MR JUSTICE ARNOLD :
Contents
Topic |
Paras |
Introduction |
1-4 |
My first judgment |
5 |
The reference |
6-7 |
The judgment of the CJEU |
8-14 |
Questions 1-5 |
9-10 |
Questions 6 and 7 |
11-12 |
Questions 8 and 9 |
13-14 |
SAS Institute's claim that WPS infringes the copyrights in the SAS |
|
Components |
15-48 |
SAS Language |
17-35 |
SAS data file formats |
36-41 |
Functionality |
42 |
Reproduction of a substantial part |
43-47 |
Conclusion |
48 |
SAS Institute's claim that WPS infringes the copyrights in the SAS |
|
Manuals |
49-54 |
SAS Institute's claims in respect of the Learning Edition |
55-79 |
Use by more than one employee |
58-63 |
Use for purposes beyond the scope of the licence |
64-73 |
Use of the Learning Edition to generate zip code data |
74-76 |
SAS Language |
77-78 |
Conclusion |
79 |
SAS Institute's claims that the WPS Manual and the WPS Guides infringe the copyrights in the SAS Manuals |
80-81 |
Result |
82 |
Introduction
- The Claimant,
SAS
Institute
Inc ("
SAS
Institute"),
is a developer of analytical software known as
SAS
(referred to in these proceedings as "the
SAS
System"). The
SAS
System is an integrated set of
programs
which enables users to carry out a wide range of data processing and analysis tasks, and in particular statistical analysis. The core component of the
SAS
System is Base
SAS,
which enables users to write and run application
programs
(also known as "scripts") to manipulate data. Such applications are written in a language known as the
SAS
Language. The functionality of Base
SAS
may be extended by the use of additional components, including three which are relevant to these proceedings called
SAS/ACCESS,
SAS/GRAPH
and
SAS/STAT
(the four components being collectively referred to as "the
SAS
Components"). The
SAS
System has been developed over a period of 35 years.
- Over the years
SAS
Institute's
customers have written, or had written on their behalf, thousands of application
programs
in the
SAS
Language. These can range from fairly short and simple
programs
to large and complex
programs
which involve many man years of effort to create. Prior to the events giving rise to this dispute,
SAS
Institute's
customers had no alternative to continuing to license use of the necessary components in the
SAS
System in order to be able to run their existing
SAS
Language application
programs,
as well as to create new ones. While there are many other suppliers of analytical software which compete with
SAS
Institute,
a customer who wanted to change over to another supplier's software would be faced with re-writing its existing application
programs
in a different language.
- The Defendant,
World
Programming
Ltd ("WPL"), perceived that there would be a market demand for alternative software which would be able to execute application
programs
written in the
SAS
Language. WPL therefore created a product called
World
Programming
System or WPS to do this. In developing WPS, WPL sought to emulate much of the functionality of the
SAS
Components as closely as possible in the sense that, subject to only a few minor exceptions, it tried to ensure that the same inputs would produce the same outputs. This was so as to ensure that WPL's customers' application
programs
executed in the same manner when run on WPS as on the
SAS
Components. There is no suggestion that in doing so WPL had access to the source code of the
SAS
Components or that WPL has copied any of the text of the source code of the
SAS
Components or that WPL has copied any of the structural design of the source code of the
SAS
Components. Nevertheless,
SAS
Institute
contends that WPL has both committed a series of infringements of copyright and acted in breach of contract in creating WPS and its accompanying documentation.
SAS
Institute's
principal claims are as follows:
i) A claim that WPL copied the manuals for the
SAS
System published by
SAS
Institute
("the
SAS
Manuals") when creating WPS and thereby infringed the copyright in the
SAS
Manuals.
ii) A claim that, by copying the
SAS
Manuals when creating WPS, WPL indirectly copied the
programs
comprising the
SAS
Components and thereby infringed the copyright in the
SAS
Components.
iii) A claim that WPL used a version of the
SAS
System known as the Learning Edition in contravention of the terms of its licences, and thereby both acted in breach of the relevant contracts and infringed the copyright in the Learning Edition.
iv) A claim that WPL infringed the copyright in the
SAS
Manuals in creating its own documentation, namely a manual ("the WPS Manual") and some "quick reference" guides ("the WPS Guides").
My first judgment
- Following a trial in June 2010, I handed down judgment on 23 July 2010 ([2010] EWHC 1829 (Ch), [2011] RPC 1; "my first judgment"). In my first judgment I found the facts (at [1]-[148]), set out the legal context (at [149]-[195]) and then considered each of
SAS
Institute's
claims listed above (at [251]-[267], [196]-[250], [268]-[315] and [316]-[329] respectively). In the case of the fourth claim, I was able to conclude that WPL had infringed the copyrights in the
SAS
Manuals when creating the WPS Manual, but not when creating the WPS Guides. In the case of the other claims, I concluded that it was necessary to refer certain questions of interpretation of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer
programs
("the Software Directive") (now codified as Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009) and of European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society ("the Information Society Directive") to the Court of Justice of the European Union for a preliminary ruling. I nevertheless expressed my provisional views both on the issues of law and on how the law should be applied to the facts that I had found. In this judgment I shall take the whole of my first judgment as read.
The reference
- By order dated 28 July 2010 I referred the following questions to the CJEU:
"A. On the interpretation of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer
programs
and of Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 (codified version):
1. Where a computer
program
('the First
Program')
is protected by copyright as a literary work, is Article 1(2) to be interpreted as meaning that it is not an infringement of the copyright in the First
Program
for a competitor of the rightholder without access to the source code of the First
Program,
either directly or via a process such as decompilation of the object code, to create another
program
('the Second
Program')
which replicates the functions of the First
Program?
2. Is the answer to question 1 affected by any of the following factors:
(a) the nature and/or extent of the functionality of the First
Program;
(b) the nature and/or extent of the skill, judgment and labour which has been expended by the author of the First
Program
in devising the functionality of the First
Program;
(c) the level of detail to which the functionality of the First
Program
has been reproduced in the Second
Program;
(d) if the source code for the Second
Program
reproduces aspects of the source code of the First
Program
to an extent which goes beyond that which was strictly necessary in order to produce the same functionality as the First
Program?
3. Where the First
Program
interprets and executes application
programs
written by users of the First
Program
in a
programming
language devised by the author of the First
Program
which comprises keywords devised or selected by the author of the First
Program
and a syntax devised by the author of the First
Program,
is Article 1(2) to be interpreted as meaning that it is not an infringement of the copyright in the First
Program
for the Second
Program
to be written so as to interpret and execute such application
programs
using the same keywords and the same syntax?
4. Where the First
Program
reads from and writes to data files in a particular format devised by the author of the First
Program,
is Article 1(2) to be interpreted as meaning that it is not an infringement of the copyright in the First
Program
for the Second
Program
to be written so as to read from and write to data files in the same format?
