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Oxford University Commonwealth Law Journal Volume 10, 2010 - Issue 1
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Original Articles

An Australian Copyright Revolution and its Relevance For UK Jurisprudence: Icetv in the Light of Infopaq v Danske

Justine PilaUniversity Lecturer in Intellectual Property Law, University of Oxford; Official Fellow and Senior Law Tutor, St Catherine's College, Oxford. This is the revised version of a paper presented at a meeting of the British Literary and Artistic Copyright Association (BLACA) in London on 14 January 2010. I am grateful to the Executive Committee of the BLACA for inviting me to speak, and to the Chair of the meeting, Lionel Bently, my co-panelists, Leonard Hoffmann and Nicholas Saunders, and the other participants for a valuable discussion of the issues it considers. Thank you also to Brigitte Lindner for the reference to the article by Jorg Reinbothe cited in n 74 below and an English translation of the relevant passage, and to the anonymous referees for their comments.
Pages 77-93 | Published online: 27 Apr 2015

  • [2009] HCA 14 (’IceTV’). For evidence of the revolutionary effect of the High Court's decision see the cases cited in n 50.
  • The most important High Court cases on those concepts have been Robinson v Sands & McDougall Pty Ltd (1916) 22 CLR 124; Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49; Blackie & Sons Ltd v The Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396; Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479; Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171; Autodesk Inc v Dyason (1992) 173 CLR 330; Autodesk Inc v Dyason [No 2] (1993) 176 CLR 300; Data Access Co v Powerflex Services Pty Ltd (1999) 202 CLR 1.
  • See Copyright Act 1968 (Cth) s 32; Copyright, Designs and Patents Act 1988 (UK) (‘CDPA’) s 1(1)(a).
  • See Copyright Act 1968 (Cth) s 14(1); CDPA s 16(3)(a).
  • C–5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECDR 16 (’Infopaq’).
  • Council Directive (EC) 2001/29 on the harmonisation of certain aspects of copyright and related rights in the information society [2001] OJ L167/10.
  • See Opinion of Advocate General Trstenjak, 12 February 2009 [59]–[62].
  • [2007] EWCA Civ 219 (’Nova Productions’) [27].
  • [2008] EWHC 1411 (’Football Association’) [219].
  • [1990] ECR 1–4135.
  • Infopaq (n 5).
  • See Christian Handig, ‘Infopaq International A/S v Danske Dagblades Forening (C–5/08): is the term “work” of the CDPA 1988 in line with the European Directive?’ (2010) 32 Eur Intellectual Property Rev 53, 54–55. The basis for this appraisal is the ECJ's statement in Infopaq (n 5) at [27] ‘that the need for uniform application of Community law and the principle of equality require that where provisions of Community law make no express reference to the law of the Member States for the purpose of determining their meaning and scope, as is the case with Article 2 of Directive 2001/29, they must normally be given an autonomous and uniform interpretation throughout the Community’. See also Christian Handig, ‘The Copyright Term “Work”—European Harmonisation at an Unknown Level' (2009) 40 Intl Rev of Intellectual Property and Competition L 665, 670 (defining the EU conception of ‘work’ as requiring an author's own intellectual creation, consistent with a view of ‘original works’ and ‘authors’ as correlative concepts).
  • See Isabella Alexander, ‘The Concept of Reproduction and the “Temporary and Transient” Exception’ (2009) 68 Cambridge LJ 520, 521. The basis for this appraisal is the following passages from the ECJ's opinion in Infopaq (n 5) [37]–[39] (see also [51]): ‘[C]opyright within the meaning of Article 2(a) of Directive 2001/29 is liable to apply only in relation to a subject-matter which is original in the sense that it is its author's own intellectual creation. As regards the parts of a work, it should be borne in mind that there is nothing in Directive 2001/29 or any other relevant Directive indicating that those parts are to be treated any differently from the work as a whole. It follows that they are protected by copyright since, as such, they share the originality of the whole work…. [T]he various parts of a work thus enjoy protection under Article 2(a) of Directive 2001/29, provided that they contain elements which are the expression of the intellectual creation of the author of the work’.
