Nintendo Co Ltd have obtained a UK website blocking injunction against innocent third party ISPs (including BT, Sky and TalkTalk), compelling them to block access from the UK to third party websites that were providing preloaded USB dongles (and a 'jig' tool) and circumvention software. The software allowed users to 'jailbreak' Nintendo's Switch consoles by circumventing Nintendo's encryptions, enabling them to play pirated games that infringed Nintendo's copyright works, as well as, 'homebrew' games. All websites were considered to be targeting the UK and used Nintendo's trade marks.
Nintendo made an application to the court on the basis of:
Trade mark infringement for the NINTENDO SWITCH word mark and the Joycon device mark
The trade mark infringement claim was considered to be a straightforward application of the test set out in Cartier v British Telecommunications. The judge had no issue in determining that the trade marks had been infringed on the basis that the websites were using identical signs to the trade marks and were taking unfair advantage of Nintendo's reputation. The application was not challenged by the Defendants, or the website operators. The judge directed Nintendo to make submissions on any possible trade mark defences but these were readily dismissed as any defence would require the website operators' use of the trade marks to be in accordance with honest commercial practices and a significant number of consumers would still likely have been misled.
Breaching statutory protection preventing the circumvention of technological protection measures (TPMs)
The second claim was noted by the judge to be more unusual since website blocking injunctions were originally the jurisdiction of the court only in claims for IP infringement under EU legislation. In this instance, the claim was in relation to a breach of UK statutory protection. Nevertheless, the judge accepted Nintendo's arguments that the Court had the jurisdiction to grant an injunction since the UK Supreme Court's decision in Cartier confirmed that website blockings injunctions could apply more broadly under UK common law.
When applying the test in Cartier, the judge considered that TPMs were proportionate and that Nintendo had standing to sue as the owner of the copyright protected works in the games and TPMs. Furthermore, there was good evidence that the circumvention devices were specifically used for jailbreaking Switch consoles and that the website operators knowingly offered the circumvention device for commercial purposes.
On this basis, the judge held that the websites infringed Nintendo's statutory rights and trade marks and an injunction could be granted against the websites.
While website blocking injunctions are commonplace in the TV and film industry, this is the first time a video games publisher and console manufacturer has sought such relief. This is also a good test case applying the principles set out in the UK Supreme Court's decision in Cartier, in respect of statutory protections to prevent third parties circumventing TPMs rather than any specific IP right.
The Court's application of the Cartier principles outside of IP will be welcomed by the industry in the fight against piracy. Each application will be analysed on a case-by-case basis but this type of relief could equally apply to other, wider issues such as bots, hacks and other forms of cheating. In particular, website operators for these types of website may either infringe trade marks or be held to authorise copyright infringement / act as a joint tortfeasor where they are inducing a breach of copyright licence (see our previous article: Blizzard v Bossland Saga: a UK post-credits scene on account of profits).
This article is part of our Insights series:
What’s shaping the agenda for the interactive entertainment industry in 2020?
Read the series overview here, or view all games and interactive entertainment Insights here.