Posted on 22/6/2021

Nintendo pioneers new piracy blocking tactics in IP infringement cases

What are the new IP tactics that electronics company Nintendo have used so effectively?

The well-known Japanese consumer electronics and video game company Nintendo has had a productive year so far in 2021 when it comes to IP litigation, notching three victories so far.  This follows on from avoiding a $10.1 million damages claim for patent infringement based on the Wii remote that we reported on last year.

One of the victories was a successful defence in the USA of a patent infringement suit brought by Gamevice.  The two victories discussed in this article relate to providers of software and devices that enable users to run pirated copies of Nintendo’s video games by circumventing Nintendo’s security systems.

The first case is the first example of a court in continental Europe ordering internet service providers to block websites supplying/enabling piracy of video games, potentially paving the way for further similar decisions across the EU.

The second case demonstrates how existing legislation and the policies of online marketplaces can be ineffective in preventing infringement of rights by overseas actors.

1. Team Xecuter vs Nintendo

Nintendo has obtained injunctions in Spain which force internet service providers (ISPs) to block certain websites facilitating piracy by distributing software/devices that allow circumvention of Nintendo’s security systems.

This decision was obtained as part of Nintendo’s pursuit of Team Xecuter domains across Europe.  Nintendo is seeking injunctions against the major ISPs in each country based on the implementation of an EU directive that requires Member States to ensure rights holders can apply for injunctions against intermediaries such as ISPs.

Nintendo has already been successful in the UK, but the recent decision in Spain represents the first court ordered injunctive relief of this kind in continental Europe.  As such, we might expect that similar orders in the courts of other EU member states will be issued in future both for Nintendo as well as other aggrieved rights holders.

This decision will help rights holders shift responsibility for removing/blocking websites that enable infringement to the ISPs.  As ISPs deliver the content to users, this should enable easier and more effective enforcement of rights.

2. “Winmart” vs Nintendo

Nintendo secured court injunctions in the USA to prevent a Vietnam-based Amazon seller from selling any devices designed for “circumventing the technological security measures for Nintendo consoles”.

As with the first case, the devices complained of make it possible for users of a Nintendo console to load and play unlicensed games, and as such, Nintendo argued that distribution of them constituted copyright infringement.

Nintendo initially proceeded by making a complaint directly to Amazon USA, which was successful in removing the listings from the e-commerce site.  However, matters were complicated when the seller filed a Digital Millennium Copyright Act (DMCA) counter-notification stating that the listings had been removed in error.  This lead to re-instatement of the listings in spite of Nintendo’s earlier complaint.

Typically, filing a DMCA counter-notification in bad-faith carries significant risk as you may be convicted of perjury and face up to five years in prison plus fines.  However, as the seller was based in Vietnam, these penalties were unlikely to ever be implemented.  As such, Nintendo were forced to take the matter to court.

This shows how overseas actors can game the complaints systems of online market places with relatively low risk.  As in this case, if all else fails, rights holders are forced to take matters to court.  This is of course not an efficient use of the court system as the court action may not have been necessary if the party complained of was not overseas.  It will be interesting to see if online market places adapt their policies to account for this.

At Wilson Gunn we have experience in cost-effective removal of infringing listings from online market places as well as taking action against infringing websites and domains.  So if you have any questions about the above article, or any aspect of IP protection please do not hesitate to contact our team.

Wilson Gunn