Licensing a Work, and When Licensing Doesn’t Work–Reuters v. GMU

A timely Exhibit A in the argument that contract law is being used as a back-door wedge in expanding copyright.

By Ethan Ackerman

Just as Bruce Boyden seriously asks, “is the case for contracts somehow expanding copyright rights vastly overstated?” along comes a fairly conclusive ‘No’ in the form of Reuters v. GMU.

James Grimmelmann has an excellent summary of the Virginia-filed breach-of-contract case, noting that a George Mason University History professor developed an open-source Firefox extension called Zotero that worked with Thompson/Reuters’ EndNote software. Apparently the development involved some reverse-engineering of the EndNote files or software structure. It’s this act that leads to the suit, as reverse-engineering is prohibited by the EndNote site license that GMU held.

Mike Madison also notes the case and parses out the timing of the suit, filed in anticipation of a significant interoperability feature coming in an update to the Zotero software. He also sees much potential for mischief in Reuters’ demands for an injunction that would apply to other Zotero users who imported data files from EndNote. Professor Madison’s spot-on conclusion: “Reuters is transparent in its effort to use a software license to suppress a competitor in a product market.”

Professor Michael Froomkin sees some interesting lawyering and one actual non-trivial legal question in the choice of filing a suit against a university over actions by its professors. To what extent can a state university bind its employee professors? Professor Froomkin points out that the professor in question is probably not a party to the site license agreement, and likely agreed to no such terms, so any privity comes from the fact that the professor is an employee of the university. My own brief searching on the web leads me to suspect the same thing. An academic site license end-user likely clicks on, at most, a much-reduced terms-of-service along the lines of this U.Georgia page before installing the software.

Further developing the ‘privity-of-contract-through-employment-status’ theory, does it matter that the development of this software by the professor was most likely outside the scope of his employment? I ask, only partially tongue-in-cheek, will this complex ‘copyright-or-not, enforceable-terms-or-not, enforceable-license-or-not, injunction-or-not’ case turn on the professorial field of the Zotero developer? Would it have been different if this were a computer science professor? A grad student?

So if this is a state law contract case, why all the Copyright Act talk anyway? Reverse engineering can be a fair use of a copyrighted work, something even the Federal Circuit will admit. Bringing an infringement suit against a reverse engineering that focused on something (the data file formatting) with such a thin copyright seems like a quick way to an adverse ruling. Professor Grimmelman, noting the utter inadequacy of the possible trademark claim pleading as well, suspects incompetence. Professor Madison, however, suspects an intentional end-run around reverse engineering fair use law by intentionally asserting only state-law contract claims, copying the proceedings in Bowers v. Baystate Technologies. Both see problems with the injunctive relief sought.

My only gloss on this case, otherwise excellently dissected by Profs. Grimmelmann, Froomkin and Madison, is to point out this is a great answer to Prof. Boyden’s initial question about contract law being used as an expanding wedge for rights holders. This case is not even the only recent case tackling the issue, and several other recent cases would have had to face it if courts hadn’t mooted the issue by finding a sale rather than a work made available subject to license.

So in summary, yes, there’s an open, ongoing and unsettled problem with parties attempting to reverse, by contract clause, an issue that is addressed and settled by federal copyright law.

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