FEDERAL COURT OF AUSTRALIA Kabushiki Kaisha Sony Computer Entertainment v Stevens [2001] FCA 1379 PRACTICE AND PROCEDURE – amicus curiae – whether application to act as amicus curiae should be granted. KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT & ORS v EDDY STEVENS SACKVILLE J SYDNEY 28 SEPTEMBER 2001 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 738 OF 2001 BETWEEN: KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT FIRST APPLICANT SONY COMPUTER ENTERTAINMENT EUROPE LIMITED SECOND APPLICANT SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD THIRD APPLICANT AND: EDDY STEVENS RESPONDENT JUDGE: SACKVILLE J DATE OF ORDER: 28 SEPTEMBER 2001 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. Subject to any further order of the Court, the Australian Competition and Consumer Commission be granted leave to appear at the final hearing as amicus curiae subject to the limitations referred to in the Reasons for Judgment. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 738 OF 2001 BETWEEN: KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT FIRST APPLICANT SONY COMPUTER ENTERTAINMENT EUROPE LIMITED SECOND APPLICANT SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD THIRD APPLICANT AND: EDDY STEVENS RESPONDENT JUDGE: SACKVILLE J DATE: 28 SEPTEMBER 2001 PLACE: SYDNEY REASONS FOR JUDGMENT 1 The Australian Competition and Consumer Commission ("ACCC") has applied by notice of motion that it be given leave to appear and to be heard as amicus curiae in these proceedings. 2 The proceedings were commenced by three related companies (the "Sony Companies"). The Sony Companies manufacture and distribute the Sony PlayStation computer game console and computer games for use with the Sony PlayStation console. 3 The Sony Companies allege that the respondent has sold computer games in circumstances which infringe registered trademarks held by the first applicant. It is also alleged that the respondent has engaged in conduct in breach of the Fair Trading Act 1987 (NSW). 4 Of more significance to the ACCC's motion, the Sony Companies allege that the respondent has infringed the second applicant's copyright in a range of computer programs embodied in computer games for use with the Sony PlayStation computer console. The statement of claim alleges that each of the computer games embodying the relevant computer programs is protected by a "technological protection measure", as defined in s 10(1) of the Copyright Act 1967 (Cth) ("Copyright Act"). It is alleged that the computer programs include an access code which is contained within a track on each of the CD Roms on which the computer programs are contained. Each console on which the games are intended to be played features a device which (so it is claimed) is designed in the ordinary course of its operation to inhibit the infringement of copyright in the computer programs. It does this by ensuring that access to the programs is available solely by use of the access code. 5 The Sony Companies allege that the respondent has sold devices having no purpose or use, or only a limited purpose or use, other than the circumvention of the "technological protection measure" incorporated in the computer games. It is further said that the respondent knew, or should reasonably have known, that the devices he sold would be used to circumvent the technological protection measure incorporated in the computer games. The Sony Companies seek relief under s 116A of the Copyright Act. 6 Section 116A of the Copyright Act was introduced into the legislation by the Copyright Amendment (Digital Agenda) Act 2000 (Cth). Section 116A, relevantly, provides as follows: "(1) Subject to subsections (2), (3) and (4), this section applies if (a) a work or other subject-matter is protected by a technological protection measure; and (b) a person does any of the following acts without the permission of the owner or exclusive licensee of the copyright in the work or other subject matter; (i) makes a circumvention device capable of circumventing, or facilitating the circumvention of, the technological protection measure; (ii) sells, lets for hire, or by way of trade offers or exposes for sale or hire or otherwise promotes, advertises, or markets, such a circumvention device; (iii) distributes such a circumvention device for the purpose of trade, or for any other purpose that will affect prejudicially the owner of the copyright; …; and (c) the person knew, or ought reasonably to have known, that the device or service would be used to circumvent, or facilitate the circumvention of, the technological protection measure. …; (5) If this section applies, the owner or exclusive licensee of the copyright may bring an action against the person. (6) In an action under subsection (5), it must be presumed that the defendant knew or ought reasonably to have known, that the circumvention device or service to which the action relates would be used for a purpose referred to in paragraph (1)(c) unless the defendant proves otherwise." 7 The expression "technological protection measure" is defined by s 10(1) of the Copyright Act as follows: "a device or product, or a component incorporated into a process, that is designed, in the ordinary course of its operation, to prevent or inhibit the infringement of copyright in a work or other subject-matter by either or both of the following means: (a) by ensuring that access to the work or other subject matter is available solely by use of an access code or process (including decryption, unscrambling or other transformation of the work or other subject-matter) with the authority of the owner or licensee of the copyright; (b) through a copy control mechanism." "Circumvention device" is defined to mean "a device (including a computer program) having only a limited commercially significant purpose or use, or no such purpose or use, other than the circumvention, or facilitating the circumvention, of an effective technological protection measure." 