Acohs Pty Ltd v Ucorp Pty Ltd

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FEDERAL COURT OF AUSTRALIA

Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16

Citation: Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16
Appeal from: Acohs Pty Ltd v Ucorp Pty Ltd [2010] FCA 577
Parties: ACOHS PTY LTD (ACN 009 572 187) v UCORP PTY LTD (ACN 062 768 094) and BERNARD BIALKOWER
File number(s): VID 506 of 2010
Judges: JACOBSON, NICHOLAS AND YATES JJ
Date of judgment: 2 March 2012
Catchwords:

COPYRIGHT – literary work – originality – whether copyright subsists in HTML source code of material safety data sheets (MSDSs) rendered by computer program – whether work of joint authorship – where HTML source code is generated by computer program and includes data entered manually – whether copyright subsists in only part of the relevant copyright work

COPYRIGHT – literary work – originality – whether copyright subsists in MSDSs created by a process of transcription of third party MSDSs

COPYRIGHT – infringement – implied licence arising as a matter of law – scope of licence – where manufacturers, importers and suppliers of hazardous substances required to comply with legislative regimes for the provision of MSDSs – where first respondent reproduced appellant’s MSDSs in anticipation of receipt of customer requests for their provision

COPYRIGHT – infringement – whether appellant discharged onus to prove absence of licence in circumstances where primary judge found many MSDSs were the subject of a customer request for their provision and many were not – whether respondents carried an evidentiary burden to show acts falling within the scope of the implied licence found
Legislation: Copyright Act 1968 (Cth) ss 10, 14(1)(b), 35(6), 36, 196(3), 197(1)
Evidence Act 1995 (Cth) s 140
National Occupational Health and Safety Commission Act 1985 (Cth)
Occupational Health and Safety (Safety Standards) Regulations 1994 (Cth)
Cases cited:

Acohs Pty Ltd v R A Bashford Consulting Pty Ltd (1997) 37 IPR 542
Acohs Pty Ltd v Ucorp Pty Ltd (No 2) (2009) 82 IPR 493
Australian Broadcasting Commission v Australasian Performing Right Association Limited (1973) 129 CLR 99
Beck v Montana Constructions Pty Ltd (1963) WN (NSW) 1578
Blatch v Archer (1774) 1 Cowp 63
Breen v Williams (1996) 186 CLR 71
Byrne v Australian Airlines Limited (1995) 185 CLR 410
Castlemaine Tooheys Ltd v Carlton & United Breweries Ltd (1987) 10 NSWLR 468
Commonwealth v Verwayen (1990) 170 CLR 394
Concrete Pty Limited v Parramatta Design & Developments Pty Ltd (2006) 229 CLR 577
Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 86 FCR 154
Copyright Agency Limited v State of New South Wales (2008) 233 CLR 279
De Garis v Neville Jeffress Pidler Pty Limited (1992) 37 FCR 99
Devefi Pty Ltd v Mateffy Pearl Nagy Pty Ltd (1993) 113 ALR 225
Esso Australia Resources Limited v Plowman (1995) 183 CLR 10
Express Newspapers Plc v News (UK) Ltd [1990] 3 All ER 376
IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 239 CLR 458
Kalamazoo (Aust) Pty Ltd v Compact Business Systems…

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Details
Case
[2012] FCAFC 16
Decision Date

CaseChat Overview and Summary

The appeal before the court concerns a dispute between Acohs Pty Ltd (the appellant) and Ucorp Pty Ltd (the first respondent), with an additional respondent, the second respondent, also involved. The primary dispute revolves around the ownership and infringement of copyright in relation to Material Safety Data Sheets (MSDSs) and their HTML source code generated by the Infosafe system. The court was tasked with determining several legal issues, including whether copyright subsists in the HTML source code of MSDSs, whether the work is a joint authorship, and whether an implied licence existed for the reproduction of MSDSs under specific circumstances.

The court examined the originality and authorship of the HTML source code and the MSDSs themselves, finding that while the HTML source code was computer-generated, it incorporated human input in the form of MSDS content and formatting decisions. The court concluded that copyright subsists in the HTML source code, but only to the extent that it reflects original human authorship, specifically the HTML instruction tags and the unique assembly of these tags with other elements. Regarding the MSDSs created through a transcription process, the court determined that these too were original works, as the transcription involved more than mere copying, including decisions about content and format.

Regarding the implied licence, the court found that manufacturers, importers, and suppliers of hazardous substances had an implied licence to reproduce MSDSs in anticipation of customer requests, as required by legislative regimes. The court held that the appellant had not discharged the onus to prove the absence of such a licence, particularly as the primary judge found that many MSDSs were reproduced in response to customer requests while others were not. Consequently, the respondents bore the burden to demonstrate that their actions fell within the scope of the implied licence.

The court ordered that the parties submit draft orders within 14 days to give effect to the reasons for judgment, and granted leave for the parties to file written submissions on the question of costs, limited to four pages each. This order ensures that the court's decision is implemented effectively and that the issue of costs is addressed within a specified timeframe.

