of Lexmark International, Inc. v. Static Control Components, Inc.,^976 discussed in Section
II.G.1(o)(1) below. In that case, the district court ruled on a motion for a preliminary injunction
that Static Control violated Section 1201(a)(2) by distributing microchips that were used to
replace the microchip found in the plaintiff Lexmark’s toner cartridges. Static Control’s
microchip contained a computer program that circumvented Lexmark’s authentication sequence
that prevented the printer engine software on the Lexmark printer from allowing the printer to
operate with a refilled toner cartridge.
The district court in that case ruled that the exemptions of Section 1201(f) did not apply
because Static Control’s microchips could not be considered to contain independently created
computer programs, since the toner loading program on those microchips was an exact copy of
the toner loading program contained on Lexmark’s microchips.^977 However, suppose Static
Control had independently developed the computer program contained on its microchips.^978
Would the exemption of Section 1201(f)(2) apply? Static Control could argue yes, on the ground
that Section 1201(f)(2) permits it to “employ technological means [the computer program on its
microchip] to circumvent a technological measure [the authentication sequence implemented by
the Lexmark printer engine software] ... for the purpose of enabling interoperability of an
independently created computer program [again, the computer program on Static Control’s
microchip] with other programs [the Lexmark printer engine program].”
On the other hand, Lexmark could argue no, on the ground that the legislative history
indicates that the “technological means” referenced in Section 1201(f)(2) were meant to be
limited to reverse engineering “tools,” and the program on the Static Control microchip is not a
reverse engineering tool, but rather an application program. In sum, the issue is whether the
“independently created computer program” referenced in Section 1201(f)(2) can also constitute
the “technological means” of circumvention, or whether the “technological means” is limited to
the reverse engineering tool used to develop the independently created computer program in the
first place. Stated differently, the issue is whether Section 1201(f)(2) was meant to be narrow to
cover only the development and employment of special tools used to aid the reverse engineering
permitted by Section 1201(f)(1), or whether it was intended to permit more generalized
circumvention of technological measures by one computer program in order to interoperate with
another computer program whose technological protection measures are being circumvented by
(^976) 253 F. Supp. 2d 943, 948-49 (E.D. Ky. 2003), rev’d, 387 F.3d 522 (6th Cir. 2004), reh’g denied, 2004 U.S. App.
LEXIS 27422 (Dec. 29, 2004), reh’g en banc denied, 2005 U.S. App. LEXIS 3330 (6th Cir. Feb. 15, 2005).
(^977) As discussed further in Section II.G.1(a)(13)(i) below, the Sixth Circuit on appeal reversed the district court’s
grant of a preliminary injunction and remanded. Among other things, the Sixth Circuit questioned whether
Lexmark’s toner loading program was even copyrightable, ruling that on the preliminary injunction record
Lexmark had made inadequate showings with respect to originality of its toner loading program and whether
that program functioned as a “lock-out code” that had to be copied for functional purposes. Lexmark Int’l v.
Static Control Components, 387 F.3d 522, 536-41 (6th Cir. 2004), reh’g denied, 2004 U.S. App. LEXIS 27422
(Dec. 29, 2004), reh’g en banc denied, 2005 U.S. App. LEXIS 3330 (6th Cir. Feb. 15, 2005).
(^978) The Sixth Circuit also ruled that, whether or not the toner loading program on Static Control’s microchips was
independently created, the record established that there were other programs on Static Control’s microchips that
were independently created, and those computer programs also interoperated with Lexmark’s printer engine
program on Lexmark’s microchips. Id. at 550.