The First Hall of the Civil Court, presided over by Madame Justice Jacqueline Padovani Grima, on June 17, 2015, in the case ‘Yellow Pages (Malta) Ltd v Malta Directories Ltd’, held, among other things, that a database of names, addresses and telephone numbers was protected by copyright only if its selection and arrangement was the product of its author’s intellectual creation.
Yellow Pages (Malta) Ltd produced and distributed in Malta the Yellow Pages 2004 edition. It resulted that the Malta Directories Ltd published the Malta Business Directory in 2005 and reproduced considerable parts of the Yellow Pages, in breach of its rights of copyright, under Chapter 415.
Yellow Pages claimed damages and breach of copyright. The company proceeded to file legal proceedings requesting the court:
• to declare that Malta Directories violated the rights of copyright under Chapter 415;
• to declare it solely responsible for such breach;
• to liquidate the damages in view of all the circumstances of this case; and
• to condemn it to pay such damages or, if appropriate, to pay a penalty applicable under Chapter 415;
• to liquidate all profits of Malta Directories Ltd arising from the breach and to condemn it to pay damages in terms of article 43 (1) Chapter 415.
It also asked the court to prohibit Malta Directories Ltd from distributing the Malta Business Directories, or any part of it, and not to give the public telephone services with the number 1188 or some other number; and to order Malta Directories Ltd to deliver all copies of the Malta Business Directory to it, which was in violation of copyright in terms of article 43 (3) of Chapter 415.
Yellow Pages demanded in addition that Malta Directories Ltd be held liable for the alleged breach and to pay fair compensation in terms of article 11 of Act 20 of 2006.
In reply, Malta Directories Ltd contested the legal action against it. It denied reproducing the Yellow Pages, which it claimed to be totally different from its directory, and also denied offering any telephone services under number 1188.
It said that Yellow Pages did not have copyright protection, as there was no “intellectual creation” in its production.
Malta Directories Ltd maintained that the fact that Yellow Pages spent money to print the directory did not mean that it suffered damages. Damages had to be actual and proven.
The court considered that the cost of the book edition of the Yellow Pages was Lm150,734. It had a staff compliment of 77.
The Malta Business Directory reproduced lock, stock and barrel the Yellow Pages as well as its spikes and genuine mistakes.
Forty-five per cent of the Yellow Pages consisted of paid adverts. Its production included proofreading, layout, printing and verification of the details of its 18,000 clients.
Yellow Pages submitted that its directory was copyright protected. It maintained that the Malta Directories Ltd saved the cost of compiling the directory and made a profit at its expense
Yellow Pages submitted that its directory was copyright protected. It maintained that the Malta Directories Ltd saved the cost of compiling the directory and made a profit at its expense. The court noted that the section of the Yellow Pages which generated income was advertising. Advertising required artwork/ graphic design which was certainly copyright protected. The selection and arrangement of the Yellow Pages was an intellectual creation of its author, pointed out the court. Yellow Pages invested considerably to produce the 2004 directory and in this respect article 25 of Chapter 415 applied, said the court.
Reference was made to case law.
In ‘Yellow Pages (Malta) Ltd v Jurgen Neumann et’ dated March 24, 2011, it was held that the Yellow Pages had ‘originality’ in its arrangements of traders in the business community. Although its content was not protected, its arrangement was declared to be copyright protected.
In ‘Football Dataco Ltd and Others v Yahoo! UK Ltd and Others’ dated 2012, regarding fixture lists of the football league, it was held that: “It is apparent... that the copyright provided for by that directive concerns the ‘structure’ of the database, and not its ‘contents’ nor, therefore, the elements constituting its contents... As regards the setting up of a database, that criterion of originality is satisfied when, through the selection or arrangement of the data which it contains, the author expresses his creative ability in an original manner by making, free and creative choices.”
In ‘Dr Louis Cassar Pullicino v NCT International Trading Ltd’ dated December 3, 2010, the Court of Appeal held that whether there was copying was a question of fact.
In ‘Designers Guild Ltd v Russell Williams (Textiles) Ltd (2000)’ it was stated that “the question of whether what has been taken constitutes ‘all or a substantial part of the copyright work’ is a matter of fact and impression and is determined by its quality rather than its quantity.
As Lord Justice Jacob stated in ‘Hyperion Records v Lionel Sawkins’ (2005 “I think the true position is that one has to consider the extent to which the ‘copyist’ is a mere copyist – merely performing any mechanical function. The more that is so, the less is his contribution likely to be taken as ‘original’...
“It should be borne in mind that it is not enough to say that the defendant has ‘used’ the plaintiff’s work. He must have ‘reproduced’ it.”
In ‘Billhofer Maschinenffabrik GmbH v. TH Dixon & Co.’ (1990) it was stated: “It is the resemblance in inessentials, the small, redundant, even mistaken elements of the copyright work which carry the greatest weight. This is because they are least likely to have the result of independent design.”
The court was of the opinion that Malta Directories reproduced chunks of the Yellow Pages. Malta Directories did not create any autonomous independent work, pointed out the court, in particular as it also contained genuine mistakes including the spikes found in the Yellow Pages.
In respect of Yellow Pages’ request for the court to prohibit further use of the Malta Business Directory 2005 and to deliver copies, the court felt that, in view of the passage of time, these requests were no longer necessary as it was likely that the contents of the directory was no longer relevant.
The court considered that the total cost of the production of the Yellow Pages was Lm150,734. In assessing damages to be paid by Malta Directories, it had to deduct certain costs which would have been recurring for Yellow Pages, even if Malta Directories had not violated any copyright rights of the Yellow Pages. These deductions were the costs of printing, the salary of 10 employees, fuel allowances, car maintenance/servicing and motor vehicle insurances and licences.
The damages in this case consisted in the loss of profits as a result of Malta Directories Ltd’s unlawful act.
Malta Directories failed to show that it was unaware of the rights of Yellow Pages, nor that it had no intention to copy the 2004 Yellow Pages and nor that there was no negligence on its part.
For these reasons, on June 17, 2015, the First Hall of the Civil Court gave judgement by condemning Malta Directories Ltd to pay Yellow Pages €192,357 in damages.
It confirmed that a database of names, addresses and telephone numbers was protected by copyright only if its selection and arrangement was the product of its author’s intellectual creation re. article 3 (4) of Chapter 415). A mere compilation of a list of numbers and addresses was certainly not ‘intellectual creation’.
It declared that Malta Directories reproduced Yellow Pages 2004 and was responsible for damages.
Dr Grech Orr is a partner at Ganado Advocates.