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Copyright Subsistence: Part III Works

  1. Material Form
    1. The Idea/Expression Dichotomy
  2. Literary, Dramatic, Musical, or Artistic Work
    1. Literary Work
    2. Dramatic Work
    3. Musical Work
    4. Artistic Work
  3. Originality
    1. Compilations and Databases
  4. Connection with Australia
    1. Unpublished Works
    2. Published Works
    3. International Reciprocity (Principle of National Treatment)

In this section, you will learn when copyright subsists in various types of material.

Copyright protection in the Copyright Act 1968 (Cth), (CA) is split between original works (Part III) and “subject matter other than works” (Part IV). Original works include literary, dramatic, musical or artistic works. Subject matter other than works includes sound recordings, films, broadcasts and published editions.1

For copyright to subsist in a Part III original “work”, the conditions in s 32 must be satisfied including:

  1. Expressed in material form;

  2. A literary, dramatic, musical, or artistic work;

  3. Original; and

  4. With a connection to Australia.

Each of these conditions will be discussed in this chapter.

Material Form

An idea becomes a work when it is “first reduced to writing or to some other material form”.2 The term “writing” means a mode of representing or reproducing words, figures or symbols in a visible form, and “written” has a corresponding meaning.3 The term “material form”, in relation to a work or an adaptation of a work, includes any form (whether visible or not), of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced). Material form includes writing in any tangible medium, analogue or digital storage on any electronic or other medium.43 Material form does not include ephemeral manifestations, projections, speech or live music.

Video overview by Kylie Pappalardo on Material Form.

The Idea/Expression Dichotomy

Copyright protects expression fixed in material form. It does not protect ideas or information. It only protects the way in which those ideas or information are expressed.

Video overview by Kylie Pappalardo on the Idea / Expression Dichotomy.

Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529

“There is a tension in policy between the monopoly rights which are conferred upon the owner of copyright in a literary, dramatic, musical or artistic work on the one hand, and the freedom to express ideas or discuss facts on the other. While there will be an infringement of the copyright of an owner in a literary, dramatic, musical or artistic work where there is a reproduction of that work or a substantial part of it, the fact that another work deals with the same ideas or discusses matters of fact also raised in the work in respect of which copyright is said to subsist will not, of itself, constitute an infringement. Were it otherwise the copyright laws would be an impediment to free speech, rather than an encouragement of original expression”. (Hill J)5

Literary, Dramatic, Musical, or Artistic Work

To fall within Part III of the Copyright Act, the expression must be a literary, dramatic, musical or artistic work.

Video overview by Kylie Pappalardo on Part III works.

Each of these types of works will be considered below.

Literary Work

A literary work includes tables and compilations, expressed in words, figures or symbols (whether or not in a visible form), and computer programs or compilations of computer programs.1

A literary work is a work which is expressed in print or writing, irrespective of whether the quality or style is high.

University of London Press v University Tutorial Press Ltd [1916] 2 Ch 601

In the case of University of London Press v University Tutorial Press Ltd6 it was held that exam papers were literary works.

Peterson J said at 608:

“In my view the words ‘literary work’ cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word ‘literary’ seems to be used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature and refers to written or printed material”.

This case is discussed further under ‘Originality’ (below).

Examples of literary works include:

  • Football pool coupons;7
  • A racing programme;8
  • Chronological lists of football matches;9
  • Lists of bingo numbers;10 and
  • Accounting forms.11

Headlines, Titles and Names

Copyright does not normally subsist in titles and names. Generally, titles and single words are better protected through trade mark law and passing off than copyright.

Video overview by Kylie Pappalardo on Copyright in Headlines, Titles and Names.

The cases of WH Allen & Co. v Brown Watson Ltd12 and McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd13 considered passing off and copyright law.

WH Allen & Co. v Brown Watson Ltd [1965] RPC 191

Held, there was passing off where the defendant’s published a book entitled, “Frank Harris: My Life and Adventures”.

There was already a reputation in the book written by Frank Harris entitled, “My Life and Loves”.

McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd [1980] FCA 159

In the case of McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd a wine company brought out a wine called “Big Mac”. McDonalds claimed that this was a breach of s 52 of the Trade Practices Act (the law preceding the Australian Consumer Law). McDonald’s argued that people would be misled into thinking that the wine had some connection with McDonalds. The court held that there was no breach. McWilliam’s conduct might confuse people but this was not the same as being misled under the Trade Practices Act.14

Exxon Corporation v Exxon Insurance Consultants International Ltd [1982] Ch. 119

The oil company adopted the name “Exxon” after considerable research and expense. The defendant company, with no connection, adopted the name. Exxon sought an injunction.

