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Neutral Citation Number: [2010] EWHC 1829 (Ch) Case No: HC09C03293

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION



Royal Courts of Justice

Strand, London, WC2A 2LL 23 July 2010

B e f o r e : THE HON MR JUSTICE ARNOLD

____________________ Between:

SAS INSTITUTE INC.

Claimant

- and -



WORLD PROGRAMMING LIMITED

Defendant

____________________ Henry Carr QC, Michael Hicks and Guy Hollingworth (instructed by Bristows) for the Claimant

Martin Howe QC, Robert Onslow and Isabel Jamal (instructed by Speechly Bircham LLP) for the Defendant

Hearing dates: 10-11, 14-18, 21, 23, 28-29 June 2010

____________________ HTML VERSION OF JUDGMENT

____________________ Crown Copyright ©

"The SAS User manuals

Observation of the behaviour of SAS Learning Edition

Customer feedback on the behaviour of the SAS Full Edition

Expert SAS users

Knowledge of applied statistics

Published papers and books on applied statistics

Knowledge of production platforms (particularly IBM)

Knowledge of products which SAS would interface with (e.g. Oracle)

Knowledge of WPL's own internal requirements (e.g. maintainability, testability, extensibility)

Knowledge of the check-in process and bug management systems."

WPS documentation

The 31 examples of similarities between WPS and the SAS Manuals

(1) Copying of formulae and descriptions of formulae in the SAS Manuals

"Quade (unpublished report, SAS Institute, 1986) provided a summary of earliest references for most of these estimators. Y 1 , Y 3 , and Y 8 are given in Parzen (1979); Y 4 appears in Read (1972). Hogg and Craig (1978) discuss the case of (n + l)p an integer, wherein Y 4 and Y 5 coincide. Y 7 is treated by Moore (1969) and by Cramer (1946) for np not an integer; Cramer also presents definitions Y 3 and Y 5 . Y 3 is given in Ogawa (1962), and Y 5 appears in Greenberg (1978)."

As counsel for SAS Institute pointed out, no reference is given for Y 2 , and the other four definitions implemented in PROC UNIVARIATE appear to have originated from disparate sources in the literature.

"Many of the nonparametric estimators considered here are frequently encountered in data analysis software, and, in some cases, data analysts are permitted to choose from among several of these. The various estimators can deliver significantly different results, especially when sample sizes are small. The performance characteristics of individual estimators depend on the manner in which the estimator is defined, the sample size, the quantile level being estimated, and the underlying parent distribution. Characteristics such as bias, variance, mean squared error, and relative efficiency facilitate comparisons among estimators. In order to make comparisons that were computationally exact, this investigation assumed a normal parent distribution. Under this condition, the estimators defined by Y 8 and Y 9 are clearly the best of the set. The worst performers are those based on a single order statistic, such as the empirical CDF estimators Y 3 , Y 6 , and Y 7 . Y 8 proved to be the least biased, while Y 9 provided the lowest MSE values overall. Y 9 requires much greater computational effort than does Y 8 , and, in practical situations, this may offset its MSE advantage. It will be of interest to consider further the performance characteristics of these estimators for nonnormal parent distributions."

As counsel for SAS Institute pointed out, this suggests that the best definition to implement in a computer program is Y 8 , and yet this is not implemented in PROC UNIVARIATE.

(2) PROC UNIVARIATE parser - reproduction of keywords

addUnsupportedKeywordOption ("all");

(3) Reproduction of names for procedures, functions, etc

Bit Condition Code Hex Description

1 DSLABEL 1 001X Data set labels differ

baseprocplugin\proc_compare\procCompare.cpp in WPS contains a section of code that corresponds to Table 10.1 in which the same names for the various conditions are used in conjunction with the keyword SYSINFO, for instance:

static const int SYSINFO_DSLABEL = 0x1;

It is not necessary to the functioning of the WPS code that the names of the conditions be the same. Dr Quarendon again explained that the reason why WPL adopted this approach was again to ensure traceability.

(4) Reproduction of default values

(5) Copying of output text

(6) Comments in the WPS source code

// Strange transformation for dates before 1900. This is probably a SAS bug

// but since we do not know what else to do we copy this buggy behaviour.

(7) Use of SAS Manuals as the source of optimising information for WPS

"The LOGISTIC procedure uses a simple empirical approach to recognize the data configurations that lead to infinite parameter estimates. The basis of this approach is that any convergence method of maximising the log likelihood must yield a solution giving complete separation, if such a solution exists. In maximizing the log likelihood, there is no checking for complete or quasi-complete separation if convergence is attained in eight or fewer iterations. Subsequent to the eighth iteration, the probability of the observed response is computed for each observation. If the predicted response equals the observed response for every observation, there is a complete separation of data points and the iteration process is stopped."

//Don't check whether Maximum Likelihood estimate

//exists until we get to iteration 9, bizarre but this

//is what SAS does.

(8) Use of SAS data file formats

(9) Use of SAS test scripts from the SAS Manuals

It is common ground that this piece of C++ code runs the same SAS script as is set out in the Manual. Thus it reproduces that part of the Manual.

The 51 examples of similarities between the WPS Manual and the SAS Manuals

The legal context

International treaties

"Article 2

(1) The expression 'literary and artistic works' shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.

(5) Collections of literary or artistic works such as enyclopaedias and anthologies which, by reason of the selection and arrangement of their contents, constitute intellectual creations, shall be protected as such, without prejudice to the copyright in each of the works forming part of such collections.

(6) The works mentioned in this Article shall enjoy protection in all countries of the Union. This protection shall operate for the benefit of the author and his successors in title.

Article 9

(1) Authors of literary and artistic works protected by this Convention shall have the exclusive right of authorising the reproduction of these works, in any manner or form.

(2) It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.

Article 20

The Governments of the countries of the Union reserve the right to enter into special agreements among themselves, in so far as such agreements grant to authors more extensive rights than those granted by the Convention, or contain other provisions not contrary to this Convention. The provisions of existing agreements which satisfy these conditions shall remain applicable."

"Article 9

Relation to the Berne Convention

1. Members shall comply with Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto. However, Members shall not have rights or obligations under this Agreement in respect of the rights conferred under Article 6bis of that Convention or of the rights derived therefrom.

2. Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.

Article 10

Computer Programs and Compilations of Data

1. Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971).

2. Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations, shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.

Article 13

Limitation and Exceptions

Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author."

"Article 1 Relation to the Berne Convention (1) This Treaty is a special agreement within the meaning of Article 20 of the Berne Convention for the Protection of Literary and Artistic Works, as regards Contracting Parties that are countries of the Union established by that Convention. This Treaty shall not have any connection with treaties other than the Berne Convention, nor shall it prejudice any rights and obligations under any other treaties. (2) Nothing in this Treaty shall derogate from existing obligations that Contracting Parties have to each other under the Berne Convention for the Protection of Literary and Artistic Works. (3) Hereinafter, 'Berne Convention' shall refer to the Paris Act of July 24, 1971 of the Berne Convention for the Protection of Literary and Artistic Works. (4) Contracting Parties shall comply with Articles 1 to 21 and the Appendix of the Berne Convention. Article 2 Scope of Copyright Protection Copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such. Article 3 Application of Articles 2 to 6 of the Berne Convention Contracting Parties shall apply mutatis mutandis the provisions of Articles 2 to 6 of the Berne Convention in respect of the protection provided for in this Treaty. Article 4 Computer Programs Computer programs are protected as literary works within the meaning of Article 2 of the Berne Convention. Such protection applies to computer programs, whatever may be the mode or form of their expression. Article 5 Compilations of Data (Databases) Compilations of data or other material, in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations, are protected as such. This protection does not extend to the data or the material itself and is without prejudice to any copyright subsisting in the data or material contained in the compilation. Article 10 Limitation and Exceptions (1) Contracting Parties may, in their national legislation, provide for limitations of or exceptions to the rights granted to authors of literary and artistic works under this Treaty in certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author. (2) Contracting Parties shall, when applying the Berne Convention, confine any limitations of or exceptions to rights provided for therein to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author."

"Concerning Article 4

The scope of protection for computer programs under Article 4 of this Treaty, read with Article 2, is consistent with Article 2 of the Berne Convention and on a par with the relevant provisions of the TRIPS Agreement.

Concerning Article 5

The scope of protection for compilations of data (databases) under Article 5 of this Treaty, read with Article 2, is consistent with Article 2 of the Berne Convention and on a par with the relevant provisions of the TRIPS Agreement."

