Stevens v Kabushiki Kaisha Sony Computer Entertainment and Others

(2005) 221 ALR 448
[2005] HCA 58

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(Judgment by: McHugh JJ)

Stevens v
Kabushiki Kaisha Sony Computer Entertainment and Others

Court:

Judges: Gleeson CJ

McHugh JJGummow J
Kirby JJ
Hayne JJ
Heydon JJ

Judgment date: 6 October 2005

Canberra

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Judgment by:
McHugh JJ

[102] The issue in this case is whether the protective device that is installed in Sony "PlayStation" consoles is a "technological protection measure" within the meaning of s 116A(1) of the Copyright Act 1968 Cth (the Act). If it is, then the "mod chips" that the appellant supplied and installed in the PlayStation consoles are "circumvention device[s]" as defined by s 10(1) of the Act. If he installed "circumvention devices", he contravened s 116A of the Act and is liable to Sony for damages or an account of profits and other remedies conferred on a copyright owner by s 116D of the Act.

Statement of the case

[103] Three Sony companies (Sony) sued Mr Eddy Stevens in the Federal Court of Australia, alleging that he had contravened s 116A of the Act by supplying and installing circumvention devices that were intended to facilitate the use of pirated copies of Sony's PlayStation computer games. In the proceedings, Sony asked the Federal Court for damages, for an injunction and for relief under the civil remedies provisions in s 116D as well as a declaration of contravention.

[104] The trial judge, Sackville J, rejected Sony's claim. His Honour held that Sony's protection device did not constitute a "technological protection measure" for three reasons:

(1)

the device, which merely discourages users from copying games, but does not affect the ability of users to copy games, was not "designed ... to prevent or inhibit" copyright infringement;

(2)

the device was not designed to prevent the reproduction of the computer game in a "material form", because the storage of the portion of the PlayStation game in the console's RAM during the playing of the game was not a form of storage from which the PlayStation game, or a substantial part of it, can be reproduced without modifying the console; and

(3)

the device was not designed to prevent the copying of the computer game as a "cinematograph film", because the portion of the PlayStation game that was stored in the console's RAM during the playing of the game was not a "substantial part" of the "aggregate of the visual images" that constitute a cinematograph film.

[105] The Full Court of the Federal Court allowed Sony's appeal against the first holding of Sackville J. The Full Court found that the Sony companies' method of "ensuring that access to the program is not available except by use of the boot ROM, or the access code embedded in the PlayStation games, or both in combination" ^[71] fell within the definition of "technological protection measure". The Full Court held that the measure was designed to "prevent or inhibit" the copying or selling of infringing copies of authorised CD-ROMs. However, a majority of the Full Court upheld the other two holdings of Sackville J. Because the Full Court found that the boot ROM and access code were a "technological protection measure", it declared:

On 8 April 2001, 28 September 2001 and 16 November 2001 [Mr Stevens] sold circumvention devices, as defined in [the Act], for use in association with "PlayStation" computer consoles and the CD-ROMs for "PlayStation" computer games, in contravention of s 116A of [the] Act.

[106] This court granted Mr Stevens special leave to appeal against the decision and orders of the Full Court. In addition to supporting the decision of the Full Court of the Federal Court on the first holding, Sony has filed a notice of contention challenging the two holdings of Sackville J that were upheld by a majority of the Full Court.

[107] In my opinion, Mr Stevens' appeal must be allowed and Sony's notice of contention dismissed. That is because Sackville J was correct in holding that the Sony protection device was not a "technological protection measure" for the purposes of the Act. It was not "designed ... to prevent or inhibit" copyright infringement within the meaning of s 10(1) of the Act. It was not designed to prevent the reproduction of the computer game in a "material form". It was not designed to prevent the copying of the computer game as a "cinematograph film".

