Computer Edge Pty Ltd v Apple Computer Inc [1986] HCA 19;

Computer Edge Pty Ltd v Apple Computer Inc [1986] HCA 19; - HCA 1986 case summary — Zoe

[57]

It was argued on behalf of the respondents that the embodiment of the object programs in the silicon chips was a translation of the source programs and therefore an adaptation within par.(c)(i) of this definition. Reliance was placed on the Shorter Oxford English Dictionary, which defines "translation" not only as "The action or process of turning from one language into another" but also, in transferred and figurative use, as "The expression or rendering of something in another medium or form". When the definition of "adaptation" in s.10(1) is read as a whole, it suggests that the primary, and not the transferred and figurative, meaning of "translation" is intended. If that were not so the provisions of pars.(a), (b) and (c)(ii) of the definition would appear to be surplusage. Clearly the programs in the ROMs were not a translation of the source programs within the primary meaning of the word, because when the programs were embodied in the ROMs they were not turned into another language, even into another computer language - they were turned into electrical impulses. If it be assumed, contrary to my opinion, that translation in the definition is used also in its transferred and figurative sense, I consider that the object programs in the ROMs were not a translation of the source programs within that usage of the expression. When the dictionary definition refers to "the expression or rendering of something in another medium or form" it must refer to the portrayal, utterance, representation, reproduction or depiction of the thing in a different medium or form. The ROMs did not in any way express or render the source programs; rather, the ROMs were the means of putting into action and making effective the instructions written in the source programs. Just as a person does not (except in a metaphorical sense) translate the instructions for the working of a machine when, following those instructions, he sets the machine in motion, so the electrical charges in the ROMs effectuate, but do not translate, the instructions in the source program. Fox J., in his judgment, refers to the 1979 Report of the United States National Commission on New Technological Uses of Copyright Works, where it is said:

[63]

themselves were not adaptations of the Applesoft and Autostart source programs. The final question for decision then becomes whether the Wombat object programs embodied in the ROMs and EPROM were reproductions of the Applesoft and Autostart source programs. A reproduction within the meaning of the Copyright Act includes a reproduction of a substantial part of the work (see s.14 of the Copyright Act). The notion of reproduction involves two elements - that the infringing work sufficiently resembles the copyright work and that it was produced by the use of the copyright work. The latter element is satisfied in the present case where the appellants clearly appropriated for themselves some of the benefits of the respondents' work. The former element requires that there should be "a sufficient degree of objective similarity between the two works": see Francis Day & Hunter Ltd. v. Bron (1963) Ch. 587, at p.614; Lend Lease Homes Pty. Ltd. v. Warrigal Homes Pty. Ltd. (1970) 3 N.S.W.R. 265, at p.273; S.W. Hart & Co. Pty. Ltd. v. Edwards Hot Water Systems [1985] HCA 59; (1985) 59 A.L.J.R. 729, at p.730; [1985] HCA 59; 61 A.L.R. 251, at p.253. It is impossible to say that there is any objective similarity between the ROMs and EPROM on the one hand and the written source programs on the other. Neither the silicon chips nor the electrical impulses that may be generated in them have the slightest resemblance to the written source programs. The Wombat ROMs and EPROM may well be reproductions of the Apple ROMs but they are not reproductions of the Applesoft and Autostart source programs. The ROMs and EPROM give effect to the same idea as that which is expressed in the source programs but do not resemble the source programs. It is established that a work which is manufactured in accordance with written instructions is not a reproduction of those instructions. Thus it was held in Cuisenaire v. Reed [1963] VicRp 96; (1963) V.R. 719 that a set of coloured rods did not infringe copyright in a book which described a method of teaching mathematics with the aid of such rods, and Pape J. said, at p.734, that "a set of written directions is not 'reproduced' by the construction of an article made in accordance with those directions". Similarly, in Boosey v. Whight it was held that perforated rolls used to produce particular melodies did not infringe the copyright in sheets of music on which the score of those melodies was written and in Brigid Foley Limited v. Ellott (1982) R.P.C. 433 it was held that knitted garments produced by following the instructions in a knitting guide would not be reproductions of the knitting guide itself. The ROMs and EPROM embody the idea, and logical structure, of the source programs, but do not reproduce the expression of the idea and of the logical thought which is to be found in the source programs.