Held, although the name was original, it was not sufficiently substantial for copyright to subsist in the name.

Francis, Day & Hunter Ltd v Twentieth Century Fox Corp15

Francis, Day and Hunter had released a song titled “The Man Who Broke the Bank at Monte Carlo”. Years later, 20th Century Fox put out a movie by the same title, but had no other connections to the song. Francis sued for copyright infringement.

Held, a name alone cannot possess copyright unless it is sufficiently original and distinctive. “To break the bank” is a hackneyed expression, and Monte Carlo is or was the most obvious place at which that achievement or accident might take place.

Fairfax Media Publications v Reed International Books [2010] FCA 984

In the case of Fairfax Media v Reed International Books, Fairfax, (the publisher of the Australian Financial Review) alleged that Reed had infringed copyright by copying AFR headlines as part of its media monitoring service. The question was whether headlines were “original literary works”.16

Held, while it is possible that a particular headline or title could be a literary work, the general rule is that they are not.

“Headlines generally are, like titles, simply too insubstantial and too short to qualify for copyright protection as literary works. The function of the headline is as a title to the article as well as a brief statement of its subject, in a compressed form comparable in length to a book title or the like. It is, generally, too trivial to be a literary work, much as a logo was held to be too trivial to be an artistic work, even if skill and labour has been expended on creation”. (Bennett J, [44])

However, “[i]t may be that evidence directed to a particular headline, or a title of so extensive and of such a significant character, could be sufficient to warrant a finding of copyright protection”. ([46])

The Newspaper Licensing Agency Ltd & Ors v Meltwater Holding BV & Ors [2010] EWHC 3099 (Ch)

“The evidence in the present case (incidentally much fuller than that before Bennett J in Fairfax…) is that headlines involve considerable skill in devising and they are specifically designed to entice by informing the reader of the content of the article in an entertaining manner” (Proudman J, [70])

“In my opinion headlines are capable of being literary works, whether independently or as part of the articles to which they relate. Some of the headlines in the Daily Mail with which I have been provided are certainly independent literary works”. (Proudman J, [71])

The decision was upheld on appeal.17

Computer programs (software) and databases are classified and protected as “literary works”. To understand why, it’s necessary to briefly look at the definition of “literary works” under the Australian copyright law.18

The definition of “literary works” includes “a table, or compilation, expressed in words, figures or symbols (whether or not in visible form) and a computer program or compilation of computer programs.” The law further defines a “computer program” as a set of instructions expressed in any language or code that causes “a device having digital information capabilities to perform a particular function.” Thus, the source code and object code of a computer program will be protected under copyright as a literary work. This gives a software developer the same rights as a creator of any other creative work.

Databases are also protected as literary works. However, court cases have imposed some additional requirements for databases and data compilations. For a database to be protected under copyright, it has to satisfy two requirements:

  • the database should be created by a human author i.e. not by a machine/automated process; and
  • there must be an intellectual effort involved in its creation.

These additional requirements are imposed because often data compilations consist of pure facts or information compiled in a logical order. The law considers that pure facts and information (most data) should be free for the public to use, unless there is an extra layer of creativity that goes into their compilation and organisation.

In the case of Computer Edge Pty Ltd v Apple Computer Inc, it was held that programs in object code (as opposed to source code) were not literary works.

This case was pre the 1984 amendments to the Act. These amendments provided that copyright subsists regardless of the code, language or notation used.

Autodesk v Dyason (No 2) [1993] HCA 6 - Liability for reverse engineering computer programs

Video overview by Zoe Cannan on Autodesk v Dyason (No 2)

In the case of Autodesk Inc v Dyason, the plaintiff owned copyright in a drafting program used by architects and engineers called “Autocad”. It was sold with an electronic device, the “Autolock”, to attach to the computer. The program would not run without the “Autolock”, preventing its use on more than one computer at any one time. The defendant cracked the code and produced a device called “Autokey”, which performed the same function as the “Autolock”.

It was held that the defendant had infringed copyright in the “Autocad” by reproducing a substantial part of the program in the device.