  • See Handig, ‘Infopaq International A/S v Danske Dagblades Forening (C–5/98): is the term “work” of the CDPA 1988 in line with the European Directives?’ (n 12) 56–7, and Alexander (n 13) 522, both suggesting that the EU ‘intellectual creation’ standard of originality is higher than the current UK standard.
  • [2008] EWCA Crim 1324 (’Higgs’) [28].
  • In Higgs (n 15), the UK Court of Appeal adopted the High Court of Australia's reasoning in Stevens Kabushiki Kaisha v Sony Computer Entertainment [2005] HCA 58 in respect of the concept ‘effective technological measures'. That concept originates from the World Intellectual Property Organisation (‘WIPO’) Copyright Treaty 1996 and the WIPO Performances and Phonograms Treaty 1996, and was introduced into the CDPA to comply with Directive 2001/29.
  • Until the introduction of its current Copyright Act In 1968, the basis for Australian copyright law was the Copyright Act 1911 (Imp), which mirrored the Copyright Act (UK) 1911. The provisions of the Copyright Act 1968 (Cth) are derived largely from the Copyright Act 1956 (UK). To the extent that differences exist between the 1968 Act and the CDPA, they are largely the result of EU harmonisation.
  • Examples of UK courts adopting the reasoning of Australian courts in copyright cases abound, and include several of the cases discussed in this article, including Higgs (n 15); Football Association (n 9) [228] (Kitchin J, citing Australian Video Retailers Association Ltd v Warner Home Video Pty Ltd (2001) 53 IPR 242 (Federal Court of Australia (FCA)) in support of his finding (discussed below) that copied fragments of a film cannot be considered cumulatively when determining infringement); Newspaper Licensing Agency v Marks & Spencer Plc [2001] UKHL 38 (’Newspaper Licensing Agency’) [24] (Lord Hoffmann, citing Nationwide News Pty Ltd v Copyright Agency Ltd (1996) 136 ALR 273 (Full Court of the Federal Court of Australia (FCFCA)) (’Nationwide News’) in support of his analysis of substantial part, discussed below). See also Newspaper Licensing Agency v Marks and Spencer Plc [2001] Ch 257 (CA) (’Newspaper Licensing Agency (CA)’) (also citing Nationwide News, but placing greater emphasis on the first instance decision of Wilcox J in Nationwide News Pty Ltd v Copyright Agency Ltd (1995) 128 ALR 285 (FCA)).
  • For a more detailed account of the material facts see Nine Network Australia Pty Ltd v IceTV Pty Ltd [2007] FCA 1172 (’IceTV (FCA)’) [1]–[26].
  • IceTV (FCA) (n 19).
  • The word ‘slivers’ in this context is from Bennett J's judgment; see IceTV (FCA) (n 19) [187]. Use of the word was criticised by the Full Federal Court, but adopted by the High Court.
  • IceTV (FCA) (n 19) [43], [52], [199].
  • IceTV (FCA) (n 19) [208].
  • [2002] FCAFC 112 (’DMS’).
  • IceTV (FCA) (n 19) [246].
  • For the report of the Full Court's decision see Nine Network Australia Pty Limited v IceTV Pty Limited [2008] FCAFC 71 (’IceTV (FCAFC)’).
  • IceTV (FCAFC) (n 26) [113].
  • IceTV (FCAFC) (n 26) [109]–[111].
  • IceTV (FCAFC) (n 26) [113]–[115].
  • IceTV (n 1) [24] (footnotes omitted). See also [25]: ‘In both its title and opening recitals, the Statute of Anne of 1709 echoed explicitly the emphasis on the practical or utilitarian importance that certain seventeenth century philosophers attached to knowledge and its encouragement in the scheme of human progress. The “social contract” envisaged by the Statute of Anne, and still underlying the present Act, was that an author could obtain a monopoly, limited in time, in return for making a work available to the reading public’.
  • IceTV (n 1) [71] (footnotes omitted).
  • IceTV (n 1) [131] (footnote omitted).
  • IceTV (n 1) [52].
