Brief Summary

Copyright — Cinematograph films — Protection of video games — Appellants imported and distributed video games alleged to infringe Nintendo's copyright — Court a quo found video games qualify for copyright protection as "cinematograph films" under the Copyright Act 98 of 1978 — Appellants had "guilty" knowledge of infringement — Legal issue whether video games are protected as cinematograph films — Held, video games do enjoy copyright protection as cinematograph films, affirming the court a quo's decision.

Comprehensive Summary

Summary of Judgment

Introduction

The proceedings were an appeal to the Supreme Court of South Africa (Appellate Division, now the Supreme Court of Appeal) against an order granted by the Transvaal Provincial Division. The central question on appeal was whether video games attract copyright protection in South African law as “cinematograph films” under the Copyright Act 98 of 1978.

The appellants were Golden China TV Game Centre and Others, comprising local entities divided into two functional groups: importers and wholesale distributors of video games, and retailers who sold, let, or exposed video games for hire in the course of trade. The respondent was Nintendo Co Ltd, a Japanese company described in the judgment as a major creator, manufacturer, and distributor of video games worldwide, and the alleged copyright owner of approximately forty identified games.

In the court a quo (Hartzenberg J), Nintendo succeeded in obtaining an interdict (injunction) restraining the appellants’ infringing dealings, with costs, on the basis that the relevant video games were protected as cinematograph films. The appeal was brought with leave granted by Hartzenberg J and challenged that conclusion. While the litigation’s timing overlapped with the commencement of the Copyright Amendment Act 125 of 1992, the parties accepted that the matter should be decided under the statute as it stood before the amendment; the Appellate Division nevertheless considered it prudent to address the legal position with reference to both the pre-amendment and post-amendment wording because of uncertainties concerning “pending” proceedings and temporal application.

The general subject-matter of the dispute concerned copyright subsistence and infringement relating to imported pirate copies of Nintendo video games, and the proper classification of video games under the statutory categories of protected works, specifically whether they fall within the statutory definition of a cinematograph film.

Material Facts

Nintendo asserted that it owned copyright in a body of video games (about forty) identified in the judgment a quo. The appellants were involved in the local market for video games, with certain appellants importing and distributing games wholesale and others retailing or hiring them out as part of their trade.

It was common cause that the video games imported into South Africa from Taiwan, from undisclosed sources and unknown manufacturers, were copies of Nintendo’s games. It was also not in dispute on appeal that the appellants possessed the requisite knowledge (the “guilty” knowledge referred to in section 23(2) of the Copyright Act 98 of 1978) when importing and dealing with these copies.

The factual premise for infringement was therefore treated as established, conditional upon one legal prerequisite: copyright had to subsist in the relevant subject-matter in a way that rendered the appellants’ conduct infringing. The decisive factual context was the nature of a video game and how it is created and embodied in hardware.

The court described video games as games played on a video screen via an apparatus containing integrated circuits (typically two microchips). When operating, the display resembles an animated cartoon, with the player able, within limits, to influence the progression of the game. The game experience typically includes an “attract mode” (a pre-ordained sequence explaining the game) and a “play mode” where the sequence of images depends, within limits set by the program, on player intervention.

The court accepted evidence and demonstration-based description of the development process of a video game. After conceptualisation, evaluation, and design, the visual aspects (characters, backgrounds, items), screen text, and sound effects are prepared. The game’s play sequence is defined in an unencoded form as the intended content and narrative progression, describing how components integrate sequentially to constitute the game. Thereafter, a computer program is written to control the display and to enable player manipulation of characters. Integrated circuits are manufactured, with one ROM (Nintendo’s “CH-ROM”) storing encoded visual elements and another ROM (“P-ROM”) containing audio elements and a program governing the functioning and display, including the play sequence. Data stored in ROM is fixed and not alterable; the CH-ROM data is converted into video signals for display, while the program in the P-ROM retrieves and causes stored visual elements to be displayed sequentially.

Legal Issues

The central legal question was whether the relevant video games fall within the statutory definition of “cinematograph film” and therefore qualify as a category of work eligible for copyright protection under section 2(1) of the Copyright Act 98 of 1978.

This dispute was primarily one of law, involving the interpretation and application of a statutory definition to a technological artefact. It was also, in part, an application-of-law-to-fact inquiry, because the court had to relate the statutory elements of “cinematograph film” to the accepted technical characteristics of video games.

