• Any

CATCHWORDS

HEARING

DECISION

2. However, in my view, that conclusion does not dispose of the respondents'application for a rehearing of the three questionsidentified as (a), (b) and(c) in the reasons for judgment prepared by Dawson J. The exercise of thejurisdiction to reopen a judgmentand to grant a rehearing is not confined tocircumstances in which the applicant can show that, by accident and withoutfault onthe applicant's part, he or she has not been heard. It is true thatthe jurisdiction is to be exercised with great caution ((2)Wentworth v.Woollahra Municipal Council[1982] HCA 41; (1982) 149 CLR 672, at p 684; State Rail Authorityof N.S.W. v. CodelfaConstruction Pty.Ltd.[1982] HCA 51; (1982) 150 CLR 29, at p 38.),having regard to the importance of the public interest in thefinality oflitigation. It is equallytrue, as this Court said in Wentworth v. WoollahraMunicipal Council ((3) (1982) 149 CLR,at p 684), that:

"(g)enerally speaking, it will not be exercised unless the

applicant can show that by accident without fault on his part he

has not been heard."

3. But these statements do not exclude the exercise of jurisdiction to reopena judgment which has apparently miscarried for otherreasons, at least whenthe orders pronounced have not been perfected by the taking out of formalorders. So much was acknowledgedby Brennan, Dawson, Toohey and Gaudron JJ. inSmith v. N.S.W. Bar Association (No.2) when their Honours said ((4)[1992] HCA 36; (1992) 66ALJR605, at p 608;[1992] HCA 36; 108 ALR 55, at p 60.):

"if reasons for judgment have been given, the power is only

exercised if there is some matter calling for review".

4. These examples indicate that the public interest in the finality oflitigation will not preclude the exceptional step of reviewingor rehearing anissue when a court has good reason to consider that, in its earlier judgment,it has proceeded on a misapprehensionas to the facts or the law. As thisCourt is a final court of appeal, there is no reason for it to confine theexercise of its jurisdictionin a way that would inhibit its capacity torectify what it perceives to be an apparent error arising from somemiscarriage in itsjudgment. However, it must be emphasized that thejurisdiction is not to be exercised for the purpose of re-agitating argumentsalreadyconsidered by the Court; nor is it to be exercised simply because theparty seeking a rehearing has failed to present the argumentin all itsaspects or as well as it might have been put. What must emerge, in order toenliven the exercise of the jurisdiction,is that the Court has apparentlyproceeded according to some misapprehension of the facts or the relevant lawand that this misapprehensioncannot be attributed solely to the neglect ordefault of the party seeking the rehearing. The purpose of the jurisdictionis notto provide a backdoor method by which unsuccessful litigants can seekto re-argue their cases.

5. The present case is a pioneering step into a technically and conceptuallycomplex world. That is partly because the 1984 amendmentsto theCopyrightAct 1968 (Cth) extended copyright protection to computer programs on thefooting that they were literary works and is one reason why therehas beendifficulty in ascertaining precisely how the appellants presented their case.Autodesk was the first decision of this Courtdealing with the amendments madeto theCopyright Act in 1984. It was only the second decision of this Courtdealing with the issueof copyright protection for computer programs, thedecision in Computer Edge Pty. Ltd. v. Apple Computer Inc. ((10)[1986] HCA 19; (1986) 161CLR171) being made on the basis of the law as it stood before the 1984amendment. And the precise interpretation ofthe legislationand itsapplication in this case are likely to have a significant effect on the futuredevelopment of the computerindustry in Australia.

6. The decision in Autodesk confirmed two fundamental principles. First, thedefinition of a "computer program" by reference to"an expression ... of a setof instructions" should be understood as conferring protection upon the set ofinstructions itself -which must be identified with some precision - but asdoing so in a way which is adapted to the nature of copyright. Thus, theprotectionof computer programs is to conform to the dominant principle ofcopyright law that protection is given not for ideas, but only forthe form ofexpression ((11) Described as "trite law" by Lord Hailsham of St Marylebone inLB. (Plastics) Limited v. Swish ProductsLimited (1979) RPC 551, at p 629.).However, as the judgment of Mason C.J., Brennan and Deane JJ. makes clear,this distinction mustnot be applied too strictly ((12) Autodesk (1992) 173CLR, at pp 335-336). A distinction needs to be drawn between the relevantsetof instructions and the form of storage or representation of the instructions,so that a person who reproduces a set of instructionsin a different form -such as by turning source code into object code - does not escapeinfringement. The object of protection isthe computer program, not just theparticular form of storage or representation chosen by the author.

7. The second fundamental proposition confirmed in Autodesk derives from thefirst. Functionality is not the proper object of copyrightprotection. AsDawson J. stated in Autodesk, the purpose or function of a utilitarian work isits idea, while the method of arrivingat that purpose or function is theexpression of the idea ((13) ibid., at p 345).

8. A central conclusion in Autodesk was expressed by Dawson J. as follows((14) ibid., at p 346):

"Whilst the 127-bit look-up table does not of itself constitute a

computer program within the meaning of the definition - it does

not by itself amount to a set of instructions - it is a

substantial part of Widget C and its reproduction in the Auto Key

lock is a reproduction of a substantial part of that program."

9. The program known as Widget C is one of several programs which togethercomprise the AutoCAD software. Widget C is present becauseit forms anintegral part of the locking and unlocking device which is involved in theAutoCAD lock. Widget C is a large programof 20,000-30,000 bytes. Itcomprises instructions to the computer requiring it to send out a challenge tothe AutoCAD lock. Thechallenge which is sent out is a sequence of electricalimpulses which, in binary notation, can be represented as a series of onesandzeros. The lock responds to this challenge also in the form of an electricalsignal which may be represented as either onesor zeros. The string of onesand zeros sent back by the lock is different from the string of ones and zerossent by the computerto the lock. Widget C receives the response and uses the127-bit look-up table to check whether it is the expected response. The127-bit look-up table consists of 16 bytes in the entire Widget C program of20,000-30,000 bytes. If the response is correct, theprogram continues torun; if the response is incorrect, the program ceases operation.

10. It is clear that the phrase "substantial part" refers to the quality ofwhat is taken rather than the quantity ((15) Hawkesand Son (London) Ltd. v.Paramount Film Service Ltd. (1934) Ch 593; Ladbroke (Football) Ltd. v. WilliamHill (Football) Ltd. (1964)1 WLR 273; Greenfield v. Rover-Scott Bonnar (1990)17 IPR 417, at p 436; Dixon Investments v. Hall[1990] FCA 117; (1990) 18 IPR 481.). InLadbroke(Football) Ltd. v. William Hill (Football) Ltd., Lord Pearce stated((16) (1964) 1 WLR, at p 293):

"Whether a part is substantial must be decided by its quality

rather than its quantity. The reproduction of a part which by

itself has no originality will not normally be a substantial part

of the copyright and therefore will not be protected. For that

which would not attract copyright except by reason of its

collocation will, when robbed of that collocation, not be a

substantial part of the copyright and therefore the courts will

not hold its reproduction to be an infringement. It is this, I

think, which is meant by one or two judicial observations that

'there is no copyright' in some unoriginal part of a whole that is

copyright."

11. In this case, it is argued by the appellants that such an inquiry compelsan affirmative answer as the look-up table is essentialto the operation ofthe AutoCAD locking mechanism. Such an argument, however, misconceives thetrue nature of the inquiry and seeksto re-introduce by another avenue anemphasis upon the copyright work's function. True it is that the look-uptable is essentialto the functioning of the AutoCAD lock. However, in thecontext of copyright law, where emphasis is to be placed upon the"originality"of the work's expression, the essential or material features ofa work should be ascertained by considering the originality of thepartallegedly taken. This is particularly important in the case of functionalworks, such as a computer program, or any works whichdo not attractprotection as ends in themselves (e.g., novels, films, dramatic works) but asmeans to an end (e.g., compilations,tables, logos and devices) ((18) See, forexample, Mirror Newspapers Ltd. v. Queensland Newspapers Pty. Ltd. (1982) Qd R305; KlissersBakeries v. Harvest Bakeries (1985) 5 IPR 533, at p 548).