Data Access Corp v Powerflex Services Pty Ltd [1999] HCA 49

In the Hight Court case of Data Access Corp v Powerflex Services Pty Ltd Data Access had copyright in a computer program “Dataflex”, used by programmers to develop databases. Dr Bennett created a program compatible with “Dataflex”, which was sold by Powerflex Services in competition with “Dataflex”. He did not have access to the “Dataflex” source code, nor did he seek to decompile their program.

It was held that there was no infringement of copyright except for the use of a compression table which merely reduced computer storage space. Observing a program and developing a similar program without copying the source code or decompiling the program will not infringe copyright.

Dramatic Work

Dramatic work includes choreographic shows, scenarios or scripts for a cinematograph films.3 Dramatic work does not include a cinematograph film this form of expression is distinct from the scenario or script for a cinematograph film.

Copyright in a film is the subject of a separate copyright in Part IV.

The essential character of a dramatic work is that it is intended to be represented or performed in some way, for example, by acting or dancing. A dramatic work must not only be intended to be performed, it must also be able to be performed. Disparate elements without sufficient unity do not amount to a dramatic work.

Video overview by Brandon Hoffler on Dramatic Works

Green v Broadcasting Corp. of New Zealand [1989] RPC 469

A dramatic work must be capable of being performed.

Hughey Green was the longstanding host of the British television talent quest “Opportunity Knocks”. Features of the show, such as the use of a “clapometer” and various catchphrases to address the audience and the competitors, were replicated by a New Zealand television program without reference to Green.

It was held that the repetitive elements alone did not constitute a dramatic work: by themselves, their performance was meaningless since the greater part of the show, which gave meaning to the different stock elements, consisted of audience participation, varying from program to program.

Nine Network Australia Pty Ltd v ABC [1999]48 IPR 333

In the case of Nine Network Australia Pty v ABC, the Nine Network had paid $450,000 towards the Council of the City of Sydney’s fireworks display to welcome the new millennium. The Nine Network tried to restrain the ABC from broadcasting in Australia anything featuring the fireworks, the procession of lanterns on Sydney Harbour and decorations on the Harbour Bridge.

The court found that Nine’s contention that the display and parade were dramatic works was not strong.

The schedule of the fireworks display would not be such a work, since the reduction to material form was fraught with difficulties as to whether the schedule would in practice be adhered to according to the planned sequence.

“It is, one would think, common place in at least a half of the present decade that firework shows with music are planned. It has never been suggested to my knowledge, and there is no reported case in which the matter has been subjected to legal analysis which has suggested that copyright subsists in a fireworks show set to music just because the sequence of events is scripted. That does not mean that copyright might not exist. It may merely be the result either of difficulties of enforcing the non filming of such events or it may be that no one has thought deeply about the issue. At the heart of the problem may well be that copyright is a monopolistic right existing not to protect ideas as such but the physical manifestation of some original literary, artistic or dramatic work”.

The ABC could have potentially used the fair dealing exception of reporting the news in this instance.

Musical Work

The term “musical” work is not defined in the Copyright Act. It is understood, however, to refer to the non-literary aspects of the song – sound, melody, harmony and rhythm. The adjective “musical” refers to the method of production and not to any artistic or aesthetic qualities which the work should possess.

Lyrics to musical works are also covered under “literary works”.

Artistic Work

Artistic work includes paintings, sculptures, drawings, engravings or photographs, buildings or a models of a buildings3 The artistic quality of the work is not a consideration, copyright will subsist in these creations regardless of quality. Artistic work also includes artistic craftsmanship. The definition of artistic works does not apply to a circuit layout within the meaning of the Circuit Layouts Act 1989 (Cth).

Copyright in Paintings

The case of Merchandising Corp of America v Harpbond19 outlines the copyright which subsists in paintings.

Adam Ant sought to protect his facial makeup as artistic work.

Held, although there was no statutory definition of “painting”, it is a word in the ordinary usage of the English language and it is a question of fact in any particular case whether the subject matter under discussion is a painting or not. A painting is not an idea, it is an object, and paint without a surface in permanent form is not fixed; hence, the claim failed.

Drawing is defined as including “a diagram, map, chart or plan”.3 Architects’ plans are considered artistic works.20

‘Sculpture’ includes a cast or model made for purposes of sculpture.3

Metix v Maughan[1997] FSR 718

“A sculpture is a three-dimensional work made by an artist’s hand”.

