Australia

 .          Start and end times for the 5 programs scheduled to be broadcast directly after the program currently screening.

 .          A television inset ('picture-in-picture', or 'PIP') moving image of the program currently screening on the channel."

Her Honour continued[127]:

            "Using the Topfield PVR's remote control, the user can scroll down the boxes containing the program titles or times. As the user continues to scroll, additional boxes, containing the program title and time of successive programs proposed to be broadcast, will appear.

            Underneath the 'PIP' inset is a separate blue text box containing the name of the program, sometimes an episode name (for example, Grand Final Show) and the synopses … The full synopsis can be viewed by selecting the program."

87                         Programmes may be selected for recording onto a hard drive within the PVR device by highlighting a particular programme on-screen and pressing a button on the remote control. Viewers are able to view a list of recorded programmes and retrieve those programmes for viewing by further use of the remote control.

88                         IceTV obtains the dates, times and titles of programmes proposed to be broadcast by the ABC and SBS from those stations for inclusion in the IceGuide. However, the approaches of IceTV towards other free to air networks for licences to obtain like information failed. In the result, for these stations, including the Nine Network, IceTV developed "templates" and software to facilitate what it calls "prediction" of the date, time and title of programmes proposed to be broadcast.

89                         The process of "prediction" will be further discussed later in these reasons[128]. It is founded on the proposition that the daily content of commercial broadcasters for a particular day in any given week is likely to be substantially replicated on the same day of the following week. However, IceTV checks its "predictions" against publicly available television programme guides. These have been identified as the "Aggregated Guides". They include the magazine TV Week and online services such as the website YourTV Guide ("the YourTV Guide"), and are prepared with the cooperation of Nine. Where a discrepancy appears in the time and title information as "predicted", the IceGuide generally is amended to reflect the Aggregated Guides. It is these acts, in particular, of "check and change" of time and title information that Nine seeks to prevent by reliance upon its rights under the copyright law.

90                         The Full Court held that Ice had used the time and title information of Nine, reproduced in the Aggregated Guides, as "an important resource" in producing the IceGuide and had thus reproduced a substantial part of Nine's copyright work[129].

The litigation

91                         Nine alleged infringement by IceTV of copyright subsisting in television programme schedules produced by Nine for each day and week since the commencement of its operations in 1956. Five acts of infringement by IceTV were propounded at the trial. Ice Holdings was said to be jointly liable for each act of infringement. The first act of infringement was identified in the reproduction by IceTV of a "substantial part" of Nine's programme schedules in the course of making and updating each IceGuide. The litigation was conducted on the footing that unless this allegation be made out, the application should be dismissed.

92                         The works in suit were identified in the amended statement of claim as "the Nine Program Schedules" and pleaded as original literary works in which copyright subsisted and was owned by Nine. By its amended defence, Ice denied infringement. However, Ice admitted Nine had prepared and distributed a "weekly television program guide" since 2001 and that each such guide was an original literary work by way of "compilation" within the meaning of the Act. This document was referred to in the reasons of the primary judge and the Full Court as "the Weekly Schedule" and was produced by Nine in "Excel" and "text" format.

93                         At trial and in the Full Court, it was accepted by Ice that copyright subsisted in each Weekly Schedule and was owned by Nine. However, there was debate in this Court as to the scope of that concession and, in particular, whether it extended to matters related to the nature of the copyright subsisting in the Weekly Schedule[130].

94                         It is a matter of regret that the legal issues between Nine and Ice were crystallised only in the course of oral submissions in this Court. That makes it necessary to consider the pleadings, the evidence, the findings and the general conduct of the litigation at trial, and on the intermediate appeal, more closely than is usual in a final court of appeal.

Authorship and material form

95                         Something should be said respecting two fundamental principles of copyright law and their treatment in the course of the litigation. The concession by Ice of the subsistence of copyright in the Weekly Schedule appears to have distracted attention from the necessary part these principles must play in any resolution of the dispute between the parties.

96                         The first principle concerns the significance of "authorship". The subject matter of the Act now extends well beyond the traditional categories of original works of authorship[131], but the essential source of original works remains the activities of authors. While, by assignment or by other operation of law, a party other than the author may be owner of the copyright from time to time, original works emanate from authors[132]. So it was that in Victoria Park Racing and Recreation Grounds Co Ltd v Taylor[133], Dixon J observed:

"Perhaps from the facts a presumption arises that the plaintiff company is the owner of the copyright but, as corporations must enlist human agencies to compose literary, dramatic, musical and artistic works, it cannot found its title on authorship. No proof was offered that the author or authors was or were in the employment of the company under a contract of service and that the book was compiled or written in the course of such employment."

97                         Key provisions of Pt III of the Act fix on "the author". Examples include the requirement for the author of unpublished works to be a "qualified person"[134] for copyright to subsist (s 32(1)), the fixing of copyright duration by reference to the death of the author (s 33), and the conferral of copyright upon the author subject to the terms of employment or contractual arrangements under which the author labours (s 35). In the latter respect, s 35(6) relevantly provides:

"Where a literary … work … is made by the author in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright subsisting in the work by virtue of this Part."

98                         Like the Copyright Act 1956 (UK) ("the 1956 Act") in its original form, the Act does not define the term "author" beyond the statement that in relation to a photograph it is the person who took that photograph. As a result of changes made by the 1988 UK Act, in relation to a work "author" means the person "who creates it"; in the case of a "computer‑generated" work this is taken to be "the person by whom the arrangements necessary for the creation of the work are undertaken"[135]. No such provision is made in the Australian statute, but the notion of "creation" conveys the earlier understanding of an "author" as "the person who brings the copyright work into existence in its material form"[136].

99                         Where a literary work is brought into such existence by the efforts of more than one individual, it will be a question of fact and degree which one or more of them have expended sufficient effort of a literary nature to be considered an author of that work within the meaning of the Act. If the work be protected as a "compilation", the author or authors will be those who gather or organise the collection of material and who select, order or arrange its fixation in material form[137]. May there be joint authors of the one original work, rather than several authors each of a distinct work?

