July 10, 2014

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Pro-Competition Ruling in Lexmark Case

Yesterday the Sixth Circuit Court of Appeals ruled in Lexmark v. Static Control. The Court said, in effect, that Lexmark could not leverage copyright and DMCA claims to keep a competitor from making toner cartridges that work with Lexmark printers. This reversed a lower court decision.

[Backstory: Lexmark-brand toner cartridges contain a short computer program (about 50 bytes). Software in a Lexmark printer checks whether newly inserted toner cartridges contain that program, and refuse to work with cartridges that don't. Static Control makes a chip containing the same short program, so that third-party cartridges containing the Static Control chip can work in Lexmark printers. Lexmark sued, claiming copyright infringement (for copying the program) and DMCA violations (for circumventing the program-verification step). The original trial court issued a preliminary injunction against Static Control, which the Sixth Circuit just overruled.]

The ruling is very good news on both copyright and DMCA fronts. The fundamental issue in both fronts was whether a company could use copyright or the DMCA, in conjunction with a technical lockout mechanism, to prevent a competitor from making products that worked with (or interoperated) with its products.

The interesting copyright issue is whether a copyright owner can leverage copyright to limit interoperability. Consider this hypothetical: Alice writes a computer program which I’ll call A. Alice writes a copyrighted poem, and she programs A so that it will accept input only from programs that first send a copy of the poem. Alice gives permission for Bob’s program B to send the poem, but she refuses permission to everybody else. When Charlie makes a program that sends the poem, Alice sues him from infringing the poem’s copyright. Charlie proves that there is no way for his program to interoperate with A, except by sending the poem. Should Charlie be liable for copyright infringement?

This hypothetical doesn’t exactly match the facts of the present case, as far as I can tell, but it’s pretty close. The Court ruled that Static Control was allowed to copy Lexmark’s short computer program (which is analogous to the poem), to the extent that that copying was required in order to interoperate. So Lexmark could not leverage its copyright to prevent interoperability.

On the DMCA side, Lexmark had argued (and the lower court had agreed) that the printer mechanism that checked for the presence of the small toner-cartridge program was, under the DMCA, a technical protection mechanism that controlled access to Lexmark’s software, and that Static Control had circumvented that mechanism in violation of the DMCA. The key word here is “access”. The lower court said that the mechanism controlled “access” because it controlled the user’s ability to make use of the software, and “to make use of” is one definition of the word “access”. The Court of Appeals disagreed, saying that this was not the kind of “access” that Congress meant to protect in passing the DMCA. What Congress meant by “access”, the Court said, is the ability to read the program itself, not the ability to interact with or use it. Since Lexmark’s technical mechanism did not control the ability to read the program, it was not an access control in the sense meant by the DMCA, and hence Static Control had not violated the DMCA.

This is consistent with another court’s ruling in an earlier case, Chamberlain v. Skylink, involving garage door openers.

To sum up, this ruling is a big victory for interoperability. It also strikes an important blow against one overreaching reading of the DMCA, by limiting the scope of the access control provision. The DMCA is still deeply problematic in other ways, but we can hope that this ruling has narrowed its scope a bit.

Comments

  1. Trent says:

    I wonder if this ruling if it had occured soon enough, would have had any effect on the 321Studio’s lawsuit, over their DVD backup software?

  2. Dan Wallach says:

    If Lexmark’s goal was to keep competition from making compatible printer cartridges, you’d think they could just invent an unusual-shaped cartridge and patent it. I seem to recall that Nintendo did this to prevent competitors from making NES games without paying Nintendo for the privilege.

  3. Liam O'Melinn says:

    The hypothetical is interesting. I have looked only quickly at the decision, but I would guess that the answer would depend in part on whether the poem was thought to be functional in some respect. I have a hunch that because courts think they understand poems while they know that they don’t understand computer programs, use of the poem would more likely be found to infringe (for no very good reason). In this respect I think I agree with Professor Felten’s observation that some of these results come down to the fact that code is obviously mysterious to many of us, while other things do not seem mysterious (such as garage door openers and poems). What is heartening is that we are beginning to see some serious reasoning in these cases, although the recent bnetd case raises a doubt.

  4. Stephen Cochran says:

    Actually, the hypothetical is quite interesting, considering a system like Habeas (http://www.habeas.com/).

  5. Jay Gischer says:

    Dan, I’m not sure what you’re referring to. As far as I know, Nintendo prevents interoperation by using encryption. The entire contents of a cartridge is encrypted by a key which Nintendo gives to the game manufacturer. When a game boots up, the onboard processor downloads and decrypts the whole thing. Or some variation.

    They may claim patent on the shape, but I doubt that would stand a serious test, it’s just a way to throw a financial hurdle at would-be interoperators, make them contest the patent, too.

  6. Matt Brubeck says:

    According to this page, the original NES had both a patented cartridge housing and a patented “key chip” (with a weak challenge-response protocol).

  7. Dan Maas says:

    I was told by my patent lawyer that a medical device company used a patent on an oddly-shaped plastic fitting to prevent inter-operation by competitors.

    You could also imagine a fitting shaped like a trademarked symbol. (wow, add a copyrighted design, and you can use all three types of IP!)

  8. Seth Greenstein says:

    The result under the Lexmark case should be that the poem is not being used for its expressive content, which is all that is protected by copyright, but rather for unprotected functional purposes. In other words, rather than using the text “next to of course god america i love you” for its expressive content, Alice has constructed a lock that can only be opened if “n” is in the first position, “e” in the second, a space in the fifth, etc. In a legal sense, this is a functional use so it should not matter whether the key is a noncopyrightable string of alphanumeric text or a poem.