Re: More on NBA v. Motorola

Ron Abramson writes:
>
> Section 203 (raised by Mark Lemley) flat-out says you can't contract
> around its provisions. In the ProCD setting, by contrast, we have only
> an implied area of exclusive federal governance.
>

[snip]
>
> Interesting. What does this tell us about a shrink-wrap case where the
> issue is reverse engineering? That application of a shrink wrap license
> WOULD withdraw the program's algorithms from the public domain, since
> without the clause, the reverse engineering might not constitute an
> infringement. With such a clause enforced, those algorithms can be
> reserved as a trade secret. On this point, Judge Easterbrook offers
> dictum to the effect that the anti-disassembly clause is
> "pro-competitive" as well.
>

[snip]
>
> I think it's fair to say that the ProCD opinion is narrowly crafted. I
> would argue that ProCD on its face is weaker authority in a reverse
> engineering shrink wrap case than in a use-restriction shrink wrap case.
> While the opinion opens with the broad statement that shrink wrap
> licenses are enforceable unless their terms are generally objectionable
> on contract law grounds, the actual holding appears to be quite a bit
> narrower.
>

A couple of thoughts:

1. the legislative history of section 109(a) says that it can be waived by contract. Other sections contain no such provision. I don't know that we should assume anything one way or the other from silence on the "contracting around" issue.
2. Easterbrook specifically suggests in dictum that contracts prohibiting reverse engineering are allowable. I think this puts him at odds with the 5th Circuit in Vault, and in considerable tension with the several other circuits that have found reverse engineering permissible under copyright law. Certainly, reverse engineering is permissible under trade secret law.
3. Before passing on the narrowness of ProCD, you should read Hill v. Gateway 2000, an Easterbrook opinion from last month which expands its reasoning to the hardware context, where there wasn't even the fiction of a shrinkwrap license.

Mark Lemley
Assistant Professor, University of Texas School of Law Of Counsel, Fish & Richardson, P.C.
mlemley[_at_]mail.law.utexas.edu

For information on the Intellectual Property program at UT, see http://www.utexas.edu/law/intelprop/ Received on Mon Feb 24 1997 - 17:57:33 GMT