categories: 0111- Plant nurseries; 0112- Cut flower and flower seed growing; 0113- Vegetable growing; 0114- Grape growing; 0115- Apple and pear growing; 0116- Stone fruit growing; 0117- Kiwi fruit growing; and 0119- Fruit growing n.e.c. 23 When the information is available, a business entry will include the number of its employees, the size of the advertisements that it has placed in the yellow pages directory, its Ausdoc DX number, its facsimile number, and whether or not the business wishes to be canvassed for marketing purposes. 24 There are various means of searching for information in Marketing Pro. A search can be conducted by business name, in which case the information will be displayed separately according to area code. The information can be searched by business activity, and it will be displayed alphabetically for each postcode. A search can be undertaken by a particular industry classification, and the information will be displayed alphabetically by postcode. The information can also be searched by area because the program has included the longitude and latitude reference of the nearest post office. It is possible to search business listings in twenty-seven different ways, some more helpful than others, and residential listings in thirteen ways. The program allows the searched information to be stored and printed. 25 The primary data that is used to produce DtMS' products is taken from Telstra's white pages directories and yellow pages directories. A Sydney company, Dependable Database Data Pty Ltd, sends every white pages directory and yellow pages directory to the Phillipines where a large team types (the technical term is key punches) all the listings into a computer. The information is changed in various respects. For example, abbreviations are expanded (Rd to Road), the name of the State is included, and the information is formatted so that it may easily be read by a computer. The information is then provided to DtMS in electronic form, usually as a computer disk. 26 The information is loaded onto the computer system maintained by DtMS. There is some cursory validation of the data, but not to any significant extent. Then information is added, such as the appropriate industry code, number of employees, facsimile number and Ausdoc DX number. The information is updated if errors are identified, or if there is a "do not contact" attached to a particular name. 27 DtMS makes some changes to the headings that Telstra uses. There is a conflict in the evidence concerning the degree of overlap. It is not necessary to resolve the conflict. It is sufficient to note that around 95 per cent of the headings used by DtMS are identical to the headings used by Telstra and that only approximately 0.36 per cent of DtMS' headings are unique. Except for some minor variations it was not seriously in dispute that DtMS has adopted Telstra's headings. 28 I have said enough about the facts to turn to the legal issues. It will, however, be necessary to return to the evidence when I come to apply the applicable principles of law to the facts at hand. I begin with a discussion of the origin of copyright. The topic is not without interest, and some knowledge of it may assist in resolving the central issue raised in this action. 29 It is generally accepted that copyright (the right to print and publish) was first developed in medieval England. The printing press was introduced in 1476, and in a short time the new art proved popular. Within a few years, at the instigation of the Catholic Church, the King asserted unlimited control over publishing. Both the Church and the King feared that the possibility of widespread publication would allow the influence of heretics and political dissidents to grow. Initially the King exercised control over publishing, claiming that it was an aspect of the prerogative. By royal charter, commission or letters patent, authors and printers (those who are now referred to as publishers) were granted the "privilege" to print a book, usually for a term of years, but sometimes at the King's indulgence. Decrees of the Star Chamber prohibited all other forms of printing, on pain of criminal sanction. The Star Chamber also outlawed the importation of any book, except by a person having the sole right to print the work. 30 The Stationers' Company was established by charter in 1556. It had ninety-seven members, being London publishers and booksellers; authors were excluded from membership. The company's charter recited "[t]hat certain seditious and heretical books both in rhymes and tracts are daily printed, renewing and spreading great and detestable heresies against the Catholic doctrine of the holy Mother Church", and to suppress this evil the company was incorporated. It was given a monopoly over printing, in consideration for a promise of self-censorship, including the suppression of treasonable and seditious material. 31 The company maintained a register where a member might register a manuscript of which he claimed ownership. Initially by usage, and later by ordinance, the member who had made the entry was regarded as "the proprietor of [the] Book or Copy, and ought to have the sole Printing thereof.": Ordinance of 1681 cited in E Arber (ed) A Transcript of the Registers of the Company of Stationers of London 1554-1640 (1876) vol 1 at p. 22. 32 The Star Chamber was abolished in 1640, and all regulation of printing came to an end. However, the Long Parliament, being as interested in censorship as the King, in a series of ordinances beginning in 1641, continued the monopoly of the Stationers' Company. Upon pain of forfeiture, no book could be imported or printed if not entered in the register book of the Stationers' Company, unless the consent of the "owner" had been obtained. Naturally, the "owner" was not the author (authors were not members), but the publisher who usually had purchased the manuscript from the author. 33 These ordinances, and later their replacement, the Licensing Acts, were in force until 1694. One reason the Licensing Acts were not thereafter renewed was resentment of the booksellers' monopoly. See the House of Commons Remonstrances against Revival of the Licensing Act of 1662 (1695) 11 HC Journal 305-306 where among the objections, was the following: "Because [the Licensing] Act prohibits printing any thing before Entry thereof in the Register of the Company of Stationers', … ; and the said Company are empowered to hinder the printing all innocent and useful Books; and have an Opportunity to enter a Title to themselves, and their Friends, for what belongs to, and is the Labour and Right of, others". 34 Nevertheless, continuing representations for protection by publishers led to the enactment of the first copyright statute, the Statute of Anne of 1709 (8 Anne, c 19). This Act, however, was intended to secure the rights of authors, and not the booksellers and publishers who had petitioned for its passage. The long title of the statute was "An Act for the Encouragement of Learning, by vesting the Copies of printed Books in the Authors or Purchasers of such Copies, during the Times therein mentioned." The preamble recorded that the statute was enacted for preventing printers, booksellers and others printing and publishing "Books and other Writings, without the Consent of the Authors or Proprietors …, to their very great Detriment, and too often to the Ruin of them and their Families [and] for the Encouragement of learned Men to compose and write useful Books." Section 1 relevantly provided that "the Author of any Book or Books already printed, who hath not transferred to any other the Copy or Copies of such Book or Books … or the Bookseller … Printer … or other Person who hath … purchased or acquired the Copy … shall have the sole Right and Liberty of printing such Book … for the Term of One and Twenty Years … and that the Author of any Book … already composed, and not printed and published, … shall have the sole Liberty or printing and reprinting such Book … for the Term of Fourteen Years … ". 35 The creation of a statutory copyright for a term of years, in place of the perpetual right previously accorded to members of the Stationers' Company, left open the question whether there was a common law right that could be relied upon on the expiry of the statutory term. This was first considered by the King's Bench in Millar v Taylor (1769) 4 Burr 2303; 98 ER 201. The court held that the author of a book or literary composition had copyright under the common law, which was not lost by the statute. Lord Mansfield (4 Burr at 2398; 98 ER at 252) explained that the author had perpetual copyright: "because it is just, that an author should reap the pecuniary profits of his own ingenuity and labour. It is just, that another should not use his name without his consent. It is fit that he should judge when to publish, or whether he ever will publish. It is fit he should not only choose the time, but the manner of publication; how many; what volume; what print. It is fit, he should choose to whose care he will trust the accuracy and correctness of the impression; in whose honesty he will confide, not to foist in additions; with other reasonings of the same effect." 