# High Court of Australia

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## COMPUTER EDGE PTY LTD v. APPLE COMPUTER INC. (1986) 161 CLR 171 F.C. 86/017

    Copyright

    COURT
    High Court of Australia
    Gibbs C.J.(1), Mason(2), Wilson(2), Brennan(3) and Deane(4) JJ.
    HRNG
    1985, March 12-14; 1986, May 6. #DATE 6:5:1986
    JUDGE1
    GIBBS C.J.:   This appeal from a decision of the Full Court of the Federal
    Court (Fox and Lockhart JJ, Sheppard J. dissenting) (1984 1 FCR 549 raises for
    consideration the questions whether, and to what extent, the Copyright Act
    1968 (Cth), as amended, in the form which it took before the enactment of the
    Copyright Amendment Act 1984, recognized and protected copyright in computer
    programs.

    2.  The first respondent, a Californian corporation, makes and sells computers
    under the well-known name of "Apple" and the second respondent is its
    Australian distributor.  The first appellant, a Victorian company, has
    imported and sold in Australia micro-computers under the name of "Wombat" and
    the second appellant is the managing director of the first appellant.  The
    respondents' case is that the importation and sale in Australia of the Wombat
    micro-computer was an infringement of the first respondent's copyright in two
    computer programs, known respectively as "Applesoft" and "Autostart".  The
    alleged infringements occurred before the commencement of the Copyright
    Amendment Act 1984, and that Amendment Act, which is intended to protect
    computer programs, has no relevance to the present case:  see s.7(2).
    References hereunder to the Copyright Act will be to that Act before its
    amendment in 1984.

    3.  Computer science makes much use of jargon and metaphor, and to enable the
    matters in issue to be understood it seems desirable to attempt a brief
    explanation of the meaning of some of the expressions used in that science and
    to describe the manner in which a computer program is developed.  A computer
    program is a set of instructions designed to cause a computer to perform a
    particular function or to produce a particular result.  A program is usually
    developed in a number of stages.  First, the sequence of operations which the
    computer will be required to perform is commonly written out in ordinary
    language, with the help, if necessary, of mathematical formulae and of a flow
    chart and diagram representing the procedure.  In the present case if any
    writing in ordinary language (other than the comments and labels mentioned
    below) was produced in the production of Applesoft and Autostart, no question
    now arises concerning it.  Next there is prepared what is called a source
    program. The instructions are now expressed in a computer language - either in
    a source code (which is not far removed from ordinary language, and is hence
    called a high level language) or in an assembly code (a low level language,
    which is further removed from ordinary language than a source code), or
    successively in both.  Sometimes the expression source code seems to be used
    to include both high level and low level language.  In the present case, the
    source programs were written in an assembly code, comprising four elements,
    viz. -

        (a)  labels identifying particular parts of the program;

        (b)  mnemonics each consisting of three letters of the
             alphabet and corresponding to a particular
             operation expressed in 6502 Assembly Code (the code
             used);

        (c)  mnemonics identifying the register in the
             microprocessor and/or the number of instructions in
             the program to which the operation referred to in
             (b) related; and

        (d)  comments intended to explain the function of the
             particular part of the program for the benefit of
             a human reader of the program.

    The writing has been destroyed, although it is possible to reconstruct the
    mnemonics, but not the labels and comments, which were comprised in it.

    4.  The source code or assembly code cannot be used directly
    in the computer, and must be converted into an object code, which is "machine
    readable", i.e., which can be directly used in the computer.  The conversion
    is effected by a computer, itself properly programed.  The program in object
    code, the object program, in the first instance consists of a sequence of
    electrical impulses which are often first stored on a magnetic disk or tape,
    and which may be stored permanently in a ROM ("read only memory"), a silicon
    chip which contains thousands of connected electrical circuits. The object
    code is embodied in the ROM in such a way that when the ROM is installed in
    the computer and electrical power is applied, there is generated the sequence
    of electrical impulses which cause the computer to take the action which the
    program is designed to achieve.  The pattern of the circuits in the ROM may
    possibly be discerned with the aid of an electron microscope but it cannot be
    seen by the naked eye.  Obviously, the electrical impulses themselves cannot
    be perceived. However the sequence of electrical impulses may be described
    either in binary notation (using the symbols 0 and 1) or in hexadecimal
    notation (using the numbers 0-9 and the letters A-F), and it is possible to
    display the description on the visual display unit of the computer, and to
    print it out on paper.  And, as has been said, it is also possible to
    reconstruct the mnemonics in the source code.  It will have been seen from
    this account that a program exists successively in source code and in object
    code, but the object code need not be written out in binary or hexadecimal
    notation in the process of producing and storing the program.

    5.  The relevant model of the Apple computer contained six
    ROMs which stored both the Applesoft object program and the Autostart object
    program.  The Wombat computer had two ROMs and one EPROM ("erasable
    programmable read only memory") which stored object programs which the
    evidence shows were the same as those stored in the six Apple ROMs.  An EPROM
    is a chip which differs from a ROM in that the information on it may be erased
    and the chip may be reprogramed, but this difference is not material.  Nothing
    turns on the fact that the Applesoft program and the Autostart program were
    stored on six ROMs in the Apple computer and in only two ROMs and one EPROM in
    the Wombat computer, for there is no doubt that the programs which appear in
    the Wombat ROMs and EPROM are the same as those which were prepared for the
    first respondent and which are used in the relevant Apple computer.  It is not
    clear how the appropriation of the first respondent's programs was effected,
    but it was possible for the patterns of one ROM to be embodied directly in
    another ROM or in an EPROM without first representing the object code in
    binary or hexadecimal notation and without converting the object code back to
    source code.  In other words, the making of the Wombat ROMs and EPROM did not
    necessarily involve the use of any writing or other visual display of the
    programs in either source code or in binary or hexadecimal notation.

    6.  In these circumstances the ultimate question for
    decision is whether to the knowledge of the appellants the making of the ROMs
    and the EPROM used in the Wombat computer would, if those articles had been
    made in Australia by the first appellant, have constituted an infringement of
    the first respondent's copyright.  It will be sufficient, in citing the
    relevant sections of the Copyright Act, to refer only to such parts of those
    sections as deal with literary works, since there is obviously no suggestion
    that any question arises as to dramatic, musical or artistic works. Section 37
    of the Copyright Act provides, inter alia, that the copyright in a literary
    work is infringed by a person who, without the licence of the owner of the
    copyright, imports an article into Australia for the purpose of selling the
    article "where, to his knowledge, the making of the article would, if the
    article had been made in Australia by the importer, have constituted an
    infringement of the copyright".  Section 38(1) similarly provides, inter alia,
    that the copyright in a literary work is infringed by a person who, in
    Australia, and without the licence of the owner of the copyright, sells an
    article "where, to his knowledge, the making of the article constituted an
    infringement of the copyright or, in the case of an imported article, would if
    the article had been made in Australia by the importer, have constituted such
    an infringement".  The learned trial judge made no finding on the question of
    knowledge and the Full Court ordered that if the present respondents wish to
    pursue claims for damages in relation to infringements, the matter should be
    referred back to the learned trial judge for findings on that question; this
    order is the subject of a cross-appeal.

    7.  The nature of copyright is described in s.31(1) of the
    Copyright Act, which, so far as is possibly relevant for present purposes,
    provides as follows:

            "For the purposes of this Act, unless the
        contrary intention appears, copyright, in relation
        to a work, is the exclusive right -

    (a)  in the case of a literary ... work, to do
         all or any of the following acts:

         (i)  to reproduce the work in a material
              form;

         ...

         (vi) to make an adaptation of the work;

         (vii)to do, in relation to a work that is
              an adaptation of the first-mentioned
              work, any of the acts specified in
              relation to the first-mentioned work
              in sub-paragraphs (i) to (v),
              inclusive;

            ..."

    The copyright will subsist only if the literary work is "original":  s.32.
    Section 36(1) of the Copyright Act provides, inter alia:

            "Subject to this Act, the copyright in a
        literary ... work is infringed by a person who, not
        being the owner of the copyright, and without the
        licence of the owner of the copyright, does in
        Australia, or authorizes the doing in Australia of,
        any act comprised in the copyright."

    The effect of these sections is that the making of the Wombat ROMs and EPROM
    in Australia would have constituted an infringement of the first respondent's
    copyright if either -

        (1)  (a)  the Applesoft and Autostart source programs
         were original literary works; and

    (b)  the Applesoft and Autostart object programs
         were adaptations of the Applesoft and
         Autostart source programs; and

    (c)  the Wombat object programs embodied in the
         ROMs and EPROM were reproductions of the
         Applesoft and Autostart object programs; or

        (2)  (a)  the Applesoft and Autostart source programs
         were original literary works; and

    (b)  the Wombat object programs embodied in the
         ROMs and EPROM were either adaptations or
         reproductions of the Applesoft and Autostart
         source programs respectively; or

        (3)  (a)  the object programs embodied in the Apple ROMs
         were original literary works; and

    (b)  the object programs embodied in the Wombat
         ROMs and EPROM were reproductions of the
         Applesoft and Autostart object programs
         respectively.

    8.  The majority of the Federal Court accepted the first of
    these propositions as correct.  It is clear that if either the source programs
    or the object programs of Applesoft and Autostart were original literary works
    in which copyright might subsist within the meaning of the Copyright Act, the
    first respondent was the owner of the copyright.

    9.  It is well settled that in the case of a literary work
    copyright does not exist in ideas or information but in "the order of words"
    (Jefferys v. Boosey (1854) 4 H.L.C. 815, at p.867 (10 E.R. 681, at p.702)),
    that is, in the particular form of expression in which the ideas or
    information are conveyed:  see Blackie & Sons Ltd. v. Lothian Book Publishing
    Co. Proprietary Ltd. (1921) 29 C.L.R. 396, at p.400; Victoria Park Racing and
    Recreation Grounds Co. Ltd. v. Taylor (1937) 58 C.L.R. 479, at pp.498, 511.
    And, in the case of a literary work, the expression must be in print or
    writing, as the ordinary meaning of the words "literary work" suggests.  In
    University of London Press, Limited v. University Tutorial Press, Limited
    (1916) 2 Ch. 601, it was said, at p.608, that "the words 'literary work' cover
    work which is expressed in print or writing, irrespective of the question
    whether the quality or style is high". That passage was cited with approval in
    Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. (1964) 1 W.L.R. 273,
    at pp.285, 291; (1964) 1 All E.R. 465, at pp.475, 479. However, for the
    purposes of the Copyright Act "writing" is given an extended definition; it
    means "a mode of representing or reproducing words, figures or symbols in a
    visible form", and "written" has a corresponding meaning: see s.10(1).