12. On this approach, the arguments of the respondents as to the nature ofthe look-up table, not presented in any detail at theearlier hearing in thisCourt, have considerable importance. The respondents argue that the look-uptable does not constitute instructionsand, as such, "expression", which iscapable of becoming the subject of copyright, but is simply data used toprovide the basis ofa comparison between the response from the lock and theexpected response which determines whether the AutoCAD program continuestooperate. The respondents allege that the nature of the look-up table as datawas accepted by experts for both sides at the trial. It is by no meanscertain that that is true; however, it is also the case that the attention ofexpert witnesses was not drawn tothis precise question. In any event, thequestion is not one that is necessarily to be resolved by recourse to expertopinion, asthe categorization of the look-up table as either data orinstructions is relevant only in the context of the definition in theCopyrightAct which provides that the protected computer program is "anexpression ... of a set of instructions". It is a legal issue to beresolvedby the application of the principles of copyright law.

13. On the basis of arguments presented by the respondents on thisapplication and which were not presented to the Court at thehearing of theappeal except in summary written form, comprising little more than one page,in response to the Registrar's letterwhich is set out in the reasons ofDawson J., I am inclined to the view that it is arguable that the 127-bitlook-up table is simplydata or information which is accessed and used by theinstructions that constitute the program Widget C. The instructions arefunctionallyuseless without the data; the Widget C program would not fulfilits role in the absence of the look-up table. But this may not meanthat thelook-up table forms part of the instructions or is a "substantial part" of theprotected copyright work for the purposeof determining an allegedinfringement. The look-up table is not responsible for the challenge which issent to the lock; the programmakes reference to the table to ascertainwhether the response received is as expected. In the circumstances, it isperhaps possiblethat, in qualitative and not functional terms, the look-uptable is not a material or key part of the program; the act of reproducingitmay conceivably be akin to the reproduction of the material simpliciter in atable or compilation or the reproduction of somethingthat is itself largelyunoriginal ((19) See, for example, Ladbroke (Football) Ltd. v. William Hill(Football) Ltd; Warwick Film ProductionsLtd. v. Eisinger (1969) 1 Ch 508.).

14. There is the question whether this approach is affected by the inclusionin the definition of "computer program" of the words"(whether with or withoutrelated information)". Counsel for the respondents argued that those wordsraised squarely the questionwhether "related information", not itself beinginstructions, is brought within the scope of the protection or is implicitlyexcludedfrom the scope of the protection. That way of wording the questionmay conceal a further issue: even if one assumes that the relatedinformationis to be considered as part of the computer program, a court must stilldecide, by application of general principles,whether reproduction of thatrelated information constitutes reproduction of a "substantial part" of theprogram.

15. In the result, I incline to the view that, in the light of the moreelaborate arguments presented in this application, it isarguable that therespondents have not infringed the appellant's copyright in the Widget Cprogram. This conclusion would not, initself, justify a review or rehearingof the critical issues which were the subject of the decision pronounced on 12February 1992if all that could be said was that the respondents have nowadvanced satisfactory arguments in place of arguments which were formerlyinadequate. As I have said, the jurisdiction to reopen is not to be exercisedsimply for the purpose of giving a party the opportunityto present a case tobetter advantage. However, this is an important and unusual case. As a resultof a variety of factors, includingthe way in which the appellants' case wasprimarily argued, the effect on the parties of the letter sent by theRegistrar of thisCourt and, not least, the complexity of the relevanttechnology at issue, relevant arguments were not presented or not presentedadequately at the first hearing before this Court. The conclusion that therespondents were not denied an opportunity to presentsuch arguments at thattime does not conclude the issue. Although it can be said that therespondents should have sought to presentoral argument on the matter raisedin the Registrar's letter, the tenor of that letter did not invite such aresponse. The letter,which was drafted and sent at the direction of themembers of the Court, was equivocal in its invitation to the parties toaddresssubmissions to the Court, as Dawson J. has noted, and also, by statingthat a member of the Court had raised the particular issue,gave no indicationof the significance which that issue ultimately assumed for all members of theCourt. In addition, the letteralso failed to prescribe any procedure in theevent that the parties could not reach agreement as to whether the relevantsubmissionhad been advanced. With the advantage of hindsight and in the lightof the written submissions lodged in response to that letter,the Court shouldhave relisted the appeal for further argument before proceeding to judgment.

16. Accordingly, I consider that the Court should reopen the judgment for thepurpose of reviewing or rehearing the issues whichhave been debated, namely,those identified as (a), (b) and (c) in the reasons of Dawson J. No injusticewould be occasioned to theappellants by such a course.

BRENNAN J. This Court has undoubted jurisdiction to recall a judgment whichit has pronounced, at least prior to the formal entryof the judgment, if thejudgment has been pronounced against a person who, without fault on the partof that person, has not hadan opportunity to be heard as to why that judgmentshould not be pronounced ((20) State Rail Authority of N.S.W. v. CodelfaConstructionPty. Ltd. (1982) 150 CLR29; Wentworth v. Woollahra MunicipalCouncil (1982) 149 CLR672, at p 684). The jurisdiction is exercisedsparinglyfor it is important to bring litigation to finality in this Court ((21) Theapproach of Courts from which an appeal liesis not so strict, for it may bepreferable to recall an unperfected but erroneous judgment rather than allowit to stand until itis quashed on appeal: see, for example, In re Harrison'sShare under a Settlement (1955) Ch 260, at pp 282-284). Nevertheless, naturaljustice would be denied if, in a case in which the stated conditions aresatisfied, the judgment were not vacated.

2. It is desirable to add in the context of the present case a furtherobservation about the opportunity to be heard. A court shouldnot pronounce ajudgment against a person on a ground which that person has not had anopportunity to argue ((22) Pantorno v. TheQueen (1989) 166 CLR466). However,a sufficient opportunity to argue a ground is given when the ground islogically involved ina proposition that has been raised in the course ofargument before the court or is to be considered by the court as an unconcededstep in determining the validity of a conclusion for which one of the partiescontends ((23) University of Wollongong v. Metwally(No.2)[1985] HCA 28; (1985) 59 ALJR 481,at p 483; 60 ALR68, at p 71). Of course, the precise ground which a court orjudge assignsfor a decisionwillfrequently be formulated in terms differentfrom the terms of a submission by counsel but, provided the groundhas ariseninoneof the ways mentioned, the court or judge may properly proceed tojudgment without requiring the case to be relistedfor furtherargument andwithout inviting supplementary submissions to be made.

3. In the present case, the proposition on which the appellants succeeded isthat the respondents infringed the appellant's copyrightin a computer programby reproducing in the Auto Key lock a part of the Widget C program, therelevant part of the Widget C programbeing the look-up table. Thatproposition was raised in argument in the Courts below. After argument onappeal to this Court, aletter sent by the Registrar to the parties expresslyraised the question whether "the series embedded in the EPROM in the Auto Keylock constituted a reproduction in a material form of a substantial part ofWIDGET.C". The Court received supplementary submissionsfrom the partiesdirected to that question. The Registrar's letter also drew attention to anobservation by one of the Judges inthe Full Court of the Federal Court thatit was common ground that the respondents had not reproduced any part of theWidget C program. The Registrar's letter thereby put the parties on noticethat, if that observation were correct, the question might not be openbeforethis Court. By the clearest implication, if that observation were notcorrect, the question would be open before this Court. It is not to the pointthat the Registrar's invitation to make supplementary submissions wasexpressed contingently upon agreementby the parties that that question hadbeen argued. The parties in fact made supplementary submissions in responseto the letter,dealing with the issue whether the question identified by theRegistrar's letter had been raised in the Courts below and addressingthesubstantive question. I need not repeat the references in the judgments ofDawson J. and Gaudron J. to the proceedings beforethe Courts below whichdemonstrate that the respondents not only had had, but had taken, anopportunity in each of those Courts toargue the question on which this Courtultimately decided the appeal against them.

