Section 47D(1) of the Act
328 In answer to any finding of infringement of copyright, ISI relies on the interoperability defence available in s 47D(1) of the Act, which provides:
Reproducing computer programs to make interoperable products
(1) Subject to this Division, the copyright in a literary work that is a computer program is not infringed by the making of a reproduction or adaptation of the work if:
(a) the reproduction or adaptation is made by, or on behalf of, the owner or licensee of the copy of the program (the original program) used for making the reproduction or adaptation; and
(b) the reproduction or adaptation is made for the purpose of obtaining information necessary to enable the owner or licensee, or a person acting on behalf of the owner or licensee, to make independently another program (the new program), or an article, to connect to and be used together with, or otherwise to interoperate with, the original program or any other program; and
(c) the reproduction or adaptation is made only to the extent reasonably necessary to obtain the information referred to in paragraph (b); and
(d) to the extent that the new program reproduces or adapts the original program, it does so only to the extent necessary to enable the new program to connect to and be used together with, or otherwise to interoperate with, the original program or the other program; and
(e) the information referred to in paragraph (b) is not readily available to the owner or licensee from another source when the reproduction or adaptation is made.
(original emphasis)
329 ISI relies on the defence in s 47D(1) in respect of any alleged reproduction of the R9 CA URT Macros or Datacom by way of the ISI Replacement Macros. I will consider the defence with respect to the 2004 and 2009 Macros, which, as I found above, reproduce a substantial part of the R9 CA URT Macros.
330 A determination of the availability of s 47D(1) is based on the findings of fact that I have made or make below with respect to the work reproduced (the CA URT Macros), its use in the creation of the ISI Replacement Macros and the fact that the reproduction is, in the case of the 2004 and 2009 Macros, otherwise an infringement of CA's copyright in the CA URT Macros.
331 There are a number of matters relevant to the application of s 47D(1):
The subsection applies to each reproduction or adaptation.
The original program referred to in the subsection is the R9 CA URT Macros. It cannot be Datacom for present purposes, because the "reproduction" in question, that is, the "reproduction" for which ISI seeks to establish the s 47D(1) defence, involves the reproduction of the R9 CA URT Macros.
The reproduction or adaptation of the 1999 Macros was made at Macquarie and/or at Beta, each of which was the licensee of a set of programs that included the R9 CA URT Macros. Mr Richards says, but CA challenges, that he had no intention of producing a "product" while at Macquarie or at Beta but was performing a service for them as an independent contractor working on their Datacom systems in order to enable them to transfer to DB2.
2BDB2 was developed, reproduced or adapted to be used by Datacom licensees who wished to convert from Datacom to DB2.
Once the customer has completed all conversions from Datacom to DB2 and has removed Datacom, the customer may use the ISI Replacement Macros to replace the CA URT Macros.
Without the ISI Replacement Macros, the objective of 2BDB2 to eliminate the need for Datacom would fail. This is because the customer's applications would still have the original URTs, including Datacom elements.
The purpose of the ISI Replacement Macros is, therefore, once conversion from Datacom to DB2 is complete, to generate new URTs to replace the original Datacom URTs.
332 I now turn to the application of s 47D(1)(a) of the Act.
333 ISI submits that it was acting "on behalf of" Macquarie, Beta and later customers for the purposes of making the reproduction of the R9 CA URT Macros.
334 The question is whether the 2004 and 2009 Macros were made, by or on behalf of, the owner or licensee of the R9 CA URT Macros.
335 The Shorter Oxford Dictionary relevantly defines "on behalf of" as follows:
As the agent or representative of (another); in the name of.
On the part of, proceeding from.
In the interest or for the benefit of (another person, a cause, etc); for the sake of.
336 The Macquarie Dictionary (rev 3rd ed, Macquarie, 2003) relevantly defines "on behalf of" as follows:
As a representative of.
In the interest of; in aid of.
337 In Re Ross, ex parte A-G for Northern Territory (1980) 54 ALJR 145, Stephen, Mason, Murphy and Aickin JJ said at 149:
The phrase "on behalf of" is, as Latham CJ observed in R v Portus, ex parte Federated Clerks' Union of Australia [(1949) 79 CLR 428 at 435] "not an expression which has a strict legal meaning", it bears no single and constant significance. Instead it may be used in conjunction with a wide range of relationships, all however in some way concerned with the standing of one person as auxiliary to or representative of another person or thing.
