17Comparative Study on Legal Protection in the USA, EU,
Japan and Korea for Computer Programs－Focus on Program Reverse Engineering－
Invited Researcher: Jin-Keun Jeong（*）

Computer programs have been protected under copyright from the late 1970’s, and the leading countries
in IP law area, like USA, EU, Korea and Japan, have the same or similar legal system for the protection ofcomputer programs. We can find several reasons of the same or similar legal system’s adoption, in the shorthistory of the protection of computer programs, the agreement among countries for harmonization of legal
system, the boundlessness for electric commerce, and the effect of network.
Although most of countries have the same or similar legal system for computer programs, there aredelicate differences among those legal systems, especially in the determination of the limit of copyright. In
USA, there was an important case dealing with the limit of copyright. In this case, USA’s Federal Circuit
ruled that the contractual terms, prohibiting from reverse engineering the computer program, are notpreempted by federal law under the Copyright Act. Relating to this decision, many scholars criticize the reason
and the background of the decision. Unlike USA’s decision, EU adopted the directive prescribing that any
contractual provisions contrary decompilation shall be null and void, and Korea adopted the statute forallowing the reverse engineering as a free use.
I think that these differences are from the historical and theoretical background of each country.
Therefore, based on these statues and theories, I recommend the best solution of enacting a mandatory statutefor Japan and for the desirable future of international society and for the development of computer programindustry.

Ⅰ Introduction
According to the report of CONTU(Commission on New Technological Uses of
Copyrighted Works) of 1978, the U.S. Parliament
revised the copyright law in 1980 for protecting
programs.(*1)
Regarding major discussion on protection ofprograms, there are the “Convention and Model
Provisions on the Protection of Computer
Program”(*2) and “the sui-generis approach of the
Ministry for International Trade and Industry(MITI) in Japan”.
However, all countries in the world haveadopted the protection of copyright(*3); therefore,
each country is largely alike in the protection
method of programs. However, owing todiscrepancies of legal culture and program industry
competition in each country, the protection
method and standard of programs occasionallyshow differences, for example, ‘restriction of
copyright by reverse engineering’.
Therefore, this study inspects the significanceof reverse engineering as well as issues in the
copyright law, and compares differences andfeatures in the countries laying stress on bywhich legal interpretation reverse engineering
can be allowed.

Ⅱ Reverse engineering and the
Copyright law
1

Significance of reverse engineering

The term “reverse engineering” generallymeans that industrial products developed byother companies are investigated, interpreted andstudied, and the technical idea or information
therein or know-how useful for manufacturing the
products is flowing out of the product by reverse(*)

Doctor of Law, Professor of Hankyong National University, Researcher of Korean Institute of Technology and theLaw (KITAL)(*1) Raymond T. Nimmer, Law of Computer Technology, LCOMTECH § 1:9 (Database updated September 2005).
(*2) Copyright, UN WIPO at 271-279, UN Doc. LPCS/11/3 (Sep. 1983) (draft treaty); WIPO, Model Provisions on theProtection of Computer Software §§3-4 (1980).
(*3) Dennis S. Karjala, Copyright protection of operating software, copyright misuse, and antitrust, 9 Cornell J.L. & Pub.
Pol’y 161 (1999) at 178.

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engineering.(*4) However, reverse engineering
was not required for a work whose expression is
open to the public.
Nevertheless, programs are distributed as
object programs, and so their expression could not
be seen; therefore reverse engineering was
required. Reverse engineering of programs is aseries of processes by which an object program
corresponding to finished product is reconstructed
to an original program by disassembling or
decompilation.
In addition, the term “reverse analysis” issometimes used instead of reverse engineering.
Though reverse engineering is allowed, it is notrecognized that an act using the result ofreverse engineering infringes the exclusive
right of the right holder of the subject programof investigation; therefore, reverse analysis
rather than reverse engineering would bereasonable in that it is only for interpreting theaction to investigate programs for test studies.(*5)
The significance of the term “reverse
analysis” can be said to be very meaningful insuggesting in which range reverse engineering of
programs may be allowed.
2

Necessity for reverse engineering

Reverse engineering is widely used in theindustry world, and its meaning is as following:(*6)
Firstly, reverse engineering provides ameasure for technology innovation by obtaining
technical idea or information;
Secondly, it gives a measure for ensuring
compatibility or mutual connection;
Thirdly, it offers a measure for either

repairing programs or removing bugs; andFourthly, it furnishes a measure fordiscovering infringement by programs of others
having copyright for the programs.
3

