Federal Court of Australia

Take-Two Interactive Software, Inc v Anderson (No 2) [2024] FCA 1459

ORDERS

THE COURT DECLARES THAT:

1.    The Infamous Mod, in the forms that it took during the period from March 2017 to June 2018 (“the Relevant Period”) contained “circumvention devices” within the meaning of s 10(1) of the Copyright Act 1968 (Cth) (“the Act”) for the Real Time Memory Analysis TPMs and the Access Control Check TPMs (“the TPMs”) as defined at [14] of the reasons for judgment of Nicholas J given on 18 December 2024 (“the Reasons”) and as more fully described in the Reasons.

2.    The respondent has engaged in actionable conduct under s 116AO(1) of the Act by doing the following acts in relation to the Infamous Mod in the forms that it took during the Relevant Period:

(a)    manufacturing the Infamous Mod with the intention of providing it to other persons;

(b)    distributing the Infamous Mod to other persons;

(c)    offering the Infamous Mod to the public;

(d)    providing the Infamous Mod to other persons; and

(e)    communicating the Infamous Mod to other persons,

in circumstances where the respondent knew, or ought reasonably to have known, that the Infamous Mod contained circumvention devices for the TPMs.

THE COURT ORDERS THAT:

1.    The respondent be permanently restrained from, whether by himself, his servants, agents or otherwise, manufacturing with the intention of providing to another person, distributing to another person, offering to the public, providing to another person or communicating to another person:

(a)    the Infamous Mod in any form that it took during the Relevant Period; and

(b)    any circumvention device designed to circumvent or facilitate the circumvention of the TPMs.

2.    The originating application be otherwise dismissed.

3.    Until 4.00pm on 28 January 2025 or further order, the Reasons be kept confidential and not be published or disclosed except to:

(a)    the applicants;

(b)    the respondent; and

(c)    the parties’ legal representatives.

4.    The parties’ legal representatives confer for the purpose of agreeing upon any proposed redactions to the Reasons which they consider are reasonably required to protect confidentiality of the TPMs or any other technical measures or information referred to in the Reasons that is confidential to the applicants.

5.    By 4.00pm on 24 January 2025, the parties file a joint memorandum specifying:

(a)    those parts of the Reasons which they agree are or should be treated as confidential; and

(b)    those parts of the Reasons which the respondent does not agree are or should be treated as confidential.

6.    By 4.00pm on 24 January 2025 any party seeking a costs order different from that proposed in [193] of the Reasons give written notice to the opposing party and the Associate to Nicholas J of the costs order it or he seeks.

7.    The proceeding be stood over to 9.30am on 28 January 2025 for the making of further orders in relation to the redaction of confidential material in the Reasons and costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

NICHOLAS J:

INTRODUCTION

1    Before me is an application by Take-Two Interactive Software, Inc (“the first applicant”) for relief in relation to alleged actionable conduct under ss 116AN and 116AO (“the TPM provisions”) of the Copyright Act 1968 (Cth) (“the Act”) by Mr Christopher Anderson, the respondent. The TPM provisions relate to the circumvention of technological protection measures or “TPMs”. This claim is part of a larger claim for relief commenced by the first applicant and Rockstar Games, Inc, parts of which have already been determined: Take-Two Interactive Software, Inc v Anderson [2021] FCA 1024 (“Take-Two (No 1)”).

2    The first applicant is a developer, publisher and marketer of video games. The first applicant owns all rights in the video game series “Grand Theft Auto”, including versions of the video game “Grand Theft Auto V” playable on personal computer (“GTA V PC”). GTA V PC includes both a single player “Story Mode” and a multi-player mode which allows up to 30 players to play together using online gameplay features (“Online Mode”). I will refer to the copyright subsisting in GTA V PC as the “GTA V Works”. The second applicant is a wholly owned subsidiary of the first applicant, and is the developer and marketer of GTA V PC. It is common ground that the second applicant has no standing in relation to the claim under the TPM provisions, it being neither a copyright owner nor an exclusive licensee of the GTA V Works.

3    Mr Anderson (“the respondent”) is a developer of a piece of software known as the “Infamous Mod”. The Infamous Mod, when used by a player of GTA V PC, modifies gameplay and allows that player to execute certain unauthorised actions in GTA V PC. The applicants assert that through his development and distribution of the Infamous Mod, the respondent has circumvented or provided a circumvention device for what the applicants allege are TPMs which protect the GTA V Works.

4    The proceeding was commenced by way of an originating application and statement of claim. In addition to relief sought for conduct actionable under the TPM provisions, the originating application seeks relief for copyright infringement, procuring or inducing breaches of contract and misleading or deceptive conduct. Against the backdrop of the respondent’s repeated non-compliance with Court orders, a self-executing order was entered. The respondent failed to comply with that order, and filed an interlocutory application seeking to have it set aside.

5    After hearing that interlocutory application, on 27 August 2021 I made orders granting the applicants relief in respect of their claims, other than the claims made under the TPM provisions: Take-Two (No 1). Based on the evidence before me at that time, I was satisfied that the respondent had an arguable defence to the claims made against him under the TPM provisions. The proceeding was later set down for trial in relation to those claims and the taking of an account of profits made by the respondent as a result of his infringement of the first applicant’s copyright. Since then, the parties have agreed that the quantum of the account of profits is $130,000.00 and I have made orders giving effect to that agreement.

6    The remaining issues for determination are therefore:

(1)    whether the respondent has engaged in actionable conduct under s 116AN(1) of the Act;

(2)    whether the respondent has engaged in actionable conduct under s 116AO(1) of the Act; and

(3)    if the respondent has engaged in actionable conduct under either or both sections, what remedies should be granted under s 116AQ of the Act.

7    According to the applicants’ statement of claim:

(a)    the respondent has developed, distributed, sold and offered for sale the Infamous Mod in circumstances where his conduct resulted in the circumvention of the applicants’ TPMs, and he knew or ought reasonably to have known that his conduct would have that result. That conduct is alleged to be actionable under s 116AN of the Act; and

(b)    the respondent has manufactured the Infamous Mod with the intention of providing it to other persons, distributed it to other persons, offered it to the public, provided it to other persons, and communicated it to other persons, in circumstances where he knew or ought reasonably to have known that it contained a circumvention device for one or more of the applicants’ TPMs. That conduct is alleged to be actionable under s 116AO of the Act.

8    The first applicant has confined its claim under the TPM provisions to the respondent’s conduct in the period March 2017 to June 2018 (“the Relevant Period”). The former date is based on the implementation and alleged circumvention of a certain TPM (i.e., the Online Mode Transition Check), while the latter is the date that the respondent informed the court that he stopped updating the Infamous Mod, although the Infamous Mod ceased to be offered publicly through the Infamous website in around March 2018. After that point in time, the respondent told the Court that he continued to update the Infamous Mod for the benefit of a handful of his friends.

9    The first applicant did not plead or argue that the respondent should be found liable under ss 116AN or 116AO as a joint tortfeasor on the basis that he either procured or aided and abetted any other person’s actionable conduct.

GTA V PC

10    GTA V PC can be acquired as a DVD-ROM or as a digital download. In both cases, the player will need to install, execute and activate their copy of GTA V PC. A player who does so must agree to an end user license agreement (“EULA”) and terms of service (“TOS”).

11    After a player agrees to the EULA and the TOS, the installation software causes GTA V PC files to be copied onto the computer’s hard disk. Those files include the GTA V PC executable program (“GTA V Executable”) which contains executable instructions to run GTA V PC on the player’s computer, and libraries of other game files such as graphics, models, objects and sound effects (“GTA V Library Files”).

12    To play GTA V PC, the player must click on the GTA V Executable shortcut. Doing so results in a substantial part of the GTA V Executable being reproduced in the computer’s random-access memory (“RAM”). That part of the GTA V Executable that is reproduced in the player’s RAM is the code necessary for that part of the game currently being played (“GTA V Core”), and the GTA V Library Files necessary for gameplay. Code that relates to parts of the game not currently being played will remain in the hard disk memory of the player’s computer, until required. The computer’s RAM holds copies of the GTA V Core and necessary GTA V Library Files until the player exits GTA V PC.

13    To play in Online Mode, in addition to those processes described above, the player must connect to the second applicant’s online servers to verify their entitlement to play the game, confirm that their copy of the game has not been tampered with and verify the player data that the account should reflect.

14    In their written submissions, the applicants identify the following measures which they assert to be TPMs:

(1)    Real Time Memory Analysis TPMs (“RTMA TPMs”): These are measures which continually check the RAM of a player’s computer for foreign code, and report detected foreign code to the second applicant’s servers. The game can also be “crashed” if foreign code is detected;

(2)    Access Control Check TPMs (“ACC TPMs”): These are measures which restrict access to Online Mode, by prohibiting the player from transitioning from Story Mode to Online Mode when certain conditions are met. These measures also prevent the use of certain functions used in Story Mode while a player is in Online Mode. If it is found that a player is attempting to utilise a prohibited function in Online Mode, a report is submitted to the second applicant’s servers resulting in automatic suspension or banning; and

(3)    Encryption and obfuscation measures (“Encryption and Obfuscation TPMs”): These are measures which the applicants allege protected GTA V PC object code and which the respondent circumvented in order to “understand the measures and develop code” for the Infamous Mod.

THE INFAMOUS MOD

15    The Infamous Mod is software that modifies the operation of GTA V PC on the user’s computer and on the computers of other players who have joined a multiplayer game with that user in Online Mode. It provides the user with advantages as against other players by allowing the user to perform several unauthorised actions, including (according to the applicants’ evidence) “teleportation”, creating copies of game objects such as vehicles and “cash bags” of “virtual currency”, creating “superpowers” which cause that player to become “invincible” and granting or removing access to weapons and ammunition.

16    The Infamous Mod is downloaded by a player from the Infamous website and is stored on the computer’s hard disk. According to the applicants’ evidence, when the player wishes to use the Infamous Mod, they will double click the “Infamous Executable”, which will cause both the GTA V Executable and Infamous Executable to be executed on their computer. The GTA V Executable will run according to those processes described above, but now, components of the Infamous Executable will be copied into RAM, in spaces that have been allocated to the GTA V Core and GTA V Library Files necessary for gameplay. In order to access features of the Infamous Mod, the player presses the F4 key on their keyboard to bring up a menu. When the player selects a feature, this causes the Infamous Executable to “patch” or “hook” additional instructions to the GTA V Core and GTA V Library Files. The GTA V Core and GTA V Library Files with the patches and hooks introduced by the Infamous Mod are reproductions in RAM of the GTA V PC files stored in the hard disk. The files are largely the same, except for those patches and hooks.

CONDUCT OF THE PROCEEDING

17    Although the applicants filed affidavit evidence in this proceeding from numerous witnesses, only one of those witnesses (Mr Andrews) gave oral evidence. The respondent also made several affidavits and gave oral evidence, including in a concurrent session with Mr Andrews.

Mr David Andrews

18    Mr Andrews is the second applicant’s Game Security Operations Lead. He holds a Bachelor of Science in Information Technology Management from National University, California. Prior to working for the second applicant, he worked in a number of information technology roles. As Game Security Operations Lead, Mr Andrews is responsible for monitoring video game cheating activity, analysing how cheating software works and developing cheat detection and anti-cheat methods, tools and systems.

19    Mr Andrews made six affidavits and was cross-examined. His evidence primarily concerned the operation of GTA V PC including the TPMs relied upon by the applicants, and how those measures are circumvented by the Infamous Mod.

Mr Christopher Anderson

20    In 2020, the respondent obtained an Associate Degree in Information Technology from the Royal Melbourne Institute of Technology. He previously completed one year of a Bachelor of Science majoring in Computer Science in 1994. From 1995 to 2008, he worked in a number of information technology roles, including in the finance, telecommunications, consumer goods and logistics fields. According to his evidence, he became involved with “a group of individuals intending to re-release a product known as Infamous” in 2017.

