News Corp sources indicate that Telstra and Sensis have obtained leave to appeal Justice Gordon’s judgment to the full bench of the Federal Court. No comment appears so far from the websites of Telstra or the About Us section of Sensis.

The full court judgment may arrive in 2010, or later, there are many variables in this case.

Whatever the outcome is in this case there are practical, serious and urgent priorities for owners of directories and databases who claim copyright.

The Lightbulb post on Justice Gordon’s judgment is Telstra loses as copyright blowback continues. As it stands the judgment removes the copyright foundation that holds in place the business of the Yellow Pages and White Pages.

For Sensis a lot rests on copyright, as is evident from the fact that a copyright notice appears in the footer of every printed Sensis directory page.

For Sensis, owned by Telstra, market perception too is critical. There’s the perception of those advertisers for whom Yellow Pages is critical or unavoidable. Online advertising competitors are cutting into the revenues of traditional monopoly directories, just as they have for classified advertising in newspapers.

There’s also the perception of shareholders, Telstra shares have declined since Justice Gordon’s judgment.

The judgment has significant implications for claims to there being copyright in directories and databases under copyright law in Australia. There are also implications for other types of compilations, eg alphabetical lists of transport facilities and timetables, stock exchange prices and lists of fixtures for the AFL and other sports. Using copyright law as it used to be their proprietors have extracted fees or blocked others from market entry. The game is changing.

This is so because of the High Court’s April 2009 IceTV decision. This was read as a game changing decision by Justice Gordon.  You can read the unanimous decision online here: IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14. Significantly, there was criticism in that High Court 2009 decision of the Full Federal Court 2002 decision in Desktop Marketing System, a phone directories case which went in favour of Telstra.

Before the phone directories and IceTV cases Australian copyright law treated directories as “literary works”. This is the same copyright category under the Copyright Act 1968 (Cth) as applies to novels, articles, and software.

Practical Takeaway

Due to the decision in IceTV and Justice Gordon’s decision, there are immediate practical takeaways for proprietors of databases and directories. Each should review basic copyright questions such as:

  • who are the authors of the database or directory?
  • what literary work has each author produced or co-authored?
  • where are the contracts with the authors and what do they say about copyright?
  • what is it about the content that makes it original?
  • where are the records required to substantiate copyright claims?

At Dilanchian we specialise in answering these copyright questions and developing practical and legal documentation and advice specific for the needs of publishers of databases and directories.

Noric Dilanchian