A Kiwi Questions the Australian Yellow Pages decision

POSTED BY Rick Shera
22 December 2010

posted in l@w.geek.nz | Intellectual Property | Copyright | Cloud | Trademarks



I've just got around to reading the Federal Court of Australia's decision in Telstra Corporation Limited v Phone Directories Company Pty Limited [2010] FCAFC 149.

The case is important here in New Zealand for what it says about compilations since our law is similar in many ways. It is also noteworthy because our own Yellow Pages provider, Yellow Pages Group is embroiled in its own long running battle with an Australian firm, yellowbook.com.au, which is alleged to have scraped YPG's data to produce its own New Zealand directories.  That case goes on appeal to the New Zealand Court of Appeal (our penultimate appellate authority) in March 2011.

The Telstra decision's analysis of authorship rights, when there are multiple authors and the identity of some is unknown, is interesting.  However, the issue I think has more far-reaching impact, and which seems to have become central to the decision, is whether automatically generated compilations can attract copyright protection (although I note from an interlocutory decision in the New Zealand YPG case that automation does not appear to be an issue in that case).

In Telstra, it was held that the creation of Telstra's Yellow Pages (and White pages) directories was effected by use of Telstra's Genesis Computer System, which took data held in databases and created the directories according to various rules. It was therefore held (at paragraph 89 Chief Justice Keane's analysis, for example):

The compilation of the directories was overwhelmingly the work of the Genesis Computer System or its predecessors. The selection of data and its arrangement in the form presented in each directory occurred only at "the book extract” or "book production” process. The compilations which emerged from the operation of the computer system do not originate from an individual or group of individuals. Indeed, none of the individuals who contributed to the production of the directories had any conception of the actual form in which they were finally expressed.

This raises a few questions in my view:

  1. Could it not be said that the formulation of the rules and inputting of the parameters which allow the software to then create the directories carries sufficient skill, creativity and labour to enable the ultimate creation to qualify for copyright protection?  Those rules and parameters do not just arise from no-where.  They must have been carefully thought through and implemented over time by individuals, to meet design and structure aims for the directories as a whole.
  2. Isn't the computer program just the modern equivalent of the printing press, which, ironically, was the prompt for the Statute of Anne from which all modern copyright laws have originated?  It is a tool which converts an arrangement of data into a fixed form.  It would be ludicrous to suggest that a newspaper does not attract copyright because it is created by the automated process of a printing press taking paper and ink in at one end and producing the newspaper at the other.  Why then do we treat a more complex automation by way of a computer program differently?
  3. In New Zealand we have specific provisions related to computer generated works.  Section 2 of our Copyright Act defines a work as computer generated if it is generated by computer in circumstances such that there is no human author of the work. Various sections then envisage that computer generated works will attract copyright protection.  For example, section 22(2) provides - If the work is computer-generated, copyright expires at the end of the period of 50 years from the end of the calendar year in which the work is made.  It seems to me therefore that even if my questions in 1 and 2 above are dismissed, New Zealand's law on the automation point is quite different.  This may well be what Bruce Cotterill, YPG's CEO, was referring to when asked for comment on the Telstra decision.

I'd be glad if that was the case - that New Zealand law does not disallow copyright protection for works automatically generated by computer.  That may well be the case under Australian law, although I'd be interested in any of my Australian colleagues' views on my questions.  But, to me, that fails to recognise the increasing use of computers to generate all sorts of works, both utilitarian and artistic. More importantly, it ignores the fact that computers and application software are worthless without the skill and labour of the person who uses them to output something  - it is that skill and labour that should be the determinant.

And, for the future, what of the creations of artificially intelligent computers?

UPDATE: 14 January 2011

As expected, the Sydney Morning Herald reports Telstra has appealed to the High Court (Australia's highest court).

POSTED BY Rick Shera
22 December 2010

posted in l@w.geek.nzIntellectual PropertyCopyrightCloudTrademarks



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