4. It is one thing to reopen an appeal after judgment if the Court hasreached a conclusion by adopting a proposition of fact orlaw which theunsuccessful party has not had an opportunity to argue. In that event, naturaljustice is denied and it can be saidthat the Court's jurisdiction to hear anddetermine the matter is not exhausted. But that is not the present case.Here the groundon which the appeal was determined had been argued in theCourts below and had been the subject of submissions in this Court. Theappeal was determined after it was fully heard. That being so, I find nojurisdiction to set aside the judgment already pronouncedmerely because it issubmitted by the unsuccessful party that, on further argument, the Court wouldbe satisfied that it had reachedthe wrong conclusion in law. In Universityof Wollongong v. Metwally (No.2) ((24) (1985) 59 ALJR, at p 483; 60 ALR, at p71. Similarly,it has been held that a party may be shut out from raising aclaim or defence if that party, through negligence, inadvertence orevenaccident has failed to raise that claim or defence in prior proceedings whenthe failure was unreasonable: Port of MelbourneAuthority v. Anshun Pty. Ltd.(1981) 147 CLR589, at pp 598, 602.) this Court said:

"Except in the most exceptional circumstances,it would be contrary

to all principle to allow a party, after a case had been decided

against him, to raise a new argument which, whether deliberately

or by inadvertence, he failed to put during the hearing when he

had an opportunity to do so."

5. It is therefore unnecessary to consider the respondents' submissions whichoutline the attack which would be made on the correctnessof the judgment ifthe appeal were reopened. However, I am comforted in rejecting theapplication by the view that such an attackwould not be likely to succeed.The submissions seek to canvass again the questions whether the sequence ofdigits stored in theEPROM of the Auto Key lock copied, albeit indirectly, asubstantial part of Widget C and whether that part was an element in a "setofinstructions" as that term is used in the definition of "computer program" ins.10 of theCopyright Act 1968 (Cth). The definition reads:

"'computer program' means an expression, in any language, code or

notation, of a set of instructions (whether with or without

related information) intended, either directly or after either or

both of the following:

(a) conversion to another language, code or notation;

(b) reproduction in a different material form;

to cause a device having digital information processing

capabilities to perform a particular function".

6. Although the notion that copyright protects an expression of an idearather than the idea itself is preserved in the definitionof "computerprogram", the definition itself invites consideration of the effect on thecomputer of the electronic signals the expressionof which constitutes thecomputer program. Using metaphor, the definition requires that the electronicsignals should constitutea "set of instructions ... intended ... to cause adevice having digital information processing capabilities to perform aparticularfunction". Widget C consists of a sequence of electronic signalswhich are not amenable to variation by keyboard operation and whichcause acomputer (i) to run the AutoCAD application when the responses received from aperipheral device (an AutoCAD lock or an AutoKey lock) correspond with thelook-up table and (ii) not to run the AutoCAD application when the responsesfrom the peripheral devicedo not correspond with the look-up table. If thelook-up table were not part of Widget C, the electronic signals generated byWidgetC would not cause the computer to perform in that way. The entiresequence of electronic signals which causes the computer to runthe AutoCADapplication comprises the electronic signals generated by the computer whenWidget C is running, including the electronicsignals which are transmitted tothe peripheral device, and the electronic signals which are generated by andtransmitted from theperipheral device. To succeed in challenging thecorrectness of the judgment, the respondent would have to demonstrate that theelectronic signals should be divided into two categories, some of them being a"set of instructions" and others being of a differentcharacter. It isimmaterial that some electronic engineers may classify some of thoseelectronic signals as data. Once a discretefunction of the computer isidentified - here, the running of the AutoCAD application - it is necessary toidentify the electronicsignals which, as an entirety, cause the computer toperform that function. As at present advised, I should think that thosesignals,as an entirety, answer the description of a "set of instructions" andan expression of those electronic signals answers the descriptionof a"computer program". The Widget C program is designed to cause the computer toperform the function of running the AutoCAD applicationwhen the sequence ofelectronic signals, as expressed in the look-up table, is transmitted from theperipheral device. The functionof running the AutoCAD application isperformed in obedience to a "set of instructions". I have not appreciated theforce of thesubmission that the sequence of electronic signals that areexpressed in the look-up table is not part of the set of instructionswhichcause the computer to run the AutoCAD application.

7. A further submission is that the look-up table is not a substantial partof the relevant computer program. The bytes containedin the look-up tableare but a minute fraction of the bytes in the whole of the Widget C program.Nevertheless, the series of digitsin the look-up table is both original andcritical to the set of instructions designed to cause the computer to run theAutoCAD application. When the running of the AutoCAD application is thepurpose of the set of instructions expressed in that program, it would bedifficult,if not impossible, to contend that the look-up table is not asubstantial part of that program. Even if the jurisdiction to reopenwerewider than I hold it to be, I would dismiss the application.

8. However, it is not the absence of a likelihood of success by therespondents that leads me to refuse their application. Thematerialconsideration is that the conditions which govern the reopening of a judgmenton appeal, as stated in State Rail Authorityof N.S.W. v. Codelfa ConstructionPty.Ltd. and Wentworth v. Woollahra Municipal Council, are not satisfied.

9. I would dismiss the application.

DEANE J. I agree with the Chief Justice that the appeal in this case shouldhave been listed for further argument before the Courtproceeded to deliverjudgment. However, my reasons for that conclusion differ from those of theChief Justice. It seems to me that,when the relevant facts (which are setout in other judgments) are assessed with the benefit of hindsight, thecorrect conclusionis that the unsuccessful respondents, who are the presentapplicants, were not given an adequate opportunity to present submissionsinrelation to a finding which was of critical importance to the Court's ultimatedecision. That finding was that the 127-bit sequencein the look-up table ofAutodesk's computer program known as "Widget C" was, of itself, a "substantialpart" of that "computer program"for the purposes of theCopyright Act 1968(Cth) ("the Act"). On the basis of that finding, the Court held that theencrypting or storing of a corresponding 127-bit sequencein the EPROM of therespondents' Auto Key lock of itself constituted an infringement of Autodesk'scopyright in Widget C ((26) AutodeskInc. v. Dyason (No.1)[1992] HCA 2; (1992) 173 CLR 330,at pp 336, 346).

