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Telstra v. Phone Directories, F.C.a. 44 (2010)
Telstra v. Phone Directories, F.C.a. 44 (2010)
February 2010)
Last Updated: 10 February 2010
FEDERAL COURT OF AUSTRALIA
Telstra Corporation Limited v Phone Directories Company Pty Ltd
[2010] FCA 44
Citation:
Parties:
File number:
Judge:
GORDON J
Date of judgment:
8 February 2010
Catchwords:
Legislation:
Cases cited:
9 November 2009
Place:
Melbourne
Division:
GENERAL DIVISION
Category:
Catchwords
Number of paragraphs:
347
AND:
DANIEL STOTEN
Fifth Respondent
LOCAL DIRECTORIES PTY LTD (ACN 130 550 971)
Sixth Respondent
JUDGE:
DATE OF ORDER:
WHERE MADE:
GORDON J
8 FEBRUARY 2010
MELBOURNE
[11] [28]
[29] [30]
[31] [45]
[46]
[47] [54]
[55] [59]
[60] [87]
[61] [71]
[62] [66]
[67] [71]
[72] [81]
[82] [86]
[87]
C. The Rules
2 Introduction
[88] [166]
[88] [89]
[90] [92]
[93] [118]
[95] [105]
[106] [112]
[113] [118]
[119] [122]
[123] [128]
[129] [148]
[149] [161]
[162] [166]
[167] [173]
[168] [169]
[170] [173]
[174] [268]
[175] [211]
[175] [179]
[180] [192]
[193] [205]
[206] [210]
[211]
[212] [243]
[213] [227]
[228] [237]
[238] [242]
[243]
[244] [268]
[244] [251]
[252] [259]
[260] [262]
[263] [268]
[269] [325]
[269] [299]
[269] [273]
[274] [283]
[284] [292]
[293] [295]
[300] [305]
VI
ANALYSIS
A. Identity of the Work
B. Authorship
C. First Publication of the Work
D. Originality
VII
THE PRE-GENESIS DIRECTORIES
VIII
ORDERS
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
BETWEEN:
AND:
[296] [299]
[300] [306]
[306]
[307] [325]
[307] [310]
[311] [317]
[318] [320]
[321] [325]
[326] [329]
[330] [344]
[331] [332]
[333] [338]
[339]
[340] [344]
[345] [346]
[347]
VID 276 of 2007
Fourth Respondent
DANIEL STOTEN
Fifth Respondent
LOCAL DIRECTORIES PTY LTD (ACN 130 550 971)
Sixth Respondent
JUDGE:
DATE:
PLACE:
GORDON J
8 FEBRUARY 2010
MELBOURNE
1 Thirdly, that balance is struck by statutory language that (a) is not precise (IceTV
[2009] HCA 14 ; 254 ALR 386 at [68]- [69]) and (b) has permitted (if not
encouraged) resort to metaphors and rhetoric (IceTV [2009] HCA 14 ; 254 ALR 386
at [31] and [69]-[70]). Metaphor and rhetoric do not provide a proper starting
point. They are no more than attempts at descriptions of result. Such approaches find
no support in the Copyright Act .
B. CENTRAL CONCEPTS IN THE COPYRIGHT ACT
1 Next, a number of central concepts in the Copyright Act , and how they
interrelate, need to be examined.
1 Those concepts are literary work, original and author. Part III of the
Copyright Act (ss 31 to 83 ) deals with Copyright in Original Literary,
Dramatic, Musical and Artistic Works. Division 1 of Pt III is concerned with the
nature, duration and ownership of copyright in these works.
1 Section 32(1) provides that, subject to the Copyright Act :
copyright subsists in an original literary ... work that is unpublished and of which the
author:
(a) was a qualified person at the time when work was made; ...
(Emphasis added).
A qualified person means an Australian citizen or a person resident in Australia: s
32(4).
1 Section 32(2) provides that, subject to the Copyright Act :
[w]here an original literary ... work has been published:
(a) copyright subsists in the work; or
...
if, but only if:
(c) the first publication of the work took place in Australia;
(d) the author of the work was a qualified person at the time when the work was first
published; or ...
(Emphasis added).
1 A reference to an author of a work, in relation to a work of joint authorship, is a
reference to all authors of the work: s 78. The references in s 32 of the Copyright
Act to the author of the work in relation to a work of joint authorship are to be
read as references to any one or more of the authors of the work: s 79. Copyright
subsists in a work until the end of 70 years after the end of the calendar year in which
the author of the work died: s 33(2).
1 Literary work is defined in s 10(1) to include:
authors contribute to a work is a matter of fact, and attempting to craft legal rules
applicable to that factual inquiry is something to be approached with caution: see
Macmillan and Co Ltd v Cooper (1923) 1B IPR 204 at 212-3 per Lord Atkinson;
Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339 at [38] per
Finkelstein J.
1 The central question is whether the alleged contribution involved independent
intellectual effort and / or sufficient effort of a literary nature (see [20(3)] and [20(6)])
and whether the skill and labour required for the creation of the work was directed to
the originality of the particular form of expression (see [20(8) and (9)]). Again, this is
a factual matter to be determined on the circumstances of the particular case: see
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 289-290
per Lord Devlin; Milwell Pty Ltd v Olympic Amusements Pty Ltd [1999] FCA 63 ;
(1999) 85 FCR 436 at [21]- [24]; see also Data Access Corporation v Powerflex
Service Pty Ltd [1999] HCA 49 ; (1999) 202 CLR 1 at [123] per Gleeson CJ,
McHugh, Gummow and Hayne JJ.
1 Finally, particular challenges are created by the use of information technology,
and particularly databases, in the creation of compilations which may or may not be
protected as literary works. As noted above at [20(10)], the identification of the work
in question is pivotal. At [151]-[152] of IceTV [2009] HCA 14 ; 254 ALR 386 ,
Gummow, Hayne and Heydon JJ discussed, without conclusively determining, some
of the considerations involved where the work in question is an electronic database,
based on the observations of Professor Davison in his work The Legal Protection of
Databases (2003). What guidance was offered can be summarised as follows:
3 Creating and updating an electronic database requires decisions to be
made regarding the construction of the database, as human thought contributes
to the scheme for the database and the conception of how the material would
look to the external user; and
2 A claim of authorship over a database is based upon the consideration of
the possible outcomes of input into the database. The choice of software used
in the database determines the operation of the database and the data included.
In other words, a claim of authorship in a database may arise where a person (an author)
determines how a database will function and be expressed. The independent intellectual
effort expended in making those determinations might go to the originality of the
particular form of expression of the work (namely, the database).
1 Therefore, completion of the following steps will assist in determining whether
copyright subsists in a given work:
4 Identify the work in suit: see [20(10)] and [27] above.
3 Identify the author or authors of the work: see [20(1)-(6)], [21] and [25]
above. (In certain circumstances a work can be the subject of a presumption of
authorship: s 127 of the Copyright Act ).
2 Determine when the first publication of the work occurred: see [20(10)]
above and s 32(2)(c) of the Copyright Act .
2 Identify how the work is original: see [20(6)-(9)], [21]-[24] and [26]
above.
C. INTERNATIONAL RESPONSE TO COPYRIGHT PROTECTION OF
RELATIONAL DATABASES
1 The Works in issue are the product of what is known as a relational database.
Internationally, courts and legislatures have recognised that these kinds of works are
not often capable of copyright protection consistently with the principles earlier
identified. As a result, other jurisdictions have developed specific legal protections to
deal with them. In IceTV [2009] HCA 14 ; 254 ALR 386 at[135]- [138],
Gummow, Hayne and Heydon JJ described the specific legal protections adopted by
the European Union as follows:
[135] In 1996 the Directive of the European Parliament and of the Council on the Legal
Protection of Databases (the Directive) was adopted by the European Union (EU). It is
significant for the issues on the present appeal that the Australian legislation has no
counterpart.
[136] Of the genesis of the Directive, Professor Cornish has written:
At once excited and alarmed by the capacity of digitization to store massive files of
information and of the internet to deliver it in individually requested packages, the
publishing industry, and, by its side, music and films, secured a Database Directive from
the EU.
Whilst traditional copyright respecting compilations was carefully confined and fixed
upon the effort that went into the selection and arrangement in a compilation, the new
right was accorded directly to the investor in a database.
[137] The Directive defines database to mean a collection of independent works, data
or other materials arranged in a systematic or methodical way and individually accessible
by electronic or other means. Chapter III of the Directive relevantly provides for the
implementation of a sui generis right for the maker of a database who shows there
has been a substantial investment in either the obtaining, verification or presentation of
the contents of the database and for that right to extend to prevention of the extraction
and/or re-utilisation of the whole or of a substantial part of the database, subject to certain
exceptions and lawful uses.
[138] The Directive also provides in Ch II for Member States to afford protection to
databases which, by reason of the selection or arrangement of their contents, constitute
the authors own intellectual creation (emphasis added). However, the position of the
author in Ch II may be contrasted with that of the maker in Ch III. In explanation of
the latter, recital 39 states:
Whereas, in addition to aiming to protect the copyright in the original selection or
arrangement of the contents of a database, this Directive seeks to safeguard the position
of makers of databases against misappropriation of the results of the financial and
professional investment made in obtaining and collection [of] the contents by protecting
the whole or substantial parts of a database against certain acts by a user or competitor.
(Footnotes omitted).
relevant here.
Section 128 of the Copyright Act
[276] The applicants also rely upon section 128 of the Copyright Act which provides
that:
Where, in an action brought by virtue of this part in relation to a literary, dramatic,
musical or artistic work, (no name purporting to be that of the author ... appeared on
copies of the work as published) but it is established:
(a) that the work was first published in Australia and was so published during the period
70 years that ended immediately before the commencement of the calendar year in which
the action was bought; and
(b) that a name purporting to be that of the publisher appeared on copies of the work as
first published;
then, unless the contrary is established, copyright shall be presumed to subsist in the work
and the person whose name so appeared shall be presumed to have been the owner of that
copyright at the time of the publication.
[277] The presumption operates in the present case [For example, see Waterlow
Publishers Ltd v Rose (1989) 17 IPR 493 , 503: ... a compilation perhaps represents the
most obvious case in which commonly, no name of an author appears on copies of a
published literary work. It seems to me possible that, in enacting s 20(4), the legislature
contemplated that, inter alia, specifically in the case of compilations, cases might arise
where there was no identifiable author, but copyright might none the less subsist in the
relevant literary work.]
The Works were first published in Australia in the relevant period and each of the Works
bore a notation (c) Telstra Corporation Limited on each page and a notation this
directory is produced by Sensis Pty Ltd for Telstra Corporation Limited in the terms and
conditions of use found in each directory and the statement that this publication is
copyright.... No name purporting to be that of an author appeared on the Works as
published.
[278] In Microsoft Corporation v DHD Distribution Pty Ltd (1999) 45 IPR 459 Lehane
J considered the provision and adopted the definition published found in the Macquarie
Dictionary, which reads:
... to issue or cause to be issued in copies made by printing or other processes for sale or
distribution to the public as a book, periodical, map, piece of music engraving or the
like.
[279] Conti J adopted the same meaning in Microsoft Corporation & Ors v PC Club
Australia Pty Ltd & Ors [2005] FCA 1522 ; (2005) 67 IPR 262.
[280] The applicants contend that the abovementioned notations identify the first
applicant as the person who caused to be issued copies of the directories. It follows that
the respondents bear the onus of disproving subsistence and ownership of copyright in
the present case. Given that the presumption arises where the author is not identified in a
work as published, the Respondent cannot disprove subsistence by pointing to the lack of
identification of all authors.
(Footnotes in brackets).
1 In my view, the Applicants reliance upon ss 128 and 129 is misplaced. Each
section reinforces the importance of identifying the author or authors of the work in
suit. In understanding the operation of the presumptions it is important to note the
distinction between identifying an author or authors of the original work and the
identity of the author or authors of the original work. Lest it be overstated, the
Copyright Act fixes on the author or authors: see [20(2)] above. If an author or
authors (within the meaning of the Copyright Act ) cannot be identified at all, in
contradistinction to a situation where the authors or authors exact identity cannot be
identified, copyright cannot subsist. On a reading of ss 128 and 129 , it is the latter
situation to which the Copyright Act is directed. If the Applicants submissions were
accepted, these sections would be wholly or substantially otiose. Accordingly, the
presumptions do not apply in this case and are irrelevant.
1 However, whether or not the presumptions apply, there are other reasons to reject
the Applicants reliance upon them. Firstly, the Applicants construction of ss 128
and 129 does not reflect the balance struck by the Copyright Act between
monopoly (on the one hand) and promotion (and protection) of originality in new
works (on the other hand) (see [9] above).
