UK: Copyright Protection For Functionality Of A Computer Program? The CJEU Rules In The Clone Wars

SAS Institute Inc v World Programming Ltd, Case C-406/10, 2 May 2012

In a ruling which is not surprising, the CJEU has confirmed that neither the functionality of a computer program, its programming language nor the format of its data files are protected by copyright under Article 1(2) of the Software Directive. However, the CJEU makes clear that the reproduction of certain elements described in a user manual relating to a program is capable of constituting infringement where the reproduction constitutes the expression of the intellectual creation of the author of the user manual.

SAS Institute Inc. ("SAS Institute") developed analytical software known as SAS (the "SAS System"), an integrated set of programs which enable users to carry out data processing and analysis tasks, including statistical analysis. The core component of the SAS System, Base SAS, enables users to write and run application programs to manipulate data. Such applications are written in a language known as SAS Language. The functionality of Base SAS could be extended by the use of additional components, three of which were relevant to the main proceedings (SAS/ACCESS, SAS/GRAPH and SAS/STAT, referred to together with Base SAS as 'the SAS components').

World Programming Limited ("WPL") created an alternative computer program, the World Programming System (the "WPL System"), which enabled users to run application programs written in SAS language. WPL's intention was to emulate much of the functionality of the SAS components as closely as possible, but WPL did not have access to the claimant's source codes. WPL wanted its customers' application programs to run in the same way on the WPL System as on the SAS components.

SAS Institute sought an order that WPL's actions represented an infringement of its copyright in its computer programs. The English court has previously ruled that it was not an infringement of the copyright in the source code of a computer program for a competitor of the right owner to study how the program functions and then to write its own program to emulate that functionality. (See Navitaire Inc v Easyjet Airline Company (1) and Bulletproof Inc (2) [2004] EWHC 1725 (Ch), 30 July 2004.)

However, SAS Institute challenged that approach and claimed that WPL:

• copied the manuals for the SAS System (the "SAS Manuals") published by SAS Institute when creating the WPL System, thereby infringing copyright in the SAS Manuals;
• in so doing, indirectly copied the computer programs comprising the SAS components, thereby infringing copyright in those components; and
• infringed the copyright in the SAS Manuals by creating its own manual ('the WPL Manual').

The High Court referred a number of questions to the CJEU concerning interpretation of Article 1(2) and Article 5(3) of the Software Directive (91/250/EEC) and Article 2(a) of the Information Society Directive (2001/29/EC).

Article 1(2) Software Directive provides that "Protection in accordance with this [Software] Directive shall apply to the expression in any form of a computer program. Ideas and principles which underlie any element of a computer program, including those which underlie its interfaces, are not protected by copyright under this Directive".

Article 5(3) Software Directive provides that "The person having a right to use a copy of a computer program shall be entitled, without the authorisation of the right holder, to observe, study or test the functioning of the program in order to determine the ideas and principles which underlie any element of the program if he does so while performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do".

Article 2(a) Information Society Directive provides that "Member States are to provide authors with the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part, of their works".

In summary, the High Court's referred questions asked (i) [concerning Article 1(2)] ..whether the functionality of a computer program, its programming language and the format of data files used in it to exploit certain of its functions, constituted a form of expression of the program and may be protected by copyright; (ii) [concerning Article 5(3)] ..whether a person who obtained a copy of a computer program under licence may observe, study or test its functioning to determine the ideas and principles underlying any element of the program without further authorisation from the copyright owner, where the person carries out acts covered by the licence but with a purpose going beyond that set out in the licence; and (iii) [concerning Article 2(a) of the Information Society Directive] ..whether reproduction (in a computer program or a user manual) of certain elements described in a user manual constituted infringement of copyright in the user manual. The CJEU has now ruled as follows:

• Article 1(2) of the Software Directive must be interpreted as meaning 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 constitute a form of expression of that program and, as such, are not protected by copyright in computer programs for the purposes of that directive; and
• Article 5(3) of the Software Directive must be interpreted as meaning that a person who has obtained a copy of a computer program under a licence is entitled, without the authorisation of the owner of the copyright, to observe, study or test the functioning of that program so as to determine the ideas and principles which underlie any element of the program, in the case where that person carries out acts covered by that licence and acts of loading and running necessary for the use of the computer program, and on condition that that person does not infringe the exclusive rights of the owner of the copyright in that program; and
• Article 2(a) of the Information Society Directive must be interpreted as meaning that the reproduction, in a computer program or a user manual for that program, of certain elements described in the user manual for another computer program protected by copyright is capable of constituting an infringement of the copyright in the latter manual if - this being a matter for the national court to ascertain - that reproduction constitutes the expression of the intellectual creation of the author of the user manual for the computer program protected by copyright.

The case will now return to the High Court for a ruling on how the CJEU's decision should apply in this case.

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