Journal of Law, Information and Science
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JUDITH BANNISTER[1]
In this article the author considers the concept of “originality” that is a necessary element for the copyright protection of databases. Generally, the level of originality required for copyright protection is low, and this is particularly so when considering compilations and databases. The author reviews a series of cases concerning the issue of originality in relation to compilations, and suggests an explanation for the low threshold that emerges from these authorities. Adopting a rationale that has been proposed by the authors Laddie, Prescott and Vitoria in their analysis of the House of Lords decision in Walter v Lane[2], she argues that a public interest in the availability of, and access to, information sources can explain the low levels of originality required of compilations in the Anglo-Australian case law that has spanned the last century. Further, she argues that in the age of the electronic database such a low level no longer serves this purpose, and that public access is hampered rather than facilitated by the current innovation threshold. From this analysis she concludes that the innovation threshold should be raised, and an alternative, more appropriate, protection should be offered to compilations and databases held to be non-original under a higher standard.
Are electronic databases protected under Australian copyright law? The answer to this question is: probably most are. Given the low threshold requirements that will be discussed in this paper, most databases are probably protected as compilations under the category of ‘literary works’[3]. When one considers that printed catalogues, card systems and so forth are the forebears of today’s electronic databases[4], the reason for the classification of databases as compilations under the category of ‘literary works’ is apparent. However, the classification now seems a little incongruous in relation to computerised databases. That it is necessary to review old cases dealing with material such as railway timetables and betting coupons when considering the scope of protection that might be granted to electronic databases seems positively absurd. However we must refer to such cases to establish what the courts will consider to be ‘original’ works worthy of protection. For the relevant category of protection is not simply ‘literary works’ but ‘original’ literary works, and the element of originality must be established if copyright protection is to be assured. Originality is necessary for the protection of all copyright works[5], and the level that is set by the courts in relation to compilations has had an influence upon the scope of protection available in other categories of works, and their antithesis, the public domain. Because databases often contain non-copyright material such as facts and figures, originality is a critical issue for database producers. Non-original collections of material will not be protected under Australian copyright law, even though substantial amounts of time and money may have been invested in their production[6].
A fundamental rationale for copyright protection is the granting of rights as an incentive for production of material of value to the community. The price paid by the community is restricted access, or at least access on the owner’s terms, during the protection period. To achieve a beneficial balance between incentive for production and access, the law must determine which materials warrant protection. What threshold must be crossed to ensure entitlement? For copyright law that threshold is determined by the concept of ‘originality’. In this paper I will present an argument that a public interest in the availability of, and access to, information sources is one rationale that can be offered to explain the low levels of originality required in relation to compilations and tables in the Anglo-Australian case law that has spanned the last century. I will go on to argue that in the age of the electronic database such a low level no longer serves this purpose, and that public access is hampered rather than facilitated by the current innovation threshold. The disadvantage of restricted access to sources now outweighs any benefits that might once have arisen from protection of material of marginal originality, the and so the innovation threshold should be raised. If necessary an alternative, more appropriate, protection should be offered to compilations, tables and databases held to be ‘non-original’ under a higher standard.
As discussed above, Australian copyright law protects ‘original’ works[7]. This does not mean that an original result of any kind must be produced, however the work should originate with the author: [8] that is, it must not simply be copied from another work. This is not an onerous requirement. Originality is a question of fact and degree in every case[9] and the outcomes of some cases on this issue are difficult to reconcile[10]. Generally, the level of originality required for copyright protection is low and this is particularly so when considering compilations and tables. ‘In crude terms, it might be said that Australian copyright law favours a “sweat of the brow” approach, one that rewards quantity, rather than quality, of effort’[11].
Compilations may contain material protected by copyright in its own right, for instance poems within an anthology, or non-copyright material such as facts and figures in a table. A compilation is protected separately if it is itself an original work[12]. In the case of compilations, originality is to be found in the selection and arrangement of the material. In its 1995 report, the Copyright Law Review Committee (CLRC) stated the test as:
whether the compiler has imposed some sort of order upon the material, ie, whether an element of coherence has been introduced which is not otherwise found in the mass of material collected[13].
The following have all been held to merit protection: a selection of poems[14], the arrangement of birth and death notices in a newspaper[15], the arrangement of headings (given in four languages) for the classification of tradesmen’s advertisements[16], a touring guide for railway travellers [17], football coupons[18], a schedule of football championship fixtures[19], a compilation of basic accounting forms[20], and more recently in Australia, a trade catalogue of motorcycle parts[21], a pawnbroker’s pledge ticket[22], a weight loss program[23], and prize scales for poker video games[24].
The courts have repeatedly held that originality in relation to a compilation is determined by assessing the degree of skill, judgment or labour involved in its production[25]. The contribution that qualifies for protection has been expressed in various ways in various cases including: ‘painstaking hard work’[26]; ‘labour, skill and capital’[27]; ‘work or skill or expense’[28]; ‘more than negligible skill and labour’[29]; ‘substantial degree of skill, industry or experience’[30]; ‘concentration, care, analysis, comparison’[31].
