Decompilation infringement exception applied against Nintendo in dispute over DS Linker modchips

02 November 2010

Anne-Sophie Lampe

Applying a decompilation exception to copyright infringement derived from the EU Software Directive, a French criminal court has ruled in a preliminary hearing that  ‘Linker’ cards do not infringe Nintendo’s copyright.

On 3 December 2009, the Paris Criminal Court of First Instance provided the first relevant decision to apply the decompilation exception under French law in the context of the digital content industry, with a judgment in relation to “DS linkers”. DS Linkers are software devices (modchips) that enable users to play any video game on Nintendo consoles, thereby bypassing the proprietary model used by manufacturers of closed environment gaming consoles. The criminal court rejected Nintendo’s copyright infringement claim against the distributors of linkers by applying an infringement exception which permits decompilation of software for interoperability purposes.

Since 2006, Nintendo had become aware that a range of modchip cards called “DS Linker” or “Revolution for DS(R4) (“linkers”) were being imported into and sold in France. These enable the user, having downloaded a pirated videogame, to transfer it from his computer to the memory of the device which, once plugged on the Nintendo DS console, enables the loading, display and execution of the pirated game (and also of any other content transferred on the linker).

After a preliminary investigation, during which investigators made various seizures of these devices, the public prosecutor summoned six (6) companies and their directors to appear before the Paris Criminal Court, on the following grounds:

  • counterfeiting copyright software;

  • importing goods presented under a counterfeited brand;

  • counterfeiting by use of a brand;

  • commercialisation of means likely to impair a measure of protection of a work;

  • complicity in counterfeiting of copyright works.

The Court’s 3 December 2009 judgment discharged all the accused persons and companies, and Nintendo’s claims were dismissed. Although the whole judgment is of interest, we focus on its two main aspects:

  • While the linkers transform the user’s Nintendo DS console into a device which is able to read content not originally intended by Nintendo, the Court held that it was not proved that this amounted to counterfeiting of Nintendo’s copyright in its software programs, insofar as the potential reproduction or translation of Nintendo’s code might be justified by the decompilation exception; and

  • Due to a lack of evidence relating to the technical protection measures used by Nintendo, the Court did not find any infringement relating to the commercialisation of a means likely to impair those measures.

1. Counterfeiting copyrighted software

The Nintendo companies argued that they are copyright holders of software programs contained on both Nintendo consoles and the cards comprising the videos games. Consequently, since Nintendo had never made public any of the relevant technical information or the source codes of its software programs, interaction between the console and the linkers can only arise from unauthorised decompilation of Nintendo’s software programs. Nintendo’s expert confirmed that, as the Nintendo DS utilises a lock and key protection mechanism, “in order to circumvent the blocking of the access to the operating system of the Nintendo DS console, the systems such as the DS Linker and the R4 have necessarily decompiled and studied the code of the security software programs of the card and of the Nintendo DS console, and reproduced and/or adapted a portion of the code on their own starting software installed on their DS Linker or R4 card. The circumvention carried out by these means thus enables to deceive the system of security of the Nintendo DS console by making the system believe that the cartridges inserted in slot 1 are genuine games’ cards (…).”

The Court noted that the linker devices examined were of a compatible format with the Nintendo console, whose functions were modified by their use, the console thus becoming a multimedia platform. For this reason, the Court acknowledged that it is “possible that the reproduction of the Nintendo software code or the translation of the shape of this code was materialised”.

Even though Article L 122-6 of the French Code of Intellectual Property prohibits such acts to be carried out without the software author’s prior authorisation, the Court decided that “in that case, the authorisation of the author was not required because the reproduction or the translation (…) was indispensable to obtain the information necessary to the interoperability of an independently created program with other programs.”

The Court then explained that the access to the source code aimed at achieving interoperability between the programs necessarily requires an act of reverse engineering, which the law permits on the condition that it is limited to the portions necessary to achieve such interoperability; and “in this particular case, it is not established that the information obtained for the set up of the Linker, intending it to be operational on the Nintendo console have exceeded the limits set by the law”.

As drafted, the Court’s decision almost seems to establish that decompilation is always permitted provided that “the reproduction or translation (…) is indispensible to obtain the information necessary to the interoperability of independently created software with other programs”. In fact, this is not the case. The decompilation exception is framed by conditions, which deserved to be examined.

