Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 (8

February 2010)
Last Updated: 10 February 2010
FEDERAL COURT OF AUSTRALIA

Telstra Corporation Limited v Phone Directories Company Pty Ltd

[2010] FCA 44

Citation: Telstra Corporation Limited v Phone Directories Company

Pty Ltd [2010] FCA 44

Parties: TELSTRA CORPORATION LIMITED (ACN 051 775 556)

and SENSIS PTY LTD (ACN 007 423 912) v PHONE
DIRECTORIES COMPANY PTY LTD (ACN 059 776 091),
AUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN
078 856 318), ADAM HARGRAVES, GLENN
HARGRAVES, DANIEL STOTEN and LOCAL
DIRECTORIES PTY LTD (ACN 130 550 971)

File number: VID 276 of 2007

Judge: GORDON J

Date of judgment: 8 February 2010

Catchwords: INTELLECTUAL PROPERTY whether copyright subsists

in White Pages and Yellow Pages directories as original
literary works central concepts under theCopyright Act
1968 (Cth) centrality of authorship whether the
contributions to the directories involved the necessary
independent intellectual effort or sufficient effort of a literary
nature

Words & Phrases: author, independent intellectual effort, original,

sufficient effort of a literary nature

Legislation: Copyright Act 1968 (Cth)

US Free Trade Agreement Implementation Act 2004 (Cth)

Cases cited: Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR
339
Autodesk Inc v Dyason [1992] HCA 2 ; (1992) 173 CLR
330
Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd
(No. 1) [1995] FSR 818
Data Access Corporation v Powerflex Services Pty Ltd[1999]
HCA 49 ; (1999) 202 CLR 1
Desktop Marketing Systems Pty Ltd v Telstra Corporation
Ltd [2002] FCAFC 112 ; (2002) 119 FCR 491
Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637

IceTV Pty Limited v Nine Network Australia Pty

Limited[2009] HCA 14 ; (2009) 254 ALR 386
Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ;
(1992) 39 FCR 348
Hollinrake v Truswell [1894] 3 Ch 420
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964]
1 WLR 273
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty
Limited [2010] FCA 29
Levy v Rutley (1871) LR 6 CP 523
Liftronic Pty Ltd v Unver (2001) 179 ALR 321
Macmillan and Co Ltd v Cooper (1923) 1B IPR 204
Metwally v University of Wollongong (1985) 60 ALR 68
Microsoft Corporation v DHD Distribution Pty Ltd (t/as
Austin Computers) (1999) 45 IPR 459
Microsoft Corporation v PC Club Australia Pty Ltd [2005]
FCA 1522 ; (2005) 148 FCR 310
Milwell Pty Ltd v Olympic Amusements Pty Ltd [1999] FCA
63 ; (1999) 85 FCR 436
Prior v Lansdowne Press Pty Ltd (1975) 12 ALR 685
Robinson v Sands & McDougall Pty Ltd [1916] HCA 51 ;
(1916) 22 CLR 124
Sands & McDougall Pty Ltd v Robinson [1917] HCA 14 ;
(1917) 23 CLR 49
Sawkins v Hyperion Records Ltd (2005) 64 IPR 627
Telstra Corporation Ltd v Desktop Marketing Systems Pty
Ltd [2001] FCA 612 ; (2001) 51 IPR 257
University of London Press Ltd v University Tutorial Press
Ltd [1916] 2 Ch 601
Vawdrey Australia Pty Ltd v Krueger Transport Equipment
Pty Ltd [2009] FCAFC 156 ; (2009) 83 IPR 1
Victoria v Pacific Technologies (Australia) Pty Ltd (No 2)
[2009] FCA 737 ; (2009) 177 FCR 61
Victoria Park Racing and Recreation Grounds Co Ltd v
Taylor [1937] HCA 45 ; (1937) 58 CLR 479
Waterlow Publishers v Rose (1989) 17 IPR 493
William Hill (Football) Ltd v Ladbroke (Football) Ltd [1980]
 RPC 539

Davison, The Legal Protection of Databases, (2003)

Laddie, Prescott and Vitoria, The Modern Law of Copyright
and Designs, (3rd ed, 2000)

Date of hearing: 21-23, 26 and 29 October 2009

Date of last submissions: 9 November 2009

Place: Melbourne

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 347

Counsel for the Applicants: Mr R Macaw QC, Mr A Ryan SC and Mr S Rebikoff

Solicitor for the Applicants: Mallesons Stephen Jaques

Counsel for the Respondents: Mr C Golvan SC and Dr S Ricketson

Solicitor for the Respondents: Middletons

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 276 of 2007
GENERAL DIVISION

BETWEEN: TELSTRA CORPORATION LIMITED (ACN 051 775 556)

First Applicant

SENSIS PTY LTD (ACN 007 423 912)

Second Applicant
AND: PHONE DIRECTORIES COMPANY PTY LTD (ACN 059 776 091)
First Respondent

AUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN 078 856

318)
Second Respondent

ADAM HARGRAVES
Third Respondent
 GLENN HARGRAVES
Fourth Respondent

DANIEL STOTEN
Fifth Respondent

LOCAL DIRECTORIES PTY LTD (ACN 130 550 971)

Sixth Respondent

JUDGE: GORDON J
DATE OF ORDER: 8 FEBRUARY 2010
WHERE MADE: MELBOURNE

THE COURT ORDERS THAT:

1 By 4:00pm on 12 February 2010, the parties are directed to bring in a proposed

minute of consent orders to give effect to these reasons for decision. If the parties are
unable to agree on a proposed minute of consent orders, the proceeding will be listed
for further hearing at 9:30am on 15 February 2010.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Courts website.
INDEX TO REASONS FOR JUDGMENT
CONTENT PARA NOS
I INTRODUCTION [1] [5]
II THE COPYRIGHT ACT - THE PROPER STARTING [6] [30]
POINT
1 The Copyright Act in Context [7] [10]

1 Central Concepts in the Copyright Act [11] [28]

1 International Response to Copyright Protection [29] [30]

of Relational Databases

III APPLICANTS APPROACH TO THE QUESTION OF [31] [45]

SUBSISTENCE REJECTED
IV THE APPLICATION OF DESKTOP MARKETING [46]
V FACTS [47] [54]
A. Overview [55] [59]
B. The Development of Computer Systems [60] [87]
1. Prior to 2001 and 2003 [61] [71]
(a) WPD [62] [66]
(b) YPD [67] [71]
2. Genesis Computer System [72] [81]
3. Supporting Systems [82] [86]
4. Conclusions [87]
C. The Rules [88] [166]
2 Introduction [88] [89]

1 What are the Rules? [90] [92]

1 The Parts of the Rules [93] [118]

(a) The WPD Rules [95] [105]

(b) The YPD Advertising Rules [106] [112]
(c) The Product Standards [113] [118]
4. Creation of the Rules [119] [122]
5. How the Rules are Used [123] [128]
(a) POST and Listing Maintenance [129] [148]
(b) Book Extract and Book Production [149] [161]
6. Conclusions [162] [166]
D. Identity of Authors [167] [173]
1. Sensis Employees [168] [169]
2. Contractors [170] [173]
E. Production of a Particular WPD [174] [268]
1. Existing Listing [175] [211]
(a) Creating the initial listing record [175] [179]
(b) Obtaining updated listing information [180] [192]
(c) Entering the updated information into the database [193] [205]
(d) Checking the updated listing record after entry in the [206] [210]
database
(e) Other amendments to existing listings [211]
2. New Listing [212] [243]
(a) Service orders [213] [227]
(b) Customer contact [228] [237]
(c) Sales contact [238] [242]
(d) Checking the new listing after entry [243]
3. Publication of the WPD [244] [268]
(a) Verification of listing information prior to publication [244] [251]
(b) Extraction and presentation of listings [252] [259]
(c) Verification of listings after extraction [260] [262]
 (d) Typesetting and pagination of the directory [263] [268]
F. Production of a Particular YPD [269] [325]
1. Existing Listing [269] [299]
(a) Creating the initial listing record [269] [273]
(b) Obtaining updated listing information [274] [283]
(c) Entering the updated information into the database [284] [292]
(d) Checking the updated listing record after entry in the [293] [295]
database
(e) Other amendments to existing listings [296] [299]
1 New Listing [300] [306]

(a) Obtaining new listing information and creating a new [300] [305]
listing record
(b) Checking the new listing after entry [306]
3. Publication of the YPD [307] [325]
(a) Verification of listing information prior to publication [307] [310]
(b) Extraction and presentation of listings [311] [317]
(c) Verification of listings after extraction [318] [320]
(d) Typesetting and pagination of the directory [321] [325]
1 Changes in the WPD and YPD Production [326] [329]
Process Over Time

VI ANALYSIS [330] [344]

A. Identity of the Work [331] [332]
B. Authorship [333] [338]
C. First Publication of the Work [339]
D. Originality [340] [344]
VII THE PRE-GENESIS DIRECTORIES [345] [346]
VIII ORDERS [347]
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY VID 276 of 2007
GENERAL DIVISION

BETWEEN: TELSTRA CORPORATION LIMITED (ACN 051 775 556)

First Applicant

SENSIS PTY LTD (ACN 007 423 912)

Second Applicant
AND: PHONE DIRECTORIES COMPANY PTY LTD (ACN 059 776 091)
First Respondent
 AUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN 078 856
318)
Second Respondent

ADAM HARGRAVES
Third Respondent

GLENN HARGRAVES
Fourth Respondent

DANIEL STOTEN
Fifth Respondent

LOCAL DIRECTORIES PTY LTD (ACN 130 550 971)

Sixth Respondent

JUDGE: GORDON J
DATE: 8 FEBRUARY 2010
PLACE: MELBOURNE

REASONS FOR JUDGMENT

I INTRODUCTION
3 The question for determination is whether copyright subsists in the White Pages
(WPDs) and Yellow Pages (YPDs) directories published by the applicants, Telstra
Corporation Limited (ACN 051 775 556) (Telstra) and Sensis Pty Ltd (ACN 007 423
912) (Sensis) (collectively, the Applicants). These proceedings, commenced on 5
April 2007, concern the WPDs listed in Annexure A and the YPDs listed in Annexure
B (collectively, the Works). The first date of publication of each directory is listed in
the Annexures. Publication dates range from 2000 to 2009.
1 Many thought that the issue in these proceedings whether the WPDs and YPDs
published by the Applicants satisfy the requirements of the Copyright Act 1968
(Cth) (the Copyright Act ) to attract the statutory monopoly granted by that Act
might have been resolved by the decision of the High Court in IceTV Pty Limited v
Nine Network Australia Pty Limited [2009] HCA 14 ; (2009) 254 ALR 386
(IceTV). It seems they were mistaken. The Respondents say it was. The Applicants
say it was not.
1 Although a number of the WPDs and YPDs for particular regions published by
the Applicants are bound together (the co-bound volumes), the Applicants contend
that each WPD and each YPD is a separate work. In fact, the Applicants contend that
the elements or components of the directories that satisfy the requirements of the
Copyright Act as original literary works are the listings, enhancement of listings
and arrangement of listings (in the case of WPDs) and the listings, headings,
enhancement of listings and arrangement of listings under headings (in the case of
YPDs). Having abandoned its claim with respect to the Headings Book (the list of
 headings under which entries in the YPDs are entered), Senior Counsel for the
Applicants described the claim in the following terms:
In the case of the White Pages directories the compilation involves the expression,
including the content, form and arrangement of information in individual listings, and the
overall arrangement of individual listings into the whole. Insofar as the Yellow Pages
directories are concerned, the same observation is apt, but in addition there is the element
that arrangement occurs under headings and includes therefore cross-references ...

