Anne Fitzgerald and Tim Seipenspinner
Computer generated materials are ubiquitous and we encounter them on a daily basis, even though most people are unaware that this is the case. Blockbuster movies, television weather reports and telephone directories all include material that is produced by utilising computer technologies. Copyright protection for materials generated by a programmed computer was considered by the Federal Court and Full Court of the Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd 1. The court held that the White and Yellow pages telephone directories produced by Telstra and its subsidiary, Sensis, were not protected by copyright because they were computer-generated works which lacked the requisite human authorship.
The Copyright Act 1968 (Cth) does not contain specific provisions on the subsistence of copyright in computer-generated materials. Although the issue of copyright protection for computer-generated materials has been examined in Australia on two separate occasions by independently-constituted Copyright Law Review Committees over a period of 10 years (1988 to 1998), the Committees' recommendations for legislative clarification by the enactment of specific amendments to the Copyright Act have not yet been implemented and the legal position remains unclear. In the light of the decision of the Full Federal Court in Telstra v Phone Directories it is timely to consider whether specific provisions should be enacted to clarify the position of computer-generated works under copyright law and, in particular, whether the requirement of human authorship for original works protected under Part III of the Copyright Act should now be reconceptualised to align with the realities of how copyright materials are created in the digital era.
Much of the content we encounter on a daily basis is produced by computerised processes and there is little or no human input into the completed work. For these computer-generated materials, the programmed computer is not merely a tool used by the author to assist in producing the work but, rather, the work is created by the computer, without any significant expenditure of human skill or effort. Familiar examples of computer-generated materials include animated images created by movie studios for cartoons and special effects; computer software produced by generator software; crosswords produced by a computer using a random generator; weather maps generated with data obtained from weather balloons, satellites and monitoring stations; share price lists produced from automatic data
transmissions from stock markets; 3D landscapes and environments used for simulations; and synthesised music.
The issue of copyright protection for computer-generated materials has arisen in recent cases 2 and was directly at issue in Telstra Corporation Limited v Phone Directories Company Pty Ltd 3 ('Telstra v Phone Directories') which dealt with the subsistence of copyright in the White and Yellow pages telephone directories published by Telstra and its subsidiary, Sensis. At first instance 4 and on appeal to the Full Court of the Federal Court 5, it was held that the directories, consisting of telephone subscriber listings produced by 'an automated computerised process' 6, were not protected by copyright because they were computer-generated works lacking the requisite human authorship.
During the last 20 years, as computer technologies have become increasingly sophisticated and widely used, so too has the economic significance of the materials produced with computers grown 7. Computer-generated compilations of the kind considered in Telstra v Phone Directories are increasingly commonplace, examples being 'internet compilations such as car sale sites, real estate sites, job search sites, and so forth' 8. However, the reasoning in the Telstra v Phone Directories decisions would see not only such compilations but also a much more extensive range of creative and informational content relegated outside the scope of copyright. The increasing prevalence and economic importance of computer-generated materials means that the question of how copyright applies to such materials, the concept of authorship in relation to materials whose production involves a programmed computer and the appropriate scope of copyright are issues that need to be re-addressed in light of the realities of the forms and modes of production of content in the digital age.
For copyright to subsist in a work that falls within the categories described in Part III of the Copyright Act 1968 (Cth) (the Act) – literary, dramatic, musical and artistic works – the work must be original 9. The concept of originality has long been regarded as closely correlated with the notion of authorship 10, which is central to the statutory protection conferred under the Copyright Act 11. However, as neither 'original' nor 'author' 12is defined in the Act, the meaning of the terms is found in judicial decisions.
Classic explanations of originality make it clear that an original work is one that has originated from or been brought into existence by an author or authors and has not been copied from a previously existing work 13. 'Author' is used in the sense of 'the person who brings the copyright work into existence in its material form' 14. Or, simply stated, 'original works emanate from authors' 15. To attract copyright, the work need not express original or inventive ideas, as explained in Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171 at 182; [1986] HCA 19 at [11] by Gibbs CJ who quoted with approval Peterson J's statement in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608–9:
The originality which is required relates to the expression of thought. But the [Copyright Act] does not require that the expression must be in an original or novel form, but that the work must not be copied from another work – that it should originate from the author.
