Copyright does not subsist in the White and Yellow Pages: Full Federal Court
Telstra Corporation Limited v Phone Directories Company Pty Ltd  FCAFC 149
On 15 December 2010, the Australian Full Federal Court unanimously upheld the decision of Justice Gordon at first instance, confirming that copyright does not subsist in Telstra’s White and Yellow Pages telephone directories.
Whilst the Full Court accepted that Telstra’s telephone directories were literary works under s. 10 (1) (a) of the Copyright Act, the Court determined that the directories were not ‘original’ for the purposes of Australian copyright law.
Ice TV applied to phone directories as compilations
Following the High Court’s reasoning in the 2009 decision of IceTV v Nine Network2, the Full Federal Court recognised that to be original, a work must:
- Not be copied;
- Originate from a human author; and
- Be the result of independent intellectual effort.
Importantly, the author’s independent intellectual effort must be directed to reducing the work to its ultimate or ‘material form’.
Telstra’s arguments and the Court’s findings on copyright subsistence
Telstra submitted that its employees had applied independent intellectual effort at “every stage of the process of compilation”, including in gathering and organising the collection of material (‘the collection phase’), and in ordering and arranging the fixation or settlement of the directories in a material form (‘the extraction phase’).
The Full Court rejected Telstra’s arguments that the effort in either phase was sufficient for the purpose of determining copyright subsistence. Firstly, the Court determined that the collection phase effort was not directed to the creation of the material or final published form of the directories, and was therefore irrelevant for the purposes of establishing originality.
Secondly, the Full Court found that the extraction phase effort did not originate from an individual or group of individuals, but rather from a computerised process of storing, selecting, ordering and arranging the data to produce the directories in their published form. The Court emphasised that it was the extraction phase work that constituted the relevant effort for the purposes of originality.
Notably, in the course of making these findings, the Full Court agreed with Telstra’s submission that in proving originality and subsistence, it is not necessary to identify by name each and every author of a work. Rather, it must be demonstrated that the work originated from a human author or authors.
Implications for compilation and database owners
This decision and the decision of Ice TV v Nine Network, highlight the difficulties that businesses may now face in protecting their commercially valuable databases under Australian copyright law in the absence of any specific copyright protection for databases.
Telstra has applied for special leave to appeal the decision to the High Court.
- For a discussion of the Federal Court’s decision at first instance, see our Legal Briefing dated Tuesday 23 February 2010 at /pub/detail/116/life-after-icetv-the-federal-court-revisits-copyright-in-compilations
- Ice TV Pty Limited v Nine Network Australia Pty Ltd  HCA 14.