Data Access Corporation v Powerflex Services Pty Ltd and ORS M46/1997 [1997] HCATrans 427 (12 December 1997)

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry

Melbourne No M46 of 1997

B e t w e e n -

DATA ACCESS CORPORATION

Applicant

and

POWERFLEX SERVICES PTY LTD

First Respondent

POWERFLEX CORPORATION PTY LTD

Second Respondent

DAVID MEREDITH BENNETT

Third Respondent

MARGARET ANN BENNETT

Fourth Respondent

DEMILEIGH PTY LTD

Fifth Respondent

Application for special leave to appeal

BRENNAN CJ

McHUGH J

GUMMOW J

TRANSCRIPT OF PROCEEDINGS

AT MELBOURNE ON FRIDAY, 12 DECEMBER 1997, AT 12.26 PM

Copyright in the High Court of Australia

______________________

MR J.W.K. BURNSIDE, QC: If the Court pleases, I appear with my learned friend, MR S.L. LeGRAND, for the applicant. (instructed by Stephens)

MR R.C. MACAW, QC: May it please the Court, I appear with my learned friend, DR J.F. BLEECHMORE, for the respondents. (instructed by Trumble Szanto Braham)

BRENNAN CJ: Yes, Mr Burnside.

MR BURNSIDE: If the Court pleases, the application and the summary identify five questions for special leave. They can be resolved really into three questions and I want to concentrate principally on two of them. Can I take the Court first to the clearest statement of the questions for special leave at application book page 152. The first two questions are articulated starting at line 20 and the third question is articulated at line 25, but the second and third really can be dealt with together and I will deal with them together shortly. On page 153 the - - -

GUMMOW J: In a way what is involved is this definition of "computer program", is it not, and the phrase "a set of instructions"?

MR BURNSIDE: Yes, the second and third questions both really raise that same question of the definition. The fourth and fifth questions on page 153 are really two facets of the same question, namely, what is the meaning of the word "adaptation" so far as it relates to a computer program in the special definition that is given in the Act?

The two questions on which I want to concentrate and address the Court particularly, although we rely on what is in the written summary, are the first and the fourth and fifth together. The first question is whether, in circumstances where the copyright work is a computer language program, reproduction of the reserved words of that language will constitute reproduction of a substantial part of that program. The second question is the meaning of "adaptation".

In order to understand the first question, it is obviously necessary to understand a little of what a computer language is. The evidence showed, and it seems clear on the judgments that the court accepted, the computer language is simply a program which in its operation enables the user to write other programs using the vocabulary of that language. The language written by the applicant was called Dataflex. It has a vocabulary of 270 words approximately. The program which implements the language defines and prescribes what each word will do when it is used in another program and the way in which the word must be used if it is to be used successfully. That has been referred to at both levels as the meaning on the one hand and the syntax on the other hand of each of the words in the language.

BRENNAN CJ: Could you just repeat that for me.

MR BURNSIDE: Yes. In the program which is the subject of the claim for copyright protection, the program itself identifies each of the words which are available in the language, 270 of them approximately. The principal program that implements the language is called a compiler and the job of the compiler is to take another program written using the language of the program and to convert the various words of the language in that new program into lower level instructions which will ultimately cause a computer to perform the steps set out in the program written by the user in the language written by the applicant.

BRENNAN CJ: Could I ask you whether I am right in this respect. Let us assume that there are two words, "cut" and "paste". I use them because I am slightly familiar with those terms. If you have "cut" and "paste", if you use those severally or together, they will produce a certain result if you are using a computer.

MR BURNSIDE: Yes.

BRENNAN CJ: Is it the proposition that if you want to use the words "cut" and "paste" in more than one program - one is Dataflex and the other is Powerflex - that that will be an infringement of one of the copyrights?

MR BURNSIDE: No, and the reason is that, although the portion that you identify is the same as the corresponding portion in the protected work, it would be very unlikely as a matter of fact that it had been derived from the earlier work, although it is not quite the same as the - - -

BRENNAN CJ: Even though it does the same thing?

