Judgments

Decision Information

Apple Computer Inc. v. Mackintosh Computers Ltd.

Collection Judgments
Date 1986-04-29
Report citation [1987] 1 F.C. 173
File numbers T-1232-84
Subjects Copyright

Decision Content

T-1232-84 T-1235-84
Apple Computer, Inc. and Apple Canada Inc. (Plaintiffs)
v.
Mackintosh Computers Ltd., Compagnie d'Élec- tronique Repco Ltée/Repco Electronics Co. Ltd., Maison des Semiconducteurs Ltée/House of Semiconductors Ltd., Chico Levy, Joseph Levy, Nat Levy, Micro Computer Syncotech Systems Ltd., Roman Melnyk, Gary Grecco, Richard Wichlacz, Robert Pelland carrying on business under the firm name and style of Centre du Hobbie Enr., Éric -Pierre Durez and Serge Pelle- tier carrying on business under the firm name and style of Pro-Micro Enr., Claude Denise Bérubé Villeneuve carrying on business under the firm name and style of Villeneuve Électronique Enr., Daniel Renaud carrying on business under the firm name and style of Microbit Enr., Hastings Leasing (Belleville) Limited, William George Knight, Evelyn Gwendelyn Knight, Glen Martin Sargent, Mohamed Nath000 Gulamhusein carry ing on business under the firm name and style of Compu-Sys, Tempo Audivision Incorporated, Leslie David Graham Newton, Unitron Computer Corporation, Robert A. Hubbell, Ace Computer Supplies Inc., George Yin Kit Poon, Simon Yin On Poon, Mang Chi Ly, Nu Mini Yung, Sabtronic Systems Ltd., Bernard Allan Sabiston and Made- leine Irene Sabiston (Defendants)
and
Apple Computer, Inc. and Apple Canada Inc. (Plaintiffs)
v.
115778 Canada Inc., carrying on business under the firm name and style of Microcom and James Begg and 131375 Canada Inc. (Defendants)
INDEXED AS: APPLE COMPUTER INC V. MACKINTOSH COM PUTERS LTD.
Trial Division, Reed J.—Toronto, January 21, 22, 23, 24, 28, 29, 31, February 3, 4, 5, 6, 7, 10; Ottawa, April 29, 1986.
Copyright — Computer programs embodied in silicon chips subject-matter of copyright — Under s. 3 of Act, copyright "sole right to produce or reproduce work in any material form
whatever" — S. 3 broad enough to encompass new technolo gies — Hexadecimal form of source code program translation of original work, not different literary work — "In any material form whatever" covering plaintiffs' program as embodied in ROM chip — Argument plaintiffs' program exhibiting merger of idea and expression and therefore not copyrightable unconvincing — Fact programs written in vari ous forms, media chosen for embodiment irrelevant and impossibility for programmer to write same program twice ruling out merger argument — Policy considerations rejected — Personal liability of defendants — Knowledge "notice of facts leading reasonable person to think breach committed" — Knowledge alone insufficient to establish liability for copy right infringement — Necessary to prove defendants author ized commission of infringing act within meaning of s. 3 or involved in s. 17(4) prohibited activities — Delivery up and accounting of profits ordered — Copyright Act, R.S.C. 1970, c. C-30, ss. 2, 3, 4(3), 17(1),(4), 25, 45, 46 — Copyright Act, R.S.0 1952, c. 55, s. 2(v) — An Act to amend the Law of Copyright, 5 & 6 Vict., c. 45 (U.K.) — Copyright Act, 1911, 1 & 2 Geo. 5, c. 46, ss. 1(2)(a),(d), 19(1) (U.K.) — Industrial Design Act, R.S.C. 1970, c. I-8 — Patent Act, R.S.C. 1970, c. P-4, s. 28(3).
For the facts of the case, reference should be made to the Editor's Note infra.
Held, an order should issue requiring delivery up of the devices containing the program, all copies of the program and all devices containing copies, as well as an accounting of profits made by the defendants as a result of the sale of computers and components which infringe the copyrights of Apple Computer.
The defendants' argument, that there is no copyright protec tion given to the hexadecimal form of the source code program because it is not a "translation" of that work but a different literary work, could not be accepted. The conversion from one code to another clearly falls within the definition of "transla- tion" set out in The Concise Oxford Dictionary: to "express the sense ... in or into another form of representation". The media chosen for embodiment of the program retains the character of the original work. The hexadecimal form of the program is not a different literary work, but a translation of the original.
The argument, that since there would be only one way of structuring the ROM (read only memory) chip to enable it to replicate the program, the latter exhibited a merger of the idea and the expression thereof which could not be covered by copyright law, was unconvincing. The Cuisenaire, Hollinrake and Moreau decisions do not stand for the proposition, urged by the defendants, that when there exists a merger, the work is uncopyrightable. The exact scope of that rule, if it even exists,
was not clear. Several works, clearly copyrightable, such as poems, plays and paintings, exhibit such a merger. The word "idea" itself is of varying definition. It is only if the idea communicated by the word is described in highly abstract terms that one could say there is no merger. In an 1879 decision, the United States Supreme Court held that where a useful art could only be employed by using the forms or diagrams by which it was explained, there could be no copy right in such forms and diagrams. That decision, which has been criticized as wrongly decided, has not been adopted in Canada. Indeed, the Federal Court of Appeal appears to have implicitly rejected it.
The fact that a program can be written in a variety of different forms, that the same programmer would not write a program the same way twice, that the medium in which the program is embodied is irrelevant, all indicate that computer programs do not fall within the merger exception (if such exists).
The question whether the opening words of section 3— " `copyright' means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever"—encompass the embodiment of the plaintiffs' pro gram in the ROM chip is to be answered in the affirmative. The plaintiffs' submission, that section 3 was purposely drafted broadly enough to encompass new technologies, was well taken. On a physical level, there was no difference between a device such as a record which "contains" a musical work by virtue of the grooves impressed therein, and a ROM chip which "con- tains" a program by virtue of the pattern of conductive and non-conductive areas created therein. As to the element of "readability" or "appearance to the eye" discussed in the case law, it requires no more than that there be a method by which the work in which copyright is claimed and the work which is alleged to infringe can be visually compared for the purpose of determining whether copying has occurred. Since the program can be "read" out of ROM and so compared, the requirement is met.
The defendants argue that for copyright to exist, the primary purpose for which the reproduction is made must be to com municate the work to human beings. This requirement is allegedly found in the wording of the relevant legislative provi sions which must be interpreted by reference to the particular examples which follow in each case. That argument was con clusively answered by the words of section 3, "in any material form whatever". Those words clearly cover the program as embodied in the ROM chip. To find otherwise would require reading into section 3 words which are not there.
There was merit in the argument that the ROM chip, whatever the interpretation of the opening words of section 3, can be said to fall within paragraph 3(1)(d) as a contrivance by means of which the work may be delivered. The program can be delivered to the screen of the monitor or as a print-out to be read by human beings.
The policy arguments advanced by the defendants against copyright protection, such as potential restrictions on com merce and a possible overlap with patent law, could not be accepted. Proposals for the revision of the Act, referred to by
the defendants, were irrelevant. The Court had to apply the law as it exists.
On the evidence, it could not be concluded that the defen dants did not have knowledge of the copying activity being carried on. The determination of knowledge is a question of inference from the facts in a given case. The defendants had more than merely notice of facts which would lead a reasonable person to think that a breach of copyright law was being committed. Knowledge alone, however, is not enough to give rise to liability for copyright infringement. The defendants must be engaged in activities which bring them within section 3 as having authorized the reproduction of the work or within subsection 17(4) which sets out specific prohibited activities. "Authorize" has been defined as meaning "sanction, approve, and countenance". Furthermore, the inactivity or indifference to the risk of infringement may be of such a degree that authorization may be inferred.
By purchasing newspaper ads, the defendants "offered for sale by way of trade" the infringing articles (a proscribed activity within the meaning of paragraph 17(4)(a)). The involvement in trade shows and in retail outlets constituted "exhibiting in public by way of trade" the said articles (para- graphs 17(4)(a) and (c)).
The action was dismissed as against Joseph Levy, one of the individual defendants. To guarantee credits for the importation of the infringing articles, with the knowledge that such an activity was being carried on, did not fall within subsection 17(4) or section 3 as authorizing the production or reproduc tion of the plaintiffs' program.
CASES JUDICIALLY CONSIDERED
APPLIED:
Thrustcode Ltd. v. W.W. Computing Ltd., [1983] F.S.R. 502 (Ch.D.); Apple Computer Inc y Computer Edge Pty Ltd (1984), 53 ALR 225 (F.C.); reversing (1983), 50 ALR 581 (F.C.).
DISTINGUISHED:
Cuisenaire, Georges v. South West Imports Ltd., [1968] 1 Ex.C.R. 493; (1-967), 37 Fox Pat. C. 93; affirmed [1969] S.C.R. 208; (1968), 40 Fox Pat. C. 81; Cuisenaire v. Reed, [1963] V.R. 719 (S.C.); Schlumberger Canada Ltd. v. Commissioner of Patents, [1982] 1 F.C. 845; (1981), 56 C.P.R. (2d) 204 (C.A.), application for leave to appeal to Supreme Court of Canada dismissed (1981), 63 C.P.R. (2d) 261.
