Nine Network Australia Pty Limited v IceTV Pty Limited [2008] FCAFC 71 (8 May 2008)

COPYRIGHT – weekly schedule of television programs prepared by broadcaster – compilation – whether publisher of an electronic program indirectly copied a ‘substantial part’ of the weekly schedule – nature of original work reflected in the compilation – whether creative work was ‘antecedent’ or ‘preliminary’ – whether causal connection established between copyright work and the allegedly infringing work

Copyright Act 1968 (Cth) ss 10, 14, 31, 32, 35, 36, 115

Autodesk Inc v Dyason (No 2) [1993] HCA 6; (1993) 176 CLR 300 followed
Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd [1921] HCA 27; (1921) 29 CLR 396 followed
British Broadcasting Co v Wireless League Gazette Publishing Co [1926] 1 Ch 433 cited
Cate v Devon and Exeter Constitutional Newspaper Co (1889) 40 Ch D 500 cited
Computer Edge Pty Ltd v Apple Computer, Inc [1986] HCA 19; (1986) 161 CLR 171 followed
Designers Guild Ltd v Russell Williams (Textiles) [2000] UKHL 58; [2001] All ER 700 referred to
Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112; (2002) 119 FCR 491 distinguished
Football League Ltd v Littlewoods Pools Ltd [1959] 1 Ch 637 discussed
Fox v Percy [2003] HCA 22; (2003) 214 CLR 118 cited
Francis Day Hunter Pty Ltd v Bron [1963] Ch 587 followed
Independent Television Productions Ltd v Time Out Ltd [1984] FSR 64 discussed
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 followed
Licensing Agency v Marks & Spencer plc [2003] 1 AC 551 followed
Nationwide News Pty Ltd v Copyright Agency Ltd (1996) 65 FCR 399 followed
Network Ten Pty Ltd v TCN Channel Nine Pty Ltd [2004] HCA 14; (2004) 218 CLR 273 followed
Nine Network Australia Pty Ltd v IceTV Pty Ltd [2007] FCA 1172 reversed
SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466 followed
Trade Auxiliary Co v Middlesborough and District Tradesman’s Protection Association (1888) 40 Ch D 425 cited

NINE NETWORK AUSTRALIA PTY LIMITED v ICETV PTY LIMITED AND ICETV HOLDINGS LIMITED
NSD 1757 OF 2007

BLACK CJ, LINDGREN & SACKVILLE JJ
8 MAY 2008
SYDNEY

3. The proceedings be remitted to the primary Judge for hearing and determination consistently with these reasons for judgment.

5. In relation to the costs of the proceeding at first instance to date:
(a) Order 2 made on 10 August 2007 be set aside; and
(b) the respondents pay the appellant’s costs excluding:
(i) its costs (if any) relating exclusively to the question of damages, which costs are reserved to the primary Judge; and
(ii) its costs associated with the discontinuance of the cross-claim the subject of consent Order 1 made on 17 October 2006.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

1 The main issue in this appeal is whether the primary Judge correctly rejected the claim by the appellant (‘Nine’) that the respondents (‘Ice’) had infringed Nine’s copyright in its television program schedules. There is no dispute that the schedules are compilations and constitute original literary works in which Nine holds copyright. Specifically, there is no dispute that Nine holds copyright in the ‘Weekly Schedules’ it distributes selectively to so-called ‘Aggregators’ approximately two weeks before the commencement of the relevant broadcast week. However, her Honour held that Nine had not established that Ice, which provides a subscription-based ‘electronic program guide’ (‘EPG’) for television called ‘IceGuide’, has reproduced a substantial part of Nine’s copyright works.

2 Nine’s case rested on the first two columns of the Weekly Schedules (an example of which is reproduced [21] below). These columns set out, for a future broadcast week, the time slot for each program to be broadcast and the program and episode title for that time slot. (The material contained in these columns was referred to in the proceedings as ‘time and title information’.) Nine claimed that Ice had indirectly copied time and title information from the Weekly Schedules. Ice had done this by obtaining time and title information from the "Aggregated Guides" compiled by Aggregators from (among other sources) the Weekly Schedules. Specifically, Nine alleged that Ice infringed its copyright in the Weekly Schedules by filling in or confirming otherwise incomplete draft programming schedules from the time and title information incorporated in the Aggregated Guides.

3 Nine claimed that it had invested very considerable skill and labour in making the programming decisions recorded in the Weekly Schedules. This skill and labour gave the compilations their character as original literary works, even though the Weekly Schedules contained a good deal of additional information. The benefit of this skill and labour was precisely what Ice had appropriated by its activities. It was not part of Nine’s case that any particular skill and labour went into the form in which the Weekly Schedules recorded the time and title information or the other material set out in the various columns.

5 Consistently with her Honour’s holding on the question of infringement, she dismissed Nine’s application. Nine’s notice of appeal seeks an order setting aside the order dismissing the application. Although the notice of appeal also asks this Court to make the orders sought in the application, Nine’s submissions do not address the form of relief that would be appropriate should the appeal succeed. Consequently, if Nine’s appeal succeeds the matter will need to be remitted to the primary Judge to determine the form of relief to which Nine is entitled.

6 Nine argues on the appeal that the conclusion reached by the primary Judge was affected by several errors. They are said to be the following:

7 Ice supports the primary Judge’s reasoning, although it has also filed a notice of contention seeking to uphold her Honour’s conclusion on a ground rejected by her. The principal contentions advanced by Ice are as follows:

8 Ice’s notice of contention disputes the primary Judge’s finding that Ice took portions of Nine’s compilation and contends that her Honour erred in finding that there was ‘a relevant causal connection’ between the Weekly Schedules and IceGuide. The factual basis for this contention is that Ice had no access to the Weekly Schedules themselves. Instead, it updated and completed templates for IceGuide by referring to Aggregated Guides prepared by the Aggregators to whom Nine supplied the Weekly Schedules under licence (other television broadcasters providing comparable information to the Aggregators). Ice says that the Aggregated Guides are separate copyright works and that access by Ice to a subset of the information (the time and title information), shorn of the expression and arrangement in the Weekly Schedules, could not supply the necessary causal connection with the copyright work.

9 Section 32(1) of the Copyright Act provides that copyright subsists in an ‘original literary ... work that is unpublished’ and of which the author is a ‘qualified person’. No issue arises in this case as to whether the authors of the Weekly Schedules were qualified persons: see s 32(4). Copyright in a published original literary work is provided for by s 32(2) of the Copyright Act. Section 35(6) provides that where a literary work is made by the author in pursuance of the terms of his or her employment by another person, that other person is the owner of any copyright subsisting in the work.

10 The word ‘original’ is not defined in the Copyright Act. However, a ‘literary work’ includes (s10(1)):

11 Section 31(1) provides that, for the purposes of the Copyright Act, copyright is the exclusive right:

The expression ‘material form’, in relation to a work, includes any form (whether visible or not) of storage of the work or a substantial part of the work, whether or not the work or a substantial part of the work can be reproduced: s 10(1). (This definition applies on and after 1 January 2005: US Free Trade Agreement Implementation Act 2004 (Cth), Sch 9, Item 186.)

13 The following account of the facts is based on the primary Judge’s findings. With one exception, to which we refer later ([84]-[86] below), her Honour’s findings on primary facts were not challenged on the appeal.

14 Nine decides the order in which television programs are broadcast by stations within the Nine Network, which includes stations in Sydney, Melbourne, Brisbane and Darwin. Nine also provides content to affiliates, which include metropolitan stations and regional broadcasters.