Not surprisingly, a significant proportion of the cases that demonstrate the lower levels of originality that will suffice for copyright protection involve what might be referred to as the ‘repackaging’ of existing material. In Macmillan v Cooper the Privy Council stated:
[t]o secure copyright for this product it is necessary that the labour, skill and capital should be expended sufficiently to impart to the product some quality or character which the raw material did not possess, differentiating the product from the raw material[32]
In that case it was held that a condensed schools’ edition of a work in the public domain was not protected by copyright, although notes accompanying the work were. The court emphasised the important distinction between a compilation which is the product of skill, judgment and labour, and the raw material. There is an underlying presumption that the raw materials are freely available to all and that a particular compilation will not prevent access[33], but rather facilitate it. Cases involving material that is already freely available can be contrasted with those where, but for the copyright owner’s activities, the material would not exist or be readily available.
When considering the level of originality, it may be necessary to consider whether the skill or labour relied upon by the would be copyright owner was directly connected with the production of the compilation, or was undertaken for some other purpose. In Ladbroke (Football) v William Hill Football Ltd[34] the court refused to isolate the preliminary work involved in calculating the betting odds from the compiling of coupons that recorded that information. It was all part of the same process[35]. Similarly, in Football League v Littlewoods Pools[36]the extensive work involved in scheduling the football games was considered. If such preliminary work is taken into account, originality will be easier to establish. Without that work, the resulting ‘literary work’ may be a simple list or commonplace chronological table that by any standards is not original.
The 1999 Australian High Court case Data Access v Powerflex[37] provides the most recent example of copyright protection granted for a table that was a relatively insignificant collection of data, thereby rewarding the preliminary work involved in its creation. A case primarily concerned with claims to copyright in ‘reserved words’ of a computer program, Data Access won not on that claim, but because the defendant Powerflex had reproduced a table of 256 characters created by Data Access. It was a ‘standard’ or ‘default’ table, known as a Huffman Compression table, which allowed for more efficient storage of data by allocating shorter bit strings to more frequently used characters rather than the usual eight bits, and correspondingly longer bit strings for infrequently used characters. 256 characters is a relatively small collection of data, for instance more characters appear in the following quotation from the High Court explaining why the table was held to be an original literary work as a table expressed in figures and symbols:
The skill and judgment employed by Dataflex was perhaps more directed to writing the program setting out the Huffman algorithm and applying this program to a representative sample of data than to composing the bit strings in the Huffman table. Nevertheless, the standard Dataflex Huffman table emanates from Dataflex as a result of substantial skill and judgment[38].
Why are the courts prepared to grant protection to material that as a table is quite basic, and which at first glance at least might not appear to fit the description of an original literary work? Why has the level of originality that is required slipped so low? To answer this question it is instructive to look back to a House of Lords decision that was decided almost 100 years ago.
The oft cited House of Lords decision in Walter v Lane[39] has caused trouble for many a commentator who has tried to explain the concepts of originality and authorship. The case concerned shorthand reports[40] made by journalists of public speeches by the Earl of Rosebery. Copyright was held to exist in the reports, and to be held not by the author of the speech[41], but by the authors of the reports — the journalists, or rather their employer The Times. The value of the reports, which the defendant in the case sought to reproduce in a book, was that they were verbatim accounts of the words spoken[42]. This made them valuable as a contemporaneous record, but problematic from a copyright perspective in that the very accuracy of the reporting would seem to have diminished any original input by the reporter. This was not a case where a story was told to a writer, who then used his or her own expression to communicate that story in a literary form. Indeed it is difficult to see how the contribution of the journalists in that case was any different to that of scribes or amanuenses whom the courts have consistently stated are not authors[43]. Emphasising earlier cases in which compilers of directories had been held to be authors, the majority adopted a very broad approach to the concept of authorship in this case[44].
The case was decided before the Copyright Act 1911 (UK)[45] when the concept of ‘originality’ was introduced for the first time. Nevertheless, Walter v Lane was approved by the Australian High Court in Sands & McDougall Pty Ltd v Robinson[46]. The 1911 Act did not effect a revolutionary change in the law with the introduction of the word ‘original’ and Walter v Lane remains good law[47].
Why were the reporters attending the Lord Rosebery lectures held to be authors of the reports? Professor Ricketson has argued that unfair competition — that a person should not reap when she has not sown — offers an explanation[48]. That Lord Halsbury began his judgment with the following words:
[m]y lords, I should very much regret it if I were compelled to come to the conclusion that the state of the law permitted one man to make profit and to appropriate to himself the labour, skill, and capital of another[49]
supports such an analysis.
An alternative explanation, and one that I wish to pursue in this paper with respect to databases[50], has been offered by Laddie, Prescott and Vitoria[51].
[The authors] submit at the outset that mere skill and labour, of themselves, create no copyright. A person who learns eg the entire works of Racine by heart, and can write them down to order undoubtedly displays skill and labour, but gets no copyright in his writing. It follows that, to confer copyright, the skill and labour must be relevant. The problem therefore resolves itself into identifying what kinds of skill and labour are relevant; and it is here that the difficulty arises[52].
