LawFont.com

I have been asked by a reader about DVDs: specifically, I’ve been asked about whether users infringe copyright when they watch a DVD bought outside Australia. As my reader noted, the issue might be important because the argument about region coding – and in particular, the argument that new laws shouldn’t enforce region coding – depends on the view that playing material made for, and purchased in other geographical regions is a legitimate activity.

Now, it would be very ironic if there were any infringement here. After all, it is the government which has made comments that copyright law should not ‘stop people from doing legitimate things with legitimate copyright material’, and that ‘copyright law should not unduly intrude into the private sphere’.

However this, dear readers, is what is technically known as a nasty difficult question. No, really. That is because answering it requires us to delve into all kinds of complicated, interconnecting parts of the Australian Copyright Act; it also requires us to think about some of the recent caselaw. More detailed, painful legal analysis over the fold.

Oh, and in accordance with that little disclaimer on the sidebar of this blog – this is not legal advice. In fact, I might be incorrect in my analysis, given how hard this can get, and I’d be most grateful to anyone who can point out the flaw in my reasoning.

Let’s start at the beginning. An individual consumer (or teacher, for that matter) might do something illegal if:

1. Bringing in the DVD in the first place is an infringement, or
2. Playing the DVD involves an infringement of copyright.

What copyright material are we worried about here?

The first thing to note is that a DVD includes more than one copyright-protected subject matter. Briefly, it will include (a) a cinematograph film, and (b) a computer program (the instructiony-bits on the DVD that tell the player what to do). On this, see AVRA v Warner (2001, Federal Court, Emmett J).

Is bringing in the extra-region DVD for personal or internal institutional use an infringement?

Let’s say you buy the DVD overseas, and bring it back to watch it at home, or even with the intention of using it for teaching in the university. Is that an infringement?

Well, in relation to the film, the mere act of bringing it in isn’t making a copy, causing it to be seen in public or communicating the film to the public (section 86). Nor is it reproducing, publishing, performing in public, communicating or adapting the computer program (section 31).

But, you can also infringe copyright by importing, right? Yes, look at section 37 (computer program) and section 102 (films). But both of those provisions, ban importation without the license of the owner of copyright for the purposes of sale or distribution in trade, or for any other purpose to an extent that will affect prejudicially the owner of the copyright.

So bringing the DVD in isn’t a problem. If there’s a problem, it must lie in the playing, right?

Is playing that extra-region DVD for personal or internal institutional use an infringement?

Now, playing a DVD in the privacy of your own home is not an infringement: to the extent that you might be causing it to be seen, that’s only an infringement if it is seen in public (section 86). And since you don’t really watch the computer program, no problem there. If you are playing the DVD in a classroom, you are also not performing it in public mostly (section 28).

So no potential infringement, right?

Well, think again. Because it’s not just about the performance: the problem might be that when you play the DVD, you are going to be making a copy or reproduction, in the temporary memory of the DVD player, or the PC you are playing it on. If such a copy is made, it might be said to be made without the permission of the copyright owner (because they’ve not given you permission to play the film here in Australia

Is there such a copy? Now, I’m not the technical expert here, but this very question was considered by Emmett J in the Federal Court in AVRA v Warner. In that case, Emmett J accepted that when you play a DVD:

1. a copy of a computer program on the disk is transferred to the computer or player’s temporary memory,
2. the film passes through the temporary memory, but only a bit at a time.

Surely such a temporary copy can’t be an infringement? Well, in a past case, Emmett J in the Federal Court said no. Emmett J said no for basically two reasons:

1. In relation to the film, Emmett J decided that the Act required that a copy of the film had to be ’embodied in an article or thing’. Given that only a very small proportion was in the temporary memory at any given time, it couldn’t be said that there was a copy of a substantial part so ’embodied’.
2. In relation to the computer program, while the whole thing was copied across, the copy wasn’t one that could be extracted or reproduced from the temporary memory, and, on the basis of the definition of ‘material form’ in the Act then, that meant it wasn’t a reproduction in ‘material form’, so it wasn’t caught.

And, by the way, this reasoning was accepted in the later case of Sony v Stevens, affirmed all the way up to the High Court decision in Stevens v Sony (although admittedly a key problem here was Sony’s failure to carry an evidentiary burden – see High Court majority judgment at 98).

So again, no potential infringement in playing that extra-region DVD, right?

Well, think again (again). With the FTA amendments (because of Article 17.4.1), some things changed – including, in particular, the kinds of ‘copy’ that will count as a possible infringement under the Copyright Act. Now, it would seem that any electronic copy, however, temporary, will count (let’s leave aside for the moment the fact that this interpretation is highly contested and may even be in decline in the US; here, the government enshrined it in legislation: look at the definition in s 10(1) of ‘material form’, and the definition of ‘copy’ s 10(5) in the current Copyright Act.

Now, these changes under the FTA did not (I think) affect the AVRA v Warner/Stevens v Sony argument about films, and the fact that only a small part of the film will be in memory at any given time (although remember, the argument about films failed in Sony in part because of evidence – that means it’s still open to a party in a future case to try to show a substantial enough part is ’embodied’ in temporary memory.