15 Nine generally broadcasts between 24 and 30 programs of various kinds each day, or between 168 and 210 programs weekly. Many factors are taken into account in making decisions with respect to the selection, arrangement and ordering of the programs to be broadcast. These factors include the nature of local and overseas programs that Nine has acquired; the likely size and demographic composition of the audiences; programming decisions by competitors; and the availability of broadcast rights. In addition, Nine must take into account its statutory and contractual obligations. The responsible executives attempt to create programming that appeals especially to the 16-39 and 25-54 demographic groups, since this maximises advertising revenue. Each day’s program is individually developed.

16 The two executives responsible for selecting, arranging and ordering programs at the relevant times were Mr Healy, who was in charge of prime time (6.00 pm to midnight), and Ms Wieland, who was in charge of daytime and off-peak programming.

17 Mr Healy used a large notebook containing blank grids to record his selections (‘the Grid’). Each page represented a week of the year and was divided into seven vertical columns, one for each day of the week. Horizontal half-hour segments represented the time slots. Mr Healy wrote his program selections onto the Grid in pencil, using the program name or an abbreviation for it. He first entered events fixed in the calendar, such as industry award programs, followed by sporting events. Next he recorded programs broadcast at the same time each week, such as the evening news. Mr Healy then completed the remaining vacant timeslots, exercising his judgment in the light of the factors identified earlier. Ms Wieland adopted a similar approach to off-peak programming, except that she used an Excel spreadsheet.

18 About three to four weeks before any given broadcast week, the entries were transposed onto a consolidated ‘Master Paper Grid’. The entries on the Master Paper Grid were also entered into a database. This allowed Nine personnel and local affiliates to gain access to the material.

19 Approximately 17 days before the commencement of a broadcast week, most of the programming for that week had been completed. At this time, the database was modified to reflect differences in programming between different stations in the Nine Network.

20 The database was used to create schedules in various formats. The ‘First and Final Schedule’ set out programming for two consecutive weeks. This version of the schedules did not include synopses of programs, but it did include information not recorded elsewhere, such as internal catalogue codes used by Nine for its own purposes.

21 The Weekly Schedule was produced in both Excel and text formats. One page of the Weekly Schedule for the broadcast week commencing 11 June 2006 in Excel format is set out below. It recorded programming for TCN-9 (Sydney) from 6.00 am to 6.00 pm on Sunday, 11 June 2006, and illustrates the form of the Weekly Schedules during the relevant period:

TCN Channel 9 Program Guide
Copyright 2001 Nine Network Australia Pty Ltd
Sunday June 11, 2006

0600	MAKE WAY FOR NODDY Policeman for a Day	Rpt	G	(S)	Animated series featuring the beloved Noddy
06.20	LITTLE RED TRACTOR Lucky Day	Rpt	G	(S) WS	Stan is not a great believer in luck: however, after a day of bizarre mishaps and lucky escapes both he and Little Red Tractor have cause to reconsider - could it be the lucky penny, and the four leaf clover they have picked up along the way are really bringing them luck?
06.30	BARNEY & FRIENDS Squares, Squares Everywhere	Rpt	G	(S)	Nick’s homework is to find as many squares as he can. It’s great fun when Barney and the kips help!
07.00	(HOT) SOURCE	Rpt	G	(S) WS	Join your hosts David Whitehill, Miranda Deakin, Tristan Kurz and Asha Kuerton as they present the very latest in children’s stories entertainment, reviews, news, music clips and celebrity interviews.
07.30	BUSINESS SUCCESS		G	WS	Business Success will answer the many questions that arise when starting up a small business, with business legends offering advice that they may wish someone had been able to offer them!
08.00	BUSINESS SUNDAY	#Live#	NA HD	(S) WS	Ali Moore hosts Business Sunday featuring regular profiles on important industries, major corporations and innovative small businesses. This show features a highly respected and influential team of financial and political analysts, including Ross Greenwood and Adam Shand.
09.00	SUNDAY		NA HD	(S) WS	Jana Wendt leads a team of highly successful respected reports including Ross Coulthart, Sarah Ferguson and Graham Davis. Sunday topics include the Laurie Oakes interview as well as coverage of the arts, including Peter Thompson’s film review
11.00	THE SUNDAY FOOTY SHOW	#Live#	G WS	HD	Join Paul Vautin, Peter Sterling, Jim Smith and Matty Johns on The Sunday Footy Show for all the latest news and reviews from on and off the footyfield as well as a bumper season preview featuring each of the teams.
12.00	SUNDAY ROAST	#Live#	PG WS	HD	The Sunday Roast is a LIVE panel show tearing into the controversies and characters of Rugby League. Hosted by Andrew Voss, the panel includes "enforcers" Mark Geyer and Matthew Johns.
01.00	WIDE WORLD OF SPORTS NINE’S SUNDAY FOOTBALL LIVE Port Adelaide v Hawthorn	#Live#	NA	WS	Wide World of Sports presents Nine’s Sunday Football Live, Port Adelaide v Hawthorn, from AAMI Stadium. Join your expert commentary team including Dennis Cometti, Dwayne Russell, Garry Lyon and Dermott Brereton for all the action.
04.00	WIDE WORLD OF SPORTS NINE’S SUNDAY FOOTBALL Parramatta Eels v Melbourne Storm		NA	WS	Wide World of Sports presents Nine’s Sunday Football. Parramatta Eels v Melbourne Storm, from Parramatta Stadium. Join your expert commentary team including Ray Warren, Peter Sterling, Phil Gould and Matty Johns with sideline commentary from Andrew Voss.
06.00	NATIONAL NINE NEWS SUNDAY		NA WS	(S)	National Nine Weekend News presented by Mike Munro

Column 3 Information about the currency of the program, for example whether it was live or a repeat.

Column 4 Classification information, for example G (General viewing) or PG (Parental Guidance); the format of the broadcast, for example WS (Widescreen) or HD (High Definition); and closed caption information for the hearing impaired (S).

22 The Weekly Schedules were not issued to the public. At about the time a Weekly Schedule was created (that is, approximately 17 days before the relevant broadcast week), it was sent in Excel and text formats to Pagemasters Pty Ltd (‘Pagemaster’), one of the Aggregators. Shortly thereafter, it was sent to two other Aggregators, HWW Ltd (‘HWW’) and eBroadcast Australia (‘eBroadcast’).

23 The Aggregators combined the information supplied by Nine with comparable information provided by other television broadcasters. The Aggregated Guides compiled by the Aggregators were published in print (for example, in TV Week and in newspapers); online, through mobile telephone content services (for example, the Vodaphone Mobile Phone Guide); and through an EPG provided by Foxtel (a pay television service) to its subscribers.

24 The primary Judge analysed the activities of the Aggregators in some detail. By way of illustration, HWW received programming information from 257 channels, of which over 100 were free-to-air channels. HWW extracted program information using a proprietary software application and uploaded the information onto its database. The HWW database had 31 separate fields of information for each program, only 14 of which were completed from information supplied by Nine in the Weekly Schedules. The data received by HWW in the Weekly Schedule were ‘separated’ and entered into the appropriate fields. HWW checked the data and made corrections and amendments in accordance with its own rules and practices. Her Honour found that there was no paying market for the program listing for Nine alone. It was the aggregation of information from various sources that made the process commercially valuable, although of course the Aggregators had to have access to all the relevant information.

25 A team of approximately ten HWW staff members worked on the provision of HWW’s television content and data management services and on compiling its own Aggregated Guide known as ‘YourTV Guide’. HWW disseminated the information it compiled through YourTV Guide, which displayed nine days of program listings (the current day, the two previous days and the following six days). YourTV Guide also included a standard display of channel name, broadcast time and date, program and episode titles, program genre, instance information (for example, premiere, repeat, final, live), program duration, classification, consumer advice and a synopsis. Updates occurred each night at approximately 1.45 am.