Difficult, because had Lord Rosebery been reading from a prepared speech, the skill and labour displayed by the reporters in taking it down in shorthand would have been the same, the material they produced would have been the same, and yet their labours would have reproduced an existing work, not, as the House of Lords held, created a work of their own authorship. The act of fixation alone is not sufficient to make one an author of a work, which is why mere scribes are precluded from that status[53]. What additional element was provided by the reporters in this case? The answer to this quandary Laddie, Prescott and Vitoria suggest:
ought to depend on whether the original manuscript was readily accessible. The courts have recognised that accessibility of the original material is a relevant factor. To produce, by shorthand skill, an accessible text where none existed before is to originate something; else the reporter is a mere transcriber. (The real reason that copyright has been given to the world of reporters is that, in the general case, their skills and efforts are of value to the community. They preserve that which would be in danger of being lost. This pragmatic approach is the real explanation of Walter v Lane, the result of which would probably have been different had Lord Rosebery published his speech)[54].
The authors cite Lord Halsbury LC in the case to emphasise the importance placed upon preservation of material considered to be of value to the public[55]. Similar reasoning can be identified in other majority judgments. Lord Hereford made the following point in relation to facilitating public access, perhaps in difficult circumstances when publication would be unlikely to occur otherwise:
if a reporter attended a meeting of Anarchists intended to be secret and made their speeches public, or if in former times a man had secreted himself in one of the Houses of Parliament and taken down the words of different speakers, may it not be contended that the reporter was doing something more than merely transcribing[56].
That something extra was facilitating public access. Lord Brampton emphasised that:
[w]ithout [the reporter’s] brain and handiwork the book would never have had existence, and the words of Lord Rosebery would have remained unrecorded save in the memories of comparatively few who were present on those occasions...by its publication in The Times the thousands of the readers of that journal might be truthfully and accurately informed of those intellectual and interesting utterances of Lord Rosebery which they had not been privileged to hear[57].
This argument provides a compelling explanation of the House of Lords’ decision, and at the same time renders the authority quite irrelevant in an age of electronic media. When accurate recordings can be made by anyone with no more skill or labour involved than the pressing of a button, and extempore speeches can be made instantly available to the world by live broadcasts, with file footage available for rebroadcast and research, the majority decision in Walter v Lane seems an anachronism. Indeed, the impact of new technology was anticipated by Lord Robertson in dissent when he referred to the phonograph as the rival of the stenographer:
the phonograph, which has no literary taste, good or bad, and no intellect, great or small, will record Lord Rosebery’s speeches better than the best of reporters. The appellants think that if the owner of a phonograph publishes the speech as taken down by the phonograph he is the author of the report and entitled to copyright. I should have thought (and think) this a reductio ad absurdum of the whole argument[58].
While the case, when considered in relation to copyright for what was effectively a fixation, is now problematic, the underlying principle of facilitating access may nevertheless be appropriate if applied differently in the light of new technology.
As it currently operates, the test for originality under Australian law, far from facilitating public access, can frustrate it. A low threshold that once may have ensured comprehensive accurate versions of otherwise unrecorded sources, may now work against the object of public access by granting strong copyright protection to large quantities of data that are available from the moment of creation in accessible electronic form. Comprehensiveness and accuracy are best achieved using technology that diminishes the skill and labour of the operator, and with advances in computer storage and processing capacity, the investment is also decreasing. Given the strong and long protection granted to copyright owners, there is an important policy distinction to be made between automatically granting a reward for production, and offering an incentive for the organisation of information that facilitates public access.
Can the cases concerning the originality of compilations which often extend protection in circumstances that are conceded by the courts to be ‘borderline’, be explained in terms of facilitation of public access to information sources?
The significance that the courts have placed upon the rendering of sources of information to the public can been seen from the following quote from an early case involving copyright in statistical returns from the Coal Market of the City of London:
[the plaintiff] has at the expense of much time and labour, compiled and arranged in very clear and lucid order, the vast mass of information accruing every day as to the importation of coal into the City, and has the privilege of publishing the information thus collected by his labour from the day-books (where, if left, it would be useless for any purposes of information), and rendering it available for the public.... No man is entitled to avail himself of the previous labours of another for the purpose of conveying to the public the same information, although he may append additional information to that already published[59].
The low level of originality required for the protection of compilations can be identified in the 1946 English case J Whitaker & Sons Ltd v Publishers Circular Ltd[60]. Weekly lists of recently published books compiled from information supplied by the bookseller W. H. Smith, by publishers, and occasionally by authors, were held to be protected by copyright. The lists were intended to be as complete as possible, and so no selection as such was required and yet, the court held, there was value in its comprehensiveness and convenient collocation.
When a list is intended to be comprehensive and complete that kind of judgment which is necessary for selection plays no part in the compilation, but the very act that it is intended to be comprehensive involves the greater labour in seeing that it is complete so far as research can make it so...[what matters] is the skill and labour involved in collecting commonplace material — commonplace in the sense of being within common knowledge and accessible separately to anyone — into a convenient list by reason of which an interested section of the public get something which they want and which they would not get but for the labour and ingenuity of the plaintiffs and other compilers of the available material[61].
