Data Access Corporation v Powerflex Services Pty Ltd
[1999] HCA 49202 CLR 1
(Judgment by: Gaudron J)
Between: Data Access Corporation
And: Powerflex Services Pty Ltd
Judges:
Gleeson CJ
Gaudron JMcHugh J
Gummow J
Hayne J
Subject References:
Intellectual property
Copyright
Subsistence and infringement of copyright
Computer software
Subsistence of copyright
Computer languages
Words used as commands in one computer language used as commands with identical functions in another computer language
Whether copyright subsists in an individual command
Whether an individual command is itself a 'computer program' within s 10(1) of the Copyright Act 1968 (Cth)
Infringement of copyright
Computer program
Application development system designed to enable computer programs to be written using certain commands
Whether a collocation of those commands constitutes a 'substantial part' of the application development system
Test of substantiality as applied to computer programs
Whether a macro in one computer program is an 'adaptation' of a macro with the same functionality in another computer program
Meaning of 'version' in s 10(1) of the Copyright Act 1968 (Cth)
Computer data table used for standard data compressions
Whether the data table is an 'original literary work'
Whether process devised to replicate a computer data table by examining its output constitutes a 'reproduction' of the table
adaptation
literary work
reproduction
set of instructions
substantial part
version
Legislative References:
Copyright Act 1968 (Cth) - s 10(1); s 14(1)(b); s 31(1)(a)(i); s 36(1)
Judgment date: 30 September 1999
CANBERRA
Judgment by:
Gaudron J
Subject to one matter, I agree with the joint judgment of Gleeson CJ, McHugh, Gummow and Hayne JJ. The matter upon which I hold a different view from their Honours relates to their analysis of the decisions in Autodesk Inc v Dyason [F83] and Autodesk Inc v Dyason [ No 2 ]. [F84] Those cases were not simply concerned with the question whether, in words used in the joint judgment, "something which appears in a computer program is a substantial part of it". [F85] Although the material in question in the Autodesk cases, a look-up table, was not, when viewed in isolation, a set of instructions, it was, when viewed in context, part of the set of instructions constituting the computer program in question. It was not simply "data". Nor was it simply "information". Rather, as I pointed out in Autodesk [ No 2 ], it was an integral part of the set of instructions in that "other parts depended on and were made by reference to it". [F86]
It is not necessary in this case to decide whether information which is not part of a set of instructions might, nonetheless, be a substantial part of a computer program. However, if that is to be, the information must be "related information", as that expression is used in the definition of "computer program" in s 10(1) of the Act. By that sub-section:
"computer program means an expression, in any language, code or notation, of a set of instructions (whether with or without related information) intended ... to cause a device having digital information processing capabilities to perform a particular function".
The definition of "computer program" posits a relationship between information and a set of instructions, although the precise nature of the relationship is not indicated. As already noted, there is a relationship of the requisite kind if the information, itself, forms part of the instructions. On the other hand and contrary to what is suggested in the joint judgment, information is not, in my view, "related information" for the purposes of the definition if it is "irrelevant to [the] structure [of the computer program], [its] choice of commands [or] combination [or] sequencing of commands" [F87] . Information of that kind is not related in any relevant sense to any set of instructions. And if not related, it is impossible, in view of the definition, to treat that "data" or "information" as part of a computer program.
Properly understood, the Autodesk cases provide no support for the appellant's submissions with respect to the collocation of Reserved Words. However, that is not fatal to the argument that that collocation constitutes a substantial part of that program. What is fatal is that, as with the individual Reserved Words, the collocation is not part of a computer program at all. Neither individually nor in collocation are the Reserved Words part of the set of instructions that is intended to cause a computer to perform a particular function. And not being part, they cannot be a substantial part of it.
Orders should be made as proposed by Gleeson CJ, McHugh, Gummow and Hayne JJ.
1 Powerflex Services Pty Ltd v Data Access Corporation (No.2) (1997) 75 FCR 108 at 132.
2 Data Access Corporation v Powerflex Services Pty Ltd (1996) 63 FCR 336 .
3 Data Access Corporation v Powerflex Services Pty Ltd (1996) 63 FCR 336 at 337.
4 Carr and Arnold, Computer Software: Legal Protection in the United Kingdom, 2nd ed [1992] at 1-2.
5 (1986) 161 CLR 171 at 178-179.
6 Apple Computer Inc v Computer Edge Pty Ltd [1983] 50 ALR 581.
7 [1983] 50 ALR 581 at 587-590.
8 Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 3rd ed [1996] at 442-443.
9 (1986) 161 CLR 171 at 178-179.
10 (1986) 161 CLR 171 at 179.
11 (1986) 161 CLR 171 at 190-191 per Mason and Wilson JJ; 198-200 per Brennan J; 210-211 per Deane J.
12 Data Access Corporation v Powerflex Services Pty Ltd (1996) 63 FCR 336 at 339.
13 CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 295.
14 (1959) 102 CLR 252 at 275-277.
15 101 US 99 at 102 [1879].
16 (1986) 161 CLR 171 at 208-209.
17 Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 at 53.
18 Ricketson, The Law of Intellectual Property, [1984] at 83.
19 Hollinrake v Truswell [1894] 3 CH 420 at 427, 428.
20 (1992) 173 CLR 330 at 345.
21 Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 3rd ed [1996] at 181-182; Karjala, "A Coherent Theory for the Copyright Protection of Computer Software and Recent Judicial Interpretations", [1997] 66 University of Cincinnati Law Review 53 at 56-66.
