          United States Court of Appeals for the Federal Circuit


                                        04-1462


                     STORAGE TECHNOLOGY CORPORATION
                         (doing business as Storagetek),

                                                      Plaintiff-Appellee,

                                           v.


            CUSTOM HARDWARE ENGINEERING & CONSULTING, INC.,

                                                      Defendant-Appellant,

                                          and

                                    DAVID YORK,

                                                      Defendant-Appellant.

        Charles W. Steese, Steese & Evans, P.C., of Denver, Colorado, argued for
plaintiff-appellee. With him on the brief was Sandra L. Potter. Of counsel on the brief
were Michael D. Broaddus, Perkins Coie LLP, of Seattle, Washington, and Bobbee J.
Musgrave, Musgrave & Theis, LLP, of Denver, Colorado. Of counsel were Jerry A.
Riedinger, Perkins Coie LLP, of Seattle, Washington, and Mark T. Wasden, of
Washington, DC; and Teresa L. Ashmore, Musgrave & Theis LLP, of Denver, Colorado.

      Dean L. Franklin, Thompson Coburn LLP, of St. Louis, Missouri, argued for
defendants-appellants Custom Hardware Engineering & Consulting, Inc. and David
York. Of counsel on the brief were Edwin G. Harvey and Nicholas B. Clifford, Jr., Simon
Passanante, PC, of St. Louis, Missouri, and Anthony G. Simon.

     Joseph D. Steinfield, Prince, Lobel, Glovsky & Tye, LLP, of Boston,
Massachusetts, for defendant-appellant David York.

Appealed from: United States District Court for the District of Massachusetts

Judge Rya W. Zobel
 United States Court of Appeals for the Federal Circuit


                                        04-1462

                     STORAGE TECHNOLOGY CORPORATION
                         (doing business as StorageTek),

                                                Plaintiff-Appellee,

                                           v.

            CUSTOM HARDWARE ENGINEERING & CONSULTING, INC.,

                                                Defendant-Appellant,

                                          and

                                     DAVID YORK,

                                                Defendant-Appellant.

                           ___________________________

                           DECIDED: August 24, 2005
                           ___________________________


Before RADER, SCHALL, and BRYSON, Circuit Judges.

Opinion for the court filed by Circuit Judge BRYSON. Dissenting opinion filed by Circuit
Judge RADER.

BRYSON, Circuit Judge.

      Storage Technology Corporation (“StorageTek”) manufactures automated tape

cartridge libraries that can store massive amounts of computer data. The cartridge

libraries consist of Library Storage Modules, or “silos,” that contain numerous tape

cartridges, tape drives for reading the cartridges, and a robot arm for moving the

cartridges. Connected to each silo is a Library Control Unit that controls the robotic
mechanisms in the silo and monitors their progress. The individual silos and Control

Units are connected via a local area network to a Library Management Unit, which is a

computer that can direct and control several silos. To access data from the library, a

user sends a request for the data to the Management Unit. The Management Unit then

transmits commands to the appropriate Control Unit to find and read the tape cartridge

containing the requested data. The Control Unit then sends the data over the network

back to the Management Unit.

      A central element of this case concerns what occurs when the entire tape library

is first turned on. Upon startup, the Management Unit loads executable code, called the

“9330 code,” from its hard drive into its random access memory (“RAM”). When the

Control Unit is powered up, the Management Unit sends other code, called the “9311

code,” across the network to the Control Unit, where it is loaded into the Control Unit’s

memory. Both processes happen automatically, without any action by the library user.

      StorageTek’s claims in this case stem from the fact that the 9330 and 9311

computer code is copyrighted. StorageTek describes both the 9330 and 9311 code as

consisting of two intertwined, but distinct, groups: functional code and maintenance

code. While StorageTek never specifies which portions of its copyrighted code fall into

each group, it states that the functional code consists of the portions of the computer

program that cause the Management Unit and Control Unit to run, while the

maintenance code consists of the portions of the program that diagnose malfunctions

and maintain the performance of the Management Unit and Control Unit.              When

StorageTek sells its tape libraries to customers, the company does not sell the software

that runs the library. Rather, it only licenses the programs to its customers. The license




04-1462                                     2
covers only the functional code portions of the software, and it specifically excludes the

maintenance code. However, StorageTek provides the entire code to the customer.

Both the functional and maintenance code are automatically loaded into the RAM of the

Control Unit and Management Unit upon startup, and copying the entire code is

necessary to activate and run the library.

      Custom Hardware Engineering & Consulting, Inc., (“CHE”) is an independent

business that repairs data libraries manufactured by StorageTek. In order to diagnose

problems with the libraries, CHE intercepts and interprets error messages produced by

the maintenance code. The error messages are known as fault symptom codes. The

fault symptom codes are generated by the Control Unit and are transmitted to the

Management Unit over the network within a package of information, called an Event

Message. To ensure that the Control Unit is configured to send the fault symptom

codes, CHE needs to override a password protection scheme, called GetKey, which

was written by StorageTek to disallow certain unauthorized reconfigurations of the

maintenance code on the Control Unit.        CHE has used two devices to circumvent

GetKey. The original device, called a Library Event Manager (“LEM”), was connected to

the network between the Control Unit and the Management Unit. The LEM worked by

trying different passwords to “crack” GetKey. The LEM then allowed CHE to force the

Control Unit to send fault symptom codes over the network after rebooting the

Management Unit and Control Unit. CHE has ceased using the LEM in favor of a

different device, the Enhanced Library Event Manager (“ELEM”). The ELEM also is

attached to the network between the Control Unit and Management Unit. Rather than

“cracking” the GetKey password, the ELEM mimics a signal from the Management Unit




04-1462                                      3
to the Control Unit upon rebooting the Control Unit, which causes the maintenance code

on the Control Unit to be configured to send the fault symptom codes.          CHE then

intercepts the Event Messages and interprets the fault symptom codes. Based on the

information in those error codes, CHE is able to diagnose and repair the data libraries.

