No copyright in functionality of computer program confirmed
SAS INSTITUTE v WORLD PROGRAMMING (CA) [2013]
The Court of Appeal (CA) has confirmed that copyright in a computer program does not protect its programming language or its functionality from being reproduced. This decision reiterates that it will be difficult to establish infringement of copyright in software programs without evidence of copying of the underlying source code. The key issues in question were (1) the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and (2) the materials that he may lawfully use for that purpose.
Facts:
- SAS (S) and World Programming (W) were competitors and W developed a product (WPS) which sought to emulate much of the functionality of the components in S’ system (SAS Components) as closely as possible.
- The High Court (HC) first ruled on the case in 2010 (see our report in November 2010). It referred several questions to the European Court which gave its response in May 2012 (see our report in May 2012), which essentially confirmed the outcome of the HC’s original ruling. The case was then referred back to the HC in January 2013 for it to apply the law to the facts.
- SAS had alleged that:
- W had used its manuals (SAS Manuals) as a technical specification for WPS and copied a substantial part of those manuals in creating WPS - in so doing it had infringed the copyright in the SAS Manuals (Manual to Program Claim);
- W had infringed copyright in the SAS Components in creating WPS (Program to Program Claim);
- W had infringed the copyright in the SAS Manuals by reproducing a substantial part of them in W's own manual for WPS (Manual to Manual Claim); and
- W had used the SAS Learning Edition software outside the scope of its licence, including by checking that the operations of WPS precisely replicated those of S – in this manner it had infringed S' copyright in the SAS Learning Edition and acted in breach of contract (Learning Edition Claim).
- The HC dismissed all of S’ claims, except that it found limited breaches of copyright in relation to the Manual to Manual Claim. S was given permission to appeal on the Manual to Program Claim, the remainder of the Manual to Manual Claim and the Learning Edition Claim. It did not appeal against the dismissal of the Program to Program Claim as it was common ground that neither S’ computing language nor the functionality of S’ system was protected by copyright. This was because they were ideas rather than the expression of ideas, irrespective of the medium through which that functionality was expressed. This ‘theme’ resonated throughout the CA judgment.
Decision:
S’ appeals were dismissed by the CA. It found as follows:
- Manual to Program Claim
- The essence of this claim was that in writing WPS in a certain programming language (albeit different from that which S had used), W had copied the SAS Manuals. However, the SAS Manuals themselves did not contain any programming language but merely described the functions that the software was to perform. The CA stressed that it was the expression of the intellectual creation of the author of the manual that counted (ie not of the program to which the manual referred).
- No one doubted that copyright in the manuals subsisted but the CA went on to say that in creating WPS, W had not copied the form of expression of the intellectual creation of the authors of the manuals. This claim therefore failed as there had been no infringement of the copyright in the manuals themselves.
- Manual to Manual Claim
- The CA explained that if the Manual to Program Claim failed then so must the Manual to Manual Claim. Linguistic reproduction of the precise terms of the SAS Manuals was a different matter, however, and it was held that in some limited respects W had infringed the copyright in the SAS Manuals by copying the text.
- Learning Edition Claim
- W’s use of the SAS Learning Edition software was outside the scope of its licence. However, the terms of the licence which were breached were null and void to the extent that they prohibited observing, studying and testing the software to determine the principles and ideas which underpinned any element of the program (since this is permitted by the EU Software Directive and cannot be excluded by contract). The European Court had said, "It must therefore be held that the copyright in a computer program cannot be infringed where, as in the present case, the lawful acquirer of the licence did not have access to the source code of the computer program to which that licence relates, but merely studied, observed and tested that program in order to reproduce its functionality in a second program".
Points to note:
- This judgment is important because it clarifies some aspects of the European Court's earlier decision and reiterates the principle that copyright does not protect software functionality. Copyright does not protect ideas merely the precise way in which ideas are expressed otherwise described as ‘the expression of the author’s intellectual creation’. The functionality of a computer program is not a ‘form of expression’ at all.
- Software developers wishing to develop a program with equivalent functionality to an existing program will be able to do so provided they do not copy any object code, source code or documentation in the sense of literal, ‘word for word’ reproduction of anything more than individual words or phrases.
- Copyright therefore provides software developers with relatively limited protection. It remains to be seen what contractual protections, if any, software owners seek to employ in an attempt to minimise the impact of this judgment.