Journal of Law, Information and Science
|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Journal of Law, Information and Science |
|
by ANNE M FITZGERALD[1]
The question of the appropriate scope and form of protection for computer software has received much attention at both the national and international levels during the past year. In Australia, the issue has recently been considered by the High Court, the Prices Surveillance Authority and the Copyright Law Review Committee. Their findings and recommendations are outlined in this article.
In March 1993, the High Court of Australia finally disposed of the the long-running Autodesk case. In Autodesk Inc & Anor v Dyason & Ors (No. 2)[2] the High Court dismissed an application by the respondents to re-open the court's decision in Autodesk Inc v Dyason (No. 1)[3] for further hearing.
In Autodesk (No. 1) the High Court had to determine whether the respondents' Auto Key lock device infringed copyright in the appellant's AutoCAD program. AutoCAD is in fact a compilation of computer programs, one of which, Widget C, operates in conjunction with the AutoCAD lock, a hardware device, without which the AutoCAD program will not operate. A crucial part of Widget C is a look-up table consisting of a 127-bit pseudo-random sequence of digits which checks the correctness of responses from the AutoCAD lock to challenges sent out by Widget C. Employing an oscilloscope, one of the respondents discovered the 127-bit string contained in Widget C. He then programmed an EPROM to operate as a look-up table producing the same reading as the look-up table in Widget C. The EPROM was incorporated in the Auto Key lock which the respondents produced and marketed as a substitute for the AutoCAD lock.
The High Court unanimously held that the Auto Key lock infringed copyright in the AutoCAD program, in particular, Widget C.[4] In the leading judgment, Dawson J reasoned as follows:
[W]idget C is a computer program and a substantial, indeed essential, part of that program is the look-up table by reference to which Widget C processes the information which it receives from the AutoCAD lock. The Auto Key lock reproduces that look-up table in the EPROM which it uses. The EPROM contains a set of digits which is identical with the set of digits produced by the look-up table when read as Widget C reads it. ... The set of instructions for Widget C ... contain in decimal form precisely the same sequence produced in binary form by the look-up table in the EPROM of the Auto Key lock. Whilst the 127-bit look-up table does not of itself constitute a computer program within the meaning of the definition ... it is a substantial part of Widget C and its reproduction in the Auto Key lock is a reproduction of a substantial part of that program.[5]
At issue in Autodesk (No. 2)[6] was an application by the respondents to have the matter re-heard. The respondents argued that they had been given no opportunity to make submissions on the issues on which the High Court decided the case. After the conclusion of the hearing in Autodesk (No. 1), but before judgment was entered, the Registrar of the High Court, acting on the direction of the court, had circulated a letter to the parties, inquiring:
... whether it has at any stage been expressly submitted on behalf of the appellants that the series embedded in the EPROM in the Auto Key lock constituted a reproduction in a material form of a substantial part of Widget C.
In that regard, attention is directed to the statement in the judgment of Sheppard J in [the Full Court of] the Federal Court ... that it is "common ground that [the respondents] have not reproduced any part of the Widget C. program."
If the parties are agreed that a submission to that effect was advanced, the parties are invited to make any supplementary submissions in writing which they might desire to make in relation to it. If the parties are agreed that no such submission was advanced, it is unnecessary for the matter to be taken further.[7]
The parties made supplementary submissions in response to that inquiry. The appellants submitted that Sheppard J's observation was "clearly incorrect" and referred to passages in the transcripts of proceedings before the Full Court of the Federal Court and the High Court where the matter referred to in the registrar's inquiry had been discussed. The respondents submitted that the look-up table in Widget C is data, not instructions, and that no part of Widget C (or no substantial part) had been reproduced in the Auto Key lock.[8]
The majority of the High Court, Brennan, Dawson and Gaudron JJ, dismissed the application, holding that the respondents had been given an opportunity to be heard, and had made submissions, on the matter which they now sought to raise again. Mason CJ and Deane J, dissenting, were persuaded that the judgment should be vacated and the matter re-opened for further argument, though for different reasons. Having dealt with the procedural question, most of the judges also commented on the copyright issues.