MR BURNSIDE: It may do the same thing but the problem with an example like "cut" or "paste" or "show", as was used in the Full Court's reasons, is that they are words which are common English words and have relatively precise meanings, relatively for the English language, and they are self-evident words that would be used for the function which is described by them. So we would say that if the only words that we were concerned with were words like "cut" or "paste" or "show", then there would have been a substantial difficulty in demonstrating that the words in the respondents' program had been derived by use of our program. It would be much more likely that they were derived from an ordinary understanding of English and from familiarity with the dozens or hundreds of programs that use exactly the same commands for corresponding functions.

McHUGH J: To understand your argument better, can I give you an illustration from a program which I am familiar with: DBASE 4, for example. If I do a program myself, as I have done on hundreds of different programs, and I just give the machine an instruction, the machine then compiles, the compiler runs through it and then it operates at the lower level. Is that - - -

MR BURNSIDE: If you are writing a program using DBASE 4, for example, using the standard query language, then you find yourself confined to the commands which DBASE 4 makes available. The list of commands which you generate or write in using the standard query language will be a user application, if we can call it that, and then when that is compiled the result is to implement the DBASE 4 language to produce a compiled program using the particular commands that you have chosen to use. The importance of your Honour's example - - -

McHUGH J: What is the distinction between that of DBASE and your program?

MR BURNSIDE: Probably not very great.

McHUGH J: That is what I thought.

MR BURNSIDE: Yes, except that DBASE 4 is I think more commonly marketed to end users who are likely to use the standard query language themselves, whereas the evidence shows that Dataflex was primarily marketed to people whose business it was to develop applications and the applications would then be sold on to end users. But essentially the operation is the same and a little bit different from the Chief Justice's example because "cut" and "paste" are typical examples in a word processor of a command which is simply available direct from the screen or the keyboard and which will be performed directly it is keyed in.

McHUGH J: So, when I go to a program in DBASE, they say "Replace this with that" and "Average this to the memory variable" and then "Operate on the memory variable" and a whole set of instructions, but on the keyboard I hit two words, "Do X" if that is the name of the program, but that is the basic - - -

MR BURNSIDE: It is, although what your Honour has just described is probably a more accurate description of the macros which are referred to here. I do not mean to minimise the fact that your Honour has written programs in DBASE 4. On the contrary, I am astonished, if I may say so.

BRENNAN CJ: His Honour constantly astonishes us with this.

MR BURNSIDE: But they sound like relatively simple short applications rather than, for example, creating an entire database structure for another user to make use of. But in any event the point remains the same, that the compiler takes a program written using the language over which we claim copyright. The compiler then takes the written program written by the user, it converts that into a form which is closer to machine code and it will only recognise a command which the language makes available and it will only compile properly if the command is used in accordance with the syntactical rules which the program prescribes for it.

It is important to distinguish on the one hand between the language program and the compiler. They are two aspects of the same thing but they have quite separate functions. The language program, putting aside the compiler, identifies each word of the vocabulary. If the word is not defined in the language program, then it simply is not a word of the language at all. It also identifies the precise way in which each word must be used if it is to be accepted by the compiler. So that if the parameters of use of one word are exceeded, then the compiler simply will not compile properly when that word is encountered.

So the language part of the program, the heart of the Dataflex program, identifies the vocabulary and prescribes the statistics and also prescribes what the program will do when that word is used. In that sense it defines the meaning of the word. What follows from that of course is that the use of a word "show" or "cut" or "paste" or anything else is on one level arbitrary because, if you replaced the same string of letters with the letters XYZ and if the Dataflex language program was told "XYZ requires you to do the following and can only be used in the following ways", then XYZ would be received by the compiler, it would compile to a lower level set of instructions and it would do whatever it has been defined as meaning.

BRENNAN CJ: Just so that I can at my lower level of language understand this, could I take you to page 106 where the illustration is given in respect of the word "show". Am I right in thinking that if the word "show" is used in Dataflex, what the use of that word does is to cause the machine to produce the electronic results indicated by what follows at the bottom of page 106?

MR BURNSIDE: What that does is to tell the compiler what set of instructions to compile to when it encounters the letters S-H-O-W in a program written by a user.

BRENNAN CJ: In PFXplus, it gives the machine a corresponding nature of an instruction but to do what appears at the bottom of page 107, is that right?

