Lavan Legal's Intellectual Property Team

Lavan Legal introduces a new publication from its specialised intellectual property and technology team (IP team).

Lavan Legal’s IP team advises and represents clients in all aspects of intellectual property registration, asset management and rights enforcement.

The Intellectual Property Update will be emailed to you monthly as part of our commitment to ensure that you are kept informed of changes in the law, interesting cases and current issues affecting your rights.

Please find attached a profile of our IP team.

White and Yellow Pages: What happens when computers take over?

It is a common place in fiction to illustrate that technology carries with it the risk of unexpected negatives. In our everyday activities this is illustrated by a Federal Court decision highlighting a developing gap in Australian copyright laws.

Technology is (generally) a force for good. Under the Copyright Act 1968 (Cth) (Act) the greater the contribution that a computer program or other man made device has made to the creation of a work, the less likely it is that work will be afforded copyright protection under the Act.

The irony is that modern computer technology has enabled users of that technology to create works that otherwise could not have been created, save for the existence of the technology. The fruits of such enterprises usually require significant capital outlay to produce and are generally of considerable commercial value. Yet these factors do not necessarily give rise to the creation of a copyright protected work. Examples of works in which there is likely to be a considerable contribution by a computer program are computer generated databases, computer generated images, ornamental designs, fractals, algorithmic art, technical drawings for buildings, furniture and industrial equipment.

The decision of Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 confirms that copyright law in Australia does not recognise the existence of copyright in works produced entirely or substantially by computer programs. The existence of this legislative lacuna in the present commercial world in which computer technology plays an integral role is concerning. However, this problem can only be resolved by legislative intervention. This occurred in the UK with amendments to the Copyright Designs and Patents Act, 1988. Until that occurs in Australia the test for determining whether copyright subsists in a work will remain as articulated in Telstra.

In that case, Gordon J was required to assess whether copyright subsisted in numerous versions of the ‘White Pages’ and ‘Yellow Pages’ (which had been distributed in various forms across a number of states and territories over a 9 year period), as a preliminary issue to the main proceedings. Her Honour found that copyright did not subsist in any of the versions of these titles in which the applicants had claimed copyright protection.

In her judgment, Gordon J criticised the applicants (Telstra Corporation Limited and Sensis Pty Ltd) for having ‘put the cart before the horse’, by glossing over the issue of ‘authorship’ on the way to attempting to establish that the titles were original literary works.

She emphasised that the identification of an author or authors was a fundamental prerequisite to establishing how a work has been created and reduced to a material form capable of copyright protection. Her Honour noted that in this case it was impossible to work out who had made what authorial contributions. She also noted that it was actually the sophisticated ‘Genesis’ computer system used by the applicants that had effectively created and automated most of the processes and rules applied in sorting and compiling data for the titles.

Her Honour decided that even if individual (human) contributors could have been identified, they would not be considered authors of ‘original’ works as their contributions:

  • lacked the necessary ‘independent intellectual effort’ required for the titles to be considered ‘original’ works;
  • were mainly anterior to the creation of the titles; and
  • could not be distinguished from one another.

In the course of her judgment Gordon J provided a useful and concise method for assessing whether a work can be considered ‘original’:

‘you must identify authors, and those authors must direct their contribution…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’ at [344].

Her Honour found that the applicants had simply failed to satisfy these conditions.

In our view, this decision is consistent with, and closely follows the judgments of, last year’s High Court decision of IceTV Pty Ltd v Nine Network Australia Pty Limited (2009) 254 ALR 386.

In order to succeed in clearing the ‘original works’ hurdle for any future copyright infringement claims in respect of databases, applicants will need to be able to show (at the very least) that they:

  • know who the authors of each database are;
  • can show how the author or authors have used ‘independent intellectual effort’ to create the database; and
  • have not placed undue reliance on computer software to assist in creating or updating the database.

Although this case might seem to make it more difficult for innovators, readers can take heart from the fact that copyright can exist and often is held to exist in the seemingly simple or banal expression of good ideas. For example, copyright has been found to exist in compilations of prize scales for poker machines1, trade catalogues for vehicle parts2 and even (less-sophisticated) computerised databases3.

Ironically, in this last example, the works in which copyright were held to exist were earlier versions of the same telephone directories the subject of the Telstra decision - the main differences being that humans had applied sufficient industry to establish authorship and originality, with far less assistance from sophisticated computer technology.

In our view, innovators should remain cognisant of the fact that despite the obvious utility associated with sophisticated technology, the courts are not prepared to provide copyright protection where people have not had a central role in reducing an idea to material form. Therefore, in order to ensure that copyright protection remains available to you, be careful to ensure that your technology is designed to assist and not replace you!

For more information please do not hesitate to contact:
Dan Butler on 9288 6714 /

1 Olympic Amusements Pty Ltd v Milwell Pty Ltd (1998) 81 FCR 403.

Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd [1999] FCA 1315.

3 Desktop Marketing Systems v Telstra Corporation Limited (2002) 119 FCR 491.

Disclaimer – the information contained in this publication does not constitute legal advice and should not be relied upon as such. You should seek legal advice in relation to any particular matter you may have before relying or acting on this information. The Lavan team are here to assist.