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difficulty, and they have given rise to differences of opinion in the writings on the subject. We were referred to some authorities which are contrary to the conclusions that I have reached. In the United Kingdom, the provisional opinion has been expressed by judges in interlocutory proceedings that a machine code program is either a reproduction or an adaptation of an assembly code program: Sega Enterprises Ltd. v. Richards (1983) F.S.R. 73; Thrustcode Ltd. v. W.W. Computing Ltd. (1983) F.S.R. 502. In Canada and in South Africa it has been held that a program in an object code may be a literary work: I.B.M. Corporation v. Ordinateurs Spirales Inc. (1984) 80 C.P.R. (2d) 187; La Societe D'Informatique R.D.G. Inc. v. Dynabec Ltd. (14 August 1984; unreported); Northern Micro Computers v. Rosenstein (1982) F.S.R. 124. There are some differences between the language of the statutes considered in those cases and that of the Copyright Act, but I am not sure that the differences are material. In the United States the question has been considered in a number of cases and it has been held that an object code is entitled to copyright protection (see particularly Apple Computer Inc. v. Franklin Computer Corporation [1983] USCA3 1033; (1983) 714 F.2d. 1240 and Apple Computer Inc. v. Formula International Inc. [1984] USCA9 205; (1984) 725 F.2d. 521) but the statute law in the United States is materially different from that of Australia. I have not found anything in any of those authorities that has persuaded me that a sequence of electrical impulses in a silicon chip, not capable itself of communicating anything directly to a human recipient, and designed only to operate a computer, is itself a literary work, or is the translation of a literary work, within the Copyright Act. It may be regretted that the respondents have no remedy in copyright against the appellants who pirated their programs. However although it would be no doubt right to give the Copyright Act a liberal interpretation, it would not be justifiable to depart altogether from its language and principles in an attempt to protect the products of scientific and technological developments which were not contemplated, or only incompletely understood, when the statute was enacted. To keep copyright law abreast of developing technology is no new problem, as the decision in Boosey v. Whight shows. The provisions of s.21(1) and Pt.IV of the Copyright Act were intended to take account of technological developments unknown when the earlier copyright acts came into force. The Copyright Amendment Act 1984 similarly attempts to make the law adequate to cope with modern developments. Important questions of policy arise when it becomes necessary to consider whether copyright protection should be extended to such a thing as a ROM, and the courts can act only within the existing statutory framework.

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3. At first instance the respondents failed to persuade Beaumont J. that their object programs were protected by copyright in accordance with the Copyright Act 1968 (Cth), as amended ("the Act"). His Honour held that neither these object programs nor the written source programs from which they were derived were original literary works capable of attracting copyright protection. Subsequent to the decision the Parliament enacted the Copyright Amendment Act 1984 (Cth) in order to ensure a degree of protection to computer programs in the future but the terms of that enactment are not material to the present proceedings. It does mean, however, that similar issues that may arise in future proceedings will have a very different statutory context for their resolution. In the meantime the respondents appealed successfully to the Full Court of the Federal Court. It was held by a majority (Fox and Lockhart JJ., Sheppard J. dissenting) that the programs contained in the Wombat ROMs and EPROM were reproductions of the programs contained in the Apple II ROMs, which were themselves adaptations of the Applesoft source program and the Autostart source program respectively. The Full Court was unanimous in concluding that these source programs were original literary works, but divided on the adaptation issue. On the question of infringement, the issue in the Full Court was whether the appellants had the knowledge necessary to constitute infringement under ss.37 and 38 of the Act, namely, the knowledge that the making of the ROMs and EPROM used in the Wombat computer would have constituted an infringement of the respondents' copyright if they had been made in Australia by the importer. A belated attempt by the respondents to establish infringement by reference to s.36 of the Act was rejected by the Full Court on the ground that the issues arising under that section had not been fully canvassed at the trial. A further attempt in this Court to rely upon s.36 failed. In the result the Full Court held that the appellants had the requisite knowledge at least from the commencement of the proceedings and that injunctions should be granted on a quia timet basis, with the proviso that if a claim for damages for past infringements was to be pursued the matter should be referred back to the trial judge for findings concerning prior knowledge.