      StorageTek brought an action in the United States District Court for the District of

Massachusetts against CHE and its president, David York. StorageTek alleged that

CHE committed copyright infringement when CHE rebooted and reconfigured its

customers’ Control Units and Management Units.         Storage Tech. Corp. v. Custom

Hardware Eng’g & Consulting, Inc., No. 02-12102-RWZ (D. Mass.).              Additionally,

StorageTek alleged that CHE violated the anticircumvention provision of the Digital

Millennium Copyright Act (“DMCA”), 17 U.S.C. § 1201(a), when CHE circumvented the

GetKey protection system to force the customer’s Control Unit to transmit error codes.

StorageTek also claimed that CHE misappropriated its trade secrets by intercepting the

Event Messages, which StorageTek asserts is confidential information.             Finally,

StorageTek asserted other claims, including an action for patent infringement, that are

not at issue in this appeal. In response, CHE counterclaimed, alleging that StorageTek

had committed various antitrust violations.

      Upon bringing suit, StorageTek asked the district court to issue a preliminary

injunction against CHE. After a hearing on the motion, the district court agreed that

StorageTek had shown a substantial likelihood of success on the copyright, DMCA, and

trade secret claims.     Additionally, the court found that the potential losses to

StorageTek’s business due to CHE’s activities were sufficiently great that the balance of

hardships favored issuing a preliminary injunction.     Finally, the trial court held that




04-1462                                       4
CHE’s antitrust counterclaims would likely fail and in any event could not shield CHE

from an injunction. The court therefore enjoined CHE from circumventing the GetKey

system, intercepting and displaying Event Messages, or causing the copying of the

maintenance code on its customers’ systems. CHE appeals. Because the issues on

appeal are not within our exclusive jurisdiction, we follow the law of the circuit from

which this appeal is taken. Glaxo, Inc. v. Novopharm, Ltd., 110 F.3d 1562, 1572 (Fed.

Cir. 1997).

                                             I

       CHE does not deny that the copyrighted maintenance code is copied into the

Control Unit’s or Management Unit’s RAM when the company reboots its customers’

systems. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 518-19 (9th Cir.

1993). Nor does CHE dispute that the duplication of the maintenance code is outside

the explicit grant of StorageTek’s software license to its customers. Absent a defense,

CHE’s actions would constitute copyright infringement. Stenograph L.L.C. v. Bossard

Assocs., Inc., 144 F.3d 96, 99 (D.C. Cir. 1998).       CHE maintains, however, that its

replication of the maintenance code is permissible based on a variety of defenses.

Specifically, CHE argues that the copying is protected by sections 117(a) and 117(c) of

the Copyright Act, 17 U.S.C. §§ 117(a), 117(c), and the doctrine of fair use. CHE also

claims that it is implicitly authorized to copy the maintenance code and that

StorageTek’s copyright on the code is invalid.

                                            A

       CHE first asserts that section 117(c) of the Copyright Act shields it from liability

for copyright infringement. Section 117(c) has not previously been construed by the




04-1462                                     5
First Circuit or any court of appeals, and we therefore treat the issue as one of first

impression. Section 117(c) 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.

       CHE’s position is that its actions are protected by section 117(c) because the

owners of the tape libraries authorize CHE to turn on the Control Units and

Management Units to maintain and repair the tape libraries, and the duplication of the

software into RAM is necessary for the machine to function. CHE also argues 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.” H.R. Rep. No. 105-551, pt. 1, at 27 (1998).

       StorageTek contends that CHE’s activities fail to meet the requirements of

sections 117(c)(1) and 117(c)(2). Specifically, StorageTek claims that CHE does not

destroy the copy of the computer code in RAM after the maintenance is completed, in

contravention of section 117(c)(1). StorageTek also claims that the maintenance code

is not “necessary for the machine to be activated,” and that CHE therefore violates

section 117(c)(2) when it accesses the maintenance code to diagnose errors in the

cartridge library. The dissent agrees.


04-1462                                     6
       The requirement in section 117(c)(1) that the new copy of the computer program

be destroyed after maintenance or repair is completed can be achieved in most cases

by turning off the machine, which erases the copy from RAM. In this case, the evidence

showed that CHE reboots the storage libraries at the conclusion of its maintenance

contract with the owners of the storage libraries, thus destroying the copy of the

computer program in RAM. However, the district court determined that the destruction

of the copy at that point does not satisfy the requirements of section 117(c)(1) because

CHE “fails to destroy the copies they make immediately after completion of repairs.” In

other words, the district court looked to whether CHE rebooted the machines each time

it repaired a particular malfunction in the silo. The flaw in the court’s analysis is that it

focuses on the term “repair” in the statute, while ignoring the term “maintenance.”

       Section 117(d) defines “repair” as “the restoring of the machine to the state of

working in accordance with its original specifications . . . .” 17 U.S.C. § 117(d)(2). It

defines “maintenance” as “the servicing of the machine in order to make it work in

accordance with its original specifications . . . .” 17 U.S.C. § 117(d)(1). Those two

definitions make clear that Congress contemplated two distinct activities. The term

“repair” denotes fixing a broken machine that is no longer “working in accordance with

its original specifications.” That term would apply whenever there is a discrete problem

with the machine, e.g., when there are “worn or defective components such as memory

chips, circuit boards, and hard drives” that need to be replaced. S. Rep. No. 105-190,

at 58 (1998). Once the machine is “restored” to its original working condition, the new

copy of the program would have to be destroyed immediately in order for section 117(c)

to apply. In contrast, the term “maintenance” has a much broader temporal connotation.




