FEDERAL COURT OF AUSTRALIA
KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT & ORS
v
EDDY STEVENS
N 929 OF 2002
SUMMARY
In accordance with the practice of the Federal Court in certain cases of public interest, we have prepared this brief summary to accompany the Reasons for Judgment that are being delivered today. But the only authoritative pronouncement of our reasons is that contained in the full Reasons for Judgment. This summary is necessarily incomplete.
This appeal concerns amendments made to the Copyright Act 1968 (Cth) (“the Copyright Act”) by the Copyright Amendment (Digital Agenda) Act 2000 (Cth) (“the Digital Agenda Act”).
Section 116A of the Copyright Act, which was introduced by the Digital Agenda Act, gives a right of action to the owner or exclusive licensee of the copyright in a work or other subject matter which is protected by a “technological protection measure”. The right of action is against a person who makes, sells, or does certain other acts in relation to, a “circumvention device” capable of circumventing, or facilitating the circumvention of, the technological protection measure.
The Sony companies (“Sony”) manufacture and sell PlayStation games which are capable of being played on ordinary domestic television sets by means of a PlayStation console, which Sony also manufactures and sells. The games are embodied in computer programs which are contained in CD-ROMs (“CDs”). Sony owns the copyright in the computer programs. Insertion of a PlayStation CD into the PlayStation console enables the game to be played.
There is an “access code” contained within a track on each CD, and a chip described as a “Boot ROM” is located on the circuit board of the PlayStation console. They have the effect that a game can be played only with the authority of the owner or licensee of the copyright. The reason is that an unauthorised copy of a Sony PlayStation CD does not replicate the access code and therefore the Boot ROM of the console denies it access: it cannot be used in the console.
The respondent, Mr Stevens, sold “mod chips” or “converter chips” and installed them in PlayStation consoles. Their purpose and effect was to overcome Sony’s device. But they would constitute “circumvention devices”, and Sony would have a right of action against Mr Stevens under the new s 116A, only if Sony’s device itself constituted a “technological protection measure” as defined in subs 10(1) of the Copyright Act.
The learned primary judge held that it did not. His Honour held that the definition required that in order to be a technological protection measure, a device must be designed to prevent or inhibit post-access infringement of copyright.
In this respect, we respectfully disagree with his Honour’s interpretation of the definition. We think it sufficient that Sony’s device inhibits infringement by rendering the resulting unauthorised copies unusable.
For this reason Sony’s appeal succeeds.
By majority, however, we agree with his Honour’s resolution of two other issues against Sony. French and Lindgren JJ (Finkelstein J dissenting) agree…
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- Case
- [2003] FCAFC 157
- Decision Date
CaseChat Overview and Summary
The legal issues before the court involved the proper construction of the term "technological protection measure" and whether the PlayStation devices indeed constituted such measures. The court had to determine if the PlayStation devices were designed to prevent or inhibit specific actions that would infringe copyright in the games. The primary judge concluded that the devices did not qualify as technological protection measures because they did not prevent or inhibit the infringement of copyright but merely discouraged such actions.
The court found that the primary judge's interpretation of the definition was correct. The court agreed with the reasoning that a technological protection measure must be designed to prevent or inhibit specific acts that would infringe copyright, rather than merely discouraging infringement. The court rejected Sony's arguments on the alternative bases presented, aligning with the primary judge's conclusion. The appeal was allowed on the basis that the PlayStation devices were not technological protection measures as defined in the Act.
The court ordered that the appeal be allowed, the previous dismissal of Sony's claim be set aside, and it be declared that Mr Stevens had sold circumvention devices in contravention of s 116A. The court further ordered that Mr Stevens should not sell such devices in the future, pay Sony's costs of the appeal, and pay the costs of the initial proceeding. The matter was remitted to the primary judge to determine Sony's claims for damages under the Act.
Orders
Orders of the court
1. The appeal be allowed.
2. Order 9 made on 16 August 2002 (“The application be otherwise dismissed”) in proceeding N 738 of 2001 in this Court be set aside.
THE COURT DECLARES THAT:
1. On 8 April 2001, 28 September 2001 and 16 November 2001 the respondent sold circumvention devices, as defined in subs 10(1) of the Copyright Act 1968 (Cth), for use in association with “PlayStation” computer consoles and the CD-ROMs for “PlayStation” computer games, in contravention of s 116A of that Act.