In what is perhaps its least specific use, "on behalf of" may be applied to someone who does no more than express support for persons or for a cause, as with one who speaks on behalf of the poor or on behalf of tolerance. It may be used when speaking of an agency relationship, but also of some quite ephemeral relationships, such as that which exists between a party to litigation and the witness he calls, a witness "on behalf of" the defence. Again, it may, as the Northern Territory here contends, be used where the relationship is that of trustee and cestui que trust. It was of such a use that Lord Cairns LC spoke when he said, in Gillespie v City of Glasgow Bank (1879) 4 App Cas 632; that the phrase could describe a relationship of trustee and cestui que trust "if the circumstances of the case are consistent with that interpretation" (at 640). Context will always determine to which of the many possible relationships the phrase "on behalf of" is in a particular case being applied; "the context and subject matter" (per Dixon J in the Federated Clerks' case, at 438) will be determinative.
338 That is, there is no strict legal meaning for the expression "on behalf of". Its meaning will depend on the context in which it is used.
339 Beta is the relevant licensee of the R9 CA URT Macros for the purposes of s 47(1)(a). It may be arguable that the 1999 Macros were created by or on behalf of Beta. However, as I found above, the 1999 Macros are not an infringement of CA's copyright under the Act.
340 ISI submits that it made the 2004 and 2009 Macros "by or on behalf of" its existing customers, all of whom are licensees of the CA URT Macros (presumably by being licensees of Datacom).
341 CA submits that the fact that 2BDB2 was transformed into a marketable product means that the reproduction of the ISI Replacement Macros cannot have been done "by, or on behalf of, the owner or licensee of [a] copy of" the "original program", whether that is Datacom or the R9 CA URT Macros. Once the copy was brought back to Australia, worked on and made into a product for the purpose of sending out to all 2BDB2 licensees, the copy made at Beta was, CA says, no longer being used on behalf of Beta but was actually being used on behalf of ISI. Further, CA points to the licence agreement between ISI and Beta, which, it says, indicates that 2BDB2 could not have been created "by or on behalf of" Beta, as 2BDB2 was being licensed back to Beta. In addition, CA points out that ISI did not repeat the process engaged in at Beta with the licensed copy of other Datacom licensees because ISI relied on what it had done already.
342 The 2004 and 2009 Macros were created by ISI for the purposes of updating 2BDB2 for its own commercial purposes, for distribution. They were sent to ISI's customers, not just Beta. The effect of ISI's submission is that any product used by a customer would have been made on behalf of that customer for the purposes of s 47D(1)(a). Section 47D(1)(a) does not contemplate a defence to infringement of copyright in a computer program in circumstances where an independent third party reproduces a computer program and then for commercial purposes provides that reproduction to a licensee of the computer program. This is the case even if the third party has an ongoing commercial relationship with the licensee of the computer program. I reject ISI's submission.
343 To the extent that ISI submits that "on behalf of" means, in effect, "to the benefit of" or "for the use of", that in my view extends beyond the proper application of s 47D(1) and should also be rejected.
344 The 2004 and 2009 Macros do not come within s 47D(1)(a). Accordingly, the defence in s 47D(1) does not apply. The same would apply for the 2011 Macros if they constituted an infringement. I will, however, make some observations on ss 47D(1)(b)-(e) of the Act.
345 The parties' submissions on s 47D(1)(b)-(e) do not address the various aspects of those subsections in sufficient detail or, in respect of some aspects, at all.
346 Although the parties' submissions briefly address the concept of "interoperability" as it applies to s 47D(1)(b), they do not address in sufficient detail the other components of that subsection, such as whether the ISI Replacement Macros were made "for the purpose of obtaining information". Further, the parties did not address the operation of ss 47D(1)(c)-(e).
347 It is for ISI to establish that the defence applies.
348 CA submits that the creation and testing of the ISI Replacement Macros was not done "for the purpose of obtaining information necessary to enable the owner or licensee, or a person acting on behalf of the owner or licensee" (that is, the owner/licensee of the CA URT Macros) to "make independently another program" (that is, the ISI Replacement Macros).
349 I agree, for the reasons given above. The reproduction of the R9 CA URT Macros by ISI through the 2004 and 2009 Macros was not made for the purpose of obtaining information to enable CA or a Datacom licensee to make another program. In that regard, it can be said that for the purpose of this subsection ISI was acting on its own behalf.
350 Section 47D was inserted into the Act by the Copyright Amendment (Computer Programs) Act 1999 (Cth). The following parts of the Explanatory Memorandum to the Copyright Amendment (Computer Programs) Act 1999 (Cth) (the EM) relate to s 47D(1):
The effect of the Bill is that copyright in a computer program is not infringed if a copy is made in the course of finding out how the program interoperates with (ie, connects to or works with) other programs so as to make a new program to interoperate with any or all of those programs (decompilation is a commonly used process to discover this information)…
The exceptions allowing copying for the purposes of interoperability [included that] the information, and the copy itself, must not be used or passed on to others for purposes other than those allowed by the exceptions, without the copyright owner's consent…
New s.47D exempts from infringement the reproduction of a program in the course of finding out how it interfaces with other programs, if done for the purpose of independently creating an interoperable software or other product and if the information is not already available...
