September 23, 2019
The claimant, Nintendo Co Ltd, sought an injunction requiring the defendants, the five main retail ISPs in the UK, to take measures to block access by their customers to four websites that advertise, distribute, offer for sale and/or sell devices that allow technological protection measures on Nintendo’s popular Nintendo Switch games console to be circumvented. All four websites use Nintendo’s trade marks.
Mr Justice Arnold noted that, insofar as it relied on the protection of trade mark rights as its basis, Nintendo’s application was straightforwardly based on the principles set out by the Court of Appeal in Cartier International AG v British Sky Broadcasting Ltd  EWCA Civ 658, which was refined by the Supreme Court in the same case  UKSC 28.
The application raised one novel point, however, in that Nintendo relied, in addition to its trade mark rights, on the statutory protection given by ss 296ZD and 296 CDPA against the circumvention of copyright protection measures. Nintendo accepted that the rights conferred by these provisions were not themselves intellectual property rights and therefore fell outside the ambit of the Enforcement Directive (2004/48/EC), but contended that the reasoning of the Supreme Court in Cartier demonstrated that this was no obstacle to its application.
Arnold J noted that the Nintendo Switch and corresponding games include copyright works such as the operating software, the software for the games that run on the Nintendo Switch and various other copyright works, such as the soundtrack, graphics, text and so forth that are included in the operating environment and games.
Essentially, Nintendo’s technological prevention measures work by encrypting the games, including their artwork, text and soundtracks, to prevent unauthorised copies being created or played on the Nintendo Switch console. The devices sold by the target websites essentially circumvented these technological prevention measures and allowed users to download and use infringing copies of Nintendo’s copyright works.
Arnold J found that Nintendo’s technological prevention measures were proportionate and that the operators of the target websites were caught by s 296ZD(1)(b), as the circumvention devices were expressly stated to be for “hacking” the Nintendo Switch. Further, Arnold J found that Nintendo had standing to sue under ss (2), as it was the copyright owner of both the works and the technological prevention measures. Finally, the target websites were knowingly offering for commercial purposes circumvention devices whose express sole purpose was to circumvent the technological prevention measures and their activities were targeted at the UK.
Accordingly, Nintendo had good claims under ss 296ZD and 296 CDPA, as well as for trade mark infringement.
As for the court’s jurisdiction to grant a website blocking injunction, Arnold J agreed with Nintendo that it was clear from the reasoning of Lord Sumption in Cartier that the court’s jurisdiction was not limited to cases involving infringement of IP rights. Therefore, the court had jurisdiction to grant a blocking injunction not only on the basis of its claims for trade mark infringement, but also on the basis of its claims for infringement of its rights under ss 296ZD and 296 CDPA. (Nintendo Co Ltd v Sky UK Ltd  EWHC 2376 (Ch) (10 September 2019) — to read the judgment in full, click here).