Federal Circuit Narrows Scope for Copyrighting Software Function

by Dennis Crouch

The copyright lawsuit between the data-software company SAS Institute and its scrappy copycat World Programming has been interesting to follow over the past several years, and the Federal Circuit has now issued a controversial opinion in the case.  SAS Inst. v. World Programming Ltd., — F.4th — (Fed. Cir. 2023).  The majority opinion authored by Judge Reyna and joined by Judge Wallach affirmed the lower court ruling that SAS failed to establish copyrightability of its claimed program elements.  Writing in dissent, Judge Newman argued that the majority’s rejection of copyrightability represents a “far-reaching change” not supported by either precedent or good policy.  I called this outcome controversial. The outcome would also be controversial had Judge Newman’s position prevailed.

The case is properly seen as an extension of the Supreme Court’s decision in Google
LLC v. Oracle America, Inc., 141 S. Ct. 1183 (2021).  In that case, the Court found that Google’s use of Java API naming conventions in its Android operating system was fair use under copyright law.  Because its fair use decision decided the case, the court did not rule separately on whether the API was even copyrightable in the first place.  In SAS v. WPL, the Federal Circuit squarely addressed the copyrightability question.

To be clear, computer software can still be copyrightable.  But, parties asserting protection will need to do a much better job of showing how their creative authorial input survives the “abstraction-filtration-comparison test,” which the Federal Circuit  applied in its decision.

Copyright law’s abstraction-filtration-comparison (AFC) test is used to determine whether a particular work is entitled to copyright protection. The AFC test involves breaking down a work into its constituent parts, abstracting the unprotectable elements, filtering out any remaining unoriginal or unprotectable elements, and then comparing the remaining protectable elements to the allegedly infringing work. The AFC test has been previously adopted by the Second, Fifth, and 10th Circuits.

Here, the court did not delve into the comparison step — and instead simply held that there was nothing left to infringe after abstraction & filtration.

The decision is also substantially procedural.  The district court held a copyrightability hearing and followed a burden shifting procedure created by the 11th Circuit in Compulife Software Inc. v. Newman, 959 F.3d 1288 (11th Cir. 2020).  In particular, the court first assumed that the work was copyrightable based upon the registration documents.  It then allowed the defense to present its filtration argument to show a lack of copyrightability.  If that evidence is sufficient (as it was here), the burden then shifts back to the copyright holder to rebut — and “to establish precisely which parts of its asserted work are, in fact, protectable.”   The difficulty for SAS is that it offered no rebuttal and instead “refused to engage in the filtration step and chose instead to simply argue that the SAS System was ‘creative.'” Slip Op. SAS presented an expert witness on copyrightability, but the district court found it extremely unreliable and thus excluded the testimony.  (The expert had not seen anything to filter out — even clearly unprotectable elements).

The majority walked through each of these issues and ultimately affirmed on all grounds.

= = = =

Some background: SAS makes data analysis software. A key feature of the SAS product is that folks can write programs using SAS syntax in order to get certain results. Thus there are a number of data jockeys who are experts in SAS code.  WPL is a UK based software company who obtained several copies of SAS statistical software and made their own clone version by rewriting the code and by relying upon an early version of SAS that is not protected by copyright.  The WPL version allows folks to use SAS language to get the same results — but at a much lower price.   When I sa “same results” — the clone pretty much identically copied output styles so that a chart made with WPL looks basically identical to a chart made in SAS using the same code.

SAS sued in E.D.Tex for copyright infringement.  Judge Gilstrap dismissed the copyright claims — holding that the software was unprotectable.  Copyright infringement appeals are ordinarily not heard by the Federal Circuit, but in a case of what appears to be appellate-forum shopping, SAS had also included patent infringement allegations that they eventually stopped pursuing.  Under the rules of procedure, if patent claims were raised in the case at some point, then the appeal heads to the Federal Circuit.

The copyright case is not about copying code.  It appears rather to be about copying the input syntax format used by individuals to input their programs and the output design styles for outputting data in some particular style. In the filtration analysis, WPL provided a host of evidence to show that these features should be “filtered out” of the SAS copyrights.

  • WPL established that an earlier version of the SAS System, “SAS 76,” was in the public domain.
  • WPL showed that many Input Formats and Output Designs in the current SAS System are identical or nearly identical to those in SAS 76 and should be filtered.
  • WPL demonstrated that the SAS Language should be filtered because it is open and free for public use.
  • WPL’s expert identified various allegedly copied materials that contained unprotectable elements such as open-source, factual, data, mathematical, statistical, process, system, method, and well-known and conventional display elements.

