Sas Institute, Inc. v. World Programming Limited ( 2023 )

Case: 21-1542 Document: 110 Page: 1 Filed: 04/06/2023
United States Court of Appeals
for the Federal Circuit
______________________
SAS INSTITUTE, INC.,
Plaintiff-Appellant
v.
WORLD PROGRAMMING LIMITED,
Defendant-Appellee
______________________
2021-1542
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 2:18-cv-00295-JRG, Chief
Judge J. Rodney Gilstrap.
______________________
Decided: April 06, 2023
______________________
DALE M. CENDALI, Kirkland & Ellis LLP, New York,
NY argued for plaintiff-appellant. Also represented by ARI
LIPSITZ, JOSHUA L. SIMMONS; RAYMOND BENNETT, PRESSLY
M. MILLEN, Womble Bond Dickinson (US) LLP, Raleigh,
NC; CHRISTIAN E. MAMMEN, San Francisco, CA;
JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
DC, argued for defendant-appellee. Also represented by
CALEB HAYES-DEATS; ELIZABETH CLARKE, EUGENE ALEXIS
SOKOLOFF, Chicago, IL; BRADLEY WAYNE CALDWELL,
WARREN JOSEPH MCCARTY, III, Caldwell Cassady & Curry,
Dallas, TX.
Case: 21-1542 Document: 110 Page: 2 Filed: 04/06/2023
2 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
ANNETTE LOUISE HURST, Orrick, Herrington & Sutcliffe
LLP, San Francisco, CA, for amici curiae Oracle Corpora-
tion, Mathworks, Inc. Also represented by ANDREW D.
SILVERMAN, New York, NY.
BRIDGET ASAY, Stris & Maher LLP, Montpelier, VT, for
amici curiae Lucas Layman, Mark Sherriff, Laurie Wil-
liams. Also represented by ELIZABETH BRANNEN, Los An-
geles, CA.
ROBERT WILLIAM CLARIDA, Reitler Kailas & Rosenblatt
LLC, New York, NY, for amici curiae Sandra Aistars, Jon
Garon, Hugh Hansen, J. Devlin Hartline, S. Todd Herre-
man, Loren Mulraine, Christopher Newman, Eric Priest,
Mark F. Schultz, Steven Tepp.
NANCY E. WOLFF, Cowan, DeBaets, Abrahams & Shep-
pard LLP, New York, NY for amici curiae American Photo-
graphic Artists, American Society of Media Photographers,
Authors Guild, Inc., Digital Media Licensing Association,
Dramatists Guild of America, Romance Writers of Amer-
ica, Songwriters Guild of America, Textbook & Academic
Authors Association. Also represented by SARA GATES,
Dentons US LLP, New York, NY.
SARANG DAMLE, Latham & Watkins LLP, Washington,
DC, for amicus curiae Ralph Oman. Also represented by
TYCE R. WALTERS.
MATTHEW S. HELLMAN, Jenner & Block LLP, New
York, NY for amicus curiae Copyright Alliance. Also rep-
resented by GIANNI P. SERVODIDIO.
JEFFREY THEODORE PEARLMAN, Gould School of Law,
University of Southern California, Los Angeles, CA, for
amici curiae Harold Abelson, Guido van Rossum, Jon Bent-
ley, Matthew Bishop, Joshua Bloch, Gilad Bracha, Daniel
Case: 21-1542 Document: 110 Page: 3 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 3
Bricklin, Frederick Brooks, R.G.G. Cattell, David Clark,
William Cook, Thomas H. Cormen, Miguel de Icaza, L. Pe-
ter Deutsch, Whitfield Diffie, David L. Dill, Dawson Eng-
ler, Bob Frankston, Neal Gafter, Erich Gamma, Andrew
Glover, Allan Gottlieb, Robert Harper, Maurice Herlihy,
Tom Jennings, Alan Kay, Brian Kernighan, David Klaus-
ner, Kin Lane, Ed Lazowska, Doug Lea, Bob Lee, Harry
Lewis, Douglas McIlory, Paul Menchini, James H. Morris,
Peter Norvig, Martin Odersky, David Patterson, Tim Pei-
erls, Curtis Schroeder, Robert Sedgewick, Mary Shaw, Al-
fred 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, Jonathan Band PLLC, Washington,
DC, for amicus curiae Computer & Communications Indus-
try Association. Also represented by MATTHEW SCHRUERS,
ALEXANDRA STERNBURG, Computer & Communications In-
dustry Association, Washington, DC.
MICHAEL BARCLAY, Electronic Frontier Foundation,
San Francisco, CA, for amicus curiae Electronic Frontier
Foundation. Also represented by CORYNNE MCSHERRY.
JOSEPH GRATZ, Durie Tangri LLP, San Francisco, CA
for amicus curiae GitHub, Inc. Also represented by
SAMUEL ZEITLIN.
ERIK STALLMAN, Samuelson Law, Technology & Public
Policy Clinic, University of California, Berkeley School of
Law, Berkeley, CA, for amici curiae Timothy K. Armstrong,
Pamela Samuelson, Clark D. Asay, Jonathan Askin, Patri-
cia 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
Case: 21-1542 Document: 110 Page: 4 Filed: 04/06/2023
4 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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,
Jennifer M. Urban. Also represented by CHARLES DUAN,
Washington, DC.
______________________
Before NEWMAN, REYNA, and WALLACH, Circuit Judges.
Opinion for the court filed by Circuit Judge REYNA.
Dissenting opinion filed by Circuit Judge NEWMAN.
REYNA, Circuit Judge.
SAS Institute, Inc. filed suit in the United States Dis-
trict Court for the Eastern District of Texas alleging,
among other claims, nonliteral copyright infringement of
its software by World Programming Limited. Both parties
moved for summary judgment on non-infringement and
copyrightability. The district court decided to hold a spe-
cial hearing to assist it in deciding the scope of protection
provided under copyright law to the elements asserted by
SAS. It ordered the parties to submit supplemental brief-
ing on the issue. The district court then reached several
determinations. The district court first concluded that SAS
demonstrated that it possessed valid copyright registra-
tions covering SAS’s asserted software. The district court
then determined that World Programming provided evi-
dence that showed the software program elements were not
within the scope of protection under copyright law. Based
on World Programing’s evidentiary showing, the district
court required SAS to demonstrate that its asserted pro-
gram elements were copyrightable. Applying the abstrac-
tion-filtration-comparison test, the district court
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SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 5
determined that SAS failed to establish copyrightability. It
rejected SAS’s expert’s report and dismissed the suit with
prejudice. SAS appeals the judgment of the district court.
We affirm.
SAS SOFTWARE
Appellant SAS Institute, Inc. (“SAS”) creates and sells
a suite of software (“SAS System”) used for data access,
data management, data analysis, and data presentation.
SAS Inst. Inc. v. World Programming Ltd., 496 F. Supp. 3d
1019, 1022 (E.D. Tex. 2020) (“EDTX Action”). The SAS
System allows users to input user-written programs into
the SAS System’s graphical user interface to complete an-
alytics tasks. Id. at 1022–23. Users of the SAS System
write commands in a programming language (the “SAS
Language”). Id. at 1023. An earlier version of the SAS
System is in the public domain. Id. SAS has copyright reg-
istrations that cover various aspects of the SAS System.
Appellant’s Br. 21; J.A. 281.
World Programming Limited (“WPL”) created a com-
petitor to the SAS System, the World Programming System
(“WPS System”). EDTX Action, at 1023–24. The WPS Sys-
tem also uses the SAS Language to allow users to run user-
written programs to complete analytics tasks such as data
access, data management, data analysis, and data presen-
tation. Id.On July 18, 2018, SAS filed suit against WPL in the
district court for the Eastern District of Texas. The com-
plaint alleged a number of claims, including copyright in-
fringement of the SAS System and SAS user manuals.
This appeal, however, is limited to three issues. First, SAS
argues that the district court’s copyrightability determina-
tion is erroneous as a matter of law. Next, SAS asserts that
the district court abused its discretion in its use of a “spe-
cial hearing” to determine copyrightability. Finally, SAS
argues that the district court abused its discretion when it
rejected SAS’s expert report. As shown below, the
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6 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
resolution of the three issues rests on the question of copy-
rightability.
