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New Zealand Law Students' Journal |
Last Updated: 27 May 2014
FACING THE FACTS:
AN ANALYSIS OF ORIGINALITY FOR
THE PURPOSES OF COPYRIGHT SUBSISTENCE IN COMPILATIONS OF FACTS
WALKER MACMURDO*
Introduction
The Copyright Act 1994 requires works to be original for copyright to subsist
in them. 1 However, the statute does not wholly define
“originality”, and two approaches have developed in the common
law
to defining it. The first is the “sweat of the brow” test, which
developed over the course of the 20th century in
England. The second is the
authorship test, which was developed recently by the High Court of
Australia. These two approaches
have important consequences for subsistence of
copyright in compilations of factual information such as phone directories and
maps.
The New Zealand Court of Appeal has recently heard the appeal of YPG
IP v Yellowbook.com.au, a case which will be considering which approach
to originality to apply in New Zealand.2
This article analyses the approaches courts and legislators have taken to the concept of originality for the purpose of copyright subsistence in compilations of facts in New Zealand and internationally. Part A describes the regime for copyright subsistence established by the Copyright Act 1994. This article then discusses the interpretation of originality under the “sweat of the brow” test. It examines how it has been applied in general New Zealand by the Supreme Court in Henkel v Holdfast New Zealand3 and particularly to compilations of facts by the
* LLB/BA(Hons) (Major in Philosophy) (in progress). The author wishes to thank Maeve Payne-Harker for supporting him while writing this article.
1 Copyright Act 1994, s 14(1).
2 YPG IP Ltd v Yellowbook.com.au Pty Ltd HC Auckland CIV 2007-404-2839,
31 May 2010. Similar proceedings have commenced in Finda Ltd v Image Marketing Group Ltd HC Auckland CIV-2009-404-7658, 14 December 2009 but have not developed past the initial stages of litigation.
3 Henkel KgaA v Holdfast New Zealand Ltd [2006] NZSC 102, [2007] 1 NZLR
577.
Court of Appeal in University of Waikato v Benchmarking Services
Ltd.4 Part B describes the authorship test for copyright
subsistence as developed by the High Court of Australia in IceTV v Nine
Network5 and applied to compilations of facts in Telstra
v Phone Directories Company6. Part C, discusses the outcomes
of the different approaches the Court of Appeal could take in the appeal of
YPG IP v Yellowbook.com.au. This article then discuss whether the
authorship test could be applied in New Zealand and which approach to
originality ought to
be applied in New Zealand.
A. Originality, Compilations and Copyright in New Zealand
1. The Copyright Act 1994
The Copyright Act 1994 (Copyright Act) creates a property right that
subsists in creative works. For copyright to subsist in a work
it must be
original7 and fall under one of the descriptions of works in s 14(1)
of the Act.8 It must not be a copy of another work or infringe
copyright in another work.9 The work must exist in a physical,
material form, such as in writing.10 If copyright subsists in a
work, it may be enforced if it is breached by someone who does an act restricted
by copyright without the
copyright owner’s license. The breach must be
with regard to the work as a whole or a substantial part of the work.11
The most relevant form of infringement for the purpose of this
opinion is copying without a licence.12 The rights owner may seek
remedies for the harm caused by the breach.13
Section 2 of the Copyright Act establishes that a literary work
includes
4 University of Waikato v Benchmarking Services Ltd [2004] NZCA 90.
5 IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14, [2009] 239
CLR 458.
7 Copyright Act 1994, s 14(1).
8 Section 14(1)(a)–(e).
9 Section 14(2).
10 Section 15(1).
11 Section 29(2). See pt 2 for a full list of restricted acts.
12 Section 30.
13 Part 6.
“a table or compilation”.14 “Compilation” is defined as including “a compilation of data other than works or parts of works”. 15
Compilations of facts are compilations of information such as phone
numbers, time tables or addresses.
2. The concept of originality in copyright law and the sweat of the brow test of originality
Although s 14(1) Copyright Act establishes that a work must be
“original” for copyright to subsist
in it, what this
means is not sufficiently defined in the statute. 16 The only
guidance provided is s 14(2), which establishes that a work is not original
if it is a copy of another work or if it
infringes copyright in another
work.17
Common law has elucidated the standard. Up until recently the “sweat of
the brow” test of originality has been used in
England, Australia and New
Zealand to determine whether a work is original. If a sufficient amount of
skill and labour has been
invested in a work, it will be an original
work.18 The “sweat of the brow” test considers the
underlying rationale of copyright law being to protect the skill and
labour, and thereby the monetary investment, put into creating the
work.19
Copyright protects the expression of an idea in a creative work, but it
cannot protect an idea in itself.20 Laddie J explained this concept
in IPC Media Ltd v Highbury Leisure Publishing Ltd:21
The law of copyright has never gone as far as to protect general themes, styles or ideas. Monet, like those before him, acquired no right to prevent others from painting flowers or even water lilies or, to take an example referred to by Mr Howe, Georges Seurat would not have obtained, through copyright, the right to prevent others from
14 Section 2.
15 Section 2(c).
16 Section 14(1).
17 Section 14(2).
18 Kevin Garnett, Gillian Davies and Gwilym Harbottle Copinger and Skone
James on Copyright (16th ed, Sweet & Maxwell, London, 2011) at [3-129].
