Journal of Law, Information and Science
|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Journal of Law, Information and Science |
|
Warwick A Rothnie[*]
This paper explores the dichotomy between ‘ideas’ and ‘expression’ in copyright law. Copyright has traditionally subsisted in the expression of ideas, not in the ideas themselves. Application of the idea/expression dichotomy has become increasingly difficult with the advent of digital technology, since the distinction between ideas and their expression is often difficult to identify. Through a discussion of the relevant case law, the author argues that the two concepts have, to an extent, converged. He concludes that while the idea/expression dichotomy still exists in the digital environment, it may not provide solutions to all the problems that may arise from treating computer programs as copyright subject matter.
It is trite law to declare that there is no copyright in ideas, only expression.[1] In fact, the most frequently quoted statement of the principle is that:
Copyright … does not extend to ideas, or schemes, or systems, or methods; it is confined to their expression; and if their expression is not copied the copyright is not infringed.[2]
As Lord Hailsham reported Professor Joad to have observed, however, ‘it all depends on what you mean by ‘ideas’’.[3]
The so-called dichotomy between ‘ideas’ and ‘expression’ is one of the rubrics which the law has evolved to define what falls within the scope of the copyright owner’s property and what forms part of the public domain, available for use by anyone without constraint. Other concepts or techniques (and I hasten to emphasise that this list is anything but exhaustive) which also operate to draw the boundaries between what is protected and what is not include the concept of originality, the term of protection, the ‘compartmentalisation’ of copyright into particular categories of subject matter, the requirement that infringing acts have a causal connection with the protected subject matter (often encapsulated in the shorthand term ‘copying’) and even, where there is a sufficient causal connection, the types of usages which constitute, for example, reproduction. There is a high degree of inter-relationship between at least some of these.[4]
In seeking to apply the ‘idea/expression’ dichotomy, therefore, we are grappling with the fundamental problem of copyright expressed in strikingly modern terms by Lord Mansfield more than two hundred years ago:
... we must take care to guard against two extremes equally prejudicial; the one, that men of ability, who have employed their time for the service of the community, may not be deprived of their just merits, and the reward of their ingenuity and labour; the other, that the world may not be deprived of improvements, nor the progress of the arts be retarded. The Act that secures copy-right to authors guards against the piracy of the words and sentiments; but it does not prohibit writing on the same subject.[5]
In this paper, I hope to explore some of the implications for the working out of the dividing line between ‘ideas’ (which are open to the world for unconstrained (by copyright) use) and ‘expression’ (which requires permission from the copyright owner or some other statutory mandate) caused by the advent of digital technology.
To succeed under our law, a plaintiff must prove two basic steps:
• that the plaintiff’s work as a whole is original (and so protected by copyright); and
• if so, that the part taken by the defendant is a ‘substantial’ part of the plaintiff’s work.
As a technique for analysis, the ‘idea/expression’ dichotomy may operate at either stage, but it is important to bear in mind that it is a technique (if that is not to put it too highly) to assist in applying a test. There are some precedents which can be seen as supporting the view that the material for which protection had been sought was too general or insubstantial to warrant copyright protection.[6]
In Anglo-Australian jurisprudence, however, the courts generally find sufficient expenditure of labour, skill and judgment to support a finding that copyright subsists. Therefore, the issue is usually focused on whether or not that copyright has been infringed.
The question of whether or not there has been a taking of a ‘substantial’ part itself often requires a two-step analysis:
1. is there a sufficient degree of objective similarity between the material protected by copyright and the alleged infringement; and
2. is there the necessary causal connection or ‘copying’?[7]
As noted in Bron, the two steps are often inter-related, as a sufficient degree of resemblance will usually give rise to a presumption of copying.[8]
The role of the idea/expression dichotomy is perhaps best explained by Learned Hand J of the United States:
It is of course essential to any protection of literary property, whether at common-law or under the statute, that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations. That has never been the law, but, as soon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that, as was recently well said by a distinguished judge, the decisions cannot help much in a new case.
Then, after referring to situations where the alleged infringer had excised a separate scene (and where the question was ‘only’ one of substantiality), his Honour continued:
But when the plagiarist does not take out a block in situ, but an abstract of the whole, decision is more troublesome. Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas,’ to which, apart from their expression, his property is never extended. ... Nobody has ever been able to fix that boundary, and nobody ever can. ... though the skeleton is part of the body, it pervades and supports the whole. In such cases we are rather concerned with the line between expression and what is expressed.[9]
It is worth dwelling on three aspects of this passage. Even allowing for the significant differences between US copyright law and our Anglo-Australian heritage,[10] his Honour’s explication of the issues is apt in the Australian context.
