.. its “selection, arrangement and structure” of elements in the APIs described by the 37 API specifications ..

.. much, if not all, of what Oracle is claiming has been copied is, in fact, not protected by copyright because it is functional, it is subject to the merger doctrine (pursuant to which the expression and the idea are said to merge) or it is commonly used material in software and subject to the scenes a faire doctrine.

3.      Protection of the graphic user interface by the ordinary law of copyright

70.      Although the graphic user interface cannot be regarded as an expression of a computer program and therefore cannot be protected as such, I consider that it is, nevertheless, entitled to protection under copyright applicable to all literary and artistic works under Article 2(a) of Directive 2001/29.

71.      In accordance with the case-law developed in Case C‑5/08 Infopaq International, (25) copyright applies to a work when it is original in the sense that it is the author’s own intellectual creation. (26)

72.      In my opinion, there is no doubt that the graphic user interface can be an intellectual creation.

73.      Development of such an interface requires considerable intellectual effort on the part of its author, as is the case for a book or piece of music. Behind the graphic user interface there is a complex structure developed by the programmer. (27) He uses a programming language which, structured in a certain way, will create a special command button, for example, ‘copy-paste’, or permit an action, such as double-clicking on a file to open it or clicking on an icon to minimise an open window.

74.      However, even if the graphic user interface requires intellectual effort, it remains necessary, under Article 2(a) of Directive 2001/29, for it to be, as the Court described it, a subject-matter which is original in the sense that it is its author’s own intellectual creation. (28)

75.      The difficulty as regards determination of the originality of the graphic user interface lies in the fact that the majority of the elements which comprise it have a functional purpose, since they are intended to facilitate the use of the computer program. Accordingly, the manner in which those elements are expressed can be only limited since, as the Commission stated in its written submissions, (29) the expression is dictated by the technical function which those elements fulfil. Such is the case, for example, of the mouse which moves the cursor across the screen, pointing at the command button in order to make it operate or of the drop-down menu which appears when a text file is open.

76.      In such cases, it seems to me that the criterion of originality is not met, since the different methods of implementing an idea are so limited that the idea and the expression become indissociable. If such a possibility were offered, it would have the consequence of conferring a monopoly on certain companies on the computer program market, thus significantly hampering creation and innovation on that market, which would run contrary to the objective of Directive 2001/29. (30)

77.      Accordingly, I believe that, in its case-by-case assessment, the national court must ascertain whether, by the choices of its author, by the combinations which he creates and the production of the graphic user interface, it is an expression of the author’s own intellectual creation, excluding from that assessment the elements whose expression is dictated by their technical function.

It is my understanding that when I test the creativity of the subject matter under newly developed European doctrine, I shall first isolate merely functional elements of a work and then determine the creativity aspect in those parts that were not excluded. The reason of this first-step isolation is the fact that if the expression is dictated by the technical function, ´playground´ for creativity is so narrow that the expression actually merges (becomes indissociable) with the underlying idea.

So what is functional? If different methods (ways) of implementing of an idea are so limited that the idea and the expression become indissociable (inseparable) – [BSA C-393/09: para 76 of AG Opinion + para 49 of Decision]

What does US merger doctrine say? (Quoted from prof. Murray’s paper):

.. if an idea and the expression of the idea are so tied together that the idea and its expression are one—there is only one conceivable way to express and embody the idea in a work—then the expression of the idea is uncopyrightable because ideas may not be copyrighted.

Seems to me that EU functionality exclusion is more broad that US merge doctrine.

Anyway. So far there are no other CJEU cases that would specifically address this ‘functionality exclusion’. But this may change with the advent of SAS Institute C-406/10, where defendant is also being sued for the reproduction of computer program functionality [AG opinion is scheduled for 29.11.2011]. We will probably also see what is the relation between ‘functionality’ and “ideas, procedures, methods of operation or mathematical concepts as such” [Art. 1(2) Software Directive, Art. 9(2) of TRIPS and Art. 2 of the WIPO Copyright Treaty].

Any thoughts?