Copyright

Case Note: Data Access Corporation v Powerflex Services Pty Ltd

John Lambert
Oct 1999

This case first appeared on the Lancaster Buildings website

In this appeal the highest court of Australia considered whether a computer program could consist of a single command and what constitutes a “substantial part” of a computer program for the purpose of infringement. These issues had arisen in England in such cases as Total Information Processing Services Ltd. v Daman Ltd. [1992] FSR 171 and IBCOS Computers Ltd. v Barclays Mercantile Highland Finance Ltd. [1994] FSR 275. Although the High Court referred several time to publications by members of the English Bar the only English decision it explored was Pumfrey J’s judgment in Cantor Fitzgerald International v Tradition (UK) Ltd [2000] RPC 95 .

The Facts
Data Access Corporation (“Data Access”) owned the copyright in a system of computer programs known as "Dataflex". The system incorporated:

	a program development system, which provided means to write, edit, compile and run programs under development;
	a computer programming language known as the "Dataflex language", which was an application development language in which the source code for all Dataflex programs was written or generated;
	a compiler program which translated Dataflex source code, using the program development system, into an internal format which could then able be run by the runtime program; and
	a runtime program, the executable program required to run the compiled application programs developed using the program development system.

The third respondent, Dr David Bennett ("Dr Bennett") had created and marketed an application development system compatible with the Dataflex language and file structure originally called "Powerflex" but later known as "PFXplus.”  The language used various commands, macros and other "reserved words" used in “Dataflex” in exactly the same way so that anyone familiar with Dataflex could also use “PFXplus”. Dr. Bennett created “PFXplus” by a process of reverse engineering and study of the documentation and operation of “Dataflex”. His source code was quite different from that of the “Dataflex” system. Nevertheless, Data Access sued Dr. Bennett, his company and others in the Federal Court for copyright infringement alleging that he had reproduced its macros and other “reserved words” as well as a database known as the “Dataflex Huffmann compression table”.

Decisions Below
At first instance, Jenkinson J found for the claimant in Data Access Corporation v Powerflex Services Pty Ltd (1996) 63 FCR 336 but the Full Court reversed his decision in Powerflex Services Pty Ltd v Data Access Corporation (No.2) (1997) 75 FCR 108 at 132 in respect of the reserved words and macros but not in respect of the database. Data Access appealed to the High Court against the Full Court’s decision while Dr. Bennett and his company applied for permission to challenge the finding in respect of infringement of copyright in the database.

Data Access’s Contentions
Data Access argued before the High Court that:

	copyright subsisted in each of the “reserved words” as a "computer program" as defined by s.10 (1) of the Australian Copyright Act;
	copyright also subsisted in the collocation of the “reserved words” comprising the Dataflex language as a "computer program";
	alternatively, even if the collocation of “reserved words” was not itself a literary work, it nevertheless formed a substantial part of the Dataflex system which was a literary work so that copying those words infringed copyright in the Dataflex system; and
	copyright subsisted in the table or compilation of “reserved words” in the Dataflex User's Guide on the footing that it was a literary work within the meaning of section 10 (1) of the Act.

Definition of a “Computer Program”
The Court broke down the statutory definition of "computer program" provided by s.10 (1) of the Act into the following components:
(i) "an expression,"
(ii) "in any language, code or notation,"
(iii) "of a set of instructions (whether with or without related information)"
(iv) "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"
(v) "a device having digital information processing capabilities to perform a particular function."

The “Reserved Words”
Data Access submitted that each “reserved word” met the components of the statutory definition in that:

	it was the relevant "expression" for the purposes of the definition (the term "expression" being used to preserve the distinction between a set of instructions and the manner in which it is expressed in a particular programming language which choice of expressions for words and commands is determined by the author of the language);
	each “reserved word” was in a “code or notation”, that is to say, the Dataflex language;
	each “reserved word” expressed “a set of instructions”, such set being either the underlying set of instructions in source code, or the meaning and syntax of the word or command in question, and
	each “reserved word” was in a high level language intended, after conversion into a lower level language, to cause a computer ("a device having digital information processing capabilities”) to perform a particular function.

The Court rejected those submissions. In its opinion, none of the “reserved words” satisfied the statutory definition. Although each “reserved word” was undoubtedly in "code or notation" the definition of a "computer program" required an

"expression ... of a set of instructions ... intended ... to cause a device having digital information processing capabilities to perform a particular function".

As each of the “reserved words” was a single word, none was a set of instructions and none of them was intended to cause a computer to perform a particular function.

The Collocation of “Reserved Words”
The Court also rejected the claimant’s contention that the collocation of the “reserved words” was a "computer program". Although such words together formed "an expression ... of a set of instructions", their simple listing together, without more, did not cause a computer to perform any identifiable function. There was no interrelationship of the instructions with one another as an expression of a logical or algorithmic relationship between an identifiable function and the physical capabilities of the computer via the medium of the Dataflex language. The fact that the collocation of reserved words provided a programmer with the vocabulary to program in Dataflex was irrelevant because the statutory definition of a "computer program" required a set of instructions that causes a computer to perform a particular function.

