Higgs v R [2008] EWCA Crim 1324

[2008] EWCA Crim 1324Case No 200800446 D4SWB
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CRIMINAL DIVISION)
Venue ON APPEAL FROM BRISTOL CROWN COURT
Her Honour Judge Hagen
T20070068
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate 24/06/2008
Before
LORD JUSTICE JACOBLORD JUSTICE HUGHESMR JUSTICE ANDREW SMITH
Between
Neil Stanley HiggsAppellantThe QueenRespondent
Adam Vaitilingam (instructed by Messrs Bobbetts Mackan) for AppellantIain Macdonald (instructed by Bristol City Council Legal Services) for CrownHearing Hearing date: 11 June 2008
Judgment
[1]On 19th October 2007 Neil Stanley Higgs was convicted in the Bristol Crown Court of 26 offences contrary to s.296ZB of the Copyright, Designs and Patents Act 1988 (“the Act”). He appealed against his conviction with the leave of the trial judge, HHJ Hagen. Following the oral hearing we informed the parties that the appeal would be allowed. These are our reasons for that decision.[2]Mr Higgs ran a business called “Mr Modchips” selling what are known as “modchips”, fitting modchips to customers’ computer games consoles, and selling games consoles to which he had already fitted modchips.[3]There are a number of manufacturers of computer games consoles. Sony’s is called a Playstation, Microsoft’s is an X-Box and Nintendo’s is a Gamecube. The computer games themselves are supplied separately on CD-ROMs. The user places this in the machine and the game can be played.[4]The games consoles contain embedded codes and normally will only allow a game to be played if the CD-ROM contains a corresponding code. The codes on the CD-ROM are not copiable, at least for practical purposes. A principal effect of these measures is to prevent the playing of “pirate” games, that is to say games which have been copied without the permission of the owner or owners of any copyright material contained in the games, including copyright in images, sounds and so on.[5]Fitting a console with a modchip overcomes these measures. The machine will then allow CD-ROMs which do not have the appropriate code to be played.[6]Section 296ZB, headed “Devices and services designed to circumvent technological measures” reads so far as is material as follows:(1) A person commits an offence if he – (a) manufactures for sale or hire, or (b) imports otherwise than for his private and domestic use, or (c) in the course of a business – (i) sells or lets for hire, or (ii) offers or exposes for sale or hire, or (iii) advertises for sale or hire, or (iv) possesses, or (v) distributes, or (d) distributes otherwise than in the course of a business to such an extent as to affect prejudicially the copyright owner, any device, product or component which is primarily designed, produced, or adapted for the purpose of enabling or facilitating the circumvention of effective technological measures.(2) A person commits an offence if he provides, promotes, advertises or markets – (a) in the course of a business, or (b) otherwise than in the course of a business to such an extent as to affect prejudicially the copyright owner, a service the purpose of which is to enable or facilitate the circumvention of effective technological measures.[7]“Effective technological measures” (“ETM”) is defined by s.296ZF which so far as relevant provides:(1) In sections 296ZA to 296ZE, "technological measures" are any technology, device or component which is designed, in the normal course of its operation, to protect a copyright work other than a computer program.(2) Such measures are "effective" if the use of the work is controlled by the copyright owner through – (a) an access control or protection process such as encryption, scrambling or other transformation of the work, or (b) a copy control mechanism, which achieves the intended protection.(3) In this section, the reference to – (a) protection of a work is to the prevention or restriction of acts that are not authorised by the copyright owner of that work and are restricted by copyright; and (b) use of a work does not extend to any use of the work that is outside the scope of the acts restricted by copyright.[8]The prosecution contended that Mr Higgs was providing devices which enabled the circumvention of ETMs. But it is very important to understand the factual basis of the contention. It was not that the use of a modified console to play a game from an infringing CD-ROM itself involved any infringement of copyright. No attempt was made to prove that when such a CD-ROM is placed in a console, the console reads into its memory (particularly its random access memory, its “RAM”) the program and copyright material included with it such as images and sound.[9]If such had been contended and proved (as it would seem very probable it could have been), it is difficult to see what defence there might have been. After all s.17 of the Act provides:(1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies shall be construed as follows.(2) Copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form. This includes storing the work in any medium by electronic means.(3) ….(4) Copying in relation to a film or broadcast includes making a photograph of the whole or any substantial part of any image forming part of the film or broadcast.(5) …(6) Copying in relation to any description of work includes the making of copies which are transient or are incidental to some other use of the work. It follows that the making of transient copies of copyright material into a RAM is a restricted act. In this context taking even a single frame of a cinematograph film is also probably an infringement (see Spelling Goldberg v BPC Publishing [1981] RPC 225). Putting it another way, the playing of a pirate game on a console would itself be an infringement. And even a narrow interpretation of ETM would seemingly catch that. Mr Vaitilingam, Counsel for Mr Higgs, whilst not positively so accepting, acknowledged that he did not see how it could be otherwise.[10]So much was indeed held to be so in the civil case of Sony v Ball [2004] EWHC 1738, [2005] FSR 9. Laddie J held, on an application for summary judgment, on facts near identical to those in this case, that there was infringement of the civil provisions corresponding to those in question here. The only factual difference is that, unlike this case, before Laddie J it was asserted that transient copying into the console took place – and the defendant so admitted.