Infringement on copyright by reverse
engineering(1) Against copyright of reverse engineering
Even though the copyright law does notprovide for reverse engineering, there are a few
opinions interpreting that reverse engineering
should not be prohibited.(*7)
On the contrary, an opposite view indicatesthat reverse engineering is automatically
executed so that there is no room for adding new
creativity. Besides, both original program and theprogram made by reverse analysis aresubstantially alike, and therefore, it shall comeunder general ‘replication’.(*8) This viewpoint is
the prevailing opinion as well as the standpoint ofcases in the major countries.
(2) Infringement range of copyright byreverse engineering
For the purpose of confirming the above
legal range, the life cycle of programs will be
explained. A computer program is created with an
original program A. To begin with, A is changed
into object program B by compiling, and thendistributed. B is sold to a third party, in which an
obligatory license agreement to use is concluded
between a copyright owner and a purchaser. The
third party decompiles B and abstracts an original
program C. Afterwards, he analyzes and studies C,
and occasionally creates a new program D, which(*4) 『ソフトウェアの法的保護(新版)』 （有斐閣, 1988年）127頁；根岸哲編 『コンピュータ知的財産権』 （東京布井出版,
1993年）12１頁から再引用
Nakayama Nohiburo, Legal protection of software, Yuhikaku, 1988, at 127. ; Negishi, Computer intellectual
property, Tokyo Nunoi Publishing company, 1993, p. 121(*5) 同旨として根岸哲編『コンピュータ知的財産権』 （東京布井出版, 1993年）124-125頁; 中山信弘 『ソフトウェアの法的保護(新版)』 （有斐閣, 1988年）128頁
Negishi, supra note p. 124-125; Nakayama, supra note, at 128.
(*6) 根岸哲編『コンピュータ知的財産権』（東京布井出版, 1993年）121-124頁
Negishi, supra note, at 121-124.
(*7) 이혜광, “개정 컴퓨터프로그램보호법과 프로그램코드 역분석(decompilation)”, 21세기 한국민사법학의과제와 전망(심당 송상현선생 화갑기념논문집), 2002, 972쪽; 손승우, “저작권과 쉬링크랩 라이선스 상의
S/W Reverse Engineering의 법적 지위”, 산업재산권(제14호), 2003. 11., 199쪽.
Lee, Hyekwang, “Revised computer program protection law and program decompilation” in: ‘Problem and Prospectof the Korean Civil law in 21 century (the 60th celebration of Prof. Song, Sanghyun), 2002, at 972; Son, Seungwoo,“Legal protection on Copyright and on S/W reverse engineering on the shrink wrap licence”, Sanwobzaisankwon,
Vol. 14, 2003.11., at 199.
(*8) 오승종·이해완, 저작권법, 박영사, 1999, 633쪽; 임준호, “컴퓨터 프로그램의 법적 보호, 지적소유권에 관한
제문제(하)”, 법원행정처, 1992, 501쪽.
Oh, Seungjong/Lee, Haewan, Copyright Law, Parkyoungsa, 1999, p. 633; Lim, Junho, “Legal protection of thecomputer program” in: ‘Problems regarding intellectual property (II)’, The Office of Court Administration, 1992, at
501.
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is called ‘forward programming’.
If so, the problem is raised as to which partof above actions infringes copyright. Firstly, it is
the problem as to whether the program D createdby forward programming infringes A’s copyright,
and secondly, whether C abstracted by decompilinginfringes A’s copyright.
At first, the problem as to whether D
infringes A’s copyright or not, absolutely depends
on the general principle of copyright. In otherwords, it falls under an obvious infringement on
copyright if D is substantially similar to A, and if
D’s creation is based on A.
Secondly, it can be discussed on the problem
as to whether C’s abstraction infringes A’s
copyright or not.
A is generally transformed into B to be
distributed. It is reverse engineering that B isre-transformed into C for anyone to understand.
At this moment, the process of transforming B
into C is automatically performed through a
decompilation program. B is made by compiling
A; however, it does not correspond exactly to
one-to-one mapping because any information to
be required for execution such as allotment ofmemory spots or optimization has been attached.
The expression is not substantially similar even if
B is decompiled into C; namely, the relationshipof A≠B≠C is formed.
Because of this reason, namely, C’s
expression is substantially different from A’s,
there may be a point of view that decompilation isregarded as ‘translation’.
However, there is no space for adding
creativity such as mental activity into a mechanicalsubstitution by compiler or decompiler; therefore,
substantial similarity between A and C isacknowledged, and they should be regarded as‘replication’.
A Court in Japan presumed infringement on aright to reproduce in the Microsoft Case in
1987.(*9) After changing the basic interpreter
object program of Microsoft co. into 16
antilogarithm code in the case the defendantpublished a manual by performing disassembly
and adding a label and a comment. The Court
made a decision that a difference of both works isnothing but a label mark so that infringement on

the right to reproduce is recognized. This case isevaluated as having a precedent significancedetermining the range of dead copy.(*10)
In conclusion, illegal range by reverse
engineering comes into existence when C
infringes A’s right to reproduce.
(3) Role of reverse engineering in copyright
infringement
If reverse engineering is an act within therange allowed to the user according to the
purpose of the copyright law, the defense right torestrict the copyright should be given to those
who have conducted reverse engineering. In
other words, allowance of reverse engineeringmeans restriction of copyright.
4