21    The respondent appeared without legal representation on the first two days of the trial but was represented by Mr Christian Dimitriadis SC, instructed by Marque Lawyers, during closing submissions. The respondent relied on three affidavits each made by him. He was cross-examined.

Submission Tables

22    In the schedule to their closing submissions, the applicants have provided a table setting out the findings they seek and supportive evidence. The respondent has provided a corresponding table either accepting or disputing those findings, referring in some cases to contrary evidence.

23    I have had regard to these tables and have treated their contents as submissions. While the respondent has occasionally pointed to evidence given by him, he has disputed many findings sought by the applicants without pointing to evidence to justify his position. His references to his own oral and written evidence are infrequent. In those circumstances, I have treated the respondent’s bare assertions of a dispute as merely indicating that he puts the applicants to proof with respect to the matter the subject of the applicants’ proposed finding.

THE TPM PROVISIONS

24    The relevant text of the TPM provisions is set out below:

116AN    Circumventing an access control technological protection measure

(1)    An owner or exclusive licensee of the copyright in a work or other subject-matter may bring an action against a person if:

(a)    the work or other subject-matter is protected by an access control technological protection measure; and

(b)    the person does an act that results in the circumvention of the access control technological protection measure; and

(c)    the person knows, or ought reasonably to know, that the act would have that result.

…

116AO    Manufacturing etc. a circumvention device for a technological protection measure

(1)    An owner or exclusive licensee of the copyright in a work or other subject‑matter may bring an action against a person if:

(a)    the person does any of the following acts with a device:

(i)    manufactures it with the intention of providing it to another person;

(ii)    imports it into Australia with the intention of providing it to another person;

(iii)    distributes it to another person;

(iv)    offers it to the public;

(v)    provides it to another person;

(vi)    communicates it to another person; and

(b)    the person knows, or ought reasonably to know, that the device is a circumvention device for a technological protection measure; and

(c)    the work or other subject-matter is protected by the technological protection measure.

…

25    Section 10 of the Act contains the following definitions:

access control technological protection measure means a device, product, technology or component (including a computer program) that:

(a)    is used in Australia or a qualifying country:

(i)    by, with the permission of, or on behalf of, the owner or the exclusive licensee of the copyright in a work or other subject-matter; and

(ii)    in connection with the exercise of the copyright; and

(b)    in the normal course of its operation, controls access to the work or other subject-matter;

…

…

circumvention device for a technological protection measure means a device, component or product (including a computer program) that:

(a)    is promoted, advertised or marketed as having the purpose or use of circumventing the technological protection measure; or

(b)    has only a limited commercially significant purpose or use, or no such purpose or use, other than the circumvention of the technological protection measure; or

(c)    is primarily or solely designed or produced to enable or facilitate the circumvention of the technological protection measure.

…

…

controls access: a device, product, technology or component (including a computer program) controls access to a work or other subject-matter if it requires the application of information or a process, with the permission of the owner or exclusive licensee of the copyright in the work or other subject-matter, to gain access to the work or other subject-matter.

…

technological protection measure means:

(a)    an access control technological protection measure; or

(b)    a device, product, technology or component (including a computer program) that:

(i)    is used in Australia or a qualifying country by, with the permission of, or on behalf of, the owner or the exclusive licensee of the copyright in a work or other subject-matter; and

(ii)    in the normal course of its operation, prevents, inhibits or restricts the doing of an act comprised in the copyright;

…

…

26    The term “computer program” where used in the above definitions (aside from “controls access”) has the same meaning as in section 47AB, namely:

computer program includes any literary work that is:

(a)    incorporated in, or associated with, a computer program; and

(b)    essential to the effective operation of a function of that computer program.

Otherwise, that term is defined in s 10(1) as follows:

computer program means a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

27    Other provisions of the Act relevant to the operation of the TPM provisions include the definition of “material form” in s 10(1):

material form, in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced).

28    Another provision directly relevant to the construction of the TPM provisions is s 13:

13    Acts comprised in copyright

(1)    A reference in this Act to an act comprised in the copyright in a work or other subject-matter shall be read as a reference to any act that, under this Act, the owner of the copyright has the exclusive right to do.

(2)    For the purposes of this Act, the exclusive right to do an act in relation to a work, an adaptation of a work or any other subject-matter includes the exclusive right to authorize a person to do that act in relation to that work, adaptation or other subject-matter.

LEGISLATIVE BACKGROUND

29    The TPM provisions incorporate significant amendments made to Part V, Div 2A of the Act by the Copyright Amendment Act 2006 (Cth) (“the 2006 Amendment Act”). The Explanatory Memorandum to the Copyright Amendment Bill 2006 (Cth) (“the Explanatory Memorandum”) indicates that these changes were made to comply with Australia’s obligations under the Australia-United States Free Trade Agreement (“AUSFTA”) concerning technological protection measures. Prior to these changes, the provisions dealing with circumvention of TPMs included s 116A which was considered by the High Court in Stevens v Kabushiki Kaisha Sony (2005) 224 CLR 193 (“Stevens”). The 2006 Amendment Act repealed s 116A and substantially modified the definition of “technological protection measure”.

30    Part V, Div 2A (ss 116A-116D) of the Act in the form considered by the High Court in Stevens was inserted by the Copyright Amendment (Digital Agenda) Act 2000 (Cth) to comply with, inter alia, Australia’s obligations under Article 11 of the WIPO Copyright Treaty (“WCT”). It is also important to note that Stevens was concerned with the Act in the form it took before the definition of “material form” in s 10(1) was amended by the US Free Trade Agreement Implementation Act 2004 (Cth) (“the 2004 Amendment Act”). Following the 2004 Amendment Act, the material form of a work includes (inter alia) any form of storage of a work, regardless of whether the work can be reproduced from it.

31    Article 11 of WCT provides:

Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law.

As the plurality (Gleeson CJ, Gummow, Hayne and Heydon JJ) observed in Stevens at [13], Art 11 of the WCT is expressed in broad terms leaving considerable scope to individual states to decide how it should be implemented.

32    AUSFTA came into force on 1 January 2005. Chapter 17 of AUSFTA requires that, at a minimum, each party give effect to its provisions (which concern intellectual property rights), although a party may provide for more extensive protection than required. Chapter 17 includes Art 17.4.7, which relevantly provides:

7    (a)    In order to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that authors, performers, and producers of phonograms use in connection with the exercise of their rights and that restrict unauthorised acts in respect of their works, performances, and phonograms, each Party shall provide that any person who:

(i)    knowingly, or having reasonable grounds to know, circumvents without authority any effective technological measure that controls access to a protected work, performance, or phonogram, or other subject matter; or

(ii)    manufactures, imports, distributes, offers to the public, provides, or otherwise traffics in devices, products, or components, or offers to the public, or provides services that:

(A)    are promoted, advertised, or marketed for the purpose of circumvention of any effective technological measure;

(B)    have only a limited commercially significant purpose or use other than to circumvent any effective technological measure; or

(C)    are primarily designed, produced, or performed for the purpose of enabling or facilitating the circumvention of any effective technological measure,

    shall be liable and subject to the remedies specified in Article 17.11.13 …

    (b)    Effective technological measure means any technology, device, or component that, in the normal course of its operation, controls access to a protected work, performance, phonogram, or other protected subject matter, or protects any copyright.

33    In their written submissions, the applicants drew attention to the following statements in the Attorney-General’s Second Reading Speech to the Copyright Amendment Bill 2006 (Cth) (“the Bill”):

In our online world, copyright owners are facing an increasing battle to protect their copyright material and develop business models.

Technological protection measures, or TPMs as they are referred to, such as technical locks, passwords or encryption, are an essential tool for the protection of copyright material, especially in the online environment. They provide an effective means for copyright owners to protect their material against the threat of piracy.

The bill provides for more effective TPM protection to encourage distribution of copyright material online and increase the availability of music, film and games in digital form.

This, in turn, will foster the development of new business models and provide enhanced choice for consumers.

THE STATUTORY TEST

Section 116AN

34    Subpara (a) of s 116AN of the Act requires that the GTA V Works must be protected by an “access control technological protection measure” (“ACTPM”) as that term is defined in s 10(1). As to subpara (b), the person against whom the action is brought (i.e. the respondent) must do an act that results in the circumvention of that ACTPM. As to subpara (c), the respondent must have done that act in circumstances where he knew or ought reasonably to have known that his act or acts would have the result of circumventing the ACTPM.

35    In construing s 116AN, the phrase “protected by an access control technological protection measure” requires that the measure be one that, inter alia, “in the normal course of its operation, controls access to the work or other subject-matter”: sub-para (b) of the ACTPM definition. The definition of “controls access” in s 10(1) provides that a measure is one which controls access if it requires “the application of information or a process … to gain access to the work or other subject-matter”.

36    The respondent submits that the phrases “protected by”, “controls access to the work” and “gain access to the work” as used in these provisions should all be given work to do. He further submits that the access which is controlled by an ACTPM must be access to the work that would enable an act comprised in the copyright in the work to be done. This was said by him to be consistent with the requirement in the definition of “access control technological protection measure” that the measure be used “in connection with the exercise of the copyright” and with the exceptions in s 116AN(3)-(6), (8) and (9), which direct attention to particular circumstances in which a measure is circumvented so as to enable a person to perform such acts (including for encryption research and computer security testing). He submits that this reflects the emphasis in Stevens at [43] on the importance of construing the word “access” as being directed to access to a work for the purpose of committing an act of infringement in relation to that work. This construction, according to the respondent, also gives effect to the need to avoid an excessively broad construction which would extend the copyright monopoly, rather than match it. When considering the meaning of the definition of “technological protection measure”, as it stood before its amendment, the plurality in Stevens said at [47]:

… in construing a definition which focuses on a device designed to prevent or inhibit the infringement of copyright, it is important to avoid an overbroad construction which would extend the copyright monopoly rather than match it. A defect in the construction rejected by Sackville J is that its effect is to extend the copyright monopoly by including within the definition not only technological protection measures which stop the infringement of copyright, but also devices which prevent the carrying out of conduct which does not infringe copyright and is not otherwise unlawful. One example of that conduct is playing in Australia a program lawfully acquired in the United States. It was common ground in the courts below and in argument in this Court that this act would not of itself have been an infringement.

(Footnote omitted)

37    The applicants submit that the concept of “gain access” embraces both initial access and continuing access. They submit that an ACTPM can prevent initial access, or terminate continuing access: MDY Industries, LLC v Blizzard Entertainment, Inc., 629 F.3d 928 (9th Cir, 2010) (“Blizzard”) at 943 per Judge Callahan, giving the opinion of the Court stating “in our view, an access control measure can both (1) attempt to block initial access and (2) revoke access if a secondary check determines that access was unauthorized.”

38    The applicants submit that the respondent’s acts include developing and distributing the Infamous Mod in circumstances where he knew or ought reasonably to have known that it would be installed and used to circumvent those measures relied on by the applicants which they assert to be ACTPMs.

39    The respondent submits that s 116AN is directed to the acts of a person who circumvents an ACTPM, rather than acts that may be described as the manufacture or distribution of a circumvention device (s 116AO) or the provision of a circumvention service (s 116AP). He submits that acts which merely facilitate or enable others to circumvent an ACTPM, or which might be characterised as being an “indirect” cause of such circumvention, are not captured by s 116AN. The respondent says that if the asserted ACTPMs have in fact been circumvented through use of the Infamous Mod, these measures have been circumvented as a result of the acts of the GTA V PC players who deployed the Infamous Mod, rather than his acts. He submits that this is consistent with the exceptions contained in s 116AN(3)-(6), (8) and (9), which refer to an ACTPM being circumvented so as to enable a person to do acts of certain kinds.

