11 Next, a number of central concepts in the Copyright Act, and how they interrelate, need to be examined.
12 Those concepts are "literary work", "original" and "author". Part III of the Copyright Act (ss 31 to 83) deals with "Copyright in Original Literary, Dramatic, Musical and Artistic Works". Division 1 of Pt III is concerned with the nature, duration and ownership of copyright in these works.
13 Section 32(1) provides that, subject to the Copyright Act:
copyright subsists in an original literary … work that is unpublished and of which the author:
(a) was a qualified person at the time when work was made; …
(Emphasis added).
A "qualified person" means an Australian citizen or a person resident in Australia: s 32(4).
14 Section 32(2) provides that, subject to the Copyright Act:
[w]here an original literary … work has been published:
(a) copyright subsists in the work; or
…
if, but only if:
(c) the first publication of the work took place in Australia;
(d) the author of the work was a qualified person at the time when the work was first published; or …
(Emphasis added).
15 A reference to "an author of a work", in relation to a work of joint authorship, is a reference to all authors of the work: s 78. The references in s 32 of the Copyright Act to "the author of the work" in relation to a work of joint authorship are to be read as references to any one or more of the authors of the work: s 79. Copyright subsists in a work until the end of 70 years after the end of the calendar year in which the author of the work died: s 33(2).
16 "Literary work" is defined in s 10(1) to include:
(a) a table, or compilation, expressed in words, figures or symbols; and
(b) a computer program or compilation of computer programs.
17 Subject to s 35(6), the author of a literary work is the owner of any copyright subsisting in the work: s 35(2). Section 35(6) provides that where a literary work is made by the author pursuant to the terms of his or her employment by another person under a contract of service, that other person is the owner of the copyright subsisting in the work.
18 The nature of a copyright right is defined in s 31 as the exclusive right "in relation to a work" (including a literary work) to do all or any of the following acts:
(i) to reproduce the work in a material form;
(ii) to publish the work;
(iii) …
(iv) to communicate the work to the public;
(v) …
(vi) to make an adaptation of the work; …
19 The expression "material form" in relation to a work is defined in s 10(1) to include (cf [6] above):
any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced).
20 The centrality of authorship is self evident.
1. The "theoretical underpinnings" of the Copyright Act strike a balance between rewarding authors of original literary works against policy considerations concerning "the public interest in maintaining a robust public domain in which further works are produced": IceTV 254 ALR 386 at [24] and [71]. The genesis of copyright legislation in England was to protect the rights of authors of work from the reproduction of their work without their consent: see IceTV 254 ALR 386 at [25].
2. The Copyright Act fixes on the author: ss 32, 33, 35 and 127 of the Copyright Act; IceTV 254 ALR 386 at [22]-[25] and [96]-[97] and Vawdrey Australia Pty Ltd v Krueger Transport Equipment Pty Ltd (2009) 83 IPR 1 at [147] per Lindgren J.
3. The author is the person or persons who bring the work into existence in its material form: s 10(1), 31 and 32 of the Copyright Act and IceTV 254 ALR 386 at [26], [33] and [98]-[99]. To be considered as an author of a literary work the person or persons must have exercised "independent intellectual effort" (IceTV 254 ALR 386 at [33] and [48]) and / or "sufficient effort of a literary nature" (IceTV 254 ALR 386 at [99]).
4. The Copyright Act provides for the possibility of joint authors: s 10(1) of the Copyright Act and IceTV 254 ALR 386 at [23] and [100]. A "work of joint authorship" requires that the literary work in question "has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors": s 10(1) of the Copyright Act; see also Levy v Rutley (1871) LR 6 CP 523 at 529 per Keating J; Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd (No. 1) [1995] FSR 818 at 835-836 per Laddie J; Prior v Lansdowne Press Pty Ltd (1975) 12 ALR 685 at 688 per Gowans J.
5. The Copyright Act also provides for compilations - the bringing into existence of a literary work which gathers and organises material from various sources: IceTV 254 ALR 386 at [72], quoting William Hill (Football) Ltd v Ladbroke (Football) Ltd [1980] RPC 539 at 550 per Diplock LJ. The fact a work is a compilation will itself inform the issues of authorship to be considered: IceTV 254 ALR 386 at [99]. The author or authors will be those who gather or organise the collection of material and who select, order and arrange its fixation in material form: ss 10(1), 31 and 32 of the Copyright Act and of IceTV 254 ALR 386 at [73]-[74] and [99]. However, it is a question of fact and degree which one or more of them will have expended "sufficient effort of a literary nature" to be considered an author under the Copyright Act: IceTV 254 ALR 386 at [99].
