In November 2011, the Advocate-General of the European Court of Justice (ECJ), Yves Bot, issued an influential but non-binding legal opinion, positing that the functional aspects of computer programs should not be protected under copyright law. To do so would be against the interests of fair dealing, by preventing decompilation and reverse engineering, among other things. Complete coverage of the opinion can be found here, and on 2 May 2012, the ECJ reaffirmed much of Adv.-Gen. Bot’s opinion, by ruling that neither the functionality, nor the programming language of computer programs are copyrightable under EU law.

Citing the relevant international legislation, namely, Article 2(1) of the Berne Convention for the Protection of Literary and Artistic Works, Articles 9 and 10(1) of the TRIPS Agreement and Articles 2 and 4 of the WIPO Copyright Treaty, the ECJ attempted to tread the fine line between the protection of the rights of users versus those the copyright owners. It clarified that computer programs were indeed protectable under EU and international copyright law, so long as they qualified as original literary works of expression, going so far as to include the preparatory steps leading to the development of the source or object codes under the umbrella of copyrightability. As a trade-off however, the Court also stressed that the laws for authorial protection only extend to prevent unauthorized reproduction, and hence, a contract could not be employed to prevent lawful third-party use. Like Adv-Gen. Bot’s opinion, the ECJ also referenced the Computer Programs (91/250/EEC) and Copyright (2001/29/EC) Directives of the European Commission, stating that the authorization of the rightsholder is not required when decompilation is necessary to achieve interoperability. And turning to national UK law, the ECJ pointed out that while s.(1)(1)(a) of the Copyright, Designs and Patent Act (1988) treats copyright as an exclusionary property right in literary, dramatic, musical or artistic works, s.50(BA)1 of the same act deems copying for research, study or testing of the function of the program as acceptable fair dealing uses of a computer program.

Analytically, the ECJ harkened back to questions asked in the preliminary ruling, grouping them into three categories. In the first part, it dealt with whether the functionality, programming language and data files used to exploit the functionality can be considered within the realm of copyrightable expression under Article 1(2) of Directive 91/250. As per this aspect, the source and object codes of a program were found to be copyright-protected, since they led to the “reproduction or subsequent creation of the program.” However, the graphic user interface, which constituted the functionality of the program, and therefore only enabled users to utilize the program and not to reproduce was not copyrightable expression under the Directive. The WCJ thus determined that neither the functionality of a computer program, nor its programming language were worthy of copyright protection.

In the second stage of the analysis, the ECJ considered whether Article 5(3) of Directive 91/250 allows a party that has legally obtained a copy of a program to use, study and test the program with a view to discovering the underlying principles in order to perform a function that would go beyond the usual purposes contained within the license of the product (e.g. the development of a parallel program using the same programming language). By framing these underlying principles as the ideas at the core of the expression (the copyrighted source program), the ECJ then determined that Article 5(3) of Directive 91/250 does not extend protection over these, and as such, allows the discovery of these through decompilation or reverse engineering. The ECJ clarified that this allowance was naturally based on circumstances where the defendant party did not have access to the plaintiff’s source code, and hence, could only discover the underlying principles through original research, study and testing.

In the final category, the ECJ considered whether Article 2(a) of Directive 2001/29/EC can be interpreted as meaning that the reproduction of certain elements used to describe one program in the manual, or the contents of a second program can be deemed as infringement. While agreeing that the plaintiff’s user manual was indeed a protected literary work, the ECJ also said that the individualized components of a computing language (keywords, syntax, commas, commands, defaults, figures etc.) could only be considered as creating an infringable work if a reproduction of these was also a copy of the “intellectual creation of the author of the user manual.” The question however, as left open for national courts to consider.

The ECJ’s attempts to balance the competing rights of users and the copyright owners of computer programs clearly come to the fore in this ruling. While this case’s most obvious implications mean that the ECJ heeded Adv.-Gen Bot’s warning and prevented the unprecedented monopoly of functionality, it remains to be seen whether both copyright owners and users can rest easy, especially given the vast sums of capital that are at stake in the often-precarious computer software industry.

Mekhala Chaubal is a JD candidate at Osgoode Hall Law School.

Posted in Blogs, Copyright, copyright reform, European Union, Literary Works, UK, Uncategorized, WIPO