04-1462                                      7
The Senate Report on section 117 characterized “maintenance” as including “checking

the proper functioning of [ ] components.” Id. Thus, maintenance, or “servicing,” was

meant to encompass monitoring systems for problems, not simply fixing a single,

isolated malfunction.

      This interpretation of the term “maintenance” comports with the general policy

underlying the enactment of section 117(c).          That policy 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.” H.R. Rep. No. 105-551, pt. 1, at 27. Congress thus sought to

protect the class of companies that fix and maintain computer systems, as opposed to

those that would make other commercial use of copyrighted material. The point of

requiring that copies be “destroyed immediately after the maintenance or repair is

completed” was not to create artificial restraints on companies engaged in legitimate

repair and maintenance activities, but to prevent persons from invoking the protection of

section 117 and then later using the copied material for a prohibited purpose. It would

run counter to that objective to construe section 117(c) narrowly to apply only to

companies that performed repair in discrete, temporally isolated stages, rather than to

construe the statute to apply to repair and maintenance services generally, so long as

the companies’ only reason for copying the software at issue was to fix and maintain the

machines on which the software was running.

      In its analysis of section 117(c), the district court gave considerable weight to the

testimony of StorageTek’s expert, Christian Hicks.      The court noted that Mr. Hicks

testified that a copy of the copyrighted software program remains in the Management




04-1462                                     8
and Control Units’ RAM on an ongoing basis as the system operates with the LEM or

ELEM attached. Because that description did not comport with the notion of “repair,”

the court held section 117(c) inapplicable. In describing CHE’s process, however, Mr.

Hicks noted that “the LEM and ELEM stay in place at the facilities so that when

problems occur,” CHE can detect and fix the malfunction. That is the same as saying

that while the LEM and ELEM are attached, CHE “checks the proper functioning” of the

storage library and ensures that the machine “works in accordance with its original

specifications.” Accordingly, CHE’s actions fall within the definition of maintenance in

section 117.   Moreover, when CHE’s maintenance contract is over, CHE stops its

maintenance and immediately reboots the storage library, thereby destroying the copy

of the copyrighted program.     CHE’s actions therefore appear to comply with the

requirement of section 117(c)(1). While CHE may actively check to ensure that the silo

is free from errors over an extended period of time, the protection of section 117 does

not cease simply by virtue of the passage of time. Rather, it ceases only when that

maintenance ends.

      In the alternative, StorageTek contends that CHE cannot avail itself of section

117(c) because the statute requires that “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 . . . .” According to StorageTek, the maintenance code

is “not necessary for the machine to be activated,” and CHE’s access to and use of the

maintenance code to generate the Event Message signal therefore makes CHE liable

for infringement.   That assertion turns on the meaning of “maintenance code.”

StorageTek’s license agreement states that the maintenance code is software “which




04-1462                                    9
detects, records, displays and/or analyzes malfunctions in [the] Equipment.” Because

those processes are distinct from “activating the machine,” StorageTek argues that

duplication of the maintenance code is not covered by section 117(c).

      Unfortunately, determining whether a particular piece of software is “necessary

for the machine to be activated” is not as simple as it might appear. On the one hand,

not all code that resides in a machine’s RAM after the completion of the startup routine

qualifies as “necessary for the machine to be activated,” even though that code is put

into RAM as part of the activation process. If that were so, the requirement of section

117(c)(2) would effectively be read out of the statute, since under that interpretation

there would be no program that was copied by virtue of activation but could not

otherwise be accessed or used. At the same time, the code “necessary for the machine

to be activated” cannot be the minimal amount of code that, when loaded into RAM,

causes the machine to produce any response. For instance, the programs and drivers

that allow the monitor on a personal computer to function do not fall outside the

protection of section 117(c) simply because the computer itself can be activated and

can function without a monitor attached. If section 117(c) were read that restrictively,

accessing copyrighted software that controlled the monitor would put parties at risk of

infringement, which would thwart Congress’s desire to ensure “that an independent

service provider may turn on a client’s computer machine in order to service its

hardware components.” S. Rep. No. 105-190, at 57.

      In enacting section 117(c), Congress gave some indication of what it considered

to be “necessary for the machine to be activated.” Specifically, the House Report on

section 117(c) noted that software is necessary for the machine to be activated if it




04-1462                                   10
“need[s] to be so loaded in order for the machine to be turned on.” H.R. Rep. No. 105-

551, pt. 1, at 28. As examples of software that need not be loaded in order for the

machine to function, the Report listed programs marketed as separate products that

load into RAM along with the operating system or software that the owner of the

machine has independently configured the computer to load during initialization. Id.

Therefore, separate “freestanding programs” that load into RAM upon startup clearly

may not be accessed under section 117(c)(2).

       Congress’s clearest indication of what it considered to be “necessary for the

machine to be activated,” however, is found not in section 117(c), but in section 117(d).

As we have noted, section 117(d) defines repair and maintenance in terms of allowing

the system to work “in accordance with its original specifications and any changes to

those specifications authorized for that machine.” Thus, the service provider must be

able to cause the machine to boot up in order to determine if it “works in accordance

with its original specifications.” Accessing software programs, such as freestanding

diagnosis and utility programs, that are not needed to boot up the computer and make

that determination, goes too far because access to those programs is not strictly

necessary to verify that the computer is “working in accordance with its original

specifications.”