This might be compared with the case of Walter v Lane discussed above. Such a low level of originality in selection and arrangement (as opposed to comprehensive collection) is difficult to explain unless incentive for production and supply to the public is taken into account. Of course, collection of information (comprehensive or otherwise) and no more will not suffice for copyright protection. There must be a compilation of some kind, and any attempt to protect the underlying information will not succeed no matter how much effort has gone into its collection[62].
Football League v Littlewoods [63] is another case where ‘painstaking hard work with complete accuracy [was] the keynote’[64] In that case the creator of the compilation, a list of football matches, was the producer of information that was not previously available to the public. Indeed the defendants in that case argued that because the Football League was ‘in the unique position of being the only person in the world who, prior to publication, is in possession of the information contained in the fixture lists’[65] copyright could not be claimed in that information and that anyone was entitled to use the information once published[66]. While Upjohn J purported to agree with this as a general principle, he held that the Football League did have copyright in a chronological list that, but for the original work that had gone into the generation of the information, would not have been sufficiently original to be protected by copyright. It was the ‘painstaking hard work’ involved in the production of a complete schedule of football championship fixtures that was protected, for once that process was completed, the arrangement of the list chronologically was obvious and inevitable. Copyright may not protect information, but if a compiler publishes something new to the world the originality of the compilation in terms of arrangement may be very low indeed, and yet still be protected.
In a case involving Morgan ‘gallup polls’[67], Chief Justice Barwick of the Australian High Court included the production of information within the labours protected by copyright when he commented upon authorities in this area, including Football League v Littlewoods:
the law does not give any proprietary right in knowledge or information ... However, the law has gone a long way in such cases ... to protect the labours of a man in producing and tabulating information[68].
Rather than selection or arrangement, the labour and effort involved in the generation of information seems to be rewarded in such cases which brings copyright dangerously close to the protection of the information itself. This is of particular concern when there is only one potential source.
In Leslie v Young & Sons[69] a railway timetable, arranged for passengers leaving and returning to a particular station which was taken from common and public sources was held not to be sufficiently original to warrant protection, although information compiled about circular tours that a railway traveller might take were protected. The former was commonplace and readily available, the later very useful and an advantage to the travelling public[70]. If the information is already publicly available the work involved in its repackaging must be more extensive and offer something more in terms of public access. In G. A. Cramp & Sons Ltd v Frank Smythson Ltd[71] the House of Lords was not prepared to protect a selection of tables of common place information such as postal charges, and sunrise and sunset times, that were published in a diary. The collection was obvious[72]. The accuracy required for such tables left no room for variation[73] and so no possibility of originality. Compare this case with the approach adopted in Walter v Lane. The difference is that in this case the material was already published and readily available elsewhere. With information that is commonly available some specialised categorisation or arrangement is required. Those cases that can be found in which copyright has been refused to compilations often involve readily available material. In Sampson v Brokensha & Shaw Ltd[74] the simple binding up of forms into a register when those forms were prescribed by regulation was not sufficient. Nor was a condensed version of a work in the public domain that was merely a selection of scraps in Macmillan v Cooper [75]. If not readily available, the standard, it seems, need not be so high:
the mere process of selecting passages from works readily accessible to the public is not [sufficient] but ... difficulty in obtaining access to the originals or skill manifested in making or arranging the selection is, sufficient to give the character of an ‘original literary work’ to the selection[76].
The quantum of originality required for copyright protection also raises interesting questions for published databases that are constantly updated. In the Australian case A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd[77] Drummond J was prepared to hold that:
[a] new edition of a compilation of information relating to a constantly changing subject matter that provides up-to-date information about that subject matter is ... an original work, so long as there is more than a trivial difference between the new edition and its predecessor[78].
When a published database[79] is regularly updated this could lead to perpetual protection by the constant creation of new, separately protected works. This view contradicts the CLRC’s opinion expressed in its 1995 report that the addition of information to a database ‘would not ... automatically give rise to the creation of a new edition of the database unless there was a sufficiently substantial change to the database to entitle it to be regarded as a new work’[80] Interestingly, in A-One Accessory Drummond J suggests that the differences required for a new version of a compilation of readily available information may be lower than that required for other literary works. The judge placed importance upon the updating of information in such compilations, which is ‘a feature of special interest’ to users of such works[81].
Anglo-Australian law provides over a hundred years of authority, and a substantial number of cases, on the originality of compilations in printed form: tradesmen’s catalogues, betting slips, football schedules, accounting forms, and so forth. Recent Australian cases are still following this pattern of litigation over relatively insubstantial material, and the printed text is still well represented[82]. Although the courts often state that it is the selection and arrangement of material that is protected, some of these cases show a readiness to protect collection, and even original production, of information. There may be very different issues arising with the production and storage of information in electronic form, and yet it is the cases involving material such as betting slips and accounting forms that have set the standard for what is ‘original’.
