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White SW Computer Law Intellectual Property, Information Technology & Telecommunications Newsletter December 2005

Stevens v Kabushiki Kaisha Sony Computer Entertainment & Ors

In October 2005, in the matter of Stevens v Kabushiki Kaisha Sony Computer Entertainment & Ors, the High Court of Australia found in favour of Stevens in his appeal against the decision of the Federal Court in favour of Sony in their dispute over the “mod chips” which Stevens sold and installed into PlayStation consoles.

The PlayStation games software incorporates an access code that cannot be copied by conventional CD recording or copying devices. The boot ROM located in the PlayStation console must read the access code for the game to be played. Sony argued that a “technological protection measure” existed in the boot ROM or the access code in the game software, or in the combined operation of both the boot ROM and the access code in the software.

The “mod chips” that Stevens sold and installed allowed copies of the PlayStation games without the normal access codes to be played in “chipped” PlayStation consoles. In the proceedings commenced in the Federal Court, Sony alleged that Stevens had, without permission, sold or distributed a “circumvention device” which was capable of circumventing or facilitating the circumvention of a “technological protection measure” which protected Sony's copyright in the PlayStation games.

The Full Federal Court found against Stevens holding that the mod chips were circumvention devices and ordered Stevens to cease selling the mod chips. Stevens appealed against the orders of the Federal Court to the High Court.

The appeal centred around the definition of technological protection measure. Section 10 of the Copyright Act 1968 (Cth) contains the following definition:

“technological protection measure” means 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:

  • 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 exclusive licensee of the copyright;
  • through a copy control mechanism.

The arguments in favour of Stevens were that:

  • The use of Stevens's mod chip in order to circumvent the protection provided by (a) the access code on a CD-ROM on which a PlayStation game is stored and (b) the boot ROM device contained within the PlayStation console could not be said to be for the “purpose” of reproducing a computer game within the sense of s 31 of the Act. Any such reproduction will already have been made through the ordinary process of “burning” the CD-ROM. The mod chip is utilised for a different purpose, namely to access the reproduced computer program and thereafter to visually apprehend the result of the exercise of the functions of the program.
  • In choosing between a relatively broad and a relatively narrow construction of legislation, it is desirable to take into account its penal character. A person who makes or sells a circumvention device (s 132(5B)) is liable to imprisonment for not more than five years (s 132(6A)). An appreciation of the heavy hand that may be brought down by the criminal law suggests the need for caution in accepting any loose, albeit “practical”, construction of the Copyright Act.
  • The true construction of the definition of “technological protection measure” must be one which catches devices which prevent infringement. The Sony device does not prevent infringement. Nor do many of the devices falling within the definition advanced by Sony. The Sony device and devices like it prevent access only after any infringement has taken place.
  • It is important to avoid an overbroad construction which would extend the copyright monopoly rather than match it. One example is playing a program lawfully acquired in the United States in Australia. It was common ground in the courts below and in argument in the High Court that this act would not of itself have been an infringement.

The majority of the High Court agreed with these arguments and overturned the decision of the Federal Court on these issues.

Sony maintained that the chip that was replaced by the mod chip prevented users from reproducing a substantial part of either the games software or the cinematographic film embodied in an unauthorised copy of a game CD in the RAM of a game console and so acted to prevent or inhibit copyright infringement by preventing reproduction of the game in RAM. In their view, the chip was therefore a “technological protection measure”.

The Court rejected this argument because, amongst other things, at any one time, only a small part of the game code is downloaded and copied into RAM and the storage of that copy is only temporary until the console is turned off and changes as the game is played.

With respect, it is difficult to reconcile arguments 1, 2 and 4 above with the wording of reproduction in material form in the Copyright Act which provides that “material form”, in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced) view with the definition of reproduction. Whilst in an earlier decision of the Court Justice Gibbs, in the Apple decision, found that because code found in a ROM was not visible there was no infringement the whole purpose of the above definition of material form was to avoid these sorts of problems and for the law to move forward.

Further, no information was given as to whether or not the copyright in the software contained in the chip itself was infringed or whether or not the End User Licences with respect to software bought in the USA restricted the use of that software to use in the USA.

This case demonstrates the problems that can occur when drafting legislation governing an area that is subject to constant changes. The definitions used in the legislation must be broad enough to be able to be applied to technologies not yet in existence, but not so broad as to weaken the protection that the legislation is seeking to create.

For those seeking copyright protection for such devices (including access codes for software and games) they should, now:

  • seek further amendments to the Copyright Act to include RAM based reproduction;
  • seek relief that any mod chip ROM (or alteration thereto) constitutes an infringement of the copyright in games or alternatively the original ROM, or alternatively the source code to same or part thereof (as per the High Court in the Autodesk decision in which the copyright in a 128 bit locking sequence was found to have infringed another program);
  • use technological protection measures which apply before any infringement is made;
  • use technological protection measures solely for the purpose of preventing copyright infringement and not for region based or other restrictions which may be outside the rights of the copyright owner;
  • ensure that each copy of the game is licensed solely for use within the jurisdiction in which it was supplied; and
  • seek legal advice as to their specific circumstances.

Those seeking to do mods should also seek legal advice on their proposed actions.

This case may have interesting applications to the recent Sharman (Kaaza) litigation involving file sharing if no copyright infringement can be said to have occurred by temporary copying in RAM.


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