Catherine Bond is a PhD Candidate at the Faculty of Law, University of New South Wales
Today there are generally no surprises when it comes to copyright law. Earlier this year, when the Full Federal Court overturned the decision of Bennett J in Nine Network Australia Pty Ltd v IceTV Pty Ltd, there was disappointment, but no surprise. That case concerned copyright infringement in a weekly schedule of television programs produced by the Nine Network and the Full Federal Court found that IceTV, in creating a similar television guide based on Nine’s programs, had taken a substantial part of the schedule and infringed copyright. Thus when the High Court of Australia granted special leave to appeal in IceTV v Nine Network Australia, Australian IP scholars were surprised, and our surprise was supported by two factors. The first was the High Court’s refusal five years earlier to grant special leave in Desktop Marketing Systems v Telstra Corporation Pty Ltd where our Full Federal Court had set the standard of originality for the subsistence of copyright at arguably the lowest level anywhere in the world. The second was the fact that the finding of the Full Federal Court was actually consistent with the Australian and UK legal position on originality and infringement (see for example David Lindsay’s presentation to this effect).
Yet it was clear from the outset that this was not going to be a regular copyright hearing. The task fell on opening counsel for IceTV, Mr Ireland, to explain the technology and compilation at hand. Both Nine Network and IceTV produced weekly television guides, IceTV’s guide containing the time and title information for the television programs that would appear on the Nine Network. Issues of originality and what constituted a ‘substantial part’ of those television guides – the compilation under issue in this case – therefore came into play. However, as has been in issue in previous compilation cases, Nine’s employees had decided, for example, the time information, many months prior to the creation of the compilation. Indeed, the primary argument of IceTV was that these ‘business decisions and antecedent activities’ were not relevant to the skill and labour of the development of the compilation at issue (see  HCATrans 356).
In contrast, counsel for Nine Network Australia, Mr Bannon, argued that ‘our complaint is not that they have taken a fact or an information’, but that ‘the very things they could not predict – if there is a test of substantiality based on originality – the very things they could not predict almost by definition are the most original parts’ of Nine’s compilation (see  HCATrans 356). Given the state of the law in Australia, Nine Network Australia was arguably in a stronger position legally, though Mr Bannon still received a substantial grilling from the High Court, particularly regarding the prepatory work preceding the creation of the compilation. Thus when the Court decides this issue, it will need to consider the relevancy of these preceding choices.
In addition, two organisations petitioned the High Court to appear as amicus curiae. For IceTV, the non-profit Australian Digital Alliance, who focussed on the issues of originality of the compilation and argued that the difficulty in this case is that ‘one is drawn into this territory where protection is given to a business undertaking and its information’ (see  HCATrans 356). It also encouraged the High Court to pursue the reasoning of the US Supreme Court in Feist. In contrast another communications body, Telstra Corporation, who had previously enjoyed success on a similar issue in the Desktop Marketing case, appeared for the Nine Network. Telstra argued that ‘all acts of compilation are relevant’ (see  HCATrans 358) and that the Court should not adopt Feist because of the US constitutional basis for that reasoning, a position confirmed in Desktop Marketing.
At the end of the two-day hearing, Australian compilation copyright had been given its most substantial critique to date. In my view, a ruling in favour of IceTV would perhaps give greater balance to an Australian copyright law that in recent years has been criticised for its owner-rights focus. However, if the High Court finds for Nine, it will be interesting to read its views on which ‘acts of compilation’ it believes are relevant to its decision. Indeed, while the outcome in IceTV may not be known for a few months, one point is arguably certain: it will probably be full of surprises.