CONSIDERED:
Hollinrake v. Truswell, [1894] 3 Ch. 420 (C.A.); Moreau, Alfred v. St-Vincent, Roland, [1950] Ex.C.R. 198; Baker v. Selden, 101 U.S. 99 (1879); Bulman Group Ltd. (The) v. Alpha One-Write Systems B.C. Ltd. et al. (1981), 54 C.P.R. (2d) 179 (F.C.A.); Bulman Group Ltd. (The) v. "One Write" Accounting Systems Ltd., [1982] 2 F.C. 327; 62 C.P.R. (2d) 149 (T.D.); Boosey v. Whight, [1899] 1 Ch. 836; affirmed [1900] 1 Ch. 122 (C.A.); Sega Enterprises Limited v. Richards and Another,
[1983] F.S.R. 73 (Ch.D.); Mentmore Manufacturing Co., Ltd. et al. v. National Merchandise Manufacturing Co. Inc. et al. (1978), 40 C.P.R. (2d) 164 (F.C.A.); C.B.S. Inc. v. Ames Records & Tapes Ltd., [1981] 2 W.L.R. 973 (Ch.D); Compo Company Ltd. v. Blue Crest Music Inc. et al., [1980] 1 S.C.R. 357; (1979), 45 C.P.R. (2d) 1.
REFERRED TO:
Newmark v. National Phonograph Company and Edison Manufacturing Company (1907), 23 T.L.R. 439 (K.B.); Monckton v. Gramophone Company Limited (1912), 106 L.T. 84 (C.A.); White-Smith Music Publishing Com pany v. Apollo Company, 209 U.S. 1 (1908); Apple Computer, Inc. v. Formula Intern., Inc., 562 F.Supp. 775 (U.S. Dist. Ct. 1983); Falcon v. Famous Players Film Co., [1926] 2 K.B. 474 (C.A.); Chabot v. Davies, [1936] 3 All E.R. 221 (Ch.D); King Features Syndicate, Incor porated v. Kleeman (O. & M.) Ld., [1941] A.C. 417 (H.L.); Dorling v. Honnor and Another, [1964] R.P.C. 160 (C.A.); Bayliner Marine Corp. v. Doral Boats Ltd., [1986] 3 F.C. 346; (1985), 5 C.P.R. (3d) 289 (T.D.); Canusa Records Inc. et al. v. Blue Crest Music, Inc. et al. (1976), 30 C.P.R. (2d) 11 (F.C.A.); R. v. Budget Car Rentals (Toronto) Ltd. (1981), 31 O.R. (2d) 161 (C.A.);
R. v. Philips Electronics Ltd.—Philips Electronique Ltee (1980), 30 O.R. (2d) 129 (C.A.); Tuck v. Priester (1887), 19 Q.B.D. 629; Dalton v. Canadian Human Rights Commission, [1986] 2 F.C. 141; 63 N.R. 383 (C.A.); Re Application Number 961,392 (1971), 5 C.P.R. (2d) 162 (Pat. App. Bd.); Gottschalk, Comr. Pats. v. Benson, 175 USPQ 673 (S.C. 1972); Dann, Comr. Pats. v. Johnston, 189 USPQ 257 (S.C. 1976); Re Bendix Corporation Application (Now Patent No. 1,176,734) (1984), 5 C.P.R. (3d) 198 (Pat. App. Bd.); Re Application for Patent of Dissly Research Corp. (Now Patent No. 1,188,811) (1984), 6 C.P.R. (3d) 420 (Pat. App. Bd.); Diamond, Comr. Pats. v. Diehr and Lutton, 209 USPQ 1 (S.C. 1981); Northern Office Microcom puters (Pty) Ltd. v. Rosenstein, [ 1982] F.S.R. 124 (S.C.
S. Afr.); Apple Computer Inc. v. Computermat Inc. (1983), 1 C.I.P.R. 1 (Ont. H.C.); Apple Computer, Inc. v. Minitronics of Canada Ltd. et al. (1985), 7 C.P.R. (3d) 104 (F.C.T.D.); affirmed (1985), 8 C.P.R. (3d) 431 (F.C.A.); Société (La) d'Informatique R.D.G. Inc. v. Dynabec Ltée et al. (1984), 6 C.P.R. (3d) 299 (Que. S.C.); affirmed (1985), 6 C.P.R. (3d) 322 (Que. CA.); F & I Retail Systems Ltd. v. Thermo Guard Automotive Products Canada Ltd. et al., Supreme Court of Ontario, June 26, 1984, not reported; Logo Computer Systems Inc. c. 115778 Canada Inc. et al., Quebec Superior Court, October 25, 1983, not reported; Nintendo of America, Inc. v. Coinex Video Games Inc., [1983] 2 F.C. 189 (C.A.); Spacefile Ltd. v. Smart Computing Systems Ltd. et al. (1983), 75 C.P.R. (2d) 281 (Ont. H.C.); Interna tional Business Machines Corporation v. Ordinateurs Spirales Inc., [1985] 1 F.C. 190; (1984), 80 C.P.R. (2d) 187 (T.D.); Salomon v. Salomon & Co., [1897] A.C. 22 (H.L.); Visa International Service Association v. Visa Motel Corporation, carrying on business as Visa Leasing et al. (1984), 1 C.P.R. (3d) 109 (B.C.C.A.); RCA Cor-
poration y Custom Cleared Sales Ply Ltd (1978), 19 ALR 123 (N.S.W.C.A.); Albert v. S. Hoffnung & Co. Ltd. (1921), 22 S.R. 75 (N.S.W.S.C.); Clarke, Irwin & Co. Ltd. v. C. Cole & Co. Ltd. (1960), 33 C.P.R. 173 (Ont. H.C.); Simon & Schuster Inc. et al. v. Coles Book Stores Ltd. (1975), 9 O.R. (2d) 718 (H.C.); Proctor & Gamble Co. v. Bristol-Myers Canada Ltd. (1978), 39 C.P.R. (2d) 145 (F.C.T.D.).
COUNSEL:
Alfred S. Schorr, Ivor M. Hughes and J. I.
Etigson for plaintiffs.
Robert H. C. MacFarlane for defendants.
SOLICITORS:
Alfred S. Schorr, Toronto, and Ivor M.
Hughes, Concord, Ontario, for plaintiffs.
Fitzsimmons, MacFarlane, Toronto, for defendants.
EDITOR'S NOTE
The Executive Editor has chosen to report the 73 page reasons for judgment herein in an abridged format. The following portions have been omitted: a 20 page review of the evidence explaining the creation of computer programs, computer languages, the internal memory of the computer, the computer's integrated electrical cir cuitry, the operation of a computer from a pro grammer's point of view, the computer as an electrical machine and retrieving a program from ROM (read only memory). Also omitted are the aspects not in issue (copyright in source code, substantial copying and ownership) and certain portions of a review of the evidence headed "Individual Defendants", "Microcom Action—Evi- dence re: Defendants' Activities" and "Mackin- tosh Action—Evidence re: Defendants' Activi ties". Summaries of the omitted portions have been prepared.
The narrow but important issue for determina tion was as to whether a computer program embodied in a silicon chip in a computer is a subject matter in which copyright exists.
The plaintiffs hold copyright in two computer programs: Autostart ROM and Applesoft. Created for use in the Apple 11 + computer, they were to serve as its operating instructions. There was expert evidence that creation of a computer pro gram requires great ingenuity and that it would take months of work to write a program such as those in issue in this case. Computer programs were highly individualistic and it was practically impossible that two programmers would, without copying, create identical programs.
Yet in the defendants' Microcom chips, 12,261 out of 12,288 bytes were identical to the corre sponding Apple 11 + chips. For the defendants' Mackintosh chips, the figures were 12,277 out of 12,288.
The plaintiffs' evidence—given mostly by soft ware experts—dealt with the operation of a com puter from a programmer's point of view. The defendants' evidence focussed on the operation of a computer from a hardware point of view—the functioning of the machine as a complex system of integrated electrical circuits. Defence counsel saw a program as nothing more than specifica tions for a machine part. That characterization could not be accepted. In writing a program, a programmer was not providing specifications for the manufacture of a ROM chip. He was rather thinking of instructions to the computer in terms of moving information between certain registers and of performing certain operations thereon. Pro grams were designed as communications to com puters and used to cause the computer to per form functions such as calculating and retrieving information from data banks. Ordinary conceptual notions of the nature of a written text were stretched in conceiving of it operating in this fashion. This uniqueness was the essence of the dispute as to whether copyright existed.
Without copying the Autostart ROM and Applesoft programs, it would be very difficult to
create another computer system which could run the software (application programs) designed for use with the Apple II +. That was the economic factor which gave rise to this litigation.
The defendants did not question that the writ ten assembly language code versions of the pro grams fell under the protection of the Copyright Act. The programs were not, however, copied in their written form but directly from the chips.
Nor did the defendants deny that if copying the ROM chips is a copying of the assembly code program, there has been a substantial copying.
Finally, the defendants abandoned any contes- tation of ownership by plaintiffs of copyright.
The following are the reasons for judgment rendered in English by
REED J.: The Issue
The issue is whether a computer program which originates as a written text, in the normal and usual sense of those terms, but which has a dimen sion which it is not traditional to associate with such texts, continues to be covered by copyright when it is converted into its electrical code version, or more precisely in this case when it is embodied in a device designed to replicate that code.
The defendants' argument that copyright pro tection does not so extend, has several facets: (1) the hexidecimal code version of the program is not a translation of the source code version; (2) since there is a one to one relationship between the source code program and its embodiment in the chip there is a merger of the idea and the expres sion of the idea which copyright law does not cover; (3) the text of the Copyright Act [R.S.C. 1970, c. C-30] does not cover computer programs in their chip form; (4) there are compelling policy arguments for refusing to extend copyright protec tion in the present case such as potential restric-
tions on commerce and a possible overlap with patent law.
Hexadecimal Code — A Translation?
