Password Circumvention for Repair Did Not Lead to Copyright Infringement [DMCA]

In Storage Technology Corp. v. Custom Hardware Engineering & Consulting, Inc., et al. (Fed. Cir. August 24, 2005) the court identified repair conduct invloving password circumvention conduct that appears to fall within the safe harbor of 17 U.S.C. § 117(c) and is therefore outside the scope of the Digital Millenium Copyright Act.

The court also recognized that a license agreement with customers allowed the customers’ agent to copy software into RAM during the activation of the customers’ licensed product.Section 117(c) of the copyright Act is entitled "Limitations on exclusive rights: Computer programs" and provides that it is not an infringement for the owner or lessee of a machine to make or authorize the making of a copy of a computer program if such copy is made solely by virtue of activation of a machine that lawfully contains an authorized copy of the computer program, for purpose only of maintenance or repair of that machine, if --(1) such new copy is used in no other manner and is destroyed immediately after the maintenance or repair is completed; and(2) with respect to any computer program or part thereof that is not necessary for the machine to be activated, such program or part thereof is not accessed or used other than to make such new copy by virtue of the activation of the machine. In this case, StorageTek sold its tape libraries to customers, but merely licensed the software that ran the library systems. The licensed software specifically excluded the maintenance code which was stored in RAM and protected by a password provided only to authorized service providers. As an unauthorized service provider, CHE had to had to override the "GetKey" password protection scheme in order to read the system fault codesStorageTek alleged that CHE committed copyright infringement when it rebooted and reconfigured its customers’ units in order to obtain the fault codes. CHE did not deny that the copyrighted maintenance code is copied into RAM when the company reboots its customers’ systems. Instead, CHE’s position was that its actions are protected by section 117(c) because the owners of the tape libraries authorized CHE to turn on the Control Units and Management Units in order to maintain and repair the tape libraries, and the duplication of the software into RAM is necessary for the machine to function. CHE also argued that its activities fall directly within Congress’s purpose in enacting section 117(c), which was to "ensure that independent service organizations do not inadvertently become liable for copyright infringement merely because they have turned on a machine in order to service its hardware components."

According to Cory Hojka at the Patently-O Blog, In a case of first impression, the Federal Circuit addressed the extent ofthis protection offered by 17 U.S.C. § 117(c). The Court of Appeals, relying ondefinitions in 17 U.S.C. § 117(d), held that § 117(c) protects maintenance andrepair as two different activities. “Repair,” according to the Federal Circuit,is restoring a broken machine to its original specifications. “Maintenance,” onthe other hand, has “a much broader temporal connotation” that “encompass[es]monitoring systems for problems [and] not simply fixing a single, isolatedmalfunction.” Thus, the Federal Circuit found erroneous the district court’sconclusion that only repair activities are protected under Sec. 117(c).

Cathy Kirkman at the Silicon Valley Media Law Blog also offered this analysis with regard to the scope of the software licenses:
StorageTek argued that its license did not extend rights to third parties,because it stated that the licensee may not "permit another person to use" thecode. However the Court looked to other clauses of the agreement toconclude:
"The clear implication of those sections is that the license istied to the piece of equipment on which the software resides. Thus, theauthorized use is tied to a particular machine, rather than a particularperson."

The clauses in question stated that the software may be transferredonly with the equipment, and the license is solely for use in enabling theequipment on which the code was provided.

The court also went on to conclude that, to the extent that CHE’s activities do not constitute copyright infringement or facilitate copyright infringement, StorageTek is foreclosed from maintaining an action under the Digital Millenium Copyright Act:
The problem in this case is that the copying of the software into RAM when theControl or Management Units are rebooted takes place regardless of whether theLEM or ELEM is used. Hence, there is no nexus between any possible infringementand the use of the circumvention devices. Rather, CHE’s circumvention of GetKeyonly allows CHE to use portions of the copyrighted software that StorageTekwishes to restrict technologically. The activation of the maintenance code mayviolate StorageTek’s contractual rights vis-à-vis its customers, but thoserights are not the rights protected by copyright law. There is simply not asufficient nexus between the rights protected by copyright law and thecircumvention of the GetKey system. . . .

In this case, the threat from CHE’s circumvention of GetKey is distinct from the dangers that StorageTek’s copyright protects against. In his disenting opinion, Judge Rader noted that, while he agreed that "maintenance" includes checking the proper functioning of components, he did not agree that CHE’s use of Storage Tek’s maintenance code falls within the protection of § 117(c):
Section 117(c)(1) specifies that any copy of the maintenance software mustbe destroyed "after the maintenance or repair is completed." CHE, however, doesnot meet this condition. CHE runs the maintenance software continually tomonitor operation. Only when a problem arises during monitoring, does CHEactually work on the silo. Thus, CHE uses the copy of the maintenance code inRAM beyond actual servicing or repairing. This continual use falls outside thescope of § 117(c). . . .CHE [also] does not boot the machine in order to service or repair it;it boots to manipulate the maintenance level of the maintenance code so that itmay read fault codes. As noted above, this is not "maintenance" or "repair"under § 117(c). CHE also does not "immediately destroy" the copy when theservice or repair is completed. CHE uses the maintenance code even while themachine is functioning properly and is in full use by the client. How can CHE’scontinual use of Storage Tek’s software during a three-year (or more) contractnot be "using the material for a prohibited purpose"? Again, the "immediatelydestroy" requirement of § 117(c) protects use only during the limited time therepairman is actually working on the computer.

Rodney D. Ryder