IceTV Pty Ltd v Nine Network Australia Pty Ltd

What happened?

Nine scheduled the programmes broadcast across its network, using a database, and about two weeks before each week of broadcasting supplied third-party aggregators with a Weekly Schedule generated from it. IceTV produced a subscription electronic programme guide, the IceGuide, and Nine sued for infringement of copyright in the Weekly Schedules.

Note what was not in issue. IceTV "accepted that copyright subsisted in each Weekly Schedule as an original literary work" ([7]), and the Court proceeded on the assumption that copyright subsisted in the Nine Database as a compilation, saying expressly that it was "not necessary, in this appeal, to consider the question of the subsistence of copyright in those compilations" ([16]). So this is not a case about whether a compilation attracts copyright.

What did the Court decide?

The appeal was allowed: IceTV did not infringe. Any reproduction of the time and title information "was not a reproduction of a substantial part of any of the Weekly Schedules (or the Nine Database)" ([56]).

The reasoning turns on what "substantial part" means, and that in turn on what copyright protects. Copyright "protects the particular form of expression of the information, namely the words, figures and symbols in which the pieces of information are expressed, and the selection and arrangement of that information"; facts themselves are not protected ([28]). Originality means the work "originated with the author" and that its production "required some independent intellectual effort", not literary merit or inventiveness ([33]).

Applied to the times and titles, "the expression of the time and title information, in respect of each programme, is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited" — a programme title comes from its producer, and a broadcast time can only practically be given in words or figures on a 12- or 24-hour cycle. The authors "had little, if any, choice in the particular form of expression adopted, as that expression was essentially dictated by the nature of the information" ([42]).

"The level of skill and labour required to express the time and title information was minimal" ([54]) — the Full Court below had called it "extremely modest". Not absent, then: insufficient. The claim failed because that effort was not enough to make the expression original, not because Nine had done nothing at all.

Their Honours were careful not to banish skill and labour. "Industrious collection" and "creativity" are not opposites but "kindred aspects of a mental process which produces ... a particular form of expression which copyright protects", and a complex compilation "will almost certainly require considerable skill and labour" involving both, "including selection and arrangement, of the material" ([47]). "[T]he critical question is whether skill and labour was directed to the particular form of expression" — and Nine's programming skill was directed to the scheduling decisions, not to how the times and titles were written down ([54]).

Why does this case matter?

Because of where it leaves the owners of valuable data. Nine's scheduling work was real and expensive, and Nine lost anyway. Its enterprise was never in doubt; what failed was the fit between that enterprise and the narrow thing the defendant had taken. A data owner who assumes the size of the investment answers the legal question will keep getting the same surprise, and the commercial answer to that is usually somewhere other than copyright: a contract with whoever gets the feed, a technical restriction, or a statutory scheme.

Gummow, Hayne and Heydon JJ went further in a passage worth knowing about: it "may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years", and their reasons "explain the need to treat with some caution the emphasis in Desktop Marketing upon 'labour and expense' per se and upon misappropriation" — though, the concession having been made, this was "not an appropriate occasion" to decide it ([188]).

Exam and application relevance

Get the question right first. Subsistence and infringement are separate, and IceTV is an infringement case: the concession meant the Court never decided whether the Weekly Schedules were original. If your problem raises subsistence, say so and do not cite this case as though it answered it.

On substantial part, work the three elements of a compilation separately: the facts, the labour of gathering them, and the form in which they are expressed — including their selection and arrangement, which can be protected expression. Then ask the IceTV question: was the skill and labour directed to the originality of the expression that was actually taken? Effort spent on acquiring or deciding the underlying facts does not answer it.

Check your understanding

Two directories list the same businesses, and a competitor copies part of each. What would you look for to decide whether either has lost a substantial part?