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Apple Computer, Inc. v. Mackintosh Computers Ltd.; Apple Computer, Inc. v. 115778 Canada Inc., [1990] 2 S.C.R. 209

 

Mackintosh Computers Ltd., Compagnie

d'Électronique Repco Ltée/Repco

Electronics Co. Ltd., Maison des

Semiconducteurs Ltée/House of

Semiconductors Ltd., Chico Levy and Nat Levy                                                            Appellants

 

v.

 

Apple Computer, Inc.     Respondent

 

and between

 

115778 Canada Inc., carrying on business

under the firm name and style of Microcom,

James Begg and 131375 Canada Inc.                                                                             Appellants

 

v.

 

Apple Computer, Inc.     Respondent

 

indexed as:  apple computer, inc. v. mackintosh computers ltd.; apple computer, inc. v. 115778 canada inc.

 

File Nos.:  20643, 20644.

 

1990:  February 26; 1990:  June 21.

 

Present:  Dickson C.J. and Lamer, Wilson, La Forest, L'Heureux‑Dubé, Sopinka, Gonthier, Cory and McLachlin JJ.

 

on appeal from the federal court of appeal

 

    Copyright -- Infringement -- Computer programs -- Silicon chips ‑‑ Computer manufacturer holding registered copyright in operating system programs etched into silicon chips -- Whether computer programs embodied in silicon chips continue to be protected by copyright -- Copyright Act, R.S.C. 1970, c. C-30, s. 3(1).

 

    The respondent holds a registered copyright in two operating system programs for the Apple II+ computer, which it manufactures.  These programs were originally written in assembly language, and then converted into hexadecimal code.  Finally, the programs were etched into a silicon chip.  By the use of a process known as "burning" the appellants copied the programs embodied in the respondent's silicon chips.  The respondent successfully sued the appellants for copyright infringement.  The trial judge reviewed in detail the complex and conflicting expert evidence and concluded that the programs embedded in the silicon chip should be regarded as software rather than hardware.  She found that the circuitry in the chip was both a translation and an exact reproduction of the assembly language program, and was therefore protected by copyright under s. 3(1)  of the Copyright Act .  The Federal Court of Appeal dismissed the appellants' appeal.  This appeal is to determine whether a computer program, originating in copyrightable written form, continues to be protected by copyright when it is replicated in the circuitry of a silicon chip.

 

    Held:  The appeal should be dismissed.

 

    The programs embedded in the silicon chip are a reproduction of the programs in assembly language and as such are protected by copyright under s. 3(1)  of the Copyright Act .  These programs constitute a form of expression that is conceptually and functionally unique and cannot be regarded as a merger of idea and expression.  The Australian decision in Computer Edge Pty. Ltd. v. Apple Computer, Inc., which characterizes the program embedded in the silicon chip in a manner which accords with the electrical processes that underlie its operation, should not be applied in Canada.  Rather, the appropriate approach is to view the silicon chip program as embodying a set of instructions in machine code which are designed to move information and perform other specified tasks.  The silicon chip should be viewed as a static object encoded with written instructions rather than as constituting a dynamic interchange of electrical impulses.  It follows that the program embodied in the silicon chip is properly subject to protection by copyright and the unauthorized copying of that program constitutes a violation of copyright.

 

Cases Cited

 

    Not followed:  Computer Edge Pty. Ltd. v. Apple Computer, Inc. (1986), 65 A.L.R. 33.

 

Statutes and Regulations Cited

 

Copyright Act, R.S.C. 1970, c. C‑30, s. 3(1) .

 

    APPEAL from a judgment of the Federal Court of Appeal, [1988] 1 F.C. 673, 44 D.L.R. (4th) 74, 81 N.R. 3, 18 C.P.R. (3d) 129, 16 C.I.P.R. 15, affirming a judgment of the Trial Division, [1987] 1 F.C. 173, 28 D.L.R. (4th) 178, 3 F.T.R. 118, 10 C.P.R. (3d) 1, 8 C.I.P.R. 153, allowing the respondent's action for copyright infringement.  Appeal dismissed.

