Subject to any order as to costs previously made, the applicant pay the respondents' costs, including reserved costs.
The operation of the previous order be stayed for 21 days, during which period the parties have liberty to apply on the matter of costs.
[2]
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 Federal Law Search on the Court's website.
[3]
REASONS FOR JUDGMENT
1 In this proceeding, the applicant, Acohs Pty Ltd ("Acohs"), sues the first respondent, Ucorp Pty Ltd ("Ucorp"), and the second respondent, the director of Ucorp, Bernard Bialkower, for alleged infringement of copyright under the Copyright Act 1968 (Cth) ("the Copyright Act"), for declarations, damages and injunctions for alleged breaches of ss 52 and 53 of the Trade Practices Act 1974 (Cth), in passing off, and for alleged infringement of trade mark. At trial, only the copyright aspects of Acohs' claims were pursued, and I shall say nothing further about its other causes of action. As so limited, the case is about copyright in relation to particular kinds of electronic information sheets which must be prepared and provided with respect to hazardous substances and dangerous goods. The respondents deny that the things in which the applicant claims copyright are literary works, and deny that they are original works of which employees of Acohs were the authors. In the alternative, they say in relation to some of the so-called works that the copyright, to the extent that it existed, was assigned to Acohs' customers. They say that, if (which is not substantially in issue) they did reproduce any works in which Acohs held copyright, they did so pursuant to an implied licence. They also raise some other objections to Acohs' claim to which, because of the way I have decided the points so far mentioned, I need not consider further.
[4]
Legislative requirements for Material Safety Data Sheets
2 Pursuant to the terms of regulations to which I shall refer in more detail presently, the manufacturer, importer or supplier ("MIS") of certain substances (described variously as "dangerous" or as "hazardous") must prepare a Material Safety Data Sheet ("MSDS") which sets out prescribed categories of information about the substance in question. Any person to whom the substance is supplied must be provided with a copy of the MSDS. Employers, and the occupiers of certain premises, using, or having on-site, a substance of this kind must have readily accessible a copy of the relevant MSDS. In use across Australia, there are thousands of dangerous or hazardous substances to which obligations of this kind would attach. The need for users of these substances, and for employers and their staff, to have ready access to the relevant MSDSs has led to the emergence of business undertakings of the kind with which this proceeding is concerned.
3 The provision and content of MSDSs has, however, not always been the subject of regulation. Originally, it seems, there was a certain ad hocery about the provision of MSDSs by MISs and, where they were provided, about their format and content. In 1986, the National Occupational Health and Safety Commission (established under the National Occupational Health and Safety Commission Act 1985 (Cth)) ("the NOHSC") published a "guidance note" for completion of an MSDS, which provided general instructions on how to compile an MSDS, with standard content and format, and containing the minimum information which was relevant and suitable for use in Australia. However, the system thereby produced had its shortcomings, and in 1994 the NOHSC published three things: the National Code of Practice for the Preparation of Material Safety Data Sheets ("the 1994 preparation code"); the National Model Regulations for the Control of Workplace Hazardous Substances ("the model regulations"); and the National Code of Practice for the Control of Workplace Hazardous Substances ("the 1994 control code").
4 The model regulations came to have a substantial influence on the content of the regulations made in the States and Territories. The Commonwealth's own regulations were the Occupational Health and Safety (Commonwealth Employment) (National Standards) Regulations 1994, recently renamed the Occupational Health and Safety (Safety Standards) Regulations 1994 ("the safety standards regulations"). As at 1999, reg 6.05(2) provided as follows:
(2) An MSDS must:
(a) set out the name, and Australian address and telephone numbers (including an emergency number), of the manufacturer or importer; and
(b) for the hazardous substance to which it relates:
(i) clearly identify the substance in accordance with the National Code of Practice for the Preparation of Material Safety Data Sheets [NOHSC:2011 (1994)]; and
(ii) set out its recommended uses; and
(iii) describe its chemical and physical properties; and
(iv) disclose information relating to each ingredient to the extent prescribed by regulation 6.07; and
(v) set out the substance's risk and safety phrases and any relevant health hazard information about the substance that is reasonably practicable for the manufacturer to provide; and
(vi) set out information concerning the precautions to be followed in relation to its safe use and handling.
5 The 1994 preparation code was advisory only. It provided (in cl 5.2) as follows:
MSDS are used internationally to provide the information required to allow the safe handling of substances used at work. MSDS assist employers to discharge their general duty of care to employees by providing them with information on the hazardous substances that they are working with and the hazards associated with those substances. The MSDS provides information on:
(a) identification:
(i) product name,
(ii) physical description and properties,
(iii) uses, and
(iv) composition;
(b) health hazard information;
(c) precautions for use; and
(d) safe handling information.
The code provided "general guidelines" for the preparation of MSDSs. It identified "core information", which was essential information that should always be included in an MSDS, and "conditional information", which was information which should be included where relevant and available. Under the heading "format" the guidelines provided that an MSDS was "not a fixed length document". The amount of information to be provided in the major sections of an MSDS was variable, "so that if there is a great deal of relevant information on one item, that section can be expanded".
6 The guidelines set out a "recommended format" for an MSDS. A copy of that format is set out in Appendix 1 to these reasons. As will be seen, there were four main sections of substantive information in such an MSDS, under the headings Identification, Health Hazard Information, Precautions for Use and Safe Handling Information. The 1994 preparation code provided detailed, and quite extensive, guidance as to the completion of the particulars required in each of these sections of an MSDS. This recommended format came to be known as the "4-section" (or "4-header") format for MSDSs.
7 The 1994 preparation code was replaced in 2003 by the National Code of Practice for the Preparation of Material Safety Data Sheets, 2nd Edition ("the 2003 preparation code"). It introduced a 16-section (or 16-header) format. A copy of the recommended format appended to the code is set out in Appendix 2 to these reasons. Under the heading "Document format", the code stated that an MSDS was "not a fixed length document". The length of the MSDS was to be commensurate with the hazard of the material, and the information available. The code provided detailed particulars of the categories of information that were required to be included (the "core information"), and that might, where relevant, be included ("additional information"), under each of the 16 headers in the recommended format.
8 In 2006, reg 6.05(2) of the safety standards regulations was amended and now provides that an MSDS must be in accordance with the 2003 preparation code. As a result, use of the 16-section structure became mandatory. Notwithstanding the now prescriptive nature of the 2003 preparation code, and of the structure for MSDSs required thereby, Ian Cowie, the director of Acohs, gave the following evidence, upon which he was not challenged:
The [4-header] structure and the 16 Header structure do not dictate the layout presentation and appearance of MSDS. In my experience, MSDS authored in accordance with each structure vary considerably in the way they look by reason of the author's choice of formatting variables such as heading font sizes, spacing, underlining, type faces, the use of sub-headings and tables and many other variables.
9 Obligations as to the preparation and provision of MSDSs, and requiring their availability in particular industrial settings, arise under the safety standards regulations and corresponding regulations in the States and Territories. I shall summarise the effect of those regulations, referring first (in each of the main subject-matter areas) to the position in New South Wales, and following with a brief note on the extent to which the regulations in each other jurisdiction differ in material respects.
10 In New South Wales, under cl 150(1) of the Occupational Health and Safety Regulation 2001, a manufacturer of a "hazardous substance" must prepare an MSDS for the substance before it is supplied to another person for use at work. A like obligation arises under cl 174J(1) in relation to "dangerous goods", save that the MSDS must be prepared before the goods are supplied to another person, whether or not "for use at work". A person who imports a hazardous substance, or dangerous goods, manufactured outside New South Wales for supply to others, or for the person's own use, must ensure that the responsibilities of a manufacturer under cl 150(1) or cl 174J(1), as the case requires, are met: see cll 148(2) and 174F respectively.
11 Obligations broadly similar to those referred to in the previous paragraph arise under:
Reg 4.1.5(1) of the Occupational Health and Safety Regulations 2007 (Vic) (concerned with hazardous substances, where the MSDS must be prepared before the substance is first supplied to "a workplace") and reg 306(1) of the Dangerous Goods (Storage and Handling) Regulations 2000 (Vic) (concerned with dangerous goods);
Section 190(1)(a) of the Workplace Health and Safety Regulations 2008 (Qld) (concerned with hazardous substances) and s 12(1)(a) of the Dangerous Goods Safety Management Regulations 2001 (Qld) (concerned with dangerous goods) (in both of which cases the MSDS must be prepared before the substance, or the goods, is or are manufactured or imported, or as soon as practicable thereafter);
Reg 4.1.5(1) of the Occupational Health, Safety and Welfare Regulations 1995 (SA) (concerned with hazardous substances);
Reg 5.5(1)(a) of the Occupational Safety and Health Regulations 1996 (WA) (concerned with hazardous substances, where the MSDS must be prepared with respect to a substance that has been manufactured or imported "for use at a workplace") and reg 18 of the Dangerous Goods Safety (Storage and Handling of Non-explosives) Regulations 2007 (WA) (concerned with dangerous goods);
Reg 70(1)(a) of the Workplace Health and Safety Regulations 1998 (Tas) (concerned with hazardous substances, where the MSDS must be prepared with respect to a substance that has been manufactured or imported "for use at a workplace");
Reg 67(1)(a) of the Workplace Health and Safety Regulations (NT)(concerned with hazardous substances, where the MSDS must be "produced" with respect to a substance "for use at a workplace", and where the obligation falls upon the "supplier", defined to mean a person who imports, manufactures, wholesales or distributes the substance, but [not including] a retailer");
Section 215(1)(a) of the Dangerous Substances (General) Regulations 2004 (ACT) (concerned with "dangerous substances", where the MSDS must be prepared before the substance is manufactured or imported, or as soon as practicable thereafter);
Reg 6.05(1) of the safety standards regulations (concerned with hazardous substances, where a relevant MSDS must be prepared before a substance which the manufacturer knows, or ought reasonably to expect, will be used by employees at work is supplied to the employer of the employees).
12 Under cl 150(6) of the Occupational Health and Safety Regulations 2001 (NSW), the manufacturer of a hazardous substance "must review and revise the MSDS as often as is reasonably necessary to keep it up to date and, in any event, at intervals not exceeding 5 years". A like obligation arises under cl 174J(3) in relation to dangerous goods. Similar obligations arise under:
Reg 4.1.7 of the Occupational Health and Safety Regulations 2007 (Vic) and reg 306(1) of the Dangerous Goods (Storage and Handling) Regulations 2000 (Vic) (in each case the obligation being to "review" only); Dangerous Goods Safety (Storage and Handling of Non-explosives) Regulations 2007 (WA)
[5]
The businesses of Acohs and Ucorp
19 Acohs and Ucorp produce MSDSs, or copies of MSDSs, for MISs and for the users of substances to which MSDSs relate. There are two principal contexts in which this might be done. The first is the creation of an MSDS for a particular substance on behalf of the MIS concerned. As will become clear, that is not a simple task, and requires both a qualification in science or a like discipline and much experience in the practical task of expressing information about the substance of interest in a way that will be compliant with the relevant regulations and readily intelligible in a broad range of industrial settings. This task is described by Acohs as "authoring" an MSDS, and it is a service which both Acohs and Ucorp provide to MISs. The second context is where the service is provided not to MISs but to those who would use, or would need to have access to, an MSDS - most typically in this context, to a large number of MSDSs. For example, a large industrial concern may store, and use in its operations, many potentially hazardous chemicals and other substances. Rather than making contact with the numerous MISs of these substances (or relying on the original paper versions of MSDSs obtained at the time of acquisition of the substances), the concern may engage Acohs or Ucorp to provide it with electronic access to all the relevant MSDSs. A further advantage of so proceeding is that the user may rely on Acohs or Ucorp to keep the MSDSs up to date.
20 Although both Acohs and Ucorp deal in electronic MSDSs (ie rather than paper ones), the means by which they create, store and disseminate MSDSs are different in ways which go to the centre of the dispute in the present case. When Ucorp authors an MSDS for an MIS, it will create an electronic document as such, which will then be stored in its electronic library, which it calls "the Collection". Documents may be stored, and viewed electronically, in various formats (ie as HTML files, as PDF files or as word processor files). A user who secures access to such an MSDS will view the document as it is stored. When Ucorp is required to give access to an MSDS of which it has not been the author for the relevant MIS, it will locate the MSDS on the Internet (and/or by direct communication with the MIS), download the MSDS as an entity and then store it as part of the Collection, from where any of its non-MIS customers who might require access to the MSDS could, under appropriate commercial relationships with Ucorp, achieve that access. Necessarily, such an MSDS will be identical in content and appearance to the "original" MSDS from which it was derived.
21 The Acohs system of producing MSDSs is very different. Acohs does not maintain a library of MSDSs as such. Rather, it maintains a large relational database (described in the evidence as a "network of databases", but for present purposes use of the singular will be sufficient) called the "Central Database" or "CDB". All the data required to generate a particular MSDS (indeed, all the data required to generate some 200,000 MSDSs overall) are stored in the CDB. When access to a particular MSDS is required, the Acohs software calls up the necessary components from this database, and assembles them in a way which is represented on the user's screen as the MSDS of interest. As Mr Cowie put it in his affidavit sworn on 3 July 2008:
An essential feature of the design of the Infosafe System is that it does not store discrete documents. It stores only the raw data which the programs call upon in response to a user request to compile or generate the report required.
22 It follows that, in the case of Acohs, there is no function which corresponds directly to Ucorp's copying of MSDSs for storage in the Collection. Rather, what happens at Acohs is that elements of data which are required to make up MSDSs are entered into the CDB. When Acohs "authors" an MSDS, a member of its "Professional Services Group" ("PSG") enters data into the CDB in response to prompts given by the computer program which controls the database. When Acohs needs to copy an existing MSDS (eg for the purposes of a customer who is an industrial user of the substance in question), a "transcriber" will, again in response to prompts from the program, enter the exact content of the existing MSDS into the CDB. I shall refer in more detail to each of these processes below, as they bear importantly upon the issues of authorship and originality which are contentious in this proceeding. There is a third means by which the data for a new MSDS may be entered into the CDB, which involves Acohs' MIS customers undertaking their own authoring. This involves a further layer of sophistication in the Acohs system, and I shall refer to it too below.
[6]
The Infosafe System
23 The system by which Acohs authors, transcribes and supplies MSDSs is called the "Infosafe System". Every MSDS produced by this system is given a unique number, its "Infosafe" number. Fundamental to the determination of Acohs' copyright claims in this case is an understanding of how the Infosafe system works.
24 The technical centre of the Infosafe System is a computer program - written in Visual Basic code - which has the functions of receiving a request for the generation of a particular MSDS, of calling up the data and other elements from the CDB, of compiling the relevant HTML source code, and of sending that code to the user's computer. To do this, the program uses "routines" called "GETHTML", "Generate_MSDSReport" and "GenerateHTML". These routines are in turn run by a fourth routine, "WebClass_Start". The source code will then cause the MSDS to appear as intended on the user's screen, in the conventional way of web pages generally. The source code will contain all the content of the electronic document which is to appear on the screen (ie the "data"), as well as the "tags" and other instructions necessary to give a particular layout, presentation and appearance to an MSDS. Thus, for example, the instruction that finds its way into the source code of the MSDS to require a heading to be placed within a box will be an element of the routine. The routine will combine that instruction with data retrieved from the CDB (in this case, the heading itself). The same instruction - to apply the box - will be used time and again with different headings as may be appropriate to the situations of different MSDSs being electronically generated.
25 Authoring of MSDSs is a service which Acohs offers to its customers who are MISs. Such authoring is carried out by Acohs employees in the PSG who have qualifications in science or science-related disciplines. The means by which new MSDSs are created by the authors employed by Acohs were explained by one of them, Nga Dam, a chemical engineer who has been employed by Acohs since 2002. To author an MSDS, Ms Dam uses the editor module in the Infosafe software. This program displays a menu of items and categories on Ms Dam's computer screen, by reference to which the appropriate data are entered. The menu of items reflects the 16 headers in the format for MSDSs mandated by the 2003 preparation code. Each of those items may be expanded to reveal a list - and in some cases a very extensive list - of subheadings. When Ms Dam selects one of the headings or subheadings on the menu, the body of the screen provides the visual environment for the entry of the appropriate data. In some cases, the data will be entered by reference to preset categories, whilst in others a short passage of text must be used. In the latter respect, Ms Dam has access to an extensive collection of standard risk phrases, which are part of the software.
26 At no stage while Ms Dam is entering data in the way described above does the partially-completed MSDS itself appear on the screen. She is not in the position of someone conventionally writing a new document by way of a word processor, for example. Rather, what appears to her is a series of data-entry screens by reference to which she enters the content that will ultimately make up the MSDS. However, having completing the task of entering data for a new MSDS, Ms Dam will exit from the editor module of the Infosafe software, and will call up the completed MSDS on her screen, for the purpose of ensuring "that I had completed the MSDS in accordance with the regulations and that the MSDS is internally consistent and accurate."