The defendants' position is that there is no copyright protection given to the hexadecimal form of the source code program because it is not a translation of that work but a different literary work. The conversion from assembly code to hex adecimal code, indeed from any computer lan guage (code) to any other, is called a "translation" by computer programmers. I agree that this is not a relevant factor. The question is whether or not the hexadecimal code version is a translation of the original assembly code version, in terms of the Copyright Act, R.S.C. 1970, c. C-30. If so, then the right to produce any such translation belongs exclusively to the holder of copyright in the origi nal work:
3. (1) For the purposes of this Act, "copyright" ... includes the sole right
(a) to produce, reproduce, perform or publish any translation of the work; [Underlining added.]
The argument, as I understand it, is that while the assembly language source code version can be characterized as a set of instructions to the CPU [central processing unit] (a series of mnemonics or operations that describe what the CPU should do), the hexadecimal form of the program is a descrip tion of the ROM [read only memory] chip. Coun sel argues that these may very well be two descrip tions of the same thing but as such they are two different literary works.
I do not find this argument convincing. In the first place I note that "translation" in The Concise Oxford Dictionary (6th ed., 1976) is defined as:
Express the sense of (word, sentence, speech, book, poem, ...) in or into another language; in or to another form of represen tation .... [Underlining added.]
The conversion from one code to another clearly falls within that definition.
An analogy can be drawn to the conversion of a text into morse code. If a person were to sit down and convert a text into the series of dots and dashes of which morse code is comprised, one might argue that the resultant notations were really instructions to the telegraph operator on how to send the message. But the message written in morse code, in my view, still retains the charac ter of the original work. It is not a different literary work. Similarly, a text written in short hand might be said to constitute a description of the oral sounds of the text if it were spoken aloud (shorthand being phonetically based), but that would not make it a different literary work from the long hand version.
In my view the conversion of a work into a code, or the conversion of a work originally written in one code into another code constitutes a transla tion for the purposes of the Act. In addition, as noted above, a programmer, in creating a program, is not thinking in terms of the specifications of the ROM chip, either in writing the assembly code version or when the hexadecimal notation is pre pared. What media is finally chosen for embodi ment of the program is irrelevant to the program mer. Accordingly, I find it difficult to accept counsel for the defendants' argument that the hexadecimal form of the program is a different literary work and not a translation of the original.
Expression—Idea—Merger
It is argued that copyright does not extend to computer programs because (1) copyright protects the expression of the idea not the idea expressed and (2) a computer program as embodied in a ROM chip exhibits a merger of the idea and the expression of that idea.
Counsel for the defendants relies heavily on the decision in: Cuisenaire, Georges v. South West Imports Ltd., [1968] 1 Ex.C.R. 493; (1967), 37 Fox Pat. C. 93 as affirmed [1969] S.C.R. 208; (1968), 40 Fox Pat. C. 81 and in Cuisenaire v. Reed, [1963] V.R. 719 (S.C.) Those cases involved a publication by the plaintiff (a book) in which a new method of teaching arithmetic was described.
The method used a number of wooden rods of varying lengths and colours, all having a uniform thickness (one centimeter square). The book set out a table describing the number of rods required, their respective lengths and colours. There was no indication that the book contained any diagrams or illustrations of the rods. I reproduce part of the editor's note at page 95 Fox Pat. C.:
It will be noted that ... the plaintiff did not allege that his copyright in his book was being infringed but only his copyright in his rods .... If the rods in issue had been copied from illustrations in the plaintiff's book, the result might well have been different, for ids trite law that infringement exists where a copyright work i§ reproduced "in any material form whatsoever".
The claim before the Canadian courts focussed on paragraph 2(v) of the Canadian Act [R.S.C. 1952, c. 551: 1
2....
(v) "every original literary, dramatic, musical and artistic work" includes every original production in the literary, scien tific or artistic domain whatever may be the mode or form of its expression, such as books, pamphlets, and other writings, lec tures, dramatic or dramatico-musical works, musical works or compositions with or without words, illustrations, sketches, and plastic works relative to geography, topography, architecture or science; [Underlining added.]
The plaintiff argued that it was not necessary to demonstrate that his rods were artistic, literary, musical or dramatic because as long as they were "original productions in the scientific domain" they were to be considered as falling within the scope of works protected by copyright. Both the Exchequer Court and the Supreme Court rejected that argument.
The plaintiff claimed that even if the rods could not be said to fall within the Act pursuant to paragraph 2(v) they were nevertheless literary or artistic works or works of artistic craftsmanship. That argument was rejected by both Canadian Courts on the same ground as it had been by the Australian Court in Cuisenaire v. Reed. Mr. Jus tice Noël, at trial, quoted [at pages 517-518] from
' There is no comparable provision in the Australian legisla tion and therefore the Cuisenaire v. Reed case did deal with this issue.
the judgment of Mr. Justice Pape, in Cuisenaire v. Reed at pages 735 and 736:
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 compila tion which, whether it be in two dimensions or three dimen sions, 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 S.R. (N.S.W.) 606, and constructed a model in accordance with those instructions, would infringe the plain tiffs literary copyright. Further, as Mr. Fullagar put it, every body who made a rabbit pie in accordance with the recipe in Mrs. Beeton's Cookery Book would infringe the literary copy right in that book.
The Supreme Court upheld the judgment of Mr. Justice Noël on essentially the same ground. The Court noted at pages 211 S.C.R.; 84 Fox Pat. C., that the original work was the plaintiff's book and that in seeking to assert a copyright in the rods which were described in the book, as opposed to the book itself, the appellant was faced with the principle that an author has no copyright in ideas but only in his expression of them. Reference was made to the application of this principle in Hollin- rake v. Truswell, [ 1894] 3 Ch. 420 (C.A.), at page 428 and Moreau, Alfred v. St. Vincent, Roland, [1950] Ex.C.R. 198, at page 203.
In Hollinrake v. Truswell it was sought to assert copyright in a "sleeve chart" designed to operate as a pattern for cutting out sleeves. The Court held that "The thing is in truth a measuring instru ment: it is no more a chart or plan within the Copyright Act than is a scaled ruler" (Lindley L.J. at page 425).
In Moreau v. St. Vincent the plaintiff alleged the defendant had breached his copyright in "Con- cours: Recrutement d'Abonnés". This title referred to a weekly competition which was designed to increase the circulation of the plaintiff's paper "L'Information Sportive". The competition involved a subscription receipt held by the pur chaser of the paper; a questionnaire relating to sports topics to be answered by holders of subscrip tion receipts carrying certain numbers and condi-
tions; and, terms of the contest set out in the paper. The defendant commenced publication of a weekly leaflet called "Mots Croisés" which con tained a competition called "Quizz général de la publication Loisir Favori Enrg." The Court reject ed the plaintiff's claim that this activity infringed his copyright. The Court stated that the plaintiff had misconceived the nature of copyright and was really seeking protection of his contest against an encroaching competitor who was running a contest of a similar nature. But, there was no copying of the relevant written texts—it was the idea of run ning a contest along generally similar lines which was copied.
It appears from these cases that the principle that copyright covers the expression of ideas but not the ideas themselves is used in the jurispru dence to cover at least two different situations. It is used in cases such as Hollinrake and Cuisenaire to indicate that the "work" for which copyright is sought is not of a type (e.g.: literary, artistic) that falls within the Act. In Cuisenaire v. Reed it was held that the rods themselves as physical objects were not a type of work covered by the Act. It is used in cases such as Moreau to indicate that the two works in issue are not, in fact, similar—there has been no substantial copying. Thus in making Mrs. Beeton's rabbit pie there is no substantial copying of the recipe book—the instructions found therein have been followed but the book has not been copied.
Neither of these applications of the idea-expres sion principle applies in the present case. The program as originally written is copyrightable subject-matter. There has in fact been copying— the code read from the defendants' chips is the same as that which can be read from the plaintiffs' chips. I do not see that the decision in the Cuise- naire case in any way assists the defendants in this case. The computer program when written is clear ly a literary work. What is more, its embodiment in a silicon chip retains the form of expression of the oiriginal work. The program in its source code version can be retrieved (read) by a process of translation or translations from the ROM chip. There was no such relationship between the words
in the book "Les Nombres en Couleurs" and the rods which were in issue in the Cuisenaire case. No part of the text of the book could be retrieved or "read" from the rods.
Counsel argues that in copying the ROM the defendants are doing no more than following the recipe prescribed by the program, i.e.: making Mrs. Beeton's rabbit pie. I think a closer analogy is that what they are doing is copying the recipe book.
What then of counsel's argument that a comput er program exhibits a merger of the idea and the expression of the idea and therefore it is not copyrightable. I have considerable difficulty with this argument from a number of points of view. In the first place, if this argument is valid then it is difficult to understand why the concession was made that the assembly code version of the pro gram is copyrightable. Surely if there is a merger of idea and expression, it exists not only in the machine code version of the program but also in the written assembly code version as well. Second ly, the exact scope of the legal rule (if one exists) that when there is a merger of the idea with its expression, copyright protection does not operate, is not at all clear. And, thirdly, the evidence that there is a multitude of forms of expression in which any given program can be written seems to me to demonstrate that there is no merger of the idea and the expression of the idea with respect to the programs in issue.
The Cuisenaire, Hollinrake and Moreau deci sions do not stand for the proposition, urged by counsel, that when there exists a merger of the idea and the expression thereof this renders the work uncopyrightable. I have not been referred to any United Kingdom, Australian or Canadian case where that rule has been applied as the ratio of the case. Counsel's argument in the present case seems to be that there is a merger of idea and expression because there can be only one pattern in the ROM chip, i.e.: one way of structuring that chip to enable it to replicate the plaintiffs' program. But this clearly cannot be a case of merger rendering
the device uncopyrightable because the same can equally be said of every record or cassette tape.