 

    Robert H. C. MacFarlane, for the appellants.

 

    Alfred Schorr, Ivor Hughes and Joseph Etigson, for the respondent.

 

//Cory J.//

 

    The judgment of the Court was delivered by

 

    CORY J. -- The issue raised in this appeal is whether a computer program, originating in copyrightable written form, continues to be protected by copyright when it is replicated in the circuitry of a silicon chip.

 

Factual Background

 

    For the purposes of these reasons, a very brief summary of the facts will suffice.

 

    The respondent, Apple Computer, Inc., is a manufacturer of computers and related products, including the Apple II+ computer.  The appellants are manufacturers and vendors of Apple II+ "clones", that is to say, machines which can run the same programs as Apple II+ computers.

 

    The respondent has held a registered copyright in two computer programs known as Autostart ROM and Applesoft since October 8, 1982.  These programs are operating system programs for the Apple II+ computer.  Without these programs or their equivalents, it is impossible to operate "applications" programs such as word processing, database or spreadsheets that are designed to run on the Apple II+ computer.

 

    The Autostart ROM and Applesoft programs were originally written in a code of letters, symbols and figures known as assembly language.  They were then converted into a form known as hexadecimal code, a shorthand version of the binary code of "O"s and "1"s representing the series of "on" and "off" instructions by which a computer is operated.  The hexadecimal code is a substantial reproduction of the programs as written in the assembly language.  Finally, these programs were etched into the glass of a silicon chip, creating a machine-readable pattern of "on" and "off" transistors which exactly duplicates the written binary code.

 

    The individualized nature of a computer program was emphasized at trial by experts for both the appellants and the respondent.  The trial judge observed that Professor Forbes J. Burkowski, who testified on behalf of the appellants, compared the possibility of two programmers creating identical programs without copying to the likelihood of a monkey sitting at a typewriter producing a Shakespearean sonnet.  She noted that Professor James W. Graham, testifying on behalf of the respondent, stated that it would take four months for him, with the help of two students, to write programs to serve the same purpose as those in issue in this case.

 

    By the use of a process known as "burning" the appellants copied the Autostart ROM and Applesoft programs embodied in the respondent's silicon chips.  Subsequently, the respondent sued the appellants for copyright infringement, seeking an injunction, an accounting of profits and delivery up of the infringing materials containing copies or virtual copies of these programs.

 

    The appellants admitted that the written assembly language versions of the programs are copyrightable and that the respondent owns the copyright in these programs.  However, they argued that since they had copied only the silicon chip, and not the assembly program, they had not infringed the respondent's copyright.

 

The Decision at Trial

 

    At all levels the arguments of the parties turned on the interpretation of s. 3(1) of the Copyright Act, R.S.C. 1970, c. C-30, the relevant sections of which provide:

 

    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 ... and includes the sole right

 

(a)                        to produce, reproduce, perform or publish any translation 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;

 

    The reasons of Reed J. ([1987] 1 F.C. 173) are exemplary.  She very carefully considered and reviewed in detail the complex and conflicting expert evidence.  She accepted the testimony given on behalf of the respondent and concluded that the programs embedded in the silicon chip should be regarded as software rather than hardware.  She found that the circuitry in the silicon chip was both a translation and an exact reproduction of the assembly language program.  As a result of this finding, she held that the circuitry of the silicon chip was protected by copyright under s. 3(1)  of the Copyright Act .  She also noted that the computer program in chip form might be protected under s. 3(1) (d), which protects the copyright holder's right to make any contrivance by means of which the work may be mechanically performed or delivered.  In addition, she rejected the appellants' contentions that the program embodied in the silicon chip represented a merger of idea and expression that could not be copyrighted or that it was a subject that was more appropriately regulated under patent law.  In the result, Reed J. granted the injunction, ordered an accounting of profits and directed the appellants to deliver up all devices containing the program or copies of it.

