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 user 2007-06-04 at 10:55:00 am Views: 53
  • #18195

    Lexmark v. Static Control: An Update on Copyrights and Competition
    a market incumbent use copyrighted expression such as embedded software
    in a manufactured product to block development of interoperable
    competing products? In its widely reported decision in Lexmark Int’l,
    Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004),
    the Sixth Circuit seemed to strike a blow for third parties seeking to
    enter a market. In that case, the Sixth Circuit vacated a preliminary
    injunction preventing the distribution of a print toner cartridge
    component that had to contain an exact copy of a small software program
    copyrighted by the plaintiff in order for the cartridge to be able to
    be used with the plaintiff’s printers. The Sixth Circuit, however, held
    open the door that more evidence might show copyright infringement.
    Recently, the district court shut that door. (Static Control
    Components, Inc. v. Lexmark Int’l, Inc., 5:04-cv-00084-GGVT, Apr. 18,
    2007) This ruling is worth studying for what it teaches about the
    boundary between copyright enforcement and competition.

    manufactures printers and toner cartridges for the printers. Lexmark’s
    cartridges contained a microchip with a short and simple software
    program that allowed the printer both to determine how much toner was
    in the cartridge and to identify the cartridge as one of Lexmark’s.
    Static Control made a microchip with an exact copy of the Lexmark toner
    program that it sold to other manufacturers so their cartridges would
    work with Lexmark printers.Lexmark filed suit claiming infringement of
    Lexmark’s copyright in its toner program and violation of the
    anti-circumvention provisions of the 1998 Digital Millennium Copyright
    Act (DMCA). The district court preliminarily enjoined Static Control
    from distributing its microchip.On appeal, the Sixth Circuit dissolved
    the injunction. The Sixth Circuit held that Lexmark had no DMCA claim
    because the DMCA only protects technological access control measures,
    and Static Control’s microchip did not provide access to Lexmark’s
    toner program but replaced it outright. The Sixth Circuit also found
    that Lexmark had not demonstrated that its toner program was
    copyrightable for preliminary injunction purposes, but sent the case
    back to the district court to decide that question as a final matter
    based on more facts.

    The Recent Ruling and What It Means
    considering additional information about Lexmark’s toner program, the
    district court found no infringement. First, the district court
    determined that Lexmark’s short and simple program did not qualify as
    an “original” work under the DMCA. Lexmark stressed the number of
    different approaches that could have used in writing the toner program.
    The district court was not impressed, finding that most of the
    alternatives were different methods, which cannot be copyrighted, not
    different expressions of the same method. The remaining alternatives
    were impractical or inefficient. In short, the district court’s
    decision drives home the important reminder that merely making choices
    in creating a work will not guarantee copyright protection.

    the district court held that Static Control’s copying of the toner
    program was a permitted “fair use” under the DMCA needed to allow
    Initially, the district court focused on the Lexmark
    toner program’s dual roles of measuring toner level and enabling
    interoperability with Lexmark printers. Because Static Control’s
    purpose in copying only impacted the latter role of permitting
    interoperability, the district court found fair use, even though Static
    Control’s microchip had a commercial purpose of creating competing
    cartridges. The district court next examined whether the copying hurt
    the market for the copyrighted work. Here, the interesting point is how
    narrowly “market” was defined. The Sixth Circuit had held earlier that
    the “market” could be for toner programs, not toner cartridges. The
    district court found no evidence that an independent market for toner
    programs existed, and thus found fair use. The lesson for copyright
    holders is to proceed cautiously before attempting to enforce their
    copyright beyond the copyrighted work itself to associated products or

    Finally, it is worth remembering that even if
    copyright law would permit development of an interoperable product, a
    contract might not.
    Although Static Control did not involve such a
    contract, products involving software frequently are sold or licensed
    subject to a contract barring all copying or use to develop a competing
    product, including reverse engineering. Most courts now enforce these
    provisions, which effectively waive defenses such as fair use to
    copyright claims.