Hacking the Xbox

Chapter 12 - Caveat Hacker 181
trespass) to obtain the secret, or acquires the secret from a
misappropriator knowing or having reason to know that the information
was a misappropriated trade secret.
Most states, like California, explicitly provide that reverse engineering is a
lawful way to acquire a trade secret. Several reasons support reverse engineering
as a sound principle of trade secret law. 20 Buying a product in the open
market generally gives the buyer personal property rights in the product,
which include the right to take the product apart, measure it, subject it to
testing, and the like. The law also regards sale of a product in the open
market as a publication of innovations it embodies and a dedication of
them to the public domain unless the creator has obtained patent protection
for them.
The vulnerability of trade secrets to reverse engineering is part of the overall
constitutional scheme. In Bonito Boats v. Thunder Craft Boats, the Supreme
Court struck down a Florida law that forbade manufacturers of boats from
using existing boat parts as “plugs” for a direct molding process that yielded
competing products because the law “prohibit[ed] the entire public from
engaging in a form of reverse engineering of a product in the public
domain.” 21 The court explained that reverse engineering is “an essential part
of innovation,” likely to yield variations on the product that “could lead to
significant advances in technology.” Indeed, “the competitive reality of
reverse engineering may act as a spur to the inventor” to develop additional
patentable ideas.
In cases like Bonito Boats, the question is whether a state law is “preempted”
by federal law. When federal and state law conflict, either directly or as a
matter of federal policy goals, the state law loses under the doctrine of
“conflict” preemption. This stems from the Constitution’s Supremacy
Clause, under which federal law generally trumps state law. 22 Copyright law
also contains a specific preemption clause, discussed below.
Copyright Law and the Problem of
Intermediate Copying
Until recently, copyright law didn’t need to worry about reverse engineering,
because there was little reason to reverse engineer books, art, or
music. Now that computer programs are “literary works,” things are
much different. Since many computer programs are distributed only in
object code, the reverse engineering process commonly requires an initial
decompilation into source code — which entails making a copy.
20 See generally Pamela Samuelson & Suzanne Scotchmer, The
Law and Economics of Reverse Engineering, 111 Yale L. J. 1575
(2002).
21 The Court went on to say that “[w]here an item in general
circulation is unprotected by a patent, ‘[r]eproduction of a
functional attribute is legitimate competitive activity.’”
22 U.S. Const. art. VI, cl. 2.