http://chronicle.com/blogPost/Judge-Dismisses/7199
Thompson Reuter, Inc. (a very large software company) sued a university for copyright infringement and breach of license agreement. George Mason University, (a small innovative, entrepreneurial institution) who had a license agreement with Thompson, created a free software tool (Zotero). Thompson claimed that Zotero reversed engineered its EndNote citation software, which is a breach of their license agreement and an infringement of their copyright. A federal judge dismissed the lawsuit, for unknown reasons. However, the case raises a legal question for small business owners. Is reverse engineering illegal? Does reverse engineering infringe an owner’s copyright?
The answer is no. Generally, the Copyright Act prohibits copying someone else’s intellectual property, including software code. However, consider the legislative purpose of the Copyright Act—the act was designed to encourage the free flow of ideas. So, Congress has limited the reach of the Copyright Act by incorporating a Fair Use exception. Fair use permits a person to use a small portion another person’s copyrighted property. The Copyright Act only protects expression, not the ideas or the functional aspect of a software program. The court, ruling that the fair use exception can apply to software, decided that reverse engineering software code to discern the unprotected ideas in a computer program is a fair use. If you are interested in reading the court opinion, the case is Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832, 24 USPQ 1015 (Fed. Cir. 1992).
What can you, the business owner, learn from this case?
To protect your business from claims of copyright infringement, you will need to demonstrate that you actually engineered the property. You can meet your burden with an extensive paper trail that documents your investment and labor. Many times, the only way to access the unprotected functional elements of a program requires copying the code and dissembling the object code into source code. Thus, as a practical matter, the law allows copying another software code if you are transforming the code into a new purpose. The new purpose does not have to be dramatically different from the copied code, just a new product with a different purpose. This satisfies the legislative purpose of the Copyright Act—encouraging innovation.
Do you a legal question about contracts? We offer free consultations on this and other issues. Chat, live and privately, online with an attorney every Monday through Friday from 8 a.m. to 8 p.m.
Sharmil McKee
Business Lawyer
blog@mckeeoffice.com
McKee Law Office
Philadelphia, Pennsylvania
http://www.MckeeOffice.com
