Databases and Australian Copyright Law

I’ve just been reading last month’s decision of the High Court of Australia in IceTV v Nine Network. (The High Court is Australia’s equivalent of the U.S. Supreme Court.) Here’s where Australia apparently rejects the “sweat of the brow” test for copyright in Australia, and takes an approach more akin to the Supreme Court’s decision in Feist. The Supreme Court in Feist had famously rejected the sweat of the brow test for copyrightability of databases – in that case an alphabetical listing of names, addresses, and telephone numbers in a white pages telephone directory. The Court explained that to attract copyright protection there must be sufficient originality in the selection, organization or arrangement of database contents to satisfy copyright’s originality requirements – pure hard work or expenditure of resources would not be enough. Many European countries take the same view. Australia was one of the few countries that still subscribed to the idea that copyright was appropriately granted for such hard work. Australian courts as recently as 2002 had espoused this notion with respect to a white pages telephone directory.

Britain, also, extends copyright protection to unoriginal databases provided that sufficient labor or resources have been expended in their creation – see Copyright, Designs and Patents Act, Eng. (1988), s. 3A(2).

The new IceTV decision turns past Australian practice on its head, but in a somewhat roundabout way. The High Court does not literally say that it is impossible to claim copyright based on “sweat of the brow” and it does not specifically overturn the Full Federal Court decision in Telstra v Desktop that allowed Telstra to claim copyright in a white pages telephone directory. However, it holds that in the context of an infringement action, there is no infringement – ie no “substantial taking” of protected content – where the defendant has only extracted and reproduced unoriginal facts even if those unoriginal facts represent the commercially valuable part of the database in question. In the IceTV case, the database consisted of free-to-air television programming information that Channel 9 Australia was trying to keep proprietary. IceTV provides a service that reproduced television programming information from Channel 9 and other channels in order to allow users to program their digital video recorders to record and time-shift programming, and to skip commercials. The High Court found in IceTV’s favor that there was no copyright infringement (although not going as far as literally saying that Channel 9 did not hold copyright in its programming information as the court was not specifically asked to address that question).

This case is likely to have wide-ranging implications for businesses that provide various forms of schedules and directories in Australia, particularly as Australia does not appear to have a tort equivalent to the INS “hot news” tort (to the extent that it survives in the United States). In this vein, I suppose it might have been nice if the High Court had taken up the Australian Digital Alliance’s request in its amicus brief to reconsider Telstra v Desktop. But at the end of the day, it seems like the UK is now out there on its on with regard to the copyrightability of unoriginal databases.

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6 Responses

  1. Jack S. says:

    I’m not so sure that Britain is out on their own. This is a European wide law based on a Directive 96/9/EC and implemented in various texts at the local level (note that the 1988 act was modified as the result of a transposition of the directive).

    While it is a sui generis law and not copyright per se, it does accord similar protection which may seem like that of copyright. While I don’t have an opinion what is the best way to handle this legal issue, the database protection is mainly to avoid parasitic and/or anti-competitive behavior.

    That said, at least under French law (which I’m most familiar with and not the British variant), the sui generis version of the database protection is wholly based on the “sweat of the brow” test both quantitatively and qualitatively. If the “sweat” element is shown (money, time, etc.), then infringement of the database specific laws can only be proven by showing that a substantial portion of the database has been taken illicitly (read : mass, quantitatively or qualitatively, downloading of some kind of structured data).

    Copyright law on the other hand, or more appropriately called droit d’auteur still maintains its originality, etc. elements which are applied under a completely separate test. Data appropriation (or misappropriation) is rarely actionable under the droit d’auteur provisions for obvious reasons. The database structure itself generally is, but not very useful in the case of mass misappropriation of data.

  2. Jacqueline Lipton says:

    Thanks, Jack, for your comment. I suppose I should have been clearer in my post that I was purposely not commenting about the Database Directive (about which I’ve written fairly extensively in the past). But of course, Australia will now be at odds with much of the rest of the world because Australia does not have a sui generis database protection law unlike the E.U. countries and it apparently does not have a robust misappropriation (INS type) law either. But of course all E.U. countries can take advantage of the Database Directive provisions as you right point out, regardless of the copyrightability of databases in their particular state laws. I’m intrigued about how much this is actually happening in practice since the 2005 report of the EU Parliament that suggested the Directive may not be all that effective/necessary in practice. Do you have any thoughts?

  3. Jack S. says:

    Unfortunately I do not have my IP Code book in front of me, nor access to the research databases, so I’ll have to go from memory and gut feel.

    In France, there has been a modest amount of caselaw referencing the database provisions specifically. I think it’s useful to the practicing lawyer in that they do not have to seek protection via the sometimes murky unfair competition rules which in France only comes via tort claims under civil code articles 1382 and 1383 (and mountains of caselaw). This is perhaps why a large number of publishers in the 2005 study wanted to maintain the sui generis protection as is. It gives them relatively straightforward means.

    If someone is appropriating data from your database en mass it is relatively easy to legally stop the practice either via the courts or through amicable means such as a friendly cease and desist letter to the offending party, specifically citing the sections of the IP code. In practice I have found this to be quite useful as settlement comes quickly. Under tort law, the adverse party might be more willing to take his chances and fight it out.

    Of course other issues come up between the type of “infringer”. Is there a contractual relationship and the consumer has gone outside the bounds of the use license? This could simply be a breach of K case. Is it an anynomous entity who is taking bulk downloads of data which is publicly acessible where the the database laws are more appropriate?

    Would unfair competition law be more appropriate? Probably since equating notions of copyright or droit d’auteur to otherwise unoriginal databases in my opinion is not logical. The database provisions resemble more a codification of unfair competition as it’s really misappropriation of “manufactured” commercial goods, not of an authors work.

    On the positive side, the directive and implementations also maintain protections for education uses, derivative works, etc. This part of IP doctrine actually lends itself well to unoriginal database compilations.

    A particular anecdote which comes to mind is a real estate research site called which allows agents to post advertisements and another site called which uses data from seloger to track each property with respect to how long has been on the market and any price evolution. Extremely useful to potential home buyers or renters. It did get me thinking however as to petitcailloux’s rights in using the data for such a purpose. They clearly have not asked for permission given the opague nature of the site and who its owners are. And petitcailloux most definitely takes a substantial portion of the database in terms of shear numbers.

    Maybe seloger doesn’t care, or their counsel has said they don’t have a case (if it actually bothers them).

    a more twisted version could make for a good EU IP law exam (or a comparative law analysis for is there an action? under which law(s) and what are the defenses..blah blah).

  4. Jacqueline Lipton says:

    Thanks for that – extremely interesting. I wasn’t familiar with the French position in particular.

  5. Help says:


    would anyone be kind enough and help me figure out how to compare and evaluate the protection of databases under the Australian Copyright Act, under United States copyright law, and under the Community Database Directive?

    Thank you,