SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) (23 July 2010)

SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) (23 July 2010)
As counsel for SAS Institute submitted, the starting point for consideration of these questions is that Article 10(1) of TRIPS, Article 4 of the WIPO Copyright Treaty and Article 1(1) of the Software Directive all provide that computer programs are to be protected as literary works within the Berne Convention. Thus, subject to specific exceptions such as those contained in Articles 5 and 6 of the Software Directive, computer programs are protected in the same manner and to the same extent as any other literary work.

It is nevertheless inescapable, for the reasons so eloquently explained by Pumfrey J in Navitaire, in particular at [112] and [125], that computer programs are different from other kinds of literary works and present peculiar problems for copyright law. As in that case, so too in this one, counsel for SAS Institute sought to rely upon doctrines established in relation to other kinds of literary work. While I agree that the general principles of copyright law must be applied to computer programs, it does not necessarily follow that particular doctrines which were established in relation to other types of literary works can be applied to computer programs, or applied in the same way.

lthough counsel referred to all of the speeches in Ladbroke, it is sufficient to cite what Lord Reid said at 276-277:

"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."

In Designers' Guild Lord Hoffmann criticised the Court of Appeal for having engaged in dissection of the respective designs, saying at [19]:

"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."

In my judgment neither of these passages bears the weight that counsel for SAS Institute placed on them. Lord Reid's speech was primarily directed to the fallacy of considering the constituent parts of a work when deciding whether the whole work is original, particularly in a case where the work is a compilation. Lord Hoffmann's speech was directed to the fallacy of considering the parts reproduced in isolation and not as a whole. It is trite law that, in determining whether the defendant has reproduced a substantial part of the copyright, the court must focus on the quality of the parts that have been reproduced. As Lord Hoffmann (with whom the other members of the House of Lords agreed) explained in Newspaper Licensing Agency Ltd v Marks & Spencer plc [2001] UKHL 38, [2003] 1 AC 551 at [19] (emphasis added):

"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 that the quality relevant for the purposes of substantiality is the literary originality of that which has been copied. In the case of an artistic work, it is the artistic originality of that which has been copied. So, in the recent case of Designers Guild Ltd v Russell Williams (Textiles) Ltd (trading as Washington DC) [2000] 1 WLR 2416, the House decided that although not the smallest part of a fabric design had been reproduced with anything approaching photographic fidelity, the copying of certain of the ideas expressed in that design which, in their conjoined expression, had involved original artistic skill and labour, constituted the copying of a substantial part of the artistic work."

This passage was strictly obiter, but it plainly represents the considered view of the House of Lords. In any event, the Court of Justice has now adopted the same approach in Infopaq in holding at [48] that an extract of 11 words from a literary work constituted a substantial part of the work if the extract contained an element of the work which expressed the author's own intellectual creation. It follows from this that, when considering whether a substantial part has been reproduced, it is necessary to focus upon what has been reproduced and to consider whether it expresses the author's own intellectual creation. To that extent, some dissection is not merely permissible, but required. On the other hand, the Court of Justice also held in Infopaq at [49] that it is necessary to consider the cumulative effect of what has been reproduced.