MR BURNSIDE: That is so, yes.

BRENNAN CJ: So that the word "show" has a meaning in Dataflex language and it has a meaning in PFXplus language?

MR BURNSIDE: Yes.

BRENNAN CJ: Is the problem this, that if you use "show" and "replace" or something else, that in the respective languages and through the respective programs they will give differing instructions to the computer but the end result in the computer will be the same?

MR BURNSIDE: No. On the contrary, the difficulty on our first submission is this. Leaving aside commonplace words which could have been derived from everyday familiarity with other programs or familiarity with the English language, the problem on the first point we raise is that the respondents' program uses as words available in Powerflex a large number, 192 or so, of the words of our vocabulary, it assigns to them identical meaning and requires for them identical syntax. What we say is that the use of those words themselves, those very words which have to appear in the source code of both programs, taking those words alone and putting to the side identity of meaning and identical syntax, using those words alone must involve taking a substantial part of our copyright work.

It is clear beyond argument that our copyright work includes in its source code every one of the reserved words, and that must be so because otherwise it has nothing against which to identify words which are put into it for compilation. It cannot identify the words of the language in an application program if it does not have those very words recorded somewhere within the program. Anyway, it was clear and the trial judge found that the reserved words of each language appear as literal strings in each of the language programs. Although it is only 192 words of, let us say, an average of six letters each or more perhaps, in our submission, the importance in a language program of the words which constitute the vocabulary of the language is so self-evidently important that to take almost all of the vocabulary is to infringe a substantial part of the program for which protection is sought.

BRENNAN CJ: But is the vocabulary an expression in any language of a set of instructions?

MR BURNSIDE: For the present point that question does not matter. On our second and third points that question arises.

BRENNAN CJ: Why? Do you claim old literary copyright in respect of them?

MR BURNSIDE: No, the literary copyright has been claimed from first to last in the program. The program happened to include within it a number of literal expressions, namely, the words constituting the vocabulary, and those literal expressions are of enormous importance in the language for obvious reasons. By borrowing each of those literal expressions and incorporating them in Powerflex, we submit that a substantial infringement of our language program has taken place. We do not say that any one of the words is by itself entitled to copyright as a word.

If we are right in saying that the words should be treated as programs by reference to the definition in the Act, then each may attract copyright protection, but that is a different point. Our primary point is that the words as words are a substantial part of the language program and they have all been taken, or 192 of the 270 have been taken, and used in identical form in the respondents' program.

GUMMOW J: What do you say about Mr Macaw's submissions at page 162 under the heading "Reserved words as program"?

BRENNAN CJ: We will extend the time for you, Mr Burnside.

MR BURNSIDE: Thank you, your Honour. We would say that it misses the point altogether.

GUMMOW J: He says there is a non-sequitur.

MR BURNSIDE: Well, with respect, we disagree; it is not a non-sequitur. The first thing is to identify what is the protected work. The protected work is the Dataflex program. The program's purpose is to implement a language. The program includes in its code each of the 270 words of the vocabulary of the language. Now, 192 of those words have been taken, copied, from our language and used in the respondents' language. They appear in the source code of both. It is not a non-sequitur to say that because you can identify a number of identical portions of one program and another program that therefore there has been infringement. The real question is: is the infringement substantial?

GUMMOW J: You complain about a passage in the Full Court's judgment.

MR BURNSIDE: We do because the Full Court, we would say, was not only wrong on the facts but applied the wrong test. What the Full Court said at page 125 was that they thought the point of the argument was misconceived:

and that reproduction of the individual words in the Powerflex program - - -

GUMMOW J: Line 9.

MR BURNSIDE: Yes, the key is at line 9. They said that it would not constitute reproduction to a substantial extent "irrespective of the significance".

GUMMOW J: I understand that. But then you say they went wrong on the facts, and that is where I get a little apprehensive.

MR BURNSIDE: I can understand that, your Honour. We would not normally have thought a special leave point would arise if there was a problem merely in applying the facts. We make two points about that. First, they applied the wrong principle as appears from line 9 on that page. Second, the decision of the Full Court is absolutely irreconcilable with the decision of this Court in Autodesk. The facts in Autodesk were relatively unusual. The technology involved was unusual and it was a set of facts relatively unlikely to recur. On the other hand, the facts in this case are highly likely to recur because this is precisely the sort of enterprise which people who use reverse engineering aspire to. I say that neutrally, not pejoratively.