No broader claim was made.

1 On 16 June 2009, I directed that the question of whether copyright subsists in the
Works be determined as a preliminary question. The Applicants filed 91 affidavits in
relation to that issue alone.
1 For the reasons that follow, copyright does not subsist in any Work. None is an
original literary work. By way of summary:
1 among the many contributors to each Work, the Applicants have not and
cannot identify who provided the necessary authorial contribution to each
Work. The Applicants concede there are numerous non-identified persons who
contributed to each Work (including third party sources);
1 even if the human or humans who contributed to each Work were
capable of being identified (and they are not), much of the contribution to
each Work:
2.1 was not independent intellectual effort (IceTV [2009] HCA 14 ; 254 ALR 386 at
[33]) and further or alternatively, sufficient effort of a literary nature (IceTV [2009]
HCA 14 ; 254 ALR 386 at [99]) for those who made a contribution to be considered
an author of the Work within the meaning of the Copyright Act ;
2.2 further or alternatively, was anterior to the Work first taking its material form
(IceTV [2009] HCA 14 ; 254 ALR 386 at [102]);
2.3 was not the result of human authorship but was computer generated;
1 the Works cannot be considered as original works because the creation of each
Work did not involve independent intellectual effort (IceTV [2009] HCA 14 ; 254
ALR 386 at [33]) and / or the exercise of sufficient effort of a literary nature:
IceTV [2009] HCA 14 ; 254 ALR 386 at [99]; see also IceTV [2009] HCA 14 ;
254 ALR 386 at [187]- [188].
II THE COPYRIGHT ACT THE PROPER STARTING POINT
1 Throughout these reasons for decision, reference is made to the provisions of the
Copyright Act in force over the period in dispute 2000 to 2009. It should be noted
that in 2005 the Copyright Act was amended by the US Free Trade Agreement
Implementation Act 2004 (Cth) (the US Free Trade Act). Pursuant to Sch 9 Pt 10
item 186 of the US Free Trade Act, the definition of material form was substituted
to no longer require a work or adaptation of a work to be capable of reproduction in
order to have copyright protection: see the Explanatory Memorandum to the US Free
Trade Agreement Implementation Bill 2004 at para [668]. Nothing in this case turns
on that amendment.
A. THE COPYRIGHT ACT IN CONTEXT
 1 As the reasons of the High Court in IceTV [2009] HCA 14 ; 254 ALR 386
demonstrate, it is necessary to begin the enquiry into the issues about subsistence (and
ownership) of copyright at the proper starting point the Copyright Act .
1 Several fundamental propositions are provided for by the Copyright Act and, in
particular, Pt III of the Act. First, as s 8 of the Copyright Act relevantly provides,
copyright does not subsist otherwise than by virtue of [the Copyright] Act.
Copyright is a form of statutory monopoly: IceTV [2009] HCA 14 ; 254 ALR 386
at [11], [15], [22], [28] and [65]-[71].
1 Secondly, a balance is struck between monopoly (on the one hand) and promotion
(and protection) of originality in new works (on the other hand): IceTV [2009] HCA
14 ; 254 ALR 386 at [24]- [26] and [71].
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:
(a) a table, or compilation, expressed in words, figures or symbols; and

(b) a computer program or compilation of computer programs.

1 Subject to s 35(6), the author of a literary work is the owner of any copyright
subsisting in the work: s 35(2). Section 35(6) provides that where a literary work is
made by the author pursuant to the terms of his or her employment by another person
under a contract of service, that other person is the owner of the copyright subsisting
in the work.
1 The nature of a copyright right is defined in s 31 as the exclusive right in
relation to a work (including a literary work) to do all or any of the following acts:
(i) to reproduce the work in a material form;

(ii) to publish the work;

(iii) ...

(iv) to communicate the work to the public;

(v) ...

(vi) to make an adaptation of the work; ...

1 The expression material form in relation to a work is defined in s 10(1) to

include (cf [6] above):
any form (whether visible or not) of storage of the work or adaptation, or a substantial
part of the work or adaptation, (whether or not the work or adaptation, or a substantial
part of the work or adaptation, can be reproduced).

1 The centrality of authorship is self evident.

2 The theoretical underpinnings of the Copyright Act strike a balance
between rewarding authors of original literary works against policy
considerations concerning the public interest in maintaining a robust public
domain in which further works are produced: IceTV [2009] HCA 14 ; 254
ALR 386 at [24] and [71]. The genesis of copyright legislation in England
was to protect the rights of authors of work from the reproduction of their
work without their consent: see IceTV [2009] HCA 14 ; 254 ALR 386 at
[25].
1 The Copyright Act fixes on the author: ss 32 , 33 , 35 and 127 of
the Copyright Act ; IceTV [2009] HCA 14 ; 254 ALR 386 at [22]- [25]
and [96]-[97] and Vawdrey Australia Pty Ltd v Krueger Transport Equipment
Pty Ltd [2009] FCAFC 156 ; (2009) 83 IPR 1 at [147] per Lindgren J.
1 The author is the person or persons who bring the work into existence in
its material form: s 10(1), 31 and 32 of the Copyright Act and IceTV
[2009] HCA 14 ; 254 ALR 386 at [26], [33] and [98]-[99]. To be
considered as an author of a literary work the person or persons must have
exercised independent intellectual effort (IceTV [2009] HCA 14 ; 254
ALR 386 at [33] and [48]) and / or sufficient effort of a literary nature
(IceTV [2009] HCA 14 ; 254 ALR 386 at [99]).
1 The Copyright Act provides for the possibility of joint authors: s 10(1)
of the Copyright Act and IceTV [2009] HCA 14 ; 254 ALR 386 at [23]
and [100]. A work of joint authorship requires that the literary work in
question has been produced by the collaboration of two or more authors and
in which the contribution of each author is not separate from the contribution
of the other author or the contributions of the other authors: s 10(1) of the
Copyright Act ; see also Levy v Rutley (1871) LR 6 CP 523 at 529 per
Keating J; Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd (No.
1) [1995] FSR 818 at 835-836 per Laddie J; Prior v Lansdowne Press Pty
Ltd (1975) 12 ALR 685 at 688 per Gowans J.
1 The Copyright Act also provides for compilations the bringing into
existence of a literary work which gathers and organises material from various
sources: IceTV [2009] HCA 14 ; 254 ALR 386 at [72], quoting William
Hill (Football) Ltd v Ladbroke (Football) Ltd [1980] RPC 539 at 550 per
Diplock LJ. The fact a work is a compilation will itself inform the issues of
authorship to be considered: IceTV [2009] HCA 14 ; 254 ALR 386 at [99].
The author or authors will be those who gather or organise the collection of
material and who select, order and arrange its fixation in material form: ss
10(1), 31 and 32 of the Copyright Act and of IceTV [2009] HCA 14 ;
254 ALR 386 at [73]- [74] and [99]. However, it is a question of fact and
degree which one or more of them will have expended sufficient effort of a
literary nature to be considered an author under the Copyright Act : IceTV
[2009] HCA 14 ; 254 ALR 386 at [99].
1 Original works emanate from authors: ss 32 , 33 and 35 of the
Copyright Act and IceTV [2009] HCA 14 ; 254 ALR 386 at [22], [24],
[33], [48] and [96]. Authorship and originality are correlatives: IceTV [2009]
HCA 14 ; 254 ALR 386 at [33], [34], [47]-[49], [52] and [54]. In that
 context, as mentioned in [20(3)] above, originality under the Copyright Act
means that the creation (ie the production) of the work required some
independent intellectual effort and / or the exercise of sufficient effort of a
literary nature: IceTV [2009] HCA 14 ; 254 ALR 386 at[33], [47]-[48]
and [99]; see also at [187]-[188] and discussion of the need for some creative
spark and exercise of skill and judgment. The phrases adopted are
different. However, each phrase confirms that for a work to be sufficiently
original for the subsistence of copyright, substantial labour and / or
substantial expense is not alone sufficient. More is required. What that more
is will, of course, vary from case to case but must involve originality by an
identified author in an identified work. Where the expression of the work is
dictated by the nature of the information the subject of expression without
such effort, it will go against a finding of originality: IceTV [2009] HCA 14 ;
254 ALR 386 at [42] and [170].
1 The Copyright Act does not protect facts, ideas or information contained
in a work, to ensure a balance is struck between the interests of authors and
those in society: IceTV [2009] HCA 14 ;254 ALR 386 at [28] and the
cases cited therein. The Copyright Act does not provide protection for skill
and labour alone: IceTV [2009] HCA 14 ; 254 ALR 386 at [49], [52], [54]
and [131].
1 The Copyright Act protects the particular form of expression of the
information: IceTV [2009] HCA 14 ; 254 ALR 386 at [26], [28], [40],
[70], [102] and [160]; Hollinrake v Truswell [1894] 3 Ch 420 at 424 per Lord
Herschell LC; Victoria v Pacific Technologies (Australia) Pty Ltd (No 2)
[2009] FCA 737 ; (2009) 177 FCR 61 at [17] per Emmett J; see also
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010]
FCA 29 at [40], [41] and [212]. Copyright is not given to reward work
distinct from the production of a particular form of expression: IceTV [2009]
HCA 14 ; 254 ALR 386 at [28] and [31]. Accordingly, it is unhelpful to
refer to the commercial value of the information, because that directs
attention to the information itself rather than to the particular form of
expression: IceTV [2009] HCA 14 ; 254 ALR 386 at [31] and [166].
1 As compilations often contain facts and information, it is necessary to
focus on the nature of the skill and labour required to create the work and ask
whether it is directed to the originality of the particular form of expression:
IceTV [2009] HCA 14 ; 254 ALR 386 at [31], [33], [47]-[48], [52] and
[54].
1 Fixation or identification of the original work is essential: ss 8 and 31
-35 of the Copyright Act and IceTV [2009] HCA 14 ; 254 ALR 386 at
[15], [24]-[28] and [102]-[105]. Copyright does not subsist in a work unless
and until the work takes a material form: IceTV [2009] HCA 14 ; 254 ALR
386 at [26] and [103].
1 As explained above (see [20(6)]), originality is closely tied to authorship. It
requires that works originate with an author and that the creation (that is the
 production) of the work [involve] some independent intellectual effort, but neither
literary merit nor novelty or inventiveness as required in patent law: IceTV [2009]
HCA 14 ; 254 ALR 386 at [33] and [48]. This view is consistent with a long line
of authority: see University of London Press Ltd v University Tutorial Press Ltd
[1916] 2 Ch 601 at 608-609 per Peterson J; Robinson v Sands & McDougall Pty Ltd
[1916] HCA 51 ;(1916) 22 CLR 124 at 132-133 per Barton J; Sands & McDougall
Pty Ltd v Robinson [1917] HCA 14 ; (1917) 23 CLR 49 at 52 per Isaacs J; Victoria
Park Racing and Recreation Grounds Co Ltd v Taylor [1937] HCA 45 ; (1937) 58
CLR 479 at 511 per Dixon J; Football League Ltd v Littlewoods Pools Ltd [1959]
Ch 637 at 651 per Upjohn J; Autodesk Inc v Dyason [1992] HCA 2 ; (1992) 173
CLR 330 at 347 per Dawson J; Interlego AG v Croner Trading Pty Ltd [1992] FCA
624 ; (1992) 39 FCR 348 at 379 per Gummow J; Data Access Corporation v
Powerflex Services Pty Ltd [1999] HCA 49 ; (1999) 202 CLR 1 at [22], [95] and
[122] per Gleeson CJ, McHugh, Gummow and Hayne JJ; Sawkins v Hyperion
Records Ltd (2005) 64 IPR 627 at [31] per Mummery LJ; Victoria v Pacific
Technologies (Australia) Pty Ltd (No 2) [2009] FCA 737 ; (2009) 177 FCR 61 at
[18] per Emmett J.
1 Moreover, at [47] and [48] of IceTV [2009] HCA 14 ; 254 ALR 386 , French
CJ, Crennan and Kiefel JJ stated:
[47] Much has been written about differing standards of originality in the context of the
degree or kind of skill and labour said to be required before a work can be considered
an original work in which copyright will subsist. Industrious collection or sweat of
the brow, on the one hand, and creativity, on the other, have been treated as
antinomies in some sort of mutually exclusive relationship in the mental processes of an
author or joint authors. They are, however, kindred aspects of a mental process which
produces an object, a literary work, a particular form of expression which copyright
protects. A complex compilation or a narrative history will almost certainly require
considerable skill and labour, which involve both industrious collection and
creativity, in the sense of requiring original productive thought to produce the
expression, including selection and arrangement, of the material.

