Anti-reverse engineering clauses in technology license agreements

Because relevant US and EU software copyright law permits reverse engineering as "fair use", blanket contractual prohibitions on reverse engineering (eg, "Licensee will not reverse engineer, decompile, decode, decrypt, disassemble, or in any way derive source code from, the Licensed Software") are not likely to be enforced. These jurisdictions countenance reverse engineering as fair use if conducted in order to achieve interoperability between the licensed software and independently created software.


Most drafters of technology license agreements representing licensors recognize this, and consequently use the following commonly found formulation: "Licensee will not reverse engineer, decompile, decode, decrypt, disassemble, or in any way derive source code from, the Licensed Software, except to the extent enforcement of the foregoing is prohibited by applicable law."

The problem with this clause, however, is that it operates in a purely binary fashion: if the licensee's activities are within the legal contours of fair use, the anti-reverse engineering clause will not be enforced. If they are not, then the clause will be enforced. This type of clause is not much of an improvement over a simple blanket prohibition. No effort is made to attempt to define in advance what the parties would consider fair use. 

A better anti-reverse engineering clause would anticipate the permitted uses of the licensed materials and require the licensee to seek such materials directly from the licensor prior to undertaking reverse engineering.

Such a clause has been introduced for discussion in Redline in the query "Anti-reverse engineering clauses in technology license agreements." Lawyers who are eligible to join Redline (inter alia, five years of legal experience is required) may access such valuable legal work product for free and collaborate with an elite cadre of tech and IP lawyers worldwide.

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