36 Millar v Taylor, while not subject of a writ of error, was regarded as doubtful authority and the issue was reconsidered by the House of Lords in Donaldson v Beckett (1774) 2 Bro PC 129; 1 ER 837. The Lords held that, at common law, the author of any book or literary work had the sole right of first printing the work, and that publication of the work did not divest copyright. But on the question whether the common law right had been abrogated, it held that, with the passing of the Statute of Anne, the common law right and remedies of the author no longer existed and were governed solely by the statute. Since then, copyright has been described as the creature of statute: Jefferys v Boosey (1854) 4 HLC 815. 37 The Statute of Anne conferred copyright upon the "author" of a book. It did not define what was required for a person to qualify as an "author". Later statutes created copyright in works other than books. In many cases it was not appropriate to describe the person in whom copyright was vested as an "author". Sometimes that person was referred to as an inventor, a designer or a printer. The description of the subject matter of the copyright work should also be noticed. In some statutes the work was required to be "new". In other statutes it was to be "new and original". 38 For example, by a series of statutes beginning with the Engraving Copyright Act 1734 (8 Geo 2, c 13), the person who invented and designed, engraved, etched or worked in "Mezzotinto or Chiaro Oscuro" was given the right to print the same for a term of fourteen years. In 1787, copyright in designs was created by the Designing & Printing of Linens Act 1787 (27 Geo 3, c 38). By that enactment, the sole right of printing woven fabrics for a term of two months was granted to every person who invented, designed and printed "any new and original pattern". The Copyright in Models and Casts Act 1798 (38 Geo 3, c 71) gave to the "person who shall make or cause to be made a new model or copy or cast made from such new model, of any bust, or any part of human or animal" the sole right and property in every such new model, copy or cast, for a term of 14 years. That Act was amended by the Sculpture Copyright Act 1814 (54 Geo 3, c 56), which extended copyright protection to persons "who shall make or cause to be made any new and original Sculpture, or Model, or Copy, or Cast" of the human figure or of animals. The "author" of any dramatic piece was given the sole right of printing and publication by the Dramatic Copyright Act 1833 (3 & 4 Will 4, c 15), and the "author" of lectures was given the same monopoly by the Lectures Copyright Act 1835 (5 & 6 Will 4, c 65). The Copyright of Designs Act 1839 (2 Vict, c 17) gave rights to the "proprietor of a new and original design." Later statutes extended the right in respect of other articles of manufacture (see eg the Copyright of Designs Act 1842 (5 & 6 Vict c 100)). 39 Many of the English statutes were reproduced in the colonies. For a detailed history, see T P Webb, A compendium of the Imperial law and statutes in force in the colony of Victoria, 2nd ed. (1892). 40 The nature of copyright is such that there must be an embodiment of the work the subject of copyright. It is not sufficient that the work be in the mind of its creator. Moreover, although it was only in some early statutes that the subject matter of copyright was described as "new" or "new and original" or as a work that had been "invented", it was always a necessary condition for valid copyright that the work be original. So, where a statute conferred copyright on the "author" of a work, as in the Statute of Anne, the DramaticCopyright Act and the Lectures Copyright Act, unless the work was original it would not be copyright. In Curtis on Copyright the author wrote (at 169 fn 1) "the statutes both in England and America make use of the word Author which ex vi termini imports originality, to some extent." 41 The Copyright Act 1911 (1 & 2 Geo 5, c 46) confirmed that every work in respect of which copyright is claimed must be "original". The Copyright Act 1911repealed the various copyright statutes and replaced them with one enactment. Copyright for a term was extended to "every original literary dramatic musical and artistic work" that, if published, was first published in the United Kingdom, and, if unpublished, where the author was a British subject or resident within the United Kingdom: Copyright Act 1911, s 1 (1). This statute, subject to certain minor modifications, was given force in Australia by the Copyright Act 1912 (Cth). 42 In precisely what sense a work must be original is not clear, and the resolution of that question lies at the heart of this case. A work will lack originality if it is copied or adapted from another. This does not mean that the subject matter of copyright must be new or novel, as is the case of an invention the subject of patent protection. To the contrary, much of what is found in literature, drama or music is not new, but nevertheless it is proper subject matter for copyright. 43 Originality means, at least, that the work has been created by the author. But it is not sufficient merely to establish that the work has not been copied. More must be shown to justify the grant of the statutory monopoly. But more of what? Must the author expend some intellectual effort to obtain protection? Or is it sufficient for the author to exert labour or incur expense in the production of the work? It is to these issues I now turn. 44 It cannot be doubted that if an author brings to bear intellectual labour in the production of his work, and does not copy that work, that will be sufficient to satisfy the requirement of originality. Thus the great body of literary works, such as novels, poems and plays, most musical works, and much that is regarded as part of the fine arts, would qualify for copyright without question. The value of the originality involved, that is whether the intellectual effort has resulted in a work of aesthetic merit, is not relevant, as copyright does not depend upon a judgment based on taste. Thus, copyright will subsist in the black paintings of the abstract expressionist Ad Reinhardt (all square, five feet by five, with a cross that divides the surface into nine equal squares which can barely be made out) whether or not a judge thinks them to be entirely meaningless. 45 This case, however, is not concerned with a literary or artistic work in the popularly understood sense. Here we are dealing with a claim for copyright in a compilation of facts: the names, addresses and telephone numbers of thousands of individuals and businesses. At issue is whether the industrious gathering and listing of that data qualifies the work as original, or whether some additional element, such as selection or arrangement, is necessary. 46 It is as well to state an elementary principle of copyright law: There can be no copyright in a fact. An author may record a fact, but he does not create it. That an author has recorded a fact does not prevent any other author from recording the same fact. If it were otherwise, a vast body of literature concerning subjects as diverse as history, science, mathematics, and, as we shall see, train timetables, football fixtures, racing catalogues and the like, might not exist. 47 What is it then that permits an author to secure copyright in respect of recorded facts? It has long been established that books that record facts, or make use of existing data, will be regarded as original for the purpose of copyright. For example, a dictionary (Barfield v Nicholson (1824) 2 Siml. St 1; 57 ER 245; Spiers v Brown (1858) 31 LT 16), a textbook on science (such as Dr Brewer's "The Guide to Science" considered in Jarrold v Houlston (1857) 3 K&J 708; 69 ER 1294) and an encyclopedia (Mawman v Tegg (1826) 2 Russ 385; 38 ER 380) have qualified as original works. In cases where the author has added nothing of his own to the data that has been recorded, originality can be found in the selection or arrangement involved. Thus, the selection of poetry for an anthology (Mason v Murray [1777] Dick 536; 21 ER 378) and the selection of recipes for a book on cookery (Rundell v Murray (1821) Jacob 311; 37 ER 868) have been given copyright. The result in these cases can be justified because inherent in the process of selection and arrangement is some degree of creativity on the part of the author. 48 There will be occasions when the process of selection or arrangement will involve so little, if any, creative thought, that a claim for copyright will be rejected. This was recognised by Wood VC (later Lord Hatherley) in Hotten v Arthur (1863) 1 H&M 603; 71 ER 264. The plaintiff, a bookseller, claimed copyright in his catalogue of stock. The catalogue consisted not only of the name and price of the books on offer, but it also contained a short account of the books and a summary of their contents. Wood VC found that there was copyright. He said (1 H&M at 607; 71 ER at 265): "I cannot conceive on what principle it is suggested that there is no copyright in a catalogue such as this. This is not a mere dry list of names, like a personal directory, Court guide, or anything of that sort, which must be substantially the same by whatever number of persons issued and however independently compiled." 