Arrangement of legal disputes as toreverse engineeringWith respect to reverse engineering, someproblems are mainly discussed: firstly, the reason
why reverse engineering is necessary forcomputer program which is a type of works;
secondly, the problem as to whether reverse
engineering infringes the copyright or not. This
problem should be considered from the viewpointof whether the copyright would be restricted by
granting a defence right to those who haveinfringed the copyright by reverse engineering;
thirdly, the problem as to which legal provision of
the copyright law should be applied concerning
reverse engineering; and fourthly, the problem as
to the validity of the contract to prohibit reverse
engineering.

Ⅲ

Attitude on reverse engineeringin U.S.

1

Provision of the Statute(1) Constitution
The structure and relationship of the U.S.
Federal Constitution and the Copyright Act
suggest that there is an agreement to the fact thatthe power as federal provision with national
authority is bestowed to the Copyright Act.
Accordingly, it draws a conclusion that either acontract against the Federal Copyright Act
establishing a statutory right entrusted by the(*9) 東京地判昭和 62 年 1 月 30 日判時 1219 号
Tokyo District Court, 1987. 1. 30. No. 1219.
(*10) 椙山敬士著『ソフトウェアの著作権·特許権』(日本評論社, 1999 年) 12 頁
Sugiyama, “Copyright and Patent of software”, Nippon Hyoronsha, 1999, at 12.

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constitution or the contract law supporting it isagainst the constitution.(*11)(2) Federal Copyright Act
The U.S. has newly established a special
chapter in Article 117 of the Digital Millennium
Copyright Act in 1998 called copyright protection
and management systems, and therefore
recognizes that reverse engineering is one of
exceptions to avoid technical protection
management.
However, this provision has the limitation of
the application in that it is not a general provisionof reverse engineering, but only provides a
possibility to avoid technical protection
management by reverse engineering.
(3) Provision of reverse analysis in UCITA
The Amendments Completed Year 2002 of
UCITA has allowed reverse engineering aiming atcompatibility.(*12)
However, UCITA has been adopted by only afew states so far, and it is not yet clear what thebasic public policy is. Hence, the problem israised that only uncertainty still exists as towhether or not reverse engineering falling underfair use can be restricted by the contract.
2

Attitude of Cases

U.S. Courts admit reverse engineering byfair use doctrine.(*13) As leading cases in the U.S.
concerning reverse engineering, the Sega
Enterprises Ltd. v. Accolade, Inc. case,(*14) AtariGames Corp. v. Nintendo of America Inc. case(*15)
and DSC v. DGI case(*16) are provided.
Concerning the matter as to whether reverse
engineering shall come under fair use, the Courts

have made decisions in these cases that reverse
engineering of the object program shall comeunder fair use of a work if it is the only way toapproach to the idea or functional elements
inherent in programs, and if those who replicate it
have justifiable grounds to the approach. At thispoint, four items in Article 107 of the CopyrightAct have to be undoubtedly decided. The cases
have made a final decision that reverse
engineering fell within fair use as to whether it
shall come under requirements for fair use in
Article 107 of the Copyright Act.
Fair use doctrine based on the fact thatreverse engineering is legitimate has beendeveloped from equitable rule of reason;
therefore, the requirements in Article 107 are notexclusive, and the ultimate justification to quote
fair use doctrine, needless to say, comes out fromthe purpose of the Copyright Act to promoteadvances of science and technology as well as
useful arts.(*17)
3Validity of the contract
reverse engineeringprohibiting(1) Attitude of theories
Even within the U.S., there are lots ofviewpoints regarding possibility to restrict
reverse engineering by the contract, which arearranged as follows:(*18)
Firstly, there is no compulsory performancepossibility because of possibility of primary
application of the copyright act; (*19)
Secondly, there is no compulsory performancepossibility owing to copyright misuse(*20);
Thirdly, licensing should be differently
considered according to negotiation possibility; (*21)(*11) Merritt A. Gardiner, Bowers v. Baystate Technologies: Using the shrinkwrap license to circumvent the Copyright Act and escapefederal preemption, 11 U. Miami Bus. L. Rev. 105 (2003) at 129.