The term “copyrightability” has different meanings. A
commonly accepted definition, and the one herein adopted,
is whether the specific elements of a copyrighted work that
are asserted in a copyright infringement action fall within
the scope of protection extended to that particular work un-
der copyright law. The fields of computer software and
computer programs are recognized and addressed as a “lit-
erary work” in the U.S. Constitution and the Copyright
Act. 1
U.S. CONSTITUTION AND THE COPYRIGHT ACT
Like the Patent and the Tariff, the Copyright enjoys a
provenance stretching back to the birth of this nation. Ar-
ticle I, Section 8 of the U.S. Constitution secures “for lim-
ited Times to Authors and Inventors the exclusive Rights
to their respective Writings and Discoveries.” For purposes
of this appeal, it is generally accepted that software coders
are “authors” and that their respective works are “writ-
ings.” See generally, Oracle America, Inc. v. Google Inc.,
750 F.3d 1339, 1368 (Fed. Cir. 2014).
The Copyright Act protects “original works of author-
ship fixed in any tangible medium of expression.” 17
U.S.C. § 102(a). To explain the scope of the term “works of
authorship,” the Act sets forth a non-exclusive statutory
list of categories of works of authorship covered by the Act.
The first category on this non-exclusive list is “literary
works.” Id. at § 102(a)(1).
The statutory definition of “literary works” embraces
computer programs:
1 Copyright Act of 1976, 17 U.S.C. § 101 et seq.
(1976).
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SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 7
“Literary works” are works, other than audio-
visual works, expressed in words, numbers, or
other verbal or numerical symbols or indicia, re-
gardless of the nature of the material objects,
such as books, periodicals, manuscripts,
phonorecords, film, tapes, disks, or cards, in
which they are embodied.
17 U.S.C. § 101. Further, the House Report for the 1976
Act explicitly includes computer programs in its definition
of “literary works.”
The term “literary works” does not connote any cri-
terion of literary merit or qualitative value: it in-
cludes . . . computer data bases, and computer
programs to the extent that they incorporate au-
thorship in the programmer’s expression of original
ideas, as distinguished from the ideas themselves.
H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54 (1976), re-
printed in 1976 U.S.C.C.A.N. 5659, 5667. As the House
Report makes clear, copyright protection extends only to
the expression of an idea, not to the underlying idea itself.
Id. at 5670; see also Mazer v. Stein, 347 U.S. 201, 217 (1954)
(“Unlike a patent, a copyright gives no exclusive right to
the art disclosed; protection is given only to the expression
of the idea—not the idea itself.”). Thus, whether a partic-
ular component or element of a program is protected by a
copyright depends on whether it qualifies as an expression
of an idea, rather than the idea itself. Gates Rubber Co. v.
Bando Chem. Indus., Ltd., 9 F.3d 823, 836 (10th Cir. 1993)
(citing Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539, 547 (1985)).
Additionally, other doctrines of copyright law detail
what elements are not protectable, including scènes à faire
elements, material in the public domain, factual material,
and elements under the merger doctrine. Computer Assocs.
Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 703, 706–10 (2d Cir.
1992); Gates Rubber Co., 9 F.3d at 837.
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8 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
With these doctrines in mind, the court is tasked with
determining the scope of copyright protection. For com-
puter programs, this determination often involves as-
sessing which input and output formats of a computer
program are copyrightable, and which are not. Eng’g Dy-
namics, Inc. v. Structural Software, Inc., 26 F.3d 1335,
1347 (5th Cir. 1994). The literal elements of computer pro-
grams, for example: source and object codes, can be the sub-
ject of copyright protection. See, e.g., Altai, 982 F.2d at 702.
As a general matter, and to varying degrees, copyright pro-
tection can extend beyond literal elements to nonliteral el-
ements. Id. at 701.
This appeal involves only nonliteral elements of the
SAS System. The nonliteral elements of a computer pro-
gram are those aspects that are not reduced to written
code. Id. at 696, 701–703. These elements include the pro-
gram architecture, structure, sequence and organization,
operational modules, and user interface. Eng’g Dynamics,
26 F.3d at 1341. Using a literary novel as an analogy, the
novel’s written words would be the literal elements (e.g.,
code) and the organization of the chapters, characters, and
plot would be the nonliteral elements. But concluding that
nonliteral elements of a computer program can be pro-
tected by copyright does not end a court’s analysis: it must
determine the scope of such protection. Altai, 982 F.2d at
703. The scope of protection is “not constant” across all lit-
erary works. Eng’g Dynamics, 26 F.3d at 1348. Nor is it
necessarily constant across all elements in a single work.
As one moves away from the literal elements to more
general levels of a computer program, it becomes “more dif-
ficult” to distinguish between unprotectible ideas, pro-
cesses, methods or functions, on the one hand, and
copyrightable expression, on the other. Id. at 1341; see also
Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886
F.2d 1173, 1175 (9th Cir. 1989) (“Whether a particular
component of a program is protected by a copyright
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SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 9
depends on whether it qualifies as an ‘expression’ of an
idea, rather than the idea itself.” (cleaned up)).
Court decisions vary in the methods used to identify
and analyze copyrightability for nonliteral elements of
computer programs. Eng’g Dynamics, 26 F.3d at 1341. The
analytical framework utilized by the courts may vary to ac-
commodate each case’s facts. Id. at 1343.
Various circuits, including the Second, Fifth, and
Tenth Circuits, have adopted the abstraction-filtration-
comparison test, or method, to determine the scope of cop-
yright protection for computer programs, including their
nonliteral elements. Altai, 982 F.2d at 706–11 (2d Cir.
1992); Eng’g Dynamics, 26 F.3d at 1335 (5th Cir. 1994);
Gates Rubber, 9 F.3d at 823, 834 (10th Cir. 1993); Com-
puter Mgmt. Assistance Co. v. Robert F. DeCastro, Inc., 220
F.3d 396, 399–400 (5th Cir. 2000). As the name implies,
the abstraction-filtration-comparison method involves
three steps. Altai, 982 F.2d at 706. First, a court breaks
down the allegedly infringed program into its constituent
structural parts—abstraction. Id. This step “help[s] a
court separate ideas [and processes] from expression and
eliminate . . . those portions of the work that are not eligible
for protection.” Eng’g Dynamics, 26 F.3d at 1343. Second,
the court sifts out all non-protectable material—filtration.
Id. at 1344–45; see also Altai, 982 F.2d at 707–08 (describ-
ing this step as “examining the structural components at
each level of abstraction” and “defining the scope of plain-
tiff's copyright”). And, third, the trier of fact compares any
remaining “core of protectable expression” with the alleg-
edly infringing program to determine if there is in fact a
substantial similarity—comparison. Altai, 982 F.2d at
710–11.
Although the underling suit is a copyright infringe-
ment action, this appeal does not reach the final copyright
infringement analysis, or the third step of the abstraction-
filtration-comparison test. Rather, the focus of the appeal
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10 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
is on the question of copyrightability and, in particular, the
filtration step of the abstraction-filtration-comparison test.
PROCEDURE
SAS’s action initially involved multiple claims. 2 How-
ever, the claims of patent infringement, copyright
2 This is not the first litigation between these parties
relating to the SAS System. Around September 2009, SAS
filed suit against WPL in the United Kingdom and in the
United States District Court for the Eastern District of
North Carolina (“EDNC”). Appellee’s Br. 11. In the UK
litigation, SAS asserted copyright infringement. Id. The
UK High Court determined that issues relating to the legal
protection of computer programs needed interpretation of
E.U. Law and sent those questions to the Court of Justice
of the European Union. SAS Inst. Inc. v. World Program-
ming Ltd., 874 F.3d 370, 376 (4th Cir. 2017). The Court
found that neither the functionality of a computer program
nor the format of data files is copyright protectable but re-
production of a program protected by copyright is capable
of constituting an infringement action. Id. Based on this
ruling, the UK courts found that WPL did not violate Eu-
ropean copyright law. Id. In the EDNC action, SAS as-
serted copyright infringement, breach of license agreement
claims for fraudulent inducement, tortious interference
with contract, tortious interference with prospective busi-
ness advantage, and violation of the North Carolina Unfair
and Deceptive Trade Practices Act (UDTPA). SAS Inst.
Inc. v. World Programming Ltd., 874 F.3d 370, 377 (4th
Cir. 2017) (“SAS I”). The district court granted summary
judgment “to WPL” on SAS’s claims for copyright infringe-
ment, tortious interference with contract, and tortious in-
terference with prospective economic advantage. Id. at
377; see also Appellee’s Br. 13. At trial, on the issues re-
lated to contract and tort claims, the jury found “WPL
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SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 11
infringement of SAS user manuals, and copyright infringe-
ment as to the literal elements of the SAS System, were
dismissed with prejudice by the parties’ joint stipulation.