       In some instances, it may be difficult to determine whether particular software is

necessary to make the computer function and to ascertain whether the computer is

working properly. In this case, however, both parties agree that the maintenance code

is so entangled with the functional code that the entire code must be loaded into RAM

for the machine to function at all. That is, loading the maintenance code into RAM is




04-1462                                    11
necessary for the Management or Control Unit “to be turned on.”            Contrary to the

dissent’s position, the fact that the maintenance code has other functions, such as

diagnosing malfunctions in the equipment, is irrelevant. Moreover, the possibility that

StorageTek could have written the maintenance code as a separate, “freestanding”

program that would not have been needed to start the machine does not affect the

statutory analysis of the system that StorageTek in fact created. Finally, although the

maintenance code can be reconfigured to perform fewer functions, as the dissent points

out, what StorageTek can do with the maintenance code after the system boots up is

irrelevant.   As the statutory text and legislative history make clear, the phrase

“necessary for the machine to be activated” refers to the portion of code that must be

copied in order for the machine “to be turned on.”               In this case, copying the

maintenance code into RAM is indispensable for the machine to be turned on or

activated; its functionality (or lack thereof) after bootup is moot.

       Finally, StorageTek contends that section 117(c) does not apply to CHE’s

conduct because CHE does not reboot the machine and make a copy of the

copyrighted code “for purpose only of maintenance or repair.” Specifically, StorageTek

maintains that CHE reboots the machine in order to circumvent GetKey and gain access

to the fault symptom codes. That argument is unconvincing because CHE’s entire

purpose in obtaining the fault symptom codes is to diagnose and repair the silos.

StorageTek’s argument that CHE’s activity is not “for purpose only of maintenance or

repair” is akin to suggesting that it would be impermissible to activate a keyboard on a

personal computer for the purpose of maintenance or repair because the real purpose

of activating the keyboard would be to allow the user to type. That line of reasoning, if




04-1462                                       12
accepted, would quickly destroy the protection that section 117(c) affords. If CHE had

rebooted the storage library and loaded its own proprietary code to detect and diagnose

errors in the silo, that activity would surely be considered “repair and maintenance.”

Merely because CHE uses StorageTek’s proprietary maintenance code to do the same

thing does not cause CHE’s activities to no longer be “for the purpose only of

maintenance or repair of that machine.” In sum, we conclude that CHE is likely to

prevail on the merits of its argument that section 117(c) protects its act of copying of

StorageTek’s maintenance code into RAM.

                                            B

      CHE argues in the alternative that even if the section 117(c) defense is

unavailable, CHE is not liable for copyright infringement because it enjoys the benefits

of its customers’ licenses to copy StorageTek’s 9330 and 9311 code in order to activate

their machines.    StorageTek’s license agreement with its customers allows the

customers to copy StorageTek’s software into RAM “for the sole purpose of enabling

the specific unit of Equipment for which the Internal Code was provided to perform its

data storage and retrieval or other operating functions.” Therefore, the customers do

not commit infringement merely by activating their Management and Control Units and

consequently copying StorageTek’s software into RAM. As an agent of those storage

library owners, CHE also does not commit copyright infringement simply by turning on

the owners’ machines.     See Hogan Sys., Inc. v. Cybersource Int’l, Inc., 1997 WL

311526, at *4 (N.D. Tex. June 2, 1997), aff’d, 158 F.3d 319 (5th Cir. 1998) (although the

license at issue did “not specifically authorize a third-party consultant to use, copy, or

modify Umbrella software,” the court found that while the defendants “are engaged in




04-1462                                    13
consulting services on behalf of Norwest, Defendants’ activities are ‘sheltered under’

Norwest’s license rights”).

       StorageTek argues that CHE’s use of the maintenance code must constitute

infringement because the license agreement specifically excludes the use of the

maintenance code.       Because CHE’s customers are not allowed to access the

maintenance code, StorageTek asserts that when CHE does so, it must be infringing

StorageTek’s copyright. There are two flaws in that line of reasoning. First, CHE’s

customers are given the right to copy the maintenance code into the RAM of their

machines.    The license specifically authorizes the customers to use the code to

“enabl[e] the specific unit of Equipment.” The parties are in agreement that both the

maintenance code and functional code portions of the 9330 or 9331 code must be

loaded into RAM in order to activate the Control and Management Units. In order to

activate the Control and Maintenance Units, the maintenance code must be copied.

The license thus authorizes the copying of that code.

       Second, StorageTek’s argument conflates a claim based on copyright

infringement and an action based on breach of contract. To succeed in a copyright

action, “the copying must be beyond the scope of a license possessed by the

defendant,” Stenograph, 144 F.3d at 99, and the source of the copyright owner’s

complaint must be grounded in a right protected by the Copyright Act, such as unlawful

reproduction or distribution. See 17 U.S.C. § 106. In contrast, the rights granted by

contract can be much broader.       As an example, consider a license in which the

copyright owner grants a person the right to make one and only one copy of a book with

the caveat that the licensee may not read the last ten pages. Obviously, a licensee who




04-1462                                    14
made a hundred copies of the book would be liable for copyright infringement because

the copying would violate the Copyright Act’s prohibition on reproduction and would

exceed the scope of the license. Alternatively, if the licensee made a single copy of the

book, but read the last ten pages, the only cause of action would be for breach of

contract, because reading a work does not violate any right protected by copyright law.

Likewise, in this case, the copying of the maintenance code is permitted by the license.

