Secure Services Tech. v. Time and Space Processing

• Decision Date: 29 September 1989
• Docket Number: Civ. A. No. 89-0192-A.
• Citation: 722 F. Supp. 1354
• Parties: SECURE SERVICES TECHNOLOGY, INCORPORATED, Plaintiff, v. TIME AND SPACE PROCESSING, INCORPORATED, Defendant.
• Court: U.S. District Court — Eastern District of Virginia

722 F. Supp. 1354

SECURE SERVICES TECHNOLOGY, INCORPORATED, Plaintiff, v. TIME AND SPACE PROCESSING, INCORPORATED, Defendant.

Civ. A. No. 89-0192-A.

United States District Court, E.D. Virginia, Alexandria Division.

September 29, 1989.

COPYRIGHT MATERIAL OMITTED

Sally Ann Hostetler, Odin, Feldman & Pittleman, Fairfax, Va., for plaintiff.

J.T. Westermeier, Fenwick, Davis & West, Washington, D.C., for defendant.

MEMORANDUM OPINION

ELLIS, District Judge.

This copyright and trade secret dispute arises in the singular context of facsimile machines used by the government and its contractors in the receipt and transmission of classified material. The questions presented, in general, are whether certain digital codes used by plaintiff's machines in communicating with other machines qualify for copyright or trade secret protection and, if so, whether plaintiff has taken the requisite steps to obtain and preserve that protection.

The matter came before the Court on defendant's motion for summary judgment on the copyright and trade secret claims and on plaintiff's cross-motion for summary judgment solely with respect to the trade secret claim.¹ The absence of disputed material facts rendered the matter ripe for summary disposition. For the reasons stated here, the Court entered summary judgment in favor of defendant on both the copyright and trade secret claims.²

Facts

In general, facsimile machines are devices that transmit and receive printed or pictorial matter on documents from one location to another, typically over telephone lines. The facsimile devices in issue transmit the material by scanning input documents and producing a series of digital pulses electrically related to the scanned printed or pictorial images. The digital pulses are sent via wire to a receiving machine which, when synchronized with the sending machine, is able to reproduce the transmitted document.

This case does not involve ordinary facsimile machines. Instead, the focus here is on so-called "TEMPEST"³ facsimile machines, i.e., machines especially equipped for the secure transmission and receipt of sensitive or classified documents. TEMPEST machines are sold to American and NATO agencies and to qualified private government contractors. Both plaintiff, Secure Services Technology, Inc. ("SST"), and defendant, Time and Space Processing, Inc. ("TSP"), manufacture and sell TEMPEST facsimile machines. SST sells these machines only to the United States government.

In May 1987, TSP decided to enter the apparently lucrative TEMPEST facsimile machine market. At that time, only three manufacturers inhabited the market — SST, Valutec and Ricoh Corporation. A fourth manufacturer, Cryptek, Inc., was poised to enter the market. Since the government had previously purchased TEMPEST machines from each of the manufacturers in the market, TSP's successful market entry depended on achieving interoperability⁴ with the SST, Valutec and Ricoh machines.

Interoperability between TEMPEST machines is achieved by means of a handshake protocol.⁵ This protocol, the CCITT T.30,⁶ governs the content, order, and timing of the digital signals transmitted between the sending and receiving machines. The protocol covers the five phases of a document's transmission:

(a) Call set up,

(b) Pre-message procedure,

(c) Message transmission,

(d) Post-message procedure, and

(e) Call release.

Each phase serves a function in enabling TEMPEST machines to communicate with each other. The call set up is the means by which one machine establishes communication with another machine. The pre-message procedure identifies the machines to each other, establishes the capabilities of each machine, and enters commands to select specific capabilities. The message transmission phase is the actual transmission of the document. The post-message procedure includes end-of-message, confirmation, and end-of-facsimile signals. Finally, the call release phase disconnects the machines.

Within each phase, the T.30 protocol specifies the content of each binary⁷ signal (i.e., the exact sequence of 0's and 1's), the length of each signal (i.e., the number of bytes⁸), and the order of the signals (i.e., whether the machine's identification signal precedes or follows its capabilities signal). Additionally, the T.30 protocol designates strict tolerances for the length of, and the spacing between, the individual signals. These latter two parameters, taken together, define the timing of the communication link.

