''Telstra Corporation Limited v Desktop Marketing Systems Pty Ltd'' is a 2001 decision of the

Federal Court of Australia The Federal Court of Australia is an Australian superior court of record which has jurisdiction to deal with most civil disputes governed by federal law (with the exception of family law matters), along with some summary (less serious) and indic ...

related to the originality required to attract

copyright A copyright is a type of intellectual property that gives its owner the exclusive right to copy, distribute, adapt, display, and perform a creative work, usually for a limited time. The creative work may be in a literary, artistic, educatio ...

protection. 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 A service number is an identification code used to identify a person within a large group. Service numbers are most often associated with the military; however, they may be used in civilian organizations as well. National identification numbers may ...

, 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 Telstra Group Limited is an Australian telecommunications company that builds and operates telecommunications networks and markets voice, mobile, internet access, pay television and other products and services. It is a member of the S&P/ASX 2 ...

, the Australian owner/publisher of the

White Pages A telephone directory, commonly called a telephone book, telephone address book, phonebook, or the white and yellow pages, is a listing of telephone subscribers in a geographical area or subscribers to services provided by the organization that ...

and

Yellow Pages The yellow pages are telephone directories of businesses, organized by category rather than alphabetically by business name, in which advertising is sold. The directories were originally printed on yellow paper, as opposed to Telephone direct ...

telephone directories, had copyright in the content of those directories. This gave Telstra, the predominant carrier within Australia and the maintainer of the publicly accessible

(residential) and

(commercial) directories,

over the content of these directories. Consequently, the use of the data by the Respondents constituted

copyright infringement Copyright infringement (at times referred to as piracy) is the use of works protected by copyright without permission for a usage where such permission is required, thereby infringing certain exclusive rights granted to the copyright holder, ...

, 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 ''Walter v Lane'' 900AC 539, was a judgement of the House of Lords on the question of Authorship under the Copyright Act 1842. It has come to be recognised as a seminal case on the notion of originality in copyright law and has been upheld as an ...

'', with emphasis on the effort and expense incurred by Telstra in collecting the data.

Subsequent consideration

In February 2010 a Federal Court of Australia case '' Telstra Corporation Ltd v Phone Directories Company Pty Ltd'' determined that Telstra does not hold copyright in the White Pages or the Yellow Pages. On 8 February 2010, the decision was overturned in a ruling by Justice Gordon by Telstra v Phone Directories, following the decision of the High Court in

IceTV v Nine Network IceTV is an Australian company providing an independently curated Electronic Program Guide (EPG) for digital free-to-air television. It also produces Smart Recording Software. IceTV offers a TiVo-like service that provides series recording, key ...

. 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

Federal Court of Australia cases Australian intellectual property law 2001 in Australian law 2001 in case law Telstra {{case-law-stub