27 A separate, but similar, function which Ms Dam performs as author is the review of existing Acohs MSDSs. Under reg 6.05(4) of the safety standards regulations - and under corresponding regulations in the States and Territories - it is the obligation of every MIS to review its MSDSs at least every five years. When she is called upon to review an existing MSDS, Ms Dam will again use the editor module, but this time, when brought up on her screen, that function of the Infosafe software will reveal, under the appropriate menu items, the data which is relevant to the existing MSDS. Ms Dam must consider the contemporary accuracy and appropriateness of that data, and make such changes as are necessary. She made it clear in her evidence that she did not regard the process of reviewing an MSDS as involving any less responsibility, or any less onerous obligations, than the process of creating a new MSDS.
28 The second means by which a new Infosafe MSDS might come into existence is "transcription". Here transcribers employed by Acohs (or, since about 2003, by Acohs (Shanghai) Information and Technology Pty Ltd) will take an existing MSDS (ie a non-Acohs MSDS) and, using the editor module, faithfully enter into the CDB every piece of information which is set out on the existing MSDS. This is because neither Acohs nor the customer for whom it transcribes has the authority to alter an MSDS as issued by the MIS. Thus, when the Acohs version of the MSDS is called up from the CDB, it will be identical in point of content and expression with the original, but will have the general appearance, layout and presentation of all Acohs MSDSs. In his affidavit sworn on 3 July 2008, Mr Cowie provided several examples of MSDSs as issued by the original MIS, and as generated by the Infosafe system after transcription by Acohs' staff. Appendices 3 and 4 to these reasons are, respectively, the MSDS for a product called "Bettazyme II" as issued by the MIS and the corresponding MSDS generated by the Infosafe System. It will be seen that the layout and appearance of the version generated by Infosafe differs somewhat from the original. There is, however, no difference in the content.
29 Acohs has two commercial applications to which its customers may subscribe for the purpose of viewing (and, in some cases, creating) an MSDS. They are known as Infosafe 2000 Web ("I2000W") and Infosafe 2000 Client Server ("I2000CS"). In the case of I2000W, a user (for example, an employer seeking access to the MSDS of an MIS) will have on-line access to the MSDSs covered by its subscription. Without having to go to the web site of the MIS concerned, the user may call up the MSDS of interest electronically from the CDB. The Infosafe program will then cause the elements of the HTML source code for the MSDS in question to be collected from the CDB, assembled and sent down the line to the user's computer. In the case of I2000CS, selected elements of the CDB of relevance to the user will, together with the necessary application software, be installed on the user's own computer, so that the user may view all MSDSs of interest without going on line. I2000CS also contains the editor module, enabling a customer who is the relevant MIS to author its own MSDSs, and to modify an MSDS from time to time, whether the MSDS had been authored originally by it or by Acohs for it. It may, but need not, transfer the data it entered - whether on the original creation of an MSDS or on a variation - to Acohs for inclusion in the CDB. This is the third means by which a new Infosafe MSDS might come into existence. Another feature of I2000CS is that an MSDS may be presented on the user's screen not only in HTML format, but also in PDF format, by means of a program (which is part of the installed software) called "Crystal Reports".
30 The Visual Basic program was originally written over the period 1996 - 1998 by Danny Lau, a consultant (or whose company was a consultant - the detail of this is not clear in the evidence) to Acohs. Towards the end of the project, he was assisted by Chien Yu Lee and Sei Nghi Trang, programmers employed by Acohs. Mr Cowie gave Mr Lau instructions as to the layout, presentation and appearance which he wanted for the Infosafe MSDSs. With his programming skills, and with his understanding of the technology being used to retrieve elements of an MSDS from the CDB, Mr Lau wrote the Visual Basic code used by Acohs. This code has been updated many times since. In his affidavit, Mr Cowie said that the Infosafe 2000 applications were "continually being upgraded" and that the software routines which enabled the system to generate MSDSs were "also continually being updated". In each case, the upgrading and updating is done by programmers in the employ of Acohs.
[7]
The development of Acohs' copyright claim
31 The means by which Acohs identified the MSDSs upon which it would sue ultimately involved complete reliance on the respondents' discovery. That is to say, the respondents gave discovery of all the MSDSs in the Collection that could be shown to have come from Acohs (eg, and most commonly, by bearing the words "Infosafe No"), and Acohs then treated them as the works upon which it sued. The result of this, quite evidently, was that Acohs' reproduction allegations were almost tautological. But that is to anticipate a subject to which I shall turn below.
32 Acohs' identification of the copyright works on which it sued was originally problematic, and gave rise to difficulties which were resolved only by an amendment for which I considered I had no choice but to give leave on what transpired to be the penultimate day of the trial: see Acohs Pty Ltd v Ucorp Pty Ltd (No 2) (2009) 82 IPR 493. It is not presently necessary to go further back than Acohs' Fifth Further Amended Statement of Claim, filed on 13 December 2007. The copyright claim, set out in para 8 thereof, was in the following terms:
Acohs is the owner of the copyright subsisting in the Infosafe System which includes (but is not limited to) the copyright subsisting in the following original literary works:
(a) the source code of each of the HTML and PDF files for MSDS rendered by the Infosafe System;
(b) the layout, presentation and appearance of each Infosafe MSDS rendered by the Infosafe System;
(c) a compilation of data which, in combination with the Infosafe management programmes, generated and rendered the MSDS as required by Blackwoods pursuant to the License [sic] Agreement set out in paragraph 10 below (the Blackwoods Compilation).
Particulars were annexed.
33 The respondents' Defence (filed on 17 June 2008) to para 8 of Acohs' pleading was both complex and lengthy. It included the following in relation to the layout claim in sub-para (b):
(a) in relation to the layout, presentation and appearance of each Infosafe MSDS referred to in sub-paragraph (b) of the Claim:
(i) each MSDS as a whole, including the words and data in the MSDS and the manner in which the words and data are laid out, presented and appear in the MSDS, constitutes a single literary work for the purposes of the Copyright Act 1968 (Cth) ("Copyright Act");
(ii) the "layout, presentation and appearance" of each MSDS does not constitute a separate literary work from the literary work constituted by the MSDS as a whole, including the words and data in the MSDS;
34 In a Reply filed on 2 July 2008, Acohs responded to these aspects of the Defence in terms which included the following:
Further to sub-paragraphs 8(a)(i) and (ii) thereof it says that:
(a) each MSDS in Annexure A to the Fifth Further Amended Statement of Claim (the statement of claim) is a separate literary work and a separate compilation being a literary work;
(b) The Applicant has, in paragraph 8 of the statement of claim (and the Particulars of Ownership thereto) set out the main (and relevant) original contributions made by the Applicant to the creation of the works in suit (being those in Annexures A and B to the statement of claim);
(c) the reference in paragraph 8 of the statement of claim to the Applicant's original contributions to the creation of the works does not limit the scope of the copyright subsisting in the works in suit nor the scope of the copyright owned by the Applicant (as made clear in the Particulars of Ownership last paragraph), but merely focuses upon those aspects of reproduction and infringement in respect of which the Applicant sues and seeks relief;
Relevantly to Acohs' layout claim (that made in para 8(b) of its pleading) this represented the parties' positions during most of the trial of the case.
35 The particulars of copyright ownership on which Acohs went to trial were those annexed to its Fifth Further Amended Statement of Claim. Those particulars were divided into four parts. The first contained a general explanation of the Infosafe System; the second dealt with source code; the third dealt with the "layout, presentation and appearance" of Acohs' MSDSs; and the fourth dealt with the "Blackwoods Compilation". It was in these particulars that one found the essence of Acohs' copyright ownership claim.
36 Under "the Infosafe System", the particulars commenced as follows:
The Infosafe System comprises software applications and relational database repositories which work together to generate and render MSDS in electronic formats that can be viewed and printed by use of a computer. The Infosafe System includes web based applications, known as Infosafe 2000 Web, which generate and render MSDS in HTML and/or PDF format for delivery over the world wide web and client server applications, known as Infosafe 2000 Client Server, which generate and render MSDS in HTML and/or PDF format.
The particulars then stated that the development of the software applications, described as "management computer programs", began in 1988, and they named the persons by whom the software was written and designed. It was said that the applications "have been updated from time to time since". The "software routines" that call for and retrieve the data and generate the required source code which was said to "reflect the templates" were identified by name. The particulars then continued:
The relational database repositories in the Infosafe System have been made principally by ACOHS employees coding, collating and feeding data into [the CDB]…. In addition, some of ACOHS' customers who use the Infosafe System enter data into their own database repositories.
37 Under the heading "source code", the particulars stated that the HTML and PDF files for MSDSs in which the applicant claimed copyright were set out in a DVD annexed thereto. The organisation of those MSDSs on the DVD was explained in the particulars. Annexure A on the DVD contained two folders, the first of which contained 10,748 MSDSs generated for Blackwoods and the second of which contained 48,826 MSDSs generated in other circumstances. In each case, the MSDSs were either authored by Acohs, authored by Acohs and its licensees or transcribed. The MISs for whom Acohs authored MSDSs, and in conjunction with whom the applicant authored MSDSs, were identified by name. It was said that Acohs was unable to identify the customers for whom it transcribed MSDSs. In September 2009, as a result of further discovery given by the respondents, Acohs amended its particulars by adding a further DVD on which, set out by the reference to the same categories, in Annexure A1, were an additional 12,599 MSDSs for which it claimed copyright.
38 The break-up as between the different categories of MSDSs in Annexures A and A1 to Acohs' particulars were as follows (I have included the MSDSs in Annexure A1 under "other"):
Blackwoods Other
Authored by Acohs 3,772 47,889
Authored by Acohs and customers 9,164 11,361
Transcribed 6,060 2,175
[8]
39 The particulars next identified the sense in which Acohs claimed copyright in the layout, presentation and appearance of the MSDSs, as follows:
ACOHS claims copyright in the particular layout, presentation and appearance of MSDS rendered by the Infosafe System. All MSDS generated and rendered by the Infosafe System comprise data from the database repositories as compiled by the Infosafe System's software applications into the particular layout, presentation and appearance of Infosafe MSDS which is determined by the templates within the software applications. Each particular layout presentation and appearance of MSDS rendered by the Infosafe System in which the Applicant claims copyright in this proceeding appears in Annexure A and in Annexure B (the Templates Annexure) contained in the DVD annexed hereto, Annexure B being the Applicant's bare templates populated with sample data.
It was said that the particular layout, presentation and appearance of these MSDSs were authored by Mr Cowie and Mr Lau. The particulars continued:
The authorship of the layout, presentation and appearance of the MSDS involved the arrangement and division of headings, devising of data fields, selection of font sizes, styles, colours and highlights; horizontal and vertical spacing; margins; borders; heading styles; boxes and tables and other formatting (as can be seen from Annexure B) from an almost infinite combination of choices so as to present the information in the MSDS in an original, useful, informative, regulation-compliant, attractive, accessible and distinctive manner.
Each time an MSDS is generated or rendered by the Infosafe System it appears in the particular layout, presentation and appearance determined by the Infosafe MSDS source code at that particular time. Variations in the source code between versions of the Infosafe System may cause the display of the same MSDS to be viewed slightly differently as disclosed by the MSDS templates in Annexure B. Differences between internet browser applications that interpret the source code may cause the same MSDS to be viewed slightly differently.
40 Under the heading "The Blackwoods Compilation", the following particulars were provided:
Pursuant to the License Agreement referred to in paragraph 10 hereof, the Blackwoods Compilation was created exclusively by ACOHS employees. The MSDS and their underlying HTML files generated and rendered by the Infosafe software applications in conjunction with the Blackwoods Compilation are contained in the folder entitled "Blackwoods" in Annexure A. From time to time during the currency of the License Agreement, ACOHS updated the Blackwoods Compilation by removing some MSDS and adding or updating others in response to instruction from Blackwoods as to the MSDS required and in response to changes in the content of MSDS issued by the manufacturer, importer or supplier of the substance to which the MSDS relates. The compilation of data in the folder entitled "Blackwoods" in Annexure A is the Blackwoods Compilation downloaded by the Respondents on or about 3 September 2003 from the Acohs Blackwoods Website. ACOHS has not kept historical versions of the Blackwoods Compilation. The changes to the Blackwoods Compilation made during the currency of the License Agreement did not substantially alter the Blackwoods Compilation.
41 After having said that the Infosafe System was made exclusively by employees of Acohs pursuant to the terms of their employment, and having referred to s 35(6) of the Copyright Act, the particulars concluded as follows:
For the avoidance of doubt, ACOHS makes no claim to the bare unformatted data contained in the individual MSDS generated and rendered by the Infosafe System but ACOHS reserves its rights in relation to other aspects of the Infosafe System.
42 Returning to the pleadings as such, at trial the respondents contended that the layout, presentation and appearance of a document could not constitute a literary work. They did so at two levels. Their first point was a matter of the identification of the work: either the document as a whole was literary work or it was not. The indentation of sub-headings and the use of a particular colour and style of text boxes in a document, for example, could not be a work as such. Their second point related to the intrinsic concept of a literary work: features such as these could not be literary because they did not convey semiotic meaning. Acohs' response to the first point was not forthcoming until final submissions were being made in the case. It applied to amend its (then) Sixth Further Amended Statement of Claim by the replacement of para 8(b) with the following:
(b) each MSDS in Annexure A and Annexure A1 having its layout, presentation and appearance in accordance with one or other of the templates in annexure B;
As I have said, that amendment was allowed. Unsurprisingly, the respondents' initial reaction to that development was to anticipate the need to re-open their evidentiary case. I allowed them an adjournment so that they might consider their position.
43 During the adjournment, the respondents' solicitors wrote to Acohs' solicitor in terms which referred to the old and the new states of the pleadings, and to the aspects of Acohs' particulars which I have set out in paras 37-39 above. They made the point, implicitly if not expressly, that Acohs' disavowal of any claim to the "bare unformatted data" had the potential to present rather differently if it were an MSDS as such, rather than the layout, presentation and appearance thereof only, which was held out as the copyright work. The respondents' solicitors required "clear and unambiguous answers" to the following questions:
1. Does the expression "bare unformatted data" in the Ownership Particulars mean all of the words, figures and symbols in each MSDS the subject of the Claim, including all of the headings and subheadings?
2. If the answer to question 1 is "no", please identify precisely which words, figures and symbols in each MSDS the subject of the Claim Acohs contends fall outside the meaning of "bare unformatted data".
3. Does Acohs make any claim of originality in respect of the words, figures and symbols (if any) identified in response to 1 and 2 above in determining the originality of each MSDS as a literary work for the purposes of subsistence of copyright?
4. Does Acohs contend that the Court should otherwise have regard to any originality of the words, figures and symbols in each MSDS (ie the words, figures and symbols that Acohs contends fall within the meaning of "bare unformatted data") in determining the originality of each MSDS for the purposes of subsistence of copyright?
44 Acohs' solicitor did answer those questions, in the following terms:
1. No. It means the variable data which is inserted into the template of an Infosafe MSDS. As is apparent from Annexure B to the Statement of Claim, each template includes headings and sub-headings of fixed content. Those headings and sub-headings are presented and arranged as appears in the template. The arrangement and selection of those headings and sub-headings is part of the original content of Infosafe MSDS.
2. The headings and sub-headings which appear in the templates in Annexure B to the Statement of Claim are not comprehended by the expression "bare unformatted data". See 1 above.
3. Acohs does not claim that the headings and sub-headings are original, but that their selection, arrangement and layout are original. The selection, arrangement and layout are a function of the operation of the Infosafe system as described by Mr Cowie's affidavit of 2 July 2008.
4. No.
He provided the following further elaboration as to his client's understanding of "bare, unformatted data", and added a comment in relation to "layout, templates and content":
The layout of a document is organised by structural rules or instructions, (HTML for example), that identify headings, sections, lists and forms, and where words are placed on the relevant page.
The content or data which might be put into the document is ordered by the layout structure and is platform independent subject to minor idiosyncrasies of (in the case before us) of web browsers.
Templates, insofar as they relate to the web, are predesigned webpages which are divided into specific structural and content areas. The Infosafe templates, which are set out in Appendix B, contain various headings and subheadings as to where content and, in some cases logos, dropdown menus, footers, and instructions as to where content will appear in the document.
As you are well aware, the templates in Appendix B were authored by the Applicant's employees and are generated by the Applicant's source code which is written in the visual basic language.
In addition to the above, the appearance of the layout of the Infosafe MSDS is influenced by the use of typography, fonts and placement of headings etc. The Respondents called evidence in relation to both layout and appearance.
The content or data in the Infosafe MSDS is, as I have said, ordered by the predetermined layout of the Infosafe MSDS. That order is controlled by spaces, tabs, carriage returns etc in order to present the content in the predetermined layout on the web.
As can be seen from Mr Moody's affidavit the presentation of the content or data, without control is an unbroken string of words.
