In a case of first impression, the U.S. Court of Appeals for the Federal Circuit affirmed a summary judgment finding no violation of the anti-circumvention and anti-trafficking provisions of the Digital Millennium Copyright Act (DMCA) by distributing garage door openers that are compatible with the plaintiff’s garage door opening (GDO) systems. The Chamberlain Group, Inc. v. Skylink Technologies, Inc., Case No. 04-1118 (Fed. Cir. Aug. 31, 2004) (Gajarsa, J.).

Chamberlain manufactures GDO systems comprised of an opener and a transmitter. Skylink is an aftermarket provider of universal transmitters that are compatible with different GDO systems. The dispute involved Chamberlain’s Security+ line of GDOs that incorporates a copyrighted "rolling code" computer program to control access to Chamberlain’s copyrighted opener program and Skylink’s universal transmitter. The transmitter, which does not incorporate the rolling code, nevertheless allows users to operate the Security+ opener program. Chamberlain alleged Skylink’s transmitters circumvented the rolling code to gain access to the copyrighted opener program in violation of the DMCA. Section 1201(a)(2)(A) of the DMCA prohibits manufacturing or providing any technology product that circumvents a technological measure effectively controlling access to a protected work.

Sating their task was "essentially one of statutory construction," the Federal Circuit reasoned the anti-circumvention provisions of the DMCA establish causes of action for liability, not a new property right. Noting the DMCA defines circumvention as an activity undertaken "without the authority of the copyright owner," the Court explained a plaintiff alleging circumvention would have to prove the defendant’s access to the opener program was unauthorized. The Court indicated this would be a "significant burden" as the copyright laws authorize consumers to use the copy of Chamberlain’s opener program embedded in the GDO systems they purchased.

Chamberlain argued all uses of products containing copyrighted software to which a technological measure controlled access are per se illegal under the DMCA unless the manufacturer provided the consumer with explicit authorization. Reasoning Chamberlain’s interpretation of the DMCA would grant manufacturers broad exemptions from both the antitrust laws and the doctrine of copyright misuse, the Court determined such an interpretation is only plausible if the DMCA conveyed a new property right.

The Federal Circuit opined that Chamberlain’s proposed construction would allow any manufacturer to restrict consumers’ rights to use its products in conjunction with competing products by adding a single copyrighted sentence to its product and wrapping the copyrighted material in a trivial "encryption" scheme. This would allow manufacturers to create prohibited aftermarket monopolies. Harmonizing the DMCA with antitrust laws, the Court explained congressional intent in passing the anticircumvention and anti-trafficking provisions was to restore the balance between the interests of copyright owners and users because large scale copying and distribution of copyrighted materials was now easy and inexpensive. The Court determined circumvention is not a new form of infringement but rather a new violation prohibiting actions or products facilitating infringement. Because Skylink’s transmitter enables only legitimate uses of the copyrighted software and does not facilitate copying of the opener software, the Federal Circuit declared "[t]he DMCA cannot allow Chamberlain to retract the most fundamental right the Copyright Act grants consumers: the right to use the copy of Chamberlain’s embedded software that they purchased."

The Court set forth a six-element test that plaintiffs must prove to establish a prima facie case of circumvention under § 1201(a)(2) of the DMCA: (1) ownership of a valid copyright on a work, (2) effectively controlled by a technological measure, which has been circumvented, (3) third parties can now access (4) without authorization, in a manner that (5) infringes or facilitates infringing a right protected by the Copyright Act, because of a product that (6) the defendant either (i) designed or produced primarily for circumvention; (ii) made available despite only limited commercial significance other than circumvention; or (iii) marketed for use in circumvention of the controlling technical measure. Because Chamberlain failed to show lack of authorization and did not allege copyright infringement, the District Court prop-erly granted summary judgment in Skylink’s favor.

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