The centrality of authorship is supported by provisions in Part III of the Copyright Act 1968 that connect the subsistence of copyright in original literary, dramatic, musical and artistic works to an author who is a natural (human) person 16. Section 32 provides that copyright subsists in an original Part III work if the author was a 'qualified person' at the time the work was made (in the case of unpublished works) 17 or first published (in the case of published
works) 18. For the purposes of Part III, a 'qualified person' is an Australian citizen or a person resident in Australia 19. Further, duration of copyright in Part III works is calculated by reference to the year in which the author of the work dies 20.
However, the existence of a human author is not a requirement for copyright protection of 'other subject matter' under Part IV of the Copyright Act 21. In the case of a sound recording or cinematograph film, reference is made to the 'maker', which must be a qualified person at the time the recording or film is made 22. For Part IV subject matter, 'qualified person' is given a broader meaning than for Part III works 23, encompassing Australian corporations as well as Australian citizens and other legal persons 24 resident in Australia 25. In the case of sound and television broadcasts, the originality requirement does not apply as copyright subsists by reference to the broadcaster's output rather than by reference to originality; copyright subsists as soon as the broadcast is made in Australia by a licensed broadcaster 26.
Traditional notions of authorship are premised on the creation of works by an individual author or by two or more persons who collaboratively produce a jointly authored work in which the contribution of each author is not separable from that of the others 27. However, long-standing concepts of authorship are challenged by advances in computer technology which mean that many works are now produced as a result of separate contributions by numerous individuals and their creation involves the use of computers, computer programs and equipment such as scanners and digital cameras 28. In conceptualising authorship of works produced with computers much of the discussion has centred around the difference between works created with the use of a computer ('computer-aided' or 'computer-assisted' works) and works created by a computer ('computer-generated' works). Although some
works will be readily able to be categorised as either works of human authorship or as having 'no human author' 29, often the demarcation will not be so easily drawn.
In the case of computer-aided works, the work is produced by a human author using a programmed computer as a tool that facilitates or assists the creation of the work. An example is a literary work (such as a letter or a book) which is created by an author with the use of a computer running word processor software such as Microsoft Word or Open Office. In this instance, it is clear that the text originates from the human author who creates the written document by entering it into the word processing program on the computer. Here, the computer is a convenient tool used by the author to create the digital or hard copy expression of the literary work, analogous to the use of a pen or a typewriter to write a letter, a brush to paint a portrait and a camera to take a photograph 30. A familiar example is the use of computer-aided design (CAD) programs by architects to draft and draw building plans. Although CAD computer programs contain predesigned elements (squares, rectangles, etc.), the building plan is created by the human author who selects and arranges the standardised elements to give expression to his ideas. Here, the computer is simply a tool that aids, assists and supports the draftsman in creating the plan.
In the case of computer-generated works, the work is produced by a computer in circumstances such that it cannot be said that there is a human author of the work. Such works may be produced in circumstances where there is no, or minimal, human contribution or where 'the human contribution was merged with the contribution by the computer into a whole work in a way that it is impossible to determine the authorship in relation to those contributions' 31. The Copyright Law Review Committee has explained the creation of computer-generated works by reference to satellite images of weather patterns, vegetation and geological formations:
In many cases the data that makes up these images is collected automatically by remote sensors on satellites. The information is automatically processed by specialised computer programs and the final image down loaded or printed out in hard copy form either automatically or at the press of a button 32.
An intermediate category has also been identified, consisting of works created as a result of the contributions of the person using the programmed computer, the developer of the computer program and the person who created any database that the program uses. Works
in this category include specialist, professional software and music produced with a music synthesiser. The human contribution may be relatively insignificant when compared to the contribution by the computer, such as where a person sets the note parameters for a musical composition computer which then independently composes an opus of several hours duration.
The issue of authorship of works produced with computers was raised by the United States Register of Copyrights as long ago as 1965, after the first applications for copyright registration were received for a computer-generated musical composition and for an abstract drawing and various compilations that were 'at least partly [the] "work" of computers' 33. Observing that both the number of works produced by computer and the difficulties relating to authorship would increase as computer technology developed and became more sophisticated, the Register commented:
The crucial question appears to be whether the 'work' is basically one of human authorship, with the computer merely being an assisting instrument, or whether the traditional elements of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by man but by a machine 34.
The issue arose again in copyright law reviews in the United Kingdom 35 and the United States 36 in the 1970s and was later considered by the European Commission 37 and the World Intellectual Property Organisation (WIPO) 38.
