THE AFTERMATH OF CREATIVE V AZTECH: FAIT ACCOMPLI OR FIASCO?

• Citation: (1998) 10 SAcLJ 414
• Date: 01 December 1998
• Published date: 01 December 1998

The Singapore Court of Appeal appears to have outlawed reverse engineering by disassembly in Singapore by its recent decision of Creative Technology Ltd v Aztech Systems Pte Ltd.1 Given that reverse engineering by disassembly is a crucial step in the development of computer programs, this decision may potentially emasculate the local computer software industry. This article seeks to examine whether or not this decision should be regarded as conclusive authority for the proposition that reverse engineering by disassembly per se by a corporate entity is an infringement of copyright without any defences. In particular, this article will focus on the availability of the defence of fair dealing for the purpose of private study under section 35 Copyright Act (Cap 63, 1988 Ed).2 The penultimate draft of this article was written prior to the Copyright Amendment Bill (No 4 of 1998) which was passed by Parliament on 19 February 1998. The effect of the amendments on the defence of fair dealing in Singapore will also be reviewed. The legality of black-box reverse engineering3 is however beyond the scope of this article.

I. INTRODUCTION

The Parties.

The plaintiff, Creative Technologies Ltd (a public listed company, listed both in Singapore and the United States) manufactures and sells high quality computer peripherals including the SoundBlaster soundcard. The SoundBlaster soundcard is sold on the market bundled with, inter alia, a program called ‘TEST-SBC’. The soundcard itself contains a computer chip which comprises a random-access memory element, a read-only memory element and an arithmetic and logic unit.4 There is another program (hereafter ‘the firmware program’) stored in this read-only memory element of that computer chip.

The defendant, Aztech Systems Pte Ltd, wanted to develop soundcards compatible with the existing industry standards at that time. Creative’s SoundBlaster soundcard embodied one such standard. In March 1992, Aztech launched its first generation of SoundBlaster-compatible soundcards, the Sound Galaxy BX and NX soundcards. Shortly, Creative developed and launched its next generation of SoundBlaster cards. Within a short space of five months, Aztech developed and launched its own second generation SoundBlaster-compatible soundcard, the Sound Galaxy NX PRO, which was, unlike the first generation Sound Galaxy cards, ‘capable of responding in a sophisticated way to a full range of Creative’s undocumented commands’.5

Creative brought proceedings against Aztech for copyright infringement of both its firmware program and TEST-SBC program. Creative alleged that Aztech must have disassembled the firmware program and the TESTSBC program in order to develop the compatible soundcards. Aztech denied extracting and disassembling the firmware but admitted running TEST-SBC with a decompiler6, DEBUG.7 Accordingly, Aztech sought the following defences for their admitted act of infringement: the fair dealing defence under section 35, the non-derogation from grant defence under British Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd8, the exhaustion of rights doctrine from Belts v Willmott9 and an implied licence.

The High Court decision.10

His Honour, Lim Teong Qwee JC found that Aztech had no access to the firmware program and it did not disassemble the firmware program. He found that it was more likely that Aztech had black-box reverse engineered the firmware program without extracting it from the ROM chip that contained it.11 Consequently, his Honour found that there was no copyright infringement of the firmware.12

However, because Aztech admitted to running the TEST-SBC program with a decompiler, known as DEBUG, his Honour found that there was copying of TEST-SBC into the memory of a computer and this constituted copyright infringement.13 Nevertheless, despite the finding of infringement of TEST-SBC, the judge held that Aztech had the defence of fair dealing for the purpose of ‘private study’ and Aztech’s plea that Creative had exhausted its rights in the articles sold also succeeded. Creative appealed.

The Court of Appeal decision.14

The Court of Appeal decision was delivered by the learned Lai Kew Chai J. The Court of Appeal overturned the High Court’s findings of fact and found that Aztech had access to Creative’s firmware and had disassembled Creative’s firmware program.15 Creative thus succeeded on its claim that the process of disassembly of the firmware was an infringing act. But the Court denied Creative’s independent claim of infringement of the firmware, ie that the 4% similarity between the Aztech’s resulting program and Creative’s firmware program constituted substantial taking of Creative’s work.16 In other words, Aztech’s product was not a reproduction of Creative’s firmware within the meaning of section 26(1)(a)(i). On the defences to infringement concerning disassembly of TEST-SBC, the Court of Appeal refused to import the doctrine of exhaustion of rights into Singapore copyright law. The Court of Appeal further refused to countenance the possibility of Aztech’s reliance on section 35 when the ‘private study’ was for commercial purposes.