49 Contemporary authors criticised the dictum suggesting that there could be no copyright in a personal directory, a court guide and so on as going too far: see eg T E (later Lord Justice) Scrutton, The Law of Copyright, 2nd ed. (1890) at p. 106. In any event, the statement seems not to accord with earlier authority. In Longman v Winchester (1809) 16 Ves Jun 269; 33 ER 987 the court held that there could be copyright in a court calendar. The proposition that there could not be copyright in "a dry list of names" was argued in Collis v Cater, Stoffell and Fortt Ltd (1898) 78 LT(NS) 613 in relation to an alphabetical list of stock prepared by the plaintiff, a chemist. North J held that there was no difference between the case of a street directory (in respect of which there could be copyright) and a list of products for sale. In Football League Ltd v Littlewoods Pools Ltd [1959] 1 Ch 637, Upjohn J regarded Collis v Cater as a case in which the plaintiff had expended skill in selecting the stock to be placed on the list, but an examination of the facts in the report does not seem to bear this out. Collis v Cater was approved by the House of Lords in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, but not for the reason that skill was involved. 50 What if there is no creativity in selecting or arranging factual data? Is there some other basis for holding that the compilation is copyright? In England a series of cases decided before the Copyright Act 1911 held that to establish originality in a compilation of facts or other existing material, it is not necessary to show any intellectual effort in the creation of the work. It could be enough to establish that there has been sufficient work involved and expense incurred in gathering the facts or other data. According to these cases copyright protection will be given as a reward for the author's investment of time and money, even if there be no creativity in the work. 51 One of the early cases is Matthewson v Stockdale (1806) 12 Ves 270; 33 ER 103. The plaintiff brought an action to restrain the defendant from publishing an East India calendar or directory, which the plaintiff alleged infringed his copyright. Lord Erskine said (12 Ves at 276; 33 ER at 105-106): "[I]f a man from his situation having access to the repositories in the India House, has by considerable expense and labour procured with correctness all the names and appointments of the Indian establishment, he has a copyright in that particular work, which has cost him considerable expense and labour, and employed him at a loss in other respects, though there can be no copyright in an Indian Calendar generally." 52 In Kelly v Morris (1866) 1 Eq 697, the plaintiff claimed copyright in a street directory which he alleged was being copied by the defendant. The defendant put copyright in issue, contending that there could be none in the arrangement of streets. On this issue Sir Wood VC said (at 701-702): "The Defendant has been most completely mistaken in what he assumes to be his right to deal with the labour and property of others. In the case of a dictionary, map, guide-book, or directory, when there are certain common objects of information which must, if described correctly, be described in the same words, a subsequent compiler is bound to set about doing for himself that which the first compiler has done. In case of a road-book, he must count the milestones for himself … generally, he is not entitled to take one word of the information previously published without independently working out the matter for himself, so as to arrive at the same result from the same common sources of information, and the only use he can legitimately make of a previous publication is to verify his own calculations and results when obtained. So in the present case the Defendant could not take a single line of the Plaintiff's Directory for the purpose of saving himself labour and trouble in getting his information." 53 In Morris v Ashbee (1868) 7 Eq 34, the defendant in the earlier case, now as plaintiff, obtained an injunction to prevent the defendant copying his trade directory - a directory comprised of an alphabetical list of names and occupations of merchants and traders carrying on business in London. Giffard VC said (at 40-41): "The Plaintiff incurred the labour and expense first of getting the necessary information for the arrangement and compilation of the names as they stood in his directory, and then of making the actual compilation and arrangement … . [I]n a case such as this no one has a right to take the results of the labour and expense incurred by another for the purposes of a rival publication, and thereby save himself the expense and labour of working out and arriving at these results by some independent road. If this was not so, there would be practically no copyright in such a work as a directory." This passage must be read as explained by Giffard VC in Morris v Wright (1870) 5 Ch App 279 at 285: "If this passage goes further than what I take it to mean, I cannot doubt that it goes beyond what the law authorizes, and beyond the decision of the Lord Chancellor and myself in the late case of Pike v Nicholas (1870) 5 Ch App 251. It does not mean that he does not look into the book for the purpose of ascertaining where a particular person lived, and for the purpose of ascertaining whether it was worth his while to call upon that person or not; but it means that he may not take that particular slip and shew that to the person and get his authority as to putting that particular slip in." 54 Although there may have been some element of choice (intellectual endeavour) in putting together the directories in Kelly v Morris and Morris v Ashbee, in both cases copyright was held to subsist not for that reason, but because the plaintiff expended time and labour in gathering information for the compilation. At all events, this is the view that has been taken of these cases by later English decisions: see, eg, Scott v Stanford (1867) 3 Eq 718; Ager v Peninsular & Oriental Steam Navigation Company (1884) 26 Ch D 637; Cox v Land & Water Journal Company (1869) 9 Eq 324. But compare, Autospin (Oils Seals) Ltd v Beehive Spinning [1995] RPC 683, where Laddie J said that Kelly v Morris was a case where the skill was in selecting the information. 55 There is also the important case of Walter v Lane [1900] AC 539, a decision of the House of Lords. The issue that arose in that case was whether reporters at The Times were entitled to copyright in a report for a number of public speeches made by the Earl of Rosebery. The speeches were taken down in shorthand, then written out, corrected, revised and published. The defendant, who had copied the speeches and was thereafter sued, denied the plaintiff's copyright. The defendant argued that for there to be copyright there must be something more than the mere writing down of another's words. On the other hand, the reporters conceded that there was no literary skill or originality in the work but that industrious collection would suffice. The plaintiff succeeded. The view of the majority of the Lords shows that intellectual effort was not regarded as a requirement for copyright. 56 Halsbury LC referred to the decision in the Court of Appeal, where it was held that the person who makes a directory and publishes it is the author of what he publishes, while the reporter of a speech is not. He then said (at 546): "A man goes along a street, collects the names, addresses and occupations of each dweller therein. What is the original composition of which, according to the Court of Appeal, he is the author? The name of the street? The numbers of the street? The names of the dwellers in the several houses? What is the distinction which the Court of Appeal makes in giving copyright to the result of this labour and reducing it into writing? What is it that makes it an original composition? But, further, where do the words 'original composition' come from? … If the producer of such a book can be an author within the meaning of the Act, I am unable to understand why the labour of reproducing spoken words into writing or print and first publishing it as a book does not make the person who has so acted as much an author as the person who writes down the names and addresses of the persons who live in a particular street." Later in his speech Halsbury LC considered the defendant's contention, which placed reliance on the preamble of the Copyright Act 1984, that the statute was designed to encourage literary merit, and that accordingly it was intellectual labour that constituted authorship. He continued (at 548): "But it appears to me that, although it may be true that a preamble may be a guide to the general objects of the statute, it undoubtedly is unquestioned law that it can neither restrict nor limit express enactment. And though I think in these