1 Secondly, the passage cited from Laddie, Prescott and Vitoria, The Modern Law
of Copyright and Designs (3rd ed, 2000) 118 (Laddie) does not support the
Applicants contentions. At its highest, Laddie suggests it may be necessary in
particular instances to rely upon the statutory presumptions. In the present case, the
presumptions have little or no role to play where the question of subsistence of
copyright in each of the Works is the issue between the parties and has been the
subject of extensive evidence (91 affidavits from the Applicants and two affidavits
from the Respondents).
1 Thirdly, the presumption provided for by s 128 of the Copyright Act does not
advance the Applicants submissions. All but one of the Works was tendered in
evidence (that one work being the 2004 / 2005 YPD for the Mackay and Whitsundays
district). Each of the Works tendered in evidence bore a notation Telstra
Corporation Limited or Telstra on almost every page containing listing
information, a notation this directory is produced by Sensis Pty Ltd [or, as
appropriate, Pacific Access Pty Ltd] for Telstra Corporation Limited in the terms
and conditions of use found in each directory and the statement that [t]his
publication is copyright ... (noting that across the co-bound volumes in evidence,
there was some variation in the wording depending upon whether the terms and
conditions were referring to the YPD and WPD together or separately). No name
purporting to be that of an author appeared on the Works as published and the
evidence disclosed that each of the Works was first published in Australia in the
relevant period.
1 Moreover, the Applicants seem to ignore a number of important facts and matters.
It was they who filed the evidence on the question of subsistence. That was their
choice. They are bound by their decision: Metwally v University of Wollongong
(1985) 60 ALR 68 at 71; Liftronic Pty Ltd v Unver (2001) 179 ALR 321 at [44]
per McHugh J. In my view, that evidence rebuts the presumption that copyright exists
in the Works for the reasons identified earlier: see [11] to [28]. That the Applicants
chose to go into evidence and not rely on the presumption is not surprising the
alternative was for the Respondents to have sought to rebut the presumption which
necessarily would have entailed complex case management orders requiring the
Applicants to disclose the materials to enable the Respondents to seek to rebut the
presumption. Put simply, the Applicants submission falls between two stools it
seeks to rely upon evidence to establish the subsistence of copyright to a point and
then when it gets too difficult (legally or factually) they resort to the presumptions.
1 Finally, s 129 deals with two specific situations where the author has died and
where the author is anonymous or pseudonymous. Neither situation is present here.
Put another way, the pre-conditions to the operation of the section have not been
satisfied by the Applicants. Further, s 129 itself only gives rise to a presumption of
originality and the location of first publication, not to the identity of the author or
authors, or of subsistence of copyright in the work: cf s 128 of the Copyright Act .
For that reason the provision has no relevance and may be put to one side.
1 The cases referred to by the Applicants in relation to the statutory presumptions
add little. Waterlow Publishers v Rose (1989) 17 IPR 493 involved a dispute about
who the relevant author of a particular section of a compilation was where there
existed two alternatives. Slade LJ (at 503) found that the author could be identified as
Waterlow Publishers, either as an independent author or co-author, or alternatively a
statutory presumption in similar terms to s 128 applied. The presumption was not
decisive in the dispute and it was not argued in that case that an author could not be
identified at all. In Microsoft Corporation v DHD Distribution Pty Ltd (t/as Austin
Computers) (1999) 45 IPR 459 at [1], the applicants only offered evidence to prove
the preconditions in s 128 of the Copyright Act . Further, the respondents did not
offer any evidence or submissions in opposition to the applicants reliance on the
presumption. In Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522
; (2005) 148 FCR 310 , the applicants did not lead evidence of authorship or
originality, but (as in Microsoft Corporation v DHD Distribution Pty Ltd (t/as Austin
Computers)(1999) 45 IPR 459) only offered evidence to prove the preconditions in s
128 (see at [61]). Further, the respondents argued in order to attempt to rebut the
presumption that the only person with the right to create the computer program the
subject of the copyright dispute was a related company of the applicants based in the
USA (see at [7] and [38]). Accordingly, none of the cases referred to dealt with a
situation where the very fact of authorship, as a central concept necessary to establish
according to the Copyright Act , is in dispute. In any event, each case must be read
in light of IceTV[2009] HCA 14 ; 254 ALR 386 and the principles referred to at
[20] above.
1 Whether the Applicants could claim ownership in the intellectual property of the
Works was an issue that arose throughout the course of the hearing. Copyright in a
literary work made by an employee is ordinarily owned by the employer: s 35(6) of
the Copyright Act . The Applicants had three responses. First, they submitted that
any question of ownership was not relevant to the question of subsistence. Secondly,
the Applicants submitted the question itself was at the margins as the evidence
established that where there was any gap in ownership (such as where contractors
who were not employees of Sensis were engaged to work on the production of the
Works), that gap was of a relatively minor consequence. Finally, the Applicants
submitted that if a person or entity other than one of the Applicants had contributed to
one or more of the Works, then that person was simply a co-owner (regardless of
whether that person or entity was capable of being identified) and, as a co-owner, the
Applicants were entitled to move to protect the copyright without the consent of the
other co-owner.
1 These submissions should be rejected. It would be absurd to assume that I am
bound only to determine whether copyright subsists in the Works whilst ignoring any
question of ownership. Copyright is a form of property created by statute for the
benefit of the author or authors who, in the absence of some other arrangement, is the
owner or are the owners of the work. Whether or not the Applicants are owners of the
copyright (if any) in the Works is a matter to be determined by the evidence. The
Applicants evidence on this issue comprised in excess of 91 affidavits. Simply
accepting the Applicants assertion that their evidence demonstrates ownership of
intellectual property and that the issue is at the margins is unhelpful. As I have said
earlier, I am bound to determine the matter in accordance with the evidence
presented. It is not a matter that can be ignored or be the subject of presumptions.
IV THE APPLICATION OF DESKTOP MARKETING
1 Before turning to the facts, mention must be made of the decision of the Full
Court of the Federal Court in Desktop Marketing Systems Pty Ltd v Telstra
Corporation Ltd [2002] FCAFC 112 ; (2002) 119 FCR 491 (Desktop Marketing).
In that decision, copyright was found to subsist in certain editions of WPDs and
YPDs. The Applicants submitted that the resolution of the present case remains
governed by the outcome in Desktop Marketing [2002] FCAFC 112 ; 119 FCR 491
and that the High Courts comments on copyright subsistence in IceTV [2009] HCA
14 ; 254 ALR 386 should be regarded as obiter dicta. I reject that contention.
Firstly, IceTV [2009] HCA 14 ; 254 ALR 386 is binding authority on the proper
interpretation of the Copyright Act . The reasoning of both plurality judgments
establishes principles of law beyond copyright infringement. Secondly, the High
Court directly warned of the need to treat Desktop Marketing [2002] FCAFC 112 ;
119 FCR 491 with particular care: see IceTV [2009] HCA 14 ; 254 ALR 386 at
[52], [134], [157] and [188]. Thirdly, Desktop Marketing [2002] FCAFC 112 ; 119
FCR 491 did not deal directly with the issue of authorship. Rather, all issues in
respect of copyright had been conceded other than that of originality. In fact,
Finkelstein J (at first instance) questioned the assumptions the parties had made about
authorship: Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001]
FCA 612 ; (2001) 51 IPR 257 at [4]. Finally, the facts of this case are
significantly different. The WPDs and YPDs in question are different. Moreover, the
Genesis Computer System which stored the relational database and which was used in
the production of some of the WPDs and YPDs in issue in these proceedings (after
September 2001 in the case of YPDs and late 2003 in the case of WPDs) was not in
use in Desktop Marketing [2002] FCAFC 112 ; 119 FCR 491. (The Genesis
Computer System is considered in detail at [60]ff below).
V FACTS
1 The application of the principles identified earlier takes place within a factual
matrix that does not lend itself to easy answers. It is that factual matrix to which I
now turn.
1 Telstra is a telecommunications carrier which connects subscribers to its fixed line
and mobile telephony networks for a fee. Like other carriers such as Optus, Vodafone
and AAPT, Telstra collects and maintains subscriber information. Sensis, Telstras
wholly owned subsidiary, operates a business of publishing telephone directories (the
directories business). The directories business is the core of Sensis business.
1 Each year Sensis publishes WPDs (residential and business) and YPDs
(classified) across Australia. In 2007, Sensis published 55 WPDs and 86 YPDs
covering the whole of Australia. The directories were published in metropolitan,
regional and local areas. Of the regional directories, 46 were co-bound: see [3] above.
Directories for 11 of those defined geographical areas are at issue in these
proceedings, and date back to 2000: see Annexures A and B. Sensis produces a
directory for each region every year, identifiable by a particular issue number.
Sensis aims to deliver a WPD and YPD to every Australian home and business.
1 Each WPD and YPD lists the names, addresses, telephone numbers and other
information in relation to residential and / or business customers for a particular
geographic area. Telstras WPDs contain residential and business listings. Revenue is
derived by persuading customers (primarily business customers) to upgrade their free
entry (FE) with more complex information or other enhancements for a fee.
1 In the case of the YPDs, revenue is derived by persuading business customers to
upgrade their FE with more complex information or other enhancements for a fee.
Business customers in the YPDs can also advertise under multiple headings. Business
customers are entitled to one FE but must pay for any additional standard entries
under different headings.
1 In the 2006 financial year, the YPDs and WPDs generated more than 80 per cent
of Sensis profits. This translated to revenue of more than $1 billion from YPDs and
almost $300 million from WPDs. The vast majority of Sensis revenue derived from
the directories business comes from the YPDs.
1 The method by which information appears in a particular directory depends on
whether the entry:
5 is to appear in a WPD or a YPD;
4 is a new listing for a particular directory (new listing), or a listing which
has appeared in a previous issue of that directory (existing listing); or
hundreds each day. (There was a persistent lack of clarity as to the meaning
and weight of statistics throughout the evidence in this matter. For example,
various statistics were provided as to the number of amendments made to
listing data, but many of these amendments would not flow through to the
actual directories themselves (they may involve changes to paperwork).
This results in confusion as to the conclusions to be drawn from such figures).
A separate record is created for each directory in which the listing is to appear.
3 As the listing information is entered into the database, automatic checks
are conducted by the Genesis Computer System to ensure that the information
is complete, accurate, and in a form which complies with what are known as
collectively the Rules (see [88] below). The development of this and
associated computer systems and their significance is explained in more detail
in Part B below. The Rules and their significance is explained in more detail in
Part C below.
1 There are separate rules for the WPDs and YPDs. The Rules govern the
content and presentation of listings. If the listing includes a display
advertisement, the advertisement is created in a separate database and checked
for accuracy and compliance with the Rules. Again, as far as this is relevant to
the matters in dispute, it is the subject of further discussion in Part C below.
1 The WPDs and the YPDs are produced on a rolling schedule throughout
the year. The production of a new issue of a WPD or YPD begins when the
listing information which appeared in the previous issue of that directory is
carried over and converted into listing information for the next issue of the
directory. This process is known as rollover. The rollover process creates a
template, or the starting point, for the next issue of the directory. The
Respondents provided evidence that detailed, through a selection of examples,
that a significant proportion of listings in the WPD and the YPD are repeated
each year. It was the evidence of the Applicants witnesses that a significant
part of [the Sample Directories] would be constituted by data which is
repeated from the previous year.
1 The rollover process is automated. It involves running two computer
programs (known as batch applications) over the Genesis database which
causes the Genesis Computer System to create a new record relating to the
upcoming directory for every listing which appeared in the previous issue of
the directory. The new record contains the listing details which were used to
produce the customers previous listing together with updated information for
that customer such as new advertising rates (for paid listings) or an updated
heading (for a YPD listing).
1 Prior to publication of a particular directory, further checks are carried out
to identify any errors in the content or appearance of the listing which will
appear in the directory. These checks are conducted by the Genesis Computer
System using electronic searches and any corrections required are made
manually.
1 The publication of the directory involves the extraction of the listing
information stored in the Genesis Computer System database for that
reviewing the functional specifications prepared by Amdocs for its generic system,
identifying gaps in those specifications, and then requesting changes in order to fill
those gaps ... . However, Ms Dawes further stated that ... it appears that not all
changes requested by Sensis were identified [and] ... [a]ccordingly, I am not able to
identify with precision which aspects of the system were implemented at the request
of Sensis.
1 The same problems exist in relation to the Genesis database. Customer Data
and Customer Database were defined terms in the IT Agreements. The IT
Agreements provided, in essence, that any databases established (and the information
contained in those databases) by or on behalf of Telstra (again, through its agent
Pacific Access) were the intellectual property of Telstra. However, even then, the IT
Agreements further provided that the generic databases used by Amdocs remained
their intellectual property.
