The AG recommends that copying functionality without the code is unobjectionable
Advocate General Bot has issued his opinion
regarding the scope of protection conferred by copyright on
computer programs in Case C-406/10 SAS Institute Inc v World
Programming Ltd, a referral from the English High Court.
The key question was whether it is an infringement of the copyright
in a computer program to create another computer program that
replicates its functionality, but without accessing the source
code.
The AG's opinion was as follows:
1. Is the functionality of a computer program and the programming
language protected by copyright?
No. The functionalities of a computer program are similar to ideas
and therefore cannot be protected by copyright. Programming
language cannot be protected separately as it is something that
permits expression rather than the expression itself.
2. Is an act of decompilation to achieve interoperability
allowed?
Yes – a holder of a licence may reproduce the program
code for the purpose of writing a source code but only if that
reproduction is indispensible to obtain the necessary information
and does not allow the licensee to recopy the code of the program
in his own program.
3. What is the definition of the scope of the exception to the
extent that a user is authorised to load or run a computer program
(Article 5 (3) of the Directive)?
The user was able to observe, study or test the computer program so
long as this did not enable the user to access information
protected by copyright, such as the source code or object
code.
4. Is there protection for the user manual of a computer
program?
Potentially – if the elements to the manual are an
expression of their author's creation and reproduced in a
computer program, this may constitute an infringement of
copyright.
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Full Article
The AG recommends that copying functionality without the code is unobjectionable
Background
SAS Institute Inc. ("SAS") developed analytical
software (the "SAS System") that is an integrated set of
programs that enables users to carry out data processing and
analysis tasks. A core component of the SAS System is known as the
Base SAS. Users can write and run application programs to
manipulate data and such applications are written in a language
known as SAS language. The language can be extended through the use
of additional components. To use the necessary components to run
their SAS language application programs, customers have to acquire
a licence, and to change a software supplier means rewriting
existing applications in a different language, something that
requires considerable investment.
World Programming Limited ("WPL") saw a market for
alternative software to improve the functionality of the SAS
system, enabling users to run application programs written in SAS
language and so created the World Programming System (the "WPL
System"). WPL did not hide the fact that they wanted the
application programs to perform in the same way on the WPL System
as on the SAS components.
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.
Clarification
The questions were essentially, as follows:
'...Whether the functionality of a computer program and the
programming language are protected by copyright under Article 1 (2)
of Directive 91/250. That provision stipulates that such protection
is to apply to the expression in any form of a computer program and
points out that ideas and principles which underlie any element of
a computer program are not protected under that
directive'.
'...Whether a ruling on Articles 1 (2) and 6 of Directive
91/250 are to be interpreted as meaning that it is not regarded as
an act subject to authorisation for a licensee to reproduce a code
or to translate the form of the code of a data file format so as to
be able to write, in his own computer program, a source code which
reads and writes that file format.'
'...[What is the definition of] the scope of the exception to
the author's exclusive copyright in a computer program,
provided for in Article 5 (3) of Directive 91/250, which states
that a person having a right to use a copy of a computer program is
to be entitled, without the authorisation of the rightholder, 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.'
'[What is]... the scope of the protection provided for in
Article 2(a) of Directive 2001/29, which grants authors 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. More specifically, the
question is whether the reproduction, in a computer program or a
user manual, of certain elements described in the user manual for
another computer program constitutes, under that provision, an
infringement of the copyright in the latter manual.'
The AG's Opinion
Functionality of a computer program
The AG defined this as 'the set of possibilities offered by
a computer system', i.e. the service which the user expects
from it. AG Bot is clear from the outset that functionalities of a
program cannot as such be protected from copyright under Article 1
(1) of Directive 91/250. They are in fact dictated by a specific
and limited purpose (he uses the example of a program developed for
airline ticket reservations), thus making them similar to an idea.
Therefore if it was legitimate for the functions of a computer
program to be protected by copyright, it would mean it was possible
to monopolise ideas.
However, he points out that the means of achieving the concrete
expression of those functionalities may be eligible for copyright
protection under the Directive. The way the elements of a program
are arranged are likely to reflect the author's own
intellectual creation and may therefore be protected. He concluded
on this point that it will be for the national courts to decide
whether WPL reproduced a substantial part of the elements of the
SAS System, in reproducing the functionalities of the SAS System in
its own computer program.
Programming language
The AG's opinion on the language of the program was that it
is a 'functional element which allows instructions to be given
to the computer'. It is made up of words known to everyone
– therefore lacking in originality. Therefore it is
comparable to the language seen in a novel, making it the means
which permits the expression rather than the expression itself, and
cannot be eligible for copyright protection under the
Directive.
Act of decompilation to achieve interoperability
The AG came down in favour of interoperability. He described it
as the 'ability to exchange information and mutually to use
that information between elements of different computer
programs.'
In his opinion, WPL was allowed to reproduce the SAS code, or
translate the SAS data formatting code into its program to ensure
interoperability between the SAS system and its own system. The AG
concluded that the holder of a licence to use a computer program
may, reproduce the program code or translate the form of the code
to write a source code, without the authorisation of the author.
This is subject to two conditions: that the act must be
indispensible in order to obtain information and it must not allow
the licensee to recopy the code of the program (something for the
national courts to decide).
Definition of the scope of the exception pursuant to Article 5 (3) of the Directive
Article 5 (3) when read in conjunction with Articles 4 (a) and
(b) and 5 (1) is to be interpreted as meaning that the expression
of 'any of the acts of loading, displaying, running,
transmitting or storing the computer program' which the person
having the right is entitled to do, relates to the acts for which
that person has obtained authorisation from the rightholder. The
'acts of observing, studying or testing the functioning of a
computer program' under Article 5 (3) must not have the effect
of enabling the person having a right to use a copy of the program
to access information which is protected by copyright, such as the
source or object code.
Protection for the user manual of a computer program under Article 2 (a) of the Directive
The AG states that if certain elements described in a manual for a
computer program are reproduced in a computer program or user
manual for another, this may constitute infringement of copyright
in the first manual, providing the elements are the expression of
their author's own creation, which is again, something for the
national courts to decide on.
Comment
This is a very important software copyright case and is relevant to authors of computer programs, and potentially any licensors or users of computer programs in Europe. The AG has made it clear that at least in his view, copying the functionality or the language of a computer program, does not constitute copyright infringement. If the opinion is followed by a full decision of the ECJ, the ability of owners of computer software to prevent the functionality of their programs being replicated will be further limited. Other means of protecting their software rights will also have to be considered. As the AG is also in favour of interoperability, computer program developers may need to amend their terms of use to give themselves maximum protection.
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 12/12/2011.
