Telstra Corporation Limited v Phone Directories Company Pty Ltd

Federal Court of Australia (Full Court)|2010-12-15|Before: St J, Keane CJ, Yates JJ

Introduction 98 I have had the advantage of reading in draft the reasons for judgment of both the Chief Justice and Yates J and, in what follows, I record the substantial assistance I have derived from those judgments in clarifying my own thoughts. The appellants are the publishers of the White and Yellow Pages directories which are books containing comprehensive listings of telephone numbers. The question in the appeal is whether they are works in which copyright inheres under the Copyright Act 1968 (Cth) ("the Act"). The learned primary judge held that they were not. In my opinion, her Honour was correct to arrive at that conclusion and the appeal should be dismissed with costs.

Originality and authorship 99 By s 32(2) of the Copyright Act 1968 copyright subsists in original literary works in a number of circumstances including, relevantly, that first publication of the work took place in Australia. There is no dispute in this case that the directories were all first published in Australia. The interpretation provision of the Act (s 10) defines the expression "literary work" to include "a table, or compilation, expressed in words, figures or symbols". There was no dispute in the present appeal that the directories were compilations so that the sole issue in the appeal is whether the directories were "original" works. 100 On the question of what is "original" some propositions are well-established. First, although the Act does not define "original" it is accepted that it means "originated" (i.e. made for the first time and not copied) by an "author" (IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at [33] ("IceTV")); secondly, leaving aside the position of photographs, for which separate provision is made, the "author" must be an actual person (for reasons including, inter alia, the fixing of the duration of the monopoly by reference to the author's life: s 33 of the Act) (IceTV at [97]); thirdly, to qualify as an author that person must bring to bear some "independent intellectual effort" (IceTV at [33]) or "sufficient effort of a literary nature" (IceTV at [99]); fourthly, the effort called for by the Act falls well short of requiring either the fashioning of works of literary merit (in the traditional sense obtaining to literature) (IceTV at [33]) or the inception of those exhibiting inventiveness (IceTV at [33]). The point of the copyright monopoly is the encouragement of new works not good works.

Relevance of skill and labour not directed to the creation of the material form 101 Applied to the directories in suit these principles engender debate about their authorship. The information in the directories was collected through processes which I would accept involved human industry and the results of which were stored in a substantial and sophisticated database. However, the creation of the material form of the directories was carried out by a computer program overseen by persons who had no substantive input into those forms. The questions which arise are, therefore, two. First, granted that there must be independent intellectual effort or sufficient effort of a literary nature, is that effort required to be directed at the creation of the material form of the work (here the form of the directories) or does it suffice that the effort was directed at some anterior activity (here the collection of information presented in the directories)? Secondly, if the intellectual effort must be directed at the creation of the material form of the directories, was there sufficient human effort involved in that process in this case to mean that the directories were reduced to a material form by an author or authors? 102 Those questions inevitably necessitate an appreciation of just how these telephone directories were composed. The learned primary judge was burdened by a great weight of evidence about the manner in which two of the directories were created (and those two directories served as representative examples for a larger number of other directories). Her Honour considered all of this body of material and made detailed findings of fact none of which were challenged before this Court. At the risk of oversimplification there were, in effect, three processes involved. The first involved the maintenance, updating and editing of a database containing customer details (the Collection Phase). The second involved the extraction from that database of information for each directory and the sublimation of that information into an electronic form which constituted substantially the form of the ensuing directory (the Extraction Phase). The third process involved the typesetting of that form and the physical production of the directories (the Production Phase). One may, I think, dispense with the Production Phase at the outset. There will be cases where the layout of a document is, in fact, itself a literary work. One well-known example of the truth of that proposition is afforded by the example of the football coupons in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273. However, in such cases, originality in the layout must be evidenced and this will require the demonstration of some independent intellectual effort or sufficient effort of a literary nature. I do not think that the organisation of the pages of a telephone directory exhibits activity of that kind. There may be cases where the typesetting of one literary work involves the creation of another (the layout of a newspaper may be one example). However, the layout of a telephone directory is essentially dictated by the material form of the work being printed. 103 I would accept, however, that there was intellectual effort at the Collection Phase. The evidence showed that the business structure of the appellant Sensis (which was responsible for the production of the directories) was complex and that a significant number of employees worked away on a daily basis updating the very many entries in the directory. Many others were involved in quality control. Some of this work was ministerial; other parts of it involved seeking to persuade customers to enlarge or embellish their entries. What was involved was the full panoply of activities which one might expect to attend the collection and maintenance of customer information for telephone directories prepared for a country of twenty or so million people. Much of this activity, but by no means all of it, was automated. Computers and databases were ever-present but on no view would the Collection Phase have been able to proceed without the involvement of significant human activity. 104 The question then is whether that human industry is relevant to the issue of the directories' originality. I think the answer to that question is that it is not. Whatever else might be said of the kind of efforts required of an author, they must be efforts which result in the material form of the work. The important creative steps which involve the fashioning of the ideas on which a literary work's ultimate form rests are not actions which the Act counts as authorial and this is because what is protected by the copyright monopoly is the form of a work and not the ideas which presage or prefigure it. And this is so even if those ideas can plainly be discerned in the fabric of the material form. The travels reduced to a touring guide, the toils in the library underpinning a substantive work of history and the life led which finally results in an autobiography are not authorial activities however essential they might be to the creation of the work in question. No doubt the quality of many literary works will be much enhanced if their form reflects ideas of sophistication or merit but those ideas go not to the work's originality for copyright purposes save only to the limited extent that they show that the work is not copied from elsewhere. Much skill and hard work - "sweat of the brow" - may be involved in the steps preparatory to the making of the material form of a work but those labours are not what is protected by copyright and are relevant only to show that the work is not copied. 105 That is not, however, to put at nought such ideas but only to emphasise that the skill and labour in a copyright context must always be fixed upon the creation of forms and not ideas: "The essence of literary copyright is proprietary protection (in the form of exclusive rights to do acts restricted by the copyright in the work) for a literary work in recognition of the investment of effort, time and skill in reducing it into material form, such as words, signs and symbols": Baigent v Random House Group Ltd (2007) 72 IPR 195 at [141] per Mummery LJ cited with approval in IceTV at [49] per French CJ, Crennan and Kiefel JJ (my emphasis). Subject to one matter, the same perspective on the connexion between authorship and reduction into material form may be observed in the reasons of Gummow, Hayne and Heydon JJ in IceTV who thought (at [98]) that the word "author" conveyed the notion of "the person who brings the copyright work into existence in its material form". 106 It is true that the decision of this Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 is to the contrary. In that case, having conducted an exhaustive review of the authorities Lindgren J (with whom Black CJ agreed) described the course of prior authority this way: "there is no principle that the labour and expense of collecting, verifying, recording and assembling (albeit routinely) data to be compiled are irrelevant to, or are incapable of themselves establishing, origination, and therefore originality; on the contrary, the authorities strongly suggest that labour of that kind may do so" (at [160]). The other member of the bench, Sackville J, reached essentially the same conclusion ("the course of authority in the United Kingdom and Australia recognises that originality in a factual compilation may lie in the labour and expense involved in collecting the information recorded in the work, as distinct from the "creative" exercise of skill or judgment, or the application of intellectual effort" (at [407]). 107 It is also true that there is a passage in IceTV which is capable of being read as providing support for the notion that labour and skill in a collection may constitute an act of authorship. The passage in question is from the reasons of Gummow, Hayne and Heydon JJ in IceTV at [99] and is a statement that in the case of compilations "the author or authors will be those who gather or organise the collection of material and who select, order or arrange its fixation in material form" (my emphasis). The appellants contended that this means that the range of persons available to fulfil the authorial function extends not only to those who reduced the work to material form but, importantly, also to those who gathered and organised the collection of the material. So viewed, the sentence describes a list of possible authors ("the author or authors") and the word "and" is to be seen as merely conjoining elements on a list. 108 That reading derives support from the decision in Desktop but despite that I do not think that this is what Gummow, Hayne and Heydon JJ had in mind. One of the interesting consequences of the many decisions finding ultimate expression in Desktop is that it is possible to have a compilation which is held to be original (by reason of the hard work of those collecting the materials) without an author ever having been identified. Gummow, Hayne and Heydon JJ held the view, however, that the significance of "authorship" was one of "two fundamental principles of copyright law" (at [95]-[96]). The inability of the Desktop approach to identify the author was thought by Gummow, Hayne and Heydon JJ to be seen as "a reason to treat the decision in Desktop Marketing with particular care" (at [134]). Also inconsistent with the appellants' reading of their Honours' reasons is the fact that the balance of the reasons display an anxiety to underscore the significance of the material form of a work both as the endpoint of authorship and as the subject matter of the right to copy itself. Thus, (at [98]) their Honours appeared to suggest that at a general level the author might be "the person who brings the copyright work into existence in its material form". Indeed, their Honours' entire treatment of this question is to be found under the heading "Authorship and Material Form" and it was in that context that they identified a principle relating to material form (at [102]) which concerned "the requirement for the subsistence of copyright of "fixation" of the original work in a material form. It is well established that copyright does not subsist in a work unless and until the work takes some material form, so that protection 'does not extend to the ideas or information contained in the work and a balance is struck between the interests of authors and those of society in free and open communication'" (citing Copinger and Skone James on Copyright (1999, 14th ed), vol 1 at 101 [3.74]). 109 It seems unlikely, given that context, that their Honours intended that gathering and organising the collection of material was, by itself, an authorial activity. Such a conclusion would be contrary to the apparent thrust of the balance of their Honours' reasons. It is worth noting that the source in part of the sentence in question (that is at [99]) is set out in footnote 160 to their Honours' judgment and it cites as the source of the principle Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (1995, 2nd ed), vol 1 at 550 [11.11]. However, the statement which there appears is different to the statement in their Honours' reasons for it is neither couched in the plural nor does it contain any reference to fixation in material form. The passage in question is: "…the author of such a work is the person who gathers or organises the collection of material and who selects, orders and arranges it." (cf. IceTV at [99]): "the author or authors will be those who gather or organise the collection of material and who select, order or arrange its fixation in material form"). For completeness, the same passage as appears in the second edition also appears in the third addition: Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (2000, 3rd ed), vol 1 at 118 [3.94]. 110 The definition of literary work concerning compilations in The Modern Law of Copyright and Designs has been the subject of judicial consideration before. Of the same definition appearing in an earlier edition, Slade LJ observed that the authors had cited no authority to support it (Waterlow Publishers Ltd v Rose (1989) 17 IPR 493 at 500 ("Waterlow Publishers")) and in view of the absence of full argument or citation of supporting authority his Lordship preferred "to express no concluded view as to the correctness or otherwise of Laddie's definition of the author of a compilation" (at 502). Those reasons appear to have been delivered ex tempore so it is perhaps a mistake to read too much into them. The point for present purposes, however, is that that history of the definition makes it even less likely that their Honours were intending thereby to endorse the approach in Desktop. Indeed, the insertion of the reference to "fixation in material form" only emphasises their Honours' concern to keep analysis focused on the subject of the monopoly, namely, the material form. 111 For that reason, I do not read the passage in question in the way for which the appellants contend. There remains, of course, the question of what role their Honours did have in mind for the contribution of those who gather or organise the collection of material. The sentence certainly suggests their efforts are not irrelevant. French CJ, Crennan and Kiefel JJ also thought that skill and labour in the collection of information for a compilation to be relevant ("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": IceTV at [47]). Because "original" in this context merely means originated rather than copied I take this only to mean that the efforts which attend the collection of the material for a compilation may well show the compilation itself to be "original" in that sense. That is, skill and labour in collection is likely to show that the compilation originated from the "author" rather than being copied. 112 Once one accepts that the focus of the copyright is on the creation of the material form by an author it is analytically difficult to identify any role for labour or skill in the collection of material beyond the question posed by the statute, namely, whether the work is "original" in the sense of not being copied from elsewhere. Any role for skill and labour in the process of collection which extends beyond that is inconsistent with the emphasis given in IceTV to the reduction of a work into a material form. It follows that, beyond showing that the directories were original in the sense of not having been copied, the activities in the Collection Phase are not relevant to assessing whether those who reduced the directories to material form did so with sufficient independent intellectual or literary effort. To the extent that Desktop requires a contrary conclusion it should be overruled. It is inconsistent with considered dicta of a majority of the High Court which bind this Court: Farah Constructions Pty Ltd v Say-Dee Pty Ltd (2007) 230 CLR 89 at [134] per the Court.