 

The Federal Court of Appeal

 

    The appellants' appeal to the Federal Court of Appeal was unanimously dismissed in three concurring judgments:  [1988] 1 F.C. 673.  Mahoney J. held that the programs embodied in the silicon chips were reproductions rather than translations.  Hugessen J. agreed that the silicon chips could not be translations, which he defined in the traditional sense as "the turning of something from one human language into another" (p. 691).  However, he held that the Copyright Act  gave the respondent the sole right to produce the means of reproducing a work and that the appellants had violated this right in copying the silicon chips.  MacGuigan J. held that the silicon chips were either translations or reproductions and in either form were protected under s. 3(1) .

 

    Neither Mahoney nor MacGuigan JJ. found it necessary to resolve the issue as to whether the programs in the silicon chip form could also be regarded as contrivances pursuant to s. 3(1) (d) while Hugessen J. was of the opinion that the programs embedded in the chips could not be regarded as contrivances.

 

    In their argument before the Federal Court of Appeal, the appellants relied in part on the decision of the High Court of Australia in Computer Edge Pty. Ltd. v. Apple Computer, Inc. (1986), 65 A.L.R. 33, released one week after Reed J.'s decision.  In a virtually identical factual situation, the Australian High Court held that there had been no copyright infringement.  A majority of the Australian court portrayed the silicon chip as a dynamic "sequence of electrical impulses" that could not be the subject of copyright.  MacGuigan J., whose conclusions on this point were adopted by Mahoney J., declined to follow the Australian approach.  He noted that the Australian decision reflected the differences which exist between Australian and Canadian copyright legislation.  Further, he observed that it was contrary to Reed J.'s conclusion that the programs in chip form should be regarded as software rather than hardware, that is, copyrightable expression rather than electrical impulses.  As he stated at p. 708:

 

In my view it is not necessary for this Court to decide whether, seen in a dynamic or process approach, the ROM chips are the subject of copyright.  All that is necessary in the cases at bar is to note that such an approach is inconsistent with the findings of the Trial Judge, which were not successfully challenged.

 

Disposition

 

    I agree with the conclusion reached by the trial judge and the Court of Appeal that the programs embodied in the silicon chip are protected under the Copyright Act .  Indeed, there is little I can or would wish to add to Reed J.'s excellent reasons.

 

    Like Reed J. and for the same reasons that were expressed by her, I am of the opinion that the programs embedded in the silicon chip are a reproduction of the programs in assembly language and as such are protected by copyright under s. 3(1)  of the Copyright Act .  In addition, I agree with her that these programs constitute a form of expression that is conceptually and functionally unique and cannot be regarded as a merger of idea and expression.  Since the programs contained in the silicon chip are therefore protected under the Act, it is unnecessary for me to determine whether the silicon chips can be regarded as a translation under s. 3(1) (a) or a contrivance under s. 3(1) (d).

 

    Finally, like MacGuigan J., I do not believe that the Australian Computer Edge decision should be applied in Canada.  That decision characterizes the program embedded in the silicon chip in a manner which accords with the electrical processes that underlie its operation.  Rather, the appropriate approach is to view the silicon chip program as embodying a set of instructions in machine code which are designed to move information and perform other specified tasks.  I agree with MacGuigan J. that the silicon chip should be viewed as a static object encoded with written instructions rather than as constituting a dynamic interchange of electrical impulses.  It follows that the program embodied in the silicon chip is properly subject to protection by copyright and the unauthorized copying of that program constitutes a violation of copyright.

 

    Accordingly, I would dismiss the appeal with costs.

 

    Appeal dismissed with costs.

 

    Solicitors for the appellants:  Fitzsimmons, MacFarlane, Toronto.

 

    Solicitors for the respondent:  Hughes, Etigson, Concord, Ontario.

 

 

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