100                      While the Act speaks of "the author", the Act affords protection to works of joint authorship by force of Div 9 of Pt III (ss 78-83). The expression "work of joint authorship" means (s 10(1)):

"a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors".

101                      In the present case, the primary judge and the Full Court each recorded in their reasons that there was no dispute that "the authors" of the Weekly Schedule were "qualified persons". However, neither at trial nor in the Full Court was there any finding of the identity of those persons or any finding that the Weekly Schedule was a "work of joint authorship" within the meaning of the Act.

102                      The second principle is related to the first and concerns the requirement for the subsistence of copyright of "fixation" of the original work in a material form. It is well established that copyright does not subsist in a work unless and until the work takes some material form, so that protection[138]:

"does not extend to the ideas or information contained in the work and a balance is struck between the interests of authors and those of society in free and open communication[139]".

103                      Section 32 lays down the requirement for identifying the original work of the author. This relevantly provides for copyright to subsist in unpublished works where the author was a qualified person "at the time when the work was made" (s 32(1)(a)) and for copyright to subsist in published works where the "first publication" took place in Australia (s 32(2)(c)). In the case of the former, the time of making means the first reduction to "writing" or "some other material form" (s 22(1)) while "publication" occurs by supply of reproductions of the work to the public (s 29(1)). Publication may be done anonymously (s 34) and special provision is made for the copyright duration in respect of such works (s 34(1)). However, this has no application if the identity of the author of the work is generally known or can be obtained by reasonable inquiry (s 34(2)).

104                      The definitions of "material form" and "writing" are (s 10(1)):

"material form, in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced).

…

writing means a mode of representing or reproducing words, figures or symbols in a visible form ..."

105                      A generally expressed admission or concession by one party to an infringement action of subsistence of and title to copyright may not overcome the need for attention to these requirements when dealing with the issues immediately in dispute in that action. This litigation provides an example. The exclusive rights comprised in the copyright in an original work subsist by reason of the relevant fixation of the original work of the author in a material form. To proceed without identifying the work in suit and without informing the enquiry by identifying the author and the relevant time of making or first publication, may cause the formulation of the issues presented to the court to go awry.

106                      It may be noted that the presence or absence of evidence on these matters has been held significant in several of the leading authorities on compilations. These include G A Cramp & Sons Ltd v Frank Smythson Ltd[140], where the original compiler of the 1933 diary was dead and there was a consequent lacuna in the case of the unsuccessful plaintiff, and Football League Ltd v Littlewoods Pools Ltd[141], where evidence respecting the role of Mr Harold Sutcliffe in settling the league fixtures was given great weight by Upjohn J. In Robinson v Sands & McDougall Pty Ltd[142], the primary judge (Barton J) said that the plaintiff and his witnesses had described "the whole course of preparation" of his map and gave details of that evidence.

The pleadings and the evidence

107                      The amended statement of claim pleaded "subsistence and ownership" by Nine of copyright in three categories of "Nine Program Schedules". Each of these was said to be made, created and revised by unidentified qualified persons acting under a contract of service with Nine. "[O]ne or more" of the Nine Program Schedules was also said to have been "first published [anonymously] in Australia shortly prior to the date on which the applicable schedule commenced".

108                      The three categories of Nine Program Schedules were:

(1)        Nine Program Schedules consisting only of details of the dates, titles, and intended starting and finishing times for the transmission of the television programmes broadcast by TCN‑9 Sydney and, for the most part, other stations in the Nine Network for each day and week (ie, the "time and title information", save for episode titles);

(2)        Nine Program Schedules consisting of time and title information, including episode titles, together with "additional program detail information" such as episode numbers, currency information (eg, whether a programme is a "repeat" ("Rpt"), "live", a "series return", or "all new"), programme format (eg, "Widescreen (WS)" or "High Definition (HD)"), closed captioning for the hearing impaired ("S"), classification information (eg, "C", "G", "PG", "M", "MA", "AV") and consumer advice (eg, "Some Violence [V]", "Sexual References [S]", "Adult Themes [A]", "Coarse Language [L]"); and

(3)        Nine Program Schedules consisting of the information in (1) and (2) together with short descriptive information about individual television programmes, or "synopses".

109                      While the pleading did not distinguish the categories of Nine Program Schedules by identification of the relevant time of first making or first publication, the evidence showed a sequence of seven steps whereby information of the kind just described was progressively reduced into a variety of material forms in the period before each "broadcast week". A "broadcast week" commenced on a Sunday and ended on the following Saturday.

110                      The evidence established that Nine's Director of Programming, Mr Michael Healy, commenced the sequence and first wrote by hand the programme name (or an abbreviation) for programmes proposed to be broadcast during "prime time" (6:00 pm to 10:30 pm) into a notebook called the "Paper Programming Grid". Each page of the notebook represented a separate week of the year, divided into the seven days and half hour timeslots, and was populated by Mr Healy with programme and sometimes episode titles up to six to nine months in advance of broadcast. A pencil was used for this task, so that the time and title information so recorded could readily be revised as changes were made to the programme line‑up for commercial reasons.

111                      Step two appeared from the evidence of Program Executive Ms Penny Wieland. This involved her recording time and title information for programmes proposed to be broadcast in the daytime (6:00 am to 6:00 pm) and off-peak (10:30 pm to 6:00 am) timeslots. Programme and sometimes episode titles and numbers were inserted by her into an Excel "spreadsheet" she maintained on her computer, again divided into weeks, days and timeslots and populated well in advance of broadcast. Ms Wieland also populated her spreadsheet with time and title information for prime time programmes, which she derived from discussions with Mr Healy or her own knowledge of Nine's programming.