Some important distinctions ought to be made before standards set in the age of print are transferred to electronic databases. Large archives of printed material are effectively useless to all but the most diligent researcher with a significant amount of time available, unless the material is collected, arranged and published in an accessible form. It is appropriate that the labour and investment involved in bringing such material under control should be rewarded, although the level of protection ought to be carefully considered. However, when original sources are produced in electronic form, different factors operate. Information in electronic form can be brought together far more easily than the equivalent material in print, and can be readily accessed using a computer search engine. The programmer of the computer software, and the end user who constructs a search strategy and selects appropriate search terms, contribute significant skill and effort in bringing information under control in an electronic database. By comparison, collection of the material is a routine operation, and may often be a by-product of other functions in an organisation. Just as advances in the recording of the spoken word has changed the dynamics that Laddie, Prescott and Vitoria have argued explain the principle underlying Walter v Lane, improvements in the storage of data in electronic form must raise questions about the application of authorities concerning copyright in compilations that date from the age of print. While access issues may have justified low innovation thresholds to provide incentive for production and arrangement in the labour intensive media of manuscript and movable type, the same access issues may now justify a raising of that threshold. Far from facilitating access, in a digital environment low innovation thresholds and long periods of copyright protection will enable immense quantities of data to be locked away from the public domain. As computer processing and storage capacity increases and, correspondingly, the costs of computing decrease, the justification for protection on the grounds of labour and investment must diminish.
Comprehensiveness, so difficult in the printed form and so valued, is now more easily achieved and is, if anything, a hindrance to access to all but the most diligent. Consider for a moment an unstructured approach to research on the Internet! I do not mean to suggest by this that comprehensive collection is not important in an electronic environment. The same information management imperatives apply regardless of the medium, and the wealth of material that may now be retained because of advances in computer technology has introduced new possibilities. However, using an access rationale, copyright should reward the skills formerly associated with arrangement — that is classification, annotation, the production of abstracts, and the allocation of keywords[83]. While there is no recognisable arrangement as such in digital form, it is this value adding to the raw data that facilitates access[84]. Selection and ‘packaging’ of information that may make sense of a mass of material for users should be protected now for the same reasons that collection and fixation were once so valued. Investment in comprehensive collection is still important, but when faced with the dangers to public access associated with private control of large collections for the long protection periods that copyright offers, and the real danger of information monopolies when the database producer is the original source of the information, the scope of protection granted should be carefully considered. Lower levels of protection will still encourage investment. Protection periods, however they are set, should be closely analysed to ensure that routine updating does not trigger perpetual copyright.
The cases above demonstrate the low level of originality required to satisfy the category of ‘original work’, if demonstration were needed. Despite the judge’s acceptance in the Australian case Kalamazoo v Compact Business Systems[85] that the authors showed no great skill, Thomas J was prepared to find a combination of accounting forms used in a ‘one-write’ system was an original work on the basis that ‘their preparation required a degree of concentration, care, analysis, comparison, and certain facility in using and adapting the altered forms’[86]. This is an example of the minimal requirements that courts have established for originality, and the decision is difficult to justify on policy grounds. The forms themselves did not give information (they were blank!)[87]. This case is part of a long line of authority in which the ‘more than negligible’ quantum has gathered judicial support[88]. At such low levels, it is difficult to justify this approach on the grounds of incentive for production or publication of material of value to the public. While, as I have argued following the approach taken to Walter v Lane by Laddie et al[89], such a rationale can be detected in at least some of the older authorities dealing with copyright in compilations, the point has now been reached where the element of ‘originality’ might, as some have proposed[90], be removed altogether and it would hardly be missed.
Although explanations can be offered, the current low threshold can no longer be justified[91]. In its 1999 report for its simplification review[92] the CLRC majority proposed a higher innovation threshold for the protection of what are now categorised as works (including literary works). This proposal is part of a far reaching scheme for changes to the categorisation of copyright materials as ‘creations’ and ‘productions’. Analysis of these proposals in relation to categorisation is outside the scope of this paper, however to consider the arguments made in relation to changes to the innovation threshold, ‘creations’ might (for the purposes of this discussion) be compared to the existing categories of ‘original works’[93], while ‘productions’ can be compared to the current categories of ‘subject matter other than works’[94]. The innovation threshold proposed by the CLRC majority for the higher category of protection (creations) is ‘significant intellectual effort’[95]. While for the lower category the threshold would be ‘the application of time, effort and resources’[96]. The CLRC majority acknowledged that:
the higher level of protection [as literary works] that is now afforded to material such as timetables, directories and similar compilations which do not constitute ‘intellectual creations’ would no longer apply under the envisaged approach. Such material would receive only the lower level of protection given to a Production, and only then so long as it satisfied the innovation threshold for a Production[97].
The majority considered this to be justified on the principle that the higher level of protection ‘should not apply to material that results from the investment of time, effort and/or money, but that is not an intellectual creation’[98]. This is, in this author’s view, an appropriate course to follow in relation to the innovation threshold[99] that is currently, and so marginally, that of ‘original’ works under Australian law. Introducing a standard requiring ‘intellectual creation’, with accompanying object statements emphasising an intention of the legislature to raise the threshold, would break the long line of authority that the courts seem compelled to follow, and which sets such a low standard.