First, Learned Hand J identifies that different types of considerations might arise depending on the nature of the infringing activity. One type of infringement is described as ‘literal appropriation’. This might be thought of as the simplest kind of infringement: simply multiplying exact copies of some novel, drawing, computer program or performing a ‘song’ in public without authorisation. A particular type of literal appropriation is the situation where the whole work is not taken, but some discrete part; a separate scene or block in situ. In this subsidiary case, the question is largely one of substantiality.
If the matter is not one of literal appropriation (in what in later US cases has been called ‘non-literal copying’), however, Learned Hand J identified a series or patterns of abstraction. This clearly refers to a spectrum of activity, not all of which will be an infringement. At one end of the range, close to (if not actually part of) literal appropriation and consequently infringing are the cases of relatively minor alterations to the protected work, perhaps including changes in tense or the elision of some sentences, then moving along the spectrum to consideration of characterisation and the sequence of incident, then at the furthest extreme the title or general idea.
Learned Hand J clearly recognised that some points along this spectrum must constitute an infringement otherwise authors will be deprived of their just merits and the fruits of their ingenuity and labour. On the other hand, Learned Hand J also clearly posits that a point will be reached on this spectrum which passes beyond the protection of copyright. At that point, or level of generality, a taking passes across the line from protected expression to unprotected idea.
The third point about his Honour’s reasoning which I wish to highlight is that the dividing line between protected expression and unprotected idea is not a precise boundary. In his Honour’s terms, the matter is ‘at large’. A question of judgement and degree is involved. As no two cases are ever exactly the same, therefore, no case will necessarily be determinative of another. That said, however, we must seek to draw principles of general application to provide some guidance, always recognising that, where matters of judgement and degree are involved, there will be scope for differences of opinion and consequently uncertainty.
In Nichols, the court ruled that there was no infringement. The only commonalty between the two works in dispute was a quarrel between a Jewish father and an Irish father, the marriage of their children, the birth of grandchildren and a reconciliation. This was far too general a level of abstraction. Harking back to Sayre v. Moore, one might say that the two works dealt with the same or similar subject matter, but the detailed working out was quite different.
In contrast is the situation which arose in LB (Plastics), involving a different subject matter, infringement of copyright in artistic works—drawings for ‘knock down’ drawers. The respondents raised a plea that they had copied only the idea of such drawers. To which Lord Hailsham responded:
What the respondents in fact copied from the appellants was no mere general idea. It was, to quote the respondents’ own language to ‘follow the pattern’ or principle ‘in part or in whole’ with ‘minor changes’ to the design, with the same choice of principal members interfitting in the same way to the same critical dimensions, and even incorporating such a trivial element as the reverse countersink, and then to countercheck their work by superimposing their own drawings on the appellants’ to make sure that they had made no mistake. ... the appellants showed quite clearly that the ‘design’ or ‘pattern’ which the respondents had copied in ‘whole or in part’ was no more limited to the few critical measurements necessary to fit the carcase than it was limited to the ‘idea’ of external latching. There was a wide option of choice available to them to achieve interchangeability, in the number of spigots, and other details. They chose to copy the appellants’ design not merely in small details but in overall shape and the relation of its parts, and thereby, apart from these proceedings, would have saved themselves ‘considerable time and money’.[11]
That is, the respondents’ ‘borrowing’ was at such a level of detail and specificity that it constituted much, much more than the general idea.
The emphasis on saving considerable time and money seems important (although, arguably, circular). Indeed, in many of the cases, the courts have focused on trying to identify whether the alleged infringer has engaged in independent creation—the exercise of skill, labour and judgement; or has simply resorted to free-riding on the copyright owner’s efforts.[12]
Almost of necessity, this approach appears to require the court to identify what it is that confers originality on the protected material and to make a judgement about whether that has been appropriated.
As a result, Jacob J in the context of copyright in a computer program has summarised his Lordship’s understanding of the underlying principle as follows:
As I have said, United Kingdom copyright cannot prevent the copying of a mere general idea but can protect the copying of a detailed ‘idea’. It is a question of degree where a good guide is the notion of overborrowing of the skill, labour and judgment which went into the copyright work.[13]
The creation and storage of materials in a digital or electro-magnetic format involves the conversion of works and other subject matter into the famous sequences of ‘0s’ and ‘1s’ which are in turn stored in some form of computer memory as a series of electrical impulses.
Despite some initial controversies, it now seems clear that the general rules discussed in the introduction above apply equally to almost all types of works and other materials. In these cases, it is a question of applying the longstanding principles to the particular facts in question. The area where conceptual issues of greater uncertainty arise is the application of the idea/expression dichotomy to computer programs.
Following the High Court’s ruling in Apple, two broad arguments with a loose basis in the idea/expression dichotomy were raised in defence against allegations that the whole or a substantial part of some protected material had been reproduced when the material was created or stored in digital format.
