A recent decision from the United States District Court for the Eastern District of Kentucky provides important guidance about the amount of creativity required to support copyright in a computer program and the nature of fair use in the context of interoperability. The court held that certain Lexmark software programs were not protected by copyright and that the use of those programs to achieve interoperability between devices was a protected “fair use.” Static Control Components, Inc. et al v. Lexmark International Inc., Case No. 5:04-cv-00084-GFVT (E. D. Ky., Apr. 18, 2007) (Van Tatenhove, J.).

Lexmark obtained copyrights on small programs that were used to measure toner in certain Lexmark printer cartridges. The binary code of these programs served as a lock-out code for the intended printers (i.e., if the printer could not read the specific combination of binary numbers from the inserted printer cartridge, the printer would not function).

When Static Control reverse-engineered the binary code to achieve interoperability between remanufactured cartridges and Lexmark printers, it unwittingly copied verbatim the executable aspects of the programs. Lexmark sued claiming copyright infringement. Static Control maintained that the programs embodied no creative expression and therefore, could not be protected by copyright.

Lexmark argued that its programs were sufficiently creative because it had made a series of design choices when writing the programs. Static Control contended, however, that the mere existence of alternatives cannot endow the Lexmark code with originality it otherwise did not possess.

The court determined that the programs did not have sufficient originality to warrant copyright protection. The district court observed that whether functional alternatives exist in the abstract is not the issue; rather, the issue is whether the programmers actually expressed sufficient originality when creating the programs. The court held that the Lexmark programmers did not.

Further, the district court found that Static Control’s use of the entire program was “fair” as a matter of law because “the purpose and character” of Static Control’s use of the programs did not result in Static Control profiting from exploiting the copyrighted work. There were actually two different purposes for the same computer code—as executable programs per se and as lock-out codes. Static Control only needed the string of binary numbers in their lock-out functionality in order to permit interoperability; it did not care about the toner measuring functions. As for any “creative” energy that may have been expended in writing the programs related to the measuring functions, Static Control was not seeking to benefit from it.