Case: Victoria Park Racing and Recreation Grounds Co Ltd v Taylor [1937] HCA 45 ; (1937) 58 CLR 479
Outcome: cited
Nine submits that, were it to create and publish a daily schedule consisting only of time and title information, that would be a copyright protected compilation under the Act. However, that is not what the Weekly Schedule is. The Act provides for the subsistence of copyright in compilations of information, not mere information per se. The fact that copyright may subsist in the Weekly Schedule as a whole does not mean that it attaches to the individual facts referred to or the component parts therein ( Victoria Park Racing and Recreation Grounds Co Ltd v Taylor [1937] HCA 45 ; (1937) 58 CLR 479 per Latham CJ at 498 and Dixon J at 511). 42 Nine accepts that a proper identification of the copyright work takes account of the way in which the copyright owner packages or presents its work. Nine submits, however, that the identification must take account of the way in which Nine knows the work is going to be delivered to the consumer. Nine relies upon the fact that the published Aggregated Guides, in print and electronically, discard or hide synopses to varying degrees, while the time and title information always appears. It submits that its intention is that the Weekly Schedule ' be published [by the Aggregators] with primary emphasis on the time and title information, and on a daily basis, especially in the digital environment '. However, the fact that a reader may make use of a part of the compilation does not of itself change the nature of the copyright which subsists in the Weekly Schedule an original literary work. That compilation, as supplied to the Aggregators, is not limited to time and title. Nor is it limited to just one day of the relevant broadcast week. 43 Each of the sets of information contained in the Weekly Schedule, including the days in the broadcast week, the additional program information and the synopses, are a part of that compilation. The purpose of the Weekly Schedule is to impart the totality of that information to the Aggregators and, in turn, the public. Nine's operational activities are, as Ms Wieland agreed, ' geared to [a] week to week basis '. The Weekly Schedule, built up each week by Mr Healy and Ms Wieland, inevitably includes the synopses and the additional program information. These, in turn, are an integral part of the relationship between the information in and the design of the Weekly Schedule. The Weekly Schedule is the only relevant work to leave Nine. It is the work sent to the Aggregators. It is, with all of the information it includes, the way in which Nine, for good commercial reasons, presents the collocation of information. The totality of the information there included is necessary because it is required by the Aggregators and is also provided to the Aggregators by Nine's competitors for the purposes of the Aggregated Guides that are made available to the public. 178 Infringement is not necessarily avoided where material is simply checked with the data subject for verification or where the arrangement is different ( Waterlow Publishers Ltd v Rose (1989) 17 IPR 493 cited in Desktop at [346] per Sackville J). However, the concept that the taking of a single line of a directory for the purpose of saving labour and trouble amounts to an infringement was a ' famous but excessive admonition ' ( Desktop at [405] per Sackville J referring to Kelly at 701 2 per Sir W Page Wood VC). The fact that copyright may exist in a compilation does not mean that it exists in the individual facts referred to therein ( Victoria Park at 498 per Latham CJ and at 511 per Dixon J). The taking of line of a directory will not be sufficient for infringement if it does not constitute a substantial part (s 14(1) of the Act; Waterlow Directories Ltd v Reed Information Services Ltd (1990) 20 IPR 69 per Aldous J at 73, cited in Desktop at [347] per Sackville J). However, copyright in a compilation may be infringed by appropriating ' an undue amount of the material, although the language employed be different or the order of the material be altered ' (Laddie H, Prescott P, Vitoria M, Speck A and Lane L, The Modern Law of Copyright and Designs (3 rd ed, 2000) at paras 3.88 and 3.90, cited in Desktop at [375] per Sackville J). 182 Where the manner of presentation is the basis for the attraction of copyright, it may be that a presentation of the same information in different form would not infringe ( Victoria Park per Dixon J at 511). In such circumstances there may not have been a taking of a "substantial part", which is assessed by reference to the quantity and the quality of what is taken and the inter-relationship between them ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 87 FCR 415 at [70] per Lindgren J, cited in Gold Peg at [170]). It is a question of fact and degree (Crennan J in Gold Peg at [190]; also emphasised by McHugh and Kirby JJ in dismissing an application for special leave to appeal from the Full Court in Network Ten Pty Limited v TCN Channel Nine Pty Limited [2005] HCATrans 842). A defendant may rework the work of a plaintiff, capturing the ideas used or facts referred to but in a way that does not infringe because it is not a substantial reproduction. It may constitute a new original work. The taking of a substantial part of a copyright work will vary depending on the nature of the work and the degree of originality of the original work ( Skybase at 532 per Hill J, with whom French J agreed). The ' originality of that part of the work taken by the alleged infringer ' is critical ( Desktop at [409] per Sackville J). 184 The underlying principle is that the law of copyright does not give an exclusive right to state or describe particular facts ( Victoria Park at 498 per Latham CJ). Substantial reproduction and causal connection are separate and cumulative requirements for a finding of infringement ( Desktop at [399] per Sackville J). If a causal connection is shown, it is then necessary to assess whether the allegedly infringing work can fairly be said to be so sufficiently similar to the first that it is but a reproduction ( Skybase at 533 per Hill J, with whom French J agreed). While copying is an essential element in providing the requisite causal connection between the copyright work and the alleged infringement, copying does not, of itself, determine whether or not there has been the taking of a substantial part. Not every act of copying is an infringement of copyright. It is also necessary to establish the appropriate subject matter for copyright, what is original and whether there has been a taking of a substantial part ( Network Ten [2004] HCA 14 ; 218 CLR 273 at [14] [17] per McHugh A-CJ, Gummow and Hayne JJ). 187 If each "sliver" or element of the Nine compilation is entitled to copyright protection, Ice accepts that it cannot defend these proceedings. Ice submits that a piece of information about, for example, a change in episode sequence is not a copyright protected work but ' at best, a tiny star in the galaxy of a compilation '. This accords with Victoria Park . Nine accepts that a single "sliver" of information, such as the programming over five days at 8 pm, does not amount to a substantial part of the Weekly Schedule nor of the Aggregated Guides. 188 The Aggregated Guides publish a substantial part of the information set out in the Weekly Schedule. Nine retains copyright in the Weekly Schedule. The skill and labour invested in a compilation may continue to be protected even where that compilation is integrated into or extended to become a different compilation which is itself protected by copyright. Nine asserts that the Aggregators' publication is as a ' sub-publisher ' of the Weekly Schedule, authorised by Nine. Nine contends that, in updating its guide by reference to the Aggregated Guides, Ice is taking a substantial part of its copyright work. 189 The IceGuide does not replicate the content or form of the Aggregated Guides. The differences in content are primarily in the additional program information and the synopses. Those sets of information from the Weekly Schedule are not necessarily replicated in the Aggregated Guides. For example, synopses are edited and may be shortened. Importantly, the Aggregated Guides also contain information from the Late Change Notices. That information is not included in the Weekly Schedule sent to the Aggregators. The form and arrangement of the IceGuide is different to that of the Aggregated Guides and different, in turn, to the form and arrangement of the Weekly Schedule. Accordingly, neither the content nor the format of the Weekly Schedule is replicated in the IceGuide.