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European IP Bulletin, Issue 15, September - Copyright
Copyright
3. Sony Playstation Copy Protection Upheld: Extra-Territorial Arguments Rejected
Kabushiki Kaisha Sony Computer Entertainment Inc & Ors v Ball & Ors [2004] EWHC 1738 (Ch) (19 July 2004)
Sony include a two-part authorisation system in their Playstation 2 console. One part is embedded in the console, while the other part is in the discs carrying the games. The two parts act as lock and key to open up a game for use. Ordinary copying systems do not reproduce the part incorporated onto the original discs, so cannot produce working copies. Consoles, games and copy protection codes are specific to different TV standards used in Europe, America and Japan. This means that games coded for the Japanese market cannot be played on European consoles and so forth.
Mr Ball, the first defendant, designed, manufactured and sold an electronic chip called ‘Messiah 2’. This circumvents the requirement for a code to be present on the disc and so enables consoles to play Sony games from other regions and also to play unauthorised copies.
Sony sued the defendants under sections 296, 296ZA, ZD and ZF of the UK’s Copyright Designs and Patents Act 1988, as amended by EC directive 2001/29/EC on copyright in the information society, which deal with circumvention of copy-protection measures.
The main issues addressed by the court were whether
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The Sony two-part copy protection system was a copy-protection system under s.296
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A transient copy in RAM could be regarded as an ‘article’ pursuant to the definition of ‘infringing copy’ in the 1988 Act. The defendants argued that since the only point at which Messiah2 was used to make copies was during play, when works on the CD were reproduced as transient copies in the console’s RAM, these were not infringing copies within the definition
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Mr Ball had the requisite knowledge in accordance with s.296 that the circumvention device would be used to make ‘infringing copies’. Mr Ball did not deny importing, selling and advertising the Messiah2 chips, but denied he had knowledge that the chips would be used for an illegitimate purpose
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The ‘sole intended purpose’ of the article pursuant to s.296 (as amended) was to facilitate unauthorised removal or circumvention of the copy-protection device. The defendant argued that Messiah2 had a legitimate purpose for making back-up copies or allowing games and consoles from different regions to be used together
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There was any defence under s.296ZA in relation to circumvention of technological measures in the knowledge that one is so doing
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The defendant could be held to be liable under s.296 in relation to the Messiah chips which were exported. It was argued for Sony that the provisions could take effect against circumventions outside the jurisdiction
There is a difference between copy-protection applied to works (eg on CD or DVD) and copy-protection applied to hardware (the consoles).
Justice Laddie addressed each point in turn. On the first question, he found that although the Sony system was designed to prevent use of unauthorised copies rather than to prevent copying of the games in the first place, it was a copy-protection system under s.296. Secondly, RAM bearing a transient reproduction was an article and a copy. Thus there would be liability for chips imported or sold in the UK. He also determined that Mr Ball could not escape from liability by showing that he did not know or have reason to believe the Messiah2 chips would be used to make infringing copies of Sony copyright works. Further, since the Messiah2 facilitated the unauthorised removal or circumvention of the copy-protection device, unless Sony authorised any other of the activities (as claimed by the defendant to be legitimate) the fact that there may be other purposes for the Messiah2 was no defence. On the fifth question, Justice Laddie held that there was no defence under section 296ZA. Sony’s system was a ‘technological measure’ within the meaning of the new s.296ZF. However, he did find that there could be no liability under s.296 for the chips that were exported. Liability was limited by the territorial nature of the 1988 Act. Section 296ZD could not be read as covering circumvention out of the jurisdiction. However, s.296ZD(1)(b)(i) covered possession and advertisement in the UK and had been contravened. Finally, it was held that there was nothing in the statute limiting where the copy protection should be applied.
The wide interpretation of technological measures within the meaning of the new provisions coupled with a narrow interpretation of the scope of knowledge required means that it will be more difficult for designers of circumvention measures to avoid liability for infringement. Furthermore, the territorial restriction of the act will not protect defendants who possess or advertise infringing devices for commercial purposes even if they are to be exported.
4. Lambretta Clothing Company v Teddy Smith
On 15 July 2004, the Court of Appeal handed down its judgement in Lambretta Clothing Company Ltd v Teddy Smith (UK) Ltd and Anor [2004] EWCA Civ 886
Lambretta is a designer and manufacturer of fashion clothing and in 2000 it designed a ‘retro-vintage’ track top. The issues at hand were the shape and colour of this garment. The shape did not result from the designer’s work. He merely contributed to the colour coordination i.e. the colours blue for the body, red for the arms and white for the zip. This also included the stripes on the garment and the size and location of Lambretta’s logo. In 2002, the first defendant, Teddy Smith, imported and sold a track top in the same colourways as Lambretta’s and in June 2002 the second defendant, Next, independently designed a similar track top.
