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Digital walls are now protected against pirates that circumvent. Does the protection apply only to intellectual property or to all products? What about circumventing an authentication protocol for a toner cartridge software? What about a copyrighted computer program needed to open a garage door? Two recent cases discuss the application of the 1998 Digital Millennium Copyright Act to such products. BACKGROUND In order to update the Berne Convention to the digital world, the World Intellectual Property Organisation on Dec. 20, 1996 adopted the WIPO Copyright Treaty. Article 11 [FOOTNOTE 1] is the obligation concerning technological measures. Congress implemented the treaty by enacting a new Chapter 12 in the Copyright Law: “Copyright Protection and Management Systems,” which was Title 1 of the DMCA and the subject of this column. Technological protection measures were designed to combat copying and piracy of intellectual property. Section 1201 contains three new causes of action: � a prohibition on the circumvention of technical measures that controls access (conduct) and � a prohibition of trafficking in technology (that is, selling devices) that � either helps circumvent access control measures or copyright protection measures (“anti-trafficking devices”). Section 1201 divides technological measures into two categories: conduct and trafficking in certain technology devices. The conduct, or the act of circumventing, is not prohibited for copying a copyright work; only the act of circumventing a technological measure in order to gain access is prohibited. The reason: copying may be fair use under certain circumstances. There is no fair use for access. In the real world, this distinction may have little meaning. GARAGE DOOR CASE: ‘CHAMBERLAIN’ Chamberlain [FOOTNOTE 2] involves garage door openers. The defendant Skylink provided transmitters in the aftermarket. Plaintiff Chamberlain claimed that defendant’s transmitter circumvents its security in its software, in violation of the anti-trafficking clause, �1201(a)(2). There was no claim of copyright infringement. Note: no intellectual property is involved. Plaintiff Chamberlain took an extreme position. It argued that by prohibiting the trafficking and use of circumvention technology, the DMCA altered the legal landscape. The claim is that Congress empowered manufacturers to prohibit consumers from using embedded software in connection with competitive products. The court considered that such construction was plausible only if anti-circumvention provisions of the DMCA established a new property right, which the court thought they do not. The new causes of action are for liability, not a new property right. At the time of sale, plaintiff Chamberlain does not place any explicit conditions on the ways that a purchaser may use its products. If there were a new property right, all existing consumer expectations to use purchased products containing copyrighted software protected by technological measures would be altered. Beyond the plain language of the DMCA, the court also looks at the statute structure, legislative history and context within the Copyright Act. All of this because the case is of first impression. Prior to the DMCA, a copyright owner would have no cause of action against anyone who circumvented any sort of technological control but did not infringe. The DMCA created circumvention liability for “digital trespass” under �1201(a)(i). It also created trafficking liability under �1201(a)(2) for facilitating such intervention and under �1201 (b) for facilitating infringement, subject to exceptions. The court considered that every clause in �1201 that mentions “access” links “access” to “protection”. It specifies that there is a critical nexus between access and protection. The U.S. Court of Appeals for the Federal Circuit’s holding is that “�1201 prohibits only forms of access that bear a reasonable relationship to the protections that the Copyright Act otherwise affords copyright owners.” The reason: Copyright Law itself authorizes the public to make certain uses of copyrighted materials. Consumers who purchase a product containing a copy of embedded software have an inherent legal right to use that software. The Federal Circuit expands on the holding of the district court. The district court held the definition of circumvention requires actions “without the authority of the copyright owner,” and that plaintiff’s customers had implicit authority to use the garage opener as he or she pleased. The Federal Circuit went further. It applied a rule of reason: While such a rule of reason may create some uncertainty and concerns some judicial resources, it is the only meaningful reading of the statute. … Here, Chamberlain can point to no protected property right that Skylink imperils. The DMCA cannot allow Chamberlain to retract the most fundamental right that the Copyright Act grants consumers: the right to use the copy of Chamberlain’s embedded software that they purchased. TONER CARTRIDGE CASE: ‘LEXMARK’ Lexmark [FOOTNOTE 3], which manufactured toner cartridges, sued a competitor for including in its reconditioned cartridge software a “circumvention” of plaintiff Lexmark authentication protocol. While the litigation proceeded, the defendant Static Control Components sought a ruling from the Register of Copyrights to exempt its circumvention of access controls. It was the Second Section 1201 ruling that the register must make under the DMCA to determine if users of particular classes of copyrighted works would be adversely affected by the prohibition. In the second rulemaking, [FOOTNOTE 4] the register denied SCC’s application: 21. Proposed exemption: Reverse engineering for interoperability and the Static Control proposals. Static Control Components Inc. proposed exemptions to permit circumvention of access controls on computer programs embedded in computer printers and toner cartridges and that control the interoperation and functions of the printer and toner cartridge. Static Control is in litigation with computer printer manufacturer Lexmark, which sells laser printer toner cartridges that cannot be refilled by third-party remanufacturers because a technological measure contained on a microchip in those cartridges renders those cartridges useless when they are refilled by third-party remanufacturers. The Register concludes that an existing exemption in �1201(f) addresses the concerns of remanufacturers, making an exemption under �1201(a)(1)(D) unnecessary. Back to the litigation: Lexmark’s claim utilized the words of the DMCA: SCC’s chip violated a technological measure designed to control access to the Toner Loading Program. After an evidentiary hearing, the district court entered a preliminary judgment against SCC. And the case was appealed to the 6th U.S. Circuit Court of Appeals, which reversed, without dissent, as to claims under the DMCA. WHAT CONTROLS ACCESS? The issue is what controls access. Congress did not explain what it meant by “gain access to the work.” What is the “work” � the embedded software program or the Lexmark printer? The district court concluded the authentication sequence “controls access” to the Printer Program because it controls the consumer’s ability to make use of the programs. The 6th Circuit disagreed. It is the purchase of the printer that allows “access,” and the data may be translated into readable source code. The so-called security device does not block this form of “access.” The DMCA applies only when the product manufacturer prevents all access. Judge Jeffrey Sutton explains:
Nowhere in its deliberations over the DMCA did Congress express an interest in creating liability for the circumvention of technological measures designed to prevent consumers from using consumer goods while leaving the copyrightable content of a work unprotected. In fact, Congress added the interoperability provision in part to ensure that the DMCA would not diminish the benefit to consumers of interoperable devices ‘in the consumer electronics environment.’ 144 Cong. Rec. E2136 (daily ed. Oct. 13, 1998) (remarks of Rep. Bliley). See generally Anti-Circumvention Rulemaking Hearing, at 44-56, (testimony of Professor Jane Ginsburg (Section 1201(a) does not ‘cover []the circumvention of a technological measure that controls access to a work not protected under[the Copyright] title. And if we’re talking about ball point pen cartridges, printer cartridges, garage doors and so forth, we’re talking about works not protected under this title.’).