The Copyright Act 1968 does not contain any specific provisions addressing the effect of the use of computerised or digital technologies in creating materials that fall within the scope of protected works and other subject matter described in Parts III and IV of the Act. In particular, the Copyright Act is silent on whether Part III works produced by such means can be considered to satisfy the requirement that copyright works must be original works emanating from an author.
In practice, the absence of specific legislative provisions has not prevented the courts from finding that copyright subsists in Part III works and Part IV subject matter produced with computer technologies 39. In Sega Enterprises Ltd v Galaxy Electronics Pty Ltd 40, the arcade video games 'Virtua Cop' and 'Daytona USA', which displayed computer-generated images, were held to be cinematograph films protected by copyright. The images displayed on the screen when the game was played were not pre-existing images but were produced by real-time computer graphics, being synthesised 'on the fly' by the controlling computer program. The images were generated through the interaction of a game player's responses and the computer program which used the mathematical coordinates of models of objects, together with animation and texture mapping data to create images on the screen.
In Data Access Corporation v Powerflex Services Pty Ltd 41 the High Court held that a compression table in the plaintiff's Dataflex computer program, which had been produced with another computer program written by the plaintiff, was an original literary work protected by copyright. To create the Dataflex Huffman compression table, the plaintiff had first written a program that applied the Huffman algorithm 42 to a database file (SERIAL.DAT) which provided a representative sample of data for standard compressions. The High Court had little hesitation in holding that the Dataflex Huffman compression table was an original literary work produced by an author, observing:
The skill and judgment employed by Dataflex was perhaps more directed to writing the program setting out the Huffman algorithm and applying this program to a representative sample of data than to composing the bit strings in the Huffman table. Nevertheless, the standard Dataflex Huffman table emanates from Dataflex as a result of substantial skill and judgment. That being so ... the standard Dataflex Huffman table constituted an original literary work 43.
The United Kingdom was the first jurisdiction to introduce provisions addressing authorship and the subsistence of copyright in computer-generated works, which were included in the Copyright, Designs and Patents Act 1988 (UK) (CDPA). 44 Various reasons for enacting specific provisions emerge from the consultations and reviews that preceded the CDPA. 45 These include an acknowledgement of the reality that computer technology was being used to create materials of the kind protected by copyright 46 and that the law should provide flexibility for future technological developments, 47 the objective of future-proofing copyright law in the face of rapid changes in technology, and the need to make the law easier to understand and apply 48.
The CDPA makes it clear that computer programs may be used to generate literary, dramatic, musical and artistic works that will attract copyright protection and establishes the principle that the person who creates the work will be regarded as its author. A 'computer-generated' work is defined as one 'generated by computer in circumstances such that there is no human author of the work' 49. Section 9(3) of the CDPA provides that '[i]n the case of a literary, dramatic, musical or artistic work which is computer-generated, the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken'. Copyright in computer-generated works expires after 50 years from the end of the calendar year in which the work was made 50.
The effect of the CDPA provisions is that where a literary, dramatic, musical or artistic work is computer-generated, it may attract copyright protection because authorship is attributed to the person who undertook the arrangements necessary for the creation of the work 51. As s 9(3) of the CDPA only applies to works generated by a computer in circumstances where there is no human author, if a work is created by a human author with the use of a computer (a computer-assisted work), it would qualify for copyright protection under the general principles of copyright law provided it is sufficiently original and meets the
other statutory requirements. The CDPA does not demarcate the boundary between works which have 'no human author' and those which do.
The operation of s 9(3) of the CDPA was considered in Nova Productions Ltd v Mazooma Games Ltd 52, a case involving electronic pool games. Individual frames displayed on screen when the game was played were held to be computer-generated artistic works authored by the person who had 'devised the appearance of the various elements of the game and the rules and logic by which each frame is generated and [who] wrote the relevant computer program'. Having undertaken the arrangements necessary for the creation of the computer-generated images, he was deemed to be their author by virtue of s 9(3) of the CDPA 53.
