John Feikens

“ We also agree that Plaintiff Lexmark failed to demonstrate a likelihood of success on the merits of success on the third count, which deals with the Printer Engine Program (PEP) (although I write to explain my own reasoning as to why that is, I also agree with the reasoning of my colleagues) . We agree that the Digital Millennium Copyright Act (DMCA) was not intended by Congress to be used to create a monopoly in the secondary markets for parts or components of products that consumers have already purchased. ”

“ The TLP at issue is not present in the printer at purchase. Instead, the consumer gains access to using it by purchasing the Prebate toner cartridge (which stores the programs in its microchip) . The Prebate toner cartridge is only sold under a special shrinkwrap agreement that requires that the cartridge be returned to Lexmark when it is empty and may not be re-filled by others for reuse. Since the consumer is only authorized to use the Prebate cartridge until the toner runs out, it follows that the license also blocks the consumer from using the TLP after that time. ”

“ Therefore, although my colleagues appear to believe that the checksum operation must conclude successfully for the printer to operate, I do not believe the record supports this finding. I believe there is uncontroverted evidence in the record that it is possible to manufacture a chip that never triggers the checksum sequence, and the printer can still operate—in fact, this is exactly what occurs with the non-Prebate cartridges. ”

“ My colleagues argue that Lexmark has introduced no evidence that option three, finding the off switch, was “less arduous” than option two, finding a working checksum. This is simply false. Lexmark's expert testified that it would take a “few days or a few weeks” to reverse engineer the one-bit “off switch” by “brute force,” assuming you did not know where the “off switch” was. JA 0954. Given this testimony, I think it is improper for my colleagues to decide that reverse engineering a working chip was impossible, instead of remanding this question to the district court. ”

“ However, I note that the DMCA explicitly leaves the defenses to copyright infringement, including the fair use doctrine, unaltered. 17 U.S.C. § 1201 (c) . Therefore, if the district court on remand were to find that the merger, scènes à faire, or fair use doctrine supplied an adequate defense to infringement, given the copying that went on in this case, I do not believe Plaintiff could meet its burden to show likelihood of success under 17 U.S.C. § 1201 (b) , because there would be no “right of a copyright owner” to prevent the TLP's use in this fashion. ”

“ My reasoning on this count is based on my belief that consumers did not have an implied license to use the copyrightable TLP beyond the first re-fill of the Prebate cartridge. With the assumption that the shrinkwrap agreement was valid and enforceable (I believe Lexmark can demonstrate a likelihood of success on that question [10] ) , I would conclude consumers' implied license to use the copyrighted TLP did not extend beyond the first re-fill of the Prebate cartridge. ”

“ Indus., Ltd., 9 F.3d 823, 838 (10th Cir. 1993) . Courts have recognized that a rare work may be entirely made up of scènes à faire, but many works will be a combination of scànes à faire and more original elements. ”

“ In addition, Lexmark offered the statement of another manufacturer of toner cartridges, who said it was not impossible to achieve “a 100 percent working solution” for compatibility with the printer (presumably the 100 percent figure includes access to a program that would accurately report when toner was running low) , although “it has become a much more difficult endeavor [...] ”

“ However, while my colleagues see the record as supporting only the finding of impossibility, I find the record decidedly mixed on the issue.
There are three ways to make a chip that achieves compatibility between a re-filled Prebate cartridge and the printers at issue: (1) copy Lexmark's chip (and therefore the TLP) verbatim; (2) replace the TLP with a different program and change the checksum value accordingly; or (3) turn the entire TLP sequence “off” with the flip of a single bit. Here, Defendant chose the first option. My colleagues rely on Dr. ”