22 See Avel Pty Ltd v Wells (1992) 36 FCR 340 at 343-346; Nintendo Co Ltd v Centronics Systems Pty Ltd (1994) 181 CLR 134 at 141-143.
23 See par [19] above.
24 (1996) 63 FCR 336 at 339.
25 (1997) 75 FCR 108 at 122.
26 (1993) 176 CLR 300 .
27 (1993) 176 CLR 300 at 329.
28 (1993) 176 CLR 300 at 303-304.
29 (1997) 75 FCR 108 at 119.
30 (1992) 173 CLR 330 .
31 See Collector of Customs v Agfa-Gevaert Ltd (1996) 186 CLR 389 at 401-402; cf Autodesk No 2 (1993) 176 CLR 300 at 329-330.
32 (1997) 75 FCR 108 at 111.
33 For a discussion of these principles see Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs, 2nd ed [1995], vol 1 at 799-802.
34 In Campbell [ed], Data Processing and the Law, [1984] 209 at 212.
35 Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs, 2nd ed [1995], vol 1 at 836.
36 Emphasis added.
37 At par 16.
38 Explanatory Memorandum, Copyright Amendment Bill 1984, par 16 [emphasis added].
39 Explanatory Memorandum, Copyright Amendment Bill 1984, par 19.
40 Explanatory Memorandum, Copyright Amendment Bill 1984, par 18.
41 946 F Supp 1079 [1996].
42 These are "constructs that allow a programmer to combine a variety of different types of data into manageable units. For example, an employee record consisting of the employee's name, address, social security number and salary rate could be combined into a data structure that the program could manipulate as a single unit": Nimmer on Copyright, vol 4, §13. 03[F][1], n 288.
43 946 F Supp 1079 at 1086 [1996].
44 946 F Supp 1079 at 1090 [1996].
45 (1997) 75 FCR 108 at 114.
46 (1997) 75 FCR 108 at 122.
47 Section 31[1][a][i] and s 36[1] of the Act.
48 (1992) 173 CLR 330 .
49 (1992) 173 CLR 330 .
50 (1993) 176 CLR 300 .
51 (1992) 173 CLR 330 at 346.
52 (1993) 176 CLR 300 at 311-312.
53 (1993) 176 CLR 300 at 330.
54 Autodesk No 1 (1992) 173 CLR 330 at 346-347.
55 Autodesk No 1 (1992) 173 CLR 330 at 347.
56 Prescott, "Was AutoCAD Wrongly Decided?", [1992] 14[6] European Intellectual Property Review 191 at 194. See also Kremer, "Before the High Court", [1998] 20 Sydney Law Review 296 at 306-307.
57 Unreported, High Court of Justice, Chancery Division, 15 April 1999.
58 Unreported, High Court of Justice, Chancery Division, 15 April 1999 at [75].
59 (1993) 176 CLR 300 at 305.
60 Hawkes & Son (London) Ltd v Paramount Film Service Ltd [1934] CH 593 ; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 ; [1964] 1 All ER 465 ; Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd [1990] 95 ALR 275 at 293; 17 IPR 417 at 436; Dixon Investments Pty Ltd v Hall [1990] 18 IPR 481.
61 [1964] 1 WLR 273 at 293; [1964] 1 All ER 465 at 481.
62 Ricketson, The Law of Intellectual Property, [1984] at 169.
63 See, e. g., Mirror Newspapers Ltd v Queensland Newspapers Pty Ltd [1982] Qd R 305; Klissers Farmhouse Bakeries Ltd v Harvest Bakeries Ltd (No 2) [1985] 2 NZLR 143 at 157; [1985] 5 IPR 533 at 548.
64 (1993) 176 CLR 300 at 305.
65 (1997) 75 FCR 108 at 114.
66 (1997) 75 FCR 108 at 124.
67 cf G A Cramp & Sons Ltd v Frank Smythson Ltd [1944] AC 329 ; Australian Consolidated Press Ltd v Morgan (1965) 112 CLR 483 at 486-487; Exxon Corporation v Exxon Insurance Consultants International Ltd [1982] CH 119 at 144.
68 (1997) 75 FCR 108 at 126-127.
69 (1997) 75 FCR 108 at 127.
70 (1997) 75 FCR 108 at 127.
71 (1996) 63 FCR 336 at 344. "I-Code" is an intermediate level of code between the Dataflex level and the source code level.
72 (1997) 75 FCR 108 at 125.
73 2nd ed [1991] at 1938.
74 (1997) 75 FCR 108 at 125-126.
75 Explanatory Memorandum, Copyright Amendment Bill 1984.
76 (1997) 75 FCR 108 at 126.
77 At par 26.
78 (1992) 173 CLR 330 at 347.
79 Section 32[1] of the Act.
80 Ricketson, The Law of Intellectual Property, [1984] at 83.
81 Data Access Corporation v Powerflex Services Pty Ltd (1996) 63 FCR 336 at 344345.
82 Powerflex Services Pty Ltd v Data Access Corporation (No 2) (1997) 75 FCR 108 at 128.
83 (1992) 173 CLR 330 .
84 (1993) 176 CLR 300 .
85 Data Access Corporation v Powerflex Services Pty Ltd [1999] HCA 49 at [84].
86 (1993) 176 CLR 300 at 330.
87 Data Access Corporation v Powerflex Services Pty Ltd [1999] HCA 49 at [86].