a
'DBP
n
»
cT
v
Oo{fi
oF
pas
a
nV
Dv
a
it
"S
w
Ke
as
fa)
v
fen
igs the calling up, by the use of the xevboard, of the number
-151, This will result in the orogramme apcearing both in
hexadecimal notation and in the mnemonics of the source code
on the VDU er, if desired in permanent form, on a print-out.
The orogramme will not be retrieved with the labels referred
to in sub-vara. (a) of cara. 21 of the agreed statement of
facts above quoted nor wirh the comments referred to in
sub-para. (ad) thereof. But it will show, instead of the
labels referred to in sub-pare. (a), certain address lines or
memory locations. With difficulty an experienced vrocrammer,
after many hours work, is able to make some reconstruction of
the programme with the aid of the mnemonics, but there is not
possible any recovery or reconstruction of the comments
referred to in sub-para. 21({d).
The Aople computers each contain six ROMs, five
containing fhe APPLESOFT programme and one the AUTOSTART
programme. Implanting the programmes on to further ROM chips
is apparently a comvaratively simple orocess. The procedure
earlier described is not reveated. There is available a
copying device by which the programmes are fixed into as many
ROM chips as are required. Presumably this is how the
manufacturing process takes place.
The evidence plainly establishes that the Wombat ROMs
are almost exact replicas of the Apple ROMs. Tf say that nor
unmindful of the fact that the Wombat computers contain
three, rather than siz, ROMs and that one of the Wombat ROMs
EP R
is rot a ROM but an OM. Thes2 letters stand for.
y
"Erasable Procrammapli2 Pead Only. Memorv". As whe name
zmplies 1% 18 possible Lo erase the memocy fixed into an EP
ROM. But this involves the application of ultraviolet Light
to its outer surface. The programme wrll not be erased
merely because the power is turned off. For practical
"s
purposes the fixing of the programme into the EP ROM makes it
as much part of the permanent memory of the computer as would
Reve been the case if a ROM had been used.
A further, matter of difference relied upon by counsel
for the respondents was that the programmes were acparently
fized in the Wombat ROMs by the use of a technology different
from that used to fix the programmes in the Apple ROMs.
Again, I do not regard this as significant.
The plain fact of the matter is that the programmes in
both sets of ROMs (that is, the hexadecimal notation and the
to in sub-varas. (b) and (c) of para. 21
mnemonics rererred
of the agreed statement of facts) are, when ovrinted out
7 ,
rtually identical. Even the initials. of one of the persons
pH
have been c d across.
fu
ns
t
ow
who wrote one of the programmes
One difference provides positive evidence of piracy. It is
the substitution of the name Wombat for the name aA
n
a]
ple.
'U
I have stated the facts sufficiently to come to the
which ace involved. One may have views about
the mocality of whet those who tanufactured the Wombat
computer have done. but morality is not the cuestion. The
only question is whether there has been @ breach or the iaw.
Fer the reasons given in the sudarents of Fox and
.
Lockhart JJ. I am of opinion «hat the oreogrammes as
originally writcen in source code were literary works and
that they were owned. at all relevant times, by the first
appellant. The learned primary Jucge, relying principally
upon Hollinrake v. Trusswell £18941 3 Ch. 420 and Exzon
Corporation v.. Exxon Insurance Consultants International
Limited [19827 R.P.C. 69, expressed the view that for
relevant. purposes a literary work was something which was
intended to afford either information or instruction or
pleasure in the forn of literary enjoyment. I acres with the
other members of the Court in thinking that this cannot be an
exhaustive statement or definition of what a literary work-
is. The purvorted definition seems to contemolate that there
must be an intention to make available the work for the
information, instruction or literary pleasure of others. The
words. come Zrom the judgment of Davey L.-J. in che Hollinrake
case (see p. 428). The case was decided before the United
Kingdom Act of 1911 came into force. That Act applied in
Rustralia - - see Copyright Act 1912. Until the United Kinadom
Act of 1911 there was no. statutory copyright in unpublished
works; see Covinger and Skone James on Copvricht, 12th Ed.
("Copinger") oara. 51. Under the ovresent Australian Act,
copyright subsists in unpublished works by reason of the
operation of sub-sec. 32(1); see also s. 29.
It seems tome that many instances could be given of
literary works in which copyric
'At subsists but which are not
oO
embraced within Davey L.J.'
ul
a
ry
[4
inition. TI instance a diar
ct
for one's personal use or pleasure recording, perhaps.
ene pertod of one's life or a series of related events. As
a
Q
ee
ct
ut
le]
it is written, there may be no intention of oublishin
that it is not, at that time, for the inforration,
instruction or pleasure of anyone but the writer. Years
later the author may decide to publish it or to repreduce it.