The material facts

The PlayStation console

[108] The Sony PlayStation is an appliance for playing computer games. ^[72] It consists of a console, two game controllers and software that enables the playing of CD-ROMs. The computer games are stored on CD-ROMs. The data on the CD-ROM is transmitted, interpreted and eventually displayed on a television or computer monitor through the operation of the console. The console is composed of the following parts:

•

a read-only memory (ROM) based internal operating system;

•

a CD drive, in which a CD-ROM is inserted, and from which the "game code" of the game's software is downloaded into the random access memory (RAM);

•

RAM, which delivers data to the central processing unit (CPU). Unlike a CD-ROM, which can store up to 650 megabytes of data but has only one continuous track, the PlayStation RAM is limited to two megabytes, but it delivers data through 32 highways at one time. The storage of data in RAM is temporary, as it will be "flushed" when new instructions are transferred from the PlayStation game's code and when the power to the console is shut down. Sackville J accepted the evidence of Mr Nabarro, a witness who gave evidence for Sony, that the portion of the game code that is stored in the RAM could only be reproduced if hardware was developed to reverse the process;

•

the CPU, which feeds data from RAM to the custom graphics processing unit (GPU);

•

the GPU, which manipulates the data to create the images that appear on the television screen and then moves the data to the video RAM "so that the GPU is free to work on the next section", according to Mr Nabarro; and

•

the video RAM, which transmits the data to a digital terminal video converter, which changes digital electronic signals into analogue signals that may be interpreted and displayed by a television.

[109] The components of the console communicate through a main "bus" and a "sub-bus" while the CPU of the console and the game controllers communicate through a serial communication protocol.

Access codes

[110] The CD-ROMs that contain a computer game also contain an "access code", which is a string of encrypted sectors of data. Unlike the computer game, the access code cannot be accessed or reproduced by conventional CD-ROM copying devices (that is CD burners). After a CD-ROM is inserted in the console, and before the computer game may be played, a boot ROM chip in the console must read the string of encrypted data. If an infringing copy of a computer game is inserted into the console, the access code is not found on the CD-ROM and so the game's software does not load. Instead, the user is prompted to insert an authorised CD-ROM. If an authorised copy of a computer game is inserted into the console, the CD sub-bus controller prevents a user from then replacing the authorised copy with an infringing copy and using the access code of the authorised copy to verify an infringing copy.

[111] While PlayStations are sold in many parts of the world, the format of the consoles and the CD-ROMs on which games are played varies. The format depends on the television system standard that is operative in the market in which the consoles are manufactured for distribution. PlayStation consoles and games that are manufactured for distribution in Japan, South East Asia and North America are formatted in accord with the National Television Systems Committee (NTSC) standard of colour television systems. But the consoles and games distributed in Europe and Australia are formatted in accord with the Phase Alternating Line (PAL) standard. The Sony companies may distribute the same computer game to different parts of the world, but the access codes of the game's CD-ROMs vary as between countries and regions. The result is that the PlayStation game software that is stored on a CD-ROM that is purchased in Japan or the United States will not be loaded by a PlayStation console that was purchased in Australia unless the reading of the access code is circumvented.

Circumventing the boot ROM's reading of the access code

[112] A console that was purchased in Australia may nonetheless load software that is contained on a CD-ROM that was either purchased in a country with NTSC formatting or illegally copied from an authorised game if the console's programming is overridden with a mod chip. The trial judge accepted the evidence of Mr Nabarro as to the functionality of a mod chip. It is a programmed computer chip. It instructs the console that the territorial codes are acceptable and permits the software's loading. It does so even though the CD-ROM that had been inserted in the CD drive does not carry the access code - which the internal operating system of consoles distributed in Australia is programmed to read.

The activities of Mr Stevens

[113] Sackville J found that Mr Stevens supplied and installed mod chips in PlayStation consoles on three occasions after the Copyright Amendment (Digital Agenda) Act 2000 (Cth) (the Digital Agenda Act) came into force. On two occasions, he received $45 for his services and $70 on the third occasion. His Honour also made two findings concerning Mr Stevens' state of mind. First, Mr Stevens knew that the mod chips were installed for the purpose of enabling the console to play copies of the PlayStation games that lacked the access code that Australian consoles recognise. Second, he knew that many copies played "would be copies made without the authority or licence of [Sony]".

The Copyright Act 1968

[114] If the provisions of s 116A(1) apply to these acts of installation by Mr Stevens, he is liable to pay damages or an account of profits in accordance with s 116D(1). The relevant parts of s 116A declare:

(1)

Subject to subsections (2), (3) and (4), this section applies if:

(a)

a work or other subject-matter is protected by a technological protection measure; and

(b)

a person does any of the following acts without the permission of the owner or exclusive licensee of the copyright in the work or other subject-matter:...