Bringing these together the Federal Circuit concluded that the defense had presented sufficient evidence to show uncopyrightability and that the district court was justified in requiring SAS to directly and particularly rebut the evidence rather than simply allowing a trial on the copyright as a whole.

The district court was correct to exercise its authority and require SAS to articulate a legally viable theory on which it expected to base its copyright infringement claims. Conversely, it would be improper for a district court to permit a matter to proceed to trial on the basis of vague and unidentified theories.

Slip Op.

Writing in dissent, Judge Newman argued that Fifth Circuit law protects this sort of computer software architecture even from non-literal copying.  The key citation is likely to a the Fifth Circuit’s 1994 Engineering Dynamics case:

Most courts confronted with the issue have determined that copyright protection extends not only to the literal elements of a program, i.e., its source code and object code, but also to its “nonliteral” elements, such as the program architecture, “structure, sequence and organization,” operational modules, and computer-user interface.

Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1994).   Judge Newman noted that “computer programs” are expressly protected within the Copyright Act

Copyright protection subsists . . . in original works of authorship . . . including . . . (5) computer programs.

17 U.S.C. 102. As the Nimmer treatise explains, this 1980 amendment to the laws “dispels any lingering doubts as to the copyrightability of computer programs. It is
therefore now firmly established that computer programs qualify as work of authorship in the form of literary works, subject to full copyright protection.”
1 NIMMER ON COPYRIGHT § 2A.10(B) (2022 ed.).

Here, Judge Newman particularly noted that the collection of the various input functions and output designs is easily copyrightable. And, this is the same analysis done by the Federal Circuit in its original Oracle v. Google decision.

Judge Newman also concluded that the district court improperly shifted the burden of proof to the copyright holder.

= = =


  • DALE M. CENDALI from Kirkland & Ellis LLP, New York, NY represented plaintiff-appellant along with ARI LIPSITZ, JOSHUA L. SIMMONS; RAYMOND BENNETT, PRESSLY M. MILLEN, Womble Bond Dickinson (US) LLP, Raleigh, NC and CHRISTIAN E. MAMMEN, San Francisco, CA;
  • JEFFREY A. LAMKEN, MoloLamken LLP, Washington, DC represented defendant-appellee. BRADLEY WAYNE CALDWELL, WARREN JOSEPH MCCARTY, III, Caldwell Cassady & Curry, Dallas, TX also represented defendant-appellee.