112                      Step three occurred three to four weeks prior to each broadcast week and involved another Nine employee, Mr Heath Forrest. He transposed by hand the time and title information for that week from Mr Healy's grid and Ms Wieland's spreadsheet into a further paper document called "the Master Paper Grid". A separate Master Paper Grid was prepared by Mr Forrest for each broadcast week. He completed the grid by adding further episode titles and certain other "additional program detail information" such as currency information. However, other "additional program detail information", such as classification and consumer advice, does not appear to have been included in Mr Forrest's Master Paper Grid.

113                      Step four commenced once Mr Forrest had completed transposition of the information from the grid and the spreadsheet into the Master Paper Grid. This involved the commencement of manual entry by Mr Forrest of that information into a customised programme database located on Nine's computer network ("the Nine Database"). The evidence was largely silent as to the structure of the Nine Database or the manner of its operation.  

114                      The evidence showed that, while these steps were taking place, other staff at Nine were responsible for collating other of the "additional program detail information" and the synopses. Mr Brian Feeney and Mr Richard Lyle of the Programming Department prepared classification information for programmes proposed to be broadcast in accordance with the Commercial Television Industry Code of Practice. Synopses were also drafted by Mr Justin Holman, Mr Forrest and occasionally Mr Healy, or obtained from Nine staff known as the "Genre Heads" and "Production Officers", or outside producers or distributors. The evidence did not reveal who was responsible for entering the classification and consumer information into the Nine Database, but did explain the entry by Mr Holman of the synopses.

115                      Steps five and six assumed particular importance in the development of Nine's argument in oral submissions in this Court[143].

116                      The key actor in step five again was Mr Forrest. Upon completion of entry of all available information for the relevant broadcast week into the Nine Program Schedule, the evidence was that he "dumped" that information into the Nine Database thereby granting access to persons who worked outside the Programming Department but within, or in affiliation with, Nine. Those within Nine who were given this access could then view the proposed programme schedule on the internal computer network at Nine. Access allowed Nine's marketing, publicity and sales departments to plan their sales and marketing strategies. It also permitted stations other than TCN-9 Sydney, GTV-9 Melbourne and QTQ-9 Brisbane to access and amend the Nine Database to include local material or make changes for their individual stations.

117                      Step six, the penultimate step, occurred 17 to 14 days ahead of each broadcast week. It comprised the production of the document referred to by the primary judge and the Full Court in their reasons as the "Weekly Schedule". This was done by Mr Holman. He generated the Weekly Schedule from the Nine Database in both the "Excel" and "text" format and emailed that document to three third parties, identified as "the Aggregators".

118                      The information recorded in a material form in the Weekly Schedule appears from the first page of the "Excel" format disseminated to the publishers of the Aggregated Guides ("the Aggregators") for the broadcast week commencing Sunday, 11 June 2006[144]. This read:

119                      As can be seen, the five columns of the Weekly Schedule included time and title information (columns 1 and 2), additional programme information (columns 3 and 4), and the synopses (column 5). It is not readily apparent that any one or more of the items treated above as "title information" (column 2) would qualify as an original literary work by itself. The same must be so of the time information of column 1. The synopses in column 5 may have had that character, but they were not reproduced in the IceGuide.

120                      Before turning to the seventh and final step, attention should be given to the role of the Aggregators as recipients of the Weekly Schedule. The primary judge found that the purpose of the Weekly Schedule was to impart the totality of the information therein to the Aggregators. They were responsible for extracting and publishing in the Aggregated Guides the totality of the information in the Weekly Schedule alongside like information provided by other free to air television stations.

121                      The final step in the relevant sequence of evidence involved the revision of the time and title information after provision of the Weekly Schedule to the Aggregators. The evidence showed that the Weekly Schedule occasionally was issued to the Aggregators with timeslots marked "Details: TO BE ADVISED" and late changes to programming made for competitive and other reasons. Mr Healy explained:

"I often deliberately keep certain program information back from inclusion in the Nine Database until the print deadline for TV Week magazine, which is ten days before the commencement of the particular week. I am likely to do this where Nine has scheduled a special event or the premiere of a new series or movie that we do not want our competitors to have early knowledge about."

Responsibility for entering late changes in the Nine Database rested with Mr Forrest, who also informed the Aggregators of such late changes by the provision to them of memoranda identified in the litigation as "Late Change Notices".

The holdings of the primary judge and the Full Court

122                      Upon the concession of Ice as to subsistence of copyright in the Weekly Schedule, the primary judge held that the relevant work in suit was each Weekly Schedule published by Nine since IceTV commenced its activities in 2004. Her Honour held that the Weekly Schedule was a "compilation" literary work which expressed the time and title information, the additional programme information and the synopses for each day of the relevant broadcast week. Each of the categories of information included in the Weekly Schedule was there for good commercial reason. Bennett J rejected the submission of Nine that distinct copyrights subsisted in mere components of the Weekly Schedule, such as the time and title information of the first two columns.

123                      As to infringement, the primary judge found that (i) IceTV never took the synopses and did not take the whole of the time and title information from the Aggregated Guides; (ii) IceTV had copied no more than "slivers" of time and title information from the Aggregated Guides in order to maintain and update the IceGuide; and (iii) the slivers in question did not bear substantial importance in relation to the originality of the Weekly Schedule as a whole. This led the primary judge to the conclusion that IceTV had not reproduced a substantial part of the Weekly Schedule, with the consequence that the alleged infringement was not established and the application was dismissed.

124                      It should be noted that the primary judge recorded that the case on infringement was founded on the assertion that IceTV had appropriated the "'skill and labour of authorship' of Nine" (emphasis added). Her Honour's findings in this respect were critical to the conclusion that there had been no reproduction of a "substantial part" of the Weekly Schedule.

