DMCA dealt a serious blow by Sixth Circuit Appeals Court

October 29, 2004

While the DMCA was originally intended to protect digital copyright works such as music, video and software by making it illegal to circumvent copy-protection measures, other companies began using it to protect their own work including Lexmark the maker printers and Chamberlain the maker of garage door openers. In an aim for Lexmark to boost its profits on laser toner sales, it started using chip technology like Epson to try and stop other companies from making compatible toner cartridges. However Static Control Components decided to reverse engineer Lexmark's chip technology to make compatible chips to allow its generic toner to work in Lexmark's printers.

Early 2003, Lexmark decided to sue SCC under the DMCA claiming SCC's compatible toner infringes on its copyright by reverse engineering its chip. The court ruled against Lexmark late October claiming that its access controls were not eligible for copyright protection, however Lexmark made an appeal. Unfortunately the appeal has now failed with the Sixth Circuit Appeals Court ruling against Lexmark.

The court found that the chip authentication could not be protected by copyright since the consumer gets access to the printer by purchasing it and not by a given piece of technology. The court said that the SCC's reverse engineering resulted in a legal replacement and also would be considered Fair Use, even if Lexmark's toner chip technology was given copyright protection, thus making it a double blow for them and anyone else using the DMCA to suppress competition.

The main purpose of the DMCA is to prevent the distribution of any technology that is aimed at circumventing a technological measure used to control access to a protected work. In this case, SCC's chip in its Lexmark compatible toner is only intended to allow the toner to be accepted in Lexmark printers and not intended to gain any other benefit. RTV71 submitting the following news via our news submit:

The DMCA has been used in many egregious ways, one of which we first reported in early 2003 when Lexmark attempted to use the DMCA's anti-circumvention provisions to eliminate competition in the aftermarket toner industry. As you may know, third party companies routinely reverse engineer toner cartridge designs for printers made by the likes of Lexmark, HP, and Brother (just to name a few). By doing so, they keep the market competitive, and they keep the printer companies from utterly gouging consumers for toner.

Lexmark sought to put an end to this by incorporating on-chip technology that checks for the validity of the toner cartridge (read: if it's made by Lexmark), and refuse to use anything else. Static Control Components (SCC hereafter) called Lexmark's bluff, and reverse engineered the chip so that their generic toner products could still be used with Lexmark printers. Lexmark responded by filing suit, using the DMCA as an attack dog. Lexmark was granted an injunction in March of 2003, but by late October, the courts ruled against them. Lexmark vowed to appeal, and here we are today.

In a word, the appeal failed. The US Court of Appeals for the Sixth Circuit ruled against Lexmark (decision here), and offered future guidance relating to the use of the DMCA. As you may recall, the DMCA is all about copyright, and it was Lexmark's (necessary) argument that their copyright was infringed upon by SCC when they reverse engineered the chip. The court, however, sided with the view that access controls are not typically eligible for copyright protection.

Read the full rather lengthy story here.

As SCC's chips on its toner are not considered violating the DMCA, it will be interesting to see if this affects other companies that assume the DMCA will protect their technological locks to prevent unauthorised components from being used. Another recent example is Real Networks reverse engineering Apple's iPod authentication to allow its tunes to be placed on the iPod. To compare this to the Lexmark case, think of the iPod being the printer, iPod authentication being the printer's authentication, Fairplay DRM being the toner's authentication chip and the tune being the toner. Real's tunes could be considered the compatible toner and its iPod compatible DRM could be considered the chip on the compatible toner in order for the printer to authenticate and accept it.

Going a bit further, now compare a game console to Lexmark's case. For example the games console being the printer, the Game console's authentication being the printer's authentication, CD's authentication system being the toner's chip and the game data being the toner. The backup CD could be considered the compatible toner and the mod-chip could be considered the chip to make the compatible toner work. There is not much difference in these two cases since the CD could be considered a consumable product like the toner since CDs do not last a lifetime. However it would be up to the user to make the backup copy since the game data itself may be subject to copyright protection unlike the actual toner since the generic toner may be different to the branded toner.

RTV71 wrote: This just blew a really large hole in the DMCA. Thanks Lexmark!

Source: ars technica