[48] It may be that too much has been made, in the context of subsistence, of the kind of
skill and labour which must be expended by an author for a work to be an original
work. The requirement of the Act is only that the work originates with an author or joint
authors from some independent intellectual effort. ...
(Emphasis added, citations omitted).

1 Similar warnings were contained in the joint judgment of Gummow, Hayne and
Heydon JJ at [187] and [188]:
[187] ... This concerns the submission by the Digital Alliance that this Court consider the
Full Courts decision in Desktop Marketing and, to the contrary of Desktop Marketing,
affirm that there must be some creative spark or exercise of skill and judgment
before a work is sufficiently original for the subsistence of copyright.

[188] It is by no means apparent that the law even before the 1911 Act was to any
different effect to that for which the Digital Alliance contends. It may be that the
reasoning in Desktop Marketing with respect to compilations is out of line with the
understanding of copyright law over many years. These reasons explain the need to treat
with some caution the emphasis in Desktop Marketing upon labour and expense per se
and upon misappropriation. However, in the light of the admission of Ice that the Weekly
Schedule was an original literary work, this is not an appropriate occasion to take any
further the subject of originality in copyright works.

(Citations omitted).

1 As these passages make clear, care must be taken not to extend the notion of
originality beyond that which the Copyright Act was and is intended to protect.
1 During the hearing, the Respondents often submitted that a particular alleged
contribution to the Works was too remote. I do not consider that approaching the
question of subsistence of copyright is assisted by seeking to classify the contribution
as remote or too remote. How would you assess it by activity, by time spent,
temporally to the ultimate production of each Work? The extent to which individual
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).

1 As the High Court observes, there is no counterpart in Australian law. It is not

open to me to ignore the express words of the Copyright Act to expand protection
consistent with that set out in the Directive as summarised by the High Court. That is
a matter for Parliament and, in my view, a matter which they should address without
delay.
III APPLICANTS APPROACH TO THE QUESTION OF SUBSISTENCE REJECTED
1 The Applicants adopted a different approach to resolving the question of
subsistence of copyright in the Works.
1 The Applicants started with, and indeed seemed ultimately to travel no further
than, the proposition that once you have identified the work (and established its first
publication in Australia), all that is required for subsistence of copyright is to identify
some intellectual effort in the ultimate creation of the works without the need to
identify the author or authors of the work. As the Applicants counsel submitted, one
is concerned with the activities which have been performed, not the precise identity of
the persons who have performed them ....
1 The Applicants approach was summarised in their written submissions in the
following terms:
[265] ... [C]opyright subsists in each Work, if the Work is an original work, because the
first publication of the work took place in Australia: section 32(2)(a) & (c) [of the
Copyright Act ].

[266] Each Work is an original literary work because, as earlier submitted, some
intellectual effort is shown to have been applied by persons who contributed to the
creation (production) of the Work.

[267] It makes no sense to say, in those circumstances, that copyright does not subsist
unless one can identify all of the authors.

[268] Authorship and Original Works are correlatives. But all that is necessary is to
show sufficient contribution for originality. Plainly, that may be done without identifying
the name of every author.

(Footnotes omitted).

1 I reject the Applicants approach to the question of subsistence.

1 As noted above, authorship is central to the determination of whether copyright
subsists. To suggest that copyright does not require the identification of authors where
a work is sufficiently original (howsoever that question of originality is to be
answered) puts the cart before the horse. It 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. The Applicants approach appears to relegate the role of an
author or authors in determining subsistence of copyright to some minor variable,
useful only in [showing] that an author is a qualified person where the work is
unpublished, establishing the duration of exclusive rights comprised in the
copyright of old works where competing claims of ownership are made or
where doubt exists as to the identity of the work. Such a contention is surprising
and untenable. It is contrary to the express words of the Copyright Act and the
copyright regime described by all judges of the High Court in IceTV [2009] HCA 14
; 254 ALR 386. As a result, the way in which the Applicants shaped their overall
case was unfortunately misdirected and cannot be supported.
1 The Applicants submissions also referred to ss 128 and 129 of the Copyright
Act (albeit at [269]-[280] of their written submissions). After the paragraphs
extracted above under the heading Authorship and Identification, the written
submissions continued:
[269] The following statement in [Laddie, Prescott, Vitoria, The Modern Law of
Copyright and Designs (Third Edition, 2000), at 118] supports these propositions:

The definition of a literary work includes a compilation, and the author of such a work is
the person who gathers or organises the collection of material and who selects, orders and
arranges it. However, it is possible that there might be no identifiable author, in which
case the statutory presumptions may have to be relied upon.

[270] Section 129 deals with the case where the publication of a literary work is
anonymous. A publication is anonymous where the author is not identified. The effect of
the section is that if it is not established that the identity of the unidentified author is
generally known or can be ascertained by reasonable enquiry the work is presumed to be
an original work.

[271] Section 129 shows that the inability to identify the authors of a literary work does
not mean that copyright does not subsist. On the contrary it is presumed to subsist.
[272] Section 128 also contemplates that copyright may subsist in a literary work which
has no identifiable author [Waterlow Publishers Ltd v Rose (1989) 17 IPR 493 , 503].
Were it otherwise, no presumption could arise.

[273] There may be a need to identify authors in the following cases:

(a) where the work is an unpublished work and it is necessary to show that an author is a
qualified person [For example, see Gummow J et al at [101] inIceTV [2009] HCA 14 ;
254 ALR 386];

(b) where (in the case of old works) a question arises concerning the duration of the
exclusive rights comprised in the copyright; and

(c) where competing claims of ownership are made.

[274] None of these issues are relevant here.