Lambretta became aware of the defendants’ activities and subsequently brought an action for unregistered design right infringement. Lambretta alleged that the defendants had infringed its design right in the track top, or in the alternative, infringed its literary and artistic copyright in the design drawings. It argued that the purpose of section 51 of the Copyright Designs and Patents Act 1988 (CDPA) was to continue to allow copyright protection to subsist in those aspects of a design in which there was no design right protection.
On 23 May 2003, the High Court held that there was sufficient evidence to infer copying by Teddy Smith. However, on the interpretation of law, the court held that unregistered design right did not subsist in the design and that there was arguably a defence to infringement of artistic copyright in accordance with s.51 CDPA. There had only been copying of an article made to the design drawings, and the design drawings did not fall into the exclusion of being for an artistic work or typeface.
Lambretta appealed the court’s decision.
Next was found not to have copied Lambretta’s design. Therefore, since copying is a pre-requisite for both design right and copyright infringement, Next was not a party to the appeal.
The key points addressed by the Court of Appeal were whether:
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Unregistered design rights may subsist in the variation of colours and more importantly whether they were an aspect of shape and configuration of the whole or part of an article as required by s.213(2) of the CDPA
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The colours were in fact surface decoration within the meaning of s.213 (3)(c) of the CDPA
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Section 51 only provided a defence in so far as the work is protected as a form of artistic copyright.
The court approached each point in turn. On the first point raised by Lambretta the court held that a choice of colours found on an article of clothing was not, as it was claimed, ‘an aspect of the shape or configuration of an article or part of an article’ and that the choice of colours was excluded as surface decoration within the meaning of unregistered design right. The court went on to say that it was the components which made the complete article, with the colours playing little part in the overall configuration of the article. The court also dismissed the submission that the colours were dyed right through the article and therefore did not technically fall within the meaning of ‘surface decoration’.
On the second point the court held that s.51 of the CDPA was applicable to the circumstances of this case. The court accepted that the drawing was a design document, however it reiterated the fact that surface decoration was excluded from the definition of ‘design’ within the meaning of s.51 was irrelevant. The court pointed out that the colours were not presented in an abstract form, but were applied to the various shapes of the garment. If Lambretta attempted to enforce the work as an artistic copyright, it could only be enforced in its entirety and that was not permitted under s.51.
In relation to the third point, it was hoped that the Court of Appeal would provide further clarity on the definition of design right such as “commonplace” and “surface decoration”, and the interesting juxtaposition between design right and s.51 CDPA. Instead, the decision more or less maintains the status quo.
The decision of the High Court was thus upheld, with the Court of Appeal finding that there was no design right and no copyright infringement. The case does however provide Court of Appeal authority for the proposition that the surface decoration exception extends to 3D decoration.
5. EU Commission Launches Consultation To Harmonize Copyright and Related Rights Legislation
The European Commission announced on 19 July 2004 that it had launched consultations to review the existing EU legislation on copyright and related rights. This is part of the Commission’s Better Regulation Action Plan which is an ongoing program reviewing EU law in order to simplify and streamline existing legislation.
The consultations, which are open until 31 October 2004, are based on a Commission working paper which reviewed the EC legal framework in copyright and related rights. The working paper examined whether there were any inconsistencies in the definitions or the rules on exceptions and limitations between the seven copyright Directives and if any of the Directives have a harmful impact on the fair balance of rights and other interests.
The working paper found that only minor adjustments are necessary at the moment and considered that further action at Community level was unnecessary for the time being. It suggested a number of measures including: aligning the definition of the right of reproduction, clarifying the definition of the right of communication to the public with respect to computer programs, extending the exception for temporary acts of reproduction to computer programs and databases, harmonising the criteria for calculating the term of protection for co-written musical works, and adding a new exception for the benefit of disabled persons for databases. Other issues discussed included the criteria used to determine the beneficiaries of protection in the field of related rights. In particular the extension of copyright protection for recorded music from 50 to 95 years was assessed, so as to bring the EU into line with recent changes on US copyright law. However, the working paper does not regard this change as necessary.
The Commission aims to present legislative proposals for amending the existing copyright Directives at some point during 2005 taking into account comments made under this consultation.
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