Middletons and Mallesons Stephen Jaques will face-off again as Telstra takes the fight over copyright for the White and Yellow Pages to the High Court.
Telstra has filed documents with the High Court indicating that it will appeal the decision of the Full Federal Court in December last year, which rejected the telco's appeal that the Yellow and White Pages should be protected by copyright.
Telstra initially brought action against the Phone Directories Company, which it alleged had breached the copyright of Sensis, a wholly-owned subsidiary of Telstra that publishes the White and Yellow Pages, for publishing excerpts of the White and Yellow Pages in its Local Directories publication.
In February 2010, Federal Court Justice Michelle Gordon ruled against Telstra, with a full-bench of the Federal Court unanimously rejecting Telstra's appeal with costs.
In the Reasons For Judgment in the appeal case, 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, "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".
The head of the Innovations group at Middletons, Tony Watson, has acted for the Phone Directories Company over the course of this matter, and has been retained to fight Telstra's application to seek leave to appeal to the High Court. Similarly, Mallesons trade mark and copyright litigation partner Natalie Hickey has been retained by Telstra.
Speaking to Lawyers Weekly, Watson said that the High Court could seek to hear the appeal in order to provide a more definitive stance on copyright issues in this matter as he believes it is still an area "where the law is unclear".
In particular, Watson cites the Telstra v Desktop Marketing Systems Full Federal Court ruling in 2002 which found that Telstra did own copyright in the Yellow and White Pages after finding there was substantial labour and expense incurred in putting the compilations together. However, Watson said that the High Court's decision in 2009 to allow an appeal by IceTV against the Nine Network, with the broadcaster claiming that IceTV's electronic programme guide infringed copyright of its television schedule, threw into doubt the question of whether copyright exists when there is negligible creative or intellectual input in the compilation of databases.
"The High Court might decide to hear the appeal in an attempt to make the law clear in this area once and for all," Watson said. "However, if it does get to the High Court, Telstra will be up against it."
In rejecting Telstra's appeal in the Phone Directories case, the Full Federal Court acknowledged the large amount of time and labour that goes into producing the Yellow and White Pages, but found its authors were not applying "independent intellectual effort" to warrant it being protected by copyright.