European directives

"[1] Whereas computer programs are at present not clearly protected in all Member States by existing legislation and such protection, where it exists, has different attributes; [2] The development of computer programs requires the investment of considerable human, technical and financial resources while computer programs can be copied at a fraction of the costs needed to develop them independently; [4] Whereas certain differences in the legal protection of computer programs offered by the laws of the Member States have direct and negative effects on the functioning of the common market as regards computer programs and such differences could well become greater as Member States introduce new legislation on this subject; [5] Whereas existing differences having such effects need to be removed and new ones prevented from arising, while differences not adversely affecting the functioning of the common market to a substantial degree need not be removed or prevented from arising; [6] Whereas the Community's legal framework on the protection of computer programs can accordingly in the first instance be limited to establishing that Member States should accord protection to computer programs under copyright law as literary works and, further, to establishing who and what should be protected, the exclusive rights on which protected persons should be able to rely in order to authorize or prohibit certain acts and for how long the protection should apply; [7] Whereas, for the purpose of this Directive, the term 'computer program' shall include programs in any form, including those which are incorporated into hardware; whereas this term 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; [10] Whereas the function of a computer program is to communicate and work together with other components of a computer system and with users and, for this purpose, a logical and, where appropriate, physical interconnection and interaction is required to permit all elements of software and hardware to work with other software and hardware and with users in all the ways in which they are intended to function; [11] Whereas the parts of the program which provide for such interconnection and interaction between elements of software and hardware are generally known as 'interfaces'; [12] Whereas this functional interconnection and interaction is generally known as 'interoperability'; whereas such interoperability can be defined as the ability to exchange information and mutually to use the information which has been exchanged; [13] Whereas, for the avoidance of doubt, it has to be made clear that only the expression of a computer program is protected and that ideas and principles which underlie any element of a program, including those which underlie its interfaces, are not protected by copyright under this Directive; [14] Whereas, in accordance with this principle of copyright, to the extent that logic, algorithms and programming languages comprise ideas and principles, those ideas and principles are not protected under this Directive; [15] Whereas, in accordance with the legislation and jurisprudence of the Member States and the international copyright conventions, the expression of those ideas and principles is to be protected by copyright; [19] Whereas 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 the program; [20] Whereas the unauthorized reproduction, translation, adaptation or transformation of the form of the code in which a copy of a computer program has been made available constitutes an infringement of the exclusive rights of the author; [21] Whereas, nevertheless, circumstances may exist when such a reproduction of the code and translation of its form within the meaning of Article 4 (a) and (b) are indispensable to obtain the necessary information to achieve the interoperability of an independently created program with other programs; [22] Whereas it has therefore to be considered that in these limited circumstances only, performance of the acts of reproduction and translation by or on behalf of a person having a right to use a copy of the program is legitimate and compatible with fair practice and must therefore be deemed not to require the authorization of the rightholder; [23] Whereas an objective of this exception is to make it possible to connect all components of a computer system, including those of different manufacturers, so that they can work together; [24] Whereas such an exception to the author's exclusive rights may not be used in a way which prejudices the legitimate interests of the rightholder or which conflicts with a normal exploitation of the program; "

"Article 1 Object of protection 1. In accordance with the provisions of this Directive, Member States shall protect computer programs, by copyright, as literary works within the meaning of the Berne Convention for the Protection of Literary and Artistic Works. For the purposes of this Directive, the term 'computer programs' shall include their preparatory design material. 2. 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. 3. A computer program shall be protected if it is original in the sense that it is the author's own intellectual creation. No other criteria shall be applied to determine its eligibility for protection. Article 4 Restricted Acts Subject to the provisions of Articles 5 and 6, the exclusive rights of the rightholder within the meaning of Article 2, shall include the right to do or to authorize: (a) the permanent or temporary reproduction of a computer program by any means and in any form, in part or in whole. Insofar as loading, displaying, running, transmission or storage of the computer program necessitate such reproduction, such acts shall be subject to authorization by the rightholder; (b) the translation, adaptation, arrangement and any other alteration of a computer program and the reproduction of the results thereof, without prejudice to the rights of the person who alters the program; Article 5 Exceptions to the restricted acts 1. In the absence of specific contractual provisions, the acts referred to in Article 4 (a) and (b) shall not require authorization by the rightholder where they are necessary for the use of the computer program by the lawful acquirer in accordance with its intended purpose, including for error correction. 2. The making of a back-up copy by a person having a right to use the computer program may not be prevented by contract insofar as it is necessary for that use. 3. The person having a right to use a copy of a computer program shall be entitled, without the authorization of the rightholder, 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 6 Decompilation 1. The authorization of the rightholder shall not be required where reproduction of the code and translation of its form within the meaning of Article 4 (a) and (b) are indispensable to obtain the information necessary to achieve the interoperability of an independently created computer program with other programs, provided that the following conditions are met: (a) these acts are performed by the licensee or by another person having a right to use a copy of a program, or on their behalf by a person authorized to do so; (b) the information necessary to achieve interoperability has not previously been readily available to the persons referred to in subparagraph (a); and (c) these acts are confined to the parts of the original program which are necessary to achieve interoperability. 2. The provisions of paragraph 1 shall not permit the information obtained through its application: (a) to be used for goals other than to achieve the interoperability of the independently created computer program; (b) to be given to others, except when necessary for the interoperability of the independently created computer program; or (c) 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. 3. In accordance with the provisions of the Berne Convention for the protection of Literary and Artistic Works, the provisions of this Article may not be interpreted in such a way as to allow its application to be used in a manner which unreasonably prejudices the right holder's legitimate interests or conflicts with a normal exploitation of the computer program. Article 9 Continued application of other legal provisions 1. The provisions of this Directive shall be without prejudice to any other legal provisions such as those concerning patent rights, trademarks, unfair competition, trade secrets, protection of semiconductor products or the law of contract. Any contractual provisions contrary to Article 6 or to the exceptions provided for in Article 5(2) and (3) shall be null and void. "

"(15) The Diplomatic Conference held under the auspices of the World Intellectual Property Organisation (WIPO) in December 1996 led to the adoption of two new Treaties, the 'WIPO Copyright Treaty' and the 'WIPO Performances and Phonograms Treaty', dealing respectively with the protection of authors and the protection of performers and phonogram producers. Those Treaties update the international protection for copyright and related rights significantly, not least with regard to the so-called 'digital agenda', and improve the means to fight piracy world-wide. The Community and a majority of Member States have already signed the Treaties and the process of making arrangements for the ratification of the Treaties by the Community and the Member States is under way. This Directive also serves to implement a number of the new international obligations.

(20) This Directive is based on principles and rules already laid down in the Directives currently in force in this area, in particular Directives 91/250/EEC, 92/100/EEC, 93/83/EEC, 93/98/EEC and 96/9/EC, and it develops those principles and rules and places them in the context of the information society. The provisions of this Directive should be without prejudice to the provisions of those Directives, unless otherwise provided in this Directive.

(44) When applying the exceptions and limitations provided for in this Directive, they should be exercised in accordance with international obligations. Such exceptions and limitations may not be applied in a way which prejudices the legitimate interests of the rightholder or which conflicts with the normal exploitation of his work or other subject-matter. The provision of such exceptions or limitations by Member States should, in particular, duly reflect the increased economic impact that such exceptions or limitations may have in the context of the new electronic environment. Therefore, the scope of certain exceptions or limitations may have to be even more limited when it comes to certain new uses of copyright works and other subject-matter.

"

"Article 1 Scope 2. Except in the cases referred to in Article 11, this Directive shall leave intact and shall in no way affect existing Community provisions relating to: (a) the legal protection of computer programs; Article 2 Reproduction right Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part: (a) for authors, of their works; Article 5 Exceptions and limitations ... 2. Member States may provide for exceptions or limitations to the rights provided for in Articles 2 and 3 in the following cases: (d) quotations for purposes such as criticism or review, provided that they relate to a work or other subject-matter which has already been lawfully made available to the public, that, unless this turns out to be impossible, the source, including the author's name, is indicated, and that their use is in accordance with fair practice, and to the extent required by the specific purpose; "

Domestic legislation

"Short title and interpretation

1.

(3) If Her Majesty by Order in Council declares that a treaty specified in the Order is to be regarded as one of the EU Treaties as herein defined, the Order shall be conclusive that it is to be so regarded

General implementation of Treaties

2.(1) All such rights, powers, liabilities, obligations and restrictions from time to time created or arising by or under the Treaties, and all such remedies and procedures from time to time provided for by or under the Treaties, as in accordance with the Treaties are without further enactment to be given legal effect or used in the United Kingdom shall be recognised and available in law, and be enforced, allowed and followed accordingly; and the expression 'enforceable EU right' and similar expressions shall be read as referring to one to which this subsection applies.

