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Do the protections of the Digital Millennium Copyright Act (DMCA) extend to copyrightable material where neither copying nor piracy is a concern? The Eastern District of Kentucky’s Feb. 27 preliminary injunction ruling in Lexmark International v. Static Control Components [FOOTNOTE 1] suggests that they do. At issue in Lexmark is the legality of defendant Static Control Components’ sale of chip components that circumvent Lexmark’s printer cartridge authentication technology, designed to prevent the recycling of certain types of Lexmark printer cartridges. Static Control’s chips, when installed by its customers on the appropriate replacement cartridges, allow those cartridges to operate on Lexmark printers where they otherwise would not operate. The question raised by Lexmark is whether the DMCA should protect copyrightable subject matter even where the copying or piracy of that subject matter is not a concern. Though originally intended to implement the World Intellectual Property Organization (WIPO) Copyright and Performances and Phonograms Treaties, the version of the DMCA passed by Congress in 1998 went beyond the requirements of the WIPO treaties and offered protections to the entertainment industry against digital piracy and against certain limited forms of copying that traditionally had been considered “fair use.” [FOOTNOTE 2] The broad scope of the DMCA has made it a target for criticism since its earliest days. Decisions interpreting the DMCA have been criticized as setting copyright law on the path toward eliminating the fair use doctrine and stifling innovation and competition. Competing against this, of course, is the legitimate interest that copyright owners have in protecting against the circumvention of access and copy controls used in different forms of easily copied and readily distributed media, such as computer software, sound recordings and visual images. Lexmark introduces a new dimension to this debate. In Lexmark, the court applied the DMCA to protect printer and toner cartridge programs that are freely used by certain types of Lexmark toner cartridges but that cannot be used by other types of Lexmark cartridges. THE PARTIES AND THE DISPUTE Lexmark is a developer, manufacturer and retail seller of printers and related supplies and services. Static Control manufactures and sells a variety of components to the toner cartridge manufacturing industry. Lexmark developed a series of laser printers and compatible toner cartridges called the “T Series” that use copyrighted authentication sequences embedded in computer chips to prevent the printer from printing when it fails to “recognize” certain types of toner cartridges as authorized Lexmark toner cartridges. Lexmark sells two types of toner cartridges for its T Series printers: a regular cartridge sold at a standard price, and a “Prebate” cartridge offered at a discounted price. The regular Lexmark cartridges have no restrictions on refilling or reuse. The Prebate cartridges, on the other hand, contain additional authentication sequences on a computer chip that cause the cartridges to cease operating after they run out of toner, even if they are later refilled with toner. Consumers impliedly agree, via a “shrink-wrap” agreement on the Prebate package, to return the Prebate cartridge only to Lexmark for recycling. Lexmark employs a two-part authentication sequence for its Prebate cartridges. One part is embedded in a microchip on the toner cartridge, and the other part is located on a chip on the controller board inside the printer. When in use, the chip on the cartridge executes an “electronic handshake” with the printer so that the printer “recognizes” the cartridge. Once this takes place, the printer and the cartridge operate normally. If the printer fails to recognize the cartridge, however, the printer will generate an error message and will not allow the cartridge to print. Static Control developed the SMARTEK microchip, which it sold to replacement cartridge manufacturers and cartridge recyclers, for use with Lexmark’s Prebate cartridges. The SMARTEK microchip included an identical copy of Lexmark’s Toner Loading Program, as well as original programming developed by Static Control that replicated the authentication sequence used between Lexmark Prebate toner cartridges and Lexmark printers. This allowed Static Control’s customers to recycle Lexmark Prebate cartridges, effectively circumventing Lexmark’s “one-use-only” authentication controls. Lexmark filed a complaint against Static Control in the Eastern District of Kentucky on Dec. 30, 2002, seeking equitable relief on both copyright infringement and DMCA grounds. The copyright infringement allegation was based on Static Control’s manufacture and sale of SMARTEK microchips that contained unauthorized, identical copies of Lexmark’s Toner Loading Programs. The DMCA allegations were based on the SMARTEK chips’ effective circumvention of the Lexmark authentication technology that controlled the Prebate cartridges’ access to Lexmark’s Toner Loading Programs and Printer Engine Programs. Simultaneously with the complaint, Lexmark filed a motion for preliminary injunction to prevent Static Control from manufacturing, distributing, selling or marketing the SMARTEK microchips. PRELIMINARY INJUNCTION MOTION An evidentiary hearing on Lexmark’s motion was held on Feb. 7, 2003. The court considered the traditional four preliminary injunction factors in reaching its decision, giving greatest weight to the likelihood of success on the merits. Finding in favor of Lexmark on both its copyright infringement claim and its DMCA claims, the court granted Lexmark’s motion for preliminary injunction on Feb. 27, 2003. The court’s analysis of Lexmark’s copyright infringement claim relied heavily on expert testimony as well as Static Control’s admission that it had copied practically verbatim Lexmark’s Toner Loading Programs and had included them on its SMARTEK chip. According to the court, Lexmark’s Toner Loading Program copyrights were valid, since an adequate expression of creativity was contained in the program’s unique computer programming language and in Lexmark’s selection and arrangement of formulas, constants and variables in the program. More importantly, at least for the purpose of this article, the court also granted Lexmark’s motion for preliminary injunction based on its DMCA claims. To prove a violation under � 1201(a)(2) of the DMCA, it must be shown that an accused product or device:

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