“[H]ome copying cannot be prevented, is widely practised and brings the law into disrepute”
(Lord Templeman - CBS Songs Ltd v Amstrad Consumer Electronics Ltd)
As we move from hard copies to electronic media, of which copies of ever increasing quality can be made using new technology, copyright is being forced to change and to meet the new demands of a digital age.
Copyright owners have had to deal with copying of audio works using blank tapes for decades. The quote above was made in an unsuccessful case brought by the music industry to challenge the sale of twin cassette music centres in the eighties. In the digital age, the battle to protect copyright in electronic works is the new frontline and the strategy many owners have adopted is to build protection devices into the electronic works which prevent copying at first instance. Unlike the blank tapes issue, there seems to be an increasing recognition that copyright needs to be reinforced in this respect. Hence, many developed countries are in the process of implementing legislation to outlaw devices which enable end-users to circumvent the protection methods which copyright owners have developed to prevent infringement of copyright in electronic and digital media.
A key impetus for these reforms is the WIPO Copyright Treaty (“WCT”)and WIPO Performances and Phonograms Treaty (“WPPT”) which include provisions obliging contracting parties to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures used to restrict unauthorised acts in relation to works. The European Community has also instituted a Directive pursuant to the WCT and WPPT – the EC Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society (“the Directive”) the deadline for the implementation of which is December 2002. In the UK the relevant legislation is contained in the Copyright Designs and Patents Act 1988 (“CDPA”) (which preceded these international initiatives, and, as discussed below, may need to be amended to comply with them). On the other side of the Atlantic, the United States has implemented the Digital Millennium Copyright Act 1998 (“DMCA”).
In the United Kingdom, the recent case of Sony Computer Entertainment v Paul Owen and Ors (unreported as yet) is the first case under the relevant legislation.
The key provision is s296, CDPA which applies “where copies of a copyright work are issued to the public, by or with the licence of the copyright owner, in an electronic form which is copy-protected” (s296(1)).” Copy-protection includes “any device or means intended to prevent or restrict copying of a work or to impair the quality of copies made”.
Section 296(2) provides that:
“the person issuing the copies to the public has the same rights against [a person] who, knowing or having reason to believe that it will be used to make infringing copies:
(a) makes, imports, sells or lets for hire, offers or exposes for sale or hire, or advertises for sale or hire any device specifically designed or adapted to circumvent the form of copy-protection employed, or
(b) publishes information intended to enable or assist persons to circumvent that form of copy-protection, as a copyright owner has in respect of a copyright infringement."
Use of copies of computer programs for this purpose in the course of a business is also covered (s296(2A)).
Section 296 (3) provides that the issuer has the same rights of delivery up or seizure in relation to offending devices as a copyright owner has in relation to an infringing copy.
Section 296A and B deal with permitted uses. In respect of computer programs, s296A provides that where a person has the use of a computer program under an agreement, the agreement cannot prohibit back up copies which are necessary for the agreed use, decompiling of the program where is meets the requirements of s50B(2) CDPA (essentially this permits decompiling of program to obtain the information necessary to create an independent program which can be operated with the decompiled program, so long as the information obtained is not used for any other purpose) or use of a device to study or test the functioning of the program in order to understand the ideas and principles underlying it. The caveat in s296B in respect of databases essentially provides that acts to access a database or use a database by a person who has rights in it cannot be excluded by agreement.
Sony Computer Entertainment v Paul Owen and Ors
The case concerned the Sony Playstation 2, the games for which take the form of CDs or DVDs carrying the game as a computer program. Each game has a code embedded into the CD or DVD which cannot be read or copied by computer. The Playstation will not run games which do not contain this code. Hence, the Playstation console would not run copies of Playstation games made using a CD burner or games other than Playstation games. The codes also allow Sony to maintain its territorial boundaries – the world is split into 3 regions – US, Japan and PAL countries– regulated by the use of different code controls.
The Defendants in the action claimed they had a way round the codes – a chip aptly named “Messiah” which they imported from Russia and which, when inserted into the Sony Playstation 2 allowed the codes to be by-passed. This was achieved by intercepting messages from within the console and returning authorising data such that no copying of data from the disk as such was involved. Sony alleged that the importation and sale of the Messiah chip in the UK infringed s296, CDPA. There was no dispute that there were copyright works issued by Sony or its licencees on the UK market nor that the codes would constitute copy protection for the purposes of s296(4), the copying being prevented being “the loading of the game into the computer”.
