Advanced Copyright Issues on the Internet - Fenwick & West LLP

plaintiff could not even use contractual prohibitions to eliminate authorization to circumventcontrols to gain access to the software in a way that did not facilitate infringement, the courtbacked away from any such absolute principle in a footnote: “It is not clear whether a consumerwho circumvents a technological measure controlling access to a technological measurecontrolling access to a copyrighted work in a manner that enables uses permitted under the<strong>Copyright</strong> Act but prohibited by contract can be subject to liability under the DMCA. BecauseChamberlain did not attempt to limit its customers’ use of its product by contract, however, wedo not reach that issue.” 885In conclusion, then, the court held, “The <strong>Copyright</strong> Act authorized Chamberlain’scustomers to use the copy of Chamberlain’s copyrighted software embedded in the GDOs thatthey purchased. Chamberlain’s customers are therefore immune from § 1201(a)(1)circumvention liability. In the absence of allegations of either copyright infringement or §1201(a)(1) circumvention, Skylink cannot be liable for § 1201(a)(2) trafficking.” 886 The courttherefore affirmed the district court’s grant of summary judgment in favor of Skylink. 887Door Openers(iii) In re Certain Universal Transmitters for GarageIn addition to its lawsuit against Skylink, Chamberlain also filed an action in theInternational Trade Commission to bar the importation of Skylink’s GDOs. That investigationestablished a second ground beyond that of the district court’s ruling as to why Skylink had notcommitted a violation of the DMCA. Specifically, in an Initial Determination concerningtemporary relief in the investigation that preceded the district court’s ruling, an administrativelaw judge denied temporary relief on the ground that Skylink’s transmitters did not violate theDMCA because they “do not circumvent Chamberlain’s copyrighted rolling code softwareprogram, but instead send fixed identification code signals to Chamberlain’s GDOs that falloutside of the copyrighted software. … The fact that [Skylink’s] transmitters send a fixedidentification code that does not circumvent Chamberlain’s copyrighted software programremoves those products entirely from the purview of the DMCA, regardless of whetherChamberlain warns its customers and Skylink that non-rolling code transmitters areunauthorized.” 888After the district court’s ruling, Skylink moved to dismiss the ITC investigation on theground that Chamberlain’s claim was barred under res judicata by that ruling. Chamberlainopposed the dismissal on the ground that there were new facts not before the district court –namely, that Chamberlain had since changed its GDO users’ manuals to expressly warncustomers that use of non-rolling code transmitters would circumvent Chamberlain’s rollingcode security measure, and to make clear that customers were not authorized to access885886887888Id. at 1202 n.17.Id. at 1204.Id.In re Certain Universal Transmitters for Garage Door Openers, 70 U.S.P.Q.2d 1906, 1909 (I.T.C. 2004).- 198 -