LEXMARK AND THE MISUSE OF THE DMCA

Today, the 6th Circuit vacated an injunction from 2003 barring Static Control Components (SCC) from manufacturing the “Smartek” chip that makes refilled toner cartridges work with Lexmark printers. (click here for PDF of today’s ruling)

In Lexmark v. Static Control Components, Lexmark successfully argued that they would likely succeed on their DMCA claims when SCC trafficked their Smartek chip that allowed circumvention of Lexmark’s technological measures preventing unauthorized access to the Lexmark’s Toner loading and printer engine program built into certain Lexmark printers in violation of the DMCA’s anti-trafficking and anti-circumvention provisions. (§1201(a)(2) and §1201(a)(3)(B)). As a result of this ruling, SCC retired the Smartek chip but began selling a new line of chips in March 2004 to enable aftermarket cartridges to work in Lexmark (and other manufacturers’) printers.

In vacating this injunction, the 6th Circuit stated that it was error to rule Lexmark was likely to prevail on their DMCA claims. The Copyright Office’s interpretive ruling from October 2003 (Click here for PDF) and cases such as Chamberlain v. Skylink makes clear that the DMCA is supposed to be used to protect copyrighted works and not for use to create a monopoly by shutting out competitors who seek to make their aftermarket components operable.

Specifically, the 6th Circuit has some firm words on the proper use of the DMCA:

We should make clear that in the future companies like Lexmark cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods for themselves.

The order today vacates the preliminary injunction and remands the case for further proceedings. Today’s ruling should open up competition for aftermarket products and serve as a warning that the court will not tolerate claims that is supported by a strained reading of the DMCA.

Comments

[John Lotfi]

From page 22 of Merritt's concurring opinion, we see a citation that should look familiar: See, e.g., Lawrence Lessig, Free Culture 187 (2004) (noting the danger that "in America fair use simply means the right to hire a lawyer to defend your right to create")."

I knew we read that book for a reason. Good stuff.