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Australia – Does Copyright Subsist In Relation To Electronically Generated Works?

29 October, 2012

 

Acohs v UCorp Pty Ltd [2012] FCAFC 16

 

In brief

 

  • The Full Federal Court has largely upheld the Federal Court’s decision on the question of whether copyright subsists in relation to electronically generated works, where there was no single identifiable human author and no clear collaboration between persons using the computer program to generate the work.
  • This decision illustrates the difficulty in proving that copyright subsists in a body of source code where the code is generated by a computer program.

 

A recent Full Federal Court decision highlights the difficulty in proving copyright subsistence in source code where the code is generated by a computer program, in the absence of a single identifiable human author or clear collaboration between persons using the program to generate the code.

 

Factual background

 

Under various legislative regimes in Australia, a manufacturer, importer or supplier (an MIS) of hazardous substances and dangerous goods must provide a material safety data sheet (an MSDS) which sets out prescribed categories of information about the product. The appellant, Acohs and the respondents, UCorp compete in producing MSDSs. The appeal concerned the question of copyright in relation to electronic MSDSs and the underlying source code.

 

Acohs’ MSDSs were generated by Acohs’ computer program called Infosafe and could be created by one of three ways:

 

  • “authoring” by Acohs’ employees through a process of data entry;
  • transcription by Acohs’ employees; and
  • modification by Acohs’ customers.

 

Acohs argued that it was the owner of copyright subsisting in each of its MSDSs, and in the source code for each such MSDS, and UCorp had infringed that copyright by copying its MSDSs.

 

At trial

 

At first instance, Justice Jessup found that copyright did not subsist in the source code or in the MSDSs, except for certain MSDSs that had been authored by Acohs’ employees.

 

His Honour held that while there was no reason to deny a body of source code the status of a literary work for the purposes of the Copyright Act 1968 (Cth) (the Act), the source code generated by Acoh’s computer program (Infosafe) could not be described as an original literary work for copyright purposes for the following reasons:

 

  • The source code, as a complete work was not written by any single human author.
  • It could not be said that Acohs’ programmers who wrote the routines and instruction tags for Infosafe were the authors.
  • The source code for each identified MSDS was not a work of joint authorship because it was artificial to say that the programmers and the employees who created MSDSs using Infosafe had collaborated with each other in writing the relevant source code.

 

Although Justice Jessup found that the only MSDSs that attracted copyright protection were the ones “authored” by Acohs employees, his Honour found that there was no copyright infringement of these MSDSs as Acohs had impliedly licensed UCorp to reproduce these MSDSs, as UCorp had reproduced these MSDSs for MISs who were Acohs’ customers and had an implied licence to make or obtain copies of the Acohs MSDSs.

 

On appeal

 

The Full Federal Court largely upheld the trial judge’s ruling on the status of the source code and other MSDSs as not being original literary works, but ruled in favour of Acohs on the issue of infringement of the Acohs authored MSDSs.

 

Interestingly, on the issue of copyright in the source code, the Court said it was possible that a routine, or even an information tag for a computer program, if original may be sufficiently substantial and functionally separate from the entire program of which it forms a part to constitute a separate copyright work. Unfortunately for Acohs, it did not plead or advance this argument at trial or on appeal. The MSDSs that UCorp copied were made in response to requests from customers who had the benefit of an implied licence from Acohs. The Court found that these copies fell within the scope of the implied licence and therefore there was no infringement.

 

However, Ucorp also “trawled” the internet looking for other MSDSs and, when it found ones it did not already have stored, downloaded them to have them readily available in anticipation of customer requests. As these copies were not made in response to an implied licensee’s request, but in anticipation of a request which might never be made, these copies fell outside the scope of the implied licence. Ucorp was found liable for infringing the copyright in all those MSDSs which it reproduced without a specific request from a customer before the copy was made.

 

 

For further information, please contact:
 
Maria Marinelli, Partner, Ashurst 
maria.marinelli@ashurst.com
 
Vern Phang, Ashurst 
vern.phang@ashurst.com
 

 

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