compositions there is literary merit and intellectual labour, yet the statute seems to me to require neither, nor originality either in thought or in language." And again (at 549): "My Lords, if I have not insisted upon the skill and accuracy of those who produce in writing or print spoken words, it is not because I think the less of those qualities, but because, as I have endeavoured to point out, neither the one nor the other are conditions precedent to the right created by the statute. That right, in my view, is given by the statute to the first producer of a book, whether that book be wise or foolish, accurate or inaccurate, of literary merit or of no merit whatever." Lord Davey said (at 551-552): "In my opinion the reporter is the author of his own report. He it was who brought into existence in the form of a writing the piece of letterpress which the respondent has copied. I think also that he and he alone composed his report. The materials for his composition were his notes, which were his own property, aided to some extent by his memory and trained judgment. Owing to the perfection which the art of shorthand writing has attained in recent years, memory and judgment bear a less important part in the composition of a report of a speech than was formerly the case. But the question whether the composer has copyright in his report does not seem to me to vary inversely with or to depend on his skill in stenography… In my opinion the question must be decided on general considerations, and not on any grounds which are personal either to the orator or to the reporter. Copyright has nothing to do with the originality or literary merits of the author or composer. It may exist in the information given by a street directory; or by a list of deeds of arrangement; or in a list of advertisements;" (citations omitted) Lord James, who was a member of the majority, was of a somewhat different opinion. He thought that some intellectual effort was required. After referring to street directories, law reports, railway timetables and the like, Lord James said (at 554): "Still there was a something apart from originality on the one hand and mere mechanical transcribing on the other which entitled those who gave these works to the world to be regarded as their authors." In relation to a reporter he said (at 554): "I think that from a general point of view a reporter's art represents more than mere transcribing or writing down from dictation. To follow so as to take down the words of an ordinary speaker, and certainly of a rapid speaker, is an art requiring considerable training, and does not come within the knowledge of ordinary persons. Even amongst professional reporters many different degrees of skill exist." Lord Brampton said (at 558): "I do not agree that the question of the authorship of a book depends upon the literary quality of it. If a person chooses (and many do) to compose and write a volume devoid of the faintest spark of literary or other merit, I see no legal reason why he should not, if he desires, become the first publisher of it and register his copyright, worthless and insignificant as it would be. The statute has prescribed no standard of merit in a book as a condition to entitle its author to become the proprietor of copyright in it. And, even if such standard were prescribed, I should think the merits of the work ought to be determined, having regard to the contents of the book itself, without inquiry as to whether any of the component parts of it emanated from the brain of some person other than the author of the book." 57 Shortly after Walter v Lane was decided, Mr Scrutton, in the fourth edition of his text published in 1903, wrote (at p. 120): "The case decides that it is not necessary that the work in which copyright is claimed should be 'original' in the sense that its 'author' should have invented or supplied either a single word or idea of the book, or of the arrangement of the words. He may have copied the literary composition of another from that other's recitation without adding anything but the written reproduction of the spoken words." 58 It should be noted that Walters v Lane was decided under the Copyright Act 1842 (5 & 6 Vict, c 45), which was the then current enactment that conferred copyright upon the "author" of a "book". In the 1842 Act the word "book" was defined in s 2 "to mean and include every volume, part or division of a volume, pamphlet, sheet of letterpress, sheet of music, map, chart or plan separately published." Compilations of factual data were accorded copyright on the basis that they were books. 59 Compilations were first given express protection by the Copyright Act 1911. It will be remembered that by s 1, copyright subsisted "in every original literary, dramatic, musical and artistic work". Literary work was defined in s 35(1) to include "maps, charts, plans, timetables and compilations". When the Bill for the Copyright Act 1911 was first introduced there was no mention of compilations in the definition of "literary work". Compilations were introduced after the following exchange between Lord Gorell, who had been the chairman of the copyright committee the report of which led to the Bill, and Viscount Haldane, a Law Lord: "Lord Gorell: My first Amendment to this clause is to add to the definition of 'literary work' which is stated in the clause to include maps, charts, plans and tables. It has been suggested to me that this definition would not include many cases which are instances of copyright. The best instance I can give to Your Lordships is Bradshaw which would not come under the present interpretation but would come under the interpretation if the words 'and compilations' which I propose to insert, were added. Viscount Haldane: I accept that Amendment." (Lords, Hansard, 15 November 1911, 201) 60 Bradshaw, a weekly publication, was a compilation of current timetables of every railway in England and Ireland. The name of the publication was "Bradshaw's General Railway and Steam Navigation Guide" and it was commonly known as "Bradshaw". It reproduced, in an altered and classified form with cross-references, the substance of the timetables for the ensuing month of every railway company in England and Ireland. Each monthly edition of Bradshaw was prefaced by an index in the form of an alphabetical list of the stations and other places mentioned in the body of the book with references to the pages where the same could be found. 61 Three years after the passage of the Copyright Act 1911, the publisher of Bradshaw brought an action against another publisher claiming that the defendant had breached its copyright in Bradshaw. The case is H Blacklock & Co Ltd v C Arthur Pearson Ltd [1915] 2 Ch 376. The defendant had reproduced the index of Bradshaw for use in a competition. It argued that there could be no copyright in a bundle of timetables. Joyce J held that there was copyright in the index. He said (at 380): "The compilation of this index, in particular the making up of the list of names of stations from the time-table, though it be not entirely new every month, would obviously be a work of labour and therefore of expense." And (at 381): "Under the present Copyright Act, copyright subsists in every original 'literary work', which term includes compilations; so that I suppose the list of names which forms or is contained in the index to Bradshaw is entitled to copyright as much as any other part of the publication." 62 An examination of the English cases over the last few hundred years or so shows that in only a few has copyright been denied to a compilation. One authority is Leslie v J Young & Sons [1894] AC 335, a Scottish case. According to the headnote, the proprietor of a monthly railway timetable sought an injunction against the respondent, the publisher of a competing timetable, to restrain the sale of their timetables, on the ground of infringement of copyright. The House of Lords held that the proprietor was not entitled to an injunction with respect to the railway timetables. Lord Herschell LC explained (at 340): "The information in these time-tables was of course derived by the pursuer from sources which were as open to the defenders as to himself, and he does not and cannot claim any right to the information as such; he can only claim copyright in them, if they are the result in some respect or other of independent work on his part, and if advantage has been substantially taken by the defenders of that independent labour. The mere publication in any particular order of the time-tables which are to be found in railway guides and the publications of the different railway companies could not be claimed as a subject-matter of copyright. Proceedings could not be taken against a person who merely published that information which it was open to all the world to publish and to obtain from the same source." The plaintiff failed because the only use he made of publicly available information was to reproduce it. He did not exercise any ingenuity in compiling the information, and there was no sufficient labour or expense involved in gathering the information. Perhaps it was this decision that caused Lord Gorell to suggest the amendment to the Copyright Bill. 63 Another case is G A Cramp & Sons Ltd v Frank Smythson Ltd [1944] AC 329. The work for which copyright was claimed was a pocket diary which contained a collection of tables, such as inland postal rates, equivalent metric and imperial weights, a sunset timetable and a percentage timetable. The plaintiff relied upon the selection of the tables to confer copyright. The House of Lords held that the tables were nothing more than a commonplace selection of information in a commonplace arrangement. The work involved in selecting and arranging the tables was so negligible that the diary was not susceptible to copyright: [1944] AC at 335-6, 340. 