[11]But the case as advanced against Mr Higgs was not and is not put on that basis. The case before the jury was not that just playing a pirate CD-ROM involved any infringement. It is true, as Mr Iain MacDonald for the Crown indicated, that there was some evidence given from which it might be inferred that material was copied into the console, but the prosecution did not put its case to the jury on that basis. Besides, the suggested inference from the evidence is not itself clearly inevitable. Mr MacDonald wisely and fairly did not seek to uphold the convictions on that basis.[12]His point before us, and the point run at trial, was essentially this: that by selling modchips and modified consoles, Mr Higgs was in effect encouraging and exploiting a market for pirate games. No one would make or sell them unless they could be played. Mr Higgs was enabling that, so creating an incentive for the pirate market.[13]That, Mr MacDonald submitted, was enough to satisfy the definition of an ETM. The measures concerned must be “designed .. to protect a copyright work” (s.296ZF (1)). “Protection of a copyright” work means the prevention or restriction of acts “that are not authorised by the copyright owner of that mark and are restricted by copyright” (in short infringement). So the measures concerned will have the practical effect of preventing or restricting infringement. That, he submitted, is enough to fall within the definition.[14]If he were right, then the Judge was correct to reject the appellant’s submission at the end of the prosecution case that there was no case to answer and the convictions should stand. But we do not think that is the correct construction of the provision. We say that essentially for the same reasons as the High Court of Australia gave in Stevens v Sony [2005] HCA 58, 21 ALR 447.[15]Stevens was a civil action under the Australian provisions corresponding to those in the UK about circumvention measures. The case turned on whether modchips were a “technological protection measure” within the meaning of the Australian Act. The definition of this phrase read as follows: 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."[16]No case about transient storage could be directly advanced because the Australian Act did then not have a provision corresponding to s.17(6) of the UK Act about transient storage. We understand it does now. A more elaborate attempt to run an argument that such storage was an infringement by reason of its being a reproduction in a material form failed and we are not concerned with that.[17]So the main point before the High Court was whether the measures which the modchips were designed to circumvent were a device etc. .. “designed …. to prevent or inhibit” infringement. The same argument was advanced as here – that modchips opened the market to infringing product and so they circumvented ETMs which prevented or restricted infringement. The argument was rejected by the High Court.[18]Gleeson CJ, Gummow, Hayne and Heydon JJ said: [38] Sackville J (the first instance judge) concluded thathttp://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/HCA/2005/58.html?query=Stevens%20AND%20Sony - fn28#fn28:
"a 'technological protection measure', as defined, must be a device or product which utilises technological means to deny a person access to a copyright work [or other subject-matter], or which limits a person's capacity to make copies of a work [or other subject-matter] to which access has been gained, and thereby 'physically' prevents or inhibits the person from undertaking acts which, if carried out, would or might infringe copyright in the work [or other subject-matter]"
. That construction should be accepted. [39] It is important to understand that the reference to the undertaking of acts which, if carried out, would or might infringe, is consistent with the fundamental notion that copyright comprises the exclusive right to do any one or more of "acts" primarily identified in ss 31 and 85-88 of the Act. The definition of "technological protection measure" proceeds on the footing that, but for the operation of the device or product or component incorporated into a process, there would be no technological or mechanical barrier to "access" the copyright material or to make copies of the work after "access" has been gained. The term "access" as used in the definition is not further explained in the legislation. It may be taken to identify placement of the addressee in a position where, but for the "technological protection measure", the addressee would be in a position to infringe. "a 'technological protection measure', as defined, must be a device or product which utilises technological means to deny a person access to a copyright work [or other subject-matter], or which limits a person's capacity to make copies of a work [or other subject-matter] to which access has been gained, and thereby 'physically' prevents or inhibits the person from undertaking acts which, if carried out, would or might infringe copyright in the work [or other subject-matter]".[19]McHugh J said: [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.[20]Kirby J held that the phrase being construed was ambiguous and preferred the narrow view for a number of reasons. These included the fact that the legislation was potentially penal, that the word “inhibit” covers the case where the measure would only be partially successful, that the Australian Parliament had foreign legislation to draw upon if it had wanted a wider definition, and that what was to be inhibited was not use but infringement.[21]We think that the same reasoning applies to the construction of ETM in the UK Act. We turn to consider the points in more detail[22]First, the slight difference in the key wording between the Australian and the UK legislation is no more than a distinction without a difference. We juxtapose each to highlight the difference: Australian:
“to prevent or inhibit the infringement of copyright”
UK:
“prevention or restriction of acts that are not authorised by the copyright owner of that work and are restricted by copyright.”