(2) Subject to Schedule 2 to this Act, at any time after its passing Her Majesty may by Order in Council, and any designated Minister or department may by order, rules, regulations or scheme, make provision-

(a) for the purpose of implementing any EU obligation of the United Kingdom, or enabling any such obligation to be implemented, or of enabling any rights enjoyed or to be enjoyed by the United Kingdom under or by virtue of the Treaties to be exercised; or

(b) for the purpose of dealing with matters arising out of or related to any such obligation or rights or the coming into force, or the operation from time to time, of subsection (1) above

(4) The provision that may be made under subsection (2) above includes, subject to Schedule 2 to this Act, any such provision (of any such extent) as might be made by Act of Parliament, any enactment passed or to be passed, other than one contained in this Part of this Act, shall be construed and have effect subject to the foregoing provisions of this section "

"Copyright and copyright works 1.(1) Copyright is a property right which subsists in accordance with this Part in the following descriptions of work- (a) original literary, dramatic, musical or artistic works, . Literary, dramatic and musical works 3.(1) In this Part: 'literary work' means any work, other than a dramatic or musical work, which is written, spoken or sung, and accordingly includes: (a) a table or compilation other than a database, (b) a computer program, (c) preparatory design material for a computer program, and (d) a database. The acts restricted by copyright in a work 16.(1) The owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to do the following acts in the United Kingdom  (a) to copy the work (see section 17); (3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it  (a) in relation to the work as a whole or any substantial part of it (b) either directly or indirectly; and it is immaterial whether any intervening acts themselves infringe copyright. (4) This Chapter has effect subject to- (a) the provisions of Chapter III (acts permitted in relation to copyright works) Infringement of copyright by copying 17.(1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies shall be construed as follows. (2) Copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form. This includes storing the work in any medium by electronic means. Criticism, review and news reporting 30.(1) Fair dealing with a work for the purpose of criticism or review, of that or another work or of a performance of a work, does not infringe any copyright in the work provided that it is accompanied by a sufficient acknowledgement and provided that the work has been made available to the public Observing, studying and testing of computer programs 50BA.(1) It is not an infringement of copyright for a lawful user of a copy of a computer program 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. (2) Where an act is permitted under this section, it is irrelevant whether or not there exists any term or condition in an agreement which purports to prohibit or restrict the act (such terms being, by virtue of section 296A, void) Minor definitions 178. In this Part- 'sufficient acknowledgement' means an acknowledgement identifying the work in question by its title or other description, and identifying the author unless  (a) in the case of a published work, it is published anonymously; Avoidance of certain terms 296A.(1) Where a person has the use of a computer program under an agreement, any term or condition in the agreement shall be void in so far as it purports to prohibit or restrict  ... (c) the observing, studying or testing of the functioning of the program in accordance with section 50BA."

Interpretation of domestic legislation in the context of European directives

Interpretation of domestic legislation in the context of international treaties

Interpretation of European directives

"According to settled case-law, in interpreting a provision of Community law it is necessary to consider not only its wording, but also the context in which it occurs and the objectives pursued by the rules of which it is part (see, in particular, Case C-156/98 Germany v Commission [2000] ECR I-6857, paragraph 50, and Case C-53/05 Commission v Portugal [2006] ECR I-6215, paragraph 20)".

"Moreover, Community legislation must, so far as possible, be interpreted in a manner that is consistent with international law, in particular where its provisions are intended specifically to give effect to an international agreement concluded by the Community (see, in particular, Case C-341/95 Bettati [1998] ECR I-4355, paragraph 20 and the case-law cited)."

In that case the Court interpreted Article 3(1) of the Information Society Directive in accordance with Article 8 of the WIPO Copyright Treaty.

Domestic case law concerning copyright in literary works other than computer programs

"(a) As already stated, the overriding question is whether, in creating the defendant's work, substantial use has been made of the skill and labour which went into the creation of the claimant's work and thus those features which made it an original work.

(b) The quality or importance [Catnic Components Ltd v Hill & Smith Ltd [1982] R.P.C. 183 at 223] of what has been taken is much more important than the quantity. [There are statements in many authorities to this effect. See, e.g. Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 W.L.R. 273 at 276; Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 W.L.R. 2416, at 2422, 2425, 2431 ..] The issue thus depends therefore not just on the physical amount taken but on its substantial significance [Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 W.L.R. 273, at 283.] or importance to the copyright work, [Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 W.L.R. 2416, per Lord Millett, at 2426.] so that the quality, or importance, of the part is frequently more significant than the proportion which the borrowed part bears to the whole. In this context, expressions such as quality or importance need to be properly understood. A literary work may convey a very important idea but, as already discussed, the law of copyright is concerned with the protection of the expression of such ideas, not the idea itself. Quality and importance must therefore be understood in terms of the features of the work which made it an original work in the first place. It follows that the quality relevant for the purposes of substantiality in the case of a literary work refers to the literary originality of that which has been copied.

(c) Depending on the circumstances, the question may depend on whether what has been taken is novel or striking, or is merely a commonplace arrangement of words or well known material. [Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 W.L.R. 273, at 276.] In this respect it may be a helpful shortcut to ask whether the part taken could itself be the subject of copyright, [ .] although this should not be used as a substitute for the proper and full test of substantial part. [Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 W.L.R. 273, at 277.] In any event it is in reality merely a restatement of the basic question, which is whether use has been made of those features of the claimants work which, by reason of the skill and labour employed in their production, constitute it an original copyright work.

(d) As a corollary of the last point, the more simple or lacking in substantial originality the copyright work, the greater the degree of taking will be needed before the substantial part test is satisfied. In the case of works of little originality, almost exact copying will normally be required to amount to infringement. [ ]

(e) The more abstract and simple a copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution of the authors skill and labour, tends to lie in the detail with which the basic idea is presented. [Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 W.L.R. 2416 , at 2423, per Lord Hoffmann: .]

(f) In general it is wrong to dissect the claimant's work, taking each part which has been copied and asking whether each part could be the subject of copyright if it had stood alone. It is the work as a whole which must be considered, [ibid., at 2421.] particularly where the originality of the work lies in the creation of the work as a whole.

(j) If what has been taken from the claimants work is material which was not original to the maker of the work, because for example it was copied from another work, then it should be disregarded in deciding this issue. [Warwick Film Productions v Eisinger [1969] Ch 1969] If, however, part of the originality of the claimant's work consisted of the choosing and collecting together of unoriginal material, and the defendant has made unfair use of this labour and skill, then the test will be satisfied. This can often be seen in compilation cases On the other hand, that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright. [Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 W.L.R. 273 at 293.] It is, therefore, often important to isolate what it is the real worth of a work from the copyright point of view, in particular what parts of the work constitute the original contribution of the author and thus represent the skill or labour of his creation.

"

The leading authority on what amounts to reproduction of a substantial part in cases of what is sometimes referred to as "non-textual" copying is the decision of the House of Lords in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 WLR 2416, [2001] FSR 11 (the latter report has the advantage of added paragraph numbers, and hence has frequently been quoted from in subsequent cases) which is repeatedly cited in the above passage. Although this was a case about the copying of an artistic work, Lord Hoffmann also considered literary works in a passage in his speech which has subsequently been cited in several cases concerning literary works:

"[23] It is often said, as Morritt L.J. said in this case, that copyright subsists not in ideas but in the form in which the ideas are expressed. The distinction between expression and ideas finds a place in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (O.J. 1994 L. 336 , p. 213), to which the United Kingdom is a party (see article 9.2: 'Copyright protection shall extend to expressions and not to ideas '). Nevertheless, it needs to be handled with care. What does it mean? As Lord Hailsham of St. Marylebone said in L.B. (Plastics) Ltd v. Swish Products Ltd. [1979] R.P.C. 551, 629, 'it all depends on what you mean by "ideas"'.

[24] Plainly there can be no copyright in an idea which is merely in the head, which has not been expressed in copyrightable form, as a literary, dramatic, musical or artistic work. But the distinction between ideas and expression cannot mean anything so trivial as that. On the other hand, every element in the expression of an artistic work (unless it got there by accident or compulsion) is the expression of an idea on the part of the author. It represents her choice to paint stripes rather than polka dots, flowers rather than tadpoles, use one colour and brush technique rather than another, and so on. The expression of these ideas is protected, both as a cumulative whole and also to the extent to which they form a 'substantial part' of the work. Although the term 'substantial part' might suggest a quantitative test, or at least the ability to identify some discrete part which, on quantitative or qualitative grounds, can be regarded as substantial, it is clear upon the authorities that neither is the correct test. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R. 273 establishes that substantiality depends upon quality rather than quantity (Lord Reid, at p. 276, Lord Evershed, at p. 283, Lord Hodson, at p. 288, Lord Pearce, at p. 293). And there are numerous authorities which show that the 'part' which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part. That is what the judge found to have been copied in this case. Or to take another example, the original elements in the plot of a play or novel may be a substantial part, so that copyright may be infringed by a work which does not reproduce a single sentence of the original. If one asks what is being protected in such a case, it is difficult to give any answer except that it is an idea expressed in the copyright work.

