On July 26, 2012, the Court of Milano (Italy) submitted a request to the Court of Justice of the European Union for a preliminary ruling under Article 267 TFEU in the proceedings between Nintendo Co. Ltd, Nintendo of America Inc., and Nintendo of Europe GmbH vs PC Box Srl, and 9Net Srl concerning the sale, by PC Box, of ‘mod chips’ and of ‘game copies’ (‘PC Box equipment’) through the website managed by PC Box and hosted by 9Net.

The Nintendo undertakings, members of a group which creates and produces videogames, market two types of products for those games, namely portable systems, ‘DS’ consoles and fixed console videogame systems, ‘Wii’ consoles. The Nintendo undertakings have adopted technological measures, namely a recognition system installed in the consoles, and the encrypted code of the physical housing system onto which the videogames which are protected by copyright are registered. Those measures have the effect of preventing the use of illegal copies of videogames. Games lacking a code cannot be launched on either of the two types of equipment marketed by the Nintendo undertakings.It is also apparent from the order for reference that those technological measures prevent use on the consoles of programs, games and, generally, multimedia content not from Nintendo.

The Nintendo undertakings have observed the existence of PC Box equipment which, once installed on the console, circumvent the protection system present on the hardware and enable illegal use of videogames.

Considering that the principal purpose of the PC Box equipment was to circumvent and to avoid the technological protection measures of Nintendo games, the Nintendo undertakings brought proceedings against PC Box and 9Net before the Court of Milan (Italy).

PC Box markets original Nintendo consoles together with additional software consisting of certain applications from independent manufacturers, ‘homebrews’ created specifically to be used in such consoles and the use of which requires the prior installation of PC Box equipment, which deactivates the installed device which constitutes the technological protection measure.

In the opinion of PC Box, the actual purpose pursued by the Nintendo undertakings is to prevent use of independent software, which does not constitute an illegal copy of videogames, but which is intended to enable MP3 files, movies and videos to be read on consoles, in order to fully use those consoles.

The referring Court considered that the protection of videogames cannot be reduced to that provided for computer programs. Indeed, although videogames take their functionality from a computer program, they begin and progress following a narrated predetermined route by the authors of those games in a way to make a group of images and sounds appear together with some conceptual autonomy. That Court queried  whether the implementation of technological protection measures such as those at issue in the main proceedings used by Nintendo exceeds what is provided for that purpose by Article 6 of Directive 2001/29, such as interpreted in the light of recital 48 in the preamble to that directive.

On January 23, 2014, the Court issued its judgment (in case C-355/12) and ruled that Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization 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 authorized 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.