purposes of a preliminary injunction. Accordingly, the court entered a preliminary injunction
against the distribution of the SMARTEK microchips.^1202
The Sixth Circuit’s Ruling. On appeal, the Sixth Circuit reversed and remanded.^1203
Turning first to the issue of copyright infringement, the Sixth Circuit found the district court’s
ruling erroneous with respect to whether the Toner Loading Program constituted a “lock-out
code.” The court noted generally that “[t]o the extent compatibility requires that a particular
code sequence be included in [a] component device to permit its use, the merger and scenes a
faire doctrines generally preclude the code sequence from obtaining copyright protection.”^1204
The court noted that the Toner Loading Program served as input to a checksum operation
performed each time the printer was powered on or the printer door was opened and closed for
toner cartridge replacement. Specifically, after downloading a copy of the Toner Loading
Program to calculate toner levels, the Printer Engine Program ran the checksum calculation using
every data byte of the Toner Loading Program as input. The program then compared the result
of the calculation with a checksum value located elsewhere on Lexmark’s toner cartridge chip.
If any single byte of the Toner Loading Program was altered, the checksum value would not
match the checksum calculation result.^1205
In addition, the Sixth Circuit noted that, at least for purposes of a preliminary injunction,
the expert testimony established that it would be “computationally impossible” to modify the
checksum value without contextual information that the defendant did not have access to.
Accordingly, the checksum operation imposed a compatibility constraint that “justified SCC’s
copying of the Toner Loading Program.”^1206 Accordingly, the court concluded that, on the
preliminary injunction record, the Toner Loading Program was not copyrightable.^1207
With respect to the DMCA claims, the Sixth Circuit began its analysis by agreeing with
the district court and the Reimerdes case that there should be a presumption of irreparable harm
arising from demonstration of a likelihood of success on a DMCA claim.^1208 The court then
(^1202) Id. at 971, 974.
(^1203) Lexmark Int’l v. Static Control Components, Inc., 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).
(^1204) Id. at 536.
(^1205) Id. at 541.
(^1206) Id. at 542.
(^1207) Id. at 544. Because the court found the Toner Loading Program not to be copyrightable, it noted that it need not
decide whether copying of the same was a fair use. Nevertheless, the court noted its disagreement with the
district court’s fair use analysis, among other reasons because the copying was done for functional reasons. “In
copying the Toner Loading Program into each of its SMARTEK chips, SCC was not seeking to exploit or
unjustly benefit from any creative energy that Lexmark devoted to writing the program code. As in Kelly,
SCC’s chip uses the Toner Loading Program for a different purpose, one unrelated to copyright protection.
Rather than using the Toner Loading Program to calculate toner levels, the SMARTEK chip uses the content of
the Toner Loading Program’s data bytes as input to the checksum operation and to permit printer functionality.
Under these circumstances, it is far from clear that SCC copied the Toner Loading Program for its commercial
value as a copyrighted work – at least on the preliminary-injunction record we have before us.”Id.
(^1208) Id. at 533.