Section 116AO

40    Section 116AO applies to a person who (inter alia) manufactures or distributes a device that they know or ought reasonably to know is a circumvention device for a TPM. Although s 116AO does not explicitly require that the device be a circumvention device for a TPM, in my opinion this is implicit in the knowledge requirement, which necessarily assumes that the relevant device is a circumvention device for a TPM.

41    The definition of “circumvention device” for a TPM covers a device, component or product (including a computer program) that (inter alia) has a limited commercially significant use other than circumventing that TPM, or is primarily or solely designed to enable or facilitate the circumvention of that TPM. As defined in s 10(1), a TPM means either an ACTPM (the meaning of which is considered above) or a device, product, technology or component, including a computer program (collectively and where appropriate, a “device (etc.)”), of the type specified in para (b) of the definition of TPM. The relevant part of para (b) of the definition of TPM is set out above at [25]. Most relevant for the present purposes is subpara (ii) of para (b), which requires that the device (etc.) “in the normal course of its operation, prevents, inhibits or restricts the doing of an act comprised in the copyright”.

42    The applicants submit that the broad language of the current definition of TPM should be given full effect. They distinguish the statutory regime considered in Stevens on the basis of the narrower language used in that definition, and also in the definition of “material form”, both of which were central to the finding in Stevens that the “mod chip” supplied and installed by Mr Stevens was not a circumvention device.

43    Again, the respondent submits that the words of subpara (ii) of para (b) of the definition of TPM “should be given work to do”. He refers to Stevens at [38]-[47], where the plurality held that the words “prevents” and “inhibits” in the definition of TPM in its previous form required the erection of some technical or mechanical barrier to accessing or copying of the work, without which a person would be in a position to infringe. The respondent submits that the word “restricts” in the current definition should be given a similar construction.

44    In Stevens at [38] the plurality approved the interpretation of the previous definition of TPM adopted by the trial judge, Sackville J, in Kabushiki Kaisha Sony Computer Entertainment v Stevens (2002) 200 ALR 55 at [115]. The construction adopted by his Honour as approved by the plurality was as follows:

“a ‘technological protection measure’, as defined, must be a device or product which utilises technological means to deny a person access to a copyright work [or other subject matter], or which limits a person’s capacity to make copies of a work [or other subject matter] to which access has been gained, and thereby ‘physically’ prevents or inhibits the person from undertaking acts which, if carried out, would or might infringe copyright in the work [or other subject matter].”

45    The plurality said at [39]:

It is important to understand that the reference to the undertaking of acts which, if carried out, would or might infringe, is consistent with the fundamental notion that copyright comprises the exclusive right to do any one or more of “acts” primarily identified in ss 31 and 85-88 of the Act. The definition of “technological protection measure” proceeds on the footing that, but for the operation of the device or product or component incorporated into a process, there would be no technological or mechanical barrier to “access” the copyright material or to make copies of the work after “access” has been gained. The term “access” as used in the definition is not further explained in the legislation. It may be taken to identify placement of the addressee in a position where, but for the “technological protection measure”, the addressee would be in a position to infringe.

The respondent also relies on the majority’s reasons in Stevens at [47] set out at [36] above distinguishing between acts that amount to copyright infringement and acts that do not infringe copyright and are otherwise lawful.

CONSIDERATION

Principles of statutory construction

46    There was no dispute between the parties as to the principles of statutory construction. In the first place, the task of statutory construction must begin and end with the text of the statute. As the High Court stated in Federal Commissioner of Taxation v Consolidated Media Holdings Ltd (2012) 250 CLR 503 at [39]:

“This Court has stated on many occasions that the task of statutory construction must begin with a consideration of the [statutory] text”. So must the task of statutory construction end. The statutory text must be considered in its context. That context includes legislative history and extrinsic materials. Understanding context has utility if, and in so far as, it assists in fixing the meaning of the statutory text. Legislative history and extrinsic materials cannot displace the meaning of the statutory text. Nor is their examination an end in itself.

(Footnote omitted)

47    Context includes the immediate and broader context in which the relevant provision appears in the statute, the purpose of the provision or statute in which it appears (including as expressed in any objects clause) and any extrinsic material capable of assisting in the ascertainment of the meaning of the provision: Singh v Commonwealth (2004) 222 CLR 322 at [20] per Gleeson CJ, Stevens at [124] per McHugh J. The purpose of a statute or any particular provision must be ascertained from its text and structure assisted where appropriate by extrinsic materials. As French CJ and Hayne J observed in Certain Lloyd's Underwriters Subscribing to Contract No IH00AAQS v Cross (2012) 248 CLR 378 at [25]:

Determination of the purpose of a statute or of particular provisions in a statute may be based upon an express statement of purpose in the statute itself, inference from its text and structure and, where appropriate, reference to extrinsic materials. The purpose of a statute resides in its text and structure. Determination of a statutory purpose neither permits nor requires some search for what those who promoted or passed the legislation may have had in mind when it was enacted. It is important in this respect, as in others, to recognise that to speak of legislative “intention” is to use a metaphor. Use of that metaphor must not mislead. “[T]he duty of a court is to give the words of a statutory provision the meaning that the legislature is taken to have intended them to have” [Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 at 384 [78]] (emphasis added). And as the plurality went on to say in Project Blue Sky:

“Ordinarily, that meaning (the legal meaning) will correspond with the grammatical meaning of the provision. But not always. The context of the words, the consequences of a literal or grammatical construction, the purpose of the statute or the canons of construction may require the words of a legislative provision to be read in a way that does not correspond with the literal or grammatical meaning.”

…

The search for legal meaning involves application of the processes of statutory construction. The identification of statutory purpose and legislative intention is the product of those processes, not the discovery of some subjective purpose or intention.

(Some footnotes omitted)

Their Honours went on to refer to the dangers of a court identifying the purpose of a legislative provision based on a priori assumption about its purpose or a judge’s view of the preferable outcome in a particular case.

48    Sometimes it may not be possible to discern any legislative purpose that is sufficiently specific to assist in the ascertaining the meaning of a statutory provision: Stevens at [124]-[129] per McHugh J. In the present case the extrinsic materials to which I have referred were of limited assistance in resolving the questions of statutory construction that arise.

Section 116AN

49    Putting aside the respondent’s knowledge, there are three questions to be considered in the context of s 116AN that raise particular questions of statutory construction. The first is whether each of the TPMs is a device (etc.) used “in connection with the exercise of the copyright” in the GTA V Works, as required by the subpara (a)(ii) of the definition of the ACTPM. The second is whether each of the TPMs is a measure that “controls access” to the work or other subject matter, according to the definition of “controls access” also included in s 10(1) of the Act. The third question concerns the scope of the phrase “does an act that results in” the circumvention of the ACTPM as required by s 116AN(1)(b).

50    This case is concerned with a total of seven different measures. Each measure must be evaluated to determine whether its use is sufficiently connected to the exercise of the copyright in the GTA V Works and whether access is gained to those works by the application of information or a process with the permission of the owner or exclusive licensee of the copyright in the GTA V Works.

“in connection with the exercise of copyright”

51    The Commonwealth House of Representatives Standing Committee on Legal and Constitutional Affairs conducted a review of “technological protection measures exceptions”. Its report dated February 2006 included the following recommendation at [2.61]:

… that, in the legislation implementing Article 17.4.7 of the Australia-United States Free Trade Agreement, the definition of technological protection measure/effective technological measure clearly require a direct link between access control and copyright protection.

52    However, the Copyright Amendment Bill 2006 (“the Bill”) as introduced into the House of Representatives did not include any such express requirement. The definition of ACTPM instead referred to a device used “in connection with the exercise of copyright”.

53    The Bill was examined by the Senate Standing Committee on Legal and Constitutional Affairs which recommended (at [3.140] of its report published in November 2006) that the definition of ACTPM in the Bill be amended by replacing “in connection with the exercise of copyright” with “prevents, inhibits or restricts the doing of an act comprised in copyright”. The proposed amendment was not adopted.

54    While the words “in connection with” are of wide import, the nature and extent of the connection to which they refer will depend on the context in which they are used and the purpose of the relevant provisions of the statute in which they appear. In Minister for Immigration and Multicultural Affairs v Singh (2000) 98 FCR 469 (“Singh”), Black CJ, Sundberg, Katz and Hely JJ said at [28]-[29]:

[28]    The case law on the phrase “in connection with” indicates that it is an expression of wide connotation that merely requires a relation between one thing and another: for example, Perrett v Commissioner for Superannuation (1991) 29 FCR 581; Burswood Management Ltd v Attorney-General (Cth) (1990) 23 FCR 144; Collector of Customs v Pozzolanic Enterprises Pty Ltd (1993) 43 FCR 280. But in Burswood at 146 the Full Court quoted with approval a statement made by Davies J as follows:

    “Expressions such as ‘relating to’, ‘in relation to’, ‘in connection with’ and ‘in respect of’ are commonly found in legislation but invariably raise problems of statutory interpretation. They are terms which fluctuate in operation from statute to statute ... The terms may have a very wide operation but they do not usually carry the widest possible ambit, for they are subject to the context in which they are used, to the words with which they are associated and to the object or purpose of the statutory provision in which they appear.”

[29]    The phrase “in connection with” does not necessarily require a causal relationship between the matters said to be connected: Perrett, and phrases such as “having to do with” are sometimes referred to as a useful synonym: Re Nanaimo Community Hotel Ltd v British Columbia [1944] 4 DLR 638. But so too are phrases such as “in the course of”, or “forming part of”: Dawson v Hoffman Brick & Potteries Ltd [1924] VLR 208. As the Full Court emphasised in Burswood at 146 reference to reported cases is of little assistance, because the nature of the relationship between one thing and another which is encompassed by the phrase “in connection with” depends so much upon the statutory context in which the words appear.

55    The statement by Davies J quoted with approval by the Full Court in Singh is from Hatfield v Health Insurance Commission (1987) 15 FCR 487 at 491 and has been approved numerous times. It is apparent from that statement that it will seldom be appropriate to give the words “in connection with” the widest meaning they will bear. The context in which they are used, including the purpose of the statutory provision in which they appear, may require that they be given a broad meaning that encompasses both direct and indirect connections. However, the context in which the words are used may show that the relevant connection must be quite close: see, for example, R v Orcher (1999) 48 NSWLR 273 at [27]-[42] per Spigelman CJ (with whom Grove and Sully JJ agreed).

56    The general context in which the words “in connection with” are used concerns technological protection measures used to protect copyright material, particularly in the online environment. The more immediate context includes the words “exercise of the copyright” and “the work or other subject-matter”. The reference to “exercise of copyright” should be understood as referring to the exercise of the exclusive rights enjoyed by the owner of copyright in the relevant work or other subject matter. This is confirmed by the Explanatory Memorandum to the Bill which states at p 202:

in connection with the exercise of the copyright

12.6    Sub-paragraph (a)(ii) of the definition requires a measure to have been applied in circumstances where the copyright owner or exclusive licensee is exercising an exclusive rights [sic]. The term ‘connection’ is used to reflect the need for this link. Eg the link would be established when a measure is applied to a work by a copyright owner where they are communicating the work to the public or where a copyright owner is making copies of other subject-matter.

12.7    The fact that a measure is applied to a work or other subject-matter in which copyright subsists would not be sufficient, in and of itself, to establish the link. The use of the measure must be connected to the exercise of an exclusive right by the owner of the copyright in that work or other subject-matter.

57    The measure must have something to do with the copyright owner’s exercise of their exclusive rights. The fact that the measure is used in connection with the relevant work or other subject matter is not in itself enough. The Explanatory Memorandum confirms that it is not sufficient that a measure is applied to a work or other subject matter. There must be a link between the measure and the exercise of the copyright owner’s exclusive rights.