McHUGH J: What do you say is the significance for, say, commercial programs like Word, Word Perfect, Access, programs of that nature? If this decision stands, are those programs liable to be copied in the same way?

MR BURNSIDE: Much more likely. You have to be careful in choosing examples because something that takes its commands by reference to a menu is not as easily susceptible to this as something which provides a language in one form or another.

McHUGH J: As opposed to something that is done from the keyboard?

MR BURNSIDE: Yes, or something which enables the user to write a program using the given language. It is clear enough that even Word and Excel and so on do in a sense provide a language which enables the user to write small programs or macros. So yes, the problem does exist in relation to those. But the important point here is that the likelihood that facts of this sort will be encountered regularly places those advising clients and judges hearing cases at first instance with an insuperable problem because, if they get a set of facts which were substantially the same as these, they would no doubt be required to follow the Full Court's decision notwithstanding the fact that it is impossible to reconcile the Full Court's decision with the decision in Autodesk.

But Autodesk, arising on much more obscure facts, will no doubt be relegated to irrelevance or distinguished on its facts. That is why, in our submission, it is important that this Court should consider the first question which we raise because it is clear that the computer industry is an important one in Australia and that the application of the copyright law in relation to software ought to be as clear as human ingenuity can make it. At the moment nothing could be more likely to create uncertainty and confusion than the concurrent existence of the Full Court decision in this case and the High Court decision in Autodesk.

BRENNAN CJ: Does the case involve an interpretation of what is meant or what is the scope of language code or notation? In other words, does it reach up to "show" or does it stop short of "show"?

MR BURNSIDE: On our second and third special leave points, as articulated, it does. On our first point it does not but on our second and third points it does because the argument simply is: if the word "show" properly understood causes the compiler to perform a particular function, namely, creating as output a series of identifiable commands for another program, then at the very least "show" is an instruction in the way in which the word is used in the definition and we would say that it is a representation of the set of instructions which is generated by the compiler.

It was that question which occupied the thinking of the Full Court and, to a lesser extent, the trial judge. We would submit that probably that is the most difficult point. It is much less difficult, in our submission, to say that "show" is plainly an instruction and "cut" is plainly an instruction and so on and so forth and the collocation of each of those instructions answers the description in the definition of an expression of a set of instructions having the requisite characteristics. That is a separate question which we would seek leave to appeal to this Court and it is a question, I may say, which has not been dealt with by this Court at all.

The other question, if I may turn to it - although I see the time has expired, I have not touched on the question of the meaning of "adaptation". That is the question I would turn to if the Court allows.

BRENNAN CJ: I think perhaps the problem has been exposed sufficiently and no doubt after we have heard Mr Macaw we will understand it even better still.

McHUGH J: Your argument about "adaptation" is in the argument. It is a pretty straightforward point really.

MR BURNSIDE: Yes.

BRENNAN CJ: We will adjourn until 2.15.

AT 12.52 PM LUNCHEON ADJOURNMENT

UPON RESUMING AT 2.25 PM:

BRENNAN CJ: Yes, Mr Macaw.

MR MACAW: If the Court pleases, my learned friend's submissions concentrated on the point dealt with by the Full Court at page 125 of the application book. What he said about it was that they got it wrong on the facts and they applied the wrong test. The only respect in which that observation is accurate, in our submission, is that they did indeed decide on a factual basis adversely to the present applicant.

Can I take the Court to that page. They record at line 4 that the question does not appear to have been raised at first instance. My learned friends in response by way of reply material have identified the pleading and the particulars and some passages which are said not to make that a true statement. May I take the Court to page 15 which sets out the allegation in paragraph 6.9 upon which reliance is placed. The allegation is that:

The Respondents have reproduced the Dataflex Reserved Words in PFXplus, and more particularly in that part of PFXplus known as PFXplus Compiler and the PFXplus User Guide.

