Copyright in macros

Posted by Nick Liau ● Partner: Paul Kallenbach

In CA v ISI [2012] FCA 35, the Federal Court found that copyright can subsist in macros. The Court held that copyright in macros made by CA was infringed by another set of macros made by ISI.  The case highlights the difficulties faced by courts in copyright infringement cases involving software, especially when determining whether an infringement of copyright has occurred.

Facts

CA makes a database software package known as 'Datacom'.  'DB2' is a competing piece of software.  The two database systems are incompatible, and migration from one to the other would ordinarily be an onerous task for an organisation.  ISI, another software company, markets a product known as '2BDB2', which enables customers to migrate their databases from Datacom to DB2 far more easily.

Businesses usually run applications that need to access information within their Datacom databases; one step of this process involves the use of macros specifically designed for use with Datacom software (the CA Macros).  Macros are commands that when executed, cause a larger and more complex set of instructions to be undertaken within a computer program.

In order for the 2DBD2 software to successfully migrate data from the Datacom system, it has to replicate the functionality of some of the CA Macros.  ISI developed its own set of macros (the ISI Macros) for use in 2DBD2, which were similar to the CA Macros. CA alleged that the ISI Macros infringed copyright in the CA Macros, and the Court agreed (at least in relation to some of the macros). There were other issues in the case, but this post focuses on the copyright issues.

Are macros subject to copyright?

The Copyright Act 1968 (Cth) recognises that copyright may subsist in computer programs. In this case, the Court held that the CA Macros fell within the definition of 'computer program' and accordingly, copyright subsisted in them.

Macros would not usually be considered to be computer programs in their own right – they are, by definition, unable to perform any function in the absence of another piece of software.  However, the Federal Court held that, for the purposes of the Copyright Act, a macro need not be able to perform any function in its own right, and it was enough that a macro could be used bring about a particular result indirectly.

Was copyright infringed in this case?

The Court found that some of the ISI Macros infringed copyright in the CA Macros because they reproduced a 'substantial part' of the CA Macros.  As with many copyright cases, the Court had to carefully tread the line between ideas (which are not protected by copyright) and the particular expression of those ideas (which are).  The ISI Macros were actually updated a number of times over the years and each of these revisions was considered separately for potential copyright infringement by the Court.

A series of earlier ISI Macros were held to have reproduced a substantial part of the CA Macros, thereby infringing copyright. To determine whether a substantial part of the CA Macros was taken, the Court compared these macros with their respective ISI Macros. The Court accepted that it was necessary for the ISI Macros to be functionally similar to the CA Macros for the 2BDB2 program to work properly.  The functional similarity did not necessarily mean that copyright had been infringed. 

The bigger concern for the Court was the textual and logical similarity between the ISI Macros and the CA Macros.  The Court found that the earlier ISI Macros were literal copies of the CA Macros.  Although ISI had deleted some pieces of irrelevant code, and had made some minor improvements to the macros, there were strong similarities in the text and logical structure of the macros. It was because of these similarities that the Court found the ISI Macros infringed copyright of the CA Macros.

In 2011, the ISI Macros were completely re-written.  Their functionality was still virtually identical to that of the CA Macros.  However, there was enough difference in the text of the Macros, and the logical way in which they worked, for the Court to find that they did not infringe the copyright of the CA Macros.  Importantly, the Court held that 'there must also be sufficient similarity of ... expression, form or parameters' for a finding of infringement to be made.

Comment

The Court seemed willing to accept that functional similarity was a necessary feature of the ISI Macros, although this functional similarity was not in and of itself enough to give rise to copyright infringement. Interestingly, certain pieces of code within the ISI Macros needed to be textually identical to the equivalent code within the CA Macros for them to work (for instance, code that referred to certain named features of the Datacom software). When determining textual similarity, the Court accepted that it was necessary to copy some words of the code, and did not find infringement based on this particular type of copying. 

It will be interesting to see how far the courts are willing to accept textual similarity (where that textual similarity is necessary for functional similarity) before this gives rise to copyright infringement.  For example, in the extreme case, where a piece of code had to be exactly the same as that in an existing macro for the new macro to function, would a court be willing to excuse infringement on the basis of functional similarity?