  • IceTV (n 1) [69].
  • IceTV (n 1) [69].
  • [2000] 1 WLR 2416 (HL) (‘Designers Guild’) 2418 (Lord Bingham), cited in IceTV (n 1) [70].
  • IceTV (n 1) [157], [160]–[161].
  • IceTV (n 1) [96], [26].
  • IceTV (n 1) [33].
  • IceTV (n 1) [98] (footnote omitted, quoting Hugh Laddie, Peter Prescott and Mary Vitoria, The Modern Law of Copyright (Butterworths, London 1980) 243).
  • IceTV (n 1) [99].
  • IceTV (n 1) [54].
  • IceTV (n 1) [152].
  • IceTV (n 1) [54].
  • IceTV (n 1) [54].
  • IceTV (n 1) [168], [170].
  • IceTV (n 1) [157].
  • IceTV (n 1) [169]–[170].
  • IceTV (n 1) [171]; compare [55].
  • IceTV (n 1) [33], [52], [98]–[99], [133]–[134], [157], [187]–[188]. This has now been confirmed by the Federal Court: see Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2010] FCA 44 (deciding that as a result of the High Court's decision in IceTV, copyright no longer subsists in local area telephone directories, and that DMS (n 24) no longer represents Australian law); Primary Health Care Ltd v Commissioner of Taxation [2010] FCA 419 (applying IceTV to find that copyright does not subsist in medical records).
  • See Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 612 (’DMS (FCA)’).
  • (1866) LR 1 Eq 697 (Ch).
  • (1867) LR 3 Eq 718 (Ch).
  • (1869) LR 9 Eq 324 (Ch).
  • (1884) LR 26 ChD 637 (Ch).
  • (1898) 78 LT 613 (Ch).
  • Copyright Act 1842 (UK).
  • Walter v Lane [1900] AC 539 (HL).
  • [1899] 2 Ch 749 (CA) 759.
  • (1889) 40 Ch D 500 (Ch) (’Cate v Devon’).
  • Cate v Devon (n 60) 507.
  • IceTV (n 1) [21] (footnotes omitted).
  • See further Collis v Cater (n 56) 615, where North J deployed the metaphoric language criticised by Gummow J et al to describe the principle of copyright, as follows: ‘[One must not for] their own profit… reap where they have not sown, and… take advantage of the labour and expenditure of [others] in procuring news for the purpose of saving labour and expense to themselves'. For a detailed discussion of these cases and their significance see Justine Pila, ‘Compilation Copyright: a Matter Calling for “A Certain… Sobriety'” (2008) 19 Australian Intellectual Property J 231, 233–9. For an alternative perspective see Kathy Bowrey, ‘On Clarifying the Role of Originality and Fair Use in 19th Century UK Jurisprudence: Appreciating “The Humble Grey Which Emerges As The Result of Long Controversy”’ in Lionel Bently, Catherine Ng and Pina D'Agostino (eds), The Common Law of Intellectual Property: Essays in Honour of Professor David Vaver (Hart Publishing, Oxford 2010) ch 3.
  • See, eg, Cary v Kearsley (1801) 4 Esp 168, 170, 170 ER 679 (KB) 680; Scott v Stanford (n 53); Kelly v Morris (n 52).
  • A similar example was considered by Mummery LJ in Baigent v Random House Group Ltd [2007] EWCA Civ 247 (’Baigent’) [142].
  • See, eg, Newspaper Licensing Agency (CA) (n 18).
  • See, eg, Higgs (n 15).
  • See the Copyright and Rights in Databases Regulations 1997, implementing Council Directive (EC) 96/9 on the legal protection of databases [1996] OJ L77/20. The absence of equivalent protection in Australian law was remarked upon by Gummow J et al in IceTV (n 1) [135]–[139].
  • Under the CDPA, literary copyright subsists in original compilations and databases, notwithstanding the availability of sui generis protection: see CDPA s 3(1)(a), (d); s 3A.
  • See Broadcasting Act 1990 (UK) s 176.
  • [1967] 1 WLR 723 (Ch) 730–1.