The use of the code may violate the license agreement, but it is not forbidden by

copyright law and cannot give rise to an action for copyright infringement. See United

States Naval Inst. v. Charter Communications, Inc., 936 F.2d 692, 695 (2d Cir. 1991)

(“[a] licensee of any of the rights comprised in the copyright, though it is capable of

breaching the contractual obligations imposed on it by the license, cannot be liable for

infringing the copyright rights conveyed to it”).

       Although there is language in some cases that can be read to suggest that

copyright protection extends to all conduct that would violate the user’s license, the

decisions in those cases are not that broad. For example, in S.O.S., Inc. v. Payday,

Inc., the Ninth Circuit stated that a “licensee infringes the owner’s copyright if its use

exceeds the scope of its license.” 886 F.2d 1081, 1087 (9th Cir. 1989). In that case,

however, it was clear that the “use” the copyright owner was complaining about was the

defendant’s “copying and modification of the software.” Id. at 1085. Similarly in John G.

Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 41 (1st Cir. 2002), the

First Circuit noted that “[u]ses of the copyrighted work that stay within the scope of a

nonexclusive license are immunized from infringement suits.” Not only did the court not

state that “uses” that fall outside the scope of the license would necessarily constitute a




04-1462                                      15
copyright violation, but the allegedly unlawful “use” in that case was the copying of

architectural plans. Id. at 32; see Data Gen. Corp. v. Grumman Sys. Support Corp., 36

F.3d 1147, 1167 (1st Cir. 1994). In light of their facts, those cases thus stand for the

entirely unremarkable principle that “uses” that violate a license agreement constitute

copyright infringement only when those uses would infringe in the absence of any

license agreement at all.

      StorageTek maintains that regardless of the scope of its licenses vis-à-vis the

equipment owners, the licenses do not extend rights to third parties.      In particular,

StorageTek points to the language of its standard license agreement, which states that

the equipment owner may not “sublicense, assign, lease or permit another person to

use Internal Code (except as provided . . . below).” The company argues that this

provision forbids CHE from copying StorageTek’s code into RAM by starting up the

Control and Management Units.       That argument, however, ignores the rest of the

license agreement. The prohibition on third-party use of the code is modified by a later

provision stating that equipment owners “may transfer possession of Internal Code only

with the transfer of the Equipment on which its use is authorized.” Additionally, the

license grants the customer the use of the code for “the sole purpose of enabling the

specific unit of Equipment for which the Internal Code was provided . . . .” The clear

implication of those sections is that the license is tied to the piece of equipment on

which the software resides. Thus, the authorized use is tied to a particular machine,

rather than a particular person. In fact, one version of StorageTek’s license agreement

expressly contemplates third-party use of the equipment, noting that “misuse of the

Equipment or negligence by Customer or a third party” is not included within the




04-1462                                   16
maintenance provision of the license.        Thus, the prohibition against assigning or

permitting another to use the code is clearly a restriction on giving a third party a copy of

the code that is divorced from the machine “on which its use is authorized.” In this

case, CHE is merely turning on the machine on which the use of the code is authorized.

See Green Book Int’l Corp. v. Inunity Corp., 2 F. Supp. 2d 112, 116 n.1 (D. Mass. 1998)

(multiple individuals may use computer under a license, “which limits use to ‘only one

single-user computer,’ without any additional restriction on the identity of the person

who, from time to time, physically sat at and operated such computer”). Because the

whole purpose of the license is to allow the tape library owners to activate their

machines without being liable for copyright infringement, such activity by the licensee

and its agents is implicitly authorized by the license agreement unless the agreement

explicitly prohibits third parties from powering up the machines.

       Other cases involving software license agreements support that reading of

StorageTek’s agreement, albeit indirectly.        For example, in MAI Systems, the Ninth

Circuit held that a third party was not authorized to copy licensed software into RAM by

activating a computer. However, the court held that the license did not cover such

copying because the license prohibited third parties from copying the software. 991

F.2d at 517. The license in MAI Systems was so restrictive that only three employees

of the licensee were allowed to use and copy portions of the software. Id. at 517 n.3. It

was only because the license contained such severe, explicit restrictions that the court

held that third parties were prohibited from copying the software by activating the

machine. The court in MAI Systems would not have had to rest its decision on those

restrictive license terms if third parties were disallowed from copying the software even




04-1462                                      17
in the absence of such restrictive language in the license. See also SMC Promotions,

Inc. v. SMC Promotions, 355 F. Supp. 2d 1127, 1132 (C.D. Cal. 2005) (forbidding third-

party copying by relying on the explicit language of the license, which stated that

licensees “may not delegate or authorize any other person to do so, whether on [the

licensees’] behalf or otherwise”).

       StorageTek, of course, could have drafted the license agreement to explicitly

disallow copying by third parties through activation of the equipment owners’ machines.

In the absence of such language, however, CHE’s copying appears to be protected as

long as CHE is acting as an agent of the equipment owners.

                                            C

       In conclusion, the district court erred in finding that CHE was unlikely to prevail

on its defense to copyright infringement. CHE’s conduct appears to fall within the safe

harbor of 17 U.S.C. § 117(c). Additionally, CHE is likely to prevail on its contention that

StorageTek’s license agreement with its customers allows CHE, as the customers’

agent, to copy StorageTek’s software into RAM during the activation of the customers’

tape libraries. Having concluded that CHE is likely to prevail on the issue of copyright

infringement based on section 117(c) and the customers’ licenses, we do not need to

address CHE’s defenses premised on section 117(a), fair use, and invalid registration.

                                            II

       The DMCA claim is based on CHE’s circumvention of the GetKey protocol.