I cannot disguise the fact that in seeking to apply the alleged merger rule I have considerable difficulty; it seems to me that many works which are clearly copyrightable exhibit a merger of the idea they convey and the expression thereof: a poem, a play, a painting, a map, a chart. It is only if the idea communicated by such works is described in highly abstract, remote and general terms that one could say there is no merger of the idea they convey and the expression in which that idea is conveyed. In addition, the word "idea" itself is of varying definition. 2
Examples given in argument of the application of the merger principle are formulations such as E = mc 2 , the phythogorean theorem, or various algebraic proofs. It may be that these examples demonstrate nothing more than that the particular idea being expressed is really information about the external world (recognizing that E = mc 2 is in fact a hypothesis) and that factual information is something which copyright does not protect. I see an analogy, for example, between a statement such as "the Prime Minister of Canada met with the President of the United States on March 17" and "the square on the hypotenuse of a right-angled triangle is equal to the sum of the squares on the other two sides". Neither of these phrases as such, apart from a larger text in which they might appear, would be subject of copyright. The exam ple of algebraic proofs leads, it seems to me, to an almost philosophical discussion of the nature of
2 The definition of "idea" in The Concise Oxford Dictionary (6th ed.) is partly as follows:
1. Archetype, pattern, as distinguished from its realization in individuals; (Platonic Philos.) eternally existing pattern of which individual things in any class are imperfect copies. 2. Conception, plan, of or of thing to be aimed at, created, discovered, etc., ... 3. Notion conceived by the mind ... way of thinking ... vague belief, fancy, ... 4. (Descartes, Locke) immediate object of thought or mental perception; (Kant) conception of reason transcending all experience; (Hegel) absolute truth of which all phenomenal existence is the expression.
intellectual thought. 3 It is a discussion which a higher Court than this may find it necessary to consider but which I consider it sufficient to deal with by noting that a computer program is not similar to any of the examples cited. It is not a statement reporting a fact. It is not comparable to an algebraic proof. It is a creation in the same way that an instruction book is a creation. While copy right would not prevent someone making Mrs. Beeton's rabbit pie (indeed it was to encourage people to do so that Mrs. Beeton's Book of Household Management was first published), it does prevent someone copying the book itself. The order in which the recipes are listed, the form and expression in which they are couched are properly the subject of copyright. This order, form, pattern of expression of the plaintiffs' program is retained in the ROM and is copied when the defendants copy the ROM.
There is another branch of the merger doctrine which has prevailed in the United States and which it is necessary to consider. It would appear to have originated with the decision in Baker v. Selden, 101 U.S. 99 (1879), a case refered to in several "commonwealth" decisions, 4 but without reliance on the full scope of the decision given therein. Baker v. Selden dealt with copyright claimed in a book which described a new system of accounting and particularly accounting forms (consisting of certain ruled lines and headings) contained in the book. The Court found that the defendant's use of the book and development of his own forms did not breach the plaintiff's copy- right—i.e.: there was no substantial copying. But the Court went further and drew a distinction between works of science or instruction and other types of works. It held that where a useful art
3 Such proofs are tautological in nature, operate within a system where the notation or terms of expression can be completely arbitrarily defined, consist of statements about the validity of relationships within that system. Indeed one could ask whether instead of exhibiting a merger of idea and expres sion, algebraic proofs do not exhibit an independence of the two.
Hollinrake v. Truswell, supra, p. 184; Cuisenaire v. South West Imports, supra, p. 182; Cuisenaire v. Reed, supra, p. 182. And see Harold G. Fox, The Canadian Law of Copyright and Industrial Designs, 2nd ed. 1967, p. 126; James Lahore, Intel lectual Property Law in Australia, 1977, pp. 8, 41, 42, 81, 196.
could only be employed by using the forms or diagrams by which it was explained there would be no copyright in such forms and diagrams.'
The Court thus proceeded to lay down a much broader rule than was necessary for the purpose of the case; it held that the forms in the book were not protected by copyright. There is no doubt that this conclusion was in part at least shaped by the wording of congressional legislative authority under the United States Constitution. 6 This has given the United States copyright law a form and development particular to that country.
The Baker v. Selden decision, even in the United States, however, has been criticized as wrongly decided: Nimmer on Copyright, volume 1, § 2.18. This criticism proceeds in part on the basis that it is simply inaccurate to think that exposi tions on science or the useful arts require that any particular form provided in the original exposition must be followed in order to avail oneself of the "idea" of the work. All such works it is noted can be expressed in a variety of forms.
This development of copyright law is not one that has been adopted in this country, as far as I know. Indeed rejection thereof would seem to be implicit in the Court of Appeal's decision in Bulman Group (The) Ltd. v. Alpha One-Write Systems B.C. Ltd. et al. (1981), 54 C.P.R. (2d)
5 Mr. Justice Bradley (for the Court) stated the following, at pages 103-104:
The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public; not given for the purpose of publication in other works explana tory of the art, but for the purpose of practical application.
Of course, these observations are not intended to apply to ornamental designs, or pictorial illustrations addressed to the taste. Of these it may be said, that their form is their essence, and their object, the production of pleasure in their contem plation. [Underlining added.]
6 See particularly Baker v. Selden, at p. 105.
179 and in the subsequent decision of the Trial Division Bulman Group Ltd. (The) v. "One Write" Accounting Systems Ltd., [1982] 2 F.C. 327; 62 C.P.R. (2d) 149. At issue in those cases was the copyrightability of accounting forms. Initially the claim for copyright in such forms was rejected by the Trial Division on an application for an inter locutory injunction. The Court of Appeal over turned that decision indicating that there was a seriously arguable case. Following full trial of the issue copyright was held to exist (this decision was not appealed to the Court of Appeal).
In any event, I have not been persuaded that there is a merger of the idea and the expression thereof in a computer program. The fact that a program can be written in a variety of different forms, that the same programmer would not write a program the same way if he or she were to start anew a second time, that the programmer is indif ferent to the medium in which the program is embodied, all indicate that computer programs do not fall within the merger exception to copyright- able subject-matter (if such exception exists).
Copyright Act—Statutory Interpretation Section 3 of the Copyright Act provides:
3. (1) ... "copyright" means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, ....[Underlining added.]
These opening words are followed by a list of specific examples, infra, page 196. The question, then, is whether these opening words of section 3 encompass the embodiment of the plaintiffs' pro gram in the ROM chip.
No one disputes, of course, that when the present Copyright Act was originally enacted by Parliament in 1921 no thought could have been given to computer programs and whether they would be covered by the provisions of the Act. This is not a relevant consideration, since the only question is whether the terms of the Act as drafted can fairly be said to cover such programs as encod ed in the ROM chip.
The legislative history of the present section 3 of the Copyright Act is of some assistance in this regard. The 1842 United Kingdom Copyright Act (5 & 6 Vict., c. 45 [An Act to amend the Law of Copyright]), which applied initially to Canada as well, provided:
... "Copyright" shall be construed to mean the sole and exclusive Liberty of printing or otherwise multiplying Copies of any [book] ....
"Book" was defined as including "every Volume, Part or Division of a Volume, Pamphlet, Sheet of Letter-press, Sheet of Music, Map, Chart, or Plan".
In Boosey v. Whight, [1899] 1 Ch. 836, affirmed [ 1900] 1 Ch. 122 (C.A.), the question arose as to whether perforated sheets created for use in player pianos were copies of the relevant sheet music for the purposes of the Act. It was argued, by the plaintiff, that one could take the perforated sheets and write out the notes of music therefrom in ordinary musical notation providing one understood the method or pattern of making the perforations. The defendants argued, on the other hand, that: the piano rolls were not covered by the terms of the 1842 Act; music boxes and barrel-organs which operated on the same princi ple had long been known; the legislature had not intended "sheet of music" to cover this type of apparatus for the mechanical reproduction of music. The Courts agreed with the defendants' representations. Mr. Justice Stirling, at trial stated [at pages 841-842]:
I think it is possible that, with considerable trouble, a person might so far master the scheme according to which the perfora tions are made as to be able to read the notes thereby denoted, but this is not shewn in any case to have been done .... It also appears to me that for this purpose the rolls constitute an extremely cumbrous system of writing music, hardly available without the use of some mechanism which at present does not exist. Upon the whole, I think it is highly improbable that any one would ever go to the trouble of acquiring the art of reading these rolls.
The copyright conferred by that Act [of 1842] appears to me to be the exclusive liberty of multiplying copies of something in the nature of a book. The rolls, so far as they contain perfora tions, are, in fact, used simply as parts of a machine for the production of musical sounds, not for the purpose of a book.
The Court of Appeal in upholding this decision agreed: that the then Copyright Act treated a sheet of music as if it were a book; that a perforat ed sheet which became part of a musical instru ment to play the music is different from a sheet of music which "appeals to the eye", that the defen dants' perforated sheets were part of a "mechani- cal contrivance" for producing musical notes.
This decision was followed in several subsequent decisions, on both sides of the Atlantic ocean: Newmark v. National Phonograph Company and Edison Manufacturing Company (1907), 23 T.L.R. 439 (K.B.); Monckton v. Gramophone Company Limited (1912), 106 L.T. 84 (C.A.); White-Smith Music Publishing Company v. Apollo Company, 209 U.S. 1 (1908).
The United Kingdom copyright legislation (which still applied at that time to Canada) was amended in 1911' (1 & 2 Geo. 5, c. 46 [Copyright Act, 1911]). The new provisions in the legislation of 1911 read:
1....