First was the argument which succeeded in Apple itself. The expression of something as ‘mere electrical impulses’ was not a reproduction in the copyright sense just as one did not infringe the recipe of rabbit pie or a cake by baking the pie or cake.[14]
In Apple, Gibbs CJ had explained that:
the ROMS and EPROM embody the idea, and logical structure, of the source programs, but do not reproduce the expression of the idea and of the logical thought which is to be found in the source programs.[15]
This argument is no longer sustainable following the amendments introduced by the Copyright Amendment Act 1984, particularly the definition of ‘material form’:
material form’, in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage from which the work or adaptation, or a substantial part of the work or adaptation, can be reproduced. (My emphasis)
The ‘supplementary reasons’ of Mason CJ, Brennan and Deane JJ in Autodesk (No 1) explain the impact of the amendments, albeit in the context of the definition of computer program:
When the definition of ‘computer program’ is read in its context in the Act, however, it appears to us to be clear that the reference to ‘an expression, in any language, code or notation’ should not be understood as referring only to an actual written expression or representation of a set of instructions with the result that copyright does not exist at the time of an alleged infringement unless such a written expression actually exists or has existed at that time. The definition should be understood as conferring protection upon the set of instructions itself but as doing so in a way which is adapted to the nature of copyright. That is to say, the stored set of instructions in a non-sensate form such as electrical impulses is itself protected on the basis that copyright actually subsists in any expression or description of it which can theoretically be made in language, code or notation. On that basis, the test originality is satisfied by the originality of the set of instructions and any unauthorised expression of it in language, code or notation will infringe the copyright in the computer program. Where a set of instructions does not itself satisfy the requirement of originality, that requirement can, of course, be satisfied by the originality of an expression or description of it in language, code or notation with the result that copyright is confined to that particular expression or description alone.[16]
The second argument was that there is insufficient objective resemblance between on one hand the printed words on the page, the visual appearance of a drawing or the flickering images on the computer screen and, on the other, the sequence of ‘1s’ and ‘0s’ in which the copyright material was actually stored in digital formats. The courts have roundly rejected this argument as confusing the thing which is stored and protected with the mechanics of storage. For example, in Galaxy v Sega, the Full Court ruled:
The visual images depicted in these video games did exist before the game was played. They existed in the minds of their creators and the drawings and models they made. The images were embodied in the computer program built into the video game machine so as to be capable, by the use of that program, of being shown as a moving picture. It does not matter that they were embodied in a different form, ie three-dimension vertices of the polygon model, rather than a two-dimensional image. The statutory definition says nothing about the form of embodiment. Nor does it matter that the images seen by players are created by computer calculations only immediately before their appearance on the screen of the video game machine. Although that means, in a sense, that they are new, they are exact recreations of images previously devised by the graphic designers. Similarly, of course, it is unimportant that the images could not be seen on the screen as a moving picture until generated by the computer, any more than it matters that a length of video tape is incapable of being seen as a moving picture until passed through a video player.[17]
Therefore, the advent of digital technology has resulted in the breaking down to some extent of one of the dividing lines between protected expression and unprotected idea. This can be seen as a comparatively limited extension of the concept of translation arising from the nature of digital storage mechanisms. This extension or adjustment may hardly seem surprising in light of copyright’s historical response to technological development—apart of course from the extension of copyright protection itself to computer programs. It seems highly likely, however, to have far-reaching ramifications for the traditional division of copyright into separate categories of subject matter.[18]
It is to some further ramifications of and for the idea/expression dichotomy in the context of computer programs which we now turn.
As a first step, it is necessary to identify the possible materials protected by copyright which might be infringed. There are now a number of reported decisions which track through the various stages and materials which might come into existence in the creation of a computer program.[19]
• At the highest level, there is the idea or function of the program. For example, this could be to create a word processor or a stock control and purchasing program.
• At the next level down, there may be a list of features. For example, whether or not the word processor will have the capacity to create footnotes, undertake spelling checks and so on.
• Often the features of a program will be described or outlined in a functional specification and elaborated in more detailed technical specifications. These will be literary works and may involve artistic works.
• Depending on the complexity of the program, it may consist of a number of modules or programs in themselves so that a word processor or other program might really be a package or suite of programs. The relationship of modules to one another, and of functions within individual programs, may be worked out graphically in flow charts or in pseudocode.[20]
The materials created at this earlier stage of development are provided to one or more programmers who then write the program proper. This often takes two broad stages: the creation of source code (an expression of the program in a human-intelligible computer language). The source code is then compiled into object code (the sequences of ‘1s’ and ‘0s’ or mere electrical impulses).
