|Bowers v. Baystate Technologies|
|Court||United States Court of Appeals for the Federal Circuit|
|Full case name||Harold L. Bowers (doing business as HLB Technology) v. Baystate Technologies, Inc.,|
|Decided||January 29, 2003|
|Citation(s)||320 F.3d 1317|
|Baystate performed a breach of contract by reverse engineering HLB Technology's software. The shrinkwrap license on HLB Technology's software preempts fair use rights given in copyright law.|
|Judge(s) sitting||Randall Ray Rader, Raymond Charles Clevenger, Timothy Belcher Dyk|
|Majority||Randall Ray Rader|
|Dissent||Timothy Belcher Dyk|
|17 U.S.C. § 117|
Bowers v. Baystate Technologies, 320 F.3d 1317 (Fed. Cir. 2003), was a U.S. Court of Appeals Federal Circuit case involving Harold L. Bowers (doing business as HLB Technology) and Baystate Technologies over patent infringement, copyright infringement, and breach of contract. In the case, the court found that Baystate had breached their contract by reverse engineering Bower's program, something expressly prohibited by a shrink wrap license that Baystate entered into upon purchasing a copy of Bower's software. This case is notable for establishing that license agreements can preempt fair use rights as well as expand the rights of copyright holders beyond those codified in US federal law.
Bowers was the patent holder of a system called Cadjet that simplified interfacing with CAD software, which he began to license commercially in 1989. Bower's initial software offering was later combined with a product called Geodraft that was produced by George W. Ford III (Ford) that inserted tolerances compliant with ANSI for features in a CAD design. Together, these products were marketed as Designer's Toolkit. The Designer's Toolkit was sold with a shrink-wrap license that prohibited reverse engineering.
Baystate sold competing CADKEY tools including Draft-Pak version 1 and 2. According to the court filings, Baystate acquired a copy of Bowers' Designer's Toolkit, and three months later, Baystate released version 3 of Draft-Pak which substantially overlapped with the features offered by Designer's Toolkit.
In 1991, Baystate sued Bowers seeking declaratory judgement that 1) Baystate's products do not infringe on Bowers' patent 2) the patent is invalid, and 3) the patent is unenforceable. Bowers filed counterclaims for copyright infringement, patent infringement, and breach of contract, contending that Baystate had reverse engineered Designer's Toolkit. At court, expert testimonial revealed "evidence of extensive and unusual similarities" between Draft-Pak and Designer's Toolkit, supporting Bowers' claim that Baystate had reverse-engineered a copy of his software. The District Court of Massachusetts concluded that Bower's was entitled to damages, finding that the shrink wrap license tied to Bowers' software preempted any fair use case for reverse engineering as allowed by Copyright law. Baystate appealed the district courts decision.
Opinions of Federal Circuit
The central question the Federal Court addressed in Bowers v. Baystate was whether a shrink-wrap license that forbids reverse engineering was preempted by federal Copyright law which expressly permits reverse engineering.
The majority opinion of the Federal Court upheld that parties can freely enter into license agreements that enforce stricter requirements than copyright and that such agreements are not preempted by copyright law. In their decision, the court cited a number of prior cases involving contractual constraints that extend copyright law:
- Data General v. Grumman demonstrated that state laws protecting trade secrets were not preempted by copyright law, even though both deal with unlawful copying. Specifically, the federal court stated that "beyond mere copying, that state law claim required proof of a trade secret and breach of a duty of confidentiality." These additional terms result in a unique requirement that is not covered by copyright law and thus not preempted.
- ProCD v. Zeidenberg determined that materials that could not be protected by copyright could be protected by a shrinkwrap license, so long as the actions restricted by the license were not "equivalent to any of the exclusive rights within the general scope of copyright". As contracts affect only the involved parties, no new exclusive (universal) rights are created for the copyright holder.
- Although Atari v. Nintendo established reverse engineering was a fair use exception to copyright infringement, this did not conflict with an additional contract disallowing reverse engineering.
- In the federal courts own interpretation, while Vault v. Quaid found that state law was preempted by copyright law, this does not apply to private contractual agreement.
Dyk formed his argument using patent and copyright law cases:
- Cases establishing the rights of patent law were viewed as applicable toward copyright law. Bonito Boats v. Thunder Craft Boats defined that state law does not preempt patent rights.
- Data General v. Grumman and ProCD v. Zeidenberg both focused on “extra elements” added by state contract law which were not covered by copyright law.
- Atari v. Nintendo demonstrates the importance of the fair use defense in copyright law ensuring that copyright law did not inhibit understanding of an idea, process, or method of operation.
- Vault v. Quaid established that state law could not be used to preempt copyright law. Dyk agreed that a private agreement could be used to preempt copyright law, however, a shrinkwrap license is similar to a state law because the customer does not have an opportunity to renegotiate the license agreement.
- Dyk created an analogy of a state law where software disallowing reverse engineering must have a black dot on the packaging. This analogy demonstrated a law that would give broader protections than normally given in copyright law which impedes publicly given rights.
- By allowing preemption of copyright law, Dyk questions other limitations that could be applied to federal law. He also warned that this could undermine the protections originally given in the Copyright Act.
Critics scrutinized the outcome of this case, arguing that it not only allows companies to use state contract law to expand copyright protections, but also creates non-negotiated license terms which are equivalent to patent like protection without the limiting conditions of patent law. Critics further argued this precedent is unrealistic for the software industry. Reverse engineering is not only considered necessary to keep up with "feature wars", which Bowers v. Baystate is an example of, but is essential for interoperability and security purposes.
- Bowers v. Baystate Technologies, Inc., 320 F.3d 1317 (Fed. Cir. 2003).
- U.S. Patent 4,933,514.
- Data Gen. Corp. v. Grumman Systems Support Corp., 36 F.3d 1147 (1st Cir. 1994).
- ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996).
- Atari Games Corp. v. Nintendo of America Inc., 975 F.2d 832 (Fed. Cir. 1992).
- Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1988).
- Rice, D.A. (2004). "Copyright and Contract: Preemption". Roger Williams U.L. Rev. 595. 9.
- Foster, Ed (16 September 2002). "Headed in Reverse". InfoWorld. Retrieved 27 September 2011.
- "Bowers v. Baystate Technologies: Using the Shrinkwrap License to Circumvent the Copyright Act and Escape Federal Preemption" - Merritt A Gardiner
- "Restricting Reverse Engineering with shrink-wrap licenses: Bowers v. Baystate Technology, Inc" - S.Bressman
- "Canary in the Court" - Robert Storey White - https://www.amazon.com/Canary-Court-Robert-Storey-White/dp/069271250X
- Kuney, George W., "Bamboozled? Anatomy of a Bankruptcy: Baystate v. Bowers and its Aftermath" (September 2011). University of Tennessee Legal Studies Research Paper No. 117. Available at SSRN: https://ssrn.com/abstract=1658963 or https://doi.org/10.2139/ssrn.1658963