SAS: “Shake-and-Strain” : it's time for functionality again

"Shake-and -strain" -- the secret
of functionality of a good cocktail

Last week the IPKat posted a quick note ("Not much of an SOS for SAS", here) on a Court of Justice of the European ruling on copyright in the functionality of computer software. The Kat then commissioned a comment from copyright enthusiast Eleonora Rosati, whom some readers may recognise as one of the driving forces behind the copyright-oriented 1709 Blog. This is what Eleonora has to say about the ruling:

"SAS: “Shake-and-Strain” the scope of copyright protection?

On 2 May last, the CJEU published its decision in Case C-406/10 SAS Institute Inc v World Programming Ltd. It followed a reference from the High Court of Justice of England and Wales (Chancery Division), which had sought clarification – inter alia – as to whether the functionalities of a computer program (which were defined in AG Bot’s Opinion as “the set of possibilities offered by a computer system, the actions specific to that program”) are protected by copyright pursuant to Article 1(2) of the Software Directive.

In this respect, what was still controversial was, according to Arnold J, whether the functionalities of a computer program are to be regarded as the expression of a computer program (thus qualifying potentially for copyright protection pursuant to that directive), or whether, instead, they are just ideas and principles which underlie the elements of a computer program, including those which underlie its interfaces (thus remaining out of the scope of protection).

Both AG Bot and the CJEU agreed and held that “neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression of that program and, as such, are not protected by copyright in computer programs for the purposes of that directive”.

With a ‘trick’ similar to that recently employed also in Murphy (Joined Cases C-403/08 and C-429/08) with regard to sporting events, the Court added that such finding is not such as to prevent that copyright vests in some parts of SAS’s computer programs pursuant to the InfoSoc Directive, provided that those parts are their “author’s own intellectual creation”.

As the Court did not elaborate much on this, it may be useful to revert to the Opinion of AG Bot to see what EU judiciary seemed to have in mind in this respect. At paras 52 ff of his Opinion, AG Bot drew an interesting point of distinction between ‘non-creative’ and ‘creative’ functionalities, the latter being potentially subject to copyright protection. He acknowledged that “[t]o accept that a functionality of a computer program can be protected as such would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development”. However, when there are many means of achieving the concrete expression of such functionalities, found the AG, those means may be be eligible for copyright protection under the Software Directive.

Bot also found that reproducing a substantial part of the expression of the functionalities of a computer program may constitute an infringement of copyright. As to the test for establishing infringement, the Advocate General excluded that this ought to rely on the nature and extent of a functionality of a computer program reproduced in another computer program, or the level of detail to which that functionality has been reproduced, or the nature and extent of the skill, judgment and labour expended in devising the functionality of a computer program. This is because copyright protection does not arise on account of the time and work devoted to devising the program nor of the level of skill of its author but of the degree of originality of its writing. However, when it came to envisaging the actual test for infringement, AG Bot went astray in his application of the Infopaq test (Case C-5/08), and held that “it will be for the national court to examine whether, in reproducing the functionalities of the SAS components, WPL reproduced, in its WPL System, a substantial part of the elements of those components which are the expression of the intellectual creation of the author of those components.”

The Opinion of AG Bot and the decision of the CJEU (which largely confirmed it) call for further reflection under three different angles, with regard copyright protection for computer functionalities.

The first one may be perhaps the least problematic. The position of AG Bot paves the way to a distinction between the parts of the program and the program as a whole. Such distinction, as was made clear in Infopaq, is to be found neither in the InfoSoc Directive nor in any other relevant copyright directive (cf par 38 of Infopaq: “As regards the parts of a work, it should be borne in mind that there is nothing in Directive 2001/29 or any other relevant directive indicating that those parts are to be treated any differently from the work as a whole. It follows that they are protected by copyright since, as such, they share the originality of the whole work”). Albeit it is true that some functionalities – like single words in newspaper articles – cannot, as such, be considered as an intellectual creation of the author of the program, it is not disputed that it is through the choice, sequence and combination of those elements that the author may express his creativity in an original manner and thus achieve a result which is an intellectual creation.

This leads to the second point. By distinguishing between protectable and non-protectable functionalities, it is arguable that test for copyright protection shall now focus on the functionality per se, rather than the way this is combined to other elements of the program. This has the potential to expand the scope of copyright protection, even contrary to the text and legislative history of the Software Directive.

The final angle under which SAS may be looked at is the peculiar test for infringement which AG Bot envisaged therein. Neither the Software Directive nor the InfoSoc Directive contain references to “substantial part”. Au contraire, the Infopaq decision adopted a test for copyright protection (and so infringement) which is to be based on quality rather than quantity".

Thanks so much, Eleonora, for this analytic elucidation!

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