Authorship and computers 113 Who were the people who reduced these directories to their material form? Material form matters because a work is made when it is first reduced to writing or "some other material form" (s 22(1) of the Act). Further, "material form" by s 10 includes "any form (whether visible or not) of storage of the work…" which, plainly enough, will cover the situation where a work is first assembled as a computer file. In this case, there is no doubt that the directories first took on a material form when a computer file known as the "galley file" was generated which contained the full listing as it would appear for each directory (without the art work). This occurred as a result of the Extraction Phase. I have no doubt if the galley file (or some physical analogue of it) had been generated by humans this would have meant that the directories were original works. Since the Act stipulates that compilations are literary works it follows generally that those who reduce a compilation to material form are likely to be its authors provided there is sufficient intellectual or literary effort involved in the process of reduction. In this case, the putting together of each directory required the application of a large number of internal house rules, the extraction of relevant customer entries from a much larger database of all customers and the sorting into relevant formats. The work involved might not be regarded as highly creative but that is not the test, particularly where the literary effort required must be that which attends the creation of a compilation rather than, for example, a novel or a history. Had the tasks been attended to manually an original work would have ensued. 114 The difficulty in this case is not that the efforts which might have gone into the production of the galley file could not be sufficient acts of an appropriate quality to count as acts of authorship. Rather, the difficulty is that those tasks were not carried out by humans but by computer programs. The trial judge found - and it is not disputed - that the production of the galley file was almost entirely automated. There were some minor aspects of checking which subsequently occurred after the production of the galley file but even these too were largely automated. 115 Detailed evidence was led before her Honour about the mechanism by which the material form of the directories was created. The manager of Print Content and Conversion at Sensis, Ms Dawes, gave evidence that it was at "the Book Extract stage that the listings in a particular White Pages or Yellow Pages directory assume the form in which they will ultimately appear in the printed directory". The Book Extract stage was the consequence of running a program known as the Book Extract routine. Ms Dawes described the Book Extract process as involving two stages: First, the listings information is selected from the database, in accordance with pre-determined extract parameters and exclusion rules (many of which rely on the information contained in tables). Then, the extracted information is sorted according to predefined criteria (which also rely on the information contained in tables). At the conclusion of the process, an electronic file is generated containing all of the extracted listing information in the order in which it is to appear in the directory. This file is known as the CMP file, and it provides the listing content for the galley file. 116 Ms Dawes identified two named individuals who performed this task. These were two publishing co-ordinators called Mr Mark Vormwald and Mr Stewart Cooper. Mr Cooper gave very precise evidence about how he ran the Book Extract routine to produce the galley file. Because his evidence lies at the epicentre of the question of the reduction of the directories into a material form I will set the relevant portions of it out: ….in order to extract the galley file for the 2009 Port Macquarie White Pages directory, I undertook the following steps: (a) On my desktop, I opened the following folders in sequence: RTMS, Production-Operational, Operational Systems, Publishing, Book Extract, Book Extract. (b) I then double clicked on the 'Book Extract" to enter this folder. I then selected "Modify" and filled in all relevant details in the window that appeared. The details included: (i) the job record comprising the book code and the type of report run (in the case of the 2009 Port Macquarie White Page directory, the job record was N09WE); (ii) the printer to which the extract is to print; (iii) the run date for the extract which was 11 December 2008. The reports are generated overnight and thus it is important to insert the date before the day the report is required; (iv) the product code, being each directory's identification code (N09W denotes the Port Macquarie White Pages directory); and (v) section code, being WP for a White Pages directory. ….. RTMS automatically extracts the relevant listing information from Genesis into the galley file. Once RTMS has conducted the extract of the information in order to build the galley file (which as mentioned above usually happens overnight), the Book Extract Report and the Gallery Error Build Report (discussed in greater detail below) will then automatically print. From that point on, I can also access the built galley file through POST. I take the steps described in paragraph[s] 70 to 74 above to extract and build the galley file for any directory I work on, regardless of the region encompassed by the directory. I caused the book extract and the galley build for the 2008/2009 and the 2009/2010 Cairns issues of the White Pages directory in the same manner. 117 There is, no doubt, that if any humans can be said to have reduced these directories to material form it is Messrs Vormwald and Cooper. It is correct to say that they were in control of the software. But that control did not involve Mr Vormwald or Mr Cooper in shaping or guiding the material form of the directories. They were not using the software, as perhaps a novelist uses a word processor, to give form to an idea already conceived. Instead, they were giving instructions at the very highest level about the principal parameters of the directories, namely, the year and the location to which each related. Neither gentleman conceived the material form of the directories; neither had the need, for the Book Extract routine was designed to relieve humans of that, no doubt, tedious task. It is true that intellectual effort went into the operation of the software by these two gentlemen but that effort was not directed to the incarnation of the material form of the directories. 118 The Act does not presently deal explicitly with the impact of software on authorship (although this is not so in the United Kingdom: s 9(3) Copyright, Designs and Patents Act 1988 (UK)). But a computer program is a tool and it is natural to think that the author of a work generated by a computer program will ordinarily be the person in control of that program. However, care must taken to ensure that the efforts of that person can be seen as being directed to the reduction of a work into a material form. Software comes in a variety of forms and the tasks performed by it range from the trivial to the substantial. So long as the person controlling the program can be seen as directing or fashioning the material form of the work there is no particular danger in viewing that person as the work's author. But there will be cases where the person operating a program is not controlling the nature of the material form produced by it and in those cases that person will not contribute sufficient independent intellectual effort or sufficient effort of a literary nature to the creation of that form to constitute that person as its author: a plane with its autopilot engaged is flying itself. In such cases, the performance by a computer of functions ordinarily performed by human authors will mean that copyright does not subsist in the work thus created. Those observations are important to this case because they deny the possibility that Mr Vormwald or Mr Cooper were the authors of the directories. They did not guide the creation of the material form of the directories using the programs and their efforts were not, therefore, sufficient for the purposes of originality. 119 The consequence of those conclusions is that the directories were not copied from elsewhere but neither were they created by a human author or authors. Although humans were certainly involved in the Collection Phase that process antedated the reduction of the collected information into material form and was not relevant to the question of authorship (other than to show that the works were not copied). Whilst humans were ultimately in control of the software which did reduce the information to a material form, their control was over a process of automation and they did not shape or direct the material form themselves (that process being performed by the software). The directories did not, therefore, have an author and copyright cannot subsist in them.