2. What is important for present purposes is that no finding had been made inthe courts below that Widget C's look-up table constituteda "substantialpart" of the "computer program" ((27) See Autodesk Inc. v. Dyason[1989] FCA 295; (1989) 15IPR 1; Dyason v. Autodesk[1990] FCA 469; (1990) 96 ALR57). To the contrary, the judgmentsof Sheppard J. and Beaumont J. in the Full Court of the Federal Courtexpresslystated thatit was "common ground" that the respondents had "notreproduced" "any part" ((28) (1990) 96 ALR, per Sheppard J. at p78) or a"substantialpart" ((29) ibid., per Beaumont J. at p 105) of the computerprogram known as Widget C. Neither in the noticeof appeal to this Courtnorin the course of oral argument did the appellants ("Autodesk") challenge thecorrectness of those statementsor suggest thatthe Federal Court had, byreason of a misapprehension about what was common ground, wrongly failed todeal with aproposition thatthe reproduction, in a material form, of asequence corresponding to that in the look-up table of itself constitutedinfringementof Autodesk's copyright in Widget C. Nor did Autodesk advanceoral argument in this Court in support of any such proposition. TheclosestAutodesk came even to adverting to such a proposition in this Court was insome not unambiguous answers to questionsaskedby a member of the Court. Inthese circumstances, the respondents were, in my view, entitled to approachthe oral argumentof theappeal on the basis that Autodesk did not attack thedecision of the Full Federal Court on the ground that that court hadwronglyfailed to consider or to uphold a submission that the encrypting of the EPROMin the Auto Key lock of itself constitutedan actionableinfringement ofAutodesk's copyright in Widget C. It is apparent that that was, in the event,the approach adoptedby counsel forthe respondents since the respondents didnot direct oral argument to the question whether the sequence in the look-uptable constituteda "substantial part" of the "computer program". Nor wasthat question raised by any member of the Court in thecourse of therespondents'oral argument.

3. It is true that the Registrar's letter to the parties, which was writtenat the direction of the Court, raised the question whetherreproduction in amaterial form of Widget C's look-up table of itself constituted a reproductionof a "substantial part" of a "computerprogram". Unfortunately, that letterinvited further submissions only in the event that the parties were agreedthat Autodesk hadin fact argued in the Federal Court that the series embeddedin the EPROM in the Auto Key lock itself constituted a reproductionin amaterial form of a "substantial part" of Widget C. In the event, the partieswere not agreed that any such argument had beenadvanced. In thosecircumstances, the respondents were, in my view, entitled to adopt theapproach that it sufficed, for the purposesof the Court's inquiry, to makeplain that it was not agreed that any such argument had been advanced in theFederal Court and that,if this Court were to entertain such an argument,there would be genuine dispute about its correctness. That, it would seem, isthe approach which the respondents adopted. The unfortunate result is thatthere has, in my view, been an inadvertent denial ofprocedural fairness bythe Court for the reason that, regardless of what was or was not common groundin the Federal Court, the respondentshave never been given a clear andadequate opportunity to place before this Court full submissions about thecorrectness of the propositionwhich constituted the basis of the Court'sultimate decision against them.

4. The argument on the present application to vacate the Court's judgment inAutodesk Inc. v. Dyason (No.1) ((30)[1992] HCA 2; (1992) 173 CLR330) was necessarily of apreliminary nature. It has not sufficed to persuade me that the conclusionexpressed inthe joint judgmentto which I was a party was mistaken. It has,however, persuaded me that I may have reached that conclusion withoutacomplete considerationof the argument against it. In the result, I considerthat the judgment should be vacated so that the casecan be approached anewinthe light of the argument which the respondents wish to present.

5. I agree with the orders proposed by the Chief Justice.

DAWSON J. In Autodesk Inc. v. Dyason ((31)[1992] HCA 2; (1992) 173 CLR 330), this Courtheld that the respondents (the applicantsin these proceedingswhom I shallcontinue to call therespondents) had infringed the appellants' copyright in acomputer programknown as "AutoCAD". The AutoCAD program enables a usertoproduce drawings which assist in the drafting of architectural and engineeringplans and designs. The circumstances in whichthe infringement occurred weredescribed as follows ((32) ibid., at p 337.):

"AutoCAD is sold by dealers. The purchasers receive a package

including a number of disks which contain software in the form of

the drafting program. It is easy to make copies of these disks

and it would appear that many users do so, if only for replacement

purposes should the original disks be damaged. ... Because the

disks are easily copied, there is a danger that persons who have

not purchased the disks from an AutoCAD dealer may pirate them by

making unauthorized copies. To avoid piracy of this kind, the

appellants developed a hardware device, called an 'AutoCAD lock',

without which the AutoCAD program cannot be run. The lock is

plugged into the computer, and peripheral devices, such as

printers or monitors, are in turn plugged into the lock. Without

the lock in place the computer will not run the AutoCAD program,

although other programs may be run with the lock in place. A

single lock is supplied with each purchase of the AutoCAD package

and cannot be purchased separately. The cost of an AutoCAD

package is approximately $5,200 which includes the price of the

AutoCAD lock. Thus, even though a purchaser of AutoCAD might make

copies of the disks containing the program, with only one lock he

can run only one set of disks at a time. That is the purpose of

the AutoCAD lock: to ensure that the purchase of a single AutoCAD

package does not result in multiple use of the program.

The third respondent, after making a close examination of the

operation of the AutoCAD lock, designed an alternative device,

called an Auto Key lock, which performs the same function as the

AutoCAD lock. ... (T)he Auto Key lock was placed upon the market

at a price of about $500."

2. The third respondent, using an oscilloscope, was able to read theresponses of the AutoCAD lock and, by the use of an EPROM (atype ofsemiconductor chip), was able to produce a device which would produce the sameoutput as the AutoCAD lock. That device becamethe Auto Key lock.

3. The majority in Autodesk (Mason C.J., Brennan and Deane JJ.) expressed theconclusion of the Court as follows ((33) ibid., atp 336):

"(I)t is common ground that Widget C (a program file in the AutoCAD

software) was, for relevant purposes, a 'computer program' in that

it was a set of instructions of the kind designated by the

definition (ins.10(1) of theCopyright Act 1968 (Cth) as amended

by theCopyright Amendment Act 1984 (Cth)). There is no dispute

about its originality. When the definition of 'computer program'

in s.10(1) of the Act is understood ..., the effect of the Act is

that, at relevant times, copyright existed in any expression of

Widget C in language, code or notation. The evidence disclosed

that there was 'encrypted' or stored in Widget C a 'look-up table'

which can be expressed in binary notation as an irregular

arrangement or series of 127 ones or zeros. Once the respective

starting points are identified, that expression of that look-up

table corresponds precisely with the expression in binary notation

of the 127-bit series embedded or stored in the EPROM in the Auto

Key lock ... The look-up table in Widget C constituted 'a

substantial part' of Widget C. As Dawson J. points out, (the

third respondent's) use of an oscilloscope to read the output of a

stimulated AutoCAD lock involved an indirect copying of the

look-up table. Indeed, the whole point of the exercise was to

reproduce whatever was necessary to match the requirements of that

look-up table. In these circumstances, the 127-bit series

embedded in the EPROM in the Auto Key lock constituted a

reproduction in a material form ... of a substantial part of any

actual or theoretical 'expression' in binary 'notation' of the

'set of instructions' constituting Widget C. It follows that the

127-bit series embedded in the EPROM in the Auto Key lock

infringed the appellants' copyright in the computer program,

Widget C."

4. By notice of motion the respondents seek to have the Court vacate thejudgment given and the orders made in Autodesk upon theground that, withoutfault on their part, they were afforded no opportunity of being heard on thefollowing questions:

(a) Whether the 127-bit series embedded in the EPROM in the Auto

Key lock constituted a reproduction of a substantial part of

Widget C, namely, the look-up table stored in Widget C.

(b) Whether the third respondent indirectly copied the look-up

table in Widget C by copying the sequence of numbers

generated by the AutoCAD lock.

(c) Whether copying data contained in a computer program can

constitute a reproduction of a substantial part of that

computer program.

5. Before judgment was delivered in Autodesk, an enquiry was made of theparties, through the Registrar of the Court, as follows:

"whether it has at any stage been expressly submitted on behalf of

the appellants that the series embedded in the EPROM in the Auto

Key lock constituted a reproduction in a material form of a

substantial part of WIDGET.C.

In that regard, attention is directed to the statement in the

judgment of Sheppard J. in (the Full Court of) the Federal Court

... that it is 'common ground that (the respondents) have not

reproduced any part of the WIDGET.C. program'.