[25] My Lords, if one examines the cases in which the distinction between ideas and the expression of ideas has been given effect, I think it will be found that they support two quite distinct propositions. The first is that a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work. It is on this ground that, for example, a literary work which describes a system or invention does not entitle the author to claim protection for his system or invention as such. The same is true of an inventive concept expressed in an artistic work. However striking or original it may be, others are (in the absence of patent protection) free to express it in works of their own: see Kleeneze Ltd. v. D.R.G. (U.K.) Ltd. [1984] F.S.R. 399. The other proposition is that certain ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form a substantial part of the work. Kenrick & Co. v. Lawrence & Co. (1890) 25 Q.B.D. 99 is a well known example. It is on this ground that the mere notion of combining stripes and flowers would not have amounted to a substantial part of the plaintiff's work. At that level of abstraction, the idea, though expressed in the design, would not have represented sufficient of the author's skill and labour as to attract copyright protection.

[26] Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution of the author's skill and labour, tends to lie in the detail with which the basic idea is presented. Copyright law protects foxes better than hedgehogs. In this case, however, the elements which the judge found to have been copied went well beyond the banal and I think that the judge was amply justified in deciding that they formed a substantial part of the originality of the work."

"[9] The judge did not explain the last sentence of his citation from Lord Hoffmann's speech in the Designers Guild case, in which the judge had appeared as leading counsel. Indeed Lord Hoffmann did not elaborate on his reference to hedgehogs and foxes. However, it appears that it is a reference to a fragment of Greek poetry of the seventh century BC, with which the late Sir Isaiah Berlin begins his famous essay on Tolstoy:

'There is a line among the fragments of a Greek poet Archilochus which says "The fox knows many things, but the hedgehog knows one big thing"'.' (The Hedgehog and the Fox: An Essay on Tolstoy's View of History by Isaiah Berlin. (1953, as revised in 1978) (Phoenix) (1999) p.3).

[10] Sir Isaiah points out that scholars have differed about the correct interpretation of these 'dark' words. They may, on the one hand, mean no more than that the fox, for all his cunning, is defeated by the hedgehog's one defence. But the fragment may also be taken figuratively as contrasting those with a single central vision and organising principle as against those who pursue many ends, often unrelated or contradictory. It was, I think, in the figurative sense that Lord Hoffmann was using his metaphor."

"Copyright does not subsist in ideas; it protects the expression of ideas, not the ideas themselves. No clear principle is or could be laid down in the cases in order to tell whether what is sought to be protected is on the ideas side of the dividing line, or on the expression side."

He went on to quote parts of Lord Hoffmann's speech in Designers' Guild at [24] to [25].

"145. The decided cases help in identifying the relevant necessary and sufficient conditions for substantiality. Thus, it is not necessary for the actual language of the copyright work to be copied or even for similar words to be used tracking, like a translation, the language of the copyright work. It is sufficient to establish that there has been substantial copying of the original collection, selection, arrangement, and structure of literary material, even of material that is not in itself the subject of copyright.

146. It is not, however, sufficient for the alleged infringing work simply to replicate or use items of information, facts, ideas, theories, arguments, themes and so on derived from the original copyright work.

147. I agree with Lloyd LJ that no clear principle can be laid down on how or where to draw the line between the legitimate use of the ideas expressed and the unlawful copying of their expression."

Domestic case law concerning copyright in computer programs

"2. The case raises starkly an issue of considerable importance in the law of copyright. While there are comparatively minor allegations of infringement by copying of certain code and an allegation in relation to the databases, that I summarise below, the striking feature of this action is that Navitaire does not suggest that easyJet or BulletProof ever had access to the source code of the OpenRes system. What is alleged, and not disputed, is that easyJet wanted a new system that was substantially indistinguishable from the OpenRes system, as easyJet used it, in respect of its 'user interface'. This term is used to denote the appearance that the running software presents to the user, who may be an agent in a call centre or a private individual seeking to make a booking by use of the World Wide Web. It substantially achieved this far-from-simple goal. It is not in dispute that none of the underlying software in any way resembles that of OpenRes, save that it acts upon identical or very similar inputs and produces very similar results, but it is said that the copyright in OpenRes is infringed by what was called 'non-textual copying.'

5. There is here an issue of general importance. To emulate the action of a piece of software by the writing of other software that has no internal similarity to the first but is deliberately designed to 'look' the same and achieve the same results is far from uncommon. If Navitaire are right in their most far-reaching submission, much of such work may amount to the infringement of copyright in the original computer program, even if the alleged infringer had no access to the source code for it and did not investigate or decompile the executable program."

"85. However, I am acutely conscious that this may not be a satisfactory answer to the problem. It depends too much upon the way in which OpenRes was written. In answer to a question from me, it was made clear by Dr Hunt that it would be possible to record the command names and their syntax expressly and use a program (a 'parser generator') automatically to construct a parser that recognised such commands accompanied by arguments according to such a syntax. The commands and their syntax would, in such a case, be recognisable as such in the source code for the parser generator. In such a case the copyright owner could point to a written work describing exactly how the alleged infringer's program parsed the code and the consequences would be very different. I am most reluctant to come to a conclusion that depends upon the happenstance of the manner in which the programmer decided to set about constructing his parser. In either case, the ultimate result is a computer program which recognises the input according to the prescribed rules.

86. I consider that the better approach is to take the view that it is not possible to infringe the copyright that subsists either in the source code for a parser or in the source code for a parser generator by observing the behaviour of the final program and constructing another program to do the same thing. In expressing this view, I am verging on drawing a distinction between the 'idea' of the program and its 'expression', and, Navitaire contends, that is not a distinction known to English law and is entirely contrary to the observations of Jacob J. (as he then was) in the leading case of Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] F.S.R. 275.

87. I think the problem should be approached in the following way. To define a series of commands and their syntax to be recognised by the computer is to define a computer language. It is exactly the same as defining a language such as BASIC or a simple language to control a calculator program. A program consists of a statement or series of statements in that 'language'. Thus, to take the availability command as an example, one would say that the language includes an availability statement that starts with the letter 'A' and one of the permissible forms of which is A[date][City-Pair]+. An example of a statement that will be parsed as an allowable statement to control the computer in accordance with this language is A13JUNLTNAMS+. Recitals 13, 15 and 14 (fn They are not numbered in the original, but this is a convenient way to refer to them) of the Software Directive are as follows: .

88. The Software Directive is a harmonising measure. I must construe any implementing provision in accordance with it: if the implementing provision means what it should, the Directive alone need be consulted: if it departs from the Directive, then the latter has been incorrectly transposed into UK law. (fn See Case C-106/89: Marleasing [1990] ECR I-4135, and in Customs and Excise Commissioners v Century Life Plc [2001] S.T.C. 38.) The recitals quoted are said by Laddie, Prescott & Vitoria, Modern Law of Copyright and Designs, (3rd edn), para.34.19 to make it clear that 'computer languages are not included in the protection afforded to computer programs'. With this conclusion I agree, although the point cannot be said to be entirely clear and will require to be referred to the Court of Justice. In my view, the principle extends to ad hoc languages of the kind with which I am here concerned, that is, a defined user command interface. It does not matter how the 'language' of the interface is defined. It may be defined formally or it may be defined only by the code that recognises it. Either way, copyright does not subsist in it. This is of course not to suggest that the expression of a program in a particular language is not entitled to copyright. Quite the reverse. What this recital [sic], and the associated dispositive provision of Art.1(2), appear to be intended to do, is to keep the language free for use, but not the ideas expressed in it:

89. There is here more than an echo of a conceptual distinction between idea and expression, but it is unprofitable to pursue this approach in the light of the express reference to computer languages and interfaces in the recital and to the interfaces in Art.1(2)."

