Background

In brief, World Programming Ltd (WPL) was a competitor of SAS Institute Inc. (SAS Institute). WPL developed a software product enabling users to run application programs using SAS language, thereby bypassing the need for users to license various SAS system components. SAS alleged infringement of copyright in computer programs and manuals relating to its computer database system.

SAS brought an action before the referring court, seeking to establish that WPL had infringed their copyright in its computer programs. In doing so, SAS challenged the approach seen in two separate decisions in UK courts (Navitaire Inc v EasyJet Airline Co Ltd (No3) (2004) EWHC, and Nova Productions Ltd v Mazooma Games Ltd (2007) EWCA), which ruled that it is not an infringement of the copyright in the source code of a computer program for a rival to look at the program functions and then write its own program to emulate that functionality or look and feel.

The High Court of Justice referred a number of questions to the CJEU for a preliminary ruling to clarify the scope of legal protection conferred by EU law, in particular Directive 91/250/EEC on computer programs (the Directive).

A discussion of the questions referred and the Attorney General’s opinion, given in November 2011 ("Can You Copy Software without Infringement?"), can be found here.

Summarising the questions, the CJEU has ruled as follows:

Functionality of a computer program

The Directive was intended to protect the forms of expression of a computer program and any preparatory design work capable of leading to reproduction or creation of the program. ‘Forms of expression’ included source code and object code, but not the functionality of a computer program, its programming language or the format of data files used to exploit certain functions. Allowing a computer program’s functionality to be protected by copyright would effectively make it possible to monopolise ideas, which were specifically excluded from copyright protection under Article 1(2) of the Directive.

Definition of the scope of the exception pursuant to Article 5(3) of the Directive

Article 5(3) of the Directive clearly permitted a licensee to observe, study or test the functioning of a program in order to determine the ideas and principles underlying any element of it. This could not be prohibited by contract. WPL had legally acquired a licence and had not had access to the source code (i.e. there was no decompilation), and its actions did not extend outside the scope of the purpose permitted by that licence. Any information obtained via decompilation could not be used for the development, production or marketing of a computer program ‘substantially similar in its expression’, or for any other act that infringed copyright in it. Therefore as long as there was no infringement of SAS Institute’s exclusive rights in the program, WPL’s acts were permissible.

Protection for the user manual of a computer program under Article 2(a) of Directive 2001/29

SAS Institute’s user manual constituted a protected literary work. Following Infopaq Case C-5/08, copyright would subsist in elements of the work that were the ‘expression of the intellectual creation of the author’. The constituents of programming language (e.g. words, figures and mathematical concepts) could not be considered ‘intellectual creation’, but the choice, sequence and combination of them could. The CJEU left the decision as to whether WPL’s reproduction of those elements amounted to reproduction of expression of the SAS Institute’s intellectual creation to the national court.

Comment

The CJEU’s decision does not differ substantively from the Attorney General’s opinion and, at least from a UK perspective, broadly follows the rationale of decisions such as Navitaire and Mazooma (see above). It should be noted, however, that despite the exclusion of programming language or format of data files from ‘forms of expression’, reproduction of part or all of a copyright work containing these may still amount to infringement. This will depend on the national court’s decision in the matter.