The High Court held in Nintendo Co Ltd v Sky UK Ltd and other companies [2019] EWHC 2376 (Ch) that Nintendo should be granted an injunction against five UK internet service providers. The injunction requires them to block or at least impede access by their customers to four websites that were offering devices for sale that permitted circumvention of technological protection measures on its devices. Nintendo argued that the websites infringed its copyright and EU trademark registrations under sections 296ZD and 296 of the Copyright, Designs and Patents Act 1988 by offering for sale products that helped users to circumvent the technological protection measures.
Nintendo contended, and the judge accepted, that the criteria for granting an injunction were satisfied because, in summary:
- the injunction sought was necessary to prevent, or at least reduce, substantial damage to Nintendo
- it appeared that substantial sales of the circumvention devices were in the UK
- that substantial quantities of pirated games were downloaded in the UK and installed on Nintendo Switch devices using the circumvention devices
- Nintendo sustained significant losses as a result
- no alternative measures were realistically available to Nintendo since Nintendo was unable to identify the operators of the target websites, who may well be abroad
- cease and desist letters sent by Nintendo’s solicitors were ignored, except that two websites changed their URLs following the sending of the letters
- take-down requests to the relevant hosting providers, to the extent that they could be identified, were likewise ignored
- take-down requests sent by Nintendo to platforms such as YouTube, Amazon and ebay were actioned by the platforms, but the relevant listings were simply replaced by new ones
- the evidence in the Cartier International AG and others (Respondents) v British Telecommunications Plc and another (Appellants) [2018] UKSC 28 showed that, although quite easily circumvented, blocking injunctions are effective in reducing traffic to the target websites
- similarly, blocking injunctions are dissuasive. Moreover, the ISPs are required to display information about the block, which helps to dissuade users
- blocking injunctions are not difficult for the ISPs to implement. On the contrary, they already have the necessary technology. Moreover, as a result of the Supreme Court’s decision in Cartier, Nintendo must bear the ISPs’ incremental costs of implementing the injunction, and so there is no additional cost for the ISPs
- the injunction sought by Nintendo would have no impact on legitimate trade, because none of the target websites appeared to carry on any legitimate trade
- the injunction would strike a fair balance between protecting Nintendo’s rights and the rights engaged, because the ISPs’ right to carry on business was unaffected and the public had no legitimate interest in being informed about or purchasing circumvention devices whose sole purpose was to circumvent Nintendo’s technological protection measures and infringe its rights to Nintendo’s significant detriment.
For those reasons, the injunction was proportionate. The order proposed by Nintendo contained the usual safeguards adopted in previous cases.
