CJEU clarifies TPM rules in Nintendo dispute
Europe’s highest court has ruled that technological prevention measures (TPMs) connected between a video games console and the game itself are legal.
But the Court of Justice of the European Union (CJEU) also found that national courts must assess whether the use of TPMs – which help to prevent games being pirated – is proportionate to the tools seeking to circumvent them.
The case, referred from Italy, dealt with a dispute between video games company Nintendo and PC Box, which provides software that can work around TPMs installed on Nintendo’s Wii and DS consoles.
Nintendo’s TPMs also prevent games and other multimedia content that is not produced by the Japanese company from being used on its consoles.
PC Box, an Italian company, argued that its software enables non-Nintendo content to be read on Nintendo consoles, and therefore the TPMs prevented people from accessing non-infringing content.
The Tribunale di Milano asked the CJEU to clarify whether TPMs married between console and game fell within the scope of article 6 of Directive 2001/29, and to what extent companies can stop others from circumventing TPMs.
In a ruling on January 24, the CJEU answered the first question in the affirmative, before saying that national courts must decide on the proportionality of those measures. On this second point, said the CJEU, national courts must assess factors such as the costs of the TPMs themselves, the purpose of the anti-TPM devices and how often these devices disregard copyright.
Advocate general Sharpston had backed these positions last year.
The CJEU’s ruling clearly shows that rights holders must use TPM as a “scalpel, not a sledgehammer”, said Gareth Dickson, associate at Edwards Wildman Palmer LLP.
“It should be narrowly tailored, in light of all the available TPM, to meet the limited purpose of protecting the rights holder’s legitimate interests,” he said.
“In an odd way, this probably creates an incentive for the anti-TPM movement to assist with the development of TPM.”
But, he added, litigation will be much more complex and expensive because courts will have to assess the detail of not only the TPM at issue, but the whole known “universe” of technological measures and market-based studies on what consumers are actually using anti-circumvention tools for.
He continued: “We don’t know who bears that burden of proof – does the rights owner show that the TPM was proportionate or does the defendant show that it was disproportionate?
“It does leave a lot up in the air,” he said.
Because there are so many “open questions” at this stage, Dickson continued, the parties in this case won’t be too concerned about this ruling, but will be preparing for the remaining Italian litigation.
The ruling also has implications for the re-selling of video games. In 2012, the CJEU found in a case, UsedSoft v Oracle, that someone owning copyright in a computer program cannot stop a licensee who has downloaded the program online from selling its “used” licence.
In the wake of that decision, said Dickson, many had asked whether music, video and e-book downloads, and in particular video games, were “computer programs” and therefore eligible to be resold in the digital secondary market.
“The CJEU has said quite clearly that video games are not ‘computer programs’, so it’s hard to see how UsedSoft will apply to anything other than ‘traditional’ software programs. That’s not to say that the court won’t find another way of opening up a secondary market for all types of digital files: it just means they haven’t done it yet,” he said.
The ruling is available here.