Only SAS’s claim for nonliteral copyright infringement of
the SAS System remained, which is the only claim at issue
on this appeal.
Both SAS and WPL moved for summary judgment on
the nonliteral copyright infringement claim. As to this
claim, SAS does not contend that WPL copied any line of
SAS code or any other literal element of the SAS System.
EDTX Action, at 1022; Appellee’s Br. 45. Instead, SAS con-
tends that WPL infringes by copying the functions or re-
sults of its system. Id.; see Appellant’s Br. 48. More
specifically, SAS alleges WPL copied its “Input Formats,”
which are the fundamentals (vocabulary and syntax) used
in the SAS System. EDTX Action, at 1022. SAS also claims
WPL copied its “Output Designs,” which are the result of
applying Input Formats to user data. Id.Addressing the parties’ cross-motions for summary
judgment, the district court concluded that it first needed
to determine the copyrightability of the asserted materials
to avoid “injecting copyrightability into the jury trial and
unavoidably making it part of the jury’s infringement anal-
ysis.” To assist in its inquiry, the district court requested
additional briefing and argument on a narrow question:
what is the “core protectable expression” of the SAS System
that WPL allegedly copied. To clarify this issue, the parties
liable for fraudulent inducement and UDPTA violations”
and the “total damages awarded to after trebling was
$79,129,905.” SAS I, at 377. The Fourth Circuit affirmed
in part and vacated the copyrightability ruling as moot.
SAS Inst. Inc. v. World Programming Ltd., 952 F.3d 513,
519–520, 531 (4th Cir. 2020) (“SAS II”). On remand, the
district court dismissed SAS’s copyright claims without
prejudice. Appellee’s Br. 13.
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12 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
were asked to put forward competing evidence directed to
the abstraction and filtration steps of the abstraction-fil-
tration-comparison test. 3
After the parties submitted the requested briefing, the
district court held a “Copyrightability Hearing.” EDTX Ac-
tion, at 1020–21. In assessing the copyrightability of the
nonliteral elements of the SAS System that SAS alleges
were copied, the district court concluded that there was no
clear guidance in the Fifth Circuit on the “burden of proof
in the filtration analysis of copyrightability.” Id. at 1026.
As a result, the district court elected to adopt the frame-
work established by the Eleventh Circuit in Compulife
Software Inc. v. Newman, 959 F.3d 1288 (11th Cir. 2020).
Id. Within that framework, once a plaintiff establishes
that he or she holds a “valid copyright and that the defend-
ant engaged in factual copying,” the defendant may come
forward with evidence that the allegedly copied material is
in fact copyright unprotectable. Id. at 1026–27 (citing
Compulife, 959 F.3d at 1305–06). The defendant must
identify the “species of unprotectability” alleged and pre-
sent supporting evidence where appropriate. Id. Once
done, the burden of proof shifts back to the copyright holder
3 The district court asked SAS to “narrow” its case
regarding copyrightability, explaining that the case had “a
tremendous amount of work” before it would be ready to go
before the jury, because the jury would not fairly be able to
compare the works. J.A. 3315–16, 13659–61; Appellee’s Br.
18–19. The court also explained that a Rule 56 summary
judgment motion would not be proper because, in asking
whether there is a material question of fact, it needed first
to address whether copyrightability exists in the asserted
works as a matter of law. Because SAS did not show what
identifiable protectable elements remained in the SAS Sys-
tem, even after the court instructed SAS to do so, the court
dismissed the case. See, e.g., Appellee’s Br. 33–34 (collect-
ing cases).
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SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 13
to establish precisely which parts of its asserted work are,
in fact, protectable. Id. (citing Compulife, 959 F.3d at
1306).
Applying this framework, the district court determined
that SAS satisfied its initial burden on copyrightability by
presenting evidence of valid copyright registrations to the
SAS System. Id. at 1027. Next, the district court deter-
mined that WPL satisfied its burden to show that elements
of the SAS System were not protectable. Id.
For example, WPL established that an earlier version
of the SAS System, “SAS 76,” was in the public domain.
Id.; see also S & H Computer Sys., Inc. v. SAS Inst., Inc.,
568 F. Supp. 416, 418–19 (M.D. Tenn. 1983). WPL also
demonstrated that many of the Input Formats and Output
Designs in the current SAS System are identical, or nearly
identical, to those in SAS 76, and, as such, should be fil-
tered. EDTX Action, at 1023. WPL demonstrated that the
SAS Language should be filtered because it is open and free
for public use. Id. at 1027–28. WPL’s expert opined that
the allegedly copied materials contained unprotectable
open-source elements; factual and data elements; elements
not original to SAS; mathematical and statistical elements;
process, system, and method elements; well-known and
conventional display elements, such as tables, graphs,
plots, fonts, colors, and lines; material for which SAS is not
the author; statistical analysis; scènes à faire elements;
and short phrase elements. Id. at 1028. Accordingly, the
district court found that WPL provided ample evidence to
rebut SAS’s prima facie evidence of duly issued copyright
registrations and required SAS to show which specific ele-
ments of the SAS System that SAS alleged were copied are
protectable. Id.
The district court concluded that SAS failed to show
that the elements WPL pointed to as unprotectable are in-
deed entitled to protection or to show the existence and ex-
tent of any remaining protectable expression that WPL
copied. Id. at 1028. The district court found that SAS
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14 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
refused to engage in the filtration step and chose instead to
simply argue that the SAS System was “creative.” Id. at
1027–28. On this basis, the district court found that SAS
had not met its burden to show protectability of the as-
serted materials. Id. at 1028.
The district court also excluded the opinion of SAS’s ex-
pert, Dr. James Storer, as unreliable because he did not
filter out any of the unprotectable elements of the SAS Sys-
tem. Id. at 1028–29. The district court reasoned that, at
a minimum, Dr. Storer’s failure to filter out any of the un-
protectable elements resulted in an improper comparison
of unprotectable elements to the accused products. Id. The
district court dismissed the case with prejudice. Id. at
1029.
SAS timely appealed. This Court has jurisdiction un-
der 28 U.S.C. § 1295(a)(1).
STANDARD OF REVIEW
When addressing questions of copyright law, this court
applies the law which would be applied by the relevant re-
gional circuit—here, the Fifth Circuit. See Oracle, 750 F.3d
at 1353 (quoting Atari Games Corp. v. Nintendo of Am.,
Inc., 897 F.2d 1572, 1575 (Fed. Cir. 1990)). Under Fifth
Circuit law, legal issues are reviewed de novo. In re Mid-
S. Towing Co., 418 F.3d 526, 531 (5th Cir. 2005). Copy-
rightability is generally treated as a legal issue, or as a le-
gal issue that may involve subsidiary factual findings.
Oracle, 750 F.3d at 1353 n.3 (collecting cases). Treating
copyrightability as a question of law is consistent with case
law. Eng’g Dynamics, 26 F.3d at 1340–41; see also Oracle,
750 F.3d at 1353 n.3; Yankee Candle Co. v. Bridgewater
Candle Co., 259 F.3d 25, 34 & n.5 (1st Cir. 2001); Publica-
tions Int’l, Ltd. v. Meredith Corp., 88 F.3d 473, 478 (7th Cir.
1996); EDTX Action, at 1022 (citing NIMMER ON COPYRIGHT
§ 12.10). Here, neither the district court nor the parties
dispute that copyrightability is resolved as a question of
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SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 15
law. 4 We also note that the resolution of copyrightability
rests on interpretation of whether the asserted materials
are expressions that fall within the scope of copyright
law—matters that belong to the court. See NIMMER § 12.10
(“Reasoning from patent law, Judge Easterbrook opines
that that [copyrightability] decision is for the judge
alone . . . ”) (citing Pivot Point Int’l, Inc. v. Charlene Prods.
Inc., 932 F. Supp. 220, 225 & n. 33 (N.D. Ill. 1996) (collect-
ing cases)). On this basis, we hold that in this case the ul-
timate issue of copyrightability can be resolved as a
question of law that we review under a de novo standard.
BWP Media USA, Inc. v. T & S Software Assocs., Inc., 852
F.3d 436, 438 (5th Cir. 2017). To be clear, whether copy-
right infringement has occurred is a factual determination
that generally can be reached only after the legal determi-
nation of copyrightability has been made.
