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What do you need to do?Be aware that significant dangers exist when using information from a compilation copyright.
James Lawrence
Senior Associate
Maurice Gonsalves
Partner
T +61 2 9296 2166
Sydney
Maurice Gonsalves
Melbourne
Natalie Hickey
Brisbane
John Swinson
The Full Court of the Federal Court has overturned the first instance decision of Bennett J in Nine Network Australia Pty Limited v IceTV Pty Limited [2008] FCAFC 71, finding that IceTV infringed compilation copyright in the weekly television schedules prepared by Nine in reproducing program titles and times in its electronic programming guide (EPG). This decision signals a warning against the use of information contained in a compilation copyright work.
Nine issued copyright infringement proceedings against IceTV in May 2006 alleging that IceTV’s subscription-based EPGs infringed copyright in Nine’s weekly television schedules. At first instance, Justice Bennett found that copyright subsisted in each weekly schedule as a compilation, but held that IceTV had not infringed Nine’s copyright, primarily because the program titles and times were not a “substantial part” of Nine’s copyright work. In reaching her decision, Her Honour affirmed the principle that the question of “substantial part” is to be decided according to the quality, rather than the quantity, of what is taken.
However, ultimately she found that Nine’s skill and labour had not been primarily expended for the purpose of creating the literary work the subject of the copyright, but rather for the purpose of selecting programs to maximise viewing audiences. Accordingly, Bennett J held that IceTV had not copied a substantial part of Nine’s copyright work merely by taking the time and title information prepared by Nine and incorporating that into its EPG.
On appeal, the Full Court found that Bennett J had erred by distinguishing between the exercise of skill and labour in selecting program times and the modest skill and labour involved in tabulating the results. Importantly, the Full Court held that “the skill and labour expended by Nine were part of a single process leading to the creation of the copyright work as the written record of Nine’s programming decisions and the associated program information”. On that basis, the Full Court held that the time and title information used by IceTV did amount to a substantial part of Nine’s compilation copyright work, because they were a “crucial element” and “the centrepiece” of Nine’s compilation work and the outcome of a great deal of skill and labour on the part of Nine through important programming decisions.
The Court made it clear that a small quantity can still form a substantial part of the work and concluded that “Courts appear to be especially willing to make such a finding where the alleged infringer has systematically taken material, albeit in small quantities, on a regular basis”.
The Full Court regarded as irrelevant to the question of infringement the fact that IceTV had invested much ingenuity and devoted much labour to its EPG product. It held that this clearly could not justify its reproduction of a substantial part of Nine’s weekly schedules.
A number of important points arise from the Full Court’s decision:
- significant dangers exist when using information from a compilation copyright
- small quantities of information may constitute a significant part of a compilation work, and
- a person who reproduces a substantial part of another’s work will still infringe even if they have invested time and ingenuity in creating a new product.