58    Paragraph 12.6 of the Explanatory Memorandum is poorly expressed. However, the suggestion sought to be conveyed is that a measure controlling access to a work which the copyright owner communicates to the public may be a measure that is used in connection with the exercise of the copyright in the work. That would seem to suggest that a measure that blocks access to a copyright work (e.g. an electronic copy of a book or newspaper article) may be capable of satisfying the definition of ACTPM merely because the work was being made available to the public online. On that view, there need be no direct link between the measure and any act of infringement or threatened act of infringement by the user whose access to the relevant work is blocked. That position is consistent with the Government’s rejection of the recommendations made by the Standing Committees proposing statutory language which either explicitly or implicitly required that there be a direct link between the measure and the doing of an act comprised in the copyright.

59    Rather than seeking to ascertain the outer boundaries of the situations in which the words “in connection with” may be satisfied, the preferable approach is to go no further than is necessary to determine whether the facts of any particular case demonstrate the necessary connection between the use of the measure and the exercise of the copyright in the relevant work or other subject matter: R v Khazaal (2012) 246 CLR 601 at [31] per French CJ. This approach has the advantage of minimising the risk of adopting an interpretation of the statute that might otherwise produce unintended consequences in an area involving new and potentially complex technologies.

60    It is in my opinion sufficient for the purpose of deciding this case to say that a measure will be used in connection with the exercise of the copyright in the GTA V Works if it restricts access to the GTA V Works where allowing unrestricted access may result in an act that is within the scope of the applicants’ exclusive rights. In this case, that will include the act of reproducing the GTA V Works, or a substantial part of any such work, in a material form (including by reproduction in RAM).

“to gain access to a work or other subject matter”

61    The second issue concerns the proper construction of s 116AN(1)(a) in light of the reference to “controls access” in the definition of ACTPM. The language of the definition of “controls access” requires that the measure be one that requires the application of information or a process to gain access to a work or other subject matter.

62    As previously mentioned, the applicants relied on the decision of the United States District Court of Appeals for the Ninth Circuit in Blizzard in support of their submission that “controls access” extends not merely to the control of initial access, but also to the control of continuing access. Blizzard was concerned with (inter alia) § 1201(a)(1)(A) of the Digital Millenium Copyright Act of 1998 (17 USC § 1201) (“DMCA”) which was described (at 942) as “a general prohibition against ‘circumventing a technological measure that effectively controls access to a work protected under [the Copyright Act]’”. The Ninth Circuit applied that provision (at 943) to the circumvention of a technological measure that prevented continuing access. A TPM is said to effectively control access to a work, according to § 1201(a)(3)(B) of the DMCA, if it “in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work”.

63    Notwithstanding the similarities between the definitions of “effectively controls access” within the DMCA and “controls access” within the Act, I agree with the respondent’s submission that the words “gain access to the work” in the definition of “controls access” must be given work to do. If a measure is to come within the definition of “controls access”, the application of the information or process must occur as a step along the way to the giving of access. It is the application of the information or the process that must result in the giving of access. The definition is not apt to describe a measure that does not give access, but merely terminates or withdraws access previously given to a work. However, a measure may perform a dual function by both terminating access to the whole or some part of the work and by preventing the user from regaining access previously terminated. Whether the measure performs the latter function will depend on the evidence and, in particular, whether those two functions are performed by the same measure or different measures.

“does an act that results in the circumvention”

64    Section 116AN requires that the person against whom an action is brought has done an act that results in the circumvention of the ACTPM. That language directs attention to the particular act that achieves that result (i.e. the act of circumvention). The exceptions to s 116AN(1) reinforce that view. Each of the exceptions in s 116AN(3)-(6),(8) and (9) apply to a person who circumvents an ACTPM in order to do some other act within the scope of the relevant exception.

65    As previously mentioned, the applicants contend that the same acts that are said to render the respondent liable under s 116AN (i.e. supply and distribution of the Infamous Mod) also render him liable under s 116AO. One difficulty with the applicants’ approach is that a person who manufacturers and distributes a circumvention device might be outside the scope of s 116AO(1) if one or more of the relevant exceptions in s 116AO(2)-(5) apply, but fall within the scope of s 116AN(1) if none of the exceptions in s 116N(3)-(6),(8) or (9) apply because that person did not use the device to circumvent the ACTPM (a requirement of each such exception). On the applicants’ construction, the respondent would be exposed to liability under s 116AN even if the person to whom he supplied the Infamous Mod, who used it to circumvent the ACTPM, did so within an exception to s 116AN(1) because the respondent would not himself be the person who circumvented the ACTPM.

66    When construing s 116AN it is necessary to have regard to the presence of s 116AO which is specifically directed to situations in which a person (inter alia) manufactures or distributes a device which they know or ought reasonably to know is a circumvention device for a TPM (which includes an ACTPM) and to s 116AP as it applies to the provision of a “circumvention service”. These provisions would have little (if any) work to do if the applicants’ construction of s 116AN is correct.

67    Sections 116AN, 116AO and 116AP should be given a construction that gives each of those provisions work to do and which enables them to be read together to form a harmonious legislative scheme: Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 at [69]-[71] citing (inter alia) Ross v The Queen (1979) 141 CLR 432 at 440 per Gibbs J. That involves construing s 116AN as the provision aimed at an act of circumvention and ss 116AO and 116AP as provisions aimed at anterior steps which enable an act of circumvention to be performed including the manufacture or distribution of a circumvention device or the provision of a circumvention service.

68    For those reasons I do not think that the applicants’ broad construction of the phrase “does an act that results in the circumvention” should be accepted. If the respondent is liable for the manufacture and distribution of a circumvention device then that liability will arise under s 116AO rather than s 116AN of the Act.

Section 116AO

69    Unlike s 116AN, s 116AO is concerned not only with ACTPMs but also with a device (etc.) that “in the normal course of its operation, prevents, inhibits or restricts the doing of an act comprised in the copyright”. The applicants have referred to these measures as type (b) TPMs, and I will do the same.

“prevents, inhibits or restricts the doing of an act comprised in the copyright”

70    The words “prevents, inhibits or restricts” in para (b) of the current definition of TPM are words of wide import, wider than the language used in the previous definition of TPM which did not use the word “restricts”. More significant, however, is the reference to a device (etc.) that prevents, inhibits or restricts “the doing of an act comprised in the copyright”. The explicit reference to devices (etc.) that “prevent or inhibit the infringement of copyright” in the former definition of TPM is missing from the new definition.

71    The phrase “an act comprised in the copyright” is defined in s 13(1) of the Act. It directs attention to those sections in the Act that specify the copyright owner’s exclusive right to do various acts which, in the case of a work, includes the right to reproduce the work in material form and the right to communicate the work to the public: see sub-s 31(1)(a)(i) and (iv) of the Act. Section 31 does not distinguish between acts of reproduction that infringe and acts of reproduction that do not infringe.

72    The licence of the owner of the copyright is referred to in, and made relevant by, s 36 and other provisions in Pt III, Div 2 of the Act, which provide (inter alia) that copyright in the work is infringed when a person, without the licence of the copyright owner, does in Australia or authorises the doing in Australia, of an act comprised in the copyright. Hence, under para (b) of the definition of TPM, the act that is prevented, hindered or restricted, need not be one that may amount to an infringement of copyright, as it may also be an act done with the licence of the copyright owner. On this construction, it is not necessary to show that the prevented, hindered or restricted act would, if performed, be unlicensed or a breach of licence. It is enough for the copyright owner to show that the relevant device circumvented a measure preventing, hindering or restricting the carrying out of (inter alia) any act of reproduction.

73    For those reasons, I do not accept the respondent’s construction of para (b) of the definition of TPM. More specifically, I do not accept that para (b) is concerned only with measures that prevent, hinder or restrict acts that would, if performed, infringe copyright.

THE APPLICANTS’ PROTECTION MEASURES

74    The applicants allege that each of the seven TPMs they rely upon is either an ACTPM, or both an ACTPM and a type (b) TPM. An overview of the measures is set out in [14] above.

RTMA TPMs

75    The first type of TPM on which the Applicants rely are rules that are part of the GTA V Executable that monitor the player’s RAM and detect code that should not be there (i.e., foreign code), in this case, because an unauthorised mod is being run. The technology is known as “Real Time Memory Analysis” (“RTMA”). The RTMA TPMs comprise the Report & Suspend/Ban RTMA TPM and Crash RTMA TPMs, although at times in evidence these two kinds of TPMs were addressed together.

76    In certain circumstances, the detection of foreign code will trigger the copy of GTA V PC on the user’s computer to crash (in the case of the Crash RTMA TPMs), or a Telemetry report to be sent to the second applicant’s servers which can result in the suspension or banning of the player (in the case of the Report & Suspend/Ban RTMA TPMs). Telemetry in this case refers to a process by which the GTA V Executable running on the player’s machine formulates a message to be sent to the second applicant’s servers.

77    For example, the memory analysis (which detects the foreign code) can be done via [REDACTED].

78    During oral opening submissions (at a time when he was not legally represented), the respondent admitted that the RTMA TPMs were ACTPMs. In their closing submissions the applicants relied on that admission. Whether or not each of the RTMA TPMs “controls access” to the GTA V Works (and is therefore an ACTPM) involves a question of law that turns on (inter alia) the meaning of the definition of that phrase in the context of the relevant statutory scheme: Hope v Bathurst City Council (1980) 144 CLR 1. I do not give the respondent’s admission (or any other of his admissions of a similar kind) weight except insofar as it relates to the way in which both the Infamous Mod and the RTMA TPMs operate from a technical perspective.

Report & Suspend/Ban RTMA TPM

79    The Report & Suspend/Ban RTMA TPM monitors for and detects the presence of foreign code that should not be in memory (RAM) allocated to GTA V PC. If foreign code is detected it will send a report to the second applicant’s servers which will trigger a ban or suspension. The effect of any ban or suspension implemented as a consequence of the detected presence of foreign code is that the user’s ability to play GTA V PC in Online Mode will cease.

80    The process for reporting and suspension is fully automated, by which I mean that it takes effect without any human intervention [REDACTED]. Mr Andrews gave evidence that the automation of this process occurs once [REDACTED] have been analysed, after which [REDACTED] are put into place to deal with certain instances of detection.

81    [REDACTED] The evidence indicated that, in response to the detection of the Infamous Mod, an automatic process was implemented leading to suspension of the player.

82    There was a dispute between the parties as to whether the RTMA TPMs could be properly characterised as implementing the suspension, banning or (in the case of the Crash RTMA TPMs) crashing the user’s computer. The evidence given by Mr Andrews and the applicants’ characterisation of the RTMA TPMs indicates that each of the RTMA TPMs do not comprise only the memory analysis and reporting, but also the consequent crashing, suspending or banning, which they have described as “fully automated”. In their written submissions, the applicants have also argued that the Report/Suspend & Ban RTMA TPM “controls access” because, once the player is suspended or banned, a process must be applied (being a check to confirm whether the player is not suspended or banned) in order for the player to regain access to Online Mode and, consequently, the parts of the GTA V Works required for use in Online Mode.

83    In his closing written submissions, the respondent argues that the banning, suspension or crashing is “a step removed from the RTMA TPMs” and that the RTMA TPMs ought properly to be characterised as “reporting or analysis tools”. He also disputes that the process for suspension and banning is automated, relying on the fact that certain “rules” must be put in place prior to bans or suspensions occurring automatically.

Is the Report & Suspend/Ban RTMA TPM an ACTPM?

