The CJEU has recently delivered its decision in C-406/10 SAS Institute v World Programming Ltd, answering questions posed by the English court on the extent to which computer software is protected by copyright under the Software Directive, in particular in relation to functionality and the extent of rights under a licence to use.

Summary

The decision concerned software written by SAS Institute which implemented a programming language which enabled users of that language to carry out a wide range of data processing and analysis tasks, based on data stored in files in a proprietary format. WPL wrote its own software to emulate that programming language and the underlying structure of the data files, so that scripts written for SAS could also execute on WPL’s software.

  • The CJEU found that copyright would protect only the expression of the idea behind the software, and that this expression was only to be found in the source or object code of the program, or in the choice, sequence and combination of words, figures and mathematical concepts embodied within it.
  • The court did not consider that the functionality, the programming language itself, or the format of data files of the software were sufficient expressions of an idea to attract copyright protection.
  • In the court's view, if the functionality were protected, then it would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development.
  • Further, it was legitimate for the purchaser of a licence to observe, study and test the operation of the licensed software to deduce the ideas and principles behind it (so they could be copied).

A licence to use the underlying software entitles the licensee to load and run the program to observe, study or test the functioning of the program to determine the ideas and principles which underlie it, notwithstanding any term in the licence to the contrary.

However, the software program manual could attract copyright protection and it was possible that the new program written by the licensee (or the manual which would accompany it) may infringe that copyright. Whilst the court did not consider that the “keywords, syntax, commands and combinations of commands, options, defaults and iterations consist of words, figures or mathematical concepts” which on their own could attract copyright protection, the “the choice, sequence and combination of those words, figures or mathematical concepts” could be protectable. It would be for the national courts to decide whether this was the case on the particular facts.

Business impact

This decision clarifies a "grey area" in the protection of computer programs, but is unlikely to please software developers. To protect computer programs, copyright owners will now need to focus on whether there has been access to either the source code or the object code of the program. A licensee simply replicating functionality is, by itself, not sufficient for infringement.

Copyright owners may take some limited comfort from the court's comments on copyright in the manual. However, it will not be clear how this is to be applied until the English court gives its decision on those aspects of the case. In particular, the fact that SAS’s software was implementing a programming language (the underlying operation of which would necessarily be described in the manual to allow users to understand the language in order to write their own scripts) may mean that SAS is afforded more protection in this regard than other types of software where such a detailed description is not included in the manual.

Software developers should consider whether other forms of intellectual property could apply to their software. For example in some circumstances patent protection could be available.

Facts

SAS Institute is a developer of software which enables users to carry out a wide range of data processing and analytical tasks and, in particular, statistical analysis. The core component of the SAS System enables users to write and run their own application programs, using a language proprietary to the SAS System (the ‘SAS Language’) in order to tailor the SAS System to work with their own data. WPL perceived that there was a market demand for alternative software capable of executing application programs written in the SAS Language, and produced the 'World Programming System' (‘WPS’), designed to enable users of the SAS System to run the scripts which they have developed for use with the SAS System on WPS. To write WPS, WPL purchased a licence to the SAS System, which included the SAS manual and systematically used and observed the software in order to replicate its functionality. At no time did WPS have access to the source code of the SAS software components, either directly or through decompilation.

SAS sued WPL for infringement of copyright: (1) in the manuals to the SAS System (both through writing the WPS code and also by writing the WPS manual); and (2) in the source code of the SAS System by WPL indirectly copying the SAS components by reference to the SAS manual. SAS also claimed that by making such use of its program during development of the WPS, WPL had breached the terms of its licence.

Questions Referred

The English court (Arnold J) referred a detailed set of questions to the ECJ on the interpretation of Directive 91/250/EEC on the legal protection of computer programs (the Software Directive) and the extent of the copyright protection, raising whether different elements of a program including its underlying functionality and a programming language or data file format that it implemented, could attract copyright protection. The questions also covered whether the use WPL made of the SAS software was a breach of the terms of the licence, or whether it fell under the permitted acts in Article 5(3) of the Software Directive.

Copyright in the code – not the functionality

The CJEU (following the decision of Advocate General Bott) responded by examining what constituted the form of expression of the computer program, as only the expression would be protected by copyright. Reiterating Case C-393/09 Bezpečnostni softwarová asociace (decided by the CJEU after this case was referred) the court confirmed that the source and object code of a computer program are forms of expression which are protected by copyright.

However, the CJEU went on to say that neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit certain of its functions constitutes a form of expression of that program which can attract copyright. They adopted the wording of Advocate General Bott that "to accept the functionality of a computer program can be protected by copyright would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development". The CJEU emphasised that one of the advantages (in terms of access to new developments) of using copyright to protect computer programs was that the protection only covered the individual expression of the work, leaving others with the option to create similar or even identical programs, provided that they refrain from copying.

However, the CJEU did say that there was a possibility that the SAS language and the format of SAS Institute's data files might be protected, as works in their own right, by copyright under Directive 2001/29/EC (the Information Society Directive) if they are their author's own intellectual creation.

Scope of the licence

In dealing with the licence questions, the court found that a licensee of a program is entitled under Article 5(3) of the Software Directive to use the program to determine the ideas and principles which underlie any element of it, and Article 9(1) made any contractual provisions seeking to exclude the permitted acts null and void. In other words, a licensee is entitled to determine the ideas and principles which underlie any element of the computer program if he does so while performing any of the acts of loading, displaying, running, transmitting or storing that program which he is entitled to do.

Infringement of the program manual

Lastly, the court turned to the question of whether copyright in the user manual could be infringed by reproducing certain elements of the manual, either in the new software itself or in an accompanying manual for the new software.

There was no doubt that the SAS manual was a literary work protected by copyright, and that parts of it would be protected if it "contained elements which are the expression of the intellectual creation of the author" (following Case C-5/08 Infopaq International). The court did not accept though that “keywords, syntax, commands and combinations of commands, options, defaults and iterations consist of words, figures or mathematical concepts” which, considered in isolation, could be an intellectual creation of the author of the computer program. Copyright could only be found in the choice, sequence and combinations of these things and it would be for the national court to determine whether it existed. However, subsistence of copyright, once established, could be infringed by reproduction either in another manual, or in a "new" computer program.