Background
High Court decision
ECJ decision
Referral back to the High Court
Comment


In what should be the final instalment in a long-running case, on January 25 2013 a decision was issued in SAS Institute Inc v World Programming Ltd(1) following the referral back to the High Court from the European Court of Justice (ECJ) (for further details please see "No copyright protection for computer program functionality"). The judge endorsed his initial judgment, which he felt had been supported by the ECJ. He rejected the majority of the claimant's claims of copyright infringement, holding that World Programming Ltd (WPL) had infringed copyright in one instance only in relation to the use of SAS user manuals in creating WPL user manuals.

Background

SAS is the developer and owner of a longstanding set of integrated programs that enable users to perform analysis and processing, particularly statistical analysis. The main element of the SAS system is Base SAS, which allows users to write and run their own programs so that they can use the SAS system with their own data inputs. The user programs need to be written in SAS's proprietary computer language to function. SAS customers have thus had no alternative but to license the SAS system to run their existing SAS language application programs, or in order to create new ones. If a customer wanted to switch to another supplier's software, it would need to replace all of its existing applications.

WPL is a competitor to SAS that developed a rival system by studying a 'learning edition' of the SAS system and consulting an SAS user manual. The WPL system recreated, as closely as possible, the functionality of the SAS system so that the same inputs into the SAS system and the WPL system would create the same outputs. This enabled users of the SAS system to run their own application programs on the WPL system with little or no change in functionality. As a result, users were free to discontinue their licences for the SAS system without the onerous task of replacing all of their programs in non-SAS computer language.

SAS brought a claim against WPL, alleging copyright infringement of both the functionality of its system and its user manuals.

High Court decision

The case was heard at first instance in the High Court by Justice Arnold, who handed down his initial judgment in July 2010.

Before the High Court, WPL freely admitted that the response of the WPL system was intended to be, and was, identical to the response of the SAS system. The parties also agreed that WPL had not had access to the SAS source code, nor had it copied any of the text or the structural design of SAS's source code, when developing the WPL system.

The judge recognised that previous English decisions (Navitaire v easyJet(2) and Nova v Mazooma(3)) had held that it is not an infringement of copyright in the source code of a computer program for a developer to study how the system works and to then reproduce the functionality of the original program (provided that the source code or object code has not been copied). The judge also recognised that this previous case law suggested that there is no copyright in the functionality of a program or in the programming language or data file formats used in that program.

SAS separately argued that WPL was also in breach of the licence agreement that it had taken out to use the learning edition of the SAS system, because it had used this edition for purposes outside the scope of the licence.

SAS also contended that WPL had infringed the copyright in its user manuals, both in designing the software itself and in creating its own user manuals.

The judge decided one aspect definitively: that there had been literal copying of the user manuals by WPL in the preparation of its own user manuals. Regarding the other issues, the judge provisionally followed Navitaire and Nova and found that WPL had not infringed the IP rights in the software applications of SAS when it emulated the functionality of the SAS system in creating the WPL system. However, he considered that certain issues of European law were not acte clair (ie, reasonably obvious, so that referral would be superfluous). As a result, the judge stayed the case and referred multiple questions to the ECJ in July 2010.

ECJ decision

The ECJ decision was issued on May 2 2012. In the main, the decision followed the recommendations of the attorney general that had been made in November 2011.

In summary, the ECJ made the following findings:

  • The functionality of a computer program, including the programming language and the format of data files, constitutes the overarching ideas behind a program, rather than forms of expression of that program, and so are not protected by copyright.
  • A person who uses a computer program in accordance with a licence is entitled, without the authorisation of the copyright owner, to observe, study or test the program functions to determine the underlying ideas and principles of that program.
  • Computer manuals (or parts of them) will be protected by copyright to the extent that they are, in themselves, the expression of the intellectual creation of the author. In this case, although keywords, syntax and commands were insufficient on their own to be protected by copyright, their choice, sequence and combination could amount to an intellectual creation and be protected as a literary work. It was left for the English court to decide whether a substantial part of those elements had been reproduced and copyright had thus been infringed.

Referral back to the High Court

The case was then referred back to the High Court, where the judge was required to apply the responses of the ECJ to the facts of the case and decide whether WPL had infringed SAS's copyright. His decision was consistent with the first instance decision: WPL had not infringed copyright in the SAS system, except in relation to the SAS manuals.

The judge felt that the ECJ decision was an endorsement of the English courts' previous interpretation of Article 1(2) of the EU Software Directive; that is, copyright in a computer program does not protect the programming language in which it is written, its interfaces (such as data file formats) or its functionality from being copied. Some of the pertinent points are set out below.

Programming language
In considering the question of originality of a programming language, the judge used the 'intellectual creation' test, rather than the 'skill, labour and judgement' test, which implies that this test – which had previously been applied only to computer programs, databases and photographs – may now apply to all works.

But he also went further in saying that even if a programming language could be an intellectual creation, that did not mean that it would necessarily be a copyright work. Some ECJ cases have seemed to suggest that any work which is its author's own intellectual creation should be a copyright work; the High Court judge's decision seems to provide that this requirement is not of itself sufficient in the United Kingdom.

Functionality of the computer program
The judge interpreted the ECJ responses to his questions as meaning that the functionality of a computer program does not constitute a form of expression of that program and is therefore not protected by copyright.

It also followed that reproducing functionality of a program could not contribute to the copying of a substantial part of that computer program; there can be a reproduction of a substantial part only if the reproduction represents the expression of the intellectual creation of the author of the program (ie, that the part reproduced is capable of copyright protection in and of itself).

User manuals
In line with his first instance decision, the High Court judge held that WPL had copied a substantial part of the SAS user manual when it created its own user manual, and so had infringed copyright in the SAS manual. While this may not be regarded as the central part of the dispute, SAS has preserved protection for at least some (albeit marginal) aspects of the SAS system, representing a very limited victory.

Notwithstanding this, WPL succeeded in defending the majority – and the most far-reaching – of SAS's claims. It is ultimately free to continue selling its competing WPL system.

Comment

The High Court decision is consistent with previous English decisions in Navitaire and Nova, which held that general ideas are not protected by copyright – it is only the expression of those ideas which can attract protection. It is also consistent with this previous English case law that recreating the functionality of a computer program does not in itself infringe copyright.

For the software industry as a whole, this final High Court judgment is likely to be welcomed as bringing certainty to the area of protecting computer programs with copyright. Those looking to develop and protect proprietary systems will need to look to other barriers to entry, both commercial and legal. Literal copying of object or source code (other than within the narrow exceptions) remains an infringement. Manuals and related materials may be protected by copyright, while brand, additional developments and 'value added' services may help promote or maintain customer loyalty. Asserting copyright over the outcomes of a program will not be available to them as a deterrent to competitors.

For the customer, the result should be a positive one. They should be offered more choice as a byproduct of the freedom of suppliers to compete with one another by creating programs with the same or similar functionalities. Developers will have the freedom to replicate certain functionalities without fear of reprisal under copyright law (provided that they do so within the bounds of permitted methods of observing, studying and testing the functionality of the original program).

For further information on this topic please contact David Cran or Ben Mark at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (david.cran@rpc.co.uk or ben.mark@rpc.co.uk).

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.

Endnotes

(1) [2013] EWHC 69 (Ch) (January 25 2013).

(2) Navitaire v easyJet [2004] EWHC 1725 (Ch).

(3) Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219.