Lexmark

LEXMARK INTERNATIONAL, INC, v. STATIC CONTROL COMPONENTS, INC.,

2004 U.S. App. LEXIS 22250 (6^th Cir. 2004)

SUTTON, Circuit Judge. 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.

The Digital Millenium Copyright Act (DMCA), 17 U.S.C. § 1201 et seq., was enacted in 1998 and proscribes the sale of products that may be used to "circumvent a technological measure that effectively controls access to a work" protected by the copyright statute.

The statute became relevant to these computer programs when Lexmark began selling discount toner cartridges for its printers that only Lexmark could re-fill and that contained a microchip designed to prevent Lexmark printers from functioning with toner cartridges that Lexmark had not re-filled. In an effort to support the market for competing toner cartridges, Static Control Components (SCC) mimicked Lexmark's computer chip and sold it to companies interested in selling remanufactured toner cartridges.

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. As we view Lexmark's prospects for success on each of these claims differently, we vacate the preliminary injunction and remand the case for further proceedings.

The Parties. Headquartered in Lexington, Kentucky, Lexmark is a leading manufacturer of laser and inkjet printers and has sold printers and toner cartridges for its printers since 1991. Lexmark is a publicly traded corporation and reported $ 4.8 billion in revenue for 2003.

Static Control Components is a privately held company headquartered in Sanford, North Carolina. Started in 1987, it currently employs approximately 1,000 workers and makes a wide range of technology products, including microchips that it sells to third-party companies for use in remanufactured toner cartridges.

The Two Computer Programs. The first program at issue is Lexmark's "Toner Loading Program," which measures the amount of toner remaining in the cartridge based on the amount of torque (rotational force) sensed on the toner cartridge wheel.. The Toner Loading Program relies upon eight program commands -- "add," "sub" (an abbreviation for subtract), "mul" (multiply), "pct" (take a percent), "jump," "if," "load," and "exit" -- to execute one of several mathematical equations that convert the torque reading into an approximation of toner level. If the torque is less than a certain threshold value, the program executes one equation to calculate the toner level, and if the torque equals or exceeds that threshold, the program executes a different equation to calculate the toner level. The exact code of the Toner Loading Program varies slightly for each printer model. The Toner Loading Program is located on a microchip contained in Lexmark's toner cartridges.

The second program is Lexmark's "Printer Engine Program." The Printer Engine Program occupies far more memory than the Toner Loading Program and translates into over 20 printed pages of program commands. The program controls a variety of functions on each printer -- e.g., paper feed and movement, and printer motor control. Unlike the Toner Loading Program, the Printer Engine Program is located within Lexmark's printers.

Lexmark obtained Certificates of Registration from the Copyright Office for both programs.

Lexmark's Prebate and Non-Prebate Cartridges. Lexmark markets two types of toner cartridges for its laser printers: "Prebate" and "Non-Prebate." Prebate cartridges are sold to business consumers at an up-front discount. In exchange, consumers agree to use the cartridge just once, then return the empty unit to Lexmark; a "shrink-wrap" agreement on the top of each cartridge box spells out these restrictions and confirms that using the cartridge constitutes acceptance of these terms. Non-Prebate cartridges are sold without any discount, are not subject to any restrictive agreements and may be re-filled with toner and reused by the consumer or a third-party remanufacturer.

To ensure that consumers adhere to the Prebate agreement, Lexmark uses an "authentication sequence" that performs a "secret handshake" between each Lexmark printer and a microchip on each Lexmark toner cartridge. Both the printer and the chip employ a publicly available encryption algorithm known as "Secure Hash Algorigthm-1" or "SHA-1," which calculates a "Message Authentication Code" based on data in the microchip's memory. If the code calculated by the microchip matches the code calculated by the printer, the printer functions normally. If the two values do not match, the printer returns an error message and will not operate, blocking consumers from using toner cartridges that Lexmark has not authorized.

