Modchips Conviction Upheld

November 12, 2009

In R v Gilham [2009] EWCA 2293, the Court of Appeal upheld convictions under the Copyright, Designs and Patents Act 1988, s 296ZB. Gilham had been convicted of a number of offences arising from his commercial dealing in modification computer chips, which were alleged by the prosecution to be devices, products or components ‘primarily designed, produced, or adapted for the purpose of enabling or facilitating the circumvention’ of effective technological measures within the meaning of s 296ZB. In essence, Gilham ran a business selling components and devices for Microsoft, Nintendo and Sony games consoles. The modchips circumvented the protection on the consoles and allowed the buyer to play counterfeit games

The offences of which Gilham was convicted included importing, advertising and offering for sale, selling and possessing such devices in the course of a business. In addition, he was convicted of money-laundering offences relating to the proceeds of his sales of such devices. The only issue on the appeal was whether the playing of a counterfeit DVD involves substantial copying of a copyright work. It was submitted by the defence that the judge had wrongly directed the jury as to the meaning of ‘substantial’ in this very particular context. Giving the lead judgment of the Court, Stanley Burnton LJ stated (at [20] and [21]):

“Substantial” is a difficult word. It may indeed mean “not insubstantial”. But another dictionary meaning is “of ample or considerable amount, quantity, or dimensions”. Laddie, Prescott and Vitoria, The Modern Law of Copyright, third edition, state:

3.131 …. copyright in a work is infringed by taking a substantial part of it; but what is the meaning of “substantial”. It is a question of fact and degree, a matter for the jury in those days when copyright actions were tried by juries. Sheer arithmetical quantity alone is not the first; for a short extract may be a vital part of a work, and “the question whether he has copied a substantial part depends much more on the quality them on the quantity of what he has taken”. … The true principle, at any rate in the compilation cases, is that “the defendant is not at liberty to use or to avail himself of the Labour which the [claimant] has been at for the purpose of producing his work; that is, in fact, merely to take away the result of another man’s labour or, in other words, this property”. … and there is high authority in favour of the “rough practical test that what is worth copying is prima facie worth protection”; but the words “rough” and “prima facie” ought to be emphasised, for otherwise the proposition obviously proves too much. In particular, there are instances where appropriation of a minor part would be regarded as fair and legitimate use.

The test is helpfully summarised in Copinger and Skone James on Copyright, fifteenth edition, at paragraphs 7-25 and 7-27. For present purposes, it is sufficient to cite part of paragraph 7-27:

… the application of the substantial part test varies with the type of work, whether literary, dramatic, musical, artistic and so on. … some general propositions can be stated:

(a) … the overriding question is whether, in creating the defendant’s work, substantial use has been made of the skill and labour which went into the creation of the claimant’s work and thus those features which made it an original work.

(b) the quality or importance of what has been taken is much more important than the quantity. The issue last depends therefore not just on the physical amount taken but on its substantial significance or importance to the copyright work, so that the quality, or importance, of the part is frequently more significant than the proportion which the borrowed part bears to the whole.’

His lordship went on to consider the ‘little and often’ test that had been the focus at the trial. Essentially, he took the view that it was not relevant in such a case – ‘even if the contents of the RAM of a game console at any one time is not a substantial copy, the image displayed on screen is such’. In upholding the conviction, his lordship added (at [28]):

We reach this conclusion with satisfaction. The recitals to Directive 2001/29/EC emphasise the importance of protecting copyright and related rights in multimedia products such as computer games, and if devices such as modchips could be sold with impunity, the UK would not be conferring the protection of those rights required by the Directive. Secondly, it seems to us to accord with common sense that a person who plays a counterfeit DVD on his games console, and sees and hears the visions and sounds that are the subject of copyright, does indeed make a copy of at least a substantial part of the game, even though at any one time there is in the RAM and on the screen and audible only a very small part of that work.’


The final part of the judgment considers the advisability of prosecutions in cases concerning ‘recondite issues of copyright law’. In his lordships view (at [30]), such cases were better dealt with in the Chancery Division:

They can be so tried much more efficiently in terms of cost and time than before a jury, and questions of law can if necessary be determined on appeal on the basis of clear findings of fact. In appropriate cases, the Court will grant injunctive relief, and a breach of an injunction will lead to punishment for contempt of court. If the facts proven against a defendant show that he has substantially profited from criminal conduct, proceedings for the civil recovery of the proceeds of his crimes may be brought under Part 5 of the Proceeds of Crime Act 2002.’