If one goes back to paragraph 5 in the statement of claim, one sees an allegation that there is copyright subsisting in four different works, one being in (a) the Dataflex computer program, the second being the encyclopedia and user guide, the third being a table of reserved words and the fourth being the Dataflex language. Accordingly, the allegation in paragraph 6.9 upon which reliance is placed has no necessary, or indeed any, reference to paragraph 5(a). It appears most naturally to be a reference to paragraph 5(d).

The same observations can be made in relation to the particulars which were provided under paragraph 6.9 which is set out at page 11 of the application book. Further, it can fairly be said that none of the materials referred to in the transcript references which have been provided corrects what was the position that there was no issue raised in the pleadings of the kind which is now sought to be agitated. The learned trial judge accordingly did not deal with the matter. If the matter were otherwise appropriate for the intervention of this Court, then that fact, in our submission, would make this an inappropriate vehicle for determination of some question of principle said to arise.

May I direct attention next to the way in which the court did deal with the facts. They said:

Nevertheless, we think the point of the argument is misconceived and that reproduction of the individual words in the Powerflex program should not be seen to be a reproduction to a substantial extent of the literary or artistic work which constitutes the Dataflex program, irrespective of the significance these words have in the Dataflex language.

We wish to draw attention to these aspects of those observations. First, in line 7 the reference is to the "reproduction of the individual words in the Powerflex program". If one goes back to page 124 there are two matters dealt with which give point to the reference to the individual words. The first at line 9 deals with the proposition that the group of words together constituted a computer program, even if the individual words did not. What the Full Court said was:

But it is not true to say that the words collectively are a computer program. They are merely the totality of commands available for use in the particular program.

Later on the page at line - - -

BRENNAN CJ: But you then draw a distinction between the command and the program which then runs on the command.

MR MACAW: Yes, but the point we are seeking to make is that the Full Court found that there was no cohesion amongst these words. They were simply words constituting the totality of commands.

BRENNAN CJ: But must the totality be so arranged as to comply with some antecedent syntactical requirement?

MR MACAW: Not as a matter of totality, no, certainly not. What the Full Court went on to say, dealing with the same sort of point but in a slightly different context later on in the page in response to the argument that the words in their collective form constituted a literary work in the ordinary sense, which argument is recited at line 12, they went on to say at line 16:

This is not a case where disconnected words are used in a particular order so that the order becomes the linchpin for copyright.

What their Honours, in our submission, plainly had in mind in the reference to "reproduction of the individual words" at page 125 was the lack of cohesion amongst those words, the fact that they simply represented a collocation, a collection, if you like, being the totality of the commands. There was nothing about their order or any manner in which they might be presented together.

McHUGH J: But why are not individual commands, if they constitute a set of instructions, not within the definition? Supposing there is a line in the computer program which says, "Replace field 1 with field 2 plus field 3 plus field 4 plus field 5 and divide by field 6". Why is that not a set of instructions which will cause a computer to perform a particular function, namely, to perhaps total a particular field?

MR MACAW: In the example your Honour gives which is to deal with a slightly different aspect from the one I was directing attention to, it may be if the matter is dealt with in as much detail as your Honour has postulated that there is an expression of a set of instructions. The distinction of course which the Full Court made - and correctly so, in our submission - was between on the one hand the instructions and on the other hand the expression of that set of instructions which resides in the source code.

McHUGH J: I know, but one difficulty I must say I have with this case, Mr Macaw, is the fact that we have not got the primary evidence. We have the judges' view of it but I am not sure that I have fully grasped it and I feel at a disadvantage in not having all the evidence before us. Maybe it is a case that, without having all the evidence before us, it is not easy. At least, at all events it is not easy for me to fully understand the case.

MR MACAW: Just to deal with that point, your Honour, take the word "show" which is one of the words. What the Full Court has said in substance is if your Honour looks at the example at pages 106 to 107, true it is that the word "show" forms part of the set of instructions in the source code which is set out and true it is that the word "show" might be said to represent the underlying expression of a set of instructions but it does not - - -

McHUGH J: Just so that I can understand this, take line 19 at page 106, "SHOW !2 !3 !4 !5 !6 !7 !8 !9", for example. What will that itself do in terms of a particular program? When we are talking about "!2 !3 !4 !5 !6 !7 !8 !9", what are we actually talking about there? Is that a set of instructions?

