First published in the January/February 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.
The Court of Appeal has dismissed an appeal against the High Court’s application of a European Court of Justice (ECJ) ruling on the protection given to computer software and other aspects of the Software Directive (91/250/EEC) (the Directive).
The expression in any form of a computer program is protected by the Directive, but ideas and principles which underlie any element of a computer program, including its interfaces, are not (Article 1(2), the Directive (now codified by Directive 2009/24/EC)).
A person that has a right to use a copy of a computer program is entitled, without the authorisation of the rights holder, to observe, study or test the functioning of the program in order to determine the ideas and principles that 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 5(3), the Directive) (Article 5(3)). Contractual provisions contrary to the exception in Article 5(3) are void (Article 9, the Directive).
S had developed analytical software (the SAS system) consisting of various components (the SAS components), written in a language known as the SAS language. W created a software product called World Programming System (WPS) to execute application programs written in the SAS language. In developing WPS, W sought to emulate closely much of the functionality of the SAS components, but did not have any access to its source codes. Instead, W used various SAS system manuals, and observed a “Learning Edition” (LE) product sold to teach users how to use the SAS system.
S claimed that W had infringed the copyright in the manuals for its software and, indirectly, in the software itself. S also argued that W infringed the copyright in the SAS manuals by creating a manual for its own program (the WPS manual) (the manual to manual claim). In addition, SAS alleged that in observing, studying and testing its LE software to create WPS, W had acted contrary to the terms of the LE licence.
In July 2010, the High Court referred a number of questions to the ECJ (www.practicallaw.com/0-503-1591). Following the ECJ ruling, the case returned to the High Court, which dismissed all of S’s claims except the manual to manual claim (see News brief “Copyright and computer software: still no protection for functionality”, www.practicallaw.com/0-519-6247; www.practicallaw.com/8-524-3749).
S appealed. It was agreed that, following the ECJ’s decision, neither the SAS language nor the functionality of the SAS system was protected by copyright under the Directive.
The court dismissed the appeal, although it disagreed with some of the High Court’s reasoning. The court held that:
- What was protected was the form of expression of an intellectual creation (not the intellectual creation itself). The functionality of a computer program did not count as a form of expression.
- W would only have infringed copyright in the SAS manual if W had copied the expression of the intellectual creation of the author of the SAS manual. The intellectual creation of the author of a different work such as the SAS software was not relevant. The underlying idea namely the functionality of the SAS software) was not protected by copyright. .as it was not a form of expression at all. Since W did not have access to the SAS source code, S could not try to obtain protection in the functionality of the SAS software by claiming copyright in the SAS manual, which merely explained and detailed that functionality and did not contain the SAS source code. Therefore, there was no copying of the SAS manual’s author’s expression of the intellectual creation in W’s software program.
- Where W used the SAS manual to ascertain the functionality of the SAS software (which was not protected by copyright), and that functionality was then explained in the WPS manual without any direct reproduction of the SAS manual, there was no copyright infringement of the SAS manual.
- W did not infringe the copyright in the LE program by testing the LE software in order to understand its functionality more fully. Since W was a licensee of the LE program, under Article 5(3) of the Directive, W was entitled to use the LE program in the manner that it did, despite such use being outside the terms of the LE licence. Once W was permitted to do certain acts under the LE licence, W was entitled under Article 5(3) to do those acts for the purpose of observing, studying or testing the functioning of the program in order to determine the ideas and principles that underlay any element of the program.
The decision confirms that it is not an infringement of the copyright in a computer program to reproduce its functionality without copying its source code. In the court’s view, the ECJ has clarified that what is protected is the form of expression of an intellectual creation, rather than the intellectual creation itself, and this means that the functionality of a computer program does not count as a form of expression of an intellectual creation. The decision is also interesting in relation to the contractual analysis of the terms of the licence to use the LE program.
Case: SAS Institute Inc v World Programming Ltd  EWCA Civ 1482.