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The High Court has ruled that the electronic program guide created by IceTV does not infringe Nine Networks’ copyright.

The full judgment of French CJ,Gummow, Hayne, Heydon, Crennan and Kiefel JJ (73 pages) is available here.

In summary, the court found that, in terms of the Copyright Act,  IceTV did not copy a “substantial” part of Nine’s weekly schedule.

The judgment notes that IceTV did not copy any of the broadcasters’ program synopses, and that:

IceTV’s synopses had a different commercial purpose from that of Nine, as evidenced by the use of humour or criticism.  For example, the IceGuide synopsis for the Nine programme The Footy Show (AFL) on 28 September 2006 read
“From the Rod Laver Arena comes this extra long torture session.  Apologies for not bringing you the ‘entertainment’ line up, it’s not through lack of research.  Unfortunately, the only way to have truly known was to be watching The Footy Show last week and frankly, not for love or money will the IceMan do that.  So, those of you who enjoy the ‘humour’ and baffling ego inflation.  Enjoy.”

Having found that  IceTV did not copy a substantial part, it was not necessary for the Court to consider the issue of “indirect copying” which was one of the main reasons previously given for the contrary finding in the Federal Court of Appeal. I discuss that subject in an earlier post.

I was pleased to see the Court took into account the balance between the public interest issues of this case.  They said:
“The Full Court approached the issue of substantiality at too high a level of abstraction, and in doing so tipped the balance too far against the interest of viewers of digital free to air television in the dissemination by means of new technology of programme listings.  The Full Court did so by treating the issue of substantiality as dominated by an “interest” in the protection of Nine against perceived competition by Ice.”

The history of this litigation is explored further in this category of our blog. It has its roots with my idea, back in 1988, that an electronic program guide could be used to overcome the difficulty people were then having setting their VCRs to record the correct program. When I approached the TV networks to buy their data, they said they would not sell it for that use. When I came up with the idea of creating an EPG independently, without breaching copyright, TV industry representatives said “we’ll sue you”.

The rest is history.

Peter Vogel (Shareholder but no longer employed by IceTV)

The decision in the case of Nine Networks v IceTV  will be handed down at the High Court in Canberra at 10.15 tooday.

From the hammering that Nine got from the bench at the hearing of the appeal last year, I’d say IceTV will romp home. However a decision in IceTV’s favour would signifcantly change the course Australian copyright law has taken, so I’d reduce the odds to 60% in Ice’s favour.

Stay tuned!

2009 UPDATE: ICETV WINS HIGH COURT APPEAL

2008 post follows:

The transcripts of the IceTV vs Nine Networks appeal to the High Court of Australia have now been published.

The first day 16th Oct 2008
Second day 17th Oct 2008

My comments on each day’s arguments are presented in previous entries in my blog.

Going by last year’s High Court Annual Report, a judgment can be expected within 3-6 months.

The High Court appeal in Nine vs IceTV concluded yesterday. Mr Bannon SC completed Nine’s submission, which was focussed largely on showing that Nine’s weekly schedule does fall within the Copyright Act’s definition of a compilation. The judges continued their questions about who the authors are, and when their authorial work started and ended. They were also interested to know exactly which copyright work Nine claimed to own. Gummow J said that the statement of claim talks about program guides which are ‘up there’, with a gesture to the heavens.

A compilation requires selection and arrangement of elements and the process needs to require skill. Mr Bannon had said the day before, that the process of selection started months earlier, when Nine’s executives visited the producers in Hollywood and so on. On the second day, when Justice Hayne pointed out that the selection process must be made from existing stock, Mr Bannon said “I am beating a full-scale retreat from Hollywood – and that it was “via Damascus”.

The Judges continued questioning whether Nine’s activities were a part of the selection process for making the compilation, or a series of commercial decisions for optimising their broadcasting business. Mr Bannon accepted Justice Hayne’s suggestion that “a root proposition you will have to make is that a decision about a business decision, once recorded in a material form, is a compilation”.

