‘Copying’ Software Functionality – Is it an Infringement?

September 6, 2010

It has long been understood that copyright protects the expression of ideas rather than ideas themselves.  So while the copying of the actual code of third party software without consent would constitute copyright infringement (so-called ‘literal copying’), mimicking the functionality of third-party software, but using independently developed code, would not (so-called ‘non-literal copying’).  The issue was recently revisited in SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch), but rather than confirm this simple position or provide the clarity much sought by the software industry, the English High Court has referred several fundamental questions to the ECJ.


World Programming Ltd (WPL) developed a software application called the World Programming System which produced identical functionality to a corresponding SAS application.  This was intentional.  WPL had developed the World Programming System specifically to support application programs written in SAS’s proprietary programming language, so that SAS customers who had also written applications in that language could continue to use them, without having to either continue to take a licence from SAS or be forced to rewrite their applications in another language.

SAS sued for copyright infringement, leaving the High Court to consider the following four questions.

  • Did  the World Programming System infringe copyright in the SAS applications?
  • Did the World Programming System infringe copyright in the SAS manuals?
  • Did WPL’s manual and guides infringe copyright in the SAS manuals?
  • Had WPL breached the licence in respect of the SAS software that had been used by WPL for learning purposes in preparation for writing the World Programming Systems?

It was common ground that, in developing the World Programming System, WPL had not had access to the SAS source code and had not copied any of the text or the structural design of SAS’s source code.


1) Did the World Programming System infringe copyright in the SAS applications?

Arnold J found that, in a number of instances, WPL had used the SAS manuals to emulate the functionality of the SAS system and, in some cases, this practice had caused WPL to indirectly copy elements of the SAS source code (including the proprietary programming language, the ‘SAS Language’, and certain interfaces) into the World Programming System.  Arnold J found that in some cases this copying went beyond that which was strictly necessary in order for World Programming System to emulate the functions of the SAS applications (ie the copying not only emulated the functionality but also copied names of functions and keywords used by SAS).

The Court held that, in order to decide whether SAS’s copyright had been infringed, it was necessary to understand the extent to which copyright protected the functionality and interfaces of computer programs and the programming languages in which they were expressed. The Court referred to Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty, as well as Article 1(2) of the Software Directive which provides as follows:

Protection in accordance with this Directive shall apply to the expression in any form of a computer program.  Ideas and principles which underlie any element of a computer program, including those which underlie its interfaces, are not protected by copyright under this Directive.

In Navitaire v easyJet [2004] EWHC 1725 (Ch), Pumfrey J had interpreted this to mean that copyright in computer programs did not protect programming languages, interfaces or the functionality of a computer program.  This point had been upheld in the Court of Appeal in Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219. 

(i) Programming languages

SAS countered by relying on Recital 14 of the Software Directive which says that, ‘to the extent that programming languages comprise ideas and principles, those ideas and principles are not protected under this Directive’. SAS argued that this recital appears to leave scope for languages that do not comprise ‘merely’ ideas and principles to attract copyright protection.

Arnold J’s view was that the recitals are not operative provisions and that ‘the distinction which Pumfrey J drew [in Navitaire] between a computer program and the language it is written in is… perfectly consistent with the distinction between expressions and ideas, procedures, methods of operation and mathematical formulae’.   

Having given that view, however, Arnold J decided that Article 1(2) was not acte clair (reasonably clear and free from doubt) and required a reference to the ECJ to determine both whether Pumfrey J had been right to decide that programming languages were not protected by copyright and how broadly the concept of a programming language should be interpreted in this context.

(ii) Interfaces

SAS argued that Article 1(2) of the Software Directive excluded protection for ideas and principles, ‘which underlie its interfaces’ rather than the interfaces themselves.  Arnold J disagreed, saying that the legislative history of Article 1 showed that, as Pumfrey J had concluded in Navitaire, interfaces were not intended to be protected.

Again, however, Arnold J referred this point to the ECJ.