Substantial Part
This is the part of the case that is of most interest to British readers. S.14 (1) (b) of the Australian Act, like s.16 (3) (a) of the Copyright, Designs and Patents Act 1988, provides that "a reference to a reproduction ... of a work shall be read as including a reference to a reproduction ... of a substantial part of the work". The claimant argued that the Dataflex system was a computer program and hence a literary work for the purpose of the Act. Even if the collocation of reserved words was not itself a literary work, it constituted a substantial part of the Dataflex system.

The High Court had previously held in Autodesk Inc. v Dyason No 1 [1992] RPC 575 that it was not necessary for the reproduction of a substantial part of a computer program itself to be a computer program. Relying on that reasoning, the appellant contended that its copyright had been infringed because the collocation of reserved words was a substantial part of the Dataflex system. In Autodesk substantiality had been equated with indispensability but that view had been questioned. Pumfrey J observed in Cantor Fitzgerald that it

"would result in any part of any computer program being substantial since without any part the program would not work, or at best not work as desired".

In his dissenting judgment in Autodesk No 2, Mason CJ said:

“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 (e.g., novels, films, dramatic works) but as means to an end (e.g., compilations, tables, logos and devices)."

The High Court echoed that approach:

“There is great force in the criticism that the ‘but for’ essentiality test which is effectively invoked by the majority in Autodesk No 2 is not practicable as a test for determining whether something which appears in a computer program is a substantial part of it. For that reason, we prefer Mason CJ's opinion that, in determining whether something is a reproduction of a substantial part of a computer program, the "essential or material features of [the computer program] should be ascertained by considering the originality of the part allegedly taken."

Having already decided that a computer program must intend to express, either directly or indirectly, an algorithmic or logical relationship between the function desired to be performed and the physical capabilities of the "device having digital information processing capabilities", it followed that the originality of what had been taken had to be assessed with respect to the originality with which it expressed that algorithmic or logical relationship. Relevant considerations included the structure of what had been taken, its choice of commands, and its combination and sequencing of commands, when compared, at the same level of abstraction, with the original. As the reserved words were irrelevant to the structure, choice of commands and combination and sequencing of the commands in source code but were mere literal strings which could be replaced by any other literal string, they were not a substantial part of the Dataflex program. Even when the reserved words are considered as a collocation, they could not possess sufficient originality as data to constitute a substantial part of the Dataflex system.

Macros
The Court held that although macros fell outside the statutory definition of a computer program it was possible for the underlying source code to qualify as such. Whether it did so in a particular case was a question of fact which the Court did not have to consider in this case because the trial judge had found no evidence of reproduction. His Honour found that Dr. Bennett had studied the Dataflex commands and had tried to write something similar. That could not constitute infringement since copyright protects ideas and not expression.

Dataflex Huffman Compression Table
Huffman compression is a method of reducing the amount of memory space consumed by data files. It stores characters in a data file as bit strings which have a length that relates to the character's frequency of occurrence in the data file. If a character occurs frequently in the data file, it is stored as a bit string of shorter length than a character which occurs infrequently in a data file. The Huffman algorithm, when expressed in source code, analyses a data file to determine the relative frequency of the occurrence of characters, and then assigns a bit string of appropriate length to each character, depending on its frequency of occurrence. It was expressed as a table, “A” being represented by so many bit strings, “B” by so many others and so on. In order for his language to be compatible with Dataflex, Dr. Bennett had to replicate that table. He did so by writing a program that isolated the bit strings of each character and reconstructing the Dataflex compression table from the results. Despite granting the defendants special permission to appeal, the High Court affirmed the Federal Court’s finding that the Dataflex Huffman compression table was a “literary work” which had been reproduced without the author’s licence.

The High Court recognized the inconvenience of its decision:

“The finding that the respondents infringed the appellant's copyright in the Huffman table embedded in the Dataflex program may well have considerable practical consequences. Not only may the finding affect the relations between the parties to these proceedings, it may also have wider ramifications for anyone who seeks to produce a computer program that is compatible with a program produced by others. These are, however, matters that can be resolved only by the legislature reconsidering and, if it thinks it necessary or desirable, rewriting the whole of the provisions that deal with copyright in computer programs.”

The Court dismissed the cross-appeal with costs.

Relevance to the United Kingdom
The Australian Copyright Act 1968 (as amended by the Copyright Amendment Act 1984) differs from the CDPA in that it contains a definition of the term “computer program” but no permitted act equivalent to s. 50B. That section entitles a lawful user of a copy of a program to convert it into a version expressed in a higher level language in order to obtain the information necessary to create an independent program for operation with the decompiled, or some other, program. The absence of a statutory definition spares an English court the scholastic exercise of determining whether a reserved word, macro or collocation of reserved words constitutes a computer program though it would still have to decide whether copyright could subsist in such works. The High Court’s equation of substantiality with originality is undoubtedly useful and in line with such decisions as Warwick Film Productions Ltd. v Eisinger [1969] 1 Ch 508 and Exxon Corporation v Exxon Insurance Consultants International Ltd. [1982] Ch 119. The decision on the cross-appeal is troubling in that the Court seems to have replication with reproduction. If two photographers take a picture of the same subject from the same point, using the same camera, at approximately the same time on the same day, the results should be identical. However, neither picture is a copy of the other. Dr. Bennett’s method of identifying the Dataflex Huffman compressions was to run two programs that he was perfectly entitled to use in order to generate data for his own table. That does not seem conceptually different from taking a photograph of the same scene as a copyright work. Moreover, he would have an argument in England under section 50B.

 

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