Telstra Corporation Limited v Desktop Marketing Systems Pty Ltd [2001] FCA 814

Procedural Posture

Intellectual Property Copyright Proceeding / Orders and Declarations Following Trial on Issues of Liability

Legal Issues

1. 1 ["Whether declarations should be made that copyright subsists in Telstra's White Pages directories, Yellow Pages directories and Headings Books and that Telstra owns that copyright." "Whether declarations should be made that Desktop Marketing Systems Pty Ltd infringed Telstra's copyright by producing the Marketing Pro CD-rom, Australian National Phone Directory CD-rom later renamed CD Phone Directory CD-rom, and Australian Phone Disc CD-rom without licence." 'Whether a declaration should be made that Desktop Marketing Systems Pty Ltd converted the CD-rom products to its own use under Copyright Act 1968 (Cth), s 116.' 'Whether further declarations should be made for alleged infringement by sale of the CD-roms and by authorising production of documents containing material from the CD-roms.' 'Whether leave to appeal should be granted and remaining issues stayed pending appeal.' 'Whether the declarations are interlocutory where they finally dispose of liability issues but not the whole proceeding.']

Ratio Decidendi

Because the earlier reasons resolved in Telstra's favour that copyright subsisted in the specified directories and Headings Books, that Telstra owned that copyright, and that Desktop Marketing Systems Pty Ltd infringed it by producing the identified CD-rom products without licence, declarations to that effect and a declaration of conversion under s 116 were warranted. Further declarations for infringement by sale and authorisation were not made because the judgment had not made sufficient findings of fact and those claims were to be deferred pending the proposed appeal. Leave to appeal was granted if necessary and the remaining interlocutory steps and issues were stayed pending the appeal.

Court Disposition

Declarations made for copyright subsistence, ownership, infringement by production of CD-rom products, and conversion; leave to appeal granted if necessary; remaining steps and issues stayed pending appeal; costs reserved.

Orders

• ["Copyright subsists in Australia in the White Pages directories referred to in Annexure A to the applicant's further amended statement of claim, the Yellow Pages directories referred to in Annexure B, and the Headings Books referred to in Annexure C." 'The applicant is, and at all material times was, the owner of...