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Stevens v Kabushiki Kaisha Sony Computer Entertainment

Stevens v Kabushiki Kaisha Sony Computer Entertainment

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HIGH COURT OF AUSTRALIA
GLEESON CJ,
McHUGH, GUMMOW, KIRBY, HAYNE AND HEYDON JJ
EDDY STEVENS APPELLANT
AND
KABUSHIKI KAISHA SONY COMPUTER
ENTERTAINMENT & ORS RESPONDENTS
Stevens v Kabushiki Kaisha Sony Computer Entertainment [2005] HCA 58
6 October 2005
S319/2004
ORDER
1.Appeal allowed with costs.
2.Set aside the orders of the Full Court of the Federal Court of Australia made on 30 July 2003 and, in their place, order that the appeal to that Court be dismissed with costs.

On appeal from the Federal Court of Australia
Representation:
J V Nicholas SC with C Dimitriadis for the appellant (instructed by Gadens Lawyers)
D K Catterns QC and R Cobden for the respondents (instructed by Blake Dawson Waldron)
J Basten QC with G C McGowan SC and L G de Ferrari appearing as amici curiae on behalf of the Australian Digital Alliance Limited and the Australian Libraries Copyright Committee (instructed by Sarah Waladan)
Notice: This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

GLEESON CJ, GUMMOW, HAYNE AND HEYDON JJ. With effect from 4 March 2001, the Copyright Amendment (Digital Agenda) Act 2000 (Cth) ("the Amendment Act") made significant amendments to the Copyright Act 1968 (Cth) ("the Act"). This appeal concerns a dispute as to the construction of the "circumvention device" provisions introduced by the Amendment Act.
The scope of copyright law
Over a long period amendments to copyright law have comprised legislative solutions to problems created by competing economic and social pressures associated with the development of new technologies. The issues in the present appeal indicate that this is very much the case today.
The well‑established categories of original works of authorship have been supplemented by various types of "subject-matter other than works" (including, significantly for this case, cinematograph films), certain "moral rights" have been conferred on individuals, and computer programs have been protected as literary works. This last step has been taken notwithstanding any incongruity in treating computer programs as literary works given "their objective of making hardware function rather than of conveying anything immediately perceivable to humans"[1].
[1]Cornish, Intellectual Property: Omnipresent, Distracting, Irrelevant?, (2004) at 45.
Copyright in both works and other subject-matter remains defined in the Act primarily in terms of the doing (or the authorising of the doing) of any of various acts listed as those comprised in the relevant copyright[2]. Other infringement provisions include those dealing with importation for sale and hire (ss 37, 102) and sale and other dealings (ss 38, 103). It follows from this specificity that not all activities involving the use of copyright material require a licence to escape infringement[3]. (Patent law has operated more broadly, with the traditional terms of the grant of monopoly being to "make, use, exercise and vend" the invention; however, no patent rights were claimed in this litigation.) Merely to read a copy of a book is not to infringe the literary work of which the book is a material reproduction. Further,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2005] HCA 58
Decision Date: 6 October 2005

CaseChat Overview and Summary

The High Court of Australia heard an appeal concerning alleged contraventions of section 116A of the *Copyright Act 1968* (Cth). The appellant, Mr Stevens, was accused of knowingly selling and installing "mod chips" into PlayStation consoles, which enabled the playing of unauthorised copies of games. The respondents, collectively referred to as Sony, manufactured and sold PlayStation consoles and games, asserting copyright in the computer programs and cinematograph films embodied in these games. Sony contended that Mr Stevens' mod chips facilitated the circumvention of technological protection measures embedded in their games and consoles.

The central legal issues before the High Court were whether the access codes on Sony's CD-ROMs and the boot ROM within the PlayStation console constituted "technological protection measures" as defined by the Act. Specifically, the Court had to determine if these measures prevented or inhibited copyright infringement by preventing access to unauthorised copies of games. Further questions arose regarding whether parts of a computer program reproduced in the random access memory (RAM) of a PlayStation console constituted a "material form" for the purposes of copyright, and whether the access codes and boot ROM prevented the reproduction of substantial parts of copyright works in RAM.

The High Court allowed the appeal, setting aside the orders of the Full Court of the Federal Court. The Court reasoned that the definition of "technological protection measure" in section 10(1) of the Act required that such a measure must prevent or inhibit infringement of copyright. While the access codes and boot ROM prevented the playing of unauthorised copies on unmodified consoles, they did not prevent the making of a perfect copy of the copyright material itself. The Court found that the measures did not prevent or inhibit infringement in the manner contemplated by the Act, particularly in relation to the reproduction of copyright works in RAM. The Court concluded that the interpretation adopted by Sackville J at first instance was correct and should not have been disturbed.

Orders

Orders of the court

1. Appeal allowed with costs.

2. Set aside the orders of the Full Court of the Federal Court of Australia made on 30 July 2003 and, in their place, order that the appeal to that Court be dismissed with costs.