(2) ... "copyright" means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever, to perform, or in the case of a lecture to deliver, the work ... and shall include the right,—
(a) to produce, reproduce, perform, or publish any transla tion of the work;
(d) in the case of a literary, dramatic, or musical work, to make any record, _ perforated roll, cinematograph film, or other contrivance by means of which the work may be mechanically performed or delivered ... [Underlining added.]
And subsection 19(1) was added:
Changes in the United States law seemed to be slower in coming and in any event copyright legislation in that country has followed a different legislative history. This is so in part, at least, because of that country's constitutional framework. See Apple Computer, Inc. v. Formula Intern., Inc., 562 F.Supp. 775 (U.S. Dist. Ct. (1983)) where it is indicated that before amendment in 1976 the copyright law of that country only protected copies which were perceptible to human beings— things written or printed, and that a requirement of a com municative function to individuals stemmed from the early decision of White-Smith Music Publishing Company v. Apollo Company supra, which had held that a piano roll was not a form of a work which people could perceive.
19. (1) Copyright shall subsist in records, perforated rolls, and other contrivances by means of which sounds may be mechanically reproduced ...
These subsections were eventually carried forward into the Canadian legislation and appear in almost identical form as section 3 and subsection 4(3) of the present Act.
Counsel for the plaintiffs argues that the open ing words of subsection 1(2), now section 3 of the Act, were purposely drafted broadly enough to encompass new technologies which had not been thought of when the Act was drafted. I agree.
It seems clear that the 1911 amendments did away with any requirement that in order to be covered by copyright the copy or reproduction of the work had to be in a human readable form. Equally, I think the 1911 amendments did away with any rule which would deny copyright protec tion to a work merely because the copy or repro duction could be characterized as being part of a machine. 8
The piano rolls in Boosey v. Whight were removable parts comparable to the modern day record, cassette or video tape. The ROM chips are removable with relative ease but they are not intended to be removed. They are not removable in the same manner as a floppy disk or a cassette is removable. The ROM chip is meant to be left in the machine on a permanent basis. However, the legislation draws no distinction on this basis. Accordingly, I think it is irrelevant, in the present case, whether the program is encoded in a floppy disk, on a punch card or in a ROM chip. The copyrightability issue does not differ merely on the basis of the medium in which the program is found.
I can see no difference at a physical level be tween a device such as a record which "contains" a musical work by virtue of the grooves impressed therein, and a ROM chip which "contains" a program by virtue of the pattern of conductive and
8 See Falcon v. Famous Players Film Co., [1926] 2 K.B. 474 (C.A.) for a case which discusses the change brought in the law by the 1911 amendment.
non-conductive areas created therein. In my view the opening words of section 3 clearly cover the plaintiffs' program as embodied in a ROM chip. Such embodiment is surely the production or reproduction of the work in a material form, just as a record or a cassette tape is a production or reproduction of a work in a material form. (I have not overlooked the fact that there is a separate section in the Act which covers copyright in records.)
In my view the requirement of "readability" or "appearance to the eye" found in the jurispru dence requires no more than that there be a method by which the work in which copyright is claimed and the work which is alleged to infringe can be visually compared for the purpose of deter mining whether copying has occurred. Since in this case the programs can be "read" out of ROM and so compared, this requirement is met. I adopt in this regard the reasoning of Mr. Justice Megarry in Thrustcode Ltd. v. W.W. Computing Ltd., [1983] F.S.R. 502 (Ch.D.), at page 505:
For computers, as for other things, what must be compared are the thing said to have been copied and the thing said to be an infringing copy. If these two things are invisible, then normally they must be reproduced in visible form, or in a form that in some way is perceptible, before it can be determined whether one infringes the other.
Normally ... what will be needed is a print-out or other documentary evidence of the program alleged to have been copied, and of the alleged infringing program, or sufficient parts of each.
And those of Mr. Justice Fox in the Apple Com puter Inc v Computer Edge Pty Ltd case (1984), 53 ALR 225 (F.C.), at page 237:
In my view it does not matter, if it be the fact, that the code cannot be seen .... The adaptation of the work is rendered perceptible with a machine. It is sufficient that the code has its existence in, and is ascertainable from, the chips.
For cases which have dealt with the creation of a work in a material form different from that in which it originated see: Chabot v. Davies, [ 1936] 3 All E.R. 221 (Ch.D.) (a store front built from plans thereof); King Features Syndicate, Incorpo rated v. Kleeman (O. & M.) Ld., [1941] A.C. 417 (H.L.) (brooches and dolls from a Popeye car toon); Dorling v. Honnor and Another, [1964]
R.P.C. 160 (C.A.) (boats from plans); and Baylin- er Marine Corp. v. Dorai Boats Ltd., [1986] 3 F.C. 346; (1985), 5 C.P.R. (3d) 289 (T.D.). These cases also demonstrate that a copy of a reproduc tion which reproduction exists in a different ma terial form from the original is still an infringe ment of copyright in the original. The reasoning found in these cases is applicable to the present situation although I note that the plaintiffs do not claim copyright in the ROM chip itself as a device but only in the program encoded therein. In this respect it differs from the three-dimensional cases cited above. In my view this strengthens rather than weakens the plaintiffs' claim to copyright.
As I understand counsel's argument it is that even if the reproduction itself does not have to be in human readable form there is a requirement that the purpose for which that reproduction is made must ultimately be to communicate the work to human beings. A record or cassette when used with a machine produces sounds for human listen ing while the ROM chip does not so communicate to humans as its primary function. As noted above, it can be used to so communicate and for certain limited purposes is so used, but that is not its primary purpose.
It is argued that the requirement that the pri mary purpose of the work be to communicate to human beings in order for copyright to exist is found in both the context of the Act and in the wording of specific sections thereof. The context argument is one that has found favour with some courts. I note particularly the dissenting decision of Mr. Justice Sheppard in the Computer Edge case supra, page 194, at page 277. His remarks were addressed to the meaning of the words trans lation and adaptation in the Australian Copyright Act but it is the approach which counsel urges on this Court:
There seems to be running through these various provisions [of the Act] the idea or notion that what is the subject of copyright (whether a work or an adaptation thereof) will, although not immediately published and perhaps never published, be capable of being published and thus being seen or heard. The very idea of publishing is that something should be seen or heard.
It is argued that even if the context of the Act does not make it clear that computer programs in their machine code version fall outside the Act, the textual wording of pertinent sections does so indi cate. Paragraph 2(v) 9 and section 3 are referred to. Paragraph 2(v) states:
2....
(y) "every original literary, dramatic, musical and artistic work" includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets, and other writings, lectures, dramatic or dramatico-musical works, musical works or compositions with or without words, illus trations, sketches, and plastic works relative to geography, topography, architecture or science. [Underlining added.]
And section 3:
3. (1) For the purposes of this Act, "copyright" means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform, or in the case of a lecture to deliver, the work or any substantial part thereof in public; if the work is unpublished, to publish the work or any substantial part thereof; and includes the sole right
(a) to produce, reproduce, perform or publish any translation of the work;
(b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work;
(c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise;
(d) in the case of a literary, dramatic, or musical work, to make any record, perforated roll, cinematograph film, or other contrivance by means of which the work may be mechanically performed or delivered;
(e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present such work by cinematograph, if the author has given such work an original character; but if such original character is absent the cinematographic production shall be protected as a photograph;
(J) in case of any literary, dramatic, musical or artistic work, to communicate such work by radio communication;
and to authorize any such acts as aforesaid. [Underlining added.]
9 The 1952 consolidation of the Copyright Act is referred to for ease of reference. The definition of "every literary, dramat ic, musical and artistic work" remains the same in the 1970 consolidated version of the Act but no paragraph designation is given.
The general words, both "whatever may be the mode or form of its expression" in paragraph 2(v) and "in any material form whatever" in section 3, it is said, must be interpreted by reference to the particular examples which follow in each case. That is, in the case of paragraph 2(v) "books, pamphlets..." and in the case of section 3 the particular forms of production or reproduction itemized by each of paragraphs (a) to (f). It is argued that the principle of statutory interpreta tion noscitur a sociis is applicable.
In my view counsel's arguments based on the context of the Act and on the specific wording of the sections thereof are conclusively answered by section 3 itself. Section 3 provides that " 'copy- right' means the sole right to produce or reproduce the work ... in any material form whatever". In my view that clearly covers the program as embod ied in the ROM chip. To find otherwise, it seems to me, would require reading words into section 3 of the Copyright Act which are not there.
With respect to the argument based on the principle noscitur a sociis, that principle is only applicable to cut down the general words of a statutory provision when it is clear that Parliament did not intend a broad one. Parliament's intention in the case of section 3, and perhaps also para graph 2(v), is very clear. The enumerations are used as examples. The general wording is said to "include" the specifics. In that context, the princi ple noscitur a sociis can have no role to play.
It is also argued that it is clear that the opening words of section 3 were not intended to cover works in "any" material form because if this were so there would have been no need to include in the Act paragraph 3(1)(d). The text of paragraph 3(1)(d) itself indicates, it is said, that only contriv ances which communicate to human beings were meant to be covered by the Act. This last is based in part on the fact that "delivery" in section 2 of the Act only refers to delivery in relation to a lecture and that "performance" is defined as meaning any acoustic or visual representation. In this regard counsel for the defendants argues that application programs which cause a text or graph ics to be displayed on the screen, or which result in sounds being emitted or music being played are covered by copyright. In his view they are contriv-
ances (in the chip version) by means of which the work may be mechanically delivered.
