Because relevant copyright law permits reverse engineering (RE) as fair use in some situations, blanket contractual prohibitions on software RE might not be enforced, esp. if done to secure software interoperability. Most tech lawyers recognize this, and so the following formulation is common: “Licensee will not reverse-engineer … , except to the extent enforcement of the foregoing is prohibited by applicable law.” The problem, however, is that such a clause operates in a purely binary fashion: if RE is fair use, the clause will not be enforced; otherwise, it will. It’s not much of an improvement over a simple prohibition. A better variant would anticipate fair use.
Here’s sample work product from Redline:
Licensee will not reverse engineer, decompile, or otherwise attempt to derive the source code, techniques, processes, algorithms, know-how or other information from the executable code portions of the Licensed Software (collectively,
“Reverse Engineering”)., except to the extentIf enforcement of the foregoing is prohibited by applicable law., Licensee may engage in Reverse Engineering solely to obtain information necessary to achieve interoperability with the Licensed Software, or as otherwise permitted by applicable low, but only if: (a) Reverse Engineering is strictly necessary to obtain such information: and (bi Licensee first requested such information from Licensor, and Licensor failed to make such information available under reasonable terms.
Join the drafting debate here.
UPDATE (Oct. 2021): The European Court of Justice, in Top System SA v. Belgian State (Oct. 2021), has ruled that the lawful purchaser of a computer program is entitled to decompile (ie reverse engineer) a software program where such decompilation is necessary to enable that person to correct errors affecting the operation of the program. Notably, however, the ECJ held that “decompilation of a program cannot be regarded as ‘necessary’ where the source code is lawfully or contractually accessible to the purchaser,” and that “the [copyright] holder and the purchaser remain free to organise contractually the manner in which that option is to be exercised.”
As such, the clause has been updated to reflect this decision, among other improvements.
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