Lexmark Int'l, Inc. v. Static Control Components, Inc. - 387 F.3d 522 (6th Cir. 2004)

Rule:

In the copyright context, in ascertaining the "elusive boundary line" between idea and expression, between process and non-functional expression, courts have looked to two other staples of copyright law--the doctrines of merger and scenes a faire. Where the expression is essential to the statement of the idea, or where there is only one way or very few ways of expressing the idea, the idea and expression are said to have "merged." In these instances, copyright protection does not exist because granting protection to the expressive component of the work necessarily would extend protection to the work's uncopyrightable ideas as well. Where idea and expression are intertwined and where non-protectable ideas predominate, expression is not protected. For computer programs, if the patentable process is embodied inextricably in the line-by-line instructions of the computer program, then the process merges with the expression and precludes copyright protection. 

Facts:

This copyright dispute involves two computer programs, two federal statutes and three theories of liability. The first computer program, known as the "Toner Loading Program," calculates toner level in printers manufactured by Lexmark International. The second computer program, known as the "Printer Engine Program," controls various printer functions on Lexmark printers. Lexmark brought this action to enjoin the sale of SCC's computer chips and raised three theories of liability in doing so. Lexmark claimed that SCC's chip copied the Toner Loading Program in violation of the federal copyright statute. It claimed that SCC's chip violated the DMCA by circumventing a technological measure designed to control access to the Toner Loading Program. And it claimed that SCC's chip violated the DMCA by circumventing a technological measure designed to control access to the Printer Engine Program. After an evidentiary hearing, the district court decided that Lexmark had shown a likelihood of success on each claim and entered a preliminary injunction against SCC.

Issue:

Did the district court err in granting the preliminary injunction?

Answer:

Yes.

Conclusion:

Inter alia, the court held that the district court committed three legal errors in granting the injunction: (1) in concluding that because the toner control program could be written in a number of different ways, it was entitled to copyright protection; (2) by looking at the issues and evidence through the wrong frame of reference and concluding that the toner control program had sufficient originality to obtain copyright protection; and (3) in assessing whether the toner control program functioned as a lock-out code. Even if the constraints one expert witness described--programming language, program size, efficiency concerns--did not dictate the program's content, that the program also functioned as a lock-out code undermined the manufacturer's probability of success.