Other examples of attempts at creative use of the anti-circumvention provisions as a
sword are the following:
(i) Lexmark International, Inc. v. Static Control
Components, Inc.
Lexmark sold toner cartridges for use with its laser printers. The cartridges were of two
types: “regular” cartridges that could be refilled and remanufactured freely by third parties, and
“prebate” cartridges that could be used only once, and for which the consumer agreed, in the
form of a shrinkwrap agreement placed across the top of every prebate cartridge box, to return
the used cartridge to Lexmark for remanufacturing and recycling. Lexmark’s printers contained
two computer programs – a Printer Engine Program that controlled various printer operations
such as paper feed, paper movement, and motor control, and a Toner Loading Program of 37 to
55 bytes, which resided within microchips attached to the toner cartridges and enabled Lexmark
printers to approximate the amount of toner remaining in the cartridge.^1191
To protect the Printer Engine Programs and Toner Loading Programs, and to prevent
unauthorized toner cartridges from being used with Lexmark’s printers, Lexmark’s printers used
an authentication sequence that ran each time a toner cartridge was inserted into a Lexmark
printer, the printer was powered on, or whenever the printer was opened and closed. The
authentication sequence required the printer and the microchip on the cartridge to calculate a
Message Authentication Code (MAC) using a hashing algorithm, to communicate the MAC from
the microchip to the printer, and the printer to compare the MAC it calculated with the MAC it
received from the microchip. If the MAC calculated by the microchip matched that calculated
by the printer, the cartridge was authenticated and authorized for use by the printer, which in turn
enabled the Printer Engine Program to allow the printer to print and the Toner Loading Program
to monitor the toner status of the authenticated cartridge.^1192
The defendant Static Control Components (SCC) manufactured and sold a “SMARTEK”
microchip that was used to replace the microchip found in Lexmark’s toner cartridges. SCC
admitted that it copied verbatim Lexmark’s Toner Loading Program into its SMARTEK
microchips and that its SMARTEK microchips were designed to circumvent Lexmark’s
authentication sequence by mimicking the sequence performed by an original microchip on
Lexmark’s cartridges and the printer.^1193 Lexmark sued SCC for violation of the anti-
circumvention provisions of the DMCA as well as copyright infringement.
The District Court’s Ruling. On a motion for a preliminary injunction, the district court
ruled that SCC had violated the anti-circumvention provisions of the DMCA and committed
copyright infringement. With respect to the issue of infringement, although SCC admitted
copying the Toner Loading Program, SCC argued that the program was not copyrightable
because it was a functional “lock-out code” whose exact content was required as part of the
(^1191) Lexmark International, Inc. v. Static Control Components, Inc., 253 F. Supp. 2d 943, 948-49 (E.D. Ky. 2003).
(^1192) Id. at 952-53.
(^1193) Id. at 955-56.