Twenty-five years after the enactment of the CDPA provisions, they can be seen to have been drafted with foresight and an appreciation of the potential impact that emerging technologies would have on copyright. Although they were introduced at the dawn of the era of mass market personal computers and software and pre-date the World Wide Web, they foreshadowed the ensuing digital revolution and the vast increase in 'born digital' copyright materials. To retain the traditional concept of authorship, which required the observable input of a human author, would have restricted the scope of copyright in digital materials by excluding a vast range of imaginative, creative and valuable computer-generated materials from its scope. By re-casting originality to focus on the efforts of the person who made the arrangements for the creation of a computer-generated work, the CDPA provisions adapted the framework of copyright in the United Kingdom to the digital era.
The question of copyright protection for computer-generated works has been considered in Australia by the Copyright Law Review Committee (CLRC) twice, with each inquiry resulting in recommendations for statutory clarification of the issue 54. The copyright status of works produced with computers was first considered by the CLRC in the Computer Software Protection inquiry 55, from 1988 to 1994, and was again examined during the Simplification of the Copyright Act inquiry (Simplification reference) from 1995 to 1999 56. In these inquiries
the CLRC considered the CDPA provisions several years after they were introduced into the United Kingdom legislation 57 and made recommendations for the treatment of computer-generated materials under the Copyright Act.
In the Computer Software Protection report (1995) 58, the CLRC proposed that a distinction should be drawn between 'materials created with the assistance of computer programs and those created by computer programs in circumstances where there is no identifiable human author (so called "computer-generated works")' 59. Taking into account views expressed in the UK's Whitford Committee Report (1977) 60 and the European Community's Green Paper on Copyright and the Challenge of Technology – Copyright Issues Requiring Immediate Action (1988) 61, the CLRC concluded that copyright protection for works created with the assistance of a computer should be determined on the basis of the same principles as applied to works created by traditional means. When a computer is used to assist the creation of a work, it is merely a tool used by a human author and the usual rules of copyright law apply 62. The author of such a work must be a natural person 63.
The Committee then turned to the issue of computer-generated works. In its Draft Report on Computer Software Protection,64 the CLRC had considered ss 9(3) and 178 of the CDPA. The Committee formed the view that these provisions 'adequately meet the need to define the subject matter for protection and the author of that subject matter' and recommended in its Draft Report that provisions in similar terms should be inserted into the Copyright Act. However, this proposal was not supported by a number of the submissions received in response to the CLRC's draft recommendations. Notably, the Australian Copyright Council (ACC) opposed the view that there need not be a human author and rejected the CLRC's draft recommendation that computer-generated works with no identifiable human author could be protected as works under the Copyright Act.65 Instead, the ACC proposed that the scope of copyright protection available under Part III of the Act should be restricted to works created by human authors and that computer-generated materials should be afforded
protection only as subject matter under Part IV of the Act, and subject to a lesser bundle of exclusive rights (akin to neighbouring rights) than those granted to Part III works.
The CLRC accepted the ACC's reasoning, regarding this approach as being consistent with the Berne Convention for the Protection of Literary and Artistic Works 66. Consequently, the CLRC revised its draft recommendations and, in its Final Report, recommended that the Copyright Act should be amended to provide that computer-generated material should be protected as a new class of Part IV subject matter, with lesser rights than those accorded to Part III works 67 and a 25-year term of protection 68. It recommended that 'computer-generated material' would be defined as material that 'is generated by computer in circumstances such that there is no human author of the material' 69. In line with s 9(3) of the CDPA, the author of computer-generated material would be taken to be the person who undertook the arrangements necessary for the creation of the material 70.
The CLRC's recommendations in the Computer Software Protection inquiry were not implemented and the question of copyright in computer-generated materials was considered again by the reconstituted CLRC which embarked on the Simplification reference in 1995 71. Submissions received by the CLRC during the Simplification reference supported the CLRC's conclusions in the Computer Software Protection report 72, arguing that, as it is difficult to identify a human author of computer-generated materials, they lack the originality required for Part III works and should be protected as a separate category of Part IV subject matter. Other submissions argued that computer-generated material should not be protected by copyright at all, but should be afforded sui generis rights similar to those granted for databases under the European Community's Database Directive 73.
