Thomson Reuters Lawsuit Against Competing Software Product Dismissed

from the reverse-engineering-allowed dept

Last year, we wrote about the troubling lawsuit filed by Thomson Reuters claiming that George Mason University, the makers of an open bibliography software, Zotero, had violated its copyright by reverse engineering the file format used by Thomson Reuters' own proprietary bibliography software, EndNote. Zotero could open bibliographies created in EndNote and then resave them in an open format -- a very useful tool that should be perfectly legal -- but which Thomson Reuters claims violated its license agreement, which bars reverse engineering. Luckily, a judge has tossed out the lawsuit, though (as of right now) it's not entirely clear what the reason for the dismissal was (the ruling doesn't appear to be anywhere online, and the reports on it don't seem to have the details either). Hopefully, Thomson Reuters takes the hint and drops the case, but there's probably a half-decent chance that it will refile the suit or appeal. However, one hopes that the company realizes that felony interference with a business model isn't a crime, and reverse engineering has been held to be perfectly legal. Also, wouldn't it be nice if the company focused on competing by innovating on tools and features, rather than trying to sue competitors out of existence? Update: There's a great analysis of the complaint, that goes much more deeply into the details -- and corrects some misperceptions in this and the earlier post (though, I'd still argue it's copyright law that makes the license enforceable in the first place).


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  •  
    identicon
    pegr, Jun 8th, 2009 @ 4:05pm

    But can you negotiate away that right?

    So if reverse-engineering is otherwise legal, can you negotiate that right away? Or is such a stipulation within a contract "unconsciousnable"? If such a right is declared such, then whee!, all kinds of fun await...

     

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    identicon
    Anonymous Coward, Jun 8th, 2009 @ 4:25pm

    "Zotero [zoh-TAIR-oh] is a free, easy-to-use Firefox extension to help you collect, manage, and cite your research sources. It lives right where you do your work—in the web browser itself. "

    I would say that this is part of the problem. Endnote is $249, Zotero is free.

    Free rules, apparently.

     

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    identicon
    DJ, Jun 8th, 2009 @ 4:52pm

    THERE was a time

    "Wouldn't it be nice if the company focused on competing by innovating on tools and features...?"

    But we can't have Capitalism in a Marxist/Socialist society; the two are mutually exclusive.

     

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      identicon
      Anonymous Coward, Jun 8th, 2009 @ 6:04pm

      Re: THERE was a time

      Well, they could give away their software and sell t-shirts with the logo on it, or upsell to miniputt games.

       

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      identicon
      Anonymous Coward, Jun 8th, 2009 @ 6:50pm

      waterboarding for charity

      So, when is Hannity going to make good on his claim ?

       

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      identicon
      bigpicture, Jun 8th, 2009 @ 7:02pm

      Re: THERE was a time

      Sure we can, it's called capitalism welfare where the banks, Wall Street and General Motors belly up to the trough.

       

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      •  
        identicon
        Anonymous Coward, Jun 8th, 2009 @ 7:10pm

        Re: Re: THERE was a time

        No, it's called saving your butt when the government bails these things out rather than letting them all fail, turning the value of your assets into something akin to dirt.

        Where were the Republican'ts? Hiding in the corner quietly, waiting for Palin to come out and spew an "I told ya so!".

         

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    identicon
    Anonymous Coward, Jun 8th, 2009 @ 9:01pm

    Please correct me if I am wrong, but was not the lawsuit nothing more than a bread and butter breach of contract matter? Certainly it could not have been copyright based since copyright cases are heard in federal court, whereas this case was heard in state court.

    I seem to recall that GMU is a part of the Commonwealth of Virginia's university system. Assuming this is actually the case, then a copyright lawsuit would never have survived in federal court unless Virginia waived sovereign immunity.

     

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    Doctor Strange, Jun 8th, 2009 @ 9:33pm

    I'm Confused

    So I read the actual complaint here. I believe that's it, anyway.

    Last year, we wrote about the troubling lawsuit filed by Thomson Reuters claiming that George Mason University, the makers of an open bibliography software, Zotero, had violated its copyright by reverse engineering the file format used by Thomson Reuters' own proprietary bibliography software, EndNote.

    Now it's not a searchable PDF, but scanning through it a couple times I don't see the words Copyright or DMCA in there anywhere. In fact, the suit doesn't seem to have anything to do with copyright. It seems to do entirely with licensing and contracts. There is exactly one count in the complaint, and it is a count of Breach of Contract, and does not seem to mention copyright at all.

    The article linked to substantiate the connection to copyright is another article by Mike, who asserts that it is the DMCA that permits Thomson to have restrictive terms in their license agreement. I'm not sure exactly how that works; I'm fairly familiar with the DMCA and there is an explicit provision for reverse engineering.

    I imagine that perhaps Mike is thinking of the BnetD case. In this case, if I recall correctly, the court found that both the DMCA and license provisions prohibited the reverse engineering, but the circumstances were different: the court found that the reverse engineering was not solely for interoperability (as required by the DMCA), but for other things too (including allowing people to play unauthorized copies of Blizzard games over the network).

    Here it seems that only the contract provisions are asserted, since there's no encryption being circumvented or anything, at least as far as I can tell.

