The principles
246 As to the principles, however, these matters should be noted.
247 The parties conceded before the primary judge that the suite of programs making up QSS comprise a "computer program" and a "literary work" within the meaning of s 10(1) of the Copyright Act: PJ, [307].
248 We understand that concession to mean that updates of those programs, new releases relating to aspects of them or new versions of them are also computer programs or part of a computer program called, conveniently, QSS although we recognise immediately, of course, that the cross-respondents contend that the cross-appellants failed to prove that copyright subsists in updates, new releases or each version of QSS, for the reasons already mentioned. However, to the extent that copyright is said to subsist or is ultimately shown to subsist, the relevant work is properly characterised as a "computer program". The cross-respondents also contend that the cross-appellants have failed to prove the particular content of the work relied upon as a computer program, or infringement of that work by any of the cross-respondents by the exercise of rights comprised in the copyright in relation to the whole or a substantial part of the relevant work in suit.
249 The context is a statutory one with particular reference to Pt III of the Copyright Act.
250 By s 10(1) of the Copyright Act, a literary work includes a computer program or compilation of computer programs and a computer program means "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result": s 10(1). Copyright subsists in an unpublished original literary work of which the author was a qualified person when the work was made or, if the making of the work extended over a period, copyright subsists in the work if the author was a qualified person for a substantial part of that period: s 32(1). Copyright subsists in an original literary work which has been published or, if copyright subsisted in the work immediately before first publication, copyright continues to subsist in the work, subject to the factors set out at s 32(2)(c), (d) and (e). To the extent that Mr Cummings, on the evidence, is the author of the computer program, updates, releases and versions in suit by the cross-claim, there was no contention before the primary judge that Mr Cummings was not (and is not) a qualified person. Nor was there any contention that either or both of s 32(2)(c) or (d) were not satisfied (that is, first publication in Australia; the author being a qualified person at the time when the work was first published).
251 Copyright in relation to a literary work is, relevantly, the exclusive right to reproduce the work in a material form; to publish the work; and to communicate the work to the public: s 31(1)(a)(i), (ii) and (iv).
252 A reference to the doing of an act in relation to a literary work includes a reference to doing that act in relation to a substantial part of the work (s 14(1)(a)) and a reference to a reproduction or copy of a literary work includes a reference to a reproduction or copy of a substantial part of the work, as the case may be (s 14(1)(b)). To "communicate" a work means, put simply, to "make available online or electronically transmit", the work: s 10(1). A reference in the Act to an act comprised in the copyright in a literary work is a reference to any act the owner of the copyright has the exclusive right to exercise under the Act: s 13(1). The exclusive right to do an act in relation to a literary work includes the exclusive right to authorise a person to do that act in relation to that work: s 13(2).
253 A literary work is made, relevantly, when the work is first reduced to writing or to some other material form: s 22(1). Material form, relevantly, in relation to a work, includes any form (whether visible or not) of storage of the work or a substantial part of the work: s 10(1). The combined effect of s 32(1), s 22(1) and the definition of material form is to provide for the subsistence of copyright in an unpublished literary work at the time of first fixation by a qualified person whether visible or not. The first publication occurs upon supplying a reproduction of the work to the public (that is, the whole work not just a substantial part of it): s 29(1), s 29(2) (cf, s 14(1)).
254 Subject to s 35 and Pts VII and X of the Act, the author of a literary work is the owner of the copyright subsisting in the work by virtue of Pt III of the Act.
255 Subject to the Act, the copyright in a literary work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright: s 36(1).
256 Section 36(1A) is in these terms:
In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in the copyright in a work, without the licence of the owner of the copyright, the matters that must be taken into account include the following:
(a) the extent (if any) of the person's power to prevent the doing of the act concerned;
(b) the nature of the relationship existing between the person and the person who did the act concerned;
(c) whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice.
257 These provisions demonstrate the "centrality" of authorship to the overall scheme of Pt III of the Copyright Act: IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 ("IceTV"), French CJ, Crennan and Kiefel JJ at [22] and [24]; and the "significance" of authorship as the "essential source" of original works: Gummow, Hayne and Heydon JJ, IceTV, at [96].
