TABLE OF CONTENTS I. INTRODUCTION 615 II. EUROPEAN UNION 617 A. The Software Directive 617 B. SAS Institute Inc. v. World Programming Ltd. 619 III. THE PACIFIC RIM DURING THE 1990S 621 A. Japan 622 B. South Korea 626 C. Hong Kong 627 D. The Philippines 630 E. Singapore 631 F. Australia 631 IV. THE NEW MILLENNIUM 634 V. FREE TRADE AGREEMENTS MANDATE PROTECTIONS for 635 INTEROPERABILITY VI. CONCLUSION 636 I. INTRODUCTION
Professor Menell in his article Rise of the Copyright Dead? (1) describes two API copyright wars: the first fought in U.S. courts from the early 1980s to the mid-1990s, and the second starting with the filing of Oracle's complaint against Google in 2010. These two API copyright wars exist within a larger global conflict concerning copyright and interoperability that has been waged over the past 30 years. This article provides a brief overview of this larger conflict. (2)
Unlike the U.S. API copyright wars, which occurred largely in the courts, the global conflict has been waged primarily in legislatures. But, as in the United States, the global conflict has also centered on two related questions. First, does the information necessary for software interoperability ("interface specifications") fall within the scope of copyright protection? Second, does copyright prohibit the reproduction performed in the course of reverse engineering essential for achieving interoperability? (3) Professor Menell explains that in 1998, after the end of the first API copyright war, the answer to both those questions under U.S. law was "no." (4) As this article shows, legislatures around the world have generally reached the same conclusions. Thus, the U.S. Court of Appeals for the Federal Circuit's decision in Oracle v. Google (5) extending copyright protection to Java declaring code is an aberration to global consensus.
The same parties have fought in both the global conflict and the U.S. API copyright wars. Professor Menell notes that "a new generation of technology companies" led by Sun Microsystems "formed the American Committee for Interoperable Systems ("ACIS") in the early 1990s to advocate for less protectionist intellectual property policies for computer software." (6) ACIS and another organization with overlapping membership, the Computer & Communications Industry Association ("CCIA"), filed amicus briefs in at least sixteen U.S. cases relating to interoperability. (7) Both ACIS and CCIA also participated in the global conflict. Joining them were the European Committee for Interoperable Systems ("ECIS"), the Canadian Association for Interoperable Systems ("CAIS"), and the Supporters of Interoperable Systems in Australia ("SISA"), all of which subscribed to the position that copyright should not extend to interface specifications or restrict reverse engineering. (8)
Opposing these pro-interoperability groups in both the united States and overseas were organizations like the Computer and Business Equipment Manufacturers Association ("CBEMA") and the Business Software Alliance ("BSA"), which included dominant firms such as IBM and Microsoft. (9) CBEMA filed amicus briefs--on the opposite side from ACIS and CCIA--in many U.S. cases. (10) Additionally, both groups lobbied against provisions favorable to interoperability in foreign legislatures. (11) They often enlisted the support of the U.S. government in these lobbying efforts. (12)
The international phase of the global conflict began in earnest in the late 1980s, several years after commencement of the first U.S. API copyright war, as the European union considered the adoption of a Software Directive. After the adoption of the Directive in 1991, (13) the conflict spread to the Pacific Rim, where countries interested in promoting interoperability debated whether to follow the U.S. approach based on the Sega v. Accolade (14) fair use decision, or to enact a specific statutory exception modeled on the Software Directive. The most contentious period of the global conflict lasted through the end of the 1990s, although some battles were still fought in the new millennium, most notably the SAS v. World Programming litigation (15) in the EU.