(ii)

sells, lets for hire, or by way of trade offers or exposes for sale or hire or otherwise promotes, advertises or markets, such a circumvention device;

(iii)

distributes such a circumvention device for the purpose of trade, or for any other purpose that will affect prejudicially the owner of the copyright;

...

(vii)

provides, or by way of trade promotes, advertises or markets, a circumvention service capable of circumventing, or facilitating the circumvention of, the technological protection measure; and

(c)

the person knew, or ought reasonably to have known, that the device or service would be used to circumvent, or facilitate the circumvention of, the technological protection measure.

(3)

... This section does not apply in relation to the supply of a circumvention device or a circumvention service to a person for use for a permitted purpose if:

(a)

the person is a qualified person; and

(b)

the person gives the supplier before, or at the time of, the supply a declaration signed by the person ...

...

(5)

If this section applies, the owner or exclusive licensee of the copyright may bring an action against the person....(7) For the purposes of this section, a circumvention device or a circumvention service is taken to be used for a permitted purpose only if:

(a)

the device or service is used for the purpose of doing an act comprised in the copyright in a work or other subject-matter; and

(b)

the doing of the act is not an infringement of the copyright in the work or other subject-matter under section 47D, 47E, 47F, 48A, 49, 50, 51A or 183 or Part VB.

(8)

In this section:..."supply" means:

(a)

in relation to a circumvention device - sell the device, let it for hire, distribute it or make it available online; and

(b)

in relation to a circumvention service - provide the service.

(9)

The defendant bears the burden of establishing the matters referred to in subsections (3), (4) and (4A).

[115] Section 10(1) of the Act defines the following terms:

"circumvention device" means 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 [sic] technological protection measure...."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:

(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 exclusive licensee of the copyright;

(b)

through a copy control mechanism.

[116] As a result of these provisions, Mr Stevens is liable for his supply and installation of mod chips if the boot ROM chip, the access code or a combination of the two falls within the definition of "technological protection measure".

The decision of Sackville J

The construction argument

[117] Sackville J accepted the undisputed proposition of Sony that a PlayStation game which is stored on a CD-ROM falls within the definition of "computer program", and so, within the definition of "literary work", which are both defined in s 10(1) of the Act. Sackville J held, however, that the boot ROM and/or the access code were not "designed ... to prevent or inhibit the infringement of copyright" in the computer game. His Honour held that they were intended, inter alia, only to "deter or otherwise discourage copyright infringement by the unlawful making, importation and distribution of copies of PlayStation games". ^[73] Deterrence or discouragement was insufficient to "inhibit the infringement of copyright" because "[t]he definition ... contemplates that but for the operation of the device or product, there would be no technological or perhaps mechanical barrier to a person gaining access to the copyright work, or making copies of the work after access has been gained, thereby putting himself or herself in a position to infringe copyright in the work". ^[74] His Honour said that the definition was not: ^[75]

[115] ... concerned with devices or products that do not, by their operations, prevent or curtail specific acts infringing or facilitating the infringement of copyright in a work, but merely have a general deterrent or discouraging effect on those who might be contemplating infringing copyright in a class of works, for example by making unlawful copies of a CD-ROM.

Reproduction in RAM

[118] Sackville J found that Sony's device was not "designed ... to prevent or inhibit" the reproduction of the computer game in material form by preventing a user from downloading a portion of the game's code into the RAM. This was because the game code cannot be reproduced from its temporary storage in RAM, and thus is not reproduced in a "material form".

Copying of a cinematograph film

[119] Sackville J also rejected Sony's argument that the device was designed to prevent the copying of a "substantial part" of a "cinematograph film" embodied in the computer game, which is an infringement of copyright pursuant to ss 86(a) and 14(1) of the Act. His Honour held that "the evidence to support [this argument] was very sketchy", ^[76] and he assumed "that the reasoning in Galaxy Electronics v Sega Enterprises applies to the PlayStation games". ^[77] The argument was rejected on the ground that the data that is reproduced in the RAM upon the downloading of the game code is not a "substantial part" of the cinematograph film and so s 86(a) of the Act, when read with s 14(1) of the Act, was not infringed.

The decision of the Full Court

The construction argument

[120] The Full Court held that, for the purpose of the definition of "technological protection measure", it is of no relevance that "the inhibition is indirect and operates prior to the hypothetical attempt at access and the hypothetical operation of the circumvention device". ^[78] Lindgren J, with whose judgment on this point Finkelstein J agreed, held that: ^[79]

[138] ... the extrinsic materials ... show an intention that the opening words coupled with para (a) of the definition of "technological protection measure" were intended to embrace that inhibition, in the sense of deterrence or discouragement of infringement, which results from a denial of access to, and therefore prevention of use of, a program copied in infringement of copyright.