(*12) UCITA §118 (Terms Relating to Interoperability and Reverse Engineering).
(*13) 17 U.S.C.A §107. Limitation on exclusive rights: fair use(*14) 977 F.2d 1510 (9th Cir. 1992).
(*15) 975 F.2d 832 (Fed. Cir. 1992).
(*16) DSC Communications Corp. v. DGI Techs., 81 F3d 597 (5th Cir. 1996).
(*17) Seungwoo Son, Can block dot (Shrinkwrap) licenses override federal reverse engineering right?: The relationshipbetween copyright, contract, and antitrust laws, 6 Tul. J. Tech. & Intell. Prop. 63 (2004) at 79.
(*18) Pamela Samuelson/Suzanne Scotchmer, The law & economics of reverse engineering, Yale Law Journal (April
2002) at 48-50.
(*19) Charles R. McManis, The Privatization (or “Shrinkwrapping”) of American Copyright Law, 87 Calif. L. Rev. (1990)
at 187-190; David A. Rice, Public goods, Private contract and Public Policy: Federal Preemption of Software
License Prohibitions Against Reverse engineering, 53 U. Pitt. L. Rev. (1992) at 543.
(*20) Mark A. Lemley, Beyond Preemption: The Law and Policy of Intellectual Property Licensing, 87 Calif. L. rev. (1999)
at 151-158; Marshall Leaffer, Engineering Competitive Policy and copyright Misuse, 19 U. Dayton L. Rev. (1994) at
1106.
(*21) David Nimmer & Elliot Brown & Gary N. Frischling, the Metamorphosis of Contract Into Expand, 87 Calf. L. Rev.
(1999) at 68.
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Fourthly, it should be judged differently
taking into consideration of whether a licensor
has a monopoly position at the market or not;(*22)
Fifthly, provisions on restriction of reverse
engineering by general market-type use allowance
do not have compulsory performance possibility
if public interest is unjust violated; (*23) and
Finally, restriction of reverse engineering bycontract is unlimitedly possible through admitting
compulsory performance possibility.(*24) The key
point of this view is based on the fact that theprovision on reverse engineering is not required
because antitrust law or competition-related law
would play its role in the long run.
(2) Attitudes and Evaluation of the Court on
the Bowers Case(i) Attitudes of the Court
Recently there has been an important case as
to the legal position of reverse engineering, thecase of Bowers v. Baystate Technologies, Inc.(*25)
The Court maintained in the case that the
Copyright Act would have neither priority over
the restriction contents of reverse engineering bycontract, nor narrow the range.
(ii) Evaluation on the decision
To evaluate on the meaning of the decision
we will separately think about the following two
problems: Firstly, the problem as to whether or
not the Bowers case means a change of thegeneral principle in the England-American Law“The federal law is prior to the contract law of thestate”; and secondly, the problem as to whether
fair use can be also limited by contract.
Concerning the first problem, the Baystate
Co. asserted that the Copyright Act was prior tothe contractual provisions of allowing packagetype use of Bowers to prohibit reverse
engineering, but the Court denied it maintainingthat the federal norm can be, if necessary, prior to
private contract contents.
With respect to the case, I think that the
Court does not seem to show that all federal laws
are prior to the contractual provisions, but seems
to explain the general principle that the court
should make a decision in advance on whether it
is applied according to the purposes of federallaw.

If this principle is applied to this case, theCopyright Act does not include any provision toallow general reverse engineering, and only admits
roundabout of technology protection management
for ensuring compatibility. Therefore, there is noroom for the federal law to be excluded by thecontractual provisions, or for the purpose of the
Copyright Act to become useless. It would beaccordingly reasonable that the decision of thecourt is regarded as “the contractual provisions
do not violate any special provision of the
Copyright Act which is a federal law, hence, thefederal law should not be prior to the contractual
provisions”.
As to the second problem the court
explained that “when deciding this case the court
has reserved the conclusion as to whether
reverse engineering can be considered as an
exception to violate the copyright or not, and also
be regarded as fair use such as Atari Games v.
Nintendo case”, and maintained that “reverse
engineering of the object program for the purposeof finding out the unprotected idea which isincluded in computer program falls within fairuse”. Accordingly, it is not reasonable that thiscase unconditionally regards fair use as
eliminatory.
In addition, there is no ground that fair use
doctrine based upon equitable rule of reason
became useless when considering the following
aspects, namely, Baystate co. is a competitive
company with respect of whether reverse
engineering of this case corresponds to fair use,
and therefore it has developed competitive
products ‘Templet’ and software; the influence of
this behavior on the market is not a little; andthere is no ground that the negotiation forcontract condition by business transaction was
unilaterally disadvantageous.
Accordingly, the case should be evaluatedfrom the viewpoint of whether the contract
infringes equitable rule of reason such as the case
Bowers v. Baystate Technologies, Inc. In thisrespect, the Court made a decision that
equitability was not broken, which is understood
to uphold the validity of the contract.

