Nintendo v Playables: Piracy and DS Home-brewing

July 28, 2010

In Nintendo Co Ltd and Nintendo of Europe GmbH v Playables Ltd and Wai Dat Chan [2010] EWHC 1932 (Ch), Nintendo were granted summary judgment in an action concerned with copyright infringement and the avoidance of copy-protection devices. Prior to the hearing, HMRC and trading standards officers had seized more than 165,000 game copiers intended for the defendants and the parties had achieved a partial settlement of their claim which involved the defendants giving contractual undertakings in relation to dealing in the devices. 

The summary judgment claim focused on the circumvention of copy-protection provisions, ie ss 296ZD and 296 of the Copyright, Designs and Patents Act 1988. There was also an element relating to copyright infringement by authorisation in respect of some copyright works transiently copied into the random access memory in the course of use of the defendants’ devices.  

The devices fit into one of the slots on the Nintendo DS. They each contain either built-in memory or a further slot of their own which accommodates a micro-SD flash card. Copies of games can be stored on this memory either by connecting the device itself to a computer using an adapter or by extracting the memory card used with it and connecting that to a computer, again using an appropriate adapter. The devices also contain circuitry, software and data which enable them to pass the tests performed by the DS to verify that the game card inserted is genuine. In this way, the devices enable unlawful copies of Nintendo games to be played successfully on the DS, as well as other material.

One of the defences which had been raised was that the devices had lawful uses, and ‘home-brewing’ (the design of non-Nintendo games for the DS) and the playing of home-brewed games was no doubt the main such use that was contemplated. But Floyd J observed ‘the lawful uses must be uses of the accused devices in conjunction with the DS console. One such suggested lawful use is for home-made games. However, such use will still circumvent the ETM [effective technological measures within the meaning of s 296ZD], or otherwise the game will not play. The mere fact that the device can be used for a non-infringing purpose is not a defence, provided one of the conditions in section 296ZD(1)(b) … is satisfied.’ He goes on to describe the devices as ‘templates for infringement’. 

There is a passing reference in the judgment to doubt about whether s 296 of the CDPA properly implements the Directive. Readers may also wish to note that, on the question of jurisdiction and possible infringement taking place abroad, Floyd J endorses the approach taken by Laddie J in Sony v Ball [2004] EWHC 1738 (Ch). 

Effect of the Judgment 

Software pirates use R4 cards to store and access hundreds of illegally-obtained DS games on one cartridge. and Nintendo has brought a number of actions across Europe to quash piracy on the DS by stopping R4 retailers. Nintendo released a statement saying:
‘Nintendo promotes and fosters game development and creativity, and strongly supports the game developers who legitimately create new and innovative applications. Nintendo initiates these actions not only on its own behalf, but also on behalf of over 1,400 video game-development companies that depend on legitimate sales of games for their survival.’ 

However, while piracy is raison d’etre of the devices, there is a genuine ‘home brewing’ industry which writes original software for the DS and needs these devices to make that software useful. The comments on Gamasutra (less exciting than it sounds) suggest that home brewers will be disappointed and frustrated – and may move their attentions to the iPhone or associated devices.