Copyright and computer software: still no protection for functionality

Practical Law UK Articles 0-519-6247 (Approx. 3 pages)

Copyright and computer software: still no protection for functionality

by Susie Middlemiss and Oliver Savage, Slaughter and May

Referral to the ECJ

The ECJ's judgment was given following a referral from the High Court where it was alleged that software and manuals created by WPL infringed SAS's copyright. WPL had copied the functionality, but not the source code, of SAS's computer program (SAS Institute Inc. v World Programming Limited [2010] EWHC 1829 (Ch)) (see Briefing "Copyright protection for computer software: functionality loses out again", www.practicallaw.com/8-504-8804).

Although the High Court judgment addressed all the issues in the case, the court considered it necessary to refer certain questions to the ECJ for guidance.

The ECJ ruling

The ECJ held, in summary, that:

Under Article 1(2) of the Software Directive, neither the functionality of a computer program, the programming language nor the format of data files, constitute a form of expression, and so are not protected by copyright under the Software Directive.
Under Article 5(3) of the Software Directive, a person to whom a computer program has been licensed may study its operation to determine the underlying principles of the program without the authorisation of the copyright owner, provided that the copyright owner's exclusive rights are not infringed. The ECJ expressly confirmed that licensing arrangements cannot be used to try to protect the ideas and principles underlying any element of the program.
Under Article 2(a) of the Information Society Directive, the reproduction of certain elements described in the user manual of a computer program in a different computer program or user manual will constitute an infringement of the former user manual where the reproduction constitutes the expression of the intellectual creation of the author of the former manual. It is a matter for the national court to decide whether the reproduction does so infringe.

Implications

The ECJ's confirmation that the functionality of a computer program cannot be protected by copyright is an uncontroversial decision. The judgment endorses the positions that have been adopted on this issue by both the Advocate General and the English courts since Navitaire Inc v Easyjet Airline Company (1) and Bulletproof Technologies Inc (2), and goes some way to clarifying the potentially murky distinction made in the Software Directive between the "expression" of a computer program (which is capable of copyright protection) and the "ideas" underlying such a computer program (which are not capable of copyright protection) ([2004] EWHC 1725 (Ch); www.practicallaw.com/2-200-2402).

Where a software developer replicates the functionality of a computer program, there should now be little doubt that the replication of functionality will not amount to copyright infringement if the software developer has not had access to the source code of the computer program being replicated.

Another practical implication of the ECJ's judgment is that it is now clear that, where a computer program is licensed to another party, the relevant licence agreement cannot restrict the licensee from observing and determining the principles underlying the computer program, provided that the licensee carries out acts which the licence permits him to perform, and the licensee does not infringe the exclusive rights of the licensor in the computer program.

Nonetheless, it should also be noted that the ECJ's judgment acknowledged the possibility that the SAS programming language and/or the SAS data files could be capable of copyright protection under the Information Society Directive. The meaning of this qualification is not clear, and this was not an issue referred to the ECJ. The suggestion appears to be that data files and programming languages may be capable of protection as copyright works in themselves under the Information Society Directive, albeit that they are not protected by copyright in computer programs under the Software Directive. However, this suggestion seems vulnerable to the criticism that both simply amount to ideas as opposed to "expressions of intellectual creation" capable of copyright protection.

Susie Middlemiss is a partner, and Oliver Savage is an associate, at Slaughter and May.

Key provisions

The Software Directive (91/250/EEC) requires EU member states to protect computer programs by copyright as "literary works". The term "computer programs" includes their preparatory design material (Article 1(1)).

Article 1(2) provides that the expression in any form of a computer program is protected by the Directive, but that ideas and principles underlying any element of a computer program, including those underlying its interfaces, are not protected by copyright under the Directive (the ideas/expression dichotomy).

Article 5(3) states that the person having a right to use a copy of a computer program is entitled, without the authorisation of the owner, 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.

Article 2(a) of the Information Society Directive (2001/29/EC) states that member states shall provide for the exclusive right for authors to authorise or prohibit direct or indirect, temporary or permanent reproduction of their works by any means and in any form, in whole or in part.

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