Re Acorn Computers Limited and Barson Computers Pty Ltd v MCS Micro-Computer Systems Pty Ltd and John Speed Vg [1984] FCA 339; 57 ALR 389 / 4 IPR 214 / 6 FCR 277 (14 November 1984)

FEDERAL COURT OF AUSTRALIA

Re: ACORN COMPUTERS LIMITED and BARSON COMPUTERS PTY. LTD.
And: M.C.S. MICRO-COMPUTER SYSTEMS PTY. LTD. and JOHN SPEED
VG No. 226 OF 1984
Copyright
(1984) AIPC para 90 - 146 / [1984] FCA 339; 57 ALR 389 / [1984] FCA 339; 4 IPR 214 / [1984] FCA 339; 6 FCR 277

COURT

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Smithers J.

CATCHWORDS

Copyright - motion by applicants to amend statement of claim - motion by repondents to strike out statement of claim - assignment pleaded not an assignment in writing - requirements of writing in s.196(3) of Copyright Act 1968 - equitable ownership arising out of agreement for value to assign - source of applicants' title rendered uncertain by affidavits filed by the applicants - validity of assignment of copyright by one joint owner - whether joint ownership has characteristics of tenancy in common.

Copyright Act 1968 s.196(3)

Copyright - Infringement - Copyright in various works relating to computers - Author employed by assignor for value - Assignment not in writing - Whether the acquisition of the equitable interest by the assignee subject to s 196(3) of the Copyright Act 1968 (Cth) - Written deed of assignment executed after action commenced - Need to join legal owner - Assignment by a joint author - Need to identify co-author's contribution and the nature and extent of the works - Copyright Act 1968, ss 10, 196(3) - Property Law Act 1958 (Vic), s 53(1)(c). Held: (1) The first applicant acquired an equitable interest in various copyrights by virtue of its agreement or arrangement with the legal owner of such copyright whereby that owner transferred to the applicant all its assets and undertakings relating to the developing and production of a certain microcomputer and the intellectual and industrial property rights relating thereto and, even though that agreement at the date of commencement of the action was not in writing signed by or on behalf of the assignor, neither s 196(3) of the Copyright Act 1968 nor s 53(1)(c) of the Property Law Act 1958 (Vic) applied so as to render the applicant's interest in the copyright unenforceable because that equitable interest arose not by transfer or transmission but by estate created by trust by means of the activation in equity of the conscience of the receiver of valuable consideration. By relating the acquisition of the equitable interest to the transaction for value, the claim to the equitable interest was clearly pleaded even though the plea characterised the process of obtaining the equitable interest as an equitable assignment rather than the creation of a trust.

Roban Jig Tool Co Ltd and Elkadort Ltd v. Taylor (1979) FSR 130, distinguished.

Central Trust and Safe Deposit Co v. Snider (1916) 1 AC 266; Fairweather v. Fairweather [1944] HCA 11; (1944) 69 CLR 121; DKLR Holding Co (No 2) Pty Ltd v. Commissioner of Stamp Duties (NSW) [1982] HCA 14; (1982) 149 CLR 431, referred to with approval.

(2) An applicant who is owner of an equitable interest in copyright need not join the legal owner of the copyright in order to obtain permanent relief for infringement of the relevant copyright where, subsequent to the cause of action being commenced by the applicant and prior to hearing, the legal owner assigns his interest in the copyright to the applicant by written assignment.

Performing Right Society Ltd v. London Theatre of Varieties Ltd (1924) AC 1, referred to with approval.

(3) Joint authors of a work in which copyright subsists hold the copyright as tenants in common, each being able to deal separately with his respective interest. Accordingly, upon assignment of that interest by either joint author, the assignee may make title capable of supporting a claim for any subsequent infringement of that copyright.

Prior v. Lansdowne Press Pty Ltd (1977) VR 65, referred to with approval.

(4) Ambiguities appearing in parts of the applicant's statement of claim as to the nature and extent of certain works or adaptations thereof, the contribution of co-authors to the making of certain works and the circumstances giving rise to copyright in the persons through whom the applicant's alleged interest was said to be derived, could, in this case, be dealt with by appropriate orders for delivery of precise particulars to the respondent and not by striking out the relevant parts of the applicant's statement of claim.

