Lexmark Int'l V. Static Control Components - The District Court Ruling

The District Court Ruling

On December 30, 2002, Lexmark sued SCC in a federal court in Kentucky. The suit claimed that SCC had violated copyright law by copying the Toner Loading Program, and had violated the DMCA by circumventing the encrypted authentication sequence between the Lexmark cartridge chip and the printer.

On March 3, 2003, Judge Karl S. Forester granted a preliminary injunction to Lexmark, blocking SCC from distributing its cartridge chips.

On the copyright claim, the court found that the use of the Toner Loading Program was indeed a likely copyright violation, because the Toner Loading Program was not a "lock-out code" that SCC was entitled to copy under the DMCA, and because the Toner Loading Program could be rewritten in different ways (and therefore had enough creativity to qualify for copyright protection). The court also found that the Copyright Office's decision to grant copyright registration to the two programs showed that the programs were probably copyrightable. The court found that because of the complexity of the authentication system, SCC could not have known that it could bypass the authentication without using Lexmark's copyrighted program; but it held that this did not matter because "Innocent infringement, however, is still infringement." The court also held that fair use did not apply.

On the DMCA claims, the court found that the SCC microchip circumvented Lexmark's authentication sequence, and that the reverse engineering exception to the DMCA did not apply, because it only covers the independent creation of new programs that must interoperate with existing ones, and SCC did not create any new program.