Rulings on expert-testimony admissibility are re-
viewed in the Fifth Circuit for manifest or “plain and indis-
putable” error. Guy v. Crown Equip. Corp., 394 F.3d 320,
325 (5th Cir. 2004). Other evidentiary rulings are reviewed
“for abuse of discretion.” S. Pac. Transp. Co. v. Chabert,
973 F.2d 441, 448 (5th Cir. 1992).
DISCUSSION
SAS raises three main issues on appeal. First, SAS
contends that the district court erred when it required SAS
to prove that the elements it asserted were copied by WPL
are entitled to copyright protection. Second, SAS argues
that the district court erred when it used a
4 The district court treated copyrightability as “a
question of law for the Court.” EDTX Action, at 1022. SAS
asserts “undisputed facts,” and WPL asserts that the dis-
trict court’s treatment of copyrightability as a question of
law for the court was proper and notes that SAS identifies
“no factual disputes.” Appellant’s Br. 47–48; Appellee’s Br.
59.
Case: 21-1542 Document: 110 Page: 16 Filed: 04/06/2023
16 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
“Copyrightability Hearing” to assist it reach a copyrighta-
bility determination. Appellant’s Br. 4, 43–46. Third, SAS
argues that the court erred in excluding the testimony of
its technical expert. We address each issue in turn. 5
Copyrightability
SAS contends that the district court legally erred in its
application of the abstraction-filtration-comparison test.
According to SAS, it satisfied its evidentiary burden once it
demonstrated that the SAS System was covered by regis-
tered copyrights. Further, SAS claims the district court
erred when it shifted the burden to SAS to establish that
its asserted elements are protected by copyright law. Ap-
pellant’s Br. at 38–43. Alternatively, SAS argues that the
overall selection and arrangement of the Input Format and
Output Design was protectable. We disagree.
We conclude that the overall analytical framework
adopted by the district court is consistent with established
precedent. The plaintiff in a copyright action must respond
to any proof advanced by the defendant. EDTX Action, at
1026. SAS’s preliminary showing that it has valid, regis-
tered copyrights directed to aspects of the SAS System is
not sufficient to establish that each nonliteral element of
the SAS System is protectable. See Feist Publications, Inc.
v. Rural Tel. Serv. Co., 499 U.S. 340, 348 (1991) (“The mere
fact that a work is copyrighted does not mean that every
element of the work may be protected.” (emphasis added)).
Evidence of a timely obtained copyright registration only
creates a rebuttable presumption of copyrightability and
validity. Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d
45, 47 (5th Cir. 1995); see also Gen. Universal Sys., Inc. v.
5 SAS also challenges the district court’s rulings on
evidentiary issues relating to the testimony of its fact wit-
ness, Mr. Collins. Appellant’s Br. 6–7, 59–64. In light of
our decision regarding copyrightability, it is unnecessary
to address these issues.
Case: 21-1542 Document: 110 Page: 17 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 17
Lee, 379 F.3d 131, 141 (5th Cir. 2004) (per curiam) (“A cer-
tificate of registration, if timely obtained, is prima facie ev-
idence both that a copyright is valid and that the registrant
owns the copyright.”).
The district court correctly determined that, through
evidence of valid copyright registrations, SAS established
a required threshold of protectability. EDTX Action, at
1027. Consequently, it became WPL’s burden to establish
what, if any, elements of the copyrighted work are not pro-
tected. WPL showed that at least a substantial portion of
the allegedly infringed elements of the SAS System are not
protectable by copyright. Id. at 1027–28. At that point, the
district court correctly provided SAS with an opportunity
to identify the constituent elements of the work that are
protectable. Eng’g Dynamics, 26 F.3d at 1340; Compulife,
959 F.3d at 1306. But SAS apparently failed or refused to
do so. EDTX Action, at 1027. Instead, SAS steadfastly as-
serted that the SAS works were creative and that it had
provided “repeated evidence of factual copying,” but SAS
failed to rebut WPL’s assertion and did not otherwise pro-
vide evidence in relation to the “filtration” step under the
three-part test. Id. at 1027–28.
As the district court correctly explained, copyright pro-
tectability “consists of the absence of the various species of
unprotectability.” Id. at 1027 (quoting Compulife, 959 F.3d
at 1305). To be clear, in some instances, as in factual com-
pilations, the selection and arrangement of unprotectable
elements may exhibit creative expression and be eligible
for protection. S. Credentialing Support Servs., LLC v.
Hammond Surgical Hosp., LLC, 946 F.3d 780, 783–84 (5th
Cir. 2020). 6 As the district court found, SAS did not show
6 The dissent faults the district court for not address-
ing in its decision the selection and arrangement of the pro-
gram elements. Diss. Op. at 15. This point overlooks that,
Case: 21-1542 Document: 110 Page: 18 Filed: 04/06/2023
18 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
that its program was eligible for protection at any level of
abstraction. See EDTX Action, at 1028.
The dissent contends that the district court and major-
ity erroneously import an infringement analysis to deter-
mine copyrightability. See Diss. Op. at 8–9. We disagree.
As demonstrated in this opinion, a key step prior to engag-
ing in an infringement analysis is to determine which ele-
ments of the asserted material are copyrightable. See
in a copyright infringement action, when contrary evidence
shows that not all material asserted is entitled to copyright
protection, the copyright holder bears the burden to estab-
lish via evidence that such challenged material is entitled
to copyright protection. This principle would apply under
the abstraction-filtration-comparison test or under the se-
lection, combination, and arrangement test. But SAS
failed to proffer rebuttal copyrightability evidence respec-
tive to the selection or arrangement of the program ele-
ments. Consequently, the court’s copyrightability analysis
would yield the same conclusion under either test. The
case cited by the dissent does not alter these circum-
stances. See, e.g., Appellee’s Br. 47. The dissent cites,
Feist, for the “selection, combination, and arrangement”
test but the court also explained that “[n]ot every selection,
coordination, or arrangement will pass muster.” 499 U.S.
at 358. In addition, Feist did not involve computer code.
Instead, the question there was whether a “typical tele-
phone directory” or “white pages” was eligible for copyright
protection. Id. at 342. The Court held that the directory
was not copyright protectable, noting that “facts are not
copyrightable” and the selection and arrangement of the
white pages did not meet the statutory standard for copy-
right protection. Id. at 345, 362. Indeed, the Court ex-
plained that “[t]he mere fact that a work is copyrighted
does not mean that every element of the work may be pro-
tected.” Id. at 348. The principle equally applies in this
case.
Case: 21-1542 Document: 110 Page: 19 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 19
Eng’g Dynamics, 26 F.3d at 1340 (“To establish copyright
infringement, a plaintiff must prove ownership of a valid
copyright and copying of constituent elements of the work
that are copyrightable.” (emphasis added) (internal cita-
tions omitted); see, e.g., 4 NIMMER § 13.03[F][1][b]
(“[B]efore evaluating substantial similarity, it is necessary
to eliminate from consideration those elements of a pro-
gram that are not protected by copyright.” (footnotes omit-
ted)).
We hold that where the court has received persuasive
evidence that the asserted elements are copyright unpro-
tectable, SAS, as the copyright holder, was obligated to
identify with specificity the elements of the SAS program
that it asserts as copied and to establish that those ele-
ments fall within the scope of protection extended to such
elements under copyright law. Under these circumstances,
the district court correctly determined that SAS did not
meet its burden.
Copyrightability Hearing
SAS contends that the district court erred by creating
a novel procedure, a “Copyrightability Hearing.” Appel-
lant’s Br. 4, 43–46. More precisely, SAS contends that the
adopted procedure is inconsistent with at least Federal
Rules of Civil Procedure (“FRCP”) 52 and 56 because the
district court was wrong to use the procedure as a basis to
deny the cross motions for summary judgment and dismiss
its case. Id. 7 We disagree.
7 Although infringement is a question of fact, it can
be determined as a matter of law on summary judgment.
Indeed, SAS filed a motion for summary judgment on in-
fringement. In some cases, the court makes this determi-
nation when the similarity between the works only
pertains to non-copyrightable elements. Lee, 379 F.3d at
Case: 21-1542 Document: 110 Page: 20 Filed: 04/06/2023
20 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
The Copyrightability Hearing took the form of a pre-
trial conference, where the district court provided the par-
ties notice and opportunity to brief, argue, and present
evidence on the legal question of copyrightability. See Ce-
lotex Corp. v. Catrett, 477 U.S. 317, 326 (1986). Such pro-
cedures are well-supported by the Federal Rules of Civil
Procedure and within the district courts’ discretion to man-
age pre-trial matters under Fifth Circuit case law. See Fed.