CONCURRENCE The concurrence by Judge Gilbert S. Merritt provides a warning:

We should make clear that in the future companies like Lexmark cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods for themselves just by tweaking the facts of this case: by, for example, creating a Toner Loading Program that is more complex and ‘creative’ than the one here, or by cutting off other access to the Printer Engine Program. The crucial point is that the DMCA forbids anyone from trafficking in any technology that ‘is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a [protected] work.’ 17 USC �1201(a)(2)(A). The key question is the ‘purpose’ of the circumvention technology. The microchip in SCC’s toner cartridges is intended not to reap any benefit from Toner Loading Program — SCC’s microchip is not designed to measure toner levels — but only for the purpose of making SCC’s competing toner cartridges work with printers manufactured by Lexmark. By contrast, Lexmark would have us read this statute in such a way that any time a manufacturer intentionally circumvents any technological measure and accesses a protected work it necessarily violates the statute regardless of its ‘purpose.’ Such a reading would ignore the precise language — ‘for the purpose of’ — as well as the main point of the DMCA — to prohibit the pirating of copyright-protected works such as movies, music, and computer programs. If we were to adopt Lexmark’s reading of the statute, manufacturers could potentially create monopolies for replacement parts simply by using similar, but more creative, lock-out codes. Automobile manufacturers, for example, could control the entire market of replacement parts for their vehicles by including lock-out chips. Congress did not intend to allow the DMCA to be used offensively in this manner, but rather only sought to reach those who circumvented protective measures ‘for the purpose’ of pirating works protected by the copyright statute.

Judge Merritt concludes:

On remand the first question should be whether Lexmark can show the requisite ‘primary purpose’ to pirate a copyrighted work rather than to ensure that their own cartridges work with Lexmark’s printer. If not, its case against SCC should be dismissed.

CONCLUSION Intuitively, the claims brought by plaintiffs in our two cases appear to fall within the exact meaning of the DMCA. Judicial intervention in opinions written by first-rate legal minds narrows such interpretation. Nonetheless, enterprising lawyers may work around Judge Merritt’s dicta to attempt to achieve protection under the DMCA. The dicta may provide a blueprint. To some, the two cases curb overuse of the DMCA. To others, the plain words of the statute, without judicial intervention, could be used to achieve protection for all kinds of security devices. Our register of copyrights, Marybeth Peters, says:[FOOTNOTE 5]

Plausible arguments could be made in each of these examples that the DMCA and copyright law supported the positions taken by the lawyers and parties involved, so it is hard to say that they had no right to take these actions. However, they strike the public and many observers as heavy-handed and nonsensical, to say the least, and give fuel to those opposed to the DMCA and other efforts to provide meaningful protection to copyright in the digital environment. It helps undermine support for recent enactments like the DMCA, and has prompted copyright skeptics to question whether copyright as we know it should be radically changed or even discarded.

Alan J. Hartnick is a partner of Abelman, Frayne & Schwab and an adjunct professor of law at Fordham Law School. If you are interested in submitting an article to Law.com, please click here for our submission guidelines. ::::FOOTNOTES:::: FN1 WIPO Treaty, April 12, 1997, S. Treaty Doc. No. 105-17 (1997), available at 1997 WL 447232. FN2 The Chamberlain Group, Inc. v. Skylink Technologies, Inc., 381 F3d 1178 (Fed. Cir. 2004). FN3 Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F3d 522 (6th Cir. 2004). FN4 Second Section 1201 Rule Making, Federal Register, Vol. 68, No. 211, Friday, Oct. 31, 2003 at 62011, 37 CFR Part 201. FN5. “Copyright Enters the Public Domain,” 51 Copr. Soc’y 701, 708 (2004).)

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