26 Viewers could access YourTV Guide in aggregated or single network format. Synopses were not visible when YourTV Guide was viewed in aggregated format, but became visible in a separate pop-up window when the user mouse clicked on the name of the program. YourTV Guide also displayed a copyright notice which stated that HWW publishes the aggregated program listings ‘under licence from the TV channels’ and that the various non-aggregated television guides ‘[had] many copyright owners’, including Nine.

27 HWW also disseminated program listing information to third party clients, for publication by them in other Aggregated Guides. These clients include Yahoo Australia & NZ Pty Ltd (‘Yahoo’), which provided an Aggregated Guide known as ‘Yahoo7 Guide’ on its website. HWW distributed its program listing information to Yahoo on a rolling five day business feed for publication in Yahoo7 Guide.

28 The primary Judge found that there were ‘significant differences of "look, feel, and content"’ between the Aggregated Guides and the Weekly Schedules. For example, the information in the Aggregated Guides was displayed in a daily, rather than weekly format; time and title information was arranged on a horizontal grid and not in vertical columns; and a day was a calendar day rather than the 24 hours starting at 6.00 am on a given day. Her Honour also found that once HWW received individual compilations from the various networks, including Nine, it effectively ‘de-compiled’ them and produced a new compilation. This was not merely a change of form, but a change in the nature and content of the compilation itself.

29 Nine’s programming continued to be amended after distribution of the Weekly Schedules to the Aggregators. Nine advised the Aggregators of changes or additions to its programming by ‘Late Change Notices’. The Late Change Notices contained information that was not included in a Weekly Schedule, for example film titles that Nine had previously withheld for strategic reasons.

30 Late Change Notices were typically issued by Nine each week and could be issued up to and including the day upon which a program was scheduled to be broadcast. The Late Change Notices notified, for example, a change to a program line-up or to program information, such as the classification or duration. By the time the Aggregators received a Late Change Notice, they might already have published the Aggregated Guide for the relevant broadcast period. The Aggregators dealt with this problem by updating the Aggregate Guides from time to time to reflect the changes conveyed by the Late Change Notices.

31 During the period from 1 April 2005 to 10 August 2006, Nine issued about 600 Late Change Notices in electronic form. This represented an average of approximately nine Late Change Notices issued to Aggregators per week during this period of 16 months.

32 IceGuide is an interactive EPG. An EPG allows a television program schedule to be viewed on the screen of a television set or computer. The program schedule is presented in the form of a list or chart, showing the various programs available on individual or multiple channels. EPGs can be configured to update the program schedule daily. This allows the viewer to see the program schedule for the day on which the guide is being viewed, as well as for a future period. Some EPGs show a program schedule for seven or more days into the future. Others show only the name and timeslot for the program currently being broadcast and the immediately following program.

33 IceGuide was the only commercially available EPG in Australia which could be used to record programs with different PVR (personal video recorder) devices and media centres. In order to receive Iceguide, a subscriber’s PVR or media centre had first to be connected to the internet. IceGuide data were held by Ice in a database. A PVR or media centre could be programmed to connect to the database and ‘fetch’ and download the latest version of IceGuide for a six to eight day period.

34 Users were able to fetch different subsets of data contained in Ice’s database. For example, if a user wished to view IceGuide for Sydney channels only, data relating to the programming for Melbourne channels would not be fetched. IceGuide data were encoded for transmission over the internet, the manner of receipt of the data depending on the hardware used by the viewer. After the data had been fetched by the PVR or media centre, they were stored in text files on the hard drive of the particular device. In general, an IceGuide user did not access or print out IceGuide in text format.

35 Once a user configured his or her PVR or media centre to fetch data from Ice’s database and activated an IceGuide subscription, IceGuide could be displayed on the television screen or monitor by pressing a button. The viewer could then:

36 Each PVR or media centre had its own proprietary EPG format. These determined the ‘look’ of IceGuide and the way that IceGuide was displayed on the screen of that particular device. The options available to the user typically included multiple channel, single channel or single program formats. For example, if the viewer used a particular brand of PVR, IceGuide appeared on the screen in single channel format as follows:

38 Although the IceGuide display format differed, depending upon the PVR or media centre used and the format chosen by the user, each PVR or media centre displaying IceGuide for a particular channel was able to display:

39 The primary Judge identified a number of ‘the more obvious differences’ between IceGuide and the Weekly Schedule, as follows:

40 Nine contended at the trial that Mr Rilett, Ice’s ‘Content Manager’, created a seven day television schedule for Ice in 2004 simply by copying information from the Aggregated Guides, including material supplied to the Aggregators by Nine. It was not part of Nine’s case that Ice had direct access to the Weekly Schedules or to any other schedules prepared within Nine. Nine’s case was that Mr Rilett had copied the time and title information from the Aggregated Guides and had thus indirectly copied Nine’s copyright work.

41 The primary Judge rejected Nine’s challenge to Mr Rilett’s credibility and accepted his evidence as to how he prepared templates for the programming schedules of each of the three commercial free-to-air broadcasters in Sydney. On her Honour’s findings, Mr Rilett prepared the templates by compiling a handwritten list of over 100 programs. He then watched television for three weeks in Adelaide (a process he described as ‘torture’) and recorded program details in a notebook. He noted the programs for a 24-hour period for each day of the week for each of the three free-to-air networks.

42 Mr Rilett used Microsoft Excel to create seven documents for each Sydney station (one for each day of the week). These templates were populated with the information Mr Rilett had recorded in his notebook including program name, movie slot times, duration, genre, classification and program technical information. Because the templates were based on Mr Rilett’s viewing observations in Adelaide, he modified them to exclude programs specific to Adelaide.

43 In about September 2004, Mr Rilett compared the Sydney templates with the published Aggregated Guides for Sydney, including YourTV Guide. He noted a ‘slight variation’ between his templates and the published guides and amended the templates accordingly.

44 Mr Rilett completed the Sydney templates by 25 October 2004. In November 2004, they were incorporated, together with his program descriptions list, into the Ice database. Using the database and associated computer programs, Mr Rilett then compiled 24-hour television program guides for each of the commercial free-to-air television stations in Sydney and Melbourne, six days ahead of the scheduled broadcast times. Programming for additional regions was incorporated into the Ice database and into IceGuide itself before its launch in April 2005.

45 Preparation of the IceGuide schedule for a given broadcast day and a particular free-to-air channel ordinarily commenced by a staff member instructing Ice’s software to ‘transfer’ a past IceGuide schedule from the same day of a previous week. The transfer of the ‘source schedule’ was generally done six days ahead of any given broadcast day. The source schedule was usually taken from the previous week, although there were exceptions, especially in summer. For example, if Nine had broadcast cricket matches on the previous Monday, but no cricket match was scheduled for broadcast on the following Monday, Ice staff would generally use an earlier non-cricket Monday as the source schedule.

46 The term used within Ice for this process of preparing the program schedule from a source schedule was ‘predicting it over’. The process involved an operator creating a starting template for the ‘destination schedule’. The starting template had the same program and title information (including movies) as the source schedule, except that the software replaced episode titles with question marks.

47 The parties disagreed at the trial as to the proper characterisation of Ice’s use of the source schedules. Ice’s position was that there was a high degree of consistency and repetition in Nine’s scheduling. It emphasised the number of so-called ‘Strip Programs’ broadcast between 6:00 am and 7:00 pm Mondays to Fridays – that is, programs broadcast in the same timeslot on a regular basis over an extended period. Her Honour found that:

Her Honour also found that the fact that many of the programs shown weekly on Nine were Strip Programs did not deprive the Weekly Schedules of:

48 The primary Judge considered that the synopses incorporated into IceGuide constituted an important point of distinction between the Weekly Schedules and IceGuide. She found that Ice compiled synopses for programs without referring to Australian television guides compiled or distributed by Aggregators. The synopses were prepared using a variety of sources, such as reference books and websites. When no research source was available, the synopses were simply ‘made up’.