"Copyright protection for computer software is given, but I do not feel that the courts should be astute to extend that protection into a region where only the functional effects of a program are in issue. There is a respectable case for saying that copyright is not, in general, concerned with functional effects, and there is some advantage in a bright line rule protecting only the claimant's embodiment of the function in software and not some superset of that software. The case is not truly analogous with the plot of a novel, because the plot is part of the work itself. The user interface is not part of the work itself. One could permute all the letters and other codes in the command names, and it would still work in the same way, and all that would be lost is a modest mnemonic advantage. To approach the problem in this way may at least be consistent with the distinction between idea and expression that finds its way into the Software Directive, but, of course, it draws the line between idea and expression in a particular place which some would say lies too far on the side of expression. I think, however, that such is the independence of the particular form of the actual codes used from the overall functioning of the software that it is legitimate to separate them in this way, and not to afford them separate protection when the underlying software is not even arguably copied."

"They are, in my view, 'ideas which underlie its interfaces' in the sense used in Art.1(2) of the Directive: they provide the static framework for the display of the dynamic data which it is the task of the software to produce."

It appears from this that he considered that the VT100 screen displays were not protected by copyright. He went on in Annexe 5 of the judgment at [308] to consider the individual displays, from which it appears that he considered that the defendants had not reproduced a substantial part of anything protected by literary copyright in any event. His analysis in respect of the reports in Annexe 6 of the judgment is to the same effect.

"The Directive is concerned only with the protection of computer programs as literary works, and I do not read it as having any impact on relevant artistic copyrights."

Thus the claim in respect of the GUI screens succeeded for the reasons given in more detail in Annexe 5 at [309]-[317].

"As I have indicated above, the case advanced by Navitaire is based on the fact that the functions of OpenRes and eRes are identical to the user so far as the aspects of the system of interest to easyJet are concerned. The case had its origin in the suggestion that what was called the 'business logic' of OpenRes had been appropriated."

"112. I shall return to first principles. For present purposes, a computer running a particular program is a deterministic machine. A particular input to the machine will produce a predictable result derived from all previous inputs to the machine. If therefore one studies a machine in operation, it should be possible to identify the machine's response to all possible sequences of inputs, and so construct a new machine that operates to give the same outputs for the same sequences of inputs by writing an appropriate program. Navitaire contend that if this is done, it follows axiomatically that any copyright in the source code for the first machine must be infringed in writing the second program. Indeed, it was urged on me at an earlier hearing that it was unnecessary to consider any of the source code for the OpenRes system in determining whether there had been copying of a substantial part of the copyright(s) subsisting in the source code for it.

113. There is no doubt that easyJet and BulletProof had no access to the source code of OpenRes, and it is not in dispute that in languages used, actual code and architecture (subject to the claim in respect of the database) the systems are quite different. There is no suggestion that the eRes code represents a translation or adaptation of the OpenRes code. The term 'non-textual copying' might be replaced by the more accurate 'copying without access to the thing copied, directly or indirectly'.

114. The claim depends first upon the contention that the manner in which a machine behaves under the control of a program represents part of the skill and labour that went into the program. This is not an unreasonable observation. On the contrary, it is the whole object of the programmer to get the computer to behave in the required manner.

115. To copy an operating machine in this manner avoids the need to conduct any systems analysis or the production of functional specifications. Thus, it may be observed that although the copyist has not avoided the need to write software to achieve the desired result, he has avoided the need to identify the result by any of the normal methods of analysis that either precede or accompany the writing of a substantial piece of business software ."

"125. This does not answer the question with which I am confronted, which is peculiar, I believe, to computer programs. The reason it is a new problem is that two completely different computer programs can produce an identical result: not a result identical at some level of abstraction but identical at any level of abstraction. This is so even if the author of one has no access at all to the other but only to its results. The analogy with a plot is for this reason a poor one. It is a poor one for other reasons as well. To say these programs possess a plot is precisely like saying that the book of instructions for a booking clerk acting manually has a plot: but a book of instructions has no theme, no events, and does not have a narrative flow. Nor does a computer program, particularly one whose behaviour depends upon the history of its inputs in any given transaction. It does not have a plot, merely a series of pre-defined operations intended to achieve the desired result in response to the requests of the customer.

126. The view in favour of the Navitaire case is expressed concisely by the authors of The Modern Law of Copyright and Designs , 3rd ed (2000) (I have assumed that when they speak of 'obtains from the original program' they do not mean obtain directly, but indirectly from watching the program work), at para 34.64:

'For instance, the writing of a financing program may require as part of the task a careful elucidation of the relevant tax regulationsso that they may be reduced to a series of unambiguous statementsand it will be evident to any lawyer that this alone will probably involve a very large amount of work. A competitor might write a program of his own in a different computer language and arranged in a different way and with many improvements of his own but if he obtains the rules for calculating the tax from the original program instead of working these out for himself it is hard to see why he should not be considered a plagiarist.'

127. There is a counter-example that throws some light on the nature of the problem. Take the example of a chef who invents a new pudding. After a lot of work he gets a satisfactory result, and thereafter his puddings are always made using his written recipe, undoubtedly a literary work. Along comes a competitor who likes the pudding and resolves to make it himself. Ultimately, after much culinary labour, he succeeds in emulating the earlier result, and he records his recipe. Is the later recipe an infringement of the earlier, as the end result, the plot and purpose of both (the pudding) is the same? I believe the answer is no.

128. I think that the answer to the problem is to be gathered from the passage in Lord Hoffmann's speech immediately following that quoted above . from the Designers' Guild case: [he proceeded to cite [25]-[26]].

129. The questions in the present case are both a lack of substantiality and the nature of the skill and labour to be protected. Navitaire's computer program invites input in a manner excluded from copyright protection, outputs its results in a form excluded from copyright protection and creates a record of a reservation in the name of a particular passenger on a particular flight. What is left when the interface aspects of the case are disregarded is the business function of carrying out the transaction and creating the record, because none of the code was read or copied by the defendants. It is right that those responsible for devising OpenRes envisaged this as the end result for their program: but that is not relevant skill and labour. In my judgment, this claim for non-textual copying should fail.

130. I do not come to this conclusion with any regret. If it is the policy of the Software Directive to exclude both computer languages and the underlying ideas of the interfaces from protection, then it should not be possible to circumvent these exclusions by seeking to identify some overall function or functions that it is the sole purpose of the interface to invoke and relying on those instead. As a matter of policy also, it seems to me that to permit the 'business logic' of a program to attract protection through the literary copyright afforded to the program itself is an unjustifiable extension of copyright protection into a field where I am far from satisfied that it is appropriate."

In the subsequent case of Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219, [2007] Bus LR 1032, the claimant was the developer of a video game called Pocket Money which simulated a game of pool. The defendants developed two video games called Jackpot Pool and Trick Shot which also simulated pool games and which the claimant alleged infringed its copyrights. A remarkable feature of the case was that, although there were certain similarities between the defendants' games and the claimant's at a high level of generality, at a more detailed level they were very different.

"31. Mr Howe had to face the formidable objection created by Art. 1.2 of the [Software] Directive and recitals 13 and 15. To my mind these provisions are abundantly clear. The well-known dichotomy between an idea and its individual expression is intended to apply and does to copyright in computer software. When I say 'well-known' I mean not just known to copyright lawyers of one country but well-known all over the world. Recital 15 refers to the protection of the expression of ideas as being 'in accordance with the legislation and jurisprudence of the Member States and the international copyright conventions' and is clearly a reference to this dichotomy. The TRIPS agreement of 1994 likewise recognises this dichotomy, see particularly Art, 9.2.

32. Mr Howe suggested that the dichotomy was intended to apply only to ideas which underlie an element of a program  what he called a 'building block'. He cited (as did the Judge) what Lord Hoffmann said about the dichotomy outside the context of computer programs in Designers Guild: [quoting [25]].

33. As regards [Lord Hoffmann's] first proposition I said much the same thing in Ibcos Computers v. Barclays Mercantile [1994] FSR 275 at p.291

'The true position is that where an 'idea' is sufficiently general, then even if an original work embodies it, the mere taking of that idea will not infringe. But if the 'idea' is detailed, then there may be infringement. It is a question of degree. The same applies whether the work is functional or not, and whether visual or literary. In the latter field the taking of a plot (i.e. the "idea") of a novel or play can certainly infringeif that plot is a substantial part of the copyright work. As Judge Learned Hand said (speaking of the distinction between "idea" and "expression"): "Nobody has ever been able to fix that boundary and nobody ever can", Nichols v Universal Pictures (1930) 45 F. (2d) 119.'

34. Mr Howe then submitted that the 'idea' of the cue pulsing with the power-meter could not be discounted within Lord Hoffmann's first category because here we are concerned with copyright in a computer program. You cannot say the "idea" has no connection with the nature of the work. Nor did it fall within the second category because it was not held 'commonplace,' merely 'obvious.' He sought to bolster the argument by reference to the travaux préparatoires to the Directive. At the very least, he submitted, the position was unclear and that we should refer some questions to the European Court of Justice pursuant to Art. 234 of the Treaty.

