Cable & Wireless Jamaica Ltd v Mossel (Jamaica) Ltd (T/A Digicel) and Oceanic Digital Jamaica Ltd

• Jurisdiction: Jamaica
• Judge: Cor: Rattray, J.
• Judgment Date: 27 September 2011
• Judgment citation (vLex): [2011] 1 JJC 0501
• Court: Supreme Court (Jamaica)
• Docket Number: CLAIM NO.2005CD-002
• Date: 27 September 2011

IN THE SUPREME COURT OF JUDICATURE OF JAMAICA

CLAIM NO.2005CD-002

BETWEEN

CABLE & WIRELESS JAMAICA LIMITED

CLAIMANT

AND

MOSSEL (JAMAICA) LIMITED (T/A DIGICEL)

1 ^ST PARTY AFFECTED

AND

OCEANIC DIGITAL JAMAICA LIMITED

2 ^ND PARTY AFFECTED

^st

^nd

INTELLECTUAL PROPERTY - Copyright - Whether Cable & Wireless owned copyright to its Customer Directory Database - Application for declaration - Copyright Act

Cor: Rattray, J

1 In the 1970's when Samora Machel uttered the memorable words, ‘a luta continua’, he perhaps would not have envisioned their applicability to the expanding telecommunications landscape in Jamaica. However, nowhere are those words more appropriate, as the clash of the telecommunications titans Cable & Wireless Jamaica Limited (C&WJ), and Mossel Jamaica Limited (Digicel) continues. The present dispute swirls around whether or not C&WJ owns the copyright and all related rights in its customer and directory database. C&WJ maintains that it does and has filed legal proceedings by way of an Amended Fixed Date Claim Form seeking a Declaration in those terms. As is to be expected, that application has been met with strenuous resistance by other players in the industry.

2 C&WJ was the first, and for many years the sole, telecommunications service provider in Jamaica. It operated initially under the name Jamaica Telephone Company Limited and then Telephone Company of Jamaica Limited before the assumption of its present name. It was responsible for the creation of the first telephone directory in Jamaica, in which was entered the names, addresses and telephone numbers of Jamaican residents and businesses, who were subscribers of its telephone services. This directory was made available to the public in 1927.

3 The Affidavit of Nicole Bertram, the Directory Publishing and Internet Administrator of C&WJ set out in some detail the work involved in compiling and maintaining the telephone directory. Agents of C&WJ canvassed the entire Island in order to collect names, telephone numbers and address of all residents and businesses that agreed to have their information published in its telephone directory. That information, as well as all transactions relating to the subscribers, such as details of bills generated and listings of bills settled and those outstanding were recorded in a unified central database known as the Customer Information System (CIS). That database was created in 1992 and is maintained by C&WJ. It is the primary database of C&WJ which feeds Directory Assistance/Enquires utilising 114, the number dialed by customers for assistance or enquires.

4 Nicole Bertram went on to state in her Affidavit, that the creation of the White Pages of a telephone directory, which covered residential and business customers by virtue of universally accepted standards, permitted only one mode of arrangement of the information of subscribers. The subscriber's surname was inserted first, followed by the Christian name and then by the address and telephone number. The listings for the Yellow Pages, which cover business customers only, were done by an alphabetical subject classification and then customers were listed alphabetically within the subject classification. C&WJ decided which subjects were suitable for this classification, taking into account the classifications used elsewhere and the products available in Jamaica.

5 In her Affidavit, Ms. Bertram deponed to the fact that the arrangement of subscriber information for the first time in Jamaica, required the agents of C&WJ to skillfully arrange the date and verify the details so as to ensure accuracy and functionability. A directory of fixed line customers was published each year and as a result, updating of customer information, as well as the inclusion of information relating to new customers was a continuous process. C&WJ separated some of the listings in the printed directory into categories, due to the increased volume of subscriber information and to facilitate the better arrangement of its data. In 1987, it started to publish Government Listings separately as Blue Pages. In it's 2004/2005 Directory, it separated business subscribers from residential subscribers. It now publishes a Residential Directory and a Business Directory, with the latter named Directory also containing the Yellow Pages. The information for the White Pages, Yellow Pages and Blue Pages in both the Residential and Business Directories emanates from CIS database.