Thus bare unformatted data in an Infosafe MSDS is the variable data which appears in an MSDS, and which does not have spaces, tabs, carriage returns or other controlling instructions, whether those instructions be in HTML or Crystal Report PDF or HTML converted to PDF. As the Applicant has made clear, it has not sought to claim copyright in the bare unformatted data.
On the strength of that response from Acohs' solicitor, the respondents chose not to apply to re-open their evidentiary case.
[9]
The HTML source code as an original literary work
45 As appears from para 8(a) of Acohs' pleading, copyright is asserted in "the source code of each of the HTML and PDF files" for Infosafe MSDSs. However, in final submissions made on its behalf, Acohs confined its claim to HTML source code. As I understand it, the source code for an MSDS rendered in PDF format would never have been written by an individual, and would be unintelligible even to the programmers employed by Acohs. Rather, that source code will be machine-generated as part of the "Crystal Reports" function when a customer of Acohs uses I2000CS to produce an MSDS in PDF format. However these aspects may be, Acohs' final submissions were, as I have said, confined to HTML source code, and my reasons will be likewise.
46 I have referred to the means by which the source code for a particular MSDS is generated, and the use to which it is put, at paras 24 and 29 above. To give some idea of what source code contains, and how it is related to the relevant MSDS as the latter would appear on a computer screen, I have included, as Appendices 5 and 6 to these reasons, a copy of an MSDS as it appears on the screen and the source code for that MSDS, respectively.
47 There is no a priori reason to deny a body of source code such as that set out in Appendix 6 the status of a literary work. It consists of words, letters, numbers and symbols which are intelligible to someone skilled in the relevant area, and which convey meaning. It has a discrete existence as an entity in its own right, with a definite point of commencement and definite point of conclusion. It is fairly described as a set of statements or instructions to be used in a computer in order to bring about the appearance on the screen of the corresponding MSDS, and therefore as a "computer program", and thus a literary work, within the meaning of the Copyright Act. But even without recourse to that definition, I consider that the source code referred to has all the necessary attributes of a literary work in the traditional copyright sense, remembering always that the test is not literary quality, and that quite mundane, functional expressions may be literary works in the statutory sense.
48 The more difficult question is whether the source code for an Acohs MSDS is an original literary work. In IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458, six members of the High Court provided, in two separate judgments, firm reminders of the importance of authorship in bringing an original copyright work into existence. French CJ, Crennan and Kiefel JJ said (239 CLR at 470-471 [22]-[24]):
The "author" of a literary work and the concept of "authorship" are central to the statutory protection given by copyright legislation, including the Act.
Undoubtedly, the classical notion of an individual author was linked to the invention of printing and the technical possibilities thereafter for the production of texts otherwise than by collective efforts, such as those made in mediaeval monasteries. The technological developments of today throw up new challenges in relation to the paradigm of an individual author. A "work of joint authorship", as recognised under the Act, 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". As in other cases where the facts resemble those under consideration here, the Weekly Schedules (and the Nine Database) were the result of both a collaborative effort and an evolutionary process of development, involving in this instance both manpower and the use of computers. However, nothing in these reasons turns on any conclusion as to the precise identity of the author or authors of those works.
In assessing the centrality of an author and authorship to the overall scheme of the Act, it is worth recollecting the longstanding theoretical underpinnings of copyright legislation. Copyright legislation strikes a balance of competing interests and competing policy considerations. Relevantly, it is concerned with rewarding authors of original literary works with commercial benefits having regard to the fact that literary works in turn benefit the reading public.
Gummow, Hayne and Heydon JJ said (239 CLR at 496 [105]):
A generally expressed admission or concession by one party to an infringement action of subsistence of and title to copyright may not overcome the need for attention to these requirements when dealing with the issues immediately in dispute in that action. This litigation provides an example. The exclusive rights comprised in the copyright in an original work subsist by reason of the relevant fixation of the original work of the author in a material form. To proceed without identifying the work in suit and without informing the enquiry by identifying the author and the relevant time of making or first publication, may cause the formulation of the issues presented to the court to go awry.
Quite apart from the question whether the putative author was a "qualified person", and allowing for the possibility, in some cases, of a work having multiple authors, as a general proposition the need for a work to spring from the original efforts of a single human author is a fundamental requirement of copyright law. I use the expression "original efforts", of course, in the sense explained by French CJ, Crennan and Kiefel JJ in IceTV (239 CLR at 474 [33]).
49 The point at which the need arises to identify the author is (in the case of an unpublished work) the moment when the work is first reduced to a material form or (in the case of a published work) the moment when the work was first published in Australia (IceTV, 239 CLR at 495 [103]). In the present case, Acohs submitted:
The HTML source code for the Infosafe MSDS in Annexure A was in each case reduced to a material form over the period from the writing of the HTML generating routines in the Infosafe System and to the end of the process of creating the particular MSDS so that the HTML source code was able to be generated to enable the MSDS to be viewed. It is during that period that the HTML source code was reduced to a form of storage from which it was capable of being reproduced. That is, it is reduced to a material form for the purposes of the Act: Roland Corporation v Lorenzo & Sons Pty Ltd (1991) 33 FCR 111.
And:
Once the author or transcriber of an MSDS completes the process of authorship or transcription using the Editor Module, they view the completed MSDS on the screen and conduct a formal check to endure it is accurate and internally consistent. Where the MSDS is viewed by an author or transcriber on the screen in HTML, the completed HTML source code is stored in a file named "Default.htm". That HTML source code contains other HTML source code that creates internal hyperlinks that are not present in the HTML source code of an HTML MSDS produced by Infosafe 2000 Web or Client Server. For that reason it is not identical to the final HTML source code. However, in order to view the MSDS in HTML it is necessary that the corresponding HTML file exists somewhere in the computer. It is submitted that the HTML source code for each MSDS is stored as a complete source code when the author or transcriber checks the MSDS at the end of the process of authorship or transcription.
Aside from such issues as may arise from the existence of the internal hyperlink referred to in this passage, it is at least clear that Acohs contends that the source code said to be a literary work is first reduced to a material form at the point when the author or transcriber has completed his or her task and checked the appearance of the completed MSDS on his or her screen.
50 If it were Acohs' case that the author of the source code for each MSDS was the author or transcriber who undertook that task, the case would immediately confront the problem that he or she did not write the code, either in a traditional way or using a computer. Rather, the author or transcriber was, at least for the most part, engaged in the task of entering data into the CDB, it being the routine in the Infosafe System which gathered together the elements needed for the source code in question. As Acohs put it, the source code was "generated" by the system. This difficulty is not overcome by the circumstance that an author of an Acohs MSDS will frequently be required to devise a new phrase or expression for a particular MSDS: the question is whether the complete source code as a work is original, not whether some parts of it are. It may be accepted that, had the source code been written as such by an Acohs author, its originality would not necessarily be compromised by the existence of much material drawn from other places - even from material stored in databases. The problem is more that the source code as a work - ie as a complete entity - was not written by any single human author. It was generated by a computer program.
51 Acohs sought to overcome this difficulty by proposing that the computer used by authors and transcribers was "no more than a tool", relying upon the interlocutory and, it seems, ex tempore judgment of Whitford J in Express Newspapers plc v Liverpool Daily Post and Echo plc (1985) 5 IPR 193 in this respect. In that case, the task of devising a series of numbers in grids was undertaken by writing a program by which a computer would produce the desired result. Speaking of the person held to be the author, his Lordship said (5 IPR at 196):
What Mr Ertel says is that he started off by seeing whether he could work out these grids by just writing down appropriate sequences of letters. It soon became apparent to him that, although this could be done, and done without too much difficulty when just producing a small number of grids, if you are going to produce sufficient for a year's supply or something of that order, it becomes a very different matter indeed. It was immediately apparent to him that the labour involved in doing this could be immensely reduced by writing out an appropriate computer program and getting the computer to run up an appropriate number of varying grids and letter sequences.
….
The computer was no more than the tool by which the varying grids of five-letter sequences were produced to the instructions, via the computer programs, of Mr Ertel. It is as unrealistic as it would be to suggest that, if you write your work with a pen, it is the pen which is the author of the work rather than the person who drives the pen.
52 I am disposed to agree with Pincus J that the analogy between the computer and the pen is "rather [unconvincing]": see Roland Corporation v Lorenzo and Sons Pty Ltd (1991) 22 IPR 245, 252. However that may be, the analogy would not in any event justify the conclusion that the authors and transcribers in the present case used the computer to write the source code for each MSDS in the same way as Mr Ertel used his computer to produce grids in Express Newspapers. It was not as though the authors and transcribers, having in mind the source code they desired to write, used the computer to that end. They were not computer programmers, and there is no suggestion that they either understood source code or ever had a perception of the body of source code which was relevant to the MSDSs on which they worked.
53 At this point of the argument, Acohs introduced the contribution of the programmers who wrote the Visual Basic code which controls the operation of the Infosafe System. It submitted that they wrote the individual elements of source code that would ultimately find their way into the desired body of source code that caused each MSDS to appear on the screen when required. It was they who used the computer as a tool; and they well understood what a body of source code - relevant to a particular MSDS - would look like when it was generated by the program which they wrote. In my view, however, it would be artificial to regard the programmers as involved in the task of writing the source code for thousands of MSDSs yet to take a material form merely because they wrote, and amended, the program which, when prompted, would put together a selection of the fragments of source code which they did write with other fragments later contributed by the authors and transcribers.
[10]
The question of joint authorship of the HTML source code
54 This leads me to the way that Acohs in fact conducted its case in this proceeding. It did not submit that either the programmers or the authors/transcribers were, alone, the authors of the relevant source code in the copyright sense. Rather, it submitted -
…that the authors of the HTML source code for each MSDS in Annexure A were:
(a) Danny Lau … and/or Feng Liu Yang …, Chien Yu Lee … and Sai Nghi Tran …, who were the computer programmers who wrote the 'GenerateHTML' routines including the HTML instruction tags that are retrieved by the Infosafe System and placed into the HTML source code for the MSDS; and
(b) the individual who 'authored' or transcribed the data for each MSDS into the Infosafe System.
That is to say, Acohs' case was one of joint authorship, and it is to that concept that I must now turn.
55 Under s 10 of the Copyright Act, a "work of joint authorship" is defined as:
…a work that 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.
The questions, then, are whether the source code for a particular MSDS was written by the Visual Basic programmers (of the one part) and the particular author or transcriber, as the case may be (of the other part), in collaboration with each other; and whether the contribution of each was not separate from that of the other or others.
56 Counsel for Acohs pressed for an affirmative answer to be given to these questions by reference to what were said to be analogous situations in which I ought to regard it as self-evident that joint authorship was involved, such as encyclopaedias, later editions of a book prepared by someone other than the original author, directories published by a company in which a large team of contributors was involved, and the musicals of Gilbert and Sullivan. The point was that a work of joint authorship might well be created by two or more people, each of whom contributed a particular component of the ultimate work, and none of whom need have any appreciation - or even awareness - of the detailed contributions of his or her fellows. I am, however, disposed to think that these kinds of analogies are a distraction from the questions which arise under the definition of "work of joint authorship", and, in any event, have problems of their own. In the case of an encyclopaedia, it is not at all obvious that a single work, rather than a collection of separate works, is involved. In the case of a directory prepared by a team in a company, the facts will not always sustain the conclusion that a work of joint authorship was thereby created: see Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2010] FCA 44 at [333]-[338]. In the case of a musical in which the words were written by one author and the music by another, it may be accepted that collaboration may have been involved, but the question whether the contribution of one author was separate from that of the other may be much more problematic: see, in the context of legislation expressed quite differently, Redwood Music Ltd v B Feldman & Co Ltd [1979] RPC 385, 403.
57 Returning to the questions posed in para 55 above, I consider it to be quite artificial to propose that the Visual Basic programmers and the authors/transcribers collaborated with each other in the writing of the source code which Ucorp is said to have copied. They made their respective contributions - as will be the case with respect to many products made by large companies - but that of the programmers was quite separate from that of the authors/transcribers. The programmers wrote the program which caused the Infosafe system to operate as it did: to generate source code in response to defined inputs by those using the system. They also wrote so much of the source code as caused particular layouts, and appearance attributes, to appear on the user's screen. However, the essence of their contribution was not the writing of the source code for a particular MSDS. Having written the program by reference to which source code would, under certain conditions, be generated, they had no further contribution (other than to amend the Visual Basic program from time to time). In no realistic sense did the programmers collaborate with every author and transcriber whose efforts directly led to the creation or transcription of an MSDS.
58 One arrives at the same conclusion if the problem is looked at from the perspective of the authors and transcribers. They did not collaborate with the programmers. They had no understanding of the technical task upon which the programmers had been engaged. They knew only that the Infosafe System was such that, if they entered the requisite data, an MSDS with the desired content would be generated by the system. Although they were responsible for some of the data which found its way into the source code of the MSDSs they created, it would again be quite unrealistic to regard their contribution to the final, complete, body of source code for a particular MSDS as not being separate from that of the programmers.
59 In short, the respective contributions of the programmers and the authors/transcribers to the source code for a particular MSDS were separate each from the other along the axes of communication, time, expertise and content. Only by a quite artificial straining of the language to meet the needs of Acohs in the present litigation might those contributions be regarded as a matter of collaboration in the statutory sense. I do not consider that the source code for any of the MSDSs on which Acohs sues was a work of joint authorship.
60 Since the source code the subject of para 8(a) of Acohs' pleading was not the work of any one human author, and was not a work of joint authorship, that code cannot be regarded as an original literary work within the meaning of the Copyright Act.
61 Before leaving the matter of source code, I should mention the code for the MSDSs that were "authored" by Acohs' customers. Analogously with its submissions as to the source code that was created internally to its own organisation, Acohs submitted that this code was a work of joint authorship, the authors being the Visual Basic programmers employed by Acohs of the one part and the (external) authors of the other part. If this were all there was to it, I would draw the same conclusion as I have above: the source code in question was not a work of joint authorship.
62 However, there is another problem with Acohs' case on this point. It relates to the matter of ownership of any copyright that might subsist. By s 35(2) of the Copyright Act, the author of a work is the owner of the copyright therein. By s 35(6), where the author makes the work pursuant to a contract of service, his or her employer is the owner of the copyright. In the case of a work of joint authorship, by s 79, the references to the author in s 32 are to be read as references to any one or more of the authors, such that, for instance, it will be sufficient if one of the authors is a qualified person: s 32(2)(d). However, by s 78, the references to the author elsewhere in the Act are to be read as references to all of the authors. This means that, under s 35(6), for copyright in a work of joint authorship to vest in an employer, it is necessary that all the authors be employees of that employer. In the context of the present case, even if the Visual Basic programmers and the (external) authors were jointly the authors of the source code for an MSDS, Acohs, not being the employer of all of them, would not own any corresponding copyright.
[11]
The MSDSs themselves as original literary works
63 As appears from the extract from the respondents' Defence which I have set out at para 33 above, at the time when Acohs was still alleging that it was only the layout, presentation and appearance of each MSDS that constituted a literary work, the respondents contended that "each MSDS as a whole, including the words and data in the MSDS and the matter in which the words and data are laid out, presented and appear" constituted a single literary work for the purposes of the Copyright Act. Nothing in the way that the respondents presented their case after Acohs amended amounted to a withdrawal from, or a qualification of, that contention. The position ultimately reached, therefore, is that both parties contend that each MSDS in issue was and is a literary work within the meaning of the Copyright Act. Given the fairly modest threshold for literary quality required, and the potential inclusion of purely functional written materials permissible under the concept of "literary work" in the Copyright Act, I consider that the position adopted by the parties is both realistic and correct.
64 There was, however, a relatively minor controversy between the parties as to the nature of the literary work which each MSDS is. By the definition in the Copyright Act, a literary work includes a "compilation". Acohs submitted as follows:
It is submitted that each Infosafe MSDS is a literary work being a compilation of headings, boxes, lines, columns, information about the company issuing the MSDS, information about the substance, including risk and safety phrases and other information all brought together into a particular layout, presentation and appearance.
It was submitted that each MSDS was a compilation in the sense of being the product of material having being gathered from various sources: see William Hill (Football) Ltd v Ladbroke (Football) Ltd [1980] RPC 539, 550; IceTV, 239 CLR at 486 [72].
65 In the submission of Acohs, each time a new MSDS is created by an Acohs-employed author, he or she brings together the information about the substance supplied by the MIS, the appropriate risk phrases and other standard expressions as available in the Infosafe software, any new such phrases or expressions as he or she is obliged (or chooses) to devise and the pre-determined visual and organisational elements of the MSDS as governed by the Infosafe software (ie the underlying program written in Visual Basic code). In my view, this analysis of what the author does is broadly accurate, and the outcome of the process is aptly described as a compilation. An MSDS so brought into existence is, subject to the respondents' point to which I next turn, a literary work within the meaning of the Copyright Act.
