DOES INTERMEDIATE COPYING OF COMPUTER SOFTWARE FOR THE PURPOSE OF REVERSE ENGINEERING A NON-INFRINGING PRODUCT INFRINGE THE COPYRIGHT IN THE SOFTWARE?
Researchers and engineers have long increased the speed of scientific and technological development by borrowing ideas from others.  The ideas contained in a work are often learned when the work is publicly sold or used.  Legitimate use of other’s ideas for the benefit of broader society has its underpinnings in the U.S. Constitution and a long history of support in the judicial interpretation of the Patent and Copyright Acts.  This knowledge borrowing is legal so long as the property rights of the original innovator or artist are not violated. However, courts face a continuing challenge as technological developments create new claims of property rights violations.  The challenge is increased because technology frequently pushes beyond the direct reach of existing statutes.  Thus, courts ultimately find solutions for these new situations by applying the policy on which the law was based. 
The intent of the Copyright Act is to encourage the development of creative works to benefit the general public.  Copyright protection extends to the creative and expressive portion of the work.  However, copyright does not protect the facts, ideas or functional aspects contained in the work.  The grant of the copyright monopoly encourages development of additional creative works by encouraging the author of a work to share it with the public without the risk of the work’s creative content being stolen. The creation of additional works is further promoted when the original work is published because others may use the ideas and factual information contained in the work to develop their own creative works. The publication of these new works provides a similar benefit to the general public. 
The tension surrounding copyrights on computer programs stems from their nature. Computer codes in their final form are designed to be read by computers. Thus, they are in a digital machine language, “object code”, that is not easily understood by humans, even software designers.  This is unlike literary works that are presented in alphanumeric characters that make up the language of the human reader. The copyright granted these works will act to protect the facts and ideas contained therein unless others are allowed to decompile the programs into an intelligible programming language, “source code.” The process of decompiling the object code and using the source code to develop a compatible product is referred to as reverse engineering and may involve repeated copying of the copyrighted computer program.  These copies are referred to as intermediate copies because the protected expression contained therein does not appear in the finished product. 
Software developers have successfully applied the affirmative defense of fair use to defeat claims that this intermediate copying violated the owner’s copyright in the computer programmer.  Courts have found the equitable nature of the fair use defense useful in analyzing claims of computer program copyright infringement because the functional elements are unintelligible unless the object code is decompiled.  In Sony v. Connectix, 203 F.3d 596 (9th Cir. 2000), the Ninth Circuit applied the fair use doctrine to further expand the ability of computer software developers to legally make intermediate copies of computer software for the purpose of developing non-infringing products. The issue is vitally important to software developers because the reverse engineering of copyrighted material is used extensively in the industry.  It is just as important to companies who own copyrights in popular software and systems and view the intermediate copying as theft of their copyrighted work. The result of the copier’s efforts adds insult to injury because it generally leads to the development of a product that takes market share from the owner of the original work. 
This memo analyzes the recent Connectix decision and the Sega decision to try and determine the boundaries of the fair use doctrine when applied to the intermediate copying of computer software for the purposes of reverse engineering. The memo concludes that Ninth Circuit’s reasoning supports intermediate copying as fair use where it is necessary and results in a final product that is transformative.
Robert V. DonahoeRead More