6 In 2001, C&WJ created and designed an information exchange programme between the CIS and its Directory Database Publishing System, known as ‘Yellow Magic’. Under this programme, information collected from the application forms compiled by new subscribers was entered into the CIS where it was then channeled through C&WJ'S Directory Clean Up Programme. This programme standardized the listings and formatted the telephone and address details. Once formatted, the information was imported into Yellow Magic where it was checked for quality and updated for final compilation and publishing. Yellow Magic was used by C&WJ to create its printed Directory each year and was maintained by its Directory Services Team, at a cost of approximately $35,000,000.00 per annum.

7 Ms. Bertram in her Affidavit further outlined information as to the work involved by C&WJ in compiling and maintaining the directory, including the employment of systems analysts, database administrators, information technology specialists and other personnel, both locally and in the United Kingdom. A Directory Assistance Service was developed by C&WJ to increase the level of service to its customers and was first offered to the public in 1948. Information for this service was derived from its primary database, the CIS, the maintenance cost of which was approximately US$2,000,000.00 per annum.

8 Ms. Bertram described the total directory product offering of C&WJ to subscribers as consisting of the Directory Assistance Service, the Telephone Directory and the Internet Phone Book located at www.jamaicayp.com . She asserted that her company had invested considerable time, capital, skill, labour and judgment in creating its directory databases and printed and electronic/internet directories. As such, she stated in her Affidavit that if no copyright were deemed to vest in the Directory Database of C&WJ, the company would be required to provide other telecommunications service providers with the database and access thereto, at a cost which it felt would be inconsistent with its rights and the value of its ownership.

9 In response to the application by C&WJ, the 1 ^st Party Affected Mossel (Jamaica) Limited (t/a Digicel Jamaica), filed a Notice of Application for Court Orders seeking the following Orders:-

• 1. That the Claim be dismissed for uncertainty of subject matter and uncertainty of the rights sought by the Claimant in respect of said subject matter.

• 2. Further, or in the alternative to order no. 1, a Declaration that the Copyright Act does not accord protection by way of copyright or related rights to facts or data comprised in the Claimant's directory database/listings or at all.

• 3. Further, or in the alternative to order no. l, a Declaration that the Claimant's customer and directory database/listings do not qualify as original intellectual creations and as such are not protected by the Copyright Act.

• 4. As an alternative to order no.3, in the event the Court may find that any copyright exists in the Claimant's customer and directory database/listings whether in whole or in part, a declaration that such protection does not extend to the factual information or data comprised therein and that, accordingly, access to that information by the Applicant ought not to be impeded by virtue of the Copyright Act.

• 5. The cost of this application be costs in the claim.

10 An Affidavit was filed by Stacey Mitchell, the Legal Counsel for Mossel (Jamaica) Limited, (‘Digicel’) in support of its Notice of Application for Court Orders and in opposition to the claim by C&WJ for the Declarations sought in this matter. In her Affidavit, Miss Mitchell identified Digicel as a telecommunications and GSM mobile service provider that had been operating in Jamaica since April, 2001. At the time she deponed to this Affidavit, it provided services to over one million customers. She stated that Digicel offered services to the Jamaican population as a whole and as such, had a vested interest in obtaining access to the factual contents of the Claimant's directory database, namely the names, addresses and phone numbers of the subscribers of C&WJ. From advice received from Digicel's Database Administration Manager, Ms. Mitchell was of the view that other information pertaining to C&WJ'S subscribers could be safeguarded, as inherent in the creation of a database such as that belonging to C&WJ, was the ability to limit access to the contents or certain aspects of the database in accordance with predetermined criteria. In such an instance, not all users of a database would have access to all the information contained therein.

11 In answer to Ms. Bertram's statement that C&WJ created and distributed the first telephone directory in Jamaica in 1927, Ms. Mitchell responded that C&WJ was the sole telecommunications provider in Jamaica at that time and in fact up to 2001. There was therefore no competing telecommunications service then and as...