When producing a product by reverse engineering do you risk lawsuit from only the manufacturer of the product you're reverse engineering?

Question

China makes a tool that I need that was potentially the result of corporate espionage against an OEM (original equipment manufacturer), or similar reverse engineering the OEM tools, or reverse engineering tools produced by licensed partners. It could also be the result of clean room design. Truth be told I don't know.

But I'm willing to risk a lawsuit by Chinese manufacturer. I doubt they're going to sue me for open sourcing their software after reverse engineering their tool. Especially if they're nameless in the whole thing. And all the more if the only thing they have to go on is that someone knows the same tricks and built an eerily similar catalog that their diagnostic tool uses.

My question is about the OEM itself. Clearly the OEM has been unsuccessful stopping the proliferation of cheap Chinese tools built on their secrets -- they don't tell these things to anyone, and they're tight lipped about them. They may not like me publishing their secrets on GitHub.

Would I face recourse by the OEM itself if I never stole from the OEM? Would the OEM have to prove that a Chinese manufacturer in Shenzen stolen from them to come after me by proxy?

The OEM is a real concern. I imagine they'll be very not happy. Their whole business model is making repair exclusive and forcing people to purchase new products.

Answer 1

Unmentioned in the question, but implied, is that the original manufacturer (OEM) may have a cause of action against the Chinese manufacturer. The Chinese manufacturer could be infringing copyright, trademark, patent, or some combination of the three.

My question is about the OEM itself. Clearly the OEM has been unsuccessful stopping the proliferation of cheap Chinese tools built on their secrets -- they don't tell these things to anyone, and they're tight lipped about them. They may not like me publishing their secrets on GitHub.

Patents are not secret, and they do not protect information against publication; they only entitle the holder of the patent to control the manufacture, sale, use, and import of the invention. I don't know whether publishing a software implementation of a patent may be seen as inducing infringement, which is also a violation (in the US, at least), but if something is being protected through secrecy then it is unlikely to be patented.

Trademark would only be an issue to the extent that consumers might be confused, for example, if the Chinese product purports to be the original product. As long as your product does not, you should have nothing to worry about with respect to trademark.

As to copyright, if you reverse-engineer the Chinese product through decompilation or any other technique that doesn't satisfy the requirements of clean-room design then you expose yourself to possible liability for copyright infringement, since you cannot prove that the Chinese product is the result of clean-room design. This would probably require the original company to publish some of their source code, however, to establish that your code is so similar that it is likely the result of copying. This should be possible even without access to the intermediate step.

If the original manufacturer is as secretive as you make them out to be, they won't want to do this, which would give you some leverage in any pre-trial negotiations. Still, their pockets are likely far deeper than yours, so your leverage may not be sufficient to prevent them from making your life difficult.