5. Does it make any difference to the answer to questions 1, 3 and 4 if the author of the Second
Program
created the Second
Program
by:
(a) observing, studying and testing the functioning of the First
Program;
or
(b) reading a manual created and published by the author of the First
Program
which describes the functions of the First
Program
('the Manual'); or
(c) both (a) and (b)?
6. Where a person has the right to use a copy of the First
Program
under a licence, is Article 5(3) to be interpret[ed] as meaning that the licensee is entitled, without the authorisation of the rightholder, to perform acts of loading, running and storing the
program
in order to observe, test or study the functioning of the First
Program
so as to determine the ideas and principles which underlie any element of the
program,
if the licence permits the licensee to perform acts of loading, running and storing the First
Program
when using it for the particular purpose permitted by the licence, but the acts done in order to observe, study or test the First
Program
extend outside the scope of the purpose permitted by the licence?
7. Is Article 5(3) to be interpreted as meaning that acts of observing, testing or studying of the functioning of the First
Program
are to be regarded as being done in order to determine the ideas or principles which underlie any element of the First
Program
where they are done:
(a) to ascertain the way in which the First
Program
functions, in particular details which are not described in the Manual, for the purpose of writing the Second
Program
in the manner referred to in question 1 above;
(b) to ascertain how the First
Program
interprets and executes statements written in the
programming
language which it interprets and executes (see question 3 above);
(c) to ascertain the formats of data files which are written to or read by the First
Program
(see question 4 above);
(d) to compare the performance of the Second
Program
with the First
Program
for the purpose of investigating reasons why their performances differ and to improve the performance of the Second
Program;
(e) to conduct parallel tests of the First
Program
and the Second
Program
in order to compare their outputs in the course of developing the Second
Program,
in particular by running the same test scripts through both the First
Program
and the Second
Program;
(f) to ascertain the output of the log file generated by the First
Program
in order to produce a log file which is identical or similar in appearance;
(g) to cause the First
Program
to output data (in fact, data correlating zip codes to States of the USA) for the purpose of ascertaining whether or not it corresponds with official databases of such data, and if it does not so correspond, to
program
the Second
Program
so that it will respond in the same way as the First
Program
to the same input data.
B. On the interpretation of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society:
8. Where the Manual is protected by copyright as a literary work, is Article 2(a) to be interpreted as meaning that it is an infringement of the copyright in the Manual for the author of the Second
Program
to reproduce or substantially reproduce in the Second
Program
any of the following matters described in the Manual:
(a) the selection of statistical operations which have been implemented in the First
Program;.
(b) the mathematical formulae used in the Manual to describe those operations;
(c) the particular commands or combinations of commands by which those operations may be invoked;
(d) the options which the author of the First
Program
has provide[d] in respect of various commands;
(e) the keywords and syntax recognised by the First
Program;.
(f) the defaults which the author of the First
Program
has chosen to implement in the event that a particular command or option is not specified by the user;
(g) the number of iterations which the First
Program
will perform in certain circumstances?
9. Is Article 2(a) to be interpreted as meaning that it is an infringement of the copyright in the Manual for the author of the Second
Program
to reproduce or substantially reproduce in a manual describing the Second
Program
the keywords and syntax recognised by the First
Program?"
- On 18 November 2010 I refused an application by
SAS
Institute
for the wording of the questions to be amended in a number of respects for the reasons given in a judgment dated 22 November 2010 ([2010] EWHC 3012 (Ch), [2011] FSR 12).
The judgment of the CJEU
- On 29 November 2011 Advocate General Bot delivered his Opinion on the questions referred ([2012] ECDR 1) and on 2 May 2012 the CJEU gave its judgment in Case C-406/10 ([2012] ECR I-0000, [2012] ECDR 22).
Questions 1-5
- The Court dealt with these questions together. It interpreted this court as asking "in essence, whether Article 1(2) of [the Software Directive] must be interpreted as meaning that the functionality of a computer
program
and 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 may, as such, be protected by copyright in computer
programs
for the purposes of that directive": see [29].
- Having referred to recital (14), Article 1(1) and 1(2) of the Software Directive, Article 2 of the WIPO Copyright Treaty and Articles 9(2) and 10(1) of TRIPS, the Court went on:
"35. In a judgment delivered after the reference for a preliminary ruling had been lodged in the present case, the Court interpreted Article 1(2) of Directive 91/250 as meaning that the object of the protection conferred by that directive is the expression in any form of a computer
program,
such as the source code and the object code, which permits reproduction in different computer languages (judgment of 22 December 2010 in Case C-393/09 Bezpecnostní softwarová asociace [2010] ECR I-0000, paragraph 35).
36. In accordance with the second phrase of the seventh recital in the preamble to Directive 91/250, the term 'computer
program'
also includes preparatory design work leading to the development of a computer
program,
provided that the nature of the preparatory work is such that a computer
program
can result from it at a later stage.
37. Thus, the object of protection under Directive 91/250 includes the forms of expression of a computer
program
and the preparatory design work capable of leading, respectively, to the reproduction or the subsequent creation of such a
program
(Bezpecnostní softwarová asociace, paragraph 37).
38. From this the Court concluded that the source code and the object code of a computer
program
are forms of expression thereof which, consequently, are entitled to be protected by copyright as computer
programs,
by virtue of Article 1(2) of Directive 91/250. On the other hand, as regards the graphic user interface, the Court held that such an interface does not enable the reproduction of the computer
program,
but merely constitutes one element of that
program
by means of which users make use of the features of that
program
(Bezpecnostní softwarová asociace, paragraphs 34 and 41).
39. On the basis of those considerations, it must be stated that, with regard to the elements of a computer
program
which are the subject of Questions 1–5, 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
for the purposes of Article 1(2) of Directive 91/250.
40. As the Advocate General states in point 57 of his Opinion, to accept that the functionality of a computer
program
can be protected by copyright would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development.
41. Moreover, point 3.7 of the explanatory memorandum to the Proposal for Directive 91/250 [COM(88) 816] states that the main advantage of protecting computer
programs
by copyright is that such protection covers only the individual expression of the work and thus leaves other authors the desired latitude to create similar or even identical
programs
provided that they refrain from copying.
42. With respect to the
programming
language and the format of data files used in a computer
program
to interpret and execute application
programs
written by users and to read and write data in a specific format of data files, these are elements of that
program
by means of which users exploit certain functions of that
program.
43. In that context, it should be made clear that, if a third party were to procure the part of the source code or the object code relating to the
programming
language or to the format of data files used in a computer
program,
and if that party were to create, with the aid of that code, similar elements in its own computer
program,
that conduct would be liable to constitute partial reproduction within the meaning of Article 4(a) of Directive 91/250.
44. As is, however, apparent from the order for reference, WPL did not have access to the source code of
SAS
Institute's
program
and did not carry out any decompilation of the object code of that
program.
By means of observing, studying and testing the behaviour of
SAS
Institute's
program,
WPL reproduced the functionality of that
program
by using the same
programming
language and the same format of data files.