125                      Bennett J explained that the relevant "skill and labour" of Nine included both the skill and labour of making decisions as to the selection and arrangement of programmes for broadcast in particular timeslots (referred to as the "preparatory" skill and labour) and the later "skill and labour" in drafting the synopses and selecting and arranging the time and title information, the additional programme information and the synopses in the form of the Weekly Schedule once the preparatory work was done.

126                      As to the former, the primary judge found that the preparatory "skill and labour" involved the consideration by Mr Healy and Ms Wieland of many factors, such as viewer preferences and trends, audience size and demographic appeal, contractual and regulatory obligations, competitor programming and ratings information. However, she also found that the primary purpose here was not to produce a literary work, but rather, to produce a programme line-up that would maximise viewers (and hence advertising revenue). The conclusion followed that the skill and labour in determining the programme line‑up was not co‑extensive with the skill and labour in creating the Weekly Schedule. IceTV was not a broadcaster and there was accordingly no relevant "appropriation" by it of the skill and labour of placing programmes. IceTV adopted its own form of presentation of the time and title information and drafted its own synopses and thus had not taken sufficient of "Nine's skill and labour" so as to have infringed by copying "slivers" of time and title information.

127                      In the Full Court, the findings by Bennett J as to the identity of the relevant works in suit went unchallenged. The primary issue was whether the copying by Ice of time and title information from publicly available Aggregated Guides constituted the reproduction of a substantial part of the Weekly Schedule. After setting out the "Principles" identified earlier in these reasons, the Full Court turned its attention to this issue under the heading "Assessing the Primary Judge's Views on Ice's Appropriation of Nine's Skill and Labour"[145].

128                      It was in the assessment of this topic that a critical difference of opinion emerged in the reasoning of the Full Court. The Full Court explained[146]:

"Ice, to the extent it reproduced time and title information from the Weekly Schedules, appropriated the skill and labour used by Nine to create the Weekly Schedules. Contrary to her Honour's conclusion, the skill and labour in selecting and arranging programming should not be regarded as separate and discrete from the extremely modest skill and labour involved in setting down on paper the programs already selected and presenting them in the form of the Weekly Schedules. 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."  (emphasis added)

Upon this basis, that the skill and labour invested in the programming decisions could not be separated from the skill and labour of creating the copyright work, the Full Court continued[147]:

"Ice took, via the Aggregated Guides, precisely the pieces of information that reflected the exercise of skill and labour by Nine in determining the program for a particular day or other period … Ice's use of material derived from the time and title information – we would not use the expression 'slivers of information' – appropriated the most creative elements of the skill and labour utilised by Nine in creating the Weekly Schedules." (emphasis added)

129                      The Full Court concluded that the time and title information was the "centrepiece" of the Weekly Schedule and that by taking it Ice had reproduced a substantial part of the relevant Weekly Schedules. Accordingly, the appeal was allowed and the proceedings were remitted to the primary judge for hearing and determination consistently with the reasons of the Full Court.

Misappropriation of skill and labour "of Nine"

130                      Before turning to the submissions presented in this Court, several points should immediately be made concerning the focus by the primary judge and the Full Court upon the skill and labour "of Nine" in their treatment of infringement.

131                      The first is to emphasise the dangers when applying the Act of adopting the rhetoric of "appropriation" of "skill and labour"[148]. A finding that one party has "appropriated" skill and labour, of itself, is not determinative of the issue of infringement of a copyright work. The Act does not provide for any general doctrine of "misappropriation"[149] and does not afford protection to skill and labour alone.  

132                      In the present case, the alleged infringement was identified in the reproduction of a substantial part of the relevant copyright "work" (ss 36(1), 31(1)(a)). To speak of the "appropriation" of "Nine's skill and labour", rather than attending to the relevant "original" work of the author or authors, was to take a fundamental departure from the text and structure of the Act. In particular, while s 35(6) might have produced the consequence that Nine was the relevant copyright owner after identification of the relevant "author" or "authors", notions of the "skill and labour" of Nine were irrelevant to the existence of its title to the copyright and to the assessment of "substantial part".

133                      The second point is that the conduct of the litigation in this manner reflected the decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd[150]. That case decided that telephone directories were "original" works in which copyright subsisted because "Telstra had undertaken substantial labour and incurred substantial expense"[151] in compiling and presenting the details of telephone subscribers in a particular region. Infringement was identified in the appropriation of "the benefit of Telstra's substantial labour and expense"[152].

134                      However, a reason to treat the decision in Desktop Marketing with particular care appears from the reasons of the trial judge. Finkelstein J had observed[153]:

            "There are literally hundreds of appropriately trained or qualified employees who make some contribution towards the production of a telephone directory. When the nature of the work they do is described, there arise three relevant questions to the subsistence of copyright: (a) Must a copyright work have an author? (b) Does a telephone directory have an author? (c) Is every employee who contributes to the final product a joint author of the directory? These are difficult questions for which there are no ready answers."

Finkelstein J went on to explain that the parties had sought to elucidate none of those issues in the litigation, with the consequence that, as here, the relevant author or authors of the work in suit remained unidentified.

The EU Database Directive

135                      In 1996 the Directive of the European Parliament and of the Council on the Legal Protection of Databases ("the Directive")[154] was adopted by the European Union ("EU"). It is significant for the issues on the present appeal that the Australian legislation has no counterpart.

136                      Of the genesis of the Directive, Professor Cornish has written[155]:

"At once excited and alarmed by the capacity of digitization to store massive files of information and of the internet to deliver it in individually requested packages, the publishing industry, and, by its side, music and films, secured a Database Directive from the EU".

Whilst "traditional copyright" respecting compilations was carefully confined and fixed upon the effort that went into the selection and arrangement in a compilation, the new right was "accorded directly to the investor in a database"[156].

137                      The Directive defines "database" to mean "a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means"[157]. Chapter III of the Directive relevantly provides for the implementation of a "sui generis" right for the "maker" of a database who shows there has been a "substantial investment" in either the obtaining, verification or presentation of the contents of the database and for that right to extend to prevention of the extraction and/or re-utilisation of the whole or of a substantial part of the database[158], subject to certain exceptions[159] and lawful uses[160].