General Steel Industries Inc v. Commissioner for Railways (NSW) [1964] HCA 69; (1964) 112 CLR 125, referred to.

HEARING

Melbourne, 1984, August 31; September 11, 17, 20; October 31; November 14. 14:11:1984
NOTICES OF MOTION

Notices of Motion, first by the applicants seeking leave to amend their statement of claim based on infringement of copyright and secondly by the respondents seeking to strike out that statement of claim.

P Mardie QC and D Shavin, for the applicants.

A R Garratt, for the respondents.
Cur adv vult

Solicitors for the applicants: Wantrup & Associates.

Solicitors for the respondents: Madden, Butler, Elder & Graham.
GFV

ORDER

1. The applicants have leave to amend the statement of claim in the terms of the amended statement of claim already delivered and to make amendments thereto as it may consider necessary in the light of the comments in the reasons for judgment delivered this day concerning paras. 27 and 27A of the amended statement of claim.

2. The applicants deliver to the respondents further particulars of each work in which copyright is claimed stating the nature and extent thereof and the extent to which it was included in any ROM or other item of equipment comprised in the relevant BBC microcomputer, within 21 days of the date hereof.

3. The respondents have liberty to apply should any question arise as to the sufficiency of the particulars delivered by the applicants.

4. Either party have liberty to apply generally.

5. Costs be reserved.

DECISION

There are two notices of motion before the Court. The first is a motion by the applicants seeking leave to amend their statement of claim. The second is a motion by the respondents seeking to strike out paragraphs 25 to 36 inclusive of the applicants' statement of claim on the grounds that the claims thereby:-

(i) do not disclose a reasonable cause of action;

(ii) constitute a proceeding that is frivolous and
vexatious;

(iii) are an abuse of the process of the court;

(iv) have a tendency to cause prejudice, embarrassment
or delay in the proceedings.

2. The principles applicable to a motion to strike out a statement of claim are well established: see General Steel Industries Inc. v. Commissioner for Railways (NSW) [1964] HCA 69; (1964) 112 CLR 125 where Barwick CJ adopts the words of Dixon J. (as he then was) in Dey v. Victorian Railways Commissioners [1949] HCA 1; (1948) 78 CLR 62 at 91:-

"A case must be very clear indeed to justify the
summary intervention of the court to prevent a
plaintiff submitting his case for determination in
the appointed manner by the court with or without
a jury. The fact that a transaction is intricate
may not disentitle the court to examine a cause of
action alleged to grow out of it for the purpose
of seeing whether the proceeding amounts to an
abuse of process or is vexatious. But once it
appears that there is a real question to be
determined whether of fact or law and that the
rights of the parties depend upon it, then it is
not competent for the court to dismiss the action
as frivolous and vexatious and an abuse of
process."

3. The respondents say that their motion applies equally to the statement of claim as proposed by the applicants to be amended, and the proceedings before me were conducted on the basis that the respondents' motion related to the statement of claim as if amended.

4. The claims of the applicants for infringement of the copyright of the first named applicant (Acorn) as formulated in the amended statement of claim are in three categories. First, Acorn alleges in para. 27 that it is and has at all material times been the legal owner of the copyright which subsists in the works included in, or further or in the alternative, adaptations of the works which are included in:-

(a) A ROM designated as BASIC III

(b) " " " " DFS 1.2

(c) " " " " NFS 3.6

(d) " " " " DNFS

(e) A file server designated as Level 2.

Second, Acorn alleges in para. 27A of the proposed amended statement of claim, that since about July 1983 it has been the equitable owner, alternatively the equitable joint owner by virtue of an equitable assignment by Acorn Leasing Ltd., previously known as Cambridge Processor Unit Limited, (that company being hereafter referred to as "CPUL") to Acorn of the copyright which subsists in the works or adaptations thereof which are included in:-

(a) (i) A ROM designated as BASIC I
(ii) " " " " " II

(b) (i) " " " " MOS 0.1
(ii) " " " " " 1.2

(c) " " " " NFS 3.34

(d) " " " " DFS 0.90

(e) An uncommited logic array to operate a video
processor often designated as 5C;

(f) An uncommitted logic array to act as a serial
processor often designated as 2C;

(g) a Level 1 file server.