    10. The programs in the present case were first expressed as
    source programs, i.e. in writing in an assembly code.  A literary work need
    not be expressed in ordinary language. For example, it is well settled that
    there may be copyright in a list of words used as a telegraph code, or in a
    catalogue of sets of type or in a system of shorthand: Copinger and Skone
    James on Copyright, 12th ed. (1980), par.156.  The fact that the programs were
    expressed in an assembly code creates no obstacle to regarding them as
    literary works. However, it was submitted, in reliance on Hollinrake v.
    Truswell (1894) 3 Ch. 420, that the source programs were not literary works
    because they were merely directions to be understood and used with an
    apparatus - viz. a computer. Hollinrake v. Truswell was a case in which a
    cardboard sleeve chart, i.e. a representation of a sleeve designed for a
    lady's arm with certain scales of measurements on it, intended for practical
    use in dressmaking, was not a literary work.  Davey L.J. said, at p.428:  "a
    literary work is intended to afford either information and instruction, or
    pleasure, in the form of literary enjoyment".  That passage was recently
    approved by the English Court of Appeal in Exxon Corporation v. Exxon
    Insurance Consultants International Ltd.  (1982) Ch. 119, at pp.143, 144;
    (1982) R.P.C. 69, at pp.88, 89.  The source programs satisfy this test; they
    afford instruction to the operator keying in the machine that will convert the
    source code to object code.  The source program is not itself an apparatus or
    contrivance like the sleeve in Hollinrake v. Truswell, nor is it part of an
    apparatus or contrivance like the printed face of the barometer which was held
    not to be the subject of copyright in Davis v. Comitti (1885) 52 L.T.N.S. 539
    or the perforated sheets which were held to be part of the player piano in
    Boosey v. Whight (1900) 1 Ch. 122, at p.125.  In my opinion, clearly the
    source programs were literary works.

    11. Further, the source programs were "original" literary
    works within the meaning of s.32 of the Copyright Act.  The expression
    "original" in that section does not mean that the work must be the expression
    of original or inventive thought.  "The originality which is required relates
    to the expression of the thought.  But the Act does not require that the
    expression must be in an original or novel form, but that the work must not be
    copied from another work - that it should originate from the author":
    University of London Press, Limited v. University Tutorial Press, Limited, at
    pp.608-609  and see Sands & McDougall Proprietary Ltd. v. Robinson (1917) 23
    C.L.R. 49 and Victoria Park Racing and Recreation Ground Co. Ltd. v. Taylor,
    at p.511.  Originality is a matter of degree, depending on the amount of
    skill, judgment or labour that has been involved in making the work:  see
    Ladbroke (Football) Ltd. v.  William Hill (Football) Ltd., at pp.277-278, 282,
    285; pp.469, 473, 475 of All E.R. There is no doubt that the production of the
    source programs in the present case involved sufficient skill, labour and
    experience on the part of the authors to satisfy the requirement of
    originality.  For these reasons the source programs were original literary
    works.

    12. The question that then arises is whether the Applesoft
    and Autostart object programs embodied in the ROMs were literary works.  As
    has been shown, those programs existed in the form of a sequence of electrical
    impulses, or possibly in the pattern of circuits that when activated generated
    those electrical impulses.  On any view they were not expressed in writing or
    print.  Although the electrical impulses could be represented by words or
    figures, the impulses themselves did not represent or reproduce any words and
    figures.  They were not visible or otherwise perceptible, and they were not,
    and were not intended to be, capable by themselves of conveying a meaning
    which could be understood by human beings.  Obviously, the patterns of the
    circuits in the ROMs also did not represent or reproduce any words or figures,
    and were incapable of conveying any meaning.  It is true that the object
    programs might have been printed out in binary or hexadecimal form, but the
    question whether any such written expression of the programs would have been a
    literary work is not the question that now falls for decision.  We are
    concerned with the object programs embodied in the ROMs and it seems clearly
    to follow from the cases already cited, which decide that a literary work is a
    work expressed in print or writing, that they were not literary works.

    13. However, it was submitted on behalf of the respondents
    that it is not right to say that a literary work must be expressed in writing;
    indeed, it was submitted, the work need not be visible.  The submission was
    that a literary work may be made in any material form, including that of a
    ROM.  This argument is based on s.22(1) of the Copyright Act which reads as
    follows:

            "A reference in this Act to the time when, or
        the period during which, a literary, dramatic or
        musical work was made shall be read as a reference
        to the time when, or the period during which, as
        the case may be, the work was first reduced to
        writing or to some other material form."

    The sub-section refers to dramatic and musical as well to literary works.  It
    is obvious enough that a dramatic work or a musical work may first appear in
    some material form other than writing.  That is not so obviously true of a
    literary work, having regard to the wide definition of "writing" in s.10(1) of
    the Act, which would seem to include such things as the carving of letters on
    stone and the printing of Braille.  One thing that is clear however is that
    the time to which s.22(1) refers is the time when the "work", which is defined
    in s.10(1) to mean "a literary, dramatic, musical or artistic work", is first
    reduced to writing or to some other material form.  Assuming that a ROM is a
    material form for the purposes of the section, the question becomes whether
    the object code was a "work" that was reduced to the form of the ROM.  As has
    already been seen, a source program is a literary work, and the print-out of
    an object program may be a literary work, but the question is whether the
    object program as embodied in the ROM - the sequence of electrical impulses or
    the pattern of circuits - was a "work", i.e. a literary work, for it was not a
    dramatic, musical or artistic work.  It seems to me a complete distortion of
    meaning to describe electrical impulses in a silicon chip, which cannot be
    perceived by the senses and are not intended to convey any message to a human
    being and which do not represent words, letters, figures or symbols as a
    literary work; still less can a pattern of circuits be so described.

    14. I therefore hold that the object programs were not
    themselves literary works.  It is unnecessary to consider whether the ROMs
    should be regarded as mere adjuncts to a mechanical contrivance (the computer)
    and for that reason alone should be regarded as not the subject of copyright,
    on the authority of such cases as Hollinrake v. Truswell.  It is further
    unnecessary to consider whether the fact that Applesoft and Autostart are
    operational programs (essential to the general functioning of the computer)
    rather than application programs (designed for specific purposes) would be
    material to the consideration of such a question.

    15. The next question that falls for decision is whether the
    Applesoft and Autostart object programs were adaptations of the Applesoft and
    Autostart source programs.  By s.10(1) of the Copyright Act "adaptation" is
    defined to mean:

        "(a) in relation to a literary work in a
            non-dramatic form - a version of the work
            (whether in its original language or in a
            different language) in a dramatic form;

        (b)  in relation to a literary work in a dramatic
             form - a version of the work (whether in its
             original language or in a different language)
             in a non-dramatic form;

        (c)  in relation to a literary work (whether in a
             non-dramatic form or in a dramatic form) -

             (i)  a translation of the work; or

             (ii) a version of the work in which a story or
                  action is conveyed solely or principally
                  by means of pictures; and

        (d)  in relation to a musical work - an arrangement
             or transcription of the work".

    It was argued on behalf of the respondents that the embodiment of the object
    programs in the silicon chips was a translation of the source programs and
    therefore an adaptation within par.(c)(i) of this definition.  Reliance was
    placed on the Shorter Oxford English Dictionary, which defines "translation"
    not only as "The action or process of turning from one language into another"
    but also, in transferred and figurative use, as "The expression or rendering
    of something in another medium or form".  When the definition of "adaptation"
    in s.10(1) is read as a whole, it suggests that the primary, and not the
    transferred and figurative, meaning of "translation" is intended.  If that
    were not so the provisions of pars.(a), (b) and (c)(ii) of the definition
    would appear to be surplusage.  Clearly the programs in the ROMs were not a
    translation of the source programs within the primary meaning of the word,
    because when the programs were embodied in the ROMs they were not turned into
    another language, even into another computer language - they were turned into
    electrical impulses.  If it be assumed, contrary to my opinion, that
    translation in the definition is used also in its transferred and figurative
    sense, I consider that the object programs in the ROMs were not a translation
    of the source programs within that usage of the expression.  When the
    dictionary definition refers to "the expression or rendering of something in
    another medium or form" it must refer to the portrayal, utterance,
    representation, reproduction or depiction of the thing in a different medium
    or form.  The ROMs did not in any way express or render the source programs;
    rather, the ROMs were the means of putting into action and making effective
    the instructions written in the source programs.  Just as a person does not
    (except in a metaphorical sense) translate the instructions for the working of
    a machine when, following those instructions, he sets the machine in motion,
    so the electrical charges in the ROMs effectuate, but do not translate, the
    instructions in the source program. Fox J., in his judgment, refers to the
    1979 Report of the United States National Commission on New Technological Uses
    of Copyright Works, where it is said:

        "An object code is the version of a program in
        which the source code language is converted or
        translated into the machine language of the
        computer with which it is to be used."

    The word "translated" in this passage is used in a metaphorical sense, and the
    passage does not provide an example of the use of the word in its ordinary and
    natural meaning.

    16. A further reason for supporting the conclusion that the
    object programs were not adaptations is that the definition of "adaptation",
    and the words of s.31(1)(a)(vii), suggest that an adaptation must itself be a
    "work".  As has been seen, the object programs were not works.

    17. It follows, of course, that the Wombat object programs
    themselves were not adaptations of the Applesoft and Autostart source
    programs. The final question for decision then becomes whether the Wombat
    object programs embodied in the ROMs and EPROM were reproductions of the
    Applesoft and Autostart source programs.  A reproduction within the meaning of
    the Copyright Act includes a reproduction of a substantial part of the work
    (see s.14 of the Copyright Act).  The notion of reproduction involves two
    elements - that the infringing work sufficiently resembles the copyright work
    and that it was produced by the use of the copyright work.  The latter element
    is satisfied in the present case where the appellants clearly appropriated for
    themselves some of the benefits of the respondents' work. The former element
    requires that there should be "a sufficient degree of objective similarity
    between the two works": see Francis Day & Hunter Ltd. v. Bron (1963) Ch. 587,
    at p.614; Lend Lease Homes Pty. Ltd. v. Warrigal Homes Pty. Ltd. (1970) 3
    N.S.W.R. 265, at p.273; S.W. Hart & Co. Pty. Ltd. v. Edwards Hot Water Systems
    (1985) 59 A.L.J.R. 729, at p.730; 61 A.L.R. 251, at p.253.  It is impossible
    to say that there is any objective similarity between the ROMs and EPROM on
    the one hand and the written source programs on the other.  Neither the
    silicon chips nor the electrical impulses that may be generated in them have
    the slightest resemblance to the written source programs.  The Wombat ROMs and
    EPROM may well be reproductions of the Apple ROMs but they are not
    reproductions of the Applesoft and Autostart source programs.  The ROMs and
    EPROM give effect to the same idea as that which is expressed in the source
    programs but do not resemble the source programs.  It is established that a
    work which is manufactured in accordance with written instructions is not a
    reproduction of those instructions. Thus it was held in Cuisenaire v. Reed
    (1963) V.R. 719 that a set of coloured rods did not infringe copyright in a
    book which described a method of teaching mathematics with the aid of such
    rods, and Pape J. said, at p.734, that "a set of written directions is not
    'reproduced' by the construction of an article made in accordance with those
    directions". Similarly, in Boosey v. Whight it was held that perforated rolls
    used to produce particular melodies did not infringe the copyright in sheets
    of music on which the score of those melodies was written and in Brigid Foley
    Limited v. Ellott (1982) R.P.C. 433 it was held that knitted garments produced
    by following the instructions in a knitting guide would not be reproductions
    of the knitting guide itself.  The ROMs and EPROM embody the idea, and logical
    structure, of the source programs, but do not reproduce the expression of the
    idea and of the logical thought which is to be found in the source programs.