[121] French J agreed with the conclusion of Lindgren and Finkelstein JJ on this point but French J thought that "the proper construction of s 116A and the definition of "technological protection measure" flows from a consideration of the ordinary and grammatical meaning of its language." ^[80]

Reproduction in RAM

[122] A majority of the Full Court (Finkelstein J dissenting) affirmed the decision of Sackville J that the downloading of the game code into the RAM did not constitute a reproduction of the code in "material form". Lindgren J noted that the code could be reproduced from the RAM if hardware was engineered to reverse the process. But his Honour concluded that it was "an unrealistic and strained construction to treat the words 'can be reproduced' at the end of the definition of 'material form'" to cover the present case. He said that they cannot be construed "so widely as to encompass 'could be reproduced if an additional device, not supplied with the console and not yet available, were to be manufactured and attached to it'". ^[81]

Copying of a cinematograph film

[123] The Full Court majority, like Sackville J, noted the insufficiency of evidence to support this ground. Lindgren J said that "the evidence addressed only the question whether the images were embodied in a larger article or thing of which the RAM formed only one element". ^[82] Accordingly, he could not conclude that the computer game's "images are capable, when the RAM ... is used in the console, of being reproduced from the RAM". ^[83]

Construing the legislation

[124] In determining issues of statutory construction, the text of the relevant statutory provision must be evaluated not only by reference to its literal meaning but also by reference to the purpose and context of the provision. And context is not limited to the text of the rest of the statute. For purposes of statutory construction, context includes the state of the law when the statute was enacted, its known or supposed defects at that time and the history of the relevant branch of the law, including the legislative history of the statute itself. It also includes in appropriate cases "extrinsic materials" such as reports of statutory bodies or commissions and parliamentary speeches - indeed any material that may throw light on the meaning that the enacting legislature intended to give to the provision. This is the process required by the modern approach of the common law to statutory construction. ^[84] In many jurisdictions, the common law principles have been incorporated, extended or modified by statute. Section 15AA of the Acts Interpretation Act 1901 (Cth) requires a court construing federal legislation to have regard to its purpose. Section 15AB of that Act authorises the use of various forms of extrinsic material to determine the meaning of that legislation. Section 15AB(3), however, has probably modified the common law position. It requires the court, when considering extrinsic material or its weight, to take into account "the desirability of persons being able to rely on the ordinary meaning conveyed by the text of the provision" and "the need to avoid prolonging legal or other proceedings without compensating advantage".

[125] But sometimes - opponents of the purposive construction would say most of the time - the purpose of the statute in general, and the purpose of its individual sections in particular, are elusive. Similarly, sometimes context gives little - even no - guidance. In the present case, I think that it is impossible to discern the purpose of the relevant provisions, except by reference to the text. And I think that the historical background, the parliamentary history of the legislation and the extrinsic materials - the context - lead to no conclusion other than that the Federal Parliament resolved an important conflict between copyright owners and copyright users by an autochthonous solution.

[126] Much modern legislation regulating an industry reflects a compromise reached between, or forced upon, powerful and competing groups in the industry whose interests are likely to be enhanced or impaired by the legislation. In such cases, what emerges from the legislative process is frequently not a law motivated solely by the public interest. It reflects wholly or partly a compromise that is the product of intensive lobbying, directly or indirectly, of ministers and parliamentarians by groups in the industry seeking to achieve the maximum protection or advancement of their respective interests. The only purpose of the legislation or its particular provisions is to give effect to the compromise. To attempt to construe the meaning of particular provisions of such legislation not solely by reference to its text but by reference to some supposed purpose of the legislation invites error.

[127] There is a good deal of evidence that supports the view that the legislative provisions with which this litigation is concerned are the product of a compromise agreed to, or forced upon, interest groups in the industry affected by the legislation. As the judgments of Sackville and Lindgren JJ show, for many years Australian and overseas copyright owners and copyright users had been active in seeking to expand or limit the scope of legislation permitting copyright owners to use a "technological protection measure". A parliamentary committee set up to investigate that issue received about 100 submissions. ^[85] The parliament did not adopt the committee's recommendation concerning the form that the legislation might take. And the extrinsic materials to which we were referred did not disclose why the legislation took the precise form that it did. Moreover, the legislation that parliament enacted did not give either the copyright owners or copyright users exactly what they wanted. As one writer has said: ^[86]

The definition of "technological protection measure" is a compromise, which was neither as restrictive as some copyright users had hoped, nor as broad as copyright owners sought - and parts of the legislative history are opaque.

