Adventures in Personal Copying (Part 1)

Yin Harn Lee

Did you think that adoption by the UK of an exception for private copying personal copies for private use [here] was the end of the story, so that everybody could finally live happily ever after?

Apparently this is not what happened. 

1709 Blog friend Yin Harn Lee (University of Sheffield) reports on her recent (mis-)adventures.

Here's what Yin Harn writes:

"Recently, I bought a DVD of the first season of the Sleepy Hollow TV series, which had been recommended to me for its diverse cast, its implausible yet convincingly executed premise, and the soulful eyes of its male lead Tom Mison. 

As I have a TV capable of reading USB memory devices, but no DVD player, it was my intention to rip the episodes onto a USB device so that I could view them comfortably on my TV. This was on the basis of the newly-enacted section 28B of the Copyright, Designs and Patents Act 1988 (‘CDPA’) which, since 1 October 2014, permits individuals to make personal copies of works (other than computer programs) that they have acquired lawfully and on a permanent basis for their own private use (see previous post here).

My intentions of enjoying Tom Mison’s face this exciting and fast-paced TV show in full 32-inch-screen glory were, however, stymied by what appeared to be a technological protection measure (‘TPM’) applied to the DVD, which prevented me from copying the episodes. 

Recalling that the newly-enacted personal copying exception in the CDPA also introduced several provisions permitting individuals to issue notices of complaint to the Secretary of State where they are prevented from making personal copies by restrictive measures applied by or on behalf of the copyright owner (see section 296ZEA of the CDPA), I took to the Internet to discover how such a complaint might be made. 

Typical eagerness to learn about
the intricacies of copyright law

This led to a discovery of a form on the IPO website, which requires complainants to provide, inter alia, details about themselves, the work concerned, and the copyright exception(s) which they are seeking to benefit from.

The section of the form that caught my eye first of all was Section 7, which states:

          “Details of your discussion with the rightholder(s)

“It is important that you have tried to reach a solution with the rightsholder(s). Please set out the steps you have taken to try to agree a solution with the rightholder(s).

“Include here any suggestions made by the rightsholder(s) and any reasons why the solution is not acceptable to you.

“Please enclose copies of relevant correspondence.”

I found this curious, as the relevant provision in the CDPA does not appear to impose on the individual seeking to benefit from the personal copying exception any obligation to reach a solution with the rightholder in relation to the TPMs that prevent that person from doing so. In fact, section 296ZEA(3) of the CDPA states that:

“Following receipt of a notice of complaint, the Secretary of State may give to the owner of that copyright work or an exclusive licensee such directions as appear to the Secretary of State to be requisite or expedient for the purpose of –

“(a) establishing whether any voluntary measure or agreement relevant to the copyright work subsists, or

“(b) (where it is established there is no subsisting voluntary measure or agreement) ensuring that the owner or exclusive licensee of that copyright work makes available to the complainant or the class of individuals represented by the complainant the means of benefiting from section 28B to the extent necessary to benefit from that section.”

Unwanted consequence
of trying to understand
UK private copying exception?

This seems to place the onus on the rightholder to establish whether such voluntary solutions do exist, and if not, to take steps necessary for ensuring that the complainant is able to benefit from the personal copying exception.

In fairness, it should be noted that section 296ZEA(5) of the CDPA does state:

“The Secretary of State may also give directions –

“(a) as to the form and manner in which a notice of complaint in subsection (2) may be delivered,

“(b) as to the form and manner in which evidence of any voluntary measure or agreement may be delivered, and

“(c) generally as to the procedure to be followed in relation to a complaint made under this section,

“and shall publish directions given under this subsection in such manner as the Secretary of State thinks will secure adequate publicity for them.”

However, while this gives the Secretary of State some discretion for determining the procedure for issuing a notice of complaint, it would seem not to go so far as to allow the onus of establishing the existence of voluntary solutions to be shifted to the individual, rather than the rightholder. There are also practical implications: individual users are unlikely to be in a position to negotiate effectively with rightholders, and may even have difficulty identifying the correct rightholder in the first place.

In my case, aware that Sleepy Hollow is produced by Twentieth Century Fox in the US, I have decided to get in touch with them via the contact form here to see if they are prepared to offer any solutions to my TPM woes. Suggestions as to the wording I should use would be very welcome."

1709 Blog readers: any suggestions that could lead to Adventures in Personal Copying (Part 2)?

CJEU says that circumventing a protection system may not be unlawful

As announced on the IPKat, this morning the Court of Justice of the European Union published its handy 39-paragraph judgment [press release available here] in Case C-355/12 Nintendo v PC Box [on which see also AG Sharpston's Opinion, commented here and here] 

This was reference for a preliminary ruling from the Tribunale di Milano (Italy), seeking clarification as to the interpretation of Article 6 of the InfoSoc Directive on technological protection measures. 

In particular, the questions referred by the Italian court read as follows:

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?

   Here's what the CJEU replied:

"Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the concept of an ‘effective technological measure’, for the purposes of Article 6(3) of that directive, is capable of covering technological measures comprising, principally, equipping not only the housing system containing the protected work, such as the videogame, with a recognition device in order to protect it against acts not authorised by the holder of any copyright, but also portable equipment or consoles intended to ensure access to those games and their use.

It is for the national court to determine whether other measures or measures which are not installed in consoles could cause less interference with the activities of third parties or limitations to those activities, while still providing comparable protection of the rightholder’s rights. Accordingly, it is relevant to take account, inter alia, of the relative costs of different types of technological measures, of technological and practical aspects of their implementation, and of a comparison of the effectiveness of those different types of technological measures as regards the protection of the rightholder’s rights, that effectiveness however not having to be absolute. That court must also examine the purpose of devices, products or components, which are capable of circumventing those technological measures. In that regard, the evidence of use which third parties actually make of them will, in the light of the circumstances at issue, be particularly relevant. The national court may, in particular, examine how often those devices, products or components are in fact used in disregard of copyright and how often they are used for purposes which do not infringe copyright."

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
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.

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) …

Will the CJEU play Nintendo's game?

Going one step further than
Bob Kohn: here's the Nintendo
legal team ...

Another copyright case is winging its way to the Court of Justice of the European Union for a preliminary ruling: it's Case C-355/12 Nintendo et al, which I discovered today via an email circular from the UK Intellectual Property Office (IPO). No clue is given as to the factual background and the InfoCuria page dedicated to this action is not exactly encrusted with useful information, though the referring court would appear to be the Tribunale di Milano, Italy.

The questions referred for a preliminary ruling are as follows:

"(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 (videogames 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 is not interoperable with complementary equipment or products other than those of the undertaking which produces the system itself?

(2) Should it be necessary to consider whether or not the use of a product or component whose purpose is to circumvent a technological protection measure predominates over other commercially important 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 adopt criteria in assessing that question which give prominence to the particular intended use attributed by the right holder to the product in which the protected content is inserted or, in the alternative or in addition, criteria of a quantative 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?"

The 1709 Blog will do its best to keep readers informed as this reference progresses. Meanwhile, anyone who feels the urge to comment on this case for the purpose of nudging the UK government into making representations should email Policy at policy@ipo.gsi.gov.uk before 19 September 2012 -- a remarkably generous date when compared with some earlier Court of Justice references.