There is no real difference between “inhibit” and “restriction”. If you inhibit an activity you will restrict it and vice versa. In the end Mr MacDonald did not rest his primary argument on the difference in language.[23]Next Mr MacDonald pointed out that Kirby J at least thought the UK legislation was wider in effect than the Australian Act. He said: [208] … When the competing legislation of other jurisdictions, giving effect to the international treaties, is contrasted, it appears clear that the distinctive statutory formula adopted in Australia was a deliberate one. It was less protective of copyright than the legal regimes adopted in the United States, the United Kingdom and elsewhere. A footnote refers to the US legislation and the current UK legislation. After all he goes on to say that “textual foundation” for a less protective interpretation lies in the meaning to attributed to “designed” and “inhibit” both of which words are reflected in the UK legislation unless, contrary to our view, there is a fundamental distinction between “inhibiting” and “restricting” an act.[24]We think this makes too much of this passing reference which in no way was essential to Kirby J’s reasoning.[25]Mr MacDonald then went to what at first sight might be a more formidable objection, that the sources of the two pieces of legislation are different. The UK legislation was by way of an amendment of the Act made to implement an EU Directive, 2001/29/EC on the “Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society.” Accordingly it should be interpreted in the light of that Directive, rather than by what an Australian Court held Australian legislation to mean.[26]Both sets of legislation owe their ultimate inspiration to two international conventions of the mid-1990s but the conventions are expressed at a fairly high level of generality and the detailed wording in the Australian Act and the EU Directive is not taken from either of these conventions. This can be seen from their provisions: WIPO Copyright Treaty 1996 Art. 11 Obligations concerning Technological Measures Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law. WIPO Performances and Phonograms Treaty 1996 Art. 18 Obligations concerning Technological Measures Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by performers or producers of phonograms in connection with the exercise of their rights under this Treaty and that restrict acts, in respect of their performances or phonograms, which are not authorized by the performers of the producers of phonograms concerned or permitted by law. WIPO Copyright Treaty 1996 Art. 11 Obligations concerning Technological Measures WIPO Performances and Phonograms Treaty 1996

Art. 18 Obligations concerning Technological Measures

[27]Neither Treaty contains a definition of “effective technological measures”. One can at least see where the phrase comes from. It is an odd phrase to use in English – in its context it clearly refers to something which is intended to have an effect rather than something which is invariably successful. If it meant the latter, then there would be no need to have a law preventing circumvention. Probably something was lost in translation. Fortunately the context makes the meaning clear.[28]The trouble with Mr MacDonald’s point is the reasons for the Australian decision apply equally here. So although there are minor differences in language, the logic of the Australian decision applies as much to the construction of the UK Act. One is not using the Australian decision as anything other than as a source of reasoning.[29]Next we note there is no “purposive” need for a wide construction. On the contrary the narrow construction is enough to cover what Mr Higgs did, if it had been proved that transient copies of copyright works were made in the consoles.[30]Mr MacDonald then advanced an argument based on the Directive. The relevant language – which is an important aid to construction – is this: Article 6 Obligations as to technological measures 1. Member States shall provide adequate legal protection against the circumvention of any effective technological measures, which the person concerned carries out in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective. 2. Member States shall provide adequate legal protection 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:(a) are promoted, advertised or marketed for the purpose of circumvention of, or(b) have only a limited commercially significant purpose or use other than to circumvent, or(c) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, any effective technological measures. 3. For the purposes of this Directive, the expression "technological measures" means any technology, device or component that, in the normal course of its operation, is designed to prevent or restrict acts, in respect of works or other subject-matter, which are not authorised by the rightholder of any copyright or any right related to copyright as provided for by law or the sui generis right provided for in Chapter III of Directive 96/9/EC. Technological measures shall be deemed "effective" where the use of a protected work or other subject-matter is controlled by the rightholders through application of an access control or protection process, such as encryption, scrambling or other transformation of the work or other subject-matter or a copy control mechanism, which achieves the protection objective. 4. … Article 6 Obligations as to technological measures (a) are promoted, advertised or marketed for the purpose of circumvention of, or (b) have only a limited commercially significant purpose or use other than to circumvent, or (c) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, any effective technological measures.