6. Original works emanate from authors: ss 32, 33 and 35 of the Copyright Act and IceTV 254 ALR 386 at [22], [24], [33], [48] and [96]. Authorship and originality are correlatives: IceTV 254 ALR 386 at [33], [34], [47]-[49], [52] and [54]. In that context, as mentioned in [20(3)] above, "originality" under the Copyright Act "means that the creation (ie the production) of the work required some independent intellectual effort" and / or the exercise of "sufficient effort of a literary nature": IceTV 254 ALR 386 at [33], [47]-[48] and [99]; see also at [187]-[188] and discussion of the need for some "creative spark" and exercise of "skill and judgment". The phrases adopted are different. However, each phrase confirms that for a work to be sufficiently original for the subsistence of copyright, "substantial labour" and / or "substantial expense" is not alone sufficient. More is required. What that more is will, of course, vary from case to case but must involve "originality" by an identified author in an identified work. Where the expression of the work is dictated by the nature of the information the subject of expression without such effort, it will go against a finding of originality: IceTV 254 ALR 386 at [42] and [170].
7. The Copyright Act does not protect facts, ideas or information contained in a work, to ensure a balance is struck between the interests of authors and those in society: IceTV 254 ALR 386 at [28] and the cases cited therein. The Copyright Act does not provide protection for skill and labour alone: IceTV 254 ALR 386 at [49], [52], [54] and [131].
8. The Copyright Act protects the particular form of expression of the information: IceTV 254 ALR 386 at [26], [28], [40], [70], [102] and [160]; Hollinrake v Truswell [1894] 3 Ch 420 at 424 per Lord Herschell LC; Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) (2009) 177 FCR 61 at [17] per Emmett J; see also Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29 at [40], [41] and [212]. Copyright is not given to reward work distinct from the production of a particular form of expression: IceTV 254 ALR 386 at [28] and [31]. Accordingly, it is "unhelpful to refer to the 'commercial value' of the information, because that directs attention to the information itself rather than to the particular form of expression": IceTV 254 ALR 386 at [31] and [166].
9. As compilations often contain facts and information, it is necessary to focus on the nature of the skill and labour required to create the work and ask whether it is directed to the originality of the particular form of expression: IceTV 254 ALR 386 at [31], [33], [47]-[48], [52] and [54].
10. "Fixation" or identification of the original work is essential: ss 8 and 31-35 of the Copyright Act and IceTV 254 ALR 386 at [15], [24]-[28] and [102]-[105]. Copyright does not subsist in a work unless and until the work takes a material form: IceTV 254 ALR 386 at [26] and [103].
21 As explained above (see [20(6)]), originality is closely tied to authorship. It requires that works originate with an author and that "the creation (that is the production) of the work [involve] some independent intellectual effort, but neither literary merit nor novelty or inventiveness as required in patent law": IceTV 254 ALR 386 at [33] and [48]. This view is consistent with a long line of authority: see University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608-609 per Peterson J; Robinson v Sands & McDougall Pty Ltd (1916) 22 CLR 124 at 132-133 per Barton J; Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 at 52 per Isaacs J; Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 511 per Dixon J; Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637 at 651 per Upjohn J; Autodesk Inc v Dyason (1992) 173 CLR 330 at 347 per Dawson J; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 379 per Gummow J; Data Access Corporation v Powerflex Services Pty Ltd (1999) 202 CLR 1 at [22], [95] and [122] per Gleeson CJ, McHugh, Gummow and Hayne JJ; Sawkins v Hyperion Records Ltd (2005) 64 IPR 627 at [31] per Mummery LJ; Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) (2009) 177 FCR 61 at [18] per Emmett J.