The Defendants’ argued that Sony’s copy-protection device extended beyond mere protection of copyright works. Hence, by by-passing the codes the Messiah could be used to enable the Playstation console to be used for non-infringing purposes – such as playing independent software, making back up copies of Playstation games in case the disk became corrupted or allowing the playing of Playstation games from different regions. They contended that s296 should be construed as applying only to devices whose only use was for reading copyright protected works. Sony argued that it was sufficient that there were uses for the Messiah which would involve infringement of copyright.
Jacob J broke the issue into 2 questions: (1) Did it matter that there may be some lawful uses of the Messiah, given that there were some which were not? (2) To what extent could lawful use be made of the Messiah? However, significantly, he stated that “The second point is irrelevant if Sony are right on the first point”. Jacob J decided that Sony’s interpretation of s296 was correct – the language of the section would cover the Messiah and it was irrelevant that once circumvented non-infringing material could also be read. “Once it is conceded…that the special codes which Sony put in are a device intended to prevent or restrict copying of a work within the meaning of sub-section (4), it follows that the Messiah is a device designed to circumvent that”.
Jacob J then went on to consider the scale to which non-infringing use could be made of the Messiah. He did not accept that the infringement would be on a limited scale given that many teenagers would obtain a Messiah device and use it to copy and share games etc. Accordingly, he regarded the arguments as to non-infringing use as “completely academic” but gave his views because they had been argued. Jacob J held that the use of the Messiah to enable the Playstation to play Sony games meant for other regions, which the Defendants argued could constitute private and domestic use (section 22, CDPA) or copying or adapting for lawful use (section 50C, CDPA) would constitute infringement because whether such games could be imported depended on the copyright licence which, in these cases, clearly stipulated territorial boundaries.
Jacob J also dismissed the Defendants’ argument that the Messiah would enable back up copies of the Playstation games to be made as “fanciful”. Section 50A allows back up copies if they are “necessary ..for the purposes of …normal use” – something he could not imply in buying a computer game. Copinger suggested that the right to make a back up copy could be implied in respect of disks because it was good practice to copy them on to the hard drive and often recommended in user manuals such that a licence due to custom in trade could be implied. Jacob J opined that s50A was concerned with the case where there was a separate licence beyond the implied licence to use the article itself – the mere licence to use a CD did not imply a right to make a back-up copy - if your CD is spoiled you buy another.
However, Jacob J did accept that some uses of the Messiah would be non-infringing – for example, the development of a wholly independent game to be read by the Playstation console.
There appears to be some uncertainty at the heart of the judgment. It would appear, taking what Jacob J said literally, that any device which enables circumvention of copy-protection will be caught, no matter how trivial that possible use is nor how many other potentially non-infringing uses can be made of it. This seems to be at odds with the words “specifically designed or adapted” in s296(2) [emphasis added]. However, Jacob J also went on to consider the extent of potential non-infringing use and appeared to attribute some importance to his evaluation that, in practice, most uses were infringing, suggesting that at some level this was a significant consideration.
It may be that Jacob J was saying no more than that on the facts, the device was so specifically designed as to clearly fall within s296 and, in any event, its uses would generally infringe copyright. However, one could also argue that the court has in fact given Sony carte blanche, not only to protect its copyright, but also to tie users of the Playstation 2 to Sony games, so long as the ability to control this is vested in a code which also prevents copying.
(b) The Directive
The Directive is required to be implemented in the UK by December 2002. It is clear that the Directive will require some change in the law because the precise terms are different – for example, the Directive applies to related rights such as performers’ rights and the existing law only applies to copyright. The CDPA has chosen to tackle devices which seek to circumvent copyright protection by granting the same rights to an issuer as to a copyright owner (s296 (2)). This is an important step in outlawing circumventing devices, casting those who sell them in the same light and subject to the same rigors as copyright infringers proper. However, Copinger has pointed out that s296 may not adequately protect the copyright owner because it appears to only grants remedies to the issuer of the copies, not the copyright owner (although, in practice, the relationship between the copyright owner and issuer is likely to be covered by contract).