(*22) Maureen O’Rourke, Drawing the Boundary between Copyright and Contract: Copyright Preemption of License
Terms, 45 Duke L. J. (1995) at 551.
(*23) J. H. Reichman & Jonathan A. Franklin, Privately Legislated Intellectual Property Rights: Reconciling Freedom ofContract With Public Good Uses of Information, 147 U. Pa. L. Rev. (1999) at 939.
(*24) Raymond T. Nimmer, Breaking Barriers: The Relation between Contract and Intellectual Property Law, 13
Berkeley Tech. L. J. (1998) at 861-888.
(*25) 320 F.3d 1317 (Fed.Cir.(Mass.) 2003); 320 F.3d 1316, 65 U.S.P.Q.2d 1746 (Fed.Cir. 2003).

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4

Evaluation on the U.S.’ attitudes toreverse engineering

2

Evaluation on the EU Directive

Ⅳ Attitude on reverse engineeringin EU

Various countries with different legal
cultures and software competition power takepart in the EU as member states. Therefore, it isnecessary to make confusion minimize throughclear provisions in order to embody integration ofvarious legal culture and legal policies in the EU,
and harmonization of legal system. In addition,
the EU should protect and foster software
industry which is relatively inferior to the U.S. I
think that this requirement ultimately became thereason why the EU has set up an obvious
provision relating to reverse engineering.
Therefore, the obvious provision of the EU is
expected to integrate the legal system of themember states with various legal cultures and toplay a role in protecting the software industry
within the community against the U.S. Besides,
it also has an advantage to provide users withlegal safety and confidence.
At the same time, the EU provision gives
clear standards on a permissible range of reverse
engineering, so that it will provide othercountries considering the legislation relating toreverse engineering with a meaningful precedentcase. In particular, Article 9 of the EU Directive
can not only make clear the relationship between
contract and reverse engineering, but also canmake it predict how the EU thinks of reverse
engineering and of a right of using of user.

1

Ⅴ

Attitude on reverse engineeringin Japan1

Statute and Theories

The U.S.’s Copyright Act stipulates a generalprinciple concerning restriction of copyright,
which is not a new provision, but stipulates
nothing but fair use doctrine accumulated by thecases. Hence, the interpretation of Article 107 of
the Copyright Act should not limited tointerpretation of the statute, but should beinterpreted by considering equitable rule ofreason founding fair use doctrine. This principle
is derived from confidence for the judgment ofjudge as well as from that the U.S. are
traditionally case law states.
The way to restrict copyright in the U.S. isexpressively different from restriction by free use
in Japan or Korea. The restriction by the fair use
doctrine in the U.S. is principally applied on acase-by-case basis, which has, however,disadvantages that legal safety is not guaranteed
for general users. On the other hand, it has
advantages that the court can reach reasonableconclusions considering a special feature of eachcase. Additionally, it can be also pointed out as animportant advantage that competition power of
rapidly changing software industry as well as
industry policy of the states can be reflected.

Provision of the EU Directive

In the European Union, Article 6 of theEuropean Communities Council Directive on the
Legal Protection of Computer Program
prescribes decompilation.
On this occasion, Article 9 of the Directive
should be closely inspected. According to thesecond sentence of Article 9 (1),(*26) any contractual
provisions contrary to Article 6 shall be null andvoid. The EU Directive is characterized byexpressively providing a compulsory provision as
well as hard and fast conditions for decompilation.

Japanese Courts maintain negative attitudes
on applying fair use doctrine of the U.S. toreverse engineering;(*27) Japan does not have any
obvious provision yet such as the EU Directive;
such is, however, just the common theory thatreverse engineering is legitimate.(*28)
However, most theories seek the groundfrom the purpose of Article 1 of the CopyrightLaw.(*29) Besides, there are other theories, for(*26) Any contractual provisions contrary to Article 6 or to the exceptions provided for in Article 5 (2) and (3) shall benull and void.
(*27) 東京地判平成7年12月18日判時1567号126頁
Tokyo District Court, 1995.12.18, No. 1567, at 126.
(*28) 椙山敬士著 『ソフトウェアの著作権∙特許権』 (日本評論社, 1999年) 50頁、中山信弘 『ソフトウェアの法的保護(新版)』 （有斐閣, 1988年） 127頁、根岸哲編 『コンピュータ知的財産権』 （東京布井出版, 1993年）131頁
Sugiyama, supra note, at 50; Nakayama, supra note, at 127; Negishi, supra note, at 131.
(*29) 根岸哲編 『コンピュータ知的財産権』 （東京布井出版, 1993年）131頁
Negishi, supra note, at 131.