  • ANNETTE LOUISE HURST from Orrick, Herrington & Sutcliffe LLP, San Francisco, CA represented Oracle Corporation and Mathworks, Inc.
  • BRIDGET ASAY from Stris & Maher LLP, Montpelier, VT represented Lucas Layman, Mark Sherriff, Laurie Williams.
  • ROBERT WILLIAM CLARIDA from Reitler Kailas & Rosenblatt LLC, New York, NY represented Sandra Aistars, Jon Garon, Hugh Hansen, J. Devlin Hartline, S. Todd Herreman, Loren Mulraine, Christopher Newman, Eric Priest, Mark F. Schultz, Steven Tepp.
  • NANCY E. WOLFF from Cowan, DeBaets, Abrahams & Sheppard LLP, New York, NY represented American Photographic Artists, American Society of Media Photographers, Authors Guild, Inc., Digital Media Licensing Association, Dramatists Guild of America, Romance Writers of America, Songwriters Guild of America, Textbook & Academic Authors Association.
  • SARANG DAMLE from Latham & Watkins LLP, Washington, DC represented Ralph Oman.
  • MATTHEW S. HELLMAN from Jenner & Block LLP, New York, NY represented Copyright Alliance.
  • JEFFREY THEODORE PEARLMAN from Gould School of Law, University of Southern California, Los Angeles, CA represented Harold Abelson, Guido van Rossum, Jon Bentley, Matthew Bishop, Joshua Bloch, Gilad Bracha, Daniel Bricklin, Frederick Brooks, R.G.G. Cattell, David Clark, William Cook, Thomas H. Cormen, Miguel de Icaza, L. Peter Deutsch, Whitfield Diffie, David L. Dill, Dawson Engler, Bob Frankston, Neal Gafter, Erich Gamma, Andrew Glover, Allan Gottlieb, Robert Harper, Maurice Herlihy, Tom Jennings, Alan Kay, Brian Kernighan, David Klausner, Kin Lane, Ed Lazowska, Doug Lea, Bob Lee, Harry Lewis, Douglas McIlory, Paul Menchini, James H. Morris, Peter Norvig, Martin Odersky, David Patterson, Tim Peierls, Curtis Schroeder, Robert Sedgewick, Mary Shaw, Alfred Z. Spector, Michael Stonebreaker, Ivan E. Sutherland, Andrew Tanenbaum, Brad Templeton, Andries van Dam, John Villasenor, Jan Vitek, James H. Waldo, Daniel S. Wallach, Frank Yellin.
  • JONATHAN BAND from Jonathan Band PLLC, Washington, DC represented Computer & Communications Industry Association.
  • MICHAEL BARCLAY from Electronic Frontier Foundation, San Francisco, CA represented Electronic Frontier Foundation.
  • JOSEPH GRATZ from Durie Tangri LLP, San Francisco, CA represented GitHub, Inc.
  • ERIK STALLMAN from Samuelson Law, Technology & Public Policy Clinic, University of California Berkeley and CHARLES DUAN represented a group of law professors including Timothy K. Armstrong, Pamela Samuelson, Clark D. Asay, Jonathan Askin, Patricia Aufderheide, Derek E. Bambauer, Ann Bartow, James Bessen, Mario Biagioli, James Boyle, Oren Bracha, Dan L. Burk, Michael A. Carrier, Michael Carroll, Bernard Chao, Jorge L. Contreras, Christine Haight Farley, William T. Gallagher, Shubha Ghosh, Jim Gibson, James Grimmelmann, Amy L. Landers, Edward Lee, Mark A. Lemley, Yvette Joy Liebesman, Lee Ann Wheelis Lockridge, Lydia Pallas Loren, Stephen McJohn, Mark P. McKenna, Michael J. Meurer, Timothy Murphy, Tyler T. Ochoa, Aaron Perzanowski, Cherly B. Preston, Jerome H. Reichman, Michael Rustad, Matthew Sag, Joshua D. Sarnoff, Niels Schaumann, Jason Michael Schultz, Roger V. Skalbeck, Elizabeth Townsend Gard, Rebecca Tushnet, and Jennifer M. Urban.

37 thoughts on “Federal Circuit Narrows Scope for Copyrighting Software Function

  1. 5

    OT but interestingly unusual is this article just posted on IPWatchdog: “Too Many Patent Suits? The Data Suggests There are Too Few” By Bruce Berman
    “Remarkably few are filed relative to the [now very greatly increased] number of patents that are active.” Even with an indicated 40% being filed by only 3 leading PAEs. And especially with so many companies refusing to take licenses until sued and then at least 95% settling before trial. Comments?

    1. 5.1

      “40% being filed by only 3 leading PAEs”

      Sure, that seems normal and healthy. Where is the principle place of business of those three trolls?

      As for the idea that there is “not enough patent litigation”, that is so inane it’s not even worth commenting on except to point and laugh. I guess being a punch line was always Gene’s destiny.

      1. 5.1.1

        Do any of you understand why Jon Dudas went to teach in AZ after he ran from FIRST in NH. McCain was still alive. Do any of you realize that your Registration is worthless until you get together and take back the USPTO for the people you are licensed to file and prosecute for. Wake up. Look what the people are doing in Nashville. The GOP thinks because of what has happened to me without the BOPR doing anything are sadly soon mistaken. When my story gets out it will show why the GOP thinks they are untouchable and they think they can rule with abandon.

    2. 5.2

      Without commenting on whether there are “too many” or “too few” patent cases, the available statistics do point to a fairly pronounced downturn in new patent litigation filings as of the end of Q1 2023 compared to prior years (even correcting for reduced output from prominent “frequent filer” NPEs). It’s too early to tell if that trend will continue throughout 2023, but if it does, it may simply be the result of broader macroeconomic factors causing a reduction in access to investment capital. The current environment not only makes it somewhat less attractive for law firms to take on the risk of new contingency-fee patent litigations, but it also has dried up some sources of litigation funding that existed in prior years.

      1. 5.2.1

        Thanks, that is an interesting speculation – that the current high interest rates may have lowered speculative investor funding of new patent suits as compared to prior “easy money” years, contributing to the recent drop in new patent suits?
        But I was under the impression that almost no law firms will still take on the financial risk themselves of new contingency-fee-only [% of recovery] patent litigations. Are you aware of any that still would?

    3. 5.3

      The comments there are practically better than the article (which itself is pretty darn on point.