1 As is apparent, an undefined but not insignificant proportion of the Genesis
Computer System was not the intellectual property of the Applicants. The Genesis
Computer System was an amalgamation of original software and modifications with
the intellectual property divisible between Amdocs and Telstra, with the grant of
licences to Telstra (through its agent) governing the use of those aspects of the system
that were not their intellectual property. Further, determining who had the benefit of
the intellectual property of some aspects of the system is uncertain. Modifications
were made at the request of the Applicants but not all those modifications were
recorded. Which entity or entities can correctly be said to have the benefit of the
intellectual property of those unidentified modifications is a difficult, if not
impossible, task. Although I accept that significant modifications were made to the
Genesis Computer System at the request of one or more of the Applicants, the
evidence does not support the conclusion that the intellectual property in the whole or
any specific part of the Genesis Computer System belongs to one or more of the
Applicants.
3. SUPPORTING SYSTEMS
1 As noted earlier, there are other non-Genesis computer systems that are used in
the production of the Works. One system is the Straight Through Processing (STP)
function. STP was described as a function built into a computer system by Sensis
called Workflow Imaging and Integration ... designed to act as a bridge between the
computer system used by [YPD] Account Executives, known as Siebel, and the
computer system which holds customer listing information, Genesis. STPs function
is to check every contract that is submitted to identify whether it is potentially
eligible for STP (because it involves no change to the listing or other advertising for
the customer).
1 The Applicants submitted that Sensis personnel were directly responsible for the
design of computer programs which interact with the Genesis system to achieve
certain functions.... The evidence did not support that assertion. For example, Mr
Breitenbach, employed by Sensis as an Application Support Manager since 2007,
gave evidence that he managed Sensis relationships with various IT vendors,
including Aipex, that Aipex [had] developed for Sensis the computer application that
runs STP and [r]epresentatives of Sensis and Aipex worked together on
implementing STP until about October 2006, when the functionality was released in
its final form.
1 Beyond the general statement that Sensis and Aipex worked together, Sensis
role in designing the functionality is unclear. The evidence did not establish that
Sensis personnel were directly responsible for the design of [the] computer
program. However, even assuming in favour of the Applicants that Sensis
extensively directed the modifications required to implement STP, the evidence did
not disclose whether the resulting software was the subject of an intellectual property
regime established by agreement between Aipex and Sensis and if so, the terms of
that agreement.
1 Another software tool used in the production of the Works was the Book Close
reports developed by employees of Quantum IT (described as a small information
technology consultancy company) from June 2001. Although some reporting tools
already existed in the Genesis Computer System, they were the subject of
enhancement and new reports were developed (the Book Close reports are discussed
further at [248] and [309] below). Again, the description of the development of the
Book Close reports poses more questions than it answers. Although one of the
individuals responsible for the development of the software eventually became a
Sensis employee, the initial development of the program was conducted by Quantum
IT in response to the business requirements and directions of Sensis. Again, whether
the resulting software was the subject of an intellectual property regime established
by agreement between Quantum IT and Sensis and if so, the terms of that agreement
were not disclosed.
1 The Applicants, in purchasing and implementing the suite of computer systems
used in the production of the Works, often prescribed rigorous requirements and were
active in ensuring that the software produced met those requirements. On at least one
occasion (with regard to software referred to as the Error Maintenance System),
employees of the Applicants designed and implemented software without the
assistance of external parties. However, not every aspect of the supporting systems
were created in that manner.
4. CONCLUSIONS
1 The various computer systems (including the Genesis Computer System), were
the result of the work of various entities over a number of years. Although the
Applicants, as the ultimate purchaser of such systems, were often responsible for
prescribing and overseeing implementation of the requirements, only in a few cases
was the software designed and created by the Applicants employees. Although the
computer systems were not relied upon as an independent copyright work in this
proceeding, the Applicants did rely upon the intellectual effort of Sensis employees in
customising the programs. On the evidence before the Court, it is not possible to
determine who created and had the benefit of the whole or any part of the various
computer systems (including the Genesis Computer System) at any particular time.
C. THE RULES
1. INTRODUCTION
1 An essential part of the Applicants case was the development and implementation
of the Rules which were described by the Applicants as:
[R]ules and policies ... which govern the content and presentation of listings, the
objectives of which include accuracy, uniformity of content and presentation, conformity
with Federal and State laws and ethical standards of advertising, and provision of
consistent, equal and fair treatment to customers.
The Rules were in fact comprised of three parts the YPD Advertising Rules (the YPD
Advertising Rules), the WPD Entry Policy and Rules (the WPD Rules) and Sensis
Product Standards (theProduct Standards) (collectively, the Rules).
1 On the first morning of the hearing, Senior Counsel opened the Applicants case
by stating:
... [W]e would say of that set of rules [the WPD Rules] that its a complex set of rules that
governs the expression of the material compiled in the White Pages listings, including the
selection and arrangement of that material. The rules allow for material to be entered in
certain circumstances and prohibit entry in other circumstances. A judgment has to be
made by somebody in Sensis about whether those criteria have been satisfied.
There is an exercise therefore of judgment and discretion in selecting the material for
inclusion. There is also, we would say, an element of intellectual effort involved in
understanding and applying the rules. The understanding and application involves the
Sensis representative, who is trained for this purpose, being able to explain to the
customer what is available in the way of material for entry and the way in which it will
appear if entered and it involves the exercise of intellectual effort on the part of the
representative in ensuring that material, which has been entered, complies with the rules.
2. WHAT ARE THE RULES?
1 At their most basic level, the Rules are a set of prescriptive guidelines that
control, dictate, restrict and / or prohibit the content and presentation of listings in the
WPD and YPD. They regulate the font used. They regulate the proper abbreviations
of words. They regulate the colour schemes applied. They regulate the spacing
between words and individual entries. They regulate the acceptability or otherwise of
the use of particular words or phrases. It is unclear who created the Rules. But it is
clear that everyone is bound by them.
1 The Rules are directly or indirectly automated. They are directly automated in the
sense that the Rules are programmed into the Genesis Computer System (or
supporting systems) so that the information entered into those systems is in a form
which complies with the Rules. This commonly arises in three broad situations. First,
when Sensis workers enter information into the Genesis database, the Rules, as
applied by the Genesis Computer System and supporting systems, provide limited
choice to those workers regarding the content, format and features of the presentation
of that information. In the vast majority of cases, workers are unable to go outside the
bounds of those choices as the system through which they enter this information does
not allow them to. While the information may be manually entered, it could not be
said that this was not an automated function. Secondly, the Rules, as applied by the
Genesis Computer System (or supporting systems), check the information entered to
ensure it conforms with the Rules. Thirdly, the Rules, again as applied by the Genesis
Computer System (or supporting systems), designate and influence the format and
arrangement of the information entered as it finally appears in the WPD and YPD.
1 The Rules are also indirectly automated. There are, in certain circumstances,
instances of human intervention in the application of the Rules. For example, an
Artist may prepare and update graphic advertisements in the WPD and YPD and an
Editor is responsible for ensuring that those advertisements comply with the Rules
(see [143]-[144] below). The Paginator paginates and typesets the directories, often to
ensure the pages of the directories, which have been first created by the Genesis
Computer System, comply with the Rules (see [157]-[161] below). The overarching
process is designed to ensure that decisions that violate the Rules are as rare as
possible. In the vast majority of cases, any human intervention is directed to ensuring
the content and presentation of listings complies with the Rules.
3. THE PARTS OF THE RULES
1 As stated at [88] above, there are three parts of what generally are considered the
Rules:
2 the WPD Rules which control, dictate, restrict and / or prohibit the content
and presentation of entries in the WPD. For example, in relation to the
placement of names, the WPD Rules govern government and business listings,
what font listings can and should appear in, rules surrounding the listing of
mobile phones, 18 services, 13 services and others, and rules regulating the
use of Mc and Mac, Mt and Mount, and St and Saint, among
many other things;
6 the YPD Advertising Rules which are similar to the WPD Rules but they
also control, dictate, restrict and / or prohibit the content and presentation of
advertisements, for example the position priority of display advertisements;
and
2 the Product Standards which control, dictate, restrict and / or prohibit
certain sensitive material, particularly regarding advertisements, such as the
acceptability or otherwise of the use of certain words or phrases in, for
example, adult advertising, abortion / pregnancy termination / family planning
services and party plan selling.
1 It is appropriate to now detail the content and operation of each part of the Rules.
(a) The WPD Rules
1 I begin with a version of the WPD Rules from August 2007, which is as they
applied to the Sample Directories (noting that there was a revised edition in
November 2007). Listings in the WPD can be divided into FE and those that include
additional features that incur a charge (including subsequent appearances of a given
number). Each customer of a carrier will be listed in the WPD that covers a given
geographic area, except those with a silent number.
1 The WPD Rules govern two general areas the sort of information that can
appear in a given listing (and how it will appear), and the way that the information in
the listing will then be sorted. The most fitting place to begin describing these Rules
is the one that governs the sorting of the WPD the alphabetic arrangement of
listings. In short, listings in the WPD are sorted by customer name. This is called
throughout the WPD Rules the finding name. The finding name will be the name of
the residential customer or, in the case of government and business listings, the sole
font name (meaning a bold, capitalised font approximately twice as large as normal,
with a ruled line preceding and following the listing). The Superbold font name must
be in black, red, blue or green (being the selection of shades available). The logo must
be the registered or recognised logo, trademark or design of the business and the
customer must be either the owner or the authorised user of the logo, trademark or
design. The onus of proof rests with the customer. It must have a clear relationship
with the finding name. A slogan may be included anywhere within the logo, provided
it fits. A logo can be left justified, centered or right justified. The permissible space
for a logo is 1.6cm by 4.1cm. It is to be placed 2mm below the black Superbold
header, and 2mm above the Superbold name. There is limited room to manoeuvre
within this particular Rule. The elements available are described and the customer
chooses between them.
1 One example of the discretionary exercise of the WPD Rules that was referred
to several times throughout the evidence was that of Suppressed Address Entries (an
SA) for government and business listings. Business and government customers can
make use of an SA where there is a security risk to that business or department. The
WPD Rules then go on to provide the following examples:
o Jewellers (working from home), Private Investigators, Security Firms,
Computer suppliers working from home or businesses whose activities
indicate that valuable equipment, stock or dangerous goods are on the
premises,
o Where there is a security risk to the personnel of the business. e.g. Escort
Services,
o Where there is a risk to the neighbours of the business caused by
unsuccessful attempts to locate the premises. e.g. Escort Services
Social/Escort Agencies,
o To discourage inappropriate behaviour which could result from awareness
of particular activities or from the role the business plays in the community, or
to the aid with the protection of customers at certain establishments including
Refuges, Shelters, Pregnancy Termination Clinics, Support Agencies and
Groups
1 The discretion is not unfettered or at large. The Rule in question establishes
guiding principles and provides a number of practical examples.
(b) The YPD Advertising Rules
1 As one would expect, the YPD Advertising Rules are more extensive than the
WPD Rules. Although there are display advertisements in the WPD, the WPD is
predominately composed of listings arranged in alphabetical order, with occasional
display advertisements anchored to alphabetical listings. Reflecting its commercial
focus, the YPD has many display advertisements. The YPD Advertising Rules reflect
this fact.
1 A distinction exists between in-column listings and display advertisements.
In-column listings are contained within the column arrangement of the YPD. They
can be the subject of substantial customisation, though the YPD entitles every sole
trader, partnership, registered business, registered company and certain non-business
entities (for example, churches) to a first FE in the YPD with basic information.
Finding Names
- see also Entry Policy Addresses
Copy Matter
- see also Entry Policy Copy Matter
Addresses
- see also Entry Policy Addresses
Telephone Numbers
- see also Entry Policy Telephone Numbers
1 The YPD Advertising Rules then go on to detail the sizes of the display
advertisements available and the constraints on the purchase of such advertisements.
For example, a registered business name or company name may not have more than a
single advertisement in one of the larger sizes, per heading. However, where a smaller
advertisement is purchased, more than one can be placed under a single heading
where they promote different brand names, product names or services. Display
advertisements cannot look like a combination of other advertisements (for example,
a full page display advertisement should not look like two, half-page advertisements).
1 There are also opportunities to expand upon the in-column listings. These include
many of the options available to enhancements under the WPD Rules (use of bold,
use of colours, use of logos), but with expanded options. One of the expanded options
is a directional entry. Directional entries are in-column advertisements with defined
layouts, which include a directional strip. A directional strip is a specially-formatted
line providing geographic information about the business (for example, all areas,
remote areas or a given name of a suburb). The format of such an advertisement is
prescribed, including the types of font to be used and the number of characters in the
directional strip.