Operation of the presumption in SECTION 128 120 I turn then to the question of s 128 of the Act upon which the appellants placed some reliance. It appears in a division of the Act headed "Proof of facts in civil actions" amongst a number of provisions which, compendiously, create certain presumptions about copyright. Section 128 deals with what may be presumed about the copyright in a work where it is only shown that the work was first published in Australia by an identified publisher. It is relevant in this case because the appellants did succeed in establishing at trial that their directories were first published in Australia by an identified publisher. The section provides: Where, in an action brought by virtue of this Part in relation to a literary, dramatic, musical or artistic work, the last preceding section does not apply, but it is established: (a) that the work was first published in Australia and was so published during the period of 70 years that ended immediately before the commencement of the calendar year in which the action was brought; and (b) that a name purporting to be that of the publisher appeared on copies of the work as first published; then, unless the contrary is established, copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright at the time of the publication. 121 There is no issue that the "last preceding section" did not apply (it deals with what may be presumed where a work is published with a name purporting to be that of an author upon it and in this case only the name of the publisher appeared). There is also no issue but that subsections (a) and (b) were satisfied. The debate between the parties centres on what the words "unless the contrary is established" mean. The appellants say that those words mean that unless the respondents showed that there was no copyright in the directories then it was presumed that there was. The respondents, on the other hand, submitted that the appellants had elected to go into evidence and the evidence which they led plainly showed that the works were not ones in which copyright subsisted. The appellants were prevented from relying on s 128 by reason of their election to go into evidence but even if that were not so the evidence itself showed that the contrary had been established. 122 The "contrary", of course, is the idea that copyright does not inhere in the work in question. The presumption in s 128 is not enlivened where that concept is "established". That word does not refer to an attempt at proof, or the presence of prima facie evidence; rather, it refers to a fact as having been proven "on the balance of probabilities" (Microsoft Corporation v PC Club Australia Pty Ltd (2005) 148 FCR 310 at [84] per Conti J. I would not read "established" as referring to the satisfaction of some level of proof such as a prima facie demonstration, for that is not what "established" means. It connotes, rather, that a fact has been proven to the satisfaction of the Court. 123 The subject of "established" is not expressed which reflects the fact that the statute does not prescribe who must establish what. What it requires is an assessment of what has been proven on the evidence before the Court. Notions of onus or burden in that context are inapposite. The Court is to ask whether the "contrary has been established". If it has not, the Court is to presume that copyright subsists in the manner dictated. The presumption thus revealed is not, therefore, one of those presumptions which may compete with actual evidence. It is rather a dictated legal outcome unless the Court makes a particular finding. The respondents drew attention to a reference in Cross on Evidence (2010, 8th ed) at [7280] to the judgment of Lamm J in the Missouri Supreme Court in Mackowik v Kansas City, St J & CBR Co 94 SW 256 (1906) at 262: Presumptions may be looked on as the bats of the law, flitting in the twilight, but disappearing in the sunshine of actual facts. 124 It follows, however, that I do not think s 128 is one of those kinds of presumption. For completeness, the decision in Waterlow Publishers should again be noted. There, speaking of the English equivalent of s 128, Slade LJ said (at 503): Apart from cases where a literary work is published anonymously with the deliberate intention of concealing the name of the true author, a compilation perhaps represents the most obvious case in which commonly, no name of an author appears on copies of a published literary work. It seems to me possible that, in enacting s 20(4), the legislature contemplated that, inter alia, specifically in the case of compilations, cases might arise where there was no identifiable author, but copyright might none the less subsist in the relevant literary work. 125 The learned authors of the second edition (and the third edition) of Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (1995, 2nd ed), vol 1 at 550 [11.11] ((2000, 3rd ed), vol 1 at 118 [3.94]) cite this (in the sentence immediately following that which is cited with approval at [99] of IceTV) and say "[h]owever, it is possible that there might be no identifiable author, in which case the statutory presumptions may have to be relied upon." I would not read s 128 as being directed especially to compilations. It will apply to any case in which its preconditions are satisfied. 126 In this case, the evidence showed that those who reduced the directories to material form did not exert sufficient effort of a literary nature or sufficient intellectual effort to constitute them as authors. Accordingly, the directories could not be "original" works and s 32 could not apply to them. It was, therefore, established that they were works in which copyright did not inhere. Section 128 therefore was not enlivened because the contrary was shown.

