Journal of Law, Information and Science
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ANNE FITZGERALD[*] AND CRISTINA CIFUENTES[**]
The first stage of copyright protection for computer software saw the enactment of legislation extending copyright to computer software, in the same category as literary works. The second stage has involved delineation of the appropriate scope of copyright protection for software which, as a functional and digital product, bears little resemblance to the literary works traditionally protected by copyright. In a series of cases, the Australian courts have made it clear that since copyright does not protect the function of software it is not an infringement to replicate non-literal elements such as functionality, provided it is achieved with independently written code and without copying of the expression of the original program. Limiting the scope of copyright protection in relation to literal copying of the program’s code has proved more difficult in the absence of a clear legislative direction to this effect. During the past year, the process of legislatively accommodating computer technology to copyright law has commenced, with the enactment of the Copyright Amendment (Computer Programs) Act 1999 (Cth) and the Copyright Amendment (Digital Agenda)Act 2000 (Cth). These statutes clarify the application of copyright law to computer software, introduce new exclusive rights and create several exceptions to the exclusive rights of software copyright owners.
Computer programs have been protected by copyright in Australia since 1984 when the Copyright Act 1968 (Cth) was amended to bring them within the category of literary works. The definition of “literary work” was extended to include “a computer program or compilation of computer programs” and a definition of “computer program” was inserted into the Act.[1] The 1984 amendments reflect the international consensus which emerged during that decade that copyright protection should be available for computer programs. This extension of the scope of copyright law has been confirmed in the Agreement on Trade-Related Aspects of Intellectual Property Rights[2] (the TRIPS Agreement) signed in 1994 as part of the outcomes of the Uruguay Round of world trade negotiations and the 1996 WIPO Copyright Treaty (the WCT). Each of these international agreements require computer programs to be protected by copyright as literary works.[3]
The extension of copyright to encompass computer software which occurred worldwide in the 1980s was done with reluctance in some quarters, arising out of the belief that copyright is poorly suited to utilitarian digital works. Well into the 1990s, there were still many advocates for the introduction of a sui generis form of protection for software.[4] The prevalence of this view in Australia is illustrated by the way the question was handled by the Copyright Law Review Committee (CLRC) in its broad-ranging enquiry which culminated in the publication of the Committee’s Final Report on Computer Software Protection (Final Report) in 1995.[5] Although the CLRC recommended that computer programs should continue to be protected by copyright as literary works,[6] it reached this conclusion hesitantly and in the face of its preferred option of introducing a new sui generis, copyright-like form of protection into Part IV of the Copyright Act 1968.[7] It was not until the Final Report that the CLRC accepted that Australia had no option but to commit to copyright as the main form of protection for software and that the possibility of introducing a sui generis regime had been foreclosed by the GATT Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). The TRIPS Agreement, concluded after the publication of the CLRC’s Draft Report in 1993, which requires computer programs to be protected as literary works, was seen as bringing an end to arguments about the appropriate form of protection.[8]
While the extension of copyright to computer software has become an entrenched principle of intellectual property law, the accommodation of protection for computer technology to copyright law has not been straightforward.[9] Much of the difficulty arises from the utilitarian nature of computer programs, as noted by the High Court in Data Access Corporation v Powerflex Services Pty Ltd:[10]
The amendment of the definition of “literary work” in s10(1) of the Act to include as item (b) “a computer program or compilation of computer programs” obviously marked a significant departure from what previously had been the understanding of what was required for subsistence of copyright in an original literary work. … The 1984 amendment departed from traditional principles by identifying for copyright purposes a species of literary work, the very subsistence of which requires an expression of a set of instructions intended to cause a device to perform a particular function.[11]
In determining the scope of protection conferred on computer programs by copyright, the questions which have arisen include:
• The extent to which non-literal elements of the program are protected;
• The extent to which copyright protects functional elements and protocols in computer programs;
• Whether program outputs such as screen displays and user interfaces are protected;
• The extent to which literal copying is permitted; and
• Whether reverse engineering is permitted.
In some areas, clear principles have emerged through decisions of the courts interpreting the statutory provisions. Firstly, copyright protection extends to both the source code and the object code of a computer program.[12] Secondly, copyright protects the expression of systems or methods in computer programs but it does not protect their functionality which falls within the province of the patent system.[13]
The question of whether copyright enables the owner to prevent the copying or adaptation of non-literal elements of the program, for example, where the original program’s functionality has been reproduced but there has been no literal copying or adaptation of the program’s code, was considered by Drummond J in Coogi Australia Pty Ltd v Hysport International Pty Ltd[14] and the High Court in Data Access Corporation v Powerflex Services Pty Ltd.[15] From these decisions it is clear that reproduction or adaptation does not occur where the functionality of a computer program or its underlying ideas are copied and "original code has been written to perform that function" but no translation of the code in the first program has been made.[16] The making of an adaptation involves an element of copying, but the “copying [is] of the code (the “expression … of a set of instructions”) rather than a copying of the idea or function underlying the code.”[17] Adaptation occurs when a computer program written in one program language is translated into another program language or where it is compiled or decompiled.[18] These decisions establish clearly that copying of non-literal elements of computer programs in order to replicate the underlying idea or function does not infringe copyright, provided none of the expression has been reproduced.[19]
An issue that has posed greater difficulties for the courts – both in terms of copyright law and jurisprudential theory - is the extent to which copyright prevents the copying of literal elements of the program code, by direct or indirect means. Problems arise in the digital context because any use of a digital work such as a computer program necessarily involves the making of an intermediate, temporary copy in the computer’s memory. The nature of software is such that its use inevitably involves copying or adaptation, albeit temporarily in the computer’s memory. If “reproduction” is interpreted literally or broadly, the copyright owner can exercise control over all uses of the software. The scope of copyright law is thereby effectively extended to the software’s functionality, which, as the High Court expressly recognised in Data Access v Powerflex[20], is properly a subject for the patent system. In the Copyright Law Review Committee’s enquiry into computer software protection, the Committee was of the view that the reproduction right was open to such an interpretation.[21]
The need to clarify the operation of copyright protection for software led the government to refer the question to the Copyright Law Review Committee (CLRC) for inquiry.[22] In October 1988, the federal government instructed the CLRC (then headed by Mr Justice Sheppard of the Federal Court) to inquire, inter alia, as to
[w]hether the Copyright Act 1968 as amended by the Copyright Amendment Act 1984, adequately and appropriately protects computer programs in human and machine readable forms…
In the course of its lengthy enquiry, the CLRC sought submissions from and consulted extensively with representatives of the information technology industry. The Committee’s Draft Report was released for public comment in June 1993[23] and interested parties were invited to make submissions on the conclusions and proposed recommendations. After considering submissions on the Draft Report, the CLRC delivered its Final Report on Computer Software Protection[24] to the government in late 1994 and it was published in April 1995[25].
The CLRC proposed numerous amendments to the Copyright Act in respect of copyright protection for computer software. On the whole, reaction to the Final Report was positive, with the Report welcomed as comprehensive and balanced. It was seen as providing the blueprint for the changes needed to ensure that Australia’s copyright laws provided appropriate and adequate protection for software. However, some of the CLRC’s recommendations attracted opposition from influential sections of the information technology industry, especially the large international software and hardware companies. These companies objected strongly to the CLRC’s recommendations concerning the introduction of limited exceptions to permit reverse engineering involving decompilation for purposes of obtaining information required for interoperability and to enable error correction.[26] While the ensuing events have not been publicly documented, it appears that following the delivery of the Final Report, the federal government was vigorously lobbied by representatives of major overseas software companies and the US government’s Trade Representative, urging against adoption of the CLRC’s recommendations.