1 The YPD Advertising Rules also provide a number of specified steps when
dealing with particular commercial arrangements (for example, franchises, branches
and outlets, group advertising and shopping centres). Such steps are predictable, and
usually balance the interests of Sensis as a commercial enterprise and providing
directories without multiple, redundant listings and directories that are easily
navigable. Take businesses that operate in shopping centres:
Where a customer operates a business within a shopping centre, their details may be
included under the heading Shopping Centres. This will be charged as a separate Extra
Line of Information (ELI). The shopping centre details do not need to be repeated.
(c) The Product Standards
1 The Product Standards are instructions relating to the advertising of certain
businesses. The Product Standards apply to the YPD as well as to other Sensis
directory products such as YP Online, Citysearch and Sensis 1234 and Call Connect.
They are not applicable to the WPD. The Product Standards set out a guide to
acceptable and unacceptable wording for advertisements under various sensitive
headings, and contain specific rules directed to legal compliance (such as laws that
restrict advertising of prostitution services).
1 A general statement of intention is set out in the introduction to the Product
Standards. The introduction to the Product Standards issued in January 2009 for the
2009 / 2010 campaigns for the YPD stated that it was Sensis intention to prohibit
the publication of advertisements containing works and / or illustrations that are
vulgar, obscene, offensive or that suggest illegal activity and to ensure that the
directory products (including the YPD) do not contain material which is likely to
be ... unsuitable for or harmful to those under 18 years of age, or offensive to
reasonable adults. It expresses the need to be cautious regarding illustrations, copy
matter, trading names and photographs such that they are not sexually suggestive and
that written consent has been provided where required. References to sex, sexuality
and associated products and services must be tasteful and not used to promote sexual
activity.
1 The Product Standards then go on to detail instructions with regard to businesses
under the sensitive headings. It lists the headings that should be treated with
particular caution. It detailed the following headings:
o Adult Entertainment & Services
o Adult Shops
o Escort Agencies (Vic only)
o Escort Services Social (All except Vic & Qld)
o Escort Services Social & Agencies (Qld only)
o Family Planning
o Introduction Services Social
o Novelty Message Services
o Party Plan Selling
o Pregnancy Counselling & Related Services
o Pregnancy Termination Services
o Tantra
1 There are detailed instructions on how to manage artwork received for certain
businesses under the sensitive headings (for example, prescribing the need to receive
written consent from people depicted in images and proscribing the use of Clip Art
or Stock Art in certain situations). The Product Standards provide instructions on
which businesses are to be entered under which headings (for example, brothels under
Adult and Escort headings in compliance with the Prostitution Compliance
Policy which is an appendix to the Product Standards).
1 The majority of the Product Standards are composed of lists of words in
alphabetical order for particular headings that identify which words are acceptable
and which are unacceptable (these lists comprised 18 of the 26 pages of the Product
Standards issued in January 2009, not including the appendices). As an example of
the general structure of these pages, the Family Planning heading contains the
following list of unacceptable words and phrases Abortion, Legal Abortions,
Pregnancy Termination, Pro Choice and Termination. You know they are
unacceptable as there are two columns, acceptable and unacceptable, and each
unacceptable word or phrase has a mark in the unacceptable column. These lists
require little effort to navigate or understand.
1 There are two items in the appendix. The first is the Prostitution Compliance
Policy referred to at [116] above. That policy simply goes into further detail as to how
a listing of a prostitution business is to be managed in the YPD. It notes certain
differences in the laws of the different states (for example, in New South Wales the
advertisement must not indicate that premises or a person are used or available for the
purpose of prostitution). It refers to the need for written consent where artwork
depicting a person is provided in the advertisement (as mentioned in [114] and [116]
above), and places restrictions on the name of the business in the advertisement. It
prescribes the headings to be used. The second item in the appendix is the artwork
release form to be used in the situations just described.
4. CREATION OF THE RULES
1 Who created the Rules themselves is by no means clear. At the highest, the Rules
are the product of successive work by unidentified individuals within Sensis.
1 Ms Galizia, Sensis Senior Product Manager Headings Rules & Standards from
October 2008 until September 2009, gave evidence about the development of the
Rules and their application during that period. Between 1995 and September 2007,
Ms Galizia held other positions but had no responsibility for the Rules. As a manager
of Headings Rules & Standards, Ms Galizia headed a team she considered to be the
custodians of the [Rules] ... in the sense that [they] maintain, update and oversee the
enforcement of the [Rules] throughout the business. The team also assisted in
training Sensis staff in the application of the Rules and addressed specific inquiries
related to the application of the Rules. However, it was not said that Ms Galizia or
anyone in her team created the Rules.
1 Ms Galizia did not write any Rules that impacted upon the Sample Directories.
Even going beyond the Sample Directories, Ms Galizias influence on the Rules is
limited by the amount of time she has been in her position (since October 2008) and
the particular amendments required during that time. At best, Ms Galizia oversaw
only a small proportion of changes to what was generally referred to as the Rules. Ms
Galizia exhibited various versions of the YPD Advertising Rules to her affidavit. All
versions were at least 100 pages long. Ms Galizia provided three examples where
changes had been made to a particular version of the YPD Advertising Rules that she
oversaw. Who created the balance of the remaining Rules is something that was never
established in evidence. Indeed, Ms Galizia accepted in her affidavit that the vast
majority of the [R]ules in the [various versions exhibited] are mirrored in the most
recent versions....
1 The Rules represent the combined efforts of many individuals over a number of
years the cumulative effect of their efforts being what was referred to as the Rules.
Although Ms Galizia asserted that her team had not changed since 2000, she
acknowledged that the team had a number of different managers, the position
described as ad-point coordinator had changed and that an additional member
described as a rules specialist for print products no longer worked at Sensis. The
position prior to 2000 was not established in evidence. The evidence does not
demonstrate when the Rules were first drafted, how they have been amended or who
was responsible for such amendments.
5. HOW THE RULES ARE USED
1 Considerable effort was spent detailing the alleged manual implementation of the
Rules to seek to demonstrate the sort of judgment and intellectual effort alleged by
Senior Counsel for the Applicants: see [89] above. Neither the Applicants nor the
Respondents sought to summarise the circumstances in which the Rules are manually
applied (beyond selective examples). In order to understand how the Rules influence
and ultimately control the nature of the Works, it is necessary to explore the Genesis
Computer System and the way in which it manipulates the listings and advertising
information to give expression to the WPD Rules and YPD Advertising Rules. That
process, obviously, does include the use of human agents. However, their activities
are inextricably linked to and ultimately governed by the computer systems used.
Moreover, where there are instances of so-called discretion, it is not a true
discretion but one to be used in accordance with the Rules. This results in an
automated, prescribed process that governs the ultimate production of the WPD and
the YPD.
1 What follows is the highest the Applicants evidence reached in attempting to
explain how the Rules required manual implementation. Many of the entries within
the WPD and YPD will not be altered from year to year, and many are service orders
which require no human intervention whatsoever. Further, some who apply the Rules
could not be said to be contributing to the work as a compilation expressed in words,
symbols or figures: see s 10(1) of the Copyright Act . However, as is detailed
below, even where manual intervention is involved to give form to the Rules, it is
does not reach a level to assist the Applicants.
1 This will be demonstrated by the interplay of the computer systems (including but
not limited to the Genesis Computer System and the reference tables) and Sensis
workers involved in various stages of production.
1 The Genesis Computer System is comprised of a number of programs, relevantly
including:
3 Publishers Online System (POST) a graphical user interface used by
Sensis workers to enter and update listing and other customer information in
the Genesis database (see for example [135] below;
7 Listing Maintenance the application which governs the processing of
listings data received from telecommunications carriers (known as service
orders) (see for example [135] below);
3 Book Extract the program which governs the sorting and collation of
listings for inclusion in a particular WPD or YPD (see for example [149][156] below);
4 Book Production the program that governs the pagination and
typesetting of the directory (see for example [157]-[161] below).
1 Sitting behind these applications are what was referred to as reference tables.
Many of the Rules applied by the Genesis Computer System rely on the reference
tables and the information contained in them to determine whether a particular action
is valid or invalid (relevantly, by reference to the Rules). The reference tables are
stored in a central location known as the Reference Tables Management System
(RTMS). The development of the tables themselves was undertaken by reference to
the business rules contained in the WP Rules and YP Advertising Rules. The
development of the tables has occurred over a number of years, with an unidentified
portion of the more stable Rules having been represented in the tables for a
considerable period of time (relevantly, prior to 2000).
1 Many hundreds of reference tables exist within the Genesis Computer System, but
only a subset impact upon the listing information in the YPD and WPD.
(a) POST and Listing Maintenance
1 POST acts as the primary mechanism by which information is entered or keyed
into the Genesis Computer System. Listing Maintenance is the program through
which certain listings are automatically processed, for example, where no change is
required to the listing of service orders. Automatic validity checks are undertaken by
these computer applications, and should the information fall outside the expected
range of information to go into a certain field (which is determined by the reference
tables), that entry will not be accepted by the system. In the case of manual entries,
POST will not allow a record to be finalised should certain fields be empty, limits the
number of options from which someone can choose when entering information of a
particular kind (for example, by using drop-down menus) and uses the reference
tables to check the range of valid entries of a given type of information. In other
words, the individual entering data is usually notified if something is incomplete or if
it is invalid, which is determined by reference tables that are constructed to assist in
the automated implementation of the Rules. The Applicants accepted that there is a
large amount of computer-aided error correction.
1 Of significance also was the role of the Error Maintenance System. The Error
Maintenance System is a program designed to search for errors on a daily basis in the
listing information stored in the Genesis database (see [86] above). Although no
definition of errors was provided, from the examples it is apparent that an error will
often include a situation where the ultimate listing contravenes some aspect of the
Rules. The Error Maintenance System operates by identifying errors, without any
human involvement, that have been entered and assigning them to be corrected.
1 There are a number of different ways that information is received from a customer
and can be entered into POST by personnel employed in various capacities (see for
example, [205], [223] and [288] below). The evidence of two individuals, Ms
Speranza (a Senior Account Manager for Sensis responsible for selling advertising
and updating listing details in the WPD) and Ms Walsh (an Account Executive for
Sensis responsible for selling advertising space and updating listing details in the
YPD), is relevant to understand POST and how it controls the initial application of
the Rules.
1 Ms Speranza stated that in her role she had to ensure that all listings and
advertisements for which [she] was responsible [complied] with the [WPD Rules].
The [WPD Rules] prohibit misleading advertisements and ensure that the [WPD] are
user-friendly for consumers. This extremely general statement as to the application
of the WPD Rules was then followed with some examples demonstrating the process
by which a customer was contacted and advertising was secured.
1 In selling advertising to a given customer, Ms Speranza makes suggestions
informed by background research regarding the customers former advertising and
general business. The suggestions are aimed at making an advertisement that is of
benefit to the customer. Examples provided by Ms Speranza included changing
colours within the advertisement, increasing the number of directories (and thus
regions) the advertisement is placed in or removing some enhancements (such as
sufficient to note that much of the work involves the automated production of draft
versions of sections of a given directory, sorted to comply with the Rules, then the
manual checking and editing of this draft. In the words of Mr Stewart (describing his
role when paginating):
The system will assist me in paginating the book by starting me off. So I will tell the
system where I want to start, so going through the process, I will tell it a start page. I will
ask the system then to produce some pages for me and then Ill go in, into my online
pagination system and manually change them or agree [with] them as we move through
the book.
1 This pagination process relies heavily upon the RTMS system (see above at [127])
and upon a piece of software described as Pagination Prod. Pagination Prod has a
function that will score a given page out of 100 based on the compliance level with
the Rules. Mr Stewart attempts to edit each page to achieve a result as close to 100 as
possible. In achieving that objective, Mr Stewart must at times apply certain rules
whilst violating others.
1 Mr Stewarts evidence was that where a 300 page directory is produced, 95 per
cent of the pages will require some manual intervention to ensure compliance with
the Rules. However this statistic (as far as such estimations are useful) and its weight
in determining the issues in dispute, should be understood in its context. First, Mr
Stewart admitted that the creation of an index, which is an aspect of the paginating
process, is only very rarely the subject of a manual change. Secondly, Mr Stewart
was asked the following question to elaborate upon the type of changes undergone
during this process:
Q: You ... introduce[ed] page breaks?
A: Page breaks is one thing, yes. Positioning, filler.
Q: So your function is essentially the formatting of the pages? I mean, the final
formatting, not the layout but the final format to achieve pages?