66 In a final written response to Acohs' reply submissions filed, by leave, after judgment had been reserved, the respondents submitted that Acohs had not pleaded that each MSDS was a literary work by reason of it being a compilation. That was not so. Acohs alleged compilation in its Reply filed on 2 July 2008. Perhaps this ought to have been made clear in the Statement of Claim, but that pleading was broad and, in the light of the detailed Defence filed by the respondents, it was, in my view, not inappropriate for Acohs to clarify the matter in its Reply.
67 Of course, to make good the case that each MSDS was a literary work as such, Acohs did not need to rely on it being a compilation. There can be little doubt but that each MSDS is a literary work according to ordinary understandings. Indeed, the very purpose of an MSDS is to convey meaning. It is essential to its utility that it clearly communicates the information and instructions with which it is concerned. But the significance of Acohs relying on the notion of a "compilation" (see para (a) of the statutory definition of "literary work") lies in the nature of its claim to authorship and originality, which was expressed in its written submission as follows:
For a compilation to be an "original" literary work, it must originate from the author and not be a copy of another work. Sufficient labour, skill or judgment must have been exerted so as to confer on the compilation some quality of character not possessed by the raw material.
Acohs relied upon what Dixon J said about compilations in Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479, 511:
No doubt the expression "literary work" includes compilation. The definition section says so (sec. 35 (1)). But some original result must be produced. This does not mean that new or inventive ideas must be contributed. The work need show no literary or other skill or judgment. But it must originate with the author and be more than a copy of other material.
68 The respondents resisted the suggestion that the Acohs-author of an Infosafe MSDS was the copyright-author thereof. They submitted that he or she did not bring the MSDS into existence in a material form: all he or she did was to enter data into the CDB, and it was the Infosafe computer program that gave the MSDS an existence as an entity, that is, that first rendered it in a material form. Indeed, the respondents submitted that each MSDS existed in a material form only at the point where a customer of Acohs brought it up on his or her screen: in this sense, it was the customer, if anyone, who might be regarded as the "author". I cannot accept these submissions, either at the level of fact or at the level of analysis. As Acohs stressed in its submissions, after an author has finished entering the data relevant to a new MSDS being created, he or she will bring it up on the screen, read it, and satisfy himself or herself that it represents the finished result which was his or her objective. Even if that were not, or were not always, the case, it would not follow that the Acohs-author of an MSDS would not also be the copyright-author thereof. It is true that a work is not "made" until it is given a material form, but that truism does not exclude a situation in which a person becomes the author of a work by taking steps and carrying out functions (otherwise sufficient to sustain a claim of originality) at some time previous to the occasion when the work itself is finally "made".
69 I am satisfied that the Acohs-author of an Infosafe MSDS should be regarded as the copyright-author, and that the work created by him or her was original. Even in a case in which every verbal and numerical element of an MSDS created by an author was to be found in the CDB, the author was still required to select from the menu of sub-headings those that would be used and those that would be irrelevant (and thus would not be used). The electronic documentary entity which he or she thereby brought into existence was not merely the result of copying from something else.
70 I do not, however, accept Acohs' submission that an Infosafe MSDS created as a result of transcription is an original work of which the transcriber is to be regarded as the author. In his affidavit sworn on 3 July 2008, Mr Cowie said that he had "always taken the view (rightly or wrongly) that the MIS of an MSDS has copyright (if any) in the words and information in the MSDS". In the case of a transcribed MSDS, this is undoubtedly the case. But I would go further than Mr Cowie. It is equally clear that an Acohs transcriber makes no original contribution to the MSDS being transcribed. Unlike the author, he or she does not select the appropriate sub-headings, and the order in which they should be arranged; and he or she does not select the appropriate risk phrases and the like. Indeed, I do not accept that the process of transcription is a compilation. The transcriber of an MSDS does not bring together different elements from various sources. It was made quite clear that the transcriber must be faithful to the underlying MSDS being transcribed. This being the case, I consider that the transcriber is engaged in the mere task of copying.
71 Acohs sought to overcome this difficulty by proposing that Infosafe MSDSs were original not because of their content, but because of their "layout, presentation and appearance". By this term, Acohs intended a reference to the features of organisation and appearance of an MSDS referred to in the second quoted paragraph set out in para 39 above. Acohs submitted:
It is submitted that the layout, presentation and appearance of each Infosafe MSDS is an original compilation comprising information set out in a particular way by use of a combination of boxes, lines, font styles and sizes, margins, columns and, in the case of the Infosafe 2000 Web MSDS, colour. In each case the particular combination is original to the applicant.
And:
The applicant does not claim …[the layout, presentation and appearance] as a separate work but rather claims that it owns copyright in the MSDS because its employees authored the layout, presentation and appearance of the MSDS. That is, the applicant's claim is limited to the original contribution made by the applicant's employees to the MSDS.
72 On no view were the transcribers, however, originators of the "layout, presentation and appearance" of MSDSs. They had no control over such matters. At this point of its argument, Acohs introduced the contribution of Mr Cowie, Mr Lau and the other programmers who gave all Infosafe MSDSs their layout, presentation and appearance. Given that each MSDS was now alleged to be an original work (ie as contrasted with the original formulation of Acohs' pleading, in which only the layout, presentation and appearance was alleged to be such a work), it was necessary for Acohs to bring in the transcribers with Messrs Cowie, Lau etc, and to contend that the finished product was work of joint authorship. There are, however, two reasons why this submission should not be accepted. The first is that it would be quite artificial to regard Mr Cowie and the programmers as authors of any one MSDS. That they devised, wrote and later amended the computer program which gave Infosafe MSDSs their particular appearance, as distinct from making any contribution to their content, does not make them authors in the copyright sense. Neither does it give originality to a work which, because it was necessarily copied from something else, would not otherwise be original. The present case is, in relevant respects, quite different from Ladbroke (Football), Ltd v William Hill (Football), Ltd[1964] 1 All ER 465, on which Acohs relied, and from Lamb v. Evans [1893] 1 Ch 218, referred to in Ladbroke. The second reason is that, for the reasons given at paras 52-57 above, Mr Cowie and the programmers could not be regarded as joint authors together with the transcribers. On no fair usage of the language could they be regarded as having collaborated to produce the works constituted by the MSDSs.
73 For the above reasons, I accept Acohs' claim to copyright in the Infosafe MSDSs that are authored by its staff. But I reject its like claim with respect to the MSDSs that come into existence by way of transcription.
74 Analogously, I would reject the claim that the MSDSs that were "authored" by Acohs' customers were original literary works; and, I would add to my reasons a reference, mutatis mutandis, to what I have said in paras 59-60 above in relation to source code.
[12]
The "Blackwoods Compilation"
75 Paragraph 8(c) of Acohs' pleading sets out its identification of the copyright work said to be constituted by the "Blackwoods Compilation" (see para 40 above). Blackwoods had been a customer of Acohs since about 1991. At the time of the events which are presently controversial, it was a licensee both of I2000CS and of I2000W. It seems that Blackwoods was a very substantial industrial concern which was, in relation to some substances, an MIS and, in relation to many others, a user. There were many thousands of MSDSs which Acohs authored or transcribed for Blackwoods.
76 On 15 January 2004, Blackwoods gave four weeks' notice of the termination of its agreement with Acohs. In May 2004, it came to Mr Cowie's attention that some of the MSDSs for which links continued to be provided on the Blackwoods website were in fact Infosafe MSDSs. This discovery, and the results of technical investigations carried out by Acohs staff, led directly to the commencement of this proceeding.
77 Unbeknown to Acohs at the time, as early as January 2003 Ucorp had made a proposal to Blackwoods to assume responsibility for the provision of MSDS services. Dr Bialkower made a presentation to Blackwoods on 13 August 2003, at which the Ucorp system of creating and accessing MSDSs was demonstrated. It seems that Blackwoods was interested in Ucorp's proposal, but was concerned to ensure that all of the MSDSs to which it required to have access could be provided by Ucorp. On 13 August 2003, Dr Bialkower instructed Sourav Banerjee, an employee of an Indian company called "Elogix" (which provides information technology services to Ucorp) to download all of the MSDSs from the Blackwoods website. This was done, over a period of 3-4 weeks. It resulted in about 10,500 MSDSs being downloaded. Apparently satisfied that Ucorp was able to provide the necessary services, on 10 October 2003, Blackwoods accepted Ucorp's proposal. Initially, Ucorp established an "interim" website, from which the relevant MSDSs could be accessed. In April 2004, this website was made available via a link from the Blackwoods website.
78 Of the MSDSs that were incorporated into the Collection for the purposes of the new Blackwoods arrangements with Ucorp, the very great majority were, it seems, Infosafe files. Mr Moody undertook an analysis of the MSDS files, discovered by the respondents, that related to Blackwoods. Of 11,239 such files, only 534 were not Infosafe files. For reasons given above, to the extent that those MSDSs had been authored by the staff of Acohs, I would hold that they were original literary works, but, to the extent that they had been transcribed by the staff of Acohs, I would hold not. To this point, there is nothing which sets the Blackwoods MSDSs apart from the other Infosafe MSDSs with which I have dealt in these reasons.
79 However, as is apparent from its pleading, Acohs seeks to make a special point about the Blackwoods MSDSs, the result of which, if upheld, would be that Acohs could, in effect, side-step my conclusion that the transcribed MSDSs were not original literary works. Acohs contends that there was an entity described as the "Blackwoods Compilation" which was an original literary work. As I understand it, regardless of whether any one or more of the Blackwoods MSDSs was original, this entity satisfied the statutory definition of "literary work" because it was a "compilation". As will appear, however, there was a certain ambiguity as to the precise nature of this compilation claim.
80 As stated in Acohs' pleading, the entity was said to be "a compilation of data which ... generated and rendered the MSDS as required by Blackwoods". However, Acohs' particulars of copyright ownership, reproduced in para 40 above, seemed to imply that the compilation was a gathering together, by selection, of the MSDSs required by Blackwoods. Then in its final submissions, Acohs said:
The applicant submits that the particular combination of data necessary to complete the content of the Infosafe MSDS that were provided to Blackwoods and made available on the applicant's website is a compilation and therefore a literary work under the Act.
In reply to a submission by the respondents that the Blackwoods Compilation "is not a separate literary work because it never had a separate existence in a material form other than as a sub-set" of the CDB, Acohs submitted:
The evidence in relation to the Blackwoods compilation is that:
….
(b) The applicant hosted on its own server the applications and the Blackwoods specific database that enabled the MSDS that Blackwoods required to be displayed on the web when requested;
….
(d) The applicant provided Blackwoods with a customer specific database for installation on Blackwoods computers and to be used with the Client Server application;
(e) the applicant kept exactly the same information on its server for Blackwoods to generate MSDS via the web using Infosafe 2000 Web;
(f) the applicant maintained a separate database for Blackwoods at its premises;
(g) it did this by tagging within the applicant's central database the data necessary for Blackwoods to generate the MSDS it required;
(h) the applicant discretely added the Blackwoods' product codes to the database so that the product codes would appear on the MSDS required by Blackwoods but not on the same MSDS if required by another customer;
(i) the data was stored in such a way to enable it to be called upon by the Infosafe Web 2000 application to generate any or all of the MSDS required by Blackwoods.
It is submitted that the evidence clearly establishes that the Blackwoods compilation was a separate literary work being a compilation of data. It was first reduced to a material form either when the relevant data was tagged within the applicant's central database or when that data was copied and provided to Blackwoods. The fact that the applicant did not make a separate electronic copy of the data in its own server does not alter the fact that the compilation was made. By creating the separate copy for Blackwoods, the applicant demonstrated that it had reduced it to a material form. It was able to reproduce it from its invisible storage.
Here Acohs appears to be saying that the compilation was the totality of the data that was provided by Acohs to Blackwoods, and resided on Blackwoods' server or servers, and that was necessary to render the many MSDSs that might be required by Blackwoods from time to time. The corresponding data as it resided in the CDB were, it seems, "tagged" so as to identify them as part of the "Blackwoods Compilation".
81 Wherever the data may reside, I have difficulty with the concept that a database, as such, might be regarded as a literary work. The problem is not so much whether the database represents a compilation (in the sense of being otherwise disparate elements of data drawn together and organised according to certain rules), but whether a body of data is capable of being regarded as a work in any sense unless and until it has taken a material form. I accept that a Blackwoods MSDS is a literary work (as with the other MSDSs generated under the Infosafe system), but I have great difficulty in accepting the concept that, merely by residing in a database from which elements might be, but have not yet been, called up, pieces of data should be regarded as amounting to a work in the copyright sense. Unless the inclusion in the statutory definition of "literary work" of compilations is intended to extend to any entity, whether or not inherently literary, which is the result of the bringing together of otherwise disparate elements according to some scheme (in which case a mouse-trap, for example, would qualify), I cannot appreciate how a database as such can be regarded as a literary work.
82 Acohs drew my attention to the judgment of Hely J in T R Flanagan Smash Repairs Pty Ltd v Jones (2000) 172 ALR 467. This was said to be an example of a case (and, as it happens, the only example referred to by Acohs) where a database had been accepted as being a literary work for copyright purposes. However, it is clear that the two databases with which Hely J was concerned in Flanagan were very different from the CDB. At least as described by his Honour, each database was a list of items in the nature of a catalogue. One was "a list or compilation of motor vehicle models and descriptions arranged by manufacturer" (172 ALR at 469 [6]); the other was "a compilation of motor vehicle replacement parts and related information" (172 ALR at 470 [10]). Further, the respondent in Flanagan (who was not professionally represented) did not submit that either database was not a literary work: his submissions, set out in para [23] of the judgment, were that the files constituting the databases could not maintain their original form once they had been distributed to customers (and could be modified); that the databases contained material that was freely available to anyone in the public domain; and that the compilations did not involve the application of the requisite degree of skill and judgment which was necessary to give rise to copyright protection. The concerns which I have in relation to the "Blackwoods Compilation" in the present case were not raised for resolution in Flanagan.
83 The second way in which Acohs' Blackwoods claim might be understood - the way most sensibly conveyed by the relevant extract from its particulars of copyright ownership - is that the MSDSs covered by Blackwoods' licence agreement with Acohs were a compilation. Expressed in this way, the claim is both intelligible and broadly consistent with the facts of the case. However, the claim encounters the difficulty that the compilation, as so understood, never had a discrete existence as a single work in its own right. Much as a library of books put together by a collector, here the "compilation" was no more than a systematic collection of separate works, each having its own claim to copyright. Acohs did not gather together information from various sources and, by compilation, produce a work that had a new existence as an entity.
84 The other difficulty, which is encountered however Acohs' Blackwoods claim is to be understood, relates to the matter of authorship and originality. As was made clear in the evidence, the MSDSs that were required by Blackwoods were specified by Blackwoods. Acohs then authored or transcribed those MSDSs as was necessary. In its submissions, Acohs accepted that "Blackwoods identified the MSDS[s] that it needed", but contended that it was its own employees "who actually compiled all of the information necessary to generate those MSDS[s] into the Blackwoods Infosafe database". This is, however, a tendentious way of expressing the effect of the evidence, and overreaches on any view. Having been told what MSDSs to transcribe, the Acohs transcribers transcribed them. Having been told what new MSDSs were required, the Acohs authors authored them. In its submissions, Acohs referred to nothing in the evidence by way of any single member of Acohs' staff (or any number of members in collaboration) undertaking the substantive tasks of identifying, collecting, and organising the data that was required to generate the Blackwoods MSDSs, or of doing so in relation to the MSDSs themselves. If the Blackwoods data, or the MSDSs capable of being generated thereby, were in the nature of a compilation, I would hold that the process of selection was not the original doing of any member of Acohs' staff.
85 For the above reasons, I am not satisfied that the entity described by Acohs as the "Blackwoods Compilation" was an original literary work.
[13]
Reproduction
86 Acohs' final submissions on infringement were confined to an allegation that Ucorp had reproduced the HTML source code in a material form, had reproduced each MSDS itself "and in particular its layout, presentation and appearance" and had reproduced the Blackwoods Compilation in a material form; and that Dr Bialkower had authorised these reproductions. No submission was made about the PDF source code.
87 The respondents did not dispute the proposition that, if the HTML source code was, and if the MSDSs themselves were, original literary works, they had reproduced them in a material form. They did dispute that they had reproduced the "Blackwoods Compilation". Notwithstanding the respondents' concession on the two former aspects, it will be necessary to refer to the evidence on two aspects of Ucorp's copying of Infosafe MSDSs: the operational (or commercial) aspect and the technical aspect.
88 Dr Bialkower said in his evidence that the Collection originally evolved out of the bundles of hard-copy MSDSs provided to Ucorp by customers for the purposes of preparing "review" MSDSs (MSDSs prepared by Ucorp by reference to regulatory requirements to review the sufficiency of the original MSDSs issued by MISs). Later, Ucorp stored these documents as scanned images, and provided them to customers on a CD, as a supplement to its CDs of review MSDSs. In 2004, Ucorp discontinued the distribution of MSDSs on CDs, the Collection thereafter being a wholly web-based database to store, and to make available, MIS MSDSs.