MR MACAW: What it does is to tell the compiler what to do. This whole set of instructions tells the compiler what to do if it encounters the command there set out.

McHUGH J: But are they lines that it is telling the - - -

MR MACAW: These are lines in what was called the intermediate code in the Dataflex program. If your Honour goes over to the next page your Honour will see a fragment of the program in the source code of the runtime program. At the bottom of the page, first the source code syntax and second the source code so-called semantics in the Powerflex program. What the court was saying in substance was that you must draw the distinction between a word which can symbolise, call up, act as a cipher for, act as a trigger for the operation of, a set of instructions on the one hand and the expression of that set of instructions on the other. That of course was to apply what, with respect, was a trite well-recognised principle of copyright law.

BRENNAN CJ: I am not sure how trite and well recognised it is. If you go to the definition on page 103, it depends on what connotation you give to "language, code or notation", does it not? If I understood what is put by Mr Burnside, he would say that in the case that you have been considering the word "show" itself is an expression within the language, code or notation of the set of instructions which then follows.

MR MACAW: The idea, your Honour, of a single word which when used triggers an underlying and detailed set of instructions expressed in perhaps a dozen, 20, 50 lines of code being itself an expression of a set of instructions, in our submission, is untenable and for the reasons the Full Court gave.

BRENNAN CJ: I can understand the submission but that is why I wanted to say that I understood Mr Burnside to be putting the opposing view and suggesting that there is a question of law of some difficulty in determining the connotation of "language, code or notation". In other words, language extends to the command itself.

MR MACAW: That is what my learned friend successfully persuaded the trial judge about, yes.

BRENNAN CJ: And you say it is untenable?

MR MACAW: We do say it is untenable, your Honour, absolutely untenable. Can I finish off, if I may, the point which I started on which is at page 125 and come back to this point. At line 11 my learned friend draws attention to the language:

irrespective of the significance these words have in the Dataflex language.

It cannot be supposed, in our submission, that the Full Court has ignored the well-known requirement that you look at quality as well as quantity and what it - - -

GUMMOW J: It is difficult to translate that distinction, which we all know, but it comes from quite a different background really and it somehow gets injected into this Act through the definition of "computer program" as a species of literary work.

MR MACAW: What the Full Court has done plainly, in our submission, is to consider the significance of these words forming part as they do, albeit fragmentary parts, of the computer program. At page 104 the court had dealt with the significance of the reserved words at lines 10 and following. That is to say, they:

can only be used in connection with the program in accordance with the rules of the language of that program.....when one of these reserved words is used, an instruction is sent to the computer to perform a defined set of operations.

That is part of the significance of the words. Another part of the significance of the words - - -

McHUGH J: If I could just stop you, just look at page 104, line 11:

In essence what this means is that the Dataflex program is written so that when one of these reserved words is used, an instruction is sent to the computer to perform a defined set of operations.

Why does that not answer the description of a computer program?

MR MACAW: Because all it does is represent or call up or trigger the operation of a set of instructions, as opposed to constituting the expression of such a set of instructions. It is a bit like the - - -

McHUGH J: Does your argument turn on the contention that expression in any language of a set of instructions does not cover the case of calling up?

MR MACAW: By a single word of command, yes, in just the same way as the use of one of the keyboard keys which has P for print. It calls up, acts as the cipher for, acts as the trigger for the operation of, the set of instructions which is called up by the depression of that key.

McHUGH J: I do not think that is a good analogy really because you are hitting the keyboard and you do something, but this is within the computer itself and this is, if I understand it correctly, in effect a program within the computer or software and it has a series of words, reserved words, which themselves are the means by which an instruction is sent to the computer to perform a defined set of operations. So why is that not an expression in any language of a set of instructions?

MR MACAW: Because, your Honour, with respect, the means by which something is sent in order to operate the set of instructions is fundamentally different from the expression of that set of instructions. It is the distinction which the court dealt with in referring to Autodesk at pages 111 and following where what it said in substance was of course the distinction between idea and expression of idea is fundamental. In the case of a utilitarian work such as a computer program, as his Honour Justice Dawson said in the passage set out at the foot of page 112 over to the top of 113, the idea is really the purpose or function.