Identification of authors 127 It remains to note one matter. The appellants submitted that the learned primary judge had erred by holding that they failed because they had not identified each individual author. I do not believe her Honour made such a finding. To the contrary, her Honour said "[i]f an author or authors…cannot be identified at all, in contradistinction to a situation where the author's or authors' exact identity cannot be identified, copyright cannot subsist": Telstra Corporation Ltd v Phone Directories Co Pty Ltd (2010) 264 ALR 617 at [37]. I do not read her Honour, therefore, as having required that the appellants literally name the authors but only that they demonstrate that the authors existed. If I am wrong in my reading of the primary judge's reasons, however, I would not accept that it is necessary to identify each author. All the Act requires in the case of s 32(2) is that there be an original work first published in Australia. The necessity for there to be an original work carries with it the necessity for there to be an author or authors but all that needs to be demonstrated is that such persons exist. Their identification is not legally required by the concept of an original work. The statement by Gummow, Hayne and Heydon JJ in IceTV that "[t]o proceed without identifying the work in suit and without informing the inquiry by identifying the author and the relevant time of making or first publication, may cause the formulation of the issues presented to the court to go awry" (at [105]) is, I think, a counsel of wisdom rather than a legal stipulation.

Disposition of appeal 128 The appeal should be dismissed with costs. I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.

Associate: Dated: 15 December 2010 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION VID 147 of 2010

BETWEEN: TELSTRA CORPORATION LIMITED (ACN 051 775 556)

JUDGES: KEANE CJ, PERRAM AND YATES JJ DATE: 15 December 2010 PLACE: MELBOURNE

YATES J: 129 I agree that the appeal should be dismissed. 130 In my view the primary judge was correct in concluding that the relevant compilations in the White Pages Directories (WPDs) and the Yellow Pages Directories (YPDs) for particular regions, as published by the appellants, were not original literary works for copyright purposes. The primary judge advanced a number of reasons for coming to that conclusion, including that much of the contribution to each work was not the result of human authorship but was computer-generated: at [5(2.3)]. In my view that finding alone justified the conclusion to which her Honour came on the question of copyright subsistence and is determinative of this appeal. 131 The appellants claim that copyright subsists in each work as a "compilation", as comprehended by the definition of "literary work" in s 10(1) of the Copyright Act 1968 (Cth) (the Act). Each work of that kind was said to be the listings, enhancement of listings and arrangement of listings (in the case of the WPDs) and the listings, headings, enhancement of listings and arrangement of listings under headings (in the case of the YPDs). The primary judge noted that the appellants made no wider claim. Other elements or parts of the directories were not claimed to be part of the work or a work in which copyright was claimed. The primary judge also noted that the appellants had abandoned a claim with respect to an alleged work identified as "the Headings Book", which comprises the list of headings under which entries in the YPDs are made. 132 The form of the copyright work in each case was said to be represented by the published form of the relevant compilation in each regional directory. Each regional directory was identified in a schedule to the primary judge's reasons. Significantly, the appellants relied upon publication (that is, the supply of reproductions to the public: see s 29(1)) of each such work as the connecting factor for copyright subsistence. In this regard s 32(2)(c) of the Act relevantly provides that copyright subsists in an original literary work if the first publication of the work took place in Australia. This is significant because, by relying on first publication in Australia as the connecting factor, it was not necessary for the appellants to resort to any other connecting factor to prove the subsistence of copyright. In particular, it was not necessary for the appellants to address the question of authorship as presented by s 32(2)(d) and (e) which requires demonstration that the author of the work was a qualified person at the time when the work was first published or, if the author died before that time, was a qualified person immediately before his or her death. However, this did not absolve the appellants from dealing with the question of authorship as it related to the question of copyright subsistence more generally.

