New case prints the test for copyright in compilations…

A recent dispute between two printer cartridge suppliers has provided greater certainty in the law regarding the copyright protection afforded to compilations and has also provided clarity regarding country of origin claims made in trade or commerce.
The Federal Court recently handed down its decision in the matter of Dynamix Supples Pty Ltd v Tonnex International Pty Ltd [2011] FCA 362, finding that Tonnex had both infringed the copyright owned by Dynamix and had also breached provisions of the Trade Practices Act (now the Australian Consumer Law).  This case involved a searchable compatibility chart that was developed by an employee of Dynamix for use by Dynamix’s potential customers to search for printer cartridges on the Dynamix website.  Dynamix claimed that Tonnex had substantially reproduced the compatibility chart and used it on its own website; in addition, Tonnex claimed on its website, among other things, that “…because you are buying genuine Australian products, free from counterfeit, you are protecting Australian jobs”.
Copyright infringement claim
The copyright infringement claim turned on two points:

  • whether the compatibility chart was an “original literary work”; and
  • whether Tonnex had substantially reproduced the compatibility chart.

In regard to the first question, there was no dispute over whether the chart was a literary work as defined in the Copyright Act, however, Tonnex claimed that the chart was not “original” as it was merely a reproduction of a similar compilation that was used by Dynamix internally and that there was no originality in the general layout of the chart.  Yates J disagreed with Tonnex and found that the chart was original on the basis that:

  • the selection of the material for inclusion in the chart required consideration of the requirements of a consumer audience rather than the existing chart which was designed for internal use within Dynamix;
  • the general expression of the information within the chart expressed an understanding of the use that the chart would be for consumers and great effort was made to present the chart in a simple manner.  Yates J stated that “simplicity itself may be a virtue which need not negate originality”; and
  • the arrangement of the information into columns was unusual and demonstrated intellectual effort.

The Court found that a finding of originality for a compilation “is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation”.  Once originality was established, the Court easily applied the remaining tests for whether copyright exists in a compilation as expressed by the High Court in the Ice TV case and found that copyright existed in the chart.
Once it was determined that copyright subsisted in the chart, it was clear that Tonnex has infringed the chart as there was substantial objective similarity between the Dynamix and Tonnex charts, including common idiosyncratic typographical errors and similar formatting conventions.
This part of the case provides further clarity and definition regarding the High Court’s test espoused in Ice TV regarding the subsistence of copyright in a compilation.
Misleading and deceptive conduct claim
Tonnex also state on their website that “…because you are buying genuine Australian products, free from counterfeit, you are protecting Australian jobs”.  The Court found that this statement would be understood by a substantial number of people as implying that the products were made in Australia.  This was inaccurate.  On this basis, Yates J concluded that the statements on the website were misleading and deceptive, falsely represented that the goods were of a certain standard and falsely represented that the goods originated in Australia, all in contravention of the Trade Practices Act (now the Australian Consumer Law).
This emphasises the great care that must be exericised when making statements regarding the country of origin of products and more particularly, in choosing the wording for such statements.

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