Orders

Orders of the court

1. The parties submit within 14 days draft orders giving effect to the reasons for judgment published today.

2. Leave be granted to the parties to file and serve within 14 days written submissions on the question of costs identified in the reasons for judgment, such submissions not to exceed, in each case, four pages in length.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

In order to understand the context in which the appeal is brought, it is necessary to set out some background facts which were the subject of findings by the primary judge. There was no challenge to these findings. BACKGROUNDAspects of the regulatory regime The primary judge (at [2]-[18]) gave a detailed exposition of the relevant legislative requirements for MSDSs as they exist under Commonwealth law and under the various regulatory regimes of the States and Territories. For the purposes of this appeal it is only necessary to record, by way of background, some milestones relating to those requirements, as they pertain to the format and content of an MSDS. The primary judge found (at [3]) that, originally, there was a certain degree of “ad hocery” about that format and content. However, in 1986 the National Occupational Health and Safety Commission established under the National Occupational Health and Safety Commission Act 1985 (Cth) (the NOHSC Act) published a “guidance note” which provided general instructions on how to compile an MSDS, with standard content and format, that was relevant and suitable for use in Australia. In 1994 the National Code of Practice for the Preparation of Material Safety Data Sheets (the 1994 preparation code) was published under the NOHSC Act. It was advisory only. It provided “general guidelines” for the preparation of MSDSs. It identified “core information” (essential information that should be included in an MSDS) and “conditional information” (information that should be included where relevant and available). The guidelines included a “recommended format” for an MSDS. This recommended format came to be known as the “4-section” or “4-header” format for MSDSs, referring to the fact that it comprised four main sections of substantive information. The 1994 preparation code was replaced in 2003 by the National Code of Practice for the Preparation of Material Safety Data Sheets, 2nd edition (the 2003 preparation code). It introduced a “16-section” or “16-header” format for MSDSs. Regulation 6.05(2) of the now Occupational Health and Safety (Safety Standards) Regulations 1994 (Cth) was amended to provide that an MSDS must be prepared in accordance with the 2003 preparation code. The primary judge (at [8]) accepted the following evidence given by Ian Cowie, the director of the appellant: The [4-header] structure and the 16 Header structure do not dictate the layout presentation and appearance of MSDS. In my experience, MSDS authored in accordance with each structure vary considerably in the way they look by reason of the author’s choice of formatting variables such as heading font sizes, spacing, underlining, type faces, the use of sub-headings and tables and many other variables.The Infosafe system The Infosafe system is the system by which the appellant authors, transcribes and supplies MSDSs. By using the expression “authors”, we do not seek to imply, without more, the notion of authorship for copyright purposes.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Thirdly, it submitted that, although finding that the programmers wrote the HTML instruction tags that were incorporated into the HTML source code and the routines that caused the instruction tags to be assembled into the source code of a particular MSDS, the primary judge, nevertheless, “mischaracterised the nature of the programmers’ contribution”. Consideration In order to understand the significance of these submissions, it is necessary to bear in mind the particular copyright works which the appellant advanced at trial. Paragraph 8(a) of the seventh further amended statement of claim identified, relevantly for present purposes, the copyright work, in each case, as being the source code of the HTML file for the MSDS rendered by the Infosafe system. The appellant particularised its claims in that regard by reference to a DVD which contained MSDS files “generated and rendered by the Infosafe system”. There can be no doubt that, in putting its case in that way, the appellant was confining its claims to the source code, in HTML format, for each identified MSDS as “generated and rendered by the Infosafe system”. In its particulars, the appellant drew a distinction between MSDSs that had been “authored” or “transcribed” wholly by it (in which it claimed copyright “in respect of all aspects of the MSDS other than the bare unformatted data therein”) and MSDSs “authored” by it and its licensees (in which it claimed copyright in “that part of the source code that determines the layout presentation and appearance of the MSDS”). It pointed to this last-mentioned statement in support of its submission that the primary judge erroneously assumed that it claimed copyright in the entire source code of each MSDS. However, this statement sits oddly – indeed, inconsistently – with the appellant’s identification of the copyright work, in each case, as being the source code generated and rendered by the Infosafe system. In this connection it is to be noted that the source code is generated by routines in the Infosafe program acting in combination to cause elements of the HTML source code for each MSDS to be collected from the CDB and assembled in a form such that, in that particular form of expression, a particular MSDS can be viewed on a user’s computer screen. The appellant’s copyright claims were not directed to each routine, considered as a separate copyright work, or to the separate tags, or to some combination of these discrete elements, but to the specifically assembled, computer-generated works that were, in each individual case, the bespoke HTML source code for a particular MSDS. The essence of the appellant’s case on appeal in this regard was that the HTML source code of each identified MSDS was simply a combination of “MSDS content” (namely, the specific data about a particular hazardous substance entered into the CDB of the Infosafe system by one of the appellant’s employees, agents or customers) and HTML instruction tags that were written into the routines. Thus, when the routines were run and the source code was assembled, it was possible to identify, within the particular source code that was generated, the instruction tags that had originally been inserted into the routines. The end point of this reasoning seems to be that, according to the appellant, copyright subsists in only part of the relevant copyright work, specifically the instruction tags taken from the routines in the course of the Infosafe program compiling the source code with other elements (such as the MSDS content) taken from the CDB.