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    Garage Door Opener Company Loses DMCA Claim

    Amalie Weber, December 18, 2003

    Abstract: Chamberlain Group has recently lost an aggressive DMCA claim, both in the U.S. International Trade Court and in U.S. District Court. Like Lexmark before it, the company had tried to claim that the DMCA's anti-circumvention provisions prevented competitors from developing products that inter-operated with Chamberlain's garage door openers.

    Chamberlain Group Inc., the self-proclaimed worlds largest manufacturer of residential garage door openers and commercial door openers, recently joined the fray in attempting to determine the bounds of the Digital Millennium Copyright Act (DMCA). The debate focuses on the extent to which companies can use the DMCA to restrict after-market imitators from creating interoperable products, thereby stifling competition. A new twist is that Chamberlain has been forum shopping, seeking redress for the alleged DMCA violation not only in the federal courts, but also in the U.S. International Trade Court (ITC). The ITC, a U.S. administrative court, has broad remedial powers to deter unfair competition and intellectual property infringement by barring imports from U.S. markets.

    Chamberlain initially filed suit in U.S. District Court. In Chamberlain Group Inc. v. Skylink Tech. Inc., Chamberlain claimed that Skylink violated the DMCA in creating a universal remote control that circumvents a technological protection measure to enable it to interoperate with their garage door opener. The U.S. District Court for the Northern District of Illinois denied Chamberlain’s motion for summary judgment, not only finding that Chamberlain did not violate the anti-distribution provision of the DMCA (17 U.S.C. § 1201(a)(2)), but actually suggesting that Skylink file for summary judgment motions for itself. Skylink's motion for summary judgment was granted, but is currently under appeal.

    Concurrent with these proceedings, Chamberlain filed suit in the ITC pursuant to the agency’s jurisdiction over intellectual property infringement via importation of infringing goods into the United States. In the Matter of Certain Universal Transmitters for Garage Door Openers Thereof, Inv. No. 337-TA-497. Chamberlain alleged that the DMCA constitutes an intellectual property protection statute insofar as it protects copyrighted materials. Chamberlain can bring suit in the ITC because Skylink Technologies Inc. is a foreign manufacturer, and the ITC has jurisdiction over import of foreign manufactured goods.

    The intellectual property at stake in this case is Skylink’s use of software that interoperates with software embedded in Chamberlain’s garage door openers (GDO). Chamberlain is a manufacturer of garage door openers (GDO) that use what is known as "rolling code" technology. Chamberlain claims its GDO is more secure than alternatives on the market because its “rolling code” technology is allegedly less susceptible to burglary by means of “code grabbing.” The technology ostensibly prevents the GDO from working with any remote controls except those provided by Chamberlain. Skylink, however, found a loophole in Chamberlain’s GDO system and used this loophole to develop a universal remote that worked with Chamberlain's product.

    Chamberlain alleged that by exploiting this loophole in their design, Skylink violated the DMCA, because Skylink essentially circumvented security measures that Chamberlain had built into its system. Chamberlain alleged that this circumvention gave Skylink access to the copyrighted code in the Chamberlain’s GDO, code that Skylink then used to develop an interoperable GDO.

    The District court found two major problems with this claim. Most significantly, the court agreed with Skylink that its GDO did not violate the DMCA because Skylink’s technology did not circumvent a security measure "without the authority of the copyright owner." Skylink argued that Chamberlain allowed purchasers of its product to use universal remotes if they lost the original because Chamberlain sells their own universal remotes. Furthermore, Chamberlain never informed consumers that they were not permitted to use universal remotes. These two facts combined constituted an implicit authorization to circumvent Chamberlain’s technology. Since the DMCA is only violated if someone circumvents a technological protection measure without the authority of the copyright owner, any violation of the anti-distribution provisions of the DMCA by Skylink had to have been predicated upon a violation of the anti-circumvention provisions by consumers. Thus, Chamberlain’s implicit authorization of universal remotes took Skylink’s technology outside the purview of the DMCA. While this part of the ruling bodes well for proponents of competition and interoperability, the decision is a distinctly limited victory for aftermarket producers. In dicta, District Court Judge Pallymer seemed to say that the plaintiff could have prevented Skylink from marketing its aftermarket product simply by including boilerplate language in its user manual prohibiting buyers from using universal remotes.

    Skylink had offered an alternative defense, which the District court rejected. Skylink asserted that its product could not violate the DMCA because the product opened many doors, not just Chamberlain’s. The Court dismissed that claim, saying that a multipurpose product can violate the DMCA. The Court hinted that a violation would occur whenever one of the purposes of a multipurpose device is circumvention of a particular IP-protecting technology.
    Also at issue in the District court hearing was whether Chamberlain actually established that the code in question was copyrighted. It appears that Chamberlain may have copyrighted the original code but not later generations.

    In the latest round in the ITC, Skylink moved for a summary determination on the authority issue that proved so persuasive at the district court level. The ITC found in favor of Skylink on November 4, 2003. Nevertheless, Chamberlain is taking the position that Skylink did not prevail in the ITC action, and that Skylink is therefore obligated to enter into a consent decree—the saga continues…


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