For all the horrors discussed on trademark law, the courts have generally upheld decent standards in the area of copyright, and this decision is a big one. It essentially defends using copyrighted software to create new emulation programs to run that software on different hardware. This is key for breaking corporate control of software by controlling the machines or operating systems on which they run.
Essentially, the courts have argued that some degree of copyright infringement is unavoidable in the process of creating such noninfringing emulations, but the court would not bar the overall result because of such minor infringement during the process of creation.
This case may matter critically in the whole fight in the open source software movement to create emulation software to run software and hardware devices designed with proprietary interfaces. THe recent arrest of the Danish kid who created such a Linux emulation program for running DVDs and the injunction against web sites listing the code for that software may well turn on this decision and others like it.
It may seem a little escoteric, but the reverse engineering issue is one of the issues over which monopoly corporate control of the "new economy" IP will turn.
-- Nathan Newman
Court Zaps Copyright Case Over Sony Software By Brenda Sandburg The Recorder/Cal Law February 11, 2000
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Software manufacturers may use copyrighted material to create a non-infringing final product, the 9th Circuit U.S. Court of Appeals ruled Thursday.
In a case closely watched by the software industry and the legal community, the court concluded in Sony Computer Entertainment Inc. v. Connectix Corp., 00 C.D.O.S. 1106, that the process of "reverse engineering" a copyrighted product to make a non-infringing emulation constitutes "fair use."
Connectix created a software program called "Virtual Game Station" that enables consumers to play Sony's PlayStation CD games on their computers rather than Sony's PlayStation console. In creating the Virtual Game Station, Connectix made copies of Sony's copyrighted "basic input and output system" (BIOS) to gain access to elements of Sony's software that were not copyrighted.
"The intermediate copies made and used by Connectix during the course of its reverse engineering of the Sony BIOS were protected fair use, necessary to permit Connectix to make its non-infringing Virtual Game Station function with PlayStation games," Judge William Canby Jr. wrote.
The 9th Circuit overturned the district court's preliminary injunction against Connectix and remanded the case back to the district court. A trial date is set for June 12 before Northern District Judge Charles Legge.
Mark Lemley, a professor at Boalt Hall School of Law, said the decision reaffirms the Ninth Circuit's precedent-setting ruling in Sega Enterprises Ltd. v. Accolade Inc., 977 F.2d 1510, which established that reverse engineering is legal. Lemley filed an amicus curiae brief on behalf of himself and 27 other law professors requesting that the district court decision be reversed.
But James Gilliland Jr., a partner with San Francisco's Townsend and Townsend and Crew who is representing Sony, said the 9th Circuit decision goes a step beyond Sega. In that case the court concluded that one could copy software "for the purpose of studying it to determine the various functions of the software," Gilliland said.
Connectix, did more than that, he said, running the software on its computer in order to develop a product. The 9th Circuit "eliminated the distinction between studying software and using the software."
Indeed, Judge Canby said the court found "the semantic distinction between 'studying' and 'use' to be artificial," and declined to adopt it for purposes of determining fair use.
Gilliland said the decision may eliminate copyright protection for software embedded into microprocessors or other hardware. "There's not a whole lot of copyright protection left," he added. "Companies will have to turn more aggressively to patent protection."
William Coats III, a partner at Howrey Simon Arnold & White's Menlo Park office and Connectix's counsel, said the court essentially said it "won't micro-manage engineers and won't micro-manage innovation."