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16. The question whether an adaptation of a literary work must itself be a literary work is more difficult of resolution. Fox J. (at pp.235-236) considered it to be plain from the language of the Act itself that the question must be answered in the negative, and he did not find it necessary to consider whether the Apple II object codes could be regarded as literary works. Lockhart J. did not address the question. His Honour, however, did confess to having considerable reservations about the correctness of the view that object programs are original literary works (a question which he did not have to decide), but we would understand that to be a different question from the one we are presently considering. Section 31(1)(a)(vii) provides that copyright, in relation to a literary work, is the exclusive right, inter alia, to reproduce in a material form a work that is an adaptation of that literary work. "Work" is defined in s.10(1), unless the contrary intention appears, to mean inter alia a literary work. Prima facie, therefore, an adaptation of a literary work must itself satisfy the description of a literary work. Of course, one would expect that an adaptation, in this case a translation of the original literary work constituted by the source codes, would continue to display, in its new form, the characteristics which enabled the original work to satisfy that description. But it is argued for the appellants that that is not so in the present case because a literary work must be in writing. Ordinarily and traditionally it is no doubt true that a literary work would take a written form. But the Act does not require it to be so. Indeed, s.22(1) of the Act identifies the time when a work is made as the time when "the work was first reduced to writing or to some other material form" (our emphasis). See also s.21 of the Act. There seems to be no reason to doubt that a literary work is made and entitled to copyright protection from the time it is first recorded on tape, if that be the first material form that the work takes. In our opinion, an object code, although brought into existence by mechanical means, takes on the same literary character as is possessed by the source code from which it is derived. This conclusion seems necessarily to follow, if the protection secured by the Act to the source programs as original literary works is to be effective. If there is no copyright in the object programs which are a natural and necessary derivative of the source programs then there is no point in protecting the source programs.

[99]

17. The third submission of the appellants is that the Federal Court erred in holding that the Wombat ROMs and EPROM were reproductions of the Apple II ROMs which contained the Applesoft object program and the Autostart object program. Once it is accepted, first, that the object programs contained in the Apple II ROMs are adaptations of original literary works and, secondly, that the object programs contained in the Wombat ROMs and EPROM were copied from those adaptations, it would seem to follow that the Wombat computers contain a reproduction in a material form of an adaptation of an original literary work. It is sufficient if the reproduction relates not to the whole but to a substantial part of the work: s.14(1). The fact that the Apple II programs are contained in six ROMs in the Apple II computer but in only two ROMs and one EPROM in the Wombat computer is immaterial. The distinction merely represents an advance in computer technology. It is argued for the appellants that the Wombat ROMs and EPROM are not reproductions but are merely manufactured in accordance with instructions which can be derived from the literary work. But this is to misunderstand what it is that is alleged to have been reproduced. It is unnecessary to decide whether the Wombat ROMs and EPROM could be said to be reproductions in a material form of the original literary works, namely, the Applesoft and Autostart source programs. The allegation here is that the appellants have reproduced directly the Applesoft and Autostart object programs themselves. Those programs are entitled to protection as adaptations of the original literary works. The appellants sought support for the submission in the decision of Pape J. in Cuisenaire v. Reed [1963] VicRp 96; (1963) VR 719, and referred particularly to pp 734-736, where his Honour was dealing with a claim by the plaintiff for infringement of literary copyright in certain tables and compilations set out in a book published by the plaintiff which described a new method of teaching primary school children mathematics with the aid of rods of varying lengths and colours. The infringement was alleged to rest, not in the reproduction of the tables and compilations themselves, but in the production of the rods. The plaintiff failed. At p.734, Pape J. said:

