Acohs Pty Ltd v Ucorp Pty Ltd - [2010] FCA 577

FEDERAL COURT OF AUSTRALIA
Acohs Pty Ltd v Ucorp Pty Ltd [2010] FCA 577

Citation: 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: VID 873 of 2004

Judge: JESSUP J

Date of judgment: 10 June 2010

Catchwords:
INTELLECTUAL PROPERTY – Copyright – Literary work – Originality – Source code generated by computer program – Whether original literary work – Whether work of human author – Whether work of authors in collaboration – Whether contribution of each author separate from that of others.

INTELLECTUAL PROPERTY – Copyright – Literary work – Material Safety Data Sheet generated electronically from database each time viewed on computer – Whether constitutes original copyright work – Whether constitutes a compilation.

INTELLECTUAL PROPERTY – Copyright – Material Safety Data Sheet – Data entered into electronic database by transcription – Whether new work thereby created original.

INTELLECTUAL PROPERTY – Copyright – Whether an electronic database can be regarded as literary work – Whether data selected by applicant – Whether original work in nature of compilation.

INTELLECTUAL PROPERTY – Copyright – Infringement of copyright – Reproduction – Material Safety Data Sheets required to be provided for hazardous substances and dangerous goods – Ready access required to be given – Copying contemplated by regulations – Electronic access contemplated – Where copyright subsists in Material Safety Data Sheets, whether reproduction implicitly licensed by law.

Legislation: Copyright Act 1968 (Cth) ss 10, 21, 32, 35, 78, 79
National Occupational Health and Safety Commission Act 1985 (Cth)
Occupational Health and Safety (Safety Standards) Regulations 1994
Dangerous Goods Safety Management Regulations 2001 (Qld)
Dangerous Goods Safety (Storage and Handling of Non-explosives) Regulations 2007 (WA)
Dangerous Goods (Storage and Handling) Regulations 2000 (Vic)
Dangerous Substances (General) Regulations 2004 (ACT)
Occupational Health and Safety Regulations 2001 (NSW)
Occupational Health, Safety and Welfare Regulations 1995 (SA)
Occupational Health and Safety Regulations 2007 (Vic)
Occupational Safety and Health Regulations 1996 (WA)
Workplace Health and Safety Regulations (NT)
Workplace Health and Safety Regulation 2008 (Qld)
Workplace Health and Safety Regulations 1998 (Tas)

Cases cited: Acohs Pty Ltd v R A Bashford Consulting Pty Ltd (1997) 144 ALR 528
Acohs Pty Ltd v Ucorp Pty Ltd (No 2) (2009) 82 IPR 493
Beck v Montana Constructions Pty Ltd (1963) 5 FLR 298
Express Newspapers plc v Liverpool Daily Post and Echo plc (1985) 5 IPR 193
IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458
Ladbroke (Football), Ltd v William Hill (Football), Ltd [1964] 1 All ER 465
Lamb v. Evans [1893] 1 Ch 218
Redwood Music Ltd v B Feldman & Co Ltd [1979] RPC 385
Roland Corporation v Lorenzo and Sons Pty Ltd (1991) 22 IPR 245
Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2010] FCA 44
T R Flanagan Smash Repairs Pty Ltd v Jones (2000) 172 ALR 467
Victoria Park Racing and Recreation Grounds Co Ltd…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2010] FCA 577
Decision Date

CaseChat Overview and Summary

The applicant, Acohs Pty Ltd, sued the first respondent, Ucorp Pty Ltd, and the second respondent, Bernard Bialkower, for alleged infringement of copyright, for declarations, damages and injunctions for alleged breaches of ss 52 and 53 of the Trade Practices Act 1974, in passing off, and for alleged infringement of trade mark. Only the copyright aspects of Acohs’ claims were pursued at trial. The respondents denied that the things in which the applicant claimed copyright were literary works, and denied that they were original works of which employees of Acohs were the authors. In the alternative, they said in relation to some of the so-called works that the copyright, to the extent that it existed, was assigned to Acohs’ customers. They said that, if they did reproduce any works in which Acohs held copyright, they did so pursuant to an implied licence. The court dismissed Acohs’ claims against both respondents. The court found that the source codes for the MSDS files, whether authored or transcribed by Acohs’ staff, or authored by Acohs’ MIS customers, were not original literary works in which Acohs held copyright. The court found that there was no original literary work as described by Acohs as the “Blackwoods Compilation”, and that Acohs did not own the copyright therein. The court found that the MSDSs authored (but not transcribed) by Acohs’ staff were original literary works in which Acohs held the copyright, and that Ucorp reproduced those that are listed in Acohs’ particulars. The court rejected the proposition that Ucorp did so without the licence of Acohs as copyright owner.

Orders