The Court of Appeal’s judgment in Higgs v R [2008] EWCA Crim 1324 was published on 24 June. The case concerned one Neil Stanley Higgs who ran a business as Mr Modchips, fitting modchips to customers’ computer games consoles and selling games consoles to which he had already fitted modchips. The attraction of these modchips is that pirate games could be played because the technological measures employed by games console sellers which normally protect the being played in a pirated form were no longer effective.
Higgs was convicted in the Bristol Crown Court of 26 offences contrary to s. 296ZB of the Copyright, Designs and Patents Act 1988. The catch was that he was prosecuted on a basis which required a very wide interpretation of the Act. Jacob LJ, giving the judgment of the Court, explained the problem in terms that cannot readily be improved upon:
‘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.’
But of course the basis of the conviction could not of course be altered by the Court of Appeal. After extensive analysis of the Act’s provisions, the Directive from which it stems, Sony v Ball [2004] EWHC 1738 (Ch) and the Australian case of Stevens v Sony [2005] HCA 58, Jacob LJ went on to observe (at [36]):
‘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.’
Despite the fact that the Court hinted heavily that a civil action might have been a better course and that the prosecution had missed an easy win, a question of law of public importance was certified in the following terms:
‘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?’
Despite the Court’s agreement to the certified question, it seems hard to believe that the future of technological protection rests on the answer. The technology will have moved on by the time the House of Lords gets round to answering that one. I wonder whether it would not have been better for all concerned to have taken Mr Modchip to the cleaners through a civil action. But the truth behind the insistence on criminal action may be that it allows the court to exercise its power under the Proceeds of Crime Act 2002 and the ruthless confiscation powers that Act contains.
