In Nintendo Co Ltd v British Telecommunications Plc ([2021] EWHC 3488 (IPEC) (21 December 2021)), a judge has ruled that an injunction against a website hosting pirated games strikes a 'fair balance' between protecting Nintendo’s rights and those of the public, and allowing internet service providers (ISPs) to continue trading fairly.
Background
Nintendo develops, manufactures and sells video games for (among others) its Nintendo Switch console. It also licenses third parties to develop and publish games for the Nintendo Switch under its authorised developer programme. The games can be legitimately purchased on physical game cards or downloaded through Nintendo's online shop.
By an application dated 2 December 2021, Nintendo sought the grant of a website-blocking order under Section 97A of the Copyright, Designs and Patents Act 1988 and/or pursuant to the inherent jurisdiction of the court under Section 37(1) of the Senior Courts Act 1981, requiring six major UK broadband and mobile ISPs to block access to two websites ─ ‘NSW2U’ and ‘NSWROM’ (as well as their associated websites/domains) ─ that permitted access to pirated downloads of Nintendo Switch games.
These websites generated revenue via click-through advertising arrangements with third parties by the aggregation of large numbers of links offering downloads to, among others, unauthorised Nintendo Switch games. Evidence provided by Nintendo showed that the relevant pages of the websites displayed images of the Nintendo Switch games’ cover artwork, including Nintendo’s trade marks, and those images incorporated click-through links enabling the user to download the game. The prominent use of Nintendo’s trade marks on the websites and on social media were deliberately designed to create the impression that the Nintendo games being advertised were genuine.
The respondents - BT, EE, Plusnet, Sky, TalkTalk and Virgin Media - had previously been subject to similar orders made in other proceedings (including previous ones involving Nintendo) and had agreed to the terms of the draft order in advance of the hearing.
Copyright and trade mark infringement
Dealing with the claim for copyright infringement first, the presiding judge, Mrs Justice Joanna Smith, was satisfied that Nintendo owned the UK copyright in the source and object code for its Nintendo Switch games, together with related underlying works such as text, graphics and sound effects within the games (including as literary and artistic works) and that these were being made available to the public contrary to the Copyright, Designs and Patents Act. In particular, the judge found that subscribers to the ISPs located in the United Kingdom performed acts of copying in the United Kingdom when they connected to the websites and used them to download files containing the unauthorised Nintendo games on their electronic devices. The website operators either authorised and/or were liable as joint tortfeasors for such copying and performed acts of communication (by electronic transmission) to the public in the United Kingdom when links to unauthorised Nintendo games were made available to UK consumers. It was reasonable to conclude that UK consumers would assume that the websites were directed at them.
In the alternative, the judge was satisfied on the evidence that the websites infringed Nintendo’s trade marks by using identical signs in the course of trade in relation to identical goods (namely video games and downloadable programs) contrary to Section 10(1) of the Trade Marks Act 1994. The websites were targeting average consumers in the United Kingdom and the marks were being used to promote and distribute counterfeit versions of the games, a 'quintessential example' of infringement. There was no plausible basis to suppose that the use of the marks was merely descriptive. They were being used to falsely denote origin and drive traffic to the websites for the purposes of making a profit, which was not in accordance with honest practices.
Comment
A rise in the provision and consumption of online content (due, in part, to the covid-19 pandemic) has seen a corresponding spike in websites offering illegal downloads of games, music and films, infringing rights holders’ copyright and trade marks. While there is no silver bullet against those intent on offering such illegal downloads, there are some remedies, including website-blocking injunctions, that can mitigate the damage these sites cause.
As recognised by the judge in granting the relief sought by Nintendo, blocking injunctions are not difficult for ISPs to implement – they have the necessary technology readily available and, as a result of the decision of the Supreme Court in Cartier International AG v British Telecommunications plc ([2018] UKSC 28), Nintendo would bear the ISPs' costs of doing so.
This article was written by Emily Roberts and Chloe Perea Poole and first appeared on WTR Weekly, part of World Trademark Review, in February 2022.
For more information or if you have any questions, please contact Chloe Perea Poole or Emily Roberts, or your usual IP team contact.
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