19 Henkel KgaA v Holdfast New Zealand Ltd, above n 3, at [41].
20 Garnett, Davies and Harbottle, above n 18, at [3-18].
21 IPC Media Ltd v Highbury Leisure Publishing Ltd
[2004] EWHC 2985, [2005] FSR 20 at [14].
painting in a pointillist style. Even someone who is inspired by Monet to
paint water lilies or by Seurat to paint using coloured
dots would not
infringe copyright. Such general concepts are not put out of bounds to
others by the law of copyright.
The purpose of copyright is to prevent the unauthorised copying of the
material forms of certain types of creative works resulting
from skill
and labour.22 However, it does not protect the facts, ideas or
thoughts expressed in the work. The test for originality is not concerned with
the
originality of the ideas contained in a work itself, but whether the
expression of the idea in that work is original.23 The
“sweat of the brow” test therefore does not impose an objective
standard of novelty, utility, artistic merit or
quality.24 As long as
a sufficient level of skill and labour went into producing a work, it will be
afforded copyright protection.25
A work must be original in the sense that it originated from the labour of
its author.26 The author of a work must imbue more than a negligible
amount of skill and labour into the work to make it theirs.27 There
is no specific quantum of labour and skill required for originality; this
is a question of fact and degree to be determined
on the merits of each
case.28 Ricketson described this test as “inevitably
involving a mixture of both mental and physical operations on the part
of the author: decisions, on the one hand, as to how the idea or subject of
the work is to be expressed, and the execution of
those decisions, on the
other.”29
The level of skill and labour put into the work as a whole is to be taken into account when determining originality.30 A distinction is not to be made between the skill and labour put into compiling and organising
22 Garnett, Davies and Harbottle, above n 18, at [3-129].
23 At [3-129].
24 At [3-129].
25 At [3-129].
26 At [3-130].
27 G. A. Cramp & Sons Ltd v Smythson Ltd [1944] AC 329 at [337]–[338].
28 Garnett, Davies and Harbottle, above n 18, at [130].
29 Staniforth Ricketson and Christopher Creswell The Law of Intellectual Property: Copyright, Designs & Confidential Information (looseleaf ed, Lawbook Co, Sydney, 2002) at [7.60].
30 Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 (HL) at
[469]–[470].
the information in the work and the skill and labour put into presenting the
material form of the work. 31 The House of Lords in
Ladbroke (Football) Ltd v William Hill (Football) Ltd held that
skill and labour should not be considered separately for two reasons.
32 First, the purpose for accumulating the information is to
reduce it to material form for the use in the copyrighted material.33
Secondly, drawing a line between the skill and labour put into
collecting and organising information and the skill
and labour put into the
presentation of that material will very often be difficult.34
Very often only minimal effort will be put into setting those ideas
down on paper.35
The practical consequence of the “sweat of the brow” test is
that as long as a modicum of effort has been put into creating
a work, either by
way of collection and arrangement of material or by way of intellectual effort,
copyright will subsist in the work.
This makes the “sweat of the
brow” test very wide, only excluding extreme cases where skill
and labour are
negligible.36
3. Originality and compilations of facts
In cases involving compilations of facts, the requirement of originality is
usually satisfied by the skill and labour exercised
in collecting,
ordering and summarising the facts rather than the skill and labour in the
arrangement of the material form
of the work.37 Ricketson notes
that in these cases it is difficult to distinguish the authors’ ideas
from the data itself because the material
form of the work is often dictated by
the nature of the facts.38
This is not a problem. The “sweat of the brow” test does not
simply
31 At [469]–[470].
32 At [469]–[470].
33 At [469]–[470].
34 At [469]–[470].
35 At [469]–[470].
36 See G A Cramp & Sons Ltd v Smythson Ltd, above n 27, for an example. The House of Lords found that merely arranging conversion tables in a diary was not a sufficient amount of labour to make the diary original for the purpose of copyright subsistence.
