d1 - 12/06/2014 france telecom general corporate affairs – group legal department software law:...

D1 - 11/04/23

France Telecom General Corporate Affairs – Group Legal Department

Software law: Lastest developments in Europe

Reverse engineering: recent law cases

pril, 1st 2005

Yann Dietrich: Head of IP&techno dept/IP group legal

dept

France Telecom Distribution of this document is subject to France Telecom’s authorization D2 - 11/04/23

Introduction

s What is software reverse engineering? Software reverse engineering involves reversing a program's machine code (the string of 0s and 1s that are sent to the logic processor) back into the source code that it was written in, using program language statements.

Software reverse engineering is done to retrieve the source code of a program because the source code was lost, to study how the program performs certain operations, to improve the performance of a program, to fix a bug (correct an error in the program when the source code is not available), to identify malicious content in a program such as a virus, or to adapt a program written for use with one microprocessor for use with a differently-designed microprocessor.


Introduction

s A legal definition of the reverse engineering:

"A fair and honest means of starting with a known product

and working backwards to divine the process wich aided its

development or manufacture" (Kewanee Oil Co. v. Bicron Corp, 1974)

"The starting with a finished product and working backwards

to analyse how the product operates or how it was made"

(Secure Services Technology Inc. v. Time & Space Processing, 1989)


Introduction

s Three types of motivation for reverse engineering:

QCompetition: to be able to sell a competing product having equivalent functionality

QInteroparibility: to be able to sell a product working, operating with the product analysed

QDiagnosis: to be able to improve the quality of a product, understand its weaknesses, its defaults


Introduction

s Reverse engineering is traditionnaly authorized in traditional manufacturing business

s But, for software, there are more and more proposals to restrict such rights


Introduction

s Basic points related to reverse engineering

s What is the situation of technically protected digital content ? DMCA and EUCD ?

s Recent law cases related to DMCA

s What is the situation of provisions restricting reverse engineering in license agreeement ? Bowers vs Baystate


Basic points related to reverse engineering

s Reverse engineering is not generally considered as a patent infringement, especially under european law

s Decompilation can be considered as an infringement because it requires automatically to make unauthorised copies of the software



s But, In US, the right to reverse engineering has been recognized under the fair use doctrine

s Sega vs Accolade 1992 QA small company has disassembled Sega Games program in order to get information necessary to make its game compatible to those made by Sega and third party licensees of Sega Q"if it ruled that disassembling computer programs was unlawful, this would confer a de facto monopoly over the unprotected ideas and functional concepts in the program"



s Confirmed In 2000 Sony Computer vs Connectix Corp

QReverse engineering is possible if undertaken for a legitimate purpose such as to gain access to functional specifications necessary to make a compatible program, or in Sony case, to develop competing platform (software to allow Apple computers to play Sony playstation games on Imacs)

QBut only if it is limited to the access to elements not protected by copyright (right to access to concepts, ideas not subject to copyright protection)



s The 1991 european software directive has recognized a similar right:

QArticle 5.3: the right to study, to observe, to test the functioning of a program to determine the ideas and principle which underline any element of a program for a person having the right to use a copy of the program

QArticle 6: right to decompile for the limited purposes to achieve interoperability


Reverse engineering & technically protected digital content

s The DMCA contains four main provisions related to anticircumventions: QA prohibition on circumventing access controls [1201(a)(1)(A)]

QAn access control circumvention device ban [1201(a)(2)]

QA copyright protection circumvention device ban [1201(b)]

QA prohibition on the removal of copyright management information [1202(b)]



s Under DMCA, QNo person shall circumvent a technological measure that effectively controls access to a work protected under this title QNo person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that

–(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title;

–(B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or

–(C) is marketed by that person or another acting in concert with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.



s A complete inversion of the approach / reverse engineering

Qa 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 Qfor 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.



s The directive 2001/29 is not clear about such reverse engineering and has no explicit provisions such as in DMCA

s the french proposal of transposition only mentions an obligation to grant access and license of such technical measures for the limited purposes of interoperability

s The right to reverse engineer (articles 5.3 and 7, software directive) needs to be recognized for technical measures


Recent law cases: Lexmark , lock-in strategy

s Lexmark printers use a cryptographic protocol that enables a secret "handshake" between the printer and a Lexmark ink cartridge

s Static Control broke the cryptographic algorithm and built ink cartridge that could handshake with Lexmark printers

s Lexmark invokes the DMCA to say that Static Control has built a circumvention device, as a technological measure that effectively controls access to the copyrighted printer software