He has the copyright in ic from the outset. If before his
decision to publish, anyone took it and reproduced or
published it without his consent, there would be an
infringetent.
So here the programmes in question were not, as I
understand the evidence, ever published nor was it intended
that they should bs. They were not, so far as the evidence
discloses, reproduced, but they were nevertheless literary
works. Copyright subsisted in them as unpublished works. If
they had been taken from one of the programmer's desks by a
cleaner and reproduced or published by a competitor without
the first appvellant's consent, there would have heen an
infringement. During the argument, much was made of the fact
that the programmes as originally written could not be fully
retrieved or reconstructed. That was because neither the
labels nor the comments could be "recalled" by the computer
and thus resurrected or retrieved. But I am satisfied on the
evidence that the two series of mnemonics referred to iin
siib~oaras. (b) and (c) of para. 210
Tacts vere, im the case of each orcgranre, sufficrent
and comments they were not as i
them. Nevercheless, experienced peovle could urderstand and
nake use of them, albeit with a great deal of time and effort
and with the need to assign comments probably different from
those forming part cf the original programmes to them. In
any event, it seems beyond question, that if one were to have
copied only the mnemonics, there would have been a
reproduction of a substantial vart of each programme for the
"purposes of s. 14 of the Act; see Copinger para. 465.
The vrogrammes in source code being literary works, the
next question is whether they are also literary works when
converted in the manner earlier described into object code.
If not. there arises. the alternative. question, as to whether
the programmes when so converted are adaptations of the
programmes in source code within the meaning of sub-para.
31(1)(al{(vi) and sub-sec. 19(1) of the Act. It is to be
observed that it will not assist the appellants to show that
the srogranmmes when converted into object cede became
reproductions of the programmes in source code. That is
because there is no intringement it what is done by the
alleged infringer is to nake a reproduction of a
reproduction. That is no doubt because the draftsman of the
Act considered that any reproduction would be a reproduction
of the work itself, notwithstanding that it was derived from
another reproduction. Tt follows that infringement will
Occur, for relevant ours
ce)
wn
wu
a
a
, oniv if there is a reoroductic
of the literary work itself (sub-cara. 31¢(1)(al(i)) or a
reproduction of an adaptation cf the literary work
(sub-paras. 31/1)Ca}fi) and (v7ii)).
Tn my ovinion the orogramres in ohject cod= are not
a
fu
yp
(ty
ct
bow
®
q
gw
iat
a
to
fo]
ct
yvu)
Oo
x4
n
ct
by
a
'
yp
ts
fa)
literary works. Pixe
unable to be seen in that code. True it is, someone could
write them out so as to show them symbolically in binary
notation or hexadecimal notation. The computer itself can _.-
O show them symbolically in hexadecimal notation. But all of 1
: that is irrelevant. The important point is that it is only ont
che machin itself,-that is, the microprocessor, which can _
"urderstand" or "see", and thus deal with, the object. code.
It is to be emphasised that the appellants need to
persuade the Court that the ROMs with the orogrammes fixed in
them are literary works because it was the ROMs which the
importance. But 2f what is alleged to constitute a literary
g
is)
rs
orLa)
ry
nt
ct
r
Oe)
"e)
rogrammes in object code) cannot be seen even
with the aid of the screening or printing devices attached to
the computer, they cannot in my opinion, amount to 4 literary
work. A consideration of a number of the orincical sections
)
f the Act
be
this connection
ct
p>
Pp
a[e)fo}
I
it)a
2]
t~l
vs
& should be mentioned
at
q
nab the music recorded on the perforated rolls which were
the subject of the contcoversial decisions in Boosey _v.
Whicght £19003 1 Ch. 122 and White-
mith Music Publishing
Company v. Apollo Comoany (1908) 209 U.S. 21, could be heard
-when played on a pianola,.
That leaves the difficult question of whether the
orogrammes, as fixed into the ROMs in object code or machine
Tan guage, are adaptations of the literary works constituted
"by the Programmes in source code.