In the absence of a major restructuring of all categories of protected material as proposed by the CLRC, to ensure some protection for non-original databases that result ‘from the investment of time, effort and/or money’, a new category would need to be added to the Part IV categories[100]. Alternatively, a separate statutory regime could establish a sui generis right. The former would have the advantage of dealing with a single piece of legislation. Neighbouring rights are not foreign to the Copyright Act (the Part IV categories) and the addition of a database right with lower levels of protection than that currently granted to compilations and tables would be quite feasible. Any protection offered as reward and incentive for investment in information collection should keep the material from the public domain for as short a time as possible.
Raising the innovation threshold from its current low level would not create problems for Australia under the international conventions which are a common barrier to copyright reform. Article 10(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) requires:
Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.
The Berne Convention requires protection of collections of literary or artistic works (Article 2(5)). Both treaties use the innovation threshold of ‘intellectual creations’. While proposals for an international instrument on the protection of non-original databases stalled during the 1996 negotiations that led to the adoption of the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), the issue is being considered in WIPO standing committees[101]. There is no need for Australia to delay consideration of our innovation threshold to await the outcome of developments at an international level. A higher threshold would be consistent with current international obligations, and would be an appropriate matter to consider with the introduction of new rights in the Copyright Amendment (Digital Agenda) Bill 1999 (Cth). An appropriate innovation threshold should be part of any copyright law reform concerning the online environment.
In the United Kingdom (to comply with the EU Databases Directive[102]) databases[103] have been separated from other compilations, and a higher innovation threshold has been imposed upon them for copyright protection[104]. Under the new provisions, databases are original literary works ‘if, and only if, by reason of the selection or arrangement of the contents of the database the database constitutes the author’s own intellectual creation’[105]. This protection for original databases is supplemented by a new database right (again in compliance with the EU Directive) that grants a property right in databases ‘if there has been a substantial investment in obtaining, verifying or presenting the contents of the database’ regardless of whether or not protection as a copyright work might be available[106]. These reforms have not altered the innovation threshold in relation to any other works, and the cases that have been discussed in this paper in relation to the low levels of originality are still relevant in the United Kingdom.
If change is introduced in Australia, more than the minimal approach adopted in the United Kingdom should be considered. Rather than singling out databases, the innovation threshold should be raised for all works. As Anne Monotti has argued, ‘the skill and labour required to establish originality in compilations only slipped to such a minimal level because the courts had no alternative form of protection under the Copyright Act 1968 or elsewhere’[107]. If the innovation threshold were only to be resolved in relation to databases, the long line of authority on originality, dominated by table and compilation cases, will continue to have an impact upon all categories of works. This line of authority is now so strong that a higher innovation threshold is only likely to come about by statutory amendment.
The innovation threshold that must be passed for copyright protection under Australian law is very low indeed. This level has been established by over a hundred years of authority and recent decisions show no indication of change. The cases that have established this low level have been dominated by claims to copyright in tables and compilations. Cases that are now relevant to electronic databases. It is difficult to reconcile some of these decisions with the principle of copyright law that it is the form of expression, and not the underlying information, that is protected. Incentive for the supply to the public of information in an accessible form can explain many of these decisions that might otherwise be unjustifiable when considered in the light of fundamental principles. However, in an age of electronic information management, a rationale for low levels of originality which is based upon incentive for the routine production and collection of print based information in the interests of public access is inappropriate. The current low level of originality has a determinantal effect upon the range of material available in the public domain, without the benefits that might once have justified such a standard.
[1] Lecturer, Flinders University School of law
[2] [1900] UKLawRpAC 52; [1900] AC 539.
[3] ‘literary work’ is defined to include the following: ‘a table, or compilation, expressed in words, figures or symbols (whether or not in a visible form)...’ Copyright Act 1968 (Cth) s. 10. The reference to invisible form was introduced in 1984 (Copyright Amendment Act 1984 (Cth) No. 43 of 1984).
[4] The Copyright Law Review Committee (CLRC) began its discussion of databases by commenting upon the similarities between electronic databases and databases compiled through (vastly slower) non-electronic means. Copyright Law Review Committee Software Protection Report (1995) para 14.03.
[5] Copyright Act 1968 (Cth) Part III. Protection of other subject matter (Part IV) does not include the element of ‘originality’.
[6] This has led to lobbying by databases producers internationally for protection for non-original databases. See: the discussion of the European Directive and negotiations in WIPO and the United States in Mark Davison, ‘Sui Generis or too generous: Legislative Protection of Databases, its implications for Australia and some suggestions for reform’ [1998] UNSWLawJl 63; (1998) 21 UNSW Law Journal 729.
[7] Copyright Act 1968 (Cth) s. 32.
[8] University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, 609; Sands & McDougall Pty Ltd v Robinson (1917)23 CLR 49, 55; Victoria Park Racing v Taylor [1937] HCA 45; (1937) 58 CLR 479, 511 (Dixon J).
[9] G A Cramp & Sons v Frank Smythson [1944] AC 329, 335 (Viscount Simon LC).
[10] ‘It is difficult to find judicial agreement on the amount of skill and labour required to constitute an original work, particularly in respect of compilations, factual works and derivative works’ Halsbury’s Laws of Australia Vol 15 para. 240-1640 at footnote 1; ‘a worrisome lack of consistency in this area of case law’ Sam Ricketson, ‘The Concept of Originality in Anglo-Australian Copyright Law’ 39 J. Copr.Soc’ 265, 277 (1992); ‘there is no real justifiable legal distinction between a number of the cases that have ended in different results’ Mark Davison above n 4, 748.
