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EndNote v. Zotero

Via Michael Froomkin and James Grimmelmann, I learn of the lawsuit filed by Thomson/Reuters, proprietors of the closed-source EndNote software used by scholars to manage sources, against George Mason University, home of Prof. Dan Cohen, leader of the project to develop Zotero, an open source Firefox plugin that competes against EndNote. (Prof. Cohen also publishes the great Digital Humanities blog.) The complaint alleges that GMU’s EndNote site license prohibits reverse engineering the software, and that Zotero was developed in part by reverse engineering EndNote to determine how Zotero could convert EndNote’s output styles into Zotero’s output styles. This allegedly amounts to a breach of the site license by GMU, which is a breach of contract.  Thomson/Reuters seeks an injunction, not the standard contract remedy, against further distribution by GMU of the illegally-developed Zotero product. (Oops — I almost typed “infringing” Zotero product!)

Grimmelmann’s parsing of the complaint leads him to the conclusion that it’s the work of “a comically inept overbearing bully.” Bullying and overbearing it may be. Not only does the complaint seek an injunction against further distribution of Zotero, but it also asks for an injunction that “terminate[s] the ability of each Zotero user to use and/or further distribute any .csl style files that were converted from the EndNote Software’s proprietary .ens style files using Zotero.” I don’t use the software, so I’m speculating a little bit: It looks like the timing of the complaint, and this extraordinary demand to kill Zotero functionality for Zotero users, is related to the imminent release of a Zotero update that would create a shared Zotero commons. Zotero users could easy share their source data with other Zotero users. The complaint challenges the heart of the scholarly research enterprise, the premise that knowledge should be available to all and shareable by all. Thomson/Reuters would like to say, apparently, that if you put that knowledge into EndNote, then Thomson/Reuters is your gatekeeper. That’s shameful.

But I’m not ready to agree that it’s comic or inept. It’s not an accident, I think, that Thomson/Reuters has carefully pleaded only state law claims based on the language of the site license. If it can persuade the trial court that it should follow the Federal Circuit’s lead in Bowers. v. Baystate Technologies, holding that the Copyright Act does not preempt breach of contract claims involving “no reverse engineering” clauses in software license agreements, then the plaintiff may have a path to victory here. The contract may be valid, even if it’s obtuse.  Of course, Thomson/Reuters would still have to prove that GMU (i.e., Prof. Cohen and his team) did the things (reverse engineer and so on) that the complaint alleges they did.

On policy grounds, as in Bowers, that outcome would be comic (or worse), to borrow James’s phrase. Thomson/Reuters is transparent in its effort to use a software license to suppress a competitor in a product market and to interfere with the production and distribution of knowledge.  This is a result that it almost certainly could not achieve if it filed a copyright infringement claim in federal court, alleging the same facts.  The styles at issue might be non-copyrightable or the subject of only a “thin” copyright that protects only against literal copying.  Any alleged reverse engineering might well be treated as fair use.  That the complaint actually seeks an injunction confirms that this is a thinly-disguised infringement lawsuit.  If it were a real infringement lawsuit, it would and should be a loser.

If the case isn’t settled quickly, expect GMU to remove the case to federal court, and expect the preemption issue to be litigated via a motion to remand. It would be nice, too, if we saw intervention in the lawsuit by a different university or consortium committed to open access and open source principles in higher education, participating on behalf of Zotero-using faculty who object to Thomson/West’s proposed interference with their work.