If the parties are agreed that a submission to that effect was

advanced, the parties are invited to make any supplementary

submissions in writing which they might desire to make in

relation to it. If the parties are agreed that no such

submission was advanced, it is unnecessary for the matter to be

taken further."

6. In response to that enquiry, the respondents to this application (theappellants in Autodesk whom I shall continue to call theappellants) submittedthat the observation of Sheppard J. was "on its face clearly incorrect". Theyreferred the Court to relevantpassages in the transcript of proceedings inthe Full Court of the Federal Court and in the transcript of proceedings inthis Courtwhere, they said, the matter referred to in the Registrar's enquiryhad been raised. The respondents, who had been supplied witha copy of theappellants' submission, also made a supplementary submission, the relevantpart of which was as follows:

"3. The look up table in Widget.C is data rather than

instructions ...

...

5. The portion of code shown at Appeal Book 818 is a very

small portion of Widget.C. The entire Widget.C program

is 20,000-30,000 bytes in size (Appeal Book page 163).

The string produced by Autokey is 127 bits in size; by

ordinary conventions, that is 16 bytes. Autokey was

developed without the use of Widget.C (Appeal Book

pages 498-500. See also High Court submissions on

pages 104-106).

6. Accordingly, no part of Widget.C (alternatively, no

substantial part) has been reproduced in Autokey."

7. Whilst the Court has jurisdiction to entertain an application to vacateorders which it has made, at all events before thoseorders have beenperfected by the entry of judgment ((34) cf. University of Wollongong v.Metwally (No.2)[1985] HCA 28; (1985)59 ALJR 481, atpp 482-482;[1985] HCA 28; 60 ALR 68, at p 70.) (thatnot having occurred in this case), it is a jurisdiction tobe exercisedcautiously, bearingin mind thepublic interest in the finality of litigation((35) See State Rail Authority of N.S.W.v. Codelfa Construction Pty. Ltd.[1982] HCA 51; (1982) 150 CLR 29, at pp 38, 45-46). In Wentworth v. Woollahra MunicipalCouncil,the Court said ((36)[1982] HCA 41; (1982) 149 CLR 672, at p684):

"(T)he circumstances in which this Court will reopen a judgment

which it has pronounced are extremely rare. The public interest

in maintaining the finality of litigation necessarily means that

the power to reopen to enable a rehearing must be exercised with

great caution. Generally speaking, it will not be exercised

unless the applicant can show that by accident without fault on

his part he has not been heard."

8. The respondents encounter immediate difficulty in the light of theseobservations. Whilst the form of the invitation to addresssubmissions to theCourt upon the proposition that "the series embedded in the EPROM in the AutoKey lock constituted a reproductionin a material form of a substantial partof WIDGET.C" may have been equivocal, the respondents availed themselves ofthat invitationand did make supplementary submissions before the delivery ofjudgment in Autodesk. There can have been no doubt about the matterto whichsubmissions, if they were to be delivered, were to be addressed. They were tobe directed to the proposition that "theseries embedded in the EPROM in theAuto Key lock constituted a reproduction in a material form of a substantialpart of WIDGET.C". And that was the matter to which the respondents didaddress themselves, albeit briefly, in their supplementary submissions. Nolimit was placed upon the nature or extent of the submissions which might bemade.

9. Nor, having regard to the conduct of proceedings at first instance beforeNorthrop J. and subsequently on appeal before the FullCourt of the FederalCourt, can the respondents have been unaware of the issue raised by theRegistrar's enquiry. That issue wasalways open on the pleadings and it hasnot been contended otherwise, although the relief claimed by the appellantswas more confined. They sought an order that the respondents be restrainedfrom reproducing in any material form, the whole or a substantial part of,orany part of, the computer program contained within the AutoCAD lock or anyadaptation thereof. However, the form of relief wasincapable of restrictingthe scope of the pleadings, the appropriate relief upon the facts proved beingultimately a matter for theCourt ((38) See Wicks v. Bennett[1921] HCA 57; (1921) 30 CLR 80,at p 100).

10. The form of relief claimed does reflect the primary way in which theappellants put their argument at first instance, whichwas that the AutoCADlock itself contained a computer program which was reproduced in a materialform in the Auto Key lock. Butit is clear that, at first instance and onappeal to the Full Court of the Federal Court, counsel for the appellants alsoaddressedargument upon the alternative possibility that the look-up tablecontained in Widget C was reproduced in the Auto Key lock by indirectcopyingthrough the use of the AutoCAD lock. The submission was made that, althoughthe physical arrangement of the look-up tablesin Widget C and in the EPROM inthe Auto Key lock was different in that the look-up table in Widget C wasstored in a compressedand encrypted form, the difference was immaterial.Counsel for the appellants did not submit, indeed submitted to the contrary,thatthe 127-bit sequence was itself a computer program. He did, however,submit that the sequence was a very important part of the relevantcomputerprogram and that it was the part of the program which made the program ofvalue. He also contended that the computer programsaid to be contained inthe Auto Key lock (of which the 127-bit sequence was said to be a part) wasderived from Widget C, despitethe third respondent not having had access tothe source code for Widget C.

11. Nor, at first instance, were counsel for the respondents unaware of thesignificance of these submissions. Counsel for thefirst two respondentsconceded that there was a degree of "logical similarity" between Widget C andthe Auto Key lock, but contendedthat the 127-bit sequence was not a computerprogram or part of a computer program, being merely data taking the form ofoutput fromthe locks and input into the computer. He submitted that even ifthe 127-bit sequence as found in the look-up table in Widget Cand in theEPROM in the Auto Key lock could be regarded as a computer program, thedifference between the two look-up tables referredto by counsel for theappellants did mean, contrary to the appellants' submissions, that the look-uptable in the Auto Key lock wasnot a reproduction of the look-up table inWidget C. Counsel for the first two respondents also denied that the look-uptable inWidget C was a substantial part of the computer program constitutedby Widget C because it was quantitatively only a very small partof Widget Cand was qualitatively insignificant. Finally, counsel for the first andsecond respondents contended that the thirdrespondent had not used Widget C(including the look-up table contained in its memory) to produce the Auto Keylock because he hadmerely observed the input and output of the AutoCAD lock.

12. Before the Full Court of the Federal Court, counsel for the appellantsplaced express reliance upon a submission that the respondentshad copied theprecise state machine - or look-up table or 127-bit sequence - used in WidgetC and had incorporated it into the AutoKey lock. He submitted that thelook-up table was an important part of the computer program which was thesubject of copyright protection. He further argued that it was irrelevantwhether Widget C or the AutoCAD lock was developed first because the two wereinterlockingparts such that it could be said that the AutoCAD lock was partof Widget C rather than that it reproduced Widget C. And, partlyfor thisreason, he submitted that it was irrelevant that the third respondent had hadno access to the source code for Widget C,it being sufficient that he hadproduced the Auto Key lock through observing the input and output of theAutoCAD lock.

13. In the Full Court, counsel for the respondents rejected any suggestionthat the Auto Key lock infringed copyright in WidgetC. He reiteratedarguments similar to those which he had put to Northrop J. He accepted thatthe sequence of numbers was storedin the EPROM and acknowledged a similarityin logic between the Auto Key lock and Widget C in their use of a look-uptable, but hedenied that the similarity was significant and asserted that themethod employed by each of the Auto Key lock and Widget C was different. Healso contended that the third respondent had not used Widget C (including itslook-up table) to produce the Auto Key lock becausethe third respondent hadnot looked into Widget C but had merely observed the input and output of theAutoCAD. He again submittedthat the 127-bit sequence could not becharacterized as a computer program because it was not a set of instructions.In addition,he pointed to the fact that no copyright was claimed in the127-bit sequence saying that there was "no claim for infringement ofthatgroup of bits". That was indeed true but did not address the argument put onbehalf of the appellants that what was infringedwas copyright in a computerprogram (of which the sequence of bits formed a part) rather than anycopyright that might subsist inthe sequence of bits itself.

