## Facts

- Lexmark manufactured printers and toner cartridges, including discounted “Prebate” cartridges sold with a single-use/return restriction.
- Lexmark embedded an authentication microchip in cartridges and designed printers to operate only when the cartridge chip successfully authenticated.
- Two printer software programs were implicated: the Toner Loading Program (TLP), which tracked toner usage, and the Printer Engine Program (PEP), which controlled printer functions.
- Static Control Components, Inc. (SCC) sold a “SMARTEK” chip that mimicked Lexmark’s authentication chip, allowing third-party remanufacturers to refurbish and resell used Lexmark cartridges.
- Lexmark sued SCC alleging (1) copyright infringement of the TLP and (2) two DMCA § 1201(a)(2) violations based on circumvention of technological measures protecting access to the TLP and the PEP.
- The district court granted Lexmark a preliminary injunction barring SCC from selling the SMARTEK chip, and SCC appealed.

## Issues

1. Whether Lexmark showed a likelihood of success that SCC infringed Lexmark’s copyright in the Toner Loading Program.
2. Whether Lexmark showed a likelihood of success that SCC violated 17 U.S.C. § 1201(a)(2) by circumventing a technological measure that effectively controls access to the Toner Loading Program.
3. Whether Lexmark showed a likelihood of success that SCC violated 17 U.S.C. § 1201(a)(2) by circumventing a technological measure that effectively controls access to the Printer Engine Program.

## Decision

- The Sixth Circuit vacated the preliminary injunction and remanded.
- The court held Lexmark was unlikely to succeed on its copyright claim concerning the TLP at the preliminary-injunction stage.
- The court held Lexmark was unlikely to succeed on its DMCA claim concerning “access” to the TLP because the authentication system controlled printer/cartridge operation, not access to the copyrighted work.
- The court likewise found Lexmark had not shown a sufficient likelihood of success on its DMCA theory tied to the PEP, for the same “access” reason on the record presented.

## Legal Principles

- Copyright protects original expression in computer programs, but not ideas, processes, systems, or methods of operation; functional constraints may leave so few expressive choices that protection effectively merges with the underlying function.
- Under § 1201(a)(2), liability requires circumvention of a technological measure that “effectively controls access” to a copyrighted work; a mechanism that conditions a device’s operation or restrains downstream product use is not necessarily an access control for the protected expression.
- Anti-circumvention law is not a substitute for patent-like control over functional interfaces or aftermarket parts where copyright does not otherwise confer exclusivity.
- A preliminary injunction requires a showing, among other factors, of a likelihood of success on the merits; failure to show likely success on the asserted statutory theories defeats the injunction request.

## Conclusion

The court vacated the preliminary injunction because Lexmark did not show a likelihood of success that SCC’s chip infringed protectable expression in the TLP or that the cartridge authentication scheme “effectively control[led] access” to the printer programs within the meaning of the DMCA.


Lexmark Int'l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004)