Authorship and originality 133 Originality lies at the heart of the subsistence of copyright in works because, as s 32 of the Act makes clear, copyright only subsists in works - in this case a literary work - where the work is "original". As the primary judge correctly recognised, original works, for copyright purposes, emanate from authors: see at [21] and the long line of authority there referred to. The primary judge correctly identified the relevant chain of inquiry at [344] of her reasons, as follows: Authorship and originality are correlatives. The question of whether copyright subsists is concerned with the particular form of expression of the work. You must identify authors, and those authors must direct their contribution (assessed as either an "independent intellectual effort" of a "sufficient effort of a literary nature") to the particular form of expression of the work. Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original… 134 In relation to works, an author is, under Australian law, a human author. So much is made clear (if it be doubted) by s 33 of the Act which conditions the duration of copyright on the year of the author's death. Section 34, which deals with the duration of copyright in anonymous and pseudonymous works, and which conditions duration on first publication (rather than the death of an author), does not compel a different conclusion. See also the presumptions created by s 129 of the Act which make plain that the concept of authorship in respect of works means human authorship. 135 Significantly authorship (as it is understood in the context of works) plays no role in relation to the subsistence of copyright in subject-matter other than works. In that milieu the making of the subject-matter can play a central role: see ss 89(2), 90(2) and 91 of the Act in relation to sound recordings, cinematograph films, television broadcasts and sound broadcasts, which fix on the making of the relevant subject-matter by a qualified person who may be, in this context, a body corporate incorporated under a law of the Commonwealth or of a State. First publication in Australia can also play a role in relation to the subsistence of copyright in that subject-matter: see ss 89(3) and 90(3). In the case of published editions of works, copyright will subsist if the first publication of the edition took place in Australia or if the publisher was a qualified person (including a qualified person that is a body corporate) at the date of the first publication of the edition: see s 92(1). 136 Under United Kingdom copyright legislation, specific recognition is given to works that are computer-generated. In the case of literary, dramatic, musical or artistic works that are computer-generated, the author is taken to be the person by whom the arrangements necessary for the creation of the work were undertaken: see s 9(3) of the Copyright, Designs and Patents Act 1988 (UK). This conceptual framework is akin to that adopted in Australian copyright law with respect to subject-matter other than works. However, it has no corresponding recognition in Australian copyright law as it pertains to works. 137 Recognising that authorship denotes human authorship, two further presently-relevant concepts emerge. First, the test for originality is whether the work originated from the author in the sense that it was not copied by the author: Robinson v Sands & McDougall Pty Ltd (1916) 22 CLR 124 at 132-133; Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 at 52; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 291; Bookmakers' Afternoon Greyhound Services Ltd v Wilf Gilbert (Staffordshire) Ltd [1994] FSR 723 at 731. As Lindgren J observed in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 at [92] the test must be applied to the thing to which the legislation attaches copyright protection. In this case this means the identified compilations represented in the published form of each regional directory as a WPD or a YPD: does each compilation originate from an author or authors? Secondly, the origination must involve human intellectual endeavour. This is not to say that originality means novelty as, say, understood in the law respecting patents for inventions. It does mean, however, that the creation of the work must be the product of a human intellectual process. These propositions were not disputed by the appellants. 138 In IceTV, Gummow, Hayne and Heydon JJ described the nature of authorship in compilations. Their Honours said at [99]: Where a literary work is brought into such existence by the efforts of more than one individual, it will be a question of fact and degree which one or more of them have expended sufficient effort of a literary nature to be considered an author of that work within the meaning of the Act. If the work be protected as a "compilation", the author or authors will be those who gather or organise the collection of material and who select, order or arrange its fixation in material form… 139 It is plain that their Honours, in that passage, were describing the scope of relevant activity encompassing authorial contribution. However, the context in which their Honours described those activities shows that "fixation", as an act or event, is a sine qua non for copyright to subsist. In that connection their Honours, quoting from Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 218 CLR 273 at [51], said (at [102] omitting references): The second principle is related to the first and concerns the requirement for the subsistence of copyright of "fixation" of the original work in a material form. It is well established that copyright does not subsist in a work unless and until the work takes some material form, so that protection: "does not extend to the ideas or information contained in the work and a balance is struck between the interests of authors and those of society in free and open communication". 140 Thus whilst activities such as gathering or organising the collection of material may be relevant authorial activities for copyright purposes, those activities are not of themselves, once engaged in, the subject matter of copyright protection. It is the fixation in material form of the "work" that attains copyright protection for the "work" in that particular form. In IceTV French CJ, Crennan and Kiefel JJ remarked at [28]: Copyright is not given to reward work distinct from the production of a particular form of expression. 141 Although IceTV was concerned with the issue of copyright infringement (subsistence of copyright having been admitted), that issue raised the need to consider the notion of originality. This was because, in deciding whether a substantial part of the copyright work had been reproduced, consideration had to be given to the quality of that part assessed against the work as a whole. In that connection French CJ, Crennan and Kiefel JJ quoted with approval the following passage from Ladbroke (Football) Ltd at 293: The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. (emphasis added by their Honours) Their Honours continued (at [37]): This means that where the part reproduced did not originate with the author, so that the author would not have copyright in the part standing alone, the part reproduced will not be a substantial part. 142 In IceTV it was necessary to embark on the further inquiry as to the degree of originality in the expression of the part of the works reproduced because it was accepted that the part reproduced did originate with the author or authors of the works in suit: see at [37] and [40]. 143 IceTV underscores the centrality of authorship to copyright subsistence in works. Authorship is an essential characteristic of originality for copyright purposes. This was correctly recognised by the primary judge in the present case.

