The UK’s IPEC court has granted various movie studios and Nintendo website blocking injunctions to prevent the infringement of their IP rights. The legal victories demonstrate the practical measures the English legal system is willing to take in the fight against online piracy.

Introduction

Online piracy is a well-documented drain on the entertainment industry, predicted to cost TV and movie providers almost $52bn in global revenue in 2022. Whilst the most recent UK Intellectual Property Office online copyright infringement tracker provides some grounds for optimism with overall levels of infringement in the last year falling by 2% compared with the previous four years, still some 23% of respondents had used illegal sources to access online content. Website blocking orders that prevent access to such infringing content have therefore proved a popular legal recourse for rights holders. However, as demonstrated by two recent website blocking orders, granted by the High Court and the Intellectual Property Enterprise Court (“IPEC“) respectively, this is an ongoing battle.

Background

The High Court application (Columbia Pictures Industries, Inc. and others  v British Telecommunications PLC and others [2021] EWHC 3438 (Ch)) (“Columbia”) was brought 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 in a range of film and TV content, which was being infringed by a group of 15 websites (the “Studios Target Websites”). The Studios therefore sought a website blocking order against the Studios Target Websites via the six leading UK internet service providers, being BT, EE, Plusnet, Sky, TalkTalk and Virgin Media (the “ISPs”).

The IPEC application (Nintendo Co Ltd v British Telecommunications PLC and others [2021] EWHC 3488 (IPEC)) was brought by video game company, Nintendo. Nintendo develops, manufactures and sells video games for, among other platforms, the Nintendo Switch games console, and also licenses third party developers to develop and publish games for the Nintendo Switch (the “Nintendo Games”). At the time of judgment, there were approximately 6,500 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 copyrights and registered trade marks owned by Nintendo.

Nintendo’s rights were being infringed by two websites, who – without anauthorisation – made substantial numbers of Nintendo Games available for download (the “Nintendo Target Websites”). Nintendo similarly sought a website blocking order against the Nintendo Target Websites via the ISPs (i.e. the same six leading UK internet service providers).

The website blocking orders do not actually remove the infringing material, but require the ISPs to block access to the Studios Target Websites and Nintendo Target Websites on their broadband services.

Granting the Order

Website blocking orders are brought under s.97A of the Copyright, Designs and Patents Act 1988 (“CDPA”) and, in both instances, were unopposed by the ISPs. The judges in Columbia and Nintendo were clear that in each case, the ISPs are “service providers”, a necessary requirement for a website blocking order to be granted. Separately, the judges outlined the remaining requirements for granting the orders and how each were satisfied as follows:

1. The Target Websites are infringing the Studios’ and Nintendo’s copyright in the UK

In both cases, although neither the Studios Target Websites nor the Nintendo Target Websites (the “Target Websites”) actually hosted or transmitted the infringing content, they did collate and index hyperlinks in a user-friendly manner to various third-party locations where unauthorised 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.

Firstly, it was an infringing act under s.20 CDPA by communicating the work to the public. The Target Websites actively engaged with end-users to provide straightforward access to the copyright content, which the recent decision of TuneIn Inc. v Warner Music UK Ltd has confirmed falls within the definition of a “communication“. The purpose of the Target Websites was to be accessed by many users, which had been achieved, and they had therefore communicated the content “to the public“. As the Target Websites were all in the English language, displayed adverts with prices in pounds sterling and, in the case of Nintendo, enabled users in the UK to download games in the English language, the judges were satisfied that there was the requisite targeting of UK end-users.

The judges also found that the Target Websites infringed copyright by authorising their users’ infringing acts of copying. By streaming the Studios’ film and TV content or downloading Nintendo Games, a user’s computer creates copies of the content in its memory, which is an infringing act under s.17(1) CDPA. As the Target Websites purportedly granted the right to access the content they made available, this subsequently “authorises” such an infringement.

In Nintendo, the court also considered the matter of trade mark infringement. Although noting that this was not strictly necessary where copyright infringement has been discerned, the Mrs Justice Joanna Smith was satisfied that the operators of the Nintendo Target Websites were infringing various Nintendo UK-registered trade marks. This infringement resulted from using identical signs in the course of trade in relation to identical goods (namely video games and downloadable programs in Class 9), contrary to s.10(1) of the Trade Marks Act 1994. The judge ruled that there was no basis to argue that the Nintendo Target Websites’ use of the marks was merely descriptive; it was clearly used to falsely denote the origin of the games and to drive traffic to the websites for the purposes of making a profit – i.e. not in accordance with honest practice.

2. The Target Websites use the ISPs’ services to do so

It was clear to the court that the operators of the Target Websites used the ISPs for their acts of infringement. In Columbia, the judge noted that it could also reasonably be inferred, given the ISPs’ market share, that their subscribers would use their services to access the Studios Target Websites.

3. The ISPs are aware of such infringement

Having been given notice of the application for the orders and served with the supporting evidence, the ISPs evidently had knowledge of the use of their services for such copyright/trade mark infringement.

Finally, the judges confirmed that they were satisfied that such orders should be made as a matter of discretion. It was held that the orders should be granted as they were necessary to prevent or at least reduce damage to the Studios and Nintendo and were the most effective measure available to impede the infringing acts. Such orders are not difficult for the ISPs to implement and any interference was justified by the legitimate aim of preventing further copyright and trade mark infringement.

Moreover, in weighing up the proportionality of granting an order and to support its decision, the judge in Nintendo pointed to the Supreme Court decision in Cartier International AG v British Telecommunications PLC [2018] UKSC 28 and noted that there is no additional cost to the ISPs for implementing the website blocking order, as this cost must be borne by the applicant for this order (i.e. Nintendo).

The ongoing battle against piracy

As the judgments note, website blocking orders can be an effective tool against online piracy. They are an attractive measure, as a single order can block access to several infringing websites at once. Given the popularity of the ISPs’ services, who hold a collective UK market share of over 85%, the website blocking orders will prevent widespread access to the Target Websites. Their effectiveness has resulted in copyright holders throughout the creative industries seeking similar orders, including, successfully blocking websites that provide unauthorised live-streams of sports matches.

However, such orders are not a silver bullet against online piracy. More determined infringers can circumvent them by using the likes of virtual private networks and new pirate sites are constantly being created. Indeed, this is the second published website blocking order obtained by the Studios in quick succession, with each order targeting a separate list of infringing websites. Nevertheless, studies have indicated that, when enforced against multiple pirate sites, website blocking orders can dissuade more casual infringers who may subsequently turn to legal alternatives.

The more difficult task is identifying the infringers ultimately behind the Target Websites, which is ultimately necessary to avoid a ‘whack-a-mole’ approach. Combining an experienced legal team with strong investigations credentials is key in that battle, and Squire Patton Boggs has the international reach and expertise to support in that regard.

Key Takeaways

• Website blocking orders can form part of an effective anti-piracy strategy in protecting the copyright and value in content.

• Obtaining orders via the leading ISPs in the jurisdiction and against multiple pirate sites can maximise their effectiveness.

• Rights holders should ensure ongoing monitoring (whether conducted in-house or via subscription to an infringement monitoring service) and enforcement against new pirate sites in order to prevent continued online copyright and trade mark infringement.

• Rights holders should work with lawyers to identify the ultimate source of the problem.