JURISDICTION REPORT: UK
GAME SECURITY CIRCUMVENTION DEVICES INFRINGE COPYRIGHT
Joel Smith and Rosie Patterson Herbert Smith LLP
In Nintendo v. Playables, the High Court ruled that the sale of devices for playing pirated copies of computer games amounted to copyright infringement.
Te judgment is good news for games console providers, establishing that sections 296ZD and 296 of the Copyright, Designs and Patents Act 1988 (CDPA) can be used to tackle the suppliers of devices for playing pirate games, as well as individual pirates, and that section 296ZD may be used to prevent export sales of such devices.
Background to the case
Tis case concerned the importation and sale of devices that were designed to fit into the slots on Nintendo games consoles, circumventing Nintendo’s technical security measures and enabling Nintendo DS users to play unlawfully downloaded copies of Nintendo DS games. Te defendants, Playables, imported the devices into the UK in very large quantities, and each device was able to store and play many copies of Nintendo DS games, with a substantial economic impact upon Nintendo.
Copyright infringement in the UK
Justice Floyd, the presiding judge, was asked to consider the complex provisions of sections 296ZD and 296 of the CDPA.
Considering section 296ZD, the court made the following findings: First, it accepted that, as well as establishing standing to bring the claim, a claimant relying upon section 296ZD needs to show that there are “technological measures” that have been “applied” to a copyright work or works (other than a computer program) and that these applied technology measures are “effective”. Such measures are referred to as ETMs.
Assistance in deciding what amounts to an ETM can be drawn from European Copyright in the Information Society Directive. In this case, the physical shape and electrical characteristics of the Nintendo DS connector were unlikely to amount to an ETM. However, the boot-up soſtware, the Nintendo Logo Data File, and the encryption and scrambling clearly amounted to “effective technology” within the meaning of section 296DZ.
Second, whilst the information stored on the card includes a computer program, Nintendo’s games also include graphics and other works that are copyright works “other than computer programs”, as required by the section.
Tird, neither knowledge, nor a reason to believe that the device would be used to make infringing copies, was necessary for a successful claim under section 296ZD. Te section sets out a tort of strict liability.
Finally, even if the device could be used for a non-infringing purpose, there was liability, so long as one of the conditions in the section was satisfied.
Nintendo’s claim of copyright infringement under section 296ZD therefore succeeded.
Te analysis of section 296 CDPA was less straightforward because section 296 required Nintendo to show that the “sole intended purpose” of the devices was to facilitate the unauthorised removal or circumvention of the technical device.
Tat said, on the facts, Justice Floyd found that the “sole intended purpose” of the devices was the unauthorised circumvention of Nintendo’s technical devices, even though a device might be used for a purpose that did not involve infringement.
Copyright infringement under section 296 was therefore established.
Copyright infringement by export sales Te court was also asked to consider whether Playables’ export sales amounted to copyright infringement. On section 296, Justice Floyd followed the reasoning of Justice Laddie in Sony v. Ball and concluded that infringement required that the person dealing in the device “knows or has reason to believe” that it will be used to make infringing copies. Tis, in turn, must involve infringement in the UK; accordingly, there was no infringement.
On section 296ZD, however, Justice Floyd considered that the decision in Sony v. Ball was incorrect and that the section did not contain a knowledge requirement. It followed that Nintendo should be granted summary judgment on export sales under section 296ZD.
Director/shareholder a joint tortfeasor
Finally, Justice Floyd held that Mr. Chan, the sole director and shareholder of Playables, was liable as a joint tortfeasor. In coming to this conclusion, he took into account Chan’s position, together with the fact that the scale of Playables’ activities was such that they must have been corporate policy set by Chan. Furthermore, many of the devices were delivered to Playables marked for his personal attention.
Joel Smith is a partner at Herbert Smith LLP. He can be contacted at:
joel.smith@
herbertsmith.com
Rosie Patterson is an associate at Herbert Smith LLP. She can be contacted at:
rosie.patterson@
herbertsmith.com
98 World Intellectual Property Review September/October 2010
www.worldipreview.com
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