89 MSDSs received from Ucorp's customers are stored in the Collection in the format in which they are received. Ucorp maintains a copy of all MSDSs provided to it by customers, so that the customer is able to view and to retrieve an MSDS, even if it has been superseded. Access to superseded MSDSs may be required, for example, to compare the previous version to the current version in order to identify recent changes, to identify the basis upon which a particular risk assessment was performed, or decision taken, in the context of a claim arising out of a chemical-related injury or accident, and, in some jurisdictions, for the sake of regulatory compliance.
90 Dr Bialkower said that, when customers first engage Ucorp, they will often provide a list of the materials in use, or stored in their workplaces, together with a copy of the MSDSs currently in their possession. Typically, these MSDSs will be from a wide range of MISs, and will have been authored by a range of different people. Upon being supplied with MSDSs in this way, Ucorp will add them to the Collection. As part of this process, the MSDSs supplied by the new customer will be matched with the corresponding MSDSs then contained in the Collection, in order to determine whether or not the version supplied by the customer is the current one. If the customer is using a product for which the current MSDS is not already in the Collection, Ucorp will endeavour to acquire the MSDS on the customer's behalf. Here, the first step is to look for the MSDS online. A number of MISs make their MSDSs available via their websites, and respond to requests for access by directing Ucorp to the websites concerned. Some MIS websites require passwords for access, and some of these passwords are provided to Ucorp by the MISs concerned. Occasionally, a password is mentioned on the MIS website.
91 If the MSDS is not available online, Ucorp has established an automated process to request the MSDS from the MIS directly, on behalf of the customer concerned. Dr Bialkower estimates that, notwithstanding the regulatory requirements to ensure that an MSDS is provided on request, about 20% of requests for MSDSs are not responded to. Accordingly, Ucorp has engaged contractors to establish a number of dedicated call centres, to pursue requests for MSDSs from MISs.
92 The point of first engagement is not the only occasion upon which a customer will provide Ucorp with copies of the MSDSs of interest. Over time, as the customer comes by new MSDSs (eg as a result of commencing to use a new hazardous substance) it will provide them to Ucorp, and they will be incorporated into the Collection. Further, MISs make changes to their MSDSs as required from time to time (eg pursuant to the regulatory obligation to review MSDSs at least every five years). In this context, Dr Bialkower said:
Under the National Model Regulations, MSDS needs to be reviewed every 5 years. Because of this requirement, I estimate that approximately 10 percent of all MIS MSDS needs to be re-acquired every year. To ensure that customers of the Collection have access to MIS MSDS that are as up to date as possible, in addition to requesting updated MSDS from MIS, Ucorp conducts internet searches to identify new versions of MSDS in the Collection. Ucorp uses automated electronic searching programs, known as "spiders", to search for changes from some websites. These programs periodically go to websites from which Ucorp has previously obtained MSDS and identify whether the file containing the MSDS has changed. If it has, the MSDS is downloaded to a temporary file and then manually reviewed to determine whether there has been a material change from the previous version.
Dr Bialkower said that "spiders" could not access certain types of website. In such instances, Ucorp occasionally conducts "batch extractions" of MSDSs in order to identify any updated ones. He said that websites running I2000W could not be accessed by these "spiders". Additionally, Ucorp obtains MSDS when they are provided to it by its customers, from MISs directly and, sometimes, by way of CDs of MSDSs distributed by MISs. Dr Bialkower said:
The only reason that Infosafe MSDS have been obtained from these sources and included in the Collection is to enable Ucorp's customers to identify and manage the risks associated with the use of hazardous chemicals in the workplace, to comply with their occupational health and safety and regulatory obligations, and to have a record of the manner in which they have managed those risks and complied with those obligations in the past.
93 Notwithstanding the evidence of Dr Bialkower to which I have referred (which was taken from his affidavit), it transpired that most of the MSDSs in the Collection have been added without any particular request from a customer. Dr Bialkower was cross-examined as follows:
And is it the case that most of the MSDSs in the Collection have been added without any particular request from a customer? - I think that's probably a fair estimate.
And the way you get them is simply to trawl the Internet to find MSDSs? - That's right.
Yes. And any MSDSs you find then get put into the Collection? - I think that's probably true, yes.
Yes, and they are put in the Collection in the form in which you find them? - That's right.
Which could be HTML or PDF or Word or other forms? - True.
94 The technical aspect of Ucorp's copying of Infosafe MSDSs was the subject of the affidavit of Paul Moody sworn on 27 June 2008. Mr Moody was called by Acohs. Through a company called Dycomp Pty Ltd, he provides consultancy services to Acohs. He is a qualified mechanical engineer, but has worked extensively in information technology. He explained how a person who came across an Acohs MSDS on the Internet could save a copy thereof on his or her own computer disk or like storage medium.
95 The first method would be for the user to have resort to the "Save As" command in the drop-down File menu of his or her web browser. Mr Moody said:
What is saved is a file of the HTML source code that displays the whole screen content, including the Infosafe toolbar. When the MSDS is opened from wherever it has been saved to a screen it will again be displayed. A hard copy print can be made from this saved file as if it were made directly from the web; that is without the Infosafe toolbar but it cannot be displayed on the screen without the Infosafe toolbar.
This last aspect - the inability to display the MSDS without the Infosafe toolbar - was perceived by Mr Moody to be problematic for Ucorp, in the copying operation upon which it was presumptively engaged.
96 A second method was explained by Mr Moody under the heading "saving the HTML source code". He said that it was possible to save a file that contained only the source code of the MSDS, and not the Infosafe toolbar, but that was a more complex process, and required knowledge that was well beyond the skills of ordinary computer users. He continued: "It is this more difficult type of copying which the Respondents have performed." Mr Moody explained the steps which the user would have to take in order to save the MSDS source code in this way. He was not challenged on his opinion that these steps were difficult, and would have been beyond the skills of ordinary computer users. Referring to one of the files associated with an Acohs MSDS, "msdsview.htm", Mr Moody said:
The msdsview.htm file contains the source code that actually displays the MSDS itself. It can only be located by drilling down into the folder 'MSDS Online_files'. When viewed in Internet Explorer, isolated from other files, it displays as the MSDS as set out in the screen image displayed below. It is the 'msdsview.htm' file only which has been copied by the Respondents.
Mr Moody said that all of the Infosafe HTML MSDSs displayed on the respondents' system were "just renamed copies of the 'msdsview.htm' file which existed at the moment of copying by the Respondents."
97 Mr Moody referred to a third way of copying the MSDS source code, namely, by copying the source code directly. This could be done in two ways. The first was by selecting "Source" from the drop-down "View" menu on the web browser. According to Mr Moody, this method of copying would produce only the code for the Infosafe toolbar, not the code for the MSDS itself. The second way to copy the source code would be from the context menu on the web browser. Here the user would use the right mouse button when his or her cursor was over the MSDS text. A menu would then appear, within which one of the items would be "View Source". When that item was selected, a new window would open displaying the HTML source code in a text application such as "Notepad". In that application, the user would then save the file to his or her chosen directory, but, in order to facilitate the subsequent appearance of the MSDS (rather than the source code only) on the screen, the file had to be given a new extension: ".htm". Various other uncomplicated but tedious steps would have to be taken, the result of which was that Mr Moody expressed the view that it was very unlikely that this method had been adopted by the respondents in their copying of the Acohs MSDSs.
98 The respondents did not call any witness who was involved in the copying of Acohs MSDSs as admitted by Dr Bialkower. For his own part, Dr Bialkower professed only a rudimentary appreciation of the technical aspects of the process involved. He said nothing which would have contradicted the inferences which Mr Moody drew and, as I have said, Mr Moody was not challenged on that evidence. In the circumstances, I am satisfied that Ucorp copied the source code for Acohs' MSDSs by the second method identified by Mr Moody, namely, by copying the "msdsview.htm" file.
99 Did Ucorp also thereby copy the MSDSs themselves? An affirmative answer to this question is suggested by the way the respondents conducted their case. At the time when Acohs was still submitting that the "layout, presentation and appearance" of an MSDS was an original literary work, the respondents submitted that, if it were, "Ucorp would not dispute that it has reproduced that layout, presentation and appearance by including copies of the MSDS[s] in the Collection". Further, the respondents submitted that the source code was not a work separate from the MSDS itself: the two were the same literary work in different forms. It would seem to follow from this that to reproduce one would be to reproduce the other (although I note that the situation is not obviously covered by the terms of subs (1A) or subs (5) of s 21 of the Copyright Act). In the circumstances, I would find that, when it included the Acohs MSDSs into the Collection by the means explained by Mr Moody, Ucorp reproduced the MSDSs as well as the source code which related to them.
100 Likewise, there is no dispute but that Ucorp downloaded the Blackwoods MSDSs to which I have referred, and incorporated them into the Collection. The respondents gave no technical evidence as to how this had been done, in which circumstances I am again left with the evidence of Mr Moody to which I have referred above. I conclude, therefore, that Ucorp copied the source code for each MSDS and the MSDS itself. In this respect, what occurred in relation to the Blackwoods MSDSs was but an example (perhaps a conspicuously egregious example) of what occurred when Ucorp copied MSDSs generally.
101 To complete my consideration of Acohs' case on reproduction, it remains only to consider the "Blackwoods compilation" claim if understood as a compilation of data in the CDB, rather than as a compilation of MSDSs. Acohs submitted as follows:
The evidence establishes that:
(a) The applicant stores data that is extracted as information for the Infosafe MSDS in a complex database made up of multiple inter-related tables;
(b) The data is extracted from the tables using a combination of SQL and Visual Basic;
(c) The Infosafe 2000 Web application allows a user to search the Infosafe database and extract the data to create an MSDS;
(d) The primary function of the Infosafe 2000 Web application is to search the Infosafe database and retrieve the data for an MSDS.
It follows that by using Infosafe 2000 Web to generate all of the MSDS that could be generated for Blackwoods, the respondents copied the data for those MSDS from the Blackwoods Infosafe database.
The respondents submitted that they did not copy the arrangement of data in the databases because they copied the MSDS and not the data. The data is entered and stored in the Infosafe database in tables. It is entered and stored in such a way so that it can be called on to generate MSDS. By reproducing the MSDS from the database, the respondents reproduced that data and its very arrangement.
102 It will be seen that this submission is concerned not with what Ucorp reproduced, but with the consequences of its reproductive activities. In point of substance, Ucorp reproduced the HTML source code for the MSDSs of interest to Blackwoods, and (thereby) reproduced also the MSDSs themselves (as I have described above in relation to Acohs' case generally). It does not follow, in my view, that Ucorp thereby reproduced some part of the CDB as such, or that, upon having completed the whole Blackwoods exercise, it thereby reproduced so much of the CDB as related to Blackwoods (being the "Blackwoods Compilation"). I accept the respondents' point that the substance of what Ucorp did was to copy the MSDSs. I am not satisfied that Ucorp reproduced a compilation of data, as distinct from reproducing the MSDSs themselves.
[14]
Assignment of copyright?
103 To the extent that I should find that Acohs owned the copyright in any of the categories of works referred to in its pleadings, the respondents submitted, in relation to some substantial MISs for which Acohs' staff had authored MSDSs, that the relevant copyright had been assigned by Acohs to those MISs. The MISs were Castrol Australia Pty Ltd ("Castrol"), BP Australia Pty Ltd ("BP"), Dow Chemicals (Australia) Ltd ("Dow"), The Shell Company of Australia Ltd ("Shell") and Caltex Australia Petroleum Ltd ("Caltex"). The factual position with respect to these companies is untidy to a degree, largely because, at least generally, there was not, in each case, a single agreement between the company concerned and Acohs which governed their dealings over the whole of the period with which the court is concerned. Rather, there tended to be a series of agreements for periods of about three years, and in a number of cases the practical commercial relationships between the parties ran on notwithstanding the ostensible expiration of the agreements concerned. Because of the way I propose to decide the respondents' next point (ie the implied licence), whether there were assignments to the extent proposed by the respondents will be moot. However, in deference to the careful arguments advanced by counsel for both sides, I shall say something briefly about the assignment point.
104 The strongest case for the respondents relates to the agreement between Acohs and Shell which commenced on 1 September 1997, and which was replaced on 29 October 2001 with a further agreement which ran until 30 November 2002. Under the agreement of 1997, Acohs thereby assigned to Shell its copyright, including future copyright, in the material produced by Acohs in the course of performing services under the agreement. The agreement of October 2001 contained a similar provision. On 10 July 2003, Acohs and Shell executed a new agreement which was silent with respect to intellectual property.
105 The respondents submitted that copyright in MSDSs prepared by Acohs for Shell between the commencement of the 1997 agreement and the making of the 2003 agreement had been assigned to Shell, and that Acohs was not the copyright owner for the purposes of proceedings such as the present. I accept that submission. The agreements between Acohs and Shell brought about an immediate assignment of copyright, effective upon Acohs bringing a new MSDS into existence under the term of each of the relevant agreements (and in this context I would include the run-on periods after the formal expiry of the term of each agreement, until the next one was made). Indeed, Acohs ultimately did not submit that it owned copyright in the MSDSs prepared on behalf of Shell. It submitted that the terms of the agreements to which I have referred did not, on a proper construction, refer to copyright in the HTML source code, or in the layout, presentation and appearance of these MSDSs. Since Acohs no longer submits that "layout, presentation and appearance" is a copyright work in its own right, and since I have found that the source code for Infosafe MSDSs was not an original copyright work, I need give no further consideration to Acohs' point. With respect to the MSDSs as such authored by Acohs on behalf of Shell, Acohs submitted that "the evident intent of the clause was that Shell would own any copyright in the product of the work that the applicant performed for it under the agreement", and I agree.
106 Although Caltex had been a customer of Acohs since about 1992, the only agreement between the two in evidence was one made in May 2005. Clauses 11.1-11.6 of that agreement provided as follows:
11.1 Subject to Clause 11.3, title to, and Intellectual Property Rights in, all material created or brought into existence in the course of the provision of the Services by the Service Provider, which is:
(a) copied or derived from, or a modification or enhancement of, existing material provided by the Service Provider; and
(b) developed independently of Caltex (that is, not specifically requested or directed by Caltex),
vests in the Service Provider ("New Service Provider Material") without the need for further assurance.
11.2 Subject to Clause 11.3, title to, and Intellectual Property Rights in, all material created or brought into existence in the course of the provision of the Services by the Service Provider, which is:
(a) copied or derived from, or a modification or enhancement of, existing material provided by Caltex; or
(b) developed specifically pursuant to specifications, directions or instructions provided by Caltex,
vests in Caltex ("New Caltex Material") without the need for further assurance.
11.3 The parties acknowledge that there is no assignment of Intellectual Property Rights in any pre-existing material which is used or provided in the course of this Agreement.
11.4 The Service Provider grants to Caltex a perpetual, irrevocable, non-exclusive, non-transferable, royalty-free licence to use the Intellectual Property Rights in all pre-existing Service Provider material and New Service Provider Material, for the purpose of obtaining the benefit of the Services.
11.5 Caltex grants to the Service Provider a perpetual, irrevocable, non-exclusive, non-transferable, royalty-free licence to use the Intellectual Property Rights in all pre-existing Caltex material and New Caltex Material for the purpose of providing the Services.
11.6 Each Party shall execute all documents and do all acts and things necessary to give effect to this clause.
If I may so observe with respect to those responsible, one would have no cause to envy the lot of a court called upon to interpret these provisions, particularly in a difficult case. The respondents submitted that there was no scope for Acohs to assert that it was the owner of copyright in any MSDS produced for Caltex since May 2005. At the level of the meaning of cl 11 of the Caltex agreement, Acohs did not specifically engage with that submission. Rather, it relied upon a deed of rectification, similar to those which it executed with BP and Castrol, as referred to below. Subject to my consideration of that deed, I would uphold the submission made on behalf of the respondents.
107 In February 1997, Acohs and Castrol entered into an agreement to govern the provision of MSDS authoring services by the former. The agreement contained the following term: "Acohs shall assign the copyright of all prepared MSDS's to Castrol". Acohs submitted, as is apparently the case, that no assignment ever occurred pursuant to this term. The respondents submitted that, properly understood, the term in the Castrol agreement was not a promise to assign copyright, but an operative assignment, effective upon execution of the agreement in 1997, of copyright in MSDSs yet to come into existence. It was in a temporal sense, rather than in the way of undertaking an obligation, that the term used the word "shall". I cannot accept this submission. In my view, the agreement contemplated that works in which Acohs would otherwise own the copyright would come into existence under the agreement, and involved a promise by Acohs to assign that copyright to Castrol at each relevant time.
108 The respondents then submitted that, in equity, a promise (for consideration) to assign is as good as an assignment, and that, as a result of the promise made by Acohs in the Castrol agreement, Castrol became the beneficial owner of the copyright in each of the MSDSs prepared by Acohs for Castrol. While I can appreciate the force of this argument, I cannot understand how it would deprive the person legally (as distinct from beneficially) entitled to the copyright to sue for infringement. It may be that any remedies which such a legal owner of the copyright received would be held on trust for the beneficial owner, but I cannot see any obvious legitimate concern that the presumptive infringer would have in such matters.