For more than four years following the finalisation of the Computer Software Protection report, no observable action occurred in response to the CLRC’s recommendations. However, 1999 saw the re-emergence of the Final Report in a most surprising way. The introduction of the Copyright Amendment (Computer Programs) Bill 1999 was heralded by the government’s announcement of 23 February 1999 that it had resolved to legislate to give effect to the CLRC’s recommendations on exceptions to permit limited copying for purposes of interoperability, error correction (including remedying year 2000 compliance problems) and computer security testing.[27] The Computer Programs Bill was introduced into the Senate on 21 April 1999 and was enacted on 12 August 1999.[28] As well as creating specific exceptions to permit reverse engineering for interoperability, error correction and security testing, the Act introduced exceptions for black box reverse engineering, copying occurring in the normal use of the software in a computer and back-up copying. Considering the controversial nature of the CLRC’s recommendations relating to reverse engineering and the force with which they had earlier been opposed, the passage of the Computer Programs Act through the Senate and the House of Representatives was remarkably uneventful. Not only was the Bill not amended, but it was subject to little debate in either Chamber.[29]
Further CLRC recommendations relating to protection of computer programs were included in the Copyright Amendment (Digital Agenda) Bill 1999 (Digital Agenda Bill). This had been foreshadowed by the Copyright Reform and the Digital Agenda Discussion Paper (the Digital Agenda Discussion Paper), released by the Attorney-General’s Department and the Department of Communications, Information technology and the Arts in July 1997. The Digital Agenda Discussion Paper set out proposals for implementation of the 1996 WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, both of which relate to the protection of copyright content in the digital, networked environment. The WIPO treaties require parties to recognise a right of communication to the public by electronic means[30] and to provide adequate legal protection and effective remedies against the circumvention of effective technological measures used by authors to enforce their exclusive rights.[31] After considering submissions on the Discussion Paper, the government announced in April 1998 that it would introduce legislation to give effect to the Digital Agenda copyright reforms based on the WIPO treaties. An exposure draft of the Digital Agenda Bill was released for public comment on 26 February 1999[32] and a revised version was introduced into the House of Representatives on 2 September 1999. The Bill was referred almost immediately to the House of Representatives Standing Committee on Legal and Constitutional Affairs which tabled its Advisory Report on 6 December 1999. Following amendments on its passage through parliament, the Copyright Amendment (Digital Agenda) Act 2000 received assent on 4 September 2000 and takes effect on 4 March 2001.
The Digital Agenda Act 2000 amends the definitions of “computer program”, “literary work” and “reproduction in the Copyright Act 1968”.
The Copyright Amendment Act 1984 inserted the following definition of “computer program” into the Copyright Act 1968:
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.
The question of what constitutes a “computer program” for purposes of copyright law was considered by the High Court in Data Access Corporation v Powerflex Services Pty Ltd[33]:
[S]omething is not a “computer program” within the meaning of the definition in s10(1) unless it intends 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.” Thus, in the sense employed by the definition, a program in object code causes a device to perform a particular function “directly” when executed. A program in source code does so “after conversion to another language, code or notation.”[34]
In its Final Report, the CLRC recommended that a definition of “computer program’ should be retained in the Act, as removing it altogether would create uncertainty.[35] Moreover, the definition needed to be comprehensive and not unduly restrictive of future developments in programming languages. Accordingly, the CLRC recommended replacement of the current definition with one similar to that in s101 of the US Copyright Act 1976. The Digital Agenda Act gives effect to this recommendation, inserting a new definition of computer program which replicates that in the US Act:
computer program means a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.
By removing the words “(whether with or without related information)” following the words “set of instructions”, the new definition apparently seeks to clarify that “computer program” does not include data and other information not forming part of the statements or instructions used in the computer which cause it to perform a function. The extent to which data or related information can be regarded as forming part of the computer program exercised the High Court in Autodesk Inc[36] v Dyason and Autodesk v Dyason [No 2][37] and was considered again in Data Access v Powerflex.[38] Removal of the words in parentheses guards against an overly extensive interpretation being given to the concept of “computer program” and focuses attention on the requirement that there be some “algorithmic or logical relationship between the function desired to be performed” and the computer.[39]
For the purposes of Division 4A which creates exceptions to copyright protection for software, the meaning of “computer program” has been extended by the Digital Agenda Act which inserts s47AB providing that it includes:
…. any literary work that is:
incorporated in, or associated with, a computer program; and
(b) essential to the effective operation of a function of that computer program.[40]
The reason for the inclusion of s47AB is explained as follows in the Revised Explanatory Memorandum to the Digital Agenda Bill:
84. It was the Government’s intention in introducing Division 4A of Part III of the Act that the reproduction of computer programs be allowed for the limited purposes set out in that Division. The practical result of the decision in Data Access Corporation v Powerflex Services Pty Ltd & Ors is that any table or compilation associated with or incorporated in such computer programs may not be able to be reproduced. This could result in the computer program itself not being able to be reproduced under the limited exceptions.
85. [Section 47AB] will ensure that, wherever a person is permitted to reproduce a computer program for the purposes of normal use or study, making a back-up copy, making interoperable products, error correction or security testing, that person is also permitted to reproduce any literary work that is incorporated in, or associated with a computer program, which is essential to the effective operation of a function of that computer program.[41]
The definition of “literary work” in s10(1) was amended to give effect to the CLRC’s recommendation that the words “(whether or not in a visible form)” should be deleted.[42] The CLRC was of the view that the words were superfluous since the operation of ss32(1) and 22 and the existing definition of “material form” meant that copyright subsists in works stored in invisible form.
In its Final Report, the CLRC revisited the question of whether a definition of “reproduction” was needed, having concluded in the Draft Report that it was not.[43] On re-examining the issue in its Final Report in the light of submissions, the CLRC altered its position and recommended that “reproduction” be defined in the Copyright Act 1968 in order to clarify its meaning in relation to computer programs.[44] The need for clarification on the meaning of reproduction arises because of the relationship between the source code and object code versions of computer programs. Applying the existing definition of “adaptation”, the Committee was of the view that an object code version of a program produced by the compilation process from a program in source code is in fact an adaptation, rather than a reproduction, of the source code program.[45] The view that compilation or decompilation involves adaptation rather than reproduction was confirmed by the High Court in Data Access Corporation v Powerflex Services Pty Ltd.[46]
Since the object code and source code are closely related, the computer industry regards object code produced by the compilation process as a reproduction (rather than an adaptation) of the source code. The CLRC therefore concluded that the definition of reproduction should be amended to provide that, in relation to a computer program, reproduction includes the conversion of source code to object code by compilation and the conversion of object code to source code by decompilation.[47] This recommendation has been given effect by the Digital Agenda Act 2000. It inserts s21(5), deeming the kind of conversion which occurs in the course of compilation or decompilation of computer programs to be reproduction. A computer program will be deemed to have been reproduced if an object code version of the program is derived from the source code version by any process, including compilation, or where a source code version of the program is derived from the program in object code by any process, including decompilation. Any version of the program which is produced by such processes is taken to be a reproduction of the program.
As was recognised by the CLRC, defining “reproduction” in this way has the effect of narrowing the meaning of “adaptation” in relation to software. Since conversion from source code to object code and vice versa are now deemed to be reproduction, for adaptation there will need to be a language to language translation of the software at either the source code or object code level. “Adaptation” will occur where a different source code version of a program is produced in source code and where the translation occurs at the object code level, through the binary translation process.
