No copyright protection for telephone companies - Telstra v Phone Directories Company

It appears that 2010 is shaping up to be a very important year for Australian copyright law1 with the Federal Court of Australia delivering another landmark decision in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44. In this case the Court held that copyright does not subsist in Yellow Pages and White Pages telephone directories.

Justice Gordon followed the High Court's decision in IceTV2 and found that copyright could not subsist because the author of each of the directories had not been (and could not be) identified. In particular, the directories were created through a computer automated system which did not allow any independent intellectual contributions from human contributors.

This decision is a significant departure from the Full Federal Court's 2002 decision in Desktop Marketing3 where it held that copyright subsisted in Telstra's directories and that the copyright had been infringed. It also clearly indicates that the process started by IceTV of bringing Australian law on copyright protection of databases into line with the United States' and the European Union's position, is continuing.

The Facts

Telstra and its wholly owned directories and advertising arm Sensis publish their White Pages and the Yellow Pages directories (Directories) throughout many regions in each of the States and Territories of Australia.

The directory business is big business in Australia. In the 2006 financial year, the Directories generated more than 80% of Sensis' profits, which translates into revenue of more than $1 billion for the Yellow Pages and $300 million for the White Pages. In 2007, Telstra and Sensis (collectively the Applicants) commenced proceedings against a competitor, Phone Directories Company. They alleged, among other things, that copyright in each of the Directories had been infringed. The Court hived off the issue of subsistence of copyright in the Directories to be determined first.

The Applicants adduced a mammoth 91 affidavits from witnesses in support of their claim that copyright subsisted in the Directories. While the Applicants submitted that they were not required to identify a particular 'author' in order to prove subsistence, they said that if this was required then these 91 individuals were the authors.

This evidence revealed that the production of a White Pages or Yellow Pages directory was mostly automated and involved the following steps:

Customer information is obtained from a number of sources to compile listing information. Such sources can include data from other telecommunications carriers, the previous year's directory and direct contact from customers. From 2003, this information has been listed in a computer system known as Genesis. In many cases this occurs automatically, in other cases it occurs manually. As the listing information is entered into a database automatic checks are conducted by Genesis to ensure that the information is complete...