8 The respondent, thus far, has not been legally represented in the proceedings. He has indicated at directions hearings that he disputes the factual allegations made against him. He has filed what purports to be a document complying with the direction that he file and serve a defence. That document does not, however, make clear what factual allegations he disputes. 9 The ACCC supports its application on the basis that it wishes to make submissions on important questions of construction that arise concerning s 116A of the Copyright Act. The ACCC submits that it can assist the Court both in understanding the nature of the device which the Sony companies allege is being circumvented and in construing s 116A. 10 The Sony Companies object to the ACCC participating in the proceedings as amicus curiae. They argue that: · the Court does not require the assistance of the ACCC to interpret the legislation, since the explanatory memorandum is available and the representatives for the Sony Companies can explain the workings of the relevant device; · it is inappropriate for the Australian Government Solicitor, representing the ACCC, to make submissions to the Court interpreting the new legislation, because it might create the impression that the Commonwealth is dictating to the Court the correct interpretation of the legislation; · an amicus curiae should not appear on the express instructions of a party to the proceedings and in the present case the ACCC has made its application following a written request for assistance by the respondent; · the arguments the ACCC intends to make (which have been foreshadowed) are "entirely skewed in favour of the respondent"; and · the costs, as between the parties, of the ACCC appearing as amicus curiae will be disproportionate. 11 The role of amicus curiae has been recognised in English law at least since the reign of Edward I: K F O'Leary, "The Attorney-General and the Role of amicus curiae" (1980) 54 ALJ 558. It is well-established that this Court, if it is in the interests of justice to do so, may permit an amicus curiae to participate in the proceedings. As was said by the Full Court in United States Tobacco Company v Minister for Consumer Affairs (1988) 20 FCR 520, at 534: "The institution of amicus curiae and the procedures relating thereto are applicable in this Court as a consequence both of its status as a superior court of record and a court of law and equity (Federal Court of Australia Act [1976 (Cth)], s 5(2)) and of its powers to make appropriate orders in relation to matters in which it has jurisdiction: Federal Court of Australia Act, s 23….". 12 The Full Court in US Tobacco v Minister for Consumer Affairs, also distinguished the position of an amicus curiae from that of an intervener (at 534-535): "Although intervention has since been put on a statutory basis and provided for in various rules of court, it appears that intervention first was allowed in jurisdictions derived from ecclesiastical or civil law, such as matrimonial causes, probate and admiralty…. An intervener…becomes a party to the proceedings with the benefits and burdens of that status…. [In Corporation Affairs Commission v Bradley (Commonwealth Intervener) [1974] 1 NSWLR 391, Hutley JA described] the position of an amicus curiae as then understood in Australian law in the following terms: (at 398-399): 'An amicus curiae has been permitted to argue a case: Morelle Ltd v Wakeling [1955] 2 QB 379. The Attorney-General appeared as amicus curiae to argue among other things that a previous decision of the court had been given per incuriam. This is a case where the Crown sought to be made a party, which application was refused. There is no definition in this case of the role of an amicus curiae, but Jowitt's Dictionary of English Law, p 114, defines amicus curiae as follows: "A friend of the Court, that is to say a person, whether a member of the Bar not engaged in the case or any other bystander, who calls the attention of the Court to some decision, whether reported or unreported, or some point of law which would appear to have been overlooked." …A detailed statement of the position of an amicus curiae is set out in the judgment of the Appellate Court of Indiana in Re Perry 148 NE Rep 163 at 165 (1925), where the court said: "Courts undoubtedly have the right to allow an attorney, or other person, to appear as a friend of the court in a case, to act as an adviser of the court, to make suggestions as to matters appearing upon the record, or in matters of practice. An amicus curiae has no rights in the matter. He can file no pleadings or motions of any kind. He can reserve no exception to any ruling of the court, and of course cannot prosecute an appeal. It has been held in this State that an amicus curiae may, on leave, file briefs, argue the case, and introduce evidence." The last sentence is not consistent with the law of this State, and there is no provision for an amicus curiae making any contribution to the record.'" 