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10. A literary work need not have literary merit (Robinson v. Sands & McDougall Proprietary Ltd. [1916] HCA 51; (1916) 22 CLR 124, at p 133). The words "literary work", as Peterson J. pointed out in University of London Press, Limited v. University Tutorial Press, Limited (1916) 2 Ch 601, at p 608, "cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high". A "literary work", according to Davey L.J. in Hollinrake v. Truswell (1894) 3 Ch 420, at p 428, is a work "intended to afford either information and instruction, or pleasure, in the form of literary enjoyment". Although that case was decided under the Copyright Act of 1842, the observation of Davey L.J. was adopted by the Court of Appeal in Exxon Corporation v. Exxon Insurance Ltd. (1982) 1 Ch 119, at pp 143,144; (1982) RPC 69, at pp 88,89. The observation is not unduly restrictive. If the print or writing in which the work is expressed conveys information or instruction, albeit to a limited group with special knowledge,it is immaterial that the information or instruction is not expressed in the form of words, phrases or sentences. Thus a telegraphic code has been held to be a literary work though the words of the code were meaningless in themselves: D.P. Anderson & Co.Limited v. Lieber Code Company (1917) 2 KB 469. The source programmes were the product of substantial originality and skill, they were prepared as instructions for the manufacture of Apple II ROMs, they were in writing and they conveyed meaning at least to computer scientists and technicians. That is sufficient to bring them within the scope of literary copyright. The argument that a source programme is not a literary work proposes a dichotomy between literary works and what are "merely adjuncts to the operation of a mechanical device". The dichotomy is false, for it cannot be said that every book of instructions for the operation of a machine is outside the scope of copyright protection. Copyright might not protect every minor direction for use of a machine or device, but that is not the present case. Here, the source programmes are a set of complex and precise instructions for the manufacture of Apple II ROMs. The source programmes are substantial original compilations. It would be an infringment of Apple's copyright in a source programme to do in relation to that programme in Australia without Apple's licence any of the acts prescribed in s.31(1)(a) of the Act.

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17. An exclusive right to reproduce a work in which copyright subsists has been an aspect of copyright created by successive Copyright Acts. Each Act differed from the others, of course, in the terms and context by and in which that exclusive right was conferred. Under the Fine Arts Copyright Act 1862 (Imp.), the exclusive right "of copying, engraving, reproducing and multiplying" an original painting or drawing "by any means and of any size" was held not to be infringed by the representation of a painting by a grouping of figures in a tableau vivant: Hanfstaengl v. Empire Palace (1894) 2 Ch 1. The Copyright Act 1911 (U.K.), adopted subject to modifications by the Copyright Act 1912 (Cth), adopted a different formulation of the right. Section 1(2) of the 1911 Act conferred "the sole right to produce or reproduce the work ... in any material form whatsoever". That provision was thought to give wider protection to authors than that given by the 1862 Act and to remedy the effect of the decision in Hanfstaengl v. Empire Palace: see Bradbury, Agnew & Company v. Day (1916) 32 TLR 349; Chabot v. Davies (1936) 3 All ER 221; King Features Syndicate, Inc. v. O. & M. Kleeman, Ld. (1940) Ch 806, at pp 816,827; (1941) AC 417, at pp 432,435. Under the 1911 Act, the sole right of reproduction of a work is infringed by its unlicensed reproduction in a material form different from the form in which the original work is made. The widening of protection was particularly significant for the protection of artistic works. The sole right to reproduce an artistic work was infringed by the unlicensed making, in any material form, of an object visually similar to and derived from the original work. The protection thus accorded to original artistic works, which included mechanical drawings, was thought to be too wide and a limitation was enacted (see the Copyright Act 1956 (U.K.), s.9(8), and its analogue in s.71 of the Act). The extent of the limitation was considered by this Court in S.W. Hart &. Co.Pty.Ltd. v. Edwards Hot Water Systems [1985] HCA 59; (1985) 59 ALJR 729, at p 738; [1985] HCA 59; 61 ALR 251, at p 267, where I drew attention to the difficulty of applying the test of visual similarity to a written specification - a literary work. Although copyright in an original work may now be infringed by unlicensed reproduction whatever the material form of the infringing article may be, the form of the original work may limit the forms in which it is possible to reproduce it. A building may resemble a drawing (as in Chabot v. Davies), but it is difficult to conceive of a building resembling a piece of writing or a musical score.