258 Moreover, the "obvious fact" is that "in copyright law" the two expressions "author" and "original work" have always been regarded as "correlative" terms: Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 at 55, Isaacs J (Gavan Duffy and Rich JJ agreeing at 57). The requirement that a literary work be "original" for the purpose of subsistence of copyright "requires that the literary work in question originated with the author and that it was not merely copied from another work": IceTV, French CJ, Crennan and Kiefel JJ at [33].
259 In Sands & McDougall Pty Ltd v Robinson, Isaacs J at 52 regarded the map in issue in that case as original because the author had applied to it "personal, that is, independent, intellectual effort in the exercise of judgment and discrimination" in its production. See also Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 511, Dixon J.
260 In IceTV, French CJ, Crennan and Kiefel JJ in expressing observations about the concept of originality in the context of subsistence of copyright observed at [33] that originality "means that the creation (ie the production) of the work required some independent effort", adopting the formulation of Isaacs J as early as 1917 except that Isaacs J expressly linked the independent intellectual effort to the "exercise of judgement and discrimination". In IceTV, Gummow, Hayne and Heydon JJ at [99] observed that it will be a question of "fact and degree" in determining whether one or more authors "have expended sufficient effort of a literary nature to be considered an author of that work within the meaning of the Act" [emphasis added]. This passage may suggest a higher level of authorial originality for the subsistence of copyright in a literary work than that adopted by French CJ, Crennan and Kiefel JJ. It is unlikely, however, that Gummow, Hayne and Heydon JJ, in the context of a discussion about the difficulty of identifying the relevant threshold of authorial contribution by the various "efforts" of multiple authors (such as many contributors to a compilation) intended, without expressly doing so, to introduce any notion of literary "merit" or literary "creativity", to the statutory correlation of authorship and originality, by the use of the phrase "effort of a literary nature". That seems especially so having regard to the observations of Gleeson CJ, McHugh, Gummow and Hayne JJ in Data Access Corporation v Powerflex Services Pty Ltd and Others (1999) 202 CLR 1 ("Data Access v Powerflex") discussed in the next paragraph of these reasons. The phrase "sufficient effort of a literary nature" was qualified by Gummow, Hayne and Heydon JJ by the phrase "within the meaning of the Act" which, since 1917, has been understood (for the purposes of the relevant Copyright Acts) in the terms adopted by Isaacs J and in the sense described by French CJ, Crennan and Kiefel JJ at [33].
261 In Data Access v Powerflex, Gleeson CJ, McHugh, Gummow and Hayne JJ at [22] also accepted (and re-affirmed at [122]) that the question (of originality) for copyright law is whether the work emanates from the person claiming to be its author "in the sense that he [or she] has originated it or brought it into existence and has not copied it from another". Expending sufficient effort of a literary nature should be understood in the terms just quoted taken in conjunction with the formulation of Isaacs J in Sands & McDougall Pty Ltd v Robinson (supra). Neither literary merit nor novelty or inventiveness is required and although the law of copyright does not protect function and extends only to the expression of a work, a work may serve utilitarian ends: IceTV at [33]; Data Access v Powerflex at [22] and [23].
262 There can be "no doubt" that copyright is given only in respect of the particular form of expression of the work rather than the ideas or information conveyed by the work: IceTV at [26].
263 These observations in IceTV concerning originality in the context of subsistence remain important notwithstanding that subsistence was not in contest in IceTV, even though the observations of all of their Honours might be regarded, strictly, as obiter.