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example, a theory that Article 10 (3) is suggested
as the ground, another theory that provisions
below Article 30 concerning fair use of a work
should be correspondingly applied(*30) and so on.
These explanations consider substantial intent ofeach article, but there is also a view on setting up
a provision in order to remove the uncertainty.(*31)
2

Effect of the contract restricting reverse
engineering(3) View on boundary domain to restrict
reverse engineering
According to this view, the effect of thecontract to prohibit reverse engineering is once
admitted, but it should not be applied to Article
20 (2) “modification which is necessary forenabling to use a program work or to make more
effective the use of a program work on aparticular computer.”(*35)3(1) View on compulsory provision such as
Article 69 of the Patent Law
This view is to analogically apply theprovisions of the Patent Law. Article 69 of theJapanese Patent Law stipulates restriction frompublic viewpoint included in the patent system,and should be regarded as a kind of public orderor morality. Thereupon, this provision shall becompulsory as a former problem of anti-monopoly
law, and any contractual provisions to prohibit
reverse engineering against it shall be null andvoid. This view carefully takes an affirmative on
the problem as to whether or not the structureof this theory itself should be applied tocopyright. (*32)(2) View on application of Antimonopoly
LawThis view is to apply the Antimonopoly Law
as to whether contract prohibiting reverse
engineering(*33) is effective or not. The provision
on prohibiting experiment and research among
these views shall restrict freedom of an activity
for important research and development, shallenormously influence on the future market, andshall bring about a strong obstruction to faircompetition. Therefore, it belongs to theso-called ‘dark clause’ and should be regarded asnull.(*34)

Evaluation and Prospects

The Japanese legal system relating toreverse engineering in the software-related
market and in the cases has been firstly
developed by the pressure of the U.S., and thenby legal policy based upon strengthening industry
competition power in Japan without theestablishment of the provisions relating toreverse engineering,.
Accordingly, various theories without anobvious provision on reverse engineering in Japan
have appeared. Practically speaking, there havenot been cases on reverse engineering, but thecontracts prohibiting reverse engineering arewidely used in industry. On the other hand,theories mostly admit the necessity for reverse
engineering, and explain that the restriction by
the contract should be minimized.
The most important problem herein is thateven though theories explain that the contract
prohibiting reverse engineering should be
regarded as null, it is widely used in practice,which brings out concerns about that the contract
prohibiting reverse engineering may be dealt withvalidly.(*36)
As time flows, the restriction of reverse
engineering by the contract has a possibility thatits position would rise in a commercial practice.

(*30) 根岸哲編 『コンピュータ知的財産権』 （東京布井出版, 1993年）132-135頁
Negishi, supra note, at 132-135.
(*31) 根岸哲編 『コンピュータ知的財産権』 （東京布井出版, 1993年）134-135頁
Negishi, supra note, at 134-135.
(*32) 大澤恒夫 『IT 事業と競争法 –独禁法·知的財産法·消費者契約法の今日的課題』 (日本評論社, 2001 年) 76-77 頁
Osawa, “IT business and competition law – The current problems on Antimonopoly act, intellectual property law
and consumer protection law”, Nippon Hyoronsha, 2001 at 76-77.
(*33) 大澤恒夫 『IT 事業と競争法 –独禁法·知的財産法·消費者契約法の今日的課題』 (日本評論社, 2001 年) 73 頁
Osawa, supra note, at 73.
(*34) 大澤恒夫 『IT 事業と競争法 – 独禁法·知的財産法·消費者契約法の今日的課題』 (日本評論社, 2001 年) 77 頁
Osawa, supra note, at 77.
(*35) 大澤恒夫 『IT 事業と競争法 –独禁法·知的財産法·消費者契約法の今日的課題』 (日本評論社, 2001 年) 85 頁
Osawa, supra note, at 85.
(*36) 大 澤恒夫 『IT 事業と競争法 –独禁法·知的財産法·消費者契約法の今日的課題』 (日本評論社, 2001 年) 79 頁
Osawa, supra note, at 79.