35. I reject all of that. First I think the fact that we are considering a computer program copyright does not in any way preclude a mere 'idea' as to what the program should do from being excluded as having nothing to do with the nature of the work. The nature of the work is a computer program having all the necessary coding to function. The general idea is only faintly related to that  no different from the relationship of the general idea of a plastic letter-box draught excluder to the artistic works consisting of the drawings for a particular excluder in the Kleeneze case. Indeed I have to say that, as Mr Howe waxed lyrical about the combination of features in the animation, he sounded more like counsel in a patent case than one in a copyright case. Not all of the skill which goes into a copyright work is protected  the obvious example being the skill involved in creating an invention which is then described in a literary work. An idea consisting of a combination of ideas is still just an idea. That is as true for ideas in a computer program as for any other copyright work.

36. Nor am I impressed by Mr Howe's attempt to limit the dichotomy to 'building blocks'. He sought to do this by reference to recital 14 which refers to 'logic, algorithms and programming languages' as comprising 'ideas and principles.' I see no reason to suppose that recital 13 is thereby limited. Recital 14 is clearly drawn on the basis that the basic position of recital 13 - no protection for ideas and principles - applies also to those specified matters.

37. The same conclusion is reached if one considers TRIPS. Although normally a UK Act is not to be construed by reference to a later international Treaty, I note that Lord Hoffmann considered TRIPS to be of relevance to our domestic copyright law in Designers Guild ( ). Here the position is much clearer because we are dealing with EU law. The ECJ has held that TRIPS (to which the EU as well as its Member States is a party) is relevant to the construction of earlier EU legislation concerned with intellectual property [citing Case C-89/99 Schieving-Nijstad v Groeneveld].

38. Mr Howe sought to escape from the fact that we should construe the UK Act in accordance with the Directive which should be construed so far as possible as to conform to TRIPS by a further submission: that TRIPS was only concerned with minimum standards for intellectual property rights and that its signatories were free to provide for greater rights. So, he said, the EU could provide that copyright protection extended to ideas if it so wanted. Now it is in general true that a party to TRIPS can provide more extensive protection than called for TRIPS, see Art.1. But the concluding words of the first sentence of Art.1 add 'provided that such protection does not contravene the provisions of this Agreement'. Art. 9.2 positively provides that 'copyright protection shall extend to expressions and not to ideas etc. as such'. So in this instance TRIPS lays down a positive rule as to the point beyond which copyright protection may not go. To protect by copyright mere ideas as such would contravene TRIPS. The Software Directive must be construed so as to conform to TRIPS and so must be construed as not to protect ideas as such.

39. As to the travaux Mr Howe took us through the following:

i) the original Commission "Proposal for a Council Directive on the legal protection of computer programs" COM(88) 816 final SYN 183, submitted on 5 January 1989 (89/C91/05);

ii) the amended proposal COM (90) 509 final SYN 183 (1990/C 320/11), submitted on 18 October 1990; and

iii) the Opinion of the Economic and Social Committee.

40. Mr Howe was unable to point to any clear unequivocal statement anywhere suggesting that copyright in computer programs should extend to ideas. Given that state of affairs it would be a waste of time to set out all the material in detail. It is sufficient to record that the submission is based on an argument by implication from unexplained alterations from the original proposal. In particular the original proposal did not use the expression 'element of a computer program' in proposed Art.1.2 but merely to 'the ideas, principles, logic, algorithms or programming languages.' I cannot extract from this any intention to extend protection to ideas provided they are not 'elements.'

41. I am reinforced in my view by the fact that the Economic and Social Committee (whose report is specifically recited in the Directive as being a document to which the Council had regard in making the Directive) clearly did not think the proposal was limited as suggested by Mr Howe. It said tersely:

'There is no dispute that 'ideas and principles' are outside the protection of the law of copyright.'"

"48. Mr Howe attacked that. I quote his skeleton argument:

'this analogy is a poor one. The reason is that the first chef has deployed two quite distinct types of skill and labour. The first is the skill of devising a recipe, a skill which on no view forms part of the skill and labour protected by copyright in literary works. The second is skill and labour in reducing the recipe he has devised to written form. A copyist who copies from his pudding rather than from his recipe book may appropriate the former skill and labour but none of the latter. By contrast, a copyist who copies the function of a computer program to write his own program to achieve the same results is clearly appropriating part of the skill and labour expended in designing the program.'

49. He further developed the argument basing himself on the recital 7 of the Directive. He asked us to suppose a case where there are two clear stages in the making of a programa first stage where the designer sets out all the things he wants the program to be able do and a second stage (which may be by a different person) where the actual program code is written. Mr Howe contended that the first stage was intended to be protected as such, even if it consisted only of ideas as to what the program should do. Going back to the analogy, the 'preparatory work; for the program is like the skill of devising the recipe and the actual program writing like the reduction of the recipe to written form. The difference, he submitted, is that for computer programs, unlike the recipe, the preparatory work is to be protected.

50. I reject the argument. The reason is simple. The Directive does not say that mere ideas by way of preparatory design work are to be protected. As I have said it makes it clear that for computer programs as a whole (which includes their preparatory design work) ideas are not to be protected. What is protected by way of preparatory design work is that work as a literary workthe expression of the designs which are to go into the ultimate program, not the ideas themselves.

51. So, for example, if Mr Jones had actually written a description of the pulsing, rotating cue, and synchronised power meter his description would (if not too trivial at least) be protected as a literary work. People could not copy that. But they could use the same idea. Similarly and more generally, a written work consisting of a specification of the functions of an intended computer program will attract protection as a literary work. But the functions themselves do not. Of course to someone familiar with the prior English law it is self-evident that copyright could subsist in such a description. The fact that a work can get copyright even if mundane, is old and familiar to an English lawyer. But the Directive needed to say that protection as a literary work should be provided for preparatory design work because not all member states under their existing laws necessarily provided that. That is the whole point of the Directiveand the clear reason for it is recited in article 1.

52. So I think Mr Howe's attack on the Navitaire case [2006] RPC 111 fails. The reasoning in the Navitaire case provides a second reason for dismissing this appeal. Pumfrey J was quite right to say that merely making a program which will emulate another but which in no way involves copying the program code or any of the program's graphics is legitimate.

53. Finally Mr Howe suggested the law was sufficiently uncertain as to warrant a reference being made to the European Court of Justice. No less than six elaborate draft questions were supplied. I do not think it is necessary to make any reference to resolve this case. It is wholly unrealistic to suppose that the European Court of Justice would hold that copyright protection was to be given to ideas at such a high level of abstraction as those in this case."

Domestic case law on fair dealing for the purposes of criticism or review

"9-23 Approach to construction. As to the various expressions, 'criticism or review' and 'reporting current events', these are expressions which should be interpreted liberally and their precise boundaries cannot be plotted: the nearer any use comes to the boundaries, unplotted as they are, the less likely is the use to be fair. [Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1 WLR 605; [1999] F.S.R. 610 The same is no doubt true of the expressions 'non-commercial research' and 'private study'.] All the fair dealing provisions use the words 'for the purpose of'. As to whether this expression imports an objective or subjective test, it is important to construe the composite phrases 'for the purpose of non-commercial research' and 'for the purpose of private study', etc. rather than each single word. When this is done, the precise mental element on the part of the user ceases to be of great importance. The words 'in the context of' or 'as part of an exercise in' could be substituted for 'for the purpose of' without any significant change of meaning. The task of the court is to consider the use made of the work and then ascertain what was the perceived purpose of that use .

9-30 Form of acknowledgment. The acknowledgment of the work may take the form of identification of its title or some other description of it. [CDPA 1988, s.178 .] Identification of the author need not by reference to his proper name, particularly if this would be unlikely to have any particular significance or would be meaningless to the bulk of the intended audience. [Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1 WLR 605 ; [1999] F.S.R. 610; Newspaper Licensing Agency Ltd v Marks and Spencer plc [1999] R.P.C. 536 (CA). ] Use of a pseudonym by which an author is known to the public will therefore be sufficient.] .

