Full Court or the High Court

This decision was appealed by Sony in the Full Court. More specifically, Sony’s contention on the first point which is the construction and interpretation of ‘technological protective measure’ was accepted by Lindgren J and French J of the Full Court and at the same time rejecting the second and third contention or the reproduction in RAM contention and the cinematograph film contention, respectively. Thus, this had the effect of affirming the decision of Sackville J on the second and third issues. On the other hand, Finkelstein J accepted Sony’s arguments on all three issues.

In interpreting ‘technological protective measure,’ the Full Court accepted the contention advanced by Sony. The Full Court instead adopted what it thought as a ‘broader approach’ which was intended by the Parliament , which is, that the technological protection measure included ‘inhibition’ albeit indirect; it operated before the attempted use of the circumvention device. Moreover, the construction advanced by Sony gives the provisions of s 116A its ordinary and grammatical meaning. According to the Full Court,

“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. " Hence, this appeal to the High Court by Stevens on special leave against the decision and orders of the Full Court. Whilst Sony filed a Notice of Contention challenging the decisions on the two issues by Sackville J that were upheld by a majority of the Full Court.

The High Court ruled that the Full Court erred in giving a broader interpretation and construction to the pertinent provisions of the law over the narrower and stricter interpretation. Hence, the analysis of the primary judge should be upheld. Anent the second and third issues, the appellant is entitled to have the orders of the primary judge reinstated and restored. This shall be without prejudice to whatever remedies which Sony may be entitled against Stevens for infringement of the Trade Marks Act found against him at the first instance but was not raised in the Full Court or the High Court.

The decision of the High Court on each issue in detail is as follows. For the first issue: 1). The Boot ROM chip and access code or either does not constitute a ‘technological protection measure’ by reason of its deterrent effect on the copying of the games. The device does not make it impossible or more physically difficult to make an unauthorised copy because of the console’s inability to load the software. The High Court explained its reasons why it was inclined not to follow the holdings of the Full Court in this regard.

According to the High Court, the term ‘technological protection measure’ should be a device that must be “‘designed, in the ordinary course of its operation, to inhibit’ which indicates that the definition is concerned with the actions that the device is intended to execute in the course of its operation. ”  By operation of the device, one of the two processes in the definition to ‘inhibit’ should also operate in relation to copyright infringement.

The effect on the user after the operation of the device ‘is external to the chain of causation and not attributable to the operation of the device. ’ 2)   The term ‘designed’ should be taken in the context of the function of the device and not its intended purpose of execution. ‘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.

’  It cannot depend on user’s understanding of the operation of the device that causes it to bar acts of infringement. For grammatical interpretation, the terms ‘designed,’ ‘prevent,’ and ‘inhibit’ must be taken together in its operation, thus ‘designed’ must perform the same descriptive task as that attached to ‘inhibit’ and ‘prevent. ’ 3)   The interpretation of Sony of s 10(1) definition of ‘circumvention device’ is misplaced. The circumvention device refers to use or purpose.

If the legislature intended that the technological protection measure to extend and cover the ultimate purpose of inhibiting copyright infringement, then it would have used the definition of ‘circumvention device’ to cover instances when purpose or use is to prevent or inhibit infringement. For the second issue on reproduction in RAM, the High Court ruled that the reproduction of the storage of the game code is not possible unless the console is changed by using hardware.

Therefore, it is impossible to copy and reproduce the code, thus, not falling under the purview of the definition of ‘material form. ’  The mod chips did not have the effect of modifying the play stations nor did it circumvent a device ‘designed to prevent’ copyright infringement. As a consequence, it was not a TPM to which the provisions of s 116A would apply. On the third issue of copying a cinematograph film, the High Court held that based on evidence presented by Sony it failed to show that specific parts are stored in the GPU to make an aggregate whole.