The decompilation exception for the purpose of interoperability is provided by Article 6 of the Software Directive 91/250/CEE of 14 May 1994, as replaced and codified by Directive 2009/24/CEC of 23 April 2009, and almost literally transposed in France by the Protection of Computer Programs Act n°(number 94-361 of 10 May 1994) regarding the protection of computer programs of 10 May 1994 and codified in Article L 122-6-1 (iv) of the French Intellectual Property Code.

Under this Article, the operations of reproduction and translation of the source code for the purposes of decompiling are not subject to prior authorisation of the author of the software provided that:

  • these actions are implemented by a lawful user;

  • they are indispensable to obtain information necessary to the interoperability of an “independently created software” with “other software programs”;

  • the information necessary to the interoperability is not quickly and easily accessible;

  • the operations of decompilation are limited to the portions of the original software necessary to this interoperability; and

  • the information obtained has not been used for the development, production or marketing of a software whose expression  is substantially similar.

It should be noted that the court repeatedly insisted on the fact that Nintendo’s expert asserted facts based on confidential technical specifications that were not communicated to the court and therefore not contradictally debated.  This may partly explain why the Court discharged all the parties without examining each of the interoperability exception’s conditions.

2. Commercialisation of a means likely to impair a technological protection measure

In this particular case, the defendants were also summoned on the basis of “commercialisation of means likely to infringe a technological measure of protection”.

The Court ruling indicated that, on the ground of the counts of indictment, the expert’s report described one of the mechanisms of protection set out by Nintendo to ensure that only Nintendo games can be read on Nintendo consoles: “one of the measures of protection of the Nintendo DS console consists in the authentication of the card inserted in the console. It happens through the playing of specific data inserted in each Nintendo DS game (…). These data are protected by a system of encryption inserted in the game cartridge and in the console. Thus, in order to launch the applications contained in the games cards, the Nintendo DS console requires a specific code of data encoding. (…) Consequently, the emulation of a game card, by device, such as the DS Linker or the R4, requires imperatively the circumvention of measures of protection installed by Nintendo on its Nintendo DS consoles”.

Consequently, according to the expert, by enabling among other things the playing of pirated video games on the Nintendo DS console, the linker indisputably circumvents the technical measures which protect the Nintendo console’s software.

The law relating to the use of technical measures of protection is different depending on whether or not the technical measures are applied to software.

That is why the Court emphasised that the provisions resulting from France’s Act number 2006-961 (France’s implementation of the EU Copyright Directive 2001/29/CE of 22 May 2001) which punish knowing circumvention of such technical measures of protection, do not apply to any measures which are designed to protect software works (see the French Intellectual Property Code, art. L 331-5 and following related articles). The Copyright Directive acknowledges the legitimacy of the technical measures of protection and sets a protective framework for them, while excluding software works.

The Court in the Nintendo case did not expressly consider the question of the circumvention of technical measures to protect copyrighted works that are not software.

However, the Court’s judgment not only indicates that the relevant article of the French Intellectual Property Code (L 335 3 1) does not apply to the employment of technical measures of protection of a software program but also notes that the existence of a system of encryption and of measures of protection, although asserted by Nintendo’s expert, was not proved to the Court and that, when “assuming that these systems and measures exist, no indication is given, in this particular case, regarding their efficiency which is, however, one of the conditions of the protection claimed.”

It seems that the Court ultimately did not consider the offence of “commercialisation of means likely to infringe a technological measure of protection” due to a lack of proof that such measures existed in the Nintendo system. The Court therefore concluded: “Lacking of precisions regarding the technical measures invoked, we have two devices - a console and a card – which communicate, but in the light of the explanations given hereinabove (I), this communication does not seem to have been obtained by means and / or according to a process prohibited by the law.

In conclusion, in the eyes of what has been developed hereinabove, the materiality of an infringement to an effective technical measure of protection cannot be characterised”.

Finally, if the same case was heard in the civil courts, it is possible that a different decision would have been reached. Indeed, a criminal case requires a higher standard of proof and, in this particular case, the Court emphasised that the alleged facts that made up the basis of the indictment were not sufficiently proven. The public prosecutor and Nintendo have appealed the decision, which could very well be overturned by the Court of Appeal on the condition that Nintendo and/or the public prosecutor provide such proof.