The interplay between idea and expression may arise at all or any of these levels and, importantly, across levels.
At the broadest level, the position is clear enough. The High Court has conclusively ruled that the fact that two programs perform the same function is not enough to give rise to infringement. There must, as with all other types of copyright material, be both a sufficient degree of resemblance to some material in which copyright subsists and the casual connection (or ‘copying’). Identity of function alone is not sufficient.[21]
To have ruled otherwise would be to have prohibited ‘writing on the same subject’.
In assessing this, I suggest with respect that we need to treat a passage from Dawson J’s judgment in Autodesk (No 1) with caution. Almost in passing, his Honour said:
But it has been held that the idea of a utilitarian work is its purpose or function and that the method of arriving at that purpose or function is the expression of the idea: see Whelan Associates v Jaslow Dental Laboratory [1986] USCA3 976; 797 F2d 1222 (1986) at 1236 citing Baker v Seldon [1879] USSC 9; 101 US 99 (1880).[22]
Taken literally, this passage could be interpreted to mean that the function of a program (to create a word processor for example) is its ‘idea’ and all the workings out and implementation of that are ‘expression’ and so protected by copyright. That, with respect, I think must be too extreme and seems unlikely to be what his Honour intended. First, the passage is clearly obiter dicta although obviously very persuasive, having the imprimatur of the High Court. Secondly, Whelan v Jaslow was a comparatively early attempt to apply copyright law to computer programs. With increasing experience of computer programs, US courts have largely rejected that approach.[23]
Thirdly, as Dawson J noted shortly after the passage quoted above, the computer program in use in Whelan v Jaslow ‘was only one of a number of programs of different structure and organisation which might be used to achieve the same end.’ Basic copyright principles require some correspondence of this structure, organisation or some other deeper level of detail for infringement to arise.
Moving from the level of purpose or function, the courts have not yet rejected the possibility that copying ‘design features’ could infringe copyright. However, it seems a very close level of correspondence of considerable detail will be necessary. In Ibcos, for example, the defendant was found to have copied at least 11 design features including matters such as the inclusion of nine levels of security, a unique ability to create different invoice types, 22 character parts description, 12 labour rates, 5 levels of sub-totalling and so on. Jacob J ruled:
But I do not regard these matters as themselves constituting a copyright compilation. They are features of the package of interest to consumers and no more. We are here at a level of generality where there is little of the programmer’s skill, labour and judgement. Even if the set were copyright, the mere taking of those functions would not be an infringement—it would be the taking of a mere general idea or scheme.[24]
Greater scope for infringement may arise where the copying is of the program structure. In Admar v Ezy Systems, the plaintiff sought to introduce expert evidence of a pseudocode analysis which, it was claimed, demonstrated that the respective computer programs possessed similar program design and programming logic. This evidence was rejected in so far as it related to the claim of copyright infringement, but admissible in relation to the claim of misuse of confidential information. In reaching this the conclusion, Goldberg J referred to but found no assistance in either Ibcos or Zeccola.[25]
Parts of the reported judgment suggest that the evidence was rejected because of the nature of the infringements alleged. Admar appears to have claimed that Ezy Systems directly copied the source code—literal appropriation or disk-to-disk copying—rather than the program structure or compilation of modules as a whole. For example:
Apart from the screen report viewer program Professor Willis does not venture an opinion that any particular part of the Ezy source code substantially reproduces the Admar source code nor does he give any evidence from which that conclusion could be drawn.[26]
And later:
These observations must be read in the light of the fact that copyright was being claimed in the compilation of the many programs as well as in the individual programs themselves. To that extent the structure of the compilation as a whole and the features of the design of the compilation as a whole and its layout and arrangement were relevant in determining whether there had been an infringement of copyright by copying. However, there is nothing in these observations which suggest that one looks beyond the text of the source code, for example, by way of pseudocode analysis or exposition of an underlying program logic to determine whether, and to demonstrate how, there has been a reproduction, publication or adaptation of the source code.[27]
If that be so, the pseudocode analysis would not appear to have been relevant.
To the extent that the judgment may go further and rule that source or object code cannot reproduce copyright in the structure, sequence and organisation of another program, however, the decision with respect seems at odds with basic copyright principles and the Autodesk decision.
Assuming that the program is of a sufficient degree of complexity and the correspondence is at an appropriate level of detail, infringement by copying the program structure could arise by analogy to infringement by taking the plot sequence of incident and characterisation of a novel, play or film script.[28]
Infringement of program structure may arise by direct reproduction of the flow charts or pseudocode from which the source or object code is generated in another flow chart or pseudocode document. As copying may be indirect as well as direct, it seems arguable that both source code and object code could reproduce in a material form the flow charts/ pseudocode. Alternatively, since Autodesk makes it clear that a written embodiment is not necessary, the embodiment of the program structure in the source or object code could give rise to a compilation which, as in Ibcos, the defendant’s own source or object code infringes.