The production of the directories and the making of the works 144 The primary judge made detailed findings concerning the production of a particular WPD ([174]-[268]) and the production of a particular YPD ([269]-[325]). These findings were made against the important background fact that listing information was entered into a database of a computer system known as the Genesis Computer System. Other non-Genesis computer systems were also used in the production of the WPDs and YPDs. The primary judge found at [87]: The various computer systems (including the Genesis Computer System), were the result of the work of various entities over a number of years. Although the Applicants, as the ultimate purchaser of such systems, were often responsible for prescribing and overseeing implementation of the requirements, only in a few cases was the software designed and created by the Applicants' employees. Although the computer systems were not relied upon as an independent copyright work in this proceeding, the Applicants did rely upon the intellectual effort of Sensis employees in customising the programs. On the evidence before the Court, it is not possible to determine who created and had the benefit of the whole or any part of the various computer systems (including the Genesis Computer System) at any particular time. 145 It is not necessary to set out the detail of the findings that were made. It is sufficient to note the general nature of those activities that were carried out by employees of the second appellant and, in relation to some activities, contractors who were not employees of the second appellant. 146 In the case of the production of a particular WPD the primary judge considered the involvement of individuals in, and made findings about, creating an initial listing record; obtaining updated listing information; entering updated information into the database; checking updated listing records after entry into the database; making other amendments to existing listings; obtaining new listings through service orders, customer contact and sales contact; checking new listings after entry; and verifying listing information prior to publication. 147 In the case of the production of a particular YPD the primary judge considered the involvement of individuals in, and made findings about, creating an initial listing record; obtaining updated listing information; entering updated information into the database; checking updated listing records after entry into the database; other amendments to existing listings; obtaining new listing information and creating a new listing record and checking the new listing after entry; and verifying listing information prior to publication. 148 These activities involved individuals engaging with the relevant computer systems, including the Genesis Computer System, that were in place. This interaction was regulated by certain rules, specifically the YPD Advertising Rules, the WPD Entry Policy Rules, and Sensis' Product Standards (collectively, the Rules). The primary judge at [90] described the Rules as follows: At their most basic level, the Rules are a set of prescriptive guidelines that control, dictate, restrict and / or prohibit the content and presentation of listings in the WPD and YPD. They regulate the font used. They regulate the proper abbreviations of words. They regulate the colour schemes applied. They regulate the spacing between words and individual entries. They regulate the acceptability or otherwise of the use of particular words or phrases. It is unclear who created the Rules. But it is clear that everyone is bound by them. 149 The primary judge found that the Rules were directly or indirectly automated. They were directly automated in the sense that they were programmed into the Genesis Computer System (or supporting systems) so that the information entered into those systems was in a form that complied with the Rules. The Rules were also indirectly automated in the sense that, in certain circumstances, there was human intervention in the application of the Rules. The primary judge gave as an example the case of an artist preparing updated graphic advertisements in the WPD and YPD where an editor was responsible for ensuring that those advertisements complied with the Rules. The primary judge found (at [92]) as follows: The overarching process is designed to ensure that decisions that violate the Rules are as rare as possible. In the vast majority of cases, any human intervention is directed to ensuring the content and presentation of listings complies with the Rules. 150 The appellants did not dispute the primary judge's findings of fact. They submitted, however, that the primary judge down played or dismissed the role of the second appellant's employees and the application of their intellectual effort in the various tasks they undertook, which, according to the appellants, was intellectual effort "applied at every stage of the process of compilation". The appellants included, in that regard, the role of the second appellant's employees in selecting, customising, maintaining and operating the computer systems involved in the production of the directories. 151 Leaving aside, for one moment, the activities of this lastmentioned group (to which I will make further reference), the other activities of the second appellant's employees, generally speaking, were directed to and resulted in the collection, entry and manipulation of data in the database of the Genesis Computer System. This data, as stored in the system, was intended to be used as the resource from which a large number of specific and individual regional telephone directories, as either WPDs or YPDs, were to be produced. Each directory, and hence each relevant compilation, was different in form. However no directory was fixed in material form until after data had been extracted from the Genesis Computer System database in a process known as "Book Extract". The primary judge found (at [252]) that it was at this stage that the listing information stored in the Genesis Computer System database was converted into a listing in the form in which it ultimately appeared in the published directory. There was no challenge to this finding. This is a critical finding because, as noted above, each claimed copyright work is the compilation (as identified by the appellants) in its published form. That particular form of expression did not exist in the Genesis Computer System database. 152 The critical path by which each directory (and hence each compilation) came to assume its particular form of expression was described at [253]-[268] of the primary judge's reasons in the case of the WPDs and at [311]-[325] in the case of the YPDs. 153 In the case of the WPDs, the primary judge (at [253]-[259]) found as follows: 253 The Book Extract process involves running a software routine over the Genesis database. This software routine creates an electronic file, known as the CMP file, containing all of the listings which are to appear in the designated directory collated in the order in which those listings are to appear in that directory. The CMP file is used to create an automatic electronic proof of the directory, known as the galley file. The galley file contains all of the listings and in-column advertisements in the format and sequence in which they will appear in the directory, but none of the display advertisements. 254 The Book Extract process involves two stages. First, the listing information for the nominated directory is automatically extracted from the database, in accordance with appearance and suppression rules that have been programmed into the Book Extract routine. These rules govern which components or elements of each listing should be included in the directory and how they should appear (ie, whether they should be abbreviated or appear in full), and are designed to give effect to the requirements of the Rules. 255 The application of these appearance and suppression rules depends on factors such as: 1. whether the listing is to appear in its "local" directory (ie, the directory which relates to the listed address) or is to appear in a "foreign" directory; 2. whether the listing is to appear in its own state or Numbering Plan area (this determines whether the area code or state is included in the listing); and 3. whether the listing has been designated with an "Omit" indicator in the database (for example, because the listing is a caption listing or qualifies for the address to be "suppressed" in accordance with the requirements of the Rules). 256 Many of these determinations, in turn, depend on the application of reference tables. To apply the relevant appearance or suppression rule, the Book Extract routine has been programmed to check the listed information against the information in the table and present the listing accordingly, depending on the result (see [126]-[127] above). As Mr Peterson said "when we run the book extract, when we print the book, it looks at the table and sees how it should be presented. So it drags the information out of that table to do the presentation." 257 For example, there is a "Locality Appearance table" which contains a list of the "local" directory for every locality in Australia. Depending on whether or not the locality of the listing in question is local to the directory which is being extracted, the Book Extract routine will either include the name of the locality in full, print an abbreviated form of the locality, or omit the locality entirely (this occurs, for example, in capital cities where the locality is the same as the name of the directory). If the listing is to be abbreviated, the name of the abbreviated locality is taken from a table known as the Locality table, which contains a list of all recognised localities and their abbreviations. 258 After the listing elements have been extracted and their appearance determined, the Book Extract routine then sorts the listings according to sorting rules also designed to give effect to the requirements of the Rules. For example, a prefix is included as part of the first word of a listing even if it is separated from the second part of the name by a hyphen (this means that "De Groot" and "De-Bug" will usually be sorted in the same way), unless a Sensis staff member has elected to override the sorting rules by using the PLA field. As with appearance and suppression rules, the application of many of the sorting rules involves the software checking whether the listed elements appear in any of the relevant tables, and then dealing with the listing accordingly. Again, this process is almost entirely automated. 259 The Book Extract process is initiated by the Publishing Co-ordinators requesting the Book Extract routine to be run in relation to a particular directory via the RTMS. After the listings have been extracted and arranged in the CMP file, the Publishing Co-ordinators create the galley file by running a separate routine known as Book Production ... The Book Production routine builds the galley file and arranges the contents of the Book Extract in columns within the galley file in preparation for typesetting and pagination. Every line in the galley file has a discrete number, made up of the Item ID for the particular entry in the directory and a number indicating its place in the galley file. 154 After the galley file has been created, various reports are run to ensure that the listings have been extracted correctly and that their appearance complies with the Rules. If necessary, corrections are made manually. Additionally certain manual checks are made and "Late Change Requests" are actioned. These are to update customer details after a date called the "Last Listing Activity Date". The primary judge found that, on average, each year publishing co-ordinators can make anywhere between zero and 25 Late Change Requests in each regional WPD, which will have some thousands of listings: see at [260]-[262]. 155 The galley file is then paginated and typeset. 156 Prior to pagination the initial structure of the directory is determined by the publishing and marketing teams. The initial structure specifies the number of information pages the directory is to contain, the number of map pages, and the number of pages that the marketing team wishes to include in the directory (such as advertisements used to promote the second appellant's products and services). These elements or components of the directories are not elements or components of the original literary works claimed by the appellants (which are the listings, enhancement of listings and arrangement of listings, in the case of WPDs). The initial pagination of the directory is achieved by running a software routine known as "Batch Pagination". After pagination, the final structure of the directory is determined by adding the listings to the initial structure of the directory and determining how many pages in total the directory is to contain. The number of pages must be divisible by eight (for printing purposes). If necessary the number of pages is adjusted accordingly by reducing the number of information pages or increasing the overall number of pages with filler advertisements. The typesetting process involves the automated incorporation of display advertisements from a database into the paginated pages. The pages are then converted into a final PDF format for publication: see at [263]-[268]. 157 In the case of the "Book Extract" process, as it applies to the YPDs, the primary judge (at [311]-[317]) found as follows: 311 Like the WPDs, the extraction of the listing information for YPDs and the creation of the galley file is undertaken using the Book Extract routine: see [252] - [259] above. 312 The Book Extract process for the YPD involves the same two stages as occur in relation to the WPD. However, there are additional processes which occur at each stage, due to the presence of headings and the need to arrange display advertisements in accordance with separate positioning rules. 313 In addition to listing information, the Book Extract routine for YPDs also extracts all of the headings which have listings under them in the designated directory, as well as their associated sub-headings and cross-references. 314 It also extracts alternative headings that do not in fact have listings under them but are designed to have the appearance of headings (for example, there is a heading in every directory for "Police Emergency" which simply states "see inside front cover"). These are known as "Must Appear", "Notes" or "Fictitious" headings. 315 The headings are collated into a separate file known as the "Headings In Progress" file, which is combined with the CMP file at the Book Production stage to form the galley file. 316 During the sorting process, the Book Extract routine applies priority rules to the placement of display advertisements, in order to give effect to the requirements of the Rules. It also arranges each of the listings in alphabetical sequence under their various headings, applying Rules that are similar to those that apply to the WPD. 317 The galley file for a YPD is created by running the Book Production routine through RTMS in the same way as for a WPD: see [259] above. 158 Once again, after the galley file has been created, various reports are run, checks are made and late change requests are actioned. The primary judge found that, on average, publishing co-ordinators made between 50 to 150 late change requests in each regional YPD each year. Pagination and typesetting processes (substantially similar to those described for a WPD) are then undertaken: see at [318]-[325]. 159 The appellants did not dispute the findings made by the primary judge with respect to the "Book Extract" process as it applied to WPDs and YPDs. 160 It is important to note a distinction between the production of a directory and the making of each claimed copyright work. Copyright is claimed in each work identified as a compilation which finds its form of expression in its particular WPD or YPD. However, each WPD and YPD is much more than the copyright work that is claimed. Copyright is not claimed, for example, in the form of expression of the information pages or the map pages or works in the form of advertisements.

