Last week, the U.S. Court of Appeals for the Federal Circuit, in Jacobsen v. Katzer, issued a very important decision in a case of first impression relating to the enforcement of software licenses.   In particular, it was the first federal appellate court decision to clarify whether failure to follow obligations imposed by an open-source license results in copyright infringement or breach of contract.  The distinction is important, as it controls the remedies available for such a failure, and can impact the question of whether lawsuits can be filed in state or federal court.  As Larry Lessig says, “trust me, this is huge.”  This may be true in ways that the free software movement did not foresee – and ways that the movement may very well regret. 

In this decision, called a “major victory for open source,” the court held that failure to abide by provisions requiring attribution in the Artistic License  (which wins the award for best software license name) will result in copyright infringement, because the license provisions were labeled and drafted as “conditions.” This decision is considered a victory  for both open source software licenses and the Creative Commons  licenses for literary and musical works, because it clears up questions about the enforceability of their licenses under copyright law. However, in strengthening copyright holders’ ability to make license provisions a condition of the copyright license, the free software movement may have won the battle, but lost the war.

As Braden Cox of ACT explained, because the “rationale of the decision is not limited to only open source,” this decision is a boon for all copyright owners who impose conditions on the license to their products. This could deprive the free software movement of one of its most important sources of new products: reverse engineering popular proprietary products.  Under Jacobsen, conditions, including a prohibition against reverse engineering, MAY now be enforceable under copyright.

This practice has already been under pressure in light of decisions such as Davidson & Assocs. v. Jung, 422 F.3d 630, 639 (8th Cir. 2005), which held that license provisions prohibiting reverse engineering (in that case, in relation to the Blizzard gaming system) are not preempted by copyright law.

While there are examples of important free software that did not originate by reverse engineering proprietary software (e.g., the Apache web server,  the Firefox browser ), many of the most important free software projects began by reverse engineering proprietary software systems.  For example, Richard Stallman and the GNU Project reverse engineered  Unix tools to create the “unix-like” GNU system which is a major component of what Stallman calls "the GNU/Linux operating system."  Stallman considered installation and use of Unix, a proprietary operating system, a “justifiable evil,” “applying the same reasoning that leads to the conclusion that violence in self defense is justified,” but he did not apparently apply the same rigorous analysis to his decision to copy Unix system tools rather than create his own system.

Another example of an important free software program that could not have been created without reverse engineering is the Samba project, which is a set of services that allow a non-Windows server “host to interact with a Microsoft Windows client or server as if it is a Windows file and print server.”   Samba was created by using the “french café” method of reverse engineering: having Microsoft clients and servers communicate with each other and using a “network sniffer” to discover the details of the network communications between them, akin to “sitting in a French Café and just listening to the conversations” in order to learn French.   

Yet another example of an important open source program that relied on reverse engineering is the Open Office suite of productivity applications, including a word processor and spreadsheet, which both reverse engineered the Microsoft Office data formats and “emulate

[d] its look and feel where suitable.”   

The ability to reverse engineer software has been considered subject to the “fair use” defense under U.S. copyright law, 17 U.S.C. § 107,  including by the Ninth Circuit in Sega Enterprises, LTD v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1993).   Many software providers consequently have made it a condition of their license agreements that the licensee not engage in reverse engineering, as “private parties are free to contractually forego the limited ability to reverse engineer a software product under the exemptions of the Copyright Act.”  Bowers v. Baystate Techs., Inc., 320 F.3d 1317, 1325-26 (Fed. Cir. 2003), quoted in  Davidson, 422 F.3d at 639.  This is where the Jacobsen decision could impact reverse engineering practices. 

If a software license is “conditioned” on not reverse engineering the software, then after Jacobsen, breach of such a license “condition” could result in a finding of copyright infringement, rather than simply a breach of the license contract.  It’s not the reverse engineering per se that would constitute the copyright infringement, just as it’s not the lack of attribution that constituted copyright infringement in the Jacobsen case, but rather the unlicensed exercise of one of the exclusive rights granted under copyright law (i.e., the right to make copies or derivative works, which takes place during the process of reverse engineering).  And just like with the attribution provision in the Artistic License, as the Federal Circuit explained, “these types of license restrictions might well be rendered meaningless absent the ability to enforce through injunctive relief.” 

This is the result that Eben Moglen has long argued for, stating “[l]icenses are not contracts: the work’s user is obliged to remain within the bounds of the license not because she voluntarily promised, but because she doesn’t have any right to act at all except as the license permits.”   But if this result prevents development of new free software projects that rely on reverse engineering popular commercial programs, then it could deprive the free software movement of one of its most significant sources of new projects. 

Make no mistake – this decision strengthens the hand of copyright holders, a large number of which are the types of commercial organizations that insist on being paid for their hard work when their products are successful in the marketplace.  By pressing for a short-term victory, the free software movement may have sown the seeds of its own defeat.

This is not legal advice