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Zotero Lawsuit Illustrates Conflict Between Open Source and Contractual IP Rights

The following is background that may be necessary for some readers to understand the issues raised in the Thompson v. Zotero lawsuit, discussed below.

The Mozilla Firefox web browser (the second-most popular web browser, after Microsoft Internet Explorer) allows anyone with the talent and interest to develop “add-ons”. An add-on is a computer functionality that is added to and integrated with the Firefox browser. The Firefox user downloads the add-on from the web, and the add-on is automatically “installed” by Firefox. The add-on can be used, disabled or deleted, at the user’s choice. What makes this possible is that Firefox is an open source web browser, allowing developers to fully integrate their software with the browser. Developers can register their add-ons with the Firefox web repository, where over 6,000 add-ons are available. The add-ons are rated and critiqued by users, creating a reliable marketplace based on reputation.

Microsoft’s Internet Explorer has add-onsin name, but it is a much more restricted, less open and less integrated technology, and therefore is far less robust than the Firefox add-ons. For this reason, the Firefox add-ons are growing at an exponential rate, and their availability is contributing to the growing popularity of Firefox.

Some of the add-on technologies are so robust that they are taking market share from conventional, for-profit companies. This seems to be the case with the Zotero add-on, which may be taking market share from the Thompson Reuters product, EndNote Software. Both products help academics and researchers create academic bibliographies and manage citations. However, EndNote’s traditional, packaged software costs almost $300, whereas Zotero’s add-on is free and can be downloaded in seconds. It appears that some potential purchasers of Endnote are opting for the lesser functionality of Zotero given the better price and convenience.

With that as background, the lawsuit.

Zotero was created by employees of George Mason University, which is owned by the Commonwealth of Virginia. George Mason is a licensee of EndNote, and the license prohibits reverse-engineering. Thompson alleges that the George Mason developers reverse engineered EndNote in order to allow Zotero to convert proprietary EndNote files into open source Zotero files.

Now, a word about the law. It is clear that a software program may be reverse engineered (decompiled or disassembled, for example) as part of the process of developing a compatible product. This so-called “intermediate copying” was held to be copyright fair use in the Sega v. Accolade case in 1992 and was reaffirmed by no less a legal luminary than Judge Richard Posner in Assessment Technologies v. WIREdata decided in 2003.

However, it is also true (as the Assessment Technologies case points out) that this right of fair use may be restricted by a contract. (See Bowers v. Baystate Technologies (2003), to the same effect). A contract or license may prohibit reverse engineering or the creation of intermediate copies.

If George Mason’s contract with Thompson contained a “no reverse engineering” provision as Thompson asserts in its lawsuit, and George Mason did in fact reverse engineer EndNote to achieve compatibility, George Mason/Virginia may be liable for breach of contract. In fact, EndNote may have blocked the legal ability of any legal licensee of EndNote to reverse engineer EndNote for this purpose, since presumably not only George Mason but every proper licensee would be similarly restricted.

Whether this turns out to be the case – whether George Mason did reverse engineer EndNote to achieve compatibility, and whether EndNote has built a legal “Maginot Line” with no breaks or faults, across which no competitive developer can cross, remains to be seen as the facts of the case develop. It may be the case that the EndNote software did not require reverse engineering in order for Zotero to access its formats. It may also be the case that Zotera (or others in the marketplace, even nonlicensees) can technically and legally sidestep any contractual restrictions, and still provide conversion to EndNote file formats.

Whichever way this case goes, this dispute is interesting because it represents the clash of the old and the new: old, in the sense that savvy IP lawyers have been advising their clients for years to use contracts, in addition to copyright, to protect their software, and it appears that EndNote has tried to do this. New, in the sense that open source, when combined with new web technologies, may present a competitive and technical challenge to products like EndNote that good lawyering may be able to delay, but may prove unable to stop.

The complaint in this case can be accessed here.

Supreme Court Will Decide Whether Ignorance is a Defense to the Federal Crime of Identity Theft

Today, the Supreme Court agreed to decide this issue:

Whether an individual who used a false means of identification but did not know it belonged to another person can be convicted of “aggravated identity theft” under 18 U.S.C. 1028A(a)(1).

The case involves an illegal alien who was prosecuted for use of false identity papers. It must be hard enough to be arrested as an illegal alien, but much worse to discovery that your punishment will not be deportation, but rather indictment and trial for aggravated identity theft, a felony punishable with two years imprisonment with no probation allowed. Your defense: you may have purchased false identification in order to work, but you didn’t know that you were using another person’s social security number, as opposed to a purely fictitious SSN.

This is the situation that Ignacio Carlos Flores-Figueroa faced when the U.S. Court of Appeals for the Eighth Circuit held that the government was not required to prove that Mr. Flores-Figueroa knew that he was using another person’s ID, and upheld his two year sentence under 18 U.S.C. 1028A(a)(1). This was the second time that the Eighth Circuit had ruled this way on this issue.

Surprisingly, another federal appellate court saw it differently, and held that knowledge is an element of the crime. Thus, the Supreme Court was presented with a split of authority between the federal circuits which it has agreed to resolve.

