On 10 September 2019, Arnold J issued judgment granting a ground-breaking blocking website blocking order to Nintendo Co., Ltd, the seller of the popular Nintendo Switch games console. The judgment expands the grounds upon which a blocking injunction may be granted, to include not only the blocking of websites which infringe intellectual property rights, but also those which offer for sale and distribute circumvention devices which aim to circumvent the technological protection measures ("TPMs") within the Nintendo Switch console. The purpose of the TPMs is to prevent piracy and the playing of unauthorised and infringing games.
The order compels the UK's major internet service providers ("ISPs") to block public access to various websites advertising and selling Team Xecuter's SX Pro and SX OS, which are the most prolific piracy-enabling products in respect of the Nintendo Switch.
The case concerned Nintendo's efforts to prevent the advertising and sale of devices that circumvent TPMs implemented within their popular 'Nintendo Switch' games console, in the UK. In particular, the action focused on blocking public access to various websites advertising and selling Team Xecuter's SX Pro and SX OS which circumvent the TPMs on the Nintendo Switch to enable the playing of pirated games.
As established in the Cartier case (discussed in our November 2017 bulletin), website-blocking injunctions can be granted on the basis of trade mark infringement. In this case, the target websites made unauthorised use of Nintendo's trade mark. However, in addition to trade mark infringement, Nintendo sought a blocking injunction on the basis of sections 296ZD and s296 of the Copyright Designs and Patents Act 1988 ("CDPA"), which provide statutory protection against the circumvention of copyright protection measures. The rights given by these sections of the CDPA are not themselves intellectual property rights but are an ancillary right, and their purpose is to support the protection of underlying copyright.
Arnold J found that the TPMs (which are intended to thwart the installation and playing of pirated games) within Nintendo's consoles qualified for the protection afforded by these provisions and were proportionate protection measures, and that the SX Pro and SX OS circumvented these TPMs.
In assessing the merits of the claim for a website blocking order, Arnold J followed the same approach as adopted in the Cartier case, assessing whether or not the 'threshold conditions' were met. These threshold conditions are:
- that the respondents are intermediaries within the meaning of Article 11 of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights (the Enforcement Directive);
- that the users and/or operators of the website are infringing the claimants' IP rights;
- that those users and/or operators are using the defendants' services to infringe; and
- that the defendants have actual knowledge of this (which may be as a result of being notified by the rightholder).
In Nintendo's case, these conditions were satisfied by the fact that:
- the ISPs provide internet services to consumers and were not themselves responsible for the infringing websites or their contents and it is well established that they are intermediaries;
- the operators of the target websites are infringing Nintendo's rights in the UK;
- the evidence provided by Nintendo establishes that the operators of the target websites are using the ISPs' services to do so; and
- the target websites have knowledge of the claim because Nintendo had notified them of it.
Arnold J also concluded that granting the injunction was proportionate in all of the circumstances of the case including because of Nintendo's sustained attempts to contact the operators of the infringing websites (who are believed to be based outside of the jurisdiction and who have repeatedly eluded enforcement actions by, for example, adopting new domain names and using a variety of offshore hosting providers).
Granting the relief sought, Arnold J stated: "the public has no legitimate interest in being informed about or purchasing circumvention devices whose whole purpose is to circumvent [Nintendo's] TPMs and infringe its rights to [Nintendo's] significant detriment".
In granting a blocking injunction in relation to TPMs, the Court has confirmed, and Arnold J states in his judgment, that blocking-injunctive relief is not limited to cases involving the infringement of intellectual property rights, thereby potentially expanding the types of application that can be made for this relief.
Mishcon de Reya LLP acted for Nintendo Co., Ltd