Lexmark Wins Injunction in DMCA Case

The U.S. District Court in the Eastern District of Kentucky Thursday issued a preliminary injunction against a company accused of selling chips that bypass the printer technology of Lexmark .

The court ordered Static Control Components of Sanford, N.C. to “cease making, selling or otherwise trafficking” in the Smartek microchip. The processor is used in the remanufacturing of laser toner cartridges developed for the Lexmark T520/522 and T620/622 laser printers. District Court Judge Karl Forester said Lexmark is likely to prevail at trial on the merits of its copyright infringement and Digital Millennium Copyright Act (DMCA) claims.

“The court has no trouble accepting SCC’s claim that public policy generally favors competition. The court finds, however, that this general principle only favors legitimate competition. Public policy certainly does not support copyright infringement and violations of the DMCA in the name of competition,” Judge Karl Forester said in his opinion.

Lexington, Ky.-based Lexmark claimed in a suit filed in December that the Smartek microchips incorporated infringing copies of Lexmark’s copyrighted software and were being sold by Static Control to defeat Lexmark’s technological controls. The claim is that Smartek users could get unauthorized access to Lexmark’s software programs and the unauthorized remanufacturing of certain Lexmark toner cartridges.

Lexmark said it was very pleased with the court’s decision.

“We invest hundreds of millions of dollars annually in research and development to help ensure that we are providing the very best technologies and the finest services and support to our valued customers,” Lexmark general counsel Vincent Cole. “We believe that our printing solutions and services make us unique, and we intend to vigorously protect the intellectual property that helps to set us apart from our competition.”

While Static Control executives were not available for immediate comment, the company has filed a petition with the U.S. Copyright Office pleading its case.

The company is hoping the feds will exempt them on the basis of three counts including:

* Computer programs embedded in computer printers and toner cartridges and that control the interoperation and functions of the printer and toner cartridge.

* Computer programs embedded in a machine or product and which cannot be copied during the ordinary operation or use of the machine or product.

* Computer programs embedded in a machine or product connected thereto, but that do not otherwise control the performance, display or reproduction of copyrighted works that have an independent economic significance.

The comments for and against the proposed exemptions are being accepted until March 10, 2003.

If the U.S. Copyright Office grants the exemptions, the court is expected to lift the injunction.

Other computer and printer makers have been down this road before. Palo Alto, Calif.-based Hewlett-Packard has won a several cases in Europe against clone inkjet cartridge makers.

Lexmark is currently working on a joint product development, manufacturing and sales deal to produce printers for Dell Computer . The computer maker is hoping to sell printers with its PCs and servers. The first round of network printers to the home office products are expected in March and should come in two waves over the rest of the year.

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