In a blow to Telstra and its legal counsel, Mallesons Stephen Jaques, the Federal Court has ruled that the Yellow and White Pages are not protected by copyright.
Telstra argued before a full-bench of the Federal Court that the "Local Directories" phone books distributed in Queensland, New South Wales and the Northern Territory by the Phone Directories Company breached the copyright of Sensis, a wholly owned subsidiary of Telstra that published the White and Yellow Pages. Local Directories re-produces excerpts from both listings.
Telstra lost the initial case before Justice Michelle Gordon in February this year, with its appeal being heard before a full-bench of the Federal Court.
Middletons acted for the Phone Directories Company, with Melbourne based partner Tony Watson leading his firm's team. Mallesons Stephen Jaques acted for its long-time client Telstra, with trade mark and copyright litigation partner Natalie Hickey leading the team.
In a unanimous decision, the full-bench dismissed Telstra's appeal with costs.
In the Reasons For Judgment, Justice David Yates found that the Yellow and White Pages were not original works for copyright purposes.
He found that due to the "overwhelming" contribution of computer programs to the Yellow and White Pages, that "none of the compilations can be properly characterised, overall, as a work that originates from an author or authors, even though elements of authorial contribution are present".
While the Federal Court acknowledged the large amount of time and labour that goes into producing the Yellow and White Pages, it found its authors were not applying "independent intellectual effort" to warrant its authors, whom the Court found were not able to be properly indentified by Telstra, from being protected by copyright.
Speaking to Lawyers Weekly, victorious Middletons partner Tony Watson said that the Federal Parliament might need to enact legislation to protect databases.
"This is one of the most important judgments in my legal career," said Watson, who successfully acted for Darrell Lea in the famous intellectual property dispute over the use of the colour purple between the Australian company and Cadbury's.
Hickey was also involved in that matter, as she was part of the Mallesons team advising Cadbury's.
"The Federal Court has said that for copyright to exist in published works there has to be a degree of intellectual effort, and the publication of large amounts of data in a set format is not a work of authorship and therefore, does not attract copyright," Watson added.
Watson said it was a hard fought case, and despite his client facing "the combined might and resources of Telstra and Mallesons", he was confident the appeal would be dismissed.
This is the second time in a few months that Mallesons has acted for Telstra in a high profile Federal Court case that has had an adverse result for the telco.
In late July, the Federal Court fined Telstra just under $19 million after it admitted it had breached the Trade Practices Act and Telecommunications Act after it denied broadband competitors access to its telephone exchanges.
The Australian Competition and Consumer Commission had sought a fine of $34 million, with Telstra arguing for a penalty of between $3-5 million.