The rights and realities of reverse engineering

Twenty years ago, a lone programmer could create a video game. Today 50 to 100 people often isn’t enough, with developers contracting skilled outsiders to work on specialist problems such as network support or rigging animation.

This adds another layer of complexity to the production of modern video games. Create a game in-house, and it should be protected by the IP obligations in your employment contracts. With an external company – typically requiring in-depth access to your game-in-progress – you’ll need new provisions to ensure IP is protected.

What if you’re the specialist, contracted to enhance a third-party’s content, and you want to develop a similar product in future? Will you face onerous restrictions? While you’ll certainly need to consult your lawyers to ensure your side of the bargain is adequately protected, there are general principles and laws that cover both parties’ interests.

RESTRICTIONS TO WATCH OUT FOR
If your intended product is going to be produced completely independently of the third-party’s content, without using any information obtained in your dealings with them, then you’re normally free to produce a similar product. However before you’re allowed to start work on the software, the third-party may ask you to agree to some terms such that:

– You may not decompile, disassemble or reverse engineer their product.

– Their product or any documentation may not be copied or otherwise reproduced.

– You enter into confidentiality provisions lasting at least the length of the agreement and for a period after the agreement. Trade secrets must stay confidential for as long as they qualify as trade secrets under the law.

These contractual restrictions will apply to you if you intend to produce a product by decompiling, copying or adapting the third-party content. There may also be potential patent issues if your new product encroaches on any patents applied for or registered by the third-party.

THE RIGHT TO REVERSE ENGINEER
If you’re contracting an external firm to work on your project, you might well consider further clauses to restrict its ability to capitalise on its access to your content. However, the EC Software Directive – implemented in the UK by amendments to the Copyright Designs and Patents Act 1988 – prevents certain rights of software licensees from being excluded by contract, including:

– The right to decompile (or effectively reverse engineer) a program if, broadly, it is necessary in order to operate with another program.

– The right to make a backup copy if necessary (as opposed to prudent) for its lawful use.

– The right to observe, study or test the functioning of a computer program in order to determine the ideas and principles that underlie it.

None of these can be excluded by contract.

MUTUALLY ASSURED CONSTRUCTION
Collaboration is a feature of modern software development. To benefit, both parties need to consider their arrangements with each other with respect to what is fair and reasonable to protect their current assets and any future developments that they might want to work on. In short, a working relationship based on mutual trust – backed up by a strong legal framework.