Illinois District Court Okays Code-passing for Software Clean Room Process
by mitchell zimmerman
Just as a semiconductor clean room aims to exclude airborne particles that could
contaminate wafer layers, so the legal software clean room has sought to protect computer
software developers from contaminating “access” to earlier works they m ight be charged
with copying. Nordstrom Consulting, Inc. v. M&S Technologies, Inc., No. 06C3234 2008
U.S. Dist. Lexis 17259 (N.D. Ill. Mar. 4, 2008), considers such clean room procedures.
In certain contexts—such as when a new program must be compatible or interoperable
with a competitor’s software—it may be necessary to identify and use certain structures
from the earlier work. A later developer can legitimately employ or work with such
structures, insofar as copyright law treats them as “unprotected ideas” or functional
elements. However, copying is presumed when a developer has access to an original
copyrighted work and the expressive elements of the two works are substantially similar.
Learning about an earlier work therefore creates a risk that if the later work is deemed
substantially similar to the earlier one in protectable expression, a presumption of
copyright infringement will follow.
The clean room process seeks to eliminate this risk by negating the element of “access”
to the original work by those preparing a new program. As explained in Nordstrom
Consulting: “ ‘Clean room’ procedure attempts to avoid violations of the copyright laws
by using two separate teams of developers to create a competing product. The first team
describes the functional aspects of a product to the second team; the second team then
uses those descriptions to write the code for a competing product.”
The two parties in Nordstrom formerly had previously worked together to exploit
Nordstrom’s visual eye chart software, which they marketed in conjunction with
defendant’s visual acuity systems. When the parties parted ways, M&S sought to
independently create its own software as a substitute for Nordstrom’s. “Defendants
claim to have instituted a clean room procedure,” the court observed, in which M&S’s
president and an M&S employee named Butler “fulfilled the role of the first team,
while the second [clean] team worked offsite and had no access to the program code. If
Defendants did indeed follow clean room procedures, then Plaintiffs would be unable to
make the necessary showing that Defendants had access to the copyrighted work.”
Standard clean room procedures often call for an independent individual to act as
gatekeeper between the two teams. In this case, Butler—who was on the first team and
had access to Nordstrom’s code—communicated directly with the second team on the
“clean” side. These communications, Nordstrom maintained, included sending emails
containing code and suggestions on how to solve difficulties encountered in writing the
new, supposedly “independently-developed” program. M&S countered that Butler’s
emails contained only pseudocode which the developers used to understand what the
new software needed to do.
District Judge Darrah held Nordstrom’s showing insufficient to raise a triable issue
on substantial similarity. Nordstrom did not offer expert opinion or access on the
substantial similarity issue and failed to explain why the opinions of M&S’s expert were
incorrect, providing an independent basis for summary judgment.
In This Bulletin
Illinois District Court Okays Code-
passing for Software Clean Room
Process ________________________ 1
Giving Another Look to Patent
Reexaminations ________________ 2
Quick Updates _________________ 4
Preliminary Injunctions in Patent
Cases Face Uphill Battle _________ 4
Disclosure of Pricing Information
in Government Contract Prevented
Under FOIA Exemption __________ 5
Copyright Co-owners at the Hotel
California: They Can Check Out Any
Time They Like, But They Can Never
Leave ________________________ 6
The Fourth Circuit Finds that a
Successful Parody Does Not Dilute
Famous Mark __________________ 7
2008 spring bulletin
Intellectual Property
Intellectual Property
2008 spring bulletin
Illinois District Court Okays Code-passing for Software Clean Room Process
by mitchell zimmerman
Just as a semiconductor clean room aims to exclude airborne particles that could
contaminate wafer layers, so the legal software clean room has sought to protect computer
software developers from contaminating “access” to earlier works they might be charged
with copying. Nordstrom Consulting, Inc. v. M&S Technologies, Inc., No. 06C3234 2008
U.S. Dist. Lexis 17259 (N.D. Ill. Mar. 4, 2008), considers such clean room procedures.
In certain contexts—such as when a new program must be compatible or interoperable
with a competitor’s software—it may be necessary to identify and use certain structures
from the earlier work. A later developer can legitimately employ or work with such
structures, insofar as copyright law treats them as “unprotected ideas” or functional
elements. However, copying is presumed when a developer has access to an original
copyrighted work and the expressive elements of the two works are substantially similar.
Learning about an earlier work therefore creates a risk that if the later work is deemed
substantially similar to the earlier one in protectable expression, a presumption of
copyright infringement will follow.
In This Bulletin
The clean room process seeks to eliminate this risk by negating the element of “access”
Illinois District Court Okays Code- to the original work by those preparing a new program. As explained in Nordstrom
passing for Software Clean Room Consulting: “ ‘Clean room’ procedure attempts to avoid violations of the copyright laws
Process ________________________ 1 by using two separate teams of developers to create a competing product. The first team
Giving Another Look to Patent describes the functional aspects of a product to the second team; the second team then
Reexaminations ________________ 2 uses those descriptions to write the code for a competing product.”
Quick Updates _________________ 4 The two parties in Nordstrom formerly had previously worked together to exploit
Nordstrom’s visual eye chart software, which they marketed in conjunction with
Preliminary Injunctions in Patent defendant’s visual acuity systems. When the parties parted ways, M&S sought to
Cases Face Uphill Battle _________ 4 independently create its own software as a substitute for Nordstrom’s. “Defendants
Disclosure of Pricing Information claim to have instituted a clean room procedure,” the court observed, in which M&S’s
in Government Contract Prevented president and an M&S employee named Butler “fulfilled the role of the first team,
Under FOIA Exemption __________ 5 while the second [clean] team worked offsite and had no access to the program code. If
Defendants did indeed follow clean room procedures, then Plaintiffs would be unable to
Copyright Co-owners at the Hotel make the necessary showing that Defendants had access to the copyrighted work.”
California: They Can Check Out Any
Time They Like, But They Can Never Standard clean room procedures often call for an independent individual to act as
Leave ________________________ 6 gatekeeper between the two teams. In this case, Butler—who was on the first team and
had access to Nordstrom’s code—communicated directly with the second team on the
The Fourth Circuit Finds that a “clean” side. These communications, Nordstrom maintained, included sending emails
Successful Parody Does Not Dilute containing code and suggestions on how to solve difficulties encountered in writing the
Famous Mark __________________ 7 new, supposedly “independently-developed” program. M&S countered that Butler’s
emails contained only pseudocode which the developers used to understand what the
new software needed to do.
District Judge Darrah held Nordstrom’s showing insufficient to raise a triable issue
on substantial similarity. Nordstrom did not offer expert opinion or access on the
substantial similarity issue and failed to explain why the opinions of M&S’s expert were
incorrect, providing an independent basis for summary judgment.
Document hosted at
http://www.jdsupra.com/post/documentViewer.aspx?fid=d6b718b7-4ff6-4d01-8dc8-6ec2dc6b813a