Background

Background to the litigation

The Australian legislative materials identified in the written submissions to the Court indicate that proposals were made by the International Intellectual Property Alliance to the House of Representatives Standing Committee on Legal and Constitutional Affairs in favour of the adoption of legislation in terms such as those of the United States, with emphasis upon protection for all devices controlling access to a work. However, as will be apparent, the legislation as enacted takes a different form, with an emphasis upon measures designed to prevent or inhibit infringement.The facts The present respondents (collectively described as "Sony") produced and sold computer games on CD‑ROMs for use with PlayStation consoles. Sony as owner or exclusive licensee controls the copyright in the computer programs (as literary works under the Act) and in the cinematograph films (as subject-matter other than works) embodied in the CD-ROMs for the games. On two occasions after the commencement of the Amendment Act, the appellant, Mr Stevens, sold unauthorised copies of PlayStation games. The games were titled "Croc 2", "Medi Evil", "Motor Races World Tour" and "Porsche 2000". Mr Stevens was not sued for any acts on his part that might have constituted infringements of Sony copyright in any computer program or cinematograph film. Nor were the makers of the unauthorised copies, whether Mr Stevens or others. However, the PlayStation software contained access restrictions described as follows by Sackville J in his judgment at first instance[16]:"The PlayStation software incorporates an access code, or a number of encrypted sectors of data that cannot be reproduced by conventional CD recording or copying devices (usually referred to as 'burning' mechanisms). The access code is stored on an encrypted portion of the CD‑ROM and essentially consists of a string of characters. This string must be read by the boot ROM located within the PlayStation console if the particular game is to be played. The boot ROM recognises whether there is an access code and specifically what kind of access code it is. The access code is inaccessible to standard CD‑ROM 'burners' or standard CD replication manufacturing parts."Sony contended that, in this state of affairs, a "technological protection measure" could be said to exist in the boot ROM, or the access code in the PlayStation software, or the two in their combined operation.[16]Kabushiki Kaisha Sony Computer Entertainment v Stevens (2002) 200 ALR 55 at 65. In addition to supplying the unauthorised copies, Mr Stevens on three occasions sold and installed "mod chips" into PlayStation consoles. The unauthorised copies could not be played upon an "unchipped" or unmodified PlayStation console because they did not have the requisite access code. However, these copies could be played upon the "chipped" PlayStation consoles which Mr Stevens had modified. By proceedings instituted in the Federal Court, Sony alleged that contrary to s 116A (inserted in the Act by the Amendment Act) Mr Stevens without permission had knowingly sold or distributed a "circumvention device" which was capable of circumventing or facilitating the circumvention of a "technological protection measure" which protected Sony's copyright in literary works (computer programs) and cinematograph films.The litigation

Evidence

Evidence Before The Court

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Decision

Reasons for decision

GLEESON CJ, GUMMOW, HAYNE AND HEYDON JJ

Rather, Sony contended that, unless the term "inhibit" had the meaning given by the Full Court, it was otiose, adding nothing to "prevent". One meaning of "inhibit" indeed is "prevent". However, it may be taken that "inhibit" is used in the definition of "technological protection measure" in one of its weaker senses, while still necessarily attached to an act of infringement. One such sense has been given above with respect to acts of secondary infringement by dealing in an article created by an act of primary infringement. Further, the operation of a copy control mechanism to impair the quality or limit the quantity of a reproduction may be said to hinder the act of infringement. In that regard, there is a legislative antecedent in s 296 of the 1988 UK Act. This, it will be recalled, spoke of devices or means intended "to impair" the quality of copies made. In the present case, the Sony device does not interfere with the making of a perfect copy of Sony's copyright in its computer program or cinematograph film.Conclusion on construction of definition of "technological protection measure" The conclusion reached by Sackville J was correct and should not have been disturbed by the Full Court. There remain for consideration the two grounds advanced by Sony in its Notice of Contention. To these we now turn.Sony's Notice of Contention By its Notice of Contention, Sony contends that the decision of the Full Court should be affirmed on grounds in addition to those upon which it succeeded there. Sony has submitted that its device (comprising either or both the boot ROM in the PlayStation console and the access code on PlayStation CD‑ROMs) was a "technological protection measure" on three essentially distinct bases. The first which has been dealt with in these reasons was the construction argument concerning "inhibit" and "practical effect". The second ground was that the device fell within the terms of the definition of "technological protection measure" because it prevented PlayStation users from reproducing in the RAM of an unmodified PlayStation console a substantial part of the particular program embodied in an unauthorised copy of a PlayStation CD‑ROM by playing the CD‑ROM in that console. This may be called "the reproduction in RAM contention". The remaining contention was that the device answered the description of the definition because it prevented PlayStation users from making in the RAM of an unmodified PlayStation console a copy of a substantial part of a cinematograph film embodied in an unauthorised copy of a PlayStation CD‑ROM by playing the CD‑ROM in that console. This may be called "the cinematograph film contention". Sackville J had rejected all these submissions. In the Full Court, French J and Lindgren J accepted Sony's argument on the first point but rejected the other grounds. Finkelstein J accepted Sony's arguments on all three grounds. Hence the Notice of Contention respecting the reproduction in RAM contention and the cinematograph film contention. To these we now turn.The reproduction in RAM contention

Ratio Decidendi

Legal Principle Established

Established by: GLEESON CJ, GUMMOW, HAYNE AND HEYDON JJ

Full text does not contain this section.