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Lexmark's Request for Re-Hearing Denied
Tuesday, February 22 2005 @ 09:51 AM EST

You may remember that back in October, I told you about the Lexmark case. It, along with the Skylink case (the garage door opener case), was an attempt to stretch the DMCA. The 6th Circuit US Court of Appeals ruled against the company. Lexmark asked for a re-hearing, and it has just been denied. That leaves them with the choice of trying to get the US Supreme Court to give them a hearing on the relevant issues or to face the reality that their effort to control the aftermarket using the DMCA failed. The case isn't over, but the DMCA issue is, barring a Supreme Court review.

Here's what Static Control Components, SCC, the company on the other side of the case, said in its press release:

"This is a very gratifying decision," said SCC CEO Ed Swartz, on the latest setback for Lexmark. "We feel that the public interest has been served by a knowledgeable court to not allow a greedy OEM to use the law to perpetuate an electronic monopoly. Consumers and justice have been served."

On December 30, 2002, Lexmark filed a lawsuit against SCC. In the suit Lexmark claimed that SCC's Smartek 520/620 chips violated the Digital Millennium Copyright Act of 1998.

"We have asserted from the outset that this is a blatant misuse of the DMCA. The Sixth Circuit's ruling and the court's decision not to hear Lexmark's request for another hearing solidifies and supports our position that the DMCA was not intended to create aftermarket electronic monopolies," said Swartz, who pointed out that such monopolies could cost consumers billions of dollars each year.

According to SCC General Counsel William London, "The case is scheduled for trial in December of 2005 on what remains of Lexmark's claims, and on Static Control's claims against Lexmark for violating several state and federal antitrust and anticompetitive statutes.

The Lexmark case was about printers, about toner. Lexmark set it up so no other manufacturer's toner could work with Lexmark printers except its own, and it "protected" this scheme with some software code and then sued a rival under the DMCA for reverse engineering so its own toner would work with Lexmark printers. This court found that the DMCA is about preventing piracy, not enabling a monopolist seeking to enforce its will on a smaller rival.

I see a link to the SCO fiasco, because of what the Court of Appeals said in their ruling. I viewed SCO as also trying to extend copyright to cover ideas, and the Lexmark ruling says you can't. Of course, SCO never gives up, so they now claim it's all about contract control, but at the beginning, that wasn't the song they sang. Contract control is a separate analysis, because you can contract away your rights, if you are dumb as a rock, but when they began, I believed they intended to extend the reach of copyright. The trouble with flawed laws like the DMCA is, flawed individuals try to bend them to their flawed wills. Happily, we have a judiciary to block the worst and most egregious attempts.

Here's what the case was about, in the words of the judge who wrote the opinion for the Court of Appeals:

SUTTON, Circuit Judge. This copyright dispute involves two computer programs, two federal statutes and three theories of liability. The first computer program, known as the “Toner Loading Program,” calculates toner level in printers manufactured by Lexmark International. The second computer program, known as the “Printer Engine Program,” controls various printer functions on Lexmark printers.

The first statute, the general copyright statute, 17 U.S.C. § 101 et seq., has been with us in one form or another since 1790 and grants copyright protection to “original works of authorship fixed in any tangible medium of expression,” id. § 102(a), but does not “extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery,” id. § 102(b). The second federal statute, the Digital Millenium Copyright Act (DMCA), 17 U.S.C. § 1201 et seq., was enacted in 1998 and proscribes the sale of products that may be used to “circumvent a technological measure that effectively controls access to a work” protected by the copyright statute.

These statutes became relevant to these computer programs when Lexmark began selling discount toner cartridges for its printers that only Lexmark could re-fill and that contained a microchip designed to prevent Lexmark printers from functioning with toner cartridges that Lexmark had not re-filled. In an effort to support the market for competing toner cartridges, Static Control Components (SCC) mimicked Lexmark’s computer chip and sold it to companies interested in selling remanufactured toner cartridges.

Lexmark brought this action to enjoin the sale of SCC’s computer chips and raised three theories of liability in doing so. Lexmark claimed that SCC’s chip copied the Toner Loading Program in violation of the federal copyright statute. It claimed that SCC’s chip violated the DMCA by circumventing a technological measure designed to control access to the Toner Loading Program. And it claimed that SCC’s chip violated the DMCA by circumventing a technological measure designed to control access to the Printer Engine Program.

On the issue of ideas and whether they can be copyrighted:

But even if a work is in some sense “original” under § 102(a), it still may not be copyrightable because § 102(b) provides that “[i]n 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 [its] form.” 17 U.S.C. § 102(b). This provision embodies the common-law idea-expression dichotomy that distinguishes the spheres of copyright and patent law. “[U]nlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself.” Mazer v. Stein, 347 U.S. 201, 217 (1954); see also Baker v. Selden, 101 U.S. 99, 101–02 (1880) (explaining that while a book describing a bookkeeping system is worthy of copyright protection, the underlying method described is not); Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 703 (2d Cir. 1992) (“It is a fundamental principle of copyright law that a copyright does not protect an idea, but only the expression of the idea.”). While this general principle applies equally to computer programs, id.; see also House Report at 5667 (extending copyright protection to computer programs only “to the extent that they incorporate authorship in programmer’s expression of original ideas, as distinguished from ideas themselves”), the task of separating expression from idea in this setting is a vexing one, see Altai, 982 F.2d at 704 (“The essentially utilitarian nature of a computer program further complicates the task of distilling its idea from its expression.”); Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992); see also Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 819–20 (1st Cir. 1995) (Boudin, J., concurring). “[C]ompared to aesthetic works, computer programs hover even more closely to the elusive boundary line described in § 102(b).” Altai, 982 F.2d at 704.