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In the end, it results in unallowable reverse
engineering to admit the restriction of reverse
engineering by the contract. Hence, it seems tobe urgent to establish legal policy through full
discussion on this respect.
In this respect, Japan should set up legal
policy and a system regarding reverse engineeringby choosing a model of either the U.S. or EU legal
system. The merits and disadvantages therein are
as follows:
At first, it seems to be impossible that Japan
will allow reverse engineering according to fairuse doctrine like in the U.S., because Japanese
Courts have not continuously accepted fair use
doctrine. It is also impossible to admit reverse
engineering according to fair use doctrine, inparticular, on grounds that Japan is not a case law
country, and that Japan has different a legal
culture from the U.S.
Then it seems to be so natural in the legal
culture that Japan has an obvious provision suchas in the EU. In this respect, the problem canbe raised as to which kind of legal policy Japan
having competitive power in some software
industries should set up. In other words, it isnecessary to discuss whether or not reverse
engineering based on the legal policy including
the software industry should be widely
accepted.

2

Acknowledgement of reverse analysis
not falling under Article 12-2

Continental law cannot adopt over thetransom either case law of the U.S. or U.K., orlegal principles of enacted law, so that its range
for the application should be interpreted aslimited. Therefore, reverse analysis not fallingunder Article 12-2 shall not be acknowledged.
3

Effect of the contract restricting reverse
engineering

As to the legal status of the provision onreverse analysis, namely, as to whether reverse
analysis can be limited by contract, following
opinions are suggested:
Firstly, it should be denied because theprovision on reverse analysis is regarded ascompulsory;(*37)
Secondly, it should be denied because it
admits the principle “freedom of contract”, but isregarded as being against Antimonopoly law;(*38)
Thirdly, it is a compromise suggestion that itshould be judged by the contents of a special
contract to prohibit reverse analysis;(*39) and
Fourthly, it is affirmative because freedom ofcontract is prior to the provision on reverse
analysis.

Ⅵ

Attitude on reverse engineeringin Korea

4

1

Provision of the Statute

It should be, to my knowledge, regarded as
a compulsory provision as a kind of type of freeuse on the legal system when considering theindustrial features of programs, equitability withthe provisions of the patent law, non-protection
principle of idea, and the fact that Article 12-2 onreverse analysis in programs protection law is
stipulated together with Article 12 on free use.

The Computer Program Protection Law in
Korea was revised in 2001 so that an article on
program reverse analysis may be established in
Article 12-2. The contents are similar to those of
Article 6 of the EU Directive. However, there is
no article to acknowledge a compulsory provisionof reverse analysis such as Article 9 of the EU
Directive.

Evaluation and interpretation on theattitude in Korea(*37) 김동진, “컴퓨터 프로그램 코드의 역분석”, CLIS Monthly(2003-11 호), KISDI, 2003, 13 쪽.
Kim Donjin, “Reverse enalysis of computer program code”, CLIS Monthly (2003, vol. 11), KISDI, 2003, at 13.
(*38) 이혜광, “개정 컴퓨터프로그램보호법과 프로그램코드 역분석(decompilation)”, 21세기 한국민사법학의과제와 전망(심당 송상현선생 화갑기념논문집), 2002, 114쪽 이하; 정상조, “Reverse engineering의 법적문제점”, 인권과 정의(제254호), available at http://jus.snu.ac.kr/~sjjong/classroom/thesis/jungsj042.htm.
Lee Hyekwang, “Revised computer program protection law and program code decompilation”, Problem andprospect of the Korean civil law in the 21st century” in: Essays in celebration of the 60th anniversary of Simdang
Prof. Song Sanghyeon, 2002, at 114; Jung, Sangjo, “Legal problems on reverse engineering”, “Human rights andJustice”, vol. 254, available at http://jus.snu.ac.kr/~sjjong/classroom/thesis/jungsj042.htm.
(*39) 김동진, “컴퓨터 프로그램 코드의 역분석”, CLIS Monthly(2003-11호), KISDI, 2003, 13-14쪽.
Kim, Dongjin, “Decompilation of computer program code”, CLIS Monthly (2003. vol. 11), KISDI, 2003, at 13-14.

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Ⅶ

Proposals on permissible rangeof reverse engineering andlegislation policy

1

OutlineAccording to the opposition against program
reverse engineering, reverse engineering
unconditionally should not be accepted because ofcreating competitive products by reverse
engineering of others’ products.
However, reverse engineering shall be also
allowed from the viewpoint of the purpose of
intellectual property, features of computer
program, and decrease of creative motivation.
2

Allowance of reverse engineering fromthe purpose of intellectual property

The purpose of granting copyright is not
only to give a copyright owner a privilegedmonopoly right, but also to contribute to thedevelopment of culture. Reverse engineering
should be, therefore, accepted from the viewpointof the worldwide tendency, establishment of an
efficient legal system for developing computerengineering and software technology, or fromthe standpoint of that with full protection of
copyright it is sincerely required to prevent anadverse effect in advance that copyright could be
too great an obstacle for those who compete withcopyright owners to enter the market.
3

Reverse engineering from the feature ofcomputer program

In the development of a computer program,it cannot be disregarded that the existing program
analysis is almost essential and commercialized.
Accordingly, the law aiming at technology
protection and development acknowledges reverse
engineering, but the essence of computer programis technology, and so reverse engineering isabsolutely necessary for its development.(*40)
However, it is naturally granted that itshould be carried out under the strict condition
such as in the EU or Korea.

