Legitimate purpose of circumvention devices a factor in whether technological protection measures receive protection, says EU advisor

Out-Law News | 23 Sep 2013 | 2:25 pm | 3 min. read

The proportionality of technological protection measures (TPMs), as well as the extent to which devices capable of circumventing them can be used for "legitimate purposes" should be assessed before legal protections under EU copyright laws can be said to apply to individual TPMs, a legal advisor has said.

In a non-binding opinion prepared for the Court of Justice of the European Union (CJEU), Advocate General Eleanor Sharpston said that TPMs can legitimately be installed on both software owned by rights holders as well as the hardware on which the software is to be played.

However, she explained that a number of factors should be considered in relation to TPMs and devices capable of circumventing them before legal protections can be said to apply to the TPMs.

Intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said that the case could prove to be "very important" for rights holders if the CJEU backs the views of the Advocate General.

Sharpston was advising the CJEU in a case referred to the EU's highest court from Italy. In that case, Nintendo has sued PC Box, a company which sells mod chip and game copying devices that are capable of circumventing TPMs installed by Nintendo on its consoles and computer games in order to enable non-Nintendo manufactured or licensed games to be played on Nintendo consoles. The court in Italy has been assessing to what extent the TPMs deployed by Nintendo are lawful.

Nintendo has claimed that the TPM it has deployed are lawful and has claimed that PC Box's devices are mainly used for the purpose of circumventing those measures.

However, PC Box has said it sells software created by independent producers that work on Nintendo consoles in conjunction with the devices it sells. It claimed that Nintendo's TPMs are unlawful because the real purpose for which they were installed is to "prevent the use of independent software unconnected with the illegal video game copies sector" and "to compartmentalise markets by rendering games purchased in one geographical zone incompatible with consoles purchased in another", according to the published opinion.

Copyright laws set out in the EU's Information Society Directive provide legal protection to rights holders to install TPMs to restrict unauthorised acts in relation to their copyrighted works. EU member states are obliged to ensure that they take "adequate legal protection against the circumvention of any effective technological measures" carried out by people who know, or have reasonable grounds to know, that they are pursuing that circumvention objective.

Member states need to adequately protect against the manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision of services which: are promoted, advertised or marketed for the purpose of circumvention of any TPMs, or have only a limited commercially significant purpose or use other than to circumvent effective TPMs, or are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of effective TPMs.

However, the Directive also explains that technological protection measures must not prevent the normal operation or technological development of electronic equipment, should be proportionate and should not prohibit devices or activities which have a commercially significant purpose or use other than to circumvent the technical protection. 

Separately, under the EU's Computer Programs Directive further provisions give computer program owners the right to pursue those that knowingly sell infringing computer programs or any means that's sole purpose is to facilitate the unauthorised removal or circumvention of a technical device applied to protect a computer program.

Advocate General Sharpston said that when assessing whether TPMs qualify for legal protection under the Information Society Directive, national courts have to factor in the proportionality of the measures deployed. Whether the protections should apply in relation to specific circumvention devices in the market may also depend on the extent to which those devices can serve an alternative and "legitimate purpose", she added.

"When determining whether [TPMs] qualify for protection ... where they have the effect of preventing or restricting not only acts which require the rightholder’s authorisation pursuant to that directive but also acts which do not require such authorisation, a national court must verify whether the application of the measures complies with the principle of proportionality and, in particular, must consider whether, in the current state of technology, the former effect could be achieved without producing the latter effect or while producing it to a lesser extent," Sharpston said.

"When determining whether protection must be provided against any supply of devices, products, components or services ... it is not necessary to consider the particular intended use attributed by the rightholder to a device designed to allow access to protected works. By contrast, the extent to which the devices, products, components or services against which protection is sought are or can be used for legitimate purposes other than allowing acts which require the rightholder’s authorisation is a relevant consideration," she said.

Iain Connor of Pinsent Masons said: "The stumbling block in previous cases has always been that 'some lawful use' could provide the manufacturers of such devices with a defence. This case has pierced that veil of legitimacy and shone a bright light on the fact that some devices are often solely designed to circumvent copyright protection measures."