Held: Industrial moulds to make twin cartridges like double-barrelled syringes were not sculptures.

“It appears to me that there is no reason why the word “sculpture” in the 1988 Act, should be extended far beyond the meaning which that word has to ordinary members of the public. There is nothing in the particulars in this case which suggests that the manufacturers of these moulds considered themselves, or were considered by anybody else, to be artists when they designed the moulds or that they were concerned in any way with the shape or appearance of what they were making, save for the purpose of achieving a precise functional effect. Nothing in the particulars given here suggests that any consideration of appeal to anything other than functional criteria was in mind or achieved”. (Laddie J, 722)

Building includes a structure of any kind.3

Half Court Tennis Pty Ltd v Seymour (1980) FLR 240

Held, a half-tennis court was a building.

Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd (1998) 41 IPR 649

Held, a fibreglass swimming pool was held to be a structure – particularly as the pools are as large as some small buildings and have a relatively long life.

The plug and mould used for the manufacture of precast fibreglass swimming pool was not a structure, but was a model of a building.

The term “artistic craftsmanship” is not defined in the Act. This is the only category of protection for 3D objects apart from buildings and models. A work of artistic craftsmanship includes articles made by crafts-people, such as jewellery, metalwork, and pottery.

The traditional test is whether the author in making the article had the main object of creating an article which will have a substantial appeal to the aesthetic tastes of those who observe them.

The two elements (artistic and craftsmanship) must be united in the same person.21

Video overview by Joseph Auclair on artistic craftsmanship and design protection

Cuisenaire v Reed [1963] VR 719

The issue was whether copyright subsisted in the Cuisenaire set of variously coloured tubes used for the purpose of teaching primary school children arithmetic as a work of artistic craftsmanship.

Held, no copyright subsisted as a work of artistic craftsmanship as cutting up pieces did not constitute craftsmanship and it wasn’t a work of artistry.

George Hensher Ltd v Restawhile Upholstery (Lancs.) Ltd [1976] AC 64

The issue was whether copyright subsisted in a prototype of a furniture suite for manufacture as a work of artistic craftsmanship. It consisted of pieces of wood with canvas attached (no drawing). The design was “boat shaped” with a flimsy appearance.

Held, not artistic as there was evidence it was regarded as vulgar, brash and horrible (i.e. not sufficient aesthetic appeal).

Whether there is sufficient aesthetic appeal is determined objectively – it should not depend solely on the subjective intention of the author.

Lord Morris: “although the intention of the author may provide an indication as to whether the object is “artistic”, this quality should be assessed in a “detached and objective way”.

Lord Reid: “An item will have aesthetic appeal if a substantial section of the public genuinely admires and values it for its appearance and gets pleasure or satisfaction, whether emotional or intellectual from looking at it, even though others may think it meaningless or vulgar”.

A work of artistic craftsmanship may be mass produced. Factory based products can be works of artistic craftsmanship – they need not be handmade, although the author must use a highly sophisticated machine with creative skill, knowledge, and pride in workmanship. A work of artistic craftsmanship need not be the product of a single person. This was considered in the case of Coogi Australia Pty Ltd v Hysport International Pty Ltd.22

Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 86 FCR 154

In this case, the plaintiff designed and manufactured a distinctive machine-knitted fabric and garments – highly textured surface, complex, abstract, multi-coloured design.

Held, the design for the fabric embodied in the first role of fabric produced was a work of artistic craftsmanship.

“The phrase “works of artistic craftsmanship” is a composite phrase that must be construed as a whole. There is nothing to suggest that any of the words is used in other than one of its ordinary senses”.

“A work will qualify as one of artistic craftsmanship only if it has an element of real artistic, that is, aesthetic, quality, whether or not it is a utilitarian article”.

“The article need not have such a high level of aesthetic quality as to make it a work of fine art”.

But: “The level of aesthetic appeal required for a work of artistic craftsmanship is higher than mere visual appeal”.

“The statute by its definition of “artistic work” requires that a work of artistic craftsmanship be “of artistic quality”; in this context, that seems clearly to require that it have some aesthetic value. That a segment of the public can be found which may have been persuaded by advertising or by a transient fad to want to own the work because of its visual appeal does not necessarily mean that it must have the requisite minimum level of aesthetic value. I do not think the Court can, in determining whether a work is one of artistic craftsmanship, avoid the task of making a judgment, on the evidence before it, whether the work has a sufficient level of aesthetic appeal to be “of artistic quality”. “Before a work will qualify as a work of craftsmanship, it must be a manifestation of pride in sound workmanship and the result of the exercise of skill on the part of its creator in using the materials of which the article is made and the devices by which those materials are turned into the article”.