As Autodesk recognised, there is a fundamental dichotomy between expression of a set of instructions on the one hand in which copyright will subsist and, on the other, the function sought to be achieved by that set of instructions. The way that your Honour Justice McHugh has identified the point is really to indicate, by reference to the means by which something is done, the difficulty that my learned friend had below. It was exactly that. All he could show was that it was the means, it was a trigger. It called up the underlying expressed set of instructions but it was only the underlying material which could truly be said to be an expressed set of instructions in which accordingly copyright could subsist.

BRENNAN CJ: Mr Macaw, if the object of the exercise was to produce a program - let us call it abracadabra - and the elements within that program were - and I am looking at page 106 - "entagin", "keyproc" and "moveint", when abracadabra is complete, does any part of the instruction given by abracadabra include those particular words or does it include only the programs which are summoned up by those words?

MR MACAW: I think I have to answer it this way, your Honour. The underlying source code which is called up, triggered, for which the word acts as a cipher includes the word itself as your Honour sees at page 106. That is indeed why my learned friend is able to say, although it was not put below, "We want to say that those words themselves are significant enough to constitute a substantial part of the whole Dataflex program". They do form part of the source code, as the Full Court recognised, and that is why he addresses as his first point the proposition, contrary to what the Full Court said, that they together constitute a substantial part. I would like if I may just to identify - - -

BRENNAN CJ: Your time will also be extended by five minutes, Mr Macaw.

MR MACAW: The fallacy which the Full Court exposed on the applicant's argument below, and, with great respect, what your Honour Justice McHugh put earlier to me, is done at page 129. This was in the context of the adaptation point, but the approach is common to both the adaptation and the reproduction points. What the Full Court said at line 3 was:

It is the concentration upon the performance of function rather than the expression of the set of instructions which is the fallacy in the submissions of Data Access.

It is the same point about which we made the observation that there is a non-sequitur in the applicant's submissions.

McHUGH J: But does it make any difference that the definition talks about expression in any language of a set of instructions intended, either directly or after conversion to another language code or notation, to cause a computer to perform a particular function? So it does look at a sequential operation, does it not, or it can cover a series of steps?

MR MACAW: Yes. Partially in answer to what your Honour has just put and also if I may to complete what I was hoping to say about the point at page 125, the role that the words play is described. The point which is sought to be agitated as the first special leave point does not depend on the words alone or in combination being an expression of a set of instructions. It is an independent ground. It will apply accordingly to anything which forms part of the computer program and notwithstanding that it does not form itself an expression of a set of instructions.

If one goes to the example again at page 106 accordingly, it could no doubt be equally said to be self-evident that the character or symbol of the hash sign is significant in the same sense that the string of letters "show" is said to be significant because, if you removed it, the program would not work. Of course it would not work. That is the nature of a computer program, that precision in the presentation of material for recognition by the computer is required. So, to say, as my learned friend says, it is self-evidently important because it will not function adequately without it is not to answer the point.

It does not matter for this purpose, according to my learned friend's submissions, that it does not itself form a computer program. Anything will do and will suffice to be a substantial part if without it, that is to say upon its removal, the program will not function properly. In our submission, that is to expose the problem with my learned friend's attempt to characterise the approach of the Full Court at page 125 as a misdirected one and the result as being wrong. They have addressed the right question. They have addressed the significance, not merely in terms of quantity but otherwise in terms of significance within the program of the command words and they have come to a factual conclusion adverse to the applicant.

What we would say accordingly is that there is no special leave question that could arise on those factual issues even if the matter had been raised below. The fact that it has not makes it particularly unsuitable for attention from this Court. The fact that no question of - - -

BRENNAN CJ: Is there any factual material that could bear upon the conclusion to be reached; any evidence that might have been adduced?

MR MACAW: If the point had been identified in pleadings, no doubt the matter could have been addressed by dealing with the kinds of things I have been dealing with, that is to say, evidence identifying what is the significance of the words in terms of the operation of the program, how that significance compares with other symbols or characters, a hash or "if" or whatever it might be that happens to form part of the source code. One would also have - - -

GUMMOW J: But would that deficiency bear upon the three groups of grounds that Mr Burnside mentioned?