In Simplification of the Copyright Act 1968: Part 2 – Categorisation of Subject Matter and Exclusive Rights, and Other Issues (1999) (Simplification of the Copyright Act Report (Part 2)), the CLRC observed that, in practice, the courts have had little hesitation in drawing an analogy between the use of computers to create copyright materials and the less sophisticated tools (for example, a pen or brush) historically used by creators in order to hold that copyright subsists in computer-generated or computer-assisted materials 74. However, the CLRC was concerned that continued use of the analogy might not be sensible or feasible in the future and that, if
the analogy broke down, materials created by computer would receive a lesser level of protection than works created by human authors 75. While accepting that it will continue to be necessary to connect copyright material to a human, the CLRC was of the view that the level of protection should not depend on the 'tool technology' used to create the material. Acknowledging that computers would play an evolving – albeit unpredictable – role in the creation of certain types of copyright material, the majority of the Committee expressed its concern:
that in the future it might not be sensible or even possible to continue the courts' current approach of analogising computers with the historical tools of authors. If the analogy were to break down, computer-created material will not receive the higher level of protection even though that material reflects significant intellectual effort by the person who undertakes its creation. That is an outcome that differentiates between creators on the basis of the tools used by them, and discriminates against those using the most advanced (i.e. computer-based) tools. It would result, for example, in a lower level of protection being given to a 'techno-artist' using computer media compared with a traditional artist using traditional media.76
The CLRC favoured reconceptualising the connection between a human and the copyright material as one of 'undertaking the creation or production of the copyright material' instead of one of 'authoring' the work. Under this approach, the focus would shift from the issue of whether use of the computer can be analogised with the use of a traditional tool, to the 'more germane issue of which human should be the one identified as sufficiently associated with the creation or production of the material for the purpose of the innovation threshold'77. The CLRC considered that it would be desirable to extend the concept of undertaking the creation or production of material to all copyright materials 78 with the result that the innovation threshold for all protected materials would be related to the efforts of the (human) person who undertook the creation or production of the material 79. The CLRC's recommendation has some similarity to s 9(3) of the CDPA 80 but differs in that the identification of the person 'who undertakes the creation or production of' copyright material would apply to all copyright materials, not only to computer-generated works.
Whereas in the earlier Computer Software Protection report 81 the CLRC continued to emphasise the connection between a copyright work and a human author, such that computer generated materials would be afforded a lesser level of protection as a new category of subject matter in Part IV of the Act, in the Simplification of the Copyright Act Report (Part 2), the CLRC took the view that there should be no distinction between computer-assisted and computer-generated materials. The widespread use of computers in the creation of copyright materials and the diverse ways they are used to create materials means that an
approach based on distinguishing between computer-assisted and computer-generated materials would be difficult to understand and to apply in practice. In any case, the CLRC's recommendation that the concept of authorship should be replaced by reference to the person who undertook the creation or production of the material makes such a distinction superfluous as both categories would be treated equally 82. Adoption of the CLRC's recommendations in the Simplification of the Copyright Act Report (Part 2) would see computer-generated literary, dramatic, musical and artistic works protected under Part III of the Copyright Act in the same way as human-authored works, and afforded the same bundle of exclusive rights and term of protection.
In Telstra v Phone Directories 83, the question was whether copyright subsisted in the white pages directories (WPDs) and yellow pages directories (YDSs) for 11 regional areas published by Telstra and its subsidiary, Sensis, during the period 2000 to 2009. Each WPD and YPD listed the names, addresses, telephone numbers and other information relating to residential and business telephone subscribers for a particular geographic area. The information was collected and maintained by Telstra and the directories were published by Sensis.
In an earlier case also involving Telstra's WPDs and YPDs, Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd 84(Desktop Marketing), the Full Court of the Federal Court had held that the directories were protected by copyright as original literary works. However, Desktop Marketing did not directly raise the issue of authorship and subsequent comments by the High Court in IceTV Pty Ltd v Nine Network Australia Pty Ltd 85 warned that the decision needed to be treated with caution 86. The facts on which Telstra v Phone Directories was based differed in some important respects from those in Desktop Marketing: the WPDs and YPDs differed from those in the previous case and they had been produced by a different process.
Preparatory work on compilation of the WPDs and YPDs considered in Telstra v Phone Directories had been carried out by numerous individuals in Sensis's Directory Solutions Group, some of whom were identified and others whose identity was unknown. The directories were compiled by an automated computerised process, utilising the Genesis Computer System (Genesis), which stored a relational database. Subscribers' listing information was obtained from a variety of sources and, for the most part, was entered automatically into the Genesis database, although in about 15% of cases it was entered manually. In producing WPDs and YPDs from late 2003, after the listing information was entered into the database, the Genesis program checked the information for completeness and accuracy and applied the Rules (relating to fonts, colour schemes, spacing of words and
entries, prohibited words or phrases) to generate the directories. Apart from the input of data, the directories were essentially produced by the Genesis program 87.
