Sensis loses case to protect copyright of Yellow Pages and White Pages

Telstra’s directories division Sensis has lost its bid to protect the copyright of its Yellow and White Pages phone directories after a judge ruled that the creation of directories did not involve some “creative spark”.

Sensis took Federal Court action against Local Directories, which distributed directories in Queensland, the Northern Territory and New South Wales on the grounds that it had infringed copyright by reproducing data found in the phone books.

However, Justice Michelle Gordon said that Telstra did not have copyright over the information in the phone book.

“None of the works were original. None of the people said to be authors of the works exercised “independent intellectual effort” or “sufficient effort of a literary nature” in creating the Works,” Gordon said.

“Further, if necessary, the creation of the works did not involve some “creative spark” or the exercise of the requisite “skill and judgment”. I accept that production of the directories is a large enterprise populated by many contributors (ignoring for the moment the determinative difficulties with authorship outlined above). However, these facts are not relevant to the applicants’ claim and… substantial labour and expense is not alone sufficient to establish originality.”

Sensis is considering an appeal against the decision.

Intellectual property lawyer Jack Dolphin from Actuate IP says the decision is the latest in a long line of cases around the protection of databases.

He says many of these cases have relied on the “sweat of the brow” doctrine.

“It’s about whether or not the sweat of the brow is sufficient to “manufacture” a copyright, rather than a traditional creative copyright,” he says.

“It’s a way of the copyright Act protecting people who have put a lot of time and effort putting together a database, and not just let someone taking the database, sticking a new font on it and saying ‘this is ours’.”

However, a recent High Court case, IceTV Pty Limited v Nine Network Australia Pty Limited, which revealed the reproduction of confirmed substantial labour is not enough to prove copyright.

Given this decision was only handed down in 2009, Dolphin says it is not surprising Justice Gordon has decided to follow this precedent.

The case will again raise for questions for companies that compile and make money from databases, particularly those based on widely-recognised “facts” or data, such as telephone numbers and addresses.

Dolphin says the key for database companies is to add some sort of “creative spark” or point of difference if they want to protect their database.

In the IceTV case, that creative spark involved adding a few lines of commentary to television listings.

“The creative spark was having paid a bunch of students to sit on the couch, watch the television and record what was on.”

“It might only be three lines, but you’re off and racing.”