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What if Ford designed its cars so that all replacement parts and add-ons had to come from Ford? If a consumer installed spark plugs or a radio/DVD-player that were manufactured by a third party, the car wouldn’t run. Plus, the consumer would be liable for copyright infringement. Such restrictions may soon be coming to a vast array of products, depending on how the courts rule in two recently filed cases. These lawsuits are testing whether businesses can use copyrighted software — and the Digital Millennium Copyright Act (DMCA) — to prevent customers from using third-party add-ons or replacement parts. The potential impact of these cases is “scary,” according to Edward Felten, associate professor of computer science at Princeton University. If the plaintiffs win, Felten said, “many, or even all, makers of interoperable products will be at risk, and end users will lose even more control over their technological devices.” The results won’t affect the makers of dog food, but they will affect companies that manufacture or service dishwashers, garage doors, refrigerators, cars, dryers — anything that uses computer software, said David Nimmer, of counsel at Los Angeles’ Irell & Manella, which represents Static Control Components, a defendant in one of the two cases. He said this use of the DMCA was “novel and unprecedented” and that plaintiffs were using the law in a way not intended by Congress. THE CASES In Lexmark International v. Static Control Components, No. 02-571-K5F (E.D. Ky. Dec. 30, 2002), Lexmark came up with a clever way to force buyers of its printers to use only the company’s brand of replacement toner cartridges. A Lexmark printer will run only if the toner cartridge has a computer chip that sends an authentication sequence to the printer, which identifies the cartridge as manufactured by Lexmark. If a user installs a less-expensive toner cartridge from another manufacturer, the machine will not function. Static Control Components devised a way around this. The Sanford, N.C.-based company allegedly manufactured chips that mimicked the Lexmark authentication sequence and sold these chips to toner manufacturers. Lexmark sued, claiming, among other things, that Static Control had violated the DMCA. The company’s rather unusual argument runs roughly as follows: Lexmark’s printers use copyrighted software to control various operations of the machine, including paper feed, paper movement, motor control and fuser operation. Access to this copyrighted software is protected by a technological measure — the authentication sequence from the toner cartridge. Static Control’s computer chip circumvents this technological measure and so provides unauthorized access to the printer’s copyrighted software. And circumventing a technological measure in order to gain access to a copyrighted work violates the DMCA. A similar argument is presented by the plaintiff in Chamberlain Group v. Skylink Technologies, Civ. No. 02-C-6376 (N.D. Ill. filed Sept. 6, 2002). In that case, a manufacturer of mechanical garage-door openers is suing a maker of remote controls or “clickers” that are used by drivers to remotely activate the garage-door opener. Chamberlain’s garage-door openers contain a safety feature that ensures a door will open only when certain software codes are received. Skylink’s remotes circumvent this technology, and Chamberlain alleges that this violates the DMCA. PROPER DMCA USE? A question for the courts will be whether the DMCA was intended to apply in these circumstances. “Of course, that’s why we brought the case,” said Karl Fink, a partner in the Chicago firm of Fitch, Even, Tabin & Flannery, which is representing Chamberlain in its DMCA suit. Others side with Static Control counsel Nimmer. “This is not what Congress had in mind, but it’s a clever use of the law,” said Jessica Litman, professor of IP law at Wayne State University Law School and author of the book “Digital Copyright.” “The DMCA was intended to protect products like DVDs,” said Jonathan Band, an IP partner in the Washington, D.C., office of San Francisco’s Morrison & Foerster. “It was intended to encourage the development and use of technological protection measures in order to create a robust, online market for content.” But what Congress intended, and what the law says, may be two separate things. “If I look at the statute and the legislative history, I can see this is far, far beyond what Congress intended,” said Litman. “But if I look at recent cases interpreting the DMCA, I think, unfortunately, Lexmark has a good case.” That’s because the courts have been interpreting the DMCA very broadly, according to Litman. This isn’t the first time that manufacturers have tried to use copyright law to prevent third-party add-ons. “We’ve had plenty of cases in the 1980s and ’90s when someone would use copyright to challenge someone else’s manufacture of an interoperable device,” Litman said. For instance, Sega, the manufacturer of a popular game console, sued the maker of some third-party games for copyright infringement, because the gamemaker embedded some of Sega’s copyrighted software into its own products so the games could run on Sega’s machines. The 9th U.S. Circuit Court of Appeals held that copying software code in order to create interoperability is fair use. So the third-party manufacturer won the seminal case of Sega Enterprises v. Accolade, 977 F.2d 1510 (9th Cir. 1992). But the DMCA is a different animal. The courts have so far interpreted this law so that fair use is not a defense, according to Litman. Thus conduct protected as fair use under other provisions of copyright law might be actionable under the DMCA. Reply papers have not yet been filed in either of these two cases. On Dec. 3, however, the Chamberlain Group requested summary judgment on its DMCA claim. Skylink has until April 22 to file its reply to this motion.

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