An appeals court lifted the injunction banning Static Control Components from selling Smartek chips for Lexmark printers. On Oct. 26, a three-judge panel of the 6th U.S. Circuit Court of Appeals sent the case of Lexmark against Static Control back to U.S. District Court in Lexington, Ky., for a possible trial. The ruling vacates the initial ruling issued by Judge Karl Forester, who granted a preliminary injunction in February of 2003.
According to court papers, Judge Geffrey Sutton wrote "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."
"This is a very exciting victory for us,” said Static Control CEO Ed Swartz. “Not only is this a victory for our company and our industry, it is a major victory for the consuming public and American companies. This is a landmark precedent-setting case and the courts have spoken: Companies cannot abuse copyright laws to create electronic monopolies and take advantage of the citizens of this great country.”
"This is not a case about new toner cartridges for Lexmark laser printers, which are protected by patents. It is about remanufactured laser toner cartridges,” Lexmark spokeswoman Julane Hamon said, according to a news report. “Lexmark will continue to vigorously protect its intellectual property rights in this litigation and in any other instance where Lexmark believes that its intellectual property rights are violated."
The Digital Millennium Copyright Act (DMCA) has been at the center of the lawsuit filed by Lexmark against Static Control on Dec. 30, 2002. In that case, Lexmark sued Static Control for one count of infringement under copyright law and two under the DMCA. Part of the allegation made by Lexmark in the lawsuit was that Static Control’s T520/620 chip technology violated the DMCA by providing access to a copyrighted work (in this case, the 520/620’s Toner Loading Programs and Printer Engine Programs, representing the two counts of alleged DMCA violations). In February 2003, U.S. District Judge Forester granted Lexmark a preliminary injunction to keep Static from selling the disputed T520/620 chips.
“We have asserted from the outset that this is a blatant misuse of the DMCA and the 6th Circuits’ ruling solidifies and supports our position that the DMCA was not intended to create aftermarket electronic monopolies,” said Swartz, who pointed out that such monopolies could cost consumers billions of dollars each year.
According to SCC General Counsel William London, the 6th Circuit Courts’ decision was long awaited welcome news.
“We argued the case back in January of this year,” said London. “We knew it could take a period of time and we patiently waited for this day. We felt good after the arguments and we are very grateful for the 6th Circuits’ decision.”
