The opinion of the court was delivered by: Rebecca Pallmeyer, District Judge
MEMORANDUM OPINION AND ORDER
On March 26, 2003, Plaintiff The Chamberlain Group ("Chamberlain") filed its second amended complaint (SAC) against Defendant Skylink Technologies ("Skylink"), Plaintiff's competitor in the electronic garage door industry.*fn1 In this lawsuit, Chamberlain challenges Skylink's distribution of a universal remote transmitter capable of activating certain garage door openers manufactured and sold by Chamberlain. In its SAC, Chamberlain invokes the Digital Millennium Copyright Act ("DMCA" or "the Act"), 17 U.S.C. § 1201 et seq.; the Lanham Act, 15 U.S.C. § 1125; the Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/2; and the Uniform Deceptive Trade Practices Act, 805 ILCS 510/2. In addition, Plaintiff raises claims of patent infringement and claims that Skylink's actions constitute unfair competition under Illinois common law.
For the purposes of this opinion, the court is only concerned with Count III of Chamberlain's complaint, in which Plaintiff alleges that Skylink violated the DMCA by manufacturing and marketing [ Page 2]
a transmitter that is capable of operating Chamberlain's "Security" garage door opener system. According to Chamberlain, the Skylink transmitter is capable of operating the Chamberlain garage door opener because the transmitter unlawfully circumvents a technological protective measure in Chamberlain's garage door opener's computer program. Specifically, Chamberlain claims that Skylink violated the DMCA by developing a product: (1) for the purpose of circumventing the protective measure included in Chamberlain's computer program; (2) that has no commercially significant purpose other than to circumvent Chamberlain's technological measure; and (3) that Skylink markets for the purpose of circumventing Chamberlain's protective measure. On December 3, 2002, Chamberlain filed a motion for summary judgment on Count III. Skylink opposes this motion, arguing (1) that disputed issues of material fact exist; (2) that the DMCA does not protect Chamberlain's garage door opener; and (3) that Skylink fits within a safe harbor provision of the DMCA. For the reasons stated in this opinion, Chamberlain's motion is denied.
Plaintiff Chamberlain is a Connecticut corporation with its principal place of business in Elmhurst, Illinois. (Plaintiff's 56.1 Statement, (hereinafter, "Plf.'s 56.1"), ¶ 1.) Chamberlain [ Page 3]
manufactures and sells garage door opener systems ("GDOs"), including GDOs that utilize a "rolling code" technology, described in more detail below. (Id.) Defendant Skylink Technologies is a Canadian corporation with its principal place of business in Mississauga, Ontario. (Id. ¶ 2.) Skylink Technologies distributes and markets components of GDOs in the United States.*fn3
The dispute before the court relates to a relatively new line of GDOs manufactured and distributed by Chamberlain, called the "Security" line. This line of GDOs differs from other models in that it incorporates a copyrighted computer program that constantly changes the transmitted signal needed to actuate the garage door. Both sides refer to this feature as "rolling code."
Chamberlain objects to Skylink's development of a new universal transmitter, the Model 39 universal transmitter, that can be used with a number of GDOs, including Chamberlain's Security GDO. Skylink's universal transmitter is compatible with Chamberlain's Security line and permits the user of the Skylink transmitter to open a Chamberlain Security door even though Skylink's product does not use a rolling code. Skylink's marketing of its transmitter, according to Chamberlain, leaves the Security GDO susceptible to those who would seek to record the signal of the Model 39 transmitter and then play it back in order to illegally gain access to a homeowner's garage. By creating a transmitter that circumvents Chamberlain's rolling code protective measure, Plaintiff contends, Skylink has violated the DMCA, 17 U.S.C. § 1201, et seq.
A number of facts relevant to this case are disputed. Most significantly, the parties disagree as to the purpose behind Chamberlain's rolling code GDO and the methodology of Skylink's Model 39 transmitter. The court will first set forth the technology and purpose behind Chamberlain's rolling code computer program before describing Skylink's universal transmitter.