Dawson J, who had delivered the principal judgment in Autodesk (No. 1), said that the invitation to address submissions to the court on whether "the series embedded in the EPROM in the Auto Key lock constituted a reproduction in a material form of a substantial part of Widget C" may well have been equivocal. Nevertheless, the respondents had availed themselves of the opportunity and made supplementary submissions before judgment was handed down. The registrar's inquiry plainly identified the relevant issues and the respondents made their submissions in the light of arguments which had already been put to the court at first instance, the Full Court of the Federal Court and the High Court. Having determined that the respondents had been given sufficient opportunity to be heard, and were in fact heard on the matter, Dawson J proceeded to comment on the copyright issues:
[I] have given consideration to the arguments which the respondents would seek to put if the case were reopened, these arguments having been developed to a considerable extent during the hearing of this application. It it were necessary so to decide, I would be of the view that none of them would enjoy a sufficient prospect of success to warrant taking the exceptional step of reopening a judgment pronounced by this court.[9]
Brennan J found that the issues on which Autodesk (No. 1) was decided had been argued in both the Federal Court and the High Court. He then went on to dispose of the respondents' copyright arguments:
To succeed in challenging the correctness of the judgment, the respondent would have to demonstrate that the electronic signals should be divided into two categories, some of them being "a set of instructions" and others being of a different character. It is immaterial that some electronic engineers may classify some of those electronic signals as data. Once a discrete function of the computer is identified - here, the running of the AutoCAD application - it is necessary to identify the electronic signals which, as an entirety, cause the computer to perform that function. As at present advised, I should think that those signals, as an entirety, answer the description of a "set of instructions" and an expression of those electronic signals answers the description of a "computer program".[10]
Gaudron J concluded that the respondents had been given an opportunity to be heard on the issues raised in Autodesk (No. 1), as they had been argued at first instance and before the Full Court of the Federal Court and were addressed in the respondent's submissions following the registrar's letter. However, notwithstanding the sufficiency of the respondents' opportunity to be heard, Gaudron J was of the view that the case could be re-opened if the interests of justice so required, given the significance of computer technology and the absence of any further avenue of appeal.[11] Gaudron J's decision not to re-open the matter is based on a finding that Autodesk (No. 1) did not involve a misunderstanding of the facts or misapplication of the law on the issues raised by the respondents.[12]
Gaudron J dealt with the respondents' copyright arguments at some length. On their submission that the look-up table in Widget C is data rather than instructions, Gaudron J commented:
It may be that, so far as the computing profession is concerned, there is a dichotomy between data and instructions. And, so far as the definition of "computer program" in the Act proceeds by reference to "a set of instructions (whether with or without related information)", it may be that it also recognises that it is possible to draw a distinction between instructions and data. But that does not mean that, for the purposes of that definition, a computer program does not include data or information. ... Ordinary usage and the language and context of the definition of "computer program" in s.10 of the Act compel the conclusion that the words "set of instructions (whether with or without related information)" extend to comprehend information as well as commands. There is thus no basis for an argument that the Act does not extend copyright protection to information forming part of a set of instructions of the kind falling within the definition of "computer program", at least if that information is a substantial part of the relevant set of instructions.[13]
Gaudron J dealt with the respondents' submissions on whether the look-up table was a substantial part of Widget C as folows:
In truth, the table was the linchpin of the program, to borrow an expression from a different technology. It was the critical part of the instructions in that the other parts depended on and were made by reference to it. Whatever may be the situation in cases in which information plays a less significant role, given that the look-up table was crucial to Widget C and given that copyright protection extends to information as well as the commands involved in a set of instructions of the kind constituting a computer program as defined in s.10 of the Act, there is, in my view, simply no basis for an argument that the look-up table was not a substantial part of Widget C.[14]
Deane J concluded that procedural fairness had been inadvertently denied as the respondents had not been given a "clear and adequate opportunity" to present full submissions on a critical finding which formed the basis of the High Court's ultimate decision against them.[15]
Mason CJ agreed with Dawson J that the respondents had not established that they were denied an opportunity to address the court on the decisive issues but was of the view that that conclusion did not of itself dispose of the respondent's application.[16] The High Court's jurisdiction to review or rehear a matter may be exercised when the court considers that the earlier judgment proceeded on some "misapprehension of the facts or the relevant law" not attributable solely to the applicant's neglect or default.[17] Consideration of a variety of factors led Mason CJ to conclude that the initial judgment should be reopened. Mason CJ recognised that the case was and "important and unusual one,"[18] requiring the court to take a "pioneering step into a technically and conceptually complex world."[19] The interpretation given by the High Court to the provisions of the Copyright Act in relation to computer programs in this case would have important ramifications for the development of the Australian computer software industry.[20] Further, having heard arguments presented by the respondents on the application, Mason CJ was inclined to the view that it was at least arguable that the respondents had not infringed copyright in the appellant's program.[21] Finally, Mason CJ regarded the Registrar's letter, which was drafted and sent at the direction of the court, as equivocal in its invitation to the parties to address submissions to the court. Not only did the letter not invite the respondents to present further oral argument on the matters it raised, but it also did not indicate that the issue was of significance for all members of the court.[22]
On the copyright issue, Mason CJ saw Autodesk (No. 1) as confirming two fundamental principles. Firstly, copyright protects the set of instructions expressed in a computer program, even when reproduced in a different form. Secondly, functionality is not the proper object of copyright protection.[23] In the original Autodesk decision all members of the High Court had agreed with Dawson J's conclusion[24] that the look-up table was a substantial part of Widget C and its reproduction in the Auto Key lock amounted to reproduction of a substantial part of Widget C. Mason CJ questioned the reasoning of the Autodesk (No. 1) court in concluding that a "substantial part" of Widget C had been reproduced:
[I]n determining whether the quality of what is taken makes it a "substantial part" of the copyright work, it is important to inquire 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 this case, it is argued by the appellants that such an inquiry compels an affirmative answer as the look-up table is essential to the operation of the AutoCAD locking mechanism. Such an argument, however, misconceives the true nature of the inquiry and seeks to reintroduce by another avenue an emphasis upon the copyright work's function. True it is that the look-up table is essential to the functioning of the AutoCAD lock. However, in the context of copyright law, where emphasis is to be placed upon the "originality" of the work's expression, the essential or material features of a work should be ascertained by considering the originality of the part allegedly taken. This is particularly important in the case of functional works, such as a computer program, or any works which do not attract protection as ends in themselves (eg, novels, films, dramatic works) but as means to an end (eg, compilations, tables, logos and devices).[25]
Applying this approach, it was arguable that the look-up table was simply data or information, and did not constitute instructions capable of protection by copyright.[26] While the instructions in the Widget C program are functionally useless without the data in the look-up table, it could be argued that in qualitative, rather than functional, terms the look-up table was not a material or key part of the program.[27]
The Autodesk cases have given rise to much debate. Critics argue that, in protecting the look-up table in Widget C, the High Court has effectively conferred protection on the function of the computer program. Following the decisions, there remains considerable uncertainty regarding the scope of copyright protection of computer programs and the permissible extent of reverse engineering.[28] While all members of the court in Autodesk (No. 1) adopted the judgment of Dawson J, in Autodesk (No. 2) each judge presented a separate decision, so a clear line on computer software copyright is difficult to discern. Nevertheless, the cases appear to establish that an "essential" part of a computer program will amount to a "substantial part" of the program for the purposes of copyright law.