[11] Sam Ricketson, The law of intellectual property: copyright, designs & confidential information (2nd ed. 1999) para. 7.35.
[12] In A-One Accessory imports Pty Ltd v Off Road Imports Pty Ltd (1996) 34 IPR 306, 319 Drummond J of the Australian Federal Court held that a compilation that includes infringing material may still be protected by copyright as an original work.
[13] Report on Computer Software Protection (1995) para. 14.63.
[14] Macmillan v Suresh Chunder Deb (1890) 8 Indian Decisions (NS) 1180 (17 Cal. 952).
[15] John Fairfax & Sons v Australian Consolidate Press [1960] SR (NSW) 413.
[16] Lamb v Evans [1892] UKLawRpCh 171; [1893] 1 Ch 218.
[17] Leslie v Young & Sons [1894] UKLawRpAC 34; [1894] AC 335 (House of Lords).
[18] Ladbroke (Football) Ltd v William Hill Football Ltd [1964] 1 All ER 465 (House of Lords).
[19] Football League Ltd v Littlewoods Pools Ltd [1959] 1 Ch 637.
[20] Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213. (Queensland Supreme Court).
[21] A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1994) 34 IPR 306. (Federal Court of Australia).
[22] Andrew Cash & Co Investments Pty Ltd v Porter (1996) 36 IPR 309 (Federal Court of Australia).
[23] Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529 (Federal Court of Australia).
[24] Milwell Pty Ltd v Olympic Amusements Pty Ltd [1999] FCA 63 (16 February 1999) (Federal Court of Australia).
[25] A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1994) 34 IPR 306, 316 (Drummond J).
[26] Football League Ltd v Littlewoods Pools Ltd [1959] 1 Ch 637, 656.
[27] Macmillan & Co Ltd v Cooper (1923) 40 TLR 186, 188 (Privy Council).
[28] Ladbroke (Football) Ltd v William Hill Football Ltd [1964] 1 All ER 465, 480 (Lord Pearce).
[29] Ibid 476 (Lord Hudson).
[30] Ibid 478 (Lord Devlin).
[31] Kalamazoo v Compact Business Systems (1985) 5 IPR 213, 237 (Thomas J) even though no great skill was shown.
[32] Macmillan & Co Ltd v Cooper (1924) 40 TLR 186, 188.
[33] ‘In the case of works not original in the proper sense of the term, but composed of, or compiled or prepared from material which are open to all, the fact that one man has produced such a work does not take away from any one else the right to produce another work of the same kind, and in doing so to use all the material open to him’ Macmillan v Suresh Chunder Deb (1890) 8 Indian Decisions (NS) 1180, 1186 (17 Cal. 952).
[35] See also the recent Federal Court case Milwell Pty Ltd v Olympic Amusements Pty Ltd [1999] FCA 63 (16 February 1999).
[37] [1999] HCA 49; (1999) 45 IPR 353.
[38] Ibid 381.
[39] [1900] UKLawRpAC 52; [1900] AC 539. The case ‘remains influential’ Ricketson, above note 9, para 7.70.
[40] Later transcribed.
[41] Lord Rosebery made no claim to copyright [1900] UKLawRpAC 52; [1900] AC 539, 547.
[42] The high degree of accuracy of the reports was significant to the majority: Lord Hereford [1900] UKLawRpAC 52; [1900] AC 539, 553-554; Lord Brampton 556, 559; while Halsbury LC would not insist upon skill and accuracy as a condition precedent to protection, 549. For Lord Robertson, in dissent, literal accuracy meant that the reporters were acting merely as conduits, 560.
[43] See Lord Hereford in that case, 554, and Lord Brampton, 558. For a recent expression of this point in a case concerning databases and a claim of co-authorship see Robin Ray v Classic FM PLC [1998] EWHC Patents 333; [1998] FSR 622, 636.
[44] Halsbury LC [1900] UKLawRpAC 52; [1900] AC 539, 545; indeed Halsbury LC was keen to avoid the use of the word ‘author’, 547.
[45] Adopted in Australia by the Copyright Act 1912 (Cth).
[46] [1917] HCA 14; (1917) 23 CLR 49.
[47] See Express Newspapers v News (UK) Ltd [1990] FSR 359.
[48] Above n 8, 275.
[49] Walter v Lane [1900] UKLawRpAC 52; [1900] AC 539, 545. Also Lord Davey, 552.
[50] This is not to reject the unfair competition rationale, for there is no doubt that the courts admonish defendants who take a ‘free ride’ at the expense of others. See James Lahore Copyright and Designs para 10,110 on this point.
[51] Hugh Laddie, Peter Prescott and Mary Vitoria, The Modern Law of Copyright and Designs (1995) (arguing that Walter v Lane is still good law).
[52] Ibid 58.
[53] See above note 41.
[54] Above n 48, 59 (footnotes omitted).
[55] Walter v Lane [1900] UKLawRpAC 52; [1900] AC 539, 549: preservation of the memory of spoken words.
