Motorola Solutions, Inc. V Hytera Communications Corporation Ltd (Discovery) [2019] FCA 1887

7 November 2019

Hytera made an application for discovery of certain categories of documents, including software called the ‘Motorola Works’, being firmware for Motorola’s range of portable and mobile radios. Motorola claimed that these were original literary works in which copyright subsists and that certain Hytera devices embodied a reproduction in material form of the whole or a substantial part of the Motorola Works. On 7 November, Justice Perram of the Federal Court ordered that Hytera’s application for discovery be dismissed. In doing so, he discussed why Motorola should be allowed to amend its pleadings to respond to Hytera’s contentions that there was no substantial reproduction of the source code in software because elements of it came from earlier software.

Firmware

The suites of software came into being as part of Motorola’s digital mobile and radio project. Some components of the firmware were derived from code generated in the course of other projects or, if not directly copied from that source code, were modifications of it. Motorola alleged that its copyright in the source code for its firmware was infringed by Hytera importing and selling mobile radio handset devices which embody a substantial part of the firmware.

Hytera argued that the lines of Motorola code were not a substantial part of the firmware. One way of testing that contention would be to examine the source code in Motorola’s firmware and compare it, both from a qualitative and quantitative perspective, with the firmware overall. A question raised by Hytera was whether components of the firmware written for other Motorola projects were original and should be included in that assessment so it could base an argument on absence of substantiality. An analogy raised during argument was that if an annotated version of Hamlet is compared with another annotated version, then it would be unsound to include in any of the substantiality analysis any of the words written by Shakespeare.

The decision

Justice Perram stated that carrying out this kind of “epic deconstruction” of the source code would not be a useful endeavour and called the Hamlet analogy imperfect, as all the authors working on the various projects were employees or contractors of Motorola. Although Hytera argued that repeated iterations of the source code investigation process might reveal that a particular project was not the true headwaters of the source code, the authors would still be employees or contractors of Motorola. Like all commercial software, it was made from various elements, parts of which had been updated from earlier parts, but it was uncontroversial that such a software program was itself a new literary work in which copyright subsists. He allowed Motorola to amend its pleadings to respond to Hytera’s contentions that there was no substantial reproduction of the source code in software because elements of it came from earlier software.