64 I take the effect of the English authorities to be as follows. The author of a book that records facts, whether it be an encyclopedia, a map, a directory or some other factual compilation, does not acquire copyright in the facts that have been published. So much is trite. But the author may have copyright in the form in which he has published the facts. Copyright will subsist if there has been sufficient intellectual effort in the selection or arrangement of the facts. It will also subsist if the author has engaged in sufficient work or incurred sufficient expense in gathering the facts. The cases have not defined with any precision what amount of intellectual effort, labour, etc., is required to justify copyright. "In every case it must depend largely on the special facts of that case, and must in each case be very much a question of degree": Macmillan & Co Ltd v Cooper (1923) 40 TLR 186, 190. What is not clear is whether the intellectual effort, labour, etc, must be more than negligible or whether it must be substantial: see Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 84 FLR 101, 120-121 where the cases expressing the competing views are collected. When copyright does subsist in a compilation of facts, any person who wishes to publish the same facts is free to do so. But he must collect the facts himself. He cannot copy them from the first work. 65 The respondents argue that the English cases should not be followed. They contend that commercial information that is of no particular artistic value can only be copyright if there has been some ingenuity in the selection or arrangement of that information. They say that the United States and Canadian authorities support that approach, and that I should follow those cases. It is to the law in those jurisdictions that I now turn. 66 In the United States, as in Australia, copyright is entirely created by statute, the current federal enactment being the Copyright Act 1976. Section 102(a) sets forth the categories of "original works of authorship" that may be the subject of copyright including: literary works, musical works, dramatic works, pictorial, graphic and sculptural works, motion pictures and sound recordings. This replaced "all the writings of an author" in the thirteen categories set out in s 5 of the former Copyright Act 1909 (US). Section 103(a) states that "the subject matter of copyright as specified by s 102 includes compilations …". Compilations were also included as one of the categories set out in s 5 of the 1909 Act ("directories, gazetteers and other compilations"). For the first time, however, the 1976 Act provided a definition of "compilation" in s 101. The definition is in the following terms: "A 'compilation' is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term 'compilation' includes collective works.". 67 Before 1991 there was a division of opinion about the content of the originality requirement for a compilation. Some courts, especially those in the Second Circuit and Ninth Circuit, required that a compilation show some element of creativity or originality in the selection or arrangement of the facts before it would be accorded copyright: eg, Eckes v Card Prices Update 736 F2d 859 (2d Cir 1984) (a baseball card price guide whose authors exercised selection, creativity and judgment in choosing 5,000 premium cards out of a possible 18,000 or so different cards); Financial Information Inc v Moody's Investors Service, Inc. 808 F2d 204 (2d Cir 1986), cert denied 484 US 820 (1987) (bond redemption notices held not to be sufficiently original as the researchers did nothing more than fill in five facts regarding redeemed municipal bonds and little independent creation was involved); Worth v Selchow & Righter Co 827 F2d 569 (9th Cir 1987) cert denied 585 US 977 (1988) (encyclopaedia on trivia containing facts that were non-protectable, although the arrangement of the facts was protectable); Miller v Universal City Studios, Inc 650 F2d 1365 (5th Cir 1981) ("no rational distinction between facts and the research involved in obtaining facts"). 68 On the other hand, there was a strong line of authority, based on English cases such as Kelly v Morris and Morris v Ashbee, to the effect that industrious collection (American courts use the phrase "sweat of the brow") would suffice. The classic statement of the doctrine is by Rodgers J, Manton J concurring, in Jeweler's Circular Publishing Co v Keystone Publishing Co 281 F 83, 88 (2d Cir 1922), cert denied 259 US 581 (1922): "The right to copyright a book upon which one has expended labour in its preparation does not depend upon whether the materials he has collected consist or not of matters which are publici juris, or whether such materials show literary skill or originality, either in thought or in language, or anything more than industrious collection. The man who goes through the streets of a town and puts down the names of each of the inhabitants, with their occupations and their street number, acquires material of which he is the author. He produces by his labour a meritorious composition, in which he may obtain a copyright, and thus obtain the exclusive right of multiplying copies of his work." See also Schroeder v William Morrow & Co 566 F2d 3 (7th Cir 1977) (compilation of names and addresses in a garden directory); West Publishing Co v Mead Data Central Inc 799 F2d 1219 (8th Cir 1986) (arrangement of case reports). 69 In Feist Publications, Inc v Rural Telephone Service Co, Inc 499 US 340 (1991) the "sweat of the brow" theory was rejected by the Supreme Court. The issue was whether Rural had copyright in its white pages telephone directory. Rural was a certified public utility providing telephone services in Kansas. Pursuant to statute, Rural published an annually updated telephone directory including both white pages and yellow pages. The white pages were organised alphabetically and listed the name, address and telephone number of every subscriber. Rural acquired this information by requiring all people who wished to become a telephone subscriber to provide their name and address. Rural distributed its white pages free of charge and earned income by selling advertisements in the yellow pages. Feist was also a publisher of telephone directories. One of its directories was for an area that included that part of Kansas that was included in Rural's directory. Feist did not have access to Rural's subscriber information. It asked for permission to use Rural's listings. When this was refused Feist incorporated the listings in its own directory. 70 Rural sued for breach of copyright and failed. The judgment of the Supreme Court was delivered by O'Connor J. At issue was the tension between two propositions: facts are not copyrightable; compilations of facts are copyrightable. The key to resolving the tension, according to O'Connor J, lay in the proposition that to qualify for copyright the work must be original. She said (at 345): "Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Relying upon a number of cases, including The Trade Mark Cases, 100 US 82 (1879) and Burrow-Giles Lithographic Co v Sarony 111 US 53 (1884), O'Connor J held that originality is a constitutional requirement, the source of Congress' power to enact copyright laws being Art 1, s 8, cl 8 of the Constitution: 499 US at 346. This provision authorises Congress to "secur[e] for limited Times to Authors … the exclusive Right to their respective Writings". 71 O'Connor J explained that a factual compilation may be original in the required sense. First, an author must choose the facts to be included in a work. This choice, so long as it is made "independently" and "entail[s] a minimal degree of creativity", will establish originality: 499 US at 348. Second, an author must decide how to arrange the collected data. If this selection is made independently and entails a minimum degree of creativity, the result will be an original work: 499 US at 348. 