In December 1992 the Prices Surveillance Authority (PSA) released the Final Report on its Inquiry Into Prices of Computer Software ("Final Report").[29] The PSA's Interim Report,[30] submitted in October 1992, found that prices for computer software in Australia were "persistently and significantly higher"[31] than prices of equivalent products in the United States. One of the factors allowing prices to be maintained at high levels in Australia is the presence of statutory restrictions on parallel imports. In the view of the PSA, the most appropriate way of overcoming the problems it identified was to remove the source of the restrictions.[32] Accordingly, in its Interim Report the PSA recommended that sections 37 and 38 of the Copyright Act 1968, the importation provisions, should be repealed in relation to non-pirated parallel imports of computer software and associated manuals from countries providing comparable levels of protection against the reproduction of computer software.[33] Further, to increase the chance of border detection of pirate software, the PSA recommended that s.135 of the Copyright Act be amended to cover pirate and counterfeit computer software where the copyright owner has given notice to the Australian Customs Service.[34] These recommendations generated a great deal of debate and the PSA accepted further submissions before releasing its Final Report.
Having considered the criticisms of its recommendations, the PSA was not persuaded that the conclusions reached in its Interim Report were erroneous. Accordingly, the PSA made the following recommendations in its Final Report:
(1) Sections 37 and 38 of the Copyright Act should "be repealed in relation to parallel imports of computer programs and associated manuals from countries signatory to the Berne Convention and Universal Copyright Convention."[35] Implementation of this recommendation would also require amendment of s.44A(9) of the Copyright Act in order to include a manual sold with a computer program within the definition of "book."[36]
(2) Section 135 of the Copyright Act which currently applies only to printed copyright works[37] should be amended to cover pirate and counterfeit computer programs.[38] Subsections 135(2) and (3) requiring the copyright owner to give notice in writing to the Comptroller-General of the Australian Customs Service objecting to the importation of copies of the work, should be repealed as they apply to computer programs.[39]
(3) The PSA should be asked to monitor the effect of the implementation of its recommendations on the prices of non-pirated computer software.[40]
In June 1993, the Copyright Law Review Committee presented its Draft Report on Computer Software Protection ("Draft Report").[41] The CLRC's major recommendations are outlined below. Following consideration of public submissions in response to its recommendations, the CLRC will release a Final Report early in 1994.
A number of the CLRC's principal recommendations are analysed in papers presented in this issue of the Journal of Law and Information Science.[42] Andrew Christie examines the CLRC's recommendations regarding the appropriate form of intellectual property protection for computer software.[43] Dan Hunter's paper addresses the Committee's recommendations on copyright protection of the non-literal aspects of computer programs and on reverse engineering.[44] Ann Monotti provides a detailed analysis of the CLRC recommendations on protection of computerized databases.[45]
On the fundamental question of the most appropriate form of protection for computer software, the CLRC decided in favour of protection of computer programs as literary works under the Copyright Act 1968.[46] Original computer programs in either source code or object code should receive copyright protection as literary works.[47] This conclusion was, however, reached with some reluctance on the part of the Committee and runs counter to a strong current of Australian academic opinion[48] on the issue and the conclusions of another recent high-level inquiry into intellectual property law.[49] Having explored the alternatives, the CLRC concluded that copyright protection for computer programs was preferable to patenting or a sui generis regime. In the CLRC's view, the optimal solution would be to create a separate category of Part IV subject matter for computer programs.[50] Acceptance of this option, though, would be in breach of Australia's obligations under Article 2 of the Berne Convention relating to the protection of "literary and artistic works". The CLRC took the view that a computer program in source code is a literary work for the purpose of the Berne Convention - although a computer program in object code is not - and should accordingly be given the same protection as traditional literary works.[51]
From an international perspective, the CLRC pragmatically saw Australia as having little choice but to continue to protect computer programs as literary works. The Committee recognized that there is now strong support world-wide for protection of computer programs as literary works,[52] especially among our major trading partners including the United States, the United Kingdom[53] and the European Community[54]. Adoption of the CLRC's preferred solution would put Australia out of step with developments in these jurisdictions and the growing international trend towards protection of computer software as literary works.[55] Of greater concern to the Committee was the possibility that any unilateral action by Australia might be misinterpreted by countries "important to [our] economic and trading interests" as indicating a reduced commitment to the proper protection of computer programs. If such a perception were to lead to a reluctance on the part of overseas producers of software to export their latest products to Australia, there would be serious adverse effects on Australia's technological and economic development. While Australia could play an active role in international fora, such as GATT or the Berne Protocol meetings[56], in working for the adoption of a more suitable form of protection for computer software, for the present the solution adopted in the 1984 amendments to the Copyright Act should be retained.[57] In keeping with its conclusion, the Committee recommended that the definition of "literary work" in s.10(1) should be amended by deletion of the superfluous words "(whether or not in a visible form)" from paragraph (a).[58]
The CLRC recommended the inclusion of a new definition of "computer program" in the Copyright Act.[59] Any new definition would have to be comprehensive, clearly and unambiguously applying to programs in source and object code as well as in microcode. Nor should it be unduly restrictive of future developments of programming languages.[60] To ensure that the definition of "computer program" has as broad an application as possible, the CLRC recommended that the reference to "digital" in the present definition should be removed.[61] An important consideration in deciding upon a new definition was that Australia should, as far as possible, adopt a position regarding protection of computer software which is consistent with that of our major trading partners.[62] The definition proposed by the CLRC is identical to that found in s.101 of the United States Copyright Act of 1976 and very similar to the definitions in the Canadian and Japanese copyright legislation.[63] It defines "computer program" as:
"a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result."
