Digital Millennium Copyright Act: Lexmark Reversed on Digital Millennium Copyright Act (DMCA) Since Unprotected Program Is Not Subject to DMCA Protection and Since Encryption Protected Program Was Not Copyrightable

Lexmark International, Inc. (hereinafter Lexmark) is a manufacturer of printers and printer cartridges.  In order to prevent unauthorized re-filling of the printer cartridges, Lexmark has been attempting to enforce its rights using a combination of actions, including one well publicized action based upon the DMCA.  Lexmark brought suit against Static Control Components, Inc. (hereinafter SCC) in the Eastern District of Kentucky and was initially granted a preliminary injunction preventing SCC from selling the chip.  Among the grounds supporting the preliminary injunction, the District Court found that Lexmark was likely to succeed on its claim that SCC’s chip was in violation of 17 USC 1201(a)(2) of the DMCA.  On appeal to the Court of Appeals for the Sixth Circuit, the District Court was reversed on the DMCA claim.

Specifically, the Sixth Court found that the DMCA did not prevent SCC’s creation and distribution of the chip since the chip did not prevent the unauthorized access of the Printer Engine Program resident on the printer.  The Sixth Circuit also held that SCC’s chip did not prevent the unauthorized of access of the Toner Loading Program since the Toner Loading Program was held to not be copyrightable.   Therefore, even though the Toner Loading Program was copied onto SCC’s chip and the algorithm designed to protect access to the Toner Loading Program was admittedly broken, the DMCA did not prevent this access.        Lexmark Intern’l, Inc. v. Static Control Components, Inc., 387 F.3d 522; 72 U.S.P.Q.2D 1839 (6th Cir. 2004) reh’g denied, 2004 U.S. App. LEXIS 27422 (Dec. 29, 2004), reh’g en banc, denied, 2005 U.S. App. LEXIS 3330 (Feb. 15, 2005).

While the Sixth Circuit’s decision merely remanded the case for further proceedings and has not yet been finalized, the Sixth Circuit succinctly pointed out the possible deficiencies in the DMCA as applied to printer products:

1)      the work being protected by the technology measure needs to be copyrightable;

2)      some technological protection must prevent access to the copyrighted work; and

the user alleged to be accessing the work must not be authorized (i.e., license must restrict right to access copyrighted work).

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