The Software Directive
In 1988, the EU began deliberating a Software Directive, which would establish principles for copyright protection of computer programs that EU member states would have to implement in their domestic copyright laws. (16) The starting point was a Green Paper issued by the European Commission outlining the options available for the protection of software. (17) After considering comments submitted by stakeholders, the Commission issued a proposed Directive in 1989. (18) The proposed Directive implied that only a program's developer could use the program's interface specifications. (19) Additionally, it incorporated an expansive prohibition on reproduction with no exception for reverse engineering. (20) Publication of the proposed Directive galvanized interoperable developers into action. A group of companies including Groupe Bull, Olivetti, NCR, Unisys, and Fujitsu Espana formed ECIS to lobby for a pro-competitive approach to interface specifications and reverse engineering. In response, IBM, DEC, Apple, Microsoft, and Lotus formed a counter-lobby: the Software Action Group for Europe ("SAGE").
Over the next two years, these two groups vigorously lobbied the Commission, the European Parliament, and the Council of Ministers. ECIS argued that permitting reverse engineering and excluding interface specifications from protection were necessary to foster competition in the software industry, particularly against dominant U.S. firms. SAGE, on the other hand, asserted that a prohibition on reverse engineering was necessary to encourage innovation and prevent disguised piracy. SAGE enlisted the support of U.S. Trade Representative Carla Hills, who wrote to the Commission in 1990 in opposition to a reverse-engineering exception. She stated that a specific reverse-engineering exception was unnecessary to advance the objective of interoperability because the trend towards open systems was proceeding satisfactorily throughout the world in response to consumer demand. (21)
Ultimately, ECIS largely prevailed. The Directive that emerged from this political process reflects a policy judgment that copyright should not interfere with interoperability. (22) Article 5(3) of the Directive provides a broad exception from liability for "black box reverse engineering"--activities such as observing the behavior of a program as it runs, running input/output tests and line traces. (23) Article 6 provides a narrower exception for decompilation (24)--what Sega, Atari and other U.S. judicial opinions have called "disassembly." Decompilation or disassembly involves translating machine-readable object code into a higher-level, human-readable form. Article 6 permits decompilation for purposes of achieving interoperability when the information has not previously been made available; permissible decompilation is limited to those parts of the program necessary for interoperability; and the final, reverse-engineered product must not infringe on the copyright of the original product. (25) Article 9(1) voids any contractual restrictions on the reverse-engineering exceptions in Article 5 and 6. (26) Similarly, Article 7 contains a reverse-engineering exception to the Directive's prohibition on the circumvention of technological protection measures. (27)
The Software Directive does not directly address the protectability of interface specifications. Rather, Article 1(2) provides that "[i]deas and principles which underlie any element of a computer program, including those which underlie its interfaces, are not protected by copyright...." (28) Commentators interpreted this provision to mean interface information necessary to achieve interoperability must fall on the idea side of the idea/expression dichotomy; otherwise, the detailed decompilation provision in Article 6 would have little utility. (29)
The Software Directive has been implemented by all twenty-eight member states of the EU, as well as Norway, Russia, Switzerland, and Turkey. (30) Additionally, as discussed below, the Directive's reverse-engineering provisions provided a template for countries in other regions.
SAS Institute Inc. v. World Programming Ltd.
As noted above, the Directive did not directly address the issue of the protectability of interface specifications. For twenty years after the Directive's adoption, this issue received scant attention from European courts. However, in May 2012, the European Union's highest court, the Court of Justice of the European Union ("CJEU"), ruled in SAS Institute v. World Programming Limited (31) that program functionality, programming languages, and data format--elements necessary for interoperability--were not protectable under the Software Directive. (32)
World Programming Limited ("WPL"), a company based in the United Kingdom, sought to compete with SAS by creating "middleware" software that could run users' scripts written in the SAS Language. To do so, WPL reverse engineered an SAS program and then created its own program that emulated the SAS platform. SAS sued WPL in the UK, claiming that even though WPL did not copy SAS's source code, WPL's program nonetheless infringed on SAS's copyrights by replicating the SAS programming language, the SAS data and programming interfaces, and the functionality offered by the SAS System. (33) Finding the scope of copyright protection for these elements unclear under the Software Directive, the High Court for England and Wales referred the case to the CJEU.
In May 2012, the CJEU ruled that Article 1(2) of the Software Directive:
[M]ust be interpreted as meaning that neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit its functions constitute a form of expression of...