find the latest legal job
Banking Associate - 1-6PQE - Allen & Overy
Category: Banking and Finance Law | Location: United Kingdom
· Banking Associate - 1-6 PQE - Allen & Overy
View details
Academic Dean and Head of School of the TC Beirne School of Law
Category: Other | Location: Brisbane QLD 4000
· An outstanding opportunity · Provide educational, research and organisational leadership
View details
Senior Property Lawyer I Commercial Litigator
Category: Property Law | Location: Arncliffe NSW 2205
· Rapidly growing law firm, working with a highly experienced team in a high growth industry across all areas of property and strata law
View details
Senior Property Lawyer I Commercial Litigator
Category: Property Law | Location: All Sydney NSW
· Rapidly growing law firm, working with a highly experienced team in a high growth industry across all areas of property and strata law
View details
Senior Property Lawyer I Commercial Litigator
Category: Property Law | Location: Sydney NSW 2000
· Rapidly growing law firm, working with a highly experienced team in a high growth industry across all areas of property and strata law
View details
Telstra's directory monopoly under threat

Telstra's directory monopoly under threat

The Federal Court this week decided copyright does not subsist in the white and yellow pages. DLA Phillips Fox partner Scott Buchanan writes

The Federal Court this week decided copyright does not subsist in the white and yellow pages. DLA Phillips Fox partner Scott Buchanan writes for The New Lawyer.


 

The Full Federal Court's rejection of Telstra's claim that its valuable yellow and white pages directories are covered by copyright will prompt a re-think by owners of similar directories and database works regarding protection of their valuable database and informational works. 


More positively, it opens the door for content-seekers such as iPhone application developers who will profit from greater access to this information and the certainty afforded by this important decision.

 

New strategies (and maybe new laws) are required to properly protect investment in valuable database works. This new world of IP protection, commercialisation and enforcement will no doubt be a critical point of discussion for a number of Australian executives, as they consider the impact of this decision on their business and seek to sure up protection measures.

 

The unanimous decision means users of directories and databases now have greater, and potentially free, access to use growing volumes of content; works previously assumed to be protected by copyright and thus unavailable. New opportunities will arise for IT developers, such as the plethora of developers of iPhone applications and third generation media tools who will seek to ‘freely’ use the data from timetables, product catalogues, property listings, betting odds etc and incorporate them into their ‘apps’ and other products.

 

Enforcement of IP rights in informational works is now more difficult and success is now contingent upon businesses having developed and implemented carefully structured IP protection strategies. For example, greater emphasis will be required on protecting data through technological means, through contract and, where possible, via obligations and systems of confidentiality. 

 

Authorship and originality of expression are the new 'kings' of copyright protection for compilation style works.  Sweat of the brow and investment in the collection of information is no substitute for originality. In general, Australian copyright law is becoming increasingly similar to copyright laws in the US, paving the way for easier cross-border proliferation of applications and online tools by global developers.

 

Copyright will, in limited circumstances, still apply to informational style works but careful planning around the development of these works will be critical. The High Court's landmark decision last year in IceTV demonstrates the importance of originality being directed towards elements of expression of the information and this most recent Full Federal Court decision highlights the importance of identifying relevant human authors - something which Telstra failed to do in the context of its directories. 

 

With that all said, as is often the case with high profile court decisions, this most recent Telstra ruling provides welcome clarification for copyright owners, users and their advisors.  Importantly, the new certainty also removes another important barrier for the Commonwealth Government and other State and Territory Government seeking to make valuable informational works available under open licensing models. In this regard it will also cause a rethink of open source licensing terms applicable only to copyright based works.

 

Given the enormous financial value of the directories’ business, Telstra will be considering an appeal to the High Court.  Assuming leave to appeal is obtained (no certainty) then Telstra, reeling from the decisively unfavourable judgments of four separate Federal Court judges, would face a High Court which has recently expressed disdain for extending copyright protection to directory style works.  Telstra’s directories’ monopoly looks set to end.

 

Scott Buchanan

Partner - Intellectual Property & Technology, DLA Phillips Fox

Like this story? Read more:

Book commemorates diamond milestone for WA law society

QLS condemns actions of disgraced lawyer as ‘stain on the profession’

NSW proposes big justice reforms to target risk of reoffending

Telstra's directory monopoly under threat
lawyersweekly logo
Promoted content
Recommended by Spike Native Network
more from lawyers weekly
Gavel, legal book, criminal lawyers
Jan 19 2018
Three criminal lawyers named NSW magistrates
The NSW Attorney-General has announced the appointment of three new local court magistrates. ...
Warning
Jan 18 2018
Lawyer highlights ‘unintended consequences’ on SSM estate planning
A succession lawyer has warned that the right for same-sex couples to legally marry could have a sub...
drug rehabilitation services available in rural and remote communities
Jan 18 2018
ALS survey shines spotlight on insufficient rehabilitation services
A new survey posted by the Aboriginal Legal Service (NSW/ACT) has revealed an alarming insight into ...
APPOINTMENTS
Allens managing partner Richard Spurio, image courtesy Allens' website
Jun 21 2017
Promo season at Allens
A group of lawyers at Allens have received promotions across its PNG and Australian offices. ...
May 11 2017
Partner exits for in-house role
A Victorian lawyer has left the partnership of a national firm to start a new gig with state governm...
Esteban Gomez
May 11 2017
National firm recruits ‘major asset’
A national law firm has announced it has appointed a new corporate partner who brings over 15 years'...
opinion
Nicole Rich
May 16 2017
Access to justice for young transgender Australians
Reform is looming for the process that young transgender Australians and their families must current...
Geoff Roberson
May 11 2017
The lighter side of the law: when law and comedy collide
On the face of it, there doesn’t seem to be much that is amusing about the law, writes Geoff Rober...
Help
May 10 2017
Advocate’s immunity – without fear or without favour but not both
On 29 March 2017, the High Court handed down its decision in David Kendirjian v Eugene Lepore & ...