The Impact of Creative v Aztech on the Software Industry

Reverse engineering by disassembly involves loading the program under investigation into the memory of a computer. It will be shown that this is prima facie an infringing reproduction of the copyright in the program.

This being the case, the legality of reverse engineering by disassembly will be determined by the availability of defences. Consequently, the Court of Appeal’s denial of defences to infringement by Aztech would also preclude corporate entities, who engage in disassembly when commercially motivated, from seeking these defences. Given, as will be shortly demonstrated, the importance of reverse engineering by disassembly to software development, the unavailability of any defences could detrimentally affect the software industry in Singapore. The Court of Appeal’s decision has not been explicitly overturned with the passing of the Copyright (Amendment) Bill No. 4 of 1998. The amendments concern only the ‘research’ limb of section 35, whereas Creative v Aztech was primarily concerned with the ‘private study’ limb. Therefore, Creative v Aztech may remain a binding precedent on the construction and application of the ‘private study’ limb of section 35 in Singapore. It is therefore further proposed to re-examine the case of Creative v Aztech,

II. THE NECESSITY OF DISASSEMBLY

A. Technical/Practical Necessity of Disassembly for Development of Software.

Reverse engineering of a computer program is motivated by the pursuit of knowledge concerning the internal workings of that computer program (hereafter ‘the specimen program’).

Computer programs are invariably marketed in object code.17 This means that the information contained therein is inaccessible to humans.18 To facilitate the process of understanding the internal workings of the specimen program, the reverse engineer will decompile the object code into a higher level language that humans can more easily understand - the reconstructed source code.19 Yet the reverse engineer’s job is not finished. He still has to apply his specialist skills, experience and

knowledge to analyse and interpret the reconstructed source code to discover how the specimen program works.20

The original programmer often does not disclose all the information21 other programmers need to develop compatible22 or interoperable23 software.24 He will often regard most, if not all, of such information as proprietary trade secrets.25 Thus other programmers are compelled by necessity to reverse engineer due to this dearth of alternative sources of information.

It must be emphasised that the market demands near-perfect compatibility or interoperability. Nothing less will do.26 Yet such compatibility or interoperability cannot be achieved without a similar near-perfect

knowledge of the specimen program. There are often no other alternative sources of information but disassembly. Black-box reverse engineering is not an alternative to disassembly.27 Black-box reverse engineering is convenient and time-saving28 only if the software or device being studied is relatively simple.29 Black-box reverse engineering will be virtually impossible in certain instances where the program or device only has one unvaried response or where the specimen program is very complex.30

The only viable alternative to obtain complete accurate information about the internal workings of the specimen program is disassembly.31 Thus the necessity of disassembly is manifest.

B. Economic Necessity of Allowing Disassembly

Disassembly is an ‘extremely tedious, time-consuming and expensive’ process32. The pursuit of knowledge through disassembly is in turn motivated by the hope of the financial gain in and the commercial success of a competing or interoperable product. Given the technical and practical necessity of disassembly, the development of a commercially successful product will be greatly impeded if the practice of disassembly is disallowed.

It has been said that the non-disclosure of functional aspects of a computer program by the original programmer will grant him a de facto monopoly over uncopyrightable aspects of the program.33 The following explains the point.

Commercially developed software products are typically published in the form of object code that is intelligible only to a computer. The source code, examination of which would reveal to erstwhile competitors such matters as the unprotected ideas contained therein and use of public domain subroutines, is meanwhile locked away in the copyright proprietor’s vault, far removed from rivals’ scrutiny. Because normal use of the product, in its object code configuration,

will reveal almost nothing as to its unprotected high level structure, its incorporation of public domain components, its use of...