37 Ricketson and Creswell, above n 29, at [7.60].
38 At [7.60].
protect the skill and labour of the author in presenting the factual
information.39 Rather, the value of many compilations of facts is
that someone has spent time, money and effort in compiling the raw data that
is the basis of the compilation.40 The law protects the skill
and effort put into that work because it is valuable to incentivize publication
of compilations such
as phone directories. In applying the “sweat of the
brow” test, common law courts have had little problem with affording
copyright protection to compilations of facts.41
4. Application of the sweat of the brow test in New Zealand
The “sweat of the brow” test has recently been discussed by the
New Zealand Supreme Court. In Henkel v Holdfast New Zealand,
Henkel, a German adhesives manufacturer, sued Holdfast, a New
Zealand adhesives manufacturer, for infringing
copyright in the packaging
of one of their products. They alleged that Holdfast substantially copied the
design they used for
that packaging.42 Henkel’s claim failed
on an evidentiary issue and the Supreme Court held that their appeal had to be
dismissed. 43 However, in obiter dictum Tipping J decided
to summarize the substantial law which would have been used
to
determine the case had it been correctly pleaded.44
Tipping J affirmed the requirements of the “sweat of the brow”
test discussed above.45 He noted that a work must originate from its
author for copyright to subsist in it and it must be the product of more than
minimal
skill and labour. 46 He also noted that there need
not be
39 Garnett, Davies and Harbottle, above n 18, at [7-47].
40 At [7-47].
41 At [3-147]. The authors note that several types of compilations of facts have been protected by various courts, including trade directories (Morris v Ashbee [1868] UKLawRpEq 183; (1868) LR 7 Eq 34), telephone directories (Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 612; (2001) 51 IPR 257) and television programme guides (Independent Television Productions Ltd v Time Out Ltd [1984] FSR 64).
42 Henkel KgaA v Holdfast New Zealand Ltd, above n 3, at [1]–[2].
43 At [4]–[6]. Henkel’s argument for infringement was not available to them because of the manner in which they pleaded their case in the High Court.
44 At [33].
45 At [35]–[37].
46 At [35]–[37].
anything novel in a work for copyright to subsist in it. 47
In cases involving arrangement of a number of features which are not
original in themselves, the work’s originality can lie
in the manner in
which those features have been arranged. 48 He established that
the purpose of copyright is to “recognize and protect the skill and
labour of the author of the copyright
work”.49 This affirms
the underlying rationale of the “sweat of the brow” test as
discussed above; being the protection of the
skill and labour invested in a
work.
In regard to infringement, the greater the originality of a work the wider
the scope of protection copyright will afford that work.50 By this,
his Honour means that a work that has a minimal level of creativity will not be
breached by similar works that
deviate from it. Substantial
reproduction will only occur when the work is entirely or almost
entirely copied. On
the other hand, where a large amount of skill and labour has
been put into crafting a work, other works will have to be substantially
different to avoid infringement.
5. Does copyright subsist in compilations of facts in New
Zealand?
The New Zealand Court of Appeal considered whether compilations of facts are
original for the purpose of copyright subsistence in
University of Waikato v
Benchmarking Services Ltd.51 The University of Waikato had
published the results of an annual survey which compiled financial information
about New Zealand
businesses. They made it available to businesses as a tool to
compare their performance against industry standards.52 Benchmarking
had published a brochure which contained information copied from the
survey. 53 The University of Waikato argued that copyright
subsisted in the survey results, and that Benchmarking had breached it by
reproducing
substantial parts of the
47 At [35]–[37].
48 At [40].
49 At [41].
50 At [38].
51 University of Waikato v Benchmarking Services Ltd, above n 4.
52 At [2].
53 At [6].
results.54
The relevant issue on appeal was whether the University of Waikato’s surveys were original works for the purpose of s 14(1) of the Copyright Act. Randerson J stated that it has been “well established” that copyright can subsist in “publications such as dictionaries, directories, maps, or in the mere preparation of lists” (compilations of facts).55
Determining copyright subsistence is a matter of whether “sufficient time, skill, labour, or judgment has been expended in producing the work”.56 The publisher cannot claim copyright to the information in the compilation if they are not the author of the facts in the compilation.57
The compiler cannot claim copyright the raw information in the
compilation either.58 Rather, if copyright subsists in the work it
subsists in the compilation as a whole:59
It must be shown that a sufficient degree of labour, skill, and judgment is
involved in preparing the compilation. That may arise,
for example, through the
manner in which the information is selected for inclusion in the publication,
the format or presentation
of the data or, relevantly to the present case, the
selection and calculation of the relevant ratios, percentiles, averages, and
other details.
Randerson J thereby explicitly approved the “sweat of the brow”
test. The Court found that copyright subsisted
in the survey as
the arrangement and presentation of the information was done with a
sufficient amount of skill
and labour.60 The respondent had
infringed the University of Waikato’s copyright by copying their
arrangement of
54 At [10]–[11].
55 At [35].
56 At [27].
57 At [36]. This point is difficult to understand. His Honour may be referring to copyright in compilations of non-factual works such as collections of short stories. I cannot conceptualize how someone could be an author of a fact. For example, it does not seem to make sense to say “X is the author of the fact that Mount Everest is the tallest mountain in the world”.