5. Third, Acorn alleges in para 28 that it is the equitable owner or equitable joint owner of copyright in certain drawings, sketches and other works referred to in that paragraph by virtue of an equitable assignment thereof from CPUL.

6. The applicants have filed affidavits purporting to set forth the authorship of the works referred to. It is the contention of the respondents that inferences to be drawn from the contents of the affidavits are that Acorn is not the sole owner of some of the works the subject of para.27, that in respect of some of the works it has ownership only in part thereof and that part is not identified, and that as to some, if not all, of such works Acorn's title, if any, arises by assignment and no assignment is alleged.

7. With respect to the works referred to in para. 27A of the amended statement of claim it is said that the claim that copyright therein was acquired by assignment falls to the ground because no written assignment is alleged. In addition contentions similar to those made with respect to the copyright claim in para. 27 are put forward.

8. It is the contention of the respondents with respect to those works in which Acorn has only joint ownership with a person or persons not parties to the action that such an interest is insufficient to support a cause of action against the respondents for infringement thereof.

9. And it is the contention of the respondents that with respect to the copyright in any of the works which Acorn claims by virtue of an assignment there was on 14 August 1984, the date of commencement of these proceedings, no title whatever in Acorn because the provisions of s.196(3) of the Copyright Act 1968 (the Act) were not complied with, there being at that time no assignment in writing. Section 196(3) provides that:

"an assignment of copyright (whether total or
partial) does not have effect unless it is in
writing signed by or on behalf of the assignor."

10. This last contention was in the forefront of the attack upon the proposed amended statement of claim. It appears that on 17 September 1984 CPUL executed a deed of assignment to Acorn but Mr. Archibald contended that that factor did not affect the validity of his objection that Acorn had no sufficient title on 14 August 1984 to commence the action. He said that s.196(3) is unambiguous and rendered the equitable assignment relied on in this case of no effect. The equitable assignment relied on by Acorn, as indicated in para. 27A(h) is alleged to have been effectuated by an agreement or arrangement between CPUL and Acorn under which the whole of the business assets and liabilities of CPUL, excluding certain portions thereof not significant for present purposes, but including all of its assets and undertakings relating to the developing and production of the BBC microcomputer and the intellectual and industrial property rights relating thereto were transferred to or assumed by Acorn. And it is alleged in particular in sub-paragraph (j) of para. 27A of the amended statement of claim that it was at all material times the intention of each of CPUL and Acorn that Acorn would hold the beneficial interest in any intellectual and industrial property rights arising out of the development of the BBC microcomputer.

11. I did not understand Mr. Archibald to contend that apart from the non compliance with the provisions of s.196(3) of the Act there was not, on the facts alleged, possibly, or arguably, equitable ownership in Acorn of every interest which CPUL had in any relevant copyright in any literary or artistic work. It was the absence of writing which was fatal to the effectiveness of the transaction between CPUL and Acorn as an assignment of interests in the copyright. In support of this contention Mr. Archibald relied, in particular, on the decision of the Court of Appeal in Roban Jig Tool Co. Ltd. and Elkadort Ltd. v. Taylor & Ors (1979) Ch 130. In that case the plaintiffs sued for infringement of copyright in three groups of drawings identified as S/Rob, RP, and D and N respectively. The plaintiffs' title to copyright having been put in issue particulars were given. From these it appeared that the drawings S/Rob and D and N had been prepared for the plaintiffs by independent contractors. No other source of title was disclosed. As to the RP drawings it appeared that the same were made by one P when he was a partner of a firm the assets of which were said to have been vested in the first plaintiff upon its incorporation. The manner of vesting was not stated. It was alleged that P had made the drawings for the firm. It was held by Whitford J., the trial judge, that the claim in respect of the drawings S/ROB and D and N should be struck out as no title to the copyright therein was shown to exist. He held however, that in relation to the RP drawings, the pleading should be allowed to stand. He held that a possible inference from what was particularised was, "that the plaintiffs were and are indeed owners of some beneficial interest in the copyright in the RP drawings even though the pleadings may be defective in the sense that there is insufficient particularity and even though it may be necessary at some later stage to join the legal owner of the copyright.". The plaintiffs appealed and the defendants cross appealed. The appeal was dismissed but the cross-appeal was allowed.

