Jeffrey Sutton

“ Lexmark argues alternatively that if independently created programs do exist, (1) they must have existed prior to the “reverse engineering” of Lexmark's Toner Loading Program, and (2) the technological means must be “necessary or absolutely needed” to enable interoperability of SCC's SMARTEK chip with Lexmark's Printer Engine Program. As to the first argument, nothing in the statute precludes simultaneous creation of an interoperability device and another computer program; it just must be “independently” created. ”

“ Franklin Computer, 714 F.2d at 1253 (discussing merger in context of copyrightability of computer operating system program) . When a work itself constitutes merely an idea, process or method of operation, or when any discernible expression is inseparable from the idea itself, or when external factors dictate the form of expression, copyright protection does not extend to the work. See Bateman, 79 F.3d at 1546 n.28 (“Compatibility and other functionality challenges to originality ... are applied so as to deny copyright protection to a particular work or portion of a work.”) ”

“ 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 the form in which it is described, explained, illustrated, or embodied in such work. ”

“ A person “may develop and employ technological means” that are “necessary” to enable interoperability. Id. § 1201 (f) (2) . And these technological means may be made available to others “solely for the purpose of enabling interoperability of an independently created computer program with other programs.” Id. § 1201 (f) (3) . All three defenses apply only when traditional copyright infringement does not occur and only when the challenged actions (in the case of the third provision) would not violate other “applicable law [s] .” ”

“ Here, the district court focused on the wrong market: it focused not on the value or marketability of the Toner Loading Program, but on Lexmark's market for its toner cartridges. Lexmark's market for its toner cartridges and the profitability of its Prebate program may well be diminished by the SMARTEK chip, but that is not the sort of market or value that copyright law protects. See Connectix, 203 F.3d at 607 (“Sony understandably seeks control over the market for devices that play games Sony produces or licenses. The copyright law, however, does not confer such a monopoly.”) ”

“ Manufacturers of interoperable devices such as computers and software, game consoles and video games, printers and toner cartridges, or automobiles and replacement parts may employ a security system to bar the use of unauthorized components. To “unlock” and permit operation of the primary device (i.e., the computer, the game console, the printer, the car) , the component must contain either a certain code sequence or be able to respond appropriately to an authentication process. ”

“ Nowhere in its deliberations over the DMCA did Congress express an interest in creating liability for the circumvention of technological measures designed to prevent consumers from using consumer goods while leaving the copyrightable content of a work unprotected. In fact, Congress added the interoperability provision in part to ensure that the DMCA would not diminish the benefit to consumers of interoperable devices “in the consumer electronics environment.” ”

“ To ensure that consumers adhere to the Prebate agreement, Lexmark uses an “authentication sequence” that performs a “secret handshake” between each Lexmark printer and a microchip on each Lexmark toner cartridge. Both the printer and the chip employ a publicly available encryption algorithm known as “Secure Hash Algorigthm-1” or “SHA-1,” which calculates a “Message Authentication Code” based on data in the microchip's memory. If the code calculated by the microchip matches the code calculated by the printer, the printer functions normally. ”

“ In refusing to consider whether “external factors such as compatibility requirements, industry standards, and efficiency” circumscribed the number of forms that the Toner Loading Program could take, the district court believed that the idea-expression divide and accompanying principles of merger and scènes à faire play a role only in the “substantial similarity” analysis and do not apply when the first prong of the infringement test (copyrightability) is primarily at issue. ”

“ But it is not the case that any profit-making purpose weighs against fair use, as the “crux” of this factor “is not whether the sole motive of the use is monetary gain.” Harper & Row, Publishers, Inc. ”

“ As Congress saw it, “copyrighted works will most likely be encrypted and made available to consumers once payment is made for access to a copy of the work. [People] will try to profit from the works of others by decoding the encrypted codes protecting copyrighted works, or engaging in the business of providing devices or services to enable others to do so.” ”

“ But even if the Toner Loading Program were a “lock-out code,” the district court believed copyright infringement had still taken place because “‘ [s] ecurity systems are just like any other computer program and are not inherently unprotectable.’” Id. ”