58 At [36].
59 At [36].
60 At [42]–[44].
the information.61
6. Challenges to the current approach: YP G I P v
Ye l l o w b o o k . Co m. A u and Te l s t r a v P h o n e
D i r e c t o r i e s Co mp a n y
The Court of Appeal has heard and will soon release their judgment on the
appeal of the High Court proceedings of YPG IP Ltd v Yellowbook.Com.Au Pty
Ltd, which will revisit the status of copyright in compilations of
facts.62 YPG IP owns the rights to the “Yellow Pages”
phone directory in New Zealand. 63 The defendant owns two New
Zealand-based websites that provide online business directories.64
YPG IP alleges that the defendant infringed their copyright by
substantially copying parts of their directories.65 The defendant
argues that copyright does not subsist in the phone directories as they are not
original works, because skill and labour
was not exercised in creating
them.66
Last year, the Federal Court of Australia decided Telstra Corporation Ltd
v Phone Directories Company Pty Ltd. The Court held that copyright cannot
subsist in works without an identifiable author, or where the material form of
a work is not
sufficiently original.67 This decision was based on
the reasoning in the High Court of Australia’s decision in IceTV v Nine
Network, which established a new underlying conception of originality
that placed emphasis on the role of the author and the importance
of the
material form of a work.68
Many compilations are organised by computer programs and teams of employees, not necessarily created by an identifiable author. Further,
61 At [65]–[67].
62 YPG IP Ltd v Yellowbook.com.au Pty Ltd, above n 2. There has not been any substantial discussion of copyright law in the High Court in this case. All proceedings so far have dealt with technical issues. See YPG IP Ltd v Yellowbook.com.au Pty Ltd HC Auckland CIV-2007-404-002839, Jun 29,
2007; YPG IP Ltd v Yellowbook.com.au Pty Ltd (2008) 8 NZBLC 102l; YPG IP Ltd v Yellowbook.com.au Pty Ltd HC Auckland CIV-2007-404-002839, Jun 13,
2008.
63 At [1].
64 At [1].
65 At [2].
66 At [2].
67 Telstra Corporation Ltd v Phone Directories Company Pty Ltd, above n 6.
68 IceTV Pty Ltd v Nine Network Australia Pty Ltd,
above n 5.
the skill and labour put into certain types of compilations often subsists
entirely in the preparatory stages of the work, with very
little original
effort put into the material form of the work.69 If this
approach is applied in New Zealand, the Court of Appeal may hold that
no copyright subsists in YPG IP’s
phone directories.
B. The Authorship Test of Originality in Copyright Works
1. Ic e T V v N i n e N e t w o rk : authorship and originality
The High Court of Australia reviewed the test for infringement of copyright
in IceTV v Nine Network Australia. Nine Network acquired, selected
and scheduled programmes to be broadcasted on their free-to- air television
channel. 70 They used a database on their computer network to
schedule their programmes and would then supply third parties with
a
weekly schedule of these programmes.71 The schedule included
airing times, dates, titles and other information including summaries of the
programmes.72 IceTV provided an online television programme guide
available via subscription that displayed the airing time, date and titles
of programmes to be broadcasted on free-to-air television stations.73
In preparing these guides, IceTV would predict which programmes
would air based on Nine Network’s schedule from the previous
week.
74 Nine Network alleged that IceTV infringed copyright in
their programme guides by reproducing a substantial part of them.75
IceTV accepted that copyright subsisted in the guides but denied
infringement.76 They argued that the time, date and programme title
information was not a substantial part of the originality of Nine
Network’s
guides and therefore would not infringe copyright
if copied.77 The issue facing the High Court was whether
IceTV had infringed copyright in the programme guides by copying the time,
date
69 Ricketson and Creswell, above n 29, at [7.60].
70 IceTV Pty Ltd v Nine Network Australia Pty Ltd, above n 5, at [458]–[459].
71 At [458]–[459].
72 At [458]–[459].
73 At [458]–[459].
74 At [458]–[459].
75 At [458]–[459].
76 At [458]–[459].
77 At [458]–[459].
and title information.78
There are two joint judgments from the High Court. The first
judgment, delivered by French CJ, Crennan and Kiefel
JJ established that for
copyright to subsist in a work it must originate from an author and not be a
copy of another work.79 Copyright subsisted in Nine Network’s
programme guides as they are original collocations of factual information (the
titles
of the programmes and the time and date they were playing) and
creative material (the programme summaries and other information).
80 Where there is an allegation of copyright
infringement by the reproduction of a substantial part of a work, it
must
be determined which part of the work has been reproduced.81 The
quality of that part must then be assessed with regard to the originality of the
work as a whole.82 If the part of the work which had been copied
substantially contributed to the originality of the work as a whole in a
qualitative
sense, infringement will have occurred. If it does not, there will
not be infringement of copyright.
