Software Unfiltered: The Shifting Burdens In Computer Software Copyrightability

• Jurisdiction: United States,Federal
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Patent, Trials & Appeals & Compensation
• Author: Mr Forrest Jones, Matthew S. Johnson and Margaret Esquenet
• Published date: 17 May 2023

The Federal Circuit weighed in on the test, and burdens, for showing copyrightability of "nonliteral elements" of computer software in its SAS Inst. v. World Programming Ltd decision.¹ The Court affirmed a lower court ruling that SAS failed to establish copyrightability of its computer software's claimed elements after World Programing Limited ("WPL") successfully established that a substantial portion of the allegedly infringed elements are not protectable by copyright, shifting the burden back to SAS. The decision, authored by Judge Reyna with a dissent from Judge Newman, further held that, after this burden shift, SAS failed to provide evidence that individual elements of its software programming could survive an abstraction-filtration-comparison analysis as adopted in the Second, Fifth, and Tenth Circuits.

I. The District Court: SAS Failed to Address the Abstraction-Filtration-Comparison Test After WPL Successfully Shifted the Burden

The lower court decision arose from the Eastern District of Texas, where SAS accused WPL of infringing the copyright in the "nonliteral elements" of its software, as well as other claims that were not relevant on appeal. "Nonliteral elements" are those elements that are not written in code, including for example the "program architecture, structure, sequence and organization, operational modules, and user interface." After both parties moved for summary judgment on the nonliteral copyright infringement claims, the district court held a "copyrightability hearing" to allow the parties to argue the issue of copyrightability with supplemental briefing.

The district court applied the abstraction-filtration-comparison analysis of copyrightability. Under this framework, a court first breaks down a work to its various sub-elements to individually determine the copyrightability of those elements ("abstraction"). It then removes any sub-elements that it determines are not eligible for copyright protection ("filtration"). The remaining, protected, elements are compared against the allegedly infringing software ("comparison") to make an infringement determination. Here, the district court ruled that SAS failed to provide, during the filtration step, evidence of the copyrightability of any individual element of its software.

Noting that there was no clear guidance in the Fifth Circuit as to the burden of proof for the "filtration" step, the district court adopted the Eleventh Circuit's burden shifting framework. Under this framework...