Re: UCITA v. DMCA

On Mon, 18 Oct 1999, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
>
> I vote for alternative (c) -- you've got a real problem. The DMCA
> has a very limited exception for certain reverse engineering
> activities. But that exception applies only within the DMCA -- that
> is, it means the reverse engineer won't be liable for violating the
> anticircumvention regulations. It doesn't mean they won't be liable
> for copyright infringement, and it certainly doesn't mean they won't
> be liable for breach of contract.

This is precisely correct, of course. And while DMCA wrote into the copyright Act RE language, the exception was perhaps the most narrow possible definition of RE possible in view of the Atari and Sega cases. If anything, I believe the DMCA may have served to narrow, not broaden, the freedom to reverse engineer under Title 17.

Of course, Atari and Sega still stand as to provide a possible fair use claim in defense of a copyright infringement claim. On the oher hand, would the theoretical breach of contract make possible an "unclean hands" argument, thus avoiding the equitable defense? (Is there any authority either way for that proposition?)

Still further, it remains to be seen what the damages for a contract reverse engineering breach should be. Even if loss of sales or unjust enrichment were collectible, shrinkwraps typically have a draconian limitation of liability clause, might that not serve to defeat a claim for more than the package price (even if the clause were worded solely to benefit the publisher?)

> Now, there is a good argument that no-reverse-engineering provisions
> should sometimes be preempted by federal law, or that federal public
> policy should render them unenforceable. [I make the latter argument
> at 87 Calif. L. Rev. 111]. But I don't think you can count on this
> happening. There are some courts (like the 7th Circuit in ProCD)
> that are totally insensitive to the policies behind reverse
> engineering, and they aren't going to go out of their way to preempt
> UCITA if it is passed.

Did ProCD address RE? I don't recall, but its been awhile.

Didn't ProCD address contract preemption after a "no-subject-matter" claim under Feist, rather than a "no-copyright-protection-for-fair-use" claim? Might that raise different policy issues and require, perhaps, a different analysis?

Admittedly, ProCD seemed to adopt a contract uber alles approach, making it hard to see how any contract claim for breach of a promise to forebear from conduct could be preempted by the copyright act, which may be that to which the the good professor was referring.

Andrew C. Greenberg
<werdna[_at_]gate.net> Received on Tue Oct 19 1999 - 10:49:11 GMT