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| Venue: The Court of Justice of the European Union Dress code: court gowns BYOB RSVP |
This morning
Advocate General Sharpston issued her handy 79-paragraph Opinion in Case
C-355/12 Nintendo v PC Box, following a request for a
preliminary reference from the Tribunale di Milano (Milan Court of First
Instance).
This is an important case that has inhabited the minds and hearts of
many copyright lawyers for quite a long time, and concerns the exciting topic
known as technological protection measures.
Background
The Nintendo group
produces videogames and consoles. PC Box markets 'mod chips' and 'game copiers'
via its website. These enable videogames other than those manufactured by
Nintendo or its licensees to be played on Nintendo consoles (DS and Wii).
Nintendo brought
proceedings against PC Box before the Tribunale di Milano, seeking to prevent
the commercialisation of PC Box devices that circumvent the technological
measures adopted by Nintendo in order to ensure that unauthorised copies of
Nintendo or Nintendo-licensed games may not be used with its consoles.
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| AG Eleanor Sharpston |
PC Box questioned
whether videogames are to be regarded as computer programs or intellectual work.
In either event, it submitted that it marketed original Nintendo consoles with
a software pack comprising applications specifically created by independent
producers for use on such consoles in conjunction with mod chips or game
copiers designed to disable the blocking mechanism built into the console. PC
Box also submitted that Nintendo’s true purpose was (i) to prevent the use of
independent software unconnected with the illegal video game copies sector and
(ii) to compartmentalise markets by rendering games purchased in one
geographical zone incompatible with consoles purchased in another. It therefore
challenged Nintendo’s application of technological measures not only to its
video games but also to hardware, which it considered to be contrary to Article
6(3) of Directive
2001/29.
The Tribunale di
Milano held that videogames are not just computer programs but are
complex multimedia works expressing conceptually autonomous narrative and
graphic creations. Such games must therefore be regarded as intellectual works
protected by copyright. It noted that, although the technological measures put
in place by Nintendo contributed to the prevention of unauthorised copying of
games, they also restricted interoperability and consumer choice. It decided to
revert to the Court of Justice of the European Union (CJEU), seeking
clarification as to (using the words of AG Sharpston) "two questions,
though perhaps not quite as clearly as might have been desired."
‘(1) Must
Article 6 of Directive 2001/29/EC be interpreted, including in the light of
recital 48 in the preamble thereto, as meaning that the protection of
technological protection measures attaching to copyright protected works or
other subject matter may also extend to a system, produced and marketed by the
same undertaking, in which a device is installed in the hardware which is
capable of recognising on a separate housing mechanism containing the protected
works (video games produced by the same undertaking as well as by third
parties, proprietors of the protected works) a recognition code, in the absence
of which the works in question cannot be visualised or used in conjunction with
that system, the equipment in question thus incorporating a system which
precludes interoperability with complementary equipment or products other than
those of the undertaking which produces the system itself?
(2) If it should be necessary to consider whether or not the use of a product or
component to circumvent a technological protection measure predominates over
other commercially significant purposes or uses, may Article 6 of Directive
2001/29/EC be interpreted, including in the light of recital 48 in the preamble
thereto, as meaning that the national court must apply criteria which give
prominence to the particular intended use attributed by the rightholder to the
product in which the protected content is inserted or, in the alternative or in
addition, criteria of a quantitative nature relating to the extent of the uses
under comparison, or criteria of a qualitative nature, that is, relating to the
nature and importance of the uses themselves?’
Preliminary
observations
Among other
things, the AG observed that
· The technological measures put in place by Nintendo sought
to prevent or restrict unauthorised acts in respect not only of Nintendo’s own
copyright material (its own games) but also of copyright material belonging to
licensed independent producers;
· Since Nintendo games are not just computer programs,
the regulation of technological protection measures is that provided by
Directive 2001/29, not the Directive
2009/24 (the Software Directive). In any case, "[w]here complex intellectual works
comprising both computer programs and other material are concerned – and where
the two cannot be separated ... the greater, and not the lesser, protection
should be accorded. If that were not so, rightholders would not receive in
respect of that other material the degree of protection to which they are entitled
under Directive 2001/29."
· In any case, it did not appear that the acts made
possible by the use of PC Box’s devices, and with which the main proceedings are
concerned, fell within any of the exceptions set out in Articles 5 and 6 of
Directive 2009/24, although that again is a matter pertaining to the national
court’s assessments of fact and there is also a reference on similar issues currently
pending before the CJEU.
In light of the
foregoing, the AG decided to address the questions by reference to Directive
2001/29 alone.
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| Not necessarily technological, but clearly effective as a protection measure |
Milan's questions
rephrased
As rephrased by
the AG, the questions posed by the national court concern:
· First, whether
Nintendo’s technological measures qualify for protection because they are
designed to prevent or restrict acts not authorised by the rightholder, even if
they also restrict interoperability; then, if so,
· Secondly and separately,
whether that protection must be provided against the supply of PC Box’s devices
because they allow or facilitate the performance of such unauthorised acts. I
consider, however, that the two issues cannot be entirely separated, and that
factors mentioned in relation to one may be relevant to the solution of the
other.
The
response
According to the AG, the CJEU
should answer the questions raised by the Italian court to the following
effect:
· ‘technological measures’ within the meaning of Article
6 of Directive 2001/29 may include measures incorporated not only in protected
works themselves but also in devices designed to allow access to those works.
· When determining whether measures of that kind qualify
for protection pursuant to Article 6 of Directive 2001/29 where they have the
effect of preventing or restricting not only acts which require the
rightholder’s authorisation pursuant to that directive but also acts which do
not require such authorisation, a national court must verify whether the
application of the measures complies with the principle of proportionality and,
in particular, must consider whether, in the current state of technology, the
former effect could be achieved without producing the latter effect or while
producing it to a lesser extent.
· When determining whether protection must be provided
against any supply of devices, products, components or services pursuant to
Article 6(2) of Directive 2001/29, it is not necessary to consider the
particular intended use attributed by the rightholder to a device designed to
allow access to protected works. By contrast, the extent to which the devices,
products, components or services against which protection is sought are or can
be used for legitimate purposes other than allowing acts which require the
rightholder’s authorisation is a relevant consideration.
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| Software or InfoSoc Directive? |
A word on the
relationship between the Software and InfoSoc directives
Beyond the
boundaries of this specific case, the Opinion is well worth reading also
because it contains a short assessment (para 34) on the relationship between
Directive 2009/24 and Directive 2001/29. According to the AG:
"Directive 2009/24 concerns only computer programs, whereas Directive
2001/29 concerns copyright and related rights in intellectual works in general.
The latter leaves intact and in no way affects existing EU provisions relating
to, inter alia, the legal protection of computer programs. The Court has thus
stated that Directive 2009/24 constitutes a lex specialis in relation to the provisions of Directive
2001/29. In my view, that statement must be read as meaning that the
provisions of Directive 2009/24 take precedence over those of Directive
2001/29, but only where the protected material falls entirely within the scope
of the former."
This clarification
may be particularly timely and relevant, especially in the context of heated
debates and uncertainties arisen in Europe following last year's ruling in Case
C-128/11 UsedSoft v Oracle and concerning
whether exhaustion applies to (digital) subject-matter other than software (see Katposts here and here) …
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