The CLRC was of the view that the position of consultants and independent contractors regarding ownership of copyright in computer programs should be aligned with that of employees under the current provisions of the Copyright Act. Conferring ownership on the person who commissioned the programming would be more "sensible and equitable" than the present situation, and would avoid the need to enquire into the nature of the relationship between the commissioner and the author of the program.[64] The Committee recommended amendment of s.35(6) of the Copyright Act to provide that copyright in computer programs will be owned by the person (whether an employer or not) who commissions the writing or compilation of the program, subject to any contractual arrangement to the contrary. In any other case, the author of the program will own copyright.[65]
In the view of the Committee, the period of copyright protection for computer programs should be no longer than 50 years from the end of the year in which in the program was made.[66] However, compliance with Article 7(1) of the Berne Convention, as implemented in s.33 of the Copyright Act, requires that the usual term of the life of the author plus 50 years should also apply to computer programs.[67] In respect of duration of copyright, no distinction should be drawn between published and unpublished programs.[68]
Having identified computer programs (at least in source code) as literary works protected under the Berne Convention, the CLRC recommended that the copyright owner should have the same exclusive rights as are provided for literary works in s.31 of the Copyright Act. The owner of copyright in a literary work has the exclusive right to:
(a) reproduce the work in a material form;
(b) publish the work;
(c) perform the work in public;
(d) broadcast the work;
(e) cause the work to be transmitted to subscribers to a diffusion service;
(f) make an adaptation of the work;
(g) do any of the acts (a) to (e) in relation to an adaptation of the work.[69]
Any unauthorised exercise of these rights would infringe copyright, subject to existing exceptions in the Copyright Act, as modified by the Committee's recommendations elsewhere in the report[70]. No distinction should be drawn between domestic copying of computer programs and commercial copying. In particular, the CLRC rejected the introduction of a scheme similar to the ill-fated blank tape royalty scheme to apply to the copying of computer programs.[71]
The scope of the reproduction right in relation to computer programs was considered at some length by the CLRC and, in particular, how it applies to the "look and feel", "user interface", "non-literal elements" and the "structure, sequence and organisation" of computer programs. In reaching its conclusions on the appropriate scope of the reproduction right, the Committee relied quite heavily on the analysis of the nature of computer programs made by Dr Randall Davis of the Massachussetts Institute of Technology.[72] The Committee accepted Dr Davis's point that as well as containing text embodied in the code, computer programs also behave. Both the textual elements of a program and its behavioural elements possess their own structure, sequence and organisation.[73] The "structure, sequence and organisation" of the program's code is roughly equivalent to the "organisation and layout of chapters, sections, index and accompanying illustrations, maps and diagrams in a book of a technical nature."[74] However, while the text or code of a computer program may be regarded as analagous to traditional literary works, the behavioural elements of the program cannot.[75]
Applying this analysis, the CLRC concluded that the non-literal elements of computer programs comprising the "structure, sequence and organisation" of the program code should be protected by copyright in the same manner and to the same extent as traditional literary works. Although the courts may face difficulties in determining questions of infringement in particular cases, the Committee thought that it was neither desirable nor necessary to include specific provisions in the Copyright Act regarding subsistence or infringement of copyright.[76]
However, the CLRC concluded that the "user interface"[77] or "look and feel" of a computer program is in fact behaviour rather than expression.[78] To protect the non-code behavioural aspects of computer programs would be to protect the function of the program. As copyright protects expression rather than behaviour or function, the "user interface" or "look and feel" of computer programs should not be protected by copyright.[79] The Committee backed up its conclusions with policy arguments. The desirability of standardisation and the need for efficient user interfaces to be used and developed outweighed the need to extend copyright protection to user interfaces.[80]
On the issue of copyright protection of screen displays, the CLRC called for further submissions.[81] The Committee noted that it is uncertain whether protection currently extends to screen displays which would otherwise qualify for protection as artistic works.[82] The CLRC suggested that the distinctive nature of screen displays may require amendment of the Copyright Act to expressly extend protection to them. The Committee referred to the protection of screen displays as "audio-visual works" under the US copyright legislation and invited submissions on whether a similar form of protection is required in Australia.[83]
The CLRC recommended that a rental right for computer programs should be introduced.[84] Such a right should not, however, extend to include computer programs incorporated in utilitarian articles or other articles where the program cannot be copied during the ordinary use of those articles.[85] Introduction of a rental right will bring the Australian position into line with that in the European Community,[86] the United Kingdom[87], the United States[88], Canada and Japan. It also accords with the direction of international practice, as reflected in the GATT Agreement on Trade-Related Aspects of Intellectual Property Rights.[89]
On the issue of whether the copyright owner should also have a public lending right, i.e. the right to authorise or prohibit public lending of the computer program, the Committee was inclined to adopt the view that such a right was not justified.[90] However, as the question had not been addressed in detail in any of the submissions received by the CLRC, further submissions were invited on the need for, and possible scope of, such a right.