109 In 2002, Acohs and BP entered into a consultancy/service agreement which contained the following provision:
The Consultant shall assign to BP AUSTRALIA all intellectual property rights (if any) in any compilation of data compiled on behalf of BP AUSTRALIA and in any MSDS written by the Consultant for and on behalf of BP AUSTRALIA by the Consultant. Where the Consultant is required to write software (other than amendments to the Consultant's own software) the Consultant will, if required, enter into an agreement to assign all IPR to BP AUSTRALIA.
Because this provision contained a promise by Acohs to assign intellectual property rights to BP, I would reach the same conclusions about it as I have above with respect to Castrol.
110 A provision which was relevantly the same as that most recently set out above was contained in an agreement made in February 2002 between Acohs and Dow. My conclusions with respect to that agreement are the same as those reached in relation to the Castrol and BP agreements. The Dow agreement was replaced by a further agreement made on 2 June 2005, which ran until 29 September 2007. It contained no term in relation to copyright.
111 Apparently prompted by indications given by the respondents after discovery (by Acohs) of the agreements referred to above, in November and December 2007 Acohs entered into what were described as deeds of rectification with Castrol, BP and Caltex. In the case of Castrol, it was agreed to delete the term in the agreement governing the provision of MSDS services by Acohs which contained a promise by Acohs to assign copyright to Castrol, and to replace that term with the following:
The consultant shall assign to Castrol Australia Pty Ltd all intellectual property rights (if any) in any data authored by the consultant for and on behalf of Castrol Australia Pty Ltd. (which includes the data inserted in an Infosafe MSDS but excludes the layout and presentation of any Infosafe MSDS or any source code generated by the Infosafe programs in order to display an Infosafe MSDS on the world wide web or a computer). Where the consultant is required to write software for and on behalf of Castrol Australia Pty Ltd (other than amendments or enhancements to the consultant's own software) the consultant will, if required, enter into an agreement to assign the intellectual property referred to in this paragraph to Castrol Australia Pty Ltd.
A similar amendment was made to each of the agreements which Acohs then had with BP. In the case of Caltex, cl 11.2 (see para 106 above) was replaced with a term substantially the same as that set out above in the Castrol agreement.
112 Both Acohs and the respondents made submissions about these deeds of rectification as though the body of law developed in equity as to the grant of the remedy which goes by that name were applicable in its totality. Thus Acohs submitted that "the effect of the rectification is retrospective so that the agreement is to be read as though executed in its rectified form". And the respondents submitted that rectification would not be ordered unless there were evidence that the written agreements as proposed to be rectified would represent precisely the content of the parties' original intentions, and would not be ordered where that would affect the rights of a third party. With respect to those involved, I consider that all of these considerations are beside the point. Acohs is not seeking the court's intervention to rectify any document. Rather, it has consensually altered the terms of agreements into which it entered years ago. I see no reason not to give those alterations the effect which their terms require. The question remains: what is that effect?
113 I accept that the effect of cl 11.2 of the Caltex agreement was to assign to Caltex the copyright in each new MSDS once it was created. The relevant deed of rectification did not purport to effect a re-assignment to Acohs, and the fact that (even nunc pro tunc) this clause was replaced by an obligation to assign something less than copyright in each MSDS cannot, it seems to me, undo what had already passed into history. If it mattered, therefore, I would hold that Acohs did not own the copyright in the MSDSs which it authored for Caltex between May 2005 and December 2007, when the deed of rectification was executed.
114 In the case of the BP and Castrol deeds of rectification, the position is different. I have not held that the original agreements operated as any more than promises to assign. Upon executing the deeds of rectification, those promises would be changed in point of content. Whether or not that change occurred retrospectively strikes me as a question which lies entirely along the axis of the obligations existing as between Acohs and its customers.
115 I would also add that the deeds of rectification proceed from an assumption that there are "intellectual property rights" in data, which in turn appears to be based on the kind of jurisprudential paradigm upon which Acohs' claim in court was based, namely, that it claims no copyright in the raw unformatted data involved in any MSDS. As will be clear from my reasons above, I am not persuaded of the soundness of that assumption. More importantly, perhaps, the deeds are assiduous in their insistence that the layout, presentation and appearance, and the source code, are not to be assigned. These are not entities which I have held to be original copyright works in any event. The one entity which the deeds (one might think, almost conspicuously) avoid mentioning is the MSDS itself. No doubt the parties had their own reasons for not addressing this obvious candidate for copyright protection, but the fact is that they did not. Had it been the case that, under any of the original agreements, copyright in a particular MSDS had passed from Acohs to its relevant customer, I do not think that the applicable deed of rectification would have made any difference to that circumstance.
[15]
Implied Licence?
116 The respondents alleged that, to the extent that any of the entities referred to by Acohs were original copyright works, and to the extent that they (the respondents) had copied those works, they did so pursuant to an implied licence granted by Acohs. Since the only entities which I have held to be copyright works are the Infosafe MSDSs authored (as distinct from transcribed) by Acohs staff, I shall confine my consideration of the respondents' implied licence point to that context. The licence point having been raised by the respondents, Acohs accepted that it bore the onus of proving that each reproduction of an MSDS on which it relied was done without its licence.
117 In their defence to the allegation (which was subsisting in this form at the time of the filing of the most recent Defence) that the layout, presentation and appearance of each MSDS was an original copyright work, the respondents referred to the statutory regulation of MSDSs, to the 1994 preparation code, and to the associated requirements of the relevant MISs, and alleged that, by reason of those circumstances, "ACOHS has impliedly granted to the ACOHS Customers [ie the MISs] an unconditional, irrevocable licence to use any copyright of ACOHS in the templates that is [sic] reproduced in the MSDS[s] created by or at the direction of the ACOHS Customers". In response to Acohs' claim that they had copied the relevant copyright works, and made copies of them available for profit to the public and their customers, the respondents alleged that the works "were reproduced pursuant to a licence given by ACOHS to the ACOHS Customers to reproduce and licence the further reproduction of the alleged copyright works for the purpose of ensuring the ready availability and accessibility of the MSDS[s], which licence is to be implied by law and/or so as to give business efficacy to the agreements between ACOHS and the ACOHS Customers with respect to the creation and transcription of MSDS[s]". By way of reply, Acohs admitted only that "an implied licence exists from Acohs to its customers for such customers to use MSDSs for the purpose of compliance with the various regulations but such implied licence goes no further and in particular does not extend to permission for customers to provide such MSDSs to a commercial competitor of Acohs at no cost and for such competitor's own commercial benefit".
118 The respondents' argument was based upon the terms of the regulatory regimes which govern the provision of, and access to, MSDSs in Australia. The nub of the respondents' point is that MISs are obliged to prepare and to supply MSDSs in various circumstances. Employers and other users are obliged to have relevant MSDSs accessible to their employees and, in some cases, to other persons, in circumstances where those employees and persons may be expected to have some exposure to the dangerous or hazardous substances concerned. The whole point of an MSDS is that it should be widely and readily available. Quite obviously, according to the respondents, not only the MISs themselves but also the employers, occupiers and others upon whom relevant regulatory obligations fall must be able to make such copies of the MSDSs as are reasonably required to comply with the law.
119 The respondents' argument requires attention to be given both to the terms under which Acohs deals with its (MIS) customers and to the nature of the obligations which arise under the various State, Territory and Commonwealth regulatory regimes.
120 When Acohs licensed the Infosafe system to its customers, it generally did so pursuant to an agreement which contained the following terms:
COMPUTER SYSTEMS SOFTWARE LICENCE AGREEMENT
1. DEFINITIONS
1.1 "Software" means the operating and application programs contained herein as enhanced or modified from time to time by ACOHS and issued to the User under this Software Licence Agreement.
1.2 "Renewal Date" is the anniversary of the date of installation.
2. LICENCE
2.1 ACOHS hereby grants the User under this Licence Agreement:
(a) Use of the Software on the designated processor at the nominated location.
(b) Replacement copies of the Software if lost or damaged.
(c) New releases of the Software as available and associated documentation that ACOHS in its absolute discretion considers to be logical extensions of the Software but excluding the release of clearly defined major new modules.
(d) Documentation of the Software.
(e) Documentation updates.
(f) Transfer the ACOHS owned Software to another designated processor if the Software on the previously designated processor terminates within one month of the transfer.
3. CONDITIONS
In consideration of ACOHS entering into this Agreement, the User agrees with ACOHS as follows:
3.1 Not to operate or use or allow the use of Software other than upon the designated processors.
3.2 Not to sell or provide to a third party, the CD, disks, diskettes or tape, the procedure manuals or other associated documents or any reproduction or facsimile thereof or any system design, information of other material reproduced therefrom.
3.3 Not to reproduce, copy or in any matter imitate the Software, the procedure manuals or the CD, disks or diskettes or any part thereof except for purposes for internal use, training and back-up.
3.4 Not to assign or transfer this agreement without the prior written consent of ACOHS which ACOHS shall not unreasonably withhold.
3.5 Not to modify, amend or in any other manner interfere with the Software or any part thereof.
3.6 To notify ACOHS in writing of any damage to or the loss, theft or destruction of the system, Software, CD, disks or diskettes or any part thereof within seven (7) days of the happening of any such event.
3.7 Not to make any alterations, modifications, additions, attachments or any like interference with nor any repairs or adjustments to the Software or any part thereof.
….
5. COPYRIGHT
5.1 The User acknowledges that all copyright and any other proprietary rights in the Software and any other associated documentation are owned by and at all times remain with ACOHS Pty Limited or its associate companies as given on page 1 hereof and that possession and use of the Software by any party can be by licence only.
5.2 ACOHS warrants to the User that the Software does not infringe any intellectual property right and indemnifies the User from all claims, actions, proceeding costs, expenses and liabilities arising out of or incidental to any actual or alleged infringement of copyright or other intellectual property.
….
10. GENERAL
10.1 This Agreement and all appendices and schedules incorporated herein by reference constitute the whole of the agreement and understanding between the parties with respect to the subject matter hereof and all addition sand [sic] modifications to this Agreement shall be in writing and shall be signed by both parties.
In about 1998, Acohs added the following note to the foot of (but not as part of) each licence agreement (which Mr Cowie described as a "licence notice"):
WARNING: The Copyright in each MSDS on this CD-Rom resides in the author of the MSDS which in each case is the Manufacturer or Supplier/Importer referred in each MSDS. There is an implied licence granted by each such Manufacturer, supplier or importer to use the MSDS on this CD-Rom for the purpose for which they were created, that is, for safety and dissemination to employers, employees and other persons using the product, the subject of the MSDS. Further, the compilation of the MSDS on this CD-Rom is the copyright of ACOHS Pty Ltd. Any copying or reproduction of the said compilation is a breach of copyright and action will be taken by ACOHS Pty Ltd, without notice, in respect of any breach.
121 In reading the provisions set out above, it is important to recognise the distinction between copyright in the Infosafe "software", copyright in the compilation of MSDSs to which the customer was given access, and copyright in the MSDSs themselves. The agreement itself is concerned (in cl 5) with copyright in the software. This was the program (or elements of the program) pursuant to which MSDSs are organised in, and generated from, the CDB, and is not presently in issue. The licence notice introduced in 1998 is concerned both with the compilation and with the MSDSs themselves. As to the latter, it is made clear that it is the MIS concerned which owns the copyright, and that there is an implied licence to use the MSDSs "for the purpose for which they were created, that is, for safety and dissemination to employers, employees and other persons using the product…." Expressed in such a way, it seems that the notice is addressed to a putative user, rather than to the MIS itself. Although (as Acohs stressed in its submissions) the licence notice was not part of an agreement on which it was endorsed, as between Acohs and an MIS who signed such an agreement, there was no suggestion that Acohs claimed copyright in the relevant MSDSs, or that Acohs had any interest in the potential reach of the implied licence referred to. As to the "compilation" aspect of the notice, that is not presently relevant (save possibly with respect to the "Blackwoods Compilation", with which I have dealt elsewhere).
122 In his affidavit sworn on 3 July 2008, Mr Cowie said that, in January 2007, the licence notice was updated. However, he exhibited a copy of the licence notice then (ie in July 2008) being used, and it was (and presumably still is) the same as set out above. The conclusions expressed in the previous paragraph as to the consequences of the inclusion of such a notice at the foot of each relevant licence agreement would seem to apply, therefore, at all relevant times.
123 The licence notice to which I have just referred is not to be confused with what Mr Cowie described as the "MSDS copyright notice which is displayed within the Infosafe system" That was a notice electronically included each time an Infosafe MSDS was generated by the Infosafe System. Accordingly, it will appear on any Infosafe MSDS that is called up on to a user's screen, notwithstanding that the MSDS itself pre-dated January 2007. Although Mr Cowie said that this copyright notice was (like the licence notice) "updated" in January 2007, there is no evidence of such a notice having been included on MSDSs before then. Indeed, so far as I can make out, none of the MSDSs, contained in an "authored by Acohs" folder in Annexure A to Acohs' particulars of copyright ownership makes any reference to copyright, whether of the MIS, of Acohs, or otherwise.
124 The copyright notice included on Infosafe MSDSs as from January 2007 was (and is) in the following terms:
ACOHS Copyright Notification
Copyright in the source code of the HTML, PDF, XML, XFO and any other electronic files rendered by an Infosafe system for Infosafe MSDS displayed on this site is the intellectual property of Acohs Pty Ltd.
Copyright in the layout, presentation and appearance of each Infosafe MSDS displayed on this site is the intellectual property of Acohs Pty Ltd.
The compilation of MSDS's displayed on this site is the intellectual property of Acohs Pty Ltd.
Copying of any MSDS displayed on this site is permitted for personal use only and otherwise is not permitted. In particular the MSDS's displayed on this site cannot be copied for the purpose of sale or licence or for inclusion as part of a collection of MSDS without the express written consent of Acohs Pty Ltd.
This notice appeared (in very small print, I should say), at the foot of each MSDS. The notice was introduced well after the present litigation was commenced. It reflects, if I may so observe without undue cynicism, the allegations in Acohs' pleading. The concluding passage - referring as it does to "a collection of MSDS" - seems clearly to have been written with Ucorp in mind. So far as the evidence shows, the inclusion of the notice in January 2007 and thereafter was the unilateral doing of Acohs. There is no suggestion that the relevant MISs agreed to, or were consulted about, the inclusion. I shall return to the significance of the copyright notice after dealing with the terms of the regulatory environment that have the potential to affect the content of any such licence.
125 With respect to that environment, the respondents referred to the regulations which I have summarised at paras 2-18 above, and relied on the judgment of Merkel J in Acohs Pty Ltd v R A Bashford Consulting Pty Ltd (1997) 144 ALR 528. Dr Bialkower was a respondent in that proceeding, and he cross-claimed against Acohs with respect to 43 MSDSs, in which he owned the copyright, and which had been transcribed by Acohs and added to the CDB as Infosafe MSDSs. For present purposes, we may assume that this transcription would, absent the licence point, have been an infringement of Dr Bialkower's copyright (and Merkel J's judgment appears to proceed by reference to such an assumption). Merkel J upheld Acohs' defence to the cross-claim that, by transcribing the MSDSs and storing the relevant data in the CDB, it was acting pursuant to an implied licence. The principle by reference to which his Honour so decided the case was that articulated by Jacobs J in Beck v Montana Constructions Pty Ltd (1963) 5 FLR 298, 304:
It seems to me that the principle involved is - that the engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission or consent or licence in the person making the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement. It seems to me that this must be regarded as a principle of general application….
I think it is a principle which can be found to be applied in a number of cases. It relates to permission or consent to what must have been taken to have been within the contemplation of the parties at the times of the engagement. After all, it must be borne in mind that it is the engagement which brings the copyright material into existence.
126 In Bashford, Merkel J held (144 ALR at 547) that the licence considered by Jacobs J in Beck was "one which is implied by law to a particular class of contract." His Honour held that the contract pursuant to which Dr Bialkower prepared MSDSs for MISs was within the class to which the Beck principle applied. He said (144 ALR at 548):
The contract of engagement of Bialkower, by manufacturers and importers, is an "open contract"' to prepare written material, being MSDSs, with the intention that they be used for a particular purpose, being the provision of ready access to the information contained in the MSDSs for safety related purposes. Such a contract falls within the class of contract described in Beck. Accordingly, a licence is implied by law which permits or consents to the use of the MSDSs to carry out those purposes.
The purpose is to be determined objectively by reference to the contract entered into by the parties and the regulatory and factual matrix in which the transaction took place. There is little difficulty in ascertaining the relevant matrix in the present case. The MSDSs were commissioned by manufacturers and importers to be in the Worksafe Australia standards format for use, inter alia, as set out in the standards. Bialkower accepted that he was commissioned to prepare MSDSs which would be distributed by manufacturers and importers on the sale of their products in accordance with the standards. They were commissioned in relation to substances, including hazardous substances, for the purpose of ensuring the ready availability and accessibility of the MSDSs for safety related purposes for or at any workplace in Australia at which the substances are or will be stored, used or transported.