12. It was held, on appeal, that there being no facts disclosing a written assignment of copyright to the plaintiff no title was shown. So far as the plaintiffs relied on the assignment of an equitable interest it failed because of the provisions of s.53(1)(c) of the Property Law Act 1925 which is in like terms to s.53(1)(c) of the Victorian Property Law Act 1958 and requires that a disposition of an equitable interest "... must be in writing signed by the person disposing of the same ...".

13. It was said by Mr. Archibald that the ratio decidendi of the Court of Appeal decision is decisive of the issue in this case so far as the applicants rely on the agreement or arrangement between Acorn and CPUL. Mr. Archibald referred to the observations of Stamp LJ at p.140 (supra) that there being no suggestion of any written disposition of the copyright in favour of either of the plaintiffs it followed that the statement of claim as particularised disclosed no cause of action in respect of any of the drawings. He referred also to the observations of Ormrod LJ at p.143 (supra) where his Lordship pointed out that the pleadings plainly showed on their face that the plaintiffs were not the authors of any of the drawings and must therefore plead and prove a valid assignment or assignments in their favour. And he observed "the combined effect of s.36 of the Copyright Act 1956 and s.53(1)(c) of the Property Law Act 1925 is that in the circumstances such assignments whether they be of legal interests or equitable interests in such copyrights, must be in writing". The relevant provision in s.36 of the Copyright Act 1956 is in the same terms as s.196(3) of the Act. To my mind the question in this case is not so much whether there is in writing an assignment of copyright, but whether there was in Acorn at the commencement of the proceedings equitable ownership of the relevant copyrights.

14. It is to be noted, that in the Roban Jig Case (supra) there was in the pleadings or particulars no suggestion that there had been a transaction for value under which it was agreed that the interest of the owner or part owner of the copyright in works was to pass to the plaintiffs and that the agreement was one of which specific performance might have been desired. It would seem that Whitford J. had sensed that there was such a suggestion and it was this that persuaded him to allow the claim concerning the RP drawings to stand. But that there was such a suggestion was not accepted on appeal. In this case a transaction of the kind referred to is pleaded. The pleading does not refer to the availability of specific performance, but it does put forward a transaction susceptible of specific performance. It may be, although it is unnecessary to discuss it in this case that the element of specific enforceability is not essential to the creation of an equitable estate arising from a transaction inter partes: see Meagher Gummow and Lehane, Equity Doctrines and Remedies 3rd Ed. p.138.

15. It is normally the consequence of such a transaction that, value having been given, an equitable interest in the subject thereof arises in the party giving it: see Central Trust and Safe Deposit Co. v. Sinden (1916) AC 266 at 272; Fairweather v. Fairweather (1944) 69 CLR at 154. In such a case the equitable interest arises not by way of transfer but by activation in Equity of the conscience of the receiver of the valuable consideration. A trust is created; there is not a transfer or assignment; there is no transmission of an equitable interest. The estate arising from a declaration of trust is appropriately spoken of as the estate created thereby; thus per Gibbs CJ in DKLR Holding Co. (No. 2) Pty. Ltd. v. Commissioner of Stamp Duties (NSW) (1981-82) 149 CLR 491. It is appropriate also to speak of the fiction that by a declaration of trust the declarant "imparts" to the beneficiary an equitable estate or interest upon which the Stamp Duties Act 1920 (NSW) operates ; per Mason J. in the last mentioned case at p.457. Where there is no transmission s.196(3) of the Act is not involved. Similarly where there is an enforceable contract to transfer property the equitable interest arising in the proposed transferee is not the product of a transfer but an exercise in creation.