14. The last point was raised during the application for special leave toappeal. In reply to a suggestion from the bench thatthe 127-bit sequenceconstituted a set of instructions and that it might therefore be protected bycopyright, counsel for the respondentssaid:

"It is not pleaded. It has not been argued and, we would say, this

is certainly not the time at which it can be raised because to

suggest that would raise a whole range of quite different issues

including, for example, whether a sequence of 127 binary digits is

capable of being a subject-matter of copyright at all."

"If there is any suggestion that special leave might be granted to

argue a case for copyright of the 127 bits, we would say that that

is a procedural unfairness of very substantial proportions."

15. In this Court, counsel for the appellants contended that, in order toestablish infringement of copyright, it was sufficientto show that therespondents reproduced the whole or a substantial part of any one of (a) acomputer program in AutoCAD, (b) a computerprogram in the AutoCAD lock, or(c) a computer program in both AutoCAD and the AutoCAD lock or partly in oneand partly in the other. In developing this argument, the contention wasadvanced that both Widget C and the EPROM in the Auto Key lock contained thesamelook-up table, as did the AutoCAD lock save that in that lock some digitswere hardwired into the lock, the remainder being generatedby the lock.Protection was claimed for the 127-bit sequence as part of the relevantcomputer program. Counsel for the respondentsargued that the only similarity(if any) between the Auto Key lock and any of the computer programs claimed bythe appellants tobe protected by copyright was their function. Indeed, hecontended that, in any event, the function of Widget C differed from thatofthe two locks in that its function was not to generate the 127-bit string, butsimply to compare the bits put out by the relevantlock with the bitsanticipated by Widget C. And, as in the courts below, there was argument asto whether Widget C had been usedby the third respondent to produce the AutoKey lock despite the third respondent not having had access directly to WidgetC.

16. As was observed in Autodesk ((39) (1992) 173 CLR, at p 348), the basisupon which the appeal was determined was not in the forefrontof theappellants' submissions to this Court. Nevertheless, the arguments which wereput embraced the ground which had clearly emergedin the courts below andwhich found favour with this Court. In any event, that ground was plainlyidentified in the enquiry madeby the Registrar of the parties and they wereinvited to, and the respondents did, make submissions addressed to it. Theymade thosesubmissions in the light of the arguments which had been put bothat first instance and on appeal to the Full Court of the FederalCourt. Therespondents were, therefore, given ample opportunity to be heard, and wereheard, upon the matter which they now seekto raise again.

17. That is sufficient to dispose of the respondents' motion, but I think itappropriate to add that I have given considerationto the arguments which therespondents would seek to put if the case were reopened, these argumentshaving been developed to a considerableextent during the hearing of thisapplication. If it were necessary so to decide, I would be of the view thatnone of them wouldenjoy a sufficient prospect of success to warrant takingthe exceptional step of reopening a judgment pronounced by this Court. Iwould refuse the motion.

GAUDRON J. This is an application by the unsuccessful respondents inAutodesk Inc. v. Dyason ((40)[1992] HCA 2; (1992) 173 CLR330) ("AutodeskNo.1") ("therespondents") to vacate the judgment given in that matter on the ground that,withoutfault on theirpart, they hadno opportunity to be heard on threeissues involved in or decided by it. Judgment has not yet beenentered and,inmy view, shouldbe set aside if the interests of justice so require ((41)Smith v. Bar Association (No 2)[1992] HCA 36; (1992) 66 ALJR 605; 108ALR 55.). However,the circumstances in which justice requires that course are, in practice,extremelyrare, particularly if therehas been an opportunityfor fullargument ((42) Wentworth v. Woollahra Municipal Council[1982] HCA 41; (1982) 149 CLR 672, atp684; State Rail Authority of N.S.W. v.Codelfa Construction Pty. Ltd.[1982] HCA 51; (1982)150 CLR 29, at pp 38 and 48). In orderto make clear my reasons for holdingthat the interestsof justice do not requirethat course in this case, it isnecessary for meto repeat, at least to some extent, the facts involvedinAutodesk No.1.

2. Autodesk Inc. ("Autodesk") developed a computer software package, known as"AutoCAD", which consists of a number of computerprograms, including onecalled "Widget C". It is and has been common ground at all stages that WidgetC is a computer program asdefined ins.10 of theCopyright Act 1968 (Cth)("theAct"). That definition is as follows:

"'computer program' means an expression, in any language, code or

notation, of a set of instructions (whether with or without

related information) intended, either directly or after either or

both of the following:

(a) conversion to another language, code or notation;

(b) reproduction in a different material form;

to cause a device having digital information processing

capabilities to perform a particular function".

3. Widget C prevents the use of the other AutoCAD programs unless a piece ofhardware, called an AutoCAD lock, is connected to thecomputer on which theyare to be run. It does this by instructing the computer to send signals tothe lock: if the lock respondswith the appropriate answering signal, itinstructs the computer to proceed; if it does not, the programs cease tooperate. Signalsare sent and responses made every few seconds. Theresponses comprise a repeating sequence of 127 electrical impulsesrepresenting127 binary digits. The repeating sequence is emitted as theresult of the wiring, in a particular way, of two common electroniccomponents,a shift register and an exclusive - or gate. That repeatingsequence corresponds exactly with a sequence of digits in a look-uptableencrypted and stored in memory in Widget C. For the AutoCAD programs to run,each digit emitted by the AutoCAD lock must correspondwith the digit in thatlook-up table as then read by Widget C.

4. The AutoCAD programs are easily copied onto computer disks. The purposeof the AutoCAD lock is to prevent use of the programsor of copies of thoseprograms, save by persons who have acquired a lock by purchasing a softwarepackage or, in the case of purchasers,to prevent multiple use of a singlepackage. One of the respondents, Mr Peter Vincent Kelly ("the thirdrespondent"), set aboutproducing a device which would perform the samefunction as the AutoCAD lock and, hence, would enable the use of copiedprogramsby persons other than purchasers and, in the case of purchasers,multiple use of a single package.

5. By studying the AutoCAD lock, the third respondent was able to detect thesequence of signals emitted by it and the point atwhich that sequence beganto repeat itself. He was then able to construct a device, using an EPROM(Erasable Programmable Read OnlyMemory) in which that sequence was stored,which could be connected to a computer and which would reproduce the repeatingsequenceemitted by the AutoCAD lock. He set about commercial exploitation ofthe device which he called "an Auto-key lock".

6. On learning of the Auto Key lock, Autodesk and another company (bothtogether called "Autodesk" in what follows) made applicationto the FederalCourt to restrain what was claimed to be a breach of copyright in "thecomputer program contained within the autocadlock". That claim was broadenedin the statement of claim in which Autodesk claimed infringement of itscopyright in "a computerprogram known as 'AutoCAD' ... which is, also, inpart, contained within a product known as 'the AutoCAD hardware lock'". Itclaimedthat that copyright had been infringed by the respondents by, amongstother things, "reproducing in a material form and/or adapting(that) computerprogram or a substantial part of it".

7. Judgment was given by this Court in Autodesk No.1, an appeal from the FullCourt of the Federal Court, on the basis that "(t)helook-up table in Widget Cconstituted a substantial part of (the) Widget C (program)" and that the AutoKey lock had been made by"indirect copying of (that) look-up table" and"constituted a reproduction in material form ... of a substantial part ... ofthe'set of instructions' constituting Widget C" ((43) (1992) 173 CLR, at p336, per Mason C.J., Brennan and Deane JJ. See also per DawsonJ. at pp346-347). The three issues on which the respondents claim they were notafforded an opportunity to present argument are: first, whether the look-uptable is a substantial part of Widget C; secondly, whether it was indirectlycopied by the third respondent;and thirdly, whether "copying data ... in acomputer program can constitute a reproduction of a substantial part of thatcomputerprogram". These issues were not dealt with in oral argument in thisCourt, but the history of the proceedings shows that they emergedand were thesubject of submissions at first instance and, save as to the first issue, onappeal to the Full Court of the FederalCourt.