Adherence to the phase order and the signal parameters of the T.30 protocol is crucial for interoperability. If a facsimile machine does not "recognize" an incoming signal, it will not respond appropriately and interoperability will not be achieved. For example, non-recognition can occur if the content of a signal is wrong (i.e., 11111110 is transmitted instead of 11111111). More on point, however, non-recognition will also occur if the T.30 protocol's phase order or timing parameters are not met. If an individual signal is sent out of the specified order, its transmission will not be "expected" by the receiving machine. The signal, therefore, will not be recognized, notwithstanding the fact that the binary code was correct, simply because it arrived either too early or too late. A similar effect occurs if the timing parameters are not followed. If a bit⁹ is too long, for example, the receiving machine may mistake one digit for two and, by so doing, misread the content of the entire signal. The timing and order parameters, therefore, are crucial to interoperability.

For flexibility, however, the T.30 protocol does permit slight variations in specific signals. For example, the protocol may designate that a specific signal is 1010101X. The transmitting machine, in accordance with the protocol's instructions, will substitute either a one or a zero for the X and, as long as the rest of the signal is correct, the signal will be recognized. Such fill-in-the-blank variations are not only anticipated by the machines but, also, desired; they permit the facsimile machines to communicate simple information such as the designation of specific options. For more complex communications, the protocol also permits the use of signals that are entirely optional. Here too, however, these signals must be transmitted in their designated positions in the transmission sequence. To do otherwise would result in non-recognition of the optional signals because their arrival would not be expected and, thus, interoperability would be defeated.

SST took advantage of these limited opportunities to vary the content and timing of various signals within the constraints of the T.30 protocol. SST claims that these variations in timing and content, collectively referred to as "protocol variations", deserve trade secret protection. And because the content variations can be transcribed into alphanumeric form, SST also claims copyright protection.¹⁰

TSP spent over $800,000 in an apparently successful effort to achieve interoperability with the Ricoh and Valutec machines. At that point, TSP also believed it had achieved interoperability with the SST-T1, the SST TEMPEST facsimile machine. Thereafter, in March 1988, the Air Force expressed an interest in purchasing TSP's TEMPEST machines. In this connection, government representatives requested that TSP demonstrate the interoperability of the SST and TSP machines. This demonstration was achieved through the transmission of test documents from an SST facsimile machine at a government facility to a TSP machine at TSP's plant. At that time, TSP used a protocol analyzer¹¹ to verify that the SST machine was following the T.30 protocol and to adjust its machine's handshake protocol to achieve interoperability with the SST machine. TSP also allegedly fixed in the memory of the protocol analyzer the digital code representing SST's handshake protocol, including the protocol variations. Even so, it appears that TSP achieved only substantial, but not complete, interoperability.

In June 1988, TSP again demonstrated its machine's interoperability with the SST machine at the Armed Forces Communication Electronics Association ("AFCEA") trade show. Here again, substantial, but not complete interoperability was achieved. Nonetheless, TSP began marketing its TEMPEST facsimile machine as interoperable with SST's TEMPEST machines. Among those who purchased the TSP facsimile machine was the Air Force Logistics Command (AFLC). In early 1989, the AFLC Special Projects Officer discovered that an interoperability problem still existed between the TSP and SST facsimile machines. In February 1989, he asked TSP to remedy this. To this end, TSP was loaned a government-owned SST-T1 to allow TSP to make whatever adjustments might be required to achieve complete interoperability with the SST machine. In this effort, TSP technicians again analyzed the timing of the SST machine's handshake protocol. TSP then took the SST facsimile machine to another AFCEA trade show and was now able to demonstrate complete interoperability with the SST machine. At this trade show, SST's representatives discovered, for the first time, that TSP had somehow gained possession of an SST TEMPEST facsimile machine.

SST's marketing practices are central to the resolution of this dispute. SST sells its TEMPEST facsimile machines only to government agencies. From October 1985, when sales of the SST-T1 machine began, the United States government purchased all right, title, and interest in these machine. The sales contracts contained no reservation of proprietary rights. There were no contract provisions prohibiting the government from supplying the SST facsimile machines to third parties. Moreover, neither the facsimile machine, nor the operator's manual, contained any restrictive or proprietary legends or any copyright notices. Nor did SST notify the government prior to the sale that SST claimed or might claim proprietary rights in the SST-T1...