84    The respondent accepts that the Report & Suspend/ Ban RTMA TPM is a “component” of a larger computer program, which is used within Australia by or on behalf of the first applicant. Whether or not the Report & Suspend/ Ban RTMA TPM can properly be characterised as an ACTPM will depend on whether the measure is used in connection with the exercise of the copyright and whether, in the normal course of its operation, it controls access to the work or other subject matter.

85    The Report & Suspend/Ban RTMA TPM is a measure which, [REDACTED], automatically bans or suspends a player in response the detection of the foreign code. The fact that human intervention is required to interpret [REDACTED] is immaterial. [REDACTED], the Report & Suspend/Ban RTMA TPM automatically bans or suspends the user upon detection of code introduced by, in this case, the Infamous Mod. It is a measure that is directed at preventing or discouraging users of GTA V PC from reproducing the GTA V Works in RAM or some part thereof in a modified form which changes the functionality available to a player when GTA V PC is run in Online Mode. In my opinion the Report & Suspend/Ban RTMA TPM is a measure used in connection with the exercise of the copyright.

86    The next question is whether the Report & Suspend/Ban RTMA TPM is a measure which controls access to the GTA V Works. That will depend on whether it requires the application of information or a process to “gain access”.

87    The applicants in their evidence and submissions generally characterised the Report & Suspend/Ban RTMA TPM as a measure that suspends or bans a player following the detection of foreign code. Although in their closing submissions the applicants sought to characterise the measure as one which included checks later made to determine whether or not a user should be granted access following the imposition of a suspension or ban, that characterisation conflated evidence given by Mr Andrews in relation to two different measures (or groups of measures). In their written submissions, the part of Confidential Exhibit DA-9 which the applicants cite in support of that characterisation relates to Mr Andrews’ description of a series of checks which operate together with the Online Mode Transition Check, rather than the Report & Suspend/Ban RTMA TPM. The Report & Suspend/Ban RTMA TPM is one that terminates access rather than grants access. Accordingly, the Report & Suspend/Ban RTMA TPM is not an ACTPM.

Is the Report & Suspend/Ban RTMA TPM a type (b) TPM?

88    The next question is whether the Report & Suspend/Ban RTMA TPM is type (b) TPM. As stated above, the respondent agrees that the Report & Suspend/Ban RTMA TPM is a “component” of a larger computer program, which is used within Australia by or on behalf of the first applicant. The issue is whether the measure, in the normal course of its operation “prevents, inhibits or restricts the doing of an act comprised in the copyright”.

89    When a player is suspended or banned, they are no longer able to reproduce in RAM those parts of the GTA V Works necessary to play Online Mode. The Report & Suspend/Ban RTMA TPM therefore prevents, inhibits or restricts the doing of an act comprised in the copyright (being the reproduction of certain parts of the work). Accordingly, I find that the Report & Suspend/Ban RTMA TPM is a type (b) TPM.

Crash RTMA TPMs

90    Like the Report & Suspend/Ban RTMA TPM, the Crash RTMA TPMs monitor for and detect the presence of foreign code that should not be in RAM. When a Crash RTMA TPM is activated, the game stops working and closes.

91    Generally, the Crash RTMA TPMs will be activated when the player is using cheat software which circumvents, or attempts to circumvent, GTA V PC’s ability to detect that software. GTA V PC does this by [REDACTED]. The evidence is that the Crash RTMA TPMs were not directed at the Infamous Mod.

Are the Crash RTMA TPMs ACTPMs?

92    The respondent accepts that the Crash RTMA TPMs are used in Australia by or on behalf of the first applicant, and that the Crash RTMA TPMs are technological processes. The Crash RTMA TPMs are a form of technology and like the Report & Suspend/ Ban RTMA TPM, components of a computer program.

93    The remaining questions are whether the Crash RTMA TPMs are used in connection with the exercise of the copyright in the GTA V Works and whether, in the ordinary course of their operation, the measures control access to the GTA V Works. As to the first of those questions, for the same reasons given in relation to the Report & Suspend/ Ban RTMA TPM, the Crash RTMA TPMs are used in connection with the exercise of the copyright. I accept the applicants’ characterisation of the Crash RTMA TPMs as including the detection of foreign code and consequent automatic crashing, contrary to the respondent’s contention that the crashing is “a step removed”. The effect of the automated crashing of the player’s GTA V PC program is that the player ceases being able to reproduce the GTA V Works in RAM.

94    As to the second question, the applicants submit that the Crash RTMA TPMs control access to the GTA V works because they require that foreign code is not detected through a checking process in order for the player to have continued access to the GTA V Works. As the respondent has pointed out, the Crash RTMA TPMs do not prevent a player from gaining access to the GTA V Works at all. For that reason, the Crash RTMA TPMs cannot be said to control access to the GTA V Works and are therefore not ACTPMs.

Are the Crash RTMA TPMs type (b) TPMs?

95    The Crash RTMA TPMs are a technology or component used in Australia by or on behalf of the first applicant to prevent a player from reproducing the GTA V Works in RAM once a crash has occurred. The measure is one that in the normal course of its operation “prevents, inhibits or restricts the doing of an act comprised in the copyright”. It follows that the Crash RTMA TPMs are type (b) TPMs.

ACC TPMs

96    The ACC TPMs comprise three subcategories of TPMs which respond to a player’s attempts to utilise functionality reserved for Story Mode while in Online Mode. Mr Andrews gave evidence that these measures are designed to ensure that players in Online Mode do not gain an unfair advantage over other players by accessing functionality not available to other players in Online Mode.

Online Mode Transition Check

97    The Online Mode Transition Check is a process that checks for “prohibited factors” when a player attempts to transition from Story Mode to Online Mode. If a prohibited factor is detected, a warning screen is displayed and the player is refused access to Online Mode and, in the applicants’ submission, prevented from reproducing in RAM the part of the GTA V Works associated with Online Mode.

98    Specifically, the Online Mode Transition Check checks for [REDACTED] module. If the check finds [REDACTED] module, the transition from Story to Online Mode is cancelled.

Is the Online Mode Transition Check an ACTPM or type (b) TPM?

99    The respondent accepts that the Online Mode Transition Check is a computer program, or a component of a computer program (the GTA V Executable), used in Australia by or on behalf of the first applicant. The respondent also accepts that when a player attempts to transition from Story Mode to Online Mode, the Online Mode Transition Check will block the player from transitioning if the measure finds [REDACTED] module.

100    In his closing written submissions, the respondent contended that the ACC TPMs are “reporting tools which conduct particular checks and send a report to the Applicants’ servers”. However, he accepts that the Online Mode Transition Check will stop a player from transitioning from Story Mode to Online Mode. It follows that the Online Mode Transition Check has functionality beyond checking for the [REDACTED] module.

101    The respondent disputes that the Online Mode Transition Check is a measure used in connection with the exercise of copyright, and one which controls access to the GTA V Works. As recorded above, he submits that the Online Mode Transition Check merely stops a player from transitioning to Online Mode from Story Mode. However, by preventing this transition, the Online Mode Transition Check also prevents the player from reproducing those parts of the GTA V Works used to play Online Mode in RAM.

102    The Online Mode Transition Check also requires the application of a process (a check for the [REDACTED] module) in order for the player to gain access (in the sense of being able to use by reproducing in RAM) those parts of the GTA V Works which are necessary for use in Online Mode. I am satisfied the Online Mode Transition Check is an ACTPM.

103    I am also satisfied that the Online Mode Transition Check will prevent, inhibit or restrict a player from reproducing parts of the GTA V Works in RAM. It follows that the Online Mode Transition Check prevents, inhibits or restricts the player from doing an act comprised in the copyright. I find that the Online Mode Transition Check is also a type (b) TPM.

Offline Function Check

104    Several functions within GTA V PC are restricted to Story Mode, and cannot be performed in Online Mode. These “Story Mode Items” include, for example, [REDACTED]. The Offline Function Check prevents a player from creating a Story Mode Item where it is determined that the player is in Online Mode.

105    The applicants described the Offline Function Check as comprising several checks, each attached to different Story Mode Items. In my opinion, the Offline Function Check is better characterised as one check, which operates in respect of various Story Mode Items which are identified in what Mr Andrews referred to as a “blacklist”.

106    According to Mr Andrews’ evidence, the Offline Function Check checks to see if the player is in Online Mode when the player attempts to create a Story Mode item by [REDACTED].

107    If the Offline Function Check determines that the player is attempting to create a Story Mode Item while in Online Mode, the program will display a warning message to the user, deny specific object creation conditions related to the request and stop the script from running. Mr Andrews explained that the Infamous Mod allows for the user to call for these Story Mode Items and use them in Online Mode, by interfering with the operation of the Offline Function Check.

108    Mr Andrews explained that when a player transitions from Story Mode to Online Mode, Story Mode Items are terminated and deleted from RAM. The respondent disputes Mr Andrews’ evidence on this topic, which he says is contradicted by other evidence given by Mr Andrews. The contradictory evidence was not identified by the respondent, and a reading of Mr Andrews’ evidence at the transcript reference cited by the respondent (T170.39-47) does not disclose any inconsistency. Mr Andrews’ description of the Story Mode Items as being “restrict[ed]” to particular sets of circumstances within the game does not indicate that the those items are not terminated and deleted from RAM. That is a reference to the intention behind the implementation of the Offline Function Check, rather than any separate technical process.

Is the Offline Function Check an ACTPM or a type (b) TPM?

109    The applicants submit that the Offline Function Check is an ACTPM and a type (b) TPM because, when operational, it prevents the player from reproducing in RAM those parts of the GTA V Works associated with the Story Mode Items (“Story Mode Works”). They submit that the Offline Function Check controls access to the Story Mode Works, because a process must be applied (a check, to determine if the player is attempting to create a Story Mode Item while in Online Mode) in order to gain access to those works.

110    The respondent does not accept that the Offline Function Check is a computer program or component of a computer program, used in Australia, by or on behalf of the first applicant. He says that he does not know whether the Offline Function Check can be described as such because the applicants have not provided a list of the checks which comprise the Offline Function Check, and the relevant Story Mode Items to which those checks attach. He also says that in respect of the few examples given, he has not been provided with the relevant source code. The applicants have referred to several examples of such Story Mode Items, including [REDACTED], although the respondent disputes that such checks exist in relation to the last three of these Story Mode Items.

111    I accept, as the respondent says, that the applicants have not provided a comprehensive list of every check comprised in the Offline Function Check, if each Story Mode Item is taken to have its own check. However, as stated above, the better view is that there is one Offline Function Check that operates in respect of several Story Mode Items. I infer, based on the evidence of Mr Andrews, that the Offline Function Check operates in the same manner in respect of each of these Story Mode Items. I am satisfied that the Offline Function Check is a component of a computer program, or a technology.

112    Mr Andrews’ evidence establishes that the Offline Function Check prevents the player from reproducing in RAM the Story Mode Works. In the ordinary course of its operation, the Offline Function Check will terminate a request to create a Story Mode Item while the player is in Online Mode. That involves preventing the reproduction of the Story Mode Works in RAM.

113    Accordingly, I am satisfied that the Offline Function Check is used in connection with the exercise of copyright. I am also satisfied that it prevents, inhibits or restricts the doing of an act (the reproduction of the Story Mode Works in RAM) comprised in the copyright, and is a type (b) TPM as a result.

114    The respondent submitted that the Offline Function Check cannot be an ACTPM, because it does not control the gaining of access to the Story Mode Works. He submitted that “the player can always [gain access to the Story Mode Works] in offline Story Mode, despite the [Offline Function Check]”.

115    It is correct that the player is able to exit Online Mode and regain access to the Story Mode Works. However, when the player enters Online Mode, their access to the Story Mode Works is terminated. Once in Online Mode, the Offline Function Check will deny the player the ability to regain that access. While the player remains in Online Mode, they are deprived of that access. Accordingly, I am satisfied that the Offline Function Check requires the application of a process (i.e., a check to determine whether the player is in Online Mode when trying to create a Story Mode Item) in order to gain access to the Story Mode Works. I find that the Offline Function Check is also an ACTPM.