More specifically, the court addressed disputes concerning the meaning and application of elements of the definition, including whether video games satisfy the requirement of fixation, whether they comprise “a sequence of images” notwithstanding player interactivity and non-fixed play sequences, whether the statutory requirement of being capable of reproduction implied a fixed sequence, and whether the “images” must be stored as images rather than microelectronic representations. The court also considered the relevance of the 1992 amendment’s express exclusion (“but shall not include a computer program”), while noting that it was common cause that the video games were not computer programs as such.

A secondary interpretive issue, not finally decided, concerned whether the 1992 amendments applied given the timing of the proceedings and the creation dates of the works. The court identified uncertainties about whether motion proceedings were “pending” upon the registrar’s issue of process before service, and whether an amending statute could affect works created before commencement (subject to a proviso in section 43(1)(c)). These uncertainties led the court to address the matter by reference to both pre- and post-amendment law, but the appeal’s outcome turned on the definition’s substantive interpretation rather than the temporal-application question.

Court’s Reasoning

The court began by emphasising that the Copyright Act employs statutory definitions that may depart from ordinary dictionary meanings and that, where such definitions are crafted in wide language, they should not be narrowed to fit preconceived notions of the defined term. The judgment treated the legislature’s use of broad phrases (such as “by any means whatsoever,” “any other material,” and “mechanical, electronic or other device”) as indicative of an intention to cover future technological innovation. In this interpretive framework, it was considered inappropriate to decide the matter by comparing video games to “conventional” films by similarity or difference; instead, the proper method was to test whether video games fall within the statutory definition.

In support of a flexible approach, the court pointed to examples where broad statutory language had enabled protection of new technologies (such as computer programs) even before the legislature explicitly addressed them in later amendments. The court adopted the view that legislative inertia should not impede reasonable protection of ingenuity and industry, and it endorsed an interpretive stance that avoids forcing repeated statutory updates merely to accommodate new technology.

On the requirement of “first fixation”, the court noted that, although the parties disputed whether the first fixation occurs when the game is fixed in the ROMs (as held by the court below) or earlier at the stage of the computer program used to constitute the circuitry, the debate did not affect the outcome of the case. The court observed that the “first fixation” issue might be relevant to copyright duration if equated with “making of” a film (with reference to sections 3(2)(b) and 44(1)), but duration was not in issue. The court therefore did not resolve the dispute definitively, stating only that the computer program appeared to be a step in the fixation of the film rather than the fixation itself.

The court then addressed whether a video game meets the definition’s requirement of “a sequence of images”. The appellants argued that the definition requires a fixed sequence because the definition includes the phrase “capable ... of reproduction”, and a variable sequence controlled by a player cannot be reproduced in a single fixed form. The court rejected this reading. It held that, in copyright context, “reproduction” refers to the ability to copy the work (the film) rather than to reproduce ephemeral displays or particular game-play outcomes. This reading was supported by the Act’s definitions of “copy” and “reproduction” and by section 8(1), and the court noted that the signed Afrikaans text made the legislative intention clearer.

The court also rejected reliance on the shift from the 1965 definition (“any sequence of visual images”) to the 1978 definition (“a sequence of images”) as implying a narrow meaning that would exclude variable sequences. It found no discernible difference between “a” and “any” for the interpretive purpose at hand. In assessing interactivity, the court accepted comparative reasoning drawn from United States jurisprudence on similar statutory language (“a series of related images”), endorsing the reasoning that a video game player does not create unlimited sequences, but merely selects among a limited set of sequences allowed by the program. The court further noted that a substantial portion of the visual images are repetitive and constant each time the game is played. On this basis, the court concluded that the video game’s images constitute a sequence satisfying the statutory requirement despite some variability in play mode.

The court then addressed the argument that the images were not fixed “on” the ROMs because what is stored is microelectronic circuitry representing images rather than images themselves. The court found that this approach did not account for the full breadth of the definition. It reasoned that fixation may occur on “film or any other material,” which is not limited to film-like media, and that the definition anticipates use of “any mechanical, electronic or other device” to render the sequence visible. This, in the court’s view, supports the conclusion that stored data need not be stored in its original form “as images” in order to be fixed as part of a cinematograph film. The court also observed that the 1978 definition’s omission of the word “visual” (present in the 1965 Act) reinforced that the stored content need not exist as directly visible images at the fixation stage.

As to the 1992 amendment’s express exclusion (“but shall not include a computer program”), the court treated it as not affecting the present case. It was common cause that the video games themselves were not computer programs, notwithstanding that computer programs were used in their creation and may have been involved in the fixation process.

