In Lexmark v. Static Control Components, Lexmark, plaintiff-appellee, sought preliminary injunction against Static Control Components (SCC) defendant-appellant, in the U.S. District Court for the Eastern District of Kentucky, to prevent SCC from distributing its SMARTEK computer chips. Lexmark, a manufacturer of laser and inkjet printers and toner cartridges, designed its toner cartridges with an embedded chip that notifies the printer if the cartridge was refilled by Lexmark. If not, then the printer is designed to reject the cartridge. This dispute involves two computer programs. The “Toner Loading Program,” coded into Lexmark’s toner cartridge chip, calculates toner levels. The “Printer Engine Program,” coded into the memory in the printer itself, controls various printer functions. The Loading Program contains minimal code (only about 45 commands, using 55 bytes of memory). SCC designed its SMARTEK chip such that it mimicked Lexmark’s chip and could be embedded in remanufactured toner cartridges. Lexmark was granted a preliminary injunction in district court on two main theories of liability: (1) SCC’s chip copied the Loading Program in violation of the federal copyright statute; and (2) SCC’s chip violated the Digital Millennium Copyright Act (DMCA) by circumventing a technological measure designed to control access the to the Engine Program. The Sixth Circuit vacated the judgment, finding that Lexmark did not establish a likelihood of success on its copyright infringement claim or on its DMCA claim.The Sixth Circuit applied an abuse-of discretion standard in reviewing the district court’s preliminary injunction. In applying this standard, the Sixth Circuit considered: (1) Lexmark’s likelihood of success on the merits; (2) the possibility of irreparable harm to Lexmark in the absence of an injunction; (3) public interest considerations; and (4) potential harm to third parties. In the context of copyright, the court places particular emphasis on the first factor, “because irreparable harm is presumed once a likelihood of success on the merits has been established.” The Copyright Act, 17 U.S.C. Section 102, grants copyright protection to “original works of authorship fixed in any tangible medium of expression,” including “literary works.” Computer programs are generally entitled to copyright protection as literary works under 17 U.S.C. Section 101. In a suit for copyright infringement the plaintiff (Lexmark) must show (1) ownership of a valid copyright, and (2) that the defendant copied protectable elements of the work. The copyright statute states that “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of … form….” 17 U.S.C. Section 102(b). According to the court, “this provision embodies the common-law idea-expression dichotomy that distinguishes the spheres of copyright and patent law.” Copyright protection is only extended to the expression of the idea, not the idea itself. The related doctrine of merger states that where there is a very limited number of ways to express an idea, “copyright protection does not exist because granting protection to the expressive component of the work necessarily would extend protection to the work’s uncopyrightable ideas as well.” The doctrine of “scenes a faire” similarly states that when external constraints limit the options for expression, copyright protection is precluded. “In the computer-software context, the doctrine means that the elements of a program dictated by practical realities… may not obtain protection.” The Sixth Circuit has previously held that efficiency represents an external constraint in the context of copyrightability of computer programs.
The major issue under the copyright infringement analysis was whether the Loading Program classified as a “lockout code” (a code or sequence, used with interoperable devices, that permits operation of the primary device only when the component device either contains a certain code sequence or is able to respond appropriately to an authentication process). If the Loading Program is considered a lockout code, it is uncopyrightable because “its elements are dictated by functional compatibility requirements.” In other words, lockout codes fall on the “idea” side of the idea-expression dichotomy. However, even if the Loading Program counts as expression, under merger and scenes a faire, when specific instructions are the only and essential means of accomplishing a given task, their later use by another will not amount to infringement. The Sixth Circuit found that the district court committed three related legal errors: (1) In concluding that the Loading Program could be written in different ways, the court failed to consider whether external factors such as compatibility requirements, industry standards, and efficiency, limit the number of forms that the Loading Program could possibly take (i.e., the doctrine scenes a faire); (2) Because of the first error, the court did not apply the proper standard in determining whether or not there was any originality in the Loading Program (i.e., “the court should ask whether the ideas, methods of operation and facts of the program could have been expressed in any form other than that chosen by the programmer, taking into consideration the functionality, compatibility, and efficiency demanded of the program.”); and (3) The court erred in finding that the Loading Program most likely does not function as a lock-out code (an error because SCC presented uncontested evidence to the effect that it would be computationally impossible to determine the values that are generated by the Loading Program, at the start of its loading operation, without verbatim copying of the actual program; those values are necessary for compatibility between the toner cartridge and the printer).
Lexmark’s DMCA claims fall under 17 U.S.C. Section 1201(a)(1), which essentially bans devices that are designed to circumvent a technological measure that effectively controls access to a copyrighted work. Lexmark argued that SCC’s SMARTEK chip is a device that circumvents Lexmark’s authentication sequence, which effectively controls access to Lexmark’s copyrighted work (the Loading Program and the Engine Program). The district court interpreted the term “access” to mean “to make use of,” and thereby found that the authentication sequence controls access the Engine Program. Based on this finding, the district court concluded that Lexmark had shown a likelihood of success under 1201(a)(1). The Sixth Circuit disagreed, finding that Lexmark’s authentication sequence does not control access to the Engine Program. The Sixth Circuit adopted a wider definition of the term “access” with respect to computer programs -- “the ability to obtain a copy of the work or to make use of the literal elements of the program (its code).” Based on this definition, the Sixth Circuit found that “anyone who buys a Lexmark printer may read the literal code of the Engine Program directly from the printer memory, with or without the benefit of the authentication sequence….” In other words, while it is true that the authentication sequence is needed to make use of the Engine Program, there is no security device that protects access to the Engine Program code, therefore there can be no circumvention. “Because Lexmark has not directed any of its security efforts, through its authentication sequence or otherwise, to ensuring that its copyrighted work (The Printer Engine Program) cannot be read and copied, it cannot lay claim to having put in place a ‘technological measure that effectively controls access to a work protected under the copyright statute.’” The court employed similar reasoning with respect to the Loading program. Because the court found that Lexmark failed to establish a likelihood of success on any of its claims (copyright or DMCA), the district court’s grant of preliminary injunction was vacated and the case remanded for further proceedings. There was a concurrence and a concurrence-in-part/dissent-in-part.
