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When Static Control Components Inc., a small, family-owned printing-supply business, was sued under the Digital Millennium Copyright Act, Seth Greenstein was surprised. The 49-year-old partner in the D.C. office of Chicago’s McDermott Will & Emery thought he had the DMCA down cold. Still, it took him nearly a year to get an injunction against the company lifted. “I was working with the DMCA from the days when it was an early glimmer in the mind of the Clinton administration’s information superhighway task force,” Greenstein says. “I was very surprised to see it misused this way.” Lobbying Congress on copyright issues is a key part of Greenstein’s practice. He represents trade groups such as the Digital Media Association and the Home Recording Rights Coalition. In the late ’90s, Greenstein represented Napster founder Shawn Fanning in his copyright battles with the music industry. All in all, Greenstein has lobbied Congress over all of the DMCA’s provisions. What shocked Greenstein about the Static Control case was that the DMCA, a law intended to combat digital piracy, was being used against a maker of printer-cartridge components. Stanford, N.C.-based Static Control sells these components to companies that refill and resell old cartridges. Static Control provides computer programs and microchips that enable the cartridges to communicate with printers. Printers are a lot like razors. Both are cheap because the manufacturers make money selling a consumable ingredient essential to the products’ operation: blades for the razors and ink cartridges for the printers. “There is a natural tension between original equipment manufacturers and the replacement market in just about every field, and toner cartridges are no exception,” Greenstein says. In December 2002 Lexmark International Inc., which makes laser and inkjet printers and supplies, sued Static Control in federal court in Kentucky. The company claimed Static Control chips and programs violated the DMCA’s anti-circumvention section because they allow users to bypass computer code that prevents Lexmark printers from working with non-Lexmark printer cartridges. Static Control was a client of McDermott’s London office for European unfair-competition work. A London-based partner knew of Greenstein’s expertise with the DMCA, and referred the client after Lexmark filed suit. Greenstein lost the suit’s first battle: In February 2004, a Kentucky federal judge enjoined Static Control from making and selling its chips to cartridge manufacturers. Greenstein appealed to the U.S. Court of Appeals for the 6th Circuit, arguing that the Lexmark lockout element was not the kind of content Congress intended to safeguard in the DMCA. In October 2004, a three-judge panel agreed and lifted the injunction. But the war is far from over. Lexmark has asked for a rehearing, and Static Control has come out with a new generation of chips for replacement cartridges. Greenstein’s seeking a declaratory judgment that these new chips do not violate the DMCA’s anti-circumvention provision. Lexmark is asking for an injunction against the chips on DMCA grounds. This new dispute is in discovery. Greenstein had show-business aspirations before he settled on the law. A Long Island native, he attended New York’s School of Visual Arts and did film editing in the city with an Israeli director in 1973. But because of the Yom Kippur War, the director’s project was postponed. So Greenstein transferred to the University of Maryland, majored in drama and film, and worked as a disc jockey at the campus radio station. After his 1981 graduation, he enrolled at what was then the Antioch School of Law in Washington, D.C. He finished in 1984, before the school morphed into the David A. Clarke School of Law at the University of the District of Columbia. After graduation, he joined the now-defunct civil litigation firm of Metzger Shadyac & Schwarz. When part of the firm broke off and moved to McDermott in January 1987, Greenstein went along. McDermott also picked up Hitachi Ltd. as a client. The company was one of 10 electronics firms involved in a huge patent dispute at the International Trade Commission against Texas Instruments Inc. Greenstein was only a third-year associate at the time but he says that “the people I worked with were incredibly generous and they gave me several key witnesses to examine or cross-examine.” (The ITC ruled in Hitachi’s favor in May 1987.) After that case, Greenstein’s practice stayed focused on technology and intellectual property rights. Greenstein likes to say his practice covers “the three L’s: litigation, lobbying, and licensing.” His licensing clients include Broadcast.com, DMX Music, and other companies that broadcast content over the Internet. Greenstein negotiates rates and conditions for these broadcasters with content owners. Greenstein picked up Napster’s Shawn Fanning as a client after receiving a phone call from Fanning’s uncle John Fanning, who owned shares in the fledgling company. Greenstein was hired to do due diligence about whether Napster violated copyright laws. But when the Recording Industry Association of America sued Napster in December 1999, Greenstein had to withdraw because McDermott’s Los Angeles office was representing “about 18 of the plaintiffs,” he says. Letting go was one of his career’s biggest disappointments. “I believed in the case,” Greenstein says. Napster, in his opinion, was “like a radio,” playing tunes but not ripping off anyone’s content. Now that the DMCA has established some ground rules, new technology doesn’t always have to raise copyright issues, Greenstein says. “I can’t say the DMCA has been 100 percent successful, but there are a number of successes you can point to in the Internet,” he says. Greenstein says the iPod and legal downloading music services are good examples. These days, Greenstein pays for his digital music. For his two daughters, ages 11 and 17, Greenstein subscribes to the Rhapsody digital music service. He calls it “a legal alternative.” Victoria Slind-Flor is West Coast editor of IP Law & Business , the ALM monthly magazine where this article first appeared.

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