SCC's Competing Microchip. SCC sells its own microchip -- the "SMARTEK" chip -- that permits consumers to satisfy Lexmark's authentication sequence each time it would otherwise be performed, i.e., when the printer is turned on or the printer door is opened and shut. SCC's advertising boasts that its chip breaks Lexmark's "secret code" (the authentication sequence), which "even on the fastest computer available today . . . would take Years to run through all of the possible 8-byte combinations to break." SCC sells these chips to third-party cartridge remanufacturers, permitting them to replace Lexmark's chip with the SMARTEK chip on refurbished Prebate cartridges. These recycled cartridges are in turn sold to consumers as a low-cost alternative to new Lexmark toner cartridges.

Each of SCC's SMARTEK chips also contains a copy of Lexmark's Toner Loading Program, which SCC claims is necessary to make its product compatible with Lexmark's printers. The SMARTEK chips thus contain an identical copy of the Toner Loading Program that is appropriate for each Lexmark printer, and SCC acknowledges that it "slavishly copied" the Toner Loading Program "in the exact format and order" found on Lexmark's cartridge chip.

The parties agree that Lexmark's printers perform a second calculation independent of the authentication sequence. After the authentication sequence concludes, the Printer Engine Program downloads a copy of the Toner Loading Program from the toner cartridge chip onto the printer in order to measure toner levels. Before the printer runs the Toner Loading Program, it performs a "checksum operation," a "commonly used technique" to ensure the "integrity" of the data downloaded from the toner cartridge microchip. Under this operation, the printer compares the result of a calculation performed on the data bytes of the transferred copy of the Toner Loading Program with the "checksum value" located elsewhere on the toner cartridge microchip. If the two values do not match, the printer assumes that the data was corrupted in the program download, displays an error message and ceases functioning. If the two values do match, the printer continues to operate.

The district court rejected each of the defenses asserted by SCC. First, the district court determined that the Toner Loading Program was not a "lock-out code" (and unprotectable because its elements are dictated by functional compatibility requirements) since "the use of any Toner Loading Program could still result in a valid authentication sequence and a valid checksum." But even if the Toner Loading Program were a "lock-out code," the district court believed copyright infringement had still taken place because "'security systems are just like any other computer program and are not inherently unprotectable.'" Second, the court rejected SCC's fair use defense in view of the commercial purpose of the copying, the wholesale nature of the copying and the effect of the copying on the toner cartridge market. Third, the district court rejected SCC's argument that Lexmark was "misusing" the copyright laws "to secure an exclusive right or limited monopoly not expressly granted by copyright law."

The district court next determined that Lexmark had established a likelihood of success on its two DMCA claims, one relating to the Toner Loading Program, the other relating to the Printer Engine Program. Observing that the anti-trafficking provision of the DMCA, 17 U.S.C. § 1201(a)(2), "prohibits any product or device that circumvents a technological measure that prevents unauthorized access to a copyrighted work," the district court concluded that Lexmark had established a likelihood of success that SCC's SMARTEK chip did this very thing. In the district court's view, Lexmark's authentication sequence (not the checksum calculation) constitutes a "technological measure" that "effectively controls access" to two copyrighted works -- the Toner Loading Program and the Printer Engine Program. The authentication sequence, it determined, "controls access" because it "controls the consumer's ability to make use of these programs." Because SCC designed the SMARTEK chip to circumvent Lexmark's authentication sequence, because circumvention was the sole commercial purpose of the SMARTEK chip and because SCC markets these chips as performing that function, the court reasoned that SCC likely had violated the DMCA's prohibitions on marketing circumvention devices. See 17 U.S.C. 1201(a)(2).

Finally, the district court determined that the DMCA's "reverse engineering" exception to liability did not apply. Under the exception, circumvention devices may be produced and made available to others "solely for the purpose of enabling interoperability of an independently created program with other programs." 17 U.S.C. § 1201(f)(3). The court deemed this defense inapplicable because "SCC's SMARTEK microchips cannot be considered independently created computer programs."

Because Lexmark had established a likelihood of success on the merits, the district court presumed irreparable harm, and concluded that the public interest would favor an injunction against SCC. After weighing other potential hardships, the district court concluded that the preliminary injunction should issue.

II.

As this case comes to the court, the parties agree that computer programs may be entitled to copyright protection as "literary works" under 17 U.S.C. § 101 and may be protected from infringement under 17 U.S.C. § 106. And that is true with respect to a computer program's object code (the binary code -- a series of zeros and ones -- that computers can read) and its source code (the spelled-out program commands that humans can read). See 17 U.S.C. § 101 (defining "computer programs" as "sets of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result"); 17 U.S.C. § 117(a) (describing "limitations on exclusive rights" for "computer programs" and providing that infringement does not occur when a copy of a computer program is made either "as an essential step in the utilization of the computer program" or "for archival purposes"); H.R. Rep. No. 1476(1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667 [hereinafter House Report] ("The term 'literary works'. . . includes . . . computer programs to the extent that they incorporate authorship in the programmer's expression of original ideas, as distinguished from the ideas themselves

The parties also share common ground when it comes to most of the general principles of copyright infringement applicable to this case. A plaintiff may establish a claim of copyright infringement by showing (1) ownership of a valid copyright in the computer program at issue (here, the Toner Loading Program) and (2) that the defendant copied protectable elements of the work.

Lexmark claims copyright protection in, and infringement of, the code that composes its Toner Loading Program. It has not alleged that SCC copied any other portion of its chip, including any of the data on which the SHA-1 algorithm -- the authentication sequence or "secret handshake" -- appear. Presumably that is because SCC replaced Lexmark's SHA-1 function with a different publicly available encryption program to enable interoperability of its chip with Lexmark's printers. Burchette. Nor does it matter whether SCC copied the Toner Loading Program knowingly or innocently because copyright infringement does not have a scienter requirement. See Repp v. Webber, 132 F.3d 882, 889 (2d Cir. 1997). Finally, when it comes to the merits of the infringement claim, the parties primarily debate whether the Toner LoadingProgram satisfies the originality requirement (prong one), as distinct from whether any copying by SCC is substantially similar to the Lexmark chip (prong two). That is because the parties agree that SCC's SMARTEK chip copied all aspects of the Toner Loading Program.

The district court erred in assessing whether the TonerLoading Program functions as a lock-out code. Even if the constraints such as the programming language, the program size, efficiency concerns did not dictate the content of the Toner Loading Program, the fact that it also functions as a lock-out code undermines the conclusion that Lexmark had a probability of success on its infringement claim.

The Toner Loading Program, recall, serves as input to the checksum operation that is performed each time the printer is powered on or the printer door is opened and closed (i.e., for toner cartridge replacement). After downloading a copy of the Toner Loading Program to calculate toner levels, the Printer Engine Program runs a calculation -- the checksum -- using every data byte of the Toner Loading Program as input. The program then compares the result of that calculation with a "checksum value" that is located elsewhere on Lexmark's toner cartridge chip. If any single byte of the Toner Loading Program is altered, the checksum value will not match the checksum calculation result. Only if the checksum value is correspondingly changed to accommodate any alterations in the data bytes will the printer function.

In addition to its general conclusion that external constraints on the program were not relevant, the district court concluded that the checksum operation did not operate as a strict constraint on the content of the Toner Loading Program because "SCC's identical copying of Lexmark's Toner Loading Programs went beyond that which was necessary for compatibility." According to the district court, the program could be altered rather simply, even in view of the checksum operation, because reasonable trial and error of no more than 256 different data combinations would have enabled SCC to discover and encode the correct checksum value on its chip. In reaching this conclusion, the court downplayed the significance testimony regarding the importance of contextual information to the ease or difficulty of guessing the correct checksum value.

The difficulty of deriving the proper checksum value and the corresponding degree to which the checksum operation acts as a constraint on the content of the bytes comprising the Toner Loading Program may be an open question at the permanent injunction phase. But for purposes of the preliminary injunction, the unchallenged testimony that it would be "computationally impossible" to modify the checksum value without contextual information suffices to establish that the checksum operation imposes a compatibility constraint in the most literal sense possible: if any single byte of the Toner Loading Programis altered, the printer will not function. On this record, pure compatibility requirements justified SCC's copying of the Toner Loading Program.

IV.

Enacted in 1998, the DMCA has three liability provisions. The statute first prohibits the circumvention of "a technological measure that effectively controls access to a work protected [by copyright]." 17 U.S.C. § 1201(a)(1). The statute then prohibits selling devices that circumvent access-control measures:

No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that-

(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a [copyrighted work];

(B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a [copyrighted work]; or

(C) is marketed by that person or another acting in concert with that person with that person's knowledge for use in circumventing a technological measure that effectively controls access [*55] to a [copyrighted work].

Id. § 1201(a)(2). The statute finally bans devices that circumvent "technological measures" protecting "aright" of the copyright owner. Id. § 1201(b). The last provision prohibits devices aimed at circumventing technological measures that allow some forms of "access" but restrict other uses of the copyrighted work, see Universal City Studios, Inc. v. Corley, 273 F.3d 429, 441 (2d Cir. 2001); United States v. Elcom Ltd., 203 F. Supp. 2d 1111, 1120 (N.D. Cal. 2002), such as streaming media, which permits users to view or watch a copyrighted work but prevents them from downloading a permanent copy of the work.

The statute also contains three "reverse engineering" defenses. A person may circumvent an access control measure "for the sole purpose of identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs, and that have not previously been readily available to [that person]. " 17 U.S.C. § 1201(f)(1). A person "may develop and employ technological means" that are "necessary" to enable interoperability. Id. § 1201(f)(2). And these technological means may be made available to others "solely for the purpose of enabling interoperability of an independently created computer program with other programs." Id. § 1201(f)(3). All three defenses apply only when traditional copyright infringement does not occur and only when the challenged actions (in the case of the third provision) would not violate other "applicable laws."Id.

In filing its complaint and in its motion for a preliminary injunction, Lexmark invoked the second liability provision -- the ban on distributing devices that circumvent access-control measures placed on copyrighted works. See id. § 1201(a)(2). According to Lexmark, SCC's SMARTEK chip is a "device" marketed and sold by SCC that "circumvents" Lexmark's "technological measure" (the SHA-1 authentication sequence, not the checksum operation), which "effectively controls access" to its copyrighted works (the Toner Loading Program and Printer Engine Program). Lexmark claims that the SMARTEK chip meets all three tests for liability under § 1201(a)(2): (1) the chip "is primarily designed or produced for the purpose of circumventing" Lexmark's authentication sequence, 17 U.S.C. § 1201(a)(2)(A); (2) the chip "has only limited commercially significant purpose or use other than to circumvent" the authentication sequence,id. § 1201(a)(2)(B); and (3) SCC "markets" the chip "for use in circumventing" the authentication sequence, id. § 1201(a)(2)(C). The district court agreed and concluded that Lexmark had shown a likelihood of success under all three provisions.

We initially consider Lexmark's DMCA claim concerning the Printer Engine Program, which (the parties agree) is protected by the general copyright statute. In deciding that Lexmark's authentication sequence "effectively controls access to a work protected under [the copyright provisions]," the district court relied on a definition in the DMCA saying that a measure "effectively controls access to a work" if, "in the ordinary course of operation," it "requires the application of information, or a process or treatment, with the authority of the copyright owner, to gain access to the work." 17 U.S.C. § 1201(a)(3). Because Congress did not explain what it means to "gain access to the work," the district court relied on the "ordinary, customary meaning" of "access": "the ability to enter, to obtain, or to make use of," (quoting Merriam-Webster's Collegiate Dictionary 6 (10th ed. 1999)). Based on this definition, the court concluded that "Lexmark's authentication sequence effectively 'controls access' to the Printer EngineProgram because it controls the consumer's ability to make use of these programs."

We disagree. It is not Lexmark's authentication sequence that "controls access" to the PrinterEngine Program. See 17 U.S.C. § 1201(a)(2). It is the purchase of a Lexmark printer that allows "access" to the program. Anyone who buys a Lexmark printer may read the literal code of the Printer EngineProgram directly from the printer memory, with or without the benefit of the authentication sequence, and the data from the program may be translated into readable source code after which copies may be freely distributed. No security device, in other words, protects access to the PrinterEngine Program Code and no security device accordingly must be circumvented to obtain access to that program code.

The authentication sequence, it is true, may well block one form of "access" -- the "ability to . . . make use of" the Printer Engine Program by preventing the printer from functioning. But it does not block another relevant form of "access" -- the "ability to [] obtain" a copy of the work or to "make use of" the literal elements of the program (its code). Because the statute refers to "controlling access to a work protected under this title," it does not naturally apply when the "work protected under this title" is otherwise accessible. Just as one would not say that a lock on the back door of a house "controls access" to a house whose front door does not contain a lock and just as one would not say that a lock on any door of a house "controls access" to the house after its purchaser receives the key to the lock, it does not make sense to saythat this provision of the DMCA applies to otherwise-readily-accessible copyrighted works. Add to this the fact that the DMCA not only requires the technological measure to "control[] access" but also requires the measure to control that access "effectively," 17 U.S.C. § 1201(a)(2), and it seems clear that this provision does not naturally extend to a technological measure that restricts one form of access but leaves another route wide open. See also id. § 1201(a)(3) (technological measure must "require[] the application of information, or a process or a treatment . . . to gain access to the work") (emphasis added). See Chamberlain Group, Inc. v. Skylink Techs., Inc.., 381 F.3d 1178, 1198, 2004 U.S. App. LEXIS 18513, at *52 (Fed. Cir. Aug. 31, 2004)

Nor are we aware of any cases that have applied this provision of the DMCA to a situation where the access-control measure left the literal code or text of the computer program or data freely readable. And several cases apply the provision in what seems to us its most natural sense. See, e.g., 321 Studios v. Metro Goldwyn Mayer Studios, Inc., 307 F. Supp. 2d 1085, 1095 (N.D. Cal. 2004) (deciding that the "CSS" encryption program, which prevents viewing of DVD movies and copying of the data encoded on the DVD, effectively controls access to copyrighted DVD movies); Universal City Studios, Inc. v. Reimerdes,111 F. Supp. 2d 294, 318 (S.D.N.Y. 2000), aff'd sub nom., Corley, 273 F.3d 429; Sony Computer Entm't Am. Inc. v. Gamemasters, 87 F. Supp. 2d 976, 987 (N.D. Cal. 1999) (deciding that technological measure on PlayStation game console, which prevented unauthorized games from being played, effectively controlled access to copyrighted CD-ROM video games, which the facts of the case do not describe as either encrypted or unencrypted).

Lexmark defends the district court's contrary ruling on several grounds. First, it contends that SCC waived this argument by failing to raise it in the district court. The premise of this argument remains unclear. Below, SCC indeed claimed that the DMCA by its terms did not cover its conduct. While SCC may not have anticipated the district court's specific reliance on the "to make use of" definition of "access" in its preliminary injunction ruling, the district court's ruling also does not say that SCC conceded the point. Under these circumstances, it is well within our discretion to allow SCC to explain why the district court's resolution of this purely legal question -- an interpretation of a statute -- is mistaken.

Second, Lexmark counters that several cases have embraced a "to make use of" definition of "access" in applying the DMCA. While Lexmark is partially correct, these cases (and others as well) ultimately illustrate the liability line that the statute draws and in the end explain why access to the Printer Engine Program is not covered.

In the essential setting where the DMCA applies, the copyright protection operates on two planes: in the literal code governing the work and in the visual or audio manifestation generated by the code's execution. For example, the encoded data on CDs translates into music and on DVDs into motion pictures, while the program commands in software for video games or computers translate into some other visual and audio manifestation. In the cases upon which Lexmark relies, restricting "use" of the work means restricting consumers from making use of the copyrightable expression in the work. The DMCA applies in these settings when the product manufacturer prevents all access to the copyrightable material and the alleged infringer responds by marketing a device that circumvents the technological measure designed to guard access to the copyrightable material.

The copyrightable expression in the Printer Engine Program, by contrast, operates on only one plane: in the literal elements of the program, its source and object code. Unlike the code underlying video games or DVDs, "using" or executing the Printer Engine Program does not in turn create any protected expression. Instead, the program's output is purely functional: the Printer Engine Program "controls a number of operations" in the Lexmark printer such as "paper feed[,] paper movement[,] [and] motor control And unlike the code underlying video games or DVDs, no encryption or other technological measure prevents access to the Printer Engine Program. Presumably, it is precisely because the Printer Engine Program is not a conduit to protectable expression that explains why Lexmark (or any other printer company) would not block access to the computer software that makes the printer work. Because Lexmark's authentication sequence does not restrict access to this literal code, the DMCA does not apply.

Lexmark next argues that access-control measures may "effectively control access" to a copyrighted work within the meaning of the DMCA even though the measure may be evaded by an "'enterprising end-user.'" Doubtless, Lexmark is correct that a precondition for DMCA liability is not the creation of an impervious shield to the copyrighted work. Otherwise, the DMCA would apply only when it is not needed.

But our reasoning does not turn on the degree to which a measure controls access to a work. It turns on the textual requirement that the challenged circumvention device must indeed circumvent something, which did not happen with the Printer Engine Program. Because Lexmark has not directed any of its security efforts, through its authentication sequence or otherwise, to ensuring that its copyrighted work (the Printer Engine Program) cannot be read and copied, it cannot lay claim to having put in place a "technological measure that effectively controls access to a work protected under [the copyright statute]."17 U.S.C. § 1201(a) (2) (B).

Nor can Lexmark tenably claim that this reading of the statute fails to respect Congress's purpose in enacting it. Congress enacted the DMCA to implement the Copyright Treaty of the World Intellectual Property Organization, and in doing so expressed concerns about the threat of "massive piracy" of digital works due to "the ease with which [they] can be copied and distributed worldwide virtually instantaneously." S. Rep. No. 105-190, at 8 (1998). As Congress saw it, "copyrighted works will most likely be encrypted and made available to consumers once payment is made for access to a copy of the work. [People] will try to profit from the works of others by decoding the encrypted codes protecting copyrighted works, or engaging in the business of providing devices or services to enable others to do so." H.R. Rep. No. 105-551, pt. 1, at 10. Backing with legal sanctions "the efforts of copyright owners to protect their works from piracy behind digital walls such as encryption codes or password protections," Congress noted, would encourage copyright owners to make digital works more readily available.

Nowhere in its deliberations over the DMCA did Congress express an interest in creating liability for the circumvention of technological measures designed to prevent consumers from using consumer goods while leaving the copyrightable content of a work unprotected. In fact, Congress added the interoperability provision in part to ensure that the DMCA would not diminish the benefit to consumers of interoperable devices "in the consumer electronics environment." 144 Cong. Rec. E2136 (daily ed. Oct. 13, 1998) (remarks of Rep. Bliley).

In view of our conclusion regarding the Printer Engine Program, we can dispose quickly of Lexmark’s DMCA claim regarding the Toner Loading Program. The SCC chip does not provide "access" to the Toner Loading Program but replaces the program. And to the extent a copy of the Toner Loading Program appears on the Printer Engine Program, Lexmark fails to overcome the same problem that undermines its DMCA claim with respect to the Printer Engine Program: Namely, it is not the SCC chip that permits access to the Printer Engine Program but the consumer's purchase of the printer. One other point deserves mention. All three liability provisions of this section of the DMCA require the claimant to show that the "technological measure" at issue "controls access to a work protected under this title," see 17 U.S.C. § 1201(a)(2)(A)-(C), which is to say a work protected under the general copyright statute, id. § 102(a). To the extent the Toner Loading Program is not a "work protected under [the copyright statute],"which the district court will consider on remand, the DMCA necessarily would not protect it.

The district court also rejected SCC's interoperability defense -- that its replication of the Toner Loading Program data is a "technological means" that SCC may make "available to others" "solely for the purpose of enabling interoperability of an independently created computer program with other programs." 17 U.S.C. § 1201(f)(3). In rejecting this defense, the district court said that "SCC's SMARTEK microchips cannot be considered independently created computer programs. [They] serve no legitimate purpose other than to circumvent Lexmark's authentication sequence and . . . cannot qualify as independently created when they contain exact copies of Lexmark's Toner Loading Programs."

Because the issue could become relevant at the permanent injunction stage of this dispute, we briefly explain our disagreement with this conclusion. In particular, the court did not explain why it rejected SCC's testimony that the SMARTEK chips do contain other functional computer programs beyond the copied Toner Loading Program data. The affidavit of Lynn Burchette, a SCC manager, states that "[the SMARTEK] chip has a microprocessor, with software routines we developed that control its operation and function. Our chip supports additional functionality performed by our software beyond that of [the chip on Lexmark's toner cartridges]." And the expert testified that "Static Control has written a substantial amount of software for managing this chip; for not only providing the interoperability features, but also for managing the additional functionality that the [chip manufacturer] provides and which the remanufacturers may want."

Instead of showing why these statements are wrong, Lexmark contends that this is not "credible evidence" that "independently created computer programs" exist on the SMARTEK chip. Yet Lexmark bears the burden of establishing its likelihood of success on the merits of the DMCA claims. Because Lexmark has offered no reason why the testimony of SCC's experts is not "credible evidence" on this point and has offered no evidence of its own to dispute or even overcome the statements of Burchette and Goldberg, SCC also has satisfied the "independently created computer programs" requirement and may benefit from the interoperability defense, at least in the preliminary injunction context.

Lexmark argues alternatively that if independently created programs do exist, (1) they must have existed prior to the "reverse engineering" of Lexmark's Toner Loading Program, and (2) the technological means must be "necessary or absolutely needed" to enable interoperability of SCC's SMARTEK chip with Lexmark's Printer Engine Program. As to the first argument, nothing in the statute precludes simultaneous creation of an interoperability device and another computer program; it just must be "independently" created. As to the second argument, the statute is silent about the degree to which the "technological means" must be necessary, if indeed they must be necessary at all, for interoperability. The Toner Loading Program copy satisfies any such requirement, however, because without that program the checksum operation precludes operation of the printer (and, accordingly, operation of the Printer Engine Program), unless the checksum value located elsewhere on the chip is modified -- which appears to be a computational impossibility without the contextual information that Lexmark does not disclose. See supra.

Also unavailing is Lexmark's final argument that the interoperability defense in § 1201(f) (3) does not apply because distributing the SMARTEK chip constitutes infringement and violates other "applicable law" (including tortious interference with prospective economic relations or contractual relations). Because the chip contains only a copy of the thus-far unprotected Toner Loading Program and does not contain a copy of the Printer Engine Program, infringement is not an issue. And Lexmark has offered no independent, let alone persuasive, reason why SCC's SMARTEK chip violates any state tort or other state law.

Because Lexmark failed to establish a likelihood of success on any of its claims, whether under the general copyright statute or under the DMCA, we vacate the district court's preliminary injunction and remand the case for further proceedings consistent with this opinion.