Article 6 Obligations as to technological measures

[31]Mr MacDonald pointed out that the language of the Directive is not quite the same as that of the section (Why, oh why do statutory draftsman persist in trying to gloss Directives which are specific about what is to be implemented? See Century Life v Commissioners of Customs and Excise [2001] S.T.C. 38). Juxtaposing the two: Directive:
“designed to prevent or restrict acts, in respect of works or other subject-matter, which are not authorised by the rightholder”
UK Act:
“prevention or restriction of acts that are not authorised by the copyright owner of that work and are restricted by copyright.”
The UK Act adds the words “and are restricted by copyright.”[32]Mr MacDonald suggested that one should really disregard these words because they are not in the Directive and that if one did, one would reach a wider meaning. The trouble with his argument is that that the words add nothing. When speaking of “acts which are not authorised” it is implicit that one is considering only acts which need authorisisation, i.e. acts which are otherwise restricted. To “authorise” a man to do something he is free to do anyway – something which needs no authority - is a meaningless concept. So we think the UK draftsman was merely making explicit that which was implicit in the Directive – and indeed in the original 1966 Treaty obligations.[33]Mr MacDonald also tried to get something from the travaux préparatoires to the Directive. In particular the Preparatory Text (EU: COM(1999) 250) used slightly different language for the definition of technological measures: Art. 6(3) The expression “technological measures” as used in this Article, means any technology, device or component that, in the normal course of its operation, is designed to prevent or inhibit the infringement of any copyright … The reference to “infringement of any copyright” was changed in the final version to “acts which are not authorised by the rightholder.”[34]Mr MacDonald suggested one should infer an intention to widen the meaning. He could point to no material so saying, and we do not think the change amounts to anything other than a drafting change – there is no “bull-eye” in the sense used by Lord Steyn in Effort Shipping. v Linden Management [1998] AC 605 at 623E-F:
“I would be quite prepared, in an appropriate case involving truly feasible alternative interpretations of a convention, to allow the evidence contained in the travaux préparatoires to be determinative of the question of construction. But that is only possible where the court is satisfied that the travaux préparatoires clearly and indisputably point to a definite legal intention: see Fothergill v Monarch Airlines Ltd., per Lord Wilberforce, at p.278c. Only a bull’s-eye counts. Nothing less will do.”
So the travaux do not help.[35]In the end, therefore, one comes back to the UK Act. Is it enough if the technological measure is a discouragement or general commercial hindrance to copyright infringement or must it be a measure which physically prevents it? To our minds the position is clear – it is the latter. Neither the Directive nor the Act would have been drafted in the way that they are if such a general form of hindrance was enough.[36]It is for those reasons we quashed the convictions. Mr Higgs is a fortunate man in that it may well be that if the legislation had been less complex and/or the Crown had had greater opportunity to consider the details of copyright law the case would have been proved on the basis that merely playing a pirated game involves making a copy in the console and thus involves infringement. He may also be fortunate that, at least this far, he has not been sued in the civil courts. There the procedure is apt to be much faster, technical slip-ups in evidence can generally be readily cured before final judgment and the remedies of damages, an account of profits, injunction and legal costs are readily obtainable. Breach of an injunction, if serious, can of course itself lead to imprisonment.[37]We were asked to certify that this case involves a question of law of general public importance. We are willing so to do. The question (agreed by Counsel) which we certify is: Do the provisions of section 296ZF of the Copyright Designs and Patents Act 1988 in relation to “effective technological measures” apply to devices incorporated into computer games consoles and computer games which do not prevent counterfeit copies being made of such games but which do prevent the counterfeit copies from being played on games consoles?[38]We were also asked for leave to appeal to the House of Lords. This we refused, not least because it appears to us that the correct construction of the Act does not preclude the prosecution of manufacturers or distributors of modchips if evidence of copying in the process of playing is adduced.

Cited in 2 later judgments