The argument based on paragraph 3(1)(d) I find unconvincing. It has a two-edged quality. It can equally be asked why, if Parliament only intended to cover records or contrivances which utter sounds or communicate to humans, the open ing words of section 3 were drafted so broadly. The references to the definition sections are not persuasive. They only purport to define one par ticular aspect of delivery as it relates to lectures; no all inclusive definition is given of that word. The definition of performance is irrelevant since no one has suggested that it applies in the present case. Also, I have difficulty with the distinction counsel makes between programs which result in something being displayed on the screen and those (such as ROM) which do not. When "something" is displayed on the screen it is not the program (i.e.: it is not the original or a hexadecimal version thereof which is displayed). The program remains invisible unless disassembled by the translation processes similar to that used to "read" the ROM.
In addition, I think there is merit in the argu ment that the ROM chip, whatever the interpreta tion of the opening words of section 3, can be said to fall within paragraph 3(1)(d) as a contrivance by means of which the work may be delivered. The program (as noted above) can be delivered to the screen of the monitor, or as a print-out to be read by human beings. I do not find it necessary to decide whether "delivery" to the CPU satisfies paragraph 3(1)(d).
Reference is also made to sections 45 and 46, as support for the conclusion that Parliament did not intend to cover works in "any" material form. Section 45 states that copyright does not exist outside the parameters of the Act and section 46 excludes from the' Act's protection certain designs registerable under the Industrial Design Act, R.S.C. 1970, c. I-8. Section 45 of the Act is of no assistance; it adds nothing to a determination of what is and what is not covered by the Act. Nor is section 46 relevant since it relates to works regis-
terable under the Industrial Design Act, which a ROM chip, at least in so far as the program contained therein is concerned, manifestly is not.
Another contention put forward is that because the Copyright Act can give rise to penal conse quences (section 25) it should be interpreted res trictively, that is in favour of the defendants. 10 The present case is not one concerning the commission of an offence. It is a civil action between two private parties. The Federal Court of Appeal in Dalton v. Canadian Human Rights Commission, [1986] 2 F.C. 141; 63 N.R. 383, at pages 146-149 F.C.; 386-387 N.R., cast doubt on the appropriate ness of applying the restrictive rule of statutory interpretation applicable to criminal offences in such circumstances. And indeed the Ontario Court of Appeal in R. v. Budget Car Rentals (Toronto) Ltd." seems to have indicated that contrary to the defendants' interpretation of that case, the rule means nothing more than that penal statutes are to be interpreted as are all statutes, in accordance with the ordinary meaning of the language they employ. In any event, I would only find it neces sary to consider the appropriateness of the defen dants' restrictive interpretation argument if I found section 3 of the Copyright Act to be ambig uous. I do not find such an ambiguity. As noted above "to produce or reproduce ... in any material form" seems to me to be quite clear.
Policy Considerations
It is argued that copyright should not be held to apply to the program as encoded in the ROM chip because this constitutes the granting of a monopo ly on an item of commerce—a restriction on com merce which copyright legislation was never intended to create. It is contended that some pro grams are used in connection with machines to
10 In support of this position are cited: Canusa Records Inc. et al. v. Blue Crest Music, Inc. et al. (1976), 30 C.P.R. (2d) 11 (F.C.A.), at p. 13; R. v. Budget Car Rentals (Toronto) Ltd. (1981), 31 O.R. (2d) 161 (C.A.), at pp. 165, 167, 168, 173; R. v. Philips Electronics Ltd.—Philips Electronique Ltee (1980), 30 O.R. (2d) 129 (C.A.), at pp. 137-139; Tuck v. Priester (1887), 19 Q.B.D. 629, at p. 638.
" Ibid.
control certain manufacturing processes (special purpose programs) and that these can be covered by patent law. Consequently, it is argued copyright should not extend to computer programs because an overlap of copyright and patent law should be avoided. Counsel's two last policy arguments are: Parliament is presently in the process of discussing the extent to which copyright protection should apply to computer programs and to hold that the Act as presently drafted applies is to usurp Parlia ment's function; there has been considerable uncertainty as to whether the present legislation extends to computer programs and the defendants should not be penalized for acting as they did when there has been so much debate surrounding the subject.
With respect to the first argument, the purpose of the Copyright Act is and always has been to grant a monopoly. No distinction is made therein as to the purpose of the work created—for enter tainment, instruction or other purposes. The legis lation historically, in my view had two purposes: to encourage disclosure of works for the "advance- ment of learning", and to protect and reward the intellectual effort of the author (for a limited period of time) in the work. A book is an article of commerce, as is a map or a chart. The interpreta tion of the legislation which the defendants urge, based on a view that the Act was not intended to interfere with commerce, is both not accurate and would add a gloss to the statute which its wording does not bear.
With respect to the second argument, as I read the authorities and references to which I have been referred by counsel 12 they indicate that computer
' 2 Barrigar, Legal Protection of Software from Unauthorized Use: Proprietary and Contractual Rights (1976), 30 C.P.R.
(2d) 159; Re Application Number 961,392 (1971), 5 C.P.R. (2d) 162 (Pat. App. Bd.); Gottschalk, Comr. Pats. v. Benson, 175 USPQ 673 (S.C. 1972); Dann, Comr. Pats. v. Johnston, 189 USPQ 257 (S.C. 1976); Schlumberger Canada Ltd. v. Commissioner of Patents, [1982] 1 F.C. 845; (1981), 56 C.P.R. (2d) 204 (C.A.), application for leave to appeal to Supreme Court of Canada dismissed (1981), 63 C.P.R. (2d) 261; Re Bendix Corporation Application (Now Patent No. 1,176,734) (1984), 5 C.P.R. (3d) 198 (Pat. App. Bd.); Re Application for Patent of Dissly Research Corp. (Now Patent No. 1,188,811) (1984), 6 C.P.R. (3d) 420 (Pat. App. Bd.). See also Diamond, Comr. Pats. v. Diehr and Lutton, 209 USPQ 1 (S.C. 1981).
programs are not per se patentable but that an apparatus or process that meets the standards of novelty and unobviousness required by the Patent Act, R.S.C. 1970, c. P-4, will not be disqualified from patent protection merely because a computer is used to operate the apparatus or implement the process. In addition, I do not see that overlapping areas of the law are particularly unusual (refer- ence need only be made to the fields of tort and contract). Nor do I see it as the role of the courts to frame decisions to avoid such results. In addi tion, I would note that the present case does not deal with a special purpose program. It concerns the operation of a general purpose computer, although I must admit that I do not, at the moment, see any rationale for distinguishing be tween the two. I note that Mr. Justice Megarry in the Thrustcode case, supra, page 194, did not think it necessary to draw such a distinction.
In support of this second argument the Court of Appeal decision in Schlumberger Canada Ltd. v. Commissioner of Patents" was relied upon. I do not see that that case assists the defendants. It held that a process involving the use of a computer program to perform certain calculations by refer ence to certain specifications was not patentable subject-matter. It was held that the process being claimed was a mathematical formula which could be assimilated to a "mere scientific principle or abstract theorem" for which subsection 28(3) of the Patent Act prescribes that "no patent shall issue". As noted above, a computer program in my view is not the same as a mathematical formula. In addition, the task a computer is programmed to perform ("the process" in the Schlumberger case) must be distinguished from the program written to accomplish that task. Merely because the result is not new (e.g.: calculations based on the measure ment of bore holes) does not mean that the pro gram written to accomplish that task is not copy- rightable—in the same way a text book on mathematics or an instruction manual is copy- rightable.
Ibid.
With respect to the third policy argument, I was referred to proposals for the revision of the Copy right Act found in a publication entitled From Gutenberg to Telidon issued by the Minister of Consumer and Corporate Affairs in 1984. At pages 79-83 of that text the view is expressed that the existing copyright regime is inappropriate for computer programs; that the term of protection should be much shorter (e.g.: 5 years for a pro gram in human readable form). I was also referred to the report of the Parliamentary Sub-committee on the Revision of Copyright which issued more recently, entitled "A Charter of Rights for Crea tors". That report recommends, at pages 45-46, that the full regime of protection of copyright law (life of the author plus 50 years) is appropriate for computer programs, and that no distinction should be made between programs in human readable form and in machine readable form. The juxtapo sition of these two is ample demonstration, if demonstration is needed, as to why courts consist ently take the position that such policy consider ations are not relevant to the role of applying the existing law.
The fourth aspect of counsel's "policy argu ments" is also not relevant. Whether and how the law applies in given fact situations is the subject of daily debate. If it were not, the courts would be empty places. The closing comments of Mr. Jus tice Collier in Bulman Group Ltd. (The) v. "One Write" Accounting Systems Ltd., supra, page 190, at pages 335-336 F.C.; 156 C.P.R., apply to the facts in this case:
The defendant was wrong, in law and in fact, in its view that the plaintiffs forms could not be the subject of copyright.
To my mind, there were reasonable grounds to assume copy right might well exist. The defendant chose to take that chance. A wrong assessment of the legal and factual position cannot be an excuse to avert the remedy of damages and an accounting of profits, as well as the other relief claimed by the plaintiff.
See also Compo Company Ltd. v. Blue Crest Music Inc. et al., [1980] 1 S.C.R. 357; (1979), 45 C.P.R. (2d) 1, at pages 375-376 S.C.R.; 15 C.P.R.
There was some evidence that the Copyright Office of the Department of Consumer and Corpo rate Affairs took an uncertain attitude as to whether or not the Copyright Act applied to com puter programs. A pamphlet "available" in the Copyright Office and dated 1982 contains the statement:
It is unclear under the current Act, which came into effect in 1924, whether or not computer programs or software are protected. However, written instructions for the use of a pro gram are subject to copyright protection as "literary" works.
