FEDERAL COURT OF AUSTRALIA
Take-Two Interactive Software, Inc v Anderson (No 2) [2024] FCA 1459
File number: NSD 1751 of 2018 Judgment of: NICHOLAS J Date of judgment: 18 December 2024 Catchwords: COPYRIGHT – circumvention devices – application by copyright owner under ss 116AN and 116AO of Copyright Act 1968 (Cth) (“the Act”) – interpretation of relevant definitions in s 10(1) of the Act – “technological protection measure” – “access control technological protection measure” – “controls access” – whether device, product technology or component requires application of information or process to “gain access” to work or other subject matter – whether device (etc.) used “in connection with the exercise of the copyright” – whether device (etc.) “in the normal course of its operation, prevents, inhibits or restricts the doing of an act comprised in the copyright” – definition of “circumvention device” in s 10(1) of the Act – where respondent manufactured and distributed the “Infamous Mod” – whether the Infamous Mod is or contains one or more circumvention devices for technological protection measures for computer game “Grand Theft Auto V” – application of s 116AN to acts of manufacture and distribution of Infamous Mod – whether act of manufacture or distribution is an act that results in circumvention of access control technological protection measure – where s 116AO expressly directed to acts of manufacture and distribution of circumvention device – whether s 116AN directed to use of device (etc.) rather than manufacture or distribution – consideration of legislative scheme
Held: respondent’s manufacture and distribution of Infamous Mod actionable under s 116AO but not s 116AN of the Act – declaratory and injunctive relief granted
Legislation: Acts Interpretation Act 1901 (Cth) s 23(a)
Copyright Act 1968 (Cth) ss 10(1), 13, 36, 116AN, 116AO, 116AP, 116AQ
Copyright Amendment Act 2006 (Cth)
Copyright Amendment (Digital Agenda) Act 2000 (Cth)
US Free Trade Agreement Implementation Act 2004 (Cth)
Digital Millenium Copyright Act of 1998 (17 USC § 1201)
Cases cited: Certain Lloyd's Underwriters Subscribing to Contract No IH00AAQS v Cross (2012) 248 CLR 378
Federal Commissioner of Taxation v Consolidated Media Holdings Ltd (2012) 250 CLR 503
Hatfield v Health Insurance Commission (1987) 15 FCR 487
Hope v Bathurst City Council (1980) 144 CLR 1
Kabushiki Kaisha Sony Computer Entertainment v Stevens (2002) 200 ALR 55
Lexmark International, Inc. v. Static Control Components 387 F.3d 522 (6th Cir, 2004)
MDY Industries, LLC v Blizzard Entertainment, Inc., 629 F.3d 928 (9th Cir, 2010)
Minister for Immigration and Multicultural Affairs v Singh (2000) 98 FCR 469
Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355
R v Khazaal (2012) 246 CLR 601
R v Orcher (1999) 48 NSWLR 273
Ross v The Queen (1979) 141 CLR 432
Singh v Commonwealth (2004) 222 CLR 322
Stevens v Kabushiki Kaisha Sony (2005) 224 CLR 193
Take-Two Interactive Software, Inc v Anderson [2021] FCA 1024
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Number of…
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- AGLC
- Take-Two Interactive Software, Inc v Anderson (No 2) [2024] FCA 1459
- Case
- [2024] FCA 1459
- Decision Date
CaseChat Overview and Summary
The central legal issues revolved around the interpretation of the definitions of "technological protection measure", "access control technological protection measure", and "circumvention device" within section 10(1) of the Act. Specifically, the court needed to assess whether the Infamous Mod was or contained one or more circumvention devices, and whether the respondent's actions fell under sections 116AN and 116AO of the Act. The court engaged in a thorough examination of the statutory text and its context, considering the purpose of the relevant provisions and the legislative scheme as a whole. The court found that the Infamous Mod did indeed contain a circumvention device for TPMs, and that the respondent's actions were actionable under section 116AO but not under section 116AN.
The court's reasoning focused on the statutory language and the context in which it was used. The court noted that the term "access" within the definition of "access control technological protection measure" was not further explained in the legislation and could be interpreted as placing the addressee in a position where they could infringe upon the copyright material without the TPM. The court held that the Infamous Mod circumvented the access control TPMs for the computer game, thus qualifying as a circumvention device under section 10(1) of the Act. However, the court found that section 116AN was not applicable to the acts of manufacture or distribution of the circumvention device, but rather to the use of the device itself. The court ultimately granted the plaintiff declaratory and injunctive relief against the respondent's manufacture and distribution of the Infamous Mod.