8. In keeping with the assertion in the statement of claim that there was aninfringement of copyright in "the computer programknown as 'AutoCAD'", theevidence and argument at first instance travelled well beyond the AutoCADlock. One issue that clearly emergedat that stage was whether copyright hadbeen infringed by reproduction of the look-up table in Widget C. Counsel forthe third respondentargued that the look-up table was not reproduced in theAuto Key lock because it "is a table which, if written in binary form, isaltogether different in appearance from that constituted by the 128 statesrepresented in binary form in the Autokey (EPROM)". Andwhile acknowledgingthat there was "a logical similarity at one level" between the two in that"each of them has reference to somethingthat could be described as a look-uptable in order to ascertain the next digit in the series", counsel for thefirst two respondentsalso argued there was "certainly not a similarity ofappearance". The question of similarity of appearance, which arose primarilybecause the sequence was written left to right in one case and right to leftin the other, has long since ceased to be an issue.

9. Counsel for the first two respondents also argued that the look-up tablein Widget C was "such a minuscule portion" of the programthat the look-uptable in the EPROM of the Auto Key lock "(could not) be said to be asubstantial reproduction of it". Additionally,he argued that the Auto Keylock was not derived from Widget C because it "was not produced by use ofWidget C". And counsel forthe third respondent argued that it had not beenproven to have been derived from Widget C because it had not been establishedwhetherthe lock or the program came first. Counsel for the first tworespondents also argued that there was no evidence that the 127 digitsin thelook-up table in Widget C "constitute instructions" and, if "they are notinstructions ... they cannot be a computer programwithin the meaning of the(A)ct". Between them, counsel for the respondents thus raised and argued atfirst instance the very issueswhich it is said they had no opportunity toargue in this Court, albeit that the last matter was not then put precisely asit isnow.

10. As it happened, the trial judge, Northrop J., decided in favour ofAutodesk on a basis which made it unnecessary for him toconsider whether theAuto Key lock involved the reproduction of the look-up table in Widget C and,if so, the reproduction of a substantialpart of that program ((44) AutodeskInc. v. Dyason[1989] FCA 295; (1989) 15 IPR 1.). The respondents appealed to the Full Courtand Autodesk cross-appealed. Naturally, the appeal focussed on thataspect ofthe case on which Northrop J. found for Autodesk, namely, that the Auto Keylockinvolved the reproduction of a computerprogram found in the AutoCADlock. Even so, counsel for the respondents (who was counselfor the first tworespondents at firstinstance, and counsel for all respondents at all stagesin this Court) was alive to the significanceof the look-up table in WidgetC,acknowledging in his argument in chief that Widget C and the Auto Key lock "atleast had this incommon, that (Widget C) madereference to an internal lookup table in deciding which bit should be sent back from the lock in responseto the challenge." Hewent on to accept that "Widget.C is a computerprogram", but indicated that "if it is suggested against usthat (the AutoKey) lockinfringes the copyright in that part of Widget.C, we would simplysay first that it does not bear any relevantsimilarity to Widget.Cand in anyevent (the third respondent) never had any relevant access to Widget.C".

11. In due course, counsel for Autodesk put the case foreshadowed by counselfor the respondents. He indicated at the very outsetof his argument that thequestion "whether the same hardware (had) been used" was irrelevant and thatthe issue was whether "theprogram (had) been reproduced", although he did notthen identify the program with particularity. Later, however, he put his casethis way:

"What we say is Widget.C is a programme and a substantial part of

that programme is reproduced in the lock and is necessarily so".

"... the correct way to put (our case), we would say, is that

Widget.C is a programme and each of the locks is a reproduction of

part of that programme, so the comparison is Widget.C and each of

the locks".

12. Counsel for the respondents acknowledged in reply that the sequence ofdigits stored in the Auto Key EPROM was the same as thatin the look-up tablein Widget C, saying that the Auto Key lock "would not do anything if it wasnot the case". However, he assertedthat this involved no infringement ofcopyright because the look-up table could not be regarded as an instruction as"it (did) nottell anything to do anything". And, in keeping with what he hadearlier indicated would be his argument, he submitted that the sequencein theAuto Key lock had not been derived from Widget C. He did not deal with theissue whether the look-up table was a substantialpart of Widget C, althoughthat had been the subject of submissions by him at first instance.

13. In the end result, the Full Court determined the appeal against Autodeskwithout considering whether the Auto Key lock reproducedthe look-up table inWidget C and, if it did, whether it thereby reproduced a substantial part ofthat program ((45) Dyason v Autodesk[1990] FCA 469; (1990) 96 ALR 57). In fact, erroneouslyand quite contrary to what counsel for Autodesk had said was the correct wayof viewinghis case, namely, that "each of the locks is a reproduction of partof (the Widget C) programme", two members of the Full Court gavetheir reasonsfor judgment on the basis that it was common ground that the respondents hadnot reproduced the whole or a substantialpart of Widget C ((46) ibid., perSheppard J. at p 78; per Beaumont J. at p 105).

14. Autodesk's grounds of appeal to this Court were widely framed so as toraise arguments that the Auto Key lock was a reproductionof the program inthe AutoCAD lock, or of the AutoCAD program or of the Widget C program. Theydid not expressly raise the issuewhether the Auto Key lock involved thereproduction of a substantial part of the AutoCAD program or of the Widget Cprogram but,in the light of the evidence, that was the only issue that theycould raise in relation to those programs. And one ground of appeal,ground(d), asserted that the Full Court erred "in holding that the storage in randomaccess memory of the AutoCAD program was nota reproduction or adaptation ofthe program embodied in the AutoCAD lock or of the AutoCAD program or ofWIDGET.C". As the only matterstored in the Auto Key EPROM was the repeatingsequence of 127 digits generated by the AutoCAD lock and stored in the look-uptablein Widget C, that ground of appeal, considered in context, clearlyraised the question whether that storage involved the reproductionof asubstantial part of Widget C.

15. The oral argument made on behalf of Autodesk in this Court was as broadlybased as its grounds of appeal, it being assertedthat Autodesk was entitledto succeed "whether one finds the copyright subject-matter in AutoCAD in thecomputer, or the AutoCADlock, provided that the tests for infringement aresatisfied". But the thrust of the argument was that the Auto Key lockembodieda set of instructions amounting to a computer program as defined intheAct and that those instructions reproduced part of the instructionsinWidget C. It was not expressly argued that, quite apart fromwhether the AutoKey lock involved a set of instructions amountingto a computer program, itnonetheless infringed Autodesk's copyrightin that it reproduced a part of theinstructions comprisingWidget C, which part, standing alone, might notconstitute an instructionor a set of instructions. And, as alreadyindicated, counselfor the respondents did not, in his oral argument, dealwith the issuesinvolved in that proposition.