Specifically, StorageTek maintains that the use of the ELEM and LEM devices violates

section 1201(a)(1) of title 17 of the United States Code, which prohibits any person from

“circumvent[ing] a technological measure that effectively controls access to a work




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protected under this title.” While the First Circuit has not addressed the scope of the

DMCA’s prohibition under section 1201(a), this court has confronted the issue in

Chamberlain Group, Inc. v. Skylink Technologies, Inc., 381 F.3d 1178 (Fed. Cir. 2004).

        In Chamberlain we held that when Congress enacted the DMCA, it “chose to

create new causes of action for circumvention and for trafficking in circumvention

devices. Congress did not choose to create new property rights.” 381 F.3d at 1203.

Accordingly, we held that section 1201 “prohibits only forms of access that bear a

reasonable relationship to the protections that the Copyright Act otherwise affords

copyright owners.”    Id. at 1202.    A copyright owner alleging a violation of section

1201(a) consequently must prove that the circumvention of the technological measure

either “infringes or facilitates infringing a right protected by the Copyright Act.” Id. at

1203.

        In this case, the LEM and ELEM devices allow CHE to bypass GetKey and gain

access to the maintenance code. Furthermore, the manner in which the ELEM and

LEM function requires that the Control or Management Units be rebooted, causing the

protected software to be copied into RAM. Nonetheless, simply because the ELEM or

LEM allows access to the copyrighted work concurrently with the copying does not

mean that the ELEM or LEM “facilitates” copyright infringement. Consequently, the

district court erred by failing to consider whether or not such facilitation occurred.

        We held above that it is unlikely StorageTek will succeed on the merits of its

copyright claim.     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 DMCA. See Chamberlain, 381 F.3d at 1202. That




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result follows because the DMCA must be read in the context of the Copyright Act,

which balances the rights of the copyright owner against the public’s interest in having

appropriate access to the work.        See id. at 1199 (“the severance of access from

[copyright] protection . . . would also introduce a number of irreconcilable problems in

statutory construction”); 17 U.S.C. § 1201(c)(1) (“Nothing in this section shall affect

rights, remedies, limitations, or defense to copyright infringement . . . .”); see also Sony

Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984). Therefore,

courts generally have found a violation of the DMCA only when the alleged access was

intertwined with a right protected by the Copyright Act. See, e.g., Lexmark Int’l, Inc. v.

Static Control Components, Inc., 253 F. Supp. 2d 943, 987 (E.D. Ky. 2003), vacated

and remanded on other grounds, 387 F.3d 522 (6th Cir. 2004); RealNetworks, Inc. v.

Streambox, Inc., 2000 WL 127311, at *7 (W.D. Wash. Jan. 18, 2000); accord Universal

City Studios v. Corley, 273 F.3d 429, 435 (2d Cir. 2001) (explaining that Congress

enacted the DMCA to help copyright owners protect their works from piracy). To the

extent that StorageTek’s rights under copyright law are not at risk, the DMCA does not

create a new source of liability.

       Even if StorageTek were able to prove that the automatic copying of the software

into RAM constituted copyright infringement, however, it would still have to show that

the LEM or ELEM facilitated that infringement. See Chamberlain, 381 F.3d at 1202. If

such a nexus were not required, the careful balance that Congress sought to achieve

between the “interests of content creators and information users” would be upset. See

H.R. Rep. No. 105-551, pt. 1, at 26.




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       The problem in this case is that the copying of the software into RAM when the

Control or Management Units are rebooted takes place regardless of whether the LEM

or ELEM is used. Hence, there is no nexus between any possible infringement and the

use of the circumvention devices. Rather, CHE’s circumvention of GetKey only allows

CHE to use portions of the copyrighted software that StorageTek wishes to restrict

technologically.   The activation of the maintenance code may violate StorageTek’s

contractual rights vis-à-vis its customers, but those rights are not the rights protected by

copyright law. There is simply not a sufficient nexus between the rights protected by

copyright law and the circumvention of the GetKey system.

       A court must look at the threat that the unauthorized circumvention potentially

poses in each case to determine if there is a connection between the circumvention and

a right protected by the Copyright Act.        See Lexmark Int’l, Inc. v. Static Control

Components, Inc., 387 F.3d 522, 549-50 (6th Cir. 2004); Chamberlain, 381 F.3d at

1204. In this case, the threat from CHE’s circumvention of GetKey is distinct from the

dangers that StorageTek’s copyright protects against. See 17 U.S.C. § 106.

       In sum, the district court failed to consider whether the circumvention of the

GetKey system either infringes or facilitates infringing a right protected by the Copyright

Act. We conclude that it is unlikely that StorageTek will prevail on its claim under

section 1201(a) in this case because the ELEM and LEM devices are not reasonably

related to any violation of the rights created by the Copyright Act.

                                             III

       StorageTek asserts that the information contained in the Event Messages

constitutes a trade secret. Accordingly, StorageTek contends that by breaking GetKey




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and reconfiguring the Control Units to send the Event Messages, CHE has

misappropriated the secret information contained in the Event Messages. StorageTek’s

argument is undermined, however, by the fact that the pertinent information in the Event

Messages used to be publicly available.

      Trade secret protection is unavailable for information that is not actually secret.

See Jet Spray Cooler, Inc. v. Crampton, 282 N.E.2d 921, 925 (Mass. 1972). Therefore,

information that is in the public domain cannot be appropriated by a party as its

proprietary trade secret. CVD, Inc. v. Raytheon Co., 769 F.2d 842, 850 (1st Cir. 1985)

(“Once a trade secret enters the public domain, the possessor’s exclusive rights to the

secret are lost.”). While StorageTek took precautions to protect the information in the

Event Messages by implementing GetKey, those efforts are insufficient to create trade

secret rights if the public previously had access to the information contained in the

Event Messages.

