Creative Technology Ltd v Aztech Systems Pte Ltd

• Jurisdiction: Singapore
• Judge: Karthigesu JA
• Judgment Date: 12 November 1996
• Neutral Citation: [1996] SGCA 71
• Docket Number: Civil Appeal No 181 of 1995
• Date: 12 November 1996
• Year: 1996
• Published date: 19 September 2003
• Plaintiff Counsel: Kevin Garnett QC, Morris John and Lim Yee Ming (Drew & Napier)
• Citation: [1996] SGCA 71
• Defendant Counsel: Peter Prescott QC and Ng Soon Kai (Ng Chong & Hue)
• Court: Court of Appeal (Singapore)
• Subject Matter: Computer programs,Copying of computer programs,Back-up copy of computer program,Defence,s 35 Copyright Act (Cap 63, 1988 Ed),Whether access to copyright material,Fair dealing for purpose of research and private study,Burden of proof,s 39(3) Copyright Act (Cap 63, 1988 Ed),Implied license to make copy,Drawing inference of copying,Whether program copied to further disassembly under exception,Infringement,Words and Phrases,Whether literal similarities to raise inference,Copyright,Fair dealing

(delivering the judgment of the court):

This is an appeal from the judgment of the learned judicial commissioner Lim Teong Qwee sitting in the High Court, dated 24 October 1994. In those proceedings, the appellants (Creative) counterclaimed, inter alia, that the respondents (Aztech) had disassembled and copied a substantial portion of the firmware which is housed in the microprocessor of the Creative Sound Blaster Card; and that their copyright in TEST.SBC (a program ancillary to and supplied with the sound blaster package) was infringed when it was unlawfully copied for the purpose of effecting assembly through the running of the DEBUG program. Aztech in turn denied disassembling the firmware and argued that such copying of the TEST.SBC program was a fair dealing for the purpose of research or private study under s 35(1) of the Singapore Copyright Act (Cap 63, 1988 Ed) (SCA). Furthermore it was argued by Aztech that being the lawful owners of TEST.SBC they were entitled to use it for any reasonable purpose, including the purpose of investigating how it interacted with the Sound Blaster card, relying principally on the 1871 decision of Betts v Willmott .

It was held by the learned judicial commissioner that, in relation to the firmware, Aztech had not been shown to have had access to the firmware program which is usually secured by way of a fuse, and that they had successfully explained away apparent similarities in both programs. He further held that the copying of TEST.SBC by Aztech constituted fair dealing for the purpose of private study under s 35 SCA, and that such use for experimentation was one of the rights of ownership implied in the software licence.

Facts

The salient facts have to be set out. This judgment has been edited to preserve the proprietary rights of Creative. Creative manufacture and sell `Sound Blaster` sound cards. The sound card is an `add-on` product, a circuit board that can be inserted into a personal computer (PC). The sound card generates sounds through a speaker system by means of a digital signal processor (DSP) and a digital-to-analog converter (DAC). When an application program runs on a PC and requires sound, it sends commands to a software program in a driver for conversion into low-level commands. These commands are sent to the DSP, and subsequently on to the DAC where the data is converted into sound through the speaker system. For the DSP, Creative used an Intel 8051 chip. The firmware program was burnt into the ROM of this chip. The other program of significance is TEST.SBC, which formed part of the ancillary executable software that was supplied with every purchase of the Sound Blaster sound card.

Aztech, who are also commercial developers of sound cards, developed a sound card, `Sound Galaxy` (in 3 versions, `Sound Galaxy BX`, `Sound Galaxy NX` and `Sound Galaxy NX PRO`), which was compatible or interoperable with the application programs that have been developed to operate with Sound Blaster. Sound Galaxy is thus a competing product, providing the same functionality as Creative`s Sound Blaster card, with additional capabilities. Like the Sound Blaster sound card, Sound Galaxy sound cards also make use of the Intel 8051 chip, a DAC and a FM synthesizer. It also has its own firmware burned into the ROM by the manufacturer of the chip.

Creative developed two versions for their Sound Blaster sound card; and this was matched by Aztech. Version 1 (`Sound Galaxy BX` and `Sound Galaxy NX`) of Aztech`s card was available by March 1992. This version implemented the publicly described functions in Creative`s card and two of the test and verification functions at issue: the E2 command and the F8 command. It should be pointed out at the very outset that Aztech did not implement these two commands in a manner similar to Creative. Their E2 command used a complicated table-look up method to calculate its response; and their F8 command did not perform any testing but simply returned the value that indicated it was functioning properly. Indeed no allegation has been made that Aztech`s version 1 copied any of Creative`s firmware.