Australian law provides very little protection for the moral rights of authors and falls far short of the requirements of Article 6bis of the Berne Convention. The CLRC was of the view that authors of computer programs should not be any worse position than authors of other literary works regarding moral rights. However, the Committee did not recommend the enactment of legislation for the protection of the moral rights of authors of computer programs, merely noting that the issue of moral rights was currently being re-considered by the government.[91]
The CLRC recommended the introduction of exceptions to permit copying in the normal use of a computer program[92] and back-up copying.[93] The Committee was of the view that copying incidental to the normal use of a computer program should not require the licence of the copyright owner. The Copyright Act should be amended to expressly state that copyright is not infringed by a person who copies a legitimate copy of a program where the making of the copy is reasonable or necessary for the normal use of the program.[94] Also, ephemeral copying of a computer program incidental to back-up copying for security purposes should not be regarded as infringing copyright.[95]
The current provisions of s.43A of the Copyright Act which permit back-up copying in some circumstances are out of line with the practice of users who usually make a back-up copy to use while storing the original to guard it against damage. Accordingly, the CLRC recommended amendment of s.43A to reflect standard practice. A purchaser of a computer program would be permitted to make one back-up copy of the program which can be used instead of the original. In the event that the original or back-up copy is destroyed or damaged, the surviving original or back-up copy may be used to make another back-up copy, without any limit on the number of times this can be done.[96]
However, the CLRC recommended that s.43A(2)(b) should be retained, so that a back-up copy cannot be made from a program with an express direction against making a back-up copy.[97] Further, the right to make a back-up copy would not apply to computer programs which have been "locked" by the owner against copying.[98]
The CLRC recommended that modification of computer programs for networking and "porting"[99] should be left to negotiation between the user and the copyright owner.[100] Making a reproduction or adaptation of a computer program in order to debug it and restore its intended function should not infringe copyright if a correctly functioning version is not available within a reasonable time or at a normal commercial price.[101]
The CLRC recommended that, subject to certain conditions, decompilation should be permitted where it is necessary to achieve interoperability or to correct errors in the operation of the program. The Committee's recommendations on decompilation are clearly influenced by the EC Council Directive on computer software protection.[102]
Following the approach taken in the EC Directive, the CLRC proposed that decompilation should be permitted where it is necessary to achieve interoperability of an independently created computer program with other programs. This would be subject to the following conditions:
(a) decompilation is performed by the owner of a lawfully acquired copy of the program or another person having a right to use the copy or on their behalf by a person authorised to so so;
(b) the information necessary to achieve interoperability has not previously been readily available; and
(c) the acts are confined to the parts of the program necessary to achieve interoperability.
Decompilation under this exception could only be done for the purpose of achieving interoperability and the information obtained should only be given to others when necessary for the interoperability of the independently created program.[103]
The Committee recommended that decompilation to correct errors in the operation of the program should be permitted, provided that:
(a) decompilation is performed by the owner of a lawfully acquired copy of the program or another person having a right to use the copy or on their behalf by a person authorised to do so;
(b) a version of the computer program free of the error has not previously been readily available;
(c) the acts are confined to the parts of the program necessary to correct the error; and
(d) a correctly functioning version of the program is not available within a reasonable time at a normal commercial price.
Decompilation carried out under these provisions could be done only for the purpose of correcting errors and information obtained should only be passed on to others for that purpose.[104]
Decompilation in order to understand the techniques of a program - "the ideas that underlie the current state of the art" - should continue to be governed by the fair dealing provisions of s.40 of the Copyright Act.[105]
The CLRC recommended that modification of a locked computer program in order to circumvent a program or hardware lock, and subsequent copying of the program should be prohibited unless done with the copyright owner's consent.[106] Also, copyright owners and their exclusive licensees should have the right to prevent the commercial manufacture, importation, distribution and possession of devices designed to circumvent locks applied to protect computer programs against unauthorised copying.[107] This proposal accords with Article 7 of the EC Directive on the protection of computer software[108] and s.296 of the UK Copyright, Designs and Patents Act 1988.