[128] Furthermore, there is nothing in the objects section of the Digital Agenda Act nor in the explanatory memoranda that shows a legislative purpose that assists in determining the meaning of the expression "technological protection measure". The legislative provisions that are the subject of this litigation were inserted into the Act by the Digital Agenda Act. Section 3 of that Act sets out its objects. But the objects, as so set out, concentrate on the internet and online access to copyright material. They do not show what was the object of permitting and protecting the use of technological protection measures.

[129] Against this background, the best - and certainly the preferable - guide to the meaning of the relevant provisions is the text of those provisions.

The first issue - the construction of "technological protection measure"

[130] The resolution of the first issue turns on the meaning of "inhibit" and, in particular, the way in which its meaning differs from the meaning of "prevent". It is not controversial that a device is "designed ... to prevent ... the infringement of copyright in a work" when the device utilises one of the two means identified by the s 10(1) definition in order to cause a user of the work to be unable to do an act of infringement. An example ^[87] is the activation code on Microsoft's Windows XP program, which "ensur[es] that access to the work ... is available solely by use of an access code", ^[88] and thereby causes (and is designed to cause) a user who does not have the access code to be unable to copy the program onto his or her hard drive.

[131] However, as the facts of the present case demonstrate, the unavailability to the user of an access code or the inability to copy the work does not always prevent the doing of an act that infringes copyright. Sony's device ensures that the PlayStation console cannot load the game software unless the software is accompanied by an access code that is read by the boot ROM. In this way, the device makes it impossible for a user to access, that is, to apprehend the contents of, the work, ^[89] by making it impossible to load the reproduced software onto the PlayStation console. But the device does not render the user unable to "reproduce the work in a material form", sell or import the reproduction.

[132] To the extent that protective devices like the PlayStation boot ROM and access code are not designed to make it impossible for users to do acts that infringe rights comprised in the copyright, none of the devices are "designed ... to prevent ... the infringement of copyright". Instead, the extent to which these protective devices are protected by s 116A of the Act depends on the scope of the definition of "inhibit":

[D]esigned, in the ordinary course of its operation, to ... inhibit the infringement of copyright

[133] Mr Stevens contends that Sackville J correctly defined the term "inhibit" in the definition of "technological protection measure". That interpretation classifies a device as "designed ... to prevent or inhibit" copyright infringement if "but for the operation of the device or product, there would be no technological or perhaps mechanical barrier to a person ... putting himself or herself in a position to infringe copyright in the work". ^[90] In contrast, Sony contends that "inhibit" ought to be given the meaning ascribed to it by the Full Court of the Federal Court. On that meaning, a device is "designed ... to ... inhibit the infringement of copyright" if the device is designed to "deter" or "discourage" the infringement of copyright. On the Full Court's reading, a technological protection measure is a device that, in the ordinary course of its operation, is designed to make copyright infringement futile. That is, a device "inhibits" the infringement of copyright if the prospect of restricted access to the work or a controlled capacity to copy the work dissolves every reason to do an act that infringes copyright in the work. If the boot ROM fails to locate an access code, the copy of the work (that is the game software) is unable to be loaded onto the console, and so the game is "unplayable". Sony points out that an "unplayable" copy of a PlayStation game has no market value. Consequently, the operation of the boot ROM and access code causes PlayStation users to have no reason to do any act of copyright infringement - for example, copying, selling or importing an infringing copy of a game - that a user might otherwise have reason to do.