264 As to the "correlative" relationship between authorship and originality, the contemporary question is simply this: Has the author deployed personal independent skill, labour, intellectual effort, judgement and discrimination in the production of the particular expression of the work? In this context, French CJ, Crennan and Kiefel JJ said this at [47] in IceTV:
Much has been written about differing standards of originality in the context of the degree or kind of "skill and labour" said to be required before a work can be considered an "original" work in which copyright will subsist. "Industrious collection" or "sweat of the brow", on the one hand, and "creativity", on the other, have been treated as antinomies in some sort of mutually exclusive relationship in the mental processes of an author or joint authors. They are, however, kindred aspects of a mental process which produces an object, a literary work, a particular form of expression which copyright protects. A complex compilation or a narrative history will almost certainly require considerable skill and labour, which involve both "industrious collection" and "creativity", in the sense of requiring original productive thought to produce the expression, including selection and arrangement, of the material.
[emphasis added]
[citations omitted]
265 At [48], their Honours also said this:
It may be that too much has been made, in the context of subsistence, of the kind of skill and labour which must be expended by an author for a work to be an "original" work. The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort. …
[emphasis added]
[citations omitted]
266 Having regard to the accepted correlative relationship between authorship and originality in a work, it is "essential" that the claimant "identify precisely" the work or works in which copyright is said to subsist and to have been infringed, as a failure to do so might cause the formulation of the issues "to go awry": IceTV, French CJ, Crennan and Kiefel JJ at [15]; Gummow, Hayne and Heydon JJ at [105].
267 Questions of originality, however, arise not only in relation to subsistence of copyright in a work but also infringement of the work in suit. This is especially so when the question is whether a substantial part of the work in suit has been reproduced, as such an analysis necessarily engages a consideration of, importantly, the quality of the part of the work alleged to have been reproduced. In this context, the authorities direct attention to the "critical question" of the "degree of originality" in the "expression of the part of the work reproduced": IceTV at [40] and [52]. The fact that a part reproduced "originates" from the author of that part does not, of itself, mean that it is necessarily a substantial part of the whole work because, when giving attention to the quality of the part taken, it may be there has been reproduction of "something that is itself largely unoriginal" [emphasis added]: Autodesk Inc v Dyason [No 2] (1993) 176 CLR 300 at 306, Mason CJ (in dissent), a view affirmed and adopted, however, by Gleeson CJ, McHugh, Gummow and Hayne JJ in Data Access v Powerflex at [83] to [87], and particularly at [84]. Consideration of the skill and labour of the author "may assist" in answering the critical question of the degree of originality in the expression of the part of the work taken because the circumstance that "the creation of a work required skill and labour may indicate that the particular form of expression adopted was highly original" [emphasis added]: IceTV, French CJ, Crennan and Kiefel JJ at [52].
268 It follows that in determining whether the quality of what is taken makes it a substantial part of the copyright work in suit, as the source of the rights, it is important to enquire into the importance which the taken portion bears in relation to the work as a whole. Is it an essential or material part of the work in suit?: Autodesk Inc v Dyason [No 2], Mason CJ at 305, as approved in Data Access v Powerflex at [83] to [87].
269 In Data Access v Powerflex at [84], Gleeson CJ, McHugh, Gummow and Hayne JJ observe that "in determining whether something is a reproduction of a substantial part of a computer program, the 'essential or material features of [the computer program] should be ascertained by considering the originality of the part allegedly taken'": quoting Mason CJ in Autodesk Inc v Dyason [No 2] at 305. Since the statutory definition of a computer program is a "set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result", it follows that in determining whether there has been a reproduction of a substantial part of the computer program, it would be necessary to examine what was allegedly taken, the set of statements or instructions comprehended by what was taken and compare it with the original, as part of the enquiry of originality for the purposes of infringement.
270 Although the statutory definition of computer program in Data Access v Powerflex was in different terms, the nature of the enquiry, as a matter of principle, remains the same adapted however to the language of the definition: see Data Access v Powerflex at [84] and [85].
271 Moreover, if a person does no more than reproduce parts of a program which are "data" or "related information" and which are not relevant to the statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result, the person will be unlikely to have reproduced a substantial part of the computer program: Data Access v Powerflex at [86].
272 As to the notion of reproduction (leaving aside for the moment any question of the element of causal connection), the copyright owner must show a sufficient degree of "objective similarity" between the work in suit and the contended infringing work.