127 Merkel J next turned to the question whether the uses to which MSDSs written by Dr Bialkower were put by Acohs were in accordance with the implied licence. His Honour identified those uses as follows (144 ALR at 551):
Acohs made use of some or all of the 43 Chemwatch MSDSs in its possession in two ways:
it transcribed them to form part of an Infosafe computer software system specifically commissioned by a manufacturer, importer, supplier or employer using the hazardous or other chemicals the subject of the MSDSs. The system is a user controlled database for the electronic management of chemical safety data (the industrial use); and
it maintains a central Infosafe computer database comprising, inter alia, all MSDSs transcribed by it and provides that "library" for a fee to public emergency or safety organisations being WorkCover (NSW), the Queensland Government Emergency Response Centre and the ICI Chemical Emergency Response unit (the library use).
As to these two uses, Merkel J reached the following conclusions (144 ALR at 551):
The industrial use clearly falls within the implied licence. The use is by the entities for whose benefit MSDSs are prepared. These entities commission Acohs, as an independent contractor, to prepare and provide for their individual use the Infosafe software program which gives them and their employees electronic access to the MSDSs for the chemicals supplied or used by them.
It is less clear whether the library use falls within the implied licence. However, on careful analysis, that use falls within the safety related purposes for which the 43 MSDSs were brought into existence. The sole function of the library use is to ensure that public emergency services or organisations can provide instant access to MSDSs for safety related purposes to those in need of that information. The only reason for any of these entities to obtain or provide access to a MSDS is that such access is necessary for that entity to provide safety information to those in need of it, as a result of using the chemical the subject of the MSDS.
In the result, his Honour held that there had been no infringement of copyright, since the reproductions done by Acohs had been in accordance with the implied licence.
128 In the present case, Acohs does not ask me to depart from Bashford - either in point of principle or at the level where Merkel J held that the industrial use and the library use of MSDSs were implicitly licensed by the copyright owner. However, it contends that the principal use for which Ucorp reproduces Infosafe MSDSs falls within neither of the categories identified by Merkel J. It says that the evidence discloses, at least for the main part, that Ucorp reproduces MSDSs, and places them into the Collection, not on the specific request of users of the substances involved (employers, occupiers etc), but at its own initiative and as part of its own commercial operation, entirely with a view to stocking the Collection with every MSDS available in the electronic universe, so as to be in a position to market its services by reference to the claim that the Collection has no equal in the range of MSDSs which it contains. In point of fact, the evidence does establish that Ucorp continuously searches the Internet for MSDSs generally, and that its activities in this respect are not confined to the satisfaction of requests by, or to the needs of, its existing customers. There is, however, a question as to the identification of the Acohs MSDSs which were reproduced by Ucorp without the present needs of any customer in mind.
129 Under cross-examination, Dr Bialkower said that Ucorp receives "four or five thousand" requests each week to add MSDSs to the Collection. He was challenged on this evidence on the ground that Ucorp had not given discovery of anything like that number of requests. In his affidavit, Dr Bialkower said that Ucorp was "routinely provided with copies of Infosafe MSDS[s] by Ucorp's customers so that those customers can access the MSDS[s] using the Chemwatch [ie Ucorp's] system". He exhibited what he described as "sample correspondence" of this kind. Again, he was challenged on the ground that no other such correspondence had been discovered. There followed a period of cross-examination in which the focus was on the question whether the examples of the MSDSs supplied to Ucorp for incorporation in the Collection were the same as, or were different from, the corresponding Infosafe MSDSs that Ucorp had discovered. All this tended to generate more evidentiary heat than light, and, in the result, it remains unclear which MSDSs (authored by Acohs' staff) were copied by Ucorp in circumstances in which a request had been received from an existing customer either to place the MSDSs into the Collection or to search for the MSDSs on the Internet and then to place them into the Collection.
130 In final submissions made on behalf of Acohs, I was invited to reject Dr Bialkower's evidence that the customer correspondence which he exhibited to his affidavit was by way of example only. I am not disposed to do so. I did get the impression that Dr Bialkower's evidence came from a fairly high level in Ucorp, and that he was only generally familiar with the detailed process by which MSDSs were copied from the Internet. However, he struck me as a witness of truth. His responses were rarely tendentious and, as the extract from his evidence set out at para 93 above shows, he conceded issues frankly and directly where a concession was called for. He was quite definite in his evidence that the requests exhibited to his affidavit were examples only. That evidence was not inherently improbable. Indeed, given the size of Ucorp's operations, I consider the contrary to be the case.
131 Since it lies upon Acohs to demonstrate that any one MSDS was reproduced without its licence, if the existence of an implied licence turns (as Acohs submitted) upon a request to copy having been received from a particular user, I would have to hold that Acohs has not identified the MSDSs which Ucorp copied in the absence of an implied licence. It is true that it lay principally within Ucorp's power to deal with this matter by evidence, but it was not for Ucorp to establish the existence of an implied licence in any instance. It was for Acohs to prove the contrary. Neither is this a case in which, Acohs having called such evidence as was available to it on the subject, an inference might fairly be drawn adversely to Ucorp if it did not go into evidence. Notwithstanding what Acohs proposed were shortcomings in its discovery, it seems clear that at least many of the Infosafe MSDSs copied by Ucorp were so copied upon the requests of customers. It also seems clear that many were so copied in the absence of such requests. But the evidence is not such as fairly raises an inference that any particular MSDS was copied in the latter, rather than in the former, situation.
132 Notwithstanding that shortcoming in Acohs' evidentiary case, I do not propose to decide the implied licence point by reference to it. For reasons which follow, I take the view that Ucorp was implicitly licensed to download from the Internet, and to store in the Collection, MSDSs authored by Acohs for MISs, whether or not Ucorp was relevantly acting on the instructions of existing customers with present regulatory obligations to have access to the MSDSs in question.
133 The respondents justified the practice of systematically gathering up MSDSs from the Internet by reference to the assumed circumstances of an industrial concern which, having a need to obtain a particular (say) hazardous substance, would wish to discharge its common law duty of care, and to anticipate the discharge of the regulatory obligations which would fall upon it, by obtaining a copy of the relevant MSDS before the event. Theoretically, it could do this by contacting the MIS, or by visiting the website of the MIS. As a matter of industrial efficiency, however, such a concern should also be able to rely upon the services of the kind provided by Ucorp, particularly if the need to obtain new MSDSs from time to time was likely to be a recurring event. It was, according to the respondents, reasonably within the contemplation of the regulations that industrial users of hazardous and dangerous substances might have an ongoing relationship with a company such as Ucorp (eg by way of subscription) so that, by means which were both efficient and swift, it might have ready access to any new MSDSs which it came to need from time to time. If so, according to the respondents, when Acohs authors an MSDS for an MIS, it must of necessity provide a licence such as would permit these things to happen.
134 The respondents supplemented this submission by pointing to the provisions of the regulations that require an MIS which has previously prepared (and, where relevant, provided) an MSDS to keep that MSDS "current" at all times. Most of the regulations impose an obligation upon an MIS to "review" its MSDSs at least once every five years, but there are also obligations which require every MSDS to be amended from time to time as the need arises. It might be, for example, that some new information comes to hand as to the chemical reactivity of a substance under particular circumstances. If so, the relevant MSDS would need to be amended, even if it has only recently been initially prepared. According to the respondents, Ucorp's practice of constantly searching the internet for MSDSs is best calculated to identify areas where changes have been made, with a view to keeping its subscribers possessed of the latest versions of the MSDSs of interest. The respondents submitted that there must be an implied licence, flowing from whoever owns the copyright in the amended MSDS, to proceed in this way. Although not expressed in quite these terms, the essence of the respondents' submission was that the law would not imply a licence whose terms were narrow to the extent of frustrating the wide-scale dissemination of new MSDSs, and of amended MSDSs, as soon as they became available from time to time.
135 As Merkel J made clear in Bashford, the licence which his Honour held to exist was one which was implied by law in contracts of the relevant class, the content of the licence being informed by "the regulatory and factual matrix in which the transaction took place". Put differently, what his Honour was saying was that the implied licence would be such as would permit at least any reproduction of the copyright work as was reasonably within the contemplation of the regulations. It is as clear as may be that the regulations to which I have referred contemplate that an MSDS will be reproduced not only by the original manufacturer or importer, but also by any intermediate supplier and by employers and, in some cases, occupiers of premises. Indeed, in places the regulations require it. Reproduction in this context is what Merkel J described as the "industrial use", and none the less so because the supplier, employer, etc engages the services of a third party such as Acohs or Ucorp to undertake it. This much Acohs accepted. However, according to Acohs, wherever the limits of the implied licence are to be drawn, they must on any view be drawn short of the activities of Ucorp. They characterised those activities as indiscriminate, wholesale, copying of MSDSs without reference to the immediate needs of any user, or to any known situation in which the substance of interest is to be used or stored. Implying that it makes Ucorp's conduct the more reprehensible, Acohs submits that Ucorp was doing this not because any regulatory or common law obligation fell upon it as supplier, user, employer, occupier etc, but for its own "commercial benefit".
136 I consider that Acohs' characterisation of Ucorp's purpose is crafted with a view to the result which it (Acohs) seeks to achieve in the present litigation. It is, in my view, not to the point that considerations of profit motivated Ucorp to search the Internet for MSDSs which were then placed into the Collection. In Bashford, it was after all, considerations of profit that motivated Acohs to reproduce Dr Bialkower's works on the instructions of its then customers. The real question, in the present case, is whether the purpose for which the MSDSs were copied by Ucorp was one which was fairly within the contemplation of the regulations. Here the focus must, in my view, be upon the use to which the MSDSs copied into the Collection might ultimately be put. That use is to be regarded as an element of the "factual matrix" to which Merkel J referred. It is clear that Ucorp stores MSDSs in the Collection only in contemplation that access to them will, later if not sooner, be required by its customers, present or future. Dr Bialkower was not challenged on the evidence in his affidavit to which I have referred in the second passage set out in para 92 above. Ucorp's customers, inferentially, are the employers, occupiers and others who come under an obligation to make the MSDSs which are relevant to the substances which they use "readily accessible" to persons who may be exposed to those substances. Seen in this way (which I consider to be the correct way), the purpose of Ucorp in reproducing and storing Infosafe MSDSs is to facilitate the "industrial use" thereof to which Merkel J referred.
137 I also consider that Ucorp's copying and storing of MSDSs falls within the "library use" referred to in Bashford. It is true that, in that case, MSDSs were, apparently, placed in the CDB only once they had been authored or transcribed for a particular customer; and it is true that the library use seemed to contemplate only the future benefit of then known emergency services and safety organisations who paid a fee for access to the "library". These are, however, distinctions without differences. If the relevant purpose relates to a later use of a particular MSDS, it seems to me to be beside the point that the initial creation of the document had a different purpose. It would have been wholly within the "library use" purpose for Acohs to have transcribed the MSDS for that purpose alone, absent any instructions from a user. Likewise, although one can appreciate the importance, in the public interest, of emergency service and safety organisations having access to the Acohs "library", the regulatory framework is concerned with all who use or store hazardous substances or dangerous goods. I cannot understand why such a "library" might not be put together for the anticipated needs of employers and occupiers generally. Again it is not really a point of differentiation that, in Bashford, Acohs maintained the "library" for the purposes of existing customers who paid a fee. The question was (and still is): what was the purpose for which the "library" was stocked with MSDSs? If it was to make them available to those who would or might require access to them in connection with their responsibilities under the regulations, that purpose should, in my view, give rise to a Bashford-type implied licence.
138 Although not directly reflected in the regulations, I consider that the 1994 control code should also be regarded as part of the "regulatory matrix" for present purposes. That is to say, the content of the implied licence granted by Acohs to the MISs and those who made use of MSDSs should also be informed by that code. Here it is said that access to an MSDS may be provided by way of "computerised MSDS databases". It is as good as common ground that, for large industrial enterprises potentially requiring access to thousands of MSDSs, this form of access is self-evidently the most efficient. Acohs itself stores, in the CDB, the data for many MSDSs of which it was not the author. It seems that it does so only on the instructions of particular employers, occupiers etc (the Bashford "industrial use"), but the scope of the system contemplated by the code is not to be delimited by reference to Acohs' own practices. If limited to the paradigm of which Acohs would apparently approve, when a new industrial customer - potentially concerned with a wide range of hazardous substances - instructed Ucorp to put together a computerised database of the relevant MSDSs, Ucorp would be entitled, at that point, to search the Internet for those MSDSs. But it would be outside the contemplation of Acohs and the original MIS that Ucorp might have done so previously, in anticipation of such a request. I do not accept that the implied licence is to be so limited. There is nothing in the regulations or the code which would require such a limitation. It would, I infer, work against the speedy provision of important, mandated safety information to those who need it and who must make it readily accessible to their employees etc.
139 The respondents also pointed out that, in some jurisdictions, it is the obligation of an MIS to provide an MSDS not merely to a person to whom the hazardous substance in question has been supplied, but more widely. In South Australia, a current MSDS must be provided to any person who "reasonably requires a copy"; in Tasmania, the MSDS must be made available "to any member of the public who requests a copy"; and in the Northern Territory an MSDS must be provided "on request". These regulations allow, therefore, for a situation in which a person obtains an MSDS (that is to say, a reproduced version of an original work) quite apart from any obligation falling on him or her qua employer, occupier etc. Regulations such as these make it all the more difficult to confine the terms of the implied licence in the way for which Acohs contends. Even if one were to follow the regulations closely, the licence would have to permit reproduction for the purpose of anyone obtaining a copy of the MSDS in these jurisdictions. And if any person could obtain a copy, there is no particular reason why that person need not be Ucorp. As pointed out by Ucorp in its submissions, it is difficult to see how an MIS which made its MSDSs available by way of an electronic link on its web site might comply with its obligation to supply a copy of an MSDS to any person in these jurisdictions without also, as a matter of reality, making a copy available to anyone in any State or Territory.
140 It was submitted on behalf of Acohs that an important circumstance in determining the content of the licence which it implicitly granted was that it was Acohs itself which was the grantor. I should not regard it as likely that Acohs would have granted a licence in terms which would permit its direct competitor to copy MSDSs for its own commercial benefit, rather than on the instructions of a particular user. I do not find this submission persuasive. The kind of licence recognised (on Acohs' own submission, as it happens) in Bashford was one which was implied by law. The Beck principle is that the licence will be such as permits the relevant material to be used "in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used…." As applied to the context of MSDSs in Bashford, the parties' contemplation was, in effect, impressed upon the transaction by law, informed, in point of content, by the regulatory provisions (including the 1994 control code). If a particular use falls fairly within the contemplation of the regulations, it is not for the putative licensor, Acohs, to craft implied exceptions with an eye to warding off otherwise legitimate competition.
141 It will be seen that the content of the implied licence which I would accept is broader than that recognised by Merkel J in Bashford in one respect. I would accept that the scope of the reproductive activities implied by the licence extends beyond the situation in which Ucorp has been requested to act on behalf of a particular user to the situation in which Ucorp copies MSDSs into the Collection in anticipation that users will at some point engage it to provide access to a suite of MSDSs by way of a computerised system. Either because the ultimate purpose of such copying would inevitably be the "industrial use", or because Ucorp's activities fell squarely within the "library use", I consider that the implied licence extends to it.
142 It remains to consider whether this conclusion might be affected by the licence notice to which I have referred in para 120 above or the copyright notice to which I have referred in para 124 above. In my opinion, the licence notice has no such effect. Indeed, I consider that the licence notice is rather strongly confirmatory of the implied licence for which the respondents contend. So long as reproduction had the purpose of "safety and dissemination to employers, employees and other persons using the product", it would fall within the terms of the implied licence referred to in the notice. In the present case, every reproduction of an Infosafe MSDS by Ucorp had that purpose.
143 The copyright notice appended to Infosafe MSDS - whether authored by Acohs, authored by Acohs' customers, or transcribed, it would seem - since January 2007 is more difficult, probably because it was most likely drawn with a view to Acohs' needs in the current litigation in mind. In point of content, the notice claims copyright only in the source code, which I have held not to amount to an original literary work, and in the "layout, presentation and appearance" of an MSDS, which Acohs itself no longer claims constitutes an original literary work. The final paragraph of the notice is highly tendentious, and overreaches the effect of the various regulations on any view. Any MIS which sought to limit the use of an MSDS which related to a hazardous substance supplied by it to "personal use only" would not be complying with its obligations under the regulations. Further, it is hard to see how, consistently with the regulations, and the provisions of the 1994 control code that access to MSDSs may be provided by "microfiche copy collections" or by "computerised MSDS databases", either Acohs or the relevant MIS could place an embargo upon a user copying the MSDS "for inclusion as part of a collection". When looking at the terms of the copyright notice, therefore, I am not persuaded that the existence or content of the implied licence which otherwise arises should be qualified.
