Advanced Copyright Issues on the Internet - Fenwick & West LLP

microchip contained a computer program that circumvented Lexmark’s authentication sequencethat prevented the printer engine software on the Lexmark printer from allowing the printer tooperate with a refilled toner cartridge.The district court in that case ruled that the exemptions of Section 1201(f) did not applybecause Static Control’s microchips could not be considered to contain independently createdcomputer programs, since the toner loading program on those microchips was an exact copy ofthe toner loading program contained on Lexmark’s microchips. 614 However, suppose StaticControl had independently developed the computer program contained on its microchips. 615Would the exemption of Section 1201(f)(2) apply? Static Control could argue yes, on theground that Section 1201(f)(2) permits it to “employ technological means [the computer programon its microchip] to circumvent a technological measure [the authentication sequenceimplemented by the Lexmark printer engine software] … for the purpose of enablinginteroperability of an independently created computer program [again, the computer program onStatic Control’s microchip] with other programs [the Lexmark printer engine program].”On the other hand, Lexmark could argue no, on the ground that the legislative historyindicates that the “technological means” referenced in Section 1201(f)(2) were meant to belimited to reverse engineering “tools,” and the program on the Static Control microchip is not areverse engineering tool, but rather an application program. In sum, the issue is whether the“independently created computer program” referenced in Section 1201(f)(2) can also constitutethe “technological means” of circumvention, or whether the “technological means” is limited tothe reverse engineering tool used to develop the independently created computer program in thefirst place. Stated differently, the issue is whether Section 1201(f)(2) was meant to be narrow tocover only the development and employment of special tools used to aid the reverse engineeringpermitted by Section 1201(f)(1), or whether it was intended to permit more generalizedcircumvention of technological measures by one computer program in order to interoperate withanother computer program whose technological protection measures are being circumvented bythe first program. A similar ambiguity is embedded in Section 1201(f)(2)’s reference to “other”programs – can a program whose technological measure is circumvented by an independentlycreated computer program, both in the ordinary operation of the independently created computerprogram and in the reverse engineering that was done to create such program, qualify as an“other” program? The legislative history contains no guidance on the interpretation of “other” inthe exemption.614615As discussed further in Section II.G.1(a)(13)(i) below, the Sixth Circuit on appeal reversed the district court’sgrant of a preliminary injunction and remanded. Among other things, the Sixth Circuit questioned whetherLexmark’s toner loading program was even copyrightable, ruling that on the preliminary injunction recordLexmark had made inadequate showings with respect to originality of its toner loading program and whetherthat program functioned as a “lock-out code” that had to be copied for functional purposes. Lexmark Int’l v.Static Control Components, 387 F.3d 522, 536-41 (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).The Sixth Circuit also ruled that, whether or not the toner loading program on Static Control’s microchips wasindependently created, the record established that there were other programs on Static Control’s microchips thatwere independently created, and those computer programs also interoperated with Lexmark’s printer engineprogram on Lexmark’s microchips. Id. at 550.- 147 -