A recent decision of the European Court of Justice considers technical protection measures (TPMs) in the context of videogames and provides some direction concerning the interpretation and application of the relevant provisions of the Copyright Act.
Background
TPMs are technological devices or tools that prevent unauthorized or illegal access to, or copying or reproduction of material protected by copyright. There are two categories of TPM – access control and copy control. Access control TPMs prevent unauthorized access to material while copy control TPMs prevent unauthorized copying. Access is restricted through use of passwords and/or encryption. TPMs are frequently used in relation to sound recordings, films and computer software, as well as electronic artistic and literary works such as e-books.
The Facts
Nintendo sells two types of systems for its videogames: ‘DS’ portable consoles and ‘Wii’ fixed consoles. It installs a recognition system in the consoles, and an encrypted code on the physical housing system of videogames, which prevents the use of illegal copies of videogames. The TPMs prevent games without a code from being played on Nintendo equipment and prevent programs, games and more generally, multimedia content other than Nintendo’s, from being used on the consoles. As a result the TPMs prevent users from accessing non-Nintendo games and other works that they have lawfully acquired.
PC Box Srl sells applications it obtains from independent manufacturers. However, in order to use these applications the installation of software is required that circumvents Nintendo’s TPMs. When Nintendo brought proceedings in Italy it was alleged that the PC Box equipment seeks principally to circumvent the technological protection measures of its games. PC Box asserted that Nintendo’s purpose is to prevent use of independent software intended to enable movies, videos and MP3 files to be read on the consoles.
The Italian Court considered that the case raised an important point of law and referred two questions to European Court of Justice. The Court of Justice interprets EU law to make sure it is applied in the same way in all EU countries. It also settles legal disputes between EU governments and EU institutions.
The Decision of the Court of Justice
The Court concluded that the definition of technological measure was capable of covering technological measures comprising, a recognition system in the consoles, and an encrypted code on the physical housing system of videogames.
But the Court referred to a significant limitation on the potentially broad scope of protection otherwise available to TPMs. They said that legal protection is granted only to technological measures which prevent or eliminate, as regards works, acts not authorised by the copyright owner. The measures must be suitable for achieving that objective and must not go beyond what is necessary for that purpose. Legal protection against acts not authorised by the right holder must respect the principle of proportionality and should not prohibit devices or activities which have a commercially significant purpose or use other than to circumvent the technical protection measure.
To make the determination it is necessary to examine whether other measures or measures which are not installed in consoles could have caused less interference with the activities of third parties not requiring authorisation by the right holder or fewer limitations to those activities, while still providing comparable protection to the right holder.
It was also relevant in considering the Directive, which is similar in wording to the Canadian Copyright Act, to take account, among other things, of the relative costs of different types of technological measures, the technological and practical aspects of their implementation, and of a comparison of the effectiveness of different types of technological measures as regards the protection of the copyright owner. The effectiveness of the protection provided does not have to be absolute.
The assessment does not have to be carried out by reference to the particular use of consoles, as envisaged by the copyright holder. It would, however, have to take into account the purpose for which the devices, products or components, are designed and the evidence of use which third parties actually make of them. The national court should, in particular, examine how often those devices, products or components are in fact used in disregard of copyright and how often they are used for purposes which do not infringe copyright.
Comment
When protection of TPMs was added to the Act in 2012 there was significant lobbying both for and against TPMs. However, since the relevant provisions were brought into force little has been said concerning them. There is considerable merit in adopting an approach similar to that taken by the European Court of Justice although the decision is not binding in any way on a Canadian court.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.