Article 6(1) of the Directive provides that “Member States shall provide adequate legal protection against the circumvention of any effective technological measures for the protection of copyright works, which the person concerned carries out in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective”. This is certainly wider than the CDPA insofar as it would catch users of circumvention devices as well as those who manufacture or sell them.
The Directive seems to be at odds with the CDPA provisions, at least as construed in Sony, at a more fundamental level insofar as Article 6(2) appears to be attempting to specify in greater detail the circumstances in which a device will be infringing:
Article 6(2) requires that Member States provide adequate legal protection “against the
manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision of services which:
(a) are promoted, advertised or marketed for the purpose of circumvention of, or
(b) have only a limited commercially significant purpose or use other than to circumvent, or
(c) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, any effective technological measures."
While Article 6(2) goes further than the CDPA insofar as it seeks to outlaw products, components and services, as well as devices, it also requires them to have some primary function of circumvention. The application of the criteria in Art 6(2)(b) and (c) seems to require some deeper analysis of the purposes for which the device can be used – a weighing of the range of purposes. While it seems likely that the Messiah would also fall foul of this, it is not clear that such a weighing process is allowed within s296(2), certainly as Jacob J construed it. However, this may be implicit if “specifically designed” is given its full meaning, and, in practice, although as a second level and as an academic issue Jacob J did make such an evaluation.
Further complicating the issues, however, is the interrelationship between Article 6(1) and 6 (2) which is far from clear. Article 6(1) is very broad, seeking to outlaw circumvention of copyright protection by end users, without any apparent limits. This suggests that even devices which do not fall within Article 6(2) because they have a primary commercial purpose other than circumventing copy-protection could in practice, in the hands of the public, be infringing. It is not clear how this would be policed or whether, in practice, a device etc would have to fall foul of Article 6(2) before it could also be deemed circumvention under Article 6(1).
Perhaps underpinning this latent tension is the question of whether the kind of distinctions set out in Article 6(2) are feasible in practice since, if a device has an infringing use, it will in practice be used for infringement even if there are other commercially significant uses. As Jacob J observed in Sony – “one would have to shut one’s eyes to reality to imagine that the scale of swapping by teenagers would be trivial if this device were widely available…Much the same thing happened with blank tapes for music”. The conundrum is that, in practice, copy-protected works may be hamstrung if the devices used to circumvent copy-protection have other commercial purposes or were originally designed for other purposes.
(c) International Perspectives
Going forward, in the USA, the case of USA v Elcom Ltd under the DMCA will also be of interest since it is the first criminal prosecution in respect of devices for circumventing copyright. On 8 May 2002 the US district court rejected the attempts of Elcom Limited to dismiss the indictment for violation of due process and on First Amendment grounds. The case is the first criminal prosecution under the legislation – it concerns a software program that enables users to remove digital restrictions from files used with Adobe’s eBook reader. The court found that the fact that “fair use” was permitted under the DCMA did not render it too uncertain to provide guidance and be capable of being followed by users. The court also rejected the first amendment arguments – the DMCA targeted conduct – digital piracy – not speech per se and served an important government interest. The case is not exactly comparable because the US concept of “fair use” is more general and wide ranging than the UK concepts –which are set out specifically in legislation but it highlights the need for a delicate balance between the interests of copyright owners and end users.
It must also be remembered that copyright owners’ rights are subject to the caveats in s296A and s296B. Case law in the United States suggest that decompiling and reverse engineering allow users significant freedom. Hence, in Sony Computer Entertainment v Connectix - April 20 1999 (the first case under the DMCA anti-circumvention provisions) it was held that reverse engineering so as to examine the low level code in Sony’s basic input-output system did not infringe copyright. The reverse engineering had enabled the Defendants to develop a computer program which, when installed, allowed certain computers to run Sony Playstation games, although not as well.
Whether Jacob J’s interpretation of s296 is correct remains to be seen. If it is, the scope of such fair use caveats may be crucially limited if the device in question is also capable of enabling copying. The Directive suggests that a more delicate balance may need to be made.
First published in the August 2002 issue of WLLR.