The Digital Millennium Copyright Act

Reverse Engineering and Interoperability

Contents

   Lexmark (toner refills)
   - DMCA
   - Copyright office
   - Final Ruling (DMCA)
   - Boxwrap license

   Skylink (garage door openers)

   Reusable Cameras (my situation) 



First, let me get my personal opinion out in the open: The DMCA is a horrible law that uses the novelty of "digital media" to allow corporations to effectively revoke many well-established consumer rights.

The full text of the law can be found here.  The original justification for the DMCA is that digital media can easily be copied over multiple generations without degradation, and thus deserves special protection because a copyright holder may be subject to larger potential damages – Never mind that professional copyright infringers (a.k.a. "pirates") have managed to make millions of sellable copies of analog media, and that they are currently making copies of digital media without violating the DMCA1.

I've written a computer program that allows a user to transfer pictures they have taken from their camera to their computer. This camera seems to contain an access control mechanism2 that regulates this transfer.  Common sense says that, as the copyright holder of the pictures3, the user should have complete authority to determine who can circumvent those access controls.  Common sense also says that it would be illegal for a non-digital (film based) disposable camera company to impose limitations on where the camera can be developed without use of a binding contract.  But, companies have tried to use the DMCA to prevent legitimate uses like these.

It's a shame that when I try to use a product I've paid for, I must try to interpret how the manufacturer intended for it be used, lest I be sued. If I were to find that a particular type of oil filter also filters coffee well, then why should the manufacturer be allowed to prevent me from doing so? The unintended consequences and abuses of the DMCA continue to chill research and curb fair use rights. Please support the Electronic Frontier Foundation in their good work aiding victims of the DMCA and other so-called intellectual property issues.

Two recent cases have used the DMCA against people who create interoperable products. These cases are notable because the access controls do not attempt to prevent copyright infringement.

The Lexmark case, while more complicated and less like my situation, was a scary misapplication of the DMCA that was rejected by the courts.


Lexmark vs. Static Control Components (SCC)
Laser printer manufacturer Lexmark sued a maker of replacement toner parts to ensure that Lexmark can hold a monopoly on all supplies for its printers.  This goes against precedents set in the non-digital world that would prevent a car manufacturer from requiring only a specific brand of gasoline or oil for use in its products. The chip that SCC produces is incorporated by toner cartridge remanufacturers, and tells the printer that it is allowed to operate. The chip runs original SCC-written software that implements the industry-standard SHA-1 hash algorithm that Lexmark uses to determine authenticity.

Lexmark claims that this authentication sequence is a technological measure used to control access to its copyrighted printer firmware4 [¶70 of preliminary injunction ruling].  Since the original congressional language doesn't clarify the meaning of "access," Judge Forester uses a broad definition from Merriam-Webster ("ability to enter, to obtain, or to make use of") to allow manufacturers to restrict how a customer can make use of a legitimately purchased product.  Note that no copyright infringement of their printer firmware has been even alleged; it is solely the use of a legitimately purchased product that Lexmark seeks to restrict.

The DMCA allows an exception "solely for the purpose of enabling interoperability of an independently created computer program with other programs, and to the extent that doing so does not constitute infringement under this title or violate applicable law other that this section" 17 U.S.C §1201(f)(3), and Judge Forester implies that because SCC's interoperatablity program is sold on a hardware medium (in the firmware of a pre-programmed chip), it doesn't qualify [¶92].  I wonder how one is supposed to transfer or execute software without the use of a hardware medium such as a floppy disk, modem, or CPU.

The DMCA argument is just one argument in Lexmark's case against SCC.  The other argument is interesting, but has no parallel to my situation.  Lexmark alleges a case of traditional copyright infringement involving an exact reproduction of 37 bytes. For comparison, this sentence is 47 bytes long.  Because the sequence is roughly the same size as used in many encryption keys, SCC thought they were reproducing a constant value that acted as a key (which is totally legal when required for interoperatablity).  But Lexmark claims that these bytes are not a big constant and are, in fact, a copyright-protected program in a secret language they refuse to document. (no joke!)  Since there is an expressive element to code (even in a made-up secret language, I guess), Lexmark claims these bytes qualify for more copy protection than mere constants. But, as the Electronic Frontier Foundation argues well, courts have determined that without "proof that knowledge of the alternate method exists or is readily available to persons in the industry," such an access code does not qualify for copyright protection.

Copyright Office Weighs In on Lexmark vs. SCC (and other cases)
The U.S. Copyright office has been taking in comments from the public on additional classes of work that should be exempt from the DMCA. Although they missed the deadline, the office made a special exemption and allowed SCC to file a post-deadline exemption. On October 28th, 2003, the office released their recommendations (pdf). They recommended four classes of work that should be exempted, but didn't include the SCC case because they thought that existing exemptions should be sufficient to cover them.  Page 183 of the recommendations concludes: (emphasis mine)

...Yet since it appears that §1201(f) would permit Static Control to achieve its purpose, the Register could recommend an exemption only if Static Control proved that the statutory exemption is inadequate to achieve the noninfringing purpose. Since Static Control believes that §1201(f) exempts its conduct, it has not made this argument. Also, since the Register finds that even if Static Control’s past conduct was outside the scope of  §1201(f), Static Control’s goal could have been achieved within the scope of §1201(f), no exemption is necessary in order to safeguard interoperability. Congress has comprehensively addressed the important concern of interoperability for competition and functionality within its own statutory exemption. That exemption provides the creators of interoperable computer programs with a much broader exemption than any that could issue from the Librarian. The Register, therefore, does not find any need for a new exemption simply to reinforce what Congress has already provided in a much more satisfactory manner.

This is just a recommendation by the copyright office; as far as I know, the lawsuit still stands.  A side note: the copyright office did not approve exemptions for a number of other worthwhile uses, such as playing CDs with malfunctioning copy-protection that prevents playback, playing foreign region-coded DVD movies, and fast-forward through unskippable DVD commercials.

Lexmark Final DMCA Ruling
The final ruling finds for the defendant. The Federal court found that the District court had made legal errors on all three counts:

Count 1 - The Sixth court found that the Toner Loading Program is not eligible for copyright protection because it is necessary for compatibility. The district court ignored this and only considered if it was a creative work (it thought it was).\

Count 2 - The Sixth court found that the Toner Loading Program does not have sufficient creative work to be eligible for copyright. Although the program could be written in different ways, the limited language used to express it (only 8 possible instructions) and limited size meant that alternatives were not really feasible.

Count 3 - The Sixth court found that the Toner Loading Program acts as a lock-out code. In particular, the checksum used to verify the program was sufficiently hard to work around, so it locked out other possible implementations of the lock-out code.  Quote: "On this record, pure compatibility requirements justified SCC's copying of the Toner Loading Program."

Judge Merrit gave a wonderful (scathing!) concurrence that is worth the read (see pages 21-22). You'll find these juicy quotes in just about everyone elses' review of the case (emphasis mine):
I write separately to emphasize that our holding should not be limited to the narrow facts surrounding either the Toner Loading Program or the Printer Engine Program.  We should make clear that in the future companies like Lexmark cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods for themselves just by tweaking the facts of this case: by, for example, creating a Toner Loading Program that is more complex and “creative” than the one here, or by cutting off other access to the Printer Engine Program.  The crucial point is that the DMCA forbids anyone from trafficking in any technology that “is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a [protected] work.”  ...  The key question is the “purpose” of the circumvention technology.  The microchip in SCC’s toner cartridges is intended not to reap any benefit from the Toner Loading Program – SCC’s microchip is not designed to measure toner levels – but only for the purpose of making SCC’s competing toner cartridges work with printers manufactured by Lexmark.

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. Automobile manufacturers, for example, could control the entire market of replacement parts for their vehicles by including lock-out chips.  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.

Misreading the statute to shift the burden in this way could allow powerful manufacturers in practice to create monopolies where they are not in principle supported by law.

While Judge Feikens did not agree with the majority on the first count, he agreed on the outcomes of the others. One quote:
We agree that the Digital Millennium Copyright Act (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.

We agree that the Digital Millennium Copyright Act (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.


Lexmark, take two - the Boxwrap License
Lexmark tried another legal theory, but this one does not rely on the DMCA.  Still, this argument could be used against me.

In Arizona Cartridge Remanufacturers Association (ACRA) vs. Lexmark, Judge Fisher of the Ninth Circuit court (in Northern California) found that wording on the outside of the package could be used to from a binding legal agreement. In exchange for a reduced price (a so-called "prebate"), Lexmark demanded that the cartridge be used only once:

Current Language
 Original Language
RETURN EMPTY CARTRIDGE TO LEXMARK FOR REMANUFACTURING AND RECYCLING

Please read before opening. Opening of this package or using the patented cartridge inside confirms your acceptance of the following license agreement. The patented cartridge is sold at a special price subject to a restriction that it may be used only once. Following this initial use, you agree to return the empty cartridge only to Lexmark for remanufacturing and recycling. If you don’t accept these terms, return the unopened package to your point of purchase. A regular price cartridge without these terms is available.		 IMPORTANT! READ BEFORE OPENING.

Opening this package or using the cartridge inside confirms your acceptance to the following license agreement. License Agreement: Patent cartridge inside sold subject to Single Use Only restriction. It is a violation of this agreement and/or it is unlawful to resell, reuse, refill or remanufacture. If you don’t agree, return unopened package to point of purchase.

What will be illegal next? Refilling a water bottle marked "Two Liters"? Hopefully this will be overturned.  North Carolina, the home state of SCC, has made this "Prebate" illegal - it voided contracts and purchase agreements that banned cartridges from being remanufactured.

More information at the EFF.