"adaptation" in the a
Q
Tr
ra
n
ry)
Pe)
D
set out in the other judgments, I fesi
again. [It is as follows:-
The definition "of
raustive one. Although it is
the need to set it out
"In this Act, urmless the contrary intentton
appears -
"adaptation" means -
' (a) ain relation to a literary work ina
non-dramatic form - aversion of the
work (whether in its original lanquage
or in a different language) in a
@Qramatic form;
{b) in- relation to a4 literary
dramatic form - a version
(whether in its ori
a different lan
Torm;
work ina
of the vork
ginal language or in
nguage) in a non-dramatic
{c) in relation to a literary work (whether
in a non-dramatic form or in a dramatic
form) -
(i} a translation of the work: or
$
(ii) a version of the work
in which a
story or action 1s conveyed solely
or orincivally by
ion to a musical
pt or transcriotion of the
means of
work - an
The immediately reievant pact of the detirition is found
in sub-para. (c)(i} which constitutes a translation of a
fal)
literary work an adapration thereof. Is
" fa =
the word translation" any narrow
Nevertheless, the context in which it
definition of "adaptation" and the wider context
used in the Act m
word "adapcation" itself ts
into account
Generally speaking a translation denotes a chan
form to will be in
languace, speech or But a meaning
"translate" in Oxford Dicti
interoret, explain; also, to express (one thing
another..." The corresponding meaning °
in coming to a conclusion as to w
ust
hat
e
ry Q
ip
My
°
na
"dq
eno reason to give
or restricted meaning.
in which the
it means.
from one
tatz on to
the verb
is, "To
} in terms of
f
the noun
"translacion" is. "The action or process of turning from one
aiiferent language ... The exprassion or
another medium or form."
another; also, the product of this;
@ version
"transformation, alteration, (or) change." Literally then,
it ais by no. means an abuse of language to describe the
conversion of the source ccde into
language as a translation.
But as I[ have said, one needs to take into account the
context in which the word 1s used both
un the Act itself. Te is to
(Db), ed(iid and (4d) are all plainly concerned with
adaptations of literary works which will themselves be
capable of being seen or heard. Thev encompass versions of
literary works in non-dramatic form in dramatic farm,
versions of literary works in dramatic form in non-dramatic
. form, versions of literary works in which the story or action
is conveyed solely or brincivally by means of pictures. and,
in relation to a musical wock, an arrangement or
transcription of a work. Tt would seem. odd to me if the
draftsman had intended thact the translation of the work to
which he referred in subrvara. (cli) was ta encompass
something which could neither be seen nor hearc. I do not
say that it is impossible that that was his intention, but it
would seem to me to be unlikely that it was.
ts
My view in this regard is confirmed bv a consideration
of a number of the rvincipal sections of the Act,
arlier caferred to.
particulariy ss. 31, 32, 33 and 36
1D
There seems to be running through these various provisions
the idea or notion that what is the subject of copvright
(whether 2 work or an adaptation thereot) will, althoudch not
immediately published and perhaps nevar published. be capable
of being published and thus being sean oc heard. The very
idea of publishing is that something shoula be seen or heard.
The same may be said in relation cO pérrorming a wock,
broadcasting a work, causing a work toa be transmitted to
subscriders to a2 diffusion service and, TF think 16 follows,
Cc
thenseives. must, in my
ovinicy, be capable of being seen or
In those circumstances I have- reached the conclusion.
not without
code are
programmes im source
sympathies are
some hesitation,
not adaprations,
code.
with the appellants,
that the programmes in object
that is, translations of the
Notwithstanding
I regret to say that I
think the fact must be faced that the leatsTation in question
does) not extend to protect the appellants in
circumstances.
Drocrammes in source code,
that is
fey
[4
u
ecinction without
point of view.
did not contemslate
the fact
Honour in the present c
mnemonics orf the source
That I regard: as irrelevant.
act done by
Aombat computers. Ir it
retrisved the
o
If what
not what occurred.
a difference, and I
But in my opinion, the
Chis kind
that it is possible, as was
those responsible for
xpress no concluded view. But th
the present
had been copied had been. the
I would have had ancther view; but
To some, this may seem to be a
can understand that.
draftsman of the Act
drew the
of piracy when he
indéed done before his
ase, to yretrisve or resurrect the
code by manipulating... the keyboard.
Tt has nothing: to do with any
the manufacture oz the
had been established that they had
in that way and then used the
to do what they did she result may
sin
a
therefore
that my
1d.
appropriate to be taken into account.
ue)
T have aiso taken into account the reliance placed hy
senior counsel for the anpvellants unon certain varagraprs in
one of the Apple manuals which inform an Apole user how to
obtain access to the mnemonics of the progremmes im questiom.
The purpose of this was explained by the first aprellant's
Australian General Manager, Mr. Strong, in the following
evidence:-
"Is there any usefulness in being able to
examine the contents of ROM? ---- Yes, most
definitely. The various sub-routines being
small programmes that are stored in the ROM
memory are worthwhile to examine, firstivy,
to determine exactly what they do and how
they doit which is an invaluable way of
determining good programming technique.