Burge v Swarbrick [2007] HCA 17

The case of Burge v Swarbrick considered the copyright/design overlap.

Here, the creator of a yacht design sued for copyright infringement. The creator would only be able to assert copyright if the hull or the ‘plug’ (a hand-crafted full scale model) used to create the yacht was a ‘work of artistic craftsmanship’

The court held that the plug was a work of artistic craftsmanship. “The creation of the JS 9000 has some similarity to the modus operandi of Auguste Rodin”.

The High Court overturned the ruling, holding that the plug was not a work of artistic craftsmanship:

“It may be impossible, and certainly would be unwise, to attempt any exhaustive and fully predictive identification of what can and cannot amount to “a work of artistic craftsmanship” within the meaning of the Copyright Act as it stood after the 1989 Act. However, determining whether a work is “a work of artistic craftsmanship” does not turn on assessing the beauty or aesthetic appeal of work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing the extent to which the particular work’s artistic expression, in its form, is unconstrained by functional considerations”.[83]23

The designer in this case was motivated by engineering imperatives, and was not acting as an artist-craftsperson when he created the plug. The utilitarian requirements of aerodynamics and speed influenced and, at times, dictated the design choices.

Video overview by Shonagh Hunter on Burge v Swarbrick.


In copyright, the term “originality” does not mean “novel” or new. Instead, “original” means to originate from the author, in the sense that it is the result of his or her skill, labour or judgment, and is not copied from another author. It is possible that two authors will independently produce a similar work both attracting copyright, and neither infringing copyright.

Video overview by Kylie Pappalardo on Originality.

University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601

Video overview by Christine Apurel on University of London Press v University Tutorial Press.

Examiners were hired to create exam scripts for the University of London. A condition of appointment for examiners was that copyright in the papers belonged to the University. The University subsequently assigned copyright to the plaintiff publisher. The defendant publisher then published exams with answers and comments. The plaintiff publisher sued for infringement of copyright.

Held: copyright subsisted in the papers as original literary works – originality does not require that the work be original or inventive thought, as long as there is originality in the expression of the idea.

“The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of ‘literary work’, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work — that it should originate from the author”. (Peterson J, 609-10)

Budget Eyewear Australia v Specsavers [2010] FCA 507

Video overview by Emma Taylor on Budget Eyewear Australia v Specsavers.

In the case of Budget Eyewear Australia v Specsavers the court found that there was an arguable case that the manner in which a concept was expressed in an advertisement was original because “[i]t is necessary for the creator of the advertisement to choose words and expressions carefully and to put those words and phrases together in a particular considered way. Expressions such as ‘if your glasses are not all they are cracked up to be, don’t worry, we’ll come to the rescue’ may involve ordinary words, as does much literary language, but the fact that the words are commonplace does not mean that the way in which they are put together cannot have a degree of originality.” ([17])

Legal terms and conditions are less likely to be original.

Compilations and Databases

In Australia, a compilation will be protected by copyright as an original literary work if it has been produced by the application of independent intellectual effort by the author. This effort may involve the exercise of skill, judgment, knowledge, creativity or labour in selecting, presenting or arranging the information.

Basic Case Law Overview

  • Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273: Held, football coupons attracted copyright, even though none of the component parts were original.

  • G.A. Cramp & Sons Pty Ltd v Frank Smythson Ltd: Held, the selection and publication of seven tables of commonplace information in diaries did not attract copyright – the pieces of information were common knowledge and did not involve a sufficient degree of skill and labour by the publisher.

  • Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637: Held, copyright did subsist in the chronological list of matches of the football league, having regard to the skill and labour involved.

  • Kalamazoo (Aust.) Pty Ltd v Compact Business Systems Pty Ltd: Held, copyright subsisted in compilations of blank accounting forms.

  • Primary Health Care Limited v Commissioner of Taxation [2010] FCA 419: Held, the minimal effort required for a doctor to write consultation notes was sufficient to demonstrate “a continuous narrative showing independent intellectual effort expended in expression” and therefore constitute an original literary work. Health summaries and prescriptions, however, only contained names of medications, dosage and standard directions, and the list of previous illnesses and procedures. These did not qualify as original literary works “embodying independent intellectual effort directed towards expression.”