      And it is just not difficult to grasp the “greedy [hint, Malcolm, those wanting the benefits without paying the price are the truly greedy ones] Efficient Infringers and their relentless “patents are bad and enforcing them is even worse” propaganda play a HUGE role in the current fall from Gold Standard for US innovation.

      1. 5.3.1

        “Efficient Infringers and their relentless “patents are bad and enforcing them is even worse” propaganda play a HUGE role in the current fall from Gold Standard for US innovation.”

        Keep smoking that stuff and you’ll end up in the emergency room. Wow.

        It’s so very, very sad that the trolls can’t find the money as easily as before. I wonder where all that money is going? I’m sure it’s going to other worthy causes, all in the interest of promoting scientific progress of course.


          link to patentlyo.com

          There is zero credibility in trying to pretend that the notion of Efficient Infringer is some type of “smoking that stuff.”

          That is clearly the stuff of gaslighting — no matter how weak the attempt.

          As for anyone faced with difficulty of funding their legal mechanism of justice through the courts, that too is a very real concern.

          That you would deign to denigrate ANY such proper action based merely on your own (ill-conceived) emotions is — yet again — saying more about you than you are aware of.

          So, yet again, your miss of, “I wonder where all that money is going?” is already answered with: “[hint, Malcolm, those wanting the benefits without paying the price are the truly greedy ones]”

          That money is entering politics – and NOT in a good way.

          Check your emotions.
          Open your eyes.
          Actually think.


            “ There is zero credibility in trying to pretend that the notion of Efficient Infringer is some type of “smoking that stuff.””
            I’m perfectly comfortable with the “notion” of a business entity operating efficiently and balancing risks, especially when the business is producing a material good.

            It’s you and your tired, irrelevant Repu k-k-k e troll-luvvers who have difficulty with the concept.


              lol – nice attempt at gaslighting

              Maybe reflect on the actual term and what it means.

              Your emotional rant on politics entirely misses.

    1. 4.2

      The reason that one must not gist in patent law is that the protections afforded by patents are both broader than copyright’s along some dimensions and narrower along other dimensions. This is how it has to be in order for either patent or copyright to serve any socially useful function. If one applies a copyright standard when assessing patent infringement, one leaves patent law narrow along the dimensions that patent protection is supposed to be narrow, while importing the narrowness of copyright protection into the dimensions in which patent protection needs to be broader in order to function.

      Sometimes analogy between patents and copyrights is helpful, but sometimes the analogy is misleading. This is one of those “misleading” instances.

      1. 4.2.1

        Your points sound interesting and I’d like to understand them better, but I am unable to follow your reasoning and even the point you make. Do you have another way(s) to express this? If so, I’d be grateful for your doing so.


          The gisting is another word for the procedure -in one form or another- that must occur in order to identify a putative invention from a patent document. The invention and the document are not the same thing; claims & specifications -made of words- are abstractions of inventions.

          As of know, under Alice, judges take claims & specifications apart to try to identify what has (or has not) actually been invented.

          See if this looks familiar: they do so by breaking down claims to constituent parts, identifying unprotectable elements (e.g “collection, manipulation, and display of data”) filtering out any remaining unoriginal or unprotectable elements (abstract ideas as identified by previous cases) , and then comparing the remaining elements to prior art that has been found inventive.

          Greg, obviously the protection of utility is not the same as protection of creative works, but software is clearly a written work of authorship, which can be a creative expression.

          Broadness or narrowness don’t seem to me to be intrinsic to either form of IP- what should matter with both is the ability of the creators to enjoy the economic fruits of their work without suffering free-riders, and the ability of the public to go about their own creative business without unreasoned rents being paid to persons manipulating legal procedure.

          In order to avoid a “know it when they see it” form of justice, both copyright and patent law need to come to grips with how to protect- and not protect-the economic value associated with the consumption of information.

          Again, ISTM to be fairly straightforward: copyright protects information consumed by persons, and patents should protect information consumed by non-persons. Thus copyrighting an API should not be allowed, and patenting a graphic interface should not be allowed- but the API should be patent eligible and the graphic interface should be copyrightable.


            The gisting is another word for the procedure -in one form or another- that must occur in order to identify a putative invention from a patent document.

            That is NOT what Gisting means.


            Martin: “ copyright protects information consumed by persons, and patents should protect information consumed by non-persons”

            [throws flag]

            You’re trying to make an important point important to you anyway). But can you try a wee bit harder to be accurate so you don’t come across as a total crank?