Since computer programs are protected under the Copyright Act 1968 in the literary works category, the copyright owner can exercise all of the usual exclusive rights attaching to literary works[48], as well as the right to control the commercial rental of the program.[49] The Digital Agenda Act 2000 introduces a new exclusive right applying to copyright materials including literary works, the right to communicate the work to the public.[50] “Communicate” is defined as “make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject-matter.”[51] The Act does not define “to the public” apart from making it clear that it means “to the public within or outside Australia.” [52]
The introduction of this new exclusive right into the Copyright Act 1968 gives effect to Article 8 of the WIPO Copyright Treaty of 1996 which provides:
Right of Communication to the Public
Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorising any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.
Until recently, the most important of the copyright owner’s exclusive rights in respect of computer software have been those of reproduction and adaptation[53]. However, the development of new technologies and business models which enable computer programs to be sold or licensed over the internet means that the communication right will be increasingly important for owners of copyright in software. An example is the ASP (or Application Service Provider) model whereby ASPs deliver and manage software applications from remote data centres to multiple users via the internet or a private network.[54]
The Copyright Amendment (Computer Programs) Act 1999 inserted a new Division 4A, entitled “Acts not constituting infringements of copyright in computer programs”, into the Copyright Act 1968.[55] Further amendments to Division 4A have been effected by the Copyright Amendment (Digital Agenda) Act 2000.
Division 4A establishes exceptions to the copyright owner’s exclusive rights which can be categorised into two main groups:
1. those relating to incidental copying which occurs while software is being used and for making back-up copies;[56]
2. those permitting reverse engineering in defined circumstances.
Division 4A also contains some important provisions of general application which will be dealt with before proceeding to a description and analysis of the individual exceptions.
Section 47H expressly provides that an agreement or a provision in an agreement which excludes or limits (or has the effect of excluding or limiting) the operation of the new exceptions relating to back-up copying and reverse engineering[57] has no effect.[58] By nullifying agreements that purport to exclude the new exceptions, s47H makes it clear that the copyright owner cannot exempt itself from their operation by requiring licensees to accept contractual terms which exclude the exceptions. Section 47H is important in that it addresses concerns about the use of contract to override exceptions to copyright protection established by statute or judicial decision. Concerns about whether contracts can override established principles of intellectual property law have been raised in the US in the light of the decision in ProCD v Zeidenberg[59] and the work on the proposed Uniform Computer Information Transactions Act (UCITA) which is intended to apply to all contracts for transactions involving computer information.[60]
Where a computer program is reproduced or adapted under any of the Division 4A exceptions, the reproduction or adaptation of the program and any information derived from it are not to be used, sold or otherwise supplied to others except for the purposes specified in the exceptions. Where the reproduction or adaptation of the computer program is used for extraneous purposes without the consent of the copyright owner, it is treated as if the exceptions in Division 4A never applied. [61]
Each of the Division 4A exceptions is subject to the requirement that the relevant act – whether it is running the computer program or making a reproduction or an adaptation of it – has been “done by, or on behalf of, the owner or licensee of the copy.”[62] Typical of this requirement is the statement in relation to the exception permitting reproduction or adaptation of a computer program to make interoperable products, which requires the reproduction or adaptation to be “made by, or on behalf of, the owner or licensee of the copy of the program (the original program) used for making the reproduction or adaptation.”[63] It is arguable that this requirement introduces an unwarranted restriction on the Division 4A exceptions which will limit their application. Certainly, the requirement causes substantial problems in relation to the specific exception for security testing and severely restricts its operation.[64]
Although the Act nullifies contracts which exclude the operation of the Division 4A exceptions, the requirement that copying is done by or on behalf of the owner or a licensee of the copy of the program means that the exceptions are easily circumvented by licensing practices. In order for the exceptions to apply, the relevant reproduction or adaptation must be by the owner or licensee of the copy from which the reproduction or adaptation has been made. This means that any software producer wishing to avoid the exceptions simply needs to devise licensing practices aimed at ensuring that copies of its software are not sold or licensed to competitors. For example, a software developer may refuse to sell or licence its software to developers of competing or compatible products. Alternatively, a major international software developer may release a new version of its software which is licensed for distribution only in the US for the first six months, delaying release in Australia. This would result in the situation where any Australian software developer requiring access to interface specifications in order to proceed with work on compatible software or hardware to be used as an add-on when the software is released in Australia would only be able to do so using an unlicensed copy obtained from the US.
Piracy concerns appear to underlie the requirement in the exceptions that the copying be “done by, or on behalf of, the owner or licensee of the copy.” Some support for this observation is found in the fact that each of the exceptions is also subject to the express condition that it will not apply where the reproduction (or adaptation) is made from an infringing copy of the computer program.[65] “Infringing copy” is not defined. Piracy was an issue which occupied the CLRC in its deliberations on whether exceptions should be introduced to permit reverse engineering for interoperability, particularly if pirates were able to use the information obtained through decompilation to easily create clones of the original program. However, it is now understood that decompilation is not an easy task and that reverse engineering is not typically a tool of software pirates whose activities generally relate instead to direct copying of the object code. Rather, the justification for the introduction of the exceptions in Division 4A is to limit the scope of copyright protection in situations where a strict interpretation of the application of copyright to software would result in overly strong protection and stifle innovation.
The CLRC recognised that the reproduction right is arguably exercised whenever a computer program is used, since use normally involves the intermediate, temporary reproduction (in full or in part) of the program in the computer’s random access memory (RAM).[66] To avoid this kind of reproduction being regarded as infringing, the CLRC recommended amendment of the Copyright Act to provide that copyright is not infringed by copying of a computer program which is necessary or reasonable for normal use of the program.[67] The Committee saw no need to define or further clarify what was meant by “normal use.”[68]
This recommendation has been implemented in the new s47B inserted by the Computer Programs Act 1999, as amended by the Digital Agenda Act 2000. Reproduction occurring while the program is in use is exempted from infringement, subject to the conditions of the licence accompanying the program when purchased. Section 47B(1) provides that copyright in a computer program is not infringed by reproduction which occurs incidentally and automatically as part of the technical process of running a copy of the program for the purposes for which it was designed, provided that the running of the copy is done by, or on behalf of, the owner or licensee of the copy.
The wording of s47B(1) seeks to avoid the problems which would have arisen if the term “normal use” had been adopted, using instead the phrase “for the purposes for which the program was designed.” However, this exclusion does not apply if the reproduction is of an infringing copy of the program or where it occurs contrary to an express direction or licence given by or on behalf of the copyright owner to the owner or licensee of the copy from which the reproduction is made at the time it was acquired by the owner or licensee.[69]
Section 47B was amended by the Digital Agenda Act 2000 which inserted a new sub-section 47B(5) stating that, for the purposes of this section, “ reproduction, in relation to a computer program, does not include a version of the program of the kind referred to in paragraph 21(5)(b)”. In other words, the reproduction exempted by s47B does not extend to the derivation of a source code version of the program from the object code, by decompilation or other means, a process which is deemed to be reproduction by virtue of the operation of s21(5)(b).
