Game over for hyperlinking sites, following Nintendo's recent blocking order success

In a helpful and clear judgment from the IPEC, Nintendo has succeeded in obtaining a broad website blocking order, which includes websites that merely redirect, or link to, third party piracy websites. The decision represents an important win for Nintendo in its continuing efforts to curtail the spread of online piracy in the UK.

Background

On 2 December 2021, Nintendo filed an application seeking an injunction against six major UK broadband and mobile internet service providers (including BT, Sky and Virgin Media) (the "ISPs"). The application sought the blocking, or attempted blocking, of access to two websites by the ISPs (the "Target Websites").  The Target Websites permitted access, via links, to third party websites that allowed visitors to download pirate copies of Nintendo Swich games (the "Unauthorised Nintendo Games"). 

The application was not opposed by the ISPs who, after a long line of cases in which similar orders have been successfully obtained, will be very familiar with such actions and their likely outcome.

Law

Under section 16 of the Copyright, Designs and Patents Act 1988 (the "CDPA 1988"), copyright is infringed if works are communicated to the public in the UK, including by electronic transmission (section 20(2)),  or by authorisation of the infringing act. 
In addition to pursuing infringers themselves, copyright owners can seek to obtain website blocking orders against ISPs whose services have been used to commit the infringing act. To succeed, the copyright owner must establish that: 

• the ISP is a service provider; 
• the users or operators of the websites infringed copyright by using the ISP's services; and
• the ISP has actual knowledge of the infringement (which includes it having been put on notice by the copyright owner).   

Decision

In the present case, an order was granted requiring the ISPs to block access to the Target Websites, under section 97A of the CDPA 1988 and section 37(1) of the Senior Courts Act 1981. 

Copyright infringement by users

The court found that subscribers of the ISPs in the UK (the "Users") had infringed the copyright in Nintendo's works (specifically, the source and object code of the game and certain text and graphic within it) (the "Works").  The Users performed acts of copying when: (i) connecting to the Target Websites; and (ii) using them to access and download files containing the Unauthorised Nintendo Games onto electronical devices located in the UK.  Due to the large number of visitors to, and the obvious purpose of, the Target Websites, the Judge inferred that downloading was taking place and thus infringing copies of the Works were being created in the memory of those devices.  

Copyright infringement by operators 

In line with previous decisions, the operators of the websites authorised and/or were liable as joint tortfeasors for the Users' copying.  
The Court found that the act of posting a link was capable of falling within communication of the Works by "electronic transmission" to each User who clicked on that link.  This effectively widens the scope of website blocking orders to include not only those actually providing access to pirate copies, but also the wider circle of websites redirecting/linking to the original piracy sites. 

Here, evidence indicated that the Target Websites were being operated for profit, so it was presumed that the act amounted to "communication with the public" (GS Media BV v Sanoma Media Netherlands BV).

Although actual knowledge was required, there was clear evidence in this case that the operators knew about their engagement in illegal activity, as steps were being taken to preserve their anonymity and circumvent enforcement steps taken by Nintendo.  

Communication to the UK public

In considering whether infringement had occurred in the UK, it was necessary for the Court to consider if UK consumers had been targeted. The Unauthorised Nintendo Games were available online but it is well documented in case law that the mere accessibility of a website to consumers in a particular locale is not enough to establish a territorial link and consequently, a cause of action, in that jurisdiction.  In the present case however, the Court was satisfied that UK consumers would regard the Target Websites' content as directed at them for the following reasons:

(i) the UK was a substantial market for Nintendo Games; 

(ii) the Target Websites included games extremely popular in the UK; and

(iii)  a substantial number of visits to the Target Websites were by UK consumers, with one website reaching 434,000 total visits (including repeats) since January 2021.   

Proportionality of the Injunction 

Despite extensive efforts by its solicitors, Nintendo had failed to identify the operators of the Target Websites.  The injunction was therefore necessary to prevent further damage and was held to be proportionate on the grounds that: (i) the ISPs' rights to carry on business would be unaffected; (ii) the ISPs already had the technology necessary to block access; (iii) Nintendo would bear the costs of implementing the injunction; and (iv) the public had no legitimate interest in being informed about, or gaining access to, websites operated for the sole purpose of providing access to the Unauthorised Nintendo Games. 

Importance

The UK courts have been granting website blocking orders for some time now but the decision in Nintendo expands this helpful tool, confirming that its scope extends not only to piracy sites themselves but also, to websites that simply post hyperlinks to them. The case also reiterates the flexible approach adopted by the courts in assisting rights holders to navigate and tackle the complexities of online infringement.