Garage Door Openers [ Page 4]
Chamberlain manufactures and markets a variety of GDOs. (Plf.'s 56.1 ¶ 1.) A GDO typically consists of a hand-held portable transmitter and a garage door opening device, which includes a receiver with a processing unit and a motor to open or close the user's garage door.*fn4 (Id. ¶ 5.) In order to open or close the garage door, the user presses a button located on the transmitter, which in turn sends a radio frequency (RF) signal to the receiver located on the garage door opening device, which is attached to the garage ceiling. (Id.) Once this signal is received, the receiver relays that signal to the processing unit that directs the motor to open or close the garage door. (Id.) In order to prevent foreign or unauthorized transmitters from operating a homeowner's garage door, GDOs often utilize unique codes that link a transmitter to its own GDO system. (Id. ¶ 6.) As a result, the opening device must recognize the unique transmitter signal before activating the garage door motor. (Id.)
The code in the standard GDO transmitter is unique but fixed. Thus, according to Chamberlain, the typical GDO is vulnerable to attack by burglars who can open the garage door by utilizing a device referred to by Plaintiff as a "code grabber." (Declaration of James J. Fitzgibbon, (hereinafter, "Fitzgibbon Decl."), Ex. C to Plf.'s Memorandum, ¶ 7.) James Fitzgibbon, an electrical engineer for Plaintiff, explained that a "code grabber" allows a burglar to capture and record a coded RF signal as it is transmitted by a transmitter. (Id.) In order for a code grabber to successfully record a transmitted signal, the burglar must be physically present with his or her code grabber [ Page 5]
when the home owner is using the transmitter.*fn5 Fitzgibbon explains that the burglar can then return at a later time, play back the RF recorded on the code grabber, and illegally obtain access to the homeowner's garage. (Id.)
Skylink disputes that code grabbing is a genuine problem and cites the testimony of Chamberlain's own witnesses. Fitzgibbon himself acknowledged he had no first hand knowledge of any instances of a code grabber being used to access a homeowner's garage. (Fitzgibbon Deposition, (hereinafter "Fitzgibbon Dep."), Ex. 2 to Declaration of Peter T. Christensen, at 36-37; see Def.'s Resp. ¶ 7.) Richard Allan Gregory, Chamberlain's national sales representative, retail products group, also testified that he has no personal knowledge of the use of code grabbers and does not have any data demonstrating that code grabbing is a problem. (Gregory Deposition, (hereinafter, "Gregory Dep."), Ex. 1 to Declaration of Peter T. Christensen, at 9, 120-125.) Fitzgibbon did use a code grabber himself, however, to determine that the signal transmitted by Skylink's Model 39 transmitter (the subject of this lawsuit) could be recorded and replayed to activate Chamberlain's rolling code GDO. (Fitzgibbon Decl. ¶ 16.)
Regardless of whether code-grabbing is a genuine problem for consumers, Chamberlain claims that it developed a "rolling code system" to address the problem. (Fitzgibbon Decl. ¶¶ 3, 4.) According to Chamberlain, its rolling code system will prevent a code grabber from gaining access to the garage because a component of the transmission code is always changing, so that a previously recorded signal will not activate the Chamberlain rolling code GDO. (Id.) Chamberlain uses a computer program in both the transmitter and the receiver of the GDO that constantly alters the code needed to actuate the garage door by using programs referred to as "rolling code" and marketed as the "Security" line by Chamberlain. (Id. ¶ 4.) Chamberlain has a copyright on both [ Page 6]
computer programs used in its Security or rolling code GDOs; the transmitter computer program is registered with the United States Copyright Office as No. TX5-533-065, (Certificate of Registration for Copyright No. TX5-533-065, Ex. A to Plf.'s Memorandum in Support of Summary Judgment), and the computer program in the receiver is registered with the United States Copyright Office as No. TX5-549-995, (Certificate of Registration of Copyright No. TX5-549-995, Ex. B to Plf.'s Memorandum in Support of Summary Judgment).
Operation of Chamberlain's Rolling Code Program
Unlike a typical GDO, the computer program in Chamberlain's Security transmitter transmits a digital encoded signal that has two components: (1) a unique fixed identification number (similar to those used in a standard GDO) and (2) a variable number ("rolling code"). (Fitzgibbon Decl. ¶ 3.) Both the identification code and the rolling code are represented by binary digits sent from the transmitter. (Id.) The fixed identification code remains the same, but the rolling code component changes by a factor of three every time the user presses the button on the transmitter. (Id.)