16. In the claim made in para 27A of the amended statement of claim the applicants rely on the equitable interest which arose from the agreement to assign the copyright. It appears to me that just as prior to the 1968 Act, which provided for the legal assignment of future copyright, equity would treat an enforceable agreement for value to assign such a right as creating an equitable interest capable of sustaining an interlocutory injunction in the absence of the legal owner, and of sustaining a perpetual injunction once the legal owner was joined as a party to the proceedings, so equity will treat as the equitable owner, and as a person entitled to commence proceedings for infringement of copyright, a person in whom there resides an enforceable right to an assignment of the relevant copyright. This appears to conform to the requirements of justice. It would not be just that a person should infringe a copyright, the right in equity to which had been acquired for value by another party from the owner merely because writing was absent and the legal owner would not become a party to the proceedings. I am therefore not persuaded that the agreement or arrangement as pleaded is not such as to confer upon Acorn equitable ownership of the relevant copyrights.

17. It is to be noted that in the Roban Jig Case (supra) Lord Justice Stamp accepted the submission that "you may sue relying on the equitable right to property which you claim has been damaged and get in the legal title afterwards.". But he pointed out that what the plaintiffs were attempting to do in that case was to commence proceedings with no title at all and to sue on a title subsequently acquired: see his Lordship's remarks at p.142. (supra).

18. In Performing Rights Society Ltd. v. London Theatre of Varieties Ltd. (1924) AC 1, the matter under consideration was a claim by the equitable owner of a copyright to sue for infringement without joining the legal owner. It was conceded that the equitable owner might be granted an interlocutory injunction but that permanent relief would not be granted in the absence of the legal owner. The equitable interest had arisen by virtue of a written assignment of future copyright. Viscount Finlay pointed out that s.5 of the Copyright Act 1911 authorised an assignment in writing not only of a legal interest in copyright but of any interest whether legal or equitable. And in that case there was writing. But he said that the established rule of practice should be adhered to, namely, that the owner of the legal estate should be joined as a party. He pointed out that in the case of a refusal of the owner of the legal estate to join as a plaintiff he might be added as defendant "or if for any reason, all this were impossible, the action ought to be allowed to proceed without the presence of the legal owner".

19. In this case there is no joinder of the legal owner as applicant or respondent. But, soon after action brought, Acorn became the owner of the legal estate by written assignment. Assuming that the agreement or arrangement between Acorn and CPUL which is pleaded was sufficient to make Acorn the equitable owner of the relevant copyrights the question is whether the "getting in" of the legal estate by written assignment will relieve the applicants from actually joining as a party the person who was legal owner at the date of action brought but who has since ceased to be so. If the assignment to Acorn of the legal interest in the copyright to it had occurred prior to action brought the legal owner would not have been a proper party to the action. If the legal owner had been joined prior to the assignment of his interest to Acorn his presence in the action would, when the assignment was given, have become unnecessary and embarrassing. It appears to me therefore that at this stage its presence would serve no useful purpose and is unnecessary. Nevertheless, the assignment should be pleaded although it is something that has occurred after action brought.
Joint Ownership

20. With respect to those works in which there was joint authorship in Acorn and some other party, Mr. Archibald contended that Acorn could not establish a justiciable claim. It was said that if joint authorship creates joint ownership in the true sense, the interest is one out of which one of two joint owners cannot sever his own interest. This, he said, is a consequence of the nature of the thing in which the copyrights claimed in this case is said to exist and the definition of a "work of joint authorship" in s.10 of the Act. That definition is in the following terms:-

"'Work of joint authorship' means a work that has
been produced by the collaboration of two or more
authors and in which the contribution of each
author is not separate from the contribution of
the other author or the contributions of the
other authors".

21. Whereas it was conceded that the interest of one joint owner of a copyright is characterised as an interest as a tenant in common, and that one joint owner can sue for infringement, and for the damage which he has suffered, it was argued that this is not relevant to the present submission.

22. For the purposes of this proceeding, at least, I cannot act upon the contention that as a result of the definition mentioned above or otherwise that Acorn cannot make title capable of supporting its claims in the works or parts of the works which were the subject of joint ownership arising out of joint authorship and which were the subject of the agreement or arrangement referred to in para. 27A(h). It was held by Gowans J. in Prior v. Lansdowne Press Pty. Ltd. (1977) VR 65 adopting what was said by Copinger and Skone James on Copyright 11th Ed. Para. 692 that co-authors hold the copyright as tenants in common rather than as joint tenants and in the absence of agreement to the contrary in equal shares. Once the interest is characterised as that of a tenant in common it is difficult to accept that the interest of each tenant in the property owned in common cannot be separately dealt with.