138                      The Directive also provides in Ch II for Member States to afford protection to databases which, "by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation"[161] (emphasis added). However, the position of "the author" in Ch II may be contrasted with that of "the maker" in Ch III. In explanation of the latter, recital 39 states:

"Whereas, in addition to aiming to protect the copyright in the original selection or arrangement of the contents of a database, this Directive seeks to safeguard the position of makers of databases against misappropriation of the results of the financial and professional investment made in obtaining and collection [of] the contents by protecting the whole or substantial parts of a database against certain acts by a user or competitor".

139                      In the absence of implementation of laws analogous to the kind described in the Directive, the matters now in issue cannot be resolved by concluding, as did the Full Court[162], that Ice appropriated "the fruits of Nine's skill and labour".

The submissions on "substantial part"

140                      In their submissions in this Court, each of Nine and Ice emphasised that the Court should look to the "originality" of the work as contributed by the author in determining whether there had been any reproduction by IceTV of a "substantial part". If that be done, Ice submitted that the relevant originality would be seen to lie not in the composition of the time and title information, but in the selection and arrangement of that information, the additional programme information and the synopses into the "Excel" and "text" format of the Weekly Schedule.

141                      As the course of oral argument progressed, there emerged between the parties fundamental differences as to the nature of the relevant "originality". The extent of these differences crystallised on the second day of the hearing when, apparently for the first time in the litigation, Nine sought to identify the work in suit as a single work "first made" upon the "dumping" of the Nine Programme Schedule into the Nine Database by Mr Forrest and "first published" upon the emailing of the Weekly Schedule in "Excel" and "text" format to the Aggregators. These have been described earlier in these reasons as "step five" and "step six"[163].

142                      Counsel for Nine explained that the work:

"was the work which was in material form made over a period of time but in final material form on the [Nine] [D]atabase. The [Weekly Schedule in 'Excel' and 'text' format] which were published [were] published by making it in another material form which was a piece of paper and sending it out. It did not become a different work. It was just another form of the same work."

The authors of the work so propounded were said by counsel to be Mr Healy and Ms Wieland[164] and their "original" work was identified in the judgment and skill required to create the sequence or relationship between the programme title and time of broadcast, as expressed in the time and title information. In putting the case this way, Nine emphasised that the synopsis and the additional programme information followed "automatically" from the decision to broadcast a particular programme at a particular time; the "key element" of the work was the selection of the programmes and their arrangement in particular time sequences relative to each other. This lay the ground for submissions that although IceTV had not "appropriated" the synopses and additional programme information, IceTV had taken a "substantial part" of the Weekly Schedule.

143                      Nine submitted that this analysis reflected the findings of the Full Court. But two points should be made here.

144                      The first point is that the proposition now advanced by Nine, that the work in suit was a single work reflected in the Nine Database, does not appear from the elliptical references to "the Nine Program Schedules" in the pleadings. As a consequence, issues of the kind to be described below were not agitated at any stage in the Federal Court.

145                      The second point is to emphasise the difficulties of adapting the provisions of Pt III of the Act to cases such as the present, where multiple works and authors might be identified and the requisite expression of "authorship" of each may be dictated by a specific commercial objective. The point is illustrated sufficiently by contrasting the provisions of the Act and the evidence with the proposition that "the work" was a single work represented in the Nine Database and "first published" upon dissemination to the Aggregators of the Weekly Schedule in "Excel" and "text" format.

146                      The combined effect of s 32(1), s 22 and the definition of "material form" is to provide for subsistence of copyright in an unpublished literary work at the time or period of first fixation in a material form by a qualified person, whether then "visible or not". Thus, copyright might subsist in the Nine Database as a "compilation" upon the time of "dumping" by Mr Forrest, notwithstanding that the relevant expression of "words, figures or symbols" might then have been invisible to the human eye (s 10(1)). Further, the Act provided for "first publication" (s 32(2)(c)) to occur upon supply of a reproduction of "the work" to the public (s 29(1)), as might be done by dissemination to the Aggregators of the Weekly Schedule. However, the relevant reproduction for the purposes of first publication must be of the whole (s 29(2)) rather than merely a substantial part (cf s 14(1)). A work is taken to be reproduced if converted into or from a digital or other machine‑readable form; any article embodying the work in such a form is to be taken to be a reproduction of the work (s 21(1A)).

147                      The evidence showed that the words, figures or symbols which comprised the Nine Database were not co‑extensive with those which comprised the Weekly Schedule. For example, the evidence showed that each programme was allocated a short "Catalog" code (eg, "NODD01") and that Mr Forrest keyed these into the Nine Database prior to generation of the "Excel" and "text" format of the Weekly Schedule. The catalogue codes permitted the cross‑referencing by Nine of the time and title information with its internal tape library in a further schedule called "the First and Final" schedule. This comprised a collocation of the catalogue codes, the time and title information and certain other information, and was also generated from the Nine Database for this purpose prior to each broadcast week. However, the catalogue codes had no utility to the Aggregators or the public and accordingly were omitted from the "Excel" and "text" format of the Weekly Schedule.

148                      The requirement in s 29(2) of the Act for publication by reproduction of the whole work is significant. The presence of catalogue codes in the Nine Database, but not the Weekly Schedule, points, when assessing infringement, against the former being the same compilation work as the latter. Further, assuming the Nine Database and the Weekly Schedule to be distinct literary works, questions inevitably arise as to whether the author of the latter would be identified with the author of the former and whether the requisite "originality" of each might differ in the assessment of infringement.

149                      In this respect, the absence of evidence of the structure and manner of operation of the Nine Database becomes significant. There was evidence that Mr Forrest and Mr Holman were each involved in transposing information into the Nine Database. However, the evidence did not indicate how the Nine Database operated to select, arrange and present that information into the "Excel" and "text" format of the Weekly Schedule (step six), or who was responsible for designing the Nine Database so as to achieve that function.