Major Cases

Feist Publications Inc v Rural Telephone Service Co Inc. (US)

US position: original works must possess “some minimal degree of creativity”

The Supreme Court found that a compilation, even one composed purely of non-copyrightable elements (such as mere factual information), is protected under copyright law so long as the author of the compilation exercised creativity in the selection, coordination, or arrangement of those elements.

Held, a “white pages” telephone book, an alphabetical listing of all telephone subscribers in a certain area, did not reach the required threshold of originality in order to qualify for copyright protection.

Feist was not followed in Australia.

Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd [2002] FCAFC 112

In the case of Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd Telstra published the Yellow Pages and the White Pages. Desktop Marketing produced and sold phone directories in CD-ROMs of varying levels of sophistication with White and Yellow pages listings, which could be searched in different ways whether by name, address, postcode, industry and the like. The data used to produce the CD-ROMS was taken from Telstra’s phone books and rekeyed by a team of workers in the Philippines. Desktop Marketing also used Telstra’s headings, though it did add its own software to do the searching.

Held, copyright subsisted in Telstra’s White Pages and Yellow Pages directories, and that copyright had been infringed.

Factual compilations may be protected merely on the basis that substantial labour and expense has been devoted to their creation. This was true even of a “whole of universe” compilation such as the White Pages, where there was no element of selectivity in the organisation or presentation of the data, and even though the labour and expense here had not so much gone into the “collection” of the data (which was in fact simply received from subscribers) as into the development of systems for its verification and storage.

The court noted that it was open to Desktop Marketing to obtain all the facts contained in the Telstra directories by its own independent inquiry, and produce its own compilation of the results. As long as there had been no copying of Telstra’s product by Desktop Marketing, there would be no copyright infringement.

  • See Lindgren J at 472-478 and Sackville J at 539.

Full Federal Court held that a compilation would attract copyright protection if:

  • It was produced as a result of the exercise of skill, judgment or knowledge in the selection, presentation or arrangement of material; or

  • It required the investment of substantial labour or expense in collecting the material included in the compilation (the “sweat of the brow” approach).

Clearly Telstra incurred significant labour and expense in collecting, verifying, and collating the directories. The Full Court considered that this labour interest (“sweat of the brow”) ought to be protected against misappropriation.

Important: While Desktop Marketing has not been explicitly overruled, it must now be treated with caution.

IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 239 CLR 458

In the case of IceTV Pty Limited v Nine Network Australia Pty Limited Channel 9 created a Weekly Schedule of television programmes to be broadcast each week. They alleged that each Weekly Schedule was a compilation, and therefore a literary work under the Copyright Act, and that IceTV had infringed copyright by taking part of the time and title information from the Aggregated Guides (guides produced by third party Aggregators, authorised by Nine and to whom Nine provides the Weekly Schedule) and including it in their own (electronic) guide, the “IceGuide”.

The Weekly Schedule consisted of a spreadsheet with the details of dates, titles, start and finish times of television programs (“time and title information”); additional details such as episode titles, episode numbers, currency information, program formats, classification, etc; and short synopses of the TV programs.

IceTV conceded originality at first instance(!).

  • The High Court’s discussion on originality, in terms of subsistence, was accordingly strictly obiter dicta

  • However, originality was discussed in terms of infringement.

French CJ, Crennan and Kiefel JJ at [42]-[43]:

“The expression of the time and title information, in respect of each programme, is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited. Expressing a title of a programme to be broadcast merely requires knowledge of the title, generally bestowed by the producer of the programme rather than by a broadcaster of it. Expressing the time at which a programme is broadcast, for public consumption, can only practically be done in words or figures relating to a 12 or 24-hour time cycle for a day. The authors of the Weekly Schedule (or the Nine Database) had little, if any, choice in the particular form of expression adopted, as that expression was essentially dictated by the nature of the information. The expression lacks the requisite originality (in the sense explained) for the part to constitute a substantial part.

Counsel for Nine sought to place importance upon the production not only of time and title information in respect of each programme, but also of the chronological arrangement of the time and title information for various programmes. Whether a selection or arrangement of elements constitutes a substantial part of a work depends on the degree of originality of that selection or arrangement. In this case, a chronological arrangement of times at which programmes will be broadcast is obvious and prosaic, and plainly lacks the requisite originality.