R. Civ. P. 16(c)(2)(L); see also Acuna v. Brown & Root Inc.,
200 F.3d 335, 340 (5th Cir. 2000). 8 Fifth Circuit law on this
142 n.18 (citing Herzog v. Castle Rock Ent., 193 F.3d 1241,
1247 (11th Cir. 1999)).
8 Consider that district courts in the Fifth Circuit
have invoked FRCP 16(c)(2)(L) to support pre-discovery
identification in trade secret cases. StoneEagle Servs., Inc.
v. Valentine, No. 3:12-cv-1687, 2013 WL 9554563, at *3
(N.D. Tex. June 5, 2013) (citing United Servs. Auto. Ass’n
v. Mitek Sys., Inc., 289 F.R.D. 244, 248 (W.D. Tex. 2013));
see also Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 593
n.13 (2007) (Stevens, J., dissenting). Under the guidelines
of the Sedona Conference, parties must identify the as-
serted secret “at a level of particularity that is reasonable
under the circumstances.” Principle No. 3 & Guideline 2,
The Sedona Conference Commentary on the Proper Identi-
fication of Asserted Trade Secrets in Misappropriation
Cases, 22 SEDONA CONF. J. 236–41 (2021). Relatedly, in
patent cases before the District Court of Delaware, “Section
101 Days” and “omnibus” hearings are held, both of which
are special procedures designed to increase efficiency in pa-
tent litigation for Rule 12 motions by weeding out infirm
cases. Order, Arendi S.A.R.L. v. HTC Corp., C.A. 12-1600
(D. Del. Dec. 15, 2020). Other courts, like the Northern
District of California and Western District of Tennessee,
have held special hearings and conferences to assist with
understanding the technology at issue and narrowing the
Case: 21-1542 Document: 110 Page: 21 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 21
point is consistent with the FRCP, which explicitly author-
izes district courts to adopt mechanisms such as the proce-
dure implemented in this case. Fed. R. Civ. P. 16(c)(2)(L).
Appellate courts have long held that district courts
have discretion to conduct reasonable pretrial procedures
and case management to narrow the issues and “simplify
the mechanics.” Pac. Indem. Co. v. Broward Cnty., 465
F.2d 99, 103 (5th Cir. 1972); Rosario-Diaz v. Gonzalez, 140
F.3d 312, 315 (1st Cir. 1998). This would include where
“the issue of protectability can be more efficiently ad-
dressed” before determining copying. Gates Rubber Co., 9
F.3d at 833. Since SAS failed to provide evidence on which
of the challenged elements of the SAS System were copy-
rightable, the district court correctly found that a jury
would be unable to conduct a proper infringement analysis.
EDTX Action, at 1027–28; Appellee’s Br. 18 (citing Conf.
J.A. 13659–60). Accordingly, we discern no abuse of discre-
tion in the procedural mechanism it used to understand
and manage the copyrightability issue prior to trial. 9
number of patent claim terms for construction. See gener-
ally N.D. Cal. LPR 4 & LR 16-10; Tenn. LPR 2 & LR 16.1.
9 Similarly, in patent law, it “has long been under-
stood that a patent must describe the exact scope of an in-
vention and its manufacture to ‘secure to [the patentee] all
to which he is entitled, [and] to apprise the public of what
is still open to them.’” Markman v. Westview Instruments,
Inc., 517 U.S. 370, 373 (1996) (citations omitted). We have
thus recognized dismissal of an action when a party fails to
present claim construction or infringement theories. See
Traxcell Techs., LLC v. Sprint Commc’ns Co., 15 F.4th
1121, 1130 (Fed. Cir. 2021) (affirming summary judgment
because Appellant didn’t explain how its “listing of accused
elements” met the court’s claim construction and its
Case: 21-1542 Document: 110 Page: 22 Filed: 04/06/2023
22 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
Expert Testimony
SAS contends that the district court erred in excluding
its experts’ testimony. Appellant’s Br. 9, 35, 59–64.
An expert report that is unreliable or unhelpful to the
jury may be excluded under Federal Rule of Evidence
702(a). We review a district court’s exclusion of an expert
report for abuse of discretion. Kumho Tire Co., Ltd. v. Car-
michael, 526 U.S. 137, 141–42 (1999). Similarly, we review
a district court’s dismissal of a case based on a party’s fail-
ure to obey court orders or discovery rules—including
FRCP 26, 37, and 41—for abuse of discretion. United
States v. Reyes, 307 F.3d 451, 458 (6th Cir. 2002). District
courts have the inherent power to control the disposition of
litigation. Landis v. North Am. Co., 299 U.S. 248, 254
(1936).
“unexplained listing of accused elements that purportedly
[infringe]. . . is insufficient to create a genuine issue of ma-
terial fact”); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d
1325, 1337 (Fed. Cir. 2010) (finding that nonmovant must
set forth specific facts to survive summary judgment, and
conclusory allegations or denials in its pleadings are insuf-
ficient); Novartis Corp. v. Ben Venue Lab’ys, Inc., 271 F.3d
1043, 1054 (Fed. Cir. 2001) (affirming summary judgment
of noninfringement because “it was Novartis’s obligation to
set forth the detailed basis of its evidence” and “without
such basis in the record, we must regard [the expert’s] opin-
ion as no more than theoretical speculation raising, at best,
a metaphysical doubt as to the material facts” (citation
omitted)). In copyright cases, other circuits have affirmed
the district court’s grant of summary judgment to the de-
fendant where the copyright holder failed to present a fil-
tration analysis or meet its burden. See generally R. C.
Olmstead, Inc. v. CU Interface, LLC, 606 F.3d 262, 272,
275–76 (6th Cir. 2010).
Case: 21-1542 Document: 110 Page: 23 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 23
Throughout this case, the district court insisted that
SAS identify its infringement theory with specificity. See,
e.g., J.A. 3316. Instead of identifying and asserting specific
protectable elements of the SAS System, SAS relied on ab-
stract definitions of Input Formats and Output Designs. In
addition, SAS’s expert’s analysis also included clearly un-
protectable elements. EDTX Action, 1028–29.
SAS does not appear to dispute that its expert did not
conduct the filtration analysis that the district court
adopted. Appellant’s Br. 35, 59–60. Indeed, SAS’s expert
either refused or was unable to assist the court in clarifying
the core of protectable expression that SAS believed was
entitled to copyright protection. SAS’s repeated claims
that the asserted elements were creative were insufficient.
It is not enough to simply point to asserted elements
and declare them protectable because they are creative or
because other choices exist. Such an interpretation turns
the Copyright Act on its head because it renders superflu-
ous the requirement to prove that material a defendant is
alleged to have copied constitutes protected expression.
Guzman v. Hacienda Records & Recording Studio, 808
F.3d 1031, 1037 (5th Cir. 2015). It ignores that the Act
protects “original works of authorship fixed in any tangible
medium of expression.” 17 U.S.C. § 102(a).
Courts typically receive guidance from the parties’ ex-
perts on the application of the abstraction-filtration-com-
parison test to the relevant computer programs. Gates
Rubber Co., 9 F.3d at 834–35. A court may reasonably
adopt an analysis to determine what the “core of protecta-
ble expression” is to provide the jury with accurate ele-
ments to compare in its role of determining whether
infringement has occurred. Oracle, 750 F.3d at 1358.
Here, the district court appropriately exercised its author-
ity and discretion in finding that SAS’s expert engaged in
“egregious conduct” and his report was unreliable because
it failed to filter out unprotectable elements as ordered by
the court, thereby rendering the opinion “unhelpful” to the
Case: 21-1542 Document: 110 Page: 24 Filed: 04/06/2023
24 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
jury. EDTX Action, at 1028. Under these circumstances,
as to the issue of copyrightability, the expert opinion
amounted to no more than theoretical speculation.
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 per-
mit a matter to proceed to trial on the basis of vague and
unidentified theories. See Novartis Corp. v. Ben Venue La-
boratories, Inc., 271 F.3d 1043, 1054 (Fed. Cir. 2001).
Thus, when SAS declined to make any further showing on
copyrightability, the district court properly dismissed
SAS’s claims. We see no basis to conclude that the district
court’s decision to strike the expert report was manifest or
“plain and indisputable” error.
CONCLUSION
The district court correctly determined as a matter of
law that SAS failed to establish that the elements it as-
serted to have been infringed were copyrightable expres-
sions. The district court acted within its authority and
discretion in its reliance on the abstraction-filtration-com-
parison test and Copyrightability Hearing to assist it in its
analysis of the scope of copyright protection. The district
court did not abuse its discretion in its rejection of SAS’s
expert. Accordingly, the judgment of the district court is
affirmed.