The Court held that the originality of the weekly schedule was
contained in the selection and presentation of the time,
date and title
information and the programme summaries. However, the expression of the
time, date and title information was not
a substantial part of the work as a
whole in the qualitative sense.83 This is because its expression was
dictated by its factual nature and it was not a “form of expression which
requires particular
mental effort or exertion”.84 The form
of a work will be dictated by its factual nature when the expression of the
work is limited by the nature of the facts which
are presented in the work.
Although selection and arrangement of factual information may confer
originality in some cases,
in this case the arrangement of the factual
information was “obvious and prosaic, and plainly lack[ing] the requisite
originality”.85
78 At [458]–[459].
79 Ricketson and Creswell, above n 29, at [7.98].
80 At [7.98].
81 IceTV Pty Ltd v Nine Network Australia Pty Ltd, above n 5, at [37].
82 At [38].
83 At [42].
84 At [42].
85 At [43].
The second judgment was delivered by Gummow, Hayne and Heydon JJ and comes to
similar conclusions. Their Honours held that the first
inquiry in any case
of copyright infringement was to identify the authors of the work, as
the source of copyright
is the work of the author.86 The issue
of authorship is paramount; the Court held that the “essential source of
original works” is the activities of
authors.87 Their Honours
noted that key provisions of the Copyright Act 1968 contained
reference to authorship as a central aspect of copyright subsistence.88
In cases dealing with compilations, the authors will be those who
“gather or organise the collection of material and
who select, order or
arrange its fixation in material form”.89
The question of whether a substantial part of a work was copied should not
be assessed in the light of the “interest
protected by
the copyright”.90 Rather, determining whether copyright has
been breached should be a matter of whether the part copied was a substantial
part of the
work.91 The part of the programme copied by IceTV
was not a substantial part of the work because little skill and effort had
been
put into actually arranging the information; all of the actual labour had
been done in the preliminary stages of selecting
the programmes to be
aired.92
Essentially, their Honours stated that the skill and labour put into
compiling the information for the work has no bearing on whether
that
information contributes a substantial amount of originality to the work as it
has been expressed. Rather, if a substantial part
of the originality of the
work in its material form has been copied, copyright will be
infringed. In this case, the factual
information copied did not comprise a
substantial part of the originality of the work because its arrangement was
obvious and dictated
by the nature of the information.
2. Te l s t r a v P h o n e D i re c t o ri e s : Authorship and compilations of
86 At [93].
87 At [94].
88 At [97]. The Copyright Act 1968 is the Australian equivalent of the New
Zealand Copyright Act 1994.
89 At [99].
90 At [155]–[157].
91 At [155]–[157].
92 At [165]–[170].
facts after Ic e T V v N i n e N e t w o rk
IceTV v Nine Network did not directly challenge the “sweat of the brow” test as the basis of copyright subsistence in compilations of facts. This issue was addressed by the Federal Court of Australia the next year in Telstra v Phone Directories Company.93 Telstra published the white and yellow pages telephone directories through a subsidiary company. 94
Employees collected the information for the directories. They were organised
and published through the use of a computer programme
called the Genesis
computer system.95 Telstra brought proceedings for copyright
infringement against Phone Directories Company and others, arguing they had
infringed copyright
by reproducing a substantial part of their directories.
96 The Court faced two issues. First, can the originality in
a work be present in the preliminary stages of collecting information,
or must
the originality be present in the material form of the work?97
Secondly, if originality must be present in the directories, did they
have identifiable authors?98
The Full Federal Court found that in the light of the reasoning
in IceTV, a court can only take the originality (and thereby
skill and labour) present in the material form of the work into
account
when determining whether copyright subsists in a work.99 Skill
and labour present in the preliminary stages of production of the work are
not relevant for determining the originality
of the work in its
material form.100 This is because copyright protects the expression
of the work in its material form, not the ideas that prefigure that
expression.101 Skill and labour may go into the preparatory stages
of a work, but copyright does not protect skill and labour. 102
The work which goes into preparation is only relevant to the extent
that it shows that the work has
93 Telstra Corporation Ltd v Phone Directories Company Pty Ltd, above n 6.
94 At [20].
95 At [22].
96 At [2].
97 At [101].
98 At [101].
99 At [102].
100 At [104].
101 At [104].
102 At [104].
not been copied.103
Further, Telstra had failed to identify an author for their directories.104
The court noted that people were identifiably involved in
the preliminary stage of collecting and processing
the information for the
directories, but no author was identifiable for the creation of the
material form of the
work. 105 Rather, the computer
system was responsible for the arrangement and organisation of the
material form.106 Although people were responsible for the
operation of the software, their control was over the “process of
automation
and they did not shape or direct the material form
themselves”.107
Perram J notes that this decision is contrary to the Federal Court of
Australia’s decision in Desktop Marketing Systems v Telstra
Corporation,108 where it was held that the “sweat of the
brow” test is the basis for determining copyright subsistence in
compilations
of facts.109 However, the High Court of
Australia’s decision in IceTV is fundamentally opposed to this
test.110 This is because one consequence of the “sweat of the
brow” test is that it is possible to have copyright subsist in
a work
without an author of the material form of the work being identified as
long as skill and labour was put into the
preparatory stages of the
compilation.111 This conclusion was “contrary to the
apparent thrust of the balance of their Honours’ reasons.”112
Perram J stated: 113
Any role for skill and labour in the process of collection which extends beyond that is inconsistent with the emphasis given in IceTV to the reduction of a work into a material form. It follows that, beyond showing that the directories were original in the sense of not having being copied, the activities in the collection phase are not relevant to assessing whether those who reduced the directories to
103 At [104].
104 At [119].
105 At [119].
106 At [119].
107 At [119].
108 Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 612.