At the next level down of detail, it has been unquestionable since Apple that a substantial taking of source code would infringe copyright subsisting in that source code.[29]
Following the passage of the 1984 amendments, Autodesk confirms that source code can be infringed by object code and object code may also be infringed by object code.[30]
In Ibcos, where the infringement alleged related to reproduction of source code, Jacobs J found infringement on the basis of evidence establishing a combination of factors:
• disk-to-disk copying
• the number of the same variables (including names of variables and comments) in corresponding programs
• the number of identical labels
• the number of the same remarks
• the number of same code lines
• the percentage of code which was the same
• the number of redundant variables in each and
• in many places, structural similarities.[31]
So much correspondence at such level of detail and particularly with a finding of disk-to-disk copying, in the face of a denial of any copying at all, took the defendant well beyond the boundaries of unprotected idea.
There may well be a substantial role for the idea/expression dichotomy to play in determining whether or not the source or object code infringes copyright subsisting in another program. Dicta in Ibcos suggest that, in appropriate cases, a defendant may escape liability by showing that similarities do not result from copying but arise in some other way. Examples given were:
• derivation of similar bits from some third party or from the public domain[32]
• similarities arising from the programmer’s own style[33]
• similarities derived from functional necessity—anyone doing the particular job would do it that way.[34]
In Ibcos, these factors did not exonerate the defendant as Jacob J found as a fact that the similarities resulted from copying.[35] This suggests a more limited role for the idea/expression dichotomy under Australian law compared to the law in the USA.
In the USA, the dominant approach on these issues seems to be the abstraction-filtration-comparison test adopted in Computer Associates v Altai.[36]
At the filtration stage, the court seeks to identify a ‘core of protectible expression’ by excluding (or filtering) from the scope of copyright protection in the plaintiff’s program any elements explicable by the above.[37]
Under Australian law, it is of course well established that the substantiality of the taking depends on the quality of what is taken, not necessarily its quantity. In assessing this, however, we are thrown back on the fact that originality arises from the work as a whole:
Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. If he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken. One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data. So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiff’s work as a whole is ‘original’ and protected by copyright, and then to inquire whether the part taken by the defendant is substantial. A wrong result can easily be reached if one begins by dissecting the plaintiff’s work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole cannot be. Indeed, it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright.[38]
The ‘filtration’ process outlined by the Second Circuit in Altai seems to involve the ‘short cut’ criticised by Lord Reid.[39]
This suggests that, particularly where copying is proved, there will be an important difference in the significance of these matters in Australian law when compared to US law and considerably less scope for a defendant to claim he or she has copied only ‘the ideas’.
The Full Court of the Federal Court of Australia’s decision in Powerflex explores yet another level of detail: copying of commands/function keys, macros, file structure and types of data file.[40]
In Powerflex, there was open acknowledgment of a casual connection in the sense of a minutely detailed examination of the copyright work. However, in almost all cases there was no suggestion that either the source code or the object code in the competing programs resembled each other in any respect. In creating PFXplus, Powerflex had set out to reproduce the functionality of the Dataflex program, but would appear to have written its source and object code entirely anew.
The most obvious correspondence between the two programs was in the use of the names of various commands and, as substitutes therefor, various function keys. These commands included words like ‘Save’, ‘Display’, ‘Find’ and, unique to the Dataflex program, ‘erasefile’, ‘newpage’ and ‘end$of$report’. In all, of some 225 relevant words in the Dataflex ‘language’ the PFXplus language used some 192. As already noted, however, the source code and object code used to implement these commands was entirely different and newly written. The Full Court ruled that this taking did not reproduce any material protected by copyright:
Each of the words in the so-called Dataflex language is but a cipher. The underlying program is the set of instructions which directs the computer what to do when that cipher is in fact used, eg by being typed on to the screen. It is not to the point that the cipher bears some resemblance to an ordinary English word. The cipher or command is not an expression of the set of instructions, although it appears in that set of instructions. It is the trigger for the set of instructions to be given effect to by the computer.
It may not be inaccurate to describe each of the commands as itself an instruction. It is likewise not necessarily inaccurate to talk of each of those words as representing the set of instructions in the sense that the use of one of them triggers the instructions contained in the computer program to be acted upon. But it is in our view not accurate to refer to each of the words as being an expression of the set of instructions.[41]
In terms of the idea/expression dichotomy, the commands and functions, as distinct from the code which implements them, can be seen as falling into the category of unprotected ideas.