MR MACAW: No, it bears upon the first that he addressed this morning, your Honour, which is - - -

GUMMOW J: It would not bear on the second batch?

MR MACAW: No, it does not bear upon that, I accept that, your Honour. The vice which I have sought to expose in the first ground is confined to it. As to the second and third grounds, we say in substance that the principle is well known. It is identified adequately in the discussion at pages 111 to 115. It is compendiously stated in what the Full Court has said at page 119 where the difficulty of application of the distinction between idea and its expression to computer program cases is acknowledged, but what the court has done ultimately is to apply those well-established principles to the facts of the case.

GUMMOW J: Does the evidentiary deficit apply to the adaptation points?

MR MACAW: No, it does not.

GUMMOW J: It is the first one?

MR MACAW: Yes, it is the first point, your Honour. Again, your Honour will see from our written submissions that what we say about adaptation is that the contrary view falls into the same misconception of concentrating on the instructions and the result or function which is obtained by them as opposed to the expression.

If the Court pleases, could I say two final things briefly. It follows from what we have said that the assertion that the decision is at odds with what this Court said in Autodesk is no more than that. It is simply assertion. The Full Court recognised what the nature of the distinction was that had to be applied. It recognised the difficulty of applying it in appropriate cases involving computer programs and it made the application on the facts, and there is absolutely no tension between the approach in principle that was adopted and that which was dealt with in Autodesk.

Finally, there is some comfort taken in the application from the uncertainty said to arise. There is none if one is talking about Autodesk and the principle it stands for. The only uncertainty in the case may be said to have arisen from the fact that it took the applicant here, the applicants below, between 1989 and November 1993 to approach the court for a determination of the issues and from the fact perhaps that his Honour the trial judge succumbed to the fallacies that were exposed by the Full Court. If the Court pleases.

BRENNAN CJ: Mr Macaw and Mr Burnside, the Court presently is minded to adjourn this application for further consideration by a Full Bench constituted by five or more Justices, and that in order to ensure that the limited apprehension that we presently have can be expanded and a decision reached on whether special leave should be granted in the light of that better understanding than we now have and particularly in the light of whatever evidence there may be to illuminate the nature of the problem.

For that reason we would think it would be necessary for counsel to prepare as on an appeal, leaving it, however, to the Full Bench to say, with an understanding of the problem more profound than that which we presently have, whether the case ought to be disposed of simply by a refusal for special leave. Have you any submissions about that course to be followed, Mr Macaw?

MR MACAW: Your Honour, the submission we do make follows from the last observation I did make. The case has involved a significant burden on the present respondents. If it were not for the fact that over the opposition of our learned friends the injunction granted by the trial judge was stayed until the disposition of the appeal, no doubt it would no longer be in business. If for practical purposes my learned friend is going to have the opportunity to improve upon the case which he ought have put for his special leave by having a de facto appeal which our clients will have to prepare as on an appeal, it would work an injustice, in our submission.

BRENNAN CJ: Mr Burnside, what do you have to say?

MR BURNSIDE: I think all we would have to say is to seek clarification of the exact procedure to be followed. If it were a continuation of a special leave application, then the prima facie 20 minute rule would have obvious implications for the sort of evidence we could traverse.

BRENNAN CJ: It was not intended to be a 20 minute rule.

MR BURNSIDE: If it is a de facto appeal but in anticipation of special leave being granted or withheld according to the way the Court understands the problem, we would not oppose that. I should not have thought for the special leave point that much additional evidence would have been needed. In fact, the evidence we would have drawn attention to is already in the application book. However, if the points are to be enlarged as if on appeal, then of course more extensive evidence would need to be adduced, especially to deal with one of the questions his Honour Justice McHugh raised, for example, about the meaning of the code at pages 106 and 107. But, apart from that, we do not oppose that course.

BRENNAN CJ: Special leave will be granted in this case, but on the clear understanding that if the Full Court, with a fuller appreciation of the issues that arise for decision, perceives that it is a case in which special leave should be revoked, then the Full Court may well decide to revoke special leave. It should be clearly understood that the grant is very much subject to that observation.

AT 3.01 PM THE MATTER WAS CONCLUDED