16. Before judgment was delivered, the Registrar enquired of the parties, byletter, whether it had "at any stage been expresslysubmitted on behalf of(Autodesk) that the series embedded in the EPROM in the Auto Key lockconstituted a reproduction in a materialform of a substantial part ofWIDGET.C". The letter went on to invite supplementary written submissions"(i)f the parties (were)agreed that a submission to that effect was advanced"and indicated that, if they were "agreed that no such submission wasadvanced",the matter need not be taken any further. There may have been somelack of precision so far as the right or necessity to make furthersubmissionswas concerned, but there was no lack of precision as to the subject-matter ofenquiry. And the parties thereupon madesupplementary submissions: Autodeskasserted that it had, in fact, put a submission to that effect at firstinstance and on appealto the Full Court and said that it repeated thesubmission; the respondents denied that the argument had been put in that way,butwent on to submit that the look-up table was "data rather thaninstructions", that it was "a very small portion of Widget.C", that"Autokeywas developed without use of Widget.C" and that, in consequence, "no part ofWidget.C (alternatively, no substantial part)(was) reproduced in Autokey".

17. The history of the proceedings shows that, from the time it issued itsstatement of claim, Autodesk's case was put on a basiswhich comprehended aclaim that the look-up table in Widget C was reproduced in the EPROM used inthe Auto Key lock and that thatinvolved the reproduction of a substantialpart of Widget C. It shows, too, that that claim emerged at first instance,was madein terms during argument in the appeal to the Full Court of theFederal Court and that the respondents were alive to the issues raisedby it,in particular, the three issues on which they now wish to put furtherargument. In view of that history and in view of thewritten submissions madefollowing the Registrar's letter to the parties, it cannot be said that therespondents were not affordedan opportunity to be heard on those issues.

18. As earlier indicated, it is my view that, quite apart from the questionwhether the respondents were given an opportunity tobe heard on the issuesinvolved in the judgment in Autodesk No.1, they are entitled to have thejudgment vacated if the interestsof justice so require. Having regard to thesignificance which currently attaches to computer technology and having regardto thisCourt's status as Australia's final court of appeal, it seems to methat the interests of justice would require that course if itwere fairlyarguable that the judgment involved a misunderstanding of the facts ormisapplication of the law in relation to one ormore of the issues on whichthe respondents now wish to put further argument.

19. There is no question of law involved in the issue whether there wasindirect copying of the look-up table in Widget C. Thereis no doubt that thethird respondent studied the AutoCAD lock and thereby discovered the repeatingsequence which it emitted andwithout which the AutoCAD programs could not berun. Given the purpose and function of the AutoCAD lock in relation to theAutoCADprograms, it must have been obvious to the third respondent that thelock emitted a sequence which corresponded with something inthe AutoCADprograms. As was accepted by the respondents in the Full Court in relation tothe Auto Key lock and its reproductionof the look-up table in Widget C,unless the lock reproduced something within the program, "it would not doanything". And the evidenceclearly shows that what it reproduced was thelook-up table in Widget C. These matters all but compel a finding as toindirect copyingof that look-up table.

20. The respondents hope to avoid a finding of indirect copying by arguingthat the AutoCAD lock must have been devised first andthe sequence of itssignals later encrypted in the look-up table with the consequence that itshould be found that the third respondentdid no more than what he readilyacknowledges, namely, copy the repeating sequence emitted by the AutoCAD lock.But, clearly enough,the AutoCAD lock and Widget C were devised in conjunctionwith each other and with the intention that they should complement eachotherby the lock's emission of a sequence of digits stored in Widget C. Perhapsthe lock was wired first so as to generate thesequence eventually employed.But if so, that does not alter the fact that, just as with a conventional lockand key, the devisingof one is necessarily the devising of the other. Thatbeing so, it cannot be said that there was any misapprehension of the factsinvolved in the finding of indirect copying.

21. As has been seen, the respondents have at all stages relied on the factthat the look-up table in Widget C is not itself aninstruction or, as it wassometimes put, is data rather than instructions. It may be that, so far asthe computing profession isconcerned, there is a dichotomy between data andinstructions. And, so far as the definition of "computer program" in theActproceedsby reference to "a set of instructions (whether with or withoutrelated information)", it may be that it also recognizesthat itis possibleto draw a distinction between instructions and data. But that does not meanthat, for the purposes of that definition,a computer program does not includedata or information.

22. An instruction operates as such only to the extent that it conveys acommand to its recipient. What is required to achievethat result in a givencase will vary according to circumstances and according to the knowledge ofthat recipient. In general terms,the less knowledgeable the recipient, thegreater will be the need for the instruction to be accompanied by information.To takean everyday example, it may be sufficient in one case to say "Go tothe shop and buy butter"; in another it may be necessary to say"Go to theshop at the end of the street, the one painted green with groceries in itswindow, and buy butter". As a matter of ordinaryusage, each, viewed in itsentirety, is an instruction. And it is an instruction whether or notaccompanied by information aboutthe shop.

23. Given ordinary usage and given that it has never been suggested that theexpression "set of instructions" in the definitionof "computer program" ins.10 of theAct is a technical or art term, it is, in my view, clear that thatexpression directs attentionto an entire instruction or, more accurately,anentire set of instructions, and not merely those parts that consist of barecommands. So much is confirmed by the language usedin the definition and byits context. The words "set of instructions" necessarily directattention toinstructions in their entirety. And that direction is in no way cut down,but, rather, is reinforced by the parentheticaldescription of theinstructions involvedas instructions "whether with or without relatedinformation". Moreover, the definitionis concerned with instructions which"causea device having digital information processing capabilities to performa particular function"and in many cases it will be necessaryfor instructionsto be accompanied by related information if those devices are to performquiteordinary computer functions.

24. Ordinary usage and the language and context of the definition of"computer program" ins.10 of theAct compel the conclusionthat the words"set of instructions (whether with or without related information)" extend tocomprehend informationas well as commands.There is thus no basis for anargument that theAct does not extend copyright protection to informationforming part of a set ofinstructions of the kind falling within thedefinitionof "computer program", at least if that information is asubstantial partof the relevant set of instructions.

25. The only other matter on which the respondents rely is the questionwhether the look-up table can be said to be a substantialpart of Widget C.In truth, the table was the linchpin of the program, to borrow an expressionfrom a different technology. It wasthe critical part of the instructions inthat the other parts depended on and were made by reference to it. Whatevermay be thesituation in cases in which information plays a less significantrole, given that the look-up table was crucial to Widget C and giventhatcopyright protection extends to information as well as the commands involvedin a set of instructions of the kind constitutinga computer program asdefined ins.10 of theAct, there is, in my view, simply no basis for anargument that the look-up table wasnot a substantial part of Widget C.

26. The application should be refused.

ORDER

Direct the parties to bring in, within twenty-one days, minutes of order inaccordance with the judgment of this Court in AutodeskInc. v. Dyason (No. 1)[1992] HCA 2; (1992) 173 CLR 330.

The parties subsequently brought in minutes of a proposed order and on 21April 1993 The Court pronounced the following order:-

Appeal allowed with costs.

Orders 1, 3 and 4 of the Full Court of the Federal Court set aside and inlieu thereof order that:

(1) order 1 of Northrop J dated 15 September 1989 be varied

by odering that:

(a) Martin Patrick Dyason, Christine Dyason and Peter

Vincent Kelly, and each of them, whether by themselves,

their servants, agents or howsoever otherwise, be

restrained from -

(i) reproducing in any material form the whole, or a

substantial part, of the computer program known as

"AutoCAD";

(ii) selling or letting for hire, or by way of trade,

offering, or exposing for sale or hire, any article,

being a reproduction of the whole, or a substantial part,

of the said computer program.

(b) Martin Patrick Dyason, Christine Dyason and Peter

Vincent Kelly, and each of them, whether by themselves,

their servants, agents or howsoever otherwise, be

restrained from reproducing in any material form the whole,

or a substantial part, of the 127-bit series look-up table

in the said computer program and, more particularly, in

that part of the computer program known as "Widget C".

(2) the appeal to the Full Court of the Federal Court by

Martin Patrick Dyason, Christine Dyason and Peter Vincent

Kelly be otherwise dismissed with costs.

Remit the matter to the Federal Court of Australia, Victoria