49 Ice obviously needed to incorporate into IceGuide differences between the source schedule and Nine’s programming for the relevant period. As her Honour found, it was essential to Ice’s business model (and presumably to the success of its venture) that IceGuide display accurate details of the television programs scheduled to be broadcast on free-to-air television stations. Her Honour also found that Ice could not know with certainty the details of Nine’s programming without access to the Aggregated Guides.

50 To ensure that it obtained accurate information concerning Nine’s programming Ice employees opened a number of online Aggregated Guides, such as Yahoo7 Guide, YourTV Guide and OurGuide. They then compared the program listing information in the starting template with the published guides. When the Ice operator found that the time or title of a program listed in the starting template differed from the entry in the published guides, he or she amended the template so that IceGuide displayed the same program times and titles shown in the published guide. Ice had a rule that three sources had to be opened and referred to before any amendment could be made to IceGuide.

51 By way of example, Mr Rilett used IceGuide’s program listing information for TCN-9 Sydney on Saturday, 16 September 2006, as the source schedule to create the starting template for TCN-9’s programming on Saturday, 23 September 2006. He followed the procedure already described to check the accuracy of the template against the Aggregated Guides. This procedure resulted in changes to program titles, times or episodes for 17 of the 31 timeslots in IceGuide in its final form for Saturday, 23 September 2006.

52 The primary Judge accepted that Ice tended to make fewer adjustments to IceGuide when finalising it for week days, largely because of the impact of Strip Programs. For example, Ice made 13 changes to the 29 timeslots in the template created for IceGuide for Monday, 2 October 2006 (the evidence suggests that one or two of these changes may have been due to Late Change Notices rather than to the checking process).

53 When making changes as a result of the checking process, Ice adopted a particular approach devised (as Ice acknowledged) to avoid copyright infringement. Ice staff searched the Ice database for programs or episode titles already within the database. This generated an on-screen list of program titles. A program to be included in the destination schedule could then be selected by the click of a mouse. The start time was selected or amended using drop-down boxes, which incorporated a range of available times. Clicking the ‘Update Show’ caused the software to insert the program into the destination schedules. Episode titles were also displayed by Ice’s software in a list accessible to the operator. If a program or episode to be inserted into IceGuide did not appear in the list of program or episode titles already in the Ice database, it had to be added using a separate screen entitled ‘Add New Program’.

54 Ice also had to incorporate Nine’s late changes into IceGuide. A staff member did this on a daily basis by comparing IceGuide for the upcoming 60-hour period with listings recorded in YourTV Guide. When the staff member discerned a difference as to program name, timeslot, episode, title or duration, the staff member amended IceGuide to show the same information as appeared in the published guide. If late changes were required to be made in Sydney or Melbourne, the staff member then compared the listings information in Yahoo7 Guide with the information in IceGuide for other stations within the Nine Network for the corresponding time period. In the event of a discrepancy, IceGuide was amended accordingly. The amendments were made by using a series of different screens and functions made available by Ice’s software, rather than by direct entry into the Ice database.

55 The primary Judge identified, relevantly for present purposes, four issues for determination, as follows:

56 Ice accepted at the trial that creation of the Nine programming schedules gave rise to literary works in which copyright subsisted. Nine, for its part, accepted that its programming decisions could not attract copyright protection unless and until they were reduced to a material form. It was therefore common ground that Nine had copyright in the Weekly Schedules and in the other formats of the schedules, such as the Master Paper Grid.

57 The primary Judge found, not surprisingly, that each Weekly Schedule, whether in Excel or text format, was a compilation and thus constituted a ‘literary work’ within the definition in s 10(1) of the Copyright Act. Ice did not dispute that Nine utilised sufficient skill and labour in creating the Weekly Schedules to render them original literary works. Her Honour found that:

58 While Nine submitted that copyright had subsisted in the Weekly Schedules since 1956, her Honour considered that there was no need to address the submission as Ice had commenced its activities only in 2004.

59 The primary Judge rejected Nine’s contention that it had copyright in a discrete part of the Weekly Schedules, being the time and title information. Her Honour pointed out that the Copyright Act provides for the subsistence of copyright in a compilation of information, not in information itself:

60 The primary Judge next considered the nature of the skill and labour protected by Nine’s copyright in the Weekly Schedule, since this was relevant to the substantiality of any reproduction by Ice of the contents of the Weekly Schedules. Her Honour found that there were:

Despite Ice’s concession, her Honour considered the particular circumstances to determine the skill and labour involved in preparing the compilation. She found that:

62 For these reasons, her Honour rejected Nine’s submission that the preparatory skill of planning the program schedule and the skill involved in compiling the program times and titles in material form could not be separated. Her Honour accepted that this might be so in the case of a compilation like the Yellow Pages, considered in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112; (2002) 119 FCR 491 (‘Desktop Marketing’), where the skill and labour lay in the collection of the data and the form of the compilation necessarily followed from the nature of the compilation. However, it was not the case where:

63 The primary Judge found that there were significant differences of ‘look, feel, and content’ between the Weekly Schedules and the Aggregated Guides. She also found that, although the licensing arrangements between Nine and the Aggregators preserved Nine’s intellectual property rights in the ‘Nine Listing Content’ (including time and title information), copyright in an Aggregated Guide was distinct from Nine’s copyright in the Weekly Schedule. Each compilation was separate, even though the Aggregated Guides incorporated information from the Weekly Schedules supplied by Nine to the Aggregators under licence.

64 The primary Judge summarised her conclusion, by reference to HWW, as follows:

65 Her Honour pointed out that the Aggregators had made no claim that Ice had infringed their copyright. The Aggregated Guides stood between Ice and the taking of the skill and labour of the creation of the Weekly Schedule. Nonetheless:

66 The primary Judge next considered whether the creation of the initial templates within Ice infringed Nine’s copyright in the Weekly Schedules. Desktop Marketing had affirmed that it was open to a person to ascertain the facts recorded in a compilation by independent inquiries and to make his or her own compilation using the results of the inquiries. So long as the second compiler did not copy the first compilation, there was no infringement of copyright.

67 The question of infringement in this case turned on whether Mr Rilett’s evidence was to be accepted. Since her Honour accepted Mr Rilett’s explanation as to the source of the program time and title information first compiled by him, Nine had failed to establish that its initial templates had been copied indirectly from Nine’s Weekly Schedules, through Ice’s use of the Aggregated Guides.

68 The primary Judge accepted that Ice could not know with certainty the details of Nine’s programming without access to the Aggregated Guides. She gave examples of the numerous changes made to the initial templates prepared within Ice in order to produce IceGuide. These changes came about because Ice was able to access and had accessed online Aggregated Guides, primarily YourTV Guide and Yahoo7 Guide, both of which were derived from content supplied to HWW.

69 The primary Judge acknowledged that Ice had utilised techniques for incorporating information that avoided the need to copy type information directly into IceGuide. It had adopted these techniques as a means of avoiding copyright infringement. However, Ice’s purpose was not the point. Her Honour considered that the skill and labour protected by copyright could be taken by means other than direct copying or a cut and paste procedure. The taking of that skill and labour was not avoided by the adoption of Ice’s techniques.