These considerations lead to the conclusion that the part of the Weekly Schedule (or the Nine Database) alleged to have been reproduced was not a substantial part.”

French CJ, Crennan and Kiefel J also state at [48], [52] (in obiter):

“It may be that too much has been made, in the context of subsistence, of the kind of skill and labour which must be expended by an author for a work to be an “original” work. The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort. Be that as it may, as noted previously, since the subsistence of copyright need not be considered in this appeal, the relevance of skill and labour to that inquiry need not be considered further”.

“Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error. The error is of a kind which might enable copyright law to be employed to achieve anti-competitive behaviour of a sort not contemplated by the balance struck in the Act between the rights of authors and then entitlements of the reading public.”

Gummow Hayne and Heydon JJ stated (at [157]-[160]):

“The issue requiring the comparison between what was taken and the whole of the work in suit may be distorted by a mediation, inspired by* Desktop Marketing*, upon the protection given by the Act against misappropriation of any investment of skill and labour by the author. In the present case, the temptation then is to classify the slivers [of information] each as original literary works…

… the more remote the level of abstraction of the “interest”, the greater the risk of protecting the “ideas” of the author rather than their fixed expression.”

Gummow, Hayne and Heydon JJ accepted the submission by IceTV that the originality of the Weekly Schedule “lay not in the provision of time and title information, but in the selection and presentation of that information together with additional programme information and synopses, to produce a composite whole” ([152]). Accordingly, like French CJ and Crennan and Kiefel JJ, they found that IceTV had not reproduced a substantial part of Nine’s original copyright work.

An important obiter remark was made by Gummow, Hayne and Heydon JJ immediately following their conclusion:

“One final point should be made. This concerns the submission by the Digital Alliance that this Court consider the Full Court’s decision in Desktop Marketing and, to the contrary of Desktop Marketing, affirm that there must be some “creative spark” or exercise of “skill and judgment” before a work is sufficiently “original” for the subsistence of copyright.

It is by no means apparent that the law even before the 1911 Act was to any different effect to that for which the Digital Alliance contents. It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years. These reasons explain the need to treat with some caution the emphasis in Desktop Marketing upon “labour and expense” per se and upon misappropriation. However, in the light of the admission of Ice that the Weekly Schedule was an original literary work, this is not an appropriate occasion to take any further the subject of originality in copyright works.”

Telstra v Phone Directories [2010] FCAFC 149

In the case of Telstra v Phone Directories, the question again arose as to whether copyright subsists in Telstra’s White Pages and Yellow Pages directories.

At first instance, Gordon J, consistent with IceTV, rejected the notion that skill, labour or expense alone can give rise to copyright protection. There must be something more, and that something more is the exercise of “independent intellectual effort” and /or “sufficient effort of a literary nature”.

Ultimately, the case turned on two factors:

  1. Firstly, Telstra’s inability to identify with any degree of certainty the “authors” of the telephone directories. Gordon J found that there were numerous people who had contributed in part to the production of the directories – some of these people were employees and some were independent contractors; some were still in the Applicants’ employ but others were not; and some had played only minor roles whereas others had played more significant roles. The exact number of contributors was unknown and the Applicants had not identified who the contributors were.

  2. Secondly, Gordon J held that even if the authors could be identified with sufficient clarity and certainty (which they could not), the people suggested to be the authors of the works did not exercise “independent intellectual effort” and/or “sufficient effort of a literary nature”. The majority of the processes creating the directories were heavily automated. A system of computer-imposed “Rules” controlled the content and prescribed the form of expression of the works. Any human discretion had to be exercised in accordance with the Rules. The system was designed to limit originality, not provide for it. The tasks performed by individuals applying the Rules were mechanical and often able to be completed in large numbers swiftly. Very few people had any part to play in the final presentation of the works or the particular form of the expression of the information. Gordon J rejected the Applicants’ contention that the relevant intellectual effort involved was understanding and applying the Rules, holding that the independent intellectual effort required must be directed to the creation of the work and that the independent effort claimed by the Applicant was not.

Consequently, Gordon J held that none of the works were original and none of the people said to be authors of the works exercised “independent intellectual effort” or “sufficient effort of a literary nature” in creating the works.