72 O'Connor J criticised the "sweat of the brow" doctrine. She said that it effectively erodes the principle that no one can copyright facts or ideas. She said it creates a monopoly of public domain materials without the necessary justification of protecting and encouraging the creation of "writings" by "authors": 499 US at 354. Here O'Connor J was referring to that object of copyright inferred from Art 1, s 8, cl 8 of the United States Constitution. It is likely that the article was taken from the preamble to the Statute of Anne. 73 After stating that the test for originality is one that would be satisfied by the vast majority of compilations, O'Connor J said (499 US at 359) that "[t]here remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent." Such a work will not qualify for copyright. In this connection, O'Connor J observed (499 US at 362) that "the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever." The standard of originality is low, but it does exist. As regards Feist's white pages O'Connor J said (499 US at 362): "… Rural simply takes the data provided by its subscribers and lists it alphabetically by surname. The end product is a garden-variety white pages directory, devoid of even the slightest trace of creativity. Rural's selection of listings could not be more obvious: It publishes the most basic information - name, town, and telephone number - about each person who applies to it for telephone service. This is 'selection' of a sort, but it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression." 74 It is by no means clear that O'Connor J was correct when she said that limiting the copyright in compilations to those where there has been an exercise of judgment will not affect many publications. So far as selection is concerned, there will be difficulty whenever the amount of data available for selection is small because necessarily there will be little selection. So also if the volume of data that is selected is small, for the doctrine de minimis non curat lex may apply. More significant will be cases where functional considerations or commercial reasons limit the area of discretion. For example, where all facts of a particular kind have been recorded, there will be no "selection" at all. So far as arrangement is concerned, Feist would seem to deny originality to obvious methods of grouping or listing data, such as alphabetically, chronologically, or sequentially. 75 There has been much criticism of Feist. One point made is the failure of the court to define or set the standard of creativity that is required for copyright: T L Meade, "Ex-post Feist: Applications of a landmark copyright decision", 2 Journal Intellectual Property Law 245, 251-252 (1994); E R York, "Warren Publishing, Inc v Microdos Data Corp: Continuing the Stable Uncertainty of Copyright in Factual Compilations", (1999) 74 Notre Dame Law Review 565; M R Silverstein, "The Copyrightability of Factual Compilations: An Interpretation of Feist through cases of Maps and Numbers", 1996 Annual Survey of American Law 147. The white pages did not qualify because the creativity employed was "extremely low" (499 US at 344); at "minimal level" (499 US at 358); "not particularly stringent" (499 US at 358); or only a "modicum standard" (499 US at 362). 76 This lack of specificity has produced uncertainty in the application of Feist in later decisions, as appears from two cases dealing with yellow pages directories. In Key Publications, Inc v Chinatown Today Publishing Enterprises Inc 945 F2d 509 (2d Cir 1991) the plaintiff's director collected business cards from businesses believed to be of particular interest to the Chinese-American community in New York. She sorted the information by type of business and placed each business in the appropriate category, listing the name, address and telephone number of each business. The defendant also published a yellow pages directory. Approximately 75 per cent of the listings in the defendant's directory appeared in the plaintiff's directory. The Second Circuit found that the plaintiff's directory was sufficiently original to be copyright. The Court said that the test of originality set by Feist was "not particularly rigorous": 945 F2d at 512. Two aspects of the selection process satisfied the test: the exclusion of businesses that would soon close and the selection of businesses that were of particular interest to Chinese Americans. The court also held that the business categories (headings) were original, citing as an example "Bean Curd & Bean Sprout shops". The Court found that the arrangement was "in no sense mechanical but involved creativity": 945 F2d at 514. However, the plaintiff lost because it was not able to show "substantial similarity" between the works. 77 In BellSouth Advertising & Publishing Corp v Donnelley Information Publishing, Inc 999 F2d 1436 (11th Cir 1993), cert denied 510 US 1101 (1994) the plaintiff, BAPCO, published a yellow pages for Miami. The directory was organised into an alphabetical list of business classifications. Each business subscriber was listed in alphabetical order under an appropriate heading, without charge. A subscriber could purchase additional or cross-listings under different classifications. The defendant sold advertisements to be placed in a competing directory. It appropriated the BAPCO directory for use as a database to contact prospective customers to solicit business. BAPCO sued for breach of copyright and moved for summary judgment. The District Court ruled in favour of BAPCO: BellSouth Advertising & Publishing Corp v Donnelley Information Publishing, Inc 719 FSupp 1551 (S.D. Fla 1988). On appeal this decision was affirmed: 933 F2d 952 (11th Cir 1991). The court found that there was copyright in the yellow pages, because it was substantially original. There was originality in selecting the boundaries of the directory, selecting the closing date for listings and coordinating all of the information into one complete listing and arranging the co-ordinated listings into various categories: 933 F2d at 957-958. 78 The judgment of the Eleventh Circuit was subsequently vacated by a grant of rehearing en banc: 977 F2d 1435 (11th Cir 1992). On the rehearing the Eleventh Circuit Court of Appeals reversed the original decision. The court ruled that when BAPCO selected the geographic scope for its directory and the closing date, that did not meet the level of originality required to obtain copyright. The court characterised those activities not as acts of authorship but techniques for the discovery of facts: 999 F2d at 1441. The acts of coordination and arrangement were said to be "entirely typical" for a business directory and thus were not original: 999 F2d at 1442. In relation to the headings, the court ruled that many, for example headings such as "attorneys" or "banks", were so obvious as to lack originality for copyright protection, some were the result of standard industry practice, and in many cases it was the subscriber and not BAPCO who selected the heading under which the subscriber appeared. 79 The question whether there can be copyright in a yellow pages directory has also been considered in Canada. In Tele-Direct (Publications) Inc v American Business Information Inc (1997) 154 DLR 4th 328, leave to appeal refused (1998) 228 NR 200, the plaintiff did not claim copyright in the selected information (headings, description of the business and name, address and telephone number of the subscriber) but in the arrangement of that information and in respect of the collection of additional data such as facsimile numbers, trade marks, years in business and the like. The Federal Court of Appeal held that copyright did not subsist in the directory because the publisher exercised only a minimal degree of skill or judgment in the overall arrangement of the publication, which was insufficient to support a claim for originality. The fact that there was industrious collection of the information was not regarded as relevant. 80 The decision must be understood in the following statutory context. Canada is a signatory to the North American Free Trade Agreement, which deals with copyright, among other matters. Article 1705 of the treaty provides: "Each Party shall protect the works covered by Article 2 of the Berne Convention, including any other works that embody original expression within the meaning of that Convention. In particular: (a) all types of computer programs or literary works within the meaning of the Berne Convention and each Party shall protect them as such; and (b) compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of the contents constitute intellectual creations, shall be protected as such." 81 Canada implemented the treaty with the enactment of the North American Free Trade Agreement Implementation Act 1993 (Can). The Implementation Act amended the Copyright Act 1985 (Can). Previously, copyright had subsisted in every original "artistic work", "dramatic work", "literary work", and "musical work". Now the subject matter of copyright was extended to include "compilations of artistic works", "any compilation of dramatic works", "compilations of literary works" and "any compilation [of any work of music or musical composition]": s 53(2) of the Implementation Act. The Implementation Act also introduced into the Copyright Act a definition of "compilation". The definition reads: "Compilation means - (a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or (b) a work resulting from the selection or arrangement of data." In Tele-Direct (Publications) Inc, the judgment of