70 Despite these findings, the primary Judge considered that there were differences between Ice’s activities and the activities of the infringer in Desktop Marketing. In that case, Desktop Marketing Systems Pty Ltd (‘Desktop’) admitted that it had taken names, addresses and telephone numbers from the Telstra telephone directories. In her Honour’s view:

71 Her Honour considered that it was ultimately a question of fact and degree to determine whether an alleged infringer had taken a substantial part of a copyright work. The issue was whether the part taken represented a substantial part of the labour, skill and judgment that made Nine’s work original. In this respect, her Honour found that the Weekly Schedule and IceGuide were each:

Her Honour considered it significant that IceGuide had not reproduced the content or form of the Aggregated Guides, for example in relation to synopses.

73 The primary Judge found that Nine’s skill and labour had not been primarily expended for the purpose of producing a literary work, but for the purpose of broadcasting programs in order to maximise viewers. There had not been ‘a relevant appropriation of that skill and labour by Ice in composing the IceGuide’:

74 The primary Judge then asked herself: ‘What is the interest that Nine’s copyright protects?’. The question was not whether Ice had taken the skill and labour which had been ‘expended in programming decisions’, but whether it had taken its skill and labour ‘of creating the copyright work’. The latter was not co-extensive with the former.

75 In determining whether an alleged infringer has taken a substantial part in quality of a work, her Honour thought that the impact of the copying on the interest protected by the copyright was relevant. The question was one of protection of the relevant skill and labour. It followed, so her Honour held, that where the relevant skill and labour is referable also to the form of the compilation, the notion of a substantial part of the compilation is also defined by reference to its form.

76 In this case, different content and modes of expression could be used for a television program schedule. For example, the format could be horizontal or vertical and additional material could be incorporated in a variety of ways. The adding of information could also ‘affect the compilation as a whole and the interrelationship of its component parts’.

77 The primary Judge rejected Ice’s contention that there could be no infringement of a compilation unless each of the selection, composition and arrangement was reproduced. In her view, a taking of any one of these attributes would be sufficient to constitute the taking of a substantial part of the work as a whole, if the requisite skill and labour had been appropriated. However, it was necessary to correlate what had been taken by the alleged infringer and what was original in the copyright work.

78 Nine, like Telstra Corporation Ltd (‘Telstra’) in Desktop Marketing, possessed material for inclusion in the compilation because of the effort involved in collating the time and title information, the additional program information and the synopses. However, the main purpose of the work undertaken by Mr Healy and Ms Wieland at Nine was to determine the order of programs to be broadcast. Ice did not engage in broadcasting and was not in competition with Nine for viewers. Once Nine had decided to acquire a program and had placed it in a timeslot, the time and title information had been determined for the purposes of the Weekly Schedule.

79 The primary Judge found that the Aggregated Guides were separate compilations, of which Nine’s programming information formed only part. Ice had accessed the Aggregated Guides. It had adopted its own format and content and utilised its own skill and labour to insert information into IceGuide. It had not appropriated Nine’s skill and labour ‘in arranging the format or the content of the additional program information and the synopses’. Ice had:

80 In order to ascertain whether the taking of ‘the slivers of time and title information, individually and cumulatively for a given week’ constituted the taking of a substantial part of Nine’s copyright work, as it formed part of the Aggregated Guides, her Honour thought that a number of factors had to be considered. She identified them as follows:

81 In assessing what Ice had taken as a matter of fact and degree, her Honour concluded that it did not represent a substantial part of the Weekly Schedule. Thus Nine’s case founded on the time and title information failed.

82 It is common ground on the appeal that Nine holds copyright in the Weekly Schedule as an original literary work for the purposes of s 32(1) of the Copyright Act. It is also common ground that each Weekly Schedule is a ‘literary work’, as defined in s 10(1), because it is a compilation.

Both these questions must be answered affirmatively if Nine’s appeal is to succeed.

84 Before dealing with the principal issues, it is convenient to refer to the significant challenge to her Honour’s findings of primary fact. Nine challenges her Honour’s acceptance of Mr Rilett’s account of how he came to prepare the initial templates. Nine submits that her Honour paid insufficient attention to Mr Rilett’s failure to keep records of the tortuous process he claimed to have endured before producing the templates. Nine says that in the absence of a paper trail, Ice has not rebutted the inference that the templates had been created directly from the published Aggregated Guides.

85 Contrary to Nine’s submissions, the primary Judge took into account the absence of a paper trail in her decision to accept Mr Rilett’s evidence as to the process he undertook in August and September 2004. Her Honour paid careful attention to what was said to be the close correlation between the program time and title information for Sydney in the templates and published information in TV Week for the relevant period. However, she noted differences of content that were consistent with Mr Rilett’s explanation.

86 The primary Judge had the advantage of observing Mr Rilett in the witness box. She found his evidence of watching television programs over a period of three weeks in August 2004 to be ‘compelling’. There was nothing ‘glaringly improbable’ or inconsistent with incontrovertible evidence in the findings made by her Honour: cf Fox v Percy [2003] HCA 22; (2003) 214 CLR 118, at 128-129 [28]-[31], per Gleeson CJ, Gummow and Kirby JJ.

87 Both the primary judgment and the submissions of the parties to the appeal devote close attention on the issue of substantiality to the decision of the Full Federal Court (constituted by the same bench as this Court) in Desktop Marketing. In a sense this is a little odd, as it is common ground that Desktop Marketing was a different case to the present. Nonetheless, it is useful to commence the analysis by explaining how Desktop Marketing differed from this case. The explanation elucidates the concepts of originality and substantiality and the relationships between them.

88 The principal issues in Desktop Marketing were whether Telstra held copyright in its White Pages and Yellow Pages directories and, if so, whether Desktop had infringed Telstra’s copyright by producing CD-ROMs. Desktop’s software products enabled the user to search the databases in a variety of ways: Desktop Marketing, at 554 [256], per Sackville J. Desktop conceded that each condition for the establishment of copyright had been satisfied, except for the requirement that the directories be ‘original’ literary works: at 557 [273], per Sackville J. However, Desktop argued that the mere industrious compilation of publicly available information and its arrangement in trite format (that is, in alphabetical order), as distinct from an intellectual contribution in the form of selecting and arranging material, could not satisfy the statutory requirement of originality.

89 The judgments in Desktop Marketing characterised the compilation in that case as comprising ‘factual information’: at 496 [7], per Black CJ; at 498 [18], per Lindgren J; at 573 [338], per Sackville J. The compilation was also described as ‘whole of universe’, in the sense that Telstra made no selection of the subscribers to be included. The universe for each regional directory was simply all subscribers in the region (other than those with a ‘silent’ line): at 499 [21], per Lindgren J; at 557-558 [274], per Sackville J. Moreover, Telstra had little option but to present information in alphabetical order: ‘the use of the well-known alphabetical arrangement was predictable, indeed inevitable’: a 548 [223], per Lindgren J. Since there was no skill or significant labour in the manner of presentation, the question was whether ‘industrious collection’ was enough to establish copyright in a compilation of facts: at 558 [276], per Sackville J (and see 508 [51] and 535-6 [170] per Lindgren J).

90 The Court concluded that, as a matter of authority and policy, the concept of originality in copyright should be understood as embracing a compilation that is the product of substantial labour and expense, provided it is not merely copied from other works: at 532 [160], per Lindgren J; 597 [423], per Sackville J. For that reason, Telstra was held to have established copyright in its directories. However, the Court emphasised that it was the collection in respect of which copyright existed, not the facts collected by the compiler: at 598 [425], per Sackville J.

