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.
Partner - Intellectual Property & Technology, DLA Phillips Fox