Nova Productions Ltd v Mazooma Games Ltd & Ors

This is an application for a preliminary reference to the European Court of Justice. The appellants, Nova, make it in the pending appeals. Nova claim that the defendants in each action (Mazooma and Bell-Fruit) have infringed their copyrights relating to their computer game “Pocket Money”. Mazooma’s alleged infringement is called “Jackpot Pool”, that of Bell-Fruit is “Trick Shot”.

At the conclusion of Mr Howe QC’s oral argument we formed a clear view that the application should be refused and so informed the parties. These are our reasons why.

Various types of copyright works were relied upon, namely “artistic works” “literary works” and “dramatic works.” Kitchin J rejected all the claims in both actions, [2006] EWHC 24, [2006] RPC 379. He gave permission to appeal. Mr Martin Howe QC for Nova told us that the claim based on a “dramatic work” would not be pursued on appeal. So, the pending appeals only relate to artistic and literary works.

Mr Howe said that his main case relates to “literary works.” He says that this involves a question of European Law. He suggests that this question is so critical to the appeal that it is “necessary” now to refer questions to the ECJ. It was pointed out that his other case, about artistic works, would have to go on whatever the ruling of the ECJ. So, after taking instructions, he indicated that if the ECJ ruling were against his clients, they would abandon their secondary case of infringement of artistic copyright – a case that depends purely on domestic law.

Art. 234(2) of the EC treaty provides that a national court may make a preliminary reference on a question of EU law only:

Mr Howe, sensibly, did not trawl through the cases on what is meant by “necessary”. He took us to the excellent chapter on the subject in References to the European Court, 2^nd Edn., 2002 by David Anderson QC and Marie Demetriou. He invited us to adopt the broadest test, that a reference is “necessary” if one possible answer would be dispositive of the case. This case satisfied that, he submitted, because if the answer were unfavourable to Nova, they would lose on the literary copyright point and abandon the other.

It is not necessary to explore the test of “necessary” further, for we are content to adopt that test here. Even applying it there are a number of reasons why a reference is inappropriate now.

There is a real prospect (we do not decide) that whatever view of the law one takes, the appellants will fail on the facts;

In any event, even if at the end of the hearing the Court did decide to refer, it would be able to do that which is now encouraged by the European Court of Justice, namely give its own opinion on the questions to be referred;

There could be wholly unnecessary substantial delay caused by a reference;

We are far from satisfied that there would be a substantial saving in costs.

Before elaborating on each of these reasons, we briefly outline the nature of the point of law which it sought to be referred. We do so broadly, for the parties were a long way apart on what, if there were to be a reference, the questions should be. Incidentally this is a matter which itself indicated that the problem is insufficiently defined at this stage for a reference.

The Judge has found that, as games, neither alleged infringement is like Nova’s “Pocket Money”. Nothing has been taken of the program code or program architecture. None of the screens of the defendants’ games look in detail like those of “Pocket Money.” All that has been taken is a limited number of generalised ideas. The actual embodiments of the ideas were different. The details of all this are set out in the judgment and I need not say more here. They will fall for fuller consideration on the appeal; the key question will be: has a substantial part of the literary work consisting of the computer program for “Pocket Money” been taken?

It is not entirely self-evident that a computer program is a “literary work”. But that has been the explicit position under UK copyright law since 1985 and the common view is that it was so before. Other EU countries took, or may have taken, different views. To harmonise the law to some extent at least, the EU decided that protection of computer programs as literary works should be the rule. So the Software Directive, 91/250 was passed requiring member states to provide protection for programs as literary works. The UK implemented the Directive by the Copyright (Computer Programs) Regulations 1992 SI 1992/3233 made under the power conferred by s.2 of the European Communities Act 1972. The Regulation amended s.3 of the Copyright Designs and Patents Act 1988 (which already explicitly included a computer program as a type of literary work) so as also to say that a ‘literary work’ includes “(c) preparatory design material for a computer program.” Implementation did not introduce a major change for UK law because computer programs were already treated as literary works and that is likely to have also been the case for any written preparatory design work.

However there may have been a change in some respect. For the Directive says more than merely that computer programs should be protected as literary works. In particular Art.1 provides:

The point Mr Howe relies upon is that the Directive expressly included “preparatory design material” as part of the meaning of “computer program” rather than as something separate. He says that Kitchin J in this case, and Pumfrey J in Navitaire v EasyJet [2004] EWHC 1275 (Ch), [2006] RPC 358, fell into error: that they discounted “preparatory design material” as part of the protected matter going into the program itself. If that had been properly taken into account, submits Mr Howe, then what was taken by the defendants in this case would amount to a taking of a substantial part of the computer program for “Pocket Money”.

He may be right about taking into account “preparatory design material” – we express no opinion one way or the other. However suppose he is right. One would then bring in as “preparatory material” a notional written out detailed design specification and description of “Pocket Money” in addition to the actual coding of the program. Taking all that as the copyright work it by no means follows that what the defendants did, on Kitchin J’s findings of fact, would amount to the taking of a substantial part of it. After all here, unlike Navitaire, there is no question of an attempt to emulate the program the copyright in which is said to be infringed – to produce a look and feel “copy”.

We think also that there is a realistic prospect that the appeal will fail on the basis that the most that was taken was an “idea”. The Directive makes it clear that “ideas and principles” are not protected, reflecting the old and well-known distinction which copyright law draws between a “mere idea” and its expression – a distinction which generally turns on how much detail is taken. This court may conclude that the defendants did no more than take an idea. And, if that were the conclusion, we could not foresee the need to put any question to the ECJ. Whether something is a mere “idea or principle” seems to us to be a question of fact, not law.

The upshot of this summary of the issues is that the appeal could well be decided without any real question of Community law arising.

We are convinced that if a question really did arise, the court would be in a much stronger position than it is now to formulate the precise form of the question. And it could explain exactly why the question was being asked and, as has been indicated recently by some members of the Court as being useful, offer its own suggested reasoned answer.

Turning to more pragmatic matters, this court will decide the appeal (including the question of whether it thinks a reference necessary) in a much shorter time-span than if a reference is made now. When argued before us, the “hear by” date was the end of November – some 5 months away. Nova put some thin evidence in to the effect that the ECJ would decide the reference within 18 months. We were told by Mr Howe, upon instructions, that inquiries had been made with the Registrar of the Court. No details were given. It is not clear whether the Registrar was told that this is the sort of case in which governments are likely to intervene. Recent experience of intellectual property cases suggests references in that field take quite a bit longer than 18 months. We certainly think that is at the least a realistic possibility here. Referring now could well delay resolution of the case by two, three or even four years.

As to costs, we were reminded that an ECJ reference is mainly on paper with a short hearing in Luxembourg – though the parties would have to get there the day before. Mr Howe suggested it would be cheaper than the appeal before this court. We are not convinced. I can see no reason why this appeal should take longer than 2 days. The difference in cost is likely to be minimal, if indeed any at all.

These, then, are our reasons for refusing to refer questions now.