Nintendo Company Ltd v British Telecommunications Plc
| Jurisdiction | England & Wales |
| Judge | Mrs Justice Joanna Smith |
| Judgment Date | 21 December 2021 |
| Neutral Citation | [2021] EWHC 3488 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: IL-2021-000083 |
[2021] EWHC 3488 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
THE HONOURABLE Mrs Justice Joanna Smith DBE
Case No: IL-2021-000083
Mr Jaani Riordan (instructed by Mishcon de Reya LLP) for the Claimant/Applicant
Hearing dates: 17 December 2021
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
By a Part 8 claim issued on 30 November 2021 and an application notice dated 2 December 2021, the applicant (“ Nintendo”) applied for the grant of a website blocking order under section 97A of the Copyright, Designs and Patents Act 1988 (the “ CPDA”) and/or pursuant to the inherent jurisdiction of the court under section 37(1) of the Senior Courts Act 1981 (the “ SCA”) against each of the respondents. I granted the Order sought following a hearing on 17 December 2021; these are my written reasons for doing so.
Nintendo is a world-famous video game company which develops, manufactures and sells video games for, among other platforms, the Nintendo Switch games console (“ Nintendo Switch”). The Nintendo Switch was launched in March 2017 and Nintendo has, since then, sold more than 89 million Nintendo Switch consoles worldwide. By September 2021, Nintendo had sold almost 5.3 million Nintendo Switch devices in the UK, generating over £1,052 billion in sales revenue in the UK.
In addition to designing, manufacturing and selling games itself for the Nintendo Switch, Nintendo also licenses third party developers to develop and publish games for the Nintendo Switch under an authorised developer programme. I shall refer to all authorised Nintendo video games as “ Nintendo Games”. In the UK, Nintendo sells its products through Nintendo of Europe GmbH (“ NOE”), its wholly owned subsidiary.
Nintendo Games can only be legitimately purchased on physical game cards for the Nintendo Switch or through Nintendo's online shop, the Nintendo e-Shop (the only legitimate source for downloadable Nintendo Games). To date, there are something in the region of 6,500 different Nintendo Games for the Nintendo Switch in the UK, all of which (in the case of games designed and manufactured by Nintendo) are protected by various intellectual property rights owned by Nintendo, to which I shall return in a moment.
Nintendo seeks an injunction to require the respondents (“ the ISPs”), six major UK broadband and mobile internet service providers, to block or attempt to block access to two websites, known as “NSW2U” and “NSWROM” respectively (together with their existing or future mirror websites, domain names and Uniform Resource Locators (“URLs”) (“ the Target Websites”)) which permit access (via links) to third party websites from which pirate Nintendo Switch video games (“ Unauthorised Nintendo Games”) may be downloaded.
The application is not opposed by the ISPs, who have all been subject to similar orders made in other proceedings before this court (including a blocking order obtained by Nintendo in relation to a website distributing piracy tools for use with the Nintendo Switch: see Nintendo Co Ltd v Sky UK Ltd [2019] EWHC 2376 (Ch)(“ Nintendo v Sky”)). The ISPs have all agreed the terms of the draft Order and, accordingly, they did not appear at the hearing.
Mr Riordan, on behalf of Nintendo, provided a detailed skeleton argument for the purposes of the hearing and dealt comprehensively during the hearing with my queries. I am extremely grateful for his assistance.
In support of the application, Nintendo relied upon:
i) A witness statement from Mr Neil Boyd, Head of Intellectual Property and Intellectual Property Enforcement at NOE, together with exhibits;
ii) A witness statement from Mr Jon Parker, an Intelligence Analyst employed by Fusion 85 Limited; and
iii) An expert report from Mr Andrew Clark, an expert in digital forensic investigation of information systems.
The Target Websites
The application concerns existing websites located at (i) nsw2u.xyz (“ NSW2U”); (ii) nsw2u.org; (iii) nsw2u.com; (iv) nsw2u.net and (v) nswrom.com (“ NSWROM”). The second, third and fourth of these websites redirect, or include a link, to NSW2U, their sole or predominant purpose apparently being to enable access to NSW2U.