23. It was also said by Mr. Archibald that there is no way the work or part of a work in which CPUL or Acorn might have had an interest as joint owner can be meaningfully identified. As indicated below further particulars to resolve this difficulty are necessary.
The Pleadings

24. In the light of the foregoing it is to be noted that, having regard to the contents of the affidavits referred to hereafter, the allegation of legal ownership which is made in paragraph 27 of the amended statement of claim is subject in various respects to the risk that it cannot stand. Once it is seen that the claim to copyright in respect of the items or some of the items referred to in that paragraph must, in the absence of a pleading of a valid assignment which passed the legal interest, be established as a claim to equitable ownership, presumably by the same route as is indicated in para. 27A(h), then para. 27 is insufficient to sustain the case which the applicants would require to make.

25. According to the terms of para. 27A equitable ownership of the copyright which according to that paragraph is based on the agreement or arrangement referred to in para. 27A(h) is said to be acquired by an equitable assignment. I do not understand that, in the face of s.196(3), the agreement or arrangement, not being in writing, could, as an assignment, have any effect. But the substance of the plea relates the acquisition of the equitable interest by Acorn to equitable doctrines operating on the transaction for value described in para. 27A(h). It is that process which is referred to as an equitable assignment. For the purposes of the statement of claim whether or not the allegation correctly characterises the process as an equitable assignment the basis of the claim of copyright by virtue of the alleged agreement or arrangement is clearly pleaded.

26. Paras. 27 and 27A refer to the works "included in" parts of the BBC microcomputer described as a ROM or uncommitted logic array or file server or otherwise. The particulars under these paragraphs speak as though the works with respect to which copyright is claimed are the ROM, the logic array or the file server themselves. The contents of the affidavits indicate that the works in which copyright is claimed are not these items but items included therein. Clearly, to my mind, precisely identifying the relevant works is necessary. I propose to make an order to that effect and the observations with reference to the particulars under these paragraphs proceed in contemplation of such identification being provided. As appears in these observations the contents of the affidavits confirm the necessity for such identification.
Particulars under para. 27

As to particulars 27(a):-

with respect to the ROM designated as Basic III which is
said to be a work or adaptation of a work made by one
Wilson who was at all times employed by Acorn, an
affidavit of Wilson filed by the applicants creates a
doubt as to whether when Wilson made the work he was the
employee not of Acorn but of CPUL. If the latter, the
claim of Acorn would depend on there having been an
effective assignment of the CPUL's copyright to Acorn.
No such assignment is alleged. Until the ambiguity is
resolved the respondents are embarrassed. This comment
is applicable to all the particulars in para. 27.

Mr. Archibald pointed out also that the terms of the
affidavit throw doubt upon the validity of the
allegation that the ROM was a work or an adaptation of a
work. All that Wilson says is that the enhancement of a
particular source code which was his work was utilized
in the creation of BASIC III. This question could be
resolved by adequate identification of the work
in which copyright is claimed.

As to particulars 27(b):-

With respect to the ROM designated as DFS 1.2 said to be
a work made or partly made by one Tyson, as an employee
of Acorn, the inference to be drawn from Tyson's
affidavit is that when Tyson made or partly made the
work it was done by him or some other person as an
employee of CPUL. The question of assignment arises.

It was said also by Mr. Archibald that the allegation
that the work was possibly only partly made by Tyson
introduces a serious element of uncertaintly into the
claim. Questions immediately arise as to the sense in
which the expression "partly made" is used. Does it
indicate some particular section of the ROM or does it
indicate that the total work was the result of joint
contributions by Tyson and other persons? The delivery
of further particulars is inevitable.