Further, shoulda programmer wish tu prorhuce
a very similar routine but not identical
then the best way to do that is to examine
the coutine you wish to copy and display it
on the screen and then subsequently make the
small changes necessary to it."
Counsel said that the user was thus intended to be able
to resurrect or retrieve at least varts of the two programmes
in question. I agree that that is so. but have difficulty in
understanding how this can he relevant to the case which the
apoellants make. That case ts: that the copying of the. Apple
ROMs by the Wombat manufacturer was an infrincement of the
Tirst appellant's copyright. No question of the retrieval of
all or part of either ovorogramme was involved. The vice of
what the manufacturer was alleged to have done was to have
cooled the Apole ROMs for the ourpose of facilitating the
operation of the Nombat computers
For the reasons IT have oiven the FOMs are nor, ir mr
opinion, adaptations of the programmes in source coce. It
follows that there can be no infringement of the first
appellant's copyright. The consequence is chat the
appellants' claim in copyright should fail. It is thus
unnecessary for me Fa express 2 view ar the suit sstorrs ghEch.
were made concerning knowledge for the vurposes of the
operation of ss. 37 and 38 of the Act.
Before leaving the question of copyricht, I wish to make
this clear. The views [I have expressed relate only to the
programmes in question in this case. Those procranmes are
cperating systems programmes and form the soermanent nemory of
the computer. The vosition nay be entirely different in
relation to avplication programmes such as the accounting
programme earlier mentioned. I do not express any view on
this. Before one could do so, one would need detailed
technical avidence about what was involved. Moreover, the
position may not be the same in relation to all application
programnes. And it may vary depending upon the circumstances
of each case.
It seems. to me that the learned primary Judce did not
intend his decision either to apoly to programmes other than
those about which he had heard evidence. Although the matter
is not spelt out in terms in the passage from his judoment
cited by Fox J. (po. 4), I thank it follows from the way he
d
aM
has cited the various authorities to which he has referr
KH
s
D
rh
iD
ba)
anc from sone of his discussion about them.
22,
particularly to his mention of Northern Office Micro
Computers (Pty.) Ltd. v. Rosenstein (£19823 F.S.R. 124 and
Seca Enterprises Limited. v. Richards £19835 FP_-S.R. 73- bock
of which concerned application progranmes. In each case,
although-in Sega. only ar am inrerlocutouy basis, Lt wes Ei
that an infringement of copyright had occurred. Nothing that
the learned primary Judge has. said leads me to think that he ~
thought that those cases would necessarily hare been decided:
differently under the Australian Act. That is certainly my
own view. Whether they have application here ar not is nate.
matter which now arises for dectsion,.
As to the claims made pursuant to the various provisions
of the Trade- Practices Act, I have reached the conmclustor
that the appellants are entitied to relief pursuant to the
provisions of s. 52 and paras. 53(c) and (d). TF agree in
substance with the reasons of Lockhart J. IT would anly add
that in my consideration of the problem, I have had regard to
the fact that the claims nade pursuant to paras. 53(c) and.
(d) involve the appellants establishing, albeit in civil
roceedings, the cammission of a sari of misdemeanaurs.
'so
The oft referred to caution in Bricginshew v. Briginshaw
(1938) 560 C.L.R. 336, must be observed. I am nevertheless
satisfied that the appellants have made out their case.
The injunction to which in my view they are entitled may
require some consideration. That is particularly because che
restraint to be ximposed will b
om
one which. prevents the
respondents from selling Nombat computers and, at the same
son
e)
ef argument before us. My judement in relation to the
copyright claim will not prevail. The other members of the
Court consider that an injunction to restrain continued
infringements of copyright should go. Of necessity, that
injunction will be in terms wider than any injunction under
the Trade Practices Act. Ido not therefore consider it
N
necessary to attempt to formulate an appropriate injunction
in these reasons. I would prefer to allow counsel to
consider the reasons of che Court and to soeak ar a later
time as to the form of orders to be made in relation to the
claims under the Trade Practices: Act upon which the
appellants have succesded.
In the result I woulda allow the apoeal in so far as the
Trade Practices claims are concerned but only
ct
u
ct
a
™
i)
tal
ch
b
s
a
indicated by what I have said. The avpeal in relation to the
oO
ie]
'D
'q
ty
He
r
ct
Q
G laims should be dismissed.
estas TP
fanart pedthe 2/ preceding
Mir vustice Sheppard. SP HUTCHISON
Associate
Dated 29 WAY (784
Apple Computer Inc. & Anor v. Computer Edge Pty Ltd & Anor [1984] FCA 137 - FCA 1984 case summary — Zoe