violated the DMCA by selling products that circumvented the encrypted authentication sequence between the Lexmark cartridge chip and the printer.violated copyright law by copying the Toner Loading Program, and.On December 30, 2002, Lexmark sued SCC in the United States District Court for the Eastern District of Kentucky. Sutton, and John Feikens (sitting by designation) 15, 2005 case remanded to district court for further proceedings consistent with the opinion.ĭistrict court erroneously granted summary judgment for plaintiff on claim under Digital Millennium Copyright Act based on defendant's manufacture of computer chips that enabled third party manufacturers to produce toner cartridges that were compatible with laser printers manufactured by plaintiff 29, 2004 and rehearing en banc denied, Feb. 2003) (granting summary judgment for plaintiff) United States Court of Appeals for the Sixth Circuit SCC began selling its "Smartek" chips to toner cartridge rechargers.Ĭopyright and DMCA claims: 2004 Circuit Court ruling Lexmark Int'l v. A Prebate cartridge could successfully be refilled if Lexmark's chip on the cartridge was replaced with the SCC chip. In 2002, SCC developed its own computer chip that would duplicate the 'handshake' used by the Lexmark chip, and that also included a verbatim copy of the Toner Loading Program, which SCC claimed was necessary to allow the printer to function. In addition, if the chip did not perform an encrypted authentication sequence, or if the Toner Loading Program on the chip did not have a checksum matching exactly a value stored elsewhere on the chip, the printer would not use the cartridge. The program calculated the amount of toner used during printing: when the calculations indicated that the original supply of Lexmark toner should be exhausted, the printer would stop functioning, even if the cartridge had been refilled. To enforce this agreement, Lexmark cartridges included a computer chip that included a 55-byte computer program (the "Toner Loading Program") which communicated with a "Printer Engine Program" built into the printer. Many users purchased such cartridges under the stated conditions. Lexmark touted the Prebate Program as a benefit to the environment and to their customers, since it would allow customers to get cheaper cartridges, and the benefit to Lexmark was that it could keep empty cartridges out of the hands of competing rechargers. Lexmark's "Non-Prebate" cartridges could be refilled by the user without restrictions and were sold without any discount.
Under its Prebate Program (now known as the Lexmark Return Program), through a shrinkwrap license, Lexmark sold certain printer cartridges at a discount (as much as $50 less) to customers who agreed to "use the cartridge only once and return it only to Lexmark for remanufacturing or recycling". In an effort to control and reduce the refilling and redistribution of toner cartridges, Lexmark began distributing two distinct varieties of its toner cartridges.
Lexmark is a large manufacturer of laser and inkjet printers, and Static Control Components (SCC) is a company that makes "a wide range of technology products, including microchips that it sells to third-party companies for use in remanufactured toner cartridges."
4 Scope of federal statutory torts: 2014 ruling at the Supreme Court.3 Trademark and false advertising: 2012 Circuit Court ruling.2 Copyright and DMCA claims: 2004 Circuit Court ruling.The Supreme Court's 2014 ruling also affects statutory interpretation in the area of standing in pursuing lawsuits on statutory grounds in a wide variety of areas in federal court. Static Control Components had standing basis under the Lanham Act to sue Lexmark for false advertising in relation to its promotion of the program, which was unanimously affirmed in 2014 by the Supreme Court of the United States.circumvention of Lexmark's ink cartridge authentication does not violate the Digital Millennium Copyright Act (DMCA), and.In separate rulings in 20, the United States Court of Appeals for the Sixth Circuit ruled that: Jarndyce ) has resulted in significant decisions affecting United States intellectual property and trademark law. The resulting litigation (described by Justice Scalia in 2014 as "sprawling", and by others as having the potential to go on as long as Jarndyce v. Static Control Components, Inc., is an American legal case involving the computer printer company Lexmark, which had designed an authentication system using a microcontroller so that only authorized toner cartridges could be used.