[134] The difference between the interpretations of "inhibit" in the judgments of Sackville J and the Full Court of the Federal Court inheres in the disparate descriptive tasks that each interpretation requires the term "designed" to perform. Sackville J used the term "designed" to describe the action that the device was intended to execute in the course of its operation. To identify this action, it was necessary to ask: "what is the device meant to do?" His Honour answered this question in terms of the device's construction of a "technological or perhaps mechanical barrier" that operated "physically" to prevent or inhibit acts of dealing with the work. ^[91]

[135] The Full Court of the Federal Court saw the content of the term "designed" differently. It thought that it refers to the effect that the device's action is intended to cause. This effect is discerned from the question: "why is the device meant to do that?" On this view, as Lindgren J noted, this "purpose" may be "indirect[ly]" achieved by the device's operation and, consequently, fall within the s 10(1) definition. ^[92]

[136] However, the Full Court's interpretation of "inhibit" and description of the device's "design" gives rise to three problems. First, the interpretation is not consistent with the language of the s 10(1) definition of "technological protection measure". That the device must be "designed, in the ordinary course of its operation, to ... inhibit" indicates that the definition is concerned with the actions that the device is intended to execute in the course of its operation. The chain of causation, by which the device utilises one of the two processes specified in paras (a) and (b) of the definition to "inhibit" acts of copyright infringement, must be fixed by the completion of the device's operation. The effects that the device's action, in enacting one of the two processes, is intended to have on a user subsequent to the completion of the course of its operation are external to this chain of causation, and thus not attributable to the device.

[137] Second, the grammatical structure of the phrase "designed ... to prevent or inhibit" - where the term "designed" operates in the same way in respect of both "prevent" and "inhibit" - indicates that the term "designed" must perform the same descriptive task when attached to "inhibit" as it does when attached to "prevent". A device is "designed ... to prevent" copyright infringement when it is the operation of the device (which must incorporate one of the two processes specified in the definition) that makes it impossible to do an act of copyright infringement. In this context, the term "designed" is used to describe the device's function, and not the purpose that the execution of the function was intended to fulfil. Thus, for grammatical consistency, the phrase "designed ... to ... inhibit" must also refer to the device's intended operation. It cannot extend to the intended effect of the device's operation (that is the user's understanding and contemplation of the device's operation that causes there to be no reason to do an act of copyright infringement).

[138] Third, Sony's interpretation is not consistent with the language of the s 10(1) definition of "circumvention device". A "circumvention device" is defined by reference to the device's "purpose or use". If the legislature intended the s 10(1) definition of "technological protection measure" to extend to a device whose ultimate purpose, even if not its immediate effect, is to "inhibit" copyright infringement, then the plainer language of the "circumvention device" definition would have been used, so as to include devices having a "purpose or use to prevent or inhibit" copyright infringement.

[139] In my opinion, for the purpose of s 10(1), a device is a device that is "designed ... to ... inhibit" copyright if the device functions, "in the ordinary course of its operation", so as to make the doing of an act of copyright infringement - not impossible - but more difficult than it would be if the device did not operate.

[140] This interpretation does not render the term "inhibit" redundant because it applies to at least two categories of devices that do not have an absolute preventative effect on copyright infringement. Thus, there are protective devices that regulate a user's access, not to the work itself, but to the appliance through which works are accessed. For example, "device binding" is a measure through which the decryption key of a work is linked to the "unique identifier" of the computer of a person who is licensed to download and copy a work. ^[93] The work may only be downloaded and saved (and thus, copied) onto a computer with this identifier. The fact that access to the work is available solely by use of a decryption key that is linked to the computer's identifier does not make it impossible for another user of the same computer - who has not been licensed to reproduce the material - to download and save the work. Nonetheless, in disenabling the access of all other computers to the work, "device binding" mechanisms function to make it more difficult for users - who are not licensed to download the work - to have access to an appliance that will enable the copying and infringement of copyright in the work. In this way, "device binding" inhibits, but does not prevent, copyright infringement.

[141] Other devices are designed to make it impossible to do an act of copyright infringement by a particular method or methods, but are ineffective to prevent the doing of the same infringing act by other, more complex, methods. Online access controls are an example. They are measures that decrypt a work that is delivered to the computer through the internet - "streamed" - when it is delivered to the computer. The work is then immediately re-encrypted, so as to enable only a small portion of the work to be decrypted at any given time. The result is that the work cannot be digitally copied onto the computer to which it is being delivered. ^[94] However, the re-encryption of the work, after it has been delivered and played, does not restrain the user from reproducing the work on other recording devices while the work is being played. In making it impossible to do an act of copyright infringement (that is reproduction) using one method, but not making it impossible to do the same act of copyright infringement using a more tedious method, online access controls make it more difficult to reproduce the work.