New s.47D allows reproduction or adaptation of a computer program, without infringing copyright, to the extent reasonably necessary to find out how the program interoperates with other programs, so that the person reproducing or adapting the program can make a new program, or other computer product, to connect with it or with those other programs. The processes used in which a reproduction or adaptation is generated include decompilation and disassembly, and the information which s.47D allows such processes to be used to discover is often called interface specifications. The use of the term "interoperability" has a precedent in the European Communities Directive on the Legal Protection of Computer Programs. To come within this exception to infringement, the process resulting in the reproduction or adaptation of the program must be carried out by or on behalf of the owner or licensee of the copy of the program used in the process (new s.47D(1)(a)). The exception will not apply if the new program for the making of which the interface specifications have been sought is essentially a copy of the original program. That is, it must be an independently created program (new s.47D(1)(b)) and it must not reproduce the original program beyond the extent of its interfaces with other programs (new s.47D(1)(d)). Nor can the exception be relied on if the interface specifications of the program were readily available to the owner or licensee when carrying out the process resulting in the reproduction or adaptation of the program (new s.47D(1)(e)). Finally, the copy used in the process must not be an infringing copy (new s.47D(2))…
(emphasis added)
351 The emphasis of s 47D(1), as can be seen by:
the words 'for the purpose of obtaining information' in (b);
the words 'only to the extent reasonably necessary to obtain the information' in (c);
the repeated emphasis of the words 'in the course of finding out how' in the EM; and
the statement 'to the extent reasonably necessary to find out how' in the EM,
is on the acquisition of information from the reproduction in the quest to find out how the original program interoperates with other programs. In light of the EM and the words of s 47D(1), the purpose of s 47D(1) appears to be to allow a person to make a reproduction or adaptation of a computer program in order to obtain information necessary to make independently a new program or article that is to be used to interoperate with that program or another program. That is, certain copying is permitted in circumstances where it is necessary to obtain information to create interoperability. This is a very limited exception.
352 When the whole purpose of the reproduction is to enable the removal of the original program (the CA URT Macros), this does not seem to meet the "obtaining information" purpose of the section. Again, this was not fully addressed by the parties.
353 Further, subsection (b) requires that the new program be used together with, or interoperate with, the original program or any other program.
354 In this regard, ISI submits that the word "independently" means independently of the copyright owner's program, here Datacom and contends that 2BDB2 is a "new program" because it is made independently of Datacom. ISI submits that there is no difference under the terms of s 47D(1) between something that is interoperable because it is made externally to the original program and something that is interoperable because information in the original program is used to "deviate" from the original program. ISI says that the words "or any other program" indicate that the defence is available not just for the interoperability of the program devised (2BDB2) with the original program (Datacom) but also with other programs, which would include DB2.
355 However, the relevant reproduction or adaptation was not of Datacom but of the R9 CA URT Macros, which are the original program. Datacom and DB2 are therefore in the category of "any other program".
356 As the ISI Replacement Macros are designed to make 2BDB2 operate in an entirely Datacom free environment by replacing the CA URT Macros, 2BDB2 does not reproduce the R9 CA URT Macros "to connect to and be used together with, or otherwise to interoperate with" the R9 CA URT Macros ("the original program"). Indeed, 2BDB2 replaces the CA URT Macros. However, it could be said that ISI reproduced or adapted the R9 CA URT Macros to make independently 2BDB2 to be used together with or to interoperate with Datacom or DB2 ("any other program"). However, again, ISI did not explain precisely how it contends the subsection operates and, accordingly, CA did not respond.
357 Further, for s 47(1)(d) to apply, the ISI Replacement Macros would only be permitted to reproduce the R9 CA URT Macros to the extent necessary to enable 2BDB2 to connect with and be used together with, or otherwise to interoperate with Datacom or DB2. Again, ISI did not explain how it relied on this subsection.
358 Even if it could be said that the reproduction or adaptation of the R9 CA URT Macros in the 2011 Macros was done only to the extent reasonably necessary to obtain information to enable interoperation as referred to in (b), ISI has not addressed how this applies to the 1999, 2004 or 2009 Macros, which contained information unnecessary for such interoperation. Much of the information in the 1999 Macros related only to Datacom and to the early testing of the CA URT Macros. These parts were not substantially removed until the 2011 Macros.
359 Given that I have found that ISI has failed to establish the defence in s 47D(1)(a), which reasoning also applies to s 47D(1)(b), I do not propose to consider further ss 47D(1)(c)-(e). ISI has not established that those subsections apply.