Justice Crennan posed a number of hypothetical scenarios, such as: if a competitor shows the same show as Nine at the same time, would they breach Nine’s copyright by putting that in their guide?

Mr Catterns QC then spoke for Telstra. He argued that the policy that compilation copyright protects commercial considerations has long been decided, and that is a question for the legislature, not the courts. Once again, Justice Crennan questioned whether making commercial decisions is an act of compilation. She also explored the question of originality “You can’t say a trademark is original just because you spent $10 million coming up with it”.

IceTV’s Mr Ireland QC then argued that the people who made the programming decisions were not the authors of the Nine guide, the author is an un-named person who prints out the selection of fields from their large database to create the guide which is sent to the aggregators.

To me, the most striking feature of this appeal was that the goalposts seem to have shifted dramatically since the case began. Initially, there was little discussion about the nature of Nine’s copyright work, it was all about whether IceTV copied it and, if so, whether it was a substantial part. The High Court seemed primarily interested in whether Nine’s guide is actually a copyright work within the definitions of the Act, and if so how much protection it should get.

There was also the question of whether IceTV’s activities cause Nine any harm. Nine were asked “what are the damages if somebody else informs the public about your programs? Nine said that they did not get paid for their schedule by the aggregators, but they had control over what they did with it. The relevance of this is discussed in Benedict Atkinson and Professor Brian Fitzgerald’s recent publication described in my last blog entry.

As Atkinson and Fitzgerald say:
Ice TV v Nine Network is a seminal copyright case because of its potential to restrict information flow. Access to information is a human right, and while it might be thought that the public is not much harmed if prevented from extracting data from unexpressive information compilations, over time the oppressive exercise of proprietary rights in information could radically undermine our freedom to inform ourselves without cost or restriction.

An interesting analysis of the social issues underlying the IceTV vs Nine case has just been published by Benedict Atkinson and Professor Brian Fitzgerald (QUT Law Faculty): Copyright as an Instrument of Information Flow and Dissemination: the case of ICE TV Pty Ltd v Nine Network Australia Pty Ltd.

The abstract says: “This article outlines and critically evaluates the case of Ice TV v National Nine Network. This case which is being heard before the High Court of Australia in October 2008 considers the boundaries of copyright protection for compilations…”
“The convening of all seven judges of the High Court is a rare occasion and reserved for cases of special significance. The court’s decision in this case has the very real potential to influence the shape of innovation and productivity in Australia over the next decade. It will be asked to determine a legal issue that invites the court to provide guidance on the underlying purpose of copyright law and its role in promoting information dissemination and information flows: variables that (evolutionary) economists see as foundational to innovation.To this end we believe the outcome of this case may substantially determine the extent to which commercial information compilers control the use of non-expressive compilations. The underlying concern of many observers is that if substantial reproduction is said to result from appropriation of investment, and investment is said to be a legitimate simulacrum of expressive originality, most unauthorised copying of compiled information will constitute breach of copyright. The adverse social and economic consequences of so-called ‘copyright in information’ may be great.”

The full article can be downloaded from the QUT website.

I have also previously mentioned an excellent analysis of the case by David Lindsay in a previous blog. David’s Powerpoint presentation can be downloaded from the Copyright Association’s website. Come back tomorrow for a rundown on the final day of the High Court hearing.

Today I am in Canberra for the High Court appeal of Nine vs IceTV (see my previous posts below). This case has certainly gathered a head of steam. The importance of the outcome of this final appeal is reflected in the fact that leave was granted for Telstra to appear in support of Nine and to the Australian Digital Alliance in support of IceTV. Hence the cast of thousands at the bar table.

Telstra is understandably concerned. If this appeal goes against Nine, it could be a green light for others to use information from their phone book which until now has been protected by copyright laws (Telstra vs Desktop Marketing being the landmark case).