273 So far as the correlative relationship between the expressions "author" and "original work" is concerned in respect of literary works such as a "text" which requires regular revision and updating by the author, or a "computer program" that requires regular revisions to accommodate changes to the "set of instructions" used, directly or indirectly in a computer to bring about a "certain result", particular considerations arise: see the discussion in The Law of Intellectual Property: Copyright, Designs and Confidential Information (Thomson Reuters, subscription service), Ricketson S and Cresswell C, viewed through Westlaw online services, at 7.103 under the heading "The status of derivations and revisions" and at 7.104 under the related topic "Successive drafts of a work".
274 For example, in the case of a legal text on a particular topic (hypothetically, for example, equitable remedies), the academic author might analyse the settled principles, the questions in controversy, the state of the authorities on those matters, lines of new development and comment upon the state of the law and the likely or perhaps preferred direction the law should take. Let it also be assumed that such a work of authorship is (no doubt) an original work in which copyright subsists and that the work is electronically published due to the likelihood of reasonably regular changes to the text. Let it also be assumed that many of the regular online changes to the text are individually insubstantial in the context of the foundation work in the sense only that a number of paragraphs of the text are altered to reflect one or more new decisions (or perhaps several pages of commentary are added and some of the earlier text is deleted).
275 Is the text as altered, as a whole, to be regarded as a new original work? Are the changes, when analysed, just too insubstantial to bring about a new work? Do the alterations themselves reflect original authorship? If there is no new work as a whole (that is, a revised, updated whole), what "work" is the true source of the rights of the copyright owner? What would be the "work" once the foundation text has been amended in, for example, 30 or 50 "insubstantial" ways? To identify "precisely" the "work" (and thus the source of the author's rights) is it necessary to identify the state of the foundation text and then identify each and every change by addition and deletion to that text to show that at some point the "work in suit" emerged.
276 Such a work, in this example, would be unlikely to be copied as a whole but that would not necessarily be true of a computer program of utility in a commercial setting comprised of a suite of programs modified and updated from time to time and subject to regular revisions and new releases. In such a case, the question of what is precisely the original work becomes important.
277 At 7.103, Professor Ricketson says this:
A further aspect of originality arises in relation to works that are derived from earlier works. In many cases, it happens that the work for which protection is claimed is only one in a series of works which have been evolved over a period of time, for example, successive drafts of a play or novel or a series of working drawings made in the process of producing a painting or engraving. Although the point is not often taken, it is clear that a work will not be denied protection on the basis of lack of originality simply because it is derived from, or based on, an earlier work of this kind. Thus, providing the later work is not a mere slavish copy, it will constitute an original work in its own right if the author has expended sufficient independent skill and labour in bringing it into material form.
…
More generally, in relation to derivative works, where these form one in a series of evolving productions, Anglo-Australian courts have been prepared to find sufficient originality, even where the work involved may be little more than reproducing a modified or corrected version of an earlier work, such as successive additions of a text book or reissues of a trade catalogue or business brochures. Some guidance in such cases is to be found in the following statement by French CJ, Crennan and Kiefel JJ in IceTV [at [33]]:
Originality for this purpose requires that the literary work in question originated with the author and that it was not merely copied from another work.
…
As a general proposition, therefore, if the "independent intellectual contribution" of the author is more than trivial, this will elevate the new work from a "mere copy" to something entitled to protection in its own right as an original work. In this regard, the expression "more than trivial" must mean something of substance or significance: immaterial variations or differences will not suffice.
[emphasis added]
[citations omitted]
278 At 7.104 in relation to the related topic of successive drafts of a work, Professor Ricketson says this:
Successive editions of a book, such as a legal text or a dictionary, will probably not pose great difficulties [in terms of originality], even if the differences may be fairly slight. It may be assumed that the author(s) has/have carefully reviewed and considered the preceding text and that any alterations or insertions are intended to be consistent with, and enhancements of, what has gone before. In other words, there has been a revision of the text as a whole and the application of sufficient skill and judgement to make each new edition an original work in its own right. The same reasoning can be applied to differences in successive versions of such things as house plans, computer programmes and clothing designs. In many instances, of course, the differences will be quantitatively as well as qualitatively significant.