[142] Acts of copyright infringement include not only acts that are comprised in the copyright but also acts of dealing with infringing copies of copyrighted works (for example by selling or importing). As French J observed, ^[95] it may be that the function of a protective device will rarely make it impossible, or even more difficult, to engage in the latter category of acts. But this is not an illogical result that ought to compel an alternate reading of the statutory definition. The parliament did not contemplate that technological protection measures would "prevent or inhibit" acts of dealing with infringing copies. This is evident from the limited scope of s 116A(7) of the Act. Section 116A(7) defines "a permitted purpose", for which a circumvention device may be used in accordance with s 116A(3), as "the purpose of doing an act comprised in the copyright in a work". The "permitted purposes" for using a circumvention device do not extend to acts of dealing - however fairly - with copies of works. Thus, a circumvention device may be needed to circumvent a technological protection measure in order to sell, trade or import the protected work for one of the purposes listed in Pt III, Div 3 of the Act. On this hypothesis, the fair dealer who installs the device does not infringe copyright by selling, trading or importing the work, but nonetheless would contravene s 116A of the Act by making a circumvention device for a purpose that is not permitted. This would be an anomaly. It confirms the view that the s 10(1) definition of "technological protection measure" ought to be read according to its ordinary meaning and not artificially stretched to include within its scope acts of copyright infringement that are not comprised in the copyright.

[143] On the interpretation of the s 10(1) definition of "technological protection measure" that I favour, Sony's device of the boot ROM chip and the access code or either of them does not constitute a "technological protection measure" by virtue of the device's deterrent effect on the copying of computer games. That is because the console's inability to load the software from an infringing copy does not make it impossible or more physically difficult to make an infringing copy.

The second issue - reproduction in RAM

[144] If the process of downloading the game code into the RAM of the PlayStation console involves a reproduction of the game code "in a material form", the downloading is an act of copyright infringement against which the protective device is designed to protect. Section 10(1) defines "material form" to include "any form (whether visible or not) of storage from which the work or adaptation, or a substantial part of the work or adaptation, can be reproduced".

[145] In cross-examination, Mr Nabarro conceded that the game code could not be reproduced "without developing particular hardware to extract [the code] back from RAM". Mr Stevens contends that the inability of the console to reproduce the game code that was stored in RAM without additional hardware means that the game code was not reproduced in a "material form". He relied on Emmett J's decision in Australian Video Retailers Association v Warner Home Video Pty Ltd where he ruled, ^[96] in relation to the RAM of a DVD player, that:

[103] ... If a DVD player has been modified, such that it is possible to study or use the RAM for the purpose of reproducing its contents, there could be a reproduction of the computer program in a material form within the meaning of s 31(1)(a)(i) of the Act. However, in the ordinary course, temporary storage of a substantial part of the computer program in the RAM of a DVD player will not involve a reproduction of the computer program in a material form.

[146] In response, Sony contended that the dissenting judgment of Finkelstein J in the Full Court correctly applied the law. His Honour ruled that the storage of the game code in RAM was a form of storage from which that part of the computer game "can be reproduced" because, "with appropriate equipment", the code "may be able to be reproduced". ^[97] On this view, it is not necessary that "the ability to reproduce the work from storage must exist at the time the work is placed into storage". ^[98]

[147] Finkelstein J interpreted the word "can" to express a possibility. The Oxford English Dictionary defines "can", when used to express a possibility or a capacity, as "[t]o be permitted or enabled by the conditions of the case". This definition shows that, while an action is possible even if the action has not yet been performed, an action is not possible unless, and until, the conditions on which the action depends have occurred. It is not enough to point to the possibility of establishing those conditions.

[148] As it is impossible to reproduce the storage of the game code from the RAM of the PlayStation console unless the console is modified with additional, reverse-engineered hardware, it is not possible for the code to be reproduced until that modification occurs. Thus, the definition of "material form" is not satisfied until the conditions that enable the reproduction of the work from storage in RAM prevail.

[149] When Mr Stevens supplied and installed the mod chips in Sony's PlayStation consoles, the PlayStations had not been modified with the requisite hardware. Thus, when Mr Stevens is alleged to have contravened s 116A of the Act, the device that the mod chips circumvented was not "designed ... to prevent" the act of reproduction of the work in "material form". Consequently, it was not a "technological protection measure" to which s 116A applied.

