Facts

Nintendo Co Ltd sought a website blocking order under s 97A of the Copyright, Designs and Patents Act 1988 against the six major UK internet service providers (ISPs) in relation to five websites at: (i) nsw2u.xyz (NSW2U); (ii) nsw2u.org; (iii) nsw2u.com; (iv) nsw2u.net; and (v) nswrom.com (NSWROM). The second, third and fourth of these websites redirected or linked to NSW2U, their main purpose being to enable access to NSW2U. Both NSW2U and NSWROM (the Target Websites) permitted access (via links) to third party websites from which pirate Nintendo Switch video games (Unauthorised Nintendo Games) could be downloaded, including very well-known games such as Super Mario Odyssey, The Legend of Zelda Skyward Sword, Animal Crossing: New Horizons, and Miitopia.

The evidence confirmed that the Target Websites collated large numbers of links to Unauthorised Nintendo Games in one place and that they were easy to navigate. Further, the operators of the Target Websites generated income and profit from advertising revenue via “click-through” arrangements with third parties.

Decision

The Honourable Mrs Justice Joanna Smith DBE was satisfied that in the case of games developed and produced by Nintendo, it owned the UK copyright in the source and object code for the game, together with related underlying works, such as text, graphics and sound effects within the game (Works). Copyright subsisted in the Works as, inter alia, literary works (in the case of source and object code and in-game text) and artistic works (in the case of graphics).

Smith J found that the operators and users of the Target Websites infringed the copyright in the Works in the UK because:

1. UK subscribers to the ISPs downloaded files containing the Unauthorised Nintendo Games causing the user’s device to create copies of the content in the memory of the device, which was an act of infringement; and
2. the operators of the Target Websites authorised and/or were liable as joint tortfeasors for such copying by UK users (i.e., as joint tortfeasors for such copying by UK users (Football Association Premier League Ltd v British Telecommunications plc [No.1] [2017] ECC 17)).

Smith J also held that the operators of the Target Websites performed acts of “communication to the public” in the UK by providing links to Unauthorised Nintendo Games because:

1. the act of posting a link was capable of involving communication of the Works by electronic transmission to each user who clicked on that link;
2. the Target Websites were operated for profit;
3. the operators know perfectly well that they were engaging in illegal activity; e.g., in addition to taking steps to preserve their anonymity, the operators of NSW2U warned their users to “use a VPN…to anonymize your torrenting” and they shifted users from one mirror site to another to circumvent the effects of takedown notices and other enforcement steps taken by Nintendo and other publishers;
4. the expert evidence confirmed that the links were effective to enable consumers to download the Unauthorised Nintendo Games advertised on the Target Websites; and
5. the acts of “communication to the public” were targeted at the public in the UK, and could therefore be regarded as taking place here because the evidence showed that: (i) the UK is a very substantial market for Nintendo Games; (ii) the Target Websites included games that are extremely popular in the UK; (iii) the Target Websites were in the English language; and (iv) a very substantial number of visits to the Target Websites were by UK consumers such that it could be inferred that a large number of the downloads of Unauthorised Nintendo Games from the Target Websites were likely to be from the UK.

In addition, Smith J found that the operators of the Target Websites had infringed various Nintendo UK registered trade marks by using identical signs in the course of trade in relation to identical goods (namely video games and downloadable programs in Class 9) contrary to s 10(1) of the Trade Marks Act 1994. The Target Websites targeted average consumers in the UK, and there was no basis to find that the use of the marks was merely descriptive: they were being used to denote (falsely) the origin of the games and thereby to drive traffic to the websites for the purposes of making a profit, which was not in accordance with honest practice.

Smith J was satisfied that the court had jurisdiction to make the order sought because: (i) the operators of the Target Websites were infringing Nintendo’s rights in the UK; (ii) both the operators and users of the Target Websites used the ISPs’ services to commit the infringements; and (iii) the ISPs had knowledge of the use of their services to infringe copyright, having been given notice of the application and served with the supporting evidence.

Finally, on the issue of the court’s discretion in granting an order under s 97A, Smith J held that: (i) the injunction was necessary to prevent or at least reduce substantial damage to Nintendo; (ii) blocking injunctions were now generally accepted to be effective in reducing traffic to infringing websites; (iii) blocking injunctions were dissuasive to both operators and users; (iv) it was not difficult for the ISPs to implement a blocking injunction; (v) an injunction would not impact on legitimate trade by the Target Websites because there was none; and (vi) an injunction struck a fair balance between protecting Nintendo’s rights and the ISPs’ rights to carry on business. Therefore, the injunction was proportionate.

Accordingly, Smith J granted the order sought by Nintendo. (Nintendo Co Ltd v British Telecommunications Plc [2021] EWHC 3488 (IPEC) (21 December 2021) — to read the judgment in full, click here).