109 Telstra Corporation Ltd v Phone Directories Company Pty Ltd, above n 6, at [108].
110 At [108].
111 At [108].
112 At [109].
113 At [111].
material form did so with sufficient independent intellectual or literary
effort. To the extent that Desktop Marketing requires a
contrary conclusion it
should be overruled.
The court overruled the “sweat of the brow” test traditionally
used up until this point to determine subsistence of copyright
in compilations.
Under the “Authorship” test created by this case and the
IceTV decision, for copyright to subsist in a work an author
must be identifiable and they must have exercised skill and labour
in creating
the material form of the work so to make it original. It is possible for there
to be originality in the material form
of a compilation of facts, but it must
be evidenced and independent skill and labour must be demonstrated.114
In the case of compilations of facts there will not be sufficient skill
or labour if the material form is dictated by the nature
of the factual
information being printed. 115 Telstra has appealed this
decision and it is currently being heard by the High Court of Australia.
3. The practical consequences of the authorship test
Copyright will not subsist in two types of works. The first
is compilations of facts whose material form is dictated
by the nature of their
facts. In these cases, the work does not reach a sufficient level of originality
because the only labour the
author will have performed will be the menial labour
of arranging factual information as dictated by its form. The second type of
work is those without an identifiable author. These are works whose material
form is brought into existence solely by an automated
process. Given that
copyright protects the expression of an author, works that lack an author cannot
be protected. Therefore, the
major difference between the authorship test and
the “sweat of the brow” test is that under the authorship test,
copyright
will not subsist in works whose originality and identifiable
authorship exists entirely in preparatory stages of publication. So
far, the
only compilation that has been found to fail the authorship test has been phone
directories in the
114 At [111]. One example of this was in Ladbroke (Football) Ltd v William Hill (Football) Ltd, above n 30, at 473–474. It was held that copyright subsisted in a betting coupon because of the skill and labour that went into arranging the factual information on the material form of the coupon in a manner that made the bets offered attractive to clients.
115 At [111].
Telstra v Phone Directories Company decision.116
The issue facing the Court of Appeal in YPG IP is whether to apply the
authorship test for originality as per Telstra v Phone Directories Company
or the “sweat of the brow” test as per University of Waikato
v Benchmarking Services Ltd. The approach they will take will have a
material outcome on the case given the factual similarities between YPG IP
and Telstra v Phone Directories Company.
C. Applying the Sweat of the Brow and Authorship Tests to YP G IP v Y e l l o w b o o k . c o m . a u
1. Is the adoption of the authorship test in New Zealand
possible?
The Court of Appeal may not apply the authorship test if the statutory
requirements for copyright subsistence in New Zealand are radically
different
from those in Australia. Section 32 of the Australian Copyright
Act 1968 establishes:117
32 Original works in which copyright subsists
(1) Subject to this Act, copyright subsists in an original
literary, dramatic, musical or artistic work that is
unpublished and of
which the author:
(a) was a qualified person at the time when the work was made;
or
(b) if the making of the work extended over a period—was a
qualified person for a substantial part of that period.
(2) Subject to this Act, where an original literary, dramatic, musical or
artistic work has been published:
(a) copyright subsists in the work; or
(b) if copyright in the work subsisted immediately before its first
publication—copyright continues to subsist
in the work; if, but
only if:
116 Telstra Corporation Ltd v Phone Directories Company Pty Ltd, above n 6.
117 Copyright Act 1968 (Aus), s 32.
(c) the first publication of the work took place in Australia;
(d) the author of the work was a qualified person at the time when the
work was first published; or
(e) the author died before that time but was a qualified person
immediately before his or her death.
...
(4) In this section, qualified person means an Australian citizen or a
person resident in Australia.