22 Moreover, at [47] and [48] of IceTV 254 ALR 386, French CJ, Crennan and Kiefel JJ stated:
[47] Much has been written about differing standards of originality in the context of the degree or kind of "skill and labour" said to be required before a work can be considered an "original" work in which copyright will subsist. "Industrious collection" or "sweat of the brow", on the one hand, and "creativity", on the other, have been treated as antinomies in some sort of mutually exclusive relationship in the mental processes of an author or joint authors. They are, however, kindred aspects of a mental process which produces an object, a literary work, a particular form of expression which copyright protects. A complex compilation or a narrative history will almost certainly require considerable skill and labour, which involve both "industrious collection" and "creativity", in the sense of requiring original productive thought to produce the expression, including selection and arrangement, of the material.
[48] It may be that too much has been made, in the context of subsistence, of the kind of skill and labour which must be expended by an author for a work to be an "original" work. The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort. …
(Emphasis added, citations omitted).
23 Similar warnings were contained in the joint judgment of Gummow, Hayne and Heydon JJ at [187] and [188]:
[187] … This concerns the submission by the Digital Alliance that this Court consider the Full Court's decision in Desktop Marketing and, to the contrary of Desktop Marketing, affirm that there must be some "creative spark" or exercise of "skill and judgment" before a work is sufficiently "original" for the subsistence of copyright.
[188] It is by no means apparent that the law even before the 1911 Act was to any different effect to that for which the Digital Alliance contends. It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years. These reasons explain the need to treat with some caution the emphasis in Desktop Marketing upon "labour and expense" per se and upon misappropriation. However, in the light of the admission of Ice that the Weekly Schedule was an original literary work, this is not an appropriate occasion to take any further the subject of originality in copyright works.
(Citations omitted).
24 As these passages make clear, care must be taken not to extend the notion of originality beyond that which the Copyright Act was and is intended to protect.
25 During the hearing, the Respondents often submitted that a particular alleged contribution to the Works was too "remote". I do not consider that approaching the question of subsistence of copyright is assisted by seeking to classify the contribution as "remote" or "too remote". How would you assess it - by activity, by time spent, temporally to the ultimate production of each Work? The extent to which individual authors contribute to a work is a matter of fact, and attempting to craft legal rules applicable to that factual inquiry is something to be approached with caution: see Macmillan and Co Ltd v Cooper (1923) 1B IPR 204 at 212-3 per Lord Atkinson; Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339 at [38] per Finkelstein J.
26 The central question is whether the alleged contribution involved independent intellectual effort and / or sufficient effort of a literary nature (see [20(3)] and [20(6)]) and whether the skill and labour required for the creation of the work was directed to the originality of the particular form of expression (see [20(8) and (9)]). Again, this is a factual matter to be determined on the circumstances of the particular case: see Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 289-290 per Lord Devlin; Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436 at [21]-[24]; see also Data Access Corporation v Powerflex Service Pty Ltd (1999) 202 CLR 1 at [123] per Gleeson CJ, McHugh, Gummow and Hayne JJ.
27 Finally, particular challenges are created by the use of information technology, and particularly databases, in the creation of compilations which may or may not be protected as literary works. As noted above at [20(10)], the identification of the work in question is pivotal. At [151]-[152] of IceTV 254 ALR 386, Gummow, Hayne and Heydon JJ discussed, without conclusively determining, some of the considerations involved where the work in question is an electronic database, based on the observations of Professor Davison in his work The Legal Protection of Databases (2003). What guidance was offered can be summarised as follows:
1. Creating and updating an electronic database requires decisions to be made regarding the construction of the database, as human thought contributes to the scheme for the database and the conception of how the material would look to the external user; and
2. A claim of authorship over a database is based upon the consideration of the possible outcomes of input into the database. The choice of software used in the database determines the operation of the database and the data included.
In other words, a claim of authorship in a database may arise where a person (an author) determines how a database will function and be expressed. The independent intellectual effort expended in making those determinations might go to the originality of the particular form of expression of the work (namely, the database).
28 Therefore, completion of the following steps will assist in determining whether copyright subsists in a given work:
1. Identify the work in suit: see [20(10)] and [27] above.
2. Identify the author or authors of the work: see [20(1)-(6)], [21] and [25] above. (In certain circumstances a work can be the subject of a presumption of authorship: s 127 of the Copyright Act).
3. Determine when the first publication of the work occurred: see [20(10)] above and s 32(2)(c) of the Copyright Act.
4. Identify how the work is original: see [20(6)-(9)], [21]-[24] and [26] above.