''Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd'' was a 2001–2002
case
Case or CASE may refer to:
Instances
* Instantiation (disambiguation), a realization of a concept, theme, or design
* Special case, an instance that differs in a certain way from others of the type
Containers
* Case (goods), a package of relate ...
in the
Federal Court of Australia
The Federal Court of Australia is an Australian superior court which has jurisdiction to deal with most civil disputes governed by federal law (with the exception of family law matters), along with some summary (less serious) and indictable (mo ...
in which
Telstra
Telstra Group Limited is an Australian telecommunications company that builds and operates telecommunications networks and markets related products and services. It is a member of the S&P/ASX 20 stock index, and is Australia's largest telecomm ...
successfully argued that its
copyright
A copyright is a type of intellectual property that gives its owner the exclusive legal right to copy, distribute, adapt, display, and perform a creative work, usually for a limited time. The creative work may be in a literary, artistic, ...
had been infringed by the reproduction of data from the White and Yellow Pages
telephone directories
A telephone directory, commonly called a telephone book, telephone address book, phonebook, or the white and yellow pages, is a listing of telephone subscribers in a geographical area or subscribers to services provided by the organization that ...
in
CD-ROM
A CD-ROM (, compact disc read-only memory) is a type of read-only memory consisting of a pre-pressed optical compact disc that contains computer data storage, data computers can read, but not write or erase. Some CDs, called enhanced CDs, hold b ...
format.
[.]
It was an important decision in
copyright law of Australia until the
High Court of Australia
The High Court of Australia is the apex court of the Australian legal system. It exercises original and appellate jurisdiction on matters specified in the Constitution of Australia and supplementary legislation.
The High Court was establi ...
criticised it in ''
IceTV Pty Ltd v Nine Network Australia Pty Ltd'' (2009). In 2010, the Federal Court ruled that copyright no longer subsisted in the White or Yellow Pages, effectively overturning the decision.
[.]
Trial
In a decision handed down on 25 May 2001,
Finkelstein J reviewed the
history of copyright dating back to medieval England.
[.] Despite the need to establish
authorship and
originality
Originality is the aspect of created or invented works that distinguish them from reproductions, clones, forgeries, or substantially derivative works. The modern idea of originality is according to some scholars tied to Romanticism, by a notion ...
, his Honour noted that "an examination of the English cases over the last few hundred years or so shows that in only a few has copyright been denied to a compilation."
[
Although there were "policy reasons both for and against" adopting the ]United States Supreme Court
The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that turn on question ...
decision in '' Feist Publications, Inc., v. Rural Telephone Service Co.'' (1991), Finkelstein J considered that he was bound by English authority and could not "jettison the old law and replace it with the principles expressed in ''Feist''."[
Therefore, copyright subsisted in both the telephone directories and the headings books.][ Although the information had been reproduced in a different visual format, the differences were not "material" and the substance of the information taken from Telstra's works had been reproduced.][
]
Consequences
Although privacy issues did not play a part in Finkelstein J's reasoning, the decision had the indirect effect of preventing the publication of reverse telephone directories in Australia. The "Blackpages" service hosted by a group of Australian computer security enthusiasts was taken down shortly after Finkelstein J's decision.
Appeal
Finkelstein J granted Desktop Marketing Systems leave to appeal to the Full Court.[
Lindgren J regarded '' Walter v Lane'' (1900) as "the high point of the line of authority supportive of the proposition that one can be the 'author' of a work without scope for variance in expression" (i.e. creativity).][ His Honour held that "decisively for the present case, 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."][ Any departure from the long course of Anglo-Australian authority would have to be done by the High Court.][
Sackville J noted that the trial and the appeal were conducted on the basis that it was unnecessary for Telstra to establish that the directories or headings books had a particular or joint authors.][ Synthesising the historical cases, he concluded that "a compilation of factual information will ordinarily be an original literary work for copyright purposes if the compiler has undertaken substantial labour or incurred substantial expense in collecting the information."][ The decision in '' Feist'' reflected considerations peculiar to the United States.][
Black CJ agreed with the reasons of both Sackville and Lindgren JJ. The appeal was dismissed.
]
Post-''IceTV'' consideration
On 22 April 2009, the High Court of Australia
The High Court of Australia is the apex court of the Australian legal system. It exercises original and appellate jurisdiction on matters specified in the Constitution of Australia and supplementary legislation.
The High Court was establi ...
handed down its decision in '' IceTV Pty Ltd v Nine Network Australia Pty Ltd''. Gummow, Hayne and Heydon JJ criticised ''Desktop Marketing'' and concluded that copyright did not subsist in a similar compilation produced by the Nine Network
Nine Network (stylised 9Network, and commonly known as Channel Nine or simply Nine) is an Australian commercial free-to-air television network. It is owned by parent company Nine Entertainment and is one of the five main free-to-air television ...
. Noting the failure of the parties in ''Desktop Marketing'' to identify the compilation's authors,[.] their Honours found that "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."[
On 8 February 2010, Gordon J (then sitting as a Federal Court judge at first instance) determined that Telstra does not hold copyright in the White Pages or the Yellow Pages. While Telstra had argued that the decision in ''Desktop Marketing'' continued to apply, Gordon J noted the High Court's warning and that Finkelstein J too had questioned the parties' underlying assumptions about authorship.][ Gordon J found that Telstra had "manifestly" failed to identify the joint authors of the White and Yellow Pages,][ 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."][
Telstra's appeal to the Full Court ( Keane CJ, Perram and Yates JJ) was dismissed on 15 December 2010.] The decision was described by a commentator as "at odds with reality" and a spokesman for then-Attorney-General
In most common law jurisdictions, the attorney general (: attorneys general) or attorney-general (AG or Atty.-Gen) is the main legal advisor to the government. In some jurisdictions, attorneys general also have executive responsibility for law enf ...
Robert McClelland said the government was considering the implications of the decision.
See also
* Copyright in compilation
* Database right
* United States copyright law
The copyright law of the United States grants monopoly
A monopoly (from Greek language, Greek and ) is a market in which one person or company is the only supplier of a particular good or service. A monopoly is characterized by a lack ...
* Sweat of the brow
Sweat of the brow is a copyright law doctrine. According to this doctrine, an author gains rights through simple diligence during the creation of a work, such as a database, or a directory. Substantial creativity or "originality" is not require ...
References
{{reflist
Federal Court of Australia cases
Australian intellectual property law
Telstra