Advanced Copyright Issues on the Internet - Fenwick & West LLP

to service a particular system. StorageTek sued for both copyright infringement and violation ofthe anti-circumvention provisions. 895The district court held that the defendants had infringed StorageTek’s copyright in theMaintenance Code by virtue of the copy thereof made in RAM each time the GetKey processwas circumvented and the maintenance level reset. 896 The court held that such copying was notpermitted under Section 117(c) of the copyright statute, which provides that it is not aninfringement for the owner or lessee of a machine to authorize the making of a copy of acomputer program if the program is copied solely by turning on the machine for the purpose onlyof maintenance and repair and the copy is used in no other manner and is destroyed immediatelyafter the maintenance and repair is completed. The court ruled that Section 117(c) was notavailable because, although the defendants copied the Maintenance Code by turning on themachine, they did not do so just for repair, but also for the express purpose of circumventingStorageTek’s security measures, modifying the maintenance level, and intercepting thediagnostic messages, and they did not destroy the copies they made immediately aftercompletion of repairs. 897The court also found a violation of the anti-circumvention provisions of the DMCA,ruling that GetKey was unquestionably a qualifying access control measure and there was noquestion that the defendants bypassed GetKey. The court also rejected the defendants’ relianceon Section 1201(f), because that defense exempts circumvention only if it does not constituteinfringement, and the defendants’ bypassing of GetKey resulted in an infringing copy of theprogram being made in RAM. 898 Accordingly, the court issued a preliminary injunction againstthe defendants.On appeal, the Federal Circuit reversed, principally on the ground that the district court’sanalysis of Section 117(c) was incorrect. The court found that the district court had erred byfocusing on the term “repair” in Section 117(c), while ignoring the term “maintenance,” whichthe court noted from the legislative history was meant to encompass monitoring systems forproblems, not simply fixing a single, isolated malfunction. 899 The defendant had createdsoftware, known as the Library Event Manager (LEM) and the Enhanced Library Event Manager(ELEM) to intercept and interpret fault symptom codes produced by the plaintiff’s MaintenanceCode. 900 The plaintiff’s expert testified that a copy of the Maintenance Code remained in RAMon an ongoing basis as the system operated with the LEM and ELEM attached. Because thatdescription did not comport with the notion of “repair,” the district court had ruled Section117(c) inapplicable. However, in describing the defendants’ process, the expert noted that theLEM and ELEM stayed in place so that when problems occurred, the defendants could detect895896897898899900Id. at *9-11.Id. at *11-12.Id. at *12-13.Id. at 14-15.Storage Technology Corp. v. Custom Hardware Eng’g & Consulting, Inc., 421 F.3d 1307, 1312 (Fed. Cir.2005), reh’g denied, 431 F.3d 1374 (Fed. Cir. 2005).Id. at 1310.- 200 -