The Full Court dealt with the claim that copyright subsisted in the Dataflex language as a whole in a perfunctory manner. It may be that the argument was not raised at first instance. The Full Court considered that, just as individual words alone were not a computer program, nor were they collectively and went on to rule:
reproduction of individual words in the Powerflex program should not be seen to be a reproduction to a substantial extent of the literary or artistic work which constitutes the Dataflex program, irrespective of the significance these words have in the Dataflex language.[42]
This conclusion seems consistent with what seems to be the Full Court’s view that copyright protection for computer programs lies (primarily) in the source and object code which expresses the set of instructions. This view does not, with respect, lie easily with rulings upholding copyright in a telegram code[43] or the court’s own finding of infringement of a compression table discussed below.
Commentators have also found difficulty with the Full Court’s ruling that Powerflex’s re-use of the names of macros such as ‘report’, ‘entergroup’ and ‘enter’ did not infringe copyright either. The criticism has been that a macro is nothing more than a ‘mini’ computer program.[44] Despite the resemblance of the underlying code, the Full Court appears to have concluded that the copying was limited only to the name and functionality, both of which were not protected by copyright.[45]
Correspondence may also be found at the level of file structure. The file structure is how a computer program stores data such as a letter or other document created on a word processor or individual records such as a person’s medical history created on a database. Each of these data files must be stored consistently by any given program so that they can be used and displayed meaningfully.
If the data is to be used with another computer program, that other program must either use the same file structure or run some sort of conversion process by which the data is ‘translated’ from the first format to the new format. This has a vitally important practical consequence. If one cannot duplicate the file structure, it could be enormously expensive (if possible at all) to re-key the data from some in the new format. In Powerflex, the Full Court avoided the issue by noting that there was no evidence of any resemblance in either the source code or object codes of the respective programs. The Full Court concluded that the fact that there was functional identity, notwithstanding that it arose after long study of the plaintiff’s work, did not necessarily mean there was infringement. [46]
In Ibcos, however, Jacob J ruled that creation of a file transfer program (that is, a program which converts data from the plaintiff’s format to the format used by the defendant’s program) by using the file record layouts embodied in the source code did infringe the copyright in the plaintiff’s computer program.[47] His Lordship reached this conclusion after acknowledging the commercial impracticability of not providing file transfer capability. His Lordship also perceived a difference between using the file record layouts (which infringed) and deriving the information from the ‘ADS Manual’. Why this should be so is not entirely clear.
The Full Court’s ruling is obviously more persuasive in Australia. Neither decision, however, referred to the other and the basis of the Full Court’s reasoning does not necessarily exclude the result reached in Ibcos, although in Powerflex the Full Court did directly refer to, and discount, Powerflex’ long study of Dataflex in operation. While the ability to replicate file structures may be necessary for conversion or interpretability, therefore, it may not yet be clear that file structures clearly fall within the scope of unprotected idea.
Powerflex also copied a compression table embodied in the Dataflex program. This table comprised some 256 lines of source code or about 0.25% of PFXplus. Powerflex reproduced the table not by copying the table itself but by observing responses to certain stimuli. As in Autodesk, the Full Court found that copyright in the compression table as a compilation was infringed.[48]
Given the ruling in Autodesk, the Full Court’s finding in Powerflex is perhaps not surprising. However, it certainly raises a number of questions. As with the re-use of information about the file structure, reproduction of the compression table was a practical necessity if PFXplus was to be used on files created in Dataflex. Thus, it does not seem that Powerflex really endorses the view that copying necessary for interpretability is not an infringement. If so, it might have been arguable that any copyright in the table merged with the idea as there was only one way of expressing it.[49]
It is not clear why the claim to copyright in the Dataflex language as a compilation was treated differently to the compression table (apart from the suggestion that it may not have been raised at first instance). Perhaps it could be argued that there was no table in which the compilation was expressed as a whole, but then copyright owners might gain protection by the simple expedient of including such a table. If the table were created after the program, there might be questions about whether or not it had actually been copied or, if there were no table in the defendant’s program, possibly whether or not it had been reproduced. If the law is to become embroiled in questions of this sort, however, it will not provide the fundamental requirements of certainty. Moreover, as in Autodesk, one must question the substantiality of Data Access’ compression table.[50]
The idea/expression dichotomy is alive in the digital environment, but I am not so sure it will provide solutions to all the problems (if problems they be) which arise from treating computer programs as copyright subject matter.
There is considerable scope for the use of ‘ideas’ to rebut presumptions of copying; but, it is far from clear that our courts with their hostility to copying (particularly ‘wholesale’ copying) will be persuaded to find against infringement where there is a denial of copying and proof to the contrary.