45. The Court also points out that the finding made in paragraph 39 of the present judgment cannot affect the possibility that the
SAS
language and the format of
SAS
Institute's
data files might be protected, as works, by copyright under Directive 2001/29 if they are their author's own intellectual creation (see Bezpecnostní softwarová asociace, paragraphs 44 to 46).
46. Consequently, the answer to Questions 1–5 is that Article 1(2) of Directive 91/250 must be interpreted as meaning 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."
Questions 6 and 7
- The Court dealt with these questions together. It interpreted this court as asking "in essence, whether Article 5(3) of [the Software Directive] must be interpreted as meaning that a person who has obtained a copy of a computer
program
under a licence is entitled, without the authorisation of the owner of the copyright in that
program,
to observe, study or test the functioning of that
program
in order to determine the ideas and principles which underlie any element of the
program,
in the case where that person carries out acts covered by that licence with a purpose that goes beyond the framework established by the licence.": see [47].
- The Court answered these questions as follows:
"48. In the main proceedings, it is apparent from the order for reference that WPL lawfully purchased copies of the Learning Edition of
SAS
Institute's
program,
which were supplied under a "click-through" licence which required the purchaser to accept the terms of the licence before being permitted to access the software. The terms of that licence restricted the licence to non-production purposes. According to the national court, WPL used the various copies of the Learning Edition of
SAS
Institute's
program
to perform acts which fall outside the scope of the licence in question.
49. Consequently, the national court raises the question as to whether the purpose of the study or observation of the functioning of a computer
program
has an effect on whether the person who has obtained the licence may invoke the exception set out in Article 5(3) of Directive 91/250 .
50. The Court observes that, from the wording of that provision, it is clear, first, that a licensee is entitled to observe, study or test the functioning of a computer
program
in order to determine the ideas and principles which underlie any element of the
program.
51. In this respect, Article 5(3) of Directive 91/250 seeks to ensure that the ideas and principles which underlie any element of a computer
program
are not protected by the owner of the copyright by means of a licensing agreement.
52. That provision is therefore consistent with the basic principle laid down in Article 1(2) of Directive 91/250, pursuant to which protection in accordance with that directive applies to the expression in any form of a computer
program
and ideas and principles which underlie any element of a computer
program
are not protected by copyright under that directive.
53. Article 9(1) of Directive 91/250 adds, moreover, that any contractual provisions contrary to the exceptions provided for in Article 5(2) and (3) of that directive are null and void.
54. Secondly, under Article 5(3) of Directive 91/250, a licensee is entitled to determine the ideas and principles which underlie any element of the computer
program
if he does so while performing any of the acts of loading, displaying, running, transmitting or storing that
program
which he is entitled to do.
55. It follows that the determination of those ideas and principles may be carried out within the framework of the acts permitted by the licence.
56. In addition, the 18th recital in the preamble to Directive 91/250 states that a person having a right to use a computer
program
should not be prevented from performing acts necessary to observe, study or test the functioning of the
program,
provided that these acts do not infringe the copyright in that
program.
57. As the Advocate General states in point 95 of his Opinion, the acts in question are those referred to in Article 4(a) and (b) of Directive 91/250, which sets out the exclusive rights of the rightholder to do or to authorise, and those referred to in Article 5(1) thereof, relating to the acts necessary for the use of the computer
program
by the lawful acquirer in accordance with its intended purpose, including for error correction.
58. In that latter regard, the 17th recital in the preamble to Directive 91/250 states that the acts of loading and running necessary for that use may not be prohibited by contract.
59. Consequently, the owner of the copyright in a computer
program
may not prevent, by relying on the licensing agreement, the person who has obtained that licence from determining the ideas and principles which underlie all the elements of that
program
in the case where that person carries out acts which that licence permits him to perform and the acts of loading and running necessary for the use of the computer
program,
and on condition that that person does not infringe the exclusive rights of the owner in that
program.
60. As regards that latter condition, Article 6(2)(c) of Directive 91/250 relating to decompilation states that decompilation does not permit the information obtained through its application to be used for the development, production or marketing of a computer
program
substantially similar in its expression, or for any other act which infringes copyright.
61. 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.
62. In those circumstances, the answer to Questions 6 and 7 is that Article 5(3) of Directive 91/250 must be interpreted as meaning that a person who has obtained a copy of a computer
program
under a licence is entitled, without the authorisation of the owner of the copyright, to observe, study or test the functioning of that
program
so as to determine the ideas and principles which underlie any element of the
program,
in the case where that person carries out acts covered by that licence and acts of loading and running necessary for the use of the computer
program,
and on condition that that person does not infringe the exclusive rights of the owner of the copyright in that
program."
Questions 8 and 9
- The Court dealt with these questions together. It interpreted this court as asking "in essence, whether Article 2(a) of [the Information Society Directive] must be interpreted as meaning that the reproduction, in a computer
program
or a user manual for that
program,
of certain elements described in the user manual for another computer
program
protected by copyright constitutes an infringement of that right in the latter manual": see [63].
- It answered these questions as follows:
"64. It is apparent from the order for reference that the user manual for
SAS
Institute's
computer
program
is a protected literary work for the purposes of Directive 2001/29.
65. The Court has already held that the various parts of a work enjoy protection under Article 2(a) of Directive 2001/29, provided that they contain some of the elements which are the expression of the intellectual creation of the author of the work (Case C-5/08 Infopaq International [2009] ECR I-6569, paragraph 39).
66. In the present case, the keywords, syntax, commands and combinations of commands, options, defaults and iterations consist of words, figures or mathematical concepts which, considered in isolation, are not, as such, an intellectual creation of the author of the computer
program.
67. It is only through the choice, sequence and combination of those words, figures or mathematical concepts that the author may express his creativity in an original manner and achieve a result, namely the user manual for the computer
program,
which is an intellectual creation (see, to that effect, Infopaq International, paragraph 45).
68. It is for the national court to ascertain whether the reproduction of those elements constitutes the reproduction of the expression of the intellectual creation of the author of the user manual for the computer
program
at issue in the main proceedings.
69. In this respect, the examination, in the light of Directive 2001/29, of the reproduction of those elements of the user manual for a computer
program
must be the same with respect to the creation of the user manual for a second
program
as it is with respect to the creation of that second
program.
70. Consequently, in the light of the foregoing considerations, the answer to Questions 8 and 9 is that Article 2(a) of Directive 2001/29 must be interpreted as meaning that the reproduction, in a computer
program
or a user manual for that
program,
of certain elements described in the user manual for another computer
program
protected by copyright is capable of constituting an infringement of the copyright in the latter manual if—this being a matter for the national court to ascertain—that reproduction constitutes the expression of the intellectual creation of the author of the user manual for the computer
program
protected by copyright."