            Copyrights do not “protect information”. Absolutely not. They can be used to “protect” certain new creative expressions of information.

            Likewise, let’s be clear about your own position on patents and information. Your position is NOT that patents should be able to “protect information consumed by non-persons” because that would include all information (machines can “consume” ANY “kind” of information they are configured to receive, including information that is usable by humans). You probably meant to say that you believe that patents should be able to protect “information that is ONLY consumable by machines”. For the record, I think this position is also nonsensical and pointless but we don’t need to get into that discussion again in this thread.


              In our digital age, we now easily perceive that movies, books, songs, images, etc. are actually information. Fixing a creative work to a medium is encoding the information that defines the work- no more or less. A painting may be an analog array, but it’s still defined by quantities of color and texture and geometry.

              Copyrights do not “protect information”. Absolutely not. They can be used to “protect” certain new creative expressions of information

              Okey Dokey, I agree with you.

              Consuming a copyrighted item involves the abstraction of its information into a human mind- no more or less. So sure I’m a crank- no sarcasm. As the inimitable Mart Twain put it, ““The man with a new idea is a crank until the idea succeeds.”


                Your idea will not succeed because you do not bother to understand the terrain, marty.

                There are other more fitting Twain quotes for you.

      2. 4.2.2

        Plain simple: the protections under the different IP laws are different.

        This is also why an item, such as software, may rightfully receive some aspects of protection under copyright while still rightfully receiving other (and different) aspects of protection under patent.

        marty has a horrible habit of not understanding the terrain when he makes his comments, and Greg’s point is one merely (and too politely) pointing out that different things are…

        … different.


          Gentlemen, thank you for elaborating on these matters. Now I’m able to follow the discussion.

  2. 3

    In case anyone missed it, they just banned (for now) the use of “generative AI” on USPTO systems/for USPTO business related items (in other words using ChatGPT to draft an OA I guess).

    1. 3.1

      For maximum accuracy, it is outside generative AI that is banned. Use of internal AI is still allowed.

      1. 3.1.1

        Lol – the Office cannot even get basic IT items to work efficiently and you want to imply that the Office has its own internal AI?

        Talk about oxym0r0ns…

    2. 3.2


      It should not have needed a ban, given that examination is default (at a minimum) to be done in confidence.

  3. 2

    Judge Newman’s dissent relied on the original panel decision in Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1995), for the alleged proposition that input formats are copyrightable, dissent at 30-31. However, she ignored the subsequent opinion in the case, Eng’g Dynamics, Inc. v. Structural Software, Inc., 46 F.3d 408, 410 (5th Cir. 1995), which clarified that discussion and held that a full abstraction-filtration-comparison analysis was appropriate (“The panel did not say that in any case involving user interface the fact that the ‘author’ has selected from among possible formats is dispositive.”). On remand, the district court applied the AFC test to conclude that no breach of copyright law occurred. Eng’g Dynamics, Inc. v. Structural Software, Inc., No. 89-1655 (E.D. La. May 1, 2001).

  4. 1

    The idea that in 2023 a generically described graphical output “design” could be copyrighted is beyond absurd.

      1. 1.1.1

        I’m not “vehemently anti-IP”. I am vehemently anti-“greed on steroids”.

        Get out of your bubble, maybe?


          I’m not “vehemently anti-IP”.

          Yes you are.

          Pretending otherwise is nothing but gaslighting.

    1. 1.2

      What does “2023” have to do with anything? There is no novelty requirement in copyright law, unlike patent law. Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 103 (2d. Cir. 1951). Why should it matter when the putatively copyrightable design was fashioned?

      1. 1.2.1

        Last time I checked there is still this thing called the “public domain.” Stuff falls into it as time passes. That stuff presumably includes a lot of “designs” for graphs but I admit I’m not the kind of greedy snail who tries to claim copyright over such things.


          Your animus is showing.

          The particularity of the year is quite separate from any factual notion of items falling into the public domain (as this happens every year.

          That you both admit 1gn0rance and insert your b1ased and in-asked-for emotive rant about your feelings of “greed” speak far louder than you so apparently realize.

          Intellectual property rights under the law are quite above your infantile and misplaced notions of “greed.”


            “ The particularity of the year is quite separate from any factual notion of items falling into the public domain (as this happens every year.”

            No kidding. Every year? Since when?


              I do not take your questions as being made in a meaningful manner.

              That you even ask them shows that you are not serious about having a meaningful conversation, as they belie the fact that your post to which I responded to was itself disingenuous.

              Please clean up after yourself.

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