[275] IceTV shows that identification of the authors may also be required if doubt exists
as to the identity of the work in which copyright is said to subsist. Again, that point is not
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
3 is a complimentary FE or a paid additional or enhanced entry.
1 The system by which each type of listing is included in a WPD or a YPD is
described below under the following headings:
A Overview
B The Development of the Computer Systems
1. Prior to 2001 and 2003
(a) WPD;
(b) YPD;
2. Genesis Computer System
3. Supporting Systems
4. Conclusions
C The Rules
1. Introduction
2. What are the Rules?
3. The Parts of the Rules
(a) The WPD Rules;
(b) The YPD Advertising Rules;
(c) The Product Standards;
4. Creation of the Rules
5. How the Rules are Used
(a) POST and Listing Maintenance;
(b) Book Extract and Book Production;
6. Conclusions
D Identity of Authors
1. Sensis Employees
2. Contractors
E Production of a Particular WPD
1. Existing Listing
(a) Creating the initial listing record;
(b) Obtaining updated listing information;
(c) Entering the updated information into the database;
(d) Checking the updated listing record after entry in the database;
(e) Other amendments to existing listings;
2. New Listing
(a) Service orders;
(b) Customer contact;
(c) Sales contact;
(d) Checking the new listing after entry;
3. Publication of the WPD
(a) Verification of listing information prior to publication;
(b) Extraction and presentation of listings;
(c) Verification of listings after extraction;
(d) Typesetting and pagination of the directory.
F Production of a Particular YPD
4 Existing Listing
(a) Creating the initial listing record;
(b) Obtaining updated listing information;
(c) Entering the updated information into the database;
(d) Checking the updated listing record after entry in the database;
(e) Other amendments to existing listings;
2. New Listing
(a) Obtaining new listing information and creating a new listing record;
(b) Checking the new listing after entry;
2 Publication of the YPD
(a) Verification of listing information prior to publication;
(b) Extraction and presentation of listings;
(c) Verification of listings after extraction;
(d) Typesetting and pagination of the directory.
G Changes in the WPD and YPD Production Process Over Time

A. OVERVIEW
1 The following description is system based for a number of reasons. First, the
Applicants evidence was prepared and filed on that basis. Specific (and, the
Respondents submitted, incomplete) evidence was filed in relation to only two co-
bound volumes Cairns for 2008 / 2009 and Kempsey / Port Macquarie for 2009 (the
Sample Directories). However, the Applicants alleged that the contributions of
individuals ... [was] consistent across the directories, and also over a considerable
period of time.
1 Secondly, the evidence disclosed that much of the system was automated. The
production of the WPD and YPD is undertaken by members of a division within
Sensis known as the Directory Solutions group. In general terms, the production of a
WPD and a YPD involves the following steps:
1 For each directory, customer information is obtained from various sources,
including service orders received from telecommunications carriers such as
Optus, Vodafone, AAPT, the customers previous WPD or YPD listing,
personnel spotting potential new customers and direct contact from the
customer. It will be necessary to consider these sources separately in further
detail below.
5 From no later than October 2003, the listing information has been entered
into a database on a computer system known as the Genesis computer system
(the Genesis Computer System). (The computer systems that predated the
development of, and what were the precursors to, the Genesis Computer
System are described in further detail below: see [61] to [71]).
1 In many cases, the listing information is entered automatically by the
Genesis Computer System. In other cases, some of the listing information is
manually entered into the database. Mr Beardshaw, employed as an External
Interfaces Analyst by Sensis, gave affidavit evidence that of the approximately
12 million services orders received annually, 15 per cent (or 1.8 million)
require some manual processing. Such numbers should be understood in their
context even certain types of manual listings can be processed in their
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
directory, and the presentation and arrangement of that information in
accordance with specifications programmed into the Genesis Computer
System and designed to give effect to the requirements of the Rules.
2 Once the listings have been extracted and arranged in the format in which
they are to appear by the Genesis Computer System, they are combined with
the other elements of the directory and arranged on pages which are typeset
and paginated.
1 The completed directory is then printed and distributed.
Different personnel are responsible for each of the above activities, depending on the type
of listing and the directory in which it is to appear. Moreover, some of these activities are
conducted by contractors who are not employees of Sensis. Their significance is
explained in Part D below.
1 These activities have remained essentially unchanged since the introduction of the
Genesis Computer System in October 2003. Prior to the introduction of the Genesis
Computer System, the same activities were undertaken but separate computer systems
were utilised for the production of the WPDs and YPDs.
1 To the extent there are differences in the systems, the evidence disclosed that the
Genesis Computer System has streamlined some processes which previously could
only be undertaken manually.
1 Much of the process outlined in [56] above is discussed in more detail in Parts E
and F below. The description of the facts in those sections is primarily drawn from a
summary prepared by the Applicants. The Respondents reviewed the summary and
identified areas of disagreement due to alleged omissions and inaccuracies. However,
there are certain factual aspects to the issues in dispute that require separate and more
 specific analysis. These areas are the development of the relevant computer systems
(Part B), the significance of the Rules (Part C) and the identity of certain authors (Part
D).
B. THE DEVELOPMENT OF THE COMPUTER SYSTEMS
1 As described earlier (see [56(2)]-[56(4)] above), integral in the creation of each
Work since 2001 / 2003 was the Genesis Computer System. The Genesis Computer
System sits at the centre of most of Sensis directory-related operations and
interacts with a number of other systems used in the production of the WPD and the
YPD. Given the significance the Genesis Computer System and the other supporting
systems have in creating the Works, they require separate analysis.
1. PRIOR TO 2001 AND 2003
1 Prior to 2003, the CONDOR computer system was used in the production of the
WPD and prior to 2001, a separate computer system, the Integrated Directory System
(IDS), was used in the production of the YPD.
(a) WPD
1 Before the mid 1980s, Telstras predecessor (Telecom) had two different systems
for managing the data and publishing the WPD. One system, designed by Telstras
own information technology group, the National Directory Services (NDS), was used
in New South Wales. Another system was used for the other States. The second
system involved the extensive use of a manual card system to maintain customer
listing data.
1 In 1984, the NDS established a directory development group to draft the
specification for a national, computerised system for the publication of the WPD. In
1986, a US-based company called Amdocs Inc (Amdocs) commenced work to supply
the system. Eventually Amdocs supplied the NDS with the CONDOR system to meet
its objective.
1 The CONDOR system was based on Amdocs own proprietary software (named
ADS/SALES II) for the publication of classified business directories. The software
was then customised by Amdocs to suit the Australian environment and the
requirements of alphabetical directories. Amdocs also developed a suite of programs
to convert data from the existing compilation systems. In general terms, CONDOR
replaced systems which were based on handwriting information on to directory cards
and paper service orders with a system where editors were able to key new listings
and changes directly into the computer database.
1 The first books produced using CONDOR were the Hobart and Burnie directories
published in July 1987. By June 1989, each directory nationally had been published
once. Over the subsequent years, development of CONDOR continued. Amdocs
carried out the coding and programming.
1 Telstra was granted a perpetual, non-exclusive, non-assignable and non-
transferable licence to use the ADS/SALES II System ... in the production of the
[WPD]. Unsurprisingly, all proprietary rights in the ADS/SALES II System remain
vested in Amdocs. However, separately defined modules developed by [Amdocs] for
[Telstra] or modules previously designed by Telstra were, or remained, Telstras
property. The Applicants did not identify which module or modules of the CONDOR
system remained or became the property of Telstra. As a result, the Applicants did not
 identify the function or functions performed by the modules owned by Telstra and the
balance of the computer system owned by Amdocs.
(b) YPD
1 Between late 1988 and early 1989, Telstra employed two main contractors to
perform the sales and marketing function and two main contractors to compile the
YPD. Each contractor owned and operated its own system.
1 Around this time Telstra decided to take over operations and control of the YPD.
1 In late 1989, Amdocs was engaged by Telstra to provide the IDS. Telstras
evidence was that:
In its initial operational form, ... IDS retained about 70 per cent of Amdocs basic system
and 30 per cent was rebuilt. As with CONDOR, Amdocs retained ownership of the
intellectual property rights to its basic system and Telstra [owned] the rights to the
enhancements.

