A recent 2011 decision by the Federal Court of Australia in Dynamic Supplies Pty Limited v Tonnex International Pty Limited1 (Dynamic Supplies) provides further clarification on copyright protection of compilations.

Dynamic Supplies follows a line of recent cases2 in emphasising that, in order for a copyright work to be original, the work must have independent 'intellectual effort'.

These cases are in contrast with the earlier line of decisions which found that mere 'sweat-of-the-brow' is sufficient for the determination of subsistence of copyright in compilations.

Dynamic Supplies involved a dispute between two printer cartridge suppliers, Dynamic Supplies Pty Limited (Dynamic) and Tonnex International Pty Ltd (Tonnex) in relation to a compilation work consisting of a searchable compatibility chart for printer and computer consumables on Dynamic's website (March 2008 CVS file).

The Court concluded that cumulatively, the skill and labour used by Dynamic's employee, Mr Campbell, in creating the March 2008 CSV file was 'more than negligible' and therefore constituted an original literary work.

The reasons for finding this were:

  1. The selection of material was a personal assessment made by Mr Campbell of what information was valuable to the customer.
  2. In expressing the material a personal assessment was made by Mr Campbell as to the greatest utility of the form of the information.
  3. The arrangement of the chart in columns by Mr Campbell was a result of intellectual effort.

A comparison of the judicial findings in Dynamic Supplies and other recent cases provides useful clarification of where the line will be drawn by the Courts in respect of what will, and will not, constitute sufficient 'intellectual effort' to satisfy the requirement of originality for the purposes of copyright subsistence in compilation works.

  • In Telstra v Phone Directories it was found that the work of arranging the information in the Yellow Pages and White Pages directories was done primarily by computer programs rather than human authors. There was found to be insufficient work by human contributors involving intellectual effort directed at producing original expression or arrangement of the information for copyright to subsist in Telstra's directories.
  • In Acohs Pty Ltd v Ucorp Pty Ltd3 the layout, presentation and appearance of the Material Safety Data Sheets (MSDS) which were transcribed from existing MSDS were not original compilations because transcribers did not make any original contribution and the layout, presentation and appearance of the MSDS were controlled by a computer program.
  • In Primary Health Care v Commissioner of Taxation4 the prescriptions and health summaries of patients were not substantial enough to qualify as original literary works and the relevant skill, labour and effort was directed towards patient diagnosis rather than the expression of those ideas.

Conclusion

The key messages to take home from Dynamic Supplies and the other recent cases are that:

  • There is a fine line in determining whether copyright will subsist in a compilation as an original literary work.
  • A close assessment must be made about how a compilation has been created and by whom, and whether any 'intellectual effort' has been undertaken.
  • For there to be 'intellectual effort' there must be some human effort expended in the expression (as opposed to the mere creation) of the work.
  • Where the expression of the work involves some automated process then the work might not be protected by copyright.

Partner Scott Buchanan, based in Melbourne, specialises in commercial IP and is responsible for the trade marks group in Australia. You can reach him at scott.buchanan@dlapiper.com

Jessie Bridge, based in Melbourne, is a graduate lawyer in the intellectual property team. You can reach her at jessie.bridge@dlapiper.com

1 [2011] FCA 362.

2 IceTV Pty Ltd v Nine Network Australia Pty Ltd(2009) 239 CLR 458 and Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2010) 273 ALR 725

3 [2010] FCA 577

4 [2010] FCA 419

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