[56] Ibid 555.
[57] Ibid 559.
[58] Ibid 561. Now, of course, the phonogram producer would have a separate copyright in the sound recording: Copyright Act 1968 (Cth) s. 89.
[59] Scott v Stanford [1867] UKLawRpEq 23; (1867) LR 3 Eq 718, 723-4.
[60] [1946-49] MacG, Cop. Cas. 10.
[61] Ibid 12.
[62] See Odham’s Press Ltd v London and Provincial Sporting News Agency (1929) Ltd [1935]1 Ch 679. This case has been cited by Ricketson in support of an argument that originality is problematical for comprehensive databases, given that it is the labour, skill and judgment contributed to the selection and arrangement of the compilation that is protected, not the collection of the information itself. See above note 9 para 7.175.
[64] Ibid 656.
[65] Ibid 652.
[66] cf British Broadcasting Co v Wireless League Gazette Publishing Co [1926] 1 Ch 433 which held that an original creator of information may have copyright in a compilation of that material, in that case a week’s radio programmes.
[67] Australian Consolidated Press v Morgan [1965] HCA 21; (1965) 112 CLR 483.
[68] Ibid 487 (emphasis added).
[69] [1894] UKLawRpAC 34; [1894] AC 335.
[70] Ibid 342 (Lord Herschell LC); 344 (Lord Ashbourne); 345 (Lord Shand).
[71] [1944] AC 329 (House of Lords).
[72] Ibid 338 (Lord MacMillan).
[73] Ibid 335-6 (Viscount Simon LC).
[74] [1935] WALawRp 13; (1937) 37 WALR 90.
[76] Ibid 187, citing Copinger’s Law of Copyright 1915 edition, 566 (emphasis added).
[78] Ibid 322 (Drummond J).
[79] Copyright protection for unpublished compilations, as with all unpublished literary works, lasts indefinitely. Copyright Act 1968 (Cth) s. 33(3). Publication is deemed to occur ‘if, but only if, reproductions of the work or edition have been supplied (whether by sale or otherwise) to the public’ s. 29(1)(a). There may be many commercial unpublished databases: see the Copyright Law Review Committee Computer Software Protection Report (1995) para 14.79.
[80] Ibid para 14.66 (emphasis added).
[81] A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1994) 34 IPR 306, 322.
[82] See above n 19 - 21.
[83] Software in the form of database packages and search engines are, of course, separately protected as computer programs.
[84] Just as the headings that consisted of short descriptions with catchwords, repeated in three other languages, were protected by copyright in Lamb v Evans [1892] UKLawRpCh 171; [1893] 1 Ch 218 when the arrangement of the directory was simply alphabetical.
[86] Ibid 237.
[87] Ibid 231.
[88] Ibid 233.
[89] See above n 52.
[90] See Mark Sherwood-Edwards, ‘The redundancy of originality’ [1995] 3 ENT.LR 94.
[91] For arguments for movement toward a higher standard of originality see, Ann Monotti, ‘Copyright Protection of Computerised Databases’ (1992) 3 AIPJ 135, 162; Sam Ricketson above n 8, 287. For an argument, on economic grounds, for a complete abolition of the requirement of originality see: Mark Sherwood-Edwards ibid; and a response: Gary Lea, ‘In Defence of Originality’ [1996] ENT.LR 21.
[92] CLRC Simplification of the Copyright Act 1968 Part 2; Categorisation of Subject Matter and Exclusive Rights, and Other Issues (1999).
[93] Copyright Act 1968 (Cth) Part III.
[95] CLRC above n 90 para 5.40.
[96] Ibid para 5.41.
[97] Ibid para 5.40. In its Computer Software Protection Report (1995) the CLRC was not prepared to consider the reduction of existing protection periods of any class of databases already protected, even though it might be possible do so and remain in compliance with Berne and TRIPS (para 14.65). In this latest report, however, the CLRC was prepared to raise the innovation threshold, thereby precluding some compilations which are currently protected from the higher category of protection.
[98] CLRC above n 90 para 5.40.
[99] I have not discussed, and make no comment in relation to, the broader proposals in relation to categorisation of subject matter.
[100] See Ricketson above n 8, 283. The CLRC in its 1995 report deferred consideration until the European Directive was produced in its final form (above n 2, para 14.80). Now that it has been passed and implemented, it may be time to consider the matter again.
[101] WIPO Press Release PR/99/185 (Rev.) Geneva, October 31, 1999 <www.wipo.int/eng/newindex/news.htm>
[102] Directive 96/9/EC on the legal protection of databases.
[103] Defined as ‘a collection of independent works, data or other materials which (a) arranged in a systematic or methodical way, and (b) are individually accessible by electronic or other means’ Copyright, Designs and Patents Act 1988 (UK) s. 3A(1) as amended by Copyright and Rights in Databases Regulations 1997 (SI 1997 No. 3032).
[104] Ibid s. 3(1) definition of ‘literary work’.
[105] Ibid s. 3A(2) (emphasis added).
[106] Copyright and Rights in Databases Regulations 1997 (SI 1997 No. 3032).
[107] Ann Monotti above n 89, 162.
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