PDF DOWNLOAD

---

In 10 June 2010, Justice Jessup of the Federal Court dismissed a claim by Acohs Pty Ltd against Ucorp Pty Ltd (trading as Chemwatch) for infringement of copyright.  Holding Redlich acted for Ucorp / Chemwatch.  The case concerned Material Safety Data Sheets or MSDS which are required by law to be made available upon the supply of hazardous substances for use in workplaces. Both Acohs and Chemwatch prepared MSDS for manufacturers, importers and suppliers of hazardous chemicals and also were engaged by employers to provide MSDS for use in the workplace.  

The dispute arose when an Acohs’ client Blackwoods moved to Chemwatch and as part of the process Chemwatch downloaded each Infosafe MSDS (prepared by Acohs), from the Blackwoods website and placed them on its system, so that they could be accessed by Blackwoods, and other Chemwatch clients. Acohs sued both Chemwatch and Blackwoods. 

Acohs operated a relational database which stored data for each MSDS, the MSDS being assembled by its system, known as the Infosafe System. The Infosafe System had been developed by Acohs employees. The data for each MSDS was keyed in by an operator, either an “author” or a “transcriber”, via a series of prompt screens. Once all the data was keyed in, the operator would review the completed MSDS before sending the data into the Infosafe System. Acohs’ system was upgraded constantly so it is possible that between the time the data was keyed in and the MSDS was first viewed by a user, changes to the presentation and appearance of the MSDS could occur. Acohs provided MSDS to its customers either in HTML format or in PDF, the PDFs being converted via Crystal Reports, third party software licensed by Acohs. 

Chemwatch provided access to MSDS, whether written by it or not, via an electronic MSDS library called Collection. The Blackwoods MSDS placed in Collection were in HTML. 

Acohs claimed that, by including the Blackwoods MSDS in Collection, Chemwatch infringed Acohs’ copyright in the underlying HTML source code of the MSDS and in their presentation, layout and get up as well as its copyright in the Blackwoods compilation of MSDS.  Until very late in the proceeding, Acohs did not claim copyright in the MSDS themselves. 

Chemwatch disputed the copyright claims and contended that Chemwatch’s actions were in any event authorised by an implied licence which arose by reason of the nature of the agreement between Acohs and the clients for whom it wrote MSDS, which permitted third parties like Chemwatch to include Infosafe MSDS in libraries like Collection for the benefit of customers. At an early stage of the proceeding, Acohs settled with Blackwoods. 

Acohs contended that the HTML source code was a work of joint authorship between the programmers and developers of the Infosafe System on the one hand and those Acohs’ employees who prepared or “wrote” the MSDS by keying in data on the other.  Chemwatch did not dispute that there was copyright in each MSDS prepared by Acohs although it argued that transcriptions were mere copies (and the judge accepted this).

Justice Jessup found that the only works in which Acohs held copyright were Infosafe MSDS composed by its employees, and held that Acohs did not hold copyright in MSDS which it transcribed. He found that the underlying HTML source code was not an original literary work and therefore was not the subject of copyright protection.  

Acohs failed on joint authorship of the HTML source code because“the respective contributions of the programmers and the authors/transcribers to the source code for a particular MSDS were separate from each other along the axes of communication, time, expertise and content”. 

The Judge further found that the actions of Chemwatch were in any event authorised by an implied licence which existed for the purpose of enabling dissemination of MSDS to employers, employees and other persons using products to which the MSDS relate.  The Judge noted the importance of enabling the speedy provision of important, mandated safety information to those who need it and the "regulatory matrix" that requires that MSDS be made available to a variety to persons.

Justice Jessup also found that Acohs was not able to limit the implied licence via its software agreement.  Finally, in the context of the implied license, His Honour found that the reproduction“of the entire suite of MSDSs of interest to Blackwoods would seem to fall squarely within implied license”.

His Honour also found in Chemwatch’s favour in regards to the Blackwoods compilation.  Acohs alleged that the compilation was the totality of the data provided by it to Blackwoods.  His Honour expressed difficulty “with the concept that a database, as such, might be regarded as a literary work. The problem is not so much whether the database represents a compilation … but whether a body of data is capable of being regarded as a work in any sense unless and until it has taken a material form”.

Acohs also argued that the Blackwoods collection of MSDS was a compilation. However the Judge noted that it “never had a discrete existence as a single work in its own right”. Further the MSDS themselves were specified by Blackwoods. His Honour concluded that“if the Blackwoods data, or the MSDS capable of being generated thereby, were in the nature of a compilation, I would hold that the process of selection was not the original doing of any member of Acohs’ staff”. 

Acohs has appealed the judgment. 

For further information, please contact:

Melbourne

Dan Pearce
Partner
T: +61 (0)3 9321 9841
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it

Sydney

Donna Bartlett
Partner
T: +61 (0)2 8083 0420
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it

Brisbane

Paul Venus
Partner
T: +61 (0)7 3135 0613
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it

Disclaimer

The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this publication is accurate at the date it is received or that it will continue to be accurate in the future. We are not responsible for the information of any source to which a link is provided or reference is made and exclude all liability in connection with use of these sources.