A: Yes.
1 This is further supported by his evidence that it takes only a half day for a
standard WPD to be paginated (being some hundreds of pages long), and between one
and a half to two and a half days for a standard YPD.
1 The typesetting process follows a similar pattern. Again the RTMS is used, in
addition to an application called QC Manager. Using this application, Mr Stewart
either accepted a page that he was satisfied with, or noted it as an Error File, at
which point he would query the error with an Artist within the Print and Online
Operations group. Occasionally, software errors result in missing pages. Mr Stewart
again requests the page be created via the RTMS.
6. CONCLUSIONS
1 As the evidence shows, the person or persons who utilise the Rules and who,
therefore, are submitted by the Applicants to be authors of the Works, do not exercise
either independent intellectual effort or sufficient effort of a literary nature to be
the authors of the Works (and for present purposes, ignoring that much of the Works
are not the subject of human authorship). This is further exacerbated by the role that
the contractors played, as outlined below.
2. CONTRACTORS
1 Contractors are engaged by Sensis at various stages in the production of
directories to assist Sensis employees (see for example [194], [221], [228], [277],
[290] and [294] below). The Applicants asserted that the significance of these
contractors to the issues in dispute was marginal. That is incorrect.
1 First, the contractors, when engaged, will perform many of the same functions as
employees and thus there appears to be no reason to class one as an author and not the
other. This presents a grave problem for the Applicants given that a significant
number of the contributors remain unidentified.
1 Secondly, the intellectual property in the work undertaken by the contractors must
be the subject of assignment in order for Sensis to demonstrate the requisite
ownership of copyright. The Applicants submitted at various stages throughout the
trial that contractors are required to assign their intellectual property rights to Sensis.
That is a matter of fact. Although a number of agreements were tendered in evidence
demonstrating such assignments, there were significant gaps. Agreements detailing
assignment of intellectual property rights were not provided for all contractors and
there was no evidence of the contracting parties and the appropriate dates of
assignment for all contractors.
1 As a result, many individuals who might be considered authors are unidentified
and the ownership of the intellectual property in the work they performed has not
been established.
E. PRODUCTION OF A PARTICULAR WPD
1 Having identified the use and significance of the computer systems and the Rules,
I turn to consider the way in which an issue of a WPD is initiated and then created.
1. EXISTING LISTING
(a) Creating the initial listing record
1 The rollover process for the next issue of a WPD is initiated by personnel
scheduling the relevant batch applications to be run via the RTMS in the Genesis
Computer System. The rollover process is usually commenced as soon as the previous
issue of the directory has been extracted from the Genesis database and is being
readied for publication. The steps taken for the rollover are the same in relation to
each WPD regardless of the geographic region that the WPD covers.
1 As set out above (see [56(7)]), the rollover process creates a template or first draft
which is, in significant part, a repetition of substantial parts of the previous directory.
As Mr Pagnin, a Business Analyst employed by Sensis, said in evidence, the previous
years directory constitute[s] the core of the [following] directory.
1 The first appearance of a telephone number in its local directory qualifies for a FE
comprising the name, address, and telephone number of the customer in standard
format. An existing FE listing for a customer is obtained from a customers previous
WPD listing and is included by reason of the rollover from the previous edition of the
WPD.
1 The Applicants have not and cannot identify who provided the necessary authorial
contribution for these entries rolled over from the previous edition. The Applicants
concede numerous non identified persons or entities would have contributed to the
prior entry (including third party telecommunications carriers such as Optus,
Vodafone and AAPT).
1 The listings in the WPD in issue were not the result of human authorship but were
predominantly computer generated (see Part C above). Moreover, none of the work
done in contributing the existing FE listing for a residential customer to the Genesis
database was independent intellectual effort and further or alternatively, sufficient
effort of a literary nature if any effort of a literary nature (IceTV [2009] HCA 14 ;
254 ALR 386 at [99]) is necessary to be considered an author of a Work within the
meaning of the Copyright Act . Further or alternatively, the manner in which an
existing FE listing for a residential customer is included in the next WPD was anterior
to the WPD taking its material form: IceTV [2009] HCA 14 ; 254 ALR 386 at
[101]. Most entries in the WPD are free entries. FE business listings are treated in
the same manner as FE residential listings but for the fact that there is an attempt to
contact businesses to see if they want to spend money on advertising in the WPD.
(b) Obtaining updated listing information
1 As noted above (see [95] and [101]), under the Rules, the first appearance of a
telephone number in its local directory qualifies for a FE comprising the name,
address and telephone number of the customer in standard format. Second and
subsequent appearances of the number in the directory, or the inclusion of additional
information or features as part of the listing, incurs an additional charge. A listing
with additional information or features is known as an enhanced listing. An
enhancement to a WPD listing can involve the inclusion of additional information
(such as an email address, facsimile number, or logo), a change to the format of the
listing (such as placing it in capitals, bold or using a colour highlight) or an additional
listing altogether (such as a cross-reference). The various forms of enhancement are
set out in the Rules.
1 A co-ordinated sales campaign, known as a sales canvass, is conducted in the
lead up to the production of a particular issue of the WPD. The sales canvass lasts 11
months. It begins in mid-July each year and concludes in mid-June the following
year. During a sales canvass, a sales consultant attempts to contact every customer
who has paid for an enhanced or additional listing in the previous issue of a WPD in
order to update their listing details and ascertain their requirements for the
forthcoming issue of directories. Sales consultants are not regionally based they
canvass WPDs from all regions across Australia.
1 There are four different WPD telesales teams or channels who work on a sales
canvass T1 Consultants, T2 Consultants, T3 Consultants and Account Managers.
The different channels each deal with different customers depending on factors such
as the type of customer (business, government or non-government association) and
the level of the customers advertising spend. The role of a WPD telesales consultant
is the same in respect of any WPD, regardless of the geographic region that the
directory covers. There are approximately 200 WPD telesales consultants, located in
Sydney and Melbourne. Each sales consultant is expected to meet certain sales targets
over a particular 12 month sales period.
referred to within Sensis as a business needs analysis. The sales consultant then
makes a recommendation to the customer about the form that their listing or listings
should take in the next issue of the directory. An overview of how a WPD sales
consultant conducts a business needs analysis is discussed at [133]-[135] above.
1 Where the listing is in the form of a display advertisement or a caption (a listing
containing multiple items of information under a single name), the recommendation
can include advising on the form of the caption (ie, the arrangement of the
information within the listing) and what additional information should be included
(such as a contact name, fax number, email address, slogan, opening hours or after
hours contact information).
1 When the customer has made a decision about what form of listing to place in the
forthcoming issue, the consultant records the relevant listing details and arranges for
the listing records to be created or updated within the Genesis database. As part of
this process, the sales consultant confirms whether the listing information stored in
the database is correct or needs to be updated, and that the listings the customer
wishes to place comply with the requirements of the Rules. As detailed in Part C
above, sales consultants apply both content-driven Rules and Rules dealing with the
presentation and appearance of listings. In addition, each type of listing enhancement
has a discrete set of entry and appearance criteria set out in the Rules.
1 It is difficult to draw any conclusions on the precise number of listings that
require amendment from one year to the next. It will vary from canvass to canvass,
sales consultant to sales consultant and directory to directory. Although one of the
sales consultants estimated that 98 per cent of the customers he is responsible for
make changes throughout the year, he only had 45 customers (who were larger
clients). Another sales consultant (Ms ODea) estimated that she amends the listing
details of approximately 60 per cent of the businesses she contacted as a T2 telesales
consultant, while Ms Speranza estimated that she amends the listing details of
approximately 30 per cent of the businesses she contacts as a T4 telesales consultant
(Account Manager). Given the range of these anecdotal estimations, it is not possible
to identify with any precision what percentage of the entries in any directory are new.
1 The evidence disclosed that during the sales canvass there were 16,992 changes
made to the 6,471 business listings that appeared in the 2009 Port Macquarie WPD,
and 33,404 changes made to the 12,669 business listings that appeared in the 2008 /
09 Cairns WPD. Mr Gill, employed by Sensis as the manager of the Go To Market
Team for the WPD, admitted during the course of cross examination that most of the
entries in the WPD would be residential and that changes included any sort of change
to the advertising type, which would include changes that do not find expression in
the directory. He also indicated that there were 642 new listings for Cairns from the
previous year, indicating that the balance of listings (less cancellations) were
continued from the previous year. That figure dropped to 329 with respect to Port
Macquarie.
1 Business Listings are different. Even where there is no change in the business
customers listings from one year to the next, the consultant is still required to
confirm the listing details with the customer.
(c) Entering the updated information into the database
1 Which person actually updated the listing information in the Genesis database
depends on the type of sales consultant responsible for dealing with the customer. Put
simply, the person who contacts the business customer is not necessarily the data
entry person.
1 If the customers listing information has been obtained by an Account Executive,
the Account Executive will record the changes that need to be made to the customers
listings in a memorandum and forward it to an ADS (see [142] above) in the Print and
Online Operations group to update the Genesis database. There are approximately 94
ADS. Approximately 16 ADS are dedicated to WPD listings. Sensis also engages
contractors in the Print and Online Operations group to assist during peak periods of
the directory production cycle in August and December of each year. The Applicants
alleged that these contractors are engaged through employment agencies that are
required to ensure all of their temporary personnel assign their intellectual property to
Telstra, However, such a submission is subject to the difficulties outlined in Part D(2)
above. These staff are located in Sydney, Melbourne and Brisbane but are
responsible for making changes in relation to all of the directories published by
Sensis.
1 The process of updating an existing listing in the database involves calling up the
customers record in the database and changing the information which will be used to
generate the listing in the forthcoming issue of the directory using POST.
1 Each customer record in the Genesis database contains a number of different
sections, including sections for the customers contact details, payment details and the
directories in which the customers listings appear. The Genesis database also retains
historical information about the details the customer has had published in any
previous directory.
1 The Listing Details part of the record contains the information which is used to
generate the customers listings. If the customer has more than one listing (for
example, a WP listing and a YP listing, or two WP listings with different details), a
separate record is stored in the database for each listing. A separate record is also
stored for each issue of the directory in which that listing is to appear. An entry of a
listing in a particular issue of a directory is known as an item. The item describes
the type of listing which will appear in the specific issue of the directory, using the
information stored in the Listing Details part of the record (for example, whether it
will appear in bold type or capitals). If a listing is to be placed under three different
headings, there will be three items linked to the same listing. This is also known as
the UDAC for the entry. As noted in [135] above, UDAC stands for Universal
Directory Advertising Code. There is a UDAC for every type of entry in the WPD
and YPD, including a first entry or FE. An item is automatically generated for a
first entry or FE.
1 The information which is held in the Listing Details section of the customers
record includes the customers listed name (including any courtesy title), listed
address (including the street number, street name, street type, locality name, state and
postcode), listed telephone number (including area code, exchange prefix and line
number, as well as the type of number, such as standard or mobile) and (for YPD
listings) the initial heading under which the listing is to appear. It also includes any
database using the POST interface (for a typical example of an interaction with
POST, see [135] above). If the changes are more complex (for example, if they
involve the creation of new display advertising), the consultant can record the
changes in a memorandum and refer it to an ADS to enter the changes into the
database.
(d) Checking the updated listing record after entry in the database
1 When a customer purchases an enhanced or additional WPD listing, the details of
the listing are recorded in a contract between Sensis and the customer. Depending on
the value of the advertising, the contract will be in writing or in the form of a voice
recording stored on Sensis systems.
1 After the listing information in the Genesis database has been updated by an ADS
or telesales consultant, the listing record is checked against the details of the written
contract or voice recording by a member of the Sales Validation Administration team.
Members of this team are known as Validators (see also [136] above). The
Validator checks that the listing details recorded in Genesis are consistent both with
what the customer has requested and with the requirements of the Rules.
1 Periodic corrections are also made to the listing information held in the database
by members of the Print Content and Conversion group if, for example, a
telecommunications carrier notifies Sensis of a change in the form of its service order
information.
1 In addition, since 2006 the Error Maintenance System has run a series of reports
over the entire Genesis database on a daily basis to identify certain errors in the
content or appearance of listings (for example, whether the listing has been amended
in such a way that it will no longer print in the directory, or whether there is an error
in the sequence of items making up the listing) (see also [86] above).
1 If the Error Maintenance System identifies an error with a new listing or a change
to an existing listing, it sends an email to the person responsible for entering the
listing notifying them of the error so that it can be corrected. If the system cannot
identify an individual person responsible for the error, the error will be placed in a
queue to be actioned by a dedicated team of ADS known as the Reports team
(Reports ADS). Reports ADS have the same skills and perform the same role in
updating the Genesis database as ADS responsible for handling requests for changes
from sales staff.
