By Peter Knight.
Key Points:
The English approach relies upon the court to decide whether a device is intended to circumvent a technological protection measures, which is a better approach than ours.
The House of Representatives Standing Committee on Legal and Constitutional Affairs has released a report including recommendations regarding exceptions to a new provision anticipated for the
Copyright Act 1968 (Cth) regarding "technological protection measures" (or "TPMs").
Why is this important? As we've seen, the technological protection measures provisions failed their first significant test in
Stevens v Sony Computer Entertainment KK (see our Alert on that case
here), and the authors of this report seem to be girding their loins for another overly-complex replacement. The Act has become burdened with such complex drafting over the last 20 years, leading to uncertainty and expensive litigation for those concerned. It is time to stop and take stock. Simpler and clearer alternatives exist already.
What is a technological protection measure?
Section 10(1) of the
Copyright Act defines a "technological protection measure" as:
"a device or product, or a component incorporated into a process, that is designed, in the ordinary course of its operation, to prevent or inhibit the infringement of copyright in a work or other subject-matter by either or both of the following means:
(a) by ensuring that access to the work or other subject matter is available solely by use of an access code or process (including decryption, unscrambling or other transformation of the work or other subject-matter) with the authority of the owner or licensee of the copyright;
(b) through a copy control mechanism."
and a "circumvention device" as:
"a device (including a computer program) having only a limited commercially significant purpose or use, or no such purpose or use, other than the circumvention, or facilitating the circumvention, of an technological protection measure."
Section 116A of the Act prohibits the manufacture, importation or supply of a circumvention device. There are, however, exceptions allowing supply for the purposes of law enforcement or national security or for the purpose of doing something permitted by the Act, ie.:
reproducing computer programs to make interoperable products (section 47D)
reproducing computer programs to correct errors (section 47E)
reproducing computer programs for security testing (section 47F)
copying by parliamentary libraries for members of parliament (section 48A)
reproduction and communication of works by libraries and archives for users (section 49)
reproduction and communication of works by libraries or archives for other libraries or archives (section 50)
reproduction and communication of works for preservation and other purposes (section 51A)
use of copyright material for the Crown (section 183); and
reproduction and communication of works by educational and other institutions (Part VB)
These exceptions only are triggered, however, if the affected copyright material is "not readily available … in a form that is not protected by a technological protection measure."
Why do the TPM provisions need rewriting?
The current provisions failed utterly in implementing them when it was found that they did not prevent the supply by Mr Stevens of a device which enabled the playing of "Bali silvers" – that is counterfeit copies – of Sony Playstation games on the Sony Playstation, as was found in the
Stevens v Sony. Although region coding of DVDs was not an issue in this case, exactly the same devices can be used for this purpose as are used to prevent the unlawful playing of illegal copies.
A further impetus for amendment has arisen from the Australia United States Free Trade Agreement ("AUSFTA"), entered into by Australia early in 2004. Under Article 17.4.7, Australia again commits to the "adequate legal protection and effective legal remedies against the circumvention of effective technological measures" (for the benefit of performers and record producers, as well as makers of literary, dramatic, musical and artistic works, and in respect of a wider range of infringing acts)
In the AUSFTA, an "effective technological measure" is defined as "any technology, device, or component that, in the normal course of its operation,
controls access to a protected work, performance, phonogram, or other protected subject matter, or protects any copyright." [emphasis added].
In the Report, there is some discussion as to whether this definition requires a broader amendment of the current TPM provisions, such that devices which not only prevent copying but which prevent access to a copy already made (but do not prevent copying) should be included. There is a hint of revisionism in the Report, which suggests that the original intention of the current provisions might have been solely to control
copying (the exclusive right of the copyright owner) and not
use (that is access to a copy already made, which is
not one of the exclusive rights of the copyright owner), notwithstanding the explanations of the provisions given by the government at the time of introduction of the current TPM provisions and the unmistakable reference to access in the current provisions. However, this is moot, because the Committee was not entrusted with the new drafting required in respect of the definition of TPMs and prohibition of circumvention devices at all, but only the exceptions to these provisions and, indeed, the exceptions to the exceptions, and the exceptions to the exceptions to the exceptions. Notwithstanding this, the Report makes a recommendation that the future TPM provisions "require a direct link between access control and copyright protection (Recommendation 2) and that protected access control measures "should relate to the protection of copyright, rather than to the restriction of competition in markets for non-copyright goods and services" (Recommendation 3), with particular reference to region coding of DVDs (Recommendation 4).
When the technical means by which unauthorised copying is prevented is in practice one which prevents access (and, indeed, access controls are the most common means), access controls must be protected. Any attempt to make such a distinction is doomed to failure, as was illustrated by the current provisions. The position will not be helped by drafting longer and longer, more elaborate and more complex provisions. This will simply lead to more uncertainty and more expensive litigation. The drafting proposed will fail.
UK position
Could it be possible that a simpler, not a more complex, provision could work where ours has failed?
Section 296 of the UK
Copyright Designs and Patents Act 1988 (the "CDPA") deals with the same problem by making it a copyright infringement for a person to knowingly, inter alia, make, import, sell, or let for hire, or advertise for sale or hire any device or means specifically designed or adapted to circumvent copy-protection. The section extends its protection to a person issuing copies of a copyright work to the public, giving them the same rights as a copyright owner has in respect of infringement. Section 296(4) of the CDPA says:
"References in this section to copy-protection include any device or means intended to prevent or restrict copying of a work or to impair the quality of copies made."
In
Kabushi Kaisha Sony Computer Entertainment Inc. v Edmunds (t/a Channel Technology) [2002] EWHC 45(Ch), Sony claimed that an importer of a "mod chip" known as "the messiah" had contravened section 296 of the CPDA. Based on the facts of the UK case it seems that this chip had the same effect of the "mod chips" in
Stevens v Sony, that is to enable CD-ROMs that are unauthorised and/or from other regional zones to play on the PlayStation 2 console sold in the UK.
As a result of these provisions, it was not disputed that the "Boot ROM" system and the embedded codes put into genuine CD ROMs and DVDs by Sony constituted the type of copy-protection envisaged by section 296 of the CPDA, the copying intended to be prevented being the loading of the game into the computer.
Justice Jacob in the English High Court found for Sony. It did not matter that, once circumvented, the machine may read non-infringing material. In the court's view, immediately it was conceded that Sony's embedded codes were devices or means intended to prevent or restrict copying of a work, within section 296(4), it followed that the messiah was designed to circumvent those codes. Having reached this conclusion Justice Jacob found that it was clear that the messiah chip was likely to be used on a considerable scale for reading pirate works.
It would appear that a provision as simple as s. 296 of the CPDA enabled the Court to exercise a common sense solution, and one which is now supported by the authority of the English Court.
Conclusion
Australia would do well to adopt this simpler approach for the underlying TPM provisions, making no distinction as recommended by Recommendations 2, 3 and 4 of the Report. As for the exceptions, such an approach is likely to lead to greater clarity and flexibility of interpretation, rendering many, if not all, of the exceptions proposed by the Report unnecessary. If for face we needed to implement specific exceptions, they should be limited precisely to those specified, and no more. We can rely on the courts to get it right, but not the draftsman.