      CHE maintains that the vital information in the Event Messages—the meaning of

the fault symptom codes—was public knowledge before StorageTek created GetKey.

There appears to be overwhelming evidence that the fault symptom codes were freely

transmitted by the library components, with no effort to keep their meaning secret.

StorageTek’s senior customer service engineer testified that the fault system codes

were not confidential. That fact was confirmed by CHE’s expert. There was even

evidence that early versions of StorageTek’s software would cause the error codes to

be shown on the Control Unit’s display panel whenever there was an error. In fact,

technicians first learned the meaning of the error messages by recording the error

message that was revealed on the display panel for each type of machine malfunction.




04-1462                                   22
There was also evidence that the entire Event Message was openly transmitted before

the GetKey system was put in place. Mr. Billington, StorageTek’s expert, testified that

from 1987 until 1992 the data packets were “freely available.”

      StorageTek makes two arguments in support of its contention that the Event

Messages were never freely available. First, it maintains that in 1992, before GetKey

was implemented, StorageTek attempted to keep the error codes secret by disabling

the maintenance code, which sends the Event Messages, on customers’ machines.

Those actions are irrelevant, however, because the error messages had already been

freely transmitted between 1988 and 1992. See J.T. Healy & Son, Inc. v. James A.

Murphy & Son, Inc., 260 N.E.2d 723, 730 (Mass. 1970) (a trade secret is lost when the

owner “lie[s] back and do[es] nothing to preserve its essential secret quality”). Second,

StorageTek argues that it is immaterial that the general meaning of the fault symptom

codes was in the public domain.      Instead, StorageTek contends that the pertinent

confidential information is the error message corresponding to a specific customer’s

equipment malfunction. Thus, according to StorageTek, the secret information is the

error message that would be sent by a particular customer’s machine if the machine

were configured to produce and transmit fault symptom codes. Given that the general

meanings of the fault symptom codes are in the public domain, however, that argument

seemingly implies that the actual error on the customer’s machine is secret. Yet the

machines are owned by the customer and are in the customer’s possession.             The

reason that the machine is malfunctioning therefore cannot possibly be considered a

secret. As an analogy, consider a stock broker who devised a program that would notify

him when a stock price was at a point at which the stock was worth buying. Obviously




04-1462                                    23
that special “buy price” could be a trade secret if it had not been previously made public,

but in no event could the actual market price that triggered the notification be

considered a trade secret. Similarly, the meaning of the fault symptom codes might

have been a trade secret if they had not been previously made public, but the actual

reason for the machine malfunctioning would not be.

      The dissent maintains that “the information detailing precisely which aspect of the

system is broken and how to fix it” is protected as a trade secret. However, as we have

noted, the meanings of the codes and the malfunction itself are public information.

Additionally, there is no indication that the Event Messages provide a prescription of

how to fix the machine rather than simply a diagnosis of what is wrong. The dissent

further claims that trade secrets “remain trade secrets unless and until a third party

discovers the information on its own.” That analysis fails for two reasons. First, the

owner of the trade secret bears the burden of taking reasonable steps to preserve the

secrecy of the trade secret. See USM Corp. v. Marson Fastener Corp., 393 N.E.2d

895, 899-900 (Mass. 1979). The dissent’s position apparently shifts the burden onto

others to discover the trade secret information independently.          Second, to show

misappropriation of a trade secret under Massachusetts law, StorageTek must show

that CHE “used improper means, in breach of a confidential relationship, to acquire and

use the trade secret.”    Data Gen., 36 F.3d at 1165.       CHE uses publicly available

information about what the fault symptom codes mean, and it developed the LEM and

ELEM devices independently to diagnose problems in the silos. There has been no

showing that either of those activities breached a confidential relationship. Therefore,

the diagnostic information obtained through those methods, i.e. determining what is




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physically wrong with the silo, cannot be a misappropriation of a trade secret, any more

than if CHE had reverse engineered the silo in any other manner. Bonito Boats, Inc. v.

Thunder Craft Boats, Inc., 489 U.S. 141, 160 (1989).

       For these reasons, we agree with the appellants that the district court erred in

failing to consider whether the information contained in the error messages is secret.

Because it appears that the information for which StorageTek asserts trade secret

protection was previously in the public domain, we conclude that StorageTek is unlikely

to prevail on the merits of its trade secret claim.

                                              IV

       Because the district court committed errors of law in its consideration of

StorageTek’s copyright claim and because the district court overlooked material factors

in its analysis of the DMCA and trade secret claims, we find the court abused its

discretion in granting the preliminary injunction.      See Bl(a)ck Tea Soc’y v. City of

Boston, 378 F.3d 8, 11 (1st Cir. 2004).            Therefore, we vacate the grant of the

preliminary injunction and remand for further proceedings.

                               VACATED and REMANDED.




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     United States Court of Appeals for the Federal Circuit
                                         04-1462

                        STORAGE TECHNOLOGY CORPORATION
                            (doing business as Storagetek),

                                                        Plaintiff-Appellee,

                                            v.

              CUSTOM HARDWARE ENGINEERING & CONSULTING, INC.,

                                                        Defendant-Appellant,

                                           and

                                      DAVID YORK,

                                                        Defendant-Appellant.

RADER, Circuit Judge, dissenting.

          This court’s opinion today destroys copyright protection for software that

continually monitors computing machine behavior. The opinion also conflates methods

used to protect trade secret information with the actual information constituting the trade

secret.      Because these holdings are contrary to the underlying law, I respectfully

dissent.