(e) Other amendments to existing listings
1 In addition to changes made as a result of contact from a sales consultant during
the course of a sales canvass, changes can also be made to an existing WPD listing as
a result of the receipt of a service order from a telecommunications carrier or (in the
case of a business listing) as a result of direct contact from the customer. These forms
of amendment are discussed below.
2. NEW LISTING
1 During the sales canvass for a particular directory, in addition to updating the
listing details of existing customers, listings for new customers are also added. Where
a listing has not previously appeared in the WPD, information in relation to that
listing can be derived from three sources:
7 service orders received from telecommunications carriers;
1 The Customer Operations Associate will then create a new listing for the customer
in the Genesis database. This involves creating a new customer record, with its
associated listing information, using the POST interface. When the Customer
Operations Associate requests the creation of a new customer record from a Listing
Maintenance Transaction, POST sends an instruction to the database to copy the
relevant information from the Listing Maintenance Transaction to the Listing
Details part of the record.
1 The Customer Operations Associate must then review the listing details to ensure
that they are accurate, comply with the customers instructions and the relevant
requirements of the Rules. If there are changes to be made to the listing information,
those changes are automatically checked by the Genesis Computer System as they are
entered against the same reference tables used by the Listing Maintenance application
to check service order information. If there are no changes to be made to the listing
information, the Customer Operations Associate creates a new item in relation to
the listing by selecting the WP Auto Scope option. This enables the listing to appear
as an FE in the next issue of the WPD to which the listed address relates.
1 Ms Jones, a Customer Operations Associate for Sensis, gave evidence as to her
role. Her evidence was that she would process hundreds of entries in a given day,
with different estimates as to the duration of certain types of listing. For example,
entries described as silent line entries were expected to be completed at a rate of 40
listings an hour, suppressed address entries were 19 listings an hour, business
entries were 20 listings an hour and residential entries were 60 listings an hour. As
stated earlier (see [56(3)] above), Mr Beardshaw, employed as an External Interfaces
Analyst by Sensis, gave evidence that of the approximately 12 million service orders
received annual by Sensis, 15 per cent are required to be processed manually.
1 In addition to creating new FEs, Customer Operations Associates also deal with
amendments to new and existing listings, and the removal of listings for disconnected
customers, silent lines, and addresses which are suppressed in accordance with the
requirements of the Rules.
1 As noted above, Customer Operations Associates are also responsible for
amendments to complex listings. These are listings which consist of twenty lines or
more (also known as major listings). It is Sensis policy to send a proof of all
changes to the customer. For complex listings, it was alleged that this process can
take days or even weeks. It is unclear how many such listings were relevant to the
directories in suit.
(b) Customer contact
1 New WPD listings are also derived from customers contacting Sensis directly to
request inclusion in the directory. Such requests are usually received by the Customer
Care group within Sensis. Sensis maintains two Customer Care call centres, one
located in Sydney and one located in Melbourne, to handle such requests and other
queries from customers in relation to the WPDs (and YPDs). There are approximately
120 Customer Care staff employed in those call centres. About a quarter of the staff
are contractors, making them subject to the same issues already canvassed in Part
D(2).
1 The Customer Care consultants are required to deal with queries in relation to any
directory, regardless of the geographic area the directory covers or whether the
consultant is based in Sydney or Melbourne. Until March 2008, Sensis maintained
separate teams within the Customer Care group in relation to queries concerning the
WPDs and YPDs. Since March 2008, Customer Care staff have been trained to deal
with queries in relation to both directories.
1 Where a customer telephones Sensis to request a new listing in the WPD, the
consultant first determines whether the listing is a business listing or a residential
listing. To avoid duplication with service orders, customers who contact Sensis in
relation to a new residential listing are told to contact their telecommunications
carrier, rather than Sensis, to arrange the listing to be added to the directory.
1 If the listing is a business listing, the Customer Care consultant will then enquire
whether the customer wishes to purchase an enhanced or additional listing. If so, the
Customer Care consultant will transfer the customer to a sales consultant to ascertain
the customers requirements and create the listing. If the customer only wishes to
place an FE, the Customer Care consultant will create the listing themselves, after
ascertaining that the listing has not already been generated by the Customer
Operations group on receipt of a service order.
1 The process of creating a new WPD listing involves creating a new record for the
customer, with its associated listing information, in the Genesis database using the
POST interface. This requires the Customer Care consultant to request the POST
interface to create a new customer record, and then to fill in the details of that record
based on the information obtained from the customer and the requirements of the
Rules. This involves the same basic steps as updating an existing listing (for an
example of how a listing is updated in POST, see [135] above).
1 To enable the listing to appear as an FE in the next issue of the WPD to which the
listing relates, the Customer Care consultant selects the WP Auto Scope option,
which creates a new item in the relevant directory in relation to the listing. If the
Customer Care consultant has been trained to handle both WPD and YPD queries, the
consultant will also create an FE in the relevant YPD, after ascertaining the
appropriate heading under which to classify the listing.
1 As with the information entered by an ADS, telesales consultant or Customer
Operations Associate using the POST interface, the information entered by the
Customer Care consultant is automatically checked by the Genesis Computer System
against reference tables containing all of the valid range of entries for that type of
information. When the record is complete, the Customer Care consultant finalises the
record, after viewing the listing in the format in which it will appear in the printed
directory (this is known as retiring the listing). The system then conducts further
validity checks across all of the information entered by the consultant.
1 In addition to creating new FEs, Customer Care consultants are also responsible
for handling requests to amend new or existing WPD listings (provided that the
change is a simple one and does not involve any change to the advertising spend) and
to cancel FEs (provided that the customer is not already assigned to a particular sales
consultant).
1 Where a change involves an amendment to the customers advertising spend, the
Customer Care consultant will forward the query to a sales consultant. Cancellation
of paid listings are referred to the customers assigned sales consultant or to members
of the Cancellation team (known within Sensis as Customer Relationship
Consultants). The Cancellation team is a national team comprising approximately 15
employees responsible for handling requests by paid customers to cancel their
advertising and remove their listings from the WPD (or YPD).
1 Part of the role of a Customer Care consultant is to determine what actions can be
done by the consultant and what is best handled by another person within Sensis.
(c) Sales contact
1 As noted above (see [231]), where a customer contacts Sensis and requests to
purchase an enhanced or additional listing in the WPD, the request will be transferred
to a sales consultant to ascertain the customers requirements and create the listing in
the Genesis database.
1 New WPD listings are also occasionally sourced from sales leads identified by
Sensis personnel. Sensis maintains a computer system known as the Lead
Management Tool to enable such leads to be recorded and allocated among sales staff.
Although the majority of the leads handled by the Lead Management Tool relate to
prospective customers for the YPD, occasionally leads are also entered for
prospective WPD customers.
1 Where a lead for a new customer is entered into the Lead Management Tool,
Sensis personnel within a team known as the Lead Management team are responsible
for verifying the information entered into the Lead Management Tool, creating a
provisional customer record for the customer in the Genesis database (if one does not
already exist), and allocating the customer to a sales consultant in accordance with the
relevant allocation policies. There are currently 13 members of the Lead Management
team, approximately half of whom are contractors (see Part D(2) above).
1 The provisional customer record is created using the POST interface based on the
information submitted with the lead. It is effectively a draft record or shell for the
customer which contains some or all of the customers listing details but remains to
be finalised by the sales staff to whom the lead is allocated. Provisional records are
only created for customers who have not previously appeared in any WPD or YPD,
and therefore do not exist in the Genesis database. These are known as DNE (Do
Not Exist) customers.
1 Sales consultants allocated prospective new customers by the Customer Care
group or the Lead Management Tool attempt to ascertain the customers needs and
advise the customer about the most appropriate form of listing in exactly the same
manner as existing customers. Where there has been a provisional record created by
the Lead Management team, the listing record will be updated in the same manner as
a listing record for an existing customer. Where there is no existing listing record in
the database, the listing record will be created in the same manner as a new listing
record created by the Customer Care group.
(d) Checking the new listing after entry
1 Where they involve enhanced or additional listings, new listings are verified by
the Sales Validation Administration team in the same manner as existing listings. The
role of a Validator is the same in respect of any WPD, regardless of the geographic
region it covers. In addition, all new listings are checked by the reports run by the
advertisements.
1 The Book Extract process involves two stages. First, the listing information for
the nominated directory is automatically extracted from the database, in accordance
with appearance and suppression rules that have been programmed into the Book
Extract routine. These rules govern which components or elements of each listing
should be included in the directory and how they should appear (ie, whether they
should be abbreviated or appear in full), and are designed to give effect to the
requirements of the Rules.
1 The application of these appearance and suppression rules depends on factors
such as:
12 whether the listing is to appear in its local directory (ie, the directory
which relates to the listed address) or is to appear in a foreign directory;
16 whether the listing is to appear in its own state or Numbering Plan area
(this determines whether the area code or state is included in the listing); and
11 whether the listing has been designated with an Omit indicator in the
database (for example, because the listing is a caption listing or qualifies for
the address to be suppressed in accordance with the requirements of the
Rules).
1 Many of these determinations, in turn, depend on the application of reference
tables. To apply the relevant appearance or suppression rule, the Book Extract routine
has been programmed to check the listed information against the information in the
table and present the listing accordingly, depending on the result (see [126]-[127]
above). As Mr Peterson said when we run the book extract, when we print the book,
it looks at the table and sees how it should be presented. So it drags the information
out of that table to do the presentation.
1 For example, there is a Locality Appearance table which contains a list of the
local directory for every locality in Australia. Depending on whether or not the
locality of the listing in question is local to the directory which is being extracted, the
Book Extract routine will either include the name of the locality in full, print an
abbreviated form of the locality, or omit the locality entirely (this occurs, for example,
in capital cities where the locality is the same as the name of the directory). If the
listing is to be abbreviated, the name of the abbreviated locality is taken from a table
known as the Locality table, which contains a list of all recognised localities and their
abbreviations.
1 After the listing elements have been extracted and their appearance determined,
the Book Extract routine then sorts the listings according to sorting rules also
designed to give effect to the requirements of the Rules. For example, a prefix is
included as part of the first word of a listing even if it is separated from the second
part of the name by a hyphen (this means that De Groot and De-Bug will usually
be sorted in the same way), unless a Sensis staff member has elected to override the
sorting rules by using the PLA field. As with appearance and suppression rules, the
application of many of the sorting rules involves the software checking whether the
listed elements appear in any of the relevant tables, and then dealing with the listing
accordingly. Again, this process is almost entirely automated.
1 The Book Extract process is initiated by the Publishing Co-ordinators requesting
the Book Extract routine to be run in relation to a particular directory via the RTMS.
After the listings have been extracted and arranged in the CMP file, the Publishing
Co-ordinators create the galley file by running a separate routine known as Book
Production: see [157] [161] above. The Book Production routine builds the galley
file and arranges the contents of the Book Extract in columns within the galley file in
preparation for typesetting and pagination. Every line in the galley file has a discrete
number, made up of the Item ID for the particular entry in the directory and a number
indicating its place in the galley file.
(c) Verification of listings after extraction
1 After the galley file has been created, Publishing Co-ordinators run further reports
to ensure that the listings to be printed in the directory have been extracted correctly
and that their appearance will comply with the requirements of the Rules. Where the
Genesis Computer System identifies issues, they are corrected manually in the galley
file by the Publishing team.
1 In addition to these automatic checks, Publishing Co-ordinators also conduct a
series of manual checks, known as alpha checks on the galley file (see [155]
above), including:
13 checking the beginning of each alphabetical section to ensure that the
listings in each section appear in the correct alphabetical order (for example,
ensuring that a customer with the name A Thompson does not appear under
the letter A);
17 checking that the galley file has been built correctly and that there are no
listings that commence before the letter A;
12 checking that the listings beginning with courtesy titles such as Mr or
Ms are sorted correctly (these titles cannot appear at the start of a listing
unless it is a registered business name);
9 checking that all dependent-word listings (ie, listings with prefixes such as
surnames beginning with Van or De La) are sorted correctly; and
4 checking that no anomalous listings have been placed at the end of the Z
section as a result of an incorrect PLA.
1 After the galley file has been built, Publishing Co-ordinators also action Late
Change Requests. These are requests from various groups within Sensis such as
Customer Care, Customer Operations and Print and Online Operations to update
customers details after the LLAD. On average, Publishing Co-ordinators can make
anywhere between zero and 25 late change requests in each regional WPD each year
(being composed of some thousands of listings).