Finally, the court observed that the remaining definitional element—capability, when used with a device, of being seen as a moving picture—was clearly satisfied by video games. Having concluded that video games fall within the definition of “cinematograph film,” the court recorded that counsel for the appellants accepted that the appeal would then fail. The court also noted that certain elements were not in dispute once classification was established: Nintendo’s authorship as defined, Nintendo’s qualification status, and originality of the games as cinematograph films. It further recorded that Nintendo did not challenge the court below’s finding that, on the papers, Nintendo’s copyright in the game Popeye had been assigned to its United States company; however, this did not alter the appeal’s outcome.

Because the appeal failed on the cinematograph film ground, Nintendo’s alternative causes of action (copyright in component works, unfair competition, and trade mark infringement) were treated as moot, particularly given the breadth of the interdict granted.

Outcome and Relief

The Supreme Court of South Africa (Appellate Division) dismissed the appeal and upheld the interdict granted by the court a quo.

The appellants were ordered to pay costs, including the costs of two counsel.

Cases Cited

Nintendo Co Ltd v Golden China TV Game Centre & Others 1995 (1) SA 229 (T).

Bell v Voorsitter van die Rasklassifikasieraad en Andere 1968 (2) SA 678 (A).

Thom en 'n Ander v Moulder 1974 (4) SA 894 (A).

Appleton and Another v Harniscnfeger Corporation and Another [1994] ZASCA 141; 1995 (2) SA 247 (A).

Northern Office Micro Computers (Pty) Ltd & Others v Rosenstein 1981 (4) SA 123 (C).

Payen Components SA Ltd v Bovic CC & Others [1995] ZASCA 57; 1995 (4) SA 441 (A).

Spelling Goldberg Productions Inc v BPC Publishing Ltd [1981] RPC 283.

Stern Electronics Inc v Kaufman [1982] USCA2 54; [1982] 669 F.2d 852.

Midway Mfg Co v Dirkschneider [1981] 543 F.Supp 466.

Williams Electronics Inc v Arctic International Inc [1982] USCA3 845; [1982] 215 USPQ 405.

WGN Continental Broadcasting Co et al v United Video Inc [1982] USCA7 796; 693 F.2d 622.

Midway Mfg Co v Arctic International Inc [1983] USCA9 670; [1983] 704 F.2d 1009; [1983] USCA7 257; [1983] 218 USPQ 791.

Laubscher v Vos & Others, judgments on Copyright 3 (WLD) at 6.

Legislation Cited

Patents, Designs, Trade Marks and Copyright Act 9 of 1916.

Rules of Court Cited

No rules of court were cited in the judgment.

Held

The court held that video games fall within the statutory definition of a “cinematograph film” in the Copyright Act 98 of 1978. The court found that the statutory elements—fixation on material by any means, a sequence of images, and capability (with a mechanical, electronic, or other device) of being seen as a moving picture—were satisfied notwithstanding that game-play sequences can vary within limits based on player interaction. The appeal against the interdict was accordingly dismissed, and the appellants were ordered to pay costs, including the costs of two counsel.

LEGAL PRINCIPLES

The statutory definition of “cinematograph film” in the Copyright Act is to be interpreted with regard to its broad and technology-neutral language, rather than being narrowed by reference to ordinary dictionary meanings of “cinematograph” or by comparison to conventional films.

Where copyright legislation employs expansive terms such as fixation “by any means whatsoever” on “any other material” and contemplates display by “mechanical, electronic or other” devices, the definition is capable of accommodating new technologies, and should be construed flexibly to avoid undermining legislative purpose in protecting works of ingenuity and industry.

In applying the definition, the requirement of a “sequence of images” is not defeated by the fact that a video game’s displayed sequence may be variable within limits, because the player does not generate unlimited sequences but selects among sequences permitted by the game’s programmed structure; substantial repetitive and constant visual content further supports the existence of a qualifying sequence.

The phrase “capable ... of reproduction” in the definition is concerned with the copyright concept of copying the work (the film) rather than with reproducing every possible on-screen instantiation or ephemeral display produced during interaction with the work.

Fixation of images does not require that the images be stored in their directly perceptible form as “images”; electronic storage of encoded data representing images on ROMs is consistent with fixation on “any other material,” particularly given that the definition expressly contemplates electronic devices to render the sequence visible as a moving picture.

Golden China TV Game Centre and Others v Nintendo Co Ltd (55/94) [1996] ZASCA 103; 1997 (1) SA 405 (SCA); [1996] 4 All SA 667 (A); (25 September 1996)