    18. The questions involved in this case are of considerable
    difficulty, and they have given rise to differences of opinion in the writings
    on the subject.  We were referred to some authorities which are contrary to
    the conclusions that I have reached.  In the United Kingdom, the provisional
    opinion has been expressed by judges in interlocutory proceedings that a
    machine code program is either a reproduction or an adaptation of an assembly
    code program: Sega Enterprises Ltd. v. Richards (1983) F.S.R. 73; Thrustcode
    Ltd. v. W.W. Computing Ltd. (1983) F.S.R. 502. In Canada and in South Africa
    it has been held that a program in an object code may be a literary work:
    I.B.M. Corporation v. Ordinateurs Spirales Inc. (1984) 80 C.P.R. (2d) 187; La
    Societe D'Informatique R.D.G. Inc. v. Dynabec Ltd.  (14 August 1984;
    unreported); Northern Micro Computers v. Rosenstein (1982) F.S.R. 124.  There
    are some differences between the language of the statutes considered in those
    cases and that of the Copyright Act, but I am not sure that the differences
    are material.  In the United States the question has been considered in a
    number of cases and it has been held that an object code is entitled to
    copyright protection (see particularly Apple Computer Inc. v. Franklin
    Computer Corporation  (1983) 714 F.2d. 1240 and Apple Computer Inc. v. Formula
    International Inc. (1984) 725 F.2d. 521) but the statute law in the United
    States is materially different from that of Australia. I have not found
    anything in any of those authorities that has persuaded me that a sequence of
    electrical impulses in a silicon chip, not capable itself of communicating
    anything directly to a human recipient, and designed only to operate a
    computer, is itself a literary work, or is the translation of a literary work,
    within the Copyright Act.  It may be regretted that the respondents have no
    remedy in copyright against the appellants who pirated their programs.
    However although it would be no doubt right to give the Copyright Act a
    liberal interpretation, it would not be justifiable to depart altogether from
    its language and principles in an attempt to protect the products of
    scientific and technological developments which were not contemplated, or only
    incompletely understood, when the statute was enacted. To keep copyright law
    abreast of developing technology is no new problem, as the decision in Boosey
    v. Whight shows.  The provisions of s.21(1) and Pt.IV of the Copyright Act
    were intended to take account of technological developments unknown when the
    earlier copyright acts came into force. The Copyright Amendment Act  1984
    similarly attempts to make the law adequate to cope with modern developments.
    Important questions of policy arise when it becomes necessary to consider
    whether copyright protection should be extended to such a thing as a ROM, and
    the courts can act only within the existing statutory framework.

    19. Since the respondents must fail entirely in the
    proceedings the question of knowledge raised by the cross-appeal does not
    arise.

    20. I would allow the appeal, dismiss the cross-appeal and
    restore the orders made by the learned trial judge.
    JUDGE2
    MASON AND WILSON JJ.:    The respondents instituted proceedings in the Federal
    Court of Australia seeking relief, inter alia, in respect of the alleged
    infringement by the appellants of the copyright of the first respondent in two
    computer programs.  The programs are those described as Applesoft object
    program and Autostart object program respectively.  In their primary form each
    of these programs consists of a series of electrical impulses which initiate
    and control the basic operations of the computer.  They are contained in six
    ROMs fitted into the respondents' Apple II computer.  The computer is marketed
    in Australia by the second respondent.

    2.  The appellants import into Australia for the purpose of sale a computer
    known as "Wombat".  It is manufactured in Taiwan.  The Wombat is similar in
    appearance to the Apple II computer and its programs are represented as being
    compatible with those of the Apple II.  The similarity extends even further.
    The Wombat has fitted within it two ROMs and one EPROM which together contain
    programs which are virtually identical to the Applesoft object program and the
    Autostart object program.  The finding of the learned trial judge that the
    former programs were in fact copied from the latter is not contested by the
    appellants.  It is this copying that raises the issues that are now to be
    determined.

    3.  At first instance the respondents failed to persuade Beaumont J. that
    their object programs were protected by copyright in accordance with the
    Copyright Act 1968 (Cth), as amended ("the Act").  His Honour held that
    neither these object programs nor the written source programs from which they
    were derived were original literary works capable of attracting copyright
    protection.  Subsequent to the decision the Parliament enacted the Copyright
    Amendment Act 1984 (Cth) in order to ensure a degree of protection to computer
    programs in the future but the terms of that enactment are not material to the
    present proceedings.  It does mean, however, that similar issues that may
    arise in future proceedings will have a very different statutory context for
    their resolution.  In the meantime the respondents appealed successfully to
    the Full Court of the Federal Court.  It was held by a majority (Fox and
    Lockhart JJ., Sheppard J. dissenting) that the programs contained in the
    Wombat ROMs and EPROM were reproductions of the programs contained in the
    Apple II ROMs, which were themselves adaptations of the Applesoft source
    program and the Autostart source program respectively. The Full Court was
    unanimous in concluding that these source programs were original literary
    works, but divided on the adaptation issue.  On the question of infringement,
    the issue in the Full Court was whether the appellants had the knowledge
    necessary to constitute infringement under ss.37 and 38 of the Act, namely,
    the knowledge that the making of the ROMs and EPROM used in the Wombat
    computer would have constituted an infringement of the respondents' copyright
    if they had been made in Australia by the importer.  A belated attempt by the
    respondents to establish infringement by reference to s.36 of the Act was
    rejected by the Full Court on the ground that the issues arising under that
    section had not been fully canvassed at the trial.  A further attempt in this
    Court to rely upon s.36 failed.  In the result the Full Court held that the
    appellants had the requisite knowledge at least from the commencement of the
    proceedings and that injunctions should be granted on a quia timet basis, with
    the proviso that if a claim for damages for past infringements was to be
    pursued the matter should be referred back to the trial judge for findings
    concerning prior knowledge.

    4.  Special leave to appeal having been granted, the appellants now appeal to
    this Court.  The respondents cross-appeal on the issue of knowledge and ask
    that the matter be referred back to Beaumont J. for an assessment of damages
    or, at the election of the cross-appellants, an order for an account of
    profits.

    5.  Before leaving the decision of the Full Court, it is to be observed that
    each of the reasons of their Honours includes, in clear and simple language, a
    description of the operation of a computer sufficient to provide the
    background to a determination of the issues in the present case.  The decision
    has been reported:  (1984) 53 A.L.R. 225.  The descriptions are to be found at
    pp.229-234 (Fox J.), pp.247-253 (Lockhart J.) and pp.271-274 (Sheppard J.).
    We do not find it necessary to attempt a similar exposition and express our
    gratitude to their Honours for relieving us of any obligation to do so.
    Again, we do not find it necessary to repeat the detailed statement of agreed
    facts which is conveniently appended to the reasons of Fox J., commencing at
    p.242.  We are broadly in agreement with the reasons and conclusions of Fox J.
    and Lockhart J. and will attempt to avoid undue repetition.

    6.  The relevant programs of the respondents were developed in this way.  In
    1977 Mr Wigginton, who was employed by the first respondent, obtained a copy
    of the Microsoft Basic program from another manufacturer and set about
    modifying it.  The modification involved considerable skill, time and effort.
    The entire program was written out and with suitable amendment re-expressed in
    the shorthand form of language called "6502 Assembly Code".  This code
    consists of mnemonics, each comprising three letters of the alphabet. It is a
    language which can be readily understood by persons skilled in its use.  The
    program so devised by Wigginton was called "Applesoft" and when expressed in
    6502 Assembly Code was described as the Applesoft source program.  In its
    original written form the Applesoft source program included both labels and
    comments to assist the programmer in converting the program into the Applesoft
    object program. This conversion was achieved by using a computer to reduce the
    6502 Assembly Code in which the Applesoft source program was expressed into
    machine language consisting of a series of electrical impulses which were then
    able to be stored on a magnetic disc or tape or permanently installed in the
    Apple II computer on ROMs.  The ROMs are embodied in silicon chips.  After its
    conversion into the Applesoft object program, the Applesoft source program was
    destroyed and whilst it is possible to extract from the computer a
    reconstruction of the mnemonics that were employed it is not possible to
    reproduce the labels and instructions. It is also possible to produce a
    written description of the object program, expressed either in binary form or
    in a form of language known as hexadecimal notation.

    7.  Whether it is the series of electrical impulses stored in the ROMs or the
    written description in binary or hexadecimal notation that is truly the object
    program is not entirely clear.  However, the case has been conducted on the
    footing that it is the former rather than the latter (see the judgments of Fox
    and Sheppard JJ. in the Federal Court, at pp.232 and 273 respectively, which
    seem to reflect pars. 22 and 22A of the agreed statement of facts at p.244,
    but contrast that of Lockhart J. at pp.250-251).  We propose to deal with the
    case on this footing as no issue is raised with respect to it in this Court.

    8.  A similar history attends the creation of the Autostart source program.
    It was devised in 1977 by Mr Wozniak and later modified by Mr Arkley in 1978.
    Wozniak was an officer of the first respondent and Arkley was one of its
    employees. The Autostart source program was then reduced with the aid of a
    computer into machine language and in that form became known as the Autostart
    object program.

    9.  In substance, the case for the respondents is that each of the object
    programs is an original literary work in which copyright subsists and of which
    copyright the first respondent is the owner.  Alternatively, it is said that
    each of the source programs is an original literary work and that the object
    programs are translations and therefore adaptations of the respective source
    programs.  In that character also the object programs are the subject of
    copyright.  The respondents assert that the Wombat ROMs and EPROM are a
    reproduction of the programs embodied in the Apple II ROMs, namely, the
    Applesoft object program and the Autostart object program and that, having
    regard to ss.37 and 38 of the Act, there has been infringement.  As we have
    said, the Full Court was unanimous in holding that the two source programs
    were original literary works within the meaning of s.32 of the Act and the
    majority held also that the object programs were adaptations respectively of
    the source programs.  Neither Fox J. nor Lockhart J. found it necessary to
    determine whether the object programs were themselves original literary works
    but Sheppard J. held that they were not.  In addition the majority held that
    in the case of each program the Wombat ROMs and EPROM were reproductions in a
    material form of an adaptation of an original literary work and hence within
    s.31(1)(a)(i) and (vii) of the Act.  The Court was not required to consider
    whether the Wombat ROMs and EPROM were themselves a reproduction in a material
    form of the Applesoft and Autostart source programs.

    10.  The appellants challenge each of the findings of Fox J. and Lockhart J.
    In the first place, it is argued that the source programs were not original
    literary works because in order to satisfy that description the work must
    afford either information and instruction or pleasure in the form of literary
    enjoyment to human beings.  Reliance is placed on the recent decision of the
    Court of Appeal in England in Exxon Corporation v. Exxon Insurance Ltd. (1982)
    Ch 119 and the approval expressed in that decision of the observations of
    Davey L.J. in Hollinrake v. Truswell (1894) 3 Ch 420, at p 428:

        "Now, a literary work is intended to afford either
        information and instruction, or pleasure, in the
        form of literary enjoyment".