          The safe harbor created by § 117(c) is not a carte blanche license to use any

program loaded into a computer’s RAM when a machine is turned on. Section 117(c)(2)

specifically precludes a repairman from using copies of programs loaded into RAM upon

powering-up that are “not necessary for that machine to be activated.” Maintenance

code that continually monitors for faults, as does Storage Tek’s, is loaded into RAM

upon powering-up the system but, as CHE admits, the maintenance code can be

disabled with no affect on the operating aspects of the system. Of course, disabling the
maintenance code eliminates continuous monitoring for faults. Even though Storage

Tek has chosen to load the maintenance code upon activation, the maintenance code

as such is incidental, not indispensable, to activation. Consequently, CHE’s use of

copies of Storage Tek’s maintenance code falls outside the safe harbor created by §

117(c).

      This court’s opinion holds that CHE’s copying and use of Storage Tek’s

diagnostic “maintenance code” software falls within the protection of § 117(c) because

“CHE ‘checks the proper functioning’ of the storage library and ensures that the

machine ‘works in accordance with its original specifications.’”     However, § 117(c)

places restrictions upon the use of maintenance software. Therefore, while I agree that

“maintenance” includes checking the proper functioning of components, I do not agree

that CHE’s use of Storage Tek’s maintenance code falls within the protection of

§ 117(c).

      When using Storage Tek’s maintenance code, which is not code “necessary for

the machine to be activated,” CHE does not reboot the storage silos of its clients for the

sole purpose of making a new copy “by virtue of the activation of the machine.” If it did,

CHE would be within the safe harbor of § 117(c). Although at the time CHE reboots it

repairs nothing, adjusts nothing, and checks nothing, CHE subsequently accesses and

uses the maintenance code to send data packets that indicate the operation of the

system. Therefore, CHE does not fall within the safe harbor of § 117(c)(2).

      Alternatively, even if Storage Tek’s maintenance code were so written as to be

“necessary for the machine to be activated,” when CHE reboots the silos with that code,

it once again repairs nothing, adjusts nothing, and checks nothing. Because CHE does




04-1462                                     2
not perform any “maintenance” or “repair” when it reboots the system to manipulate the

maintenance code, this copying of the maintenance code does not fall within the

protection of § 117(c)(1).

       Section 117(c) allows a repairman to turn on a machine and to use the programs

necessary to run the machine for the limited period of time the repairman is actually

working on the machine, whether the repairman is fixing something that is actually

broken, or servicing parts to prevent the machine from breaking in the future. Servicing

parts may certainly encompass “putting the machine through the paces” to ensure that

all the parts are properly functioning. In other words, the words “maintenance” and

“repair” in § 117(c) extend the protection of § 117(c) to cover both the monitoring of

function to assure that repair is not needed, and identification of malfunction to facilitate

repair. However, the “maintenance and repair” must be of limited duration. Section

117(c)(1) specifies that any copy of the maintenance software must be destroyed “after

the maintenance or repair is completed.” CHE, however, does not meet this condition.

CHE runs the maintenance software continually to monitor operation. Only when a

problem arises during monitoring, does CHE actually work on the silo. Thus, CHE uses

the copy of the maintenance code in RAM beyond actual servicing or repairing. This

continual use falls outside the scope of § 117(c).

       As this court’s opinion states, the policy of § 117(c) is “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. . . . The point of requiring that copies be ‘destroyed immediately

after the maintenance or repair is completed’ was not to create artificial restraints on




04-1462                                      3
companies engaged in legitimate repair and maintenance activities, but to prevent

persons from invoking the protection of § 117 and then later using the copied material

for a prohibited purpose.” CHE, however, 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 it may read fault codes. As noted above, this is not “maintenance” or “repair” under

§ 117(c). CHE also does not “immediately destroy” the copy when the service or repair

is completed. CHE uses the maintenance code even while the machine is functioning

properly and is in full use by the client. How can CHE’s continual use of Storage Tek’s

software during a three-year (or more) contract not be “using the material for a

prohibited purpose”? Again, the “immediately destroy” requirement of § 117(c) protects

use only during the limited time the repairman is actually working on the computer.

       This court also holds that the diagnostic information contained in the data

packets created and sent by the maintenance code cannot be a trade secret because

“the reason the machine is malfunctioning [ ] cannot possibly be considered a trade

secret.”   But it is the data packets themselves, not the physical operation (or mis-

operation) that they describe, that is the trade secret.        A malfunction may be

independently discoverable, but that does not preclude the information which describes

it from being a trade secret. In my eyes, this court’s analogy to a special “buy price” is

flawed. As I see it, the message that the arm of a storage silo is “broken” is analogous

to the “buy price” that this court states “cannot possibly be considered a trade secret.”

The diagnostic information contained in the data packets, i.e., the information detailing

precisely which aspect of the system is broken and how to fix it, is analogous to the

information detailing why the “buy price” makes a good buy. That a third party may




04-1462                                     4
perform its own diagnostics on the broken system and discover the cause of the

malfunction does not remove the proprietary nature of the information until the third

party actually performs the diagnostics and discovers the malfunction. Trade secrets

remain trade secrets unless and until another party discovers the information on its own,

at which point the information enters the public domain and is no longer protected. The

point is that the other party must perform the work to discover the information on its own

instead of stealing the information from its competitor.

       Finally, this court’s suggestion that the meaning of the fault symptom codes

themselves may have been a trade secret if they had not been introduced into the

public domain misses the point. The proprietary fault symptom codes are the language

used to express the faults, so it is the correlation of fault and code that forms the lexicon

by which the trade secret can be deciphered.

       For the foregoing reasons, I respectfully dissent.




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