4

Acknowledgement of reverse engineeringfrom creative motivation

Whether or not reverse engineering isrequired can be judged by proof of legal or
economic effects that the public purpose todevelop culture and related industries can beattained by admitting reverse engineering, andthat the efficiency of attained public purpose ismuch larger than the private purpose.
[Table 1] Comparison of social cost on
allowing reverse engineering(*41)
SectionAllowance

Disallowance

Motivation on platform
development

Low

High

Motivation on applied
software development

Very highHigh

System price

Low

High

Cost on overlapping
investment

Low

High

According to the above results, it isidentified that system cost fell off, and cost on
overlapping investment was decreased byallowing reverse engineering and promoting
motivation in society. On the contrary, motivationin platform development is shown to be loweredby reducing the motivation of the creator.
However, program reverse engineering istime-consuming, and performed by a resourcesintensive process, so the motivation in investment
on platform development shall be largely
decreased. In addition, reverse engineering of
platform is mostly performed for the purpose ofcreating the applied software to move on aplatform base; hence, it is characterized by thefact that it is not used for creating a newcompetitive platform. This is carried out on alarger scale than applied software development,
and platform-related market is a market where a
new enterpriser hardly survives. When considering
the scale, great efforts are required for obtaining
effects by reverse engineering.
In this respect, allowance of reverse(*40) Pamela Samuelson & Suzanne Scotchmer, The law & economics of reverse engineering, Yale Law Journal, April
2002, at 30.
(*41) Pamela Samuelson & Suzanne Scotchmer, The law & economics of reverse engineering, Yale Law Journal, April
2002, at 43.

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engineering is characterized by improving
creative motivation and decreasing social cost,and hence, it should be acknowledged based on
the purpose of the Copyright Law.

Ⅷ Conclusion
When thinking collectively about the results,
reverse engineering of computer program ischaracterized by the fact that on the one hand, it
provides assistance for industry development; on
the other hand, it stimulates competition while
not largely decreasing the creative motivation of
the copyright owner. Besides, the ground why
reverse engineering has been introduced has
logicality as it is. In this respect, major countries
and scholars seem to accept it.
If so, we will be able to consider which way
to use. With reference to this matter, there are
two ways to allow reverse engineering: one way
is to adopt fair use doctrine such as in the U.S.,
and the other is to stipulate an obvious provisionsuch as in the EU or Korea. The problem as towhich way to adopt will have to be decided by thelegal culture and the cases as well as confidence
in judges in each country.
Though any way is adopted, the validity of
the contract prohibiting reverse engineering shallbe denied, because distribution of the software iscurrently mostly followed by shrink wrap license,
contractual provisions within software package
are in fact under compulsion, and it cannot be
additionally expected that a user individuallynegotiates for use conditions with a creator who
is a large enterprise. In other words, reverse
engineering in most package-type use permission
is prohibited, and most software development
companies try to prohibit it through licensing
agreements. Therefore, if a compulsory provision
is not admitted, reverse engineering would beagainst the contract, and permission for reverse
engineering by law would be useless in the end.

It is also, to my knowledge, necessary inJapan that a provision on reverse engineering isregarded as a compulsory provision on the groundthat Japanese law is a statute and belongs toContinental law, that the cases continuously havedenied application of the fair use doctrine so far,that it is difficult to find out the way of solving the
problem through accumulation of the cases, thatlegal compatibility with other countries should beguaranteed, and that Japan should protect its
software industry from the U.S.
Taking into consideration of the fact that thesoftware industry in Japan is not mostly
platform-oriented, but applied software such asvideo games, and embedded software, the above
assertion seems to be more reasonable.
In conclusion, reverse engineering of
programs should be admitted as compulsory
provision under certain conditions according to
special situation in each country as well as the
purpose of the Copyright Law.

Accordingly, in the U.S. where copyright isrestricted by the fair use doctrine, the validity of
the contract to prohibit reverse engineering
should be denied unless a special situation comes
into existence under the equitable rule of reason,and the confusion therefore should be minimized
by regulating in the Federal Act in the future. In
addition, in Korea where reverse engineering isallowed under certain conditions, it shall be
developed to the compulsory provision such as
the EU Directive in order to obstruct confusion of
the interpretation.
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