The parties' submissions 161 The appellants submitted that they had proved that each WPD and YPD was a work that was the result of sufficient effort of expression or the effort of "those who gather or organise the collection of material and who select, order or arrange its fixation in material form" for them to be held to be original works for copyright purposes. They submitted that, although the activities of selection and ordering can be "anterior", they can still be activities of a type relevant to the ultimate form of a copyright work. They submitted that, on the evidence, there was much human collection, selection, verification, ordering and expression involved in the making of each work. They submitted that none of the works would have come into existence in the form in which they were ultimately published without the actions of the second appellant's employees. 162 They submitted that to the extent that aspects of the system had been automated, that automation was built into the system at the direction of the second appellant's employees and its application to particular directories had been controlled by the second appellant's employees choosing which items of listing information were to be received automatically, specifying when and in what format they were to be extracted and presented for publication, and checking and collecting the output prior to sending the final product for publication. They submitted that, although it was a complex and sophisticated computer system, the Genesis Computer System was nevertheless nothing more than a tool, which was utilised by the second appellant's employees to create the works in accordance with the requirements of the Rules. They submitted that the Genesis Computer System was merely a complicated example of making a work with the aid of such proprietary programs as Word, AutoCAD, Garage Band or Photo Shop. 163 On the other hand the respondents submitted that the appellants had failed to properly address the issue of authorship of the compilations. They submitted that the work of individuals, as relied upon by the appellants, was directed towards the making of the Genesis Computer System database from which individual regional directories could be extracted. However, no claim for copyright protection and infringement of that copyright had been made in relation to that database or any related computer programs. They submitted that the compilations for the directories in suit were made by the "Book Extract" process. Human interactions at this stage were in relation to production and editorial issues. Accordingly, it was the extraction of the lists of entries for particular directories that was the first relevant step for the purpose of considering originality and authorship.

CONSIDERATION 164 The starting point must be the identification of the alleged copyright work. That starting point is critical because it is only at that point that one can ask and then consider the question: is this an original work? It is only by looking back from that vantage point that one can identify and assess the nature and quality of the acts that can be said to contribute to the material form of the work for which copyright is claimed. In the case of a compilation the relevant acts are of those who gather or organise the collection of material and who select, order or arrange its fixation in material form: Ice TV at [99]; see also Waterlow Publishers Ltd v Rose (1989) 17 IPR 493 at 500. Of necessity, those acts must be the acts of an author or authors. 165 I would not, therefore, accept, without qualification, the respondents' submission that the extraction of the list of entries for particular directories is the first relevant step for the purpose of considering authorship and the originality of the works in question. Undoubtedly extraction was an essential step in the making of the relevant compilation in each case. However, the respondents' posited first step initiates a process of inquiry that looks forward to an end-point that is the reduction to material form of the claimed copyright work, whereas the identification of the claimed copyright work must be the starting-point for the inquiry. If that starting-point is not taken then the inquiry is skewed by ignoring antecedent acts that may be relevant acts of authorship in relation to the work in question. 166 In my view the work of the second appellant's employees is relevant to the consideration of whether each work, as a compilation, was an original literary work for copyright purposes. However, as I have noted, this work was more in the nature of collecting, entering and manipulating data to provide the fabric (the Genesis Computer System database) out of which each identified compilation in the WPDs and YPDs was to be fashioned. In this sense it can be seen that those activities contributed to the making of each claimed copyright work. However, significantly, the selection, ordering and arrangement of information to fix the compilation in its material form was computer-generated by the Genesis Computer System. 167 Contrary to the appellants' submission, the Genesis Computer System was not a mere tool utilised by the second appellant's employees for this purpose. To describe the functioning of the system in this way obscures the fact that the activities carried out by the Genesis Computer System in the "Book Extract" process were transformative steps that were obviously fundamental to the making of the compilation in each case. It was those activities that resulted in each compilation taking the form that it did. Those activities replaced what would otherwise have been, no doubt, the extensive work of individuals deploying their respective intellectual resources and capacities to select, order and arrange the listings as they appeared in each WPD or YPD, albeit in accordance with specifically mandated rules and procedures. When carried out by individuals, activities of this kind undoubtedly would have been of an authorial nature and would have been counted as an essential contribution to the making of the compilation in each case. However, in the present case, these activities, essentially, were not those of an author for copyright purposes. The appellants, no doubt for good commercial reasons, effectively supplanted the involvement of authors in carrying out those transformative steps. 168 In this connection it is not to the point that the second appellant's employees were also involved (as the appellants submitted) in selecting, customising, maintaining and operating the computer systems that were deployed in the production of the directories, including particularly in relation to the "Book Extract" process. Those activities are akin to educating, training or instructing individuals, and maintaining a sufficient number of them, to carry out the discrete activities of selecting, ordering and arranging material to create the individual compilations. However, the two bodies of activity should not be confused for one another. It may well be, of course, that the activities of the second appellant's employees, in this regard, have resulted in the creation of other works (for example, a computer program or a compilation of computer programs) that are protected by copyright. However, no such claims have been made in this proceeding. 169 No doubt questions of fact and degree are involved in forming a judgment about whether a work is an original work for copyright purposes: see, for example, the effect of the authorities summarised in Desktop Marketing by Lindgren J at [160] (proposition 7). Similar questions arise in forming a judgment about authorship: IceTV at [99]. Leaving aside the possibility of non-authorial contributions that are, overall, and in context, insignificant or inconsequential, it is essential to a finding of originality for copyright purposes that the work be one that is properly characterised as originating from an author or authors. In my view, the compilations claimed in this case cannot bear that characterisation. The contribution of the essentially computer-generated "Book Extract" process was of such overwhelming significance to the expression in material form of each compilation that none of the compilations can be properly characterised, overall, as a work that originates from an author or authors, even though elements of authorial contribution are present. It follows, in my view, that none of the works can be an original work for copyright purposes. Thus copyright cannot subsist in those works. 170 This conclusion makes it unnecessary to consider the additional contribution of other computer-generated activities (such as the rollover process) to the making of each compilation.

The decision in Desktop Marketing 171 The appellants relied on the decision in Desktop Marketing and submitted that it should be followed with the result that, in the present case, copyright should be found to subsist in the identified compilations, contrary to the conclusion of the primary judge. 172 The decision in Desktop Marketing does not compel a different conclusion to the one reached by the primary judge on the issue of copyright subsistence. 173 Desktop Marketing dealt with the question whether the Act's requirements of originality and authorship, in the case of a compilation of factual information, can be satisfied by proof of the labour and expense of collecting, verifying, recording and assembling data to be compiled in a routine format or whether those requirements necessitated "intellectual effort" or a "creative spark" in respect of one or more of the form of the individual entries, the selection of the elements to be included in the compilation or the arrangement of the compilation as a whole: see Lindgren J at [18] and [160]. Sackville J at [273] identified Desktop's position to be that the mere "industrious collection and arrangement in a trite format of publicly available information" could not satisfy the requirements of originality in the absence of an intellectual contribution in terms of the selection or arrangement of the compilation. 174 It can be seen that a significant issue in Desktop Marketing was the scope for variance in selection, expression or arrangement in compilations of factual information and whether copyright subsists in the form of a trite presentation as opposed to one involving "intellectual effort" or a "creative spark" to produce something more. In light of the issues there presented, the Full Court decided that the course of authority supported the position that originality in a factual compilation may lie in the labour and expense involved in the collection of information to be recorded in a compilation and other related activities, although no particular judgment or skill was involved: see Black CJ at [1] (agreeing with the separate reasons given by Lindgren and Sackville JJ); Lindgren J at [160] (proposition 10) and [165] and Sackville J at [407]. 175 At first instance, in Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2001) 181 ALR 134, Finkelstein J (at 136) observed: 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. 176 In IceTV at [134] Gummow, Hayne and Heydon JJ drew attention to these observations and regarded them as a reason to treat the Full Court decision in Desktop Marketing "with particular care". 177 Although the facts of Desktop Marketing involved the computer-assisted making of compilations found in telephone directories, the point raised so starkly by the respondents in the present case, namely the identification of activities that are distinctly non-authorial from those that are, arguably, authorial, and the consequence of that issue for determining copyright subsistence, were not the focus of attention. Desktop Marketing can be seen to have been decided by reference to the very specific issues that had been presented for determination by the Full Court.