But the FTA changes do substantially change the findings in AVRA and Stevens v Sony regarding the computer program. Since it no longer matters whether you can ‘extract’ or copy the computer program from temporary memory, that temporary copy does count. Indeed, we certainly know that the government thought so: in their Explanatory Memorandum, they said:

‘The extended definition of ‘material form’ effectively extends the application to all reproductions made in using copyright material. It will include, for example, electronic copies of a transitory nature made in the random access memory (RAM) of digital devices such as computers, DVD and compact disc players’

But hang on. We also have to think about the effect of section 43B. Section 43B was put in to ameliorate the effect of the changed definition of material form. What section 43B says is that ‘copyright in a work is not infringed by the making of a temporary reproduction of the work if the reproduction is incidentally made as a necessary part of a technical process of using a copy of the work’. The whole idea (as the EM says) is to ensure that ‘users of copyright material are not potentially liable for copyright infringement for the normal use of non-infringing copyright material’.

So, that’s all right, right? There is no infringement. Well, think again (again, again). Now you have to look at subsection 2 of section 43B. What that says is that the exception in 43B(1) doesn’t apply if the temporary copy is made from an ‘infringing copy’ of a work, or where the temporary copy is made from a copy, made in another country, which would be an infringing copy if the person who made it had done so in Australia.

Do you have a headache yet? I do.

Now we have to work out whether the copy that the temporary copy was made from – remember that DVD you brought in to the country – is an ‘infringing copy’.

Now that has another, separate definition in section 10. Leaving out some of the less relevant bits, where we are talking about imported copies, it is infringing if it would have been an infringement for the importer to make the article in Australia Now, since it would be an infringement for you to make the DVD here in Australia, your imported DVD seems to be covered: so you’ve got an infringing copy of a computer program, and an infringing copy of a film.

But, this definition of ‘infringing copies’ doesn’t apply to non-infringing copies. Non-infringing copies are copies, made with the consent of the copyright owner, of books, sound recordings, and films. And if you’re wondering what all THIS is about, it’s mostly to do with our parallel importation law: the government lifted the ban on parallel importing books, sound recordings, and computer programs, but it has not, yet, lifted the ban on parallel importing movies.

Now, that suggests that the copy of the computer program is a non-infringing copy (s 10AB). But the copy of the film is still an infringing copy. But remember, as I noted before, that the changes that came in with the FTA didn’t actually affect the reasons why films weren’t copied by DVD players: the problem still remains about whether a substantial part is ever sufficiently ’embodied’. That’s a question which has never been proved by satisfactory evidence to a court – though it’s open to a party in the future to try to do so. So, that means that the section 43B defence applies to the computer program, and the film might not be copied anyway, right? And that would mean that playing the extra-region DVD is not an infringement, right? Not quite. We are still not there.

Go back to section 43B again. You see, there’s another qualification on the defence – this time, one which was introduced into the Act in November 2004 – after the US objected to the first go we had at implementing the Australia-US Free Trade Agreement. These were the changes made by the government in order to convince the US to go ahead and bring the agreement into effect.

That additional qualification is that s 43B doesn’t apply where the temporary copy is made from a copy which was ‘made in another country and would be an infringing copy of the work if the person who made the copy had done so in Australia. Well, prima facie, that wouldn’t apply either, right? Because if your DVD bought overseas was an official one, then, as long as we assume copyright in the computer program is owned by the same people in both countries, the person who made the copy of the computer program over in the other country could make it here too without infringing copyright. So we are still safe.

OK, now let’s put this all together, as I understand it. Because we all have headaches now:

1. We first concluded that the actual playing of the extra-region DVD, in the home or in a class room, is not an infringement of any right to play or perform the DVD.
2. Then we decided that there might be a problem with exercise of the reproduction/copying right in the computer program or film.
3. Then we discovered that under the old law, there were no infringing copies made when people played their DVDs, at least so far as the evidence has established in the past cases of Stevens v Sony and AVRA v Warner. This finding is firmer for computer programs than for films – in reality, the High Court decision in Stevens v Sony seems to leave open the question. So far so good.
4. Then we discovered that the FTA had changed this: temporary copies can now count
5. Then we looked at section 43B, which says that temporary copies made as part of the technical process of using a work aren’t infringements. Good.
6. Then we discovered that this only applies where the temporary copy isn’t made from an infringing copy.
7. It seems the copy of the film is an infringing copy, although the copy of the computer program is non-infringing.When we looked at the further qualifications to section 43B, we found they probably don’t apply: providing the same person owns copyright in both countries.
8. And that means that the temporary copy of the computer program still falls within s 43B. The film doesn’t, but it may be that a substantial part of the film is not embodied anyway, depending on the evidence

What’s the upshot? Well, it’s really interesting.

If I’m right about all of the above – and as I said at the outset, I might be missing something because of how complex this all is – then your right to play a DVD legitimately purchased overseas rests on as slender a thread as this: if a copyright owner can prove that a substantial part of the film is embodied in RAM at some given moment, they will be able to show that you are making a temporary copy, which is not covered by the section 43B defence.

Is this likely? Well, the question is effectively open. And Sony tried quite hard to demonstrate this after the fact in Stevens v Sony, using a demonstration of how much game could be played without keeping the disk in the machine.

And you know what’s fascinating about all of this? I had to do all this analysis, all this headache-inducing following of rabbits down legislative rabbit-holes – only to end with this conclusion: even I cannot possibly know whether playing a DVD is going to be an infringement, because for all my knowledge of copyright, (a) I don’t know whether the same person owns copyright in both countries, and (b) I can’t possibly know how much of the film goes into RAM.