150                      Further, while the evidence described the giving of access to information in the Nine Database ("dumping") as enabling persons with this access to view or in some cases modify the proposed programme schedule (step five), there was no evidence about how the information in the Nine Database came to be assembled in the way it was when those persons viewed it or sought to modify it. Nor was there evidence about who it was who decided that information should be assembled in this way.

151                      The relevant issues which this situation presents are elucidated by Professor Davison in his work The Legal Protection of Databases[165] as follows:

"There is some argument that some databases do not have authors in the copyright sense. This argument is based on the proposition that electronic databases are arranged automatically by the computer program ... The operator may simply key in the data in an undiscriminating manner or insert data that are already in digital form, and the data may be organised by the computer program. There may be no originality associated with the selection of the data included in the database, particularly if the selection consists of all the available material relating to a particular topic. It could be further argued that, as the arrangement has occurred automatically as a consequence of the operation of the computer program that manipulates the data, the supposed author of the database has not in fact authored it." (citation omitted)

The author goes on to explain that there are a number of possible responses to this problem, but that these[166]:

"require some understanding of the process of creating and updating an electronic database. First, the actual creation and updating of a database is rarely as simple as indiscriminately keying new data into some form of digital storage ... A decision has to be made about defining the records and fields (or the rows and columns) that are to be contained within the database ... Even though the final result is produced by the 'work' of a computer in arranging the material in this way, human thought went into the scheme of the database and the conception of how the material would look to the external user ...

            The second response ... is based on the proposition that the authors of databases can claim authorship by virtue of having considered the possible outcomes of their input into the database. They have chosen the software used in the database and therefore chosen the operations that it can carry out on the data included." (emphasis added)

In the absence of evidence as to matters of this kind and of any provision in the Act akin to s 9 of the 1988 UK Act[167], Ice submitted in its oral submissions in reply that the relevant author of the Weekly Schedule was unknown. We agree. It would follow from this that no finding could be made as to whether the Weekly Schedule was a work of joint authorship within the meaning of s 10(1) of the Act[168].

152                      However, the appeal to this Court may be resolved without resolving issues of this nature. On the assumption favourable to Nine that the Weekly Schedule was "the same work" as the Nine Database, the Court should accept the submission by Ice that the originality of the compilation being the Weekly Schedule lay not in the provision of time and title information, but in the selection and presentation of that information together with additional programme information and synopses, to produce a composite whole.

153                      The reasons for accepting that submission appear from further consideration of the reasons of the Full Court.

Treatment of "substantial part" by the Full Court

154                      The effect of s 14(1)(a) of the Act is that an infringement by reproduction of a work may result from the reproduction of "a substantial part of the work". The word "substantial" has been said to be "not only susceptible of ambiguity" but to be "a word calculated to conceal a lack of precision"[169]. However that may be, which of the various possible shades of meaning the word bears in a provision such as s 14 of the Act will be determined by the context[170]. With respect to s 14, that context includes the matters of development of copyright law to which reference has been made earlier in these reasons[171].

155                      The Full Court stated that a finding of substantiality depended much more on the quality than the quantity of that which had been copied. That starting point is in accordance with authority[172]. However, the "quality" relevant in the case of a literary work, including a compilation, was said to be "the literary originality of what has been copied"[173]. That quality was to be assessed by reference to "the interest protected by the copyright". The origin of these latter two propositions in Newspaper Licensing[174] has been described earlier in these reasons[175].

156                      Neither proposition is satisfactory and each is apt to mislead.

157                      The proposition that in a case such as the present one looks to the literary originality of what IceTV copied, rather than to the Weekly Schedule as a whole, in answering the question whether IceTV reproduced a substantial part of the Weekly Schedule, shifts consideration to an extraneous issue. This is whether what the primary judge called the "slivers" of information may themselves be classified as original literary works. The issue requiring the comparison between what was taken and the whole of the work in suit may be distorted by a meditation, inspired by Desktop Marketing[176], upon the protection given by the Act against misappropriation of any investment of skill and labour by the author. In the present case, the temptation then is to classify the slivers each as original literary works. An important proposition may be overlooked. This is that the statutory requirement that the part of a work taken must be substantial assumes there may be some measure of legitimate appropriation of that investment.

158                      A collateral matter should be put to one side. The case law does disclose that special difficulty has been encountered in considering the relationship between the phrase "a substantial part" in s 14(1) of the Act and the definition in s 10(1) of that species of "literary work" which is a "computer program", being:

"a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result". (emphasis added)

The phrase emphasised suggests the importance of function, although this is usually encountered in patent and designs law, rather than in the "traditional" law of copyright respecting original literary works.

159                      It was in this context, of the infringement of computer programs, that in Data Access Corporation v Powerflex Services Pty Ltd[177], Gleeson CJ, McHugh, Gummow and Hayne JJ disfavoured a "but for" analysis which treated as essential for the purposes of substantiality each of the many necessary integers in a computer program, so that the presence of any one of them indicated the taking of a substantial part; such an analysis was overly protective of the interests of the owners of the copyright in that species of literary work, and overlooked the need for some process of qualitative abstraction of the material features of the computer program in question in order to determine any issue of substantiality under s 14(1) of the Act. But the special considerations that are present in cases such as Data Access are not found here. Use of the term "functionality" in compilation cases is unhelpful.

160                      The proposition that the Court should look to "the interest" which the copyright protects invites processes of reasoning to which there applies the warning by Judge Learned Hand in Nichols v Universal Pictures Corporation[178]. This is to the effect that the more remote the level of abstraction of the "interest", the greater the risk of protecting the "ideas" of the author rather than their fixed expression. That risk appears to have been realised in the reasoning of the Full Court.