9-38 For the purposes of criticism or review. The proper approach to the construction of these expressions has already been considered. [ ] In Australia, the words 'criticism' and 'review' have both been given their dictionary definitions. Thus 'criticism' has been defined as: (1) The act or art of analysing and judging the quality of a literary or artistic work, etc. (as in literary criticism). (2) The act of passing judgment as to the merits of something. (3) A critical comment, article or essay. [De Garis v Neville Jeffress Pidler Pty Ltd (1990) 18 I.P.R. 292 at 299.] 'Review' has been defined as: 'a critical article or report, as in a periodical, on some literary work, commonly some work of recent appearance; a critique'. [De Garis v Neville Jeffress Pidler Pty Ltd (1990) 18 I.P.R. 292.] 'Criticism' can thus be seen as describing the 'critical application of the mental faculties', whilst 'review' describes the results of such a process. [De Garis v Neville Jeffress Pidler Pty Ltd (1990) 18 I.P.R. 292.] Criticism may be strongly expressed and unbalanced, the issue then usually being whether the use is fair dealing. [Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1 WLR 605, [1999] F.S.R. 610, CA. An author's remedy for unbalanced criticism which still amounts to fair dealing will lie, if anywhere, in the law of defamation: Pro Sieben.]

9-55 Relevant considerations. Relevant factors to be taken into account in judging whether the dealing was fair have been identified in various cases. None is determinative and the weight to be attached to them will vary from case to case. In particular, the various factors will carry different weight according to the type of dealing. Cases of fair dealing for purposes of criticism, review and the reporting of current events usually raise more difficult problems than cases of non-commercial research and private study. The three most important factors have been identified to be: [Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142; [2002] Ch.149 ]

(1) The degree to which the alleged infringing use competes with exploitation of the copyright work by the owner. This is likely to be a most important factor.

(2) Whether the work has been published or not .

(3) The extent of the use and the importance of what has been taken. In many cases this will be a highly important factor "

European Union case law on copyright in literary works

"31. It is clear that Directive 2001/29 does not define the concept of either 'reproduction' or 'reproduction in part'.

32. In those circumstances, those concepts must be defined having regard to the wording and context of Article 2 of Directive 2001/29, where the reference to them is to be found and in the light of both the overall objectives of that directive and international law (see, to that effect, SGAE, paragraphs 34 and 35 and case-law cited).

33. Article 2(a) of Directive 2001/29 provides that authors have the exclusive right to authorise or prohibit reproduction, in whole or in part, of their works. It follows that protection of the author's right to authorise or prohibit reproduction is intended to cover 'work'.

34. It is, moreover, apparent from the general scheme of the Berne Convention, in particular Article 2(5) and (8), that the protection of certain subject-matters as artistic or literary works presupposes that they are intellectual creations.

35. Similarly, under Articles 1(3) of Directive 91/250, 3(1) of Directive 96/9 and 6 of Directive 2006/116, works such as computer programs, databases or photographs are protected by copyright only if they are original in the sense that they are their author's own intellectual creation.

36. In establishing a harmonised legal framework for copyright, Directive 2001/29 is based on the same principle, as evidenced by recitals 4, 9 to 11 and 20 in the preamble thereto.

37. In those circumstances, copyright within the meaning of Article 2(a) 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.

38. As regards the parts of a work, it should be borne in mind that there is nothing in Directive 2001/29 or any other relevant directive indicating that those parts are to be treated any differently from the work as a whole. It follows that they are protected by copyright since, as such, they share the originality of the whole work.

39. In the light of the considerations referred to in paragraph 37 of this judgment, the various parts of a work thus enjoy protection under Article 2(a) of Directive 2001/29, provided that they contain elements which are the expression of the intellectual creation of the author of the work.

45. Regarding the elements of such works covered by the protection, it should be observed that they consist of words which, considered in isolation, are not as such an intellectual creation of the author who employs them. It is only through the choice, sequence and combination of those words that the author may express his creativity in an original manner and achieve a result which is an intellectual creation.

46. Words as such do not, therefore, constitute elements covered by the protection.

47. That being so, given the requirement of a broad interpretation of the scope of the protection conferred by Article 2 of Directive 2001/29, the possibility may not be ruled out that certain isolated sentences, or even certain parts of sentences in the text in question, may be suitable for conveying to the reader the originality of a publication such as a newspaper article, by communicating to that reader an element which is, in itself, the expression of the intellectual creation of the author of that article. Such sentences or parts of sentences are, therefore, liable to come within the scope of the protection provided for in Article 2(a) of that directive.

48. In the light of those considerations, the reproduction of an extract of a protected work which, like those at issue in the main proceedings, comprises 11 consecutive words thereof, is such as to constitute reproduction in part within the meaning of Article 2 of Directive 2001/29, if that extract contains an element of the work which, as such, expresses the author's own intellectual creation; it is for the national court to make this determination.

49. It must be remembered also that the data capture process used by Infopaq allows for the reproduction of multiple extracts of protected works. That process reproduces an extract of 11 words each time a search word appears in the relevant work and, moreover, often operates using a number of search words because some clients ask Infopaq to draw up summaries based on a number of criteria.

50. In so doing, that process increases the likelihood that Infopaq will make reproductions in part within the meaning of Article 2(a) of Directive 2001/29 because the cumulative effect of those extracts may lead to the reconstitution of lengthy fragments which are liable to reflect the originality of the work in question, with the result that they contain a number of elements which are such as to express the intellectual creation of the author of that work."

"56. For the interpretation of each of those conditions in turn, it should be borne in mind that, according to settled case-law, the provisions of a directive which derogate from a general principle established by that directive must be interpreted strictly (Case C-476/01 Kapper [2004] ECR I-5205, paragraph 72, and Case C-36/05 Commission v Spain [2006] ECR I-10313, paragraph 31).

57. This holds true for the exemption provided for in Article 5(1) of Directive 2001/29, which is a derogation from the general principle established by that directive, namely the requirement of authorisation from the rightholder for any reproduction of a protected work.

58. This is all the more so given that the exemption must be interpreted in the light of Article 5(5) of Directive 2001/29, under which that exemption is to be applied only in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder."

SAS Institute's claim that WPS infringes the copyrights in the SAS Components

Computer programs as literary works

Ideas, procedures, methods of operation and mathematical concepts

"In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work."

At that time there was nothing to require the United Kingdom courts to distinguish between "expressions" and "ideas, procedures, methods of operation and mathematical concepts as such", since, even if they had recognised that Article 2 of the Berne Convention should be interpreted in that manner, the principle of statutory construction articulated by Lord Diplock in The Jade did not require them to interpret the 1988 Act in the same way. For the reasons given above, the 1988 Act must now be interpreted in conformity with Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty. As a result, the United Kingdom courts must now interpret the 1988 Act so as to protect "expressions" and not "ideas, procedures, methods of operation and mathematical concepts as such".

Copyright protection for programming languages, interfaces and functionality

"Protection in accordance with this Directive shall apply to the expression in any form of a computer program but shall not extend to the ideas, principles, logic, algorithms or programming languages underlying the program. Where the specification of interfaces constitutes ideas and principles which underlie the program, those ideas and principles are not copyrightable subject matter."

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

"As regard the scope of protection given by the application of copyright to computer programs, the original proposal has been abridged and simplified as proposed by the European Parliament to make clear the basic doctrine of copyright law which the Directive seeks to apply. That doctrine, widely applied in the jurisprudence of the Member States even if not always articulated explicitly in each national legislation, is that copyright protection only applies to the expression of an idea or principle, and not to the idea or principle itself."

"The Commission has accepted the amendment of the Parliament to the text of article 1.3 of the original proposal which re-states, in a simplified form, the general principle of copyright law on which the scope of protection of this proposal is based. That principle is the following: copyright protects the way in which an idea is expressed, but does not give a monopoly in the idea itself. A second author may take up an idea which he has found in an existing work and re-formulate it, using a different expression, and acquiring his own copyright in that new expression. The text proposed by the Parliament makes clear that this copyright principle is to be applied to every part of a program: it is therefore a formulation capable of being interpreted by national courts across a broad range of situations "

"3.11. In order to produce interoperative systems it is necessary to replicate the ideas, rules or principles by which interfaces between systems are specified, but not necessarily to reproduce the code which implements them. Ideas, rules or principles are not copyrightable subject matter. Such ideas, rules or principles may be used by any programmer in the creation of an independent implementation of them in an interoperative program.

3.12 Competitors are therefore free, once they establish through independent analysis which ideas, rules or principles are being used, to create their own implementation of the ideas, rules or principles in order to make compatible products. They may build on the identical idea, but may not use the same expression as that of other protected programs. There is thus no monopoly on the information itself, but only a protection of the form of expression of that information.

3.13 If similarities in the code which implements the ideas, rules or principles occur as between interoperative programs, due to the inevitability of certain forms of expression, where the constraints of the interface are such that in the circumstances no different implementation is possible, then no copyright infringement will normally occur, because in these circumstances it is generally said that idea and expression have merged.