In ascertaining this “elusive boundary line” between idea and expression, between process and nonfunctional expression, courts have looked to two other staples of copyright law—the doctrines of merger and scènes à faire. Where the “expression is essential to the statement of the idea,” CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61, 68 (2d Cir. 1994); see also Lotus Dev., 49 F.3d at 816 (“If specific words are essential to operating something, then they are part of a ‘method of operation’ and, as such, are unprotectable.”), or where there is only one way or very few ways of expressing the idea, Warren Publ’g, Inc. v. Microdos Data Corp., 115 F.3d 1509, 1519 n.27 (11th Cir. 1997), the idea and expression are said to have “merged.” In these instances, copyright protection does not exist because granting protection to the expressive component of the work necessarily would extend protection to the work’s uncopyrightable ideas as well. See Gates Rubber Co. v. Bando Chem. Indus., Ltd.,, 9 F.3d 823, 838 (10th Cir. 1993); see also Murray Hill Publ’ns, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 319 n.2 (6th Cir. 2004) (noting that where idea and expression are intertwined and where non-protectable ideas predominate, expression is not protected); see generally Nimmer § 13.03[B][3]. For computer programs, “if the patentable process is embodied inextricably in the line-by-line instructions of the computer program, [ ] then the process merges with the expression and precludes copyright protection.” Atari I, 975 F.2d at 839–40; see, e.g., PRG-Schultz Int’l, Inc. v. Kirix Corp., No. 03 C 1867, 2003 WL 22232771, at *4 (N.D. Ill. Sept. 22, 2003) (determining that copyright infringement claim failed because expression merged with process in computer software that performed auditing tasks).

For similar reasons, when external factors constrain the choice of expressive vehicle, the doctrine of “scènes à faire”—“scenes,” in other words, “that must be done”—precludes copyright protection. See Twentieth Century Fox Film, 361 F.3d at 319–20; see generally Nimmer § 13.03[B][4]. In the literary context, the doctrine means that certain phrases that are “standard, stock, . . . or that necessarily follow from a common theme or setting” may not obtain copyright protection. Gates Rubber, 9 F.3d at 838. In the computer-software context, the doctrine means that the elements of a program dictated by practical realities—e.g., by hardware standards and mechanical specifications, software standards and compatibility requirements, computer manufacturer design standards, target industry practices, and standard computer programming practices—may not obtain protection. Id. (citing case examples); see Sega Enters., 977 F.2d at 1524 (“To the extent that a work is functional or factual, it may be copied.”); Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1473 (9th Cir. 1992) (affirming district court’s finding that “[p]laintiffs may not claim copyright protection of an . . . expression that is, if not standard, then commonplace in the computer software industry”). As “an industry-wide goal,” programming “[e]fficiency” represents an external constraint that figures prominently in the copyrightability of computer programs. Altai, 982 F.2d at 708.

Generally speaking, “lock-out” codes fall on the functional-idea rather than the original-expression side of the copyright line. 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. To the extent compatibility requires that a particular code sequence be included in the component device to permit its use, the merger and scènes à faire doctrines generally preclude the code sequence from obtaining copyright protection. See Sega Enters., 977 F.2d at 1524 (“When specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to infringement.”) (quoting National Commission on New Technological Uses of Copyrighted Works, Final Report 20 (1979)) (emphasis added); Atari Games Corp. v. Nintendo of Am., Inc., Nos. 884805 & 89-0027, 1993 WL 207548, at *1 (N.D. Cal. May 18, 1993) (“Atari III”) (“Program code that is strictly necessary to achieve current compatibility presents a merger problem, almost by definition, and is thus excluded from the scope of any copyright.”).

In trying to discern whether these doctrines apply, courts tend to “focus on whether the idea is capable of various modes of expression.” Mason v. Montgomery Data, Inc., 967 F.2d 135, 138 (5th Cir. 1992) (quoting Franklin Computer, 714 F.2d at 1253); Atari I, 975 F.2d at 840 (“The unique arrangement of computer program expression which generates [the] data stream does not merge with the process so long as alternate expressions are available.”). The question, however, is not whether any alternatives theoretically exist; it is whether other options practically exist under the circumstances. See Altai, 982 F.2d at 708 (“While, hypothetically, there might be a myriad of ways in which a programmer may effectuate certain functions within a program . . . efficiency concerns may so narrow the practical range of choice as to make only one or two forms of expression workable options.”); Atari I, 975 F.2d at 840 (noting that “no external factor dictated the bulk of the program” and finding the program copyrightable). In order to characterize a choice between alleged programming alternatives as expressive, in short, the alternatives must be feasible within real-world constraints. . . .

One last principle applies here. Even if the prerequisites for infringement are met—the copyright is valid and SCC copied protectable elements of the work—Congress has established a fair use defense to infringement claims to ensure that copyright protection advances rather than thwarts the essential purpose of copyright: “[t]o promote the Progress of Science and useful Arts.” U.S. Const. art. I, § 8, cl. 8; see also Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994). Congress has permitted others to use copyright-protected works, “including . . . by reproduction,” when courts determine the use to be “fair” according to a non-exhaustive list of factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. With respect to computer programs, “fair use doctrine preserves public access to the ideas and functional elements embedded in copyrighted computer software programs.” Sony Computer Entm’t, Inc. v. Connectix Corp., 203 F.3d 596, 603 (9th Cir. 2000).

SCO wanted this not to be so, I believe, and hoped to use their case to try to establish that ideas in software can be copyrighted. Of course, their copyright position crumbled underneath their feet, but I have always believed that was part of their strategy and their goal. If so, that dream has died.

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