Commentary: DMCA used to challenge aftermarket parts manufacturers

Technology has advanced at an incredible rate and will continue to do so. Such progress owes in large part to the proliferation of computers and their adaptation into practically every aspect of human interaction. Perhaps no other industry has experienced and benefited from technological advancements as much as the entertainment industry. Text, images, music and video can be created and distributed with amazing ease, clarity and efficiency. However, technology has made piracy easier, and it is a drastic problem.

Copyright owners have created technological measures to help stem piracy and have occasionally integrated access controls of one type or another in their works. Such measures, however, only present temporary challenges to hackers and others bent on piracy. Devices designed to circumvent such access controls are often developed.

Losses from piracy, in part, motivated Congress to pass the Digital Millennium Copyright Act (DMCA) 17 U.S.C. Section 1201 et seq., which includes provisions imposing liability for acts which had not theretofore been adequately covered under the Copyright Act. Under the DMCA, new liability arises for the following acts:

1) circumventing an access control measure in a copyrighted work;

2) trafficking in devices that circumvent an access control measure in a copyrighted work; and

3) trafficking in devices that enable one to circumvent a control measure in a copyrighted work intended to prevent a violation of one of the exclusive rights of a copyright holder, such as copying of the work.

While the aim of the DMCA is predominantly computer software, literary works, music, movies and other expression rich works, the statute's literal terms are applicable to other works as well. The reach of the statute, however, has been controversial.

It is important to note that the DMCA does not grant new property rights. Rather, it creates new liability for violations of existing rights. Recent cases have explored whether the DMCA is applicable in instances where a manufacturer seeks to prevent after-market competition in parts for its products which utilize certain access- control features for those parts. In neither case were any exclusive rights of copyright affected with respect to the underlying product itself.

In The Chamberlain Group Inc. vs. Skylink Technologies Inc., 381 F.3d 1178 (Fed. Cir. 2004), the Federal Circuit reviewed a manufacturer's DMCA claim against a competitor who marketed a replacement remote-control transmitter for use with the manufacturer's automatic garage door opener. The manufacturer's transmitter and receiver utilized software which prevented operation of the garage door opener drive mechanism unless the manufacturer's code system was used. The defendant's remote transmitter provided means to override manufacturer's access control means so that its device would be interoperable with manufacturer's garage door opener. The manufacturer thus alleged that defendant's marketing of its replacement transmitter constituted trafficking in circumvention devices that was used to override its access control and therefore liable under the DMCA.

In denying the manufacturer's claim, the court emphasized that the DMCA did not create any new property rights, only new liability for existing copyright violations. The court stated that the purchaser of manufacturer's garage door opener had the right to use whatever replacement equipment it wished, as no restrictions on the use of the garage door opener were placed by manufacturer on the purchaser at the time of sale. Accordingly, the alleged circumvention by defendant was not unauthorized, an element required for liability under the DMCA. The court acknowledged in a footnote, however, that the issue of whether the presence of access restrictions placed on licensed (as opposed to purchased) equipment would create liability under the DMCA for defendant's devices was unclear.

Another case involving an unsuccessful attempt by a manufacturer claiming DMCA violation arising from the sale of replacement parts by an after-market parts supplier is Lexmark International Inc. vs. Static Control Components Inc., 387 F.3d 522 (6th Cir. 2004). Lexmark is a printer manufacturer which sells toner ink cartridges for use with its own printers. It equips its toner cartridges with a program code necessary for communicating with the printer for running the printer program code for printer operation. Defendant supplier copied the program code from Lexmark's toner cartridges and integrated it into its own replacement toner cartridges to achieve interoperability with the Lexmark printer.

The court held that Lexmark's printer program code was not effectively protected by any access controls because the printer program code could be accessed without the use of the toner cartridge code and run by other means. Accordingly, defendant's toner cartridge was not a device that circumvented an access control, an element required for liability under the DMCA.

While these two cases dealt with limited fact scenarios in concluding that the DMCA was not violated by the circumvention of the manufacturer's access controls by defendants' replacement parts, they set the stage for further interpretations of the DMCA's scope. As these two cases suggest, courts should be mindful of potential antitrust implications unintentionally created by manufacturers' assertion of broad DMCA claims in attempting to foreclose competition in after-market parts by suppliers.

Glenn K. Robbins II is a partner with Spencer Fane Britt & Browne L.L.P. and is a licensed patent attorney who devotes his practice to all aspects of intellectual property law.

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