Battle for the remote: Channel Nine freezes out IceTV in copyright dispute

Battle for the remote: Channel Nine freezes out IceTV in copyright dispute

Nine Network Australia Pty Ltd v IceTV Pty Ltd (2008) 76 IPR 31

IceTV made the headlines last year when it won a David-and-Goliath style copyright dispute brought by the Nine Network in relation to its television program guides. The Full Court reversed that decision earlier this year, prompting concern that the IceTV case was an example of copyright law going too far and being used to "freeze out" new innovation.

Background

The Nine Network ("Nine") recently succeeded, on appeal, in a copyright infringement case against IceTV in relation to its weekly television program schedules.

Nine's Weekly Schedules, which contained information such as the time and date on which television programs would be broadcast, episode titles and synopses, were produced approximately 6 weeks before the programs were broadcast. The contents of the Weekly Schedules were confidential to Nine until approximately 3 weeks before broadcast date, when they were sent to third parties for compilation and publication in television guides together with the programming schedules for other free-to-air television channels (referred to in the judgment as the "Aggregated Guides").

The IceGuide

The IceGuide was an electronic program guide created by IceTV and designed for use in programming personal video recorders. The IceGuide listed the daily programming schedules for each of the free-to-air television stations and was usually published 6-8 days before the broadcast date. The IceGuide could be downloaded to a personal video recorder by subscribers using an internet connection. The IceGuide was created independently of the Weekly Schedules and, for the most part, without reference to any of the Aggregated Guides. An IceTV employee created the IceGuide by enduring a 3-week "torture period" in which he observed free-to-air television broadcasts in Adelaide and wrote down the time at which each program had been broadcast. From the 3-week schedule a weekly template was created, based on the assumption that most programs would be repeated in the same timeslot on a weekly basis. This information was then extrapolated to other television broadcast regions.

IceTV took care to ensure that the program synopses and other specific information regarding program episodes, was not obtained from the Aggregated Guides. In fact, IceTV did not even allow its employees to refer to the Aggregated Guides until the last step in the creation of the IceGuide, as part of a verification process to ensure that the program information was accurate.

Findings

The primary Judge, Justice Bennett, held that IceTV had not infringed Nine's copyright in the Weekly Schedules. Nine appealed that decision to the Full Federal Court (Black CJ, Lindgren and Sackville JJ), who overturned the primary Judge's decision. It was not in dispute between the parties that both the Weekly Schedules and the IceGuide were literary works which were compilations. There were two issues for the Full Court's consideration:

  • Did IceTV take a substantial part of Nine's copyright work?
  • Was there a causal connection between the IceGuide and Nine's Weekly Schedules?

The Full Court answered "yes" to both of those questions and found in Nine's favour.

Did IceTV take a substantial part of Nine's copyright work?

The primary Judge held that IceTV had not taken a "substantial part" of Nine's copyright work for 3 main reasons:

  1. Only the labour, skill and effort expended by Nine in producing the literary work itself, was relevant when considering the originality of Nine's Weekly Schedules. The antecedent or preparatory work expended by Nine in deciding which television programs to broadcast (and at what time), was not relevant;
  2. Nine had created the Weekly Schedules for the primary purpose of running a commercial television station, not for the primary purpose of creating a literary work such as a television guide; and
  3. The "time and title information" that was reproduced in the Aggregated Guides was not qualitatively as important as the synopsis information that was also contained in the Weekly Schedules, and therefore did not constitute a "substantial part".

The Full Court rejected each of these propositions. The Court referred to various English authorities which held that the preparatory labour, skill and effort expended in creating a copyright work could not be disaggregated from the labour, skill and effort in creating the work itself, and was relevant to the consideration of whether a "substantial part" of the work had been taken.

The Full Court also cited the English authority of Ladbroke v William Hill as standing for the proposition that it was irrelevant whether the creation of a literary work was the author's primary purpose at the time that the work was created.

In relation to the primary Judge's comments regarding the qualititative importance of the time and title information in the synopsis, the Full Court said that the primary Judge had incorrectly applied the test for determining whether a substantial part had been taken. The Full Court said that the question to be asked was whether the part that had been taken was an "essential or material part" when compared with the work as a whole, and it did not matter whether there were other parts of the same work that might be more qualitatively important than the part that had been taken.

The Full Court described the time and title information as the "centrepiece" of Nine's Weekly Schedules which was "plainly of particular interest to potential viewers". The Court held that the other information contained in the Aggregated Guides or the Weekly Schedules had little value without the time and title information, and that it was essential to the success of the IceGuide that it be accurate. The Court also found that the time and title information represented a great deal of the skill and labour expended by Nine in producing the Weekly Schedules.

Accordingly, the Full Court found that by taking time and title information from the Aggregated Guides during the process of verifying the accuracy of the IceGuide (even if the parts taken were small), IceTV had taken a substantial part of Nine's copyright work.

Was there a causal connection between the IceGuide and Nine's Weekly Schedules?

It was not disputed between the parties that IceTV had never had direct access to the Weekly Schedules, only to the Aggregated Guides. IceTV argued that the process of compiling selected information from the Weekly Schedules into the Aggregated Guides (together with the information from other television networks) severed the causal link between the Weekly Schedules and the IceGuide.

The Full Court held that, as the Aggregated Guides had been produced (with consent) from the Weekly Schedules, there was a causal link between the Weekly Schedules and the IceGuide. Based on these findings, the Full Court overturned the primary judge's decision and held that IceTV had infringed Nine's copyright in the Weekly Schedules.

Implications of the decision

"The case has caused some commentators to question whether copyright protection in this case has been extended too far. Rather than encouraging innovation, it has been suggested that the application of Australian copyright law in this case may have the effect of slowing or stopping innovation altogether."

The Full Court decision reinforces the Australian position that strong copyright protection may be afforded even to "mundane" literary compilations such as databases or lists of information. In the past, that protection has been afforded to compilations such as telephone directories and price lists. The IceTV decision goes against recent decisions in the United States and Europe, which have held that a much weaker level of copyright protection applies to databases and literary compilations in those jurisdictions.

The decision also demonstrates that copyright protection may be available even where the creation of the copyright work is incidental to the author's principal business. Nine was in the business of broadcasting television, not producing television guides. Arguably the use of the IceGuide could have complemented Nine's business by providing a new means by which information regarding Nine's broadcast schedules could be disseminated to potential viewers. Yet Nine's enforcement of the copyright subsisting in its program schedules has effectively prevented IceTV from marketing the IceGuide to its full potential.

The case has caused some commentators to question whether copyright protection in this case has been extended too far. Rather than encouraging innovation, it has been suggested that the application of Australian copyright law in this case may have the effect of slowing or stopping innovation altogether. IceTV arguably did all that it could to create its new, innovative product without infringing third parties' copyright. However, when the use of a product or technology such as the IceGuide is dependent upon access to copyright-protected works, it appears that copyright owners, at least under Australian law, may have the power to prevent that technology from entering the market.

It remains to be seen whether the IceTV decision will have the "chilling" effect on innovation in Australia that some are predicting. On 26 August IceTV was granted special leave to the High Court of Australia.