Software copyright questions referred to European Court of Justice

26 July 2010

Graham Smith

In SAS Institute Inc. v World Programming Ltd, delivered on 23 July 2010, English High Court judge Mr Justice Arnold has referred to the European Court of Justice half a dozen questions that probe the fundamental scope of copyright protection for computer software under the EU Software Directive.

The questions will address issues such as whether programming languages, interfaces and functional aspects of software are completely excluded from copyright protection as constituting ideas and principles (Arnold J's preferred view), or are excluded only insofar as they do so; and the extent of the exclusion from copyright infringement for acts of observation, study and testing of a computer program.

Arnold J also considered that SAS' proprietary data file formats were interfaces and therefore (on his preferred interpretation of the EU Software Directive) not protectable by copyright.

SAS Institute developed and markets software enabling users to carry out a wide range of analytical and statistical tasks. The SAS software comprises a suite of components. Users are able to create applications that will run with the components by writing scripts in SAS' proprietary language, SAS Language.

WPL set out to write software (WPS) capable of running user applications written in SAS Language. It did this by studying the published SAS Manuals and the response of SAS Learning Edition to a large number of programs written in SAS Language. WPL developers had not had any access to SAS source code, nor had they copied the text of any SAS source code, nor had they copied any of the structural design of the SAS source code, nor had they decompiled SAS object code. However the WPS software did reproduce elements of the SAS Language such as keywords (words and symbols reserved to the SAS Language) and was able to read and write SAS data file formats.

SAS alleged that WPL had infringed copyright in the following ways:

  1. WPL had copied the SAS Manuals when creating WPS and thereby had infringed copyright in the Manuals.

  2. By copying the SAS Manuals when creating WPS, WPL had indirectly copied the SAS programs and infringed copyright in the SAS programs.

  3. By its use of SAS Learning Edition WPL had contravened the terms of its licence and had thus breached contract and infringed copyright in the Learning Edition.

  4. In creating its own manuals and quick reference guides WPL had infringed copyright in the SAS Manuals.

On the second claim, left to himself Arnold J would have followed Navitaire v Easyjet and Nova v Mazooma and found that there was no infringement of copyright in a computer program by copying functionality.

On the first claim, he would have applied similar reasoning to the protection of the Manuals as non-computer programs under the Copyright in the Information Society Directive.

On the third, he would have found that WPL were protected by the Software Directive's provisions permitting study of the functioning of a computer program in order to determine the ideas and principles underlying it.

However, on all three of these claims he decided that questions of interpretation of the Software Directive should be referred to the European Court of Justice.

The fourth claim, since it concerned direct copying from one document to another, was a relatively straightforward question of ordinary UK copyright law on which Mr Justice Arnold found in favour of SAS in respect of the manuals, but not the quick reference guides.

The WPS quick reference guides, which reproduced lists of keywords from the SAS Manuals, did not infringe – either because the original compilation of keywords formed part of the SAS System and thus the SAS Manual was not in that respect an original copyright work; or because on the facts the list of keywords grew by accretion and was not the intellectual creation of an author or group of authors. Alternatively the use of the keyword lists in the WPS Guides would, had there been sufficient acknowledgment of the SAS Manuals as source, have been protected as fair dealing for the purpose of criticism or review, since its purpose was to compare the functions supported by WPS with those available in the SAS system.

While the precise questions to referred to the ECJ are yet to be formulated, they will cover these points:

  1. Recital (14) of the Software Directive says that "to the extent that ... programming languages comprise ideas and principles, those ideas and principles are not protected under this Directive". In Navitaire Pumfrey J interpreted that as meaning that programming languages were not protected at all. In this case counsel for SAS argued that it did not exclude protection for the expression of programming languages. Arnold J, while not persuaded that Pumfrey was wrong on the point, agreed that guidance from the ECJ was required.

  2. Similarly Recital (13) and Article 1(2) of the Software Directive exclude protection for "ideas and principles which underlie any aspect of a computer program, including those which underlie its interfaces". Pumfrey J in Navitaire interpreted this as meaning that interfaces were not protected in situations not covered by the decompilation provisions of the Directive. Arnold J, while again not persuaded that Pumfrey was wrong on the point, agreed that guidance from the ECJ was required.

  3. Pumfrey J in Navitaire and the Court of Appeal in Nova had held that on the true interpretation of Article 1(2) of the Software Directive copyright in computer programs does not protect the functions of the programs from being copied. SAS argued that this was incorrect, particular having regard to the inclusion of preparatory design material within the definition of Article 1. Arnold J's view was that there is a distinction between the design of a program (its structure, sequence and organisation) and its functionality, the former being protected and the latter not. However the point should be referred to the ECJ.

  4. SAS argued that even if Navitaire and Nova were correctly decided, they applied only to computer programs. SAS claimed that WPL had reproduced substantial parts of the Manuals in the WPS source code. The Manuals were ordinary literary works and the normal rules of infringement should apply, unaffected by the Software Directive.

    Arnold J's view was that it is not an infringement of copyright in a manual describing a computer program's functions to use the manual as a specification of the functions that are to be replicated and, to that extent, to reproduce the manual in the source code of the new program. Functions were on the wrong side of the idea/expression dichotomy expressed in the Software Directive, TRIPS and the WIPO Copyright Treaty. The Information Society Directive applied to non-computer programs and should be interpreted in the same way as the Software Directive. However the point should be referred to the ECJ.

  5. As to the use of SAS Learning Edition, Article 5(3) of the Software Directive provides "The person having a right to use a copy of a computer program shall 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."

    SAS argued that this is a 'for avoidance of doubt' provision which simply confirms that the acts of observation, study and testing are not infringements provided that the user is licensed to use the program in the manner in question. WPL argued that that provided the user was doing the kind of acts of loading, displaying, running, transmitting or storing that he was entitled to do under the licence, then he could not be prevented from doing those acts for the enumerated purposes of observation etc. Arnold J's provisional view favoured WPL, but the point was difficult and should be referred to the ECJ, as should the question whether "ideas and principles" has the same meaning as in Article 1(2) of the Directive.

Apart from the questions referred to the ECJ the case is of interest for its treatment of data file formats. On the facts SAS was not able to show that the data file formats were present in their own source code, as opposed to being capable of generated by it. "There is no evidence that the SAS source code sets out the SAS7BDAT format, as opposed to reading and writing files in that format." And on the WPL side "It is common ground that WPS is able to read and write files in SAS7BDAT format ... . For the reasons given above, I conclude that this in itself does not constitute an infringement of the copyrights in the SAS Components."

Of more general significance, however, Arnold J considered that the data file formats constituted interfaces and so were not protectable: "As for the SAS data file formats, I agree that these are interfaces. These are precisely the kind of information which is required by third parties in order to access data stored in those formats for the purposes of interoperability."

The judgment runs to 112 pages and is replete with examination of the minutiae of the travaux preparatoires of the Software Directive, its relationship to TRIPS and the WIPO Copyright Treaty, and the question whether the idea/expression dichotomy is now part of copyright law as applied to computer programs (yes).

A software engineer (or a lawyer for that matter) could be forgiven for thinking that software copyright shouldn't be this difficult. Indeed the founder of WPL looked at it rather more simply: " ... he believed as a result of his experience in the industry, and in particular his time at IBM, that there would be nothing unlawful in creating such software provided that WPL did not copy the source code of the SAS System." Whilst that remains an over-simplification, if the ECJ supports the view of the English courts it will be closer to the truth than ever.