Advanced Copyright Issues on the Internet - Fenwick & West LLP

Development and Employment of a Technological Means for Enabling Interoperability.Section 1201(f)(2) provides that, notwithstanding the prohibitions in Sections 1201(a)(2) and1201(b), “a person may develop and employ technological means to circumvent a technologicalmeasure, or to circumvent protection afforded by a technological measure, in order to enable theidentification and analysis under paragraph (1), or for the purpose of enabling interoperability ofan independently created computer program with other programs, if such means are necessary toachieve such interoperability, to the extent that doing so does not constitute infringement underthis title.”The scope of this exemption is uncertain from its language in several respects. First, it isunclear what kinds of “technological means” Congress had in mind for falling within thisexemption. The reference to allowing a person to “develop and employ” such technologicalmeans may suggest that the exemption is limited to only those means developed by the persondesiring to circumvent, as opposed to commercially available circumvention means. Thelegislative history suggests otherwise, however, for it contemplates that the rights under Section1201(f)(2) may be exercised through either generally available tools or specially developedtools:[Section 1201(f)(2)] recognizes that to accomplish the acts permitted under[Section 1201(f)(1)] a person may, in some instances, have to make and usecertain tools. In most instances these will be generally available tools thatprogrammers use in developing computer programs, such as compilers, traceanalyzers and disassemblers, which are not prohibited by this section. In certaininstances, it is possible that a person may have to develop special tools to achievethe permitted purpose of interoperability. Thus this provision creates anexception to the prohibition on making circumvention tools contained insubsections 1201(a)(2) and (b). These tools can be either software or hardware. 612From this legislative history, it is apparent that the phrase “develop and employ” in Section1201(f)(2) was probably intended to mean “develop and/or employ.”A second ambiguity is whether the “technological means” of Section 1201(f)(2) wereintended to be limited to the kinds of reverse engineering “tools” cited in the legislative history(compilers, trace analyzers, disassemblers and the like), or whether they could be read morebroadly to encompass computer programs, such as application programs, that in their ordinaryoperation are designed to circumvent technological measures protecting another computerprogram so as to interoperate with it. For example, consider the fact pattern at issue in the caseof Lexmark International, Inc. v. Static Control Components, Inc., 613 discussed in SectionII.G.1(o)(1) below. In that case, the district court ruled on a motion for a preliminary injunctionthat Static Control violated Section 1201(a)(2) by distributing microchips that were used toreplace the microchip found in the plaintiff Lexmark’s toner cartridges. Static Control’s612613S. Rep. No. 105-190, at 33 (1998).253 F. Supp. 2d 943, 948-49 (E.D. Ky. 2003), rev’d, 387 F.3d 522 (6 th Cir. 2004), reh’g denied, 2004 U.S.App. LEXIS 27,422 (Dec. 29, 2004), reh’g en banc denied, 2005 U.S. App. LEXIS 3330 (6 th Cir. Feb. 15,2005).- 146 -