1 IDS commenced operational use in January 1993 and was continuously

developed.
1 With effect from 1 July 1997, Telstra outsourced its WPD business to Pacific
Access Pty Ltd (Pacific Access), the predecessor of Sensis (Pacific Access changed
its name to Sensis in August 2002). The aim of Telstras outsourcing its WPD
business was to integrate the data that supports the WPD and the YPD.
2. GENESIS COMPUTER SYSTEM
1 In 1997, Pacific Access began to explore options to replace the CONDOR
system (used in the production of WPD) and the IDS (used in the production of YPD)
with a single, integrated directory production system. The eventual implementation of
the Genesis Computer System took more than five years and cost in excess of $300
million.
1 Amdocs was approached to tender for the replacement of CONDOR and IDS.
Amdocs offered a new system known as NewGen (NewGen). This system
provided by Amdocs was approved by the Telstra board to replace the existing
systems.
1 NewGen underwent what was then described as an extensive period of
development in order to customise the generic directory production system created
by Amdocs to meet the specific needs of Sensis [WPDs] and [YPDs]. To reflect the
changes in the system with the integration of WPD and YPD data, the system was
eventually renamed Genesis. Due to delays in the implementation of the project, the
Genesis Computer System was implemented in two phases in 2001 for YPDs and
2003 for WPDs.
1 The implementation of, and support for, the Genesis Computer System, including
the modifications referred to earlier, was governed by an IT Services Provision
Agreement between Pacific Access (as agent for Telstra) and Amdocs signed on 17
May 1998 (the First IT Agreement). Due to delays in the implementation of the
project and the decision to split it into two phases (for the YPD and then the WPD),
this agreement was re-negotiated in 2002 (the Second IT Agreement) (collectively,
the IT Agreements).
1 The IT Agreements were provided to the Court on a confidential basis. Although
there were differences between the IT Agreements, those clauses relating to the
intellectual property regime established under the IT Agreements were relevantly
similar.
1 As acknowledged by the Applicants, the intellectual property in the Genesis
Computer System is divided between Amdocs and their Customer (defined in the
IT Agreements as Telstra through its agent Pacific Access). The IT Agreements
established that the original software provided by Amdocs remained Amdocs
intellectual property, whereas Telstra would own or be assigned the intellectual
property of software modifications made at their request. Where one party had the
benefit of the intellectual property of a certain aspect of the system, its use by the
other was governed through the grant of a licence on conditions.
1 As with its predecessors (see [61] to [71] above), which parts of the Genesis
Computer System remained or became the property of Telstra were not identified. As
a result, the Applicants did not identify the function or functions performed by those
parts owned by Telstra and the balance owned by Amdocs.
1 There are however two further difficulties. The Applicants evidence described the
process by which modifications were made to the Genesis Computer System
throughout its development. That evidence disclosed that only some, not all, of the
software modifications made throughout the development process were recorded and
identifiable. Ms Dawes, a Manager of Print Content and Conversion at Sensis, stated
that the development process for the Genesis [Computer] [S]ystem involved
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
trader, partnership, registered business name, company name or government
department name.
1 The finding name has a finding word. The finding word is usually the first word
of the finding name (being the surname for residential entries) and determines where
the listing will appear. The finding name also has a subsequent word. This is the
balance of the finding name (initials or given names for residential entries, and what
remains of the business or government name in the other). The balance of the finding
name determines where the listing will sit should there be other listings with the same
finding word.
1 Listings are sorted by name and therefore apostrophes, commas, hyphens and the
like are ignored. Business or government names that include a symbol are treated as if
the symbol was a spelt out as a word. This sorting is automated. Certain symbols are
not permitted in a finding name, and need to be assessed when requested. There are
nine of them. They include question marks, exclamation marks and underscores.
1 Various other examples are illustrated in the WPD Rules. None are surprising, and
as far as alphabetic sorting is concerned, are automatically sorted. This includes what
to do when faced with the sorting of Mt and Mount (treat Mt as if it were spelt
out), Mc and Mac (treat Mc as if it were spelt out) and names that include
numbers (treat the numeral as if it were spelt out).
1 In examining these functions, one begins to see the difficulty in finding the
independent intellectual effort or sufficient effort of a literary nature applied to the
alphabetical arrangement of listings (particularly given that the WPD Rules
themselves indicate that this is an automatic process).
1 The WPD Rules also describe the limits upon what can be done to a given listing
by way of content and customisation. FEs have three components: the name, physical
address and number of the listing. The address for FEs include the number, street
name and suburb / town. Residential names in the FE can include either (1) a surname
plus a maximum of three initials, or (2) a surname plus one given name, nickname or
alias and two initials. Where two individuals wish to appear in a single listing, they
may do so subject to the rules just outlined, under the one surname. There are some
restrictions on names (including nicknames and aliases), including that they cannot
offend, they cannot be likely to mislead or deceive or, interestingly, denote royal
patronage has been received. FEs can also include courtesy titles.
1 So far the WPD Rules have required and involved common-sense application that
can only be considered to be routine. The next step is to look at the WPD Rules that
govern certain areas of customisation that will incur a charge. There are various ways
a listing can be customised bold name or number, service instruction (describing a
number as after hours), alphanumeric phone numbers (1300 DUCK), occupation
(landscaper), colour enhancements (red, blue and green), business logos and others.
1 To take alphanumeric phone numbers as an example, the basic rule is that a listing
must include the number created by the alphanumeric number (for example, 1300
DUCK will also need to include 1300 3825). There is a charge associated. The
alphanumeric number can include additional letters, but the actual number must not
include anything other than the actual digits. Business Logos are another example.
Business logos may be used where the customer has an accompanying Superbold
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.
Display advertisements are larger, and can cut across columns.
In-column listings are arranged alphabetically within headings. Headings are arranged
alphabetically. The arrangement of display advertisements is not determined
alphabetically. Their positioning reflects the underlying commercial rationale for
advertising in the YPD. Display advertisements are positioned according to size
within a heading. Largest first, smallest last. Where two advertisements are the same
size, the date of purchase of the advertisements will determine position priority. The
earlier the purchase, the earlier the position. If purchased on the same date, then they
will be positioned alphabetically.
1 The YPD Advertising Rules contemplate other circumstances which may impact
upon the positioning of a display advertisement. For example, display advertisement
positioning can be affected where a customer increases or decreases the size of their
advertisement, if a given YPD changes its geographic boundaries or when Sensis
determines it is no longer going to make a particular display advertisement size
available. Although there were some exceptions, the Rules to be applied reflect the
pattern mentioned in [107] above. Positioning is generally impacted upon by changes
to the advertisement sizing, and priority based on date of purchase tends to be
impacted upon by changes to the location or size of the display advertisement to
which it relates. If something occurs to change the directory (for example, changes to
headings or the geographical area of coverage of a given YPD edition), there are
usually opportunities to maintain position priority provided they are taken in the first
relevant issue (subject in some cases to the discretion of Sensis). Where a company is
subject to liquidation, a Deed of Company Arrangement or an individual trading
 under a business name or their own name is declared bankrupt, display advertisement
positions are revoked.
1 The ability to customise the content of listings and advertisements under the YPD
Advertising Rules is, as mentioned, broader than under the WPD Rules. The
description of the rules relating to display advertisements is as follows:
Description
An advertisement available in a variety of [predetermined] sizes consisting of:
The name of the business (mandatory)
Address details which must identify where the business is located (mandatory)
unless specific Address Suppression criteria is satisfactorily met
Telephone number (mandatory)
Border or other recognisable boundary (mandatory)
Copy matter (optional)
Graphic presentation (optional)
Colour printing (optional)
Note: Business Registration details must be made available on request.

Entry Criteria
Each Display Advertisement must be self-contained and not dependent on the content or
page location of any other Display Advertisement placed by the business.
For shared and Collective Advertising, entry criteria must be satisfactorily met
- see also Entry Policy Group, Shared and Collective Advertising
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
colour) in order to decrease advertising spend.
1 To create the advertisement, Ms Speranza uses POST. She selects various
options from drop-down menus, or inserts basic text into POST. Where work is
required to be conducted by an Artist (such as where a business logo is to be inserted
into the advertisement), Ms Speranza creates a gap in the advertisement, requests a
high resolution copy of the logo and forwards that material to the Artist.
1 One particular example, which demonstrated the significant level of automation,
was described in the following terms:
[Having finished the call with the customer], I ... opened POST to make changes to [the
customers] listing details. In POST I changed the colours of [the customers] business
name and main telephone number. I also created a space for [the customers] logo to be
inserted. I did this by performing the following functions in POST:

(a) from the Product List window, I navigated to the Item List window;

(b) in the Item List window I selected the Super Bold Red Type Header Universal
Directory Advertising Code (UDAC). I then navigated to the Change Item window;

(c) in Change Item window, I selected Super Bold Logo Full Colour with Yellow
Background. This changed the colour behind the listing to yellow;

(d) back in the Item List window I then selected the Bold Red Additional Standard Type
Entry UDAC. I then navigated to the Change Item window; and

(e) in the Change Item window, I selected Bold Black Additional Standard Type Entry.
This changed the colour of [the customers] telephone number from red to black.

1 Individuals known as Validators will also check the details entered into POST
(whether by a sales consultant or in the case of more complex listings, an Advertising
Data Specialist (ADS) operator) to ensure compliance with the Rules. This involves a
basic check of the information recorded in either written or oral contracts (that are
voice-recorded). The Validator will correct the error if minor, but errors within the
listing itself (such as a spelling error) are sent back to the sales consultant.
1 The way in which POST is used and the application of the Rules differs under the
YPD. Ms Walsh gave evidence as to her role as a YPD Account Executive. Her
evidence is significant in two respects.
1 First, Ms Walsh provided some examples of where businesses had attempted to
place advertisements prohibited by the [YPD Advertising Rules]. Presumably, this
was to demonstrate the exercise of the sort of discretion or judgment submitted by the
Applicants to be relevant. The examples included:
4 Businesses attempting to list business names other than their registered
business names for example, names commencing with AAA in order to
obtain a listing priority;
8 Businesses attempting to list an address other than the locality in which
they are actually situated;
4 Businesses wanting to list information relating to a variety of products or
services in one advertisement, even though the headings restrict such
categorisation; and
5 Businesses wanting to promote a number of different businesses, owned
by separate people, in the one advertisement.
1 Beyond these broad assertions, the evidence did not disclose how often Ms Walsh
encountered such examples or how they impacted upon the directories in suit.
Moreover, I do not accept that such examples (as far as they are useful) demonstrate
discretion or judgment. They are simple applications of uncomplicated Rules.
1 Secondly, and again returning to the significance of POST and the computer
systems harnessed, Ms Walsh did not create the advertisement herself. That step is
taken elsewhere. The actual creation of the advertisement, as described by Ms Walsh
in her affidavit, required her to send the paper contract (including sketches made) to
Brisbane, where they were checked by a Sales Contract Coordinator (SCC) and
Contract Verification Specialist (CVS), verified and keyed into the Genesis database
by an ADS and where the artwork was drawn by an Artist.
1 The difference between the affidavit and oral evidence of Ms Walsh is stark.
Under cross-examination, Ms Walsh was demonstrably unclear as to the roles and
types of work undertaken by others in the process, save for a sort of broad
understanding that other people checked what she forwarded on and ensured it was
entered as it needed to be into the Genesis database. She referred to the various
demarcated positions mentioned in [140] as sales clerks and noted that [Sensis]
 changed those names all the time. Moreover, Ms Walsh admitted (as was inevitable)
that she could not tell where a given advertisement was going to be placed within the
YPD when discussing that issue with the customer. At best, Ms Walshs role required
her to discuss the selling of advertising to customers, recording the eventual
agreement and allowing others to perform all other steps to create the advertisement.
Whether alone, or in combination with others, she was not an author.
1 These further steps necessary to create the advertisement require a number of
other workers referred to in [140] above, who (as far as their role requires), create the
advertisement using POST (and in the case of Artists and Editors using graphic
software such Multi Ad Creator and the Ad Production Database). Some of the roles
of these various positions (the SCC, CVS, ADS and Artists) have been mentioned
elsewhere. To explain briefly:
5 SCC a Sales Contract Coordinator who ensures that paper contracts
submitted by Account Executives are internally consistent;
9 CVS a Contract Verification Specialist, who appears to have a similar,
though slightly demarcated role to an SCC. The process by which they check
contracts is more detailed (for example, where an SCC may check that an
ABN has been supplied, a CVS will determine its accuracy);
5 ADS an Advertising Data Specialist who is responsible for entering YPD
contract details into the Genesis database and administering the more complex
WPD advertising contracts;
6 Artist responsible for preparing and updating graphic advertisements in
the WPD and YPD; and
2 Finally, of importance also is the Editor, who is responsible for verifying
graphic advertisements prepared by Artists to ensure they reflect the
requirements of a given contract and the WPD Rules and YPD Advertising
Rules.
1 In terms of relevance to the Rules, the ADS, Artist and Editor should be noted.
1 Where an ADS receives a contract, they enter the details from the contract into the
Genesis database using POST. This involves creating a new record for the customer
or updating the customers existing record with the customers new listing and other
advertising details. If there is no graphic advertisement to be created, the listing is
marked as complete by the ADS operator and is ready to be printed in the directory. If
there is a graphic advertisement to be created, an Artist will prepare the advertising in
the Ad Production Database, based on the instructions provided in the copy sheet
included with the contract. Once the Artist has completed the advertising, it is verified
by an Editor to ensure it matches the contract details, the copy sheet and POST, and
complies with the YPD Advertising Rules. Mr Brincat, employed as the Victorian
Operations Manager, Print and Online gave evidence of the process by which an
Editor ensures that the work of Artists complies with the Rules:
This involves opening each component in the appropriate software program (for example,
for graphic components, opening the component in the Photoshop program). The Editor
then ensures that the Artist has complied with all the requirements relating to that type of
component. For example, for graphic components, the Editor checks that the resolution
and scaling of the image is correct.
 1 Evidence was also led regarding the Check the Checkers team. This team
comprises one individual based in Melbourne. Two more external consultants may be
employed as required. For example, when the Melbourne and Sydney YPD are being
produced, the aim of this team is to check 10 per cent of the YPD advertisements
received from ADS operators and Editors. This 10 per cent is generated at random.
On average, a member of the team checks 15 advertisements an hour. That translates
into one advertisement every four minutes. Again, their effort is dictated and
governed by the Rules. They do not correct errors themselves, but forward identified
errors elsewhere.
1 The Rules are of limited assistance to the Applicants contention that copyright
subsists in the Works. Sales consultants apply prescribed, uncomplicated Rules that,
in an undefined number of situations, will involve what is broadly asserted to be a
discretion or judgment. Moreover, the nature of changes made varies greatly and
may have no impact upon listing details at all. The information received from the
customer is entered into POST (either through an ADS or otherwise), which involves
largely mechanical data entry from set drop-down menus, limited parameters or the
use of basic instructions. The information is checked by multiple parties for
compliance with the Rules. Artists and Editors create advertising in accordance with
their instructions and the Rules. The Check the Checkers team, whose tasks are
randomly computer generated and involves an unidentifiable portion of the directories
in suit, apply the Rules which takes no longer than four minutes per advertisement.
1 In the end, the position is best summarised by the answers given by Ms Purcell
who was employed in a similar position to that of Ms Walsh and who endorsed the
description of that role as provided by Ms Walsh:
Q: So ultimately a decision to choose a particular heading, whilst it might be instructed
by advice is a decision made by the customer ultimately, isnt it?

