Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd

Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd
Court	Federal Court of Australia
Decided	25 May 2001
Citation(s)	[2001] FCA 612
Court membership
Judge(s) sitting	Finkelstein J

Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd
Court	Full Court of the Federal Court
Decided	15 May 2002
Citation(s)	[2002] FCAFC 112
Court membership
Judge(s) sitting	Black CJ, Lindgren & Sackville JJ

Telstra Corporation Limited v Desktop Marketing Systems Pty Ltd is a 2001 decision of the Federal Court of Australia related to the originality required to attract copyright protection.^[1] Heard before Justice Finkelstein in June 2000, the case concerned the release of a product called "Phonedisc" created by the Respondents, Desktop Marketing Systems.

Decision

In his decision handed down on 25 May 2001, Justice Finkelstein found that the contents of that product, which allowed the user to perform reverse telephone searches by service number, was almost identical in content to the publicly listed directories, even if some of the content was listed in a different fashion. The court found that Telstra, the Australian owner/publisher of the White Pages and Yellow Pages telephone directories, had copyright in the content of those directories. Consequently, the use of the data by the Respondents constituted copyright infringement, and the product was removed from sale. Furthermore, as a result of this decision, a similar web-based directory called "Blackpages", published by 2600 Australia, also terminated its service.

Appeal to the Full Court

The Full Court of the Federal Court rejected an appeal by Desktop Marketing Systems, followed the UK approach in Walter v Lane,^[2] with emphasis on the effort and expense incurred by Telstra in collecting the data.^[3]

Subsequent consideration

On 8 February 2010, the decision was overturned in a ruling by Justice Gordon by Telstra v Phone Directories,^[4] following the decision of the High Court in IceTV v Nine Network.^[5] The ruling stated that copyright was not applicable to these works as Telstra conceded that there was no identifiable author contributing to the publication, even considering third parties, and hence did not represent a sufficient literary effort to warrant protection. Further considerations were raised regarding the level of collaboration required between staff members to warrant the concept of joint authorship, as well as the level of intellectual effort required to arrange and organise the listings. Subsequently, none of the works were established as "original works", noting that there should exist a correlative relationship between originality and authorship.

References