91 This analysis of the concept of originality was critical to the question of infringement in Desktop Marketing. The originality of Telstra’s compilations lay in the labour and expense involved in collecting the data. It did not lie in the prosaic method of presentation of the data by means of the alphabetical listing of the names and address of each subscriber: at 548 [223], per Lindgren J; 600 [438], per Sackville J. Once that was accepted, it followed that Desktop had taken a substantial part of each of the copyright works since it had appropriated the fruits of Telstra’s labour and expense: at 535-536 [170], per Lindgren J; at 600 [439], per Sackville J. It was not to the point that Desktop did not adopt Telstra’s prosaic mode of presentation of the data, since visual similarity was not required to establish infringement in this case. Lindgren J stated the relevant principle as follows (at 552 [238]):

92 Desktop Marketing can be described as a ‘sweat of the brow’ case, in that the compilation prepared by Telstra was of existing facts that, in theory at least, could have been ascertained by anyone prepared to put in the necessary labour. Unlike Desktop Marketing, the present case does not involve a compilation of existing facts. No one outside Nine would have been able to compile the precise programming recorded in the Weekly Schedules in advance of their creation and dissemination. No amount of independent work could have ascertained in advance Nine’s precise programming schedule for a particular day or week. This proposition is reflected in the findings of the primary Judge and, indeed, in the way the trial was conducted.

93 It is trite law that a finding of substantiality depends much more on the quality rather than on the quantity of what is taken by the alleged infringer: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 (‘Ladbroke v William Hill’), at 469, per Lord Reid, cited with approval by Gibbs CJ (with whom Mason and Brennan JJ agreed) in SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466 (‘Hart v Edwards Hot Water’), at 472; Autodesk Inc v Dyason (No 2) [1993] HCA 6; (1993) 176 CLR 300 (‘Autodesk v Dyason (No 2)’), at 305, per Mason CJ; Network Ten Pty Ltd v TCN Channel Nine Pty Ltd [2004] HCA 14; (2004) 218 CLR 273, at 293, per McHugh ACJ, Gummow and Hayne JJ. The quality of what is taken must be assessed by reference to the interest protected by the copyright: Nationwide News Pty Ltd v Copyright Agency Ltd (1996) 65 FCR 399, at 418, per Sackville J. In the case of a literary work, including a compilation, the quality relevant for the purpose of substantiality is the literary originality of what has been copied: Newspaper Licensing Agency v Marks & Spencer plc [2003] 1 AC 551, at 559, per Lord Hoffman.

94 These principles strongly suggest that, although the quantity of any material copied by Ice from the Weekly Schedules (directly or indirectly) is relevant to the issue of substantiality, it is more important to take into account the originality of the material that has been copied. This proposition directs attention to her Honour’s finding that there were two sets of skill and labour exercised by Nine in the creation of the Weekly Schedules. If, as her Honour found, Nine expended skill and labour in selecting and arranging programs for broadcast and if that skill and labour was exercised in creating the Weekly Schedules, it would seem that the originality of the copyright work derived, in large measure, from the creative role performed within Nine by Mr Healy and Ms Wieland. In other words, in determining whether the time and title information taken by Ice from the Weekly Schedules (via the Aggregated guides) constituted a substantial part of Nine’s copyright work, it would seem that the originality of that information lay not so much in the form in which Nine presented it, but in the skill and labour expended in selecting and arranging the programs.

ASSESSING THE PRIMARY JUDGE’S VIEWS ON ICE’S APPROPRIATION OF NINE’S SKILL AND LABOUR

95 The primary Judge was well aware of the principles to which we have referred. However, when the judgment is read as a whole, it can be seen that she gave three reasons for concluding that Ice, insofar as it had indirectly copied Nine’s time and title information, had not appropriated the skill and labour that Nine had utilised to create the Weekly Schedules and thus had not reproduced a substantial part of Nine’s copyright work. The first reason was that the skill and labour in selecting and arranging the programs on Nine was ‘antecedent’ or ‘preparatory’ to the exercise of skill and labour in preparing the Weekly Schedules. The second was that Nine’s main purpose in deciding which programs to broadcast and when to broadcast them was not to create a literary work, but to decide upon its programming schedule. The third was that Nine had failed to establish that the time and title information in the Weekly Schedules was ‘qualitatively more important than the synopses’. The first two reasons are related.

96 The first reason given by her Honour is difficult to reconcile with the authorities. In Independent Television Productions Ltd v Time Out Ltd [1984] FSR 64 (‘Time Out’), two broadcasters each published weekly magazines containing advance details of their programs for the following week. The defendants also published a weekly magazine containing, among much other information, advance details of selected television programs. These details had been obtained from or checked with the plaintiffs’ listings. The defendant argued that the plaintiffs had merely created information which was incapable of being the subject of copyright.

97 Whitford J rejected the contention, relying on the well-known judgment of Upjohn J in Football League Ltd v Littlewoods Pools Ltd [1959] 1 Ch 637 (‘Littlewoods Pools’). The latter case recognised the existence of copyright in football fixtures lists produced by the plaintiff, which the defendants had used to make up their own pool entry forms. Upjohn J, while acknowledging (at 655) that each case must depend on its own facts, rejected a submission that a distinction had to be drawn between the plaintiff’s preliminary work (fixing times and dates of programs) and the actual work of compilation after the preliminary matters had been fixed. His Lordship considered (at 653-654) that it was not open to the defendants to argue that the only skill and labour that was relevant to the existence of copyright was that involved in reproducing a chronological list from the clubs’ list of fixtures. The energies that went into the selection and ordering of matches were to be attributed to the chronological fixture list. It was not to the point that the plaintiff had not employed the person who exercised the relevant skill and judgment to produce a book of reference. Upjohn J accepted that this person had been employed to produce the best possible schedule of programs (at 655) but, as he noted, the schedule had to be reduced to writing. The plaintiff’s efforts could not be dissected in the manner suggested by the defendants. His Lordship also held (at 658) that the ‘systematic pirating’ by the defendants week by week throughout the season of that part of the fixtures list which related to that week was a reproduction of the compilation.

98 Whitford J in Time Out considered that the plaintiffs had dedicated a great deal of skill and labour in creating the daily program schedules, which were then incorporated into the weekly listing of programs. He followed Littlewoods Pools in deciding that the schedules were compilations entitled to copyright protection. See also British Broadcasting Co v Wireless League Gazette Publishing Co [1926] 1 Ch 433.

99 Littlewoods Pools was referred to with approval in the decision of the House of Lords in Ladbroke v William Hill. The issues in that case were whether William Hill had copyright in football betting coupons it had devised and, if so, whether Ladbroke had infringed its copyright by reproducing parts of the coupons. It was not in dispute that William Hill had invested a vast amount of skill, judgment and work into building up the coupon. Lord Reid held (at 278) that all the skill, judgment and labour expended by William Hill had to be taken into account in determining whether the work was original. His Lordship considered that it was wrong to divide the process into two and to have regard, for copyright purposes, merely to the modest skill and labour involved in writing out the results on paper: see also at 282, per Lord Evershed; at 287, per Lord Hodson; at 290, per Lord Devlin; at 292-293, per Lord Pearce.

100 The decisions in Time Out, Littlewood Pools and Ladbroke v William Hill plainly recognise that the originality in a compilation, such as a listing of programs to be broadcast in a future period, may well lie primarily in the skill and labour expended by the compiler in selecting and ordering the programs. The decisions reject the notion that that kind of skill and labour should be disregarded when assessing the originality of a compilation. It is necessary to bear in mind that each case must depend on its own facts. However, there appears to be no cogent reason why Nine’s creative work in constructing the program listings should be ignored on the question of originality. Indeed, the use of words such as ‘antecedent’ or ‘preparatory’ tends to beg the question of determining the nature of the original work reflected in the Weekly Schedules.