13 The Full Court pointed out later in its judgment that in England no strict rules have been developed as to the role of an amicus curiae and it is for the Court to accept the assistance of the amicus if it seems proper to do so. The Court continued (at 536): "The general principle is that the parties are entitled to carry on their litigation free from the interference of persons who are strangers to the litigation. But there is an overriding right of the court to see that justice is done. An amicus may be heard if good cause is shown for doing so and if the court thinks it proper. Nothing in these reasons should be understood to delimit or restrict the availability of or effectiveness of this valuable tool." 14 In Bropho v Tickner (1993) 40 FCR 165, at 172-173, Wilcox J observed that an amicus curiae has no entitlement to lead evidence and that the role that he or she may play is a matter entirely within the discretion of the Court. His Honour also observed that in Australia, as distinct from the United States, the involvement of an amicus curiae is relatively rare. The role of the amicus curiae is normally confined to assisting the Court in resolving the issues identified by the parties and in drawing attention to some aspect of the case that otherwise might have been overlooked. His Honour did not dispute that it might sometimes be appropriate to allow an amicus curiae to complete the "evidentiary mosaic" by tendering some non-controversial evidence. He reserved his opinion as to whether this should be permitted to be done over the objection of one or more of the parties. 15 In the present case, so far as it appears on the present state of the pleadings, there are two broad categories of issues. The first concerns the pleaded allegations relating to the conduct of the respondent. To the extent that the respondent denies these allegations, it will be a matter for him, should he wish to do so, to adduce evidence and present arguments. The second set of issues concerns the construction of legislation relied upon by the Sony companies. The ACCC seeks only to be heard on questions of construction (and, incidentally thereto, to the workings of the devices referred to in the pleadings) concerning the operation of s 116A of the Copyright Act. 16 In my opinion, there is a limited and defined role that the ACCC can play in these proceedings that is consistent with the traditional functions of an amicus curiae. It is quite clear that s 116A involves difficult questions of construction that have not been the subject of detailed consideration in this country. These questions may prove to be of general public significance. The ACCC is therefore likely to provide substantial assistance to the Court, of a kind that otherwise might not be available, on legal issues potentially of general importance. While I have no doubt that counsel representing the Sony Companies would act fairly and appropriately in the absence of the ACCC, it is unrealistic to expect the legal representatives for one party, or a group of parties, to canvass fully the arguments that might be raised against its preferred position. 17 It must be emphasised, however, that there is no certainty that the foreshadowed questions of construction of s 116A of the Copyright Act will arise in the proceedings. If, for example, the respondent establishes that he did not act in the manner alleged by the Sony Companies, it will presumably not be necessary to address the operation of s 116A in the present proceedings. Moreover, the nature or scope of the proceedings may change between now and the hearing. In particular, if the respondent chooses to engage his own legal representatives, the issues in the case may alter. Indeed, the Sony Companies may choose to confine the issues. The ACCC, as I understand its position, is prepared to accept the risk that it ultimately may have no useful role to play or, alternatively, may play a more limited role than it presently envisages. 18 I should add that, in conformity with the authorities, the role played by the ACCC as amicus curiae will not extend to adducing evidence except, perhaps, with the consent of the parties. Nor does the ACCC seek to play any role on aspects of the case, other than the construction of s 116A of the Copyright Act. If the ACCC's role is limited in the way I have indicated, I consider that it will be sufficiently confined to satisfy the requirements for an amicus curiae laid down by the authorities: see US Tobacco v Minister for Consumer Affairs, at 539. 19 I do not think that the involvement of the ACCC will disproportionately increase the costs of the proceedings. It may be, as I have indicated, that there will be no occasion for the ACCC to make submissions in relation to s 116A. If it does, I would expect them to be presented economically and not to add substantial time to the hearing. 20 Nor do I see any difficulty about the Australian Government Solicitor representing the ACCC. I think it is somewhat fanciful to suggest that an appearance would be created that the Commonwealth is dictating the appropriate construction of the legislation to the Court. 21 Finally, while the ACCC plainly wishes to press for a construction of the legislation at odds with that favoured by the Sony Companies, I do not think that that is a reason to deny the ACCC's motion. The ACCC will not be representing the respondent and it will play no part in the case other than advancing submissions on the correct construction of s 116A. 22 For these reasons, I propose to permit the ACCC to appear at the final hearing as amicus curiae, subject to the limitations previously outlined in these Reasons for Judgment. The order I make will be subject to any further order of the Court, to take account of the possibility of any changes in the nature or scope of the proceedings. I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sackville. Associate: Dated: 28 September 2001 Counsel for the Applicant: Mr A Bannon SC Solicitor for the Applicant: Allens Arthur Robinson The respondent did not appear Counsel for the ACCC: Mr S White Solicitor for the ACCC: Australian Government Solicitor Date of Hearing: 26 September 2001 Date of Judgment: 28 September 2001