Australia: Preliminary discovery as a precursor to potential copyright infringement proceedings

An Australian case heard late last year highlights the difficulty of bringing breach of copyright claims in relation to software source code, and the value of preliminary discovery in assisting copyright owners to make such claims.

Computer programs (including source code) qualify as literary works under the Copyright Act 1968 (Cth) (Copyright Act) and are capable of copyright protection. However, computer programs are not always easily accessible to third parties, making it difficult for copyright owners to determine whether they may have a case against a potential infringer.

In ObjectiVision Pty Ltd v Visionsearch Pty Ltd [2014] FCA 1087, a successful preliminary discovery application allowed the owner of copyright in computer source code to access documents in the potential infringer's possession, for the purpose of determining whether it would commence proceedings for infringement of copyright in that source code.

The facts

ObjectiVision designed and developed the AccuMap1 (and later, an updated version, AccuMap2), a device that tests visual function and can detect visual field loss in patients with glaucoma. The first commercial version of the AccuMap1 was released into the market in 2003.

The Accumap device was driven by software known as Objective Perimetry Evoked Response Analysis (OPERA).

OPERA was developed by ObjectiVision, as well as on its behalf by employees of the University of Sydney, under agreements assigning copyright in the OPERA source code to ObjectiVision.

In January 2012, Visionsearch, a competitor of ObjectiVision, applied to the FDA to have its 'Visionsearch1 system' registered. The Visionsearch device was driven by software known as TERRA. Two of the University of Sydney employees who had helped to develop OPERA also helped to develop TERRA.

ObjectiVision was concerned by the similarities between the functionality and features of the OPERA and TERRA software, and suspected that its copyright in the OPERA software might have been infringed. The Copyright Act provides that copyright in source code may be infringed when someone who is not the owner of the copyright, without permission, takes all or a substantial part of the code that makes up that computer program and 'reproduces' it in another computer program.

While ObjectiVision believed that Visionsearch had copied its source code to create the TERRA software, it could not be certain of this without having access to the Visionsearch source code. This was not in the public domain. If ObjectiVision had attempted to access Visionsearch's source code by decompiling its software and object code, that act itself would likely have amounted to a breach of Visionsearch's copyright.

As Visionsearch would not give ObjectiVision access to the TERRA source code, ObjectiVision applied to the Federal Court for preliminary discovery.

Preliminary discovery – scope and purpose

Rule 7.23 of the Federal Court Rules 2011 provides a mechanism for a prospective applicant to apply to the Court for an order requiring the production of documents from a prospective respondent, in circumstances where the applicant does not have sufficient information to determine whether it should commence proceedings.

If certain threshold requirements are met, the Court has a discretionary power to compel a prospective respondent to produce relevant documents. That threshold will be met in circumstances where the prospective applicant:

• reasonably believes it may have the right to obtain relief in the Court from a prospective respondent whose identity is known
• after making reasonable enquiries, does not have sufficient information to decide whether to start a proceeding in the Court to obtain that relief, and
• reasonably believes that:
• • the prospective respondent has (or is likely to have), or has had (or is likely to have had) in its control, documents directly relevant to the question of whether the prospective applicant has a right to obtain the relief, and
  • inspection of the documents by the prospective applicant would assist in making the decision.

ObjectiVision's application

ObjectiVision's application sought an order for preliminary discovery on the basis that it might have a right to obtain relief against Visionsearch for copyright infringement because:

• there were alleged similarities between the functionality and features of the OPERA and TERRA software
• Visionsearch created the TERRA software in what was said to be an implausible software development timeline, which suggested Visionsearch may have copied software code from a third party, and
• two of the university employees were involved in the development of both the OPERA and TERRA software.

ObjectiVision identified categories of documents which it believed would be in Visionsearch's possession, custody or control and which it asserted would assist it in determining whether it had a cause of action against Visionsearch.

The decision

The Federal Court found that ObjectiVision had met the threshold requirements of an application for preliminary discovery, and should be granted access to certain limited categories of documents, including the TERRA source code.

In reaching its decision, the Court gave weight to ObjectiVision's reasonable attempts to request the source code from Visionsearch, and also placed weight on the inability to obtain the source code for the TERRA software by other means (given the source code was not in the public domain).

Key takeaways

Preliminary discovery can provide software owners with a useful mechanism to help determine whether or not their copyright is being infringed by competitor products. The strength of a copyright claim is often assessed by comparing the copyright works in question. As source code is not usually in the public domain, this comparison exercise can be difficult, or even impossible, to undertake without the co-operation (Court-ordered or voluntary) of the alleged infringer.

However, prior to seeking preliminary discovery, it is usually necessary to formally seek the cooperation of the alleged infringer to negotiate an access regime with appropriate confidentiality obligations. If cooperation is forthcoming, this may allow a copyright owner to determine its rights more quickly and efficiently. If it is not, this may assist a Court in determining whether or not reasonable enquiry has been made and whether preliminary discovery is appropriate.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.