Offline Function Check Reporting

116    When a player attempts to create a Story Mode Item in Online Mode, the Offline Function Check also submits a report to the second applicant’s servers. The applicants referred to this functionality as the “Offline Function Check Reporting”. In the same way as the Report & Suspend/Ban RTMA TPM, such a report can result in a suspension or ban. That suspension or ban means that the player can no longer access Online Mode.

117    Much of the evidence about automation of suspension or banning following a report was given in relation to the Report & Suspend/ Ban RTMA TPM, but I understand that the evidence Mr Andrews gave concerning steps taken following receipt of a report also applies in relation to the Offline Function Check Reporting. Mr Andrews also gave evidence in relation to the Offline Function Check Reporting that the second applicant can implement [REDACTED] that automate the suspension or banning of a player if [REDACTED]. That similarity in operation means that much of what has been said in relation to the Report & Suspend/ Ban RTMA TPM will apply in relation to the Offline Function Check Reporting.

Is the Offline Function Check Reporting an ACTPM or a type (b) TPM?

118    The respondent disputes that the Offline Function Check Reporting measure is a computer program or a component of a computer program, used in Australia by or on behalf of the first applicant in Australia. His response to each of these assertions by the applicants is that he “does not know”. I am satisfied that the Offline Function Check Reporting is a computer program or component of a computer program, or a technology that is used by or on behalf of the first applicant in Australia.

119    The applicants submit that the Offline Function Check Reporting is used in connection with the exercise of copyright, and also prevents, inhibits or restricts the doing of an act comprised in the copyright, because once a player is suspended or banned they can no longer reproduce in RAM those parts of the GTA V Works associated with Online Mode. As set out above, the respondent submits that the ACC TPMs, including the Offline Function Check Reporting, only have the purpose of conducting particular checks and sending reports, and do not prevent the player from reproducing any of the GTA V Works in RAM.

120    I find that the Offline Function Check Reporting is a measure that prevents, inhibits or restricts the doing of an act comprised in the copyright, because the automatic suspension or banning of the player means that they will be unable to enter Online Mode and thereafter reproduce the associated GTA V Works in RAM. Accordingly, I find that the Offline Function Check Reporting is a type (b) TPM. It follows that I also find that the Offline Function Check Reporting is a measure which is used in connection with the exercise of copyright.

121    The next question is whether the Offline Function Check Reporting controls access to those parts of the GTA V Works associated with Online Mode. The applicants submit that the Offline Function Check Reporting controls access because it requires the application of a process, being a check to confirm that the player is not suspended or banned, in order for the player to gain access to the GTA V Works associated with Online Mode.

122    The respondent submits that the Offline Function Check Reporting does not contain a check to confirm whether the player is not suspended or banned. I accept that submission.

123    The applicants’ submission here suffers from the same problem as its submission concerning the Report and Suspend/Ban RTMA TPM. It incorrectly conflates one mechanism (the reporting and automated suspension/ banning of the player) with another (the check which prevents the player from accessing Online Mode once suspended or banned). In support of their submission, the applicants have again relied on evidence from Mr Andrews about a process which is separate from the Offline Function Check Reporting, but instead relates to a series of checks which operate in conjunction with the Online Mode Transition Check. The Offline Function Check Reporting itself does not control access. I find that the Offline Function Check Reporting is not an ACTPM.

Encryption and Obfuscation TPMs

124    The Encryption and Obfuscation TPMs (separately, the “Encryption TPM” and the “Obfuscation TPM”) are techniques used by the applicants to encrypt and obfuscate various sensitive parts of the GTA V Executable in the hard disk and RAM of the player’s computer. These TPMs are implemented using a software known [REDACTED].

125    Encryption refers to securing information from unauthorised processes. [REDACTED].

126    Obfuscation refers to hiding information. The primary obfuscation method the applicants referred to was “hashing”, wherein a string of information is transformed using a mathematical operation into a “hashed” form.

127    Mr Andrews explained that obfuscation makes information harder to read, while encryption is a process of hiding data so that it cannot be read unless you have “a key or a way to reverse that procedure and get access to the original raw data”. He described obfuscation as a measure which “raises the bar a little bit in terms of individuals having access to functionality”.

128    When GTA V PC is played, the GTA V Works necessary to facilitate that gameplay are reproduced in RAM and partially decrypted, but remain obfuscated, creating what the applicants referred to as an “Obfuscated RAM Copy” of the GTA V Works.

129    The applicants did not press a claim under s 116AO of the Act with reference to either the Encryption or Obfuscation TPMs. It is only necessary to determine whether each is an ACTPM for the purposes of considering the applicants’ claim under s 116AN.

Are the Encryption and Obfuscation TPMs ACTPMs?

130    The respondent accepts that the Encryption TPM is a device, product or technology used by or on behalf of the first applicant in Australia. The respondent disputes that the Obfuscation TPM is a device, product, technology or computer program, but does not explain why. I am satisfied that the Obfuscation TPM is a technology for the purposes of s 116AN. The respondent accepts that the Obfuscation TPM was used in Australia by or on behalf of the first applicant.

131    The applicants submit that the Encryption and Obfuscation TPMs are used in connection with the exercise of copyright, because the measures play a role in preventing unauthorised reproduction of the GTA V Works and, in particular, the source code of GTA V PC. As Mr Andrews said “[w]e’re not storing plain text files, you know, on a hard disc and we are taking measures to make it difficult for people to read in running memory what’s going on …”.

132    The respondent accepts that the Encryption TPM is used in connection with the exercise of copyright in GTA V Works, but disputes that the Obfuscation TPM is used this way. The respondent also submits that where obfuscation involves the use of hashes instead of names, or hashes to represent code, it cannot be considered an ACTPM as it does not obfuscate material that is capable of copyright protection, “only the names or representations of such material”. Material capable of being protected by copyright was identified as including the sub-routine, function, code and art.

133    The evidence in relation to how the Obfuscation TPM operates, and whether the process of “hashing” has any effect on those components of the GTA V Works capable of copyright protection, was less than clear. However, putting that aside, it is apparent that the Obfuscation TPM is used in connection with the exercise of copyright. The purpose of “taking measures to make it difficult for people to read in running memory” must be, at least in a large part, to prevent unauthorised modifications or reproductions of the GTA V Works or parts thereof. I am satisfied that the Obfuscation TPM is used in connection with the exercise of copyright.

134    The next question is whether each of the Encryption and Obfuscation TPMs control access to the GTA V Works. The respondent has argued that the Encryption TPM does not control access, because decryption takes place automatically (without the use of a key or secret piece of information) when GTA V PC is loaded into a player’s RAM for gameplay. The respondent relies on Blizzard, in support of his submission that if a work is available in some form, without the need for any key or special secret piece of information to access it, then it cannot be said to have been protected by the relevant TPM.

135    The relevant measure in Blizzard, known as “Warden”, blocked a player from connecting to the online servers for the game World of Warcraft (“WoW”) if unauthorised third party software was detected. Warden also periodically checked code running in a player’s RAM when connected to the online servers in order to remove the player from the game if a pattern of code associated with a known bot or cheat was detected. As a result of that removal, the player’s computer would halt the copying of the relevant works into RAM. However, a player could still access certain elements of the WoW game without interference from Warden, because those elements were readily available on the player’s hard drive without connection to the server. Judge Callahan concluded (at 953) that because Warden “leaves open the ability to access these elements directly via the user’s computer” it was not an “effective access control measure” in respect of those particular elements.

136    Judge Callahan (at 952-953) quoted Judge Sutton, giving the opinion of the Sixth Circuit in Lexmark International, Inc. v Static Control Components 387 F.3d 522 (6th Cir, 2004) (“Lexmark”) at 547:

Just as one would not say that a lock on the back door of a house ‘‘controls access’’ to a house whose front door does not contain a lock and just as one would not say that a lock on any door of a house ‘‘controls access’’ to the house after its purchaser receives the key to the lock, it does not make sense to say that this provision of the DMCA applies to otherwise-readily-accessible copyrighted works. Add to this the fact that the DMCA not only requires the technological measure to ‘‘control[] access’’ but also requires the measure to control that access ‘‘effectively,’’ 17 U.S.C. § 1201(a)(2), and it seems clear that this provision does not naturally extend to a technological measure that restricts one form of access but leaves another route wide open.

137    I accept that the situation here is similar, if not analogous, to that in Blizzard. But as is clear from Lexmark, the word “effectively” plays a role in the interpretation of § 1201(a)(1)(A) of the DMCA. The word “effectively” and the reasoning of the Sixth Circuit implies that where a measure leaves open the ability for a user to exploit a vulnerability or a gap in the software, it cannot be said to be technological measure that effectively controls access for the purposes of § 1201(a)(1)(A).

138     I do not agree that the meaning of “controls access” should be confined in the same way as “effectively controls access” in Blizzard. In my opinion, a measure can still be one that controls access, if it operates in a way that requires the application of information or a process to gain access to the works in a particular situation (e.g., when the works are stored in the hard disk) or a particular circumstance (e.g., when the player is utilising certain functionality).

139    Here, the GTA V Works are not intended to be available unless the player decrypts [REDACTED] by playing GTA V PC and consequently loading the relevant code into RAM. Mr Andrews’ oral evidence indicates that [REDACTED]. Encryption controls access to the relevant portions of the GTA V Works so that those portions remain accessible only in those limited circumstances. I am satisfied that the Encryption TPM is an ACTPM.

140    Whether the works have been accessed in those limited circumstances for the purposes of developing the Infamous Mod is a question relevant to whether the respondent has circumvented the Encryption TPM.

141    As to the Obfuscation TPM, the applicants argue that in order to gain access to the de-obfuscated form of the works, an individual would have to de-obfuscate the Obfuscated RAM Copy. They say that only persons to whom the applicants have made the hashing algorithm available would be able to perform this de-obfuscation.

142    The respondent disputes this, on the basis that despite obfuscation, GTA V PC can be run and will operate normally on a person’s computer, without any de-obfuscation being applied. He says that the applicants do not possess a “de-obfuscation device” that can reverse the effect of obfuscation. He submits that “obfuscation involves making something harder to understand…The fact that some effort may be required in order to understand a work does not mean that the measure prevents a person from ‘gaining access’ to it as required by the Act”.

143    In response to the respondent’s suggestion that for a programmer “or someone experienced in assembly language”, reading obfuscated code was “no harder than for a regular person to read a court judgment or precedents” Mr Andrews said:

I might generally agree that, yes, you know, to somebody who has that expertise of being able to read, you know, assembly language, machine language, however you want to term that, it is, you know, relatively easy, but you do have to have that expertise. So not just anyone, to his point, could open up running memory and see exactly what’s going on. So, in that way, I think it does qualify as a [protection] measure.

144    While it might be the case that the Obfuscation TPM could qualify as a type (b) TPM, Mr Andrews’ concession that the obfuscated code in RAM could effectively be read by a person such as the respondent, without some algorithm or key from the applicants, distinguishes obfuscation from encryption. The Obfuscation TPM obscures the relevant work by making it more difficult to interpret, but does not render it inaccessible without the application of a process or information. Accordingly, I find that the Obfuscation TPM is not an ACTPM.

SECTION 116AN

145    I have previously explained why the respondent’s acts of manufacture and distribution are not caught by the phrase “an act that results in the circumvention of” the ACTPMs. The case against the respondent based on s 116AN of the Act as alleged to apply to the RTMA TPMs and ACC TPMs must therefore fail. The Encryption and Obfuscation TPMs raise different considerations. In the case of both these measures the applicants say that the respondent performed acts that directly resulted in the circumvention of each of those measures.