Section 47C re-enacts the earlier s43A of the Copyright Act 1968 dealing with exemption from infringement for back-up copying. Section 43A permitted the owner of a copy of a computer program to make a back up copy to be stored and used in place of the original if the original was lost, destroyed or became unusable. The CLRC recommended that s43A be amended to bring it into line with normal practice which would allow the computer user to make a back up copy of a computer program to be used while the original is stored. Where the original or back up copy is destroyed or damaged, the surviving original or back up copy could be used to make another back up copy. [70] The CLRC also recommended that the Act be amended to provide that the making of an ephemeral copy of a computer program that is incidental to the normal back up copying of business data for security purposes does not infringe copyright. [71]
Section 47C, as introduced by the Computer Programs Act 1999 and amended by the Digital Agenda Act 2000, gives effect to the CLRC’s recommendations, bringing it into line with actual practice. Copyright is not infringed where a computer program and any other work or subject matter held together with it on the same computer system is reproduced by or on behalf of the owner or licensee of the original copy where the new copy is to be used only by or on behalf of the owner or licensee of the original copy, for the purpose of:
• using the new copy in place of the original copy while the original is stored;[72]
• storing the new copy for use in place of the original copy if the original copy is lost, destroyed or rendered unusable;[73] or
• using the new copy in place of the original copy or another copy made in accordance with these provisions, if the original other copy is lost, destroyed or rendered unusable.[74]
A replacement copy can be made whenever the original or a previously made back up copy is lost, destroyed or is rendered unusable.[75] Reproducing a computer program as part of the normal back-up copying of data for security against the possibility of damage to or destruction of the computer or system does not infringe copyright in the program, provided the reproduction is made by or on behalf of the owner or licensee of the original copy from which the reproduction is made.[76]
These exceptions do not apply where the reproduction is made from an infringing copy of the computer program;[77] where the copyright owner has designed the program so that it cannot be copied without modifying the program;[78] or where the licence governing the use of the program given at the time the owner of the original copy acquired it has expired or been terminated.[79] The Digital Agenda Act 2000 added a new sub-section 47C(6) which expressly excludes from the operation of s47C the kind of reproduction referred to in s21(5)(b), that is, the derivation of a source code version of a program from the object code version by a process such as decompilation.
Reverse engineering is the process of abstracting information from a lower level of abstraction to a higher one. In the context of computer software, it has traditionally been,[80] and still is,[81] associated with decompilation of computer programs, although decompilation is in fact only one means which can be used to reverse engineer software.[82] Different kinds of reverse engineering can be carried out depending on the level of abstraction chosen, whether object code, assembly code, source code or even design models.[83] A related term, reengineering, refers to the process of reverse engineering an existing system, followed by forward engineering involving translating it into a new form, whether at the same level of abstraction or higher.[84]
There are many reasons for carrying out reverse engineering of software. Some of the most common are:
• to create interoperable hardware or software;
• to remedy errors;
• to test the security of computer software or a computer system;
• to port software from one platform to another;
• to enhance program performance;
• to re-engineer legacy applications
• to assess the quality of databases; and
• to understand the ideas underlying the software.
Reverse engineering can be classified as either white box or black box based on the kind of analysis performed. Black box reverse engineering looks only at the behaviour of the program and its documentation without resorting to examination of the program’s internal code. Different inputs into the program are observed to produce different outputs. This is the kind of reverse engineering technique which as used by the defendants in both the Autodesk Inc. v Dyason (No.1)[85] and the Data Access Corporation v Powerflex Services Pty Ltd[86] cases. Using black box reverse engineering, the functionality of a program can be reproduced, with a different source code, without ever obtaining access to the source code of the original program. White box reverse engineering, on the other hand, involves looking at the internals of the program in order to understand its working. From a technical viewpoint, white box reverse engineering can be performed at a variety of levels of abstraction. At the lower level, binary or machine code can be translated into assembly code by a process known as disassembly. Assembly code can be translated to high-level language by decompilation.
In its computer software protection enquiry, the CLRC recommended that an exception should be created for black box reverse engineering not involving decompilation.[87] The CLRC also examined the question of whether reverse engineering involving decompilation should be permitted. (Note that throughout the Final Report the CLRC made no differentiation between disassembly and decompilation.) In the Final Report, the CLRC recommended that reverse engineering involving decompilation should be prohibited except to the extent that it is required for purposes of interoperability or error correction.[88] It rejected submissions that decompilation should be permitted for the purposes of:
• modifying a computer program for enhanced performance;[89]
• porting of a computer program from one platform to another;[90] and
• modifying a computer program to run on a network.[91]
In each of these instances, the Committee recommended that decompilation should be left for negotiation between the user and the copyright owner.[92]
Ideas underlying software are not protected by copyright, but since it will be necessary to run the software to ascertain those ideas, reproduction occurs in the course of running the software. To cover black box reverse engineering (not involving decompilation of object code) the CLRC recommended that the Copyright Act 1968 should be amended to allow the reproduction and study of computer programs in the circumstances contemplated by the 1991 EC Directive on the Legal Protection of Computer Programs[93]. Article 5(3) of the Directive provides:
The person having a right to use a copy of a computer program shall be entitled, without the authorisation of the rightholder, to observe, study or test the functioning of the program in order to determine the ideas and principles which underlie any element of the program if he does so while performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do.
Under the exception introduced by the Computer Programs Act 1999 and amended by the Digital Agenda Act 2000, copyright is not infringed by reproduction which occurs “incidentally and automatically …. as part of the technical process of running a copy of the program for the purpose of studying the ideas behind the program and the way in which it functions”.[94] The exception is subject to the conditions discussed above, that is, that the running of the copy must be done by or on behalf of the owner or licensee of the copy[95] and it has no application where the reproduction is made from an infringing copy of the program.[96] To make it clear that the reproduction permitted by s47B(3) does not extend to decompilation of the object code to source code, the Digital Agenda Act 2000 added a new sub-section 47B(5) which specifically excludes the kind of reproduction referred to in s21(5)(b).
Technical interoperability of software or hardware is required when a computer program has to be able to operate with another program or hardware device in order to be able to perform a particular function. An example of interoperable software is an operating system, where the functions to access the hardware via the operating system are provided in its interface. If the interface is clearly defined, systems programmers will have sufficient information to build applications dependent on the operating system without the need for reverse engineering. Where the interface information is not disclosed it can only be obtained through reverse engineering, which can be done using either black box or white box techniques.
In the Final Report, the CLRC recommended that decompilation should be permitted where it is necessary to achieve the interoperability of an independently created computer program or hardware device with other programs or hardware devices, provided:
• the decompilation is performed by the owner of a lawfully acquired copy of the program or another person with a right to use the copy or on their behalf by a person authorised to do so;
• the information necessary to achieve interoperability has not previously been readily available; and
• the acts are confined to those necessary to achieve interoperability.[98]
This recommendation on decompilation for interoperability resembles and is clearly influenced by Article 6 of the EC Directive on the Legal Protection of Computer Programs which provides that decompilation involving reproduction and adaptation of code is permitted if it is “indispensable to obtain the information necessary to achieve the interoperability of an independently created computer program with other programs.”[99] The CLRC’s recommendation went further than the Directive in that it extended to encompass compatibility of software with hardware as well as with other software. The rationale for extending the exception to hardware was explained in the Explanatory Memorandum to the Computer Programs Bill 1999:
The CLRC advised that limiting the scope of permitted decompilation to the development of interoperable software would not be realistic due to technological change. Furthermore, it would appear that decompilation for purposes of interoperability between software and hardware is permissible in the USA. Therefore, if decompilation for the purposes of interoperability between software and hardware was not permitted, Australian software producers might find themselves still at a disadvantage in the market compared to US producers.[100]
The CLRC’s recommendations relating to decompilation for interoperability were also intended to bring the Australian law in this respect closer to the position which had by then been reached in the US through a series of court decisions, principally on the basis of the fair use provisions of s107 of the Copyright Act 1976 (US).[101] In the landmark decision in Sega Enterprises Ltd v Accolade, Inc.,[102] the Court of Appeals for the Ninth Circuit held that:
Where disassembly is the only way to gain access to the ideas and functional elements embodied in a copyrighted computer program and where there is a legitimate reason for seeking such access, disassembly is a fair use of the copyrighted work, as a matter of law.
