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The ADA Monthly Intellectual Property
Wrap-Up
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A monthly summary of recent legislation, cases, reports and other events
relating to intellectual property and the public interest, published by the
Australian Digital Alliance.
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May
2002
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[1] About this publication
[2] Federal Court hands down telephone
book decision
[3] CAL, Universities strike new copying deal
[4] About
this publication
[5] I can copy, right?
>[1] About this
publication
This summary of recent IP (but chiefly copyright)
happenings of relevance to Australia is published every month by email and on
the Australian Digital Alliance website at
http://www.digital.org.au/issue/ipwmay02.htm.
If you have any suggestions as to what should go in the next issue, please let
the Nick Smith know by email: (nsmith@nla.gov.au).
Nothing in this
publication constitutes legal advice.
>[2] Federal Court hands
down telephone book decision
The full court of the Federal Court
dismissed the appeal by Desktop Marketing Systems against a finding that its
CD-ROM products infringed copyright in Telstra's telephone books. (A discussion
of the lower court's findings can be found here:
http://www.digital.org.au/issue/ipwmay01.htm).
Desktop
Marketing Systems marketed three CD-ROM products that contained 'Yellow and
White pages listing data' arranged to be searchable in a variety of ways.
Telstra alleged copyright infringement, claiming that it held copyright in the
White and Yellow pages, despite the fact that these books contain non-creative
factual information which is not protected by copyright in some jurisdictions
(chiefly the US).
All three judges upheld Telstra's claim of copyright.
They rejected the decision of the US Supreme Court case Feist Publications Inc
v Rural Telephone Service Co Inc which found no subsistence of copyright in
ordinary phonebooks. In that case, Justice O'Connor observed that 'in preparing
the white pages directories, Rural simply took the data received from its
subscribers and listed the data alphabetically by surname. Her Honour made that
observation in support of her description of the "end product" as "a
garden-variety white pages directory, devoid of even the slightest trace of
creativity."'
It was significant in the Feist case that the data was
'received' by the telephone company in the course of its business rather then
actively 'collected'. Black CJ rejected this argument in an Australian context:
'in any case, to conclude that Telstra "receives" rather than "collects" the
data is to pay insufficient attention to the fact that, even in the case of the
White Pages, Telstra receives the data only because it has undertaken the
effort and expense of setting up and maintaining systems to get the data from
both new and existing subscribers. In a real sense, Telstra does collect the
data for the purpose of its compilations and certainly the process can aptly be
described as "collecting/receiving". '
Furthemore, the Court rejected
the collecting/receiving dichotomy when it said: 'as the discussion of these
cases in the judgments of the other members of the Court shows, however, they
do not turn upon the circumstance that the effort and expense applied was in
the collection, rather than receipt, of data. In general, they turn upon a
reluctance of the Courts to allow unfair advantage to be taken of the outlays
of another in originating a work.'
So the Court found that Desktop was
unfairly free-riding on Telstra's efforts. This seems strange in light of the
fact that Telstra 'collects/receives' this data by virtue of the fact that it
still essentially has a monopoly on many types of telecommunications services
in Australia. Since deregulation, many telecommunications carriers and service
providers have appeared on the scene but none has been able to rival Telstra in
its market position.
The 'effort and expense of setting up and
maintaining systems to get the data from both new and existing subscribers' is
underpinned by an historical monopoly.
Lindgren J specifically
considered this question and dismissed it:
"I am not dissuaded from
concluding that this labour was sufficient to attract copyright protection by
any one of the following considerations, or all of them regarded as a whole:
- that Telstra supplied the Directories
pursuant to a statutory obligation;
- that Telstra supplied the Directories free of
charge to its subscribers;
- that Telstra supplied the Directories as an
incident of a broader business conducted by it;
- that Telstra enjoyed a monopoly;
- that, as a practical matter, it was not open
to Desktop or anyone else to acquire the information recorded in the
Directories, except from Telstra;
- that the alphabetical arrangement of the data
was achieved by the use of computer programs.
While most of these features were not
present in the industrious collection cases decided to date, and may be said to
make the expression "industrious collection" a too elliptical description of
Telstra's labour, which included receiving, standardising, verifying and
recording, in my view the principle of those cases is applicable. To deny
copyright protection would permit Desktop to appropriate the benefit of
Telstra's substantial labour and expense in performing those activities.
>[3] CAL, Universities strike new copying
deal
Under Part VB of the Copyright Act, universities, along with
other educational institutions, are permitted to use portions of published
material without permission provided that the use is ultimately paid for. This
payment is handled through the Copyright Agency Limited (CAL), one of a handful
of copyright collecting societies. CAL and the universities (represented by the
Australian Vice-Chancellors Committee (AVCC)) have had a deal covering the use
of hardcopy material (for reading bricks, for example) for some time but this
is the first agreement covering electronic use.
Following the Copyright
Amendment (Digital Agenda) Act 2000, Part VB was amended to allow for the
electronic dissemination of educational material. Not only did CAL and the AVCC
have to work out a price for this new use but they also had to work out how the
electronic communication of educational material was to be monitored and on
what basis it was to be charged for.
The agreement commences on 1
January 2003 and runs until 2007. Monitoring of copying and communications
begins from 20 May of this year. It is not presently known how exactly
universities will track electronic usage but John Mullarvey refers to such
tracking as 'an added burden for universities'.
The AVCC media release
can be found here:
http://www.avcc.edu.au/news/public_statements/media_releases/2002/avcc_media_10_02.htm
.
The
CAL media release can be found here:
http://www.copyright.com.au/news%20releases/17_05_02.htm
>[4]
>[5] I can copy, right?
Yes, you can copy this
publication. Feel free to send it to friends or colleagues, print it off or
even archive it on your website provided that all text is included or, in the
case of an excerpt, appropriate credit is given.
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