Advocate General says forget the functionality, look at the code

Advocate General Bot has this morning issued his opinion in Case C-406/10, SAS Institute Inc. v World Programming Ltd. In brief, he suggests that the Court of Justice (CJEU) should hold that under copyright law it is legitimate to copy a program’s functionality and/or a programming language, provided that in reproducing the functionality, the alleged infringer has not reproduced a substantial part of the elements of the original program which are the expression of the author’s own intellectual creation.

The background to the dispute is that SAS has an integrated suite of programs widely used for data processing and statistical analysis. Customers using this software have to write scripts in the SAS Language and must acquire a licence for all of the necessary components of the SAS system. World Programming Ltd (WPL) saw that there was a market for alternative software to emulate the functionality of the SAS system and to run customers’ programs using their data stored in the SAS format.

So the WPL program provided interoperability with the SAS software and provided the same functionality, but it was not suggested that they had access to or copied the source code. SAS took an action in the High Court of England and Wales alleging that WPL had infringed their copyright. Since much of their complaint was directed to copying of functionality and of the SAS language, rather than to straightforward coping of code, Mr Justice Arnold sought a preliminary ruling from the CJEU on the interpretation of the Computer Program Directive (Directives 91/250/EEC, and 2009/24/EC) and the Information Society Directive (Directive 2001/29/EC).

The questions referred, in synopsis

Mr Justice Arnold’s questions were set out in full by the IPKat here. There were nine questions, many of which were multi-part (giving 26 questions in total for the CJEU to decide). The A-G has summarised the questions in the following terms:

2.         In particular, the High Court […] asks, in substance, whether the functionalities 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.

3.         The Court is also asked to give a ruling on whether Articles1(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.

4.            Moreover, the referring court asks the Court to define 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.

5.         Finally, the Court is invited to consider 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.

A-G Bot's Opinion, also in synopsis

The Press Release summarises, with a liberal sprinkling of bold type, how the A-G tackled these questions as follows:

In his Opinion delivered today, Advocate General Bot recalls, as a preliminary point, that the protection conferred by Directive 91/250/EEC applies to the expression in any form of a computer program and not to the ideas and principles which underlie any element of a computer program. Thus, the Advocate General takes the view that the protection of a computer program covers the literal elements of that program, that is to say, the source code and the object code, and also any other element expressing the creativity of its author. [A footnote indicates that this includes preparatory design documents such as flowcharts.]

In the first place, with regard to the functionality of a computer program, the Advocate General defines it as the set of possibilities offered by a computer system – in other words, the service which the user expects from it.

Starting from that premiss [sic], the Advocate General considers that the functionalities of a computer program are not eligible, as such, for copyright protection. The functionalities of a computer program are in fact dictated by a specific and limited purpose. In this, they are similar to ideas. That is why there may be a number of computer programs offering the same functionalities. Thus, if it were accepted that a functionality of a computer program can be protected as such, that would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development.

By contrast, the means for achieving the concrete expression of the functionalities of a program may be protected by copyright. Creativity, skill and inventiveness are expressed in the way in which the program is drawn up, in its writing. Thus, the way in which formulae and algorithms are arranged [but not the formulae and algorithms themselves, the IPKat notes, which the A-G likened to the words used by an author] – like the style in which the computer program is written – will be likely to reflect the author’s own intellectual creation and therefore be eligible for protection

The Advocate General therefore takes the view that, as is the case with other works that may be protected by copyright, the fact of reproducing a substantial part of the expression of the functionalities of a computer program may constitute an infringement of copyright. In the present case, he concludes that the national court will have to consider whether, in reproducing the functionalities of the SAS System in its computer program, WPL reproduced a substantial part of the elements of the SAS System which are the expression of SAS Institute’s own intellectual creation.

Turning finally to the Advocate-General's Opinion, this concludes that the Court’s answer to Mr Justice Arnold’s questions should be in the following form:

(1)     Article 1(2) of Council Directive 91/250/EEC … is to be interpreted as meaning that the functionalities of a computer program and the programming language are not eligible, as such, for copyright protection. It will be for the national court to examine whether, in reproducing these functionalities in its computer program, the author of the program has reproduced a substantial part of the elements of the first program which are the expression of the author’s own intellectual creation.

(2)     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, provided that that act is absolutely indispensable for the purposes of obtaining the information necessary to achieve interoperability between the elements of different programs. That act must not have the effect of enabling the licensee to recopy the code of the computer program in his own program, a question which will be for the national court to determine.

(3)     Article 5(3) of Directive 91/250, read in conjunction with Articles 4(a) and (b) and 5(1) thereof, is to be interpreted as meaning that the expression ‘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 and to the acts of loading and running necessary in order to use the computer program in accordance with its intended purpose. Acts of observing, studying or testing the functioning of a computer program which are performed in accordance with that provision 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 code or the object code.

(4)     Article 2(a) of Directive 2001/29/EC … is to be interpreted as meaning that the reproduction, in a computer program or a user manual, of certain elements described in the manual for another computer program may constitute an infringement of the copyright in the latter manual if – a question which will be for the national court to determine – the elements reproduced in this way are the expression of their author’s own intellectual creation.

On first reading, the IPKat thinks the A-G has done a pretty good job of providing answers to a complex set of questions. It remains to be seen whether these answers (if followed by the Court of Justice) will provide sufficient detail for the dispute to be resolved in the High Court.