*The Honorable John Feikens, United States District Judge for the Eastern District of Michigan, sitting by designation.RECOMMENDED FOR FULL-TEXT PUBLICATIONPursuant to Sixth Circuit Rule 206File Name: 04a0364p.06UNITED STATES COURTS OF APPEALSFOR THE SIXTH CIRCUIT_________________LEXMARK INTERNATIONAL, INC.,Plaintiff-Appellee,v.STATIC CONTROL COMPONENTS, INC.,Defendant-Appellant.X---->,--NNo. 03-5400Appeal from the United States District Courtfor the Eastern District of Kentucky at Lexington.No. 02-00571—Karl S. Forester, Chief District Judge.Argued: January 30, 2004Decided and Filed: October 26, 2004 Before: MERRITT and SUTTON, Circuit Judges; FEIKENS, District Judge.*_________________COUNSELARGUED: Seth D. Greenstein, McDERMOTT, WILL & EMERY, Washington, D.C., for Appellant.Christopher J. Renk, BANNER & WITCOFF, Chicago, Illinois, for Appellee. ON BRIEF: Seth D.Greenstein, M. Miller Baker, Melise R. Blakeslee, McDERMOTT, WILL & EMERY, Washington, D.C.,W. Craig Robertson III, E. Christine Lewis, WYATT, TARRANT & COMBS, Lexington, Kentucky,William L. London, STATIC CONTROL COMPONENTS, INC., Sanford, North Carolina, for Appellant.Christopher J. Renk, Binal J. Patel, Jason S. Shull, Timothy C. Meece, BANNER & WITCOFF, Chicago,Illinois, Joseph M. Potenza, Bradley C. Wright, BANNER & WITCOFF, Washington, D.C., Charles E.Shivel, Jr., Steven B. Loy, Hanly A. Ingram, STOLL, KEENON & PARK, Lexington, Kentucky, forAppellee.SUTTON, J., delivered the opinion of the court. MERRITT, J. (pp. 21-22), delivered a separateconcurring opinion. FEIKENS, D. J. (pp. 23-32), delivered a separate opinion concurring in part anddissenting in part._________________OPINION_________________SUTTON, Circuit Judge. This copyright dispute involves two computer programs, two federalstatutes and three theories of liability. The first computer program, known as the “Toner Loading Program,”1No. 03-5400Lexmark Int’l v. Static Control ComponentsPage 2calculates 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 first statute, the general copyright statute, 17 U.S.C. § 101 et seq., has been with us in one formor another since 1790 and grants copyright protection to “original works of authorship fixed in any tangiblemedium of expression,” id. § 102(a), but does not “extend to any idea, procedure, process, system, methodof operation, concept, principle, or discovery,” id. § 102(b). The second federal statute, the DigitalMillenium Copyright Act (DMCA), 17 U.S.C. § 1201 et seq., was enacted in 1998 and proscribes the saleof products that may be used to “circumvent a technological measure that effectively controls access to awork” protected by the copyright statute. These statutes became relevant to these computer programs when Lexmark began selling discounttoner cartridges for its printers that only Lexmark could re-fill and that contained a microchip designed toprevent Lexmark printers from functioning with toner cartridges that Lexmark had not re-filled. In an effortto support the market for competing toner cartridges, Static Control Components (SCC) mimickedLexmark’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 theoriesof liability in doing so. Lexmark claimed that SCC’s chip copied the Toner Loading Program in violationof the federal copyright statute. It claimed that SCC’s chip violated the DMCA by circumventing atechnological measure designed to control access to the Toner Loading Program. And it claimed that SCC’schip violated the DMCA by circumventing a technological measure designed to control access to the PrinterEngine Program.After an evidentiary hearing, the district court decided that Lexmark had shown a likelihood ofsuccess on each claim and entered a preliminary injunction against SCC. As we view Lexmark’s prospectsfor success on each of these claims differently, we vacate the preliminary injunction and remand the casefor further proceedings. I.A.The Parties. Headquartered in Lexington, Kentucky, Lexmark is a leading manufacturer of laserand inkjet printers and has sold printers and toner cartridges for its printers since 1991. Lexmark is apublicly 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 technologyproducts, including microchips that it sells to third-party companies for use in remanufactured tonercartridges.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 (rotationalforce) sensed on the toner cartridge wheel. Maggs Aff. ¶ 24, JA 709. The Toner Loading Program reliesupon eight program commands—“add,” “sub” (an abbreviation for subtract), “mul” (multiply), “pct” (takea percent), “jump,” “if,” “load,” and “exit”—to execute one of several mathematical equations that convertthe torque reading into an approximation of toner level. Goldberg Aff. ¶ 21, JA 578; Maggs Aff. ¶ 24, JA709. If the torque is less than a certain threshold value, the program executes one equation to calculate thetoner level, and if the torque equals or exceeds that threshold, the program executes a different equation tocalculate the toner level. Goldberg Aff. ¶ 19, JA 576–77. The exact code of the Toner Loading Programvaries slightly for each printer model, and this case involves two versions of the program—one forLexmark’s T520 and T522 printer models and another for Lexmark’s T620 and T622 printer models. TheToner Loading Program for the T520/522 printers comprises 33 program instructions and occupies 37 bytesNo. 03-5400Lexmark Int’l v. Static Control ComponentsPage 3of memory, while the Toner Loading Program for the T620/622 printers comprises 45 program commandsand uses 55 bytes of memory. To illustrate the modest size of this computer program, the phrase “LexmarkInternational, Inc. vs. Static Control Components, Inc.” in ASCII format would occupy more memory thaneither version of the Toner
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