    In the copyright office's summary of the DMCA, 'license' and 'licensee' are mentioned a few times, but not in the context that Mike is talking about. There are also discussions of licensees in the text of the act but it's unclear exactly how the DMCA, especially in this case, permits a kind of contract to exist between George Mason and Thomson that would not otherwise be permitted.

    Whether or not you can contractually waive your right to reverse engineer something is a separate matter. From the BnetD decision:

    "[P]rivate 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), and "a state can permit parties to contract away a fair use defense or to agree not to engage in uses of copyrighted material that are permitted by the copyright law if the contract is freely negotiated." Id. at 1337 (Dyk, J., dissenting)."

    Back to the article:

    Zotero could open bibliographies created in EndNote and then resave them in an open format -- a very useful tool that should be perfectly legal -- but which Thomson Reuters claims violated its license agreement, which bars reverse engineering.

    If I'm looking at the correct complaint, then this description is false. What the complaint is about is that Zotero can import EndNote style files, not bibliographies.

    EndNote style files are templates that allow a bibliographic record in the EndNote database to be automatically formatted for a particular journal or other venue, in the format required by that journal. There are thousands of different journals and conferences, and many require very precise, very different ways of formatting a bibliography for submission. EndNote comes with a collection of some 3500 templates for different journals and other publication venues. Zotero can apparently import these.

    Also, wouldn't it be nice if the company focused on competing by innovating on tools and features.

    I imagine that's what they were trying to do. The 3500+ style files that come with EndNote required many, many hours of work. Someone had to go out and find out the bibliographic constraints for all these hundreds or thousands of journals, then write templates for all of them, and then check and debug them in subsequent versions.

    It is the case that (assuming one of the 3500+ included files doesn't suit your needs) you can write your own style files. In my experience, this is somewhat exceptional. Thomson's argument seems to be that the purpose of a style import converter is not primarily to convert user-defined styles, but to convert the 3500 premade styles that Thomson collected and edited.

    Now there are several dozen reasons I can think of that this suit might have been dismissed, and unfortunately most of them are fairly legal and mundane (the guy who developed Zotero wasn't bound by GMU's site license, the court didn't want to grant injunctive relief in a breach of contract dispute, etc.) I suppose they could also drop a bombshell and make a precedent-setting ruling governing the legality of anti-reverse-engineering provisions in license agreements or the legality of clickwrap agreements or something like that, but we'll have to wait a week or two to see the transcripts.

    I'm sure you can think of 1,000 reasons why this lawsuit is still a travesty, even with the above corrections, but let's at least be fair: this lawsuit seems to have nothing to do with the DMCA nor (substantially) with Thomson locking up user-created data. It has to do with what consenting parties can agree to in a contract, and whether those contracts should be enforceable.

    Lest we forget, contract law protects business models just as much as other kinds of law.

     

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      identicon
      Anonymous Coward, Jun 8th, 2009 @ 11:54pm

      Re: I'm Confused

      I guess the moral to this story is "if after you work your behind off creating templates that conform to the differing requirements of every Tom, Dick and Harry journal, and then a third party comes along...says thanks for the grunt work...and then proceeds to "pilfer" that hard work, the originator should be grateful a third party likes the work so much that the originator should go out and create yet another set of templates to make it easier for the pilferer to copy the new formats."

       

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      Mike Masnick (profile), Jun 9th, 2009 @ 1:39am

      Re: I'm Confused

      Doctor Strange: great analysis of the issues. I've updated a post with a link to it.

      You're right that my original post was focused on how the DMCA/copyright could be used to try to stop the reverse engineering -- though, I'd argue the license agreement is backstopped on copyright. I wasn't specifically relying on the BnetD ruling (though, yes, that was in my head at the time of the lawsuit), but on a variety of similar attempts to use the DMCA to prevent reverse engineering, including lawsuits involving Apple and RealNetworks.

       

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    iyogi (profile), Jun 8th, 2009 @ 9:48pm

    RE:

    I imagine that's what they were trying to do. The 3500+ style files that come with EndNote required many, many hours of work. Someone had to go out and find out the bibliographic constraints for all these hundreds or thousands of journals, then write templates for all of them, and then check and debug them in subsequent versions.

     

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    identicon
    Tom Anderson, Jun 10th, 2009 @ 6:01am

    Free templates

    Interesting analysis from Doctor Strange. It made me speculate that although someone could just import the files from EndNote, they would have to have the files from EndNote. I was thinking that since the software company is trying to get people to pay to use the templates, they must be bundled together with their software. So I went to the EndNote site and I saw that they are labeled as "free"... http://www.endnote.com/pr-cont-apr09.asp

    Anyone can download them. However, if you have to buy the EndNote software to use the templates, that's not exactly free. It's like advertising swimming, claiming that the water is free, but you charge people to go onto the beach for more than ten minutes.

    So is EndNote going to change their legal verbiage? http://www.endnote.com/support/entemplates-terms.asp

     

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    identicon
    gaming, Jul 2nd, 2009 @ 12:09am

    Federation

    Believe that the Federation of solution

     

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    gaming in germany today, Jan 26th, 2012 @ 1:43pm

    i agree

    I agree with your observation

     

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