the Court was delivered by Décary JA. He considered this legislative history and said (at 334-335): "[T]he addition of the definition of 'compilation' in so far as it relates to 'a work resulting from the selection or arrangement of data' appears to me to have decided the battle which was shaping up in Canada between partisans of the 'creativity' doctrine - according to which compilations must possess at least some minimal degree of creativity - and the partisans of the 'industrious collection' or 'sweat of the brow' doctrine - wherein copyright is a reward for the hard work that goes into compiling facts'. … Clearly what the parties to the [North American Free Trade] Agreement wanted to protect are compilations of data that 'embody original expression within the meaning of [the Berne] Convention' and that constitute 'intellectual creations'. The use of these last two words is most revealing: compilations of data to be measured by standards of intellect and creativity. As these standards were already present in Anglo-Canadian jurisprudence - as we shall see later - I can only assume that the Canadian government in signing the Agreement and the Canadian Parliament in adopting the 1993 amendments to the Copyright Act expected the Court to follow the 'creativity' school of cases rather than the 'industrious collection' school. And later (at 336): "All in all, apart from a possible qualification one might wish to make with respect to some earlier decisions, I have come to the conclusion that the 1993 amendments did not alter the state of the law of copyright with respect to compilations of data. The amendments simply reinforce in clear terms what the state of the law was, or ought to have been: the selection or arrangement of data only results in a protected compilation if the end result qualifies as an original intellectual creation." 82 Décary JA made only passing reference to some English cases. His view was that when the English cases used expressions such as "skill, judgment or labour" to describe the test to be satisfied to obtain copyright, the word "or" was used in a conjunctive sense. Décary JA did not refer to Kelly v Morris, Morris v Ashbee or Morris v Wright. 83 There are policy reasons both for and against the result in Feist and Tele-Direct (Publishers) Inc. On the one hand, the ability to prevent others from appropriating information in a compilation of facts will severely limit the ability of later authors to build upon the earlier works. This may impair progress in both the sciences and the arts: see the observations of R C Denicola, "Copyright in Collections of Facts: A Theory for the Protection of Non-fiction Literary Work", 81 Columbia Law Review 516 (1981). On the other hand, there are those who argue that the abandonment of the "sweat of the brow" theory has threatened the progress of information. The argument is that the collection of factual material is essential to the economy. Databases provide a wealth of information to business people, professionals, scientists and consumers. If copyright protection is not given, the investment of the time and money that is required to produce these compilations will not be forthcoming: J R Boyarski, "The Heist of Feist: Protections for Collections of Information and the Possible Federalization of 'Hot News'", 21 Cardozo Law Review 871 (1999). Perhaps it was the risk of this occurring that led to the introduction of a bill to repeal the effect of Feist in the United States House of Representatives. If enacted, the Collections of Information Antipiracy Bill will protect those who collect, gather and maintain information through the investment of substantial resources. Persons who extract or use in commerce a substantial part of such a collection so as to harm the collector's actual or potential market for products or services incorporating the information, will be held liable for certain remedies. Criminal penalties are contemplated. The bill was introduced in 1998, and lapsed when the term of the 105th Congress expired. It was reintroduced in the following term and again lapsed and has not yet been reintroduced. 84 Quite apart from matters of policy, it might be said that the very nature of copyright requires the work to be the product of creative thought. The first copyright statute was enacted "for the Encouragement of learned Men to compose and write useful Books". These books were necessarily the result of the author's intellectual effort. That was also true of other works (engravings, sculptures, dramatic works and the like) that were given copyright protection by the early statutes. But a compilation is of a different character from a work of art or literature. This is especially true of a compilation of facts that are in the public domain. For this type of compilation to come into existence, the facts must be selected, collected, arranged in a particular fashion, and then produced in some form. It may be possible to describe as creative the processes of selection, collection or arrangement. But the creativity is of a different order from that involved in producing a work of art or literature. The English cases seem implicitly to accept this proposition, because the originality requirement for a compilation could not be the same as for other works. More particularly, when it was held that copyright could subsist in a work such as a chemist's stock list (Collis v Cater), the preparation of which involved no intellectual effort, it was apparent that a work could be original in the absence of creativity. The old view of originality had disappeared. So, copyright protection could be claimed by a person who brought out a directory in consequence of an expensive, complicated and well organised venture, even if there was no creativity in the selection or arrangement of the data. 85 That being the law in England in 1911, it became the law in Australia in 1912 when the English statute was adopted as the law in this country. In this connection I note that it was once argued that the Copyright Act 1911 brought about an alteration to the pre-existing law. In Sands & McDougall Pty Ltd v Robinson it was submitted that the effect of the introduction of the word "original" into s 1 of the 1911 Act, was that the work itself must be inventive. The argument proceeded on the false assumption that the word "original" had first come into copyright legislation in 1911. The argument was rejected. The High Court pointed out (23 CLR at 53) that originality had always been a requirement of copyright and the Copyright Act 1911 did not depart from established law. Although the Copyright Act 1912 has been superseded, the changes that have been made in the current statute do not admit of the conclusion that the English law has been discarded. In the circumstances I do not consider it possible, especially sitting as a judge at first instance, to jettison the old law and replace it with the principles expressed in Feist and Tele-Direct (Publishers) Inc. 86 I should mention that that I have examined many of the Australian cases where copyright has been found to subsist in a compilation to see what light they show upon the problem. It is true that in a number of these cases there was copyright because of the intellectual effort involved in creating the work. But that does not explain the result in all. The cases include TM Hall & Co v Whittington & Co (1892) 18 VLR 525 (a pamphlet containing bills of sale and stock mortgages); Real Estate Institute of New South Wales v Wood (1923) 23 SR(NSW) 349 (a contract containing conditions and terms for the sale of land); Canterbury Park Race Course Co Ltd v Hopkins (1931) 49 WN(NSW) 27 (a racing guide); Mander v O'Brien [1934] SASR 87 (a racing guide); Winterbottom for the Western Australian Turf Club v Wintle (1947) 50 WALR 58 (a racing guide); John Fairfax & Sons Pty Ltd v Australian Consolidated Press Ltd (1960) SR(NSW) 413 (a list of births and deaths); Australian Consolidated Press Ltd v Morgan (1965) 112 CLR 483 (the results of a "Gallup poll"); O'Brien v Komesaroff (1982) 150 CLR 310 (a compilation of trust deeds); Mirror Newspapers Ltd v Queensland Newspapers Pty Ltd (1982) 59 FLR 71 (a list of bingo numbers); Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1984) 84 FLR 101 (a set of accounting forms); A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478 (a catalogue of motorcycle parts); Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529 (a compilation of weight loss programs); Olympic Amusement Pty Ltd v Milwell Pty Ltd (1998) 81 FCR 403 (draw poker prize scales); Harpur v Lambourne (1999) 45 IPR 213 (a marine industry directory); and T R Flanagan Smash Repairs Pty Ltd v Jones (2000) 48 IPR 19 (motor vehicle descriptions). 