- Inability to identify a human author or joint authors may be fatal to a copyright claim.
- Businesses seeking to claim copyright in source codes compiled through the autonomous efforts of computer programmers and users should be aware of recent case law indicating the difficulty of establishing copyright in these works.
- A database from which elements may be, but have not been, called up, cannot be regarded as a literary work because it has not been reduced to material form.
In Acohs Pty Ltd v Ucorp Pty Ltd  FCA 5771 the failure to identify a human author or joint authors was fatal to the claim that copyright subsisted in source codes generated by a software program from data entered by users of the software program.
While the court accepted that Material Safety Data Sheets (MSDSs) authored (as distinct from transcribed) by the applicant’s employees were original literary works in which the applicant held copyright, there was no infringement because there was an implied licence at law to reproduce.
Implications from the decision
Continuing a recent trend2, the decision makes it difficult to establish copyright in works created through the efforts of many individuals.
In particular, it has commercial implications for businesses seeking to claim copyright in source codes compiled through the efforts of computer programmers and users. Source codes generated by data entered into a software program may lack the requisite authorship and originality needed to establish copyright, particularly where the respective contributions of the two categories of individuals involved are autonomous rather than collaborative.
Further, even if copyright can be established in a work, infringement is unlikely to be found where the work is reproduced for a purpose reasonably within the contemplation of government regulations, regardless of whether the party reproducing the work benefits commercially from the reproduction.
The litigation arose out of allegations that Ucorp Pty Ltd (Ucorp) had infringed copyright by reproducing, in material form, source code in which Acohs Pty Ltd (Acohs) held copyright.
Under various state and territory regulations, manufacturers, importers and suppliers (MISs) of hazardous substances are obliged to prepare MSDSs setting out prescribed categories of information about the substance in question. The regulations state that any person to whom hazardous substances are supplied must have ready access to MSDSs.
Acohs and Ucorp prepare and supply MSDSs on behalf of MISs of hazardous substances for a fee.
Acohs does so by way of maintaining an electronic database containing all the data required to generate the MSDSs and a software program, known as the Infosafe System. The data can be entered by Acohs’ employees or customers (authors), resulting in a new MSDS or a variation of an MSDS in terms of content. Alternatively, information can be copied by Acohs’ employees (transcribers) to create an MSDS with the same content as a previous MSDS but with a different layout and appearance. When access to a particular MSDS is required, the Infosafe System calls up the necessary components from this database and assembles them in a way which is represented on the user’s screen as the MSDS of interest.
In contrast, Ucorp provides MSDSs by giving its subscribers access to an electronic library containing MSDSs. These MSDSs are complete documents either created by Ucorp, provided by its customers, or downloaded from the internet. Downloaded MSDSs are identical in content and appearance to the ‘original’ MSDSs from which they are derived. Some of Acohs’ MSDSs were obtained and added to Ucorp’s database.
Acohs claimed copyright in and sued Ucorp for unauthorised reproduction of the source code for the HTML files of each MSDS produced by the Infosafe System; each MSDS produced by the Infosafe System (but not the bare, unformatted data), and a compilation of data known as the ‘Blackwoods Compilation’ (see below).
The court considered whether:
- these works were original literary works
- Acohs’ employees were authors and therefore whether Acohs could claim copyright
- Ucorp had in fact reproduced any works in which Acohs held copyright
- if copyright did exist, it had been assigned to Acohs’ customers
- if Ucorp had reproduced any works in which Acohs held copyright, it had done so pursuant to an implied licence.
Subsistence of copyright — were documents original literary works?
Source codes — multiple authors acting independently of each other
The court found that source codes were ‘literary works’ within the meaning of the Copyright Act 1968 (Cth) (Act). They consisted of words, letters, numbers and symbols which were intelligible to someone skilled in the relevant area, and which conveyed meaning. They could be described as a set of instructions to be used in a computer to bring about the appearance on screen of corresponding MSDSs, and therefore meet the criteria for a computer program. In any case, source codes constituted literary works in the traditional copyright sense, since even mundane, functional expressions suffice.
