In brief

  • In a recent Full Federal Court decision, it was found that source code which is generated by a computer program, or is contributed to by multiple programmers in conjunction with a computer program, will not be found to be an original literary work for the purposes of the Copyright Act, and copyright will therefore not subsist in the code.
  • In the context of literary works that are computer programs, it is possible that a routine, or an information tag, if it is original, sufficiently substantial and functionally separate from the entirety of the program of which it forms a part, might constitute a separate copyright work.

Background

The appellant, Acohs Pty Ltd (Acohs) and the respondents, Ucorp Pty Ltd and Bernard Bialkower (the Respondents) are competitors in the business of producing and providing copies of material safety data sheets (MSDSs), which are data sheets required to be prepared by a manufacturer, importer or supplier of hazardous substances (MIS). Employers and the occupiers of premises which have hazardous products on site must have access to a copy of the relevant MSDS for each hazardous product.

Acohs’ employees author, transcribe and supply MSDSs through what is known as the ‘Infosafe’ system, which operates via ‘routines’. These routines call up the data and other necessary elements from the Acohs maintained Central Database (CDB) when a request for the generation of a particular MSDS is received. The routines then compile the relevant HTML source code (which contains all the content of the electronic document, as well as the ‘tags’ and instructions necessary for the MSDS’s layout and appearance) and send that code to a user’s computer, which then causes the MSDS to appear on the user’s screen. 

Acohs’ claimed that it was the owner of copyright subsisting in each MSDS created by it, and in the source code for each such MSDS, and that the Respondents had infringed that copyright by reproducing the Acohs’ prepared MSDSs and its source code, and supplying or communicating those works without Acohs’ licence. The primary judge found that copyright did not subsist in the source code or in the MSDSs created by Acohs, except for certain MSDSs that had been authored, as opposed to transcribed, by Acohs’ employees. The primary judge also found that the acts of reproduction by the Respondents had been impliedly licensed by Acohs.

The Full Court Decision

The Full Federal Court upheld the primary judge’s decision that Acohs’ claim that copyright subsisted in the HTML source code of each identified MSDS as an original literary work failed for the following reasons:

  1. it could not be said that the author, for copyright purposes, of the source code for each MSDS was the person who entered data into the Infosafe system. That person did not write the source code either in a ‘traditional’ way or by using a computer,
  2. the source code, as a complete work, was not written by any single human author but was generated by the Infosafe program,
  3. it could not be said that the programmers who wrote the routines and instruction tags were the authors of the source code for each identified MSDS - whatever originality might have been involved in the activities undertaken by the programmers in writing the underlying computer programs in the Infosafe system, those activities were separate and distinct from the activities involved in creating each MSDS, including those created by way of transcription, and
  4. the source code for each identified MSDS was not a work of joint authorship.   

Their Honours did, however, allow Acohs’ appeal on the grounds that the acts of reproduction had not been impliedly licensed by Acohs. The Full Court considered that a licence will only be implied when there is a necessity to do so. Their Honours could find no reason of necessity why a licence in favour of a service provider to engage in antecedent or anticipatory acts by downloading and storing MSDSs without any particular requests from a customer should be implied in contracts of engagement to create an MSDS, to which the service provider is not a party. While arguments of convenience or expediency might be advanced, these alone would not justify the implication, by law, of a licence to that effect.

On appeal, there was no challenge to the correctness of the primary judge’s findings that whilst copyright would subsist in any MSDSs authored by Acohs employees, MSDSs that were transcribed from existing MSDSs were not original compilation works because the transcribers did not make any original contribution. Their Honours did confirm, however, that authorship, for copyright purposes, in each MSDS resided in the Acohs-authors, not those writing the computer programs in the Infosafe system that were used by the Acohs-authors to create a particular MSDS.