If we are relying on the idea/expression dichotomy to promote or permit interpretability, we have real problems where the courts will find copyright in a file structure, compression or ‘look up’ tables. The rulings in Autodesk and Powerflex, therefore, highlight the very limited nature of the exception for decompilation proposed by the Copyright Law Review Committee.
[*] BA, LL B (Hons) Monash, Ph D (London); Partner, Mallesons Stephen Jaques.
[1] See e.g., Computer Edge Pty Ltd v Apple Computer Inc [1986] HCA 19; (1986) 6 IPR 1, 5—6 per Gibbs CJ.
[2] Hollinrake v Truswell [1894] UKLawRpCh 158; [1894] 3 Ch 420 at 427 per Lindley LJ. See also article 2 of the WIPO Copyright Treaty (Generva, 1996) (‘WCT’)
[3] LB (Plastics) Limited v Swish Products Limited [1979] RPC 551, 629 (HL); 1A IPR 359, 372.
[4] See James Lahore, Copyright and Designs, (Butterworths, Sydney, 1996), para. 4, 105.
[5] Sayre v Moore (1785) 102 ER 139n.
[6] See e.g. Kenrick v Lawrence [1890] UKLawRpKQB 63; (1890) 25 QBD 99; Hollingrake v Truswell, above at n.2. Francis Day and Hunter Ltd v Twentieth Century Fox Corporation Ltd [1940] AC 112; [1939] 4 All ER 192 (HL); GA Cramp & Sons Ltd v Frank Smythson Ltd [1943] AC 329 (HL); Green v Broadcasting Corporation of New Zealand (1989) 16 IPR 1, 24-5 (Privy Council).
[7] Francis Day & Hunter Ltd v Bron [1963] Ch 587 (UK CA); SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 5 IPR 13 (HCA); Computer Edge Pty Ltd v Apple Computer Inc. [1986] HCA 19; (1986) 6 IPR 1; Autodesk Inc v Dyason [1992] HCA 2; (1992) 173 CLR 330, 22 IPR 163.
[8] Sometimes it seems that proof of copying can be lead to prejudicial results on the question of sufficiency of resemblance.
[9] Nichols v Universal Pictures Corporation 45 F 2d 119, 121 (2d Cir 1930). Similar approaches can be seen in Anglo-Commonwealth cases like Harman Pictures NV v Osborne [1967] 1 WLR 725; Zeccola v Universal City Studios Inc [1982] FCA 241; (1982) 46 ALR 189 and, on appeal, AIPC 90-019.
[10] For example, US law has a different approach to what constitutes ‘originality’: contrast Feist Publications Inc v Rural Telephone Service Co Inc (1991) 21 IPR 129 to Interlego and Waterlow v Rose (1989) 17 IPR 493 (UK CA); it also appears to assess the originality of a work differently: contrast Computer Associates International Inc v Altai [1992] USCA2 1158; 982 F 2d 693 (2d Cir 1992) 23 IPR 385 to Richardson v Flanders and Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd (1994) 29 IPR 25, See further text below at notes 34-8. 39-40 and 48-9.
[11] [1979] RPC at 629—30; 1A IPR 359 at 372 (my emphasis).
[12] See the extensive citation of (old) cases in Harman Pictures NV v Osborne [1967] 1 WLR 725 and Waterlow Publishers Ltd v Rose (1989) 17 IPR 493 (UK CA).
[13] Ibcos 29 IPR at 49. See also Account Systems Pty Ltd v. CCH (1993) 27 IPR 133, 171 per Lochhart and Gummow JJ.
[14] Computer Edge v Apple (1986) 6 IPRI at 9-10 per Gibbs CJ, 24-6 per Brennan J, 29-31 per Deane J citing Cuisenaire v Reed [1963] VicRp 96; [1963] VR 719, 735-6.
[15] Id. at 10 (my emphasis).
[16] Autodesk v Dyason [1992] HCA 2; (1992) 22 IPR 163 at 164-5. See also, in the context of an artistic work, Roland Corporation v Lorenzo & Sons Pty Ltd [1991] FCA 617; (1991) 22 IPR 245, 252-3 per Pincus J, appeal to the Full Court on other grounds, sub nom. Lorenzo & Sons Pty Ltd v Roland Corp [1992] FCA 318; (1992) 23 IPR 376.
[17] Galaxy Pty Ltd v Sega Enterprises (1997) 37 IPR 462 at 470 per Wilcox J and see also at 475 per Lindgren J; Autospin (Oil Seals) Ltd v Beehive Spinning [1995] RPC 683 at 701 per Laddie J.
[18] Apart from the issue covered in the text, note the recommendations of the Copyright Convergence Group (‘CCG’) in Highways to Change, (Commonwealth of Australia, 1994) and see Ysolde Gendreau, ‘Digital Technology and Copyright: Can Moral Rights Survive the Disappearance of the Hard Copy?’ [1995] Ent. LRev 214.