The issues discussed above have not so far been contentious in Australian law under our traditional low-level requirements for originality and authorial contribution. As these requirements are raised, however, it will become much more of a relevant inquiry to determine in each case precisely what is the work in issue and the degree to which it differs from any predecessor. In the case of a work with a lengthy history of development and refinement, the preferable analysis may be similar to that suggested above for successive editions of a textbook, namely, that each successive draft needs to be considered in overall terms as the application of fresh authorial effort in revising, reviewing and "settling" what has gone before. All these are activities that should still meet any raised requirement for originality or intellectual creation.
[emphasis added]
279 In a forensic probative context, the assumption Professor Ricketson refers to might more properly be regarded as an inference which might arise from relevant foundation facts, as a matter of law.
280 In the context of originality and authorship, it should be noted that works comprising database "compilations" of pre-existing data and information require special consideration for two reasons.
281 First, if database information is organised according to particular subject headings, categories or topics, the "selection" and "arrangement" is likely to be the authorial or original contribution. If so, the "degree of originality" in the expression of the compilation may require close examination not only in relation to the part said to be taken (for infringement purposes) but also as to subsistence more broadly.
282 Second, it may be difficult to identify which author or group of authors undertook the selection and arrangement of the data and information. That difficulty led to the failure of Telstra Corporation to prove subsistence of copyright in its White and Yellow Pages directories for provincial and regional areas in northern and eastern Australia: Telstra Corporation Ltd v Phone Directories Co Pty Ltd (2010) 264 ALR 617. The primary judge, however, held that even if the authors could be identified, the sufficiency of the contribution did not measure up to "independent intellectual effort" according to the observations of French CJ, Crennan and Kiefel JJ at [33] in IceTV or "sufficient effort of a literary nature" according to the observations of Gummow, Hayne and Heydon JJ at [96] in IceTV. The Full Court dismissed Telstra's appeal having regard to the findings of fact that the compilations were not compiled by "individuals" and thus the Full Court found it not necessary nor relevant to engage on the question of the "sufficiency of the intellectual effort deployed by those individuals who provide data input to the computerised database" although, "scribe" like activities cannot be relied upon, on their own, as authorial contributions: Telstra Corporation Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142, Keane CJ at [90] and [59].
283 In an earlier case also concerning Telstra directories (Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2001) 51 IPR 257), the concessions as to authorship before the primary judge, Finkelstein J (a concession criticised by his Honour), may well cast some doubt on the authority of some of the observations of the Full Court (in the judgment on appeal; Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 55 IPR 1 and particularly the very careful and detailed analysis by Lindgren J and Sackville J) on originality, subsistence and the sufficiency of the necessary contribution in the context of the selection, arrangement and structure of database compilations, and in particular compilations described as "whole of universe" compilations. Apart from works of that kind, Lindgren J recognises, as a matter of principle, the correlative relationship between authorship and originality and observes, having extensively analysed many of the major authorities, that the test of originality for copyright purposes is whether the work was not copied, but originated with the putative author.
284 These cases in relation to database compilations and whole of universe compilations are mentioned simply by reason of the observations of their Honours in relation to aspects of a principled approach to originality and subsistence. These proceedings, however, do not involve a database compilation or a whole of universe compilation. They are concerned with works of authorship in the form of a computer program.
285 It may be that the observations in IceTV concerning the statutory conception of authorial contribution sufficient to render a work "original" under the Act, have the effect of "raising the bar" on the threshold skill, labour and judgement an author must contribute so as to render a work an original work. However, it should be remembered that French CJ, Crennan and Kiefel JJ affirmed the orthodoxy of the early formulation of Isaacs J; noted that "too much" has been made in the context of subsistence of the kind of skill and labour which must be expended; and noted that the requirement of the Act is "only" that the work "originates" with an author (or joint authors) from "some independent intellectual effort", a view consistent with the observations of Gleeson CJ, McHugh, Gummow and Hayne JJ in Data Access v Powerflex.