Justice Gordon stated:

“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. The Applicants have failed to satisfy these conditions. Whether originality be the product of some “independent intellectual effort” and / or the exercise of “sufficient effort of a literary nature”, or involve a “creative spark” or the exercise of “skill and judgment”, it is not evident in the claim made by the Applicants”. (Gordon J at first instance, [344])

The Full Federal Court upheld the decision at first instance and dismissed the appeal.

  • Again, Telstra had incurred significant labour and expense in collecting, verifying, and collating the directories.

    • However, the skill and labour exerted was aimed predominantly in creating the database. It was not aimed at producing the actual final expression in any way that could be said to originate in the intellectual effort of an individual.

    • Critically, the final form of the directories were generated by a computer program.

    • Skill and labour not directed to the creation of the final expression generally do not count towards originality.

“The reasons of the High Court in IceTV authoritatively establish that the focus of attention in relation to the subsistence of copyright is not upon a general concern to prevent misappropriation of skill and labour but upon the protection of copyright in literary works which originate from individuals. In this case copyright was said to subsist in the directories as compilations, but the directories were not compiled by individuals”. (Keane CJ, [96])

Special leave to appeal to the High Court was denied.

There is still some uncertainty as to what degree of “independent intellectual effort” in determining the final form of expression is required.

  • “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.” (Keane CJ, [58])
Fairfax Media Publications v Reeds International Books (2010) 189 FCR 109

Fairfax, publisher of the Australian Financial Review, alleged that Reed had infringed copyright by copying AFR headlines as part of its media monitoring service.

The question was whether headlines were “original literary works”.

Following IceTV, it is important to identify an author and the independent intellectual effort directed to the creation of an original work:

  • “Headlines, which are generally written by sub-editors, often derive in one way or another from the content of the body of the article, which is written by the journalists. Therefore, the authorship of the ten selected headlines cannot be assumed in the absence of specific evidence. A headline that does no more than repeat a phrase from the article is not an original literary work.” ([84])

Connection with Australia

Video overview by Kylie Pappalardo on Connection to Australia.

Unpublished Works

For unpublished works, the author must be a qualified person at the time it was made.24

  • If the making of the work extends over a period, the author must be a qualified person for a substantial part of that period24
  • A qualified person is an Australian citizen, an Australian protected person, or a person resident in Australia.25

Published Works

In terms of published works, the work must meet a specific criteria.26

The work must be first published in Australia or the author must be a qualified person when the work was first published. A qualified person is an Australian citizen or a person resident in Australia,25

A work is deemed to have been published if reproductions have been supplied to the public.27

International Reciprocity (Principle of National Treatment)

In practice, works first published internationally will be treated in the same way as Australian works. This applies only to countries who are a signatory to the Berne Convention, (Berne Convention countries).28

Video overview by Samuel Roach on Principles of reciprocity in the Berne Convention.

  1. CA s 10  2

  2. CA s 22(1) 

  3. CA s 10(1)  2 3 4 5 6 7

  4. See Star Micronics Pty Ltd v Five Star Computers Pty Ltd (1990) 18 IPR 225 

  5. (1996) 36 IPR 529 at 531 

  6. [1916] 2 Ch 601 

  7. Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 27 

  8. Mander v O’Brien (1934) SASR 87 

  9. Football League Ltd v. Littlewoods Pools Ltd [1959] Ch 637 

  10. Mirror Newspapers Ltd v Queensland Newspapers Ltd [1982] Qd R 305 

  11. Kalamazoo (Aust.) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213 

  12. [1965] RPC 191 

  13. [1980] FCA 159 

  14. According to Australian Consumer Law ss 18, 19 

  15. UKPC 68 

  16. (2010) 189 FCR 109 

  17. The Newspaper Licensing Agency Ltd & Ors v Meltwater Holding BV & Ors [2011] EWCA Civ 890 

  18. See the definitions of “literary work” and “computer program” in s 10 of the Copyright Act 1968 

  19. [1983] FSR 32 

  20. Ancher, Mortlock, Murrary & Woolley Pty Ltd v Hooker Homes Pty Ltd 

  21. Burke & Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400 

  22. (1998) 86 FCR 154 

  23. Burge v Swarbrick [2007] HCA 17 

  24. CA s 32(1)  2

  25. CA s 32(4)  2

  26. CA s 32(2) 

  27. CA s 29(1)(a) 

  28. Copyright (International Protection) Regulations 1969 reg 4