A: It is definitely made. The customer has to sign and accept the heading, yes, but
without my advice the customer probably would have pulled out of the book and we
wouldnt have had him as a customer.

1 And the second:

Q: Now, I appreciate you say you got the results in the advertising but your primary
objective as a sales person is to seek to expand the sales spend that people make, is it not?
That is your primary objective?

A: My primary objective as a sales consultant for [Sensis] is to do that. My primary

objective for me as a sales consultant is to increase the business and keep that business
working and help that business achieve their goals as a business.

(b) Book Extract and Book Production

1 These two processes contribute to the creation of what was referred to as the
galley file, which contains all of the listings and in-column advertisements in the
form and sequence in which they will appear in the printed directory (noting that this
does not include display advertisements). Ms Dawes, a manager in Print Content and
Conversion at Sensis, stated that it is ... at the Book Extract stage that the listings in
a particular [WPD] or [YPD] assume the form in which they will ultimately appear in
the printed directory. She admitted during cross examination that its organisation is
all automated.
1 These software routines, in conjunction with the reference tables, use the Rules to
apply and determine the appearance and order of the information stored in the
Genesis database. For example, a table described as a Keyword Table defines how
characters and symbols are to be interpreted for the purposes of sorting. A specific
instance includes the $ symbol the table contains information that, when
associated with the Book Extract routine, will sort such an entry as dollar (see [98]
above).
1 Ms Dawes went further regarding the automated sorting process undertaken by
Book Extract, and how it extracts listing information and other publishing
information for a specific directory from the database and related reference tables.
Her evidence was that the Book Extract routine performs four major steps:
6 Heading Extract this process searches the database and extracts all
headings which have listings or advertisements under them in the designated
directory, as well as their associated sub-headings and cross-references. It also
includes notes headings. It is only used for the YPD;
10 Listings and Advertising Extract this process searches the database and
extracts all listings and other advertising information which are to appear in
the designated directory, applying the Rules to determine which components
of each listing should be included and how they should appear;
6 Sorting this process sorts the extracted listings and headings information
according to the Rules; and
7 File generation and reporting this process saves the extract into what is
known as a CMP file and generates a report of all listings that failed to extract.
1 With respect to step 3 outlined in [151] above, the application of these Rules
involves the software checking whether the listed elements appear in any of the
relevant tables, and then managing the listing in accordance with the instructions
contained within the table. In certain circumstances, the instruction contained in the
listing record can override the sorting Rules contained in the tables. As is evident, the
production of the galley file to this point has been almost entirely automated.
1 As mentioned elsewhere (see [254] and [317] below), the production of the galley
file involves a number of reports that are run to identify errors or anomalies in
listings and advertisements (including for example ensuring that display
advertisements will appear in the correct position according to the Rules). After the
galley file has been extracted (which involves entering various commands into a
computer), further reports are run to ensure that the listings to be printed in the
directory have been extracted correctly from the database and that they comply with
the Rules. The error indications are largely automated. Mr Cooper, a Publishing
Co-ordinator employed by Sensis, gave evidence that there were no galley errors in
the Port Macquarie WPD galley file, and only a small number for Cairns of a
formatting description. Where the Genesis Computer System identifies issues, they
 are usually corrected manually in POST or at the source of the error.
1 It should be noted that under the CONDOR and IDS systems, Mr Cooper stated
that he would go through the same process to produce the [B]ook [E]xtract and
produce the galley file. Mr Vormwald (who gave evidence directed at the YPD) gave
similar evidence.
1 Some manual checks are undertaken, examples of which (for the WPD) include
checking the beginning of each alphabetical section to ensure the correct alphabetical
order exists and correcting dependant word listings (which include common pre-
fixes such as Le and Mc) using a checklist.
1 After the galley file has been built, Late Change Requests are managed. There
was little evidence as to how many Late Change Requests were specifically
actioned with respect to the Works. For example, Mr Vormwald, who worked as a
Publishing Co-ordinator that contributed to the Cairns 2008 / 2009 YPD, gave
evidence regarding a single instance, and then asserted that he actions 50-150 such
requests per regional YPD. Again, software is used to ensure compliance with the
Rules, and where Sensis workers are involved in this process, the software ensures
uniform compliance with predetermined aspects of the Rules.
1 Once this process is undergone, the directories must be paginated and typeset. Mr
Stewart, a Paginator, provided evidence of his experience in this role. The Paginator
paginates and typesets the directories. Pagination refers to the process of determining
the layout of the listings and advertisements that appear on each page of any given
directory. Typesetting refers to the process whereby graphic advertisements stored in
the Ad Production Database are incorporated into the paginated pages of a directory.
The Paginators role requires a number of steps before the tasks outlined above are
completed. I do not propose to outline them all here. For present purposes, it is
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
considered an author within the meaning of the Copyright Act .
1 First, it is the Rules that prescribe the particular form of expression of the Works,
not any individual person alone or in collaboration with others. The Rules control the
content of each Work. The various computer systems generate and control the choice
of the content on the basis of the Rules and are responsible for ensuring the vast
majority of their valid application. In some circumstances the Rules expressly
prohibit certain content.
1 Secondly, even where there is any level of human discretion, it must be
exercised in accordance with the Rules. There is no independent effort, let alone such
effort being intellectual. There is no effort, let alone sufficient effort, of a literary
nature. I reject the Applicants contention that there is judgment or discretion used in
selecting the material for inclusion. The Rules prescribe, presume and prohibit the
actions of the contributors. What choice there is, is the choice given by the Rules, not
by any person or persons.
1 Thirdly, even if the judgment or discretion of the kind asserted by the Applicants
was independent intellectual effort, it is not relevant intellectual effort. I reject the
Applicants contention that the relevant intellectual effort involved is in
understanding and applying the Rules. The independent intellectual effort required
must be directed to the creation of the Work: IceTV [2009] HCA 14 ;254 ALR 386
 at [33]. Such skill and judgment, on the facts, is not directed to the creation of each
Work but to the application of the Rules. Moreover, the work undertaken by many
of the Sensis workers, is work directed (at least in part) to the maintenance and
operation of the Genesis Computer System and associated computer systems
(including the Genesis database) which is accessed or used for a multitude of
applications.
1 Finally, even if it mattered, there is insufficient evidence about who created the
Rules themselves. The Rules alone cannot be said to be an author for the purposes of
the Copyright Act .
D. IDENTITY OF AUTHORS
1 The identity of the authors of the Works was not a task that the Applicants
accepted they were required to undertake. Having regard to the relevant principles, I
rejected that contention (see [7]-[45] above). In fact, the Applicants did seek to
identify some of the authors of some of the Works.
1. SENSIS EMPLOYEES
1 A list of the authors of the Sample Directories was tendered in evidence. It had
been compiled by the Applicants solicitors. Several points should be made about that
list. First, it was confined to the Sample Directories. Secondly, it stated that [c]urrent
team members have been identified where reasonable inquiries could not confirm the
particular members of that team who contributed to the Sample Directories.
Accordingly, it is not clear and highly unlikely that the listed authors actually
contributed to the Sample Directories. Thirdly, the list was subject to the express
caveat that [t]he authors of the Sample Directories include but are not limited to the
individuals identified. Finally, the list then goes on to state hundreds of names in
various roles, the vast majority of whom did not give evidence in this proceeding.
1 Put simply, as noted earlier (see [5] above) the Applicants were unable to identify
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.
1 T1 Consultants are responsible for contacting businesses which only have a FE
listing. T2 Consultants deal with customers that spend a maximum of $1,500 to
$2,000 per annum on advertising in the WPDs. T3 Consultants deal with customers
that spend between $1,000 and $15,000 per annum on advertising in the WPDs.
Account Managers (also known as T4 Consultants) deal with government and
corporate customers that spend up to $150,000 per annum on advertising in the
WPDs.
1 The T1, T2 and T3 Consultants and Account Managers are telesales consultants
who contact customers over the telephone. They deal with all customers not assigned
to an Account Executive. The T1 and T2 Consultants use Dialler to contact
customers. Dialler is computer software consultants use to make telephone calls to
existing or potential customers. The software is set in a different mode depending on
the role. For T1 Consultants, the Dialler is set to Predictive Mode so that a call to a
business is simply dropped in to a consultants headset with the consultant only
given information about the business through the Dialler at the point when the call is
answered. For T2 Consultants, Dialler is operated in Preview Mode so that instead
of the call directly dropping in to a consultants headset, the consultant is given
information about the particular business and the opportunity to quickly research
the business before making the call. Both a T1 and a T2 Consultant would access the
Genesis database through POST to confirm the customers listing history and
previous advertising (if any) with Sensis for as long as that customer has had a listing.
The sales consultant would also engage in limited internet searches to obtain
information about the business and if the business had a website, locate any additional
contact details to augment or confirm the information in the Genesis database.
1 T3 Consultants and Account Managers do not use Dialler. Instead, at the
beginning of each sales canvass, each T3 Consultant and Account Manager is
issued with an assignment list. The assignment list is allocated by the Go To Market
team which takes into consideration the likely amount of money to be spent by a
given customer, the desire to maintain continuity between a given consultant and a
customer and the demonstrated skill level of a consultant determined from previous
sales canvasses. Customers are also allocated in other ways, such as by the Lead
Management team (see [239]-[240] below). Account Executives, known as face to
face sales staff, contact customers in person. Account Executives tend to deal with
large, high spend customers who advertise in multiple WPDs. There are
approximately 25 WPD Account Executives nationwide.
1 As part of the sales canvass, an attempt is made to contact all business customers
with a FE to update their listing details and enquire whether they wish to upgrade to
an enhanced listing. The role of the sales consultant is to explain the various forms of
permitted enhancement and to assist the customer to ascertain which form of listing
or listings will best suit their needs. Residential customers are not contacted as part of
the sales canvass.
1 When contacting a customer, the sales consultants apply a structured sales process
known as the Six Step Consultative Sales Process. The process involves reviewing
the customers existing listings and asking the customer a series of questions about
