Blocking Orders are not limited to IP infringement cases
The Court’s jurisdiction provided by the general power conferred on it by section 37(1) of the Senior Courts Act 1981 to grant website-blocking injunctions in… Read more
The Court’s jurisdiction provided by the general power conferred on it by section 37(1) of the Senior Courts Act 1981 to grant website-blocking injunctions in cases involving infringement of trade marks has previously been established by the Supreme Court in Cartier (see our previous article summarising that case).
The recent judgment of the High Court in Nintendo Co Ltd v Sky UK Ltd and others  EWHC 2376 (Ch) has confirmed that the court’s power to grant such injunctions are not limited to cases involving the infringement of IP rights by granting an injunction against the internet service providers (“ISPs”) to prevent the circumvention of copyright protection measures.
Nintendo was seeking a blocking injunction against the five main ISPs in the UK requiring them to block access to four websites that were offering for sale products designed to circumvent technical protection measures on Nintendo Switch games consoles which protect Nintendo’s copyright works.
The websites in question made use of Nintendo’s trade marks without consent and Nintendo’s primary case was therefore that the Target Websites were infringing Nintendo’s trade marks under either Article 9(2)(a) and/or 9(2)(c) of the EU Trade Mark Regulation (2017/1001/EU of 14 June 2017). This was accepted by the court.
However, this case addressed a novel point as, in addition to relying on its trade mark rights, Nintendo contended that it was entitled to rely on the statutory protection given by sections 296ZD and 296 of the Copyright, Designs and Patents Act 1988 (“CDPA”), which respectively implement Article 6 of the Information Society Directive (2001/29/EC of 22 May 2001) and Article 7(1)(c) of the Software Directive (2009/24/EC of 23 April 2009).
Copyright works other than computer programs (section 296ZD of CDPA)
Section 296ZD gives protection to copyright works other than computer programs and provides that:
“(1) This section applies where—
- effective technological measures have been applied to a copyright work other than a computer program; and
- a person (C) manufactures, imports, distributes, sells or lets for hire, offers or exposes for sale or hire, advertises for sale or hire, or has in his possession for commercial purposes any device, product or component, or provides services which—
- are promoted, advertised or marketed for the purpose of the circumvention of, or
- have only a limited commercially significant purpose or use other than to circumvent, or
- are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, those measures.
(2) The following persons have the same rights against C as a copyright owner has in respect of an infringement of copyright—
- a person—
- issuing to the public copies of, or
- communicating to the public,
- the work to which effective technological measures have been applied; the copyright owner or his exclusive licensee, if he is not the person specified in paragraph (a); and
- the owner or exclusive licensee of any intellectual property right in the effective technological measures applied to the work.”
The Court of Justice of the European Union has held that Article 6 of the Information Society Directive is to be interpreted broadly and “includes application of an access control or protection process, such as encryption, scrambling or other transformation of the work”. It was accepted by Arnold J that this applied to the current case.
The CJEU also held that the measures had to be proportionate to and not go beyond what is necessary for the aim of protecting a party’s copyright. When taking that into account, the CJEU considered:
- the costs of different types of technology measures;
- the consideration of technical and practical aspects of their implementation; and
- a comparison of the effectiveness of different types of technological measures.
Nintendo showed that such measures represent good practice and that alternative measures would increase the cost to consumers. Arnold J also considered that when determining whether the measures were proportionate, it was relevant to consider the circumvention devices themselves. He found that the main use of the circumvention devices was to enable the unlawful use of the Nintendo Switch. Further, the use of technological protection measures by Nintendo did not prevent video games being independently developed as Nintendo provided an easy route to doing so through its Authorised Developer program. Arnold J therefore accepted that the measures adopted by Nintendo were proportionate.
It was clear that the operators of the Target Websites fell within any of (i) to (iii) of sub-sections 1(b) of section 296ZD and as Nintendo was the party that issues the games to the public as well as being the copyright owner of both the works and the technological prevention measures, it qualified under each of the potential sub-sections of section 296ZD(2).
Computer programs (section 296 CDPA)
Section 296 CDPA applies to protection of computer programs. It provides (in relevant part) as follows:
“(1) This section applies where—
- a technical device has been applied to a computer program; and
- a person (A) knowing or having reason to believe that it will be used to make infringing copies-
- manufactures for sale or hire, imports, distributes, sells or lets for hire, offers or exposes for sale or hire, advertises for sale or hire or has in his possession for commercial purposes any means the sole intended purpose of which is to facilitate the unauthorised removal or circumvention of the technical device; or
- publishes information intended to enable or assist persons to remove or circumvent the technical device.”
Arnold J held that the requirement for knowledge that the circumvention devices would be used to make infringing copies was clearly met since each of the Target Websites made various statements which made clear that the device allowed users to download and use infringing copies of relevant works.
The court therefore concluded that Nintendo had good claims against the defendants under sections 296ZD and 296 CDPA88 as well as for trade mark infringement. It then went on to apply the criteria set out in Cartier (details of which are included in our article) before granting Nintendo the blocking injunction.
This judgment is the first to confirm that the scope for obtaining website blocking orders is not limited to IP infringement cases. Such a finding will likely be welcomed not only by the gaming industry but also by any others who seek to ensure the protection of computer programs or other copyright works through technological security measures, such as software providers.
It is also of note that this application was heard on paper. This should reduce the costs of an application making such applications more attractive to claimants seeking to protect their proprietary works in circumstances where the chances of recovering their costs are low.
 Case C-355/12 Nintendo Co Ltd v PC Box Srl [EU:C:2014:25]
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