There is no evidence that this pamphlet was dis tributed to the public or that any of the defendants had copies of it at the relevant time. Accordingly, I do not see that it has any role to play with respect to the present litigation.
Jurisprudence Existing Respecting Computer Programs
There are a growing number of cases in jurisdic- tions where the copyright law is not too dissimilar from our own which have held that computer programs in their machine code version are pro tected by the copyright law applicable existing in that jurisdiction. '4 Not only is there such a trend abroad, but a similar phenomenon can also be discerned in this country. 15 Counsel for the defen dants argues that these are all interlocutory applications where the Court has not had the benefit of trial and expert evidence. Secondly, he
14 Sega Enterprises Limited v. Richards and Another, [1983] F.S.R. 73 (Ch.D.); Thrustcode Ltd. v. W.W. Computing Ltd., supra, p. 194; Northern Office Microcomputers (Pty) Ltd. v. Rosenstein, [1982] F.S.R. 124 (S.C. S. Afr.); Apple Computer Inc v Computer Edge Pty Ltd, supra, p. 194.
15 Apple Computer Inc. v. Computermat Inc. (1983), 1 C.I.P.R. 1 (Ont. H.C.); Apple Computer, Inc. v. Minitronics of Canada Ltd. et al. (1985), 7 C.P.R. (3d) 104 (F.C.T.D.), affirmed (1985), 8 C.P.R. (3d) 431 (F.C.A.); Société (La) d'Informatique R.D.G. Inc. v. Dynabec Ltée et al. (1984), 6 C.P.R. (3d) 299 (Que. S.C.); F & I Retail Systems Ltd. v. Thermo Guard Automotive Products Canada Ltd. et al. (unreported decision of the Supreme Court of Ontario of June 26, 1984); Logo Computer Systems Inc. c. 115778 Canada Inc. et al. (unreported decision of the Quebec Superior Court of October 25, 1983); Nintendo of America, Inc. v. Coinex Video Games Inc., [1983] 2 F.C. 189 (C.A.), which deals with the issue in a peripheral way; Spacefile Ltd. v. Smart Computing Systems Ltd. et al. (1983), 75 C.P.R. (2d) 281 (Ont. H.C.).
argues that in giving these decisions, the courts have thought that the program itself, in a written notational form, is actually within the computer rather than being found therein as an electrical code, or as a device designed to replicate that code.
I agree that most of the jurisprudence is of an interlocutory nature, although the decision of the Appeal Division of the Federal Court of Australia in the Computer Edge case supra, page 194, con tains a thorough treatment of the issue and was given after extensive evidence had been heard. I find its reasoning of considerable persuasive value. It dealt, of course, with the Australian legislation, which does not contain a broad statement of applicability (to the production of a work in any material form whatever) such as is found in sec tion 3 of our Act, but that does not lessen the value of the reasons found therein.
With respect to counsel's contention that courts think the written program as a writing, is in the silicon chip, I disagree. There is a tendency in the decisions to talk of the machine language as being within the machine (in terms of ones and zeros). This is the way computer scientists talk. I do not think, however, it is accurate to say that courts granting interlocutory injunctions have failed to recognize the real nature of a computer program. I note, for example, in Sega Enterprises Limited v. Richards and Another, supra, page 203, at page 75, Mr. Justice Goulding of the High Court, Chancery Division wrote:
On the evidence before me in this case I am clearly of the opinion that copyright ... subsists in the assembly code pro gram of the game "Frogger." The machine code program derived from it by the operation of part of the system of the computer called the assembler is to be regarded, I think, as either a reproduction or an adaptation of the assembly code program .... [Underlining added.]
And in Thrustcode Ltd. v. W.W. Computing Ltd., supra, page 194, at page 505, Mr. Justice Megarry of the High Court, Chancery Division states that:
In the case of computer programs, the software appears to consist of articles which by magnetic or electrical means will make the hardware do certain things, together with what is
recorded on various tapes and discs. By means of this, the letters, signs and numbers of the program may be made to appear on a screen or on a print-out; and if this is done, then the familiar process of comparison [of two written texts] is made possible. [Underlining added.]
And in the Computer Edge case, supra, page 194, Mr. Justice Lockhart stated at page 263:
There is perhaps room for debate as to the precise processes used in the Wombat ROMs and EPROM to generate the relevant sequences of electrical impulses; but the inescapable conclusion is that the Wombat ROMs and EPROMs contain representations of the very same sequence of impulses as are represented in the Apple ROMs.
I had occasion to consider much of the jurispru dence of other jurisdictions in International Busi ness Machines Corporation v. Ordinateurs Spi- rales Inc., [1985] 1 F.C. 190; (1984), 80 C.P.R. (2d) 187 (T.D.). I have not referred to that deci sion at any length in these reasons and do not propose to do so. This should not be taken as an indication that I disagree with the views expressed therein but merely that I consider it inappropriate to rely on my own decision given in an interlocuto ry proceeding, for the purposes of the present case.
Of considerable significance is the fact that the Quebec Superior Court more recently, in Société (La) d'Informatique R.D.G. Inc. v. Dynabec Ltée et al., 16 affirmed by the Quebec Court of Appeal," upheld copyright in four application programs. The Superior Court relied heavily on the Comput er Edge decision, supra, page 194, and in the characterization therein of programs in a chip form as translations or adaptations of the original work. The Quebec Court of Appeal referred to the breadth of section 3 of our Act.
EDITOR'S NOTE
In the Mackintosh action, there was evidence that one of the defendants, House of Semicon ductors, purchased blank chips and programmed them—for itself and the defendant Mackintosh— by burning in the plaintiffs' program. The chips
16 Ibid.
17 (1985), 6 C.P.R. (3d) 322 (Que. C.A.).
were then placed in computers sold as "Apple- compatible". On occasion, House of Semiconduc tors imported from Taiwan ROM chips containing the plaintiffs' program.
Liability of the Defendants Chico Levy and James Begg
The claims against the individual defendants, Chico Levy and James Begg, are contested on the grounds that they are not liable in their personal capacity for the acts of the respective corporations with which they were involved (Mackintosh and House of Semiconductors on the one hand and 115778 and 131375 Canada Inc. on the other) on the basis of Salomon v. Salomon & Co., [1897] A.C. 22 (H.L.). I have no difficulty in finding both individuals personally liable. The personal liability of directors or officers of a company in the case of patent infringement was considered by the Federal Court of Appeal in Mentmore Manufacturing Co., Ltd. et al. v. National Merchandise Manufactur ing Co. Inc. et al. (1978), 40 C.P.R. (2d) 164. The Court at page 171 quoted 29 Hals., 3rd ed., page 90, para. 192:
The directors of a company are not personally liable for infringements by the company, even if they are managing directors or the sole directors and shareholders, unless either (1) they have formed the company for the purpose of infring ing; or (2) they have directly ordered or authorised the acts complained of; or (3) they have so authorised or ordered by implication.
The Court went on at page 172 to indicate that the fact of owning (as shareholder) and being the director of a company was not itself sufficient to warrant an inference that an individual had authorized acts of infringement done by the com pany. Whether this was so would be a question of fact to be decided on the circumstances of each case. At page 174 it said:
I do not think we should go so far as to hold that the director or officer must know or have reason to know that the acts which he directs or procures constitute infringement. That would be to impose a condition of liability that does not exist for patent infringement generally. I note such knowledge has been held in the United States not to be material where the question is the personal liability of directors or officers: see Deller's Walker on Patents, 2nd ed. (1972), vol. 7, pp. 117-8.
But in my opinion there must be circumstances from which it is reasonable to conclude that the purpose of the director or officer was not the direction of the manufacturing and selling activity of the company in the ordinary course of his relation ship to it but the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it. The precise formula tion of the appropriate test is obviously a difficult one. Room must be left for a broad appreciation of the circumstances of each case to determine whether as a matter of policy they call for personal liability. Opinions might differ as to the appropri ateness of the precise language of the learned trial Judge in formulating the test which he adopted—"deliberately or reck lessly embarked on a scheme, using the company as a vehicle, to secure profit or custom which rightfully belonged to the plaintiffs"—but I am unable to conclude that in its essential emphasis it was wrong. [Underlining added.]
For the application of these principles to a case of trade mark infringement see: Visa International Service Association v. Visa Motel Corporation, carrying on business as Visa Leasing et al. (1984), 1 C.P.R. (3d) 109 (B.C.C.A.).
The principles are equally applicable to copy right infringement. I note that it is easy to acci dentally or inadvertently infringe a patent; it is not easy to accidentally or inadvertently copy the work of another. This may explain why the Court of Appeal in the Mentmore case found that the individual defendants were not personally liable while the British Columbia Court of Appeal was easily able to so find in the Visa decision.
It is abundantly clear to me that both Chico Levy and James Begg knowingly pursued a course of action that would constitute infringement. With respect to Mr. Begg, even if I believed his evidence concerning illness and non-participation in the day to day business affairs of the company, his actions would still be such as to demonstrate a reckless "indifference as to the risk". But, I think the evidence demonstrates more than indifference. No corroborating evidence was given as to his "ill- ness", no medical evidence, no evidence of family; he did not appear as a witness at trial; only his self-serving statements on the examination for dis covery were read in. The documentary evidence (his initials on financial statements, his signature on all cheques, his involvement with the leasing arrangements) all indicate a more intimate
involvement with the affairs of the companies than his statements on discovery would attempt to indicate.
