Mark Lezama Discusses Copyright Protection for Software in Managing IP Article

Partner Mark Lezama was quoted in the Managing IP article “Copyright trials may adopt patent procedures post-Fed Circuit ruling.” The article discusses a Federal Circuit ruling in SAS Institute v. World Programming, where the Court of Appeals for the Federal Circuit upheld the district court’s 2020 finding that “although SAS had valid copyright registrations, World Programming had provided evidence that the program elements could not be protected”.

Lezama said the ruling may change the procedure of future cases, stating “If other courts find the Federal Circuit’s reasoning persuasive, we may see a change in how district courts manage copyright cases.”

In commenting on the Federal’s Circuit’s application of the abstraction-filtration-comparison (AFC) test (“a method of identifying substantial similarity when applying copyright law”), Lezama said that it was unusual that it stopped at the second stage, filtration. The Federal Circuit did not proceed to the comparison step because, after filtering out what World Programming had identified as unprotectable, there seemed to be nothing left that was protectable under copyright law. Lezama said this was “surprising because [World Programming] had not taken the position that everything in SAS’s work was unprotectable.” Nevertheless, Lezama pointed out the Federal Circuit agreed with the district court’s decision to put the burden back on SAS, saying “The Federal Circuit held that SAS needed to articulate exactly what was protectable after the filtration step but did not do so.”

Seeing a parallel with trade-secret cases, Lezama concluded by predicting the outcome in SAS could lead courts to procedurally manage copyright cases more like trade-secret cases. “The wording of trade secret disclosures can substantially affect the course of a trade secret case and is, therefore, an important stage of the case,” Lezama said. “If courts adopt the approach that the district court took and that the Federal Circuit approved, we could see copyright cases evolve in a similar way.” He added, “Copyright owners should be prepared to articulate with carefully chosen words what the protectable aspects of their works are, the same way that trade secret plaintiffs often are forced at some point in discovery to articulate what the asserted trade secrets are.”

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