Here’s the question, legal beagles and lovers of grammar and clear writing. The law reads:

[w]hoever, during and in relation to any felony violation enumerated in [§ 1028A(c)], knowingly transfers, possesses, or uses, without lawful authority, a means of identification of another person shall, in addition to the punishment provided for such felony, be sentenced to a term of imprisonment of 2 years.

The Eighth Circuit held that this law is unambiguous, and therefore it need not look beyond the language of the law to examine the legislative history and congressional intent. If held that “knowingly” only modifies “transfers, possesses, or uses”, and therefore the government is not required to prove that a defendant knew the means of identification belonged to another person (as opposed to a fictitious person).

In U.S. v. Villanueva-Sotelo the U.S. Court of Appeals for the District of Columbia saw the issue differently, holding that the law was ambiguous, thereby permitting it to review the legislative history and the congressional purpose of the law. Based on this review the D.C. Circuit Court concluded that the mens rea (knowledge) requirement extends to the phrase “of another person,” meaning that the government must prove the defendant actually knew the identification in question belonged to someone else.

What do you think?

Looking for a New Job? How About Federal IP Czar?

So, you’re unhappy in your law firm job? Ready to move on to a job that has lots of responsibility but doesn’t require hourly billing and client headaches? A job that puts you in close proximity to the President and his closest advisers?  You’d like a job that provides security and good benefits? A federal pension to offset the losses in your 401K account?

Well, you can thank President Bush for creating this exciting new job when he signed the “Prioritizing Resources and Organization for Intellectual Property Act of 2008” last week. The legislation calls this the “short title” of the law. Yes, Congress does have a sense of humor. We’ll call the new law PRO-IP, which is even shorter, and tells you almost as much about the law as the slightly longer title (but still short, no disrespect meant) assigned by Congress.

Copyright lawyers always get excited when the Copyright Act is amended, but as I suggested above, there is even greater cause for excitement this time: the new law creates the position of “International Intellectual Property Enforcement Coordinator.” This is a mouthful, so we’d prefer the term “IP Czar” (or perhaps simply “the Czar” to the Czar’s subordinates when they’re talking about her ourside of her hearing).

This is a great job. You get to work in the Executive Office of the President, (the “EOP” as its known to those “beltway insiders”), and maybe even work in the White House itself, or at least the Executive Office Building. This is a “with-the-advice-and-consent-of-the-Senate” job, so your friends and family may get to see you interrogated by the Judiciary Committee on C-SPAN.

And, should you be confirmed (assuming you are not “Borked” or subject to a “Hi Tech Lynching” or anything along those lines), here’s a “general” description of your job, as described in the statute:

(1) IN GENERAL- The [IP Czar] shall–

(A) chair the interagency intellectual property enforcement advisory committee established under subsection (b)(3)(A);

(B) coordinate the development of the Joint Strategic Plan against counterfeiting and infringement by the advisory committee under section 303;

(C) assist, at the request of the departments and agencies listed in subsection (b)(3)(A), in the implementation of the Joint Strategic Plan;

(D) facilitate the issuance of policy guidance to departments and agencies on basic issues of policy and interpretation, to the extent necessary to assure the coordination of intellectual property enforcement policy and consistency with other law;

(E) report to the President and report to Congress, to the extent consistent with law, regarding domestic and international intellectual property enforcement programs; and

(G) carry out such other functions as the President may direct.

Well, I’ve got to run now and revise my resume, I mean delete some of the anti-government stuff I said on Facebook, errrrr… get some of those copyright law articles I’ve written updated and on the web, I mean ah, yes, call back a client, that’s it!

(p.s. – needless to say, this law contains a lot that’s worth serious discussion, and I’ll return to it in more detail later. You betcha.)

 

Google Makes the Case for its Advertising Deal With Yahoo

Here’s an interesting web page from Google entitled Facts About the Yahoo-Google Advertising Agreement. There, Google “makes the case” for its proposed deal with Yahoo, which it describes as follows:

On June 12, 2008, Yahoo! and Google announced an agreement that gives Yahoo! the ability to use Google’s search and contextual advertising technology through its AdSense™ for Search and AdSense for Content advertising programs.

Under the agreement, Yahoo! has the option to display Google ads alongside its own natural search results in the U.S. and Canada. In addition, Yahoo! can serve contextually targeted ads on its U.S. and Canadian web properties as well as on its current publisher partner sites. Yahoo! will continue to operate its own search engine, web properties and advertising services.

In addition, Yahoo! and Google agreed to enable interoperability between their respective instant messaging services bringing easier and broader communication to users.

On this web page Google presents a White Paper of sorts, in web format, with links to sections such as “what the deal means for advertisers” and “why the deal is good for competition.

It’s somewhat unusual for a company under Federal antitrust scrutiny to make a public “pitch” like this, but it’s consistent with Google’s corporate personality, which tends to be more “outward facing” than more conventional corporations.

Here’s the Powerpoint embedded on the Google page: