500 versions of software – when is a new version of software original and when does copyright subsist?

The Full Court, in its recent decision JR Consulting & Drafting Pty Limited v Cummings [2016] FCAFC 20 tackled some difficult questions of subsistence of copyright and originality. Considering the circumstance where an original work has been altered by a number of changes that are insubstantial in the context of the foundation work, the Full Court asked:

Is the text as altered, as a whole, to be regarded as a new original work? Are the changes, when analysed, just too insubstantial to bring about a new work? Do the alterations themselves reflect original authorship? If there is no new work as a whole (that is, a revised, updated whole), what “work” is the true source of the rights of the copyright owner? What would be the “work” once the foundation text has been amended in, for example, 30 or 50 “insubstantial” ways? To identify “precisely” the “work” (and thus the source of the author’s rights) is it necessary to identify the state of the foundation text and then identify each and every change by addition and deletion to that text to show that at some point the “work in suit” emerged.

These question arose in the context of a copyright infringement claim in JR Consulting v Cummings in circumstances where between 1990 and November 2011, Mr Cummings developed and released more than 500 versions of the software in issue.

The facts of JR Consulting v Cummings

The centre of the dispute was the software known as “Quik Series Software” (or QSS), being a software used in the design and manufacture of cold form metal light gauge wall frames, trusses, flooring and roofing used in construction. The appellants conducted a business to supply equipment to manufacture steel frame structures and associated software. Mr Cummings, the first respondent to the appeal, developed QSS and was the author of copyright in QSS. There were various agreements made between Mr Cummings (and the companies he controlled) and the appellants for the license of QSS. Part of the appeal concerned the construction, breach, termination and abandonment of these various agreements.

A key question in the proceeding was whether copyright subsisted in each version of QSS. At first instance, the primary judge found that the respondents had established only that copyright subsisted in three versions of the software, being the only versions in respect of which there had been evidence of the line count of the source code. Findings of infringement were made with respect to these three versions of the software, which were the subject of appeal. By way of cross-appeal, the respondents contended that each update or new release version of QSS was a “new literary work”, being a computer program in which copyright subsists. The appellants argued that each update or new release of QSS was “not substantial enough” or “not original enough” to be a new literary work. In addition, the appellants argued as an evidentiary question that the respondents had failed to establish that Mr Cummings had contributed sufficient effort, skill, labour and judgement, as author, in order to establish that each version of the software was an original work of authorship.

The Full Court’s decision

The Full Court upheld the cross-appeal on subsistence and found that copyright subsisted in each version of the QSS software that was created by Mr Cummings up to November 2011. The Full Court noted that to be “original”, the literary work in question must originate or emanate from the author and must not merely be a copy of another work (at [258] and [261]). However, Mr Cummings had applied enough skill and judgement to make each version an original work in its own right.

In reaching this conclusion, the Full Court considered the example of a hypothetical legal text on equitable remedies. In subsequent versions, there may be many changes that are individually insubstantial in the context of the foundation work, for example, only a number of paragraphs of the text may be altered to reflect one or more new decisions. The Full Court considered the commentary of Professor Ricketson, who noted that each successive draft needs to be considered in overall terms as the application of fresh authorial effort in revising, reviewing and “settling” what has gone before. It may be inferred that the author has carefully reviewed and considered the preceding text as a whole.

In deciding that each version of QSS was an original work, the Full Court took into account the history of the development of QSS by Mr Cummings, his authorship of each sequential change to the code, the dedication of his time, effort and judgment to writing the code and his release of “entire package” of programs after making each set of changes or updates. The Full Court concluded (at [304]):

“To the extent that each sequential update … reflects changes to the source code by addition or deletion (whether the rectification of errors or a new set of instructions to bring about a certain result) that might be regarded as, quantitatively at least, insubstantial, an inference arises from the circumstance of his authorship of the entire programs comprising QSS, over time, and his election to release, with each numerical version of QSS, the entire program as updated, to the following effect: that he has carefully considered the preceding state of the suite of programs and that the alterations, insertions or deletions are intended to be consistent with and enhancements of what has gone before. In other words, Mr Cummings has undertaken a particular revision of the programs on each occasion as part of the whole of the work with the application of sufficient skill and judgement to make each version as updated and released an original work in its own right.”

 (emphasis added)

That is, in deciding whether copyright subsists in a version of software, the test applied by the Full Court was not whether the particular change that had been made in that version was substantial or insubstantial. The question was whether there has been some independent intellectual effort deployed that is sufficient to mean that the literary work has originated with the author. This included the careful revision and consideration of the preceding version as a whole.

The originality principles explained

In reaching its conclusion, the Full Court first revisited the basic principles of originality, authorship and subsistence of copyright (see [246] to [285]). The Full Court stated:

  • There is a “correlative” relationship between authorship and originality. The “contemporary question is simply this: Has the author deployed personal independent skill, labour, intellectual effort, judgement and discrimination in the production of the particular expression of the work?” (at [264]).
  • However, not too much should be made of the kind of skill and labour that must be expended: the requirement is that the work “originates” with the author from “some independent intellectual effort” (at [285]).
  • The reference to “effort of a literary nature” in the High Court’s decision in IceTV was not likely intended to introduce any notion of literary “merit” or “creativity” into the statutory correlation of authorship and originality (at [260]). Neither literary merit nor novelty or inventiveness is required and although the law of copyright does not protect function and extends only to the expression of a work, a work may serve utilitarian ends ([261]).
  • In relation to database “compilations” of pre-existing data and information, the Full Court stated that the “selection” and “arrangement” is likely to be the authorial or original contribution and noted that the degree of originality may require close examination for subsistence more broadly.   The Full Court also noted that in such cases, it may be difficult to identify which author or group of authors undertook the selection and arrangement (at [282]-[282]).

The Full Court also considered the question of originality in the context of infringement of a work. The Full Court stated:

  • Questions of originality arise also in relation to the infringement of a work. The analysis of whether a substantial part has been reproduced necessarily engages a consideration of the quality of the part of the work alleged to have been reproduced.  The fact that a part reproduced “originates” from the author does not of itself necessarily mean a substantial part has been taken, having regard to the quality, because the part taken may be something that is itself largely unoriginal (at [267]).
  • In determining whether the quality of what is taken makes it a substantial part of the copyright work in suit, as the source of the rights, it is important to enquire into the importance which the taken portion bears in relation to the work as a whole. Is it an essential or material part of the work in suit (at [268]).
  • In the context of a computer program, it is therefore necessary to examine what was allegedly taken, the set of statements or instructions comprehended by what was taken and compare it with the original.  A person will be unlikely to have reproduced a substantial part where they reproduce parts that are “data” or “related information” and which are not relevant to the statements or instructions to be used to bring about a certain result (at [269]-[271]).