87 There are a handful of authorities where a claim of copyright for a compilation was rejected. The cases are Smith's Newspapers Ltd v The Labor Daily (1925) 25 SR(NSW) 593 (a list of tips of winning horses), Sampson v Brokensha & Shaw Ltd (1935) 37 WALR 90 (a compilation of forms), and Victoria Park Racing and Recreation Grounds Company Ltd v Taylor (1937) 58 CLR 479 (a list of race horses). In Victoria Park Racing copyright was claimed in a board containing the names and numbers of starting horses and scratchings at a racecourse. Dixon J said that for a work to be original "it must originate with the author and be more than a copy of other material.": 58 CLR at 511. He went on to say that to be original, a work need not be the product of new or inventive ideas, and that "[t]he work need show no literary or other skill or judgment.": 58 CLR at 511. 88 It was suggested that Data Access Corporation v Powerflex Services Pty Ltd (1999) 73 ALJR 1435 requires acceptance of the opposite conclusion. The appellant had developed a computer program, being a set of instructions to cause a computer to perform a particular function. The instructions took the form of a computer language. The language comprised a set of reserved words used in accordance with the rules governing the use of each word. The words were found in a users guide. Many of the words were ordinary English words suggesting a particular function, for example, check, clear, insert, and loop. Some were unique to the plaintiff's program, but most were in common use. The High Court was required to determine whether there was copyright in the users guide. In a joint judgment the court said (at 1451): "The appellant did not submit that any of the Reserved Words themselves were traditional literary works protected by copyright, no doubt because they would face significant hurdles in the form of originality and substantiality. Given that the reserved words are arranged in alphabetical order in the Dataflex User's Guide, very little skill or labour was involved in compiling the reserved words in the form in which they appear in the User's Guide over and above the sum of the skill and labour involved in devising each individual reserved word. As the Full Court said: 'This is not a case where disconnected words are used in a particular order so that the order becomes the linchpin for copyright.' Furthermore, as we have already said, each of the Reserved Words is suggestive of the function it performs. In many cases, it is an ordinary English word, or a concatenation of two or more ordinary English words. Even if the skill and labour involved in devising each individual Reserved Word is combined and consideration given to the total skill and labour, there may still be a real question as to whether there is sufficient originality for copyright to subsist in the combination. This is so even allowing for the inclusion in the definition of par (b) of 'literary work' of a 'compilation of computer programs'." I do not regard this as a rejection of the "industrious collection" cases. To the contrary, the High Court appears to accept that a compilation made up of words that are arranged in a particular order may be copyright if there is some sense to the order in which the words are placed. This is implicit in the High Court's apparent approval of the sentence quoted from the Full Federal Court. 89 This disposes of the principal issue raised by this case. I can now turn to the other matters that require resolution. With respect to those matters, the parties are not in dispute about the applicable legal principles, but they do not agree on to how those principles should be applied. 90 The first question is whether there is copyright in Telstra's directories and headings books. This question has not been considered in the discussion on originality. In that discussion the issue was whether the directory portion of the directories and the headings themselves are original compilations. But this is not how the question of copyright must be determined in relation to a complete work. The correct approach is to look at the whole work and enquire whether it is protected by copyright. This was established in Ladbroke (Football) Ltd. There Lord Reid said ([1964] 1 WLR at 277): "[T]he more correct approach is first to determine whether the plaintiff's work as a whole is 'original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial. A wrong result can easily be reached if one begins by dissecting the plaintiff's work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole cannot be. Indeed, it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright." When each directory is considered as a whole it will be seen to be original. If skill is required, sufficient skill has been employed in its creation. In this connection reference need only be made to the information pages, which comprise partly a listing of data and partly important information written in prose, such as one might find in an encyclopedia of facts. 91 As regards the headings, the point is covered by authority. In Lamb v Evans [1892] 3 Ch 462, the plaintiff was the publisher of a trades directory consisting of advertisements furnished by tradesmen and classified under headings denoting the different trades, which headings were composed by the plaintiff. Chitty J held that the plaintiff had copyright in the headings. The Court of Appeal agreed ([1893] 1 Ch 218). In the course of his judgment Lindley LJ said (at 224): "It appears to me that the plaintiff has an exclusive right to the publication of those headings … not that he can restrain other people from publishing the same sort of thing if they go about it in the right way, but he has a right to restrain other people from copying his book." 92 The question then arises whether DtMS has infringed the copyright in the directories and headings books. Section 31(1) of the Copyright Act says that "reproduc[ing] the [copyright] work in a material form" is one of the exclusive rights of the owner. The effect of s 14 is that there will be copyright infringement if the reproduction is of the whole work or "a substantial part of the work". Whether a part is substantial must be decided by its quality: Ladbroke (Football) Ltd [1964] 1 WLR at 293. In Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300, 305, Mason CJ said that "in determining whether the quality of what is taken makes it a 'substantial part' of the copyright work, it is important to inquire into the importance which the taken portion bears in relation to the work as a whole: is it an 'essential' or 'material' part of the work?" See also Warwick Film Productions Ltd v Eisinger [1969] 1 Ch 508, 533. In this context, the copying of only the unoriginal parts of a copyright work will not usually be an infringement: Ladbroke (Football) Ltd [1964] 1 WLR at 293. As explained by the High Court in Data Access Corporation (73 ALJR at 1450). "In determining whether something is a reproduction of a substantial part of [a work] the 'essential or material features of [the work] should be ascertained by considering the originality of the part allegedly taken'." 93 Telstra says that its copyright in the directories and headings books was infringed when DtMS reproduced a substantial part of those works. Once it is accepted that "industrious collection" will suffice to confer copyright, it follows that the directory portion of the white pages directories, the directory portion of, and the headings in, the yellow pages directories, and the headings in the headings books, are original and essential features of the respective works. This was not seriously in dispute. It would be otherwise if the "industrious collection" view of originality were rejected. In that event, what has been taken is not substantial. The telephone listings are, to adopt the language of O'Connor J (499 US at 362): " … garden-variety white pages [or yellow pages] director[ies], devoid of even the slightest trace of creativity." The position is a little more complex with regard to the headings, but the result is the same. I should explain why I have reached that conclusion. First, however, I should dispose of any suggestion that there is relevant intellectual input in the selection of businesses listed under a particular heading in the yellow pages directories. In almost all cases the subscriber selects the heading under which a business is to be listed, and Telstra cannot claim copyright protection for their efforts. Turning to the headings, the evidence establishes that most headings are obvious, but when some choice must be made between competing possibilities, little intellectual effort is involved. Of course there are exceptions. But they are not of sufficient magnitude to conclude that the headings as a whole are the product of creative thought. The evidence that has led me to this position comprises comparisons between Telstra's headings and those in other directories and certain testimonial evidence concerning the scope of possible choices for particular headings. While it may be an unnecessary burden, I propose to refer to some of that evidence. 94 The table below lists the total number of headings found in a number of directories. Directory Number of Headings Telstra's 1998 Melbourne headings book 2483 DtMS's July 1998 Marketing Pro 2485 1997 Bell South Greater Orlando 3818 1996 Yellow Pages Publishers Association of America 3758 headings book (YPPA) 1997/98 Pacific Bell Sandiego 3239 1998 Central London 1653 1998 Melbourne Big 1908