101 The speeches in Ladbroke v William Hill also bear on the second of the three reasons given by the primary Judge for concluding that Ice had not appropriated a substantial part of Nine’s copyright work. Lord Devlin pointed out (at 290) that any selection requires a process of deciding between alternatives and expressed the view that it cannot matter whether the decision is made on business or literary grounds. Otherwise, there could never be copyright in a catalogue, a proposition that his Lordship considered to be unsustainable. Lord Devlin continued (at 290):

Lord Pearce thought (at 293) that there might be cases where a dichotomy might be justified between preliminary work and the actual transcription of a compilation if the work was done with no ultimate intention of a compilation. However, on the facts, that argument could not succeed in the case before him.

102 The primary Judge in the present case made no finding that Nine did not intend to create a compilation based on its programming decisions. On the contrary, her Honour’s findings make it clear that one object of the process engaged in by Mr Healy and Ms Wieland was to produce the Weekly Schedules for distribution to the Aggregators licensed by Nine. In other words, Nine engaged in the so-called preliminary work precisely in order to create the compilation in which it claims to have copyright. It is not to the point that (as her Honour found) the skill and labour expended by Nine on making programming decisions were not primarily expended for the purpose of producing a compilation. Contrary to her Honour’s implicit finding, Nine and Ice were competitors in the sense that each was seeking to derive profit from the dissemination of the time and title information (although Ice’s activities were not confined to disseminating Nine’s program schedules). Nine’s time and title information may have had less value if published separately, but it had great value as an essential component in a larger compilation.

103 In saying that each case must depend on its own facts (see [100] above) we recognise that there can be circumstances where work engaged in at an earlier point of time without any thought of the making of a compilation does not ‘count’ in the identification of originality or of substantial part. That, however, is not this case. When settling upon the times and titles, Mr Healy and Ms Wieland had in mind that a purpose of the exercise was the use of the result to create the Weekly Schedules.

104 Viewed more broadly, the creation by Nine of a compilation based on its programming (time and title) decisions, was a central element of its business as a television broadcaster for the reason that the compilation was an essential step in informing its potential viewing public of what it had on offer. Within the competitive environment of television broadcasting it can be assumed that Nine had no business option but to create the compilation. However attractive its programs and their scheduling might be, they would be of very limited value if viewers had no programme guide and had to chance upon the programs that they wanted to see.

105 The primary Judge’s third reason was that the time and title information was not qualitatively more important than the synopses. When determining whether a substantial part of a copyright work has been taken, it is important to inquire into the importance of the part taken to the copyright work as a whole by asking whether it is an ‘essential’ or ‘material’ part of the work: Autodesk v Dyason (No 2), at 305, per Mason CJ. In this respect, as Starke J remarked in Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd [1921] HCA 27; (1921) 29 CLR 396 (‘Blackie’), at 404, one person should not be allowed to take away the results of another’s labour unless the court is satisfied that the part taken is so slight and the effect on the total composition so small as to render the taking immaterial. Starke J found in Blackie that the defendant had taken a substantial part of an edition of Shakespeare’s plays by taking some notes from the introduction, even though the quantity taken was ‘not very considerable’ and not of ‘any outstanding value’ (at 403).

106 In this case, the question is not whether the time and title information was or was not ‘qualitatively more important’ in terms of originality than the synopses. Even if the synopses were more important in that sense, that would by no means preclude a finding that Ice had taken a substantial part of Nine’s copyright work. A particular element of a copyright work may be an essential or material part of that work, even if other aspects of the work demonstrate or reflect greater originality.

107 Ice submits that this Court should be careful not to approach the issue of substantiality in the manner of a court of first instance, rather than as an appellate court: Designers Guild Ltd v Russell Williams (Textiles) [2000] UKHL 58; [2001] All ER 700, at 702, per Lord Bingham. This submission is well-founded so far as it goes. But when a trial Judge has erred in her analysis of substantiality, the appellate court must form its own judgment on the uncontested or established primary facts. With respect to her Honour, we have concluded that none of the three reasons given by her for finding that Ice had not appropriated the skill and labour used by Nine to create the Weekly Schedules justifies that conclusion.

108 The conclusion that her Honour’s analysis reflects errors does not necessarily mean, however, that the critical question must be answered in Nine’s favour. As we have explained, that question is whether Ice has taken an essential or material part of Nine’s copyright work – that is, each Weekly Schedule as a whole. In addressing that question, the quality of the material taken, assessed by reference to the originality of the material that has been appropriated, is more important than the quantity.

109 The time and title information incorporated by Nine in its Weekly Schedules was a crucial element of the compilation, and was plainly of particular interest to potential viewers. The Weekly Schedules were the compilations by which Nine recorded its programming decisions, both for its own purposes and for the purposes of dissemination to Aggregators and, through them, to the potential viewing audience. While there were other elements of the Weekly Schedules that doubtless were also of interest for internal and external audiences, such as the synopses and the so-called additional information, it was the time and title information that formed the centrepiece of the Weekly Schedules. Everything else in the compilation was subsidiary to that information.

110 As her Honour found, Ice could have constructed IceGuide without Nine’s synopses (Ice prepared its own). Her Honour made no finding that Ice took additional information, such as program classifications, from the Aggregated Guides or the Weekly Schedules. But even if it did, the additional information would have been of no value to it without the time and title information. This follows from the primary Judge’s finding that it was essential to Ice’s business model that the time and title information incorporated in IceGuide be accurate. Equally, the synopses and additional information incorporated in the Weekly Schedules would also have been of little or no value as a compilation, whether commercially or as a repository of programming information, without the time and title information.

111 The time and title information incorporated into the Weekly Schedules reflected a great deal of skill and labour on the part of Mr Healy and Ms Wieland. As we have explained, 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.

112 Ice did not take all its time and title information from the Weekly Schedules (assuming that the necessary causal link can be established between time and title information in the Weekly Schedules and in IceGuide). The so-called ‘predicting it over’ process adopted by Ice enabled it to construct the starting templates. But those templates, derived from the source schedules accessed by Ice, lacked the crucial time and title information that would make the templates useful. That information, which Ice either obtained from or checked against the updated Aggregated Guides (which in turn incorporated time and title information provided by Nine), was essential to Ice’s project. Without it, IceGuide would have been commercially useless.

113 In our view, Ice’s use of time and title information, derived ultimately from the Weekly Schedules, involved the reproduction of more than a slight or immaterial portion of Nine’s copyright work. In terms of quantity, the findings of the primary Judge suggest that Ice took numerous discrete pieces of information recorded in the Weekly Schedules by means of accessing the Aggregated Guides. In the examples cited by her Honour, Ice made 17 changes to 31 timeslots in the final IceGuide for Saturday, 23 September 2006 and approximately 12 or 13 changes to 29 timeslots for Monday, 2 October 2005. It is true that the Weekly Schedule recorded more than simply the time and title information. But that information was the foundation of the Weekly Schedules. Ice appropriated many pieces of the time and title information, apparently on a weekly basis. It did so in order to create something commercially valuable out of templates that otherwise would have had no commercial value to it.

114 There are many authorities which have held a taking of a small quantity or proportion of a copyright work to be the reproduction of a substantial part of the work. Courts appear to be especially willing to make such a finding where the alleged infringer has systematically taken material, albeit in small quantities, on a regular basis. An example is Littlewoods Pools ([97] above; see also Trade Auxiliary Co v Middlesborough and District Tradesmen’s Protection Association (1888) 40 Ch D 425, at 429, per Chitty J (affirmed by the Court of Appeal: 40 Ch D, at 433); Cate v Devon and Exeter Constitutional Newspaper Co (1889) 40 Ch D 500, at 507 per North J.

115 When the quality of the material taken by Ice is considered, the substantiality of the part taken becomes even clearer. 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. It presumably takes a modest degree of skill and judgment to keep a particular program in the same timeslot each day or week, month after month. It takes much more skill and judgment to structure a complete programming schedule for a given 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.