    Even if this statement was adopted, for the purpose of applying the current
    legislation, as an exhaustive definition of a literary work, it seems to us
    that the appellants would be hard pressed to deny that the source programs,
    expressed in 6502 Assembly Code, were intended to afford information and
    instruction.  In any event, we agree with the view expressed by all the
    members of the Full Court that nothing said in the cases we have mentioned was
    intended to establish a comprehensive or exhaustive definition of a literary
    work for copyright purposes. Certainly, the actual decision in each of those
    cases affords no assistance to the appellants.  In Hollinrake v. Truswell,
    copyright protection was denied to words and figures "inscribed on and
    necessarily forming part of an apparatus or tool" (per Lord Herschell L.C., at
    p.424).  In Exxon Corporation, the Court of Appeal denied the character of a
    literary work to the single word "Exxon" standing alone.  The short reason for
    that conclusion was expressed by the learned judge at first instance, Graham
    J., whose decision was affirmed by the Court of Appeal, when his Lordship said
    at p.130:

        "It is a word which, though invented and therefore
        original, has no meaning and suggests nothing in
        itself".

    11.  The Act defines a literary work to include "a written table or
    compilation" (s.10(1)).  In University of London Press, Limited v. University
    Tutorial Press, Limited (1916) 2 Ch 601, Peterson J., after referring to a
    similar reference to "literary work" in s.35 of the Copyright Act 1911 (U.K.)
    said, at p.608:

        "In my view the words 'literary work' cover work
        which is expressed in print or writing,
        irrespective of the question whether the quality or
        style is high.  The word 'literary' seems to be
        used in a sense somewhat similar to the use of the
        word 'literature' in political or electioneering
        literature and refers to written or printed
        matter".

    Later in his judgment (at pp.609-610), his Lordship added:

        "The objections with which I have dealt do not
        appear to me to have any substance, and, after all,
        there remains the rough practical test that what is
        worth copying is prima facie worth protecting".

    In the result, examination papers were held to be the subject of copyright.
    The observations of Peterson J. were referred to with approval by Lord Reid,
    Lord Hodson and Lord Pearce in the football coupon case - Ladbroke (Football)
    Ltd. v. William Hill (Football) Ltd. (1964) 1 WLR 273, at pp 285, 291; (1964)
    1 All ER 465, at pp 475, 479.

    12.  We have no hesitation in coming to the conclusion that each of the source
    programs was an original literary work. The question is to be answered by
    reference to their form and character at the time of their completion by
    Messrs Wigginton and Arkley respectively.  Whether or not a literary work must
    be in writing, these programs were written.  Although the substance of the
    program in each case was expressed in 6502 Assembly Code, this is a language
    which was readily intelligible to anyone versed in computer science.  Each
    program was the product of skill, time and effort.  It was a particular kind
    of vehicle for the communication of useful information to persons who may
    desire it.  The fact that its creation was a step towards the goal of
    facilitating the operation of a computer does not warrant its dismissal by the
    appellants as no more than a mere adjunct to the operation of a mechanical
    device, by analogy with the sleeve which was the subject of the decision in
    Hollinrake v. Truswell.  On any view, in the form in which it was created and
    before it was transformed into another medium, each source program had an
    existence which was entirely independent of the machine.  It was capable of
    conveying meaning as to the arrangement and ordering of instructions for the
    storage and reproduction of knowledge.  In that form it was entitled to
    copyright protection.

    13.  The second submission of the appellants is that even if the source
    programs are the subject of copyright, the object programs are not.  It is
    said that the members of the Full Court who formed the majority erred in
    holding each object program to be a "translation" of the relevant source
    program and therefore an adaptation of a literary work within the meaning of
    that term as defined in s.10(1).  The arguments advanced in support of the
    submission may be summarized as follows:

        (a)  the object programs are merely sequences of
    electrical impulses within the computer;
        (b)  a translation, in order to constitute an
    adaptation, must be a translation from one human language to another;
        (c)  a translation of a literary work must itself be a
    literary work;
        (d)  a translation of a literary work must convey a
    clear idea of the literary work to human beings.

    14.  It is not correct to describe an object program as merely a sequence of
    electrical impulses within the computer.  Electrical impulses there are, but
    those impulses serve to identify a set of instructions in machine readable
    language designed to guide the machine in its basic operations.  They do not
    form part of the computer itself, notwithstanding that they may be embodied in
    a ROM or ROMs located permanently in silicon chips in a machine.  They might
    equally well be contained in a magnetic disc or tape which can be inserted
    into or removed from the machine at will.  The language may be recorded in
    visible form in binary or hexadecimal notation.  The same result as is
    achieved by the use of an object program could be achieved by the manual
    operation of a computer in accordance with instructions written out in
    ordinary English and contained in a manual.  The only problem would be that
    such a process would be impossibly tedious and therefore wholly impracticable.

    15.  The next question is whether the object program is a translation of the
    source program.  The word "translation" is not defined in the Act.  One of the
    meanings given in the Shorter Oxford English Dictionary is "the expression or
    rendering of something in another medium or form".  In the Federal Court,
    Sheppard J. was of the opinion that a translation did not encompass something
    which could neither be seen nor heard.  With all respect to his Honour, we are
    unable to share that view.  True it is that the object program can be neither
    seen nor heard, but there can be no doubt that it exists and one knows where
    it can be found and how it can be activated.  It seems to us that the
    conversion of a source code into an object code, albeit by the mechanical
    operation of a computer, is a process which effects a "translation" of the
    source code from one language into another language.  It is immaterial that
    the last- mentioned language takes a form which can only be read and
    understood in that form by a machine.  It is an adaptation of a literary work.
    This conclusion finds support in the statement from the 1979 report of the
    United States National Commission on New Technological Uses of Copyright Works
    at p.21, n.109, which was cited by Fox J.  at p.235 of his Honour's judgment
    in the Federal Court:

        "A source code is a computer program written in any
        of several programming languages employed by
        computer programmers.  An object code is the
        version of a program in which the source code
        language is converted or translated into the
        machine language of the computer with which it is
        to be used".

    We therefore reject the argument of the appellants that the only relevant
    translation is that which translates one human language into another human
    language.  We also find no warrant for the argument that a translation must
    convey a clear idea of the literary work to human beings although, if it
    matters, there is no reason why an object program may not be reduced to
    writing and understood by those skilled in the art.

    16.  The question whether an adaptation of a literary work must itself be a
    literary work is more difficult of resolution.  Fox J. (at pp.235-236)
    considered it to be plain from the language of the Act itself that the
    question must be answered in the negative, and he did not find it necessary to
    consider whether the Apple II object codes could be regarded as literary
    works.  Lockhart J. did not address the question.  His Honour, however, did
    confess to having considerable reservations about the correctness of the view
    that object programs are original literary works (a question which he did not
    have to decide), but we would understand that to be a different question from
    the one we are presently considering.  Section 31(1)(a)(vii) provides that
    copyright, in relation to a literary work, is the exclusive right, inter alia,
    to reproduce in a material form a work that is an adaptation of that literary
    work.  "Work" is defined in s.10(1), unless the contrary intention appears, to
    mean inter alia a literary work.  Prima facie, therefore, an adaptation of a
    literary work must itself satisfy the description of a literary work.  Of
    course, one would expect that an adaptation, in this case a translation of the
    original literary work constituted by the source codes, would continue to
    display, in its new form, the characteristics which enabled the original work
    to satisfy that description. But it is argued for the appellants that that is
    not so in the present case because a literary work must be in writing.
    Ordinarily and traditionally it is no doubt true that a literary work would
    take a written form. But the Act does not require it to be so.  Indeed,
    s.22(1) of the Act identifies the time when a work is made as the time when
    "the work was first reduced to writing or to some other material form" (our
    emphasis).  See also s.21 of the Act.  There seems to be no reason to doubt
    that a literary work is made and entitled to copyright protection from the
    time it is first recorded on tape, if that be the first material form that the
    work takes.  In our opinion, an object code, although brought into existence
    by mechanical means, takes on the same literary character as is possessed by
    the source code from which it is derived.  This conclusion seems necessarily
    to follow, if the protection secured by the Act to the source programs as
    original literary works is to be effective.  If there is no copyright in the
    object programs which are a natural and necessary derivative of the source
    programs then there is no point in protecting the source programs.

    17.  The third submission of the appellants is that the Federal Court erred in
    holding that the Wombat ROMs and EPROM were reproductions of the Apple II ROMs
    which contained the Applesoft object program and the Autostart object program.
    Once it is accepted, first, that the object programs contained in the Apple II
    ROMs are adaptations of original literary works and, secondly, that the object
    programs contained in the Wombat ROMs and EPROM were copied from those
    adaptations, it would seem to follow that the Wombat computers contain a
    reproduction in a material form of an adaptation of an original literary work.
    It is sufficient if the reproduction relates not to the whole but to a
    substantial part of the work:  s.14(1).  The fact that the Apple II programs
    are contained in six ROMs in the Apple II computer but in only two ROMs and
    one EPROM in the Wombat computer is immaterial.  The distinction merely
    represents an advance in computer technology.  It is argued for the appellants
    that the Wombat ROMs and EPROM are not reproductions but are merely
    manufactured in accordance with instructions which can be derived from the
    literary work. But this is to misunderstand what it is that is alleged to have
    been reproduced.  It is unnecessary to decide whether the Wombat ROMs and
    EPROM could be said to be reproductions in a material form of the original
    literary works, namely, the Applesoft and Autostart source programs.  The
    allegation here is that the appellants have reproduced directly the Applesoft
    and Autostart object programs themselves.  Those programs are entitled to
    protection as adaptations of the original literary works.  The appellants
    sought support for the submission in the decision of Pape J. in Cuisenaire v.
    Reed (1963) VR 719, and referred particularly to pp 734-736, where his Honour
    was dealing with a claim by the plaintiff for infringement of literary
    copyright in certain tables and compilations set out in a book published by
    the plaintiff which described a new method of teaching primary school children
    mathematics with the aid of rods of varying lengths and colours.  The
    infringement was alleged to rest, not in the reproduction of the tables and
    compilations themselves, but in the production of the rods. The plaintiff
    failed.  At p.734, Pape J. said:

        "In my view, a set of written directions is not
        'reproduced' by the construction of an article made
        in accordance with those directions.  A
        reproduction must reproduce the original, and here
        the original is in one case a set of words in the
        form of a table and in the other case a series of
        plain and coloured circles which are numbered and
        which are set out in the form of a chart.  In my
        view, the defendants' rods reproduce neither".

    The facts of which his Honour was speaking bear no resemblance to the facts of
    the present case and we are unable to derive from the decision any assistance
    which is material to the present case.  Here the Wombat ROMs and EPROM contain
    in substance the same sequence of electrical impulses as are contained in the
    Apple ROMs.  In our opinion, the Federal Court was correct in its decision on
    the reproduction issue.