Telstra claimed that each of its WPDs and YPDs were original literary works which were protected under the Copyright Act as compilations of the expression of information in individual listings, the enhancement of listings and the overall arrangement of individual listings to form the whole 88.
At first instance, Gordon J emphasised the 'centrality of authorship' to the subsistence of copyright 89, rejecting Telstra's submission that to establish that copyright subsists, all that is necessary is to identify the work and show that some intellectual effort has been expended in producing it 90. In Gordon J's view, Telstra's suggested approach 'puts the cart before the horse ... [and] ignores the fact that it is the original work of an author or authors who contribute to the particular form of expression of the work and reduce the work to a material form that is the act giving rise to the statutory protection of copyright' 91.
Gordon J held that copyright did not subsist in Telstra's WPDs and YPDs because they could not be regarded as original literary works. Much of the contribution to the directories did not amount to 'independent intellectual effort', nor did it constitute 'sufficient effort of a literary nature' for those making the contribution to be considered as authors of the work; it was computer-generated rather than the result of human authorship 92. The process of creating the directories was heavily automated, such that there was only minor human involvement in producing substantial parts of them. Human intervention was regulated and controlled by the various computer systems in place, including the Rules 93.
Having concluded that Telstra's directories were not protected by copyright, Gordon J drew attention to the existence of sui generis protection in Europe for databases that do not meet the originality requirements under copyright law 94. Her Honour observed that the lack of protection for such works in Australia 'is a matter for Parliament and, in my view, a matter which they should address without delay' 95.
In Telstra Corporation Ltd v Phone Directories Company Pty Ltd 96, the Full Court of the Federal Court dismissed the appeal and upheld Gordon J's decision 97. The Full Court generally agreed with Gordon J's reasoning that authorship is central to originality, but clarified that identification of each and every author by name is not necessary. Nevertheless, it must be shown that the work in question originated from an individual author or authors who actually existed 98.
Keane CJ reiterated that the focus of attention when considering the subsistence of copyright is not to prevent misappropriation of skill and labour but the protection of literary works which originate from individuals 99, observing that:
the focus of consideration is not upon creativity or novelty, but upon the origin of the work in some intellectual effort of the author 100.
Information about the name and address of a particular telephone subscriber is merely factual in nature and is not created by the person who takes a note of these details from the subscriber 101. The form of the directories did not originate with the individuals who engaged the mechanical processes to produce the compilation 102. As the WPDs and YPDs were 'not compiled by individuals but by the automated processes of the Genesis Computer System', they could not be considered as originating from an individual or group of individuals 103. Keane CJ concluded that copyright could not subsist in the directories because they were produced by a 'computerised process of storing, selecting, ordering and arranging the data to produce the directories in the form in which they were published' 104.
In separate judgments, and based on similar reasoning, Perram and Yates JJ reached the same conclusion as Keane CJ 105. Yates J explained that the selection, ordering and arrangement of the information to produce each compilation in the WPDs and YPDs 'was computer-generated by the Genesis Computer System' and the Genesis system was not a 'mere tool utilised by [Sensis's] employees for this purpose' 106. The activities carried out by the computer were transformative steps that were fundamental to the making of the compilation and caused each compilation to take the form it did. Though they would have
amounted to authorship if carried out by individuals, in this case they were not the activities of an author for copyright purposes 107.
All three judges in the Full Court referred to the specific provisions on computer-generated works in s 9(3) of the CDPA 108 but, other than observing that no corresponding provisions exist in the Copyright Act, the court refrained from any further discussion of the CDPA. Surprisingly, the court made no reference to the Computer Software Protection and Simplification inquiries. Focusing on protection for factual compilations, Keane CJ drew attention to the sui generis rights introduced in the European Union pursuant to the Directive of the European Parliament and Council on the Legal Protection of Databases, commenting that whether any similar legislative reform was warranted in Australia was a matter for Parliament to consider 109.
In an application for leave to appeal to the High Court of Australia in September 2011, Counsel for Telstra and Sensis 110 submitted that the Full Court, in applying the test to identify an original literary work, had narrowed the concept of origination from its accepted meaning. Rather than asking whether the directories were original literary works, the question asked by the Full Court was whether selection and arrangement of the listings was done by individuals or was the product of a computer program. The special leave application was refused 111, no error having been found in the Full Court's decision. During the hearing of the special leave application, Gummow J repeated the suggestion made by Gordon J at first instance and Keane CJ in the Full Federal Court that factual compilations of the kind being considered may need to be protected by 'something like a database directive' 112.