The presumption in s 128 178 Finally, an issue arose as to the significance for the present case of the presumption in s 128 of the Act with respect to the subsistence of copyright. The section provides as follows: Presumptions in relation to publisher of work Where, in an action brought by virtue of this Part in relation to a literary, dramatic, musical or artistic work, the last preceding section does not apply, but it is established: (a) that the work was first published in Australia and was so published during the period of 70 years that ended immediately before the commencement of the calendar year in which the action was brought; and (b) that a name purporting to be that of the publisher appeared on copies of the work as first published; then, unless the contrary is established, copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright at the time of the publication. 179 The appellants submitted that they had the benefit of this presumption. In particular they submitted that the presumption places on a defendant the burden of establishing that the work in suit is not original. It can be seen, however, that the presumption is not a conclusive presumption; it operates "unless the contrary is established". Here the appellants adduced extensive evidence that was found in 91 affidavits. A large number of these deponents (23) were cross-examined. The respondents also adduced evidence, although that evidence was not as extensive as that adduced by the appellants. An issue arose between the parties as to whether the presumption continued to have any application in these circumstances. In my view it is not necessary to answer that question. If it be assumed that the presumption continued to have application, the primary judge was entitled to have regard to the extensive body of evidence before her, whether adduced by the appellants or the respondents. That evidence dealt with what may be classified as the authorial and non-authorial contributions to the making of the compilations. That evidence established "the contrary", namely that copyright did not subsist in the compilations because much of the contribution to each work was not the result of human authorship but was computer-generated.

DISPOSITION 180 I agree with the orders proposed by Keane CJ. I certify that the preceding fifty-two (52) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.

keane cj: 1 In Australia copyright is a creature of the Copyright Act 1968 (Cth) (the Act). The monopoly in copyright subsists only insofar as the Act provides. Because the terms of the Act reflect the intention of the Berne Convention for the Protection of Literary and Artistic Works to protect the rights of authors, copyright subsists in a literary work only by virtue of the authorship of that work by an individual or individuals. It may be that if the author of a work is the employee of another person, ownership of the copyright may vest in the employer; but copyright in a literary work can subsist only if it originates from an individual. This case highlights the difficulty confronting a claim to copyright in a literary work which is compiled by an automated process. 2 In these proceedings, the learned trial judge determined, as an issue separate from the other issues in the case, the question whether copyright subsists under the Act in the White Pages Directory (WPD) and the Yellow Pages Directory (YPD) published by Telstra Corporation Limited and Sensis Pty Ltd (the appellants). The question concerned regional WPDs and YPDs dating back to the year 2000 for 11 different regional areas of Australia. Her Honour determined the question in the negative. 3 The appellants' case is that each WPD and YPD is an original literary work. In particular, each directory is said to be a compilation consisting of the expression of the information in individual listings in their particular form and arrangement and in the overall arrangement of the individual listings, and, additionally in the case of the YPD, in the cross-referencing of the information under subject matter headings. 4 Numerous individuals, some identified and some not, contributed to the work preparatory to the compilation of each of the WPDs and YPDs, but the compilations were brought into the form in which they were published primarily by an automated computerised process. No claim was made by the appellants to copyright in the computer database or software. 5 The trial judge approached the determination of the question by reference to the decision of the High Court of Australia in IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 239 CLR 458. Her Honour held at [2010] FCA 44 at [5]: For the reasons that follow, copyright does not subsist in any Work. None is an original literary work. By way of summary: 1. among the many contributors to each Work, the Applicants have not and cannot identify who provided the necessary authorial contribution to each Work. The Applicants concede there are numerous non-identified persons who "contributed" to each Work (including third party sources); 2. even if the human or humans who "contributed" to each Work were capable of being identified (and they are not), much of the contribution to each Work: 2.1 was not "independent intellectual effort" (IceTV 254 ALR 386 at [33]) and further or alternatively, "sufficient effort of a literary nature" (IceTV 254 ALR 386 at [99]) for those who made a contribution to be considered an author of the Work within the meaning of the Copyright Act; 2.2 further or alternatively, was anterior to the Work first taking its "material form" (IceTV 254 ALR 386 at [102]); 2.3 was not the result of human authorship but was computer generated; 3. the Works cannot be considered as "original works" because the creation of each Work did not involve "independent intellectual effort" (IceTV 254 ALR 386 at [33]) and / or the exercise of "sufficient effort of a literary nature": IceTV 254 ALR 386 at [99]; see also IceTV 254 ALR 386 at [187]-[188]. 6 In this Court, the principal argument of the appellants is that, because each directory is a literary work published in Australia, the only question to be answered is whether it is an original literary work; this question can be answered, they say, without identifying any particular author much less all the authors. That is said to be because copyright in a work first published in Australia can subsist by virtue of s 32(2)(c) of the Act if the work is original in the sense of not being a copy. The appellants contend that it can be inferred that intellectual effort of some kind was applied by some individual or individuals in the production of each directory so that it can be said to be an original literary work. They argue that, neither the decision in IceTV, nor the reasons given by the High Court in that case, compels, or points to, a different conclusion in this case. 7 The principal contention of the respondents is that the directories were compiled, not by the individuals engaged to facilitate the process, but by a computerised process of storing, selecting, ordering and arranging the data to produce the directories in the form in which they were published. 8 In my respectful opinion, the principal contention of the respondents should be accepted, and the decision of the trial judge should be upheld for that reason. In order to explain the reasons for my opinion, I propose to set out the relevant provisions of the Act, then set out the facts as found by the learned trial judge, and then proceed to discuss the arguments agitated by the parties on the appeal to this Court.

General Observations 56 It is worth repeating at the outset the point that the work in suit in this case is not the Genesis database from which the WPD and YPD are derived, nor the software that is deployed in the storage and reproduction of the information presented in the form of the compilations being the WPD and YPD. Rather the works in suit are the WPDs and YPDs for each regional area. Whether copyright subsists in these works depends on whether each of these works is an original literary work. 57 Next, it may be accepted, for the sake of argument, that there is force in the appellants' criticism of the trial judge's insistence on the identification of all the "authors". One may accept that identification by name of each and every author is not necessary in order to make out a claim that copyright subsists under s 32(2)(c): what is necessary, however, is that it be shown that the work in question originates from an individual author or authors. 58 It may also be accepted that the level of intellectual effort necessary to produce an original literary work is not required to rise to the level of "creativity" or "inventiveness". In determining whether a literary work is original, the focus of consideration is not upon creativity or novelty, but upon the origin of the work in some intellectual effort of the author. 59 That having been said, there can be no doubt that a person who is "a mere scribe" is not an author for the purposes of the Act: see Walter v Lane [1900] AC 539 at 554; Sands & McDougall Proprietary Limited v Robinson (1917) 23 CLR 49 at 54-55. The name and address of a particular subscriber does not relevantly "originate" with an employee who takes a note of these details from the subscriber. This information is factual in its nature: it is not "created" by the person who merely records it: see Feist Publications Inc v Rural Telephone Service Co Inc (1991) 499 US 340 at 347. Nor does the form of the compilation originate with the individual who engages the mechanical processes to produce the compilation. 60 With those general observations in mind, I turn now to a consideration of the decision of the High Court in IceTV and its implications for the determination of the present case.

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