The third issue - copying of a cinematograph film

[150] Sony's third submission was that the downloading of the game code into the console's RAM constituted an act of copyright infringement, an infringement against which the protective device was designed to protect. That was because the downloading involved a copying of a "substantial part" of the game's "cinematograph film" and was thus an infringement within the meaning of ss 86(a) and 14(1) of the Act.

[151] Section 10(1) defines "cinematograph film" as:

the aggregate of the visual images embodied in an article or thing so as to be capable by the use of that article or thing:

(a)

of being shown as a moving picture; or

(b)

of being embodied in another article or thing by the use of which it can be so shown;

and includes the aggregate of the sounds embodied in a sound-track associated with such visual images.

[152] Section 10(1) also defines "copy" as meaning "in relation to a cinematograph film":

... any article or thing in which the visual images or sounds comprising the film are embodied.

[153] Section 24 clarifies the meaning of "embodied" by declaring that:

... sounds or visual images shall be taken to have been embodied in an article or thing if the article or thing has been so treated in relation to those sounds or visual images that those sounds or visual images are capable, with or without the aid of some other device, of being reproduced from the article or thing.

[154] Even assuming that a computer game's code constitutes "visual images", the evidence did not establish that the game code that is downloaded into the PlayStation console's RAM satisfies the definition of a "cinematograph film".

[155] It is true that Mr Nabarro's evidence established that the game code is "embodied", within the meaning of s 24, in the "article[s] or thing[s]" of the RAM, CPU, GPU, video RAM and digital terminal video converter. That is because the code is downloaded or transmitted to each of these entities in a way that makes the code capable, "with ... the aid of" all the other articles and things, of reproducing the code on the television screen. But his evidence does not establish that the "aggregate of the visual images", that is the aggregate of computer code, that is embodied in any of the console's "article[s] or thing[s]" at any point of time is, within the meaning of s 10(1), capable of:

(a)

"being shown as a moving picture"; or

(b)

"being embodied in another article or thing by the use of which it can be so shown".

(a)"being shown as a moving picture"

[156] The code that is embodied in the RAM is a section of the game code that is needed to play a chosen section of any game. But not all game code that is loaded into the RAM is ultimately reproduced on the television screen. Mr Nabarro explained that "RAM basically acts like a reserve holding area and then as specific parts of that game code are required they're called off by the central processor, the CPU and fed into the graphics processing unit".

[157] The RAM stores an unsorted collection of game code. That code is not capable "of being shown as a moving picture" because it is not capable of arranging itself into an order in which the picture would move. It is only when the code is "called off by the central processor, the CPU and fed into the graphics processing unit" that the order of its reproduction is determined.

[158] Section 10(1), unlike s 24, does not permit an "article or thing" to harness "the aid of some other device" to assist the thing in the achievement of its purpose. Comparing the wording of ss 10(1) and 24 is instructive. It shows that the visual images that are embodied in an "article or thing" must be "capable, with or without the aid of some other device , of being reproduced". But it also shows that they must be "capable by the use of that article or thing ... of being shown as a moving picture" without the aid of any other device. Thus, it is irrelevant to para (a) of the s 10(1) definition of "cinematograph film" that, with the aid of the CPU, the game code that is embodied in the RAM could be selected for reproduction as a moving picture.

(b)"being embodied in another article or thing by the use of which it can be so shown"

[159] Nor is the game code that is embodied in the RAM capable "of being embodied in another article or thing by the use of which [the game code] can be shown". That is because there is insufficient evidence to establish that the code that is selected by the CPU for transmission to the GPU (and onwards to the video RAM and digital terminal video converter) constitutes an "aggregate of the visual images".

[160] Mr Nabarro's evidence merely shows that "specific parts of that game code" are transmitted to, and embodied in, the GPU. It does not show that the GPU stores the "specific parts" so as to embody an "aggregate" of "specific parts" of computer code. Instead, the GPU "moves" the code on "into the video RAM so that the GPU is free to work on the next section because of course this is a continuously changing environment." Thus, even though the GPU may reproduce a series of game code in the video RAM, and even though the net result of all reproductions is to show a moving picture, the GPU does not embody, at any given time, an "aggregate of the visual images".

[161] Accordingly, at no point in the process through which the game code is downloaded into the RAM and eventually transmitted to the television is a "cinematograph film" copied into any of the PlayStation console's articles or things.

Order

[162] The appeal must be allowed.