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The High Court has recently required major UK ISPs to block certain websites which infringed Nintendo’s intellectual property rights. In seeking the injunction, Nintendo relied on trade mark rights, as was the case in Cartier2, but also relied on the statutory protection against the circumvention of copyright protection under s296ZD and s296 CDPA 1988 which had not been considered by the UK courts in this context before.
UK law provides a statutory basis under section 97A of the Copyright, Designs and Patents Act 1988 (CDPA 1988) for granting an injunction against an internet service provider (ISPs) where that service is used to infringe copyright.
More recently, the Court of Appeal in Cartier2 granted a website blocking order on based on trade mark infringement. The provision in the Senior Courts Act 1981 sets out that the Court may grant an injunction “in all cases in which it appears to be just and convenient to do so” was relied upon in Cartier2.
Nintendo manufactures and sells video games consoles, accessories and software. The ‘Nintendo Switch’ is one of its more recent consoles which has enjoyed huge commercial success in the UK. Nintendo owns various intellectual property rights including registered trade marks for the word ‘NINTENDO SWITCH’ and for the logo below.
Nintendo uses encryption to protect its copyright works such that a video game is encrypted using a single key. When a legitimate user purchases a Nintendo game, they are supplied with the encrypted game and a unique key which is used to decrypt the game itself. These technological protection measures (TPM) are put in place to prevent illegal copies being distributed.
Nintendo became aware that several websites were selling circumvention devices to circumvent the Nintendo TPMs in relation to its Nintendo Switch games.
Nintendo sought a website-blocking order against the ISPs on the basis of both their trade mark rights and copyright based on sections 296 and 296ZD of the CDPA 1988.
As the operators of the websites selling the circumvention devices used identical signs in relation to identical goods, and also because the operators benefited from Nintendo’s substantial reputation, Arnold J held that Nintendo’s trade marks were infringed under Article 9(2)(a) and Article 9(2)(c) of Regulation 2017/1001.
Nintendo also relied on sections 296 and 296ZD of the CDPA 1988 in relation to both the protection of computer programs and the protection of works other than a computer program, respectively. These provisions apply to technological measures that have been applied to a copyright work and are primarily designed for the purpose of enabling the circumvention of those technological measures.
Arnold held that Nintendo had good claims against the operators of the websites under sections 296 and 296ZD of the CDPA 1988.
Arnold J agreed that Nintendo had met the basic ’threshold’ conditions for an order to be made which are set out below:
Further, Arnold J considered the below eight criteria established in Cartier2 relevant to the grant of a website-blocking injunction that it be (i) necessary; (ii) effective; (iii) dissuasive; (iv) not unduly costly or complicated; (v) a fair balance between the fundamental rights engaged; (vi) proportionate; and (vii) safeguarded against abuse.
Arnold J held that as substantial sales of the circumvention devices have been made in the UK, that the evidence in Cartier2 was that injunctions are effective in reducing traffic to the target websites, that the injunctions are dissuasive, that the injunctions are not difficult for the ISP to implement, that the injunction sought by Nintendo will have no impact on legitimate trade, that the injunction strikes a fair balance in engaging Nintendo’s rights, that the injunction is proportionate. Further Arnold J also held that Nintendo’s requested order contains the usual safeguards used in previous cases and therefore granted Nintendo the website-blocking injunction.
Following the granting of the website-blocking orders based on section 97A CDPA, trade mark rights, and now sections 296 and 296ZD of the CDPA 1998, this decision paves the way for the UK courts to consider granting a website-blocking injunction on the basis of other intellectual property rights such as design rights, patents or rights in passing off.
Footnote:
1.[2019] EWHC 2376 (Ch)
2. [2016] EWCA Civ 658
If you’d like to discuss any of the topics in this case please contact Geoff Hussey, or another member of our Litigation Team.
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