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2. There is an inevitable element of ambiguity in any reference to the Applesoft and Autostart "programmes" unless one takes care to distinguish between a written programme in source or object code and the actual series of electrical impulses or charges which constitutes an operational computer programme. The written programme in source code is directed to a human reader and not to a machine. Its essential function is to record and communicate programming instructions. Thus, the written expression of each of Applesoft and Autostart in source code consisted essentially of instructions, in 6502 Assembly Code mnemonics with accompanying labels and comments, to be read and followed by a human reader in his or her operation of an assembler to generate the series of electrical impulses or charges constituting the relevant operational programme. A written expression of Applesoft or Autostart in object code consists of the designation in a notation code (e.g. binary or hexadecimal notation) of the relevant sequence of electrical impulses or charges. The actual series of electrical impulses or charges constituting the operational object programme may be in a transient state or "stored" in any one of a number of ways including temporarily in the RAM of an activated computer and semi-permanently or permanently on a magnetic tape or disc or in a ROM. In the present case, the electrical impulses or charges generated by the operation of an assembler in accordance with the instructions of the written Applesoft and Autostart source programmes were, after some intervening steps, stored by mechanical process in silicon chips designed to serve the function of programmed ROMs in the Apple II microcomputer. Once the first set of charged or programmed ROMs had been produced, their functional qualities could be directly reproduced or copied by mechanical means. It is not, however, suggested that a written expression of a programme in object code actually played any part in the chain of events leading from the composition of the written Applesoft and Autostart programmes in source code to the manufacture of the ROMs and EPROM of a Wombat microcomputer.

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3. It was submitted on behalf of the respondents that the actual sequences of electrical charges, which constitute the operational Applesoft and Autostart object programmes "stored" in the ROMs, were themselves original literary works in which the first respondent owned the copyright and that that copyright would have been infringed by the unauthorized making in Australia of the ROMs and EPROM of the Wombat microcomputer. That argument will be considered subsequently in this judgment. For the moment, it is convenient to examine what appears to me to be the more strongly arguable basis of the respondents' claim for relief, namely, that the making in Australia of the Wombat ROMs and EPROM by the importer would have constituted an infringement of copyright owned by the first respondent in the written expression of the Applesoft and Autostart programmes. Apart from ss.37 and 38, the legislative provisions upon which the respondents primarily relied for the purposes of this argument are to be found in s.36 and s.31(1)(a)(i),(vi) and (vii). For present purposes, the effect of those provisions is that copyright in a literary work is infringed by the unauthorized doing in Australia of any act comprised in the copyright and that the making of a reproduction in a material form or an adaptation of a literary work (or of a reproduction in a material form of an adaptation of the literary work) is an act comprised in the copyright in the work. That being so, the respondents' argument can prevail only if the making in Australia of the Wombat ROMs and EPROM would, for relevant purposes, have involved the making of a reproduction or adaptation (or a reproduction of an adaptation) of an actual literary work constituted by the written expression of the Applesoft and Autostart programme in source or in object code. The Act does not define what constitutes reproduction in a material form. That must be determined in the not always clear light of the authorities. Section 10(1) of the Act defines "adaptation" as including "a translation of the work". It is in the sense of making a translation that the respondents have relied upon alleged adaptation.

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4. The programming of a ROM is done electrically. Its effect is essentially functional rather than visual and the programme state of a ROM is ascertained not by visual observation but by actual electrical operation. As I followed the argument in this Court, it appeared to be common ground that one does not - and, so far as the evidence goes, cannot - visually observe, let alone visually discern the pattern of, the overall distribution of electrical charges in a programmed ROM. The evidence does not disclose the precise technology used in charging the two ROMs and the EPROM in a programmed Wombat microcomputer ("the Wombat ROMs") or the extent of any correspondence between the spatial distribution of electrical charges in the Wombat ROMs and the distribution of charges in the six ROMs of a programmed Apple II microcomputer ("the Apple II ROMs"). It is, however, clear that, functionally, the three Wombat ROMs were a reproduction of the six Apple II ROMs. Indeed, the appellants do not dispute that the main step in the original production of a set of the Wombat ROMs probably involved reproduction, by mechanical copying, of the functional qualities (in the sense of electrical operation) of the Apple II ROMs. That being so, the question whether the electrical charging of silicon chips to produce the Wombat ROMs involved the making of a reproduction or adaptation of the written programmes in source or object code corresponds, for practical purposes, with the question whether the electrical charging of silicon chips to produce the Apple II ROMs involved the making of such a reproduction or adaptation. The answer to the question lies, in each case, in the nature of the written programmes in source and object codes and of the programmed ROMs and in the distinction between reproducing or adapting an actual literary work (or reproducing an actual adaptation of a literary work) on the one hand and utilizing or applying the information conveyed by the literary work or the adaptation to produce a functional object.