144 The circumstances in which the copyright notice entered the factual matrix on which Acohs relies are also, in my view, problematic. Here I refer to what I said at para 124 above. In the absence of any evidence of the agreement of any relevant MIS to the abridgment of the scope of the licence which implicitly passed to it (and, downstream as it were, to its users and their agents and service-providers) at the time of the initial creation of an MSDS, it is hard to see how such a result might be brought about by the actions of Acohs alone. The problem is compounded by the existence at all relevant times of the licence notice - in the terms set out in para 120 above - appended to the actual agreement between Acohs and the relevant MIS, and which was in important respects inconsistent with the 2007 copyright notice. There is also a problem with timing. Even if the copyright notice had the effect for which Acohs contends, that could not operate so as to have curtailed Ucorp's entitlements to reproduce the Infosafe MSDSs which it located on the Internet prior to January 2007. For these reasons, as well as those expressed in the previous paragraph, I am not persuaded that the existence or terms of the Bashford licence was affected by this notice.
145 I would add that, in my view, the reproduction by Ucorp of the entire suite of MSDSs of interest to Blackwoods would seem to fall squarely within the "industrial use" in the Bashford sense. To the extent that Blackwoods was a user of hazardous substances, it engaged Ucorp to copy the relevant MSDSs into a computerised database, in the same way that any other industrial user might have done, as envisaged by Merkel J. No difference, in point of substance as distinct from form, is made by the circumstance that, apparently, in many situations the relevant MIS was Blackwoods itself.
146 For the above reasons, like Merkel J in Bashford, I am not satisfied that the reproduction of Acohs-authored MSDSs in which Ucorp engaged was done without the licence of Acohs. I shall, therefore, dismiss Acohs' copyright case with respect to those MSDSs. It follows that its case against Dr Bialkower must likewise be dismissed.
[16]
Disposition of the proceeding
147 To summarise, in my reasons above I have rejected Acohs' claims that the source codes for the MSDS files, whether authored or transcribed by its staff, or authored by its MIS customers, are original literary works in which Acohs holds copyright. I have also rejected the propositions that there was an original literary work as described by Acohs as the "Blackwoods Compilation", and that Acohs owned the copyright therein. I have accepted the proposition that the MSDSs authored (but not transcribed) by Acohs' staff are original literary works in which Acohs holds the copyright, and I have accepted that Ucorp reproduced those that are listed in Acohs' particulars. But I have rejected the proposition that Ucorp did so without the licence of Acohs as copyright owner.
148 It follows that the application must be dismissed. I shall make the usual costs order that would follow that event but, lest there be any consideration of which I am unaware that would affect the disposition of costs questions, I shall reserve liberty to apply.
I certify that the preceding one hundred and forty-eight (148) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jessup.
[17]
APPENDICES
1. National Code of Practice for the Preparation of Material Safety Data Sheets, [NOHSC: 2011 (1994)], App 2, Material Safety Data Sheet - Recommended Format
2. National Code of Practice for the Preparation of Material Safety Data, 2nd Edition, [NOHSC: 2011 (2003)], App 1, 16 Header Checklist
3. MSDS for Bettazyme as issued by the MIS
4. MSDS for Bettazyme as generated by the Infosafe System
5. Example MSDS as it appears on screen (PPA-791 Dynamar Brand Polymer Processing Additive)
6. Example Source code for MSDS (PPA-791 Dynamar Brand Polymer Processing Additive)
[18]
APPENDIX 1 - NATIONAL CODE OF PRACTICE FOR THE PREPARATION OF MATERIAL SAFETY DATA SHEETS, [NOHSC: 2011 (1994)], APP 2, MATERIAL SAFETY DATA SHEET - RECOMMENDED FORMAT
[19]
APPENDIX 2 - NATIONAL CODE OF PRACTICE FOR THE PREPARATION OF MATERIAL SAFETY DATA, 2ND EDITION, [NOHSC: 2011 (2003)], APP 1, 16 HEADER CHECKLIST
[20]
APPENDIX 3 - MSDS FOR BETTAZYME AS ISSUED BY THE MIS
[21]
APPENDIX 4 - MSDS FOR BETTAZYME AS GENERATED BY THE INFOSAFE SYSTEM
[22]
APPENDIX 5 - EXAMPLE MSDS AS IT APPEARS ON SCREEN (PPA-791 DYNAMAR BRAND POLYMER PROCESSING ADDITIVE)
[23]
APPENDIX 6 - EXAMPLE SOURCE CODE FOR MSDS (PPA-791 DYNAMAR BRAND POLYMER PROCESSING ADDITIVE)
Pty Ltd [2010] FCA 44
T R Flanagan Smash Repairs Pty Ltd v Jones (2000) 172 ALR 467
Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479
William Hill (Football) Ltd v Ladbroke (Football) Ltd [1980] RPC 539
Section 190(1)(b) and (c) of the Workplace Health and Safety Regulations 2008 (Qld) and s 12(1)(b) and (c) of the Dangerous Goods Safety Management Regulations 2001 (Qld) (in each case the obligation being to "amend the MSDS whenever necessary to ensure it contains current information", and to review at least every 5 years);
Reg 4.1.5(3) of the Occupational Health, Safety and Welfare Regulations 1995 (SA);
Reg 5.5(1)(c) of the Occupational Safety and Health Regulations 1996 (WA) and reg 19(1) of the Dangerous Goods Safety (Storage and Handling of Non-explosives) Regulations 2007 (WA);
Reg 70(1)(b) of the Workplace Health and Safety Regulations 1998 (Tas);
Reg 67(1)(b) and (c) of the Workplace Health and Safety Regulations (NT);
Section 215(1)(b) and (c) of the Dangerous Substances (General) Regulations 2004 (ACT);
Reg 6.05(3) and (4) of the safety standards regulations.
13 Under cl 151 of the Occupational Health and Safety Regulations 2001 (NSW), the manufacturer of a hazardous substance must provide a copy of a current MSDS for the substance to any person who supplies the hazardous substance for use at work, to any person who "claims to be associated with the use of the hazardous substance at work and who asks to be provided with a copy of the MSDS", and to any medical practitioner or health practitioner who requires it for the purpose of providing emergency medical treatment. The first situation is concerned with the interface between the manufacturer and a (subsequent) supplier. The second situation is concerned with the circumstances of a person to whom an MSDS may not have been provided in the normal course but who is associated with the use of the substance at his or her work. And the third situation contemplates a medical emergency where a practitioner of the kind indicated might need the MSDS for the purposes, say, of treatment being administered by him or her. Like obligations arise under cl 174K in relation to dangerous goods.
14 Clause 155 of the NSW regulations is concerned with the obligations of a supplier (as distinct from a manufacturer). Under that clause, a person who supplies a hazardous substance to an employer for use at work must ensure that a current MSDS prepared by the manufacturer is provided on the first occasion the substance is supplied to the employer, on the first occasion the substance is supplied following a revision of the MSDS, to any person who claims to be associated with the use of the substance at work and who asks to be provided with a copy of the MSDS, and to any medical practitioner or health practitioner who requires the MSDS for the purpose of providing emergency medical treatment. Like obligations arise under cl 174M(1) in relation to dangerous goods.
15 Save for the obligation to provide an MSDS to a medical or health practitioner, analogous, but not always closely similar, obligations to those referred to in the two preceding paragraphs arise under:
Reg 4.1.8(1) of the Occupational Health and Safety Regulations 2007 (Vic) (concerned with hazardous substances, where the obligation falls upon the manufacturer or supplier and is to ensure that a copy of the current MSDS for the substance is provided to any person to whom the substance is supplied on or before the first occasion that the substance is supplied to that person, to any person to whom the substance is supplied on or before the first occasion that the substance is supplied to that person after a review, and to any employer who intends to use that hazardous substance in a workplace, on request) and reg 309(1) of the Dangerous Goods (Storage and Handling) Regulations 2000 (Vic) (concerned with dangerous goods, where the obligation is the same as that arising under the Occupational Health and Safety Regulations, save that, in place of the obligation to provide a copy to the employer in the third situation mentioned above, there is an obligation to provide a copy "on request, to an occupier of any premises where those dangerous goods are stored and handled");
Section 191 of the Workplace Health and Safety Regulation 2008 (Qld) (concerned with hazardous substances, where the obligation is closer to the Victorian format than to the NSW format, save that, in place of the obligation to provide a copy to the employer, there is an obligation to provide a copy to a "relevant person" - defined in s 28(1) of the Workplace Health and Safety Act 1995 (Qld) as "any person … who conducts a business or undertaking" - and to a "worker or worker's representative at a workplace where the substance is, or is to be, used") and s 15(1) of the Dangerous Goods Safety Management Regulation 2001 (Qld)(concerned with dangerous goods, where the obligation is similar to that arising under the Workplace Health and Safety Regulations, save that, in place of the obligation to provide a copy to a relevant person (etc), there is an obligation to provide a copy, on request, to "the occupier of a major hazard facility, dangerous goods location or workplace where the goods are stored and handled");
Reg 4.1.5(4) of the Occupational Health, Safety and Welfare Regulations 1995 (SA) (where the obligation is to provide a current MSDS on the first occasion that the substance is supplied to a person who purchases the substance from the supplier, and at any other time, "on the request of a person who reasonably requires a copy" of the MSDS);
Reg 5.5(8) of the Occupational Safety and Health Regulations 1996 (WA) (concerned with hazardous substances, where the obligation is to provide the MSDS to a person who purchases the substance from the supplier on the first occasion of the person obtaining the hazardous substance from the supplier, whether or not on that person's request, to a person who purchases the substance from the supplier on a subsequent occasion, or who purchases the substance from someone who obtained the substance from the supplier, on that person's request, to a person who is a "potential purchaser" of the substance and who intends to purchase the substance from the supplier, or from someone who obtained the substance from the supplier, on that person's request) and reg 20(1) of the Dangerous Goods Safety (Storage and Handling of Non-explosives) Regulations 2007 (WA) (concerned with dangerous goods, where the obligation is to ensure that the current MSDS is provided to any person to whom the goods are supplied for the first time by the MIS, and, on request, to the operator of any "dangerous goods site" on which the goods are stored or handled, to the operator of any "dangerous goods pipeline" in which the goods are conveyed, and to any person engaged by the operator to work on such a site or pipeline);
Reg 70(1)(d), (3) and (5) of the Workplace Health and Safety Regulations 1998 (Tas) (concerned with hazardous substances, where the obligation falling upon the manufacturer or importer is to "ensure that the MSDS is readily available to any member of the public who requests a copy", and where the obligations falling upon the supplier are provide a current MSDS to a person on the first occasion that the person purchases the substance from the supplier and to any person who "reasonably requires a copy");
Reg 67(2) of the Workplace Health and Safety Regulations (NT) (concerned with hazardous substances, where the obligation is to ensure that the current MSDS is provided to a person on the first occasion that the substance is supplied to the person, and "on request");
Section 217(1) of the Dangerous Substances (General) Regulation 2004 (ACT) (concerned with hazardous substances, where the obligation is to ensure that a copy of the current MSDS is provided to a person on or before the first occasion the substance is supplied to the person for use, on or before the first occasion the substance is supplied to the person after an amendment of the MSDS, and, on request, to the person in control of any premises where the substance is handled);
Reg 6.06(1) of the safety standards regulations (concerned with hazardous substances, where the obligation falls upon the supplier and is to give a copy of the current MSDS to the relevant employer - ie one whose employees the supplier knows, or ought reasonably to expect, will use the substance at work - on the first occasion that the substance is supplied to the employer, and at any later time "on request").
16 Under cl 162(1) of the Occupational Health and Safety Regulation 2001 (NSW), for each hazardous substance supplied to an employer's place of work, the employer must obtain from the supplier an MSDS for the substance before or on the first occasion on which it is supplied, must ensure that the MSDS is readily accessible to an employee who could be exposed to the substance, and (with a presently immaterial exception) must ensure that the MSDS is not altered. Similar obligations arise under:
Regs 4.1.15, 4.1.17 and 4.1.18 of the Occupational Health and Safety Regulations 2007 (Vic) (in addition to which there is an obligation upon the employer under reg 4.1.16 of those regulations to make reasonable inquiries as to the currency of an MSDS obtained by the employer if it was prepared more than 5 years before the substance to which it relates was supplied to the employer, and the MSDS had not been reviewed during that 5-year period);
Sections 199(1) and 200(2) of the Workplace Health and Safety Regulation 2008 (Qld) (where the obligation of a "relevant person" (see para 15 above) is, first, in the case where he or she does not receive an MSDS for the substance, to ask the supplier if the substance is a hazardous one and, if it is, to ask the supplier for a copy of its current MSDS, and, secondly, where he or she is an employer, to keep a copy of the MSDS close enough to where the substance is being used to allow a worker who may be exposed to the substance to refer to it easily);
Reg 4.1.9(1) of the Occupational Health, Safety and Welfare Regulations 1995 (SA);
Reg 5.11(1) of the Occupational Safety and Health Regulations 1996 (WA) (where the obligations fall not only upon an employer, but also upon "the main contractor or a self-employed person", and include an obligation to consult with all persons who might be exposed to the substance at the workplace about the intention to use, and the safest method of using, the substance at the workplace; and in which the obligation is to ensure that the MSDS is "readily available" to any person who might be exposed to the hazardous substance at the workplace);
Reg 75 of the Workplace Health and Safety Regulations 1998 (Tas);
Reg 68(1) of the Workplace Health and Safety Regulations (NT) (where the obligation is to ensure that an MSDS provided by the supplier is "available" and is "readily accessible to a worker with potential for exposure" to the substance concerned);
Reg 6.12(1), (2) and (4) of the safety standards regulations.
17 In the 1994 control code, the following provisions appear:
8.5 At each workplace, employees and employee representatives shall have ready access to MSDS for the hazardous substances used. Copies shall be readily accessible to employees who are required to use or handle the hazardous substance, as well as to employees who are supervising others working with the hazardous substance.
8.6 Access to MSDS may be provided in a number of ways including:
(a) paper copy collections of MSDS;
(b) microfiche copy collections of MSDS with microfiche readers open to use by all employees; and
(c) computerised MSDS databases.
8.7 Depending on the needs of the workplace, any of the methods in section 8.6 of this national code of practice may be used. In each case, the employer should ensure that:
(a) the current MSDS are available;
(b) any storage or retrieval equipment is kept in good working order;
(c) employees are trained in how to access the information; and
(d) where information is displayed on a screen, there are means of obtaining a paper copy of that information.
The parties conducted their cases by reference to the assumption that "computerised MSDS databases" as referred to in s 8.6(c) of this code were within the contemplation of the various State and Territory regulations that required MSDSs to be readily accessible (etc). Consistently, I was referred to cl 16.3 of the Code of Practice for Hazardous Substances approved under s 55 of the Occupational Health and Safety Act 1985 (Vic), which contains the following:
Access to MSDS may be provided in a number of ways including:
paper copy collections of MSDS;
microfiche copy collections of MSDS with microfiche readers open to use by employees; and
computerised MSDS databases.
You may wish to discuss these options with your supplier. In each case, the employer should ensure that:
any storage or retrieval equipment is kept in good working order;
employees know how to access the information; and
there are means of obtaining a paper copy of information contained in a computerised database.
Commercially available computerised MSDS databases made available by another party are acceptable provided they contain the manufacturer's or importer's current MSDS. You need to ensure that the MSDS obtained from such a database is the authorised version prepared by the manufacturer or importer.
I was not referred to any similar provision in another jurisdiction, but the parties conducted their cases by reference to this provision of the Victorian code, as though I should regard it as more or less typical.
18 With certain presently immaterial exceptions, under cl 174ZG the Occupational Health and Safety Regulation 2001 (NSW), the occupier of premises must obtain from the supplier of dangerous goods stored or handled on the premises an MSDS before or on the first occasion on which the goods are supplied, must ensure that the MSDS is readily accessible to any person at the premises who could store or handle the goods, and (with a presently immaterial exception) must ensure that the MSDS is not altered. Similar obligations arise under:
Reg 438(1) of the Dangerous Goods (Storage and Handling) Regulations 2000 (Vic) (where the MSDS must be "readily accessible to persons engaged by the occupier to work at the premises, to the emergency services authority and to any other person on the premises");
Section 40(1) of the Dangerous Goods Safety Management Regulation 2001 (Qld) (where "occupier" is defined as the occupier of a "major hazard facility" or a "dangerous goods location", and where the MSDS must be "readily accessible to persons at the facility or location and to emergency services");
Regs 79(1), 114 and 131(1) of the Dangerous Goods Safety (Storage and Handling of Non-explosives) Regulations 2007 (WA) (where the obligation exists with respect to a "dangerous goods site", a "a dangerous goods pipeline" and "a rural dangerous goods location or small quantity dangerous goods location", and where, in any of those situations, there appears to be no obligation to ensure that an MSDS is not altered).