  • (1857) 3 K&J 708 (Ch) 714.
  • See also Cantor Fitzgerald v Tradition [2000] RPC 95 (Ch).
  • Infopaq (n 5) [40]; but compare Jorge Reinbothe's account of the original intent of the Directive, as reported in Jorge Reinbothe, ‘Die EG-Richtlinie zum Urheberrecht in der Informationsgesellschaft’ (2001) GRUR Int: Gewerblicher Rechtsschutz und Urheberrecht, Internationaler Teil 733, 736.
  • [1916] 2 Ch 601 (’University of London Press’) 610 (Peterson J).
  • [1964] 1 WLR 273 (HL) (’Ladbroke’).
  • (1924) 93 LJ PC 113 (PC) (’Macmillan v Cooper’).
  • Macmillan v Cooper (n 77) (Lord Atkinson, quoting Hogg v Scott (1874) LR 18 Eq 444, 458 (Hall VC)).
  • [1994] FSR 275 (Ch) (’Ibcos’).
  • Ibcos (n 79) 302 (Jacob J).
  • [1997] FSR 401 (Ch) (’Electronic Techniques’).
  • Electronic Techniques (n 81) 409 (Laddie J). For more recent evidence of that statement's continued acceptance, one might refer to its description in the third edition of Laddie, Prescott and Vitoria's well-known text as a proposition having ‘high authority’ in passages cited by the Court in Gilham vR [2009] EWCA Crim 2293 (’Gilham’) [20].
  • [2004] EWHC 1725 (’Navitaire’).
  • Navitaire (n 83) [80].
  • Nova Productions (n 8) [55]. The reference to copyright's use as an ‘instrument of oppression’ is from Lindley LJ's judgment in Hanfstaengl v Empire Palace [1894] 3 Ch 109 (CA) 128, quoted also in British Leyland Motor Corp Ltd v Armstrong Patents Co Ltd [1986] AC 577 (HL) 649; Hawkes & Son (London) Ltd v Paramount Film Service Ltd [1934] Ch 593 (CA) 602; and Joy Music Ltd v Sunday Pictorial Newspapers (1920) Ltd [1960] 2 QB 60, 69.
  • The point was made expressly by French CJ et al; see IceTV (n 1) [34] (footnotes omitted): ‘There has been a long held assumption in copyright law that “authorship” and “original work” are correlatives; the legislation does not impose double conditions'. More recently see Football Dataco Ltd v Stan James (Abingdon) Ltd [2010] EWHC 841 (’Football Dataco’) [86] (emphasising that it is ‘the author [who] must have exercised judgment, taste or discretion' in creating the work).
  • See Pila (n 63) 239–52.
  • See, eg, Sawkins v Hyperion Records [2005] EWCA Civ 56; compare Roberton v Lewis [1976] RPC 169 (Ch) (doubting the authority of Walter v Lane (n 58)).
  • See, eg, CCH Canadian Ltd v Law Society of Upper Canada [2004] 1 SCR 339 (Supreme Court of Canada) [15], [19] (McLachlin CJ, describing the UK as supporting a ‘sweat of the brow’ standard of originality, and University of London Press (n 75) as consistent with that standard); DMS (FCA) (n 51)
  • (Finkelstein J, describing English law as supporting copyright subsistence on the basis of ‘work or… expense in gathering… facts').
  • See Art 2(a) (requiring that Member States provide for the reproduction right ‘for authors, of their works').
  • Infopaq (n 5) [39]. See also Football Dataco (n 86), where Floyd J proceeded from the same premise, and expressly distinguished the work at issue from ‘mere “sweat of the brow”, by which I mean the application of rigid criteria to the processing of data’, adding: ‘It is quite unlike the compiling of a telephone directory, in that at each stage there is scope for the application of judgment and skill' ([43]).
  • Sawkins [2005] EWCA Civ 56 [53] (Mummery LJ).
  • Ladbroke (n 76).