Before this signal is capable of activating a user's GDO, the code must first be programmed into the receiver of the rolling code GDO. After switching the Chamberlain GDO into the program mode, which can be done at any time during the life of the GDO, the user must press the transmitter button, at which time the fixed and rolling code are stored by the computer program in the receiver. (Id. ¶ 4.) The user then switches the Chamberlain GDO back into operate mode from which he can use his transmitter to remotely activate the garage door. (Id. ¶ 6.) When the programmed transmitter is next used, the computer program in the transmitter causes the identification code to be sent with the next rolling code in sequence (that is, the last rolling code increased by a factor of three) to the receiver. (Id.)
When the signal from the transmitter reaches the receiver, a computer program in the [ Page 7]
operating device determines whether the newly-received rolling code is identical to a previously-received rolling code or within the previous 1,024 values (the "rear window"). (Id.) If the newly-received rolling code falls within the "rear window," the rolling code computer program in the receiver will not operate the GDO. (Id.) If the newly-received code's rolling code is one of the 4,096 values in advance of the previously-received rolling code (the "forward window"), the computer program accepts the new rolling code and operates the GDO. (Id.) Specifically, once an appropriate rolling code is received, the rolling code computer program in the receiver sends instructions to the microprocessor to operate the GDO. (Id.) This feature of the rolling code GDOs, according to Chamberlain, prevents code grabbers from gaining access to the garage because when a recorded code is replayed, the rolling code transmitted by the code grabber would most likely be in the rear window and would not operate the Chamberlain GDO. (Id.)
According to Chamberlain, the copyrighted rolling code computer program in the Security GDO deciphers and verifies whether the rolling code is valid and then, if it is, the program activates the motor that operates the garage door. Chamberlain characterizes that portion of the computer program that verifies the rolling code as a protective measure that controls access to Chamberlain's copyrighted computer program in its Security GDOs. (Id. ¶¶ 6, 7.) In other words, Chamberlain claims that the rolling code computer program has a protective measure that protects itself. Thus, only one computer program is at work here, but it has two functions: (1) to verify the rolling code and (2) once the rolling code is verified, to activate the GDO motor, by sending instructions to a microprocessor in the GDO.
Chamberlain describes the software as addressing rolling code values in the "forward window," (the 4,096 values after the previously-received rolling code) and the "rear window," (the 1,024 codes preceding the previously-sent rolling code). The "forward window" is a large one (i.e., it contains hundreds of codes) to allow for the possibility that the user may occasionally or even [ Page 8]
frequently depress the transmitter button while still outside the range of the GDO receiver. Pressing the button will cause the code to advance, but even when the user does so dozens of times, the code will not move outside the "forward window." The court notes, however, that there are additional values recognized by the software that are outside the scope of both windows: When a transmitter relays a signal outside of either window, the rolling code software performs a readjustment process that in certain circumstances will allow the user to access his or her garage despite the fact that the rolling code value falls outside the forward window. (Id. ¶ 11.) When the receiver receives a rolling code that is both outside the forward window and the rear window, the user will be unable to access his or her garage with the first press of the transmitter button, but can gain access by immediately pressing the transmitter button a second time, while the GDO remains in the operate mode. (Id. ¶ 12.) Upon receiving the second code, the computer program considers the two codes together to determine whether the two rolling codes are separated by a factor of three. (Id.) If the sequence is proper, the rolling code computer program will treat the combination as a valid rolling code transmission. This process is called "resynchronization" and was included, according to Chamberlain, to address the possibility that a user may press the transmitter button so many times while out of range that the rolling code will exceed the last number in the forward window the next time the user is in range of the rolling code GDO. (Id.)
Skylink disputes a number of Chamberlain's assertions. First, although Skylink acknowledges that Chamberlain implemented a rolling code technique in its "Security" brand GDOs, Skylink disputes that Chamberlain's "Security" GDOs actually use the copyrighted software described above. In support of this assertion, Skylink again cites the deposition of James Fitzgibbon, who testified that the software copyrighted by Chamberlain as numbers TX5-533-065 and TX5-549-995 is not the exact software used in the current rolling code GDOs. (Fitzgibbon Dep., at 23-24.) Fitzgibbon also noted that there is a new version used in the current Security [ Page 9]
GDO and that the rolling code software is "always a work in progress." (Id. at 27, 183-84.)
Fitzgibbon explained that Chamberlain's copyrights were the starting point for the software used in the current rolling code GDOs and that the current computer program used in the rolling code GDOs is a derivative work of the two copyrights identified above. (Id. ...