AFFIRMED
COSTS
No costs.
Case: 21-1542 Document: 110 Page: 25 Filed: 04/06/2023
United States Court of Appeals
for the Federal Circuit
______________________
SAS INSTITUTE, INC.,
Plaintiff-Appellant
v.
WORLD PROGRAMMING LIMITED,
Defendant-Appellee
______________________
2021-1542
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 2:18-cv-00295-JRG, Chief
Judge J. Rodney Gilstrap.
______________________
NEWMAN, Circuit Judge, dissenting.
SAS Institute’s computer programs, entitled “SAS Sys-
tem” and “SAS Language,” are software-implemented pro-
grams for data and statistical analysis. SAS has several
registered copyrights on these programs. The court today
holds that these software programs are not copyrightable.
This is a far-reaching change. I respectfully dissent.
SAS sued World Programming Limited (“WPL”) for pa-
tent and copyright infringement (and other counts). Only
copyright issues were decided and are the subject of this
appeal; these counts were decided after a “Copyrightability
Hearing” in the district court. The court held the SAS
Case: 21-1542 Document: 110 Page: 26 Filed: 04/06/2023
2 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
computer programs uncopyrightable, for the reason that
they contain “nonliteral elements” that SAS had not shown
to be separately copyrightable. 1 The district court identi-
fied the nonliteral elements as “unprotectable open source
elements; factual and data elements; elements not original
to SAS; mathematical and statistical elements; process,
system, and method elements; well-known and conven-
tional display elements, such as tables, graphs, plots, fonts,
colors, and lines; material for which SAS Institute Inc. is
not the author; merged elements; statistical analysis;
scènes à faire elements; and short phrase elements.” Dist.
Ct. Op. at 1028 (citations omitted). The court held that
SAS did not meet its burden of “establishing which parts of
its asserted work are, in fact, properly entitled to protec-
tion,” and therefore that the SAS System and SAS Lan-
guage programs “have not been shown to be copyrightable.”
Id. at 1027, 1029.
This holding contravenes law and precedent. The Fifth
Circuit, whose law governs this case, wrote concerning cop-
yright protection for computer programs:
Most courts confronted with the issue have deter-
mined 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” el-
ements, such as the program architecture, “struc-
ture, sequence and organization,” operational
modules, and computer-user interface.
Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d
1335, 1341 (5th Cir. 1994) (referring to Comput. Assocs.
Int’l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) and
Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823 (10th
Cir. 1993)).
1 SAS Inst. Inc. v. World Programming Ltd., 496 F.
Supp. 3d 1019 (E.D. Tex. 2020) (“Dist. Ct. Op.”).
Case: 21-1542 Document: 110 Page: 27 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 3
The district court invalidated the SAS copyrights on
these computer programs, and the panel majority agrees.
I respectfully dissent, for this ruling contravenes the Cop-
yright Act and departs from the long-established precedent
and practice of copyrightability of computer programs.
DISCUSSION
This appeal solely concerns the question of copyrighta-
bility. Copying is conceded, and the district court observed
that “WPL’s business was to ‘clone’ the SAS Software.”
Dist. Ct. Op. at 1023. However, the court held, and my col-
leagues agree, that the programs are not subject to copy-
right.
I
Copyrightability of Computer Programs
The question of copyright protection of computer pro-
grams came to legislative attention some fifty years ago, as
new technologies were producing new forms of expression,
and achieving economic and societal importance. In 1974,
Congress established the National Commission on New
Technological Uses of Copyrighted Works (“CONTU”) to
study and inform national policy, for “the universe of works
protectible by statutory copyright has expanded along with
the imagination, communications media, and technical ca-
pabilities of society.” CONTU Final Report (July 31, 1978),
at 11.
The CONTU considered the public and private inter-
ests in computer programs, in light of the constitutional
purpose of copyright to foster creative activity and com-
merce. The CONTU observed that computer programs are
“the product of great intellectual effort and their utility is
unquestionable,” and concluded that protection from copy-
ing is “necessary to encourage the creation and broad dis-
tribution of computer programs in a competitive market.”
Id.Case: 21-1542 Document: 110 Page: 28 Filed: 04/06/2023
4 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
In 1976 the Copyright Act was amended to enlarge the
definition of “literary works” to include new forms and me-
dia of expression. The following definition was enacted:
17 U.S.C. § 101. Definitions . . .
“Literary works” are works, other than audiovisual
works, expressed in words, numbers, or other ver-
bal or numerical symbols or indicia, regardless of
the nature of the material objects, such as books,
periodicals, manuscripts, phonorecords, film,
tapes, disks, or cards, in which they are embodied.
The accompanying House Report explained:
The term “literary works” does not connote any cri-
terion of literary merit or qualitative value: it in-
cludes . . . computer data bases, and computer
programs to the extent that they incorporate au-
thorship in the programmer’s expression of original
ideas, as distinguished from the ideas themselves.
H.R. Rep. No. 94-1476, at 54 (1976), reprinted in 1976
U.S.C.C.A.N. 5659, 5667. The House Report stated that
the purpose of the amendment was to assure that new
forms of works of authorship are subject to the laws of cop-
yright. Id. at 51–52.
In 1980 the Copyright Act was again amended, to
“eliminate[] confusion about the legal status of computer
software” and to assure protection of computer programs in
the same way as literary works are protected. Statement
of House Judiciary Subcommittee Chairman Kastenmeier,
126 Cong. Rec. H10767 (daily ed. Nov. 17, 1980). The defi-
nition of “computer program” was added to the statute:
17 U.S.C. § 101. Definitions . . .
A “computer program” is a set of statements or in-
structions to be used directly or indirectly in a com-
puter in order to bring about a certain result.
Case: 21-1542 Document: 110 Page: 29 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 5
Other relevant provisions include:
17 U.S.C. § 102(a). Copyright protection sub-
sists . . . in original works of authorship fixed in
any tangible medium of expression . . . from which
they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a
machine or device.
The distinction between copyrightable and patentable sub-
ject matter was recited in § 102(b), for this topic had re-
ceived considerable discussion in view of the functional
purposes served by computer programs:
17 U.S.C. § 102(b). In no case does copyright pro-
tection for an original work of authorship extend to
any idea, procedure, process, system, method of op-
eration, concept, principle, or discovery, regardless
of the form in which it is described, explained, il-
lustrated, or embodied in such work.
The Supreme Court referred to this distinction in Google
LLC v. Oracle America, Inc., 141 S. Ct. 1183 (2021), stating
that “unlike patents, which protect novel and useful ideas,
copyrights protect ‘expression’ but not the ‘ideas’ that lie
behind it.” Id. at 1196. The Court observed that “Congress
expanded the reach of the Copyright Act to include com-
puter programs,” id., and explained that computer pro-
grams, like other literary works, are subject to “the
ordinary application of copyright’s limiting doctrines,” id.
at 1199, in that case the doctrine of fair use.
Other provisions of the Copyright Act were also
amended in light of perceived issues related to computer
programs, for example: 17 U.S.C. § 109(b)(1)(A) (“transfer
of possession of a lawfully made copy of a computer pro-
gram”); 17 U.S.C. § 110(11) (private home viewing of por-
tions of a motion picture); 17 U.S.C. § 117 (“Limitations on
exclusive rights: Computer programs”); 17 U.S.C. §
121(b)(2) (an exception for computer programs); and 17
Case: 21-1542 Document: 110 Page: 30 Filed: 04/06/2023
6 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
U.S.C. § 506(a)(3)(A) (criminal infringement of computer
programs). See generally Sega Enters. Ltd. v. Accolade,
Inc., 977 F.2d 1510, 1519 (9th Cir. 1993) (“As recommended
by [the CONTU], the 1980 amendments to the Copyright
Act unambiguously extended copyright protection to com-
puter programs.”). The Nimmer treatise summarizes:
The Computer Software Copyright Act of 1980
adds to the Copyright Act an explicit definition for
“computer program.” Its legislative history speci-
fies that the amendment “has the effect of clearly
applying the 1976 law to computer programs . . . .”
That amendment 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 protec-
tion.
1 NIMMER ON COPYRIGHT § 2A.10(B) (2022 ed.).
However, the district court held that the SAS computer
programs are not copyrightable, because they contain non-
literal elements that were generally known and inade-
quately distinguished. That is not the law. As explained
in Feist Publications, Inc. v. Rural Telephone Service Co.,
499 U.S. 340, 348 (1991), the “selection and arrangement”
of known elements is protectable by copyright.