In its Final Report, the CLRC expressed support for the principle established in Sega, which it saw as offering guidance on how Australian copyright law might be amended to deal with reverse engineering. However, the CLRC did not regard these US cases as assisting in the interpretation of the fair dealing provisions in s40 of the Copyright Act 1968 which are narrower in their application than the fair use provisions in s107 of the US statute. Rather than relying on the fair dealing provisions as the basis for copying required for interoperability, the CLRC recommended the insertion of a specific exception, along the lines of Article 6 of the EC Directive.
The CLRC’s recommendations have been given effect in s47D which was inserted by the Computer Programs Act 1999. It exempts from infringement reproduction or adaptation of a computer program for the purpose of obtaining information necessary to enable the owner or licensee, or a person acting on behalf of the owner or licensee, of the original program to independently make a new program or a device to connect to and be used together with, or otherwise to interoperate with, the original program or any other program.[103] The reproduction or adaptation must be made only to the extent reasonably necessary to obtain the required information[104] and the information must not be readily available to the owner or licensee of the software from any other source at that time.[105] As with the other exceptions created by the Computer Programs Act 1999, the reproduction or adaptation must be made by or on behalf of the owner or licensee of the copy of the original program from which the reproduction or adaptation is made, and it must not be done from an infringing copy.[106]
Any new program which reproduces or adapts the original program is to do so only to:
the extent necessary to enable the new program to connect to and be used together with, or otherwise interoperate with, the original program or the other program.[107]
Although this provision is not without ambiguity, it appears to envisage the copying or adaptation of parts of the interface which are essential to achieve compatability and the incorporation of those parts into the new program.[108] If this is the correct interpretation of s47D(1)(d), it addresses the problem caused by the decision of the Full Federal Court in Powerflex Services Pty Ltd v Data Access Corporation,[109] which was recently confirmed by the High Court in Data Access Corporation v Powerflex Services Pty Ltd.[110] The High Court upheld the Full Court’s finding that the compression table in the Dataflex software - one of many which could be constructed using the Huffman compression algorithm - was protected by copyright as a compilation. Indirect copying, not involving decompilation, of the Dataflex compression table into the PFXplus software was held to infringe copyright, even though an exact copy of the table was required if files developed with one program were to be compatible with the other software system. The implications of this finding for the software industry in relation to producing compatible products was recognised by the High Court, although it regarded the resolution of the problem as being one for the legislature.[111] It appears that s47D(1)(d) has gone a considerable way to overcoming the problems raised by the Data Access cases in relation to copying of parts of interfaces which are required for interoperability, although it remains to be seen how it will be interpreted by the courts.
Permitting the user of a computer program to reverse engineer to correct errors is not difficult to justify, particularly where the owner is not able to fix the error within a reasonable time or at a reasonable price or has gone out of business. There is a degree of scepticism about how much error correction can be done without a copy of the source code. However, for a skilled reverse engineer it is not difficult to ‘debug’ object code and fix parts of the program. The need for software users to have rights to correct errors has been recognised for some time, as is demonstrated by the inclusion of error correction provisions in the 1991 EC Directive. Reverse engineering for error correction is permitted where it is necessary to enable a computer program to be used by the “lawful acquirer in accordance with its intended purpose”, although this provision can be excluded by contract.[112]
In its Final Report, the CLRC reconsidered its draft recommendations on decompilation for error correction and proposed amendment of the Copyright Act to provide that decompilation of a program for error correction does not infringe copyright where an error-free version cannot be obtained within a reasonable time at a normal commercial price.[113] Immediately following the publication of the CLRC’s Final Report, its recommendation concerning decompilation for purposes of error correction received little attention.
However, in the ensuing years, the issue of error correction assumed much greater significance because of the increasingly urgent need to carry out work to render software y2k compliant. In the context of work needed for y2k remediation, the Garnter Group estimated that many organisations were missing 3-5 per cent of their source code portfolios, and that in some cases as much as 20 per cent was missing. This meant that a medium sized information systems organisation with a software portfolio of 30-50 million lines of code could easily be missing a million lines or more.[114] Companies had to review all of their operational software in order to make it y2k compliant and where the source code no longer existed it had to be recreated, by a process such as decompilation. Indeed, recognition of the need to carry out decompilation without the copyright owner’s permission in order to recover source code required for y2k remediation appears to have been a key factor in the government’s decision to give effect to the CLRC’s recommendation on an error correction exception.[115] The CLRC’s recommendation was given effect by the Computer Programs Act and the error correction exception was given retrospective effect from 23 February 1999 in order to validate y2k compliance work from the date on which the government announced its intention to introduce the amendments.
Copyright is not infringed by the reproduction or adaptation of a computer program for the purposes of correcting an error in the original program which prevents it from operating (in conjunction with other software or with hardware):
as intended by its author; or
in accordance with the specifications or other accompanying documentation supplied with the original copy.[116]
According to the Explanatory Memorandum, this provision would not extend to adapting the original software to run on a platform for which it was not designed.[117]
The reproduction or adaptation can be done only to the extent that is reasonably necessary to correct the error, provided a correctly functioning copy is not available within a reasonable time at an ordinary commercial price.[118] In common with the other exceptions, the reproduction or adaptation must be done by or on behalf of the owner or licensee of the original copy used for making the reproduction or adaptation[119] and it does not apply where the reproduction or adaptation is made from an infringing copy.[120]
Security testing is becoming increasingly important for ensuring the security of computers and computer networks in the global networked environment of the internet. Since counteracting or protecting against viruses and back doors requires decompilation, it is necessary to ensure that an exception for copyright protection applies in this situation so that copyright infringement concerns do not hinder or compromise legitimate security testing activities. On a day to day basis, security testing organisations are required to examine:
• Pirated software;
• Software developed by a recognised software vendor which has been modified by an intruder to fulfil some other purpose (that is, a Trojan horse); and
• Software developed by an intruder or hacker to exploit a vulnerability in a computer program or system (an attack tool, such as a computer virus).
To understand program vulnerabilities and how viruses and Trojan horses work, security organisations perform reverse engineering. Once it is understood how the program works, a solution to it can be provided in the form of a patch or a press release can be issued setting out the steps to be followed to prevent unauthorised access to or contamination of a computer. The 1988 Internet Worm program propagated to thousands of machines worldwide, shutting down military and educational sites before a solution was found. University of Berkeley researchers used disassembly techniques to understand how the worm worked and were then able to provide a solution.
Copying and adaptation of the computer software without the permission of the owner or licensee of the original will frequently be necessary. Often, the reproduction or adaptation will have to be made from an infringing copy of the program in that it is one which has been made without the authorisation of the copyright owner. Security testing is done not only on intruder software, but is often used to identify vulnerabilities in commercial software marketed by major vendors. While security testing organisations usually seek and obtain permission from the copyright owner to carry out the necessary copying, it will not always be possible to do so. Security testing organisations receive software for testing from a variety of sources and it would be impracticable to require them to ensure that every piece of software is not derived from an infringing copy or has been made by the owner or licensee of the original program. Much of the work done by security testing organisations is time critical and requiring them to ascertain copyright ownership and obtain permission to copy or adapt the software would impose unreasonable constraints on their activities.
In the lengthy deliberations leading up to the Digital Agenda legislation, there was no public consideration of the need for an exception to permit copied required for bona fide computer security testing activities. The legality of reverse engineering for purposes of security testing was not raised in the Digital Agenda Discussion Paper of mid-1997. However, in late 1998 and early 1999, submissions to the Attorney-General’s Department and the Department of Communications, Information Technology and the Arts highlighted concerns about the restrictions which would be imposed on the activities of bona fide security testing organisations operating in Australia if the Digital Agenda reforms were to take the form proposed in the Digital Agenda Discussion Paper.
