(iii) In re Certain Universal Transmitters for Garage
Door Openers
In addition to its lawsuit against Skylink, Chamberlain also filed an action in the
International Trade Commission to bar the importation of Skylink’s GDOs. That investigation
established a second ground beyond that of the district court’s ruling as to why Skylink had not
committed a violation of the DMCA. Specifically, in an Initial Determination concerning
temporary relief in the investigation that preceded the district court’s ruling, an administrative
law judge denied temporary relief on the ground that Skylink’s transmitters did not violate the
DMCA because they “do not circumvent Chamberlain’s copyrighted rolling code software
program, but instead send fixed identification code signals to Chamberlain’s GDOs that fall
outside of the copyrighted software. ... The fact that [Skylink’s] transmitters send a fixed
identification code that does not circumvent Chamberlain’s copyrighted software program
removes those products entirely from the purview of the DMCA, regardless of whether
Chamberlain warns its customers and Skylink that non-rolling code transmitters are
unauthorized.”^1261
After the district court’s ruling, Skylink moved to dismiss the ITC investigation on the
ground that Chamberlain’s claim was barred under res judicata by that ruling. Chamberlain
opposed the dismissal on the ground that there were new facts not before the district court –
namely, that Chamberlain had since changed its GDO users’ manuals to expressly warn
customers that use of non-rolling code transmitters would circumvent Chamberlain’s rolling
code security measure, and to make clear that customers were not authorized to access
Chamberlain’s operating software using non-rolling code transmitters.^1262 The administrative
law judge ruled that this fact was insufficient to avoid res judicata, because the fact could have
been asserted before the district court, since the administrative ruling on the request for
temporary relief issued before the district court acted.^1263 In addition, the administrative law
judge ruled that Chamberlain’s new owners’ manuals “impose no enforceable restrictions on
consumers even if they do ‘warn’ them that non-rolling code transmitters are ‘unauthorized.’
There are no negative consequences for a consumer who ignores the statement in Chamberlain’s
new manuals.”^1264 Accordingly, the administrative law judge determined that the investigation
should be terminated in its entirety and certified that determination to the Commission.^1265
(iv) Storage Technology Corporation v. Custom
Hardware Engineering & Consulting
In this case, the plaintiff Storage Technology Corporation (“StorageTek”) sold systems
for storing and retrieving very large amounts of computer data. StorageTek also serviced its
(^1261) In re Certain Universal Transmitters for Garage Door Openers, 70 U.S.P.Q.2d 1906, 1909 (I.T.C. 2004).
(^1262) Id. at 1907-08.
(^1263) Id. at 1909-10.
(^1264) Id. at 1910.
(^1265) Id.