SAS
Institute's
claim that WPS infringes the copyrights in the
SAS
Components
- In my first judgment I concluded, in summary, as follows:
i) Although I was not persuaded that Pumfrey J was wrong to conclude in Navitaire Inc v easyJet Airline Co Ltd [2004] EWHC 1725 (Ch), [2006] RPC 3 that, on the true interpretation of Article 1(2) of the Software Directive, copyright in computer
programs
does not protect
programming
languages from being copied, I considered that this was a question on which guidance from the CJEU was required: see [211]-[218].
ii) Although I was not persuaded that Pumfrey J was wrong to conclude in Navitaire that, on the true interpretation of Article 1(2) of the Software Directive, copyright in computer
programs
does not protect interfaces from being copied where this can be achieved without decompiling the object code, I considered that this was also a question on which guidance from the CJEU was required: see [219]-[227].
iii) Although I was not persuaded that Pumfrey J was wrong to conclude in Navitaire that, on the true interpretation of Article 1(2) of the Software Directive, copyright in computer
programs
does not protect the functionality of the
programs
from being copied, and although his decision on that point was upheld by the Court of Appeal in Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 25, [2007] RPC 25, I considered that this was also a question on which guidance from the CJEU was required: see [228]-[238].
iv) On the assumption that Pumfrey J's interpretation of Article 1(2) of the Software Directive was correct, I held that WPL had not infringed
SAS
Institute's
copyrights in the
SAS
Components by producing WPS: see [245]-[250]. In particular, I held that, although WPS reproduced elements of the
SAS
Language, that did not constitute an infringement of the copyrights in the
SAS
Components because the
SAS
Language was a
programming
language ([247]). I also held that, although WPS was able to read and write files in
SAS7BDAT
data file format, that did not constitute an infringement of the copyrights in the
SAS
Components for two reasons: first, that data file format was an interface and therefore unprotected by the copyrights in the
SAS
Components; and secondly, there was no evidence that WPS reproduced any part of the
SAS
source code in that respect ([248]).
- In my judgment, the CJEU's answer to Questions 1-5 amounts to an endorsement of Pumfrey J's interpretation of Article 1(2) of the Software Directive. In short, copyright in a computer
program
does not protect either the
programming
language in which it is written or its interfaces (specifically, its data file formats) or its functionality from being copied. Indeed, counsel for
SAS
Institute
did not submit to the contrary. He nevertheless argued that the Court's judgment required me to reconsider the provisional conclusions reached in my first judgment for a number of reasons which I will address in turn.
SAS
Language
- Counsel for
SAS
Institute
pointed out that the CJEU had held at [45] that its conclusion that neither the functionality of a computer
program
nor the
programming
language nor the data file formats constituted a form of expression of the computer
program
for the purposes of Article 1(2) of the Software Directive "cannot affect the possibility that [the
SAS
Language and
SAS
data file formats] might be protected, as works, by copyright under [the Information Society Directive] if they are their author's own intellectual creation". He argued, in summary, that the
SAS
Language was a work that was its authors' own intellectual creation, albeit that it was fixed in the form of the
SAS
Components (and the
SAS
Manuals), and accordingly the
SAS
Language was protectable under the Information Society Directive even if it was not a protectable aspect of the
SAS
Components under the Software Directive. I do not accept this argument for the following reasons.
- The CJEU referred at [45] to its judgment in Case C-393/09 Bezpecnostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury [2010] ECR I-13971 ("BSA"). In that case, the Nejvyšší správní soud (the Czech Supreme Administrative Court) had asked whether the graphic user interface (GUI) of a computer
program
was part of the expression of that computer
program
for the purposes of Article 1(2) of the Software Directive, and hence protected by the copyright in the
program.
The CJEU answered that question in the negative at [28]-[42].
- The Court went on, however, as follows:
"43. Nevertheless, even if the national court has limited its question to the interpretation of Article 1(2) of Directive 91/250, such a situation does not prevent the Court from providing the national court with all the elements of interpretation of European Union law which may enable it to rule on the case before it, whether or not reference is made thereto in the question referred (see, to that effect, Case C-392/05 Alevizos [2007] ECR I-3505, paragraph 64 and the case-law cited).
44. In that regard, it is appropriate to ascertain whether the graphic user interface of a computer
program
can be protected by the ordinary law of copyright by virtue of Directive 2001/29.
45. The Court has held that copyright within the meaning of Directive 2001/29 is liable to apply only in relation to a subject-matter which is original in the sense that it is its author's own intellectual creation (see, to that effect, with regard to Article 2(a) of Directive 2001/29, Infopaq International, paragraphs 33 to 37).
46. Consequently, the graphic user interface can, as a work, be protected by copyright if it is its author's own intellectual creation.
47. It is for the national court to ascertain whether that is the case in the dispute before it.
48. When making that assessment, the national court must take account, inter alia, of the specific arrangement or configuration of all the components which form part of the graphic user interface in order to determine which meet the criterion of originality. In that regard, that criterion cannot be met by components of the graphic user interface which are differentiated only by their technical function."
- As counsel for WPL submitted, that conclusion was not surprising. It is entirely consistent with the conclusion of Pumfrey J in Navitaire at [95]-[99] that, even though the interfaces of OpenRes could not be protected by the copyright in OpenRes as a computer
program,
nevertheless certain of its GUI screens were protected as copyright artistic works. That approach was followed by Kitchin J (as he then was) and the Court of Appeal in Nova.
- Turning to the CJEU's judgment in the present case, counsel for WPL submitted, and I agree, that in [45] the CJEU was merely being careful, consistently with BSA, to make it clear that it was not excluding the possibility that the
SAS
Language might be protected as a work in its own right. In other words, it was simply identifying that as being a separate question. It was not purporting to answer that question, which was not before it.
- Counsel for WPL argued that this was not an issue which arose in the present case. It would only have arisen if
SAS
Institute
had pleaded and proved that the
SAS
Language was a distinct work which satisfied the necessary criteria for subsistence of copyright.
SAS
Institute
had not pleaded the
SAS
Language as a distinct copyright work, however. Rather, the pleaded copyright works upon which it had relied were the
SAS
Components (and the
SAS
Manuals).
SAS
Institute's
case was that the
SAS
Language was (or, to be more precise, the main elements of the
SAS
Language were) a protectable aspect of the
SAS
Components. It was not open to
SAS
Institute
to rely upon the
SAS
Language as a copyright work in its own right without an amendment to its Particulars of Claim, and no such amendment should be permitted at this late stage of the proceedings since it would raise new factual and legal issues for investigation.
- Counsel for
SAS
Institute
argued that it was not necessary for
SAS
Institute
to plead reliance upon the
SAS
Language as a distinct copyright work, since it had pleaded the fixations in which it was embodied, namely the
SAS
Components (and the
SAS
Manuals), and it had alleged reproduction by WPL of the relevant aspects. In the alternative, if permission to amend was required, he submitted that permission should be granted since the only issue which would be raised by the amendment was a legal one which the CJEU had answered. The proposed amendments are set out in a draft Re-Re-Re-Amended Particulars of Claim served by
SAS
Institute.
