Disruptive Library Technology Jester

Via a posting by James Grimmelmann, I found a link to the text of the complaint filed by Thomson Reuters against George Mason University in Virginia’s state courts. The critical bits (to an untrained eye) are included below:

Paragraph 12: George Mason University [GMU] entered into a site license agreement, dated December 1, 2003 with ISI (which was subsequently renewed with Thomson) to access to use the EndNote Software (the “License Agreement”)…

Paragraph 14: …Section 3(c) of the License Agreement requires an express acknowledgement by GMU that the “Licensee recognizes the importance of the Company maintaining its proprietary rights over the [EndNote] Software and of avoiding improper use of the [EndNote] Software as defined in this Agreement. Licensee shall use best efforts to ensure that Users comply with the forgoing limitations on usage.” [Emphasis added in court document]

Paragraph 15: Specifically, Section 3(d) of the License Agreement expressly prohibits the following activities in connection with the use of the EndNote Software:

• duplication of the [EndNote] Software except as specified herein;
• separation of components ([EndNote] Software is licensed as a single product. Its component parts may not be separated for use on more than one computer);
• distribution or transfer of the [EndNote] Software in any form (printed, electronically relayed, posted to public list services or bulletin boards, or magnetically stored); or
• reverse engineering, de-compiling, translation, modification, distribution, broadcasting, dissemination, or creation of derivative works from the [EndNote] Software. [Emphasis added in court document]

Paragraph 16: In addition, the License Agreement limits GMU’s use of Thomson’s trademarks and trade names solely to uses “connected with the identification of the [EndNote] Software.”

Paragraph 21: On information and belief, GMU reverse engineered or de-compiled the EndNote Software and the proprietary .ens files contained within the EndNote Software in order to determine how to convert the EndNote Software .ens style files into the open source Zotero .csl style files, in direct and material violation of the License Agreement.

Paragraph 22: GMU is distributing the new beta version of Zotero, which allows for the unauthorized, free conversion of the EndNote Software .ens style files, in direct violation of the prohibited uses of the EndNote Software, as specified in Section 3(d) of the License Agreement.

Paragraph 23: GMU is willfully and intentionally destroying Thomson’s customer base for the EndNote Software, in direct violation of the License Agreement, by allowing and encouraging users of Zotero to freely convert the EndNote Software’s proprietary .ens style files into open source Zotero .csl style files and further distributing such converted files to others.

Paragraph 24: By letter dated August 4, 2008, … counsel for Thomson notified Dr. Alan. G. Merten, President of GMU, that GMU’s actions are a direct violation of the terms and conditions of the License Agreement, and requested that GMU immediately take all necessary steps to cure the unauthorized used of the EndNote Software through Zotero (the “Cease and Desist Letter”).

Paragraph 25: The Cease and Desist Letter demanded that GMU immediately terminate Zotero’s unauthorized use and conversion of EndNote Software’s proprietary .ens style files and revise the beta version of Zotero to prohibit future conversion of EndNote Software’s proprietary .ens style files.

Paragraph 26: Furthermore, the Cease and Desist Letter demanded that the beta version of Zotero be made unavailable until such revisions were made by GMU.

Paragraph 27: The Cease and Desist Letter set forth a deadline of August 15, 2008 for GMU to comply with Thomson’s demands.

Paragraph 28: On or about August 11, 2008, counsel for Thomson received a telephone call from David Drummey, in-house counsel at GMU, (“Mr. Drummey”) asking to extend the August 15, 2008 deadline to August 25, 2008, in order for GMU to assess the matter and respond to the Cease and Desist Letter. Thomson’s counsel granted this request to GMU.

Paragraph 29: On August 25, 2008, Mr. Drummey spoke via telephone with counsel for Thomson and stated that GMU was seeking a collaborative arrangement between Thomson and GMU as a means of resolving the conflict between the parties.

Paragraph 30: By e-mail to Mr. Drummey dated August 25, 2008, … counsel for Thomson granted an extension of the response deadline until August 20, 2008, insisting, however, that, prior to any collaboration discussion between the parties, GMU must first comply with the demands set forth in the Cease and Desist Letter as a result of the material breach of its obligations set forth in the License Agreement.

Paragraph 31: On August 28, 2008, Mr. Drummey contacted counsel for Thomson asking for yet another extension of the August 29, 2008 deadline. When told that Thomson would provide no further extensions, Mr. Drummey informed counsel to Thomson that GMU had no intention of curing its breach of the terms and conditions of the License Agreement and had referred the matter to outside counsel.

Paragraph 37. Moreover, GMU has breached its obligations under Section 7 of the License Agreement with respect to the use of Thomson’s registered trademark EndNote®, by willfully and inappropriately using the trademark to direct and induce users of Zotero to covert the EndNote Software’s proprietary .ens style files to Zotero’s style files.

Paragraph 40. As a direct and proximate result of the material breach of the License Agreement by GMU, and due to the freely distributable, open-source nature of the converted Zotero .csl style files, Thomson has suffered irreparable harm for which the law will afford it no adequate remedy.

Paragraph 41. As a direct and proximate result of the material breach of the License Agreement by GMU, Thomson has suffered monetary damages in an amount to be determined at trial, but which, due to the open-source nature of the Zotero .csl style files, at a minimum are equal to about ten million dollars ($10,000,000) annually until such time as GMU is permanently enjoined.

In addition to James’ excellent comments on the matter, I’d note that it doesn’t look like the Thomson legal team actually had anyone look at the Zotero code. The complaint alleges that “users of Zotero [are freely converting] the EndNote Software’s proprietary .ens style files into open source Zotero .csl style files and further distributing such converted files to others.” That isn’t happening. Zotero is reading the .ens style files into internal data structures in the browser, but it is not converting .ens style files to .csl style files and storing them on disk. Nor is Zotero or anyone associated with Zotero redistributing .ens style files. Users of Zotero would need to download .ens files on their own and add them to Zotero’s configuration.

As an updated to my previous posting on the Thomson-Reuters/Zotero lawsuit, I also noted change to the EndNote website. Richard Wallis notes:

Following that link to Endnote export styles [link] you end up on a page containing the following words: “EndNote output styles are provided solely for use by licensed owners of EndNote and with the EndNote product.”

What’s interesting is the fact that this sentence was recently (within the last 8 months) added to the site. The January 13th snapshot of that page in the Wayback Machine doesn’t have that sentence. I wonder when it was added. In both cases (the current page and the Wayback Machine snapshot), the note at the bottom says “This page was last modified on: November 4, 2005″ — I would disagree.

From paragraph 31 of the complaint, it looks like GMU is going to fight the lawsuit. (I’m assuming this is the intention behind GMU engaging external counsel.) A comment by Dan Cohen (director of the Center for History and New Media at GMU) in a posting on the Zotero forums says: “Thanks to everyone for your words of generous support. We will likely issue a statement in the near future.” Let’s keep watching for more information…