Both statutes require originality in the works in question and both
statutes apply to literary works, and thereby
compilations. 118
The primary differences are organisational. The Australian
test for subsistence is encapsulated mostly in s 32 of the Australian act and
the New Zealand position is mostly described in ss 14 to
20.119
It is submitted that the requirements for copyright subsistence in New
Zealand are functionally the same as the requirements
for copyright
subsistence in Australia. There is nothing in the New Zealand act that suggests
that the requirement of authorship
under the Telstra v Phone Directories
Company test ought not to apply in New Zealand, or that authorship is less
important to copyright subsistence in New Zealand than it is
in
Australia.120
2. Is He n k e l v Ho l d f a s t Ne w Z e a l and consistent with the authorship test?
As Henkel v Holdfast New Zealand is the most recent discussion of “[t]he essence of a copyright claim” in New Zealand, Tipping J’s obiter dictum opinion will be extremely persuasive in the YPG IP decision.121
His discussion of originality rests on the “sweat of the brow”
test. His
118 Section 10. The Australian statute defines a literary work as including a compilation. Compare to Copyright Act 1994, s 14(1).
119 Section32. Compare to Copyright Act 1994, ss 14–20.
120 In fact, s 18’s heading (“Qualification by reference to author”) states the requisite nature of authorship for copyright subsistence. Copyright Act
1994, s 18.
121 Henkel KgaA v Holdfast New Zealand Ltd, above n 3, at
[34].
Honour does not mention distinguishing the skill and labour used in the
preparatory stage of a work from that in its material form.
Rather, he
quotes122 the High Court in Bonz Group v Cooke, which stated
“...the correct approach is first to determine whether the
plaintiff’s work as a whole is original and
protected by
copyright”.123 Tipping J does not consider applying a test
for copyright subsistence other than the “sweat of the brow” test,
such
as that established by the United States Supreme Court in Feist
Publications Inc v Rural Telephone Service Co Inc.124 It
is submitted that the Federal Court of Australia’s emphasis on originality
and authorship in the material form of the work
is not compatible with Henkel
v Holdfast New Zealand, given their emphasis on the importance of the work
as a whole.
However, in “Originality, authorship, and copyright in compilations”, Toby Futter gives three reasons why the authorship test could apply in New Zealand.125 First, the existing New Zealand authority does not consider the issue of copyright in compilation at length.126 Futter notes that the Supreme Court in Henkel v Holdfast New Zealand is limited in scope as it did not turn on the issue of authorship and involved a graphic work rather than a “data compilation” (compilation of facts).127
Earlier case law such as in University of Waikato v Benchmarking Services Ltd
asserts the “sweat of the brow” test without discussing it in detail.128
Secondly, Futter recognizes the similarity between the copyright regimes in the Copyright Act 1994 and the Copyright Act 1968.129
Thirdly, Henkel v Holdfast New Zealand establishes that once
copyright subsistence is established, the greater the originality in the
works, the greater the protection
copyright affords and vice versa.130
Futter argues
122 At [40].
123 Bonz Group (Pty) Ltd v Cooke [1994] NZHC 1004; [1994] 3 NZLR 216 (HC) at 219–220 (emphasis added).
124 Feist Publications Inc v Rural Telephone Service Co Inc [1991] USSC 50; 499 US 340. This case established a test for copyright subsistence in the United States very similar to the Authorship test.
125 Toby Futter “Originality, authorship and copyright in compilations”
NZLawyer (New Zealand, 28 January, 2011) at 22–23.
126 At 23.
127 At 23.
128 At 23.
129 At 23.
130 Henkel KgaA v Holdfast New Zealand Ltd, above n 3, at
[38].
that this may be evidence that the Supreme Court has already affirmed
authorship and originality as an important part of the copyright
infringement
process, even if it is not part of the subsistence
process.131
3. What are the possible outcomes of Y PG I P v
Ye l l o w b o o k . Co . A u ?
The Court of Appeal may decide the YPG IP in the light of the Supreme Court’s reasoning in Henkel v Holdfast New Zealand. If they do, the decision will likely be determined on the factual consideration of whether YPG IP can identify sufficient skill and labour in the preparatory stage of compiling the information for use in their phone directories. Given the highlighted importance of authorship in the recent Australian decisions, they will likely also have to identify an author or authors of the directories to satisfy s 18 of Copyright Act.132
If they can identify an author, the Court of Appeal will likely find that
copyright will subsist in the phone directories given the
skill and labour put
into collecting the information for publication.
If this approach is taken, one issue that could arise is whether authorship needs to be identified in the material form of the work.133
The Court of Appeal could attempt to apply a hybrid approach of the
Authorship and “sweat of the brow” test by stating
that YPG IP may
rely on skill and labour in the preparatory stages of the work, but they must
identify an author in the material
form of their directory for
copyright subsistence. Although possible, it is submitted that it would be
difficult to devise
a principled basis such a finding. The focus on the material
form in the authorship test is based on the conception that copyright
law
solely protects the material form of works. The “sweat of the brow”
test is based on the conception that copyright
law protects the investment made
in a work. Trying to force the requirements of the authorship test into the
“sweat of the
brow” test would therefore be arbitrary without the
principled rationale to justify it.