Creative launched the second version of their firmware on or about March 1992. Aztech released their second version by August 1992. To this version Aztech added two more test commands - the F0 command and the F4 command. The instructions for the E2 and F8 commands were also changed from version 1. There are thus two notable phases in the development of Aztech`s sound card and firmware. The first version of the card and firmware was produced in phase 1, between October and March 1992, at the end of which the first Sound Galaxy cards were marketed. Creative asserted that it was during this phase that Aztech made illegitimate use of their software (ie TEST.SBC). The second version of Aztech`s firmware and card were produced in phase 2, between March and August 1992, at the end of which new versions were marketed, as stated above. At the end of phase 2 Aztech`s card was capable of responding in a sophisticated way to a full range of Creative`s undocumented commands. Creative further asserted that it was during this phase that Aztech most likely had access to and disassembled its Sound Blaster firmware.

In broad terms Creative`s claim is grounded on three central allegations of facts, viz: (a) that Aztech reverse engineered (through disassembly) version 1 of the Sound Blaster firmware; (b) that Aztech copied portions of version 2 of the Sound Blaster firmware, particularly in four undocumented commands, E2, F0, F4 and F8; and (c) by loading TEST.SBC into the PC`s RAM and disassembling it, by means of running the DEBUG program, Aztech infringed Creative`s copyright in TEST.SBC.

Issues raised in this appeal

In his submissions, Mr Garnett, counsel for Creative identified the following issues for consideration by this court:

(1) Was the learned judicial commissioner correct to accept that Aztech`s firmware had been developed independently and without having had access to and copied Creative`s firmware or software?

(a) Did Creative establish a prima facie case of disassembly, so that the burden of disproving that fact was shifted to Aztech, by showing that:

(i) Aztech had potential access to Creative`s firmware and disassembled the source code; and

(ii) There were sufficient fingerprints of such disassembly in Aztech`s source code.

(b) If so, did the fact that the learned judicial commissioner regarded the burden of proving disassembly as being on Creative vitiate his decision?

(c) Alternatively, even if the burden of proof was, for some reason correctly left with Creative, did Creative`s cumulative evidence (of the opportunity for access by Aztech to the Creative firmware and of the significant number of otherwise improbable fingerprints in Aztech`s code) nevertheless establish disassembly on the balance of probabilities?

(d) Did the judicial commissioner make errors in the consideration of evidence (eg by mis-stating certain facts, ignoring others and not considering the cumulative improbability of the many instances of coincidence in Aztech`s code) which could vitiate his evaluation of it?

(2) Putting aside the evidence of Aztech`s disassembly, are the portions of Aztech code that are essentially identical to Creative`s code an independent form of infringement?

(3) Did the judicial commissioner err as a matter of law in accepting that Aztech`s admitted copying of one of Creative`s software programs was nevertheless not an infringement because it constituted `fair use` or alternatively a use identical to the right of ownership of the physical copy of the program?

The first issue broadly relates to the alleged disassembly of the Sound Blaster sound card; and is decidedly a question of fact, quite apart from the determination of whether the burden of proof does shift when Creative alludes to sufficient access and similarities between both works, which is always a question of law. The second issue asks the question whether such similarities lead to the finding of an independent form of direct copyright infringement. It is also decidedly a question of fact. The third issue raises a pure question of law: whether Aztech are able to rely on copyright defences to excuse their act of admitted copying, in relation to the TEST.SBC program.

Did Creative establish a prima facie case of disassembly?

It is Creative`s contention that most of the evidence of disassembly occurred in the six months, during which Aztech significantly modified their sound card firmware and moved from partial to full Sound Blaster compatibility and which was the period described as `phase 2` above. It was submitted that in this phase, the `fingerprints` of disassembly could clearly be seen. The attention of the court was specifically directed at five undocumented commands (instructions which are sent to operate the micro-controller) that were fully implemented for the first time in phase 2; viz. E2, F0, F4, F8 and F1. Quite apart from functionality, features from each of these commands exist in the Sound Galaxy card.

We set out below the key characteristics of the various commands and similarities between both parties` firmware, which Creative rely upon to argue that the learned judicial commissioner erred in finding that such similarities arose through independent creation, rather than disassembly of the sound blaster firmware.

(a) E2 Command

E2 is an undocumented command. A series of signals passes between an application program in the PC and the sound card. If the sound card does not return the correct response, the external software will not continue running. Creative argued that E2 provides proof of Aztech`s disassembly.

Aztech used the same secret algorithm as Creative. Second, Aztech coded the algorithm in a manner identical to that used by Creative, when better alternatives existed. It is further alleged that Aztech duplicated the secret fixed values used by...