by Dan Gaskell

About the Author Dan Gaskell is a Solicitor and Higher Courts Advocate with Tuckers Solicitors in the UK.

The Copyright Design and Patents Act 1988 (CDPA) was amended by Statutory Instrument on 31 October 2003 through the introduction of the Copyright and Related Rights Regulations 2003. The driving force behind this was an EC Directive and ought to have provided a consistent approach across the EC in respect of the issue of the modification of games consoles and what is or is not legal. The reality has seen quite a different approach being adopted in this country from the approach adopted in other member countries and in particular Italy, Spain and more recently France.

The Regulations extended section 296 of the CDPA and made it a criminal offence under s296ZB CDPA to, inter alia, manufacture, import, sell or advertise for sale devices, the primary purpose of which was to circumvent the Effective Technical Measures which are a security feature of games consoles manufactured by the likes of Sony, Microsoft and Nintendo. These devices are commonly known as modchips but take a number of different forms according to the technology in connection with which they are produced to function.

Since the introduction of the legislation a number of criminal Prosecutions have followed, the driving force behind which has been the Entertainment and Leisure Software Publishers Association (ELSPA) but it has only been in the last 12-18 months that the legislation has fully been tested to the point where certain conclusions can be reached as to what needs to be established to establish that criminal offences have been committed. In reaching certain conclusions however the Court of Appeal has nevertheless raised further issues for consideration in defending cases in the future.

Following on from two cases that commenced simultaneously at the beginning of 2006, the decisions reached by the Court of Appeal in the cases of Higgs [2008] EWCA Crim 1324 and Gilham [2009] EWCA Crim 2293, addressed what is required to prove that criminal offences have been committed. The decision in Higgs established the need for the Prosecution to establish that a copy of Copyrighted material was indeed made when a counterfeit game was played on a modified console and cited the fact that it seemed that, in order to do this, the Prosecution ought to have established that such a copy was created in the Random Access Memory (RAM) of the console. Certain observations in various proceedings before different (i.e. non-criminal) divisions of the Court of Appeal had suggested that this is where the contravention of Copyright had occurred but in reality this had never fully been challenged and therefore had never been subject to any significant scrutiny. By the time the case of Gilham came before the Court of Appeal the issue of whether Copyright infringement did in fact occur in RAM was at the heart of the Appeal against Conviction. Support for the contention that it did not could be found in the civil case Football Association Premier League Ltd and Others v QC Leisure and Others [2008] EWHC 1411 but the Court then seized on a separate aspect of that decision to reach the conclusion that the contravention of Copyright actually occurred when an image was produced on the screen. That left the RAM issue essentially untested. This highly technical and complex issue of Copyright law was, according to the Court of Appeal, not one which should ideally be tried before a jury. It follows therefore that there is some support for the contention that the Criminal Courts should not be the first port of call for those Copyright holders which seek to protect their intellectual property rights. Instead the Court has suggested that the proper way to deal with what it described as ‘recondite issues of copyright law’ would be to seek injunctive relief through the civil courts.

Rather disconcertingly however it seems that the decision in Gilham has provided a springboard for similar Prosecutions to be commenced through the criminal courts which appears wholly contrary to the guidance from the Court of Appeal. These Prosecutions are ordinarily pursued on behalf of ELSPA by the Trading Standards Service in the area where any given defendant resides. ELSPA is the membership organisation for the multinational manufacturing companies mentioned above, and, as such, exists to enforce their intellectual property rights. By securing the assistance of a public body to prosecute these cases through the criminal courts the burden of the cost of such Prosecutions passes to the Council Tax payer for the area concerned. Indeed the experts usually relied upon to provide the technical evidence to support the Prosecution case are from the very same companies which are effectively the aggrieved party and presumably provide that evidence as experts thereby potentially commanding a fee for the provision of the expert evidence. If the matter proceeded through the civil courts then the manufacturer/intellectual property rights holder would be responsible for their own costs in bringing any action. That seems both more just and more in keeping with the observations provided in the latest judgement from the Criminal Division of the Court of Appeal in this area. It remains to be seen whether any argument that a criminal prosecution is not appropriate in view of the observations of the Court of Appeal would be likely to succeed.

--

Tuckers Solicitors operates from offices in Birmingham, London and Manchester and provides advice and assistance in all aspects of criminal defence law.

In 2002 a need for specialist advice was recognised, encompassing all aspects of defending individuals who were being prosecuted for their alleged involvement in crime where the use of the internet and computers generally was a feature. Since that time such advice and assistance has been provided in respect of Prosecutions throughout the country. Such is the nature of these Prosecutions and due to the fact that the client-base is, as a rule, highly computer-literate it has been possible to provide advice to individuals very quickly and in the first instance at little or no cost through email or internet forums.

Dan Gaskell is a Solicitor and Higher Courts Advocate and has been part of the team that developed this expertise from its inception and can be contacted at the Manchester office on 0161 233 4321 or by email at gaskelld@tuckerssolicitors.com