(d) Typesetting and pagination of the directory
1 Once the galley file is ready for pagination, the Publishing Co-ordinators release
the galley file to members of the publishing team known as the Paginators (see also
[157]-[160] above). The pagination process involves determining the layout of the
listings and display advertisements that appear on each page of any given directory, in
accordance with the requirements of the Rules. The typesetting process involves the
automated incorporation of display advertisements from the Ad Production Database
into the paginated pages of the directory, and the pages being converted into a final
PDF format for publication. These processes are conducted separately for each WPD
and YPD, even where they are co-bound into a single volume. The role of Paginators
in respect of any WPD or YPD is the same regardless of the region that the directory
covers.
1 Prior to the commencement of the pagination process, the initial structure of the
directory is determined by members of the Publishing team, in consultation with
members of the Marketing team. The Marketing team is responsible for the
production of the Information Pages at the start of each directory, other than the
Government Index, which is the responsibility of the Publishing team. The initial
structure specifies the number of information pages the directory is to contain, the
number of map pages, and the number of pages that the Marketing team wishes to
include in the directory (such as advertisements used to promote Sensis products and
services).
1 The initial pagination of the directory is an automated process which involves
running a software routine known as Batch Pagination via RTMS. The evidence of
Mr Stewart regarding the time this process takes is analysed at [158]-[160] above.
1 After pagination, the final structure of the directory is determined by adding the
number of pages of listings to the initial structure of the directory and determining
how many pages in total the directory is to contain. For printing purposes, the number
must be divisible by eight, so the number of pages is adjusted accordingly by
reducing the number of information pages or increasing the overall number of pages
with filler advertisements.
1 The final stage in the publication process is typesetting of the paginated pages.
This involves bringing the display advertisements from the Ad Production Database
into the paginated pages and converting the pages into the format in which they will
be provided to the printers. This is also initiated by running a software routine, known
as Typesetting Page Production, via RTMS.
1 The software routine places each display advertisement into its designated
position on the page. The Paginators then manually check each page to confirm that
all of the advertisements appear correctly. If there are any errors, they are corrected
by an Artist within the Print and Online Operations group.
F. PRODUCTION OF A PARTICULAR YPD
1. EXISTING LISTING
(a) Creating the initial listing record
1 The production of the YPDs follows a similar cycle to that described above in
relation to the WPDs.
1 Like the WPD, the production of a new issue of the YPD begins with the rollover
process, in which the listing information from the previous issue of the directory is
carried over and converted into listing information for the next issue of the directory.
1 However, the rollover process for the YPD is initiated slightly later in the
directory production cycle than the rollover process for the WPD. Whereas the
rollover process for the WPD is initiated by members of the publishing team as soon
as the previous issue of the directory has been extracted, the rollover process for the
YPD is initiated by a separate group within the Operations Department of Sensis
known as the Canvass Planning group, after the previous issue of the directory has
been sent to the printers.
1 The rollover process for the YPD does not commence until the pricing, products
and headings for the forthcoming issue of the directory have been settled. Each year,
there are usually additions or variations to the range of advertising options offered in
the YPD, as well as to the headings. If a heading under which an existing customer
has been classified has changed, then the new heading will be applied to the listing
information in the rollover process. This involves updating the relevant tables within
RTMS that are applied to the existing listing information to generate the new listing
record.
1 The rollover process for the YPD is undertaken by the same batch applications
that carry out the rollover process for the WPD. Members of the Canvass Planning
group undertake the same steps to rollover the directory in relation to any YPD,
regardless of the geographic region that the directory covers.
(b) Obtaining updated listing information
1 Like the WPD (see [181] above), listing records that are created during the
rollover process for the YPD are updated during a co-ordinated process of customer
contact by Sensis sales staff known as a sales canvass. The sales canvasses for the
WPDs and YPDs are not aligned.
1 Under the Rules, each business or Sensis-approved non-business customer within
the relevant YPD area is entitled to an FE comprising the trading name, address and
telephone number of the customer in standard format, classified under an appropriate
heading. A business may appear in a YPD without appearing in a WPD. Like the
WPD, customers can also pay to place an enhanced or additional listing (including an
additional listing under a different heading).
1 During the sales canvass for a YPD, Sensis sales staff attempt to contact every
customer who appeared in the previous issue of the directory, in order to update their
listing details and ascertain their requirements for the forthcoming issue of the
directory. Each year all existing customers with paid listings must be contacted again
so that a new contract can be obtained containing details of the listings to appear in
the following years directory. YPD sales staff also attempt to contact all customers
with a complimentary listing to update their listing details and enquire whether they
wish to upgrade to an enhanced listing. It is unclear how many attempts are
successful.
1 Like WPD sales consultants, YPD sales consultants are divided into face to face
Account Executives and telesales consultants. There are approximately 600 YPD
Account Executives, who are responsible for selling enhanced or additional listings to
medium to large customers, and approximately 300 YPD telesales consultants, who
are responsible for selling to small to medium customers. Most Sensis sales staff are
Sensis employees, though other sales staff are contracted to sell advertising in specific
regional areas engaged by TSA Telco Group and Spectrum Sales (see Part D(2)
above). Like the WPD telesales group, the YPD telesales group is divided into subgroups, or channels, who each deal with different customers depending on factors
such as whether the customer is a new or existing customer, and the level of the
customers advertising spend. YPD Account Executives in regional areas tend to be
responsible for a number of different directories, and re-locate to a new area at the
conclusion of a sales canvass. The role of Account Executives and telesales
consultants is the same in respect of any YPD, regardless of the geographic region
that the directory covers.
1 The role of a YPD sales consultant is broadly the same as that of a WPD sales
consultant. In particular, YPD sales consultants also apply the Six Step Consultative
Sales Process to ascertain the customers business needs and make recommendations
to the customer about the form that their listing or listings should take in the next
issue of the directory: see [187] above. This includes making recommendations about
the customers first entry listing, as well as any enhanced or additional listings.
1 However, in addition to ascertaining what form of listing or listings will best suit
the customers need, the role of the YPD consultant is also to assist the customer to
place their listing under an appropriate heading. This requires the consultant to be
aware of the range of headings that relate to the products and services provided by the
customer (these are known as allied headings) and to advise the customer. It is also
a requirement of the Rules that the listing placed by the customer relate to the
business activity described by the heading. Accordingly, the Account Executive
attempts to ensure that the products and services described in the listing fall within
the heading category under which the listing will appear.
1 YPD Account Executives also tend to have a greater role in the composition of
display advertising, due to the fact that this form of listing is more common in the
YPD than the WPD. Where customers decide to purchase a display advertisement or
a listing containing additional advertising information, Account Executives can make
recommendations. As Ms Purcell explained:
... this customer, all they thought they needed to have in an ad was a logo and a few bullet
points and the name and address; thats it. Thats what a lot of our customers think that
they need to put in an ad. Were trained to and a lot of time is spent training us in
advertising so we are trained to suggest they put a lot more information in than that
because our research shows that the more information we put in an advert, the better it is
for the consumer to choose the business.
1 Like the WPD, the precise number of YPD listings that require amendment from
one year to the next varies from canvass to canvass, sales consultant to sales
consultant and directory to directory. Ms Walsh (see [131] above) estimates that 75
per cent of the businesses assigned to her for the Cairns 2008 / 09 YPD would have
made some sort of change to their advertising. Ms Purcell (see [147] above) states
that this estimate would be true of all YPDs she has worked on. In oral evidence, Ms
Purcell stated that only a small percentage repeat. A lot of things change from one
year to the next. Mr Fielding (another Account Executive employed by Sensis)
estimates that 60 per cent of the businesses assigned to him for the Port Macquarie
2009 YPD would have made some sort of change, while Mr Burgess (also an Account
Executive) places this figure at 90 per cent. Again, given the range of these anecdotal
estimations, it is not possible to identify with any precision what percentage of the
entries in any directory are new.
1 The statistics compiled by Mr Aloi (a Manager in the Go To Market team) suggest
that during the sales canvass there were changes made to the details of between 4,673
and 7,272 of the 12,490 customers with listings in the 2008 / 2009 Cairns YPD, and
between 3,608 and 5,362 of the 10,538 customers with listings in the 2009 Port
Macquarie YPD. Mr Aloi did not know how many listings were in the directories.
Approximately 6,000 customers were accepted to be FE for the Cairns directory, with
a similar sort of proportion for Port Macquarie. He did not know how many paid
entries were rolled over without amendment. Again, we are left in a position where it
is unclear what percentage or proportion of listings are new and as the evidence has
repeatedly demonstrated, many of the changes are likely to have been minor or
largely automated.
1 If a listing does not require amendment from one directory to the next, the sales
consultant is still required to check that the customers listing details are correct and
that they continue to comply with the requirements of the Rules.
(c) Entering the updated information into the database
1 As with WPD listing information, the way in which updated YPD information is
entered into the Genesis database varies depending on the type of sales consultant
responsible for dealing with the customer. In addition, where the information has been
obtained by an Account Executive, there are different processes that apply depending
on how the information obtained from the customer is submitted to the Print and
Online Operations group for entry into the database.
1 When an Account Executive finalises a customers requirements for the
forthcoming issue of the YPD, the Account Executive records the customers listing
details in a written contract. For paid YPD customers, this contract is used as the basis
for updating the customers listing information in the Genesis database.
1 For all existing paid customers, Account Executives are provided with
pre-prepared draft contracts in electronic form, which are downloaded to the laptop of
the Account Executive at the start of the sales canvass. The listings and display
advertisements which appear in these draft contracts are the same as that which
appeared in the previous issue of the directory. The role of the Account Executive is
to confirm whether the customers listing details are correct and update the
information in the contract with the customers new requirements. This can be done
either by making changes to the electronic form of the contract and having the
customer sign it on the screen of the laptop, or by printing the contract and marking
up the changes by hand.
1 Once the contract has been signed by the customer, it can be submitted to the
Print and Online Operations group either in electronic form or in hard copy form. If
the contract is submitted in electronic form, and there is a change to the customers
listings or other details, then the contract is allocated to an ADS to update the record
in the database manually. This is done in the same way as for WPD listings.
1 If there is no change to the customers listing details from the previous year, then
the customers record is automatically updated to retired / completed status in the
Genesis database, and no further action is required. This is done by STP (see [82]
above). As noted above, STP is a function built into a computer system used by
Sensis to track contracts throughout the production cycle known as Workflow
Imaging and Integration. It is the only computer application used by Sensis that
enables listing information contained in YP advertising contracts to be automatically
updated. All other amendments to paid listings must be made manually by an ADS or
other worker changing the listing details in POST. Between 3 and 4 per cent of the
listings in the 2009 Port Macquarie YPD and 2008 / 09 Cairns YPD were finalised
using STP.
1 If the contract is submitted in hard copy form (or has elements that are in hard
copy), then there are a number of additional checks for accuracy and compliance with
the Rules that the contract goes through before it is submitted to an ADS for entry
into the database. This process has also been discussed at [140]-[144] above. First, the
contract is checked by a SCC who works with the Account Executive. This includes
checking whether the listing information is complete and internally consistent. There
are approximately 38 SCCs nationally, located across 16 metropolitan and regional
offices (although this role has only been in existence on a national basis since May
2007).
1 If the contract passes the SCCs quality check, it is forwarded to the Print and
Online Operations group. There, it is received and checked by a CVS. The role of the
CVS is to conduct a more detailed review of the information contained in the
contract, and to ensure that the listing information contained in the contract is
consistent, accurate and complies with the Rules. There are approximately 37 staff
employed in this role nationally, located in the same centres as the other members of
the Print and Online Operations group. Like the other members of the Print and
Online Operations group, the CVS team includes employees and contractors (see Part
D(2) above).
1 If the CVS determines that a proposed listing contained in a contract is inaccurate
or does not comply with the Rules, the CVS can raise a query with the sales
consultant responsible for the customer. The contract will not be provided to an ADS
for entry of the listing information into the database until all outstanding queries have
been resolved.
1 When a customers listing information has been obtained by a telesales
consultant, the consultant records the listing details in the form of a voice recording
and enters the details into the Genesis database using the POST interface, just like a
WPD telesales consultant.
(d) Checking the updated listing record after entry in the database
1 Because a YP contract is signed by the customer before the listing record is
created in the Genesis database, there is no equivalent of the sales validation process
for YPD listings.
1 However, in addition to the checks conducted on YPD contracts before the listing
information is entered into the Genesis database, there is also a team of three Sensis
personnel known as the Check the Checkers team who are responsible for
reviewing a 10 per cent sample of the listing records for YPD customers created or
updated by ADS and the display advertisements created or updated by Artists and
checked by Editors (see [145] above). The team comprises one permanent employee
and two contractors supplied by external recruitment agencies (see Part D(2) above).