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6. The physical alteration within a silicon chip when it is charged to serve the function of a ROM in a microcomputer consists, in the case of a ROM with many addresses where simple fusing is likely to be inappropriate, of a redistribution of the electrons or electrical charges within the chip. The redistribution of electrons in the original Apple II ROMs was, albeit indirectly after initial "storage" of the sequence of charges on a magnetic disc or tape, the result of electrical charging in pursuance of the written directions constituting the source programmes. In that sense, an Apple II (and, more remotely, a Wombat) charged ROM was the outcome of action taken in compliance with information conveyed by the written expression of the relevant programme in source code. A charged Apple II or Wombat ROM did not however, of itself, reproduce or adapt (in the sense of making a translation of) that written expression in whole or in part. To the contrary, the relationship between the written expression of the programme in source code and the programmed Apple II or Wombat ROM was conceptually similar to the relationships - i.e. between the handbook instructions and a Meccano model and between the recipe book and a rabbit pie - to which Pape J. referred in Cuisenaire v. Reed in the above extract from his judgment: the one resulted from the following of the directions of the other; it was not, however, a reproduction or adaptation of the literary work embodying those directions. The point can be illustrated by reference to the situation which would have arisen if the programming instructions constituting the two written programmes in source code had been published in a book comprising a collection of such source programmes. To reproduce in a material form or adapt the actual written instructions or directions constituting a source programme would, plainly enough, involve infringement of the copyright in the written programme. To follow those instructions or directions to produce a programmed disc, tape, ROM or RAM would however, equally plainly, consist of carrying out the instructions or directions to produce the designated article as distinct from reproducing or adapting the actual written programme in which copyright subsisted.

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11. It may well be thought that it would be unfortunate if the law were to provide no protection for the respondents against conduct of the kind engaged in by the manufacturers of the Wombat microcomputers. Obviously, however, general questions of the existence and extent of copyright protection in a new field cannot be determined by reference to notions of what may or may not be fair in the circumstances of a particular case. In particular, the question whether the protection of literary copyright should be extended to provide protection in a field to which the terms of existing legislative provisions are inappropriate and inapplicable involves the assessment and balancing of a wide range of policy matters and considerations of a type with which Australian courts, following the adversary system, are ordinarily ill-equipped to deal (cf. Lahore, Dworkin and Smyth, Information Technology: The Challenge to Copyright (1984) p.110; Borking, Third Party Protection of Software and Firmware (1985) p.253; J.O. Webster, "Copyright Protection of Systems Control Software Stored in Read Only Memory Chips: Into the World of Gulliver's Travels", Buffalo Law Review, vol.33 (1984), 193, at pp.223-224). Those matters and considerations include the determination of the appropriate boundary between patent law, with its requirement of novelty and its fixed and more limited period of protection, and copyright law, with its limited requirement of originality and its much greater period of protection. They also include the resolution of the competing legitimate claims of different interests - the claim of an author, a designer or an inventor to the protection of his work and the claims of the public to the unrestricted use of information, technology and other material. The assessment and balancing of those matters and considerations and the question whether some, and if so what, extension of copyright protection to a new field to which existing legislative provisions are inapplicable is warranted are matters for the Parliament and not for the courts.

At a glance

Court

Decision date

Before

Source

Judgment (168 paragraphs)

Computer Edge Pty Ltd v Apple Computer Inc [1986] HCA 19; (1986) 161 CLR 171 (6 May 1986)

Parties

Legislation Cited (5)

Cases Cited (3)