Attention was drawn to the US experience in implementing the provisions of the WIPO Copyright Treaty dealing with circumvention of technological protection mechanisms. Article 11 of the WIPO Copyright Treaty[121] requires parties to effectively prevent circumvention of technological measures used by authors to preserve copyright and to outlaw the circumvention of technological protection measures used by copyright owners to prevent unauthorised copying. During the deliberations on the Digital Millennium Copyright Act (DMCA) in the US in 1998 it became apparent that unless the anti-circumvention provisions were subject to express exclusions, the activities of those engaged in encryption research and the security testing of computer software and networks would be effectively outlawed. In the original form of the Digital Millennium Copyright Bill when it was introduced into Congress, s1201 provided for a “sweeping ban on circumvention devices, regardless of whether they actually [were] used for infringing purposes” as well as prohibiting circumvention of devices which control access to copyrighted works, irrespective of whether infringement results.[122]
Submissions from computer security experts and researchers emphasised that national security would be at risk if the anti-circumvention provisions were enacted without appropriate exceptions. The outcome was that the DMCA as enacted on 28 October 1998 provided for several exceptions to the anti-circumvention provisions[123] in order to permit a range of activities, including:
• Reverse engineering for interoperability;[124]
• Encryption research;[125]
• Protection of personally identifying information;[126] and
• Computer system security testing.[127]
In February 1999, the Minister for Communications, Information Technology and the Arts and the Attorney General announced that the Copyright Act 1968 (Cth) would be amended to introduce limited exceptions to permit copying of computer programs for purposes of creating interoperable software or hardware and for error correction, including y2k compatability. In addition, the legislation was to include an exception to permit reverse engineering required for security testing. While the introduction of exceptions for interoperability and error correction had been recommended by the CLRC in its 1995 Final Report on Computer Software Protection and had been extensively debated, the issue of security testing had not previously been canvassed at all in any public document or forum.
The WIPO Copyright Treaty provisions relating to circumvention of technological protection mechanisms have been given effect in Australia by the Digital Agenda Act. The Digital Agenda Act amends the Copyright Act 1968 by inserting a new s116A and amending s132 to deal with the unauthorised circumvention of effective technological protection measures which have been applied to copyright materials. Submissions on the exposure draft of the Digital Agenda Bill circulated for public comment in February 1999 drew attention to the importance of ensuring that the exceptions relating to computer software created by the Computer Programs Act were also carried across to the anti-circumvention provisions. Unless the anti-circumvention provisions were made subject to such exceptions they would provide overly strong protection to the owner of copyright in materials to which a technological protection mechanism has been applied. In other words, it would be necessary to adopt a similar approach to that taken in the US in the enactment of the DMCA in 1998 whereby specific uses are excluded from the provisions relating to anti-circumvention devices and services.
Section 47F, inserted into the Copyright Act 1968 by the Computer Programs Act 1999, introduced an exception for security testing. It provides that copyright in a computer program is not infringed by the making of a reproduction or an adaptation of the program for the purpose of:
• Testing in good faith the security of the original copy or a computer system or network of which the original copy is a part;[128] or
• Investigating, or correcting, in good faith a security flaw in or the vulnerability to unauthorised access of the original copy or of a computer system or network of which the original copy is a part.[129]
The reproduction or adaptation is not to go beyond what is reasonably necessary to achieve one of these purposes[130] and is only permitted where the information obtained is not otherwise available to the owner or licensee of the software from another source at that time. [131]
While these provisions restrict the usefulness of the exception created by s47F, its effect is almost negatived by the requirements that the reproduction or adaptation be made by or on behalf of the owner or licensee of the copy of the program used to make the reproduction or adaptation[132] and that it cannot be done from an infringing copy of the computer program.[133] The problem that arises is that in many cases security testing must be carried out on infringing copies of programs but it is often not known whether a program is an infringing copy until after the event. In a typical situation it is not possible for a security testing organisation to know what kind of software it is looking at until it embarks upon the analysis. Where a security testing organisation is examining a Trojan horse or an attack tool, it may have to reproduce or adapt the computer program contrary to the provisions of ss47F(1)(a) and (2). In the case of an attack tool or a Trojan horse developed or adapted by an intruder, the author is invariably difficult or impossible to identify, making compliance with s47F(1)(a) a practical impossibility.
Section 47F (and, by incorporation, ss116A and 132) are based on a flawed understanding of what is involved in computer security testing. Section 47F is deficient in that it creates a security testing exception which comes into operation only where the computer program is copied or adapted by or on behalf of the owner or licensee of the original copy[134] and where the copy or adaptation is not made from an infringing copy of the computer program.[135] No protection is available under s 47F (and therefore items 116A(3), 116(4), 132(5G) and 132(5H)) if security testing is conducted on an infringing copy of a program.[136] Section 47F will not cover many of the activities of security testing organisations and the range of security testing activities which it covers will be very restricted.
In view of the fact that the Digital Agenda Act creates new civil and criminal copyright infringement provisions, the scope of the permitted exceptions must be appropriately delineated and clearly described. The penalties for criminal infringement of the anti-circumvention provisions will be severe: up to five years’ imprisonment and fines of up to $60,500 for an individual and $302,500 for a corporation.[137] The severity of these penalties will cause security testing organisations to curtail their activities unless the area within which they are permitted to operate is clearly delineated.
Section 47F of the Copyright Act 1968 should be amended to remove the requirement for security testing to be done by or on behalf of an owner or licensee of a program. The legitimacy of security testing should not depend upon whether the program being tested is being copied or adapted by or with the authorisation of the copyright owner or licensee. Rather, the question of whether the security testing is legitimate should be determined on the basis of a non-exhaustive list of factors to be considered by the courts.
These problems with s47F in the form in which it was enacted in the Computer Programs Act were acknowledged by the House of Representatives’ Standing Committee on Legal and Constitutional Affairs in its Advisory Report on the Copyright Amendment (Digital Agenda) Bill 1999.[138] The Committee agreed that s47F is too narrowly drafted and in its present form prohibits activities which security testing organisations need to perform.[139] It concluded that s47F should be amended to permit security testing to be done without the permission of the owner or licensee, and on infringing copies of programs.[140]
Specifically, the Standing Committee on Legal and Constitutional Affairs recommended that s47F(1)(a) be deleted and that s47F(1)(d) be replaced with:
(1)(d) the information resulting from the making of the reproduction or adaptation is not readily available from another source when the reproduction or adaptation is made.[141]
Further, the Committee recommended that the existing s47F(2) be replaced with the following:
(2) Subject to this Division, the copyright in a work that is in electronic form (the original copy) is not infringed by the making of a reproduction or adaptation of the work if:
(a) the reproduction is made for the purpose of investigating in good faith the security threat posed to a computer system or network by the introduction of the original copy into the system or network; and
(b) the reproduction or adaptation is made only to the extent reasonably necessary to achieve a purpose referred to in paragraph (a); and
(c) the information resulting from the making of the reproduction or adaptation is not readily available from another source when the reproduction or adaptation is made.[142]
There is no doubt that the amendments effected by the Computer Programs Act 1999 and the Digital Agenda Act 2000 have gone a long way towards bringing Australian law into line with that in the US and Europe. They also assist software developers by providing much clearer guidelines about the scope of copyright protection. However, a disadvantage of legislating for specific exceptions to the exclusive rights is that constant vigilance must be exercised to ascertain whether further exceptions are required in the light of technological developments. The difficulties inherent in enacting specific, case-by-case exceptions so as to legislatively craft copyright protection for software leads to the question of whether it would be preferable to introduce more broadly described provisions to be interpreted by the courts in accordance with statutory guidelines.
