Understanding Reverse Engineering and The Infringement Law
Reverse engineering is not illegal, but understanding how to do it by the law can certainly be confusing. There are plenty of reverse engineering patent infringement laws and regulations that must be adhered to to ensure an ethical methodology. IP does not prevent the dismantling of other’s inventions in any domain like software, mechanical, chemical, or mechanical, so long as it is carried out in accordance with the laws. In this article, we understand the legal guidelines governing the reverse engineering process.
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Reverse Engineering Laws
There are five legal doctrines that govern reverse engineering, namely:
- Copyright law (17 U.S. Code § 1201 (f))
- Trade secret law
- The anti-circumvention provisions of the DMCA (17 U.S. Code § 1201)
- Contract laws (EULAs, TOS, TOU, and NDA)
- Electronic Communication Privacy Act (ECPA)
The Section 103(f) of the Digital Millennium Copyright Act (17 U.S.C. § 1201 (f)) states that:
- Notwithstanding the provisions of subsection (a)(1)(A), a person who has lawfully obtained the right to use a copy of a computer program may circumvent a technological measure that effectively controls access to a particular portion of that program for the sole purpose of identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs, and that have not previously been readily available to the person engaging in the circumvention, to the extent any such acts of identification and analysis do not constitute infringement under this title.
- Notwithstanding the provisions of subsections (a)(2) and (b), a person may develop and employ technological means to circumvent a technological measure, or to circumvent protection afforded by a technological measure, in order to enable the identification and analysis under paragraph (1), or for the purpose of enabling interoperability of an independently created computer program with other programs, if such means are necessary to achieve such interoperability, to the extent that doing so does not constitute infringement under this title.
- The information acquired through the acts permitted under paragraph (1), and the means permitted under paragraph (2), may be made available to others if the person referred to in paragraph (1) or (2), as the case may be, provides such information or means solely for the purpose of enabling interoperability of an independently created computer program with other programs, and to the extent that doing so does not constitute infringement under this title or violate applicable law other than this section.
In this subsection, the term “interoperability” refers to the capacity of computer programs to exchange information and utilize it amongst themselves.
Thus, the Copyright Act strikes a balance between the exclusive privileges of the copyright owner and the rights of others to make technological progress. The exemptions in the law grant permissions to make “essential” steps and archival copies. It, therefore, allows reverse engineering if it is deemed necessary to achieve ‘interoperability’. Reverse engineering, especially in the case of software, can help gain better insight into its workings and detect and fix bugs and other malware.
Trade Secret Law
In the Kewanee Oil Co. v. Bicron Corp. case, the United States Supreme Court ruled that trade secret laws may not rule out “discovery by fair and honest means,” such as reverse engineering.
Again, in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., the SC ruled in favor of reverse engineering when it declared that the “public at large remained free to discover and exploit the trade secret through reverse engineering of products in the public domain or by independent creation.”
In states like Texas and California, reverse engineering is permitted by law. But reverse engineering that violates a non-disclosure agreement (NDA) is considered embezzlement. So, if you are pursuing a technology that is subject to contractual restrictions, then it is best to seek the advice of a lawyer before pursuing it further.
Digital Millennium Copyright Act (DMCA)
The DMCA, bought into force in 1998, implements two 1996 World Intellectual Property Organization (WIPO) treaties, namely, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.
Section 103(f) of the Digital Millennium Copyright Act (17 U.S.C. § 1201 (f)) allows a person in legal possession of a program to reverse engineer it if it is necessary to achieve ‘interoperability’. This offers protection to professionals who wish to reverse engineer products solely for research purposes. However, other than that, it makes it illegal to circumvent controls like authentication handshakes, code signing, code obfuscation, and protocol encryption that block access to copyrighted information. Under this law, it is also illegal to manufacture or distribute tools that may help circumvent copyright controls.
Software applications are protected under different types of contract laws based on their domain.
End User License Agreement (EULA) is the most common contract contained in software applications. This is a legal contract between the software developer and the end-user, which contains various clauses that the user must accept before using the software. Also known as ‘click through’ agreements, EULAs often include “no reverse engineering” clauses that prohibit users from copying or reverse-engineering the product.
Terms of Service notice (TOS) refers to a legal agreement between a service provider and a person who wants to use that service. It outlines the user rules, restrictions, and prohibited behaviors, along with the business’s liability limitations, property rights, and dispute resolutions. ToS are commonly found in web browsers, e-commerce, web search engines, social media, etc., and act as a legally binding contract that is required to access the services. Any inclusions of a reverse engineering clause will vary based on the nature of the product.
Non-Disclosure Agreement (NDA) is a mutual agreement between parties to not disclose confidential information that they have been privy to. They are also known as Confidentiality Agreements (CAs), Confidential Disclosure Agreements (CDAs), Proprietary Information Agreements (PIAs), or Secrecy Agreements (SAs) and are one of the most common ways of protecting trade secrets.
It is good practice to study the fine print of these contracts in detail, before going ahead with the reverse engineering process. An experienced attorney can help identify limiting clauses present in such agreements.
Electronic Communications Privacy Act (ECPA)
Per the Bureau of Justice (BJA) website, the ECPA protects wire, oral, and electronic communications while those communications are being made, are in transit, and when they are stored on computers. This rule pertains to email, phone calls, and electronically stored data.
Since packets are communications, an inspection of a network packet may involve a violation of the ECPA. In case, someone wants to access this information, it can be obtained from providers with a subpoena. More confidential information may need a special court order or a search warrant. The exception to the Act as provided in Title I states that “In the normal course of his employment while engaged in any activity which is a necessary incident to the rendition of his service” and for “persons authorized by law to intercept wire, oral, or electronic communications or to conduct electronic surveillance, as defined in section 101 of the Foreign Intelligence Surveillance Act (FISA) of 1978.” 18 U.S.C. § 2511.
Since the ECPA is a complicated law, seeking legal assistance before proceeding further is highly recommended to avoid getting on the wrong side of the law.
Landmark Reverse Engineering Judgements
The following lawsuits have championed the cause of reverse engineering by adhering to Section 103(f) of the Digital Millennium Copyright Act (DMCA), which states that there is no cross-questioning on the legality of reverse engineering and circumvention of protection to achieve interoperability between computer programs.
- tari Games Corp. v. Nintendo of Americas: The court held reverse engineering as permissible if used to obtain valid information. The court upheld Section 107 of the Copyright Act and said that. “The legislative history of section 107 suggests that courts should adopt the fair use exception to accommodate new technological innovations”. It further added that “A prohibition on all copying whatsoever would stifle the free flow of ideas without serving any legitimate interest of the copyright holder”, thus granting protection to those who use reverse engineering as a means to further technological advancement.
- Sega Enterprises v. Accolade: Plaintiff Sega Enterprises claimed that Accolade had reverse-engineered its source code and used it in its product. The defendant claimed that it had done so to make its game software compatible with the plaintiff’s game consoles. The Court qualified this as ‘fair use’ as it found that this had been done for a legitimate and non-exploitative purpose. Since disassembly was the only means of obtaining the unprotected functional codes of the manufacturer’s game program, the Court ruled in favor of the defendant.
Since then, the courts have ruled favorably for responsible reverse engineering in many other cases such as Sony Computer Entertainment, Inc. v. Connectix Corp, Lotus Dev. Corp. v. Borland Int’l, Inc., and Lexmark Int’l Inc. v. Static Control Components.
Any attempt at reverse engineering must adhere to the guidelines provided by the laws discussed above. So long as you are working within the limits, reverse engineering can serve as a useful means of appropriating knowledge and furthering technological advancement
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