- In my judgment, it is necessary for
SAS
Institute
to plead reliance upon the
SAS
Language as a distinct copyright work if it wishes to advance such a case. At all times prior to the judgment of the CJEU,
SAS
Institute's
case was that the copyright works it relied upon were the
SAS
Components and the
SAS
Manuals. There was no suggestion that it relied upon the
SAS
Language as being a copyright work in its own right. The question whether the
SAS
Language is a copyright work in its own right raises distinct factual and legal issues from the questions of whether the
SAS
Components and the
SAS
Manuals are copyright works, which WPL admitted.
- As to whether
SAS
Institute
should be given permission to amend its Particulars of Claim to raise this contention now, guidance as to the correct approach to late applications to amend statements of case was given by the Court of Appeal in Swain-Mason v Mills & Reeve LLP [2011] EWCA Civ 14, [2011] 1 WLR 2735 at [68]-[72]. This is summarised in the statement of Lloyd LJ at [72] that:
"… the court is and should be less ready to allow a very late amendment than it used to be in former times, and … a heavy onus lies on a party seeking to make a very late amendment to justify it, as regards his own position, that of the other parties to the litigation, and that of other litigants in other cases before the court."
- In my judgment it would not be justified to permit
SAS
Institute
to amend its Particulars of Claim at this late stage. There has already been a trial, a judgment of mine finding the facts and a judgment of the CJEU ruling upon the key legal issues. Although, as counsel for
SAS
Institute
pointed out, in L'Oréal SA v Bellure NV [2010] EWCA Civ 535, [2010] RPC 2 the Court of Appeal stated obiter that it would if necessary have permitted an amendment by the claimant at the same procedural stage, it did so because the amendment in question raised a pure issue of law and because in effect it was responsive to a point which the Court of Appeal had permitted the defendant to raise after trial. In the present case, I agree with counsel for WPL that the proposed amendment would raise new factual and legal issues of considerable difficulty. These would include the following.
- First, can a
programming
language such as the
SAS
Language be a work at all? In the light of a number of recent judgments of the CJEU, it may be arguable that it is not a fatal objection to a claim that copyright subsists in a particular work that the work is not one of the kinds of work listed in section 1(1)(a) of the Copyright, Designs and Patents 1988 and defined elsewhere in that Act. Nevertheless, it remains clear that the putative copyright work must be a literary or artistic work within the meaning of Article 2(1) of the Berne Convention: see Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569 at [32]-[37]. While the definition of "literary and artistic works" in Article 2(1) is expansive and open-ended, it is not unlimited. For example, it is conventionally understood not to include sound recordings or broadcasts: see Ricketson and Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond (2nd ed, Oxford University Press, 2007), pp. 505-508, 1205-1208; Goldstein and Hugenholtz, International Copyright: Principles, Law and Practice (3rd ed, Oxford University Press, 2012), pp. 106, 158, 188-191; and Ficsor, Guide to the Copyright and Related Rights Treaties Administered by WIPO (WIPO, 2003), p. 27. (The 1988 Act confers "copyright" on such subject matter, but as I have explained elsewhere, the right granted is a right in the signal and not in the content, and thus in effect is a neighbouring or related right.) As I explained in my first judgment at [197], it is now settled that a computer
program
is a literary work within Article 2(1), but it does not necessarily follow that a
programming
language is such a work.
- Two points can be disposed of with relatively little difficulty. The first is that, as counsel for WPL pointed out,
SAS
Institute's
draft amendments do not specify what type of work
SAS
Institute
contends the
SAS
Language to be. I do not regard that as a fatal objection to the allowability of the amendment. In any event, I find it difficult to conceive that, if it is a work, it can be anything other than a literary work. The real question is whether it is a work at all.
- The second point is that, as was common ground between counsel, it is important to distinguish between the putative work on the one hand and any particular fixation of the work on the other hand. The United Kingdom, in common with many other countries, takes advantage of Article 2(2) of the Berne Convention and requires fixation as a condition precedent to the subsistence of copyright: see section 3(2) of the 1988 Act. In principle, the technical means by which fixation is achieved is irrelevant. Thus, as discussed above, an artistic work may be fixed in the source code of a computer
program.
But the fixation must not be confused with the work. A printed book is a fixation which may embody a variety of works, for example a literary work (the text) and a series of artistic works (illustrations). These different works are likely to have different authors, and hence different owners and terms of copyright. Thus the fact that one can identify a fixation is a necessary, but not a sufficient, condition for the subsistence of copyright.
- Counsel for WPL submitted that the proposition that a
programming
language such as the
SAS
Language could be a work was a novel one which required factual investigation as well as legal analysis. I agree. An issue which was considered at trial, in particular in the expert evidence, was whether the
SAS
Language was a
programming
language at all. Having considered the evidence, I concluded that it was: see my first judgment at [47]-[56]. That evidence sheds some light on the question presently under consideration. Thus WPL's expert Dr Worden explained in his report that it was necessary to distinguish between a language, including a
programming
language such as the
SAS
Language, and instances of it. He also explained there are two main aspects of a language: its syntax and its semantics.
- Nevertheless, I am confident that further evidence relevant to the present issue could usefully have been adduced by the parties. I briefly described in my first judgment at [46] the manner in which the
SAS
System executes scripts written in the
SAS
Language. This is not a matter which was investigated in any detail at the trial, however. Nor was there any detailed consideration of the relationship between the
SAS
Language and the
SAS
Components other than Base
SAS.
Still less was there investigation of the history of the
SAS
Language: when, how and by whom it was created and when, how and to what extent it has evolved from its origins.
- As an illustration of this point, counsel for WPL submitted that the
SAS
Language could be regarded as an abstraction from the
SAS
Components in a similar way as the plot of a novel can be regarded as an abstraction from the novel. Even leaving aside my general scepticism about the appropriateness of this kind of analogy when dealing with computer software (see my first judgment at [234]), I am not at all sure that the submission is factually accurate. My present understanding is that the
SAS
Components implement scripts written in the
SAS
Language. Accordingly, it is possible to deduce aspects of the
SAS
Language from observing the operation of the
SAS
Components. It does not follow that the
SAS
Language is an abstraction from the
SAS
Components. It may perhaps be more accurate to regard it as an abstraction from the
SAS
Manuals, but I am not sure about that either.
- Based on the evidence which was adduced at trial, and my general understanding of the position, my provisional view is that a
programming
language such as the
SAS
Language is not capable of being a work. A dictionary and a grammar are works which describe a language. Such works record, and thereby fix, the elements of the language they describe: the meanings of its words and its syntax. It does not follow that the language is a work. Rather, the language is the material from which works (including dictionaries and grammars) may be created. The evolutionary or organic aspect of language can be left on one side for the moment, since it is clear that it is possible to create a language from scratch. Even when a language is created from scratch, however, what it amounts to is a system of rules for the generation and recognition of meaningful statements.
Programming
languages such as the
SAS
Language are no different in this respect.