146    Having found that the Obfuscation TPM is not an ACTPM, it is only necessary to deal with the applicants’ claim under s 116AN in relation to the Encryption TPM.

Encryption

147    The applicants say that in developing the Infamous Mod, the respondent must have reverse engineered GTA V PC. According to the applicants, the typical steps involved in such reverse engineering include decrypting GTA V PC ([REDACTED]), viewing or “dumping” the contents in RAM, decompiling and de-obfuscating. The applicants say that the evidence establishes that the respondent “played GTA V PC, and thereby partially decrypted the GTA V Works”, used software to make “infringing copies” of the GTA V Works as they appeared in RAM, and undertook steps to de-obfuscate and decompile those copies.

148    The respondent’s submission is two-fold. First, he asserts that he was not responsible for decrypting the code relating to GTA V PC. Second, he relies on the fact that the code for GTA V PC [REDACTED] decrypts, as outlined above, and it was that [REDACTED] decrypted code which was used to develop the Infamous Mod. Use of this [REDACTED] decrypted code did not, according to the respondent, involve any circumvention of a TPM.

149    Putting aside the first part of the respondent’s submission, I am not persuaded that by playing GTA V PC and causing the GTA V Works to appear in their decrypted form in RAM, the respondent has done an act resulting in the circumvention the Encryption TPM. When the GTA V Works are decrypted in RAM, they are no longer protected by the Encryption TPM. One cannot be said to have circumvented protection that is removed as the result of an intended and necessary function of GTA V PC.

150    Mr Andrews’ evidence makes it apparent that the reverse engineering process which the first applicant alleges occurred was limited to reverse engineering the functionality of the relevant software “as it pertains to the obfuscation of certain elements…in [RAM]”. He explained:

So taken as a whole, we – you know, we're talking about running the game in order to decrypt it and then reverse engineering our – our obfuscation measures. Both of those things, you know, utilise the same sort of software.

151    In their written submissions in reply, the applicants draw attention to the fact that the decrypted GTA V Works exist in the form of object code (machine readable) rather than source code (human readable), and that the relevant works should be taken to be embodied in the de-obfuscated source code. However, the fact that the respondent may have decompiled the object code into source code does not bear on the question whether he had to circumvent the Encryption TPM to do so. The applicants have made no separate legal complaint in relation to the respondent’s decompiling of the object code.

152    The applicants also submit that the GTA V Works are only partially decrypted in RAM. Mr Andrews explained in his written evidence:

One reason developers of unauthorised mods such as Infamous use GTA V code in [RAM] to develop their mods is because some code in the running memory of a computer cannot be encrypted. On the other hand, [REDACTED].

(Emphasis original)

153    There is no evidence that the respondent would have to decrypt those particular parts of the GTA V Works that remain encrypted [REDACTED], should Mr Andrews’ evidence about this point be accurate. The applicants did not provide detail regarding those parts of the GTA V Works that remain encrypted, and whether they would have to be decrypted in order for him to manufacture the Infamous Mod. I am not persuaded that the respondent has circumvented the Encryption TPM.

154    I find that the applicants’ claim under s 116AN in relation to the Encryption TPM must fail.

Reverse engineering

155    The applicants also submit that, had the applicant not “reverse engineered” GTA V PC, he would not have been able to circumvent the other measures relied upon in this proceeding. They submit that the steps the respondent took to reverse engineer GTA V PC were “acts that resulted in the circumvention of the other TPMs (RTMA TPMs and ACC TPMs)”.

156    This submission must fail, for the same reasons that the applicants’ submissions in relation to s 116AN and the respondent’s acts of manufacturing and distributing the Infamous Mod fail. The respondent’s reverse engineering of GTA V PC is an anterior step to any circumvention of the RTMA and ACC TPMs. Liability does not arise under s 116AN for such a step.

SECTION 116AO

157    Having concluded that each of the RTMA and ACC TPMs is properly described as a TPM, it is necessary to consider whether the other requirements of s 116AO have been made out. There is no real dispute that the respondent has manufactured and distributed the Infamous Mod. A declaration that the respondent distributed, sold and offered it for sale has already been made in this proceeding: Take-Two (No 1). He accepted in cross examination that he was the senior developer of the Infamous Mod. The requirement under s 116AO(a) is met in respect of the device known as the Infamous Mod. Alternatively, if the Infamous Mod embodies multiple circumvention devices, that requirement is also met in respect of each of those device.

158    The remaining questions that arise under s 116AO are whether the GTA V Works are protected by the RTMA and ACC TPMs (s 116AO(c)), and whether the respondent knew or ought reasonably to have known that the Infamous Mod was a circumvention device, or contained circumvention devices for those TPMs (s 116AO(b)).

159    As to the first question, I find that the GTA V Works are protected by the RTMA and ACC TPMs for the same reason each of those TPMs is considered to be a type (b) TPM, namely that it prevents, inhibits or restricts the doing of an act comprised in the copyright in the GTA V Works. I am therefore satisfied that the requirement under s 116AO(1)(c) is met.

160    As to the second question, implicit in the knowledge requirement is knowledge that the device is in fact a circumvention device for a TPM in the first place. The definition of “circumvention device” is set out at [25] above. A device will meet that definition if it is promoted as having the purpose or use of circumventing a TPM, has a limited commercially significant purpose or use other than the circumvention of a TPM (or no such other purpose or use), or has been primarily or solely designed or produced to enable or facilitate the circumvention of a TPM.

161    The applicants have characterised the Infamous Mod as a circumvention device which operates to circumvent multiple TPMs. In the alternative, they have characterised the Infamous Mod as containing several circumvention devices. Those devices are said to be the code contained in the Infamous Mod that:

(1)    causes the RTMA TPMs to stop checking for foreign code (“RTMA Circumvention Code 1”);

(2)    prevents the reports generated by the Report & Suspend/ Ban RTMA TPM from being sent to the second applicant’s servers [REDACTED] (“RTMA Circumvention Code 2”);

(3)    protects against game crashes circumventing the crashing effect of the Crash RTMA TPMs (“RTMA Circumvention Code 3”);

(4)    allows a user to circumvent the Online Mode Transition Check (“ACC Circumvention Code 1”);

(5)    stops the Offline Function Check from working normally (“ACC Circumvention Code 2”); and

(6)    causes the reporting mechanism of the Offline Function Check Reporting [REDACTED] rather than being sent to the second applicant’s servers (“ACC Circumvention Code 3”),

collectively, the “Circumvention Codes”.

162    Some of these Circumvention Codes operate as circumvention devices in respect of multiple TPMs (e.g., RTMA Circumvention Code 1, which is alleged to interfere with the functionality of both RTMA TPMs). The reference to TPM in the definition of circumvention device should be interpreted as extending to one or more TPMs: s 23(a), Acts Interpretation Act 1901 (Cth). That is to say, the definition covers a device or component that is designed to circumvent multiple TPMs.

163    Some of the Circumvention Codes operate in conjunction with each other to circumvent one of the applicants’ TPMs (e.g., RTMA Circumvention Codes 1 and 2 which together are asserted by the applicants to disable the Report & Suspend/Ban RTMA TPM). A device which operates in conjunction with other devices to achieve circumvention may still qualify as a circumvention device, under any of the three limbs of the definition in the Act. The fact that a device has to operate in conjunction with another to achieve circumvention does not affect whether that device has been promoted, advertised or marketed as having a particular purpose. A device can still be said to have a limited commercially significant use other than circumvention of a TPM, where its use is in conjunction with other components to achieve that circumvention. And in relation to the design and production of a device, a device may still be said to “enable or facilitate” the circumvention of a TPM where it must operate in conjunction with other devices to do so.

164    As to the respondent’s knowledge, as I have set out above, the respondent has accepted that he was the “senior developer” of the Infamous Mod. One inference I draw from that concession is that he was fully acquainted with the design and operation of the Infamous Mod and the way in which it “got around” the various TPMs against which it was deployed. I am satisfied that the respondent knew that the Infamous Mod and each of its relevant components would be put to use by persons to whom the Infamous Mod was supplied as a circumvention device in respect of the RTMA and ACC TPMs. I find that the knowledge requirement under s 116AO(1)(b) is satisfied.

RTMA Circumvention Codes

165    The applicants submit that RTMA Circumvention Codes 1 – 3 are circumvention devices for the RTMA TPMs. The applicants have dealt with each of these components together as the “RTMA Circumvention Codes”, but given their differing functionality, it is necessary to distinguish between the components. RTMA Circumvention Code 1 is said to have interfered with the ability of the RTMA TPMs to check and monitor for foreign code. Specifically, RTMA Circumvention Code 1 is said to have used “[REDACTED], which causes the RTMA TPMs to stop checking”. That proposition is accepted by the respondent. The respondent also accepts that RTMA Circumvention Code 2 had the effect of preventing the Report & Suspend/Ban RTMA TPM from sending reports to the second applicant’s servers [REDACTED].

166    The respondent does not accept the Infamous Mod contains RTMA Circumvention Code 3, which is said by the applicants to have circumvented the crashing effect of the Crash RTMA TPMs. He contends the functionality to cause a crash following detection of foreign code was not deployed against the Infamous Mod, so any memory edits caused by the Infamous Mod would not have resulted in any change in the operation of the Crash RTMA TPMs. The difficulty with this contention is that the respondent accepts that RTMA Circumvention Code 1 prevented the RTMA TPMs from checking for the presence of foreign code. Checking for the presence of foreign code is, as I understand it, a necessary component of both the RTMA TPMs. From this I infer that the Infamous Mod must have contained a component which would have prevented the Crash RTMA TPMs from operating, whether or not they were actually deployed against the Infamous Mod.

167    However, it is unclear whether the Infamous Mod contains a separate component (i.e, RTMA Circumvention Code 3) which circumvents the Crash RTMA TPMs in some other way. The applicants rely on posts made on the Infamous Mod website, which include claims that “Infamous already has protection in place to prevent the crash” and that certain instances of gameplay which caused crashing had been fixed in an update to the Infamous Mod. I do not consider that the excerpts the applicants rely upon support their submission about the existence and function of RTMA Circumvention Code 3. The references to protecting against crashes or fixing game crashes in those excerpts do not specifically point to the existence of RTMA Circumvention Code 3. Mr Andrews’ evidence does not address the existence of some other means by which the Infamous Mod prevents software crashes, outside of RTMA Circumvention Code 1. I am not persuaded as to the existence or functionality of RTMA Circumvention Code 3.

Promotion, purpose, use or design

168    The next consideration is whether RTMA Circumvention Codes 1 and 2:

(1)    were promoted, advertised or marketed as having the purpose or use of circumventing the RTMA TPMs;

(2)    have a commercially significant purpose or use other than the circumvention of the RTMA TPMs; or

(3)    were designed primarily or solely to enable or facilitate the circumvention of the RTMA TPMs.

169    The respondent submits that the principal purpose of the Infamous Mod is to circumvent GTA V PC’s anti-cheat measures relating to Online Mode, so as to give players unfair advantages against other players. Put another way, he says that the purpose was to make available to players in Online Mode features of GTA V PC that would otherwise only be available in Story Mode. He submits that this purpose should be taken into account when determining the ends to which the Infamous Mod was directed, and relies on the fact that the Infamous Mod was not promoted for the purpose of circumventing the RTMA TPMs. He contends that circumvention of the RTMA TPMs was not the only commercially significant purpose or use of the Infamous Mod.