However, as the source codes in question could not be said to be works of joint authorship, they were not original literary works. The computer programmers who wrote the software and Acohs’ employees or customers who entered the relevant data to generate specific MSDSs did not act in collaboration with each other. Their respective contributions were separate ‘along the axes of communication, time, expertise and content’. The programmers wrote the program which caused the Infosafe System to generate a source code in response to defined inputs by those using the software. But the essence of their contribution was not writing the source code for a particular MSDS. Having written the program by reference to which source code would, under certain conditions, be generated, they had no further contribution. Likewise, the users had no understanding of the technical task in which the programmers had engaged. It would therefore be an artificial straining of the language in the Act to regard each source code as a work of joint authorship.
MSDS documents — originality in transcribed documents
The parties acknowledged that each MSDS was, as a whole, a literary work. Jessup J was satisfied that Acohs would be regarded as the owner of any MSDS authored by its employees (as distinct from customers), and that such an MSDS would constitute an original compilation. He said that even in a case in which every element of the MSDS created by an author was to be found in the database, the author was still required to select from the menu of subheadings those that would be used and those that would be irrelevant. The electronic documentary entity which they thereby brought into existence was therefore not merely the result of copying from something else.
However, MSDSs that were merely transcribed from existing MSDSs were not original compilation works because the transcribers did not make any original contribution and did not control the layout, presentation and appearance of the MSDS. The final appearance of the work was dictated by the Infosafe System. Similarly to the flaws in the claim for copyright in the source code, the programmers of the system could not be said to be the authors of an individual MSDS and had not worked in collaboration with the transcribers. The fact that the programmers wrote the program that gave the MSDSs their particular appearance (as distinct from making any contribution to their content) did not make them authors in the copyright sense. Neither did it give originality to a work which, because it was copied from somewhere else, would not otherwise be original.
The ‘Blackwoods Compilation’ — database as original literary work
Acohs had authored and transcribed thousands of MSDSs for Blackwoods, a former customer. Blackwoods had terminated its agreement with Acohs in favour of Ucorp. Of the MSDSs that were incorporated into Ucorp’s library for the purposes of the new Blackwoods arrangements, the majority were Infosafe System files. Jessup J reiterated that the MSDSs were original literary works to the extent that they had been authored (as distinct from transcribed) by Acohs’ staff.
However, Acohs submitted there was a work that was described as the ‘Blackwoods Compilation’ which was an original literary work. Regardless of whether any one or more of the Blackwoods MSDSs was original, this work satisfied the statutory definition of literary work because it was a compilation, made up of the totality of data provided by Acohs to Blackwoods which resided in Blackwoods’ server.
Jessup J rejected this proposition, saying that while the database may represent a compilation, it could not be regarded as a work because the data had not taken material form. Pieces of data that resided in a database from which elements may be, but have not been, called up, cannot be regarded as a work. The definition of literary work was not intended to extend to any work which was the result of bringing together otherwise disparate elements according to some scheme. Here the compilation was no more than a systematic collection of separate works, each having its own claim in copyright.
Authorship — were all authors employees?
Even if the programmers and external authors (ie, customers) were jointly the authors of the source code for an MSDS, Acohs, not being the employer of all of them, would not own any corresponding copyright.
Reproduction of copyright works
Jessup J accepted that when Ucorp included Acohs MSDSs into its library, it reproduced the MSDSs, as well as the HTML source codes which related to them. However, it did not follow that Ucorp had reproduced data in Acohs’ database — Ucorp had not reproduced a compilation of data, as distinct from reproducing the MSDSs themselves.
Assignment of copyright or implied licence
Jessup J held that there was no infringement of the relevant MSDSs because copyright had been assigned to Acohs’ customers for whom the MSDSs had been created. In any case, Ucorp was implicitly licensed to download from the internet, and to store in its database, MSDSs authored by Acohs for MISs.
Following Acohs Pty Ltd v R A Bashford Consulting Pty Ltd (1997) 144 ALR 528, Jessup J held there was a licence implied at law to permit any reproduction of the copyright works as was reasonably within the contemplation of the regulations. Jessup J found that the purpose of Ucorp’s copying was the ‘safety and dissemination to employers, employees and other persons using the product’ and storage of current MSDSs in contemplation that access to them would at some point be required by its present or future customers (that is, employers, occupiers and others with an obligation to make the MSDSs ‘readily accessible’ to persons who may be exposed to the substances). This purpose was fairly within the contemplation of the regulations. It was of no consequence that Ucorp had also gained commercially from the reproduction.