The IP Enterprise Court has ruled in the case of Nintendo Co Ltd v British Telecommunications plc and others [2021] EWHC 3488.
The IP Enterprise Court has granted Nintendo Co Limited an injunction under section 97A of the Copyright, Designs and Patents Act 1988 and section 37(1) of the Senior Courts Act 1981 ordering six internet service providers to block access to two websites. The websites concerned allowed access via links to third party websites. The third party websites in turn permitted pirate Nintendo Switch video games to be downloaded. This infringed copyright and Nintendo’s registered trade marks.
Subscribers to the ISPs who were located in the UK performed acts of copying in the UK when they connected to the websites and used them to access and download files containing the unauthorised Nintendo games onto electronic devices located in the UK. The judge inferred from the high number of visits to the websites by UK consumers (including repeat visits) together with the obvious purpose in providing a link to the unauthorised Nintendo games, that downloading was taking place and that copies of the works are therefore being created in the memory of those devices. The evidence showed a high level of downloads.
The operators of the websites authorised and/or were liable as joint tortfeasors for such copying by UK users.
The judge was also satisfied on the evidence that the website operators performed acts of communication to the public in the UK (such that these acts were to be regarded as taking place here) when links to the unauthorised Nintendo games were made available on the target websites. In arriving at this conclusion the judge had regard in particular to the following:
- the act of posting a link is capable of involving communication of the Works by electronic transmission to each user who clicks on that link: where, as here, the evidence indicated that the target websites were operated for profit, it was to be presumed that the act of posting a link amounts to ‘communication with the public’.
- while the presumption of knowledge is enough, here there was in any event clear evidence some of the website operators knew perfectly well that they are engaging in illegal activity. In addition to taking steps to preserve their anonymity, some operators warned their users to “use a VPN…to anonymize your torrenting” and they shifted users from one mirror site to another in an attempt to circumvent the effects of takedown notices and other enforcement steps taken by Nintendo and other publishers. There was no evidence to rebut the presumption of knowledge.
- the expert evidence confirmed that the links were effective to enable consumers to download the unauthorised Nintendo games advertised on the target websites. The purpose of the target websites was to facilitate the downloading of the unauthorised Nintendo games.
- these acts of communication to the public were targeted at the public in the UK, and, as such, were to be regarded as taking place here. Whilst the mere existence of a website and its accessibility by local consumers is not enough to establish a territorial link, here there was evidence (i) that the UK is a very substantial market for the Nintendo games; (ii) that the target websites included games which were extremely popular in the UK market such that the content of the target websites (which are English language websites) would be of interest to them and (iii) of a very substantial number of visits to the target websites by UK consumers. It was reasonable to infer that, whilst the nature of the products offered by the target websites was inherently cross border in nature and had given rise to blocking orders obtained by Nintendo in Spain, Italy, Portugal and other jurisdictions, nonetheless a large number of the downloads from the websites were likely to be from the UK. Certainly, the high level of access by UK consumers to the target websites indicated that UK consumers/the UK public regard the content on the target websites as directed to and meant for them.
Although not strictly necessary in circumstances where the judge had already found copyright infringement, he was satisfied on the evidence that it was clear that the operators of the target websites were infringing various Nintendo UK registered trade marks by using identical signs in the course of trade in relation to identical goods. The target websites were targeting average consumers in the UK.
It was proportionate to grant an injunction and therefore the court ordered it.