Chamberlain Group vs. Skylink
This case is simpler that the Lexmark vs. SCC case, and is nicely summarized here.  The Chamberlain Group manufacturers garage door openers that happen to use an embedded computer. Skylink reverse-engineered the protocol used to activate the opener, and began selling compatible remote units ("clickers").

Chamberlain wanted to sustain their monopoly on replacement clickers, but there isn't a law that gives them this right - in fact, many consumer-protection laws generally deny manufacturers this this ability. Still, Chamberlain sued under the DMCA, alleging that the firmware in their door opener unit is copyrighted and contains an access control mechanism. Again, no copyright infringement is alleged, but since the access control mechanism controls access to the portion of the firmware that operates the motor, their theory is that it should be protected under the DMCA.

The two parties agreed on the facts of the case, and asked the court for a summary judgment. In a preliminary ruling, the court has denied Chamberlain's case against Skylink.  "The Court properly rejected Chamberlain's use of the DMCA to lock people out of their own garages," said EFF Attorney Gwen Hinze. "If I buy a Chamberlain garage door opener, I have the authority to open my garage any way I please."

Unfortunately, the final ruling doesn't adequately address the general legitimacy of applying the DMCA to copyrighted firmware as a means for customer lock-in.  Judge Rebecca Pallmeyer seemed to skip over the use of DMCA to regulate how firmware is executed (which is, in effect, how a consumer uses a product).  Instead, she assumed that the DMCA could be applied and used two main arguments when ruling for Skylink:
  1. Chamberlain did not specifically prohibit the use of other remotes. (This speaks to the "without the authority of the copyright holder" portion of the DMCA)
  2. "...a homeowner has a legitimate expectation that he or she will be able to access the garage even if the original transmitter is misplaced or malfunctions."
I feel that she didn't adequately support the second argument - she said that there was a history of universal transmitters (both for televisions and garage door openers), but didn't back it up with any laws. By this logic, making your own DVD player would be legal because companies have long been able to manufacture compatible media viewers (such as movie projectors and tape players) without copyright concerns. 

Comparison of My Situation to These Cases
One big difference between my situation and these two cases above is that I am downloading clearly-defined copyrighted content, whereas the others case involve non-copyright-infringement "accessing" of copyrighted firmware.  This fits the framework of the DMCA much better, where the aim is to protect copyright infringement of content.  Of course, in my case, the person running the program is also the copyright holder of the picture, and they alone get to determine who can legally access the data.

Like the Chamberlain case, I have a precedent in the pre-DMCA world, but my precedent is stronger.  Not many people are aware that their garage door openers can be operated by a third-party universal remote, but most people expect to develop their disposable cameras at any photo finisher.

Lastly, unlike the other cases, my case of interoperability (allowed under §1201(f)(3)) fits the classical personal computer / electronic peripheral model. Although the other cases are equally valid computer-interoperability cases, they don't fit many judges' expectations of computers and peripherals.

The biggest threat is the insane "box-wrap" contract.  I don't know a lot about this area of law, so I'd appreciate any legal opinions. I'll take an uninformed stab at it anyway:  Contracts require a consideration. Lexmark provided this by selling the prebate cartridges at a discounted price compared to their regular cartridges. Pure Digital does not offer a higher-priced reusable option, so there is no discount found in buying their regular product. Without offering a benefit, the contract would be unconscionable.  But, again, be warned that this paragraph could be rubbish - it's just my best guess.

The European Union Copyright Directive (EUCD)
The European Union is requiring its member states to pass legislation similar to the U.S. DMCA, but without fair-use exceptions. IP Justice has more information, including coverage of EUCD related law taking effect in the UK.
Footnotes
1. Professionals make an exact bit-for-bit copy of the original DVD that is indistinguishable, to the consumer's player, from the original.  There no reason for infringers to break the encryption, and since DVD players expect DVDs to be encrypted, a decrypted DVD would actually be less compatible. (return to text)

2. There's a little debate as to whether this mechanism "effectively controls access"; there are at least two other ways to read the data without bypassing the mechanism. (return to text)

3. As soon as you press the shutter, the picture taken becomes your creative work and is protected by an unregistered copyright. Creative works no longer need to be registered to receive protection. (return to text)

4. Firmware is computer software for an embedded computer that is stored in a (generally non-removable) memory chip.  An embedded computer is a special-purpose computer that is designed to run only a single application.  In this case, the laser printer is the embedded computer that runs code to control the printer's hardware.  The term "firm" is used because a programmed memory chip is both software and hardware. (return to text)

About the author:  John Maushammer has reverse-engineered three disposable digital cameras and has written programs to allow an owner of one of these cameras to retrieve their pictures without the use of Pure Digital's development service. Those cameras are: the original Dakota Digital, the PV2, and the CVS Camcorder. He is an electrical engineer with a passion for (among many things) IP law.

Updated September 17th, 2005. (Lexmark v. SCC ruling and Box-wrap license)
June, 2006:  Good related reading: "Death by DMCA" at IEEE

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