Nintendo Co Ltd v Sky UK Ltd & Ors

A website-blocking injunction may be granted to protect rights that are not intellectual property rights where the court has jurisdiction under ordinary equitable principles. The court should apply criteria analogous to those used in intellectual property cases, including necessity, effectiveness, dissuasiveness, cost, legitimate trade, fundamental rights, proportionality and safeguards against abuse.

Sections 296 ZD and 296 of the Copyright, Designs and Patents Act 1988 protect against devices primarily intended to circumvent technological protection measures. The claimant must establish infringement directed at the United Kingdom and satisfy the threshold and discretionary conditions for blocking relief.

Nintendo sought an injunction requiring five major United Kingdom internet service providers to block or impede access to four websites advertising, selling or distributing devices designed to circumvent technological protection measures on Nintendo Switch consoles. The claim relied on trade mark infringement and sections 296 ZD and 296 of the Copyright, Designs and Patents Act 1988.

The defendants either consented to or did not oppose the application. The application was determined on paper. The central issues were whether the statutory anti-circumvention provisions had been infringed, whether the court had jurisdiction to grant blocking relief for those rights, and whether the threshold and proportionality requirements for such an injunction were satisfied.

1. Jurisdiction and applicable framework. The court held that the jurisdiction to grant website-blocking orders exists under ordinary equitable principles and is not confined to infringement of intellectual property rights. The reasoning of the Supreme Court in Cartier International AG v British Sky Broadcasting Ltd [2018] UKSC 28 therefore permitted relief based on the statutory anti-circumvention rights as well as the trade marks.
2. Anti-circumvention claims. Applying Nintendo Company Ltd v Playables Ltd [2010] EWHC 1932 (Ch) and Nintendo Co Ltd v PC Box Srl [EU:C:2014:25], the court held that the encryption and related measures applied to the games and console software were technological protection measures within sections 296 ZD and 296 of the Copyright, Designs and Patents Act 1988. The measures were proportionate to copyright protection. The devices were promoted and designed primarily to facilitate circumvention, and the operators knowingly offered them for commercial purposes. Nintendo had standing under each relevant subsection and the activities were targeted at the United Kingdom.
3. Trade mark infringement. The websites used signs identical to Nintendo’s marks for identical goods without consent. The use affected the origin and investment functions of the marks and took unfair advantage of their reputation. The websites targeted United Kingdom consumers. The defence in Article 14(c) of the EU Trade Mark Regulation failed because consumers were likely to be misled and the use was inconsistent with honest practices.
4. Blocking criteria. Applying Cartier International AG v British Sky Broadcasting Ltd [2016] EWCA Civ 658, the court held that analogous threshold conditions and discretionary criteria should apply to non-intellectual-property rights. The defendants were intermediaries, the websites infringed Nintendo’s rights, the defendants’ services were used for that infringement, and they had actual knowledge. The injunction was necessary, effective, dissuasive, straightforward to implement, unaffected legitimate trade, struck a fair balance and was proportionate.
5. The injunction sought by Nintendo was granted.

First-instance decision. The application was considered on paper by the High Court (Chancery Division).