AG Sharpston on technological protection measures (and the relationship between various EU copyright directives)

Venue: The Court of Justice of the European Union
Dress code: court gowns
BYOB
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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.

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.

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.

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) …