The UK IPEC tribunal has granted various Nintendo film studios and websites blocking injunctions to prevent infringement of their intellectual property rights. The court victories demonstrate the practical steps the English legal system is prepared to take in the fight against online piracy.
Online piracy is a well-documented drain on the entertainment industry, expected to cost TV and movie providers nearly $52 billion in global revenue in 2022. While the most recent UK Intellectual Property Office online copyright infringement tracker gives reason for optimism with overall levels of breaches over the past year down 2% from the previous four years, some 23% of respondents had still used illegal sources to access content in line. Website blocking orders that prevent access to such infringing content have therefore proven to be a popular legal remedy for rights holders. However, as demonstrated by two recent website blocking orders, granted by the High Court and the Intellectual Property Tribunal (“IPEC”) respectively, this is an ongoing battle.
The request of the High Court (Columbia Pictures Industries, Inc. and others v British Telecommunications PLC and others  EWHC 3438 (Ch)) (“Columbia”) was presented jointly by members of six major entertainment studio groups, namely Columbia Pictures, Disney, Netflix, Paramount Pictures, Universal Studios and Warner Bros. (the “Studios”). The Studios own the copyright to a range of film and television content, which has been infringed by a group of 15 websites (the “Studios Target Websites”). The studios therefore applied for a website blocking order against the studios’ target websites via the UK’s six major internet service providers, namely BT, EE, Plusnet, Sky, TalkTalk and Virgin Media (the “ISPs”).
The IPEC request (Nintendo Co Ltd v British Telecommunications PLC and others  EWHC 3488 (IPEC)) was offered by the video game company Nintendo. Nintendo develops, manufactures and sells video games for, among other platforms, the Nintendo Switch game console, and also licenses third-party developers to develop and publish games for the Nintendo Switch (“Nintendo Games”). At the time of the judgment, there were approximately 6,500 Nintendo games for the Nintendo Switch in the UK, which (in the case of games designed and manufactured by Nintendo) are protected by various copyrights and trademarks owned by Nintendo.
Nintendo’s rights were infringed by two websites which, without authorization, made substantial numbers of Nintendo games available for download (the “Nintendo Target Websites”). Nintendo also sought a website blocking order against Nintendo’s target websites via ISPs (i.e. the same six major internet service providers in the UK).
Website blocking orders do not actually remove infringing material, but require ISPs to block access to target Studios websites and target Nintendo websites on their broadband services.
Granting of the order
Website blocking orders are made under Section 97A of the Copyright, Designs and Patents Act 1988 (“CDPA”) and in either case have no not challenged by ISPs. The Columbia and Nintendo judges made it clear that in each case the ISPs are “service providers,” a necessary condition for a website blocking order to be granted. Separately, the judges outlined the remaining conditions for granting the orders and how each was met as follows:
The target websites infringe the copyrights of UK studios and Nintendo
In either case, although neither Studios Target Websites nor Nintendo Target Websites (the “Target Websites”) actually host or transmit the infringing material, they have collected and indexed hyperlinks in a manner friendly to various unauthorized third-party locations. copies of each of the studios’ and Nintendo’s content could be freely accessed. In both cases, the court was satisfied that this mode of operation constituted two acts of copyright infringement under the CDPA.
First, it was an act of infringement under section 20 of the CDPA by communicating the work to the public. Target websites have actively engaged with end users to provide direct access to copyrighted content, which the recent decision by TuneIn Inc v Warner Music UK Ltd confirmed falls within the definition of a “communication”. The target websites’ goal was to be accessible to many users, which they achieved, and they therefore communicated the content “to the public”. Since the target websites were all in English, displayed advertisements with prices in pounds sterling and, in the case of Nintendo, allowed UK users to download games in English, the judges were convinced that it there was the required targeting of UK end users.
The judges also concluded that the target websites infringed copyright by allowing the unlawful acts of copying by their users. By streaming film and television content from the studios or downloading Nintendo games, a user’s computer creates copies of the content in its memory, which is an offense under CDPA Section 17(1) . As the target websites were allegedly granting the right to access the content they made available, this subsequently “allows” such infringement.
In Nintendo, the court also considered the issue of trademark infringement. Although noting that this was not strictly necessary where copyright infringement was found, Judge Joanna Smith was satisfied that the operators of Nintendo’s target websites were infringing various Nintendo UK trademarks. This infringement resulted from the use of identical signs in the course of business for identical goods (namely video games and downloadable programs of Class 9), contrary to section 10(1) of the 1994 Act on brands. The judge held that there was no reason to claim that the use of the marks by Nintendo’s target websites was merely descriptive; it has clearly been used to falsely indicate the origin of the games and to drive traffic to the websites for profit – i.e. not in accordance with fair usage.
The target websites use the services of ISPs to do this
It was clear to the court that the operators of the target websites were using the ISPs for their acts of infringement. In Columbia, the judge noted that it could also reasonably be inferred, given the market share of ISPs, that their subscribers would use their services to access Target Studios websites.
ISPs are aware of this violation
Having been notified of the request for the injunctions and served with supporting evidence, the ISPs clearly had knowledge of the use of their services for such copyright/trademark infringement.
Finally, the judges confirmed their belief that such orders should be made on a discretionary basis. It was held that the injunctions should be granted because they were necessary to prevent or at least reduce harm to the studios and Nintendo and were the most effective measure available to prevent acts of infringement. Such orders are not difficult for ISPs to enforce and any interference was justified by the legitimate aim of preventing further copyright and trademark infringement.
In addition, to assess the proportionality of the granting of an order and to support his decision, the Nintendo judge referred to the Supreme Court’s decision in Cartier International AG v British Telecommunications PLC  UK SC 28 and noted that there is no additional cost to ISPs for implementing the website blocking order, as this cost must be borne by the applicant for this order (i.e. say Nintendo).
The ongoing fight against piracy
As the cases note, website blocking orders can be an effective tool against online piracy. This is an interesting measure, since a single command can block access to several counterfeit websites at once. Given the popularity of ISP services, who hold a collective UK market share of over 85%, website blocking commands will prevent widespread access to target websites. Their effectiveness has led copyright holders across the creative industries to seek similar controls, including successfully blocking websites that provide unauthorized information. live broadcasts of sports matches.
However, these commands are not a magic bullet against online piracy. More determined offenders can get around them using virtual private networks, and new pirate sites are constantly being created. Indeed, it is the second website blocking order issued obtained by the Studios in quick succession, with each order targeting a distinct list of infringing websites. However, studies reported that when enforced against multiple pirate sites, website blocking orders can deter more casual offenders who may then turn to legal alternatives.
The most difficult task is to identify the offenders behind the target websites, which is ultimately necessary to avoid a “molecule” approach. Combining an experienced legal team with strong investigative credentials is essential in this battle, and Squire Patton Boggs has the international reach and expertise to support in this regard.
Key points to remember
Website blocking orders can be part of an effective anti-piracy strategy to protect copyright and the value of content.
Obtaining orders through the major ISPs in the jurisdiction and against multiple pirate sites can maximize their effectiveness.
Rightsholders must provide ongoing monitoring (whether in-house or through a subscription to an infringement monitoring service) and enforcement against new pirate sites to prevent continued copyright infringement and to brands online.
Rights holders should work with lawyers to identify the ultimate source of the problem.
© Copyright 2022 Squire Patton Boggs (USA) LLPNational Law Review, Volume XII, Number 88