- Counsel for
SAS
Institute
argued that the
SAS
Language was an intellectual creation, and therefore it was a work. In my view that is a non sequitur. As counsel for WPL pointed out, there are many intellectual creations which are not works, such as scientific theories: see Ricketson and Ginsburg at pp. 406-407. An article or book describing a scientific theory is a literary work, but for the reasons explained above that is beside the point when it comes to the question of whether the scientific theory per se is a work. I would add that treating the scientific theory as a distinct work protectable by copyright would undermine the exclusion of the theory from protection by the copyright in the article or book mandated by Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty (as to which, see my first judgment at [204]-[205]).
- A second issue is whether, assuming that a
programming
language is in principle capable of being a work, the
SAS
Language as it exists now is a work. Although, as I have said, the matter was not properly investigated at trial, it is my understanding that the
SAS
Language has evolved considerably since its origins. Rather as new words and syntactical constructions enter human languages over time, so too new features have been added to the
SAS
Language over time. This was not planned and there was no overall design. In those circumstances, it is doubtful whether the
SAS
Language would qualify as a compilation: see my first judgment at [261]. Whether it could be argued to be a (literary) work of some other type is a question upon which it is not necessary for me to express any view.
SAS
data file formats
- The position in relation to the
SAS
data file formats is similar to that in respect of the
SAS
Language. Again, counsel for
SAS
Institute
sought to argue that the
SAS
data file formats were independent copyright works, relying upon the judgment of the CJEU at [45]. Again, counsel for WPL objected that no such case had been pleaded by
SAS
Institute,
and it was too late for
SAS
Institute
to seek to raise such a case now. As counsel for WPL pointed out, the position in relation to the
SAS
data file formats is, if anything, even worse than that in relation to the
SAS
Language, since the draft amendments proposed by
SAS
Institute
still do not plead any case in relation to the data file formats.
- In my judgment
SAS
Institute
cannot advance a case that the
SAS
data file formats are distinct copyright works without pleading it. Even leaving aside the point that no such amendment has yet been formulated, it would not be justified to give
SAS
Institute
permission to amend at this late stage. As with the
SAS
Language, this would require difficult new factual and legal issues to be investigated.
- There was relatively little evidence about the
SAS
data file formats at trial. To the best of my recollection, the only format that was addressed in the evidence at trial was
SAS7BDAT
(see my first judgment at [128]-[129]). I do not even know what other formats, if any,
SAS
Institute
claims that WPL has copied.
- The question of whether a data file format such as
SAS7BDAT
is a work is not straightforward for similar reasons to those that I have given in relation to the
SAS
Language.
- Even if it is a work,
SAS
Institute's
claim in respect of the data file formats raises rather more acutely the question of fixation. For the reasons given in my first judgment at [32] and [128]-[129], it has not been established that
SAS7BDAT
is fixed in the
SAS
Components. It is not clear to me that it is fixed in any of the
SAS
Manuals either.
- This claim also raises the question of originality, and in particular whether a data file format is an intellectual creation. For this purpose, elements "differentiated only by their technical function" must be disregarded: see BSA at [47] (quoted in paragraph 19 above) and [50]. What is required is something on which the author has stamped his "personal touch" through the creative choices he has made: see Case C-145/10 Painer v Standard Verlags GmbH [2011] ECR I-0000, [2012] ECDR 6 at [89]-[92] and Case C-604/10 Football Dataco Ltd v Yahoo! UK Ltd [2012] ECR I-0000, [2012] Bus LR 1753 at [38]-[39]. It is open to evidence and argument as to whether data file formats such as
SAS7BDAT
satisfy this requirement.
Functionality
- Counsel for
SAS
Institute
argued that in answering Questions 1-5 the CJEU had adopted a different, and rather narrower, definition of the "functionality" of a computer than I had adopted when posing those questions. I do not propose to go into the details of this argument. It suffices to say that I regard it as completely unsustainable, for two main reasons. First, although the Court reformulated Questions 1-5 at [29], in doing so it continued to use the word "functionality". There is nothing in this section of the judgment to suggest that it meant something different. Nor does the cross-reference at [40] to the Advocate General's Opinion show this, since there is nothing to show that the Advocate General adopted a different meaning. Secondly, in Question 2 I asked whether the answer to Question 1 was affected by (a) the nature and/or extent of the functionality of the First
Program
or (c) the level of detail to which the functionality has been reproduced in the Second
Program.
It is clear from the Court's ruling that the answer is not affected by these factors.
Reproduction of a substantial part
- Counsel for
SAS
Institute
argued that the answer given by the CJEU to Questions 8-9 showed that I had applied the wrong test for reproduction of a substantial part in my first judgment at [249]. The correct approach, he submitted, was simply to ask whether the part reproduced constituted the expression of the intellectual creation of the author. I do not accept this argument.
- I considered the test for reproduction of a substantial part in my first judgment at [239]-[244]. I held at [244] that it was clear from the judgment of the CJEU in Infopaq at [31]-[48] that:
"there will only be reproduction of a substantial part of a literary work … where what has been reproduced represents the expression of the intellectual creation of the author of that literary work."
- It is clear from subsequent judgments of the CJEU that this is indeed the correct test: see in particular BSA at [45]-[46] and [56]-[57], Joined Cases C-403/08 and C-429/08 Football Association Premier League Ltd v QC Leisure [2011] ECR I-0000 at [154]-[156] and the judgment in the present case at [65].
- Counsel for
SAS
Institute
did not take issue with this test, but argued that I had misapplied it at [249] because it was impermissible to dissect what had been reproduced into protectable and non-protectable parts. I disagree. It is clear from the CJEU's answer to Questions 1-5 that neither the functionality nor the
programming
language nor the data file formats of a computer
program
constitute a form of expression of that
program,
and hence they are not protected by the copyright in the
program.
Accordingly, in applying the Infopaq test, those elements must be disregarded. There can only be a reproduction of a substantial part of the computer
program
if the defendant has reproduced something that represents the expression of the intellectual creation of the author of the
program.
- Counsel for
SAS
Institute
relied upon the CJEU's answer to Questions 8 and 9, and in particular the passage at [66]-[67], as supporting his argument. As I understand that passage, however, all the Court is saying is that it is possible to create a protectable form of expression using elements which in themselves are not protectable. That is not a controversial proposition. I shall return to this point below.
Conclusion
- I therefore conclude that WPL has not infringed
SAS
Institute's
copyrights in the
SAS
Components by producing WPS.
SAS
Institute's
claim that WPS infringes the copyrights in the
SAS
Manuals
- In my first judgment I concluded, in summary, as follows:
i) I considered that the reasoning which supported Pumfrey J's interpretation of Article 1(2) of the Software Directive also applies to Article 2(a) of the Information Society Directive, but again this is a question on which guidance from the ECJ was required: see [251]-[256].
ii) On the assumption that Article 2(a) of the Information Society Directive was to be interpreted in the same manner as Article 1(2) of the Software Directive, WPL had not infringed
SAS
Institute's
copyrights in the
SAS
Manuals by producing or testing WPS: see [255] and [257]-[261].