Such an approach was advocated by the (re-constituted) Copyright Law Review Committee in its September 1998 report, Exceptions to the Exclusive Rights of Copyright Owners.[143] The CLRC recommended the consolidation of all the existing fair dealing provisions into a single section. In their place, the Committee proposed the introduction of an “open-ended” model of fair dealing which refers to the current exclusive set of fair dealing purposes but is not limited to them.[144] The Committee recommended that the non-exclusive set of factors which are presently considered only in relation to fair dealing for research or study should be applied generally to all fair dealings.[145] Further, the CLRC recommended that its proposed new fair dealing model should apply to all of the exclusive rights subsisting in copyright, including the new right of communication to the public.[146] The open-ended fair dealing provision put forward by the CLRC is similar to the fair use provisions in s107 of the US Copyright Act 1976.
A broader technology-neutral fair use provision as recommended by the CLRC has much to commend it. While lacking the certainty of specific exceptions, it avoids the problem identified by the High Court in Data Access v Powerflex[147] of requiring the limits to statutory proprietary rights to be developed legislatively rather than judicially. A general US-style fair use provision offers the advantages of flexibility and responsiveness. It would enable the courts to develop the law case-by-case as advances occur in technology, whereas well-defined specific exceptions are destined to require continuing piecemeal amendment in the light of technological developments.
[*] Solicitor, Gadens Lawyers, Brisbane; LLB(Hons)(Tas), LLM(Lond.), LLM(Col.). afitzgerald@gadens.com.au
[**] PhD(QUT); Sun Microsystems Research Labs, Palo Alto, Ca. And Department of Computer Science and Electrical Engineering, University of Queensland. Cristina.cifuentes@eng.sun.com
[1] Copyright Act 1968, s10(1)
[2] 15 December 1993 (1994) 33 ILM 83
[3] TRIPS Agreement, Art 10(1); WIPO Copyright Treaty, Art 4
[4] A Christie, Re-writing the Rules on the Form and Protection of Computer Software, (1993) 4 Journal of Law & Information Science 224; A Christie, Designing Appropriate Protection for Computer Programs, [1994] 11 EIPR 486; P Samuelson et al, A Manifesto Concerning the Legal Protection of Computer Programs, (1994) 94 Colum. L. Rev. 2308
[5] Copyright Law Review Committee, Computer Software Protection: Final Report, Office of Legal Information and Publishing, Attorney-General’s Department, Canberra, April 1995 (ISBN 0 642 20830)
[6] Final Report, paras 2.03 and 4.14
[7] Copyright Law Review Committee, Draft Report on Computer Software Protection, Attorney-General’s Department, Canberra, June 1993, para 4.25
[8] Final Report, para 4.05
[9] In Data Access v Powerflex [1999] HCA 49; (1999) 166 ALR 228, the High Court commented on the “difficulties which arise from accommodating computer technology protection to principles of copyright law”: para 25.
[10] [1999] HCA 49; (1999) 166 ALR 228
[11] [1999] HCA 49; (1999) 166 ALR 228, paras 21 and 25
[12] Autodesk v Dyason (No. 1 ) [1992] HCA 2; (1992) 173 CLR 330
[13] Data Access v Powerflex (1999) 166 ALR 288, paras 20, 21, 23
[14] [1998] FCA 10; (1998) 157 ALR 247; 41 IPR 593
[15] [1999] HCA 49; (1999) 166 ALR 228
[16] Data Access v Powerflex [1999] HCA 49; (1999) 166 ALR 228, paras 109, 110
[17] Data Access v Powerflex [1999] HCA 49; (1999) 166 ALR 228, para 110
[18] Data Access v Powerflex [1999] HCA 49; (1999) 166 ALR 228, para 107; Note that the definition of “reproduction” to be inserted by the Copyright Amendment (Digital Agenda) Bill 1999 deems reproduction to occur where code is compiled or decompiled.
[19] For more on this point, see D Webber, Intellectual Property in Internet Software in A Fitzgerald, B Fitzgerald, C Cifuentes and P Cook, Going Digital 2000: Legal Issues for E-Commerce, Software and the Internet, Prospect Media, Sydney, 2000
[20] Data Access Corporation v Powerflex Services Pty Ltd [1999] HCA 49; (1999) 166 ALR 228, para 20
[21] Final Report, paras 9.07 and 10.07. Note that the same view of the reproduction right was taken by the US Working Group on Intellectual Property Rights of the Information Infrastructure Task Force, which released its white paper, Intellectual Property and the National Information Infrastructure in September 1995. The Working Group referred to three cases (MAI System Corp. v Peak Computer, Inc., [1993] USCA9 1079; 991 F. 2d 511 (9th Cir. 1993), cert. denied, 114 S. Ct 671 (1994); Advanced Computer Services v MAI Systems Corp., 845 F. Supp. 356 (ED Va. 1994); Triad Systems Corp. v Southeastern Express Co., 1994 US Dist. LEXIS 5390 (ND Cal. 1994), aff'd [1995] USCA9 2631; 64 F. 3d 1330 (9th Cir. 1995) ) as support for the statement that it has "long been clear under US law that the placement of copyright material into a computer's memory is a reproduction of that material”: White Paper at 68. The Working Group proceeded on the basis that the reproduction right will cover most appearances of a copyrighted work in a computer including those which involve temporary storage in the computer's random access memory (RAM): White Paper at 64-65.
[22] The CLRC at that time was headed by Mr Justice Sheppard of the Federal Court.
[23] Copyright Law Review Committee, Draft Report on Computer Software Protection, June 1993.
[24] Copyright Law Review Committee, Final Report on Computer Software Protection, Office of Legal Information and Publishing, Attorney-General’s Department, Canberra, April 1995 (ISBN 0 642 20830 1).
[25] Copyright Law Review Committee, Computer Software Protection: Final Report, AGPS, Canberra, 1995. The full text of the report can be viewed at: http://www.agps.gov.au/customer/agd/clrc/sware/index.html
[26] Final Report, paras 2.22 and 10.25
[27] Copyright changes to help Australian software industry, Press release by Sen. The Hon Richard Alston, Minister for Communications, Information Economy and the Arts and the Hon Daryl Williams QC, Attorney-General, 23 February 1999.
[28] Act No. 105/1999; Assent 24 August 1999.
[29] See the second reading of the Bill, Parliamentary Debates, House of Representatives, Official Hansard, 11 August 1999 at 8479.
[30] WIPO Copyright Treaty 1996, Art. 8; Note that the WIPO Performances and Phonograms Treaty 1996, Art. 10, simply requires that “producers of phonograms shall enjoy the exclusive right of authorising the making available to the public of their phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them.”
[31] WIPO Copyright Treaty 1996, Art. 11; WIPO Performances and Phonograms Treaty 1996, Art. 18.
[32] Copyright laws for the 21st century, Press release by Sen. The Hon Richard Alston, Minister for Communications, Information Economy and the Arts and the Hon Daryl Williams QC, Attorney-General, 26 February 1999.
[33] [1999] HCA 49; (1999) 166 ALR 228.
[34] Data Access Corporation v Powerflex Services Pty Ltd [1999] HCA 49; (1999) 166 ALR 228, para 62.
[35] Final Report, paras 2.04(b) and 6.25.
[36] [1992] HCA 2; (1992) 173 CLR 330.
[37] [1993] HCA 6; (1993) 176 CLR 300.
[38] Data Access Corporation v Powerflex Services Pty Ltd [1999] HCA 49; (1999) 166 ALR 228, paras 60 – 63.
[39] Data Access Corporation v Powerflex Services Pty Ltd [1999] HCA 49; (1999) 166 ALR 228, para 62.
[40] Copyright Act 1968, s47AB.
