The Full Federal Court (Jacobson, Nicholas and Yates JJ) has largely upheld Jessup J’s ruling, but with a noteworthy limitation on the scope of implied licences.
Acohs and Ucorp both provide in competition with each other Material Safety Data Sheets (MSDSs) which are required by law to identify the properties, uses and hazards of dangerous chemicals.
At first instance, Jessup J found Acohs owned copyright in the MSDSs which had been written by its employees, but not by employees of third parties. His Honour also held that copyright did not subsist in the HTML source code of the MSDSs in its collection: the employees who prepared the software to generate the source code were not collaborating with those who subsequently entered the data in the sense necessary to constitute a work of joint authorship.
The Full Court has upheld these conclusions.
Jessup J also held that Ucorp could claim the benefit of an implied licence which permitted it to reproduce the MSDSs in which Acohs held copyright.
Acohs did not challenge the existence of an implied licence on appeal (after all, it has the benefit of a similar implied licence arising from the earlier litigation against Bashford). There was, however, an important difference in this case.
Ucorp copied several thousand MSDSs each week. At least some of these were made in response to requests from customers who had the benefit of an implied licence from Acohs. The copies made by Ucorp in response to such requests were protected by the implied licence.
However, Ucorp also “trawled” the internet looking for any other MSDSs and, when it found ones it did not already have stored, it downloaded them so as to have them available if a customer came along with a request for one. As these were not made in response to a request, but rather in anticipation of a request (which might never be made), they fell outside the scope of the implied licence. The Full Court reasoned that the licence that would be implied could be the bare minimum necessary and it was only necessary that a licence be implied in favour of customers who placed a request with Ucorp for a copy. The “trawling” could not be sanctioned.
Thus, Ucorp will be found liable for infringing the copyright in all those MSDSs which it reproduced without a specific request from a customer before the copy was made.
Two additional points:
First, Bennett J has adopted a similarly strict approach to the scope of the “interoperability” defence for infringement of copyright in computer programs. ISI made software that enabled users of CA’s Datacom database system to convert to IBM’s DB2 system. Section 47D protects reproductions made (for the relevant interoperability purpose) by the owner or licensee of copyright in a computer program or someone acting on their behalf. Bennett J found that ISI was not acting “on behalf” of such licensees when it made reproductions of “macros” used in the Datacom system for its commercial 2BDDB2 program as they were not made in response to specific requests from customers before the reproduction was made: CA Inc v ISI (starts around ).
Secondly, the Full Court does not appear to have been too happy with the licence Merkel J implied in the original Acohs v RA Bashford litigation at :
The apparent acceptance by the parties of the correctness of Bashford has important ramifications for this appeal. As the parties conducted both the trial before the primary judge and the present appeal on that basis, the occasion does not arise for us to proceed otherwise than in accordance with, and to the extent of, that acceptance. In so proceeding, we do not wish to be taken as endorsing the correctness of all aspects of that decision.
Perhaps, the new reference to the ALRC cannot come soon enough.
Acohs Pty Ltd v Ucorp Pty Ltd  FCAFC 16