DeWitt Clauses: Can We Protect Purchasers without Hurting Microsoft?

I. INTRODUCTION In 1983, Professor David DeWitt and others published a paper that proposed a standard for database benchmarks.1 Unfortunately for Oracle, a database software company, their product was a slow performer in the test.2 The CEO of Oracle, Larry Ellison, called DeWitt's department chair and demanded he be fired.3 As DeWitt later said, "[Ellison] didn't quite understand the concept of tenure, didn't understand the concept that the department chair wasn't going to fire me because I didn't say very positive things about Oracle. "4 Since that time, "DeWitt Clauses" that prohibit publishing results of benchmark tests without written permission of the vendor, have begun appearing in database software licenses.5 Trade magazines have heatedly debated the clauses.6 Info World columnist Ed Foster, writing about Microsoft's clause, surmised that: "[t]aken to its logical conclusion, Microsoft's claim that [it has the right to prevent disclosure of benchmark test results] . is tantamount to saying the company can keep Road & Track from testing the performance of a car that has a little bit of Microsoft software embedded somewhere. "7 Although it is unlikely Microsoft could prevent Road & Track from testing a car, it is worth exploring software license clauses that purport to preclude publishing criticism. Database vendors Microsoft, Oracle and Sybase have DeWitt Clauses in their license agreements.8 The clauses also appear in the home user software context.9 The DeWitt Clause from the End User License Agreement (the EULA) for Microsoft's SQL Server reads: "Benchmark Testing. You may not disclose the results of any benchmark test of either the Server Software or Client Software to any third party without Microsoft's prior written approval. "10 This Note will explore whether DeWitt Clauses in EULAs can be or should be legally enforced. I will present arguments from the perspective of the customer and of the vendor. Because custom software involves a much more arms-length negotiating process between parties with equal bargaining power, those types of agreements will not be discussed. The first section of the Note contains a primer on software licensing and a discussion regarding the enforceability of EULAs in mass market software. The second section focuses on arguments made by proponents and opponents of the DeWitt Clauses. The next section discusses legal strategies that might be used to invalidate the clauses, followed by a section that indicates the difficulties vendors face when attempting to protect themselves against false benchmarks. The final section examines IBM's benchmark clause as a possible middle ground. II. SOFTWARE LICENSING BASICS : ARE YOU A USER OR A COPIER? A. Software Licensing Primer: What it Means When You Click "I Accept" Copyright law provides the copyright owner with a set of rights against others. These rights include the ability to legally prohibit copying, make derivative works, and control distribution of copies.11 The rights are not unlimited. One constraint is the fair use doctrine which allows certain uses of copyrighted material without consent of the copyright owner. Fair use includes use of copyrighted material in reviews, comments, news reporting, and scholarship.12 The sale of goods subject to copyright is not the same as the sale of ordinary goods. In a sale of goods, the seller relinquishes title to the goods. Sale of copyrighted material is a license transaction where the licensee is given title to the particular copy of the work under certain conditions.13 The copyright owner can also sue the purchaser for violating the conditions of the license.14 The licensor retains title to the intangible work while giving the licensor control of the work. Federal copyright laws protect software programs as literary works.15 The protections are subject to at least the same limitations, such as fair use, as other literary works. …