- Again, counsel for
SAS
Institute
submitted that the judgment of the CJEU required me to reconsider these provisional conclusions. In part, he relied on essentially the same arguments with regards to the
SAS
Language and functionality that I have considered above.
- In addition, he argued that the Court's answer to Questions 8-9 showed that Pumfrey J's approach to the interpretation of Article 1(2) of the Software Directive could not be applied to Article 2(1) of the Information Society Directive. Rather, it was necessary for this court to consider the various similarities between WPS and the
SAS
Manuals relied upon by
SAS
Institute,
in particular the similarities in (i) formulae, (ii) keywords, (iii) default values, (iv) comments and (v) optimisations, and decide whether, in reproducing these in WPS, WPL had reproduced the expression of the intellectual creation of the authors of the
SAS
Manuals.
- Counsel for
SAS
Institute
particularly relied on [66]-[67] of the Court's judgment as supporting this argument. I do not agree that those paragraphs lead to the conclusion for which he contended, however. The Court starts at [65] with the basic proposition that elements of a work may only enjoy protection under Article 2(a) if they amount to the expression of the author's intellectual creation. Next, it says at [66] that the keywords, syntax, options, defaults and iterations consist of words, figures or mathematical concepts which are not, as such, an intellectual creation. In other words, they are "ideas, procedures, methods of operation or mathematical concepts", to use the language of Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty. Next, it says at [67] that it is only through the choice, sequence and combination of such words, figures and mathematical concepts that the author can make an intellectual creation. As I have already remarked, it is not a controversial proposition to say that a protectable form of expression may be created through the combination of elements which in themselves are not protectable. In this respect, the Court was essentially repeating what it had said in Infopaq at [45]-[46]. The question remains, however, whether WPL has reproduced the expression of the intellectual creation of the authors of the
SAS
Manuals.
- I remain of the view that, for the reasons I gave in my first judgment, the answer to this question is no. In so far as counsel for
SAS
Institute
argued that WPL had reproduced compilations of (i) formulae, (ii) keywords, (iii) default values, (iv) comments and (v) optimisations from the
SAS
Manuals, I would repeat the answers I gave at [260]-[261], and in particular the first one. The authors of the
SAS
Manuals did not create such compilations, the authors of the
SAS
System did.
- I therefore conclude that WPL has not infringed
SAS
Institute's
copyright in the
SAS
Manuals by producing or testing WPS.
SAS
Institute's
claims in respect of the Learning Edition
- In my first judgment I concluded, in summary, as follows:
i) WPL's use of the
SAS
Learning Edition fell outside the scope of the terms of the relevant licences: see [276]-[290].
ii) The interpretation of Article 5(3) of the Software Directive was another question on which guidance from the CJEU was required: see [291]-[311] and [314].
iii) On the interpretation of Article 5(3) which I favoured, WPL's use of the Learning Edition was within Article 5(3), and to the extent that the licence terms prevented this they were null and void, with the result that none of WPL's acts complained of was a breach of contract or an infringement of copyright except perhaps one: see [313]-[315] above.
- It is important to note that
SAS
Institute
alleged that WPL had acted in breach of the licence terms in two distinct ways. First,
SAS
Institute
alleged that more than one employee of WPL had used copies of the Learning Edition purchased by WPL at least prior to March 2009. Secondly,
SAS
Institute
alleged that WPL had used the Learning Edition for purposes which extended beyond the scope of the licence. I upheld both of these complaints, the first at [280]-[283] and [288] and the second at [284]-[286] and [289]-[290].
- It should also be noted that Question 6 focused upon the second allegation, and the first was not mentioned in the summary of the judgment which was included in the order for reference. I do not recall why this was, but I presume that it was because at that time I did not regard the first allegation as adding materially to the second allegation when it came to the interpretation of Article 5(3). Be that as it may, counsel for
SAS
Institute
has now presented arguments which require them to be considered separately.
Use by more than one employee
- As I noted in my first judgment, it is common ground that WPL purchased copies of the Learning Edition which were used by its employees. It is also common ground that WPL was the contracting party in respect of the licences granted by
SAS
Institute
for the use of those copies. Nevertheless,
SAS
Institute
contended, and I accepted, that on the true construction of the licence terms, the licence only extended to use by the Customer, that is to say, the individual employee who clicked on the "yes" button when installing the Learning Edition. Accordingly, use of the same copy of the Learning Edition by other employees, albeit on the same computer, was outside the scope of the licence.
- Counsel for
SAS
Institute
pointed out that the CJEU's answer to Questions 6 and 7 referred to what "a person who has obtained a copy of a computer
program
under a licence" was entitled to do by virtue of Article 5(3). He submitted that this did not include either (i) employees other than the Customer or (ii) WPL in so far as WPL made automated use of the Learning Edition. I do not accept this argument for the following reasons.
- As counsel for
SAS
Institute
accepted, WPL is a legal person. As he also accepted, it obtained copies of the Learning Edition. It did so under licences. It is true that the licences were entered into by particular employees acting as agents for WPL. It is also true that the licences restricted the use of those copies of the Learning Edition to those specific employees. It also true that other employees of WPL used those copies in contravention of that restriction and that WPL is vicariously liable for such use. None of that detracts from the fact that WPL obtained copies of the Learning Edition under licence.
- It follows that, by virtue of Article 5(3), WPL was entitled without
SAS
Institute's
consent to observe, study and test the functioning of the Learning Edition in order to determine its underlying ideas and principles. In my judgment it does not matter whether it exercised that right by the "licensed" employees or the "unlicensed" employees, leaving aside for the moment the fact that the "licensed" employees committed acts extending beyond the scope of the licence. Article 9(1) renders null and void any contractual restrictions contrary to Article 5(3). In my view this includes a contractual restriction on the employees by whom a legal person in the position of WPL can exercise the right under Article 5(3).
- To put what is much the same point in a slightly different way, I consider that it makes no difference to the issue with regard to Article 5(3) whether WPL's acts fell outside the scope of the licence because (i) the copies of the Learning Edition it purchased were used by "unlicensed" employees or (ii) the "licensed" employees used the copies of the Learning Edition for purposes which were not permitted by the terms of the licences. Either way, WPL acting by its employees used the Learning Edition in ways which fell outside the scope of the licences.
- The position is no different in respect of any automated use of the Learning Edition by WPL, although I do not accept that there was any such use.
Use for purposes beyond the scope of the licence
- Counsel for
SAS
Institute
submitted, and I agree, that neither the CJEU's answer to Questions 6-7 nor its reasoning was very clear. He submitted, however, that, properly understood, the correct conclusion was that WPL was not protected by Article 5(3) because it had used the Learning Edition in a manner which fell outside the scope of the licences. Counsel for WPL made the opposite submission. It is therefore necessary to consider the Court's reasoning with some care.
