Nintendo’s successful blocking injunction against websites distributing infringing devices may open the door for similar orders in non-IP cases, as Anna Ward and David Rose of Mishcon de Reya explain.
Website blocking orders have been available to rights owners seeking to enforce their copyright against piracy sites for almost 10 years, proving an extremely useful tool in the music and film industries (among others).
Blocking orders have also been available to brand owners seeking to enforce trademark rights since 2014. In a case involving consumer electronics and video game company Nintendo, the English High Court has extended the availability of blocking orders even further, in a case related to ancillary rights under copyright legislation. This paves the way for further court applications seeking blocking injunctions where other rights are at play. Mishcon de Reya acted for Nintendo in the case.
The case ( EWHC 2376) granted a ground-breaking website blocking order to Nintendo, the seller of the Nintendo Switch games console. The order compels five of the UK’s major internet service providers (ISPs) to block public access to various websites advertising and selling circumvention devices.
The order was made on the basis that websites were offering for sale and distributing devices which aim to circumvent the technological protection measures (TPMs) deployed in the Nintendo Switch console and authentic Nintendo Switch games. These TPMs are protected by certain rights contained in the UK Copyright, Designs and Patents Act 1988 (CDPA) which are ancillary to IP rights. The court‘s decision that it can grant website blocking injunctions in respect of TPMs confirms that these injunctions are not limited to cases of IP infringement.
The case arises out of Nintendo’s efforts to prevent the advertising and sale of devices and software that circumvent its TPMs. The TPMs use encryption to prevent users playing pirated games, but circumvention devices—Team Xecuter SX Pro and SX OS—have been developed which get around these TPMs.
The SX Pro and the SX OS are the most numerous piracy-enabling products in respect of the Nintendo Switch and are sold on a number of websites which are believed to be hosted outside the UK.
Nintendo made two complaints about the target websites: first, that they were infringing its rights in registered trademarks. Second, that they infringed the rights of protection provided for in sections 296 and 296ZD of the CPDA.
It is well established that website blocking injunctions can be granted on the basis of trademark infringement (see the Cartier cases  EWCA Civ 658 and  UKSC 28). The target websites in this case made unauthorised use of Nintendo’s trademarks so in that respect, the application was straightforward.
The marks relied on by Nintendo were:
- EUTM No. 16070914 for the word mark ‘Nintendo Switch’
- EUTM No. 016606873 for the logo:
The court found that it was “beyond dispute” that each of the target websites were using signs identical to these marks in the course of trade in relation to goods identical to those for which the marks are registered, without Nintendo’s consent. That left three questions to be considered: (i) was the use liable to affect one of the functions of the marks; (ii) did target websites target consumers in the UK; and (iii) did the operators of the target websites have a defence?
Justice Arnold answered the first two questions in the affirmative. He agreed, for example, that the presentation of the target websites would deceive a significant number of consumers into believing that these were authorised accessories for the Nintendo Switch (thereby damaging the origin function of the marks).
Arnold also agreed that Nintendo’s trademarks benefit from a very substantial reputation, and that the use by the target websites without due cause took unfair advantage of the reputation of those marks by intentionally exploiting that reputation in order to sell the circumvention devices.
The operators of the websites did not benefit from a defence because they were misleading consumers and their use of the marks was not in accordance with honest practices—the purpose of the circumvention devices was to allow users to circumvent the TPMs and to play unauthorised games.
Sections 296ZD and s296 CDPA
Sections 296ZD and s296 of the CDPA provide statutory protection against the circumvention of technological protection measures.
Section 296ZD addresses the protection of effective technological measures in copyright works other than computer programs. Section 296 addresses the protection of effective technological measures in computer programs.
The rights provided for by these sections of the CDPA are ancillary to IP rights whose purpose is to support the protection of underlying copyright.
Arnold found that Nintendo’s TPMs (which are intended to prevent the installation and playing of unauthorised copies of games) within Nintendo’s consoles qualified for the protection afforded by these provisions and were proportionate protection measures. He also found that the SX Pro and SX OS circumvented these TPMs.
However, until now, there has been no case law dealing specifically with the availability of website blocking injunctions under these provisions. This was the main question for the High Court in this case.
Jurisdiction to grant a Website blocking injunction
The High Court noted first that the jurisdiction to grant website blocking injunctions in cases involving infringement of IP rights was now established at the highest level by the Supreme Court’s decision in Cartier.
On the question of whether it had wider jurisdiction to grant website blocking injunctions, including on the basis of the rights in sections 296 and 296ZD of the CDPA, the court agreed with Nintendo that it did.
It cited the following passage from the Supreme Court judgment in Cartier: “Website blocking orders clearly require more than the mere disclosure of information. But I think that it is clear from the authorities and correct in principle that orders for the disclosure of information are only one, admittedly common, category of order which a court may make against a third party to prevent the use of his facilities to commit or facilitate a wrong.
“I therefore agree with the view expressed by Briggs LJ in his dissenting judgment in the Court of Appeal that the website blocking order made in this case could have been made quite apart from the power derived from European law, on ordinary principles of equity.”
On the basis of these comments, Arnold concluded, the court had jurisdiction to grant Nintendo the order it sought, not only on the basis of its claims for trademark infringement, but also on the basis of its claims for infringement of its rights under sections 296ZD and 296 CDPA.
Conditions to satisfy
The court set out the conditions that must be satisfied in order to grant a website blocking injunction as set out in the Cartier case:
- 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 IP rights (the Enforcement Directive);
- The users and/or operators of the website are infringing the claimants’ rights;
- Those users and/or operators are using the defendants’ services to infringe;
- The defendants have actual knowledge of this (which may be as a result of being notified by the rights holder); and
- The blocking injunction is necessary, effective, dissuasive, is not unnecessarily complicated or costly, avoids barriers to legitimate trade, is fair and equitable and strikes a “fair balance” between the applicable fundamental rights. It must also be proportionate, which is the most significant factor considered by the court.
The court accepted that the same conditions should be adopted in other types of website blocking cases, except that “it may not be necessary for the defendants to be intermediaries within the meaning of article 11 of the Enforcement Directive (although in website blocking cases defendants usually are)”.
It found that conditions (i) to (iv) were satisfied by the fact that:
- The ISPs provided internet services to consumers and were intermediaries;
- The operators of the target websites were infringing Nintendo’s rights in the UK (by virtue of trademark infringement and through sections 296 and 296ZD of the CDPA);
- The evidence provided by Nintendo established that the operators of the target websites were using the ISPs’ services to do so; and
- The target websites had knowledge of the claim because Nintendo had notified them of it.
Arnold also found that the fifth condition was satisfied. The injunction was necessary to prevent, or at least reduce, substantial damage to Nintendo. Blocking injunctions were effective in reducing traffic to the target websites—noting that here, the ISPs were required to display information about the block, which would help to dissuade users.
Blocking injunctions were not difficult for the ISPs to implement as they already had the necessary technology, and the injunction sought by Nintendo would have no impact on legitimate trade because none of the websites appeared to conduct any legitimate trade.
Arnold therefore considered the injunction proportionate, stating: “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.”
This decision is good news for the games industry and for developers who rely on legitimate sales of games. It also confirms that blocking/injunctive relief is not limited to cases involving the infringement of IP rights, thereby potentially expanding the types of application that can be made for this relief: “It is clear … that the court’s jurisdiction is not limited to cases involving infringement of IP rights”.
Also worth mentioning is the High Court’s comment that it may not be necessary for defendants to be intermediaries within the meaning of article 11 of the Enforcement Directive in cases not involving IP infringements.
This article was first published in World Intellectual Property Review (subscription only).