No More Copyright in Phone Directories Says the Federal Court of Australia

A single justice of the Federal Court of Australia (Court) recently rejected phone directories as original literary works deserving of copyright protection under the Australian Copyright Act 1968 (Act) in the landmark decision, Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2010] FCA 44. Applying the principles of the High Court of Australia decision, IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14, Justice Gordon cited three reasons for her conclusion: (i) the authors of various contributions to the directories could not be identified; (ii) much of the contribution was not “independent intellectual effort” or “sufficient effort of a literary nature” for the contributors to be considered an author of the directories within the meaning of the Act; and (iii) the directories are not “original works” because their creation did not involve “independent intellectual effort” or the exercise of “sufficient effort of a literary nature”. In particular, Justice Gordon affirmed that authors of a work must be identified in order to show subsistence of copyright in the work, and for a work to be original, the creation of the work requires some independent intellectual effort, although no literary merit or inventiveness is required. On the evidence, Justice Gordon found that none of those purporting to be authors of the phone directories exercised the requisite effort in creating the directories because the creation process was largely automated by a computer system and, in fact, the process was designed to limit originality. The decision is significant in that it effectively overturned the Court’s previous pronouncement that the originality requirement for copyright protection of a compilation can be met by simply employing more than negligible labour and expense in gathering materials (Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 612). Although the Court distinguished the two cases on the facts and the element of authorship, it seems that the Court has reconsidered whether phone directories can in fact pass the threshold of originality so as to be afforded copyright protection. This decision brings Australian copyright law generally in line with the position taken by the Canadian and US courts on the subject. The decision is currently on appeal to the full Federal Court of Australia. For the full reasons for judgment in the current Telstra case, see: www.austlii.edu.au/au/cases/cth/FCA/2010/44.html Summary by: Janet Chong