3.14 Although it is technically possible to decompile a program in order to find out information concerning access protocols and interfaces this is a lengthy, costly and inefficient procedure. It is usually more efficient for the parties concerned to agree on the terms under which the information will made available. Problems of access to information may have to be addressed by other means which are outside the scope of this Directive."

"In response to concerns expressed by the European Parliament and by part of the industry, a further exception to the author's exclusive rights for the purpose of creating an interoperable program has been accepted.

Computer programs have to interoperate with hardware and other software in order to perform their functions and in order to form systems and networks. If a manufacturer wishes to interconnect his products with others supplied by a different manufacturer he may need information from the manufacturer about how his products are designed to interconnect.

Such information may be at the present time usually available through materials supplied by manufacturers or by the growing move towards the use of publicly available open standards where the means to interconnect have been standardised and described and documented by international standards bodies.

However if information is not forthcoming or if the design of the means of interconnection is a non-standard proprietary one, manufacturers could find themselves unable to derive sufficient detailed information without committing acts which technically violate the author's exclusive rights to prevent the reproduction and translation of his program. These acts of reproducing and translating the object code version of the program, which is the version normally supplied the public, back into a language representing something more like the original source code in which the programmer devised a programme are often referred to loosely as 'reverse engineering' the program.

Although a dominant supplier who refused to make information available to provide for interoperability between programs or between programs and hardware could be subject to the application of the competition rules under Articles 85 and 86 of the EEC treaty, the Commission has been persuaded that the original proposal, which left the matter of 'reverse engineering' not explicitly regulated, lacked sufficient clarity. It is therefore proposed that an additional Article 5bis dealing with a derogation allowing 'reverse engineering' of programs for the purposes of interoperability of the programme should be added. Nothing in this Directive should prevent however the 'reverse engineering' of a program, whether incorporated into hardware or not, under the conditions of Article 5bis for the purpose of independently creating an interoperable program, wherever it may be incorporated."

"The problem which this article addresses stems from the nature of the computer program highlighted in the context of Article 5 paragraph 5 above, that is to say, the fact that it cannot be easily 'read' by a human user.

However, a computer program may be required to interconnect and interact with other computer programs, for example, an applications program with an operating system. In order for the creators of computer programs to understand how their creations can interconnect and interact with those of others, they must be able to perceive in detail how the first manufacturer has provided for the exchange of data between his program and other programs.

In many instances the creator of the original program will have made available through published manuals or on request, sufficient information about the parts of his program whose function is to provide for its interoperation with other programs. In other instances, the design of those parts of the program will be standardized and publicly documented for all creators of programs to work to a common agreed interface specification. In a certain number of cases it may be that information is not forthcoming by either of these means. In such cases the creator of the original program, by withholding information from competitors, can ensure that only he can supply the range of other programs which will interoperate with his original program.

Article 5 paragraph 5 is intended to permit much of the information required for the purpose of interoperability to be derived from observation, study or testing of the program without committing infringements of the author's exclusive rights. These techniques will be adequate in many circumstances. However, where their use does not produce sufficient information and where other non-infringing means such as the use of publicly available material or published documentation is also inadequate, the Commission's amended proposal ensures, that as a last resort, a person having a right to use a copy of the program may commit acts of reproduction and translation of the machine-readable form of the code in which the copy has been supplied without the authorization of the right holder, subject to certain limitations.

In this way, the amended proposal provides a safety mechanism by which an independently created program can be made to be interoperable with an existing program, even when the creator of the existing program has chosen not to reveal to third parties the specification of the interfaces whose function is to provide a means of interconnection with other elements of a computer system."

"2.2 As far as the property right is concerned, a computer program, in common with other works protected by intellectual property legislation, is the result of a creative intellectual human activity. While its mode of expression or fixation may still be unfamiliar to many, the degree of creativity, skill and inventiveness required to devise a program make it no less deserving of protection than other works protected by copyright. The fact that computer programs have utilitarian function does not change this.

2.3 These elements of creativity, skill and inventiveness manifest themselves in the way in which the program is elaborated. The tasks to be performed by a computer program need to be defined and an analysis of the possible ways to achieve these results must be carried out. A selection has been made of the various solutions and the steps to achieve the end result must be listed. The way in which these steps are expressed gives the program its particular characteristics of speed, efficiency and even style. A program has a structure, with sections and subsections, through which information flows. In common with other literary works, the computer program also has an underlying logic in the presentation of the various steps.

2.4 These steps, the algorithms, from which the program is built up, should not be protected as such against unauthorized reproduction. They are the equivalent of the words by which the poet or the novelist creates a work of literature, or the brushstrokes of the artist or the musical scales of the composer.

2.5 As with literary works in general, protection can only be envisaged for a computer program from the point at which the selection and compilation of these elements indicate the creativity and skill of the author, and set his work apart from that of other authors.

2.7 In practice, computer programs are rarely of such simplicity that authors will arrive at totally identical programs, independently of each other. On the other hand many sub-routines which programmers habitually use in order to build up programs are in themselves commonplace in the industry and the originality of the program may lie in the selection and compilation of these otherwise commonplace programs.

2.8 The success of the program in terms of its ability to perform the task which is required will to a large extent be conditioned by these choices made by the author of the program at every step along the way. This success will manifest itself in a program which is quicker, easier, more reliable, more comprehensive, more productive to use than its predecessors or its competitors. "

"1.3 Copyright protects the expression of ideas but not the ideas themselves. Therefore the protection given to computer programs will extend to the program as a whole, and to its constituent parts, in so far as they represent a sufficient degree of creativity to qualify as 'works' in themselves. The only criterion which should be applied to determine eligibility for protection is that of originality, that is, that the work has not been copied. No other aesthetic or qualitative test should be applied. Sub-routines and routines which go together to form modules which in turn form programs may all qualify for protection independently of the protection given to the program as a whole, that is, as a compilation of such elements. The algorithms which go to make up the sub-routines are not normally in themselves capable of receiving protection under copyright insofar as they are similar in nature to mathematical formulae. They may in exceptional circumstances attract patent protection. Similarly, the ideas, principles, or logic which underlie the program will not be copyrightable.

1.4a Many algorithms and many sub-routines are commonplace in the industry. They may have been placed or have fallen into the public domain or they may be de facto standard routines or algorithms. Where a program is composed wholly or in part of such commonplace or unprotected algorithms and routines, it should nevertheless be protected as a compilation, provided that it is original in the above mentioned sense and that the creator demonstrated skill and labour in the creation of the compilation."

" The proposal also takes up the clarification proposed by Parliament that preparatory design work leading to the development of a computer program is protected as a computer program provided the nature of the preparatory work is such that a computer program can result from it at a later stage."

This commentary formed the basis for recital [7] of the Software Directive.

Reproduction of a substantial part

"The first question to be determined is whether or to what extent copyright attaches to these coupons. The respondents say that a coupon must be regarded as a single work and that as such it is protected by copyright. The appellants seek to dissect the coupon. They would not only dissect it into the 16 lists, but they would further dissect each list into heading, selection of matches, and statement of odds offered for the various kinds of bets. They admit that there is copyright in the selection and in the statements of odds offered: they can safely do that because there they did not copy. But they deny any copyright as regards the rest of the coupon.

The Copyright Act, 1956, provides, by section 2, that copyright shall subsist in every original literary work and, by section 48, that literary work includes any written table or compilation. I have no doubt that the coupon must be treated as a single compilation. The appellants' dissection theory is derived from some statements in infringement cases and I must, therefore, examine at this point the law regarding infringement. Copyright gives the exclusive right to do certain things including 'reproducing the work in any material form' (section 2 (5)), and reproduction includes reproduction of a substantial part of the work (section 49 (1)). Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken. One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data. So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiffs' work as a whole is 'original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial.

A wrong result can easily be reached if one begins by dissecting the plaintiffs' work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole cannot be. Indeed, it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright."

"The exercise in dissection also, as it seems to me, involved two errors. First, it ignored substantial parts of the judge's findings on what had been copied and, secondly, it dealt with the copied features piece-meal instead of considering, as the judge had done, their cumulative effect."

"The House of Lords decided in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 that the question of substantiality is a matter of quality rather than quantity. The relevant passages are too well known to require citation: see Lord Reid, at p 276, Lord Evershed, at p 283, Lord Hodson, at p 288 and Lord Pearce, at p 293. But what quality is one looking for? That question, as it seems to me, must be answered by reference to the reason why the work is given copyright protection. In literary copyright, for example, copyright is conferred (irrespective of literary merit) upon an original literary work. It follows th