Caught by the Act Digital Copyright Law Ensnaring Businesses, Individuals Over Fair Use By Frank Ahrens Washington Post Staff Writer Wednesday, November 12, 2003; Page E01
Ed Swartz, a self-described "old guy," is a canny North Carolinian who's been in heavy manufacturing since Eisenhower was president. Alloys for the auto industry, mostly. Come the late '80s, he needed something for his youngest son to run, so they jumped into the ground floor of a business few think about until the copier malfunctions: remanufacturing laser printer toner cartridges. His company, Static Control Components Inc., makes the replacement gears, springs and drums that go inside the cartridges when they break down. Pretty straightforward. Until last winter, that is, when his company found itself in the most unlikely of positions -- on the same side of the courtroom as unauthorized Internet song-sharing sites, such as Kazaa, Grokster and Morpheus. What links a Southern office-supply manufacturer and a global next-generation Internet technology? A wafer-thin computer chip not much larger than a fingernail and a law unfamiliar to most: the Digital Millennium Copyright Act (DMCA). Passed in 1998, the act is designed to protect copyrighted works in an age when the material easily can be illegally copied and distributed over the Internet. The music industry uses the DMCA to sue Internet song-swappers it maintains are violating copyright law. But another provision of the law -- Section 1201 -- expressly prohibits individuals from circumventing technological measures erected by copyright holders to protect their works. Ever since, businesses that make products as diverse as voting machines, electronic pets and garage-door openers have turned to the law to protect their digital turf. Lexmark International Inc., one of the world's largest printer companies, joined the parade last December when it cited the law to sue Static Control. Lexmark alleged that the company illegally copied some of the code used by computer chips in Lexmark cartridges to enable the remanufactured cartridges to work. The chips monitor the level of toner and tell users when it is running low. More important, they make the cartridges compatible with the printer -- if the two do not execute an electronic "secret handshake" activated by the chip, the copier will not work. By figuring out how to emulate that handshake, Static Control circumvented Lexmark's ability to protect its copyrighted works, Lexmark's attorneys argued. In February, Lexmark won an injunction that stopped Static Control from making its chips. Static Control countered that it copied only 56 bytes of code in the Lexmark chip, which it should be allowed to do under the fair-use provisions of copyright law. Static Control said many industries do the same when they manufacture products that need to be compatible with other systems -- the "aftermarket" that makes wiper blades for cars, video-game cartridges for game consoles and so on. Static Control asked the U.S. Copyright Office for an exception to the DMCA that would help clear the way for it to make chips that would be compatible with Lexmark printers. The Copyright Office denied the exception in a ruling issued Oct. 27, saying that existing exceptions in the law may cover the issue. Both Static Control and Lexmark quickly claimed victory. "It is inconceivable to us how anyone could consider this ruling a victory for Static Control," Vincent J. Cole, a Lexmark vice president, said in a prepared statement. The company has declined to comment further on the case. American University copyright law professor Peter A. Jaszi, who led a law professors' amicus brief siding with Static Control, called the Copyright Office's ruling "disappointing" but said the decision did give the company some ammunition when it goes to court. "I think the Static Control lawyers are in a position to make a good argument" that their product should be permitted under the DMCA, Jaszi said. Static Control is appealing the injunction in Cincinnati's U.S. Court of Appeals for the 6th Circuit; the company cannot manufacture Lexmark-compatible cartridges unless the injunction is lifted. A ruling is expected within six months. Static Control has also filed a $100 million antitrust lawsuit against Lexmark in North Carolina. "We would be very happy for the [appeals court] to use what the Copyright Office said as guidance for a decision," Swartz said. Should his company lose in court, Swartz envisions a world of monopolies that would make turn-of-the-century Standard Oil blush. He predicts deals between automakers and tiremakers, for instance, that would put copyright-protected chips in tires to prevent a car from starting unless it was fitted with automaker-approved tires. Imagine, for instance, if Toyotas would run only on Goodyear tires, he said. What would become of Michelin, Cooper, Pirelli and other tiremakers? "I'll be 68 in December. I had open-heart surgery in November 2001. I see this as my legacy. Somebody had to fight them," Swartz said. "If we rolled over and played dead and they had won, it would have set a precedent for lots of other people to pull the same baloney." Baloney or not, other companies have attempted to protect their business by using the DMCA. Voting-machine maker Diebold Election Systems is citing the DMCA regarding a number of students and activists who have posted the company's internal documents on the Internet, detailing bugs in the machine software. The company has sent cease-and-desist letters, saying the activists are violating copyright by spreading Diebold's code on the Internet Earlier this year, Chamberlain Group Inc., which makes garage-door openers, invoked the DMCA against rival Skylink Technologies Inc., which made an opener that was chosen over Chamberlain's clicker by several garage-door makers. Skylink said it legally reverse-engineered the code used by the garage-door receivers to open the door. Chamberlain's opener works only when specific software codes are transmitted to the door. Skylink's clicker circumvents these, which Chamberlain said violates the DMCA. The case is pending in an Illinois federal court. Last year, Sony Corp. threatened action against a hobbyist who cracked some encryption in the company's electronic pet dog, the Aibo. That allowed him to write and post software on the Internet enabling Aibo owners to customize their pets to recognize their masters' voices. Although the hobbyist did not reveal the encryption codes, Sony pressed forward, relenting only after public outcry. "A lot of people have turned this into a debate on competition or about how it's somehow doing harm to the average user," said Emery Simon, a lawyer with the Business Software Alliance, a trade group promoting digital copyright protection. Members include Microsoft Corp., Apple Computer Inc. and IBM. "It's not about those things for us. For us, it's about somebody who's stealing our stuff." Concerns about the DMCA creating monopolies are overheated, he said. Section "1201 did nothing to change, dilute or diminish antitrust law," he said. "Intellectual property laws have always co-existed with competition laws." Arguing for the other side, Jaszi said the Static Control case and others like it illustrate the larger problems with the DMCA. "We've got here a law that runs like a bulldozer over this rather delicate balance and structure of rights and limitations on copyright that it took us 200-odd years to build up," he said. At the same time, he said, "I don't think a conscientious lawyer with a business client facing this kind of situation can do anything other than file a DMCA claim." Verizon Communications Inc. is a more traditional foe of the DMCA. It is lobbying Congress to overhaul the act based on the recent record-industry lawsuits, saying the law's powers are too broad. Under another section of the DMCA, Internet service providers such as Verizon can be subpoenaed to turn over the names and addresses of suspected customers whom copyright holders, such as the music industry, believe are violating copyright by illegally downloading songs, for instance. Rep. Rick Boucher (D-Va.) introduced a bill at the beginning of the current session focusing on rewriting Section 1201. His bill would allow consumers to circumvent a work's technological copyright protections for fair use. The bill, pending in the Energy and Commerce Committee, would also decriminalize the manufacture of such circumvention technology. Rep. Zoe Lofgren (D-Calif.) introduced a similar bill, now in the Judiciary Committee, which Boucher also sits on. "As an increasing number of copyright works are wrapped in technological protection measures, it is likely that the DMCA's anti-circumvention provisions will be applied in further unforeseen contexts, hindering the legitimate activities of innovators, researchers, the press, and the public at large," writes the Electronic Frontier Foundation, which represents some defendants of the record-industry lawsuits and supports Boucher's bill. Boucher expects no action on his bill before the end of the year but plans hearing and markup early next year, he said. "I won't predict the date," Boucher said, "but eventually, we will change the DMCA."