The CLRC found itself divided on the issue of parallel importation of computer programs. A bare majority of the Committee was persuaded by the PSA's finding that Australian computer program prices were on average 49% higher than those in the United States during the period surveyed.[109] The majority of the Committee agreed with the PSA that Australian interests would be better served by permitting parallel importation from the United States, the source of most programs imported into Australia. However, given that several members of the Berne Convention have inadequate measures in place to control piracy of computer programs, the CLRC disagreed with the PSA's recommendation that parallel importation be permitted from all Berne Convention and Universal Copyright Convention member countries.[110] The majority recommended that parallel importation of, and subsequent commercial dealing with, computer programs and manuals (whether sold with the computer program or separately) should be allowed only from those countries which are the main sources of computer programs used in Australia, and on a non-discriminatory basis.[111] The proposed importation provisions would apply equally to second-hand computer programs.[112]
In proceedings for infringement of s.37 of the Copyright Act, the CLRC recommended that the importer should bear the onus of proving that the copies are not pirated. Where a computer program is imported without the consent of the copyright owner contrary to s.37, the importer will carry the onus of proving that the program is not a pirate copy and that it was imported in accordance with the amended parallel importation provisions.[113]
The Committee favoured an expansion of the scope of the provisions of s.135 of the Copyright Act regarding customs seizure of infringing imports so that they apply to computer programs. The CLRC reiterated the recommendation made in its 1988 Report on the importation provisions of the Copyright Act that s.135 should be amended to cover all Part III and Part IV material.[114]
The Committee raised the question of whether the importation provisions should include non-copyright articles containing computer programs. As a matter of principle, the CLRC took the view that functional or non-copyright articles should not be subject of copyright law merely because they include some copyright material, and called for further submissions.[115]
In recognition of the increasing use of computers to create works, the CLRC recommended that the Copyright Act be amended to include a definition of "computer-generated work" and to deal with authorship and duration of copyright in such works. The Committee approved of the approach taken in the UK Copyright, Designs and Patents Act 1988 and recommended the adoption of a similar approach under the Copyright Act 1968. The Committee defined a "computer-generated" work as one generated by a computer in circumstances such that there is no human author of the work.[116] The author of a computer-generated work would be the person who arranges for the creation of the work, or for whom the arrangements necessary for the creation of the work are undertaken.[117] Where the author is a legal person (rather than a natural person), copyright in the computer-generated work would last for 50 years from the end of the year in which the work was made.[118]
The Committee was of the view that the current definition of "literary work" in s.10(1) of the Copyright Act is broad enough to encompass computer databases and need not be amended to specifically refer to computer databases or to define compilations.[119] However, the Committee recommended that the Act should be amended to make it clear that screen displays do not constitute a reproduction in a material form[120] or a public performance of works stored in computer memory.[121] The Committee envisaged the establishment of a collecting society which would authorise the use of copyright material in databases and negotiate fees on behalf of the copyright owners. Jurisdiction of the Copyright Tribunal under Part VI of the Act should be extended to cover the terms on which database owners grant licences to users to access their databases.[122]
The term of protection for databases should be the same as for other literary works. For a published database, copyright will run from the time when the first edition of the database is made.[123] Updating will not create a new edition of the database unless the changes are sufficiently substantial to amount to a new work.[124] No changes were recommended regarding authorship or ownership of works stored in computer memory.[125] The CLRC called for further submissions on whether a new right of "unfair extraction" from databases should be created, deferring the issue for consideration in its Final Report.[126] The Committee made no recommendations on new kinds of works such as multi-media and hypertext, merely drawing attention to some of the issues they raise, and invited comment for consideration in its Final Report.[127]
The Committee was of the view that a "use right" entitling copyright owners to regulate the input and retrieval of works into and from computer memory was not justified or necessary.[128] The Committee was concerned to ensure that the provisions of the Copyright Act regarding copying by libraries and educational institutions should apply equally to storage of works in computer memory. In particular, it recommended amendment of Part VB of the Act to allow educational institutions to make copies onto computer memory for use by students, within the same limits as now apply to the making of hard copies, and subject to payment of royalties. Section 135ZL, which gives educational institutions a licence to make multiple copies, should be amended to make it clear that it applies to the scanning of works onto a database.[129] On the question of ownership of copyright in journalists' articles included in electronic news databases by newspaper publishers, the Committee did not view storage in computer memory as essentially any different from traditional hard-copy storage.[130] However, resolution of this issue was deferred pending the report of a separate CLRC inquiry into journalists' copyright.[131]
The issues dealt with by the High Court, the Prices Surveillance Authority and the Copyright Law Review Committee are far from straightforward. Adding to the degree of complexity are the complications which are inherent in the application of copyright law principles to a relatively new and rapidly advancing area of technological endeavour. Deciding upon an appropriate and adequate means of computer software protection requires a balancing of various interests. Sufficient protection must be accorded to the owners of intellectual property in computer software while ensuring that users and the public generally benefit from access to the latest advances in computer technology. Australia's international obligations under the Berne Convention and GATT must be recognized and, given the nature of computer software and the international market, developments in leading overseas jurisdictions must be carefully considered. Finally, as pointed out in a recent report prepared for the Prime Minister's Science and Engineering Council[132] in formulating a scheme of copyright protection for computer software, recent expansions to the scope of patent protection for computer programs must also be taken into account.[133]
[1] Lecturer in Law, University of Tasmania at Hobart; JSD Candidate, Columbia University, New York
LLB(Hons), University of Tasmania; LLM, University of London; LLM, Columbia University
[2] (1993)25 IPR 33 (HC of A)
[3] (1992)22 IPR 163 (HC of A)
[4] [1992] HCA 2; (1992) 22 IPR 163 per Dawson J at 174
[5] At 173
[6] (1993)25 IPR 33
[7] At 46
[8] At 46
[9] At 50
[10] At 42
[11] At 55
[12] Ibid
[13] At 56-57
[14] Ibid
[15] At 43-44
[16] At 34
[17] At 35
[18] At 39
[19] At 35
[20] At 36
[21] At 38
[22] At 39
[23] At 36
[24] At 172
[25] At 37
[26] At 37-38
[27] Ibid
[28] For comment, see James Fitzsimons, Re-examination of Re-reversal of Reverse Engineering Decision Resolved, (1993) 9 Computer Law and Security Report 236-239 and Julian Burnside QC, Case Note: High Court of Australia Revisits Autodesk, (June 1993) 23 Computers & Law 1-5
[29] Prices Surveillance Authority, Inquiry Into Prices of Computer Software: Final Report, Report No. 46, 15 December 1992. The PSA obtained Ministerial approval to hold a public inquiry into the prices of computer software in January 1992.