THE COURT FURTHER ORDERS THAT:
3. The respondent shall not, by himself, his servants or agents, sell circumvention devices as defined in subs 10(1) of the Copyright Act 1968 (Cth), for use in association with “PlayStation” computer consoles and the CD-ROMs for “PlayStation” computer games in contravention of s 116A of that Act.
4. The respondent pay the appellants’ costs of the appeal.
5. The respondent pay the costs of the appellants as applicants in proceeding N 738 of 2001 in this Court.
6. The matter be remitted to the primary judge for determination of the appellants’ claims for damages pursuant to subs 116D(1) of the Copyright Act 1968 (Cth) and for additional damages pursuant to subs 116D(2) of that Act.
Note:
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Ratio Decidendi
Legal Principle Established
The learned primary judge addressed this issue and expressed his conclusion on it in the following paragraphs:“[115] The definition, so it seems to me, contemplates that but for the operation of the device or product, there would be no technological or perhaps mechanical barrier to a person gaining access to the copyright work, or making copies of the work after access has been gained, thereby putting himself or herself in a position to infringe copyright in the work. The definition is intended to be confined to devices or products that utilise technological processes or mechanisms to prevent or curtail specific actions in relation to a work, which actions would otherwise infringe or facilitate infringement of copyright in that work. In other words, a “technological protection measure”, as defined, must be a device or product which utilises technological means to deny a person access to a copyright work, or which limits a person’s capacity to make copies of a work to which access has been gained, and thereby “physically” prevents or inhibits the person from undertaking acts which, if carried out, would or might infringe copyright in the work. It is in this sense that the device or product must be designed, in the ordinary course of its operation, to prevent or inhibit the infringement of copyright in a work. I do not think the definition is concerned with devices or products that do not, by their operations, prevent or curtail specific acts infringing or facilitating the infringement of copyright in a work, but merely have a general deterrent or discouraging effect on those who might be contemplating infringing copyright in a class of works, for example by making unlawful copies of a CD-ROM.[116] I appreciate that it is a general principle of statutory construction that all words in a section must be given some meaning and effect: D C Pearce and R S Geddes, Statutory Interpretation in Australia (5th edn 2001), at par 2.22 and cases cited there. However, I think the construction I have adopted gives the word “inhibit” in the definition work to do. There may be devices which are not necessarily designed, in the ordinary course of their operation, to prevent the infringement of copyright, but to inhibit such infringement. A copy control mechanism, for example, might not prevent all copying that infringes copyright, but might limit the extent of unlawful copying that can take place, for example by reducing the quality of copies that can be made of the copyright work. Such a device could properly be said to be designed, in the ordinary course of its operation, to “inhibit” the infringement of copyright in a work, rather than to prevent such infringement. It may be that access to only part of a work is restricted by a process requiring decryption or unscrambling. In this situation, too, it might be more appropriate to say that the process is designed to inhibit rather than prevent the infringement of copyright in the work.[117] The legislative history of s 116A and of the definition of “technological protection measure” is not conclusive on the question of construction. It is, however, consistent with the interpretation I have adopted. From at least the 1997 Digital Agenda Discussion Paper, the emphasis has been on penalising or discouraging the commercial distribution of devices for circumventing “locks” or protective devices which deny unauthorised access to materials stored in electronic form, including Internet sites, or which prevent unauthorised copying of such materials. The EC Directive, which has proved influential in the drafting of the current legislation, was intended to provide legal protection against commercial activities facilitating the circumvention of specific technological measures such as those requiring a code for a user wishing to gain access to the work. This emphasis suggests that what the drafter of s 116A (and its accompanying definitions) had in mind was to provide legal protection to devices that use technological or mechanical means to thwart acts which, if committed, would infringe copyright in the work. There seems to be nothing in the legislative history to support the view that a technological measure is to receive legal protection from circumvention devices if the only way in which the measure prevents or inhibits the infringement of copyright is by discouraging infringements of copyright which predate the attempt to gain access to the work or to copy it.[118] It follows that the protective devices relied on by the applicants cannot be regarded as technological protection measures if the only way in which they inhibit infringement of copyright in PlayStation games is by discouraging people from copying these games as a prelude to playing them on PlayStation consoles. It is necessary for the applicants to demonstrate that the protective devices are designed to function, by their own processes or mechanisms, to prevent or hinder acts that might otherwise constitute an infringement of copyright.The Reproduction in RAM Argument