Ethan Ackerman was kind enough to respond to my recent post on ProCD v. Zeidenberg, in which I suggested that “the case for contracts somehow expanding copyright rights is vastly overstated, and perhaps illusory.” Sure, Ackerman’s post is critical, but I’m happy to generate even critical responses. Ackerman suggests that a recently filed case in the Virginia courts shows, allegedly contra me, that “there’s an open, ongoing and unsettled problem with parties attempting to reverse, by contract clause, an issue that is addressed and settled by federal copyright law.”
The problem is, that wasn’t my argument. I didn’t argue that copyright owners wouldn’t use contract law when a copyright cause of action isn’t available. Indeed, that’s exactly what the plaintiff in ProCD was doing. Rather, I argued that there isn’t much cause for concern as long as plaintiffs don’t get copyright remedies for uses that are expressly beyond the reach of the copyright owner’s rights under the Copyright Act, such as fair use. And I haven’t seen a clear case where that has occurred, although it’s possible there is one out there. The Virginia case does not contradict any of this.
The case, Thomson/Reuters v. Moll, involves a complaint by the creators of EndNote software against the makers of the free Zotero add-on for Firefox, produced by the Center for History and New Media at George Mason University. The complaint has gotten some notice around the legal blogosphere from James Grimmelmann, Michael Froomkin, and Mike Madison (the latter post has several interesting comments). If it were a copyright complaint, there would be fascinating issues here about the copyrightability of output formats from software (my position: I don’t think they’re copyrightable, or if they are, using them is likely fair use).
But it’s not a copyright complaint. Thomson/Reuters has filed a breach of contract action, in state court. Thomson/Reuters alleges that the developers of Zotero breached the end-user license agreement for Zotero (agreed to, interestingly, by GMU, but not directly by the authors of Zotero), because the EULA prohibits “reverse engineering, de-compiling, translation, modification, distribution, broadcasting, dissemination, or creation of derivative works from the [EndNote] software.” What seems to have prompted the suit is that Zotero’s new beta version 1.5 was going to include “[s]upport for Endnote® export styles”–a feature now “temporarily disabled” due to the lawsuit. See Compl. ¶ 20. In other words, it sounds as though users of Zotero 1.5 could take their EndNote style files–whatever precisely those are–and convert them to Zotero style files. In order to perform that conversion, it seems reasonable to assume that the Zotero developers analyzed the style files so that Zotero can translate them. (You can take a look at EndNote style files here–outside of the EndNote program, however, they are mostly gibberish.) Thomson/Reuters argues that that analyzing and translating breaches the license.
Ackerman claims that refutes what I said in my last post about contracts not expanding copyright law. One point in support of Ackerman might be that Thomson/Reuters has asked for injunctive relief and “at a minimum” $10 million annually until Zotero stops distributing its style file converters. At least the injunctive relief looks like a request for copyright remedies. But a complaint is evidence of precisely nothing about the state of the law. You can file a complaint that says anything. I could file a complaint tomorrow asking for $1 billion for the fillings the CIA has put in my teeth. I won’t get it, of course, and might get sanctioned, but as long as I make it look pretty the clerk will accept it for filing.
Thomson/Reuters’ complaint is not as bad as my hypothetical dental-fillings case, but they’ve got a long row to hoe before they get what they’re asking for. Both the injunction and the damages seem incredibly dubious under contract law. Injunctions are only awarded in special cases for breaches of contract, and I wouldn’t think breach of a mass-market retail software license would be one of those cases. Rather, the proper remedy is damages–and Thomson/Reuters’ $10 million damages request just seems fanciful. Fanciful damages are not awarded for breach of contract. It’s the plaintiff’s burden in a contract case to prove damages. I doubt Thomson/Reuters will be able to prove what the value of the promise not to reverse engineer was worth to it, but it’s probably a lot less than $10 million given the cost of the software. I also doubt it will be able to demonstrate any lost sales; and even if it could, there are also limits on consequential damages.
There’s other problems with the complaint, too, such as the question of whether the contract was even breached. It looks like the provision in question was a “best efforts” clause, which means there was no breach if GMU in fact used its best efforts. (Which leads to the interesting question of what the standard is in the university “industry” for keeping professors in line.) But this is tangential to my main point here, which is there is nothing about the filing of this complaint that indicates to me that Thomson/Reuters is likely to get copyright remedies for its contract claim. No remedies, no expansion.
Bruce,
Thank you for the courtesy of allowing me to hijack your point in the process of making mine. I’m sure we agree here much more than disagree. Your excellent point that properly applied contract law has more tightly cabined remedies than copyright law is well-taken, and I agree that a strict reading of ProCD (like in Assessment Technologies) would implement this and do the world some good. I’m also glad we agree that there shouldn’t be copyright remedies (even back-door through a contract) for uses that are expressly beyond the reach of the copyright owner’s rights under the Copyright Act. My concern is that your “strict application” solution isn’t being seen enough in the wild. It seems (like in this Reuters suit and the other examples in my post) these claims for copyright remedies are still being made, and worse, won.
Perhaps the bigger kettle of fish is (and I admittedly only brushed on this) to what extent is contracting on these issues outright preempted by the Copyright Act? Resale, reverse engineering, timeshifting–copyright law conditionally permits all of these as exceptions to 106 rights. Most preemption discussion addresses 106-equivalency. Less addresses the extent to which these 106 exceptions are preempted.
Ethan, I appreciate that you and others want to sound an alarm about complaints like Thomson/Reuters, claiming breach of contract but asking for copyright-like remedies for a provision that’s not enforceable under the express limitations of the Copyright Act. The concern that drove me to write the original post, though, is to sound an alarm about the alarm. In particular, I saw it claimed in a pro-copyright-owner brief I read recently that breach of a license equals infringement, full stop. But I think it’s harder than you might guess, reading the scholarly literature, to find cases that actually say that, at least for contractual provisions in contravention of an express copyright limitation (I keep saying that, and there’s a reason: cases like Jacobsen v. Katzer).
Re: preemption, as I mentioned but didn’t really discuss in the original post, I buy Judge Easterbrook’s argument: there’s an extra element when it comes to contract, in particular the need for assent. So I don’t think contracts governing copyrightable works are preempted at all, no matter what the terms cover.
One final point worth reiterating: I’m not a big fan of form contracts. I think they are troubling, for various reasons. However, that’s an argument that goes beyond copyright concerns.