    18.  It remains now to consider the cross-appeal.  The respondents
    (cross-appellants) argue that on the evidence before the trial judge the only
    proper conclusion is that the first appellant through its managing director
    the second appellant knew from the time of first importation that if the
    Wombat ROMs and EPROM had been made in Australia they would have constituted
    an infringement of the copyright in the Applesoft and Autostart object
    programs.  The difficulty is that the primary judge did not make any findings
    of fact on the question of the second appellant's knowledge.  The answer to
    that question could well turn on the credibility attaching to the evidence
    given by the second appellant. Both Fox J. and Lockhart J. considered that in
    the absence of the necessary findings of the trial judge on credibility it
    would not be right for an appellate tribunal to draw the inferences necessary
    to sustain the respondents' argument. We agree.

    19.  We would dismiss both the appeal and the cross-appeal.
    JUDGE3
    BRENNAN J.:  The first respondent, Apple Computer, Inc. ("Apple") is a
    Californian corporation which makes and sells computers.  The second
    respondent, a New South Wales company, is the Australian distributor of
    computers made by Apple.  The computer model which is relevant to these
    proceedings is a micro-computer sold under the name "Apple II".  The circuitry
    of the Apple II includes six silicon chips which, in conjunction with the
    other parts of the computer, give it a capacity to perform particular
    functions.  The silicon chips are known, in computer terminology, as ROMs (an
    acronym for "read only memory").

    2.  The first appellant, Computer Edge Pty. Limited ("Computer Edge"), is a
    Victorian company which imported and sold in Australia computers made in
    Taiwan. These computers were sold under the name "Wombat".  The circuitry of
    the Wombat includes three silicon chips which, in conjunction with the other
    parts of the Wombat, give it a capacity to perform functions identical with
    those performed by Apple II.  The electrical operation of the silicon chips in
    the Wombat is very similar to, if not identical with, the electrical operation
    of the six ROMs in the Apple II. Although there is no direct evidence as to
    the way in which the Wombat silicon chips were produced, it is probable that
    they were made by electrical machinery which reproduced on blank silicon chips
    the same circuitry as the circuitry on the Apple II ROMs.  At all events,
    there is no doubt that the circuitry of the Wombat silicon chips was derived
    from the circuitry of the Apple II ROMs.  Two of the Wombat silicon chips are
    ROMs, the other is an EPROM (an acronym for "erasable programmable read only
    memory").  Nothing turns on the difference in number or description of the
    silicon chips to be found respectively in the Apple II and the Wombat.  That
    is because the critical question in this appeal is whether, if Computer Edge
    had produced the Wombat silicon chips in Australia, their production would
    have constituted an infringement of Apple's copyright under the Copyright Act
    1968 (Cth) ("the Act").  That question arises under each of ss.37 and 38 of
    the Act, upon which the respondents relied in proceedings brought against
    Computer Edge and its managing director, the second appellant, in the Federal
    Court of Australia.

    3.  Section 37 of the Act reads as follows:

        "    The copyright in a literary, dramatic, musical
          or artistic work is infringed by a person who,
          without the licence of the owner of the
          copyright, imports an article into Australia for
          the purpose of -

            (a) selling, letting for hire, or by way of
       trade offering or exposing for sale or
       hire, the article;

            (b) distributing the article -

       (i)  for the purpose of trade; or

       (ii) for any other purpose to an extent
            that will affect prejudicially the
            owner of the copyright; or

            (c) by way of trade exhibiting the article in
                public,

          where, to his knowledge, the making of the
          article would, if the article had been made in
          Australia by the importer, have constituted an
          infringement of the copyright."
    <
    Section 38 contains a similar provision relating to infringement by sale of,
    and by other dealings with, imported articles.

    4.  Apple claims copyright in what are respectively called "source programmes"
    and "object programmes" (the nature of which will be examined presently) which
    are said to be "literary works" within the meaning of that term in the Act. At
    the time relevant to these proceedings, that is, before 15 June 1984 when the
    Copyright Amendment Act 1984 came into operation, s.10 of the Act defined a
    "literary work" to include "a written table or compilation".  (The 1984 Act
    amended the definition of "literary work" to include "a computer program or
    compilation of computer programs".) Beaumont J. at first instance held that
    none of the source programmes and object programmes was a literary work.  He
    dismissed Apple's claim.  On appeal, the Full Court (Fox, Lockhart and
    Sheppard JJ.) held unanimously that the source programmes were literary works
    in which copyright subsisted. Fox and Lockhart JJ. did not find it necessary
    to decide whether copyright subsisted in the object programmes, while Sheppard
    J. thought it did not.

    5.  A source programme is compiled in writing by a computer scientist or
    technician for the purpose of making components of a computer that will give
    the computer a capacity to function in a desired way.  It is written in
    letters of the alphabet.  When it is compiled, it is keyed into a computer.
    Each keystroke generates a particular series of electrical impulses.  The
    computer into which a source programme is keyed is equipped with an assembler
    which converts each series of electrical impulses into a different series of
    electrical impulses. The latter series consist in a sequence of "on" or "off"
    electrical charges which cause a computer's micro-processor to function.  The
    sequences of "on" or "off" electrical charges produced by an assembler when a
    source programme is keyed into the computer is called an "object programme".
    The electrical charges constituting an object programme can be recorded as
    magnetic fields on a magnetic tape or disc.  The conventional way of
    describing a sequence of electrical charges on most computer components is by
    using the numerals "0" and "1" to denote "on" and "off" (binary notation).  A
    sequence of four "ons" and "offs" may be in any of 16 possible combinations
    (0000, 0001, 0010, etc).  A shorthand notation has been developed which allows
    each combination to be identified by a numeral in the series "0" to "9" or by
    a letter in the series "A" to "F".  There being sixteen characters - 10
    numbers and 6 letters - in this alphanumeric series, it is described as
    "hexadecimal notation".  By using hexadecimal notation the lengthy sequences
    of "0's" and "1's" which are descriptive of the "on" or "off" electrical
    charges in an object programme can be shortened.  Binary notation and
    hexadecimal notation are conventional ways of representing in writing an
    object programme, but the object programme is not the writing.  The object
    programme is the sequence of electrical charges and its existence and use are
    not dependent on a written representation.

    6.  The relationship between the source programme and the object programme is
    fixed by the assembler, and that relationship is known to and used by the
    compiler of the source programme who so compiles the source programme that the
    desired object programme will be produced when the source programme is keyed
    in. The assembler used in creating the object programmes from the source
    programmes in which Apple claims copyright is known as a "6502 assembler", and
    the source programmes were therefore written in "6502 Assembly Language", to
    adopt the terminology of computer science.  The source programmes for which
    copyright is claimed are known as Applesoft and Autostart.  They were compiled
    by computer scientists employed by Apple.  If those compilations are
    susceptible of copyright, Apple became the owner of that copyright when the
    compilations were made. These source programmes were in writing.

    7.  When the computer into which the source programmes were keyed produced the
    sequences of electrical charges which constituted the object programmes, no
    written compilation of the object programmes in hexadecimal or binary notation
    was made.  At all events, there was no evidence to suggest that the making of
    the Wombat ROMs and EPROM involved any step derived from a written compilation
    of the object programmes.

    8.  The ROMs which are included in the circuitry of Apple II were made by a
    process which commenced with the keying in of the Applesoft and Autostart
    source programmes into a computer and the creation of the electrical charges
    which constituted the corresponding object programmes.  The object programmes
    may have been recorded on magnetic tapes or discs.  Then the object programme
    (either directly or from a magnetic tape or disc on which it had been
    recorded) was recorded upon blank silicon chips.  The process of recording the
    object programme involves the application of the sequence of electrical
    charges to the chip, so that minute fusible connectors in the chip are burned
    out or charges are applied to minute insulated capacitors in the chip.  The
    recording of the programme is practically irreversible.  A printout in
    hexadecimal or binary notation of an object programme contained in the ROMs
    can be recovered from a computer in which the ROMs are installed.  A printout
    of the text of a source programme (other than instructions which are not keyed
    in) can also be recovered.

    9.  As the circuitry of the Wombat ROMs and EPROM was derived from the Apple
    II ROMs, probably by an electrical process which reproduced the object
    programme recorded on the Apple II ROMs, the question for determination is
    whether, if that process had been carried out by Computer Edge in Australia,
    it would have constituted an infringement of Apple's copyright in the
    Applesoft and Autostart source programmes or in the corresponding object
    programmes.  Both source programmes were first published in the United States
    of America.  The corresponding object programmes were first produced there.
    The provisions of the Act apply, in relation to literary works first published
    in the United States of America in like manner as they apply in relation to
    literary works first published in Australia (s.184(1) of the Act and reg.4 of
    the Copyright (International Protection) Regulations.  Computer Edge submits
    that the source programmes are no more than instructions for the operation of
    a computer and that neither the source programmes nor the corresponding object
    programmes are "literary works" susceptible of copyright under the Act.

    10.  A literary work need not have literary merit (Robinson v. Sands &
    McDougall Proprietary Ltd. (1916) 22 CLR 124, at p 133). The words "literary
    work", as Peterson J. pointed out in University of London Press, Limited v.
    University Tutorial Press, Limited (1916) 2 Ch 601, at p 608, "cover work
    which is expressed in print or writing, irrespective of the question whether
    the quality or style is high".  A "literary work", according to Davey L.J. in
    Hollinrake v. Truswell (1894) 3 Ch 420, at p 428, is a work "intended to
    afford either information and instruction, or pleasure, in the form of
    literary enjoyment". Although that case was decided under the Copyright Act of
    1842, the observation of Davey L.J. was adopted by the Court of Appeal in
    Exxon Corporation v. Exxon Insurance Ltd. (1982) 1 Ch 119, at pp 143,144;
    (1982) RPC 69, at pp 88,89.  The observation is not unduly restrictive.  If
    the print or writing in which the work is expressed conveys information or
    instruction, albeit to a limited group with special knowledge,it is immaterial
    that the information or instruction is not expressed in the form of words,
    phrases or sentences.   Thus a telegraphic code has been held to be a literary
    work though the words of the code were meaningless in themselves: D.P.
    Anderson & Co.Limited v. Lieber Code Company (1917) 2 KB 469.  The source
    programmes were the product of substantial originality and skill, they were
    prepared as instructions for the manufacture of Apple II ROMs, they were in
    writing and they conveyed meaning at least to computer scientists and
    technicians.  That is sufficient to bring them within the scope of literary
    copyright.  The argument that a source programme is not a literary work
    proposes a dichotomy between literary works and what are "merely adjuncts to
    the operation of a mechanical device".  The dichotomy is false, for it cannot
    be said that every book of instructions for the operation of a machine is
    outside the scope of copyright protection.  Copyright might not protect every
    minor direction for use of a machine or device, but that is not the present
    case.  Here, the source programmes are a set of complex and precise
    instructions for the manufacture of Apple II ROMs.  The source programmes are
    substantial original compilations.  It would be an infringment of Apple's
    copyright in a source programme to do in relation to that programme in
    Australia without Apple's licence any of the acts prescribed in s.31(1)(a) of
    the Act.

    11.  The corresponding object programmes, on the other hand, are not in
    writing. The electrical charges which constitute them may be represented in
    writing, using the conventional binary or hexadecimal notations.  However, the
    written representation must not be confused with what is represented but not
    written. Copyright protection under Part III of the Act is given only to
    works; under Part IV of the Act it is given to subject matter other than
    works.  The object programmes do not come within Part IV. To be a "work"
    within Part III, an object programme must be one of the four classes of works
    as defined by s.10(1) - literary, dramatic, musical or artistic.  Clearly an
    object programme is not a dramatic, musical or artistic work.  To come within
    the scope of "literary work" as that term was defined in the Act prior to the
    1984 amendment, a literary work had to be in print or writing.  Peterson J. in
    University of London Press, at p.608, said:

        " Copyright Acts are not concerned with the
          originality of ideas, but with the expression of
          thought, and, in the case of 'literary work,'
          with the expression of thought in print or
          writing.  The originality which is required
          relates to the expression of the thought."

    And in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. (1964) 1 WLR
    273, at p 287; (1964) 1 All ER 465, at p 477, Lord Hodson regarded it as the
    undoubted truth that "copyright is not concerned with the originality of
    ideas, but with the expression of thought, in the case of literary work with
    the expression of thought in print or writing".

    12.  Counsel for Apple nevertheless submitted that print or writing is not
    essential to the existence of a literary work, arguing that it is sufficient
    that the work be reduced to some material form.  Some support for that
    submission may be found in s.22 of the Act which prescribes the time of the
    making of "a literary, dramatic or musical work" as the time when "the work
    was first reduced to writing or to some other material form".  It may be that
    the draftsman of s.22 regarded Braille as "some other material form" rather
    than as "writing", for writing is ordinarily read by sight but Braille is read
    by touch. It is unnecessary to speculate on that point.  Section 22 implies
    that the form in which a literary work is expressed is writing or some other
    material form.  A material form is a form which can be perceived by the
    senses.  That is not to say that copyright subsists in a document on which the
    writing of an original literary work appears (In re Dickens, Dickens v.
    Hawksley (1935) Ch 267). Copyright in a work is a right in respect of the form
    to which the work has been reduced, not a right of property in the object in
    or from which the form is perceptible.  But a form from which the words,
    letters or figures of a literary work cannot be perceived by sight or touch
    (or, possibly, hearing) is not a material form to which the work has been
    reduced.  The electrical charges which constitute the object programmes cannot
    be seen or touched or heard or, if they can, they do not communicate the
    letters of the original literary work, the source programmes.  Nor, for that
    matter, do the electrical charges communicate the letters or figures by which
    an object programme may be represented.  The object programmes are not
    literary works.  Apple's right to relief, if any, must depend on its ownership
    of the copyright in the Applesoft and Autostart source programmes.

    13.  As the owner of the copyright in those programmes, Apple had the
    exclusive right in Australia to do all or any of the acts specified in
    s.31(1)(a) of the Act, that is to say -

        " (i)   to reproduce the work in a material form;

          (ii)  to publish the work;

          (iii) to perform the work in public;

          (iv)  to broadcast the work;

          (v)   to cause the work to be transmitted to
       subscribers to a diffusion service;

          (vi)  to make an adaptation of the work;

          (vii) to do, in relation to a work that is an
       adaptation of the first-mentioned work, any
       of the acts specified in relation to the
       first-mentioned work in sub-paragraphs (i)
       to (v), inclusive".

    Sub-paragraphs (i) and (vii) are relied on by Apple to establish infringement
    of its copyright in the source programmes.  The argument which succeeded in
    the Full Court was that the making of the Wombat ROMs and EPROM was a
    reproduction in a material form of the object programmes which are adaptations
    of the corresponding source programmes.  The term "adaptation" is defined by
    s.10(1)(c) of the Act to mean, in relation to a literary work, either -

        " ...

          (i)   a translation of the work; or

          (ii)  a version of the work in which a story or
                action is conveyed solely or principally by
                means of pictures".

    A majority of the Full Court (Fox and Lockhart JJ, Sheppard J. dissenting)
    held that the object programmes were translations and therefore adaptations of
    the source programmes.  If the object programmes are adaptations (that is,
    translations) of the corresponding source programmes, Apple's claim could be
    put on alternative bases: Apple could seek to show that the making of the
    Wombat ROMs and EPROM was a reproduction either of the adaptations of the
    source programmes or of the source programmes themselves.  The majority of the
    Full Court found that there was a reproduction of the "adaptations".  It was
    therefore unnecessary for their Honours to decide whether there was a
    reproduction of the source programmes themselves.

    14.  In the Oxford Dictionary the relevant meanings of translation are given
    as follows:

        " The action or process of turning from one
          language into another; also, the product of this;
          a version in a different language"; and

        " The expression or rendering of something in
          another medium or form, e.g. of a painting by an
          engraving or etching".

    The action or process of turning the source programme in "6502 Assembly
    Language" into the object programme in what is called "machine readable
    language" is said to be a translation.  It strains the meaning of "language"
    to include within its denotation the alphabetic symbols in which the source
    programmes were written.  Although the alphabetic symbols of the source
    programmes may be classified as literary in form for the purposes of the Act,
    I would not describe those symbols as a language, the primary meaning of which
    is "the whole body of words and of methods of combining them used by a nation,
    people or race" (Shorter Oxford Dictionary).  It is difficult to divorce
    "language" from human speech, and a means of communicating ideas which does
    not consist of words is not properly to be described as a language.  A
    chemical formula or a mathematical equation are apt to communicate ideas, but
    I should not classify either as a language.  "6502 Assembly Language" is not a
    language; it is a code.  Even if the code were thought to be susceptible of
    "translation" into another language, it was not so translated: the electrical
    charges which constitute the object programmes are clearly not a language.  To
    describe such electrical charges - no doubt helpfully enough for the purposes
    of computer science - as "machine readable language" is to make metaphor serve
    as reality. The machine has no comprehension of thought which it is the
    essential purpose of language to convey, and the fact that a micro-processor
    is activated by a sequence of electrical charges in a predictable way does not
    mean that it has understood and executed some command.

    15.  The secondary meaning of translation comes closer to describing the
    connection between the sequences of electrical charges constituting the source
    programmes and corresponding object programmes.  Like the messages sent by a
    morse telegraphist, the object programmes might be regarded as an expression
    of the original text in a different medium: a translation of a written text
    into a sequence of electrical charges.  The fact that an object programme will
    so operate upon a suitably programmed computer as to cause it to print out
    either the original written text (the source programme) or a binary or
    hexadecimal notation of the electrical charges (the object programme) makes it
    arguable (I need put it no higher) that an object programme is an expression
    of a source programme in another medium and is a "translation".  This
    approach, freed from the confusion arising from the metaphorical use of
    "language", might command acceptance if it were not for the necessity of the
    "adaptation" being itself a "work". In the Full Federal Court, the majority
    did not think it necessary to decide whether an "adaptation" (that is, a
    "translation") was a "work" but I respectfully disagree. The language of
    s.31(1)(a)(vii) is clear: "a work that is an adaptation".  We have seen that a
    sequence of electrical charges constituting an object programme is neither a
    literary work nor any other kind of "work".  An object programme is therefore
    not "a work that is an adaptation" of the source programme in which copyright
    subsists.

    16.  The alternative basis of Apple's claim rests on sub-par.(i) of s.31(1)(a)
    of the Act.  If the recording of the object programmes on the silicon chips
    included in the Wombat computers "reproduced" the copyright source programmes
    in a material form, it would have been an infringement by Computer Edge of
    Apple's copyright in the source programmes to make the Wombat ROMs and EPROM
    in Australia without the licence of Apple (s.36(1)).

    17.  An exclusive right to reproduce a work in which copyright subsists has
    been an aspect of copyright created by successive Copyright Acts.  Each Act
    differed from the others, of course, in the terms and context by and in which
    that exclusive right was conferred.  Under the Fine Arts Copyright Act 1862
    (Imp.), the exclusive right "of copying, engraving, reproducing and
    multiplying" an original painting or drawing "by any means and of any size"
    was held not to be infringed by the representation of a painting by a grouping
    of figures in a tableau vivant: Hanfstaengl v. Empire Palace (1894) 2 Ch 1.
    The Copyright Act 1911 (U.K.), adopted subject to modifications by the
    Copyright Act 1912 (Cth), adopted a different formulation of the right.
    Section 1(2) of the 1911 Act conferred "the sole right to produce or reproduce
    the work ... in any material form whatsoever".  That provision was thought to
    give wider protection to authors than that given by the 1862 Act and to remedy
    the effect of the decision in Hanfstaengl v. Empire Palace: see Bradbury,
    Agnew & Company v. Day (1916) 32 TLR 349; Chabot v. Davies (1936) 3 All ER
    221; King Features Syndicate, Inc. v. O. & M. Kleeman, Ld. (1940) Ch 806, at
    pp 816,827; (1941) AC 417, at pp 432,435. Under the 1911 Act, the sole right
    of reproduction of a work is infringed by its unlicensed reproduction in a
    material form different from the form in which the original work is made. The
    widening of protection was particularly significant for the protection of
    artistic works.  The sole right to reproduce an artistic work was infringed by
    the unlicensed making, in any material form, of an object visually similar to
    and derived from the original work.  The protection thus accorded to original
    artistic works, which included mechanical drawings, was thought to be too wide
    and a limitation was enacted (see the Copyright Act 1956 (U.K.), s.9(8), and
    its analogue in s.71 of the Act).  The extent of the limitation was considered
    by this Court in S.W. Hart &. Co.Pty.Ltd. v. Edwards Hot Water Systems (1985)
    59 ALJR 729, at p 738; 61 ALR 251, at p 267, where I drew attention to the
    difficulty of applying the test of visual similarity to a written
    specification - a literary work. Although copyright in an original work may
    now be infringed by unlicensed reproduction whatever the material form of the
    infringing article may be, the form of the original work may limit the forms
    in which it is possible to reproduce it.  A building may resemble a drawing
    (as in Chabot v. Davies), but it is difficult to conceive of a building
    resembling a piece of writing or a musical score.

    18.  In Cuisenaire v. Reed (1963) VR 719, the plaintiff claimed infringement
    of copyright in a book which he had written describing a system of teaching
    children mathematics with the aid of rods of varying lengths and colours.  The
    alleged infringement was the manufacturing of sets of rods in accordance with
    the plaintiff's description.  The plaintiff failed, Pape J. saying (at
    p.734):

        " When the chart or compilation referred to in
          paragraph 1C of the statement of claim is looked
          at, it is so entirely dissimilar to the
          appearance of the defendants' rods that it is
          impossible to conclude that they are a
          reproduction of that chart or compilation.  In my
          view, a set of written directions is not
          'reproduced' by the construction of an article
          made in accordance with those directions.  A
          reproduction must reproduce the original, and
          here the original is in one case a set of words
          in the form of a table and in the other case a
          series of plain and coloured circles which are
          numbered and which are set out in the form of a
          chart.  In my view, the defendants' rods
          reproduce neither."