Recent law cases: Lexmark , lock-in strategy

s February, 10th 2004, the Sixth circuit court considers "in the future companies like Lexmark cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods just by tweaking the facts of this case"

s This decision overturns a lower court's decision in favour of Lexmark

s "It seems that courts are getting tired of DMCA based reverse-engineering suits more bent on crushing competition than truly protecting copyright"


Recent law cases: Apple vs Real Networks

s In summer 2004, Real Networks has officially announced the release of a software converting song files into readible files on an Ipod

s Apple considered that Real Networds has adopted "the tactics and ethics of a Hacker with the release of such software"

s "Apple said it is investigating the Real's software strategy under the Digital Millenium Copyright Act"



s In such case, DRM technologies can be used not only to protect their content from online piracy, but also to protect their content from competitors

s Finally, no lawsuit has been initiated and Real just declared that they did consider that the software was developped in a well-established tradition of fully legal, independently paths to achieve compatibility



s It is clear that such DRM technologies protected by the DMCA may be used by some companies to protect their own business, for example, Adobe, Microsoft, Sony

s Actually, Real networks legally obtained protected programs, and reverse-engineered them in order to create an independent program that interoperates with the protected programs. Real networks does not suppress circumvent technical measures and just add information to the top of IPOD file to ensure interoperability



s In the past, Sun has been able to reverse engineer most of Microsoft Office documents, to ensure interoperability with Staroffice

s Now, it may become dangerous because of the DMCA, Dimitri Sklyarov has made such experience by developping software to break Adobe's encryption for its E book format


Recent law cases: Antitrust action in France against Apple

s November, 9 2004, the antitrust French court has rejected the request of Virgin Media to consider the refusal to license its technology Fairplay by Apple to Virgin media as an abuse of dominant position

s The issue is the ability for Ipod's users to download music from Virgin media platform


Recent law cases: Antitrust action in France against Apple

s The Court has refused to consider the access to such platform as an essential facility

s The possibility to use a cheap legal solution to work around the impossibility to transfer directly from Virgin media platform to an Ipod : CD ripping,… (a serious argument)

s The existence of an another offer based on Microsoft DRM solution and compatible with Virgin Media


Recent law cases: DVD and price discrimination

s It is obvious that the fact that DVD world is divided into six regional zone is not only justified on legitimate rationale to minimize copyright infringement

s but may help to protect different prices in the world for DVDs

s In July 2002, Bruce Perens, a founder of the Opensource Initiative, finally decided to not show at a meeting in San Diego how to hack a DVD player


Recent law cases: DVD and price discrimination

s In a ruling released on February 2004, Judge Susan Illston granted Hollywood studios' request for an injunction against 321 Studios, saying the small software company had seven days to stop distributing its DVD-copying products.

s Even if such software can be used to make backup copies


Recent law cases: Viguard vs Tegam

s A person "Guillermito" has decided to test the quality of a antivirus software edited by Viguard

s Consequently, he has studied the software, used a test software, and published his very negative opinion on various websites, and differents elements of the code of the software


Recent law cases: Viguard vs Tegam

s Viguard has sued such person for an infringement of its copyright

s Even if it is possible to test, to study a software under the article L122-6-1 of French IP law, such rights are reserved to an authorized user

s We are still waiting for the decision, but such person has already declared to have downloaded the software through Warez


Reverse engineering and prohibition provisions

s Bowers vs Baystate (2003) QIn this case, Bowers was alleged that Baystate had copied his program, violating its copyright QDuring the discovery, he has discovered that Baystate has obtained a copy of his software accompagnied by a shrinkwrap license including a prohibition of reverse engineering provision

s The Federal Circuit, confirmed by the Supreme court, reaffirmed that the copyright act did not preempt or narrow the scope of shrinkwrap license that prohibited reverse engineering.


Reverse engineering and prohibition provisions

s In Europe, it seems that the enforceability of such provisions may be restricted,

s And especially, in France, many people consider that the right to decompile granted by copyright law cannot be narrow by contractual agreements

s But, I have not identified any definitive cases on such matter ???


"The first thing we do, let's kill all lawyers" Henri IV, Shakespeare

Thank you for your attention !!!

Yann Dietrich

yann.dietrich@francetelecom

d1 - 12/06/2014 france telecom general corporate affairs – group legal department software law:...

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