the customers business designed to identify the customers advertising needs. This is
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
additional information which is to appear as part of the listing (such as an email
address or other additional text).
1 To update the listing, the ADS calls up the item that will have been created for the
forthcoming issue of the directory as part of the rollover process, and changes the
details for the associated listing in accordance with the instructions obtained from the
customer by the sales consultant, and the requirements of the Rules (see [140]-[144]
above). As the ADS changes the information, it is automatically checked by the
Genesis Computer System against reference tables stored in the RTMS containing all
of the valid range of entries for that type of information. The Applicants accepted that
there is a large amount of computer-aided error correction.
1 An example of a piece of listing information which is checked is the listed
telephone number which is checked against a table containing all of the telephone
exchange prefixes issued by the Australian Communications and Media Authority. If
the number is not within the range of numbers contained within the table, it will be
rejected.
1 Some of the tables involve the Genesis Computer System cross-checking against
multiple items of information. For example, in addition to checking the validity of the
locality name and postcode, the Genesis Computer System also checks whether the
combination of locality and postcode entered for the listing are contained in a table of
 all of the localities that fall within each postcode. In addition (see [129] above), some
of the information is entered by selecting from drop-down menus, rather than
typing, to minimise the scope for error.
1 If, in the course of processing the changes to the listing, the ADS determines that
the information is not complete or accurate, or does not comply with the requirements
of the Rules, the ADS can raise a query with the sales consultant responsible for the
customer. This causes the processing of the listing to be suspended. The POST
interface will not allow the record to be finalised until all of the relevant information
has been entered.
1 When the record is complete, the ADS selects the View Listing function on the
Genesis Computer System to view the listing in the format in which it will appear in
the printed directory and then finalises the record by retiring the listing. Retiring
the listing completes the listing in the Genesis Computer System. All advertising must
be retired before it can be extracted. At that stage, the system conducts further
validity checks across all of the information entered by the ADS.
1 If the listing is a display advertisement (see [107] above), the entry is usually
created in a separate database (known as the Ad Production Database see also [142]
above) by an Artist in the Print and Online Operations group and then checked for
accuracy and compliance with the Rules by an Editor in the Print and Online
Operations. There are approximately 55 Artists, of whom approximately four are
dedicated to WPD advertisements. There are approximately 12 people in the role of
Editor, including one dedicated to WPD advertising. The Editors are located in the
same centres as ADS and, like them, are responsible for making changes in relation to
all of the directories published by Sensis.
1 If the customers listing information has been obtained by a telesales consultant
then generally that consultant is responsible for entering the changes in the Genesis
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;
11 contact initiated by the customer; and
7 sales leads.
(a) Service orders
1 A service order is a notification from a telecommunications carrier of a new
telephone connection to the service of that carrier, a disconnection from the service of
that carrier, or a change in the name, address or telephone number for an existing
customer of that carrier. Carriers issue service orders to Sensis whenever there is a
change in the contact details they hold for a customer, regardless of whether that
change requires an update to the listing information held in the Genesis database. For
example, the service order might relate to disconnection for a customer that is not
published in the WPDs or YPDs, or a new connection to a different carrier with the
same name, address and telephone number. Service orders are received by Sensis in
relation to both residential and business customers.
1 Service orders are received from carriers each night in the form of large files
containing a single line of information in relation to each customer. Each service
order contains some or all of the customers listing information, together with an
instruction from the carrier about the reason for the service order, which is used by
the Genesis Computer System to determine the type of action to be performed in
relation to that information. A service order is notification that a particular person has
connected or disconnected a telephone number at a particular address. However, the
information received from the carrier is not necessarily the information which will
appear in the printed directory.
1 As has been noted (see [126] and [129] above), the initial processing of service
orders is performed by a computer program within the Genesis Computer System
known as the Listing Maintenance application. The Listing Maintenance application
is programmed to extract the information from the service order, check the validity of
the information, and generate a standard form of record within the Genesis database,
known as a Listing Maintenance Transaction. This record can then be used to update
automatically the listing information in the database or as the basis for manual
processing.
1 When a Listing Maintenance Transaction is created by the Listing Maintenance
application the information contained within the service order is edited by the
application of standard capitalisation and appearance rules, and the placement of a
delimiter which separates the listed name into two components for sorting and
collation purposes, in accordance with the requirements of the Rules.
1 The checks which are conducted by the Listing Maintenance application include
confirming that all of the relevant fields have been included in the service order and
that the information which has been included is valid. Validity checks are performed
by comparing the information contained in the service order against reference tables
containing lists of all the valid values for a particular field (for example, all of the
localities recognised in Australia). These are the same tables used by POST to check
listing information and were created to give effect to the requirements of the Rules
(see [127] above).
1 Because of the volume of service orders received by Sensis, the Listing
Maintenance application is also programmed to filter the information received via
service orders in order to determine:
8 which information can be inserted into the Genesis database
automatically;
12 which information must be processed manually; and
8 which information does not require any change to the information already
contained in the Genesis database, and so can be discarded.
1 The filtering is conducted in accordance with business rules contained in a
decision table located in the RTMS. The only service orders that are eligible for
automatic processing are those concerning residential listings. All service orders
concerning business or government listings are routed for manual processing.
Businesses are required to be manually handled because business customers might
not register their telephone line under their trading name or might wish to have their
listing included as part of a larger listing (such as a franchise), and because it is often
not possible to classify a customer under a heading without speaking to the customer.
If the system cannot process a service order (for example, because it is a complex
listing with a large number of listing elements, or because it fails one of the validity
checks referred to above), it is also routed for manual processing.
1 The automatic processing of residential listings is conducted by the Listing
Maintenance application, which converts the Listing Maintenance Transaction into a
listing record for an FE in the relevant WPD by creating a new record within the
Genesis database. If the service order relates to an existing residential listing, the
Listing Maintenance application is programmed to match the Listing Maintenance
Transaction to the customers listing record and to automatically update the record
with the information in the Listing Maintenance Transaction. As is evident, much of
the processing of residential entries is automated and requires next to no human
intervention.
1 The manual processing of business listings and complex listings is conducted by
members of the Customer Operations group. This group consists of approximately 60
permanent employees, based in Sydney, and from to time, contractors. Again,
although 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, such a submission is subject to the
difficulties outlined in Part D(2) above. The employees and the contractors are
required to deal with service orders in relation to listing information that is to be
published in any WPD (or YPD), irrespective of the geographic area encompassed by
the directory.
1 When a service order is received by a Customer Operations Associate, the
Associate will first attempt to contact the customer by telephone to ensure that the
listing information derived from the service order is correct and accurately reflects the
form that the customer wishes their listing to take. In the case of a business customer,
the Customer Operations Associate will also contact the customer to ascertain the
appropriate YPD heading under which to classify the customers listing. Customer
Operations Associates must contact (whether by phone or letter) 80 per cent of
customers whose listing information is amended through the receipt of a service
order.
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
Error Maintenance System on a daily basis.
3. PUBLICATION OF THE WPD
(a) Verification of listing information prior to publication
1 The end of the sales canvass for a particular issue of a WPD (or YPD) is referred
to within Sensis as the Public Close date for that directory. Following the Public
Close date, members of the Publishing team commence the process of preparing the
directory for publication. The same process is followed for every directory.
1 There are 16 staff employed in the Publishing team, one of whom is a contractor
(see Part D(2) above). Four are responsible for preparing the Government Index
which appears at the front of each WPD, seven are responsible for preparing the
galley file for each directory (including two dedicated to the production of the
WPDs), and five are responsible for the pagination of the directory. The Publishing
team is also known as the Book Close team and the process of extracting listing
information from the Genesis database and preparing it for publication is also known
as the Book Close process.
1 To enable the publishing process to commence, after the Public Close date for a
directory, the Publishing team also nominates:
9 a date by which all internal listing documentation in relation to that
directory must be submitted by Sensis personnel (this is referred to as the
 Internal Close date); and
13 a date by which all listing activity in relation to the directory must be
completed (this is referred to as the Last Listing Activity Date or LLAD).
1 Between the Internal Close date and the LLAD, members of the Publishing team
known as Publishing Co-ordinators run a number of automated reports to identify
any errors in the listing information which will be used to produce the listings that
will appear in the directory. These reports are designed to ensure that the listing
information is accurate and that the listings will appear in the sequence and format
required by the Rules.
1 The reports which are run by the Publishing Co-ordinators are also known as the
Book Close reports (see [85] and [153] above). They include:
10 Caption Arrangement Discrepancy Report and Numeric Dummy Header
Report: these reports are designed to identify errors which would cause
caption listings to appear incorrectly in the printed directory. A caption listing
is a listing with more than one telephone number or an additional line of text.
14 Doctor Report: this report contains a list of all listings for doctors in the
directory. It is designed to identify those that have not been entered into the
database in such a way to ensure they are ordered by the individuals surname,
rather than the courtesy title Dr.
9 CSV / PLA Report: this report is designed to identify all listings which
have been designated to be sorted out of alphabetical sequence, such as
listings starting with a numeral or a symbol. For such listings, the Sensis
worker creating the listing is required to specify how the listing is to be sorted