Precedent has reinforced the copyrightability of com-
puter programs that combine known elements in new ar-
rangements. In Atari Games Corp. v. Oman, the D.C.
Circuit held that the creative “choice and ordering” of
known elements is copyrightable. 979 F.2d 242, 245 (D.C.
Cir. 1992). In Engineering Dynamics, the Fifth Circuit ex-
plained that the “input formats” and “output reports” there
at issue are copyrightable. 26 F.3d at 1346. In Altai the
Second Circuit stated:
[I]f the non-literal structures of literary works are
protected by copyright; and if computer programs
Case: 21-1542 Document: 110 Page: 31 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 7
are literary works, as we are told by the legislature;
then the non-literal structures of computer pro-
grams are protected by copyright.
982 F.2d at 702 (citation omitted).
In General Universal Systems, Inc. v. Lee, 379 F.3d 131 (5th
Cir. 2004) the court reiterated that copyright protection ap-
plies to all the elements of a computer program, literal and
nonliteral:
It is settled that computer programs are entitled to
copyright protection. This protection extends not
only to the “literal” elements of computer soft-
ware—the source code and object code—but also to
a program’s nonliteral elements, including its
structure, sequence, organization, user interface,
screen displays, and menu structures.
Id. at 142. The Fifth Circuit again referred to the “selection
and arrangement of information” in Southern Credential-
ing Support Services, L.L.C. v. Hammond Surgical Hospi-
tal, L.L.C., 946 F.3d 780 (5th Cir. 2020), stating that
“[a]lthough laws and hospital policies dictate the contents
of the credentialing forms, Southern Credentialing’s
unique selection and arrangement of information exhibit
creative expression.” Id. at 784.
The district court, and now my colleagues, did not ap-
ply the correct law. The existence of possible infringement
defenses based on the extent of copying does not negate
copyrightability of the work. As stated in Feist, “a work
formed by the collection and assembling of preexisting ma-
terials or of data that are selected, coordinated, or arranged
in such a way that the resulting work as a whole consti-
tutes an original work” is protectable by copyright. 499
U.S. at 356 (quoting 17 U.S.C. § 101) (emphasis in origi-
nal). See also Softel, Inc. v. Dragon Med. & Sci. Commc’ns,
Inc., 118 F.3d 955, 964 (2d Cir. 1997) (“[T]aken individu-
ally, the words that constitute a literary work are not
Case: 21-1542 Document: 110 Page: 32 Filed: 04/06/2023
8 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
copyrightable, yet this fact does not prevent a literary text,
i.e., a collection of words, from enjoying copyright protec-
tion.”).
“[C]opyrighted works have a certain synergy in that
the sum of their unprotected elements may be a protectible
whole.” GNU Bus. Info. Sys., Inc. v. The Soc. Sec’y, Ltd.,
1993 WL 469919, at *2 (N.D. Ill. Nov. 12, 1993) (citing
Brown Bag Software v. Symantec Corp., 960 F.2d 1465,
1476 n.4 (9th Cir. 1992)). In Feist, the Court held that
when the selection and arrangement of individually unpro-
tectable elements “entail a minimal degree of creativity,”
the work is copyrightable although the separate elements
are not, and that “even a directory that contains absolutely
no protectible written expression, only facts, meets the con-
stitutional minimum for copyright protection if it features
an original selection or arrangement.” 499 U.S. at 348.
It is beyond debate that the inclusion of nonliteral ele-
ments does not negate copyrightability of the work. Here,
the district court acknowledged that “copyrightable works
may contain both protectible and unprotectible elements.”
Dist. Ct. Op. at 1021 (referencing Feist, 499 U.S. at 344).
However, the district court applied a 3-phase “abstraction-
filtration-comparison” test that had been developed for de-
terminations of infringement and held that the SAS com-
puter programs are not protectable by copyright because
they contain nonliteral elements that should be “filtered.”
Copyrightability is a different question from infringe-
ment and is determined on different legal principles. The
presence of nonliteral elements in a computer program
may be relevant to determining infringement, and indeed
the district court recognized filtration as “assessing in-
fringement of non-literal elements,” Dist. Ct. Op. at 1022,
citing the Fifth Circuit’s observation that the purpose of fil-
tering out unprotectable elements of the program is “to de-
termine whether the defendants have misappropriated
substantial elements of the plaintiff's program,” Eng’g
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SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 9
Dynamics, 26 F.3d at 1343 (quoting Gates Rubber, 9 F.3d
at 834).
Nonetheless, the district court and the panel majority
apply the filtration analysis to determine copyrightability.
This is error, for as the Second Circuit stated, the filtration
analysis serves “to determine whether the non-literal ele-
ments of two or more computer programs are substantially
similar.” Altai, 982 F.2d at 706; see also Gates Rubber, 9
F.3d at 830 (infringement requires “a determination of
whether there was copying and a determination of whether
the copying constitutes actionable infringement through
application of the abstraction-filtration-comparison test”).
Only copyrightability was at issue in the Copyrighta-
bility Hearing. At the hearing, WPL stated that the pres-
ence of nonliteral elements negated copyrightability of the
entire program unless each nonliteral element is sepa-
rately copyrightable. The district court asked the SAS ex-
pert to “identify the constituent elements of the work that
are protectable.” Maj. Op. at 17. The SAS expert declined
to distinguish the program elements on this ground, stat-
ing that copyrighted programs can include both literal and
nonliteral elements and do not require showing separate
distinctiveness of the nonliteral elements in order to
achieve copyrightability of the entire program.
The district court disagreed with this position and held
that SAS’s “failure to filter out unprotectable elements re-
sulted in an improper comparison of unprotectable ele-
ments to the accused products,” and that “SAS has not
shown the existence and extent of any remaining protecta-
ble work.” Dist. Ct. Op. at 1028. The district court called
the nonliteral elements “species of unprotectability,” and
held that the presence of such elements negated copyright-
ability of the program as a whole, requiring the copyright
holder to sort out which separate elements are protectable.
Id. Precedent is contrary. See Apple Barrel Prods., Inc. v.
Beard, 730 F.2d 384, 388 (5th Cir. 1984) (“The mere fact
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10 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
that component parts of a collective work are neither orig-
inal to the plaintiff nor copyrightable by the plaintiff does
not preclude a determination that the combination of such
component parts as a separate entity is both original and
copyrightable.”).
SAS states that its programs include the selection and
assembly of literal and nonliteral elements, and that there
are “a large number of choices among” possible Input For-
mats and “an infinite number of” possible Output Designs.
SAS Br. 48. SAS compares this to the “multitude of differ-
ent ways to generate a data stream” in Atari Games Corp.
v. Nintendo of America Inc., 975 F.2d 832, 840 (Fed. Cir.
1992). SAS Br. 49 (also citing Compaq Comput. Corp. v.
Procom Tech. Inc., 908 F. Supp. 1409, 1418 (S.D. Tex. 1995)
(discussing “the requisite degree of creativity and judg-
ment necessary to protect [a] compilation”)). In Engineer-
ing Dynamics, the Fifth Circuit concluded that “[t]he
creativity inherent in EDI’s program is proved by the exist-
ence [of] other, dissimilar structural engineering programs
available in the market.” 26 F.3d at 1346.
The Federal Circuit applied this rule in Oracle Amer-
ica, Inc. v. Google, Inc.:
Because Oracle “exercised creativity in the selec-
tion and arrangement” of the method declarations
when it created the API packages and wrote the
relevant declaring code, they contain protectable
expression that is entitled to copyright protection.
750 F.3d 1339, 1363 (Fed. Cir. 2014) (citing Atari, 975 F.2d
at 840).
Only copyrightability is before us on this appeal. Based
on statute and clear precedent the SAS programs are cop-
yrightable as a matter of law. The district court appears to
have inappropriately relied on issues of the burden of proof,
as I next discuss.
II
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SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 11
The Burden of Proof
The Copyright Act provides that timely registration is
prima facie evidence of a valid copyright:
17 U.S.C. § 410(c). In any judicial proceedings the
certificate of a registration made before or within
five years after first publication of the work shall
constitute prima facie evidence of the validity of the
copyright and of the facts stated in the certificate.
The accompanying House Report explains that the stat-
ute’s prima facie validity “orders the burdens of proof.”
H.R. Rep. No. 94-1476, at 157. See Compulife Software Inc.
v. Newman, 959 F.3d 1288, 1305 (11th Cir. 2020) (“[P]lac-
ing the burden to prove protectability on the infringement
plaintiff would unfairly require him to prove a negative.”).