[30] Prices Surveillance Authority, Inquiry Into Prices of Computer Software: Interim Report, Report No. 44, 12 October 1992
[31] At 149
[32] t 153
[33] At 157
[34] At 159
[35] Final Report, op cit at 81
[36] S.44A(9) of the Copyright Act currently excludes from the definition of "book" a "manual sold with computer software for use in connection with that software."
[38] Final Report, op cit at 82
[39] Ibid
[40] At 83
[41] Copyright Law Review Committee, Draft Report on Computer Software, Attorney-General's Department, June 1993
[42] These papers were presented at a series of seminars on computer software protection sponsored by the University of Melbourne Law School and the Centre for International Research on Communication and Information Technologies (CIRCIT) which were held in Melbourne in September 1993.
[43] Andrew Christie, Re-writing the Rules on the Form of Protection for Computer Software
[44] Daniel Hunter, Limitations on the Proposals for Reform of Non-literal Copyright and Reverse Engineering of Computer Software,
[45] Ann Monotti, Works Stored in Computer Memory: Databases and the CLRC Draft Report,
[46] Draft Report, op cit, paras 2.02, 4.27 and Chapter 4. The Copyright Act 1968 was amended in 1984 to expressly extend copyright protection to computer programs as literary works. The definition of "literary work" in s.10(1) was amended to include "a computer program or compilation of computer programs". A new definition of "computer program" was inserted in s.10(1): "computer program" means an expression, in any language, code or notation, of a set of instructions (whether with or without related information) intended, either directly or after either or both of the following:
(a) conversion to another language, code or notation; (b) reproduction in a different material form; to cause a device having digital information processing capabilities to perform a particular function.
[47] Para 4.27
[48] Sam Ricketson, The 1992 Horace Manges Lecture - People or Machines: the Berne Convention and the changing concept of authorship, (1991) 16 Columbia-VLA Journal of Law & the Arts 1-37
[49] Prime Minister's Science and Engineering Council, The Role of Intellectual Property in Innovation, Vol. 2, AGPS, Canberra, 1993, at 78. The Report of the Legal Group describes copyright protection as "singularly inappropriate" for computer software and advocates and expansion of the scope of patent protection for computer programs.
[50] Draft Report, op cit, para 4.25
[51] Para 4.14. The CLRC's conclusion is the opposite of that of Professor Ricketson in The Berne Convention for the Protection of Literary and Artistic Works: 1886-1986 at 897-900 and the Office of International Law in the Attorney-General's Department; both conclude that computer programs are not literary works under the Berne Convention.
[52] Evidence of the direction of international practice is found in the GATT Draft Agreement on Trade-related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods, GATT Secretariat, MTN.TNC/W/FA, 20 December 1991. Section 1, Article 10(1) states that "computer programs, whether in source code or object code, shall be protected as literary works under the Berne Convention (1971).
[53] S.3(1) of the Copyright, Designs and Patents Act 1988 expressly states that "literary work" includes "a computer program".
[54] The Council Directive of 14 May 1991 on the legal protection of computer programs (91/250/EEC) requires Member States to protect computer programs as literary works. Article 1 of the Directive states: "1. In accordance with the provisions of this Directive, Member States shall protect computer programs, by copyright, as literary works within the meaning of the Berne Convention for the Protection of Literary and Artistic Works. For the purposes of this Directive, the term "computer programs" shall include their preparatory design material."
[55] Draft Report, op cit, paras 4.25, 4.26
[56] The World Intellectual Property Organization (WIPO) has established a Committee of Experts on a possible protocol to the Berne Convention for the Protection of Literary and Artistic Works. Among the matters being considered by the Committee is the appropriateness of existing protection under the Convention for computer programs.
[57] Draft Report, op cit, para 4.26
[58] Paras 2.03 and 6.04. s.10(1) currently provides:
" "literary work" includes: (a)a table, or compilation, expressed in words, figures or symbols (whether or not in a visible form), and (b)a computer program or compilation of computer programs."
[59] Para 2.03(3)
[60] Paras 6.09 and 6.17
[61] Para 6.13
[62] Para 6.17
[63] Section 2 of the Canadian Copyright Act of 1921 defines "computer program" as "a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result." Article 2(xbis) of the Japanese Copyright Law defines a "program" as "an expression of combined instructions given to a computer so as to make it function and obtain a certain result."
[64] Draft Report, op cit, para 7.07
[65] Paras 2.04 and 7.08
[66] Paras 2.05 and 8.02
[67] Paras 2.06 and 8.04
[68] Paras 2.06 and 8.03
[69] Paras 2.07, 2.10 and 9.03
[70] para 2.11. The CLRC made recommendations regarding normal use, back-up copying, the making of adaptations to improve or facilitate use, error correction and decompilation for interoperability.
[71] Paras 2.27 and 10.86
[72] Para 9.08. In March 1991 the Secretary of the CLRC had attended a World Intellectual Property Organisation symposium in San Francisco at which Professor Davis delivered a paper on intellectual property and software.
