It’s Not Me, It’s You … It’s The Way You Say It! - Nine Loses Trademark Infringement Case To IceTV

After waging a three year battle which ended up in the High Court of Australia, Nine has been left out in the cold in relation to what it thought was its intellectual property.

Nine lost its case against IceTV, claiming IceTV took the time and title information in Nine's weekly programming schedules and improperly used it in its subscription-based electronic programme guide, IceGuide.  With this decision the High Court has limited copyright protection afforded to compilers and publishers of factual compilations.  Copyright, the Court said, protects the form or expression of factual information and not the factual information itself.  It's the quality and not the quantity that matters.

Ice, Ice baby ... IceTV Is Back With A Brand New Invention

IceGuide, when downloaded, displays details of television shows scheduled to be broadcast by free-to-air television stations for a one week period.  When used with a digital video recorder, the IceGuide allows viewers to record television shows and skip through, or fast-forward, the television commercials.

Nine broadcasts television shows for our viewing pleasure.  To help us know when our favourite shows are on TV, Nine compiles a weekly schedule of the shows it will broadcast.  Nine's weekly schedule contains details of the time and title of the shows to be broadcast.  

Nine's weekly schedule is then provided to Aggregators.  The Aggregators compile an Aggregated Guide which also includes the weekly schedule of all the free-to-air television networks.  The Aggregated Guides are then distributed to media, such as newspapers, so that viewers can be sure they get home in time to watch their favourite show - Underbelly!

In preparing the IceGuide, IceTV's uses information they have compiled from the previous week's IceGuide as well as information in the Aggregated Guides.  Where there is a discrepancy as to the time and title information of a television show, the IceGuide is changed to match the Aggregated Guides.

If There Is A Problem, I'll Solve It

In 2006, Nine sued IceTV for breach of copyright.  Nine argued that because they compiled the weekly schedules, they owned them and had copyright in them.  Initially, Nine lost, but then won on appeal to the Full Federal Court.  IceTV then appealed to the High Court. 

The High Court decided that the taking of the time and title information from Nine's weekly schedule did not breach Nine's copyright.

In order for IceTV to have breached Nine's copyright in the weekly schedules, Nine would have to show that IceTV had taken a 'substantial' part of the weekly schedule and used it in the IceGuide.  This idea of 'substantiality' depends upon the quality and not quantity of the part of the weekly schedule that was taken by IceTV. 

In assessing the quality of the weekly schedules, the Court looked to the degree of originality or creativity that went into creating them.  Originality, in this case, the Court held, could only be measured against the 'skill and labour' expended by Nine's employees in compiling the weekly schedules. 

The Court said that while the form of Nine's weekly schedules was original, the information contained in them was not.  As IceTV had not reproduced the form of the weekly schedules, only the facts, IceTV was held not to have infringed Nine's copyright.

Implications

For Ice TV, the decision means that it can continue to provide the IceGuide to its subscribers without permission from Nine.

For viewers and subscribers, it means the IceGuide can be used to check when favourite shows are playing, record them and even fast-forward (well, let's be honest, skip) the pesky ads.

And for those who compile and publish compilations of factual material, the Court's decision means compilers and publishers of factual compilations may be more at risk of the compilation being used without their permission.  Courts will, of course, look at each claim of infringement of copyright on a case-by-case basis, but this case shows that compilers and publishers will need to show a high degree of skill and labour in the preparation of factual compilation in order to be afforded copyright protection.

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