The court in Compulife observed that the “mere failure of
the plaintiff to present evidence of protectability—assum-
ing that a valid copyright and factual copying have already
been established—isn’t a sufficient reason to give judgment
to the defendant.” Id. at 1306. The district court took the
contrary position, and held that SAS’s failure to present
evidence of protectability required judgment in favor of
WPL, Dist. Ct. Op. at 1028–29, even as the district court
acknowledged that “SAS showed that it holds a registered
copyright, amply argued that its asserted works are crea-
tive, and presented repeated evidence of factual copying.
Accordingly, SAS shifted the burden to WPL.” Id. at 1027.
Precedent illustrates the statutory placement on the
accused infringer of the burden of negating copyrightabil-
ity. See, e.g., Brocade Commc’ns Sys. Inc. v. A10 Networks
Inc., 2011 WL 7563043, at *2 (N.D. Cal. Aug. 16, 2011) (The
§ 410 presumption “shifts the burden to [defendant] to re-
but that the allegedly copied elements are not protectable
expression.”); see Norma Ribbon & Trimming, Inc. v. Little,
51 F.3d 45, 47 (5th Cir. 1995) (copyright registration cre-
ates a rebuttable presumption of copyright validity).
Case: 21-1542 Document: 110 Page: 36 Filed: 04/06/2023
12 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
For the SAS programs, the district court found that
SAS “amply argued that its asserted works are creative,”
Dist. Ct. Op. at 1027, and the court acknowledged that the
copyright statute provides a rebuttable presumption of cop-
yrightability. However, the court found the presumption
was rebutted by WPL identifying the nonliteral elements
as including all the program elements except the codes, and
the court shifted to SAS the burden to come forward with
evidence that the nonliteral elements are independently
copyrightable. The district court rejected the SAS expert’s
advice that such analysis does not comport with statute
and copyright principles, and excluded the SAS expert’s
testimony.
SAS states that this exclusion prejudiced its ability to
respond to WPL’s arguments. For example, WPL stated
that the SAS Language program is in the public domain,
and the district court held that SAS did not meet its burden
of establishing otherwise. SAS states in its appellate brief,
without contradiction from WPL, that “WPL did not copy
the 1976 version of the SAS System. . . . [I]t copied all of
the enhancements and new material that SAS spent 45
years developing up to the present day.” SAS Br. 51. SAS
cites 17 U.S.C. § 103(b) for the principle that “copyright in
a derivative work extends ‘to the material contributed by
the author of such work, as distinguished from the preex-
isting material employed in the work,’ and is ‘independent
of . . . any copyright protection in the preexisting material.’”
SAS Br. 51. SAS also points out that WPL’s expert on
cross-examination supported the SAS position, for the
WPL expert conceded that the “actual Input Formats, in-
cluding the complex hierarchies discussed above, had ‘all
changed, at least the ones [he] examined.’” Id. at 52 (quot-
ing Appx602:5–10).
Similarly for nonliteral elements that are “scènes à
faire:” this distinction “den[ies] protection to those expres-
sions that are standard, stock, or common to a particular
topic or that necessarily follow from a common theme or
Case: 21-1542 Document: 110 Page: 37 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 13
setting,” Gates Rubber, 9 F.3d at 838, or elements that are
“dictated by external factors” such as “hardware standards
and mechanical specifications, . . . software standards and
compatibility requirements, . . . computer manufacturer
design standards, target industry practices and de-
mands, . . . and computer industry programming prac-
tices.” Id.The WPL expert conceded that he did not attempt to
“provide a list of all scènes à faire elements that are in the
SAS System.” SAS Br. 57 (quoting Appx3514:18–20). SAS
argues that WPL’s expert was unable “to show that the en-
tirety of any Input Format or Output Design was nothing
but a stock element,” id., and that the WPL expert testi-
mony again supported the SAS position. However, the dis-
trict court cited the WPL expert’s testimony as establishing
uncopyrightability because it was unrebutted by SAS—
although the SAS expert’s testimony was excluded by the
court. The panel majority accepts this strained conclusion,
without analysis.
Similarly for WPL’s reliance on “merger” to establish
unprotectable program elements: “Under the merger doc-
trine, copyright protection is denied to expression that is
inseparable from or merged with the ideas, processes, or
discoveries underlying the expression.” Gates Rubber, 9
F.3d at 838. However, as stated in Atari, if “alternate ex-
pressions are available” merger does not apply. 975 F.2d
at 840. WPL does not contradict the SAS position that
“countless options were available.” SAS Br. 58 (citing com-
peting commercial programs). Nonetheless the district
court, and now my colleagues, accept that “merger” negates
copyrightability of the entirety of the SAS System and SAS
Language programs.
Similar flaws accompany the references to the “short
phrases doctrine” as negating copyrightability. “Copyright
does not protect individual words and ‘fragmentary’
phrases when removed from their form of presentation and
Case: 21-1542 Document: 110 Page: 38 Filed: 04/06/2023
14 SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
compilation.” Hutchins v. Zoll Med. Corp., 492 F.3d 1377,
1385 (Fed. Cir. 2007). “Although the compilation of public
information may be subject to copyright in the form in
which it is presented, the copyright does not bar use by oth-
ers of the information in the compilation.” Id. (citation
omitted). The right of others to use nonliteral elements in
other contexts and other combinations does not negate cop-
yrightability of the programs of which they are elements.
Similarly, for the mathematical formulas and statisti-
cal methods included in the SAS programs, copyrightabil-
ity of the programs is not concerned with whether the
mathematical formulas and analytic methods are original,
but with their inclusion in the combination and arrange-
ment as components of the programs.
SAS states that its responses on these aspects were not
considered because the district court excluded the SAS ex-
pert’s testimony, as “the district court acknowledged that
excluding SAS’s ‘only technical expert’ devastated SAS’s
case.” SAS Br. 64 (citing Dist. Ct. Op. at 1029 n.11 (“[H]is
exclusion has the practical effect of leaving SAS without
any supportable copyright claims.”)). SAS states that the
district court “made no effort to apply [the limiting] doc-
trines to the law or facts of this case, nor to decide whether
WPL’s assertions about them were correct.” SAS Br. 51.
WPL defends the district court’s analysis, and also
states that it is an “open question whether copyright in a
computer program reaches outputs.” WPL Br. 52. That
statement does not match precedent. See Eng’g Dynamics,
26 F.3d at 1342 (“There is no intuitive reason why the anal-
ysis should be any different for output formats.”); Johnson
Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173,
1175 & n.3 (9th Cir. 1989) (“A computer program is made
up of several different components, including . . . the user
interface,” which “is generally the design of the video
screen and the manner in which information is presented
to the user.”).
Case: 21-1542 Document: 110 Page: 39 Filed: 04/06/2023
SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED 15
The panel majority does not discuss the selection, com-
bination, and arrangement of the program elements, alt-
hough this is a foundation of software copyrightability, as
illustrated in precedent, policy, and public understanding. 2
Nor does the panel majority resolve the issues raised with
respect to the burden of proof. The legal and policy prem-
ises of copyrightability of computer programs have hereto-
fore been settled; there is no cause for judicial initiative to
disrupt this important area of commercial and societal in-
terest. I respectfully dissent.
2 Numerous amici curiae contributed briefs, whose
positions reflect the difference between proponents of crea-
tors’ rights and of copiers’ rights. Amici in support of SAS
are: (1) American Photographic Artists, American Society
of Media Photographers, Authors Guild, Inc., Digital Media
Licensing Association, Dramatists Guild of America, Ro-
mance Writers of America, Songwriters Guild of America,
Textbook & Academic Authors Association; (2) The Copy-
right Alliance; (3) Scholars of Copyright Law (Arts & En-
tertainment Advocacy Clinic, Antonin Scalia Law School,
George Mason University); (4) The Mathworks, Inc. and
Oracle Corporation; (5) Ralph Oman, former Register of
Copyrights; and (6) Computer Scientists (Williams, Lay-
man, Sheriff). Amici in support of WPL are: (1) Electronic
Frontier Foundation; (2) The Computer & Communications
Industry Association; (3) 54 Computer Scientists (Intellec-
tual Property & Technology Law Clinic, Gould School of
Law); (4) Samuelson Law, Technology & Public Policy
Clinic, Berkeley School of Law; and (5) Github, Inc. As the
amici reflect, the case herein raises basic policy issues.