Orders
Orders of the court
1. The respondent be permanently restrained from, whether by himself, his servants, agents or otherwise, manufacturing with the intention of providing to another person, distributing to another person, offering to the public, providing to another person or communicating to another person:
(a) the Infamous Mod in any form that it took during the Relevant Period; and
(b) any circumvention device designed to circumvent or facilitate the circumvention of the TPMs.
2. The originating application be otherwise dismissed.
3. Until 4.00pm on 28 January 2025 or further order, the Reasons be kept confidential and not be published or disclosed except to:
(a) the applicants;
(b) the respondent; and
(c) the parties’ legal representatives.
4. The parties’ legal representatives confer for the purpose of agreeing upon any proposed redactions to the Reasons which they consider are reasonably required to protect confidentiality of the TPMs or any other technical measures or information referred to in the Reasons that is confidential to the applicants.
5. By 4.00pm on 24 January 2025, the parties file a joint memorandum specifying:
(a) those parts of the Reasons which they agree are or should be treated as confidential; and
(b) those parts of the Reasons which the respondent does not agree are or should be treated as confidential.
6. By 4.00pm on 24 January 2025 any party seeking a costs order different from that proposed in [193] of the Reasons give written notice to the opposing party and the Associate to Nicholas J of the costs order it or he seeks.
7. The proceeding be stood over to 9.30am on 28 January 2025 for the making of further orders in relation to the redaction of confidential material in the Reasons and costs.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
The plurality said at [39]:It is important to understand that the reference to the undertaking of acts which, if carried out, would or might infringe, is consistent with the fundamental notion that copyright comprises the exclusive right to do any one or more of “acts” primarily identified in ss 31 and 85-88 of the Act. The definition of “technological protection measure” proceeds on the footing that, but for the operation of the device or product or component incorporated into a process, there would be no technological or mechanical barrier to “access” the copyright material or to make copies of the work after “access” has been gained. The term “access” as used in the definition is not further explained in the legislation. It may be taken to identify placement of the addressee in a position where, but for the “technological protection measure”, the addressee would be in a position to infringe. The respondent also relies on the majority’s reasons in Stevens at [47] set out at [36] above distinguishing between acts that amount to copyright infringement and acts that do not infringe copyright and are otherwise lawful. CONSIDERATIONPrinciples of statutory construction There was no dispute between the parties as to the principles of statutory construction. In the first place, the task of statutory construction must begin and end with the text of the statute. As the High Court stated in Federal Commissioner of Taxation v Consolidated Media Holdings Ltd (2012) 250 CLR 503 at [39]:“This Court has stated on many occasions that the task of statutory construction must begin with a consideration of the [statutory] text”. So must the task of statutory construction end. The statutory text must be considered in its context. That context includes legislative history and extrinsic materials. Understanding context has utility if, and in so far as, it assists in fixing the meaning of the statutory text. Legislative history and extrinsic materials cannot displace the meaning of the statutory text. Nor is their examination an end in itself. (Footnote omitted) Context includes the immediate and broader context in which the relevant provision appears in the statute, the purpose of the provision or statute in which it appears (including as expressed in any objects clause) and any extrinsic material capable of assisting in the ascertainment of the meaning of the provision: Singh v Commonwealth (2004) 222 CLR 322 at [20] per Gleeson CJ, Stevens at [124] per McHugh J. The purpose of a statute or any particular provision must be ascertained from its text and structure assisted where appropriate by extrinsic materials. As French CJ and Hayne J observed in Certain Lloyd's Underwriters Subscribing to Contract No IH00AAQS v Cross (2012) 248 CLR 378 at [25]:Determination of the purpose of a statute or of particular provisions in a statute may be based upon an express statement of purpose in the statute itself, inference from its text and structure and, where appropriate, reference to extrinsic materials. The purpose of a statute resides in its text and structure. Determination of a statutory purpose neither permits nor requires some search for what those who promoted or passed the legislation may have had in mind when it was enacted. It is important in this respect, as in others, to recognise that to speak of legislative “intention” is to use a metaphor. Use of that metaphor must not mislead. “[T]he duty of a court is to give the words of a statutory provision the meaning that the legislature is taken to have intended them to have” [Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 at 384 [78]] (emphasis added). And as the plurality went on to say in Project Blue Sky: “Ordinarily, that meaning (the legal meaning) will correspond with the grammatical meaning of the provision. But not always. The context of the words, the consequences of a literal or grammatical construction, the purpose of the statute or the canons of construction may require the words of a legislative provision to be read in a way that does not correspond with the literal or grammatical meaning.” … The search for legal meaning involves application of the processes of statutory construction. The identification of statutory purpose and legislative intention is the product of those processes, not the discovery of some subjective purpose or intention. (Some footnotes omitted)Their Honours went on to refer to the dangers of a court identifying the purpose of a legislative provision based on a priori assumption about its purpose or a judge’s view of the preferable outcome in a particular case.