This team checks to ensure that the listing record created by the ADS or Artist
accords with the customers instructions and with the requirements of the Rules.
1 In addition, YPD listing information is checked on a daily basis by the reports run
by the Error Maintenance System, in the same way as WPD listing information.
these reports are equivalent to reports run in relation to the WPD. Others have no
equivalent in relation to the WPD:
16 Delimiter Inconsistency Report: this report is designed to identify errors in
the placement of a delimiter in the finding name for a listing which would
cause it to appear in an incorrect sequence in the printed directory.
20 DSP Report: this report is designed to identify errors in the positioning of
display advertisements in the printed directory. These advertisements are the
subject of separate positioning rules, depending on the size and date of
placement of the advertisement.
15 Brand Report: this report is designed to identify all listings in the relevant
directory that have brand names within the listing (ie, where the name in the
listing does not necessarily correspond to the name of the business). It is
designed to ensure that these listings have been capitalised correctly and will
appear in the correct sequence in the printed directory.
11 Check No Print Report: this report is designed to identify errors in the
designation of paid listings for publication. All listings that are to be published
in the directory must be marked with a status of Publish.
5 Invalid Items Report: this report is designed to identify listings that are
allocated under headings that no longer exist, and will therefore not appear in
the printed directory.
3 Graphic Items in Caption Report: this report is designed to identify errors
in the appearance of listings containing graphic items (such as a logo).
2 CSV Special Characters Report: this report contains a list of all listings
that have inverted commas in the listed name but do not have a PLA. Without
a PLA to override the sorting rules applied at Book Extract, these listings will
not appear in the correct sequence in the directory.
1 BTR / BTEN Report: this report is designed to identify bold type listings
that have been incorrectly designated as a caption listing, which would cause
them not to appear in the correct format in the printed directory.
1 Any errors identified by the Book Close reports are corrected by staff in the Print
and Online Operations group.
(b) Extraction and presentation of listings
1 Like the WPDs, the extraction of the listing information for YPDs and the
creation of the galley file is undertaken using the Book Extract routine: see [252]
[259] above.
1 The Book Extract process for the YPD involves the same two stages as occur in
relation to the WPD. However, there are additional processes which occur at each
stage, due to the presence of headings and the need to arrange display advertisements
in accordance with separate positioning rules.
1 In addition to listing information, the Book Extract routine for YPDs also extracts
all of the headings which have listings under them in the designated directory, as well
as their associated sub-headings and cross-references.
1 It also extracts alternative headings that do not in fact have listings under them but
are designed to have the appearance of headings (for example, there is a heading in
every directory for Police Emergency which simply states see inside front cover).
1 There has been no material change in the production process for the WPDs and
YPDs since the introduction of the Genesis Computer System in October 2003:
18 the rollover process has not changed, although the process of allocating
customers to sales consultants has become less labour intensive as a result of
the use of electronic contracts;
22 the receipt and processing of service orders occurs in substantially the
same way as that which applied even before the introduction of the Genesis
Computer System, although the mechanisms for filtering service orders have
become more sophisticated and enabled Sensis to choose how to filter service
orders using tables, without requesting amendments that needed to be
programmed into the software;
16 the role of a sales consultant in obtaining and verifying customer
information, and making recommendations about the form of listings is the
same, although aspects of the process have become more streamlined and the
range of advertising options available to the customer has increased;
12 the checking of listing information before and after it is entered into the
database is largely the same, although the titles of roles have changed and new
roles to perform this function have been introduced;
6 the entry and updating of listing information in the database has remained
largely unchanged, although the names of the groups responsible for the entry
of data have varied; and
4 the publication process has remained relatively unchanged, although since
the introduction of the Genesis Computer System it has become a fully
electronic process and additional tools have been developed to enable
members of the publishing team to identify errors in the content or appearance
of listings in the directories. Mr Cooper indicated that under CONDOR and
IDS, he would go through the same processes to produce the Book Extract and
galley file, and that he considered the Genesis Computer System to be no
more or less automated than the CONDOR / IDS system. Mr Vormwald gave
evidence to similar effect.
1 Further, the same essential activities were undertaken prior to the implementation
of the Genesis Computer System, albeit with separate computer systems. The
principal difference between the Genesis Computer System and the system it replaced
is that it stores listing information in relation to both WPD and YPD customers,
enabling a single operation and format and operators of the system to have an
integrated view of a Sensis customer.
1 To the extent there have been changes in the production process, they have
primarily been directed toward removing labour-intensive elements of the process,
making it more efficient and flexible, and eliminating the scope for human error.
1 The Rules which are applied by Sensis personnel throughout the production of the
directories have also remained largely unchanged. The 1999 version of the Rules
required substantially the same considerations to be applied to the entry, content and
appearance of listings.
VI ANALYSIS
1 In light of the relevant principles (see [7]-[30] above), the conclusions previously
stated (see [31]-[46], [87], [162]-[166], [169] and [171]-[173] above) and the
production process of each of the Works (see [174]ff), it is now necessary to follow
the steps outlined at [28] above.
1. IDENTITY OF THE WORK
1 The Works were identified: see [1] above. The alleged copyright was identified
the Applicants submitted that each Work was an original literary work comprised of
the listings, enhancement of listings and arrangement of listings (in the case of the
WPDs) and the listings, headings, enhancement of listings and arrangement of listings
under headings (in the case of the YPDs) (see [3] above).
1 The Works did not include any reference to the elements of the introductory
pages, such as the Government index, prior to the listings part of the directories.
2. AUTHORSHIP
1 The issue is whether the Applicants, on the basis of joint authorship in the
directories, have been able to identify the joint authors. This is essential for copyright
to subsist in the Works. Manifestly, they have not. Evidence as to the identity of the
so-called authors was approached in a number of ways. Firstly, the Applicants filed a
list of authors of the Sample Directories. That list was deficient for the reasons
outlined at Part D(1) above.
1 Secondly, although the Applicants tendered 91 affidavits from individuals who
were said to be authors of one or more of the Works, the affidavits did not cover the
range of people who would have made a contribution to the Works or cover the entire
period the subject of the claim. Moreover, some of the 91 individuals had a limited
(or non-existent) role in contributing to the Sample Directories and of those who did
contribute, the nature of the contribution was certainly not of a nature to be described
as independent intellectual effort or sufficient effort of a literary nature.
1 Moreover, these affidavits made clear that there are substantial parts of the
directories that do not have human authors (for example, many of the service order
listings see [129] above), are automated to the extent that human involvement is
minor (for example, see the evidence of Ms Speranza at [135] and of the Publishing
Co-ordinators at [153]), or have authors who cannot be ascertained (for example,
much of the rollover component of the directories see [175]-[176] above). There
were many more examples.
1 Thirdly, there are many individuals who might be considered joint authors who
were not Sensis employees, who were not identified and who were not joined as
parties to the proceeding (see Part D above).
1 Finally, serious questions arise as to whether it is appropriate to refer to the gamut
of individuals said to be authors of these Works as joint authors. The evidence
demonstrated time and again that many of the staff perform their function separately
from and often oblivious to the function of others (see for example the discussion of
the role of Validators at [136] above and the summary of the evidence of Ms Walsh at
[141]). There is therefore a real question over whether there was the requisite level of
collaboration between those workers to be considered joint authors: see s 10(1) of
theCopyright Act . However, given the simple and undeniable fact that the
Applicants have failed to prove the identity of the authors who contributed to the
Works, it is unnecessary to consider this matter further.
1 Even if the authors of the Works could be identified with sufficient clarity and
certainty (and they cannot), the people suggested to be the authors of the Works did
not exercise independent intellectual effort and / or sufficient effort of a literary
nature. A majority of the creation process of the WPD and the YPD was heavily
automated. Human intervention was regulated and controlled according to either the
various computer systems in place including the Rules (see Part V Sections B and C
above). Further, the contribution of the people suggested to be authors of the Works
was anterior to the work taking its material form. Very few people had any part to
play in the final presentation of the Works or the particular form of expression of the
information. Those people, again, could not have been said to have exercised
independent intellectual effort and / or sufficient effort of a literary nature: see
[20(3)] above.
3. FIRST PUBLICATION OF WORK
1 The Applicants submitted that the Works were first published in Australia. This
submission was not the subject of argument and there are no reasons to doubt that the
requirement in s 32(2)(c) of theCopyright Act has been met.
4. ORIGINALITY
1 None of the Works were original. None of the people said to be authors of the
Works exercised independent intellectual effort or sufficient effort of a literary
nature in creating the Works. Further, if necessary, the creation of the Works did not
involve some creative spark or the exercise of the requisite skill and judgment. I
accept that production of the directories is a large enterprise populated by many
contributors (ignoring for the moment the determinative difficulties with authorship
outlined above). Many of the witnesses gave evidence that was direct and appropriate,
and I accept that they work hard in their respective capacities.
1 However, these facts are not relevant to the Applicants claim and, as explained at
[20(6)] above, substantial labour and expense is not alone sufficient to establish
originality. The evidence established that the system by which the directories are
produced is designed to limit originality, not provide for it. Where it can be
automated, it has been. Where it cannot, Sensis workers are required to act
consistently with the Rules and all work is subject to a multiplicity of checks to
ensure that consistency. The weight of the evidence demonstrated that the tasks
performed by individuals applying the Rules were mechanical in nature and often
were able to be completed in large numbers swiftly. The Rules are followed and
applied. Moreover, the Rules themselves are not complicated. It would be hard to
conceive of how many of the Rules could be otherwise constructed given that the
purpose of the directories is to (a) enable someone to find a listing and (b) to allow
customers to enhance their listing if so desired. Above all, the Rules are fashioned to
allow for ease of reference and to make accommodations for customers who are
willing to enhance their listings. The Rules reflect the underlying commercial context
of the directories: see IceTV [2009] HCA 14 ; 254 ALR 386 at [51].
1 Consistent with that conclusion, the Applicants could not point to which work by
a given individual was to be considered relevant in establishing originality. The work
of many of these individuals that was said to constitute the relevant effort was
ancillary to or divorced from the production of the directories in their material form,
or was not directed to the directories in suit. For example, Ms Galizia was described
as a significant witness by the Applicants. I reject that characterisation. Ms Galizia
admitted that she made no direct contribution to the Sample Directories. Many of the
Rules that she oversaw had been in place for a significant period of time prior to her
starting in her role. What contribution to the Rules she made was limited. How she
and her team oversaw the application of the Rules was vague and, again, it was by no
means clear how that work contributed to the directories the subject of the claim. Ms
Galizia was not alone in her predicament. Evidence of Account Executives, CVSs,
ADSs, Programmers, Editors, Paginators and a host of other roles was amassed to
provide evidence of originality by attrition.
1 It is not sufficient to demonstrate the subsistence of copyright by asserting that
someone (and I do not accept that such a person has been found in this matter), who
may in certain broad circumstances, in an unspecified number of relevant instances,
have done an act that constitutes some unknown contribution to a work in question
no matter how unimpressive will be enough to make good the Applicants claim.
1 Authorship and originality are correlatives. The question of whether copyright
subsists is concerned with the particular form of expression of the work. You must
identify authors, and those authors must direct their contribution (assessed as either
an independent intellectual effort of a sufficient effort of a literary nature) to the
particular form of expression of the work. Start with the work. Find its authors. They
must have done something, howsoever defined, that can be considered original. The
Applicants have failed to satisfy these conditions. Whether originality be the product
of some independent intellectual effort and / or the exercise of sufficient effort of a
literary nature, or involve a creative spark or the exercise of skill and judgment,
it is not evident in the claim made by the Applicants.
VII THE PRE-GENESIS DIRECTORIES
1 The changes to the system by which the directories have been produced over the
period of the claim are outlined at [326] to [329] above. The findings I have made at
[333] to [344] relate to the period during which the Genesis Computer System has
operated. However, as noted earlier, a number of the Works in suit pre-date the
Genesis Computer System.
1 The position regarding the subsistence of copyright in the directories created prior
to the introduction of the Genesis Computer System is no different. Much of the
process was the same and all that the Genesis Computer System did was streamline
that process (see [328] above). Ultimately, it must be recalled that the Applicants
evidence was directed in most part to the Sample Directories and the findings in these
reasons for decision reflect that fact.
VIII CONCLUSION
1 For those reasons, I do not consider that copyright subsists in any of the WPDs
listed in Annexure A or any of the YPDs listed in Annexure B. I will direct the parties
to bring in a proposed minute of orders to give effect to these reasons for decision by
4:00pm on 12 February 2010.
I certify that the preceding three
hundred and forty-seven (347)
numbered paragraphs are a true copy