A recent decision of the High Court of Justice of England illustrates how copyright legislation dealing with technical protection measures (“TPMs”) can be applied.

The Facts

Nintendo’s TPMs

Nintendo Company Limited is the designer/manufacturer and distributor of the Nintendo DS games console and the games that go with it. Nintendo has implemented a range of security measures designed to prevent the loading and playing of unlawful copies of its games. Those measures include:

  1. the boot-up software permanently stored on the Nintendo DS checks for the presence of the Nintendo Logo Data File (“NLDF”) on an inserted card and prevents execution of programs present on the inserted card if the NLDF is not detected;
  2. the use of shared key encryption technology and scrambling to enable the Nintendo DS to detect whether game cards are authentic.

The Defendants’ Activities

The defendants imported and dealt in a number of different types of devices that enabled Nintendo DS users to play unlawful copies of Nintendo DS games which they downloaded using the Internet. The defendants imported these devices on a very large scale. More than 165,000 devices intended for the defendants were seized at customs. The devices contain circuitry, software and data (including a copy of the NLDF) which enable them to pass the tests performed by the Nintendo DS to verify the game inserted is genuine. In this way, the devices enable unlawful copies of Nintendo games to be successfully played on the Nintendo DS.

The Claim

Nintendo brought an action relying on the technical measures provisions of the Copyright, Designs and Patents Act 1988 (“CDPA”). The CDPA applies where effective technological measures have been applied to a copyright work and a person manufactures, imports, distributes or sells a device or product or provides a service that is promoted for the purposes of circumvention or is primarily designed, produced or performed for the purpose of enabling or facilitating the circumvention of the effective technological measures. A copyright owner has the same rights against a person who circumvents as they would if the person infringed copyright.

The Motion for Summary Judgment

Nintendo brought a motion for summary judgment. In its decision granting the motion, the Court noted that the relevant section of the CDPA creates a tort of strict liability. It is not a defence to show that the defendants did not know and had no reason to believe that the devices would be used to make infringing copies.

It was found that the boot-up software, the NLDF and encryption and scrambling used by Nintendo clearly amounted to effective technological measures. It was also clear from the evidence that the defendants’ devices allowed the Nintendo DS game console to boot up and play unlawful copies of Nintendo games by successfully circumventing the effective technological measures. As a result, judgment was granted in favour of Nintendo.

The Copyright Modernization Act (the “CMA”)

As part of the CMA, which was introduced in Parliament in June 2010 to amend the Copyright Act, the Canadian government has included provisions relating to technological protection measures. The relevant section of the CMA provides that no person shall manufacture, import, distribute, offer for sale or rental or provide — including by selling or renting — any technology, device or component if:

  1. the technology, device or component is designed or produced primarily for the purposes of circumventing a technological protection measure,
  2. the uses or purposes of the technology, device or component are not commercially significant other than when it is used for the purposes of circumventing a technological protection measure, or
  3. the person markets the technology, device or component as being for the purposes of circumventing a technological protection measure or acts in concert with another person in order to market the technology, device or component as being for those purposes.

The owner of the copyright in a work is, subject to the Copyright Act and any regulations made under the Act, entitled to all remedies — by way of injunction, damages, accounts, delivery up and otherwise — that are or may be conferred by law for the infringement of copyright against the person who contravenes the section.

Comment

The implementation of TPMs has been very controversial in Canada. The positions of content creators and users diverge widely. Creators wish to be able to control the manner in which their works are used as well as to control their business model and distribution. Some users, on the other hand, argue that it should only be a violation of the law to circumvent a TPM if the underlying purpose is to infringe copyright.

In the next few months, hopefully we will see how this issue is resolved as the CMA proceeds before Parliament.