Accordingly, the Sixth Circuit vacated the district court’s grant of a preliminary injunction and
remanded the case.^1218
The depth of the court’s concern about the policy implications of Lexmark’s proposed
broad reading for the scope of the anti-circumvention provisions is further illustrated by
comments made by two members of the panel in separate opinions. One judge, in a concurring
opinion, noted that the main point of the DMCA is “to prohibit the pirating of copyright-
protected works such as movies, music and computer programs. If we were to adopt Lexmark’s
reading of the statute, manufacturers could potentially create monopolies for replacement parts
simply by using similar, but more creative, lock-out codes.”^1219 He further stated that “Congress
did not intend to allow the DMCA to be used offensively in this manner, but rather only sought
to reach those who circumvented protective measures ‘for the purpose’ of pirating works
protected by the copyright statute.”^1220
Another judge, in an opinion concurring in part and dissenting in part, stated, “We agree
that the DMCA was not intended by Congress to be used to create a monopoly in the secondary
markets for parts or components of products that consumers have already purchased.”^1221 This
judge also argued that fair use should be a defense to an anti-circumvention violation, because
where fair use applies there would be no “right of a copyright owner” to be infringed by the
circumvention.^1222
By order entered Feb. 23, 2006, the parties stipulated to entry of summary judgment on
all DMCA claims and counterclaims in favor of Static Control Components. The order
preserved Lexmark’s right to appeal the order, as well as the Sixth Circuit’s interpretation of the
DMCA, after entry of final judgment on all issues in the cases.^1223
On remand from the Sixth Circuit, the district court found that neither party had
submitted new evidence that would undermine the Sixth Circuit’s applicability of facts to the law
with respect to the issue of the copyrightability of the Toner Loader Program. Accordingly, the
Sixth Circuit’s decision controlled, and the court ruled that the Toner Loader Program was
insufficiently original to be copyrightable.^1224 The court also held that, even if the Toner Loader
(^1218) Id. at 551.
(^1219) Id. at 552.
(^1220) Id.
(^1221) Id. at 553. The judge also noted a link in the legislative history between the anti-circumvention prohibitions and
the facilitation of copyright infringement. He quoted a House Report to the DMCA stating that Section
1201(b)(1) sought to prohibit “making or selling the technological means to overcome these protections and
thereby facilitate copyright infringement.” Id. at 564 (emphasis by the court) (quoting H.R. Rep. 105-796 (Oct.
8, 1998)).
(^1222) 387 F.3d at 562.
(^1223) See “Lexmark Stipulates to Judgment on DMCA Claims,” BNA’s Patent, Trademark & Copyright Journal
(Mar. 10, 2006) at 506.
(^1224) Static Control Components, Inc. v. Lexmark Int’l, Inc., 2007 U.S. Dist. LEXIS 36017 at *36 (E.D. Ky. Apr. 18,
2007).