- It is important to note that the Court begins at [48] by recording that WPL performed acts which fell outside the scope of the licence and that the Court states at [49] that it follows that this court "raises the question whether the purpose of the study or observation has an effect on whether the person who obtained the licence may invoke" Article 5(3).
- The Court then observes at [50]-[53] that Article 5(3) entitles a licensee to observe, study or test the functioning of a computer
program
in order to determine its underlying ideas and principles, that this is consistent with Article 1(2) and that provisions to the contrary are null and void by virtue of Article 9(1).
- So far, the judgment is perfectly clear. The difficulty lies in understanding the passage at [54]-[61] where the Court discusses, first, the requirement of Article 5(3) that the licensee determines the ideas and principles "while performing any of the acts of loading, displaying, running, transmitting or storing the
programme
which he is entitled to do" and, secondly, the proviso to Article 5(3) stated in the 18th recital (recital [19] in the numbering in my first judgment).
- The Court begins at [55] by saying that the determination of the ideas and principles "may be carried out within the framework of the acts permitted by the licence". While this might at first blush be taken to suggest that it may not be done outside the scope of the licence, I think that counsel for WPL was right to submit that the better view is that the acts referred to are the acts of loading, displaying, running, transmitting or storing the
program
referred to in the preceding paragraph.
- The Court then notes at [56] the proviso stated in the 18th recital, namely that "these acts do not infringe the copyright in the
program".
At [57] it says that the acts in question are those referred to in Article 4(a) and (b). It also notes that these are referred to in Article 5(1), and it goes on in [58] to note the 17th recital (although not the somewhat different terms of Article 5(2)). Again, this seems to me to support the view that the acts referred to are the acts of loading, displaying, running, transmitting or storing (and to that extent reproduction of) the
program.
- The Court concludes at [59] that the copyright owner cannot prevent the licensee from determining the ideas and principles underlying the
program
where the licensee carries out "acts which that licence permits him to perform and the acts of loading and running necessary for the use of the
program",
provided that the licensee does not infringe the owner's rights. Again, it seems to me that the "acts" referred to first are the acts of loading, displaying, running, transmitting or storing the
program.
- In my view it is also significant that the Court does not say in [54]-[59] that the licensee's entitlement is affected by the purpose for which it carries out the acts of loading, displaying, running, transmitting or storing the
program,
and in particular whether that is a licensed purpose or an unlicensed purpose. Consistently with the reading of those paragraphs that I have suggested above, this indicates that the answer to the question posed at [49] is no.
- With regard to the condition that the licensee does not infringe the copyright owner's rights, the Court draws attention at [60] to Article 6(2)(c), which provides that information obtained through decompilation may not be used to develop a computer
program
substantially similar in its expression or for any other infringing act. It goes on to say in [61] that it "must therefore be held that" the copyright in a computer
program
is not 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
… but merely studied, observed and tested that
program
in order to reproduce its functionality in a second
program".
In other words, the Court appears to be saying that the condition which the Court has read into Article 5(3) in the light of the 18th recital should be interpreted as having the same effect as Article 6(2)(c). Certainly, the Court is clearly stating that WPL complied with the condition.
- Accordingly, I conclude that WPL did not lose the protection of Article 5(3) due to the fact that it performed acts which fell outside the scope of the licence.
Use of the Learning Edition to generate zip code data
- In my first judgment I expressed the provisional view that Article 5(3) protected the various ways in which WPL had used the Learning Edition listed in [289] "except perhaps the last": see [315]. Counsel for WPL submitted that, despite the hesitation expressed there, I should conclude that WPL's use of the Learning Edition to generate zip code data was covered by Article 5(3).
- As counsel for WPL submitted, the position on the evidence with regard to this act is as follows:
i) WPL had generated a table of zip code zones and the states to which they corresponded by running a short script through the Learning Edition.
ii) There was no evidence as to how or in what form the zip code data was stored in the
SAS
Components. Nor was there any evidence as to who had compiled that data or from what source(s).
iii) The vast majority of the data obtained by WPL's
program
could not "belong" to
SAS
Institute
because it corresponded to the official list of valid US zip codes published by the US Postal Service. The table produced by the Learning Edition was a "superset" of those zip codes, such that certain zip codes were treated as corresponding to a particular state even when they had not been officially allocated by the US Postal Service.
iv) What WPL did was to write WPS in such a way that, if a customer ran a
program
in WPS which involved processing zip codes, then WPS would be able to recognise not only the public domain zip codes, but also the other zip codes recognised by the
SAS
Components, so as to be able to produce the same output as the
SAS
Components.
- Counsel for WPL submitted that, by doing this, WPL had not gone beyond ascertaining the
SAS
Components' method of operation and then creating its own
program.
There was no claim by
SAS
Institute
that either the complete list of zip codes or the set of non-standard zip codes were copyright works in their own right. Nor was there any basis on which the court could conclude that, in writing the relevant part of WPL, WPS had reproduced the expression of the intellectual creation of the author(s) of the relevant part of the
SAS
Components. I accept this submission.
SAS
Language
- Counsel for
SAS
Institute
submitted that, by running the Learning Edition, WPL had reproduced the
SAS
Language and that this was an infringement of the copyright in the
SAS
Language to which Article 5(3) was not a defence.
- This argument is only open to
SAS
Institute
if it is entitled to rely on the
SAS
Language as a distinct copyright work in its own right. I have concluded that that is not the case. In any event, I do not accept that it has been established that WPL reproduced the
SAS
Language by running the Learning Edition.
Conclusion
- I therefore conclude that WPL's use of the Learning Edition was within Article 5(3), and to the extent that such use was contrary to the licence terms they are null and void by virtue of Article 9(1), with the result that none of WPL's acts complained of was a breach of contract or an infringement of copyright.
SAS
Institute's
claims that the WPS Manual and the WPS Guides infringe the copyrights in the
SAS
Manuals
- In my first judgment I concluded, in summary, as follows:
i) WPL had infringed the copyrights in the
SAS
Manuals by substantially reproducing them in the WPL Manual: see [317]-[319].
ii) WPL had not infringed the copyrights in the
SAS
Manuals by producing the WPS Guides: see [320]-[329].
- Counsel for
SAS
Institute
submitted that these conclusions had to be reconsidered in the light of the CJEU's judgment, and that I should now conclude that the WPS Manual infringed to a greater extent than I had previously concluded and that the WPS Guides infringed. In support of this submission he relied on a number of the arguments I have already considered above, in particular the arguments regarding the
SAS
Language, functionality and the passage at [66]-[67] of the CJEU's judgment. I do not accept that any of these arguments leads to the conclusion that the WPL Manual infringes to a greater extent than I previously considered or that the WPS Guides infringe.
Result
- For the reasons given above, I dismiss all of
SAS
Institute's claims except for its claim in respect of the WPS Manual. That claim succeeds to the extent indicated in my first judgment, but no further.