26 October 2004

Secret Handshakes

It appears that, after a string of copyright decisions infected with questionable reasoning, the Sixth Circuit may finally have come to its senses. (This is not to say that the results were always incorrect—only that the paths to reaching them often stretched reality past recognition.) In the Lexmark case, the Court of Appeals reversed the trial court's grant of a preliminary injunction to Lexmark and against Static Control, which manufactures chips necessary to make toner cartridges compatible with Lexmark printers. Lexmark had sued for copyright infringement, because the chips purportedly violate its copyright in the programs contained on them… and the DMCA's prohibition on reverse-engineering one's way through a digital-rights-management (DRM) system (17 U.S.C. chapter 12).

The court provided three explicit rationales for its rejection of the preliminary injunction:

[T]he district court concluded that, because the Toner Loading Program "could be written in a number of different ways," it was entitled to copyright protection. 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 scénes á 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. In taking this path, the district court relied on cases invoking Nimmer's pronouncement that the idea-expression divide “constitutes not so much a limitation on the copyrightability of works, as it is a measure of the degree of similarity that must exist between a copyrightable work and an unauthorized copy." And in concluding more generally that the copyrightability of a computer program turns solely on the availability of other options for writing the program, the court relied on several cases from other circuits. (slip op. at 9, citations omitted)

[G]iven the district court’s mistaken view of the legal standard for distinguishing protectable expression from unprotectable ideas, the constraints on the Toner Loading Program established by the evidence need to be reconsidered. To discern whether “originality” exists in the work, the court should ask whether the ideas, methods of operation and facts of the program could have been expressed in any form other than that chosen by the programmer, taking into consideration the functionality, compatability and efficiency demanded of the program. (slip op. at 10)

[T]he district court erred in assessing whether the Toner Loading Program functions as a lock-out code. Even if the constraints described by Dr. Goldberg—the programming language, the program size, efficiency concerns—did not dictate the content of the Toner Loading Program, the fact that it also functions as a lock-out code undermines the conclusion that Lexmark had a probability of success on its infringement claim. (slip op. at 11)

Lexmark Int'l, Inc. v. Static Control Components, Inc., No. 04–364 (26 Oct 04). Aside: Now, far be in from me to criticize eminent authorities on copyright law. Hell, who am I kidding? I eschew Nimmer whenever possible. True, the Nimmer treatise does collect a great many useful materials, and is largely viewed as the "gold standard" by the big firms that practice copyright law. However, those big firms almost never work for the actual creators of copyrightable works; and time and again, I have found that the Nimmer treatise tends to disfavor the law as it is for the law as it "should be" to favor large exploiters of copyrights in rapidly moving areas of technology. It thus does me a great deal of good to see both implicit and explicit criticism of a major premise in Nimmer on software copyright. None of this is to completely trash the Nimmer treatise; it is only to note a serious weakness in one aspect that has gotten far too little attention.

In any event, the Sixth Circuit went on to discuss the fair-use aspect of Static Control's use of the code (less than sixty bytes for either of the two "programs" at issue—far shorter than this sentence!). The Court of Appeals rejected two critical factors in the trial court's discussion of the issue, both of which amount to a reversal of existing Sixth Circuit law (both on grounds of superceding Supreme Court opinions, so there's no en banc requirement). First, the court noted that "commercial motive" is judged on the exploitation of the copyrighted work itself, not on the exploitation of a system containing that copyrighted work—especially, as here, when that copyrighted work is close to the line for proper protection in the first place. See slip op. at 14. Second (or, perhaps, fourth), "the relevant question likewise is whether the infringement impacted the market for the copyrighted work itself," id., not on the market for the system including the copyrighted work.

Thus, on core copyright matters, Lexmark took it in the shorts. It had one weapon remaining, however: Chapter 12. The Sixth Circuit went to great lengths to cite with approval the deCSS decision in the Ninth Circuit in describing what "access" means in Chapter 12 (slip op. at 16–18). Frankly, I don't buy the reasoning and distinction made here; I think that the Sixth Circuit's reasoning, which seems to me correct, actually requires disapproval of the deCSS decision. However, that's beside the point here; as the court notes,

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." (slip op. at 18, citation omitted)

The Sixth Circuit also rejected Lexmark's implicit attempt to rewrite the DMCA's "interoperability" provision into nothingness (without anyone so noting that such was the effect).

So much for the opinion of the court. How much would you pay for this less-than-paragon-of-judicial-reasoning? But wait! There's more! In a concurring opinion, Judge Merritt (who is usually more sensible than her colleagues on the Sixth Circuit concerning the practical realities of the "copyright industries") says that the opinion of the court didn't go far enough.

We should make clear that in the future companies like Lexmark cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods for themselves just by tweaking the facts of this case: by, for example, creating a Toner Loading Program that is more complex and "creative" than the one here, or by cutting off other access to the Printer Engine Program. The crucial point is that the DMCA forbids anyone from trafficking in any technology that "is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a [protected] work." The key question is the "purpose" of the circumvention technology. The microchip in SCC's toner cartridges is intended not to reap any benefit from the Toner Loading Program—SCC’s microchip is not designed to measure toner levels—but only for the purpose of making SCC’s competing toner cartridges work with printers manufactured by Lexmark. (slip op. at 21, citation omitted)

In other words, Judge Merritt would have the court make explicit that adding a copyrighted access program to an item that is not otherwise copyrighted does not invoke the DMCA.

Now how much would you pay? But wait! There's even more! In a partially dissenting opinion, Judge Feikens (sitting by designation) disagrees that the smaller of the two programs at issue is not copyrightable (see the first quotation in this blawg entry). He also disagrees with some of the reasoning on other issues, but reaches the same ultimate result. To say the least, this partial dissent clouds the waters here. Most of Judge Feikens' arguments are at least reasonable; that they rely perhaps too much on the conclusions in Nimmer does not make them unreasonable (even if I think them incorrect). Where I think he clearly errs, though, is in his rejection of the distinction made in the main opinion between a control device intended to protect copyrighted material and a control device intended to protect consumer goods. A detailed exegesis is for another time, though, as this entry has already gone on far too long.

So, in the end, what does this really mean? That the Supreme Court will probably take this matter up, because both sides can point to legitimate circuit splits that require resolution. On that point, Judge Feikens is certainly correct. This may, then, present the actual opportunity for examining the anticircumvention provisions of the DMCA in a context that doesn't involve Mickey Mouse. And it's about time.