    That decision was followed in similar litigation in Canada: Cuisenaire v.
    South West Imports Limited (1967) 37 Fox Pat.C.93; (1969) 40 Fox Pat.C. 81.
    Similarly, in Brigid Foley Ltd. v. Ellott (1982) RPC 433, where the plaintiff
    alleged that her copyright in written instructions for knitting a garment had
    been infringed by knitting garments in accordance with the instructions,
    Megarry V.-C. held there was no reproduction.  He said (at p.434):

        " ... it seems to me quite plain that there is no
          reproduction of the words and numerals in the
          knitting guides in the knitted garments produced
          by following the instructions.  The essence, I
          think, of a reproduction (and I do not attempt to
          be exhaustive) is that the reproduction should be
          some copy of or representation of the original.
          I do not see how anyone looking at the knitted
          garment could then say 'Well, that is a copy of,
          or a reproduction of, the words and numerals to
          be found in the knitting guide'.  By a process of
          counting up the number of stitches, and so on, in
          the knitted garment one might be able to work
          back and produce the knitting instructions; but
          that is a very different matter from saying that
          the garment is a reproduction of those
          instructions."

    19.  Reproduction in any material form is a notion wider than the notion of
    copying which defined the scope of copyright protection before the 1911 Act,
    but the notion of reproduction still connotes a resemblance between the work
    in which copyright subsists and the work which is copied from it.  The
    material form to which the respective works are reduced need not be the same,
    but if the forms are so dissimilar as to deny resemblance between the works,
    one cannot be said to be a reproduction of the other.  As Gibbs C.J. pointed
    out in Hart v. Edwards Hot Water Systems (at p 730; p 253) -

        "    The notion of reproduction, for the purposes
          of copyright law, involves two elements -
          resemblance to, and actual use of, the copyright
          work, or, to adopt the words which appear in the
          judgment of Willmer L.J. in Francis Day & Hunter
          Ltd v Bron (1963) Ch.587 at 614, 'a sufficient
          degree of objective similarity between the two
          works' and 'some causal connection between the
          plaintiffs' and the defendants' work'."

    20.  The chief difficulty in the way of Apple's claim that the making of the
    Wombat ROMs and EPROM "reproduced" the Applesoft and Autostart source
    programmes lies in the want of resemblance between the written source
    programmes and the Wombat ROMs and EPROM.  Perceiving this difficulty, counsel
    for Apple sought to identify the literary work in which Apple's copyright
    subsists not as the written compilation but as that collocation of ideas
    expressed in the written compilation.  If the collocation of ideas be the work
    in which copyright subsists, so the argument runs, the expression of that
    collocation of ideas in any material form constitutes a reproduction of the
    original work: it is immaterial whether the form in which the collocation of
    ideas is originally expressed resembles the form in which they are expressed
    by the copyist.  The argument runs counter to a formidable body of authority.

    21.  The distinction between writing and the ideas therein expressed was drawn
    by Erle J. in Jefferys v. Boosey (1854) 4 HLC 815, at p 869 (10 ER 681, at p
    703), where his Lordship held that a claim of copyright "is not to ideas, but
    to the order of words".  Lindley L.J. stated the principle in Hollinrake v.
    Truswell (at p 427):

        "    Copyright, however, does not extend to ideas,
          or schemes, or systems, or methods; it is
          confined to their expression; and if their
          expression is not copied the copyright is not
          infringed."

    That principle was applied by Peterson J. in University of London Press (at
    p.608) and by Lord Hodson in Ladbroke (Football) Ltd. (at p.287; p.477).  It
    was applied in Canada in Moreau v. Roland St. Vincent (1950) 10 Fox Pat.C.194,
    where Thorson P said (at p 200):

        " Just as an author has no copyright in the ideas
          he has expressed even although they are original,
          but only in his expression of them, so also no
          person has any copyright in an arrangement or
          system or scheme or method for doing a particular
          thing even if he devised it himself.  It is only
          in his description or expression of it that his
          copyright subsists."

    The same view was taken by Holmes J. in the Supreme Court of the United States
    in White-Smith Music Co. v. Apollo Co. (1908) 209 US 1, at p 19 (52
    Law.Ed.655, at p 663):

        "    The ground of this extraordinary right is that
          the person to whom it is given has invented some
          new collocation of visible or audible points, -
          of lines, colors, sounds, or words.  The
          restraint is directed against reproducing this
          collocation ...".

    If copyright subsisted in the collocation of ideas expressed rather than in
    the collocation of "lines, colors, sounds, or words" in and by which ideas are
    expressed, copyright protection would be tantamount to the protection given by
    the grant of a patent.  In Baker v. Selden (1879) 101 US 99 (25 Law.Ed.841)
    Bradley J., speaking for the Court, said (at p 102; p 843):

        " ... no one would contend that the copyright of
          the treatise would give the exclusive right to
          the art or manufacture described therein.  The
          copyright of the book, if not pirated from other
          works, would be valid without regard to the
          novelty, or want of novelty, of its subject-
          matter.  ... To give to the author of the book an
          exclusive property in the art described therein,
          when no examination of its novelty has ever been
          officially made, would be a surprise and a fraud
          upon the public.  That is the province of
          letters-patent, not of copyright."

    The exclusive right to reproduce a work in which copyright subsists is not
    calculated to prohibit the use of ideas expressed in the work, though the form
    in which those ideas may be expressed without the licence of the owner of the
    copyright is limited.  But copying in the sense of producing something which
    embodies the same ideas is not, without more, an infringement; the form of the
    thing produced must be such as to resemble the work in which the copyright
    subsists.  Here there is no resemblance between the Wombat ROMs and EPROM and
    the written compilations of the Applesoft and Autostart source programmes.  It
    is immaterial that the former were derived from the latter when there is no
    resemblance between them, for both resemblance and derivation are essential to
    reproduction.

    22.  As neither sub-par.(i) nor sub-par.(vii) of s.31(1)(a) applies in
    relation to the making of the Wombat ROMs and EPROM, there was no infringement
    of Apple's copyright in the Applesoft and Autostart source programmes.  It is
    unnecessary to consider what was the knowledge of Computer Edge and Mr Suss as
    to the making of the Wombat ROMs and EPROM - a question raised by the
    cross-appeal.  Knowledge is an element of liability under ss.37 and 38 but
    neither of those sections could impose liability on Computer Edge or Mr Suss.
    I would therefore allow the appeal, set aside the whole of the order of the
    Full Court, and restore the order of Beaumont J.  The respondents should pay
    the appellants' costs on this appeal and before the Full Court.
    JUDGE4
    DEANE J.:   The factual and technical context within which this appeal falls
    to be determined and the relevant legislative provisions are set out in the
    joint judgment of Mason and Wilson JJ. and, in somewhat more detail, in the
    judgments in the Federal Court of Australia.  Except to the extent necessary
    for the purposes of discussion, I shall seek to avoid repetition.  There
    remains in dispute the issue of the appellants' alleged infringement of
    copyright under ss.37 and 38 of the Copyright Act 1968 (Cth) ("the Act").
    That issue falls to be determined by reference to the Act in the form it took
    before the introduction of special provisions dealing with copyright in
    computer programmes (see Copyright Amendment Act 1984 (Cth)).  It was decided
    in the appellants' favour by the learned trial judge (Beaumont J.) and,
    subject to the outstanding question of the requisite knowledge under those
    sections, in the respondents' favour by a majority of the Full Federal Court
    (Fox and Lockhart JJ.; Sheppard J. dissenting).  It is apparent that a finding
    that the appellants were guilty of infringement under ss.37 and 38 can be
    sustained only if, as required by each of those sections, the actual making,
    as distinct from the use or functioning, of the Wombat microcomputer's ROMs
    and EPROM would have constituted an infringement of some copyright owned by
    the respondents, or either of them, in some literary work relating to one or
    both of the Applesoft and Autostart programmes.

    2.  There is an inevitable element of ambiguity in any reference to the
    Applesoft and Autostart "programmes" unless one takes care to distinguish
    between a written programme in source or object code and the actual series of
    electrical impulses or charges which constitutes an operational computer
    programme.  The written programme in source code is directed to a human reader
    and not to a machine.  Its essential function is to record and communicate
    programming instructions.  Thus, the written expression of each of Applesoft
    and Autostart in source code consisted essentially of instructions, in 6502
    Assembly Code mnemonics with accompanying labels and comments, to be read and
    followed by a human reader in his or her operation of an assembler to generate
    the series of electrical impulses or charges constituting the relevant
    operational programme. A written expression of Applesoft or Autostart in
    object code consists of the designation in a notation code (e.g. binary or
    hexadecimal notation) of the relevant sequence of electrical impulses or
    charges.  The actual series of electrical impulses or charges constituting the
    operational object programme may be in a transient state or "stored" in any
    one of a number of ways including temporarily in the RAM of an activated
    computer and semi-permanently or permanently on a magnetic tape or disc or in
    a ROM.  In the present case, the electrical impulses or charges generated by
    the operation of an assembler in accordance with the instructions of the
    written Applesoft and Autostart source programmes were, after some intervening
    steps, stored by mechanical process in silicon chips designed to serve the
    function of programmed ROMs in the Apple II microcomputer. Once the first set
    of charged or programmed ROMs had been produced, their functional qualities
    could be directly reproduced or copied by mechanical means.  It is not,
    however, suggested that a written expression of a programme in object code
    actually played any part in the chain of events leading from the composition
    of the written Applesoft and Autostart programmes in source code to the
    manufacture of the ROMs and EPROM of a Wombat microcomputer.

    3.  It was submitted on behalf of the respondents that the actual sequences of
    electrical charges, which constitute the operational Applesoft and Autostart
    object programmes "stored" in the ROMs, were themselves original literary
    works in which the first respondent owned the copyright and that that
    copyright would have been infringed by the unauthorized making in Australia of
    the ROMs and EPROM of the Wombat microcomputer.  That argument will be
    considered subsequently in this judgment.  For the moment, it is convenient to
    examine what appears to me to be the more strongly arguable basis of the
    respondents' claim for relief, namely, that the making in Australia of the
    Wombat ROMs and EPROM by the importer would have constituted an infringement
    of copyright owned by the first respondent in the written expression of the
    Applesoft and Autostart programmes.  Apart from ss.37 and 38, the legislative
    provisions upon which the respondents primarily relied for the purposes of
    this argument are to be found in s.36 and s.31(1)(a)(i),(vi) and (vii).  For
    present purposes, the effect of those provisions is that copyright in a
    literary work is infringed by the unauthorized doing in Australia of any act
    comprised in the copyright and that the making of a reproduction in a material
    form or an adaptation of a literary work (or of a reproduction in a material
    form of an adaptation of the literary work) is an act comprised in the
    copyright in the work.  That being so, the respondents' argument can prevail
    only if the making in Australia of the Wombat ROMs and EPROM would, for
    relevant purposes, have involved the making of a reproduction or adaptation
    (or a reproduction of an adaptation) of an actual literary work constituted by
    the written expression of the Applesoft and Autostart programme in source or
    in object code.  The Act does not define what constitutes reproduction in a
    material form.  That must be determined in the not always clear light of the
    authorities.  Section 10(1) of the Act defines "adaptation" as including "a
    translation of the work".  It is in the sense of making a translation that the
    respondents have relied upon alleged adaptation.