in the Place Listing As (or PLA) field of the listing record. The PLA field
is an instruction to the system to override the automated sorting rules for that
finding name. The CSV / PLA Report is used to ensure that the order of these
listings complies with the requirements of the Rules.
8 Invalid Bracing Report: This report is designed to identify errors which
would cause braced listings to appear incorrectly in the printed directory.
Braces are brackets which are used to group entries where there are more
telephone numbers than listing lines or more listing lines than telephone
numbers.
3 Numerics Report: This report contains a list of all listings in a particular
directory containing numerals in the listed name but that do not have an entry
in the PLA field. It is used to ensure that these listings are sorted correctly and
in accordance with the requirements of the Rules.
2 Cross-Reference Report: This report contains a list of all listings in a
particular directory that contain cross-references. It is used to ensure that these
listings comply with the requirements of the Rules.
1 Silent Line Axis / Genesis Comparison Report: This report is designed to
identify silent lines which have inadvertently been marked for publication in
the directory, so that these listings can be removed if appropriate.
1 Any errors identified by the Book Close reports are corrected by members of the
Publishing team or are directed to the Print and Online Operations team.
1 In addition, staff of the Customer Operations group run the following additional
 error reports after the Public Close date for a particular directory:
11 Courtesy Title in Finding Name Report: This report is designed to identify
errors which would cause listings to be sorted by courtesy title, rather than
finding name, contrary to the requirements of the Rules.
15 Duplicate Business Number Report: This report identifies duplicate
business listings in the directory.
10 Too Many Initials Residential Report: This report identifies
complimentary listings that have been inserted with more initials than are
permitted under the Rules.
1 Any errors identified by these reports are corrected by members of the Customer
Operations group.
(b) Extraction and presentation of listings
1 After the LLAD and the correction of any errors identified by the Book Close
reports, the listing information for the directory in question is extracted from the
Genesis database and automatically presented in the format and sequence in which it
will appear in the printed directory. This process is known as Book Extract: see
[149] [156] above. It is at Book Extract stage that the listing information stored in
the Genesis database is automatically converted into a listing in the form in which it
will ultimately appear in the printed directory.
1 The Book Extract process involves running a software routine over the Genesis
database. This software routine creates an electronic file, known as the CMP file,
containing all of the listings which are to appear in the designated directory collated
in the order in which those listings are to appear in that directory. The CMP file is
used to create an automatic electronic proof of the directory, known as the galley file.
The galley file contains all of the listings and in-column advertisements in the format
and sequence in which they will appear in the directory, but none of the display
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 sub-
groups, 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.
(e) Other amendments to existing listings
1 The listing information for existing YP listings can also be amended as a result of
the receipt of a service order from a telecommunications carrier or direct contact from
the customer. However, because Sensis attempts to contact all existing customers
during the course of a sales canvass, in practice amendments to YP listings are
primarily handled by sales staff and / or other staff within the Customer Care group.
1 If a YPD customer contacts Sensis to request a change to the listing information
for an existing listing, then which Sensis staff member is actually responsible for
updating the listing information in the Genesis database depends on how the customer
contacts Sensis, the nature and complexity of the changes, and whether the customer
has been assigned to a designated Sensis sales consultant.
1 If the customer contacts Sensis over the telephone, then the changes will be made
by:
14 the customers sales consultant, if one has been assigned;
18 staff of the Customer Care group, if no consultant has been assigned and
the changes are relatively minor;
13 staff of the Changes group, if no consultant has been assigned and the
changes are more substantial (this group is described in more detail at [299]
below); or
 10 staff of the Cancellations group, if no consultant has been assigned and the
customer indicates a desire to cancel their advertising.
1 If the customer contacts Sensis by letter, facsimile or email, then the changes will
be made by members of the Changes group. A national team of approximately 38
employees is responsible for making changes to YPD listing details in response to
requests from customers. The team consists of approximately 27 Customer Changes
Consultants (who perform a role similar to that of an ADS) seven Artists and Editors,
management and support staff. Customer Changes Consultants update listing
information in the Genesis database using the POST interface in the same way as
ADS or Customer Care consultants, having regard to the requirements of the Rules.
The role of a Customer Changes Consultant is the same in relation to any YPD
regardless of the region that the directory covers.
2. NEW LISTING
(a) Obtaining new listing information and creating a new listing record
1 Listings for new YPD customers are obtained in the same manner as listings for
new WPD customers. In particular, the listing information for new YPD listings can
be sourced from:
15 service orders received from telecommunications carriers;
19 contact initiated by the customer; or
14 sales leads.
1 In practice, however, sales leads have a greater significance for the YPD than they
do for the WPD because there are many more paid customers in relation to the YPD
and because there is greater scope for Sensis workers to spot prospective new
customers for the YPD.
1 YPD telesales consultants can generate leads for other Sensis sales consultants,
either by reviewing local media or online publications, or by referring prospective
paying customers to other sales consultants, depending on the customers likely
advertising spend. There is also a dedicated team of spotters within Sensis. In
addition, Account Executives can spot leads by physically identifying a new
business (for example, by recognising a new sign) while they are out visiting
customers.
1 Where a lead is generated for a customer that did not previously exist in the
Genesis database, a provisional listing for the customer will be created by the Lead
Management team in the same manner as described at [239] [242] above in relation
to a WPD listing. YPD sales consultants attempt to ascertain the customers needs and
advise the customer about the most appropriate form of listing in exactly the same
manner as they do in relation to existing customers. Ms Walsh stated that there is
often more advice required in the case of new customers because they are new to
business in some instances, so you actually become more of a counsel. If the sales
consultant is a telesales consultant, the consultant will update the provisional listing
in the Genesis database using the POST interface in the same way as they update an
existing listing.
1 If the sales consultant is an Account Executive, the consultant will record the
customers listing information in the form of a written contract and provide that
contract to members of the Print and Online Operations group to update the listing
 details in the database. However, all contracts for new customers are paper contracts
submitted manually and checked by an SCC and CVS before being entered by an
ADS because, as new customers, they did not exist on the Genesis database at the
start of the sales canvass and so contracts for these customers will not have been
pre-prepared in electronic form.
1 Where new listings are sourced via service orders or customer contact, the listing
record will be created by a member of the Customer Operations group or Customer
Care group in the same manner as a WPD listing record: see [213] [237] above.
(b) Checking the new listing after entry
1 New YP listing records are checked after entry in the same manner as existing
listing records (see [243] above).
3. PUBLICATION OF THE YPD
(a) Verification of listing information prior to publication
1 The publishing process for the YPD is similar to that for the WPD (see [244]-
[251] above). Members of the Publishing team are responsible for the publication of
both directories, although there are Publishing Co-ordinators who are dedicated to the
production of the WPDs or YPDs respectively. The role of Publishing Co-ordinators
in respect of any YPD is the same, regardless of the geographic region that the
directory covers.
1 Like the WPDs, the YPDs are produced on a rolling schedule, with the
publication process beginning after the Public Close date for a particular directory
and the extraction of listing information into the galley file occurring after the LLAD.
1 Also like the WPD directories (see [248] above), a series of reports are run prior
to the extraction of listing information to ensure that the listing information is
accurate and will appear in the sequence and format required by the Rules. In the case
of the YPDs, these reports are run after the LLAD but before Book Extract. Some of
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).
These are known as Must Appear, Notes or Fictitious headings.
1 The headings are collated into a separate file known as the Headings In
Progress file, which is combined with the CMP file at the Book Production stage to
form the galley file.
1 During the sorting process, the Book Extract routine applies priority rules to the
placement of display advertisements, in order to give effect to the requirements of the
Rules. It also arranges each of the listings in alphabetical sequence under their various
headings, applying Rules that are similar to those that apply to the WPD.
1 The galley file for a YPD is created by running the Book Production routine
through RTMS in the same way as for a WPD: see [259] above.
(c) Verification of listings after extraction
1 After the galley file has been created, Publishing Co-ordinators run further reports
to ensure that all of the listings and display advertisements which are to be printed in
the directory have been extracted correctly and that their appearance will comply with
the requirements of the Rules. If there are errors identified at this stage, they are
either corrected by the publishing team or by members of the Print and Online
Operations group.
1 The YPD Publishing Co-ordinators also conduct the same sorts of manual checks
on the galley file as are undertaken by WPD Publishing Co-ordinators: see [261]
 above. These include checks on specific headings, checks on listings beginning with
the letter A (to ensure that these listings are arranged in the correct sequence), and
checks on sensitive headings.
1 After the galley file has been built, YPD Publishing Co-ordinators also action
Late Change Requests, just like WPD Publishing Co-ordinators: see [262] above.
On average, Publishing Co-ordinators make between 50 and 150 late change requests
in each regional YPD each year.
(d) Typesetting and pagination of the directory
1 The pagination and typesetting process for the YPD is similar to that followed for
the WPD, although as noted above (see [263]) it is conducted separately for each
directory, even where they are co-bound. The role of Paginators in respect of any
YPD or WPD is the same, regardless of the geographic region that the directory
covers.
1 To the extent there are differences in the process, they relate to:
17 the fact that different Rules apply to the WPDs and YPDs; and
21 the larger variety of display advertising available to YPD advertisers.
1 As mentioned at [160] above, a YPD generally takes longer to paginate than a
WPD (between 1.5 to 2.5 days), due to the fact that the classified section of the
directory contains more listings (and therefore more pages that require checking and /
or repagination) and the Rules governing the positioning of display advertisements
are more complex than those that apply to the alphabetical sequence of the
directories.
1 The pagination for YPDs is usually conducted in increments to avoid the need to
repaginate the entire directory in the event of an error.
1 The typesetting process is the same for both directories: see [267] [268] above.
G. CHANGES IN THE WPD AND YPD PRODUCTION PROCESS OVER TIME
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
of the Reasons for Judgment herein of
the Honourable Justice Gordon.

Associate:

Dated: 8 February 2010