  • See Baigent (n 65) [131]–[132] (Mummery LJ, describing the principle as ‘so fundamental to the proper conduct of copyright litigation that it needs to be spelt out’); Football Dataco (n 86) [82] (deciding that while it is necessary when determining the originality of a database ‘to focus on skill and labour which is actually concerned with selection and arrangement, and to exclude that which is not’, such selection and arrangement ‘is not confined to selection or arrangement performed after the data is finally created’).
  • [1989] 2 All ER 1056 (PC).
  • [2004] EWHC 2985.
  • [2006] EWHC 449.
  • See also Football Dataco (n 86) [82] (see n 94), [91].
  • Navitaire (n 83) [127].
  • See, eg, the passages of Martin Howe QC's skeleton argument in Nova Productions (n 8) quoted by Jacob LJ at [48].
  • Baigent (n 65) [155].
  • Electronic Techniques (n 81) 410.
  • Electronic Techniques (n 81) 407–9.
  • Football Association (n 9) [227].
  • The expression is from Gilham (n 82).
  • [2004] EWHC 1738. For a recent discussion of these cases and the issue see Gilham (n 82) [23].
  • [2001] EWHC 460.
  • Baigent (n 65) [97] (Lloyd LJ).
  • Waterlow Publishers Ltd v Rose [1995] FSR 207 (CA); Waterlow Directories Ltd v Reed Information Services Ltd [1993] ECC 174 (Ch).
  • Electronic Techniques (n 81) 409.
  • Infopaq (n 5) [38].
  • Infopaq (n 5) [45].
  • Infopaq (n 5) [46].
  • See Football Dataco (n 86) [88], where Floyd J described the Court in Infopaq as ‘distinguishing between the common currency of the words used, which do not in themselves attract copyright and their combination through choice, sequence and combination into an expression of the creativity of the author, which does'.
  • This is consistent with Floyd J's description of the ‘purpose of copyright’ in Football Dataco (n 86) as being ‘to provide encouragement for creative endeavour’ ([80]); a description which, given the context of that case, can be read as a response to the Infopaq description (see n 74 and accompanying text).
  • Council Directive (EC) 91/250 on the legal protection of computer programs [1991] OJ L 122/42. See, eg, Nova Productions (n 8).
  • See IceTV (n 1) [158]–[159]; compare [38]–[40].
  • Designers Guild (n 36) 2422–3.
  • See also Electronic Techniques (n 81) 414 (emphasising the need when considering a claim of literary copyright to properly conceive the subject matter, ‘qua literary work’).
  • Designers Guild (n 36) 2422–3. In Baigent (n 65) [145] et seq, Mummery LJ suggested similarly when considering ‘the necessary and sufficient conditions for characterizing the parts copied from the original work as “a substantial part” of the original work’.
  • [1996] RPC 76 (HL), especially [36], [40]–[42].
  • On the appropriateness of such tests see Electronic Techniques (n 81) 410: ‘Furthermore Mr Prescott argued that, in the circumstances of Cate v Devon, justice demanded that the court should find a way of granting relief to the plaintiff. Even if that is so, it may be that the solution is not for the court to change what amounts to a substantial part depending on whether it approves or disapproves of the defendant but to treat the plaintiff's serial output as a single work which has been published in instalments. Furthermore, in some cases the court may feel justified that the defendant's separate acts of copying should be viewed as a single act, spread over time, of copying’.
  • Examples of cases supporting a non-formalistic conception of the work include Designers Guild (n 36); Baigent (n 65); LucasFilm Ltd v Ainsworth [2009] EWCA Civ 1328.
  • See Baigent (n 65) [62], [63], [94] (Lloyd LJ), [127], [136] (Mummery LJ).
  • Newspaper Licensing Agency (n 18) [19].
  • IceTV (n 1) [62], [155]–[157].
  • Infopaq (n 5) [51]. See also n 13.
  • See Pila (n 63) 233–4, 242, 245.
  • For a detailed discussion of this issue see Justine Pila, ‘Copyright and its Categories of Original Works' (2010) 30 Oxford J of Legal Studies 229.
  • Infopaq (n 5) [38], [50].
  • Infopaq (n 5) [38].
  • Infopaq (n 5) [50].

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