The Australian Digital Alliance is a public interest group which champions the right of access to information, as their website says:

Australia’s copyright laws are the chief means by which we as a society regulate the creation and distribution of knowledge. The effects of a misguided copyright regime would be dire and create enduring harm to our education system, our economy and our culture.

The day kicked off with IceTV’s silk John Ireland explaining how IceTV produces their guide and fielding questions from the bench. IceTV did not accept that copyright subsists in Nine’s weekly schedule. They said it is “Nine’s statement of its present intention as to what is going to be broadcast” when and once these facts are published they are a public resource which can be used as a basis for their research.

There was much discussion about the primary purpose of creating the schedule – is it mainly for meeting commerical objectives or for providing a TV guide for the public?

The judges also asked who the authors of the alleged copyright work are (a company cannot be an author, only people). After much discussion this point is still being argued.

Mr Ireland argued that this case is distinguished from “indirect copying” cases, such as where someone copies house plans by measuring up a house built from the plans. He said that in that case the process recreates the original work, whereas IceTV does not reproduce Nine’s schedule.

Mr Webb, appearing for the Australian Digital Alliance, submitted that the Full Court had lost sight of what was required to constitiute an original work of an author. He also argued that copyright law has always strived to protect the public interest in dissemination of information, and that the public interest must be balanced against the author’s interest. He suggested that Nine was attempting to control information long after it has lost its confidentiality.

Nine’s Mr Bannon was next. He described the process Nine used to create its weekly schedule and stressed that the process of deciding the broadcast schedule cannot be separated from the process of creating the copyright work, the weekly schedule.

The Judges asked many questions which seemed to be aimed at teasing out the distinction between making business decisions, aimed at maximising ratings, and publishing the schedule.

Justice Gummow, for example, asked “Is what you are seeking protection for the substantial business investment in building up the database?”.

There was much discussion about whether the authorship process included all the preparatory work. Justice Haydon said “The expression of those two columns [the time and title] is not the hard bit, thinking them up is the hard bit” and asked whether the work of negotiating purchase of programs is also part of the skill and effort of creating the schedule.
The case resumes tomorrow.  Stay tuned.

The High Court today granted special leave to IceTV to appeal the finding that they had infringed Nine’s copyright in their program guide.

IceTV’s application for leave cited 10 ways in which the Full Court had erred. To me the most interesting points will be concerning indirect copying. Quoting IceTV’s application:

6. The Full Court erred in characterising the case as one of “indirect copying.”
7. The Full Court erred in finding that the requisite causal consideration existed between the Weekly Schedules and the IceGuide produced by the first applicant.

A lot rides on this point, not only for IceTV but for many others who compile information of various types. For example, as the ruling presently stands, it is open for say asupermarket to claim that the government’s “Grocerywatch” breaches their copyright by indirectly copying their price list. See my earlier post for more on the question of indirect copying.

If the High Court confirms that Nine’s copyright is breached no matter how the guide is reproduced (which seemed to be what the judgment said), then even watching TV and writing down what’s on would be a copyright breach.

It’s interesting that IceTV was granted leave to appeal, while Desktop Marketing was refused leaveto appeal the finding in favour of Telstra in an earlier landmark case. Perhaps the High Court realises what a can of worms the Full Court judgment against IceTV has opened up.

The Copyright Society of Australia hosted a seminar on 24 July 2008 at which David Lindsay, Senior Lecturer in Law at Monash University gave a presentation entitled “Appeal decision in Channel Nine v Ice TV”.

David analysed both the legal foundation and policy implications of the ruling. He said that “the Full Fedral Court decision is entirely in accord with authority and appeal would need to overturn Anglo-Australian law” and concluded “The debate about the future of Australian commercial FTA broadcasting is properly a matter for broadcasting policy, not copyright law.”

A summary of this excellent presentation can be downloaded from the Copyright Society’s website here.

Nine had IceTV back in court today, Thursday 12 June 2008. This was the consequence of the Full Court’s recent finding that IceTV had infringed Nine Networks’ copyright in their TV schedule (see my blog here and here for more details).

