The findings of the High Court in IceTV v Nine Network Australia: A New Age of Copyright in Australia?

Catherine Bond is a PhD Candidate at the Faculty of Law, University of New South Wales, Australia.

IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14

In mid-2008, when the High Court of Australia granted special leave to appeal in the copyright case IceTV Pty Ltd v Nine Network Australia Pty Ltd, Australian copyright scholars were surprised. When, on 22 April 2009 the High Court returned a 6-0 verdict finding in favour of IceTV and that no copyright infringement had occurred, Australian copyright academics and practitioners were even more surprised as this was not the verdict that many had been expecting.

The facts of the case and decisions of the earlier courts were canvassed in an earlier post on the High Court hearing (see ‘The IceTV Hearing Cometh’ here). The High Court restored the findings of the primary judge, Bennett J and reversed the findings of the Full Federal Court. Two judgments were delivered: the first written by French CJ, Crennan and Kiefel JJ and the second by Gummow, Hayne and Heydon JJ.  Although each judgment ultimately reached the same conclusion, there were subtle differences between the two that may have broader implications for Australian copyright law. As it will become apparent, the joint judgments dealt with a variety of complex issues, and so only the bare bones of the analysis can be given here.

The judgment of French CJ, Crennan and Kiefel JJ

French CJ, Crennan and Kiefel JJ first approached the issue from the concepts of ‘authorship’ and the idea/expression dichotomy. The judgment noted that, while both judges and academics fail to agree on the underpinnings of the idea/expression dichotomy, all agree that it is a significant part of copyright law. The judgment then applied this dichotomy to a discussion on what constituted a substantial part of a copyright work, more broadly and subsequently in the case at hand. It found that the concept of originality in copyright law – not whether a work had originated with an author, but rather the possible ways that the material in question could be expressed – had an important role to play in a determination of what constituted a substantial part for the purposes of infringement.

After this consideration, French CJ, Crennan and Kiefel JJ found, in the present case, that (at [43]):

[T]he expression of the time and title information, in respect of each programme, is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited. Expressing a title of a programme to be broadcast merely requires knowledge of the title, generally bestowed by the producer of the programme rather than by a broadcaster of it….The authors of the Weekly Schedule…had little, if any, choice in the particular form of expression adopted, as that expression was essentially dictated by the nature of the information. That expression lacks the requisite originality (in the sense explained) for the part to constitute a substantial part. (citations omitted)

Subsequently, French CJ, Crennan and Kiefel JJ considered the concept of ‘skill and labour’ in the context of a determination of copyright infringement. The judgment found that ‘considerable skill and labour’ was ‘involved in programming decisions’ (at [53]). However, this skill and labour was not relevant to the production of the Weekly Schedules and subsequently any determination of copyright infringement (at [54]):

[T]he critical question is whether skill and labour was directed to the particular form of expression of the time and title information, including its chronological arrangement. The skill and labour devoted by Nine’s employees to programming decisions was not directed to the originality of the particular form of expression of the time and title information. The level of skill and labour required to express the time and title information was minimal. (citations omitted)

The judgment of Gummow, Hayne and Heydon JJ

Gummow, Hayne and Heydon JJ began by recounting the development of the law of compilations under Australian copyright law, before commenting briefly on the rise of digital technologies and developments in devices that give greater power to the consumer when watching their chosen television programs. Such devices allow consumers to ‘skip’ advertisements broadcast during television show commercial breaks; yet it these advertisements that produce ‘the majority of the revenue of the Nine Network’ (at [85]). The focus on these details was one of the major differences between the joint judgments, with the judgment of Gummow, Hayne and Heydon JJ providing a greater analysis of the technological and commercial implications of the case at hand.

Subsequently the judgment recapped how the Nine Network developed its Weekly Schedule, identifying a seven-step process that included decisions by Nine program executives; the entry of material into an Excel spreadsheet at various points in the process; and then finally any last-minute amendments to the schedule once it had already been released to the public.

In a similar vein to French CJ, Crennan and Kiefel JJ, the second joint judgment also emphasised caution with respect to the ‘skill and labour’ test. It was noted (at [131]) that:

[It is important] to emphasise the dangers when applying the Act of adopting the rhetoric of “appropriation” of “skill and labour”. A finding that one party has “appropriated” skill and labour, of itself, is not determinative of the issue of infringement of a copyright work. The Act does not provide for any general doctrine of “misappropriation” and does not afford protection to skill and labour alone. (citations omitted)

When considered against what constituted a ‘substantial part’ for the purposes of the present case, the joint judgment was critical of the fact that the Nine Network had changed its opinion on the copyright work in question. It ultimately found (at [152]) that:

the Court should accept the submission by Ice that the originality of the compilation being the Weekly Schedule lay not in the provision of the time and title information, but in the schedule and presentation of that information together with additional programme information and synopses, to produce a composite whole.

Consequently the joint judgment stated its approval of the findings of Bennett J (at [167]):

The primary judge approached the issue of substantiality correctly when she stressed the detailed and lengthy preparatory work involved in what are identified in these reasons as steps one through four was directed to the conduct of the business of the Nine Network in broadcasting programmes which would attract viewers.

On this basis, the joint judgment found that IceTV had not reproduced a substantial part of the Weekly Schedule.

Broader implications of IceTV v Nine Network

I noted earlier that the result in IceTV v Nine Network surprised many of Australia’s copyright lawyers and academics. Although it may be too early to propose a copyright revolution is underway, the findings of the High Court have broader implications that may lead the way to a more ‘user-friendly’ copyright law.

First, the judgments reinstated the importance of the idea/expression dichotomy in Australian copyright law. Although this is, in many a fundamental aspect of copyright (and, as the Gummow J joint judgment noted, enshrined in the US Copyright Act), in recent years it was argued that decisions such as Desktop Marketing Systems v Telstra Corporation [2002] FCAFC 112, were responsible for a ‘whittling away’ of this doctrine under Australian law. The repeat emphasis of this doctrine in the judgments highlights that it is still to be seen as a significant part of Australian copyright.

Second, although the case focused on infringement rather than the subsistence of copyright, comments in both judgments suggest that the High Court may take a far more discerning approach to the subsistence of copyright, particularly in compilations, in the future. At the end of the Gummow, Hayne and Heydon JJ judgment it was noted that (at [188]) ‘[i]t may be that the reasoning in Desktop Marketing [where a low level of originality for the purposes of subsistence of copyright was found] with respect to compilations is out of line with the understanding of copyright law over many years.’ Such comments suggest that, should the High Court be faced with a challenge to the subistence of copyright in a compilation, it is willing to fundamentally re-examine this area of law.

Hopefully the High Court will get a greater chance to evaluate these issues over the next few years.