Reverse engineering is a precise form of product teardown that can be the basis for many intellectual property cases. The process can be applied to products, systems or components from mechanical assemblies to biological, chemical and organic matter. In IP, the legality of the reverse engineering process is a frequently debated subject. Non-disclosure agreements, end user license agreements, and anticircumvention can act as legal barriers to reverse engineering. Some laws like the Digital Millennium Copyright Act plays a vital role in legally allowing software reverse engineering to occur.
Does Reverse Engineering Comply with the Law?
Reverse engineering has traditionally been a legal method of acquiring trade secrets under certain conditions. The product must be acquired through “fair and honest means.” Trade secrets cannot be protected through these basic purchasing means. An example of this is buying a product on the open market. The Restatement of Unfair Competition states that “The owner of a trade secret does not have an exclusive right to possession or use of the secret information. Protection is available only against a wrongful acquisition, use, or disclosure of the trade secret.” What defines a wrongful acquisition, use, or disclosure? This occurs when an agreement is breached, (can be implicit or explicit) or when a trade secret is obtained through “improper means.” Trespassing and deceit are examples of improper means.
Digital Millennium Copyright Act
This act was established in 1998 with the purpose of removing Digital Rights Management copyright infringement. An exception exists in the Digital Millennium Copyright Act, which allows reverse engineering to occur for the purpose of creating or improving software inter-operability. Here are the four exceptions in the DMCA, which allow for reverse engineering in specific circumstances:
- “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.
- For purposes of this subsection, the term ‘interoperability’ means the ability of computer programs to exchange information, and of such programs mutually to use the information which has been exchanged.”
If a company informs you about un-patented trade secrets under an NDA, then you can not reveal that information to the public. If disclosed, this would qualify as patent infringement. What if the company patents the trade secret? Once this occurs it is no longer a secret, therefore, reverse engineering is unnecessary due to patent disclosure.
End User License Agreements
In proprietary software, an end user license agreement is a legally binding contract between a software manufacturer (licensor) and a user. (purchaser) It effectively establishes the user’s right to use the software. Reverse engineering a software product with an end user license agreement is strictly prohibited. These agreements can cancel out the effects of the Digital Millennium Copyright Act exception; achieving interoperation with an end user licensed software can be difficult.
What if a company uses anticircumvention devices to protect against reverse engineering? Section 1201 of the DMCA states that a technologically protected trade secret circumvention for the purpose of reverse engineering is strictly prohibited. Companies that have secrets they intend to keep confidential will employ layers upon layers of coding protection to hinder reverse engineers. Read more about DMCA Section 1201 of Title 17 here:
GHB Intellect Specializes in Reverse Engineering Issues
Are you confused about a legal reverse engineering conflict? Leave the hard work to intellectual property experts so that you can prioritize and focus on other areas that you specialize in. Contact our full-service intellectual property consulting office to take you through the necessary steps regarding reverse engineering legality.