VII: Rebooting the discussion on copyright and computer-generated works
The decision of the Full Federal Court in Telstra v Phone Directories 113 vindicates the concerns expressed by the CLRC that to seek to preserve a rigid adherence to traditional notions of authorship in the face of developments in digital technology and the ever-increasing involvement of computers in the creation of copyright materials would impose 'an unnecessary technological restriction' 114 on the copyright system. This concern was clearly aired in the Simplification of the Copyright Act Report (Part 2), where the CLRC stated that:
the current requirement of 'authorship' may preclude the grant of protection to material that is deserving of protection, simply because of the extent to which a computer was utilised in its creation exceeds a particular (currently uncertain) level. 115
Strictly speaking, Telstra v Phone Directories may be authoritative only in relation to the requirements for copyright subsistence in factual compilations created by an automated, computerised process. However, in the absence of any specific provisions in the Copyright Act relating to copyright in computer-generated works, the decision has much wider-ranging implications as it brings into question the subsistence of copyright not only in computer-generated factual compilations, but in all materials within the categories of works described in Part III of the Act 116 where the work has been created with a computer.
In light of the Telstra v Phone Directories decision, it is timely to reboot the discussion about copyright in computer-generated works, which has largely been in abeyance since the CLRC's Simplification of the Copyright Act Report (Part 2) was released in 1999. The need to address the role of computer technologies in the creation of copyright works and their implications for the concept of authorship in an era in which an increasing amount of content is 'born digital' has long been recognised, as evidenced by the inquiries by lawmakers in the United States and the United Kingdom in the 1970s, the European Commission in the 1980s and WIPO at the beginning of the 1990s. Although the issue of copyright protection for computer-generated materials has been examined in Australia twice, by consecutive, independently-constituted Copyright Law Review Committees over a period of 10 years (1988 to 1998), the Committees' recommendations for the enactment of specific legislative provisions in the Copyright Act have not yet been implemented and the legal position remains unclear.117
Taking into account the predominant economic rights focus of the Anglo-Australian copyright tradition 118 and copyright's primary role of incentivising the production and dissemination of creative and informational works, it must be questioned whether new materials produced using the most advanced and innovative computer technologies should be outside the reach of the copyright system. If copyright law is to continue to play a role in fostering the production of new creative and informational works, it must align with the realities of how materials are created and used in the digital environment 119. From this perspective, the exclusion of computer-generated materials from copyright protection appears arbitrary and is difficult to justify. Not only does it deprive Australian creators of
copyright protection for works that attract copyright protection under the copyright laws of Australia's trading partners, but it discriminates against materials on the basis of their form of expression and the means used to produce them. As the law currently stands, a Part III work produced laboriously (and inefficiently) by a human author will be protected by copyright whereas the identical work created with computer input that exceeds an undefined threshold level will not be considered to have a human author and will not attract copyright. Moreover, anomalies arise as a result of the discrepancy between authorship requirements for Part III and Part IV materials 120; for example, computer-generated still images would be denied copyright protection as artistic works under Part III of the Act, whereas an entire sequence of computer-generated images would attract copyright as Part IV subject matter, within the cinematograph film category 121.
To maintain that the materials in the categories described in Part III of the Copyright Act will only be original works that attract copyright protection if they are created by a human author runs counter to the principle of technology neutrality which has been fundamental to the shaping of copyright law for the digital era. The need to apply legal principles consistently, irrespective of the particular technology involved, has been acknowledged throughout the reviews and revisions of Australian copyright law since the beginning of the 21st century 122. Amendment of the Copyright Act along the lines recommended by the CLRC in 1999 in the Simplification of the Copyright Act Report (Part 2) would implement a technologically neutral approach in the delineation of the range of materials in which copyright may subsist. Replacing the focus on authorship of Part III works – which has been interpreted restrictively as requiring a human author – with a focus on the identification of a human 'as sufficiently associated with the creation or production of the material for the purpose of the innovation threshold' 123 would bring all literary, dramatic, musical and artistic creations within the scope of the Copyright Act, irrespective of the technologies used to produce them.