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"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.

Pal 0)

©

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

eo)

©

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

manufactur

wo "'S

of the Wombat computer copied. Unless that

wu fet

copying constitut a reproduction of a literary work (or of an a@artation therecf to which IT heave later to come), there © will he no infringement. T recognise that it is trite law that copyright subsists in the order of words and not in ideas. It is the form, not the idea, which is of paramount

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

C

©

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