As to particulars 27(c):-

With respect to the ROM designated NFS 3.6 it is said
that it is a work or an adaptation of a work made or
partly made by Jeremy Douglas Wills who was at all
material times an employee of CPUL. Wills' affidavit
states that he and a Dr. Brian Robertson, also a CPUL or
Acorn group employee, wrote the source code for the NFS.
The affidavit also discloses that the NFS version
supplied to date in BBC microcomputers sold in the UK
and Australia has not been the 3.6 version but the 3.34
version. Mr. Mandie for the applicants explained that
they seek relief against future infringements
when the 3.6 version is used.

As to particulars 27(d):-

With respect to the ROM designated DNFS which is said to
have been made by persons employed by Acorn pursuant to
a contract of service with it and other persons the
relevant affidavits filed by the applicants indicate
that there is uncertainty as to the identity of the work
so made or partly made and as to whether the work said
to have been performed by employees of the Acorn in
making it was not actually performed by them as
employees of CPUL. Further particulars are inevitable.

As to particulars 27(e):-

With respect to a file server designated as Level 2, it
is said that the inference to be drawn from the
affidavits filed by the applicants is that as to part of
the file server programme referred to the relevant work
was performed exclusively by independent contractors of
Acorn or of CPUL and no interest in the copyright
therein could have arisen in either of those companies.
It is said, alternatively, that the inference is that
partly at least, the relevant work was performed by
employees of CPUL and questions of joint ownership
arise. It is said also that there is no identification
in the pleading or particulars thereunder of the work
forming that portion of the level 2 file server
programme in respect of which the claim to ownership of
copyright is properly or reasonably able to be
identified. Clearly further particulars should be
delivered.

Particulars under para. 27A

27. With respect to the nine literary works the subject of the allegation that Acorn is the equitable owner or equitable joint owner thereof by virtue of an equitable assignment and of which particulars are given in sub-paragraphs (a) to (g) of para. 27A of the amended statement of claim, the necessity for further particulars is also demonstrated by the contents of the relevant affidavits, thus,

(a) the ROMS designated as BASIC I and BASIC II are said in
the pleadings to be a work or an adaptation of a work
made by Alun Roger Wilson whilst employed by CPUL.
Wilson's affidavit seeks to identify the work carried
out by him on the BASIC I and the BASIC II. It states
that Wilson created a BASIC language interpreter source
code which was then assembled into machine code and then
transferred into a BASIC I. This source code was
enhanced and used for the creation of BASIC II.
(b) the ROMS designated as MOS O.1 and MOS 1.2 are each said
to be a work or an adaptation of work made or partly
made by Paul Bond and Joseph Dascombe Dunn. It is
alleged that Dunn was employed by CPUL at all relevant
times and that CPUL was the joint legal owner of the
copyright therein. Bond's relationship to CPUL is not
stated. Dunn's affidavit states that he designed and
wrote the source codes for the cassette filing system
modules of the machine operating systems ultimately
known as MOS O.1 and MOS 1.2.

The work carried out in the MOS 0.1 and 1.2 is
identified and its function explained but it appears on
the face of the particulars and even giving due
consideration to Dunn's affidavits that the existence of
joint ownership of copyright over the whole of the
relevant work depends upon the nature of the work in
which it is claimed and the contributions as authors of
Dunn and Bond.

(c) The ROM designated as NFS 3.34 is said in the
particulars to be a work or an adaptation of a work made
or partly made by Jeremy Douglas Wills who was at all
material times an employee of CPUL which is the joint
legal owner of the copyright therein. The affidavit of
Wills indicates that he wrote the source code known as
NFS together with Dr. Brian Robertson also an employee
of CPUL or Acorn. On this basis no question of joint
ownership would arise unless contributions were made by
other persons, not employees of CPUL.

(d) The particulars allege that the ROM designated as DFS
O.90 was a work or an adaptation of a work made or
partly made by Hugo Mark Tyson and Stephen Byram Furber
who were both CPUL employees at all material times..
Tyson in his affidavit states that he is wholly
responsible for developing and improving the existing
disc filing system known as DFS although the program was
originally developed by a number of persons during the
course of their employment with the Acorn group of
companies.

