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Brief Counsel

Where Australia goes, can we be far behind?

19 May 2009

Does your organisation have a database of any sort?  If so, you will be interested in this Brief Counsel on a brand new copyright case from Australia which will have repercussions here.

Our courts are likely to find the Australian High Court’s analysis persuasive.  And if the case leads to law change in Australia, can New Zealand be far behind given the Government’s commitment to trans-Tasman harmonisation?

The current legal position on databases

Public or private databases are extremely valuable and are often mission critical to the operation of the organisation.  But any database-leveraged business model depends on the ability to restrict access to the information.  Where you cannot protect against unauthorised use, free riding kills revenue options and undermines the incentive to compile useful facts and figures in the first place.

Generally speaking, there are two ways to protect a database.  You can keep it a secret or you can reach for copyright. 

Where the database is confidential, trade secret law can be used to prevent any threatened or actual unauthorised use or disclosure of the information at issue.

When it comes to copyright, the established wisdom in England, New Zealand and (until now) Australia, has been that databases are protected by copyright as a form of “literary work”.  Hard as it may be to distinguish any kinship between your average database and a Booker prize-winning novel, copyright law protects “original” expression regardless of merit.  The originality threshold requires only that the work was:

  • independently created (as opposed to being copied from pre-existing work); and
  • created using skill, judgement and effort.

This time last month, most thought that that was the position in Australia as well.  But things may have changed over the ditch.  In a very recent decision, IceTV v Nine Network (2009) 254 ALR 386, Australia’s highest court has put a cat amongst the database pigeons. 

The Australian High Court decision

Ice publishes Australia’s only commercially available electronic television guide.  Nine alleged Ice had copied programme times, titles and dates from publicly available aggregated guides like TV Week.  These guides (which are databases) contain Nine’s weekly programme schedules and schedules for several other networks as well.

The case was hotly contested and went three rounds.  Ice won at trial but the victory was overturned by an Australian appeal court in August last year through the application of orthodox copyright law.  That orthodoxy is contained in a legal doctrine, known as “sweat of the brow”, which protects the industrious collection of data and is applied by England and New Zealand courts. 

At the third round, however, a six-member bench of the Australian High Court was not prepared to accept that Ice TV had taken a “substantial part” of a copyright work owned by the Nine network.  Instead the six judges found that Ice had really taken only insubstantial “slithers” of information and that copyright law protects expression, not fact.

In the course of the judgment some of the judges seemed to query whether databases are even capable of attracting copyright at all.  In asking the question, the Court has aligned Australia more with the European and American approach to copyright than with that which prevails in England and New Zealand. 

In Europe and America the courts insist that there must be some actual creative input before they accept work as being protectable by copyright.

  • In denying copyright protection for a “white pages” directory, the US Supreme Court said there wasn’t a sufficient “spark of creativity” to justify copyright intervention.
  • In Europe, databases are protected under a stand-alone database law.  There is no comparable legislation in Australia or New Zealand. 

Implications for New Zealand

The New Zealand courts will find the Australian High Court’s analysis and observations persuasive.  The upshot is that New Zealand database owners face some uncertainty over whether and to what extent they can protect their aggregations of facts and information through copyright law.

What should you do to protect your database?

Where your database is not in the public domain, do everything to keep it that way.  Be careful with employment contracts.  Make sure they carry robust intellectual property clauses and confidentiality obligations that survive termination of the employment relationship.

In an uncertain world, it bears emphasis that the best way to secure any result is to spell it out beforehand.  If and when you share information with anyone or license it to a third party, set out the rules in writing: contracts need clauses that will allow you to protect your database rights even where copyright doesn’t come to the rescue.

For public databases, a best case scenario is a Database Act.  Now is the time to be asking Government for change.

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