Sony v Stevens 2002 FCA 906

Federal Court of AustraliaSackville J – 26 July 2002

 

Note: The majority of this judgment is no longer considered good law. The Full Federal Court of Australia held that there was a Technological Protection Measure in the Sony Playstation, and as such, Mr Stevens was guilty of distributing a Circumvention Device. The appeal is Kabushiki Kaisha Sony Computer Entertainment v Stevens (2003) FCAFC 157 (30 July 2003).

Accordingly, I will update this write-up shortly.

 

TRADE MARKS; sale of unauthorised copies of computer games - reproduction of electronic representations of trade marks - whether infringement of trade marks.

FAIR TRADING; sale of unauthorised copies of computer games - whether respondent represented that the copies had the sponsorship, approval or affiliation of the applicants.

COPYRIGHT; Copyright Act 1968 (Cth), s 116A; "technological protection measure"; "circumvention device"; computer games contain an access code, games can be played on console only if the access code is recognised by a Boot ROM, whether the access code and Boot ROM constitute a "technological protection measure" within s 10(1) of the Copyright Act 1968 (Cth); whether the device is "designed, in the ordinary course of its operation, to prevent or inhibit the infringement of copyright"; whether it is enough for a device to deter or discourage copyright infringement; whether a substantial part of the game's computer program is reproduced in the console's RAM; whether part of the program is reproduced "in a material form";

 

Note: This case is currently under appeal by the full court of the Federal Court of Australia.

 

Facts

Stevens operated a business which involved installing 'mod chips' into Sony Playstations to allow them to play pirated and imported games, and resold pirated games from an external distributor to clients. Following the commencement of the Copyright Amendment (Digital Agenda) Act 2000 (Cth) in March 2001, which rendered illegal the selling and distributing of a device designed to circumvent a 'technological protection measure', Sony sued for copyright infringement. Sony also sued for trademark infringement and infringement of the Fair Trading Act 1987 (NSW). Stephens elected to represent himself, and Sackville J had assistance from the ACCC in the role of amicus curiae.

 

Infringement of Trade Mark

Sony alleged that by supplying unauthorised copies of PlayStation games, which stored in electronic form the Sony logo and other trade marks. When played, these games displayed representations of the Sony Trade Marks, and this constituted use of the Trade Marks in relation to goods in respect of which the Sony Trade Marks were registered, without licence or consent. Sackville J accepted that Mr Stevens, knowing that the games would display trade mark signs that were substantially identical to the Sony Trade Marks, and without suggesting any exceptions, infringed the Sony Trade Marks.

 

Breach of the Fair Trading Act

Sony further alleged that Mr Stevens, when selling pirated games, had represented that they had the sponsorship, approval or affiliation of Sony. The evidence showed that a PI was directed to a third party website when he asked for games, and then contacted Mr Stevens to order on his behalf from that website. On the facts, it was clear the PI was perfectly aware that the games in question were not legitimate copies, and that no customer would reasonably understand otherwise. Sackville J dismissed the claim under the Fair Trading Act.

 

The circumvention device claim

Sony alleged that Stevens infringed their copyright by selling and distributing mod chips, under s116A of the Copyright Act. The relevant sections provide:

116A Importation, manufacture etc. of circumvention device and provision etc. of circumvention service

  1. Subject to subsections (2), (3) and (4), this section applies if:
    1. a work or other subject-matter is protected by a technological protection measure; and
    2. a person does any of the following acts without the permission of the owner or exclusive licensee of the copyright in the work or other subject-matter:
      1. makes a circumvention device capable of circumventing, or facilitating the circumvention of, the technological protection measure;
      2. sells, lets for hire, or by way of trade offers or exposes for sale or hire or otherwise promotes, advertises or markets, such a circumvention device;
      3. distributes such a circumvention device for the purpose of trade, or for any other purpose that will affect prejudicially the owner of the copyright;

      ...; and
       
    3. the person knew, or ought reasonably to have known, that the device or service would be used to circumvent, or facilitate the circumvention of, the technological protection measure.

 

10 Interpretation
circumvention device means a device (including a computer program) having only a limited commercially significant purpose or use, or no such purpose or use, other than the circumvention, or facilitating the circumvention, of an effective technological protection measure.
 

technological protection measure means a device or product, or a component incorporated into a process, that is designed, in the ordinary course of its operation, to prevent or inhibit the infringement of copyright in a work or other subject-matter by either or both of the following means:
  1. by ensuring that access to the work or other subject matter is available solely by use of an access code or process (including decryption, unscrambling or other transformation of the work or other subject-matter) with the authority of the owner or licensee of the copyright;
  2. through a copy control mechanism.

 

'Work' for the purposes of copyright

It was not contested that the PlayStation games were 'works' for the purposes of the Copyright Act. Simply, following Avra v Warner, Sackville J noted that ‘The program on the CD-ROM contains a set of instructions to be used in a computer (the Sony PlayStation console) in order to bring about a certain result, namely converting the original content of the CD-ROM into a form which enables the consumer to have the visual and aural experience of playing the game”.