The evidence in support of the application shows that a very substantial number of Unauthorised Nintendo Games are made available for download via the home page of NSW2U, as well as via several other pages including those entitled “Switch” and “Emulator”. Unauthorised Nintendo Games are also made available for download via several pages of NSWROM. The relevant pages each display images of the cover artwork (including Nintendo trade marks) for the Unauthorised Nintendo Game in question and those images incorporate a clickable link which enables the user to download the game. By way of example, amongst the many hundreds of games on offer, the Target Websites each offer the following, very well known, Unauthorised Nintendo Games: Super Mario Odyssey, The Legend of Zelda Skyward Sword, Animal Crossing: New Horizons, and Miitopia.
The prominent use of Nintendo trade marks throughout the Target Websites in game listings, on individual game pages and in social media and website logos appears deliberately designed to create the impression that the Target Websites are advertising genuine Nintendo Games.
The expert evidence confirms that the Target Websites collate large numbers of links to Unauthorised Nintendo Games in one place and that they are easy to navigate, allowing users to browse and select Unauthorised Nintendo Games to download. This makes them a ready substitute to legitimate Authorised Nintendo Games purchased from legitimate sources. Furthermore, the operators of the Target Websites have an incentive to make the process as simple as possible and to maximise the number of Unauthorised Nintendo Games downloaded because they generate income from advertising revenue via “click-through” arrangements with third parties. It is clear from this that the Target Website operators are engaged in commercial scale piracy and are posting the links to the Unauthorised Nintendo Games with a view to making a profit. Particularly troubling for Nintendo, given that a substantial part of its target market includes children, is that there is evidence that, in addition to adverts, the download process displays explicit adult content to the consumer.
NSW2U (but not NWSROM) also makes games available for use on consoles developed by other video game console manufacturers including Playstation and Xbox. The evidence indicates that these games are also pirated and unauthorised, since genuine games for Playstation and Xbox (and the other third party platforms listed on NSW2U) are not available (and without charge) through websites that collate and index downloadable games from third parties.
The investigations undertaken by Nintendo's witnesses and experts have found no evidence of any legitimate products or services on NSW2U or NSWROM and it would appear that it is unlikely that there is any legitimate trade on either website. All the test downloads conducted by Mr Clark were pirate copies of Authorised Nintendo Games. I accept Mr Riordan's submission that all of the material on the Target Websites can therefore be assumed to be tortious and infringing either Nintendo's rights or the rights of another game developer and/or publisher.
Like other pirate sites of its kind, it appears that NSW2U frequently changes its names, URLs and domain names. Thus “nsw2u.xyz” was previously known as “nsw2u.com” and prior to that “switch-xci.com”. Repeat users are shepherded from one domain to the next by means of social media announcements. In addition, the Target Website operators use multiple URLs and domain names, all of which are designed as “mirror” sites showing identical content (“nsw2u.xyz” is therefore also accessible via “nsw2u.org”, “nsw2u.com” and “nsw2u.net”). It is Mr Clarke's evidence that it is likely that this is to ensure the continued access to NSWU2 in the event that one or more of the domain names linking to that site is suspended, thereby assisting consumers to circumvent attempts at enforcement by video game publishers.
Despite the extensive efforts of Nintendo's solicitors to contact its operators and take down its social media accounts (as described in the evidence), the activities of NSW2U have not been curtailed and nor have any links making available Unauthorised Nintendo Games been removed. Nintendo and its witnesses have been unable to locate any contact details for NSWROM and no social media accounts associated with it have been identified, although it is Mr Parker's evidence that NSWROM and NSW2U are likely to be under common operation and control. The Target Websites remain active and Unauthorised Nintendo Games are still available for download; hence this application.
Copyright Infringement
I am satisfied from the evidence of Mr Boyd that in the case of games developed and produced by Nintendo, it owns the UK copyright in the source and object code for the game, together with related underlying works such as text, graphics and sound effects within the game (“ the Works”). Copyright subsists in the Works as ( inter alia)...
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