The matter was remitted back to Justice Annabelle Bennett to make the appropriate orders. Most of the day was spent debating the wording of the injunction restraining IceTV from further infringement. IceTV argued that the injunction should be narrow and be restricted specifically to the process which the Full Court had found to have breached Nine’s copyright .

Nine argued that a broader injunction should be included also, stating more generally that IceTV be restrained from reproducing their schedule.

Justice Bennett expressed her reluctance to make orders which simply retated the law, but Nine submitted that in the absence of such an injunction IceTV could simply “wriggle around” the narrower restraint.
However no conclusion was reached today. IceTV have sought leave to appeal to the High Court, and as this application will be heard on the 25th of June, it appears no orders will be made until after that hearing.

In her judgment in August 2007, dismissing the copyright claim by Nine Networks against IceTV, Justice Bennett said “The underlying principle is that the law of copyright does not give an exclusive right to state or describe particular facts.”

The recent appeal decision overturning Justice Bennett’s ruling appears to me to be confirming that it is now possible, in many situations, to gain protection of mere facts.

Here’s my take on what happened in the Nine/IceTV situation (and I am neither a lawyer nor spokesman for IceTV).

Understanding that a published TV schedule is protected by copyright, I built a business around the idea of independently creating a TV guide by original research and creativity. See this entry for more details. The research involved watching TV and writing down what was showing when. The resulting rough schedule was then fine tuned from time to time using other information sources.

In 2002 I was delighted to read the judgment in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd which said: It is at law, if not in practice, open to a person to ascertain all the facts recorded in a Telstra directory by independent inquiry and to compile their own directory containing the results. So long as the second compiler did not copy Telstra’s product, there would be no infringement of any copyright in the (identical) Telstra directory.

This seemed to confirm exactly the process IceTV would use. However the judges in the recent Nine appeal (incidentally the same three as in Desktop) ruled that although IceTV had no access to Nine’s original work, IceTV had indirectly copied Nine’s copyright schedule. They clearly identified IceTV’s use of information such as TV guide websites to which Nine licensed their information as the medium of indirect copying. They concluded: As we have explained, Ice, to the extent it reproduced time and title information from the Weekly Schedules, appropriated the skill and labour used by Nine to create the Weekly Schedules.

The implication of this seems to be that “indirect copying” has been defined as any activity which results in the “reproduction” of a copyright work. Had IceTV not looked at the published guides at all, and relied only on what could be learned by watching TV, the Court might still have found them guilty of indirect copying.

This casts a perverse new light on the Desktop dictum quoted above. It seems that “so long as the second compiler did not copy Telstra’s product” takes on a new meaning in light of the Nine judgment. The same three judges who seemed to have given me the thumbs up in 2002 for the process I was proposing to use, seem to now be saying that no matter what Desktop would have done, they could not reproduce Telstra’s phone listings without “appropriating their skill and labour”.

Suppose Desktop Marketing had actually gone door to door and asked everyone what their phone number is, even for just one suburb. Having published this list, Telstra could argue that they had indirectly copied their phone book through the medium of many informants. The court would likely find that were it not for their skill and labour expended in assigning households unique numbers, it would have been impossible for Desktop to create their directory. Following the precedent of Nine vs IceTV Desktop would have breached Telstra’s copyright.

Telstra could further argue that even individual phone numbers and the associated identity is their copyright property, and writing down a single name and number given to you by a friend, or printing your name and number on a business card, is a breach of their copyright.

I can also imagine situations where the owner of the original work does not publish it at all, but uses copyright law to regulate use of their information, which may be mere facts.

These developments in Australian law are a worrying move towards a new class of intellectual property rights that might be great for some businesses’ bottom line, but a threat to competition and the public interest generally.

I see IceTV are considering an appeal to the High Court. I also recall that Desktop was refused leave to appeal to the High Court.

I wish them luck.