[19] For example, Apple 6 IPR at 3-4 per Gibbs CJ; Altai 23 IPR at 389-90; Ibcos 29 IPR at 34-6.
[20] For a description of pseudocode, see Admar Computers Pty Ltd v Ezy Systems Pty Ltd [1997] FCA 853; (1997) 38 IPR 659.
[21] Autodesk [1992] HCA 2; 173 CLR 330 at 344; [1992] HCA 2; 22 IPR 163 at 171 per Dawson J; Powerflex Services Pty Ltd v Data Access Corporation [1996] FCA 460; (1997) 37 IPR 436 at 446 per Black CJ, Hill and Sundberg JJ. This simple proposition seems to explain why the plaintiff accounted so much difficulty in John Richardson Computers Ltd v Flanders [1993] FSR 497; 26 IPR 367 as the plaintiff sought to prove copyright infringement in the program by comparing computer displays.
[22] Id. at 171-2.
[23] See especially Computer Associates International Inc v. Altai [1992] USCA2 1158; 982 F2d 693 (2d Cir 1992); 23 IPR 385; Lotus Development Corporation v Borland International Inc [1995] USCA11 37; 49 F.3d 807; 33 IPR 233 (1st Cir 1995) and, generally, 3 Nimmer & Nimmer on Copyright ¤ 13.03 [F] (Rel. 42-6/97 Pub. 465).
[24] Ibcos 29 IPR 25 at 51. Ferris J dealt with a number of features in similar fashion in Richardson v Flanders 26 IPR 367.
[25] [1997] FCA 853; 38 IPR 659 at, respectively, 669-70 and 671.
[26] Id. at 667.
[27] Id. at 670.
[28] Ibcos 29 IPR at 48-51; Richardson v Flanders 26 IPR 367, 385-6. In Ibcos, there were some 335 program files, 171 record layout files and 46 screen layout files said to have been copied.
[29] Apple above at note 2.
[30] See text at notes 16-8 above and Ibcos 29 IPR at 51-8.
[31] 29 IPR especially at 51-2.
[32] Id. at 44 and for ‘toolkits’ and ‘shareware’ at 47. See also 3 Nimmer & Nimmer on Copyright ¤13.03[F], 13-115 (rel. 43-9/97 Pub. 465) and ¤13.03[F][3] and [4].
[33] Id. at 47.
[34] Id. at 44 and note the principle that ‘when the expression of an idea is inseparable from its function, it forms part of the idea and is not entitled to the protection of copyright’: Autodesk 173 CLR at 344-5, 22 IPR 171-2 per Dawson J. See also 3 Nimmer & Nimmer on Copyright ¤ 13.03[F][2]. Contrast, however, Ibcos 29 IPR at 39-9.
[35] Contrast Francis Day & Hunter Limited v. Bron [1963] Ch 587 (UK CA).
[36] [1992] USCA2 1158; 982 F 2d 693 (2d Cir 1992) 23 IPR 385.
[37] Ibid and see also 3 Nimmer & Nimmer or Copyright ¤13.03[F][1].
[38] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273; 1 All ER 465 at 469 per Lord Reid; but note Lord Peace at 481 referring to material which attracts copyright by reason only of its ‘collocation’.
[39] See also the comments in John Richardson Computers Ltd v Flanders [1993] FSR 497; 26 IPR 367 at 392 and Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd (1994) 29 IPR 25 at 48-9.
[40] Powerflex v Data Access [1996] FCA 460; (1997) 37 IPR 436. Leave to appeal has been granted by the High Court. Dan Hunter, ‘Copyright in computer languages after Powerflex’, Intellectual Property Forum (September 1997 Issue 30) 18.
[41] Id 450-1 (commands), 452-3 (group of commands) and 457-8 (function keys). See also Lotus v Borland [1995] USCA11 37; 33 IPR 233 (1st Cir 1995).
[42] Id. 453.
[43] Ager v. P&O Steam Navigation Co. [1884] UKLawRpCh 108; (1884) 26 ChD 637; Anderson v. Leiber Code Co. [1917] 2 KB 469.
[44] Hunter above at note 40 at 23.
[46] Id. 457.
[48] Powerflex 37 IPR at 455-7.
[49] See Autodesk 173 CLR at 344-5; 22 IPR at 171-2 per Dawson J; Powerflex 37 IPR at 447 and 452, but note the criticism of the principle in Ibcos 29 IPR at 38-9.
[50] See Peter Prescott, ‘Was AutocCAD Wrongly Decided?’ [1992] EIPR 191; Hunter above at note 40, at 22 and 23.
AustLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.austlii.edu.au/au/journals/JlLawInfoSci/1998/5.html