Reverse engineering – a permitted imitation?

Paweł Krawiec

by Paweł Krawiec, trainee attorney at the Warsaw Bar Association, lawyer at Nowicki and Ziemczyk Adwokaci i Radcowie Prawni Law Firm

Can imitation lead to higher quality?

People share an innate, deep-rooted tendency to imitate and copy others. This is particularly visible in a business environment, where copied solutions or even entire products often make plagiarists successful. In this situation, how to decide what is more important: the interests of an entrepreneur or the development of new technologies?
Basically, the phenomenon of imitation is not reprehensible, as taking over efficient solutions is one of the drivers of technological progress. An absolute ban on imitation would lead to a monopoly of one company on an unlimited usage of once developed technological solutions. Few people are aware of the fact that the Germans built a rocket launcher named Panzerschreck, using reverse engineering methods (by copying a dismantled Bazooka of American origin), while Polish and British cryptologists developed a device named Bombe, used to decode messages from the war front encrypted by the German Enigma.

Slavish imitation vs. reverse engineering

Not all types of imitation techniques are banned in Poland. Imitating a finished product by copying its outward appearance is deemed as a prohibited act of unfair competition if it might mislead the consumer as to the true identity of the manufacturer or the product itself. This phenomenon is called slavish imitation. The aim of its prohibition is to disable competitors from a crude “milk-skimming” of  successes achieved by other entrepreneurs.
The situation differs with respect to the copying of functional features of a product. Therefore, the question arises: what if one obtains information on product functionality as a result of a reproductive analysis? Such actions are defined as “reverse engineering” and, in essence, they consist of the dismantling of a product and testing its operating principles, usually in order to manufacture an improved version of the given product or to find other applications of the tested solutions.

Solutions related to the functionality of a product are generally classified by a manufacturer as business secrets. Winning them requires extraordinary measures (e.g. breach of security). But the question is whether obtaining information through reverse engineering should be recognized as a legal action? It depends on the legal system. For example, reverse engineering is permitted under US law and, at the same time, prohibited under German law. However, under Polish law, reverse engineering is accepted as a legal method of obtaining a company’s business secrets, regardless of the type and the number of safeguards and can only be treated as illegal in case of statutory prohibition on circumvention of specific types of safeguards. Nonetheless, it’s worth noting that effective actions in this area may have various implications for an entrepreneur, including delisting of the copied solution from the manufacturing company’s list of business secrets.

But what to do when a given product is placed on the market as an outcome of a license agreement with a user? Such contracts usually contain a so-called “black-box clause” which imposes a ban on reverse engineering actions. Nevertheless, limitations drawn by a license agreement are binding solely upon a user and invalid in terms of all participants of the market.

The black-box clause can be commonly found in agreements with gaming console manufacturers. It is worth noting that, despite the above-mentioned restrictions, reverse engineering methods are used by those who modify the original settings of game consoles. There is a famous book, published by an American hacker named Andrew Huang, titled: “Hacking the Xbox: An Introduction to Reverse Engineering,” in which he sets out the rules of reverse engineering adopted on the other side of the Atlantic. The book has been temporarily withdrawn from sale owing to the intervention of Microsoft lawyers.

Right to decompile computer programs

The situation of a licensee, in the event of introducing a black-box clause into a license agreement, is unclear in terms of their entitlements to the reverse engineering (decompilation) of computer programs. Polish law, following European regulations, provides for some restrictions on the scope of contractual prohibition of computer program decompilation.

Legal restrictions governing the decompilation of computer programs should not be absolute in their nature. The Act on Copyrights and Related Rights provides a licensee with some minimum entitlements. It is permissible to observe, research and test the functioning of a computer program with the purpose of developing concepts and principles constituting the basis of each component of such a program. Furthermore, decompilation of a code (its modification or duplication) is acceptable, if it is necessary to obtain indispensable information to ensure its cooperation with other computer programs. However, it should be noted that legal provisions clearly prohibit the use of decompiled code for purposes other than ensuring compatibility, particularly developing programs of similar content and their subsequent commercial use.

Opportunity or threat?

Reverse engineering seems to be a very effective way to stay close to the competitors. It is a generally accepted method of reproducing functionality of a device. Protection stipulated by the Act on Fighting Unfair Competition may often prove insufficient to secure the interests of an entrepreneur or a manufacturer. It appears that it is worth temporarily securing innovative solutions through patents or other applicable absolute rights. From the perspective of a person performing reverse engineering, it is important to take full precautions, especially with regard to the decompilation of computer programs, in order to avoid any allegations of the breach of copyrights.

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