Are the ‘technological protection mechanisms’ used to protect video-games and video-consoles governed by the EU’s InfoSoc Directive 2001/29/EC or the EU’s Software Directive 2009/24/EC?
The claimants develop, produce and sell video-games and video-games consoles including the Nintendo DS console and the numerous games which can be played on them. The first claimant is the right holder of the copyright-protected works in the computer programs, literary, musical and image rights and cinematographic works such as the moving pictures that form a part of a video-game. The second claimant is one of the first claimant’s daughter companies.
The video-games are on Nintendo-DS console-appropriate ‘Slot 1’ memory cards which can be fitted into the memory card slot on Nintendo’s consoles. As the name implies, these cards contain an inbuilt memory that holds both the software, and the graphics and audio data. Without a Slot-1 memory card no games can be loaded and played on the Nintendo DS console. The claimants developed the Slot-1 memory cards especially for the Nintendo DS consoles so that the average consumer would be prevented from copying the games.
In 2008, the defendants (and their corporate predecessors), offered ‘Adaptors’ for sale over the Internet. These adaptors were almost identical in shape and form to the claimants’ original memory cards and thus could be fitted into the card slot on Nintendo’s consoles. With the aid of these adaptors, users could download bootleg games from the internet and use them in their Nintendo consoles. Users can do this by transferring copies of the games from the Internet onto either a micro-SD card that fits into the adaptor, or directly onto the adaptor’s in-built Flash-memory chip.
The claimants claimed that the defendants’ distribution of the adaptor contravened Article 95a(3) of the German Copyright Act (UrhG). That provision covers ‘technological protection measures’ attaching to copyright-protected works. The wording of the German provision is an almost literal implementation of Article 6(2) of the InfoSoc Directive (Directive 2001/29/EC), which reads:
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.
However, both the German and the EU InfoSoc Directive only cover technological protection measures that are attached to copyright-protected works.
At the first instance court of the Landgericht in Munich, the claimants were successful but the dispute was escalated to the German Supreme Court.
The Supreme Court was not sure how to apply EU law. Its uncertainty centred on the relationship between on the one hand, the InfoSoc Directive and, on the other, the EU’s computer programs Directive (also known in some countries as ‘the Software Directive’ but is in any event Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs (Codified version)).
The EU’s Software Directive has within it a provision that deals with ‘special measures of protection’. Under Article 7, Member States are to provide appropriate remedies against a person committing various acts. In this context, Article 7(1)(c) specifies: ‘any act of putting into circulation, or the possession for commercial purposes of, any means the sole intended purpose of which is to facilitate the unauthorised removal or circumvention of any technical device which may have been applied to protect a computer program.’ This provision of the EU Software Directive has been implemented in Article 69f(2) UrhG.
But the difficulty facing the German Supreme Court was that Article 1(2)(a) of the InfoSoc Directive states clearly that ‘this Directive shall leave intact and shall in no way affect existing Community provisions relating to (a) the legal protection of computer programs’. Thus, Article 6(2) of the InfoSoc Directive’s provision on technological protection mechanisms does not affect Article 7 of the EU’s Software Directive. This separation between the two EU Directives is repeated and reflected in German law too: Article 69a (5) UrhG states inter alia that Article 95a(3) UrhG on technological protection measures is not applicable to computer programs.
Consequently, the German Supreme Court pointed out the problem. The video games distributed by the claimants consist not only of various copyright works (including musical, photographic, and film works) but are really rather based on computer programs. Thus the question arises as to whether the protection measures which protect ‘hybrid products’, particularly video games, fall within either the scope of the provisions specifically for computer programs, or the general provisions for copyright-protected works, or whether one or other of the other provisions are applicable.
Since answering this question depends on interpreting EU law, the five judges in the First Chamber of the Civil Division of the German Supreme Court decided to stay proceedings and make a reference to the CJEU.
According to the UK’s Intellectual Property Office website, the German Supreme Court has asked:
1. Does Article 12(a) of Directive 2001/29/EC on the harmonisation of certain aspect of copyright and related rights in the information society (the Directive), preclude the application of a domestic provision which transposes Article 6(2) of the Directive into national law if the technological measure in question protects not only works or other subject matter, but also computer programs?
There are three small nuances in the German version of the question asked by the German Supreme Court that appear to be missing from the English translation published on the UK Intellectual Property Office’s website:
i) instead of ‘Article 12(a) of the Directive’, the relevant provision is ‘Article 1(2)(a) of the Directive’;
ii) after the words ‘application of a domestic provision’, should follow ‘namely Article 95a(3) of the German Copyright Act’;
iii) instead of ‘subject matter’, the phrase should read ‘protected subject matter’.
It is useful to note that this reference from the German Supreme Court has already been mentioned during the hearing of an earlier reference that is currently being considered by the CJEU as the earlier reference also concerns Nintendo video-games. See further, Case C-355/12, Nintendo – a proportionate response to game piracy or an unjust market foreclosure?
Update – 23 May 2014
The Curia website indicates that the Grund reference has been removed from the register by order of the President dated 7 May 2014.