161                      The Full Court approached the issue of substantiality at too high a level of abstraction, and in doing so tipped the balance too far against the interest of viewers of digital free to air television in the dissemination by means of new technology of programme listings. The Full Court did so by treating the issue of substantiality as dominated by an "interest" in the protection of Nine against perceived competition by Ice.

162                      The Full Court emphasised the apparent commercial value of the time and title information in the conduct of the business of the Nine Network. On the one hand, the time and title information was a "central element of [Nine's] business as a television broadcaster" while the synopses and additional programme information were of little or no value, whether commercially or as a repository of programming information[179]. Moreover, Nine and Ice were "competitors in the sense that each was seeking to derive profit from the dissemination of the time and title information"[180].

163                      The Act operates in the general legal milieu. Section 9(3) recognises this in specifying that the statute does not affect the operation of the law relating to breaches of confidence. No litigation alleging breach of confidence could successfully have protected the time and title information at any rate after it left the control of Nine and reached the Aggregators. None was attempted. To the contrary, the Digital Alliance submitted that this litigation was an attempt to use the copyright law to control the further dissemination of information after it had reached the public domain.

164                      The Act also may have to be read with Pt IV of the Trade Practices Act 1974 (Cth)[181] and with any conditions from time to time imposed upon licensees under the Broadcasting Act.

165                      (It may be noted that provision now is made, by amendments to the Broadcasting Act in 2006[182], for industry codes and industry standards respecting the provision of information for the purpose of compiling electronic programme guides[183]. Further, in the United Kingdom, s 176 of the Broadcasting Act 1990 (UK) imposes a duty to make available programme information to any publisher, subject to the settlement of terms of payment by the Copyright Tribunal[184].)

166                      It is unnecessary to pursue any of these considerations here, save to make several points. First, evidence was not led to establish any relevant "market" in which Nine and Ice competed; nor did the evidence establish that the time and title information was of greater value (however assessed) in that market than the synopses or additional programme information. Secondly, any consideration of the objectives of competition law may favour the interests of Ice rather than Nine. The decision of the European Court of Justice in Radio Telefis Eireann and Independent Television Publications Ltd v Commission of the European Communities[185] was that reliance upon copyright law to found the refusal of the appellants to provide programming schedules of Irish and British television to the publisher of a weekly television guide was an abuse of a dominant position within the sense of Art 86 of the Treaty of Rome. Thirdly, to speculate upon matters of commercial competition as indicative of the "interest" protected by the Act distracts attention from the closer consideration required to what is now the case based upon the significance of step five and step six in the processes leading to the production of the Weekly Schedule.

167                      The primary judge approached the issue of substantiality correctly when she stressed that the detailed and lengthy preparatory work involved in what are identified in these reasons as steps one through to four was directed to the conduct of the business of the Nine Network in broadcasting programmes which would attract viewers. Likewise the making of late programme changes, as Mr Healy explained[186].

168                      There remained what the Full Court accepted was "the extremely modest skill and labour"[187] in setting down the programmes already selected and in taking what may now be identified as steps five and six.

169                      If the Weekly Schedule be seen in that light, several propositions advanced by Ice should be accepted. First, it ought, in a case such as the present, and to reprise the theme of Lord Herschell LC in Leslie v Young & Sons[188], to be clearly established by Nine that, looking at the Weekly Schedule as a whole, there has been a substantial reproduction in the particular use by IceTV of the Aggregated Guides to access the time and title information.

170                      Secondly, in assessing the quality of the time and title information, as components of the Weekly Schedule, baldly stated matters of fact or intention are inseparable from and co‑extensive with their expression. It is difficult to discern the expression of thought in statements of which programmes will be broadcast and when this will occur. If the facts be divorced from the other elements constituting the compilation in suit, as is the case with the use by IceTV of the time and title information, then it is difficult to treat the IceGuide as the reproduction of a substantial part of the Weekly Schedule in the qualitative sense required by the case law.

171                      Thirdly, it is important also to ask whether IceTV acted as it did in preparing the IceGuide with animus furandi, to take from the Aggregated Guides the time and title information to save itself from effort on its part[189]. This invites further attention to the business plan and methods adopted by Ice and to the matter of "predictions".

"Prediction" of time and title information

172                      Nine relied upon the decision of Whitford J in Independent Television Publications Ltd v Time Out Ltd[190]. However, the publishers of Time Out had decided to "take a short cut"[191] and there had been wholesale copying of dates, titles and times from the TV Times and the Radio Times published by the commercial and public broadcasters respectively[192].

173                      Bennett J found that IceTV had proceeded in a very different manner. The objective of IceTV had been to start with "a clean sheet of paper" and develop an EPG without infringing third party intellectual property rights. IceTV obtained legal advice as to how this might be done and began by creating templates of the daily programming of the Sydney channels Nine, Ten and Seven ("the Sydney templates"). The author of the Sydney templates was IceTV's Content Manager, Mr Mitchell Rilett.

174                      The Sydney templates included seven spreadsheets populated with time and title information and additional programme information for programmes broadcast by TCN‑9 on each day of the broadcast week. Nine alleged at trial that this information had been copied from the publicly available guides. However, Bennett J found that Mr Rilett created the Sydney templates by watching television over a period of three weeks in August 2004 and recording the time and title of the programmes then broadcast; his evidence of that experience and description of it as "torture" were found by her Honour to be compelling. The primary judge went on to find that Mr Rilett compared his templates with the publicly available guides in September 2004, noted a "slight variation" in the time and title information, and amended the Sydney templates accordingly.

175                      In this Court, the alleged copying of time and title information was identified not in the creation or amendment of the Sydney templates, but in the making and updating of successive IceGuides built upon those templates. This commenced in October 2004, when Mr Rilett transposed the information in the Sydney templates into a computer database maintained by IceTV ("the Ice Database") and began using IceTV's software to compile 24‑hour guides for the commercial networks for each day of the calendar week, six days ahead of when the programmes were scheduled for broadcast.

