On 19 September 2013, Advocate General Sharpston issued an opinion following a request for a preliminary ruling from an Italian court (Tribunale di Milano) concerning the legality of Nintendo's technical protection measures by which that party blocked third-party accessories to its gaming consoles.
The case pitted Nintendo, one of the world's largest video game companies, against PC Box Srl ("PC Box") which markets devices enabling video games other than those manufactured by Nintendo or by independent producers under licence from Nintendo to be played on the Nintendo gaming consoles.
Nintendo argued that the technological measures preventing the use of third parties video games were implemented in order to avoid infringements of its copyright. According to Article 6 of Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society (the "Directive"), copyright holders may apply such technological measures in order to prevent infringements of exclusive rights.
In this case that seems to have a bearing on the state of competition for video games, the Advocate General addressed the materials from a copyright perspective. Firstly, the Advocate General asserted that technological measures covered both the copyright protected material (such as the Nintendo-licensed video game) and the installed measures on a device (such as the Nintendo console).
Secondly, the Advocate General analysed the possibility for a copyright holder to adopt technological measures provided their effect is not merely to restrict unauthorized reproduction of the copyright material. Indeed, while Nintendo ensured that unauthorized copies of Nintendo-licensed games would not be used with its console, it also prevented the interoperability of its consoles with video games produced by third parties.
According to Advocate General Sharpston, the national courtshould decide, based on the facts of the case, whether Nintendo has the right to block other devices in order to protect its copyright. The Tribunale de Milano must apply a proportionality test, principle referred to in recital 48 of the preamble to the Directive.
In other words, "could Nintendo have protected its own or licensed games without preventing or restricting the use of its consoles to play 'homebrew' games"? The test involves answering the three questions of the theory; (i) whether a measure pursues a legitimate aim; (ii) whether it is suitable to achieve that aim and; (iii) whether it does not go beyond what is necessary to achieve it.
As to the first element, the Advocate General's opinion states that "the aim of preventing or restricting acts not authorized by the right holder is inherent in any system of copyright and is specifically encouraged by the legal protection required under Article 6 of the Directive".
Regarding the second element, it will be up to the national court to decide whether the technological measures can effectively protect Nintendo against unauthorised reproduction. Advocate General Sharpston therefore links the suitability of the measures with their effectiveness to reach the legitimate aim. Moreover, she adds that "if (...) the national court were to find that Nintendo was pursuing in addition any other aim not justified in the context of that directive, the extent to which the nature of the technological measures was determined by the latter aim would have to be taken into account" when examining the suitability of the measures.
The third element addresses the question of whether the measures go beyond what is necessary to achieve the aim. According to the Advocate General, this means that the national court must assess the degree of restriction of acts which do not require the rightholder's authorisation. Beyond that, the same court will also have to decide "whether other measures could have caused less interference while still providing comparable protection of right holders' right".
It is only after applying the three elements of the proportionality test that the Tribunale de Milano will be able to rule on the matter, according to the Advocate General.
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