170    The respondent’s submission addresses the statutory question at too high a level of abstraction and fails to engage with the purpose or use of the RTMA Circumvention Codes contained within the Infamous Mod. Even if I am to have regard to the broader purpose to which the Infamous Mod as a whole was directed, facilitation of that broader purpose (i.e., allowing players to access Story Mode functionality in Online Mode) is dependent in part on disabling GTA V PC’s ability to detect foreign code, report that detection and suspend or ban the player from Online Mode (i.e., through RTMA Circumvention Codes 1 and 2). On either view, the respondent’s submission must fail.

171    The respondent disputes that the RTMA Circumvention Codes have a limited commercially significant purpose or use other than to circumvent the RTMA TPMs, and that they were designed or produced primarily or solely for the circumvention of the RTMA TPMs. He does not rely on any evidence indicating that the RTMA Circumvention Codes have any other commercially significant purpose, or that they were designed to fulfil any other purpose.

172    The applicants point to the “precise and targeted nature” of the way the RTMA Circumvention Codes attack the RTMA TPMs. That submission has merit with respect to RTMA Circumvention Codes 1 and 2. With reference to the Report & Suspend/Ban RTMA TPM, the respondent conceded in cross-examination that the purpose of interfering with the RTMA process was to stop the Infamous Mod from being detected (at T239.17-39), because if it had been detected, and users had been banned, they would have to be refunded (at T240.9-16). I am satisfied that RTMA Circumvention Codes 1 and 2 were designed solely to circumvent the RTMA TPMs.

173    Accordingly, I find that RTMA Circumvention Code 1 is a circumvention device for both RTMA TPMs, and RTMA Circumvention Code 2 is a circumvention device for the Report & Suspend/ Ban RTMA TPM. With all other requirements of s 116AO met, the applicants’ claim under that section in respect of RTMA Circumvention Codes 1 and 2 is made out.

ACC Circumvention Code 1

174    The applicants submit that ACC Circumvention Code 1 is a circumvention device for the Online Mode Transition Check, being a code that “brings about the alternative method by which the [Infamous Mod] injects itself into GTA V PC” that is not detected by the Online Mode Transition Check. More specifically, the applicants say that the injection method used by GTA V PC was not detectable, because it did not rely on the [REDACTED] module that the Online Mode Transition Check detects, but instead [REDACTED].

175    The respondent says that the Infamous Mod was injected by infamous.exe, which is an alternate injector to what the Online Mode Transition Check detects. He submits that, so understood, the Infamous Mod (or, in light of what I have found above, ACC Circumvention Code 1) is not a circumvention device for the Online Mode Transition Check, because it does not circumvent the TPM but instead takes an altogether different approach which does not engage with that measure at all. This argument was developed by means of the following analogy:

… the Applicants’ case … is akin to arguing that a device that is designed to detect the existence of red widgets is “circumvented” by a blue widget; or that a car travelling within the speed limit “circumvents” a speed camera. Put another way, … the Applicants put a lock on the back door, but leave the front door open, and then assert that anyone using the front door has circumvented the lock on the back door.

176    While there appears to be disagreement between the parties as to what alternative mechanism has been employed, the Infamous Mod contains a component which is an alternative to the “injection method” which relied on the [REDACTED] module, that is not detected by the Online Mode Transition Check. That component can be identified as ACC Circumvention Code 1.

Promotion, purpose, use or design

177    The applicants submit that the Online Mode Transition Check was introduced in March 2017, and that around this time the Infamous Mod was modified to use a new injection method that no longer relied on the [REDACTED] module. The applicants say that the manufacture and distribution of ACC Circumvention Code 1 is caught by s 116AO, because it circumvented the Online Mode Transition Check by “getting around” or “bypassing it”. The applicants relied on, inter alia, written evidence given by the respondent in relation to the Online Mode Transition Check that “circumventing detection” was “remarkably easy”.

178    The respondent submits that the Online Mode Transition Check was actually introduced in March 2018, and that prior to March 2017, the Infamous Mod had stopped using the injection method that would have been detected by the Online Mode Transition Check, and that “a different injector had been developed”. He submits that the Infamous Mod was not modified in order to avoid, and did not avoid, the Online Mode Transition Check. In support of these submissions, he relies on evidence from logs of messages exchanged between the respondent and others who appear to have been involved in the development of the Infamous Mod on the chat platform Discord (“Discord Logs”).

179    Those parts of the Discord Logs that the respondent relies on do not support his submission. He relies on an exchange of messages around 8 March 2017, where there is a reference to another injector being included in the “premium version” (presumably of the Infamous Mod) by another person in the Discord chat going by the name of “tr0tek”. The same person who made that suggestion then remarks, “sounds better than getting them banned with [REDACTED]”.

180    It appears that the applicants may have enacted some kind of ban in response to the detection of [REDACTED] modules. However, this appears to be something different from the Online Mode Transition Check which prevents the player from accessing Online Mode. There is no evidence that at that time (i.e., when the applicants may have implemented an automated ban) the respondent implemented infamous.exe as an alternative to the [REDACTED] injector. In fact, the first time the term “infamous.exe” appears in the Discord Logs is on 25 April 2017. The other messages the respondent relies on appear to be directed to unrelated matters.

181    The Discord Logs show that on 15 March 2017, the respondent asked the Discord chat “why do we think [REDACTED] is being scanned now[?]”. He was told in response by a person going by the name “Sudo” that people could not start the game, and “says game modified”. From this I infer that a message was displayed telling users their game had been modified and this was the reason it could not be started. I am satisfied that this observation is related to the operation of the Online Mode Transition Check.

182    There are other messages in the Discord Logs that support this conclusion. On 15 March 2017, a person going by the name “constexpr” observed that “seems like merely having [REDACTED] in your directory prevents you from entering online”. On the same day, another person going by the name “ClareXoBearrx3” also observed that “[i]f you have [REDACTED] [i]n your directory/ Your [sic] get a new alert screen” (emphasis added). The description of the relevant alert screen as new is significant and supports the inference that it was at this time that the Online Mode Transition Check was implemented. Significant attention is given in the Discord Logs to troubleshooting this error, with the respondent directing the people in the chat on that day to test whether “the presence of a genuine [REDACTED] in the gta directory trigger[s] the same error.”

183    While the Discord Logs are often unclear and were not the subject of any detailed submission by either party, I am satisfied that they establish that around March 2017, the respondent became aware of the Online Mode Transition Check, and ACC Circumvention Code 1 was consequently implemented.

184    Under para (c) of the definition of circumvention device, the relevant device or component must have been primarily or solely designed or produced “to enable or facilitate the circumvention of the [TPM]”. In this context I take “circumvention” to mean “outwit”: Macquarie Dictionary Third Edition p 402. The evidence indicates that there is nothing in the Online Mode Transition Check that is blocked, impeded or otherwise interfered with by ACC Circumvention Code 1. The check will still be performed in the usual way when the Infamous Mod is running.

185    Nevertheless, in my opinion ACC Circumvention Code 1 is designed to provide a way around or to outwit the Online Mode Transition Check. In reaching that conclusion, I have given weight to evidence which indicates the reason for the March 2017 design change, which I am satisfied was to get around the Online Mode Transition Check. I find that ACC Circumvention Code 1 is a circumvention device for the Online Mode Transition Check.

ACC Circumvention Codes 2 and 3

186    ACC Circumvention Code 2 is said by the applicants to stop the Offline Function Check from working normally, in that players using the Infamous Mod are not prevented from accessing Story Mode Items while in Online Mode. ACC Circumvention Code 3 is said by the applicants to have caused the reporting mechanism of the Offline Function Check Reporting to [REDACTED].

187    In support of their submission about ACC Circumvention Code 3, the applicants refer to evidence given by Mr Andrews which they also rely on in respect of RTMA Circumvention Code 2. It may be that ACC Circumvention Code 3 operates in the same way, or is the same, as RTMA Circumvention Code 2. Even if that is the case, this does not mean that the relevant device it is not a circumvention device in respect of the Offline Function Check Reporting. A circumvention device can operate in respect of multiple TPMs.

188    In response to a question from the Court, Mr Andrews explained (at T169.1-12):

[The respondent] did circumvent measures that are built into that function that (a) prevent it from running if you’re in multiplayer mode or if you’re in online mode and (b) send a report via telemetry back to us, indicating that somebody – that you’ve – that you’ve done this and – or that a tamper attempt has been made on the – on the function. What we’re discussing is, essentially, the fact that by virtue of tampering with that – with the intended functionality of that – of that, what we call, native – of that particular subroutine – essentially, he enabled two things. First is that a player in online can use that…functionality…in a context where normally they wouldn't be able to and the second thing is that they also prevent our detection rules from carrying out – from triggering a report, sending that back to us so that we can evaluate, [take] action and – and process that account appropriately.

While the respondent disputes that the Infamous Mod contains ACC Circumvention Codes 2 and 3 (referred to by the applicants collectively as the Offline Function Circumvention Code), he conceded that the explanation offered by Mr Andrews, extracted above, was “very accurate” (at T169.16). Accordingly, I accept the Infamous Mod contains ACC Circumvention Codes 2 and 3 and that those codes operate in the manner described by the applicants.

Promotion, purpose, use or design

189    I am satisfied that ACC Circumvention Codes 2 and 3 do not have a commercially significant purpose other than circumventing the Offline Function Check and the Offline Function Check Reporting. I am also satisfied that ACC Circumvention Codes 2 and 3 were designed for the purpose of circumventing those TPMs. As I have explained above, the respondent submits that the purpose of the Infamous Mod, broadly, is to make available to players in Online Mode features of GTA V PC that would otherwise be available only in Story Mode. ACC Circumvention Codes 2 and 3 allow for that to occur by disabling the TPMs which stop players from accessing Story Mode Items while in Online Mode, and prevent suspensions or bans being issued where such access has occurred. This supports the inference that ACC Circumvention Codes 2 and 3 were designed to circumvent those TPMs, in order to support the broader purpose of the Infamous Mod. The applicants’ claim under s 116AO is made out with respect to ACC Circumvention Codes 2 and 3.

RELIEF AND DISPOSITION

190    The applicants seek seven separate declarations in respect of the respondent’s conduct. I am not satisfied that it is necessary or appropriate to make all of the declarations sought which are excessively granular in their form. However, I am satisfied that it is appropriate to make two declarations that give effect to these reasons, namely, that the Infamous Mod contains circumvention devices for the RTMA and ACC TPMs, and that the respondent has engaged in actionable conduct under s 116AO of the Act by (inter alia) manufacturing and distributing the Infamous Mod.

191    Although I am satisfied that an injunction is appropriate, it should not extend to acts of designing and developing, as the applicants have proposed, because those acts are not caught by s 116AO. For the same reason, the injunction should also cover manufacturing with the intent of providing to another person, rather than just manufacturing.

192    The applicants also seek to permanently restrain the respondent from (inter alia) manufacturing and distributing “any software that would result in the circumvention of any anti-tampering or anti-cheat measures implemented by the [a]pplicants” including those TPMs relied upon in this proceeding. I am not satisfied that it is appropriate to grant an injunction which extends beyond the TPMs the subject of this proceeding. I will instead make an order which permanently restrains the respondent from engaging in actionable conduct under s 116AO with respect to the Infamous Mod in the form it took during the Relevant Period.

193    The respondent must pay the first applicant’s costs incurred from 27 August 2021. Costs incurred in the period before that date are covered by an earlier costs order: Take-Two (No 1). While the first applicant has been successful on numerous issues, so too has the respondent. My present view is that the respondent should pay 75% of the first applicant’s costs from 27 August 2021 but I will give the parties an opportunity to be heard on that question should either of them seek a different costs order.

194    It will be necessary to make orders supressing some parts of these reasons in order to protect confidentiality in the applicants’ TPMs and other information. I will make procedural orders relating to that matter which give the parties an opportunity to agree upon the scope of any proposed suppression order.

195    I make orders accordingly.

Associate:

Dated:    18 December 2024