[41] Revised Explanatory Memorandum, Copyright Amendment (Digital Agenda) Bill 2000, 31 August 2000, paras 84 and 85.
[42] Final Report, para 2.04(a).
[43] Draft Report, para 6.27.
[44] Final Report, paras 2.04(e), 6.55 and 6.76.
[45] Final Report, para 6.61.
[46] [1999] HCA 49 at para 107.
[47] Final Report, paras 2.04(e) and 6.76.
[48] Copyright Act 1968, s31(1).
[49] Copyright Act 1968, s31(1)(a) and (d).
[50] Copyright Act 1968, s 31(1)(a)(iv).
[51] Copyright Act 1968, s10(1).
[52] Copyright Act 1968, s10(1).
[53] “Adaptation” is defined in relation to a computer program as being “a version of the work (whether or not in the language, code or notation in which the work was originally expressed), not being a reproduction of the work”: Copyright Act 1968, s10(1).
[54] See All About ASP at <http://allaboutasp.org/faqs.cfm>
[55] Copyright Act 1968, ss47B(3) and (4), 47D, 47E, 47F.
[56] Copyright Act 1968, ss47B(1) and (2), 47C.
[57] Copyright Act 1968, ss47B(3), 47C, 47D, 47E or 47F.
[58] Copyright Act 1968, s47H.
[59] 86 F. 3d 1447 (7th Cir. 1996).
[60] P Samuelson and K Opsahl, Licensing Information in the Global Information Market: Freedom of Contract Meets Public Policy [1999] EIPR 386.
[61] Copyright Act 1968, s47G.
[62] Copyright Act 1968, ss47B(1)(b), (3)(b), 47C(1)(a), 47C(2)(a), 47D(1)(a), 47E(1)(a) and 47F(1)(a).
[63] Copyright Act 1968, s47D(1)(a)
[64] See Computer Security Testing infra
[65] Copyright Act 1968, ss47B(2)(a), (3)(b), 47C(4)(a), 47D(2), 47E(2) and 47F(2)
[66] Final Report, paras 9.07 and 10.07
[67] Final Report, paras 2.15, 10.10 and 10.12
[68] Final Report, para 10.12
[69] Copyright Act 1968, s47B(2)
[70] Final Report, paras 2.17 and 10.15
[71] Final Report, paras 2.20 and 10.18
[80] H Schwartz, The Case for Reverse Engineering (1984) 3 Business Computer Systems 12 at 22-25
[81] B Behrens and R Levary, Practical Aspects of Software Reverse Engineering (1998) 41 Communications of the ACM 2 at 27-29
[82] A Fitzgerald and C Cifuentes, Pegging Out the Boundaries of Computer Software Copyright: The Computer Programs Act and the Digital Agenda Bill, in A Fitzgerald, B Fitzgerald, C Cifuentes and P Cook (eds), Going Digital 2000: Legal Issues for E-commerce, Software and the Internet, Prospect Media, Sydney, 2000; See also C Cifuentes, The Impact of Copyright on the Development of Cutting-Edge Reverse Engineering Technology, Proceedings, Working Conference on Reverse Engineering (October 1999), IEEE-CS Press, 1999 and Proceedings of the Australasian Intellectual Property Conference (March 1999), Coolangatta, Southern Cross University School of Law and Justice, 1999.
[83] E Chikofsky and J Cross, Reverse Engineering and Design Recovery: A Taxonomy, (1990) 7 IEEE Software 13
[84] R Arnold, Software Reengineering, IEEE Computer Society Press, Los Alamitos, CA, 1993
[85] [1992] HCA 2; (1992) 22 IPR 163
[87] Final Report, paras 2.30 and 10.96
[88] Final Report, paras 2.22 and 10.25
[89] Final Report, para 10.59
[90] Final Report, para 10.68
[91] Final Report, para 10.62
[92] Final Report, paras 10.59, 10.62 and 10.68
[93] Council Directive 91/250, 1991 OJ (L 122)
[94] s47B(3)(a)
[95] s47B(3)(b)
[96] s47B(4)
[97] See A Fitzgerald and C Cifuentes, Interoperability and Computer Software Protection in Australia, [1998] Computer & Telecommunications Law Review 271
[98] Final Report, paras 2.23 and 10.58
[99] Directive 91/250 OJ 1991 L122/42
[100] Explanatory Memorandum to the Copyright Amendment (Computer Programs) Bill 1999 at para 3.2
[101] See Sega Enterprises Ltd v Accolade, Inc., [1993] USCA9 19; 977 F.2d 1510 (9th Cir. 1992); Computer Associates International Inc. v Altai Inc., 23 U.S.P.Q. 1241 (2d Cir. 1992); Bateman v Mnemonics, Inc., [1996] USCA11 1157; 79 F.3d 1532 (11th Cir. 1996)
[102] [1993] USCA9 19; 977 F.2d 1510 (9th Cir. 1992)
[103] s47D(1)(b)
[104] s47D(1)(c)
[105] s47D(1)(e)
[106] s47D(1)(a) and (2)
[107] s47D(1)(d)
[108] Explanatory Memorandum to the Copyright Amendment (Computer Programs) Bill 1999, para 15
[109] [1996] FCA 460; (1997) 37 IPR 436
[110] [1999] HCA 49 (30 September 1999)
[111] [1999] HCA 49 at para 125
[112] Art 5(1) of the EC Directive provides: “In the absence of specific contractual provisions, the acts referred to in Article 4(a) and (b) shall not require authorisation by the rightholder where they are necessary for the use of the computer program by the lawful acquirer in accordance with its intended purpose, including for error correction.”
[113] Final Report, paras 2.27(a), 10.75 and 10.85
[114] L Freeman, Don’t Let Missing Source Code Stall Your Year 2000 Project, year 2000 Project Survival Guide, 1997
[115] Explanatory Memorandum to Computer Programs Bill 1999, para 1.1
[116] s47E(1)(b)
[117] Explanatory Memorandum to the Copyright Amendment (Computer Programs) Bill 1999, para 17
[118] s47E(1) (c) and (d)
[119] s47E(1)(a)
[120] s47E(2)
[121] See also to similar effect, the 1996 WIPO Performances and Phonograms Treat y, Art 18
[122] J Band, The Digital Millennium Copyright Act: A Balanced Result [1999] EIPR 92; see also J Band, Summary of the DMCA, at www.arl.org
[123] Digital Millennium Copyright Act 1998, s1201(a)(1); See Appendix – selected provisions of the Digital Millennium Copyright Act 1998 (US)
[124] s1201(f)
[125] s1201(g)
[126] s1201( i)
[127] s1201(j)
[128] s47F(1)(b)( i)
[129] s47F(1)(b)( ii)
[130] s47F(1)( c )
[131] s47F(d)
[132] s47F(1)(a)
[133] s47F(2)
[134] s47F(1)(a)
[135] s47F(2)
[136] Section 47F(2), Copyright Act 1968.
[137] Copyright Act 1968, s132(6A)
[138] tabled 6 December 1999; see:
<http://www.aph.gov.au/house/committee/laca/digitalagenda/contents.htm>
[139] House of Representatives’ Standing Committee on Legal and Constitutional Affairs, Advisory Report on the Copyright Amendment (Digital Agenda) Bill 1999, para 4.65
[140] Ibid at para 4.66
[141] Ibid at para 4.67
[142] Ibid at para 4.67
[143] Copyright Law Review Committee, Simplification of the Copyright Act, Part 1: Exceptions to the Exclusive Rights of Copyright Owners, AusInfo, September 1998
[144] Ibid, paras [2.01] and [2.03]
[145] Ibid, para [2.04]
[146] Ibid, para [2.13]
[147] [1999] HCA 49; (1999) 166 ALR 228
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