Title: The Secret Is Out: Patent Law Preempts Mass Market License Terms Barring Reverse Engineering for Interoperability Purposes
Abstract: As patent protection has emerged to protect software, courts and commentators have mistakenly focused on copyright law and overlooked the centrality of patent preemption to limit contract law where a mass market license which prohibits reverse engineering (RE) for purposes of developing interoperable products leads to patent-like protection. Review of copyright fair use cases on RE and Congress’s policy favoring RE for interoperability purposes in the Digital Millennium Copyright Act reinforce the case for patent preemption. Also, the fundamental freedom to RE embodied in state trade secret law, coupled with federal patent and copyright law and policies, cumulatively should override a contract barrier on RE based upon the public policy exception to contract enforcement. If courts fail to consider patent and public policy limits on contract, the anomalous result is potential outsourcing of interoperability development to one of the increasing number of foreign jurisdictions where interoperability policy overrides contract law. Ironically, that would harm the U.S. economy and thereby frustrate the purpose of the Intellectual Property Clause of the Constitution. Finally, the patent preemption/public policy invalidation approach to mass market contracts outlined in this article may also provide a new lens whenever a mass market contract results in a de-facto monopoly on useful data. 1 Assistant Professor of Law, University of Washington School of Law. Thanks to Sean O’Connor, Robert Gomulkiewicz, and William Snyder for valuable comments on earlier drafts of this article and to Jane Ginsburg, Ray Nimmer, Craig Allen, Jane Winn, Emery Simon, Steve Davidson, Jonathan Band, David Bender, Annette Hurst, and Frederic Meeker for helpful comments during the research and writing of this article. Thanks also to attendees for comments on a talk on this subject at the Pacific Intellectual Property Scholars Conference. Thanks to Kaaren Vlug for her research assistance, to Jonathan Franklin, Kristy Moon and the rest of the library at the University of Washington Law School for invaluable research support and to the Shidler Center for Law, Commerce & Technology for research funding.
Publication Year: 2006
Publication Date: 2006-01-01
Language: en
Type: article
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