116 The primary Judge took into account a number of factors in support of her conclusion that the ‘slivers of information’ taken by Ice did not constitute a substantial part of Nine’s copyright work ([80] above). In our opinion none of these factors justify the conclusion. We briefly explain why:

117 The primary Judge also relied on her finding that Ice did not take the arrangement or form of Nine’s time and title information. This aspect of her Honour’s reasoning, embraced by Ice, requires a somewhat more detailed response. We assume, for this purpose, that some similarity in arrangement or form must be shown to establish that Ice reproduced a substantial part of Nine’s copyright work, although the assumption is doubtful in the light of the definition of ‘material form’ in s 10(1) of the Copyright Act.

118 IceGuide allowed a user to display the ‘Program Guide’ in a variety of ways. The user could choose, for example, to display the information in a multi-channel form showing the programs to be broadcast on all available channels over a particular time span. The user could scroll through different time spans and bring up the programming available during those times. The Program Guide could also be displayed in a single channel format. Her Honour reproduced an example of that format in her judgment and it has also been reproduced earlier in this judgment ([36] above).

119 It can be seen that the format in which the time and title information is presented in the single channel format is similar, although not identical, to the columnar format used to present that information in the Weekly Schedules. It is true that her Honour found that the form and presentation of the data incorporated in the Weekly Schedules were not predetermined by the nature of the compilation. Her Honour pointed out that a television program schedule could be presented in a variety of ways and might or might not include vertical columns. Even so, the similarities between the columnar format of the Weekly Schedules and the single channel format of IceGuide is hardly surprising. The use of columns for program times and titles is a very obvious way of presenting the material, perhaps almost as obvious as the alphabetical listing of subscribers in Desktop Marketing.

120 We were taken in argument to other formats for the display of time and title information. One example was, if anything, closer in form to the first and second columns of the Weekly Schedules than the display referred to in the previous paragraph. Of course, because IceGuide, like other guides, is in electronic form, the material in its database can be manipulated and presented in ways that cannot be accommodated or matched by a simple typed or printed paper schedule. Nonetheless, if Nine must show that the allegedly infringing work reproduces a substantial part of the Weekly Schedules in a similar format, it has done so in this case.

121 We add one further observation. Reference was made in argument to the ingenuity invested by Ice in producing and maintaining an EPG that can be used to perform a wide variety of functions, including recording programs. No doubt Ice invested much ingenuity and devoted much labour to its product. But that cannot justify its reproduction of a substantial part of Nine’s Weekly Schedules as an element in its business plan.

122 Ice submits that its use of information that was originally disseminated in one form, but made available by Aggregators in a ‘wholly different form’, provides no relevant connection with Nine’s copyright work. Ice stresses that there is a distinction between a fact and a copyright work. It contends that:

123 Ice argues that the requisite causal connection was not present in this case because the information in the Weekly Schedules passed through the prism of the Aggregators’ compilations. The Aggregators separated the information and reassembled it into different arrangements. The result, as her Honour found, was that there were significant differences of ‘look, feel and content’ between the Weekly Schedules and the Aggregated Guides. According to Ice, her Honour’s finding that the work of the Aggregators had the effect of ‘de-compiling’ the Weekly Schedules ‘expresse[d] an important severance of the causal connection’.

124 The test of whether the necessary causal relationship exists between a copyright work and an infringing work is whether the infringing work was produced by use of the copyright work: Computer Edge Pty Ltd v Apple Computer, Inc [1986] HCA 19; (1986) 161 CLR 171, at 186, per Gibbs CJ. That test ordinarily involves assessing whether the alleged infringer has produced a result substantially similar to the copyright work by independent skill or labour, without copying: William Hill, at 469, per Lord Reid, cited with approval in Hart v Edwards Hot Water, at 472, per Gibbs CJ. All that is required is ‘some causal connection’: Francis Day Hunter Pty Ltd v Bron [1963] Ch 587, at 614, per Willmer LJ, also cited in Hart v Edwards Hot Water, at 472.

125 It is difficult to see how Ice can resist the conclusion, as her Honour found, that it used Nine’s copyright work by indirectly copying time and title information from the Aggregated Guides. Ice could not fulfil the requirements of its business model unless IceGuide incorporated accurate and up-to-date details of Nine’s programming schedule. Her Honour found that Ice could not know with certainty the details of Nine’s programming without access to the Aggregated Guides. Ice in fact updated and confirmed the accuracy of its database by accessing, on a regular and systematic basis, the Aggregated Guides. Ice took time and title information from, and checked other details against, the Aggregated Guides.

126 Ice correctly points out that the Aggregated Guides reassembled material supplied by broadcasters, including Nine. Her Honour found that there were differences in content between the Weekly Schedules and the Aggregated Guides ‘primarily in the additional program information and the synopses’. However, her Honour did not find that the time and title information reproduced in the Aggregated Guides was materially different from that in the Weekly Schedules.

127 The absence of any such finding reflects the evidence. The agreements between Nine and the Aggregators required the latter always to include certain mandatory information for each separate program, including time and title information. The agreements also required the Aggregators to make any amendments to time and title information in their databases notified by Nine. In consequence, the Aggregators did not make any changes of substance to time and title information supplied to them by Nine. The presentation of time and title information varied among the Aggregators. However, Yahoo7 TV, for example, showed time and title information in a similar format to that used in the Weekly Schedules, except that it presented Nine’s programming in a horizontal strip, rather than in vertical columns.

128 It is correct, as Ice submits and her Honour found, that the Aggregated Guides as a whole were significantly different in look, feel and content to the Weekly Schedules. Nonetheless, the Aggregated Guides reproduced, with permission, the totality of Nine’s time and title information. If it matters, the form of the reproduction of that information bore significant similarities to that used by Nine. Ice used the time and title information reproduced in the Aggregated Guides as an important resource for producing IceGuide. In consequence Ice reproduced a substantial part of Nine’s copyright work. The required causal connection was present. This was a case of indirect copying of a substantial part of a copyright work.

129 The appeal must be allowed and the order made by the primary Judge on 9 August 2007 dismissing the application set aside. The matter should be remitted to the primary Judge for hearing and determination consistently with these reasons for judgment. Ice must pay Nine’s costs of the appeal.

BETWEEN:	NINE NETWORK AUSTRALIA PTY LIMITED Appellant
AND:	ICETV PTY LIMITED First Respondent ICETV HOLDINGS LIMITED Second Respondent

BETWEEN:	NINE NETWORK AUSTRALIA PTY LIMITED Appellant
AND:	ICETV PTY LIMITED First Respondent ICETV HOLDINGS PTY LIMITED Second Respondent

Counsel for the Appellant:	Mr AJL Bannon SC with Mr R Cobden SC and Mr JM Hennessy

Solicitor for the Appellant:	Gilbert and Tobin

Counsel for the Respondent:	Mr JM Ireland QC with Mr SCG Burley SC, Mr JS Cooke and Ms P Arcus

Solicitor for the Respondent:	The Argyle Partnership

Date of Hearing:	25, 26 February 2008

Date of Judgment:	8 May 2008

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1757 OF 2007

JUDGES:	BLACK CJ, LINDGREN & SACKVILLE JJ
DATE OF ORDER:	8 MAY 2008
WHERE MADE:	SYDNEY

JUDGES:	BLACK CJ, LINDGREN & SACKVILLE JJ
DATE:	8 MAY 2008
PLACE:	SYDNEY

Federal Court of Australia - Full Court

Nine Network Australia Pty Limited v IceTV Pty Limited [2008] FCAFC 71 (8 May 2008)