Furber deposes in his affidavit that in late 1978 whilst
working as a consultant for CPUL he wrote the source
code for an early disc filing system which was modified
by employees of the Acorn group. This disc filing
system formed the basis of the disc filing system
utilised by Acorn and some of his source code is used in
the DFS ROM. He also deposes that the object code of
the present DFS ROM used is an adaptation of the DFS
source code, part of which was prepared by him and of
which he is a joint owner. on 7 June 1984 he assigned
any copyright he might have had in the source code to Acorn.

(e) The uncommitted logic array to operate a video processor
often designated as 5C is said in the particulars to
have been made or partly made by Furber or to be an
adaptation of a work made or partly made by Furber.
Furber's affidavit sets out a number of circuit
diagrams, symbols and drawings which he designed and
from which a final mask of the 5C was ultimately made.
Furber states that the 5C is a translation or adaptation
of the data contained in his original schematic
layout and that he was the author of the literary work
embodied in the mask of 5C.

Mr. Archibald said that in view of the statement in the
particulars that the 5C was partly made or was an
adaptation of a work partly made by Furber the inference
is that the rest of the work was done by outsiders to
the Acorn group of companies. Further particulars may
be necessary.

(f) It is stated in the particulars that Kim Spence-Jones
and Richard John Chamberlain made or partly made the
uncommitted logic array to act as a serial processor
often designated as 2C. The particulars state that
Chamberlain was an employee of CPUL. CPUL thus claims
that it is the original joint legal owner of the
copyright therein.

Chamberlain's affidavit states that he was requested to
create a final drawing from working drawings prepared
by Spence-Jones. Spence-Jones is not stated to be an
employee f CPUL or Acorn. Chamberlain says that he did
not add any new or original information but merely
prepared it in a final format. He says that his drawing
was substantially a reproduction of the working drawing
of Spence-Jones.

(g) The level I file server is alleged in the particulars to
have been made or partly made by Wills, Dunn, Stephen
Love, Karl Dellar and Brian Knight of whom Wills, Dunn
and Love were CPUL employees at all material times.
Dellar and Knight are not said to be employees of CPUL
or Acorn.

The affidavit material does not disclose that any of
these persons worked on the Level I file server.

Particulars under para. 28

28. It is unnecessary to deal specially with these. Observations along the lines of those made in respect of particulars under para. 27 and 27A are generally applicable.

29. It is apparent from the foregoing that the nature and extent of the works in which copyright is claimed are not identified with precision. Also there is uncertainty in the source of the applicants' title to the copyright claimed and that in some respects where copyright is said to arise from joint authorship there is uncertainty as to whether what is alleged is not separate authorship of separate parts of a work giving rise to separate copyright therein.

30. It appears to me that it would be appropriate, where there are allegations that copyright claimed by assignment or otherwise has arisen from joint authorship of works made or partly made by persons through whom Acorn claims, the respondent are entitled to be informed with precision of the identity of each work or part of a work in respect of whom Acorn's interest is said so to have arisen, and of the contribution of each person to the making of that particular work or part of a work, so as to show the contribution of authorship and the circumstances giving rise to copyright in the person or persons through whom the alleged interest of Acorn is said to be derived. At this stage I leave the detail of matters of this kind to be dealt with pursuant to request of the respondents for further particulars if such request is necessary after delivery of further particulars by the applicants along the lines referred to above. The necessity for such a request will depend on the extent to which the applicants deal with these matters in association with the giving of particulars which are now ordered identifying the works in which copyright is claimed and the extent to which the respondents need further information for the purposes of the litigation.

31. On the applicant's motion I order:

1. that the applicants have leave to amend the statement
of claim in the terms of the amended statement of
claim already delivered and to make amendments thereto
as it may consider necessary in the light of the comments
in the reasons for judgment delivered this day concerning
paras. 27 and 27A of the amended statement of claim.

2. that the applicants deliver to the respondents
further particulars of each work in which copyright is
claimed stating the nature and extent thereof and the
extent to which it was included in any ROM or other item
of equipment comprised in the relevant BBC microcomputer,
within 21 days of the date hereof.

3. I reserve the question of costs.

32. On the respondent's motion I make no formal order other than to reserve liberty to apply should any question arise as to the sufficiency, in the light of the observations in these reasons, of particulars delivered by the applicants, and to reserve the question of costs.