If the Court of Appeal decides to apply the authorship test, YPG IP
will have to identify an author for the material form of their
phone
131 Futter, above n 125, at 23.
132 Copyright Act 1994, s 18(1).
133 As required by the authorship test.
directories and establish that originality exists in their material
form. The decision will therefore depend on the
factual consideration
of whether these elements can be identified. The factual similarities
between this case and
Telstra v Phone Directories Company suggest
that YPG IP will likely fail to satisfy the authorship test for originality if
it is applied.
4. Which approach should be applied in New Zealand?
The test for originality which ought to be applied in New Zealand must be one
which balances two competing interests. The first is
protecting the investments
by prospective businesspeople from unfair appropriation by others. The
second is ensuring that the
public has fair access to useful works such as
phone directories. The “sweat of the brow” test rewards
those
who invest the time and money into publishing
“unoriginal” compilations of facts such as phonebooks. It is
important
to recognize that the process of compiling the information for
these works requires enormous financial investment. To
some extent the
law ought to protect those who make investments into works like this from having
their work appropriated by those
who have not put the time, money and labour
into the collection process. With these works, this is where most of the
relevant work
has been done.
The problem with this approach is that it is that it gives the
rights owner exclusive copyright over a work which can
only be practically
expressed in one way. Phone directories can only usefully be arranged in a
manner that organises phone numbers
alphabetically by the name of the person
or business that is assigned to that number. What the copyright owner of this
work
ends up with is an exclusive right to reproduce the expression of the
factual information in the only way anyone would want
to have it. The court
in Telstra v Phone Directories Company found this result far too
similar to giving someone copyright over the raw facts contained in the
directory.134 The authorship test remedies this problem by
requiring the rights owner to identify originality in the material form
of the work. Unfortunately, it does so to the detriment of those who expend
time and money in making these works.
134 Telstra Corporation Ltd v Phone Directories Company Pty
Ltd, above n 6, at [104].
It is submitted that the interest ensuring that the public has fair access to
useful works weighs more heavily on which approach
should be taken than
the rights of businesspeople. Compilations of facts such as phone directories
are practical and functionally
useful works. Access to them ought not to be put
solely into the hands of the party with the most resources to publish them
first.
This is because the limited way in which the facts contained in these
works can be expressed gives the rights owner an effective
monopoly over the
facts. Therefore, it is submitted that the authorship test, which provides
better public access to compilations
of facts while still upholding
strict standards of copyright subsistence, is the preferable test and ought
to be applied
in New Zealand.
Conclusion
The Copyright Act 1994 establishes a regime of copyright subsistence for
original works. The concept of originality has traditionally
been interpreted
by New Zealand courts through the “sweat of the brow” test. This
test is currently endorsed generally
by the Supreme Court in Henkel v
Holdfast New Zealand 135 and particularly with regards
to compilations of facts by the Court of Appeal in University of Waikato v
Benchmarking Services Ltd.136 This requires the work’s
author to expend more than a minimal amount of skill and labour in either the
material form of the
work or in preparing the material form of the work.137
The underlying rationale of the “sweat of the brow” test is
that the role of copyright is to protect the skill and labour
that the author
invests into their work so as to encourage the production of new works.138
This test thereby protects the skill and labour put into collecting and
compiling the information for compilations of facts, even
though the level of
originality in the material form of these works can be low or even
negligible.
The Federal Court of Australia has recently decided Telstra v Phone
Directories Company which applied the authorship test for originality.139
This test has two requirements for copyright subsistence: that there
135 Henkel KgaA v Holdfast New Zealand Ltd, above n 3.
136 University of Waikato v Benchmarking Services Ltd, above n 4.
137 G. A. Cramp & Sons Ltd v Smythson Ltd, above n 27.
138 Henkel KgaA v Holdfast New Zealand Ltd, above n 3.
139 Telstra Corporation Ltd v Phone Directories Company Pty
Ltd, above n 6.
must be an identifiable author for the material form of a work, and that
there must be sufficient originality imparted by the
author into the
material form of the work.140 The underlying rationale for this
test is that the purpose of copyright law is to protect the expression of the
author in the
material form of the work.141 This test does not
grant copyright subsistence to compilations of facts whose form is dictated
by the nature of their facts because
the author will not have imparted any
original skill and labour into these works.
The Court of Appeal currently faces the decision of which of these
approaches to apply in the appeal of YPG IP v Yellowbook.com.au. If the
Court applies the approach taken in Henkel v Holdfast New Zealand the
decision will likely be determined on the factual consideration of
whether YPG IP can identify an author for their
work. If the Court applies
the authorship test, YPG IP will have to prove authorship and originality in the
material form of their
directories. It is submitted that the Court ought to
apply the authorship test because it better protects the public interest in
having access to useful works such as phone directories. Hopefully the Court
of Appeal decision will shed light on the development
and application of the
concept of originality in New
Zealand.
140 At [102]–[104], [119].
141 At [102]–[104], [119].
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