 

The Regional Access Code

Sony PlayStation games have a 'Regional Access Code' embedded on the CD-ROM, in such a way that it is difficult to reproduce when the CD-ROM is copied with conventional CD burning tools. The Boot ROM on the PlayStation itself contains checks this access code before booting any inserted CD-ROM. CD-ROMs with a differing regional code to the console, or CD-ROMs which were missing the access code, could not be played. The mod chip supplied and installed by Mr Stevens simply replaced the Boot ROM with one that would not check the RAC.

Sony contended that either the RAC on the CD-ROM, or the Boot ROM, or a combination of the two, consisted a 'technological protection measure' for the purposes of the Copyright Act. The ACCC argued that it could not be a ‘technological protection measure’, because it did not ‘prevent or inhibit the infringement of copyright’ in the games; it may have had the practical effect of discouraging piracy of the games because they would not be able to be played, but in itself could only be held to allow playing of copies that had already been made. The infringement occurred in the making of the copy, not the playing of an infringing copy.

Sackville J accepted the ACCC’s argument, after noting that the evidence on the point was sparse because he did not permit them, as amicus curiae, to cross examine. He conceded that the process was designed to "deter or discourage persons infringing the applicants' copyright", but after a very narrow reading down of the legislation, he concluded:

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.

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.

It is interesting to note that Sackville J indirectly focused on what is effectively a fair use argument: A device which allows a user to play legitimate Australian, legitimate foreign, and illegitimate games indiscriminately would not infringe copyright. This is in stark contrast to Universal v Remierdes, the US 2600 DeCCS case, which deals with similar facts and legislation.

 

Reproduction in RAM

Sony argued, subsequently, that the RAC and the Boot ROM did in fact prevent copyright infringement: together, they stopped the unauthorised reproduction of the work into the RAM of the PlayStation. They argued that the temporary storage of part of the computer program in RAM was reproduction of a substantial part in 'material form' and could thus infringe their copyright in the computer program (ss 31(1)(a)(i), 36(1)).

Sackville J did not accept this argument, citing AVRA v Warner, where DVDs were not reproduced in a 'material form' when played on a DVD player. He noted that it is not possible to reproduce the data stored in the PlayStation’s RAM, and s10 of the Act defined 'material form' as including 'any form ... of storage from which the work or adaptation, or a substantial part of the work or adaptation, can be reproduced'.

 

Reproduction of a Cinematograph Film

Sony further argued that, following Sega v Galaxy, the games were 'cinematograph films' for the purpose of the Act, and since s86 of the Act does not require copies to be in 'material form' for cinematograph films, reproduction into RAM of a pirated game would infringe their copyright, and hence the Boot ROM and the RAC could be considered a technological protection device.

Sackville J accepted that the games could be classified as cinematograph films, but did not find that a claim under s86(a) could be sustained:

The evidence suggests that only a very small proportion of the images and sounds comprising the cinematograph film are “embodied” in the PlayStation console’s RAM at any given time. Moreover, as Emmet J observed in AVRA v Warner, the purpose of the storage in the RAM is to display the images and to allow the game to be played.
...
In the absence of clearer and more detailed evidence as to the nature and quality of the images embodied in the instructions stored in the RAM, assessed in relation to the totality of 'the aggregate of visual images' constituting the cinematograph film, I cannot conclude … that ‘the ephemeral embodiment’ of a small proportion of images in the RAM constitutes the act of making a copy of the cinematograph film for the purposes of s86(a) of the Copyright Act.

 

The RAC as a technological protection measure on its own

Sony attempted to argue that the RAC embodied in each PlayStation game was a technological protection measure in its own right, and is effective to prevent making a complete copy of the game because it can not be copied by modern hardware. The mod chip would then be a circumvention device "because it circumvents or facilitates the circumvention of that measure by making the complete copy useful."

Sackville J raised some preliminary problems with this argument, namely that there was no expert evidence as to the role played by the RAC, and that it is a difficult assumption to say that the RAC is part of the computer program (the game), in which the copyright subsists. However, he did not go into further detail because the case was not pleaded in that way, and refused to allow Sony to raise the argument without hearing oral evidence.

 

Conclusion – Circumvention Device

Sackville J found it unnecessary to determine whether the mod chips were, in fact, circumvention devices, because Sony could not establish that the PlayStation or the games included a technological protection measure.

He did, however, conclude by noting how he would have decided the matter on the evidence before him:

On the evidence, I would have held that the chips installed by Mr Stevens had only a limited commercially significant use other than circumventing or facilitating the circumvention of the access code. Thus, if the access code had been a "technological protection measure", the chips would have been circumvention devices. I would also have found that Mr Stevens sold or promoted the circumvention devices and that the knew that the devices would be sued to circumvent or facilitate the circumvention of a technological protection measure.

It is important to note that the preceding three arguments were developed and argued by Sony in a short period, and may be further developed on appeal. It must also be noted, however, that on appeal, counsel for Mr Stevens may be better equipped to cross-examine.

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