    4.  The programming of a ROM is done electrically.  Its effect is essentially
    functional rather than visual and the programme state of a ROM is ascertained
    not by visual observation but by actual electrical operation.  As I followed
    the argument in this Court, it appeared to be common ground that one does not
    - and, so far as the evidence goes, cannot - visually observe, let alone
    visually discern the pattern of, the overall distribution of electrical
    charges in a programmed ROM.  The evidence does not disclose the precise
    technology used in charging the two ROMs and the EPROM in a programmed Wombat
    microcomputer ("the Wombat ROMs") or the extent of any correspondence between
    the spatial distribution of electrical charges in the Wombat ROMs and the
    distribution of charges in the six ROMs of a programmed Apple II microcomputer
    ("the Apple II ROMs").  It is, however, clear that, functionally, the three
    Wombat ROMs were a reproduction of the six Apple II ROMs. Indeed, the
    appellants do not dispute that the main step in the original production of a
    set of the Wombat ROMs probably involved reproduction, by mechanical copying,
    of the functional qualities (in the sense of electrical operation) of the
    Apple II ROMs.  That being so, the question whether the electrical charging of
    silicon chips to produce the Wombat ROMs involved the making of a reproduction
    or adaptation of the written programmes in source or object code corresponds,
    for practical purposes, with the question whether the electrical charging of
    silicon chips to produce the Apple II ROMs involved the making of such a
    reproduction or adaptation.  The answer to the question lies, in each case, in
    the nature of the written programmes in source and object codes and of the
    programmed ROMs and in the distinction between reproducing or adapting an
    actual literary work (or reproducing an actual adaptation of a literary work)
    on the one hand and utilizing or applying the information conveyed by the
    literary work or the adaptation to produce a functional object.

    5.  Where the written description of, or specification for, a functional
    article constitutes an original literary work, copyright prevents the
    unauthorized reproduction in a material form or adaptation of the description
    or specification.  It does not however, of itself, provide the foundation of
    an exclusive right to make the designated article.  Thus, the "description of
    the art in a book, though entitled to the benefit of copyright, lays no
    foundation for an exclusive claim to the art itself.  The object of the one is
    explanation; the object of the other is use.  The former may be secured by
    copyright.  The latter can only be secured, if it can be secured at all, by
    letters patent" (Baker v. Selden (1879) 101 US 99, at p 105 (25 Law Ed 841, at
    p 844)).  The point was tellingly made by Pape J. in the oft-cited passage
    from his judgment in Cuisenaire v. Reed (1963) VR 719, at pp 735-736:

        "    This present case is of course so far as this
        aspect is concerned not one relating to artistic
        copyright, but to literary copyright, and I realize
        that under the Act the copyright in a book may be
        infringed by a performance in public of the
        substance of that book if it be converted into a
        dramatic work.  But that is because the Act in
        s.1(2)(c) specifically so provides.  But still the
        dramatic work must reproduce the literary work.
        Where, as here, you have a literary copyright in
        certain tables or compilations, there is in my view
        no infringement of the copyright in those tables or
        compilations unless that which is produced is
        itself something in the nature of a table or
        compilation which, whether it be in two dimensions
        or three dimensions, and whatever its material
        form, reproduces those tables.  Were the law
        otherwise, every person who carried out the
        instructions in the handbook in which copyright was
        held to subsist in Meccano Ltd. v. Anthony Hordern
        and Sons Ltd. (1918), 18 SR (NSW) 606, and
        constructed a model in accordance with those
        instructions, would infringe the plaintiff's
        literary copyright.  Further, as Mr. Fullagar put
        it, everybody who made a rabbit pie in accordance
        with the recipe in Mrs. Beeton's Cookery Book would
        infringe the literary copyright in that book."

    (See also Cuisenaire v. South West Imports Ltd. (1968) 40 Fox Pat. C. 81, at p
    85;  Boosey v. Whight (1899) 1 Ch 836, at p 842 and, on appeal, (1900) 1 Ch
    122, at p 123; White-Smith Music Publishing Company v. Apollo Company (1907)
    209 US 1, at pp 12-14 (52 Law Ed 655, at pp 659-660);  Moreau v. St. Vincent
    (1950) 10 Fox Pat. C. 194, at p 200; Purefoy Engineering Co. Ltd. v. Sykes
    Boxall & Co. Ltd. (1955) 72 RPC 89, at 99; Brigid Foley Ltd. v. Ellott (1982)
    RPC 433, at p 434).

    6.  The physical alteration within a silicon chip when it is charged to serve
    the function of a ROM in a microcomputer consists, in the case of a ROM with
    many addresses where simple fusing is likely to be inappropriate, of a
    redistribution of the electrons or electrical charges within the chip.  The
    redistribution of electrons in the original Apple II ROMs was, albeit
    indirectly after initial "storage" of the sequence of charges on a magnetic
    disc or tape, the result of electrical charging in pursuance of the written
    directions constituting the source programmes.  In that sense, an Apple II
    (and, more remotely, a Wombat) charged ROM was the outcome of action taken in
    compliance with information conveyed by the written expression of the relevant
    programme in source code.  A charged Apple II or Wombat ROM did not however,
    of itself, reproduce or adapt (in the sense of making a translation of) that
    written expression in whole or in part.  To the contrary, the relationship
    between the written expression of the programme in source code and the
    programmed Apple II or Wombat ROM was conceptually similar to the
    relationships -  i.e. between the handbook instructions and a Meccano model
    and between the recipe book and a rabbit pie - to which Pape J. referred in
    Cuisenaire v. Reed in the above extract from his judgment:  the one resulted
    from the following of the directions of the other; it was not, however, a
    reproduction or adaptation of the literary work embodying those directions.
    The point can be illustrated by reference to the situation which would have
    arisen if the programming instructions constituting the two written programmes
    in source code had been published in a book comprising a collection of such
    source programmes.  To reproduce in a material form or adapt the actual
    written instructions or directions constituting a source programme would,
    plainly enough, involve infringement of the copyright in the written
    programme.  To follow those instructions or directions to produce a programmed
    disc, tape, ROM or RAM would however, equally plainly, consist of carrying out
    the instructions or directions to produce the designated article as distinct
    from reproducing or adapting the actual written programme in which copyright
    subsisted.

    7.  Nor was a programmed Apple II or Wombat ROM a reproduction or adaptation
    (in the sense of a translation) of the written expression of the relevant
    programme expressed in object code.  The written object code denotes the
    series of electrical impulses produced by following the directions of the
    source code. The charged silicon chip reflects the application of that series
    of electrical impulses.  The written denotation of the electrical impulses in
    object code - as distinct from the electrical impulses themselves - played no
    part whatever in the production of the Apple II or Wombat ROMs however and it
    would be a distortion to regard the latter as representing a reproduction or
    adaptation of the former.  It is not to the point that an Apple II or Wombat
    ROM is capable of functioning as a switching device in an appropriately
    instructed operating microcomputer to reproduce the series of electrical
    impulses and to display or print out their denotation in object code.  Indeed,
    it would be an inversion of logic to regard that consideration as supporting
    the conclusion that the silicon chip was an adaptation or reproduction of the
    written denotation of the programme in object code.

    8.  In the light of the foregoing, I find it unnecessary to determine whether
    a written expression of the Applesoft and Autostart programmes in source or in
    object code constituted or would have constituted literary works in which the
    first respondent owned the copyright or whether a written programme in object
    code constituted an adaptation of a written programme in source code.  Even if
    all those matters be assumed in favour of the respondents, the making in
    Australia of the ROMs by the importer would not have constituted an
    infringement of copyright in any of those literary works in that it would not
    have involved the making of a reproduction or adaptation (or reproduction of
    an adaptation) of any of them.

    9.  There remains to be considered the separate argument, to which reference
    has already been made, based on the proposition that the actual series of
    electrical charges constituting each operational programme was itself an
    original literary work when "embodied" in a ROM or ROMs.  I am unable to
    accept that proposition. The re-arrangement of electrons in a programmed ROM
    is not visible to the human eye.  The programmed ROM may be used as a
    switching device in a functioning computer to produce a print out or visual
    display of something which could, for relevant purposes, properly be called a
    "literary work".  Of itself however, and regardless of how widely one
    construes the phrase, the arrangement (or series) of electrons or electrical
    charges in the silicon chip does not constitute a "literary work". It is not
    written.  It is not in a comprehensible language. It cannot be read.  It
    cannot even be seen.  Nor is it designed or produced to be read or seen.  It
    is, and was designed and produced to be, an attribute of a functioning part of
    an operating machine.

    10.  It follows that the making of the Wombat ROMs in Australia would not, of
    itself, have constituted an infringement of the respondents' copyright in a
    literary work.  It may well be that the operation of the programmed Wombat
    computer to produce a visual display or print out of the programme burnt into
    the Wombat ROMs would constitute such an infringement of some copyright owned
    by the first respondent in a literary work constituted by the written
    expression of the Applesoft or Autostart programme in source or object code.
    As has been seen however, that would not suffice to establish infringement
    pursuant to ss.37 and 38 of the Act since those sections require that the
    actual making, as distinct from the operation or functioning, in Australia of
    the imported or traded article would have constituted an infringement of
    copyright.

    11.  It may well be thought that it would be unfortunate if the law were to
    provide no protection for the respondents against conduct of the kind engaged
    in by the manufacturers of the Wombat microcomputers.  Obviously, however,
    general questions of the existence and extent of copyright protection in a new
    field cannot be determined by reference to notions of what may or may not be
    fair in the circumstances of a particular case.  In particular, the question
    whether the protection of literary copyright should be extended to provide
    protection in a field to which the terms of existing legislative provisions
    are inappropriate and inapplicable involves the assessment and balancing of a
    wide range of policy matters and considerations of a type with which
    Australian courts, following the adversary system, are ordinarily ill-equipped
    to deal (cf. Lahore, Dworkin and Smyth, Information Technology:  The Challenge
    to Copyright (1984) p.110; Borking, Third Party Protection of Software and
    Firmware (1985) p.253;  J.O. Webster, "Copyright Protection of Systems Control
    Software Stored in Read Only Memory Chips:  Into the World of Gulliver's
    Travels", Buffalo Law Review, vol.33 (1984), 193, at pp.223-224).  Those
    matters and considerations include the determination of the appropriate
    boundary between patent law, with its requirement of novelty and its fixed and
    more limited period of protection, and copyright law, with its limited
    requirement of originality and its much greater period of protection.  They
    also include the resolution of the competing legitimate claims of different
    interests - the claim of an author, a designer or an inventor to the
    protection of his work and the claims of the public to the unrestricted use of
    information, technology and other material.  The assessment and balancing of
    those matters and considerations and the question whether some, and if so
    what, extension of copyright protection to a new field to which existing
    legislative provisions are inapplicable is warranted are matters for the
    Parliament and not for the courts.

    12.  I would allow the appeal and restore the judgment of the learned trial
    judge.  The question involved in the cross-appeal does not arise and the
    cross-appeal should be dismissed.
    ORDER
      Appeal allowed with costs.

      Cross-appeal dismissed.

      Set aside the judgment and order of the Full Court of the Federal Court of
    Australia dated the twenty-ninth day of May 1984 (except for paragraph 5 of
    that order) and in lieu thereof order that the appeal to that Court be
    dismissed with costs and that the judgment and order of Beaumont J. be
    restored.