Website blocking orders: Game on

Website blocking orders have been available to rights owners seeking to enforce their copyright against piracy sites for almost 10 years, proving an extremely useful tool in the music and film industries (among others).

Blocking orders have also been available to brand owners seeking to enforce trademark rights since 2014. In a case involving consumer electronics and video game company Nintendo, the English High Court has extended the availability of blocking orders even further, in a case related to ancillary rights under copyright legislation. This paves the way for further court applications seeking blocking injunctions where other rights are at play. Mishcon de Reya acted for Nintendo in the case.

The case ([2019] EWHC 2376) granted a ground-breaking website blocking order to Nintendo, the seller of the Nintendo Switch games console. The order compels five of the UK’s major internet service providers (ISPs) to block public access to various websites advertising and selling circumvention devices.

The order was made on the basis that websites were offering for sale and distributing devices which aim to circumvent the technological protection measures (TPMs) deployed in the Nintendo Switch console and authentic Nintendo Switch games. These TPMs are protected by certain rights contained in the UK Copyright, Designs and Patents Act 1988 (CDPA) which are ancillary to IP rights. The court‘s decision that it can grant website blocking injunctions in respect of TPMs confirms that these injunctions are not limited to cases of IP infringement.

Background

The case arises out of Nintendo’s efforts to prevent the advertising and sale of devices and software that circumvent its TPMs. The TPMs use encryption to prevent users playing pirated games, but circumvention devices—Team Xecuter SX Pro and SX OS—have been developed which get around these TPMs.

The SX Pro and the SX OS are the most numerous piracy-enabling products in respect of the Nintendo Switch and are sold on a number of websites which are believed to be hosted outside the UK.

Nintendo made two complaints about the target websites: first, that they were infringing its rights in registered trademarks. Second, that they infringed the rights of protection provided for in sections 296 and 296ZD of the CPDA.

Trademark infringement

It is well established that website blocking injunctions can be granted on the basis of trademark infringement (see the Cartier cases [2016] EWCA Civ 658 and [2018] UKSC 28). The target websites in this case made unauthorised use of Nintendo’s trademarks so in that respect, the application was straightforward.

The marks relied on by Nintendo were: