Software development: Europe's top court rules on software copyright

The Court of Justice of the European Union (CJEU) has delivered its ruling on the scope of copyright protection for computer programs. The CJEU has followed the recommendations of Advocate General Bot set out in his Opinion issued in November 2011 and confirmed that:

• There is no copyright in the functionality of a computer program or the programming language (which is consistent with previous UK decisions in Navitaire and Nova Productions). Any ruling to the contrary would hinder necessary innovation and competition.
  
  
• In addition to the source code and object code, there are other elements of a computer program which may be protected by copyright.  These include preparatory design materials if the nature of the materials is such that a developer would be able proceed to develop the source code or object code from them.  The choice, combination and sequence of keywords, syntax, commands and options might also be protected.
  
  

The ruling also clarifies the rights of software licensees to observe, study and test the licensed software to determine the ideas and principles that underlie the software.

Facts

To recap, SAS Institute, Inc. (SAS), a leading business analytical software developer brought a claim against World Programming Limited (WPL) for copyright infringement and breach of contract. WPL developed software capable of executing SAS applications. Previously, SAS customers were tied to licensing an SAS system in order to execute these applications. SAS acknowledged that WPL had not accessed or copied SAS source code to develop its software. Instead, WPL developers studied SAS manuals and a limited version of the SAS system called "Learning Edition" and used the information in these resources to replicate the functionality of the SAS system. Questions were referred from the UK High Court to the CJEU seeking clarification on the extent of copyright protection for computer programs.

The ruling

The ruling focused on three main areas:

1. The CJEU explored the expression/idea dichotomy and re-confirmed the principles laid down under the Software Directive (91/250/EEC) that copyright protects only the expression of an author's own intellectual creation in a computer program. Protection does not extend, however, to the ideas and principles which underlie any element of a computer program, including those which underlie its interfaces. The CJEU concluded that the functionality of a computer program and the programming language could not be regarded as the expression of a program and therefore did not qualify for copyright protection. A finding in the alternative would make it possible to monopolise ideas and that would stifle innovation and competition.

The CJEU went on to state that if a party used part of the source code or object code of another computer program to create similar elements in its own computer program, this would amount to infringement and could be prevented by the software proprietor.

2. The CJEU stated that software licensees, provided they observe the scope of the licence, are entitled to observe, study or test the functioning of the licensed software to determine the underlying ideas and principles of various elements of the program i.e. how it works and what it does. There can be no infringement where a legitimate licensee, who has not had access to the source code, simply studies observes and tests the program in order to reproduce the functionality in its own program. Contractual provisions seeking to prevent such rights to study, observe and test would be null and void.

3. Infringement may occur if a software developer reproduces in its computer program or a user manual for that program, copyright protected elements from a competitor's user manual. Whether such elements attract copyright protection depends on whether the author has expressed his own intellectual creation.  In this case, the CJEU's view was that the keywords, syntax, commands, combinations of commands, options, defaults and iterations are all words, figures or mathematical concepts which, in isolation, do not constitute the author's own intellectual creation. Instances may arise, however, where that author does exhibit his own intellectual creativity through his choice, sequence and combination of those same words, figures and mathematical concepts.

It will now be up to the UK High Court to establish whether WPL has copied any elements in the SAS user manual (given there is no suggestion that WPL had access to or copied the source code) which are the expression of the author's own intellectual creation and therefore protected by copyright.

In practice

While some have interpreted this ruling as an outright victory for software developers, on closer analysis, this is not necessarily the case. Even though the ruling means that software developers can reproduce the functions of a computer program and the programming language without violating copyright, they must still exercise caution when creating a competing product to ensure that they do not reproduce any elements of a computer program or the user manual for that program that are copyright protected.

• Software developers will be able to license third party software and provided they comply with the scope of the licence, they will be able to observe and study that software in order to determine its underlying ideas and principles and from those, create their own software.
  
  
• The ruling does not extend software developers' rights to decompile software however.  Developers can still rely on the exception under Article 6 of the Software Directive – the "decompilation" exception – that allows code to be copied or translated for the purposes of enabling an independently created program to interoperate with another program; but the exception is narrow and subject to stringent conditions.
  
  
• While the ruling confirms that software developers can reproduce computer program functionality and programming languages without being caught by the law of copyright, there is also now wider scope for a software proprietor to be able to challenge a software developer who, even though he has not had access to any source code, may have included other copyright protected elements when replicating the functionality of a computer program.
  

Rebecca Pakenham-Walsh and Emily Parris are Senior Associate PSLs in the IP Protection and Enforcement and Technology and Outsourcing Groups.