In so far as copyright infringement is concerned a person infringes by virtue of subsection 17(1) and section 3, if they "authorize" or purport to authorize the doing of any act which is reserved to the owner of the copyright. "Authorize" has been defined by the jurisprudence as meaning "sanc- tion, approve, and countenance". 18 And it has been said in C.B.S. Inc. v. Ames Records & Tapes Ltd., [1981] 2 W.L.R. 973 (Ch.D.), at pages 987-988:
... indifference, exhibited by acts of commission or ommission, may reach a degree from which authorisation or permission may be inferred. It is a question of fact in each case what is the true inference to be drawn from the conduct of the person ....
There is no doubt that even if I believed that Mr. Begg took a somewhat limited part in the day to day business activities of the Microcom compa nies his inactivity or indifference would be of such a nature that authorization of or permission to engage in the infringement should be inferred. Certainly there is no doubt that Chico Levy authorized the infringing activities of Mackintosh and House of Semiconductors.
Liability of the Defendants Repco, Nat Levy and Joseph Levy
What then of the corporate defendant Repco and the individual defendants Nat and Joseph Levy? It is not useful to try to analyse the situa tion from the point of view of tort law. The Supreme Court stated in Compo Company Ltd. v. Blue Crest Music Inc. et al., supra, page 202, at pages 372-373 S.C.R.; 13 C.P.R.:
... copyright law is neither tort law nor property law in classification, but is statutory law .... Copyright legislation simply creates rights and obligations upon the terms and in the circumstances set out in the statute.... It does not assist the interpretive analysis to import tort concepts. The legislation speaks for itself and the actions of the appellant must be measured according to the terms of the statute.
18 Falcon v. Famous Players Film Co., supra, p. 193, at p. 491.
As is obvious from the facts set out above that both Nat and Joseph Levy and the corporate defendant, Repco, through their acts aided and supported Chico, in his infringement activities. According to the evidence Nat played a more vigorous role than Joseph. Counsel for the defen dants argued that Nat and Joseph had no actual knowledge of the infringement—they knew their brother was in the computer business, they knew he was selling Apple compatible computers—but it is argued that that does not fix them with knowl edge of the copying activity. I am asked to con strue the evidence as signifying only that Nat and Joseph Levy gave such help to their younger broth er, Chico, in starting his new businesses as any brother would give (e.g.: shared rental space; non- collection of rent except by means of an "adjust- ment" at year end; guarantees of credit; placing advertisements because the newspaper would not enter into such contracts with Chico's fledgling businesses until they became established).
I cannot accept this construction of the evi dence. It is simply not tenable in the circumstances of this case to conclude that Nat and Joseph Levy did not have knowledge of the copying activity being carried on. A determination of knowledge is a question of inference from the facts in a given case. Refer: RCA Corporation y Custom Cleared Sales Pty Ltd (1978), 19 ALR 123 (N.S.W.C.A.), at page 126. I refer also to Albert v. S. Hoffnung & Co. Ltd. (1921), 22 S.R. 75 (N.S.W.S.C.), at page 81; Clarke, Irwin & Co. Ltd. v. C. Cole & Co. Ltd. (1960), 33 C.P.R. 173 (Ont. H.C.), at page 181; Simon & Schuster Inc. et al. v. Coles Book Stores Ltd. (1975), 9 O.R. (2d) 718 (H.C.). Those cases conclude that "knowledge" in compa rable contexts means notice of facts such as would suggest to a reasonable man that a breach of the copyright law was being committed—"notice, which would put a reasonable man on enquiry" (Albert case, supra, at pages 81-82). Indeed, I think the defendants, Repco, Joseph and Nat Levy, in the present case had more than merely notice of facts which would lead a reasonable person to think that a breach of copyright law was being committed. My conclusion is that Nat and Joseph Levy and Repco through them knew of the copyright infringement activity. This conclusion is drawn from the fact that the business carried on by the three brothers before Mackintosh and
House of Semiconductors were created was in a related field to that for which the two companies were created. Also, Repco was closely linked to the business carried on by Mackintosh and House of Semiconductors once they were created. In addi tion, there was not only geographical proximity but integration of some of their business activities. Nat Levy personally acted in his brother's stead in the retail outlet and at trade shows; he suggested the name Mackintosh for one of the companies; Repco's business premises, telephone number and secretarial services were also those of Mackintosh. It is simply not credible to believe that there was no knowledge by Nat and Joseph Levy and through them by Repco of the copyright infringe ment activity.
Knowledge alone, however, is not enough to make an individual liable for copyright infringe ment. Can it be said that either the corporate defendant, Repco, or the individual defendants, Joseph or Nat Levy, engaged in activities which bring them within section 3 of the Act as having authorized the reproduction of the plaintiffs' work, or within subsection 17(4) of the Act. Subsection 17(4) of the Copyright Act provides:
17....
(4) Copyright in a work shall also be deemed to be infringed by any person who
(a) sells or lets for hire, or by way of trade exposes or offers for sale or hire;
(b) distributes either for the purposes of trade, or to such an extent as to affect prejudicially the owner of the copyright;
(c) by way of trade exhibits in public; or
(d) imports for sale or hire into Canada;
any work that to his knowledge infringes copyright or would infringe copyright if it had been made within Canada.
The activities of Nat Levy, and through him those of Repco, clearly bring those two defendants within the terms of subsection 17(4) of the Copy right Act. Their role as purchasers of the newspa per advertisements for House of Semiconductors in my view constitutes "by way of trade" having "offered for sale" the infringing articles and thus brings them within the proscribed activity of para graph (a). Also, Nat Levy personally involved himself in various activities, at trade shows and in the retail outlet at Brunswick Avenue. I think his
activity in this regard was sufficient to constitute offering goods to the public (paragraph (a)) and exhibiting such by way of trade (paragraph (c)). In addition, I make reference to Mr. Justice Addy's finding in Proctor & Gamble Co. v. Bris- tol-Myers Canada Ltd. (1978), 39 C.P.R. (2d) 145, at pages 165-167 where it was held that the defendant's activities of aiding and abetting infringement could in certain circumstances be sufficient to constitute infringement itself. I find this principle applicable to this case and the activi ties of Chico Levy and Repco fall within it.
I do not think, however, that there is enough evidence to allow me to conclude that Joseph Levy's activities, in his personal capacity bring him within subsection 17(4). The only evidence con cerning his involvement personally is that he gave guarantees of credit for the importation of infring ing ROMs, with knowledge that his brother was carrying on an infringing activity. I do not think this falls within any of the paragraphs of subsec tion 17(4) nor within section 3 of the Act as authorizing the production or reproduction of the plaintiffs' program. I think it would do violence to the language of the statute to find that Joseph Levy "authorized" the infringing activities defined in section 3 by merely guaranteeing credits to enable that activity to take place. I adopt the reasoning found at page 984 of the Ames decision, supra, page 208:
Any ordinary person would, I think, assume that an authorisa tion can only come from somebody having or purporting to have authority and that an act is not authorised by somebody who merely enables or possibly assists or even encourages another to do that act, but does not purport to have any authority which he can grant to justify the doing of the act. [Underlining added.]
Accordingly, the action as against Joseph Levy will be dismissed.
Comments on the Evidence
I am mindful of the fact that it is quite likely that a higher Court than this will soon be seized of this case. Accordingly, I would indicate that I have relied heavily on the initial evidence of Professor Graham and on the evidence of Professor Burkow- ski. Most of the "rebuttal" evidence I did not find helpful. I use the word "rebuttal" with some reser vation since the evidence offered under that rubric
was somewhat more extensive than appropriately should be led in that context. In any event, I have not relied on the rebuttal evidence to any great extent. In particular, I found it almost incredulous that the plaintiffs' "hardware" expert refused to express himself except in software terms. Also, the "table of abstractions" by reference to which I was encouraged to accept the proposition that it was inappropriate to talk of programs and circuitry or voltage levels in the same sentence was not convincing.
Remedies
The plaintiffs seek injunctions restraining the defendants and their respective servants and agents from importing, selling and distributing computers and computer components under the name Mackintosh or Microcom or otherwise which contain a copy or substantial copy of the literary works "AUTOSTART ROM" or "APPLESOFT"; an accounting of all profits made by the defendants as a result of the sale of computers and components which infringe the said copyrights of Apple Com puter; and delivery up to the plaintiffs of all copies of computers and computer components in the possession of any of the defendants which contain a copy or substantial copy of the said copyrights.
The defendants argue that both the claim for an accounting as to profits and for delivery up of all computers and computer components which con tain a copy of the programs is too broad. I accept that argument with respect to the delivery up of the computers and computer components. The ROM chips are easily removable. I do not see that there is any justification for the delivery to the plaintiffs of the other computer parts: the key board; the casings; the circuit boards etc. An order will issue requiring delivery up only of the devices containing the program, all copies of the program and all devices containing copies.
With respect to the accounting as to profits I do not consider the claim too broad. It is clear that the profit made by selling the "Apple compatible" computers derived principally from the fact that the plaintiffs' program was contained therein.
There is nothing to make me think that the com puters without the ROM chips could have been sold for much more than the cost price paid by the defendants for the component parts. In my view, the profit arising from the sale of the computers as a whole derived mainly from the fact that they were "Apple compatible" and inclusive of the copied programs therein. In addition, I do not see that the profit derived from the sales can be somehow or other divided as between that attribut able to the chips and that arising from the other components of the computer. Accordingly, an accounting of profits as requested by the plaintiffs is appropriate.
Counsel for the plaintiffs asked that argument as to costs be deferred until after judgment was rendered. Thus, I make no order in that regard except with respect to those defendants against whom action was discontinued by the plaintiffs.
 You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.