[73] Paras 9.09 and 9.17
[74] Para 9.17
[75] Paras 9.08 - 9.11
[76] Paras 2.09 and 9.21
[77] The CLRC adopted the definition in the IEEE Standard Glossary of Software Engineering Terminology (Std 610.12-1990) which provides that a "user interface" is "an interface that enables information to be passed between a human user and hardware or software components of a computer system", at para 9.16
[78] Para 2.08
[79] Para 9.35
[80] Paras 9.32, 9.33 and 9.39
[81] Paras 2.10 and 9.42
[82] Para 9.41
[83] Para 9.42
[84] Paras 2.12 and 9.73
[85] Para 9.73
[86] Article 4 of the Council Directive of 14 May 1991 on the legal protection of computer programs provides that the exclusive rights of the copyright owner include the right to do or to authorize "(c) any form of distribution to the public, including the rental, of the original computer program or of copies thereof. The first sale in the Community of a copy of a program of the rightholder or with his consent shall exhaust the distribution right within the Community of that copy, with the exception of the right to control further rental of the program or a copy thereof."
[87] Section 18(2) of the Copyright, Designs and Patents Act 1988 creates a rental right for computer programs.
[88] Section 109(b)(1)(A) of the US Copyright Act 1976 grants the owner of copyright the right to dispose of or authorise the disposal of the computer program "by rental, lease or lending, or by any other practice in the nature of rental, lease or lending." Section 109(b)(1)(B) provides that the rental right does not apply to "(i)a computer program which is embodied in a machine or product ans which cannot be copied during the ordinary operation or use of the machine or product; or (ii)a computer program embodied or used in conjunction with a limited purpose computer that is designed for playing video games and may be designed for other purposes."
[89] The GATT Draft Agreement on Trade-related Aspects of Intellectual Property Rights, GATT Secretariat, MTN.TNC/W/FA, 20 December 1991, provides in Section 1, Article 11 that: "In respect of at least computer programs ...., [signatories] shall provide authors ... the right to authorise or prohibit the commercial rental to the public of originals or copies of their copyright works. ... In respect of computer programs, this obligation does not apply to rentals where the program itself is not the essential object of the rental."
[90] Draft Report, op cit, paras 2.13 and 9.79
[91] In its 1988 Report on Moral Rights, the majority of the CLRC recommended against the introduction of new legislation to protect authors' moral rights. The Government has recently announced that it plans to introduce moral rights legislation.
[92] Draft Report, op cit, para 2.15
[93] Para 2.16
[94] Para 10.10
[95] Para 10.11
[96] Para 10.14
[97] Ibid. s43A(2) of the Copyright Act provides:
"Subsection (1) does not apply to the making of a reproduction of a computer program, or of an adaptation of a computer program:
(b)contrary to an express direction by or on behalf of the owner of the copyright in the computer program given to the owner of the original copy not later than the time when the owner of the original copy acquired the original copy."
[98] Para 10.15
[99] Making the arrangements necessary so that a computer program that runs on one computer is able to run on a differently configured computer: para 10.16
[100] Paras 2.19 and 2.20
[101] Paras 2.21 and 10.58
[102] Council Directive of 14 May 1991 on the legal protection of computer programs (91/250/EEC). Article 6 of the Directive deals with decompilation.
[103] Para 10.72
[104] Para 10.72
[105] Para 10.61
[106] Paras 2.17 and 10.63
[107] Para 2.18
[108] Council Directive of 14 May 1991 on the legal protection of computer programs. Article 7 of the Directive requires member states to provide appropriate remedies against a person who, inter alia, commits "any act of putting into circulation, or the possession for commercial purposes of, any means the sole intended purpose of which is to facilitate the unauthorized removal or circumvention of any technical device which may have been applied to protect a computer program."
[109] Draft Report, op cit, paras 11.38 and 11.60
[110] Para 11.56
[111] I.E. imports would be allowed regardless of the nationality of the producer; paras 2.31, 11.28 and 11.60
[112] Paras 2.33 and 11.30
[113] Paras 2.34 and 11.18
[114] Paras 2.32 and 11.69. In the 1988 Report the CLRC recommended that:
"Section 135 of the Copyright Act 1968 be amended to cover all works and subject matter other than works. In consequence subsecs. (4) and (9) will need to be amended to remove the reference to printed copies so that the section will apply to reproductions of all kinds. The section should be amended to apply to exclusive licensees of copyright material as well as to owners thereof."
[115] Paras 2.31 and 11.20
[116] Paras 2.37 and 13.08. This replicates s.178 of the UK Copyright, Designs and Patents Act 1988
[117] Ibid. At para 13.07 the CLRC said that "the person responsible for running the data on the programmed computer, in order to create the new work, should be the author."
[118] Paras 2.37 and 13.09
[119] Para 14.32
[120] Para 14.18
[121] Para 14.22
[122] Para 14.11
[123] Para 14.33
[124] Para 14.34
[125] Paras 14.38 and 14.40
[126] Para 14.43
[127] Para 2.39
[128] Para 14.08
[129] Para 14.12
[130] Para 14.54
[131] Para 14.56
[132] Prime Minister's Science and Engineering Council, The Role of Intellectual Property in Innovation, Vol. 2, AGPS, 1993 at 78
[133] For a discussion of recent US developments in patenting of software, see John V. Swinson Software Patents in the United States, (1993) 4 JLIS 116-141 and David Webber, Software Patents: A new era?, (March 1993) 22 Computers & Law 1-5
AustLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.austlii.edu.au/au/journals/JlLawInfoSci/1993/15.html