In Nintendo Co Ltd v British Telecommunications Plc ( EWHC 3488 (IPEC) (December 21, 2021)), a judge 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 allow Internet Service Providers (ISPs) to continue to negotiate fairly.
Nintendo develops, manufactures and sells video games for (among other things) its Nintendo Switch console. It also licenses third parties to develop and publish games for the Nintendo Switch under its Certified Developer Program. Games can be legitimately purchased on physical game cards or downloaded through Nintendo’s online store.
By application dated December 2, 2021, Nintendo sought the grant of a website blocking order under Section 97A of the Copyright, Designs and Patents Act 1988 and/or under 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” (and their associated websites/domains) ─ which provided access to pirated Nintendo Switch game downloads.
These websites have generated revenue through clickable advertising agreements with third parties through the aggregation of a large number of links offering downloads to, among other things, unauthorized Nintendo Switch games. Evidence provided by Nintendo showed that the relevant pages of the websites displayed images of Nintendo Switch game covers, including Nintendo’s trademarks, and that these images incorporated click-through links allowing the user to download the game. The prominent use of Nintendo’s trademarks on websites and social media was deliberately designed to give the appearance that the Nintendo games advertised were genuine.
The respondents ─ BT, EE, Plusnet, Sky, TalkTalk and Virgin Media ─ had already been the subject of similar orders issued in other proceedings (including previous ones involving Nintendo) and had agreed to the terms of the draft order before the hearing.
Copyright and Trademark Infringement
First dealing with the copyright infringement claim, the presiding judge, Mrs Justice Joanna Smith, was satisfied that Nintendo owned the UK copyright in the source and subject matter code of its Nintendo Switch games, as well as in related underlying works such as text, graphics and sound. effects in games (including as literary and artistic works) and that these were made available to the public contrary to copyright, design and patent law. In particular, the judge found that subscribers to ISPs located in the UK performed acts of copying in the UK when they connected to the websites and used them to download files containing the unauthorized Nintendo games. on their electronic devices. The operators of the website have authorized and/or have been responsible as co-authors for such copies and have performed acts of communication (by electronic transmission) to the public in the United Kingdom where links to unauthorized Nintendo games have been posted. available to UK consumers. It was reasonable to conclude that UK consumers would assume that the websites were aimed at them.
Alternatively, the judge was satisfied, based on the evidence, that the websites infringed Nintendo’s trademarks by using identical signs in the course of business for identical goods (i.e. video games and downloadable programs) in violation of Article 10(1) of the Trademark Act. 1994. The websites targeted average consumers in the UK and the marks were used to promote and distribute counterfeit versions of the games, a “preeminent example” of counterfeiting. There was no plausible basis for assuming that the use of the marks was merely descriptive. They were used to falsely indicate origin and drive traffic to websites for the purpose of making a profit, which was not in line with honest practices.
An increase in the provision and consumption of online content (due, in part, to the covid-19 pandemic) has led to a corresponding increase in websites offering illegal downloads of games, music and movies, violating the copyrights and trademarks of rights holders. While there is no silver bullet against those who intend to offer such illegal downloads, there are certain remedies, including website blocking injunctions, that can mitigate the damage caused by such illegal downloads. Site (s.
As the judge recognized in granting the relief sought by Nintendo, blocking injunctions are not difficult for ISPs to implement – they have the necessary technology readily available and, following the Court’s decision supreme in Cartier International AG v British Telecommunications plc ( UKSC 28), Nintendo would bear the ISP charges.
Chloe Perea Poole, Emily Roberts
Burges Salmon LLP
This article first appeared in Global Brand Review. For more information, please visit https://www.worldtrademarkreview.com/corporate/subscribe
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