(iii) Functionality

Pumfrey J had held that it was not an infringement of copyright in a computer program to reproduce the functionality of the program.  In this case, SAS argued that the statement that computer programs should be interpreted to include ‘their preparatory design material’, as set out in Article 1(1) of the Software Directive, meant that its functionality was protected as the success of the functionality of the program depended on such material.  Arnold J disagreed.  He accepted that copyright protection was not limited to the text of the source code of the program, but extended to protecting the design of the program, but said that there was a distinction between protecting the design of the program and protecting its functionality: ‘It is perfectly possible to create a computer program which replicates the functionality of an existing program, yet whose design is quite different’.

In any event, the Court of Appeal in Nova had upheld Pumfrey J’s interpretation on functionality and that decision was binding on Arnold J. However, Arnold J found that the Court of Appeal had not decisively ruled on the point, so again a reference to the ECJ was required.                                                

2) Did the World Programming System infringe copyright in the SAS manuals?

Arnold J held that the reproduction right set out in Article 2(a) of the Copyright Directive, which would apply to the software manuals, had to be interpreted in conformity with all of the relevant provisions, ie mere ideas were not protected and  copying of an insubstantial part was not an infringement.

Assuming that Pumfrey J in Navitaire had been correct in his finding that it was not an infringement of copyright in a computer program to replicate its functions without copying its source code or design, it followed that it could not be an infringement of copyright in a manual describing those functions to replicate those descriptions and to reproduce elements of the manual in the source code of the new program.  Again, he said, it was a question of the kind of skill, judgement and labour involved.

Arnold J found that this interpretation of Article 2(a) of the Copyright Directive was not absolutely clear and so a reference to the ECJ was required.

3) Did WPL’s manual and guides infringe copyright in the SAS manuals?

SAS relied on 51 examples of similarities between the World Programming System manual and the SAS manuals.  Arnold J accepted that WPL’s manual writers did not copy directly from the SAS manuals.  He also accepted that the content and language of both manuals were bound to be the same, or similar, as they both described identical functionality.  However, he found that the degree of similarity went beyond that which was attributable to describing identical functionality.  Arnold J decided that WPL had infringed the literary copyright in the SAS manuals by substantially reproducing them in the WPL manual.  Tellingly, this finding of infringement on the basis of standard literal copying was the only issue actually determined by the Court.

4) Had WPL breached the licence in respect of the SAS software that had been used by WPL for learning purposes in preparation for writing the World Programming Systems?

WPL had purchased copies of four versions of the SAS Learning Edition, via a ‘click-through’ licence.   On construing the licence, Arnold J found that WPL’s use of the Learning Edition software in creating its World Programming System product went beyond the licensed scope. 

However, Article 5(3) of the Software Directive provides that if a person has a right to use a computer program, they are entitled to observe, study or test the functioning of the program to determine the ideas and principles underlying the program.  Article 9(1) provides that any contractual provisions contrary to Article 5(3) are null and void.

Arnold J’s view was that Article 5(3) should be interpreted as a positive defence to a claim of copyright infringement and is important for reasons of public interest (hence Article 9(1)).  On that basis, if and to the extent that the licence terms were contrary to Article 5(3) of the Software Directive, they were null and void and there would be no copyright infringement.

However, Arnold J ultimately decided that a reference should be made to the ECJ on the meaning of Article 5(3). 


It is important to note that, provisionally, Arnold J has followed Navitaire and Nova and found that WPL had not infringed the intellectual property rights in the software applications of SAS, when it emulated the functionality of the SAS System in creating its own World Programming System. 

This looks like good news for customers who are tied into a particular system or programming language, as well as for developers who wish to develop competing technologies to run applications with equivalent functionality.  It may also be worrying news for owners of valuable proprietary systems, particularly if they have not managed to recoup or profit as anticipated from their investment before customers and third-party developers start to ’emulate’ their systems. 

Both rights holders and potential infringers, must now face the long wait for matters to be clarified by the ECJ, uncertain as to whether there is freedom to develop or whether proprietary functionality is protected.

David Cran is a partner and Paul Joseph a senior associate at Reynolds Porter Chamberlain LLP: www.rpc.co.uk