176                      The findings of the primary judge and the evidence supported the identification of three tasks required to populate the IceGuide schedules with time and title information for the Sydney station, TCN‑9.

177                      Task one was to cause IceTV's software to create a "starting template" populated with time and title information copied from a past IceGuide schedule for TCN‑9 Sydney for the same day of a previous week. This was done by Mr Rilett or one of two other IceTV staff, Ms Suzanne Langford or Ms Samantha Tai. By way of example, the primary judge explained[193]:

"Mr Rilett used the IceGuide for TCN‑9 Sydney for Saturday, 16 September 2006 as the source schedule to create an IceGuide for TCN‑9 Sydney for Saturday, 23 September 2006. 'Predicting over' the source schedule using Ice[TV]'s software caused the starting template for 23 September 2006 to contain the same program listings information as the source schedule, save for date and episode information."

This process was referred to within IceTV as "predicting it over" and relied on the assumption, noted earlier in these reasons, that the TCN‑9 programming for any given day was likely to be substantially the same as it was on the same day of the previous week. While that assumption was made good for "strip programs" broadcast by TCN‑9 in the same timeslots, 6:00 am to 7:00 pm, Mondays to Fridays, "predicting it over" could not accommodate movies, one‑off programmes or other changes in programming from week to week.

178                      For that reason, task two was necessary. This was to check the time and title information in the starting template with at least three online published guides. In the event of the published guides indicating a variation in programming from the previous week, Mr Rilett, Ms Tai or Ms Langford typically amended the starting template to reflect the time and title information in the published guides.

179                      To illustrate the extent of amendments made, Bennett J found that it was necessary for Mr Rilett to amend the time and title information for 17 out of 31 timeslots in the starting template for TCN‑9 for Saturday, 23 September 2006. However, the primary judge also found that fewer amendments were necessary for weekdays because of strip and series programmes. Thus, her Honour's reasons recorded the making of changes to programme title, time or episode for 13 out of 29 timeslots when creating an IceGuide schedule for TCN‑9 for Monday, 2 October 2006.

180                      The nature of amendments made to the starting template was further illustrated by the setting out by the primary judge of each change made by Mr Rilett in creating the IceGuide schedule for TCN‑9 for 23 September 2006. By way of example of five such changes, Mr Rilett[194]:

".          changed the start time for Nightline from 12:25 am to 12:15 am to reflect the information in published guides;

 .          deleted the movie Lansky, which was scheduled to appear at 12:55 am in the IceGuide but was not in the published guides;

 .          added the movie The Inspectors at 12:45 am to the IceGuide, based on the information in the published guides;

 .          changed the start time in the IceGuide for the Late Show with David Letterman from 3:05 am to 2:35 am, based on the information in the published guides;

 .          added the program Entertainment Tonight to the IceGuide at 3:30 am, based on the information in the published guides".

However, the evidence also showed that the time and title information was not universally amended to reflect the published guides. For example, in the course of making the amendments just described, Bennett J explained that Mr Rilett[195]:

"ignored the published guides' indication that The Batman would be broadcast at 8:05 am, 8:40 am and 9:20 am and instead left the IceGuide starting template's indication that Classic Looney Tunes would be broadcast at these times. Mr Rilett disregarded the published guides as he determined that TCN‑9 Sydney may not broadcast The Batman at that time by reason of the program not being suitably rated for viewing during children's hours".

181                      To amend the time and title information in the starting template, Bennett J found that IceTV staff searched the Ice Database for programmes or episode titles previously included in that database. This was done by causing IceTV's software to generate an on‑screen list of available programme titles. Start times could be selected or amended using on‑screen "drop‑down boxes", while mouse‑clicking buttons marked "Revise" or "Update Show" caused the software to insert new starting times or programme titles into the IceGuide schedule. Episode titles were similarly presented by IceTV's software in a list available to the operator and available for selection for inclusion in the IceGuide schedule. If, at the time of amendment of the starting template, the programme or episode had not been previously added to the Ice Database, it could be added using IceTV's software.

182                      The third and final task was to capture late changes to Nine's programming. The primary judge found that this was done by Ms Langford, who undertook a daily comparison of the time and title information in the IceGuide schedule with the listings in the YourTV Guide for the up‑coming 60‑hour period. Late changes were also inserted by Mr Rilett in response to information obtained from his review of a website styled Television Programming News and from messages posted by subscribers on an online forum maintained on IceTV's website.

183                      The evidence showed the same three tasks were performed to create IceGuide schedules for other stations in the Nine Network, subject to one variation in task one. This comprised the use of a different channel within the Nine Network as the source schedule. Thus, IceGuide schedules for GTV‑9 in Melbourne were made by "predicting over" time and title information derived from the IceGuide schedule for TCN‑9 for the same day. In the expectation that the same episodes would be shown by the various stations in the Nine Network, episode titles were retained by IceTV's software where the source schedule channel was different from the destination channel. The evidence included a chart prepared by Mr Rilett documenting the relevant "source schedule" for the various stations within the Nine Network. However, for each new schedule, it remained necessary to repeat task two and cross‑check the time and title information with online, publicly available guides.

184                      One further point concerning the making and updating of the IceGuide should be noted. This concerns the source of the IceGuide synopses. Bennett J found that the synopses appearing in the IceGuide for the Nine Network were drafted by two IceTV staff, Ms Madeleine Doyle and Ms Kiriaki Orfanos. Reference books such as Halliwell's Film & Video Guide 2002 and websites were consulted for this purpose, but Ms Doyle and Ms Orfanos were not permitted to have regard to the published guides. The primary judge found that IceTV's synopses had a different commercial purpose from that of Nine, as evidenced by the use of humour or criticism. For example, the IceGuide synopsis for the Nine programme The Footy Show (AFN( �/i> on 28 September 2006 read: