Authors: Willem Leppink and Jeremy Schutte (Ploum Lodder Princen, The Netherlands)
Nintendo Co. Ltd and others v Snip Webwinkels and others, 324867/HA ZA 08-3879, Court of First Instance The Hague, The Netherlands, 21 July 2010.
Citation: Journal of Intellectual Property Law & Practice (2010) doi: 10.1093/jiplp/jpq146
Nintendo based the infringement of its copyrights by the resellers on two provisions from the Dutch Copyright Act, both having their origin in European directives.
First is the Dutch Copyright Act Article 29a, which is based on Article 6 of the Directive 2001/29 on the harmonization of certain aspects of copyright and related rights in the information society. This Article provides that it is unlawful to circumvent technological measures that are intended to prevent or restrict acts regarding works protected by copyright, which are not permitted by the producer or its successor.
Secondly Article 32a of the same Act played a role in this case. This Article is based on Article 7(1)(c) Directive 91/250 on the legal protection of computer programs and provides that it is unlawful to market technological devices solely intended for removal or circumvention technological measures intended to protect computer software.
The most important question the court had to decide is which of these two Articles provides the best protection against flash cards and mod chips: Article 29a which protects ‘works in general’, or Article 32a, which specifically protects computer software?
In the fight against illegally copied software Nintendo has taken measures to prevent the use of copied software on its Nintendo DS, DSi and Wii consoles. All software issued by Nintendo is provided with a specific code. The software is manufactured in such a manner that, when it is copied, the protective code cannot be copied. When such copied software is placed in, eg a console such as the Nintendo DS, the console registers that the software does not have a protective code and it will not run.
These protective measures, however, can be avoided by using of a flash card placed in an adaptor (Nintendo DS or DSi), or by means of installing a mod chip (Nintendo Wii). Both avoid the technological measures created by Nintendo and therefore enable the use of illegally copied software on the Nintendo consoles. Mainly online there is a large market in which these flash cards and mod chips are distributed.
In 2008 Nintendo sued several online resellers of these flash cards and mod chips on the ground that the sale of these products infringes Nintendo's copyrights.
Nintendo sought an order to prohibit the resellers from selling the flash cards and mod chips. The claim was based on Articles 29a and 32a of the Dutch Copyright Act. Further, Nintendo stated that the resellers of the flash cards infringe Nintendo's trade marks because, on booting the DS and DSi with the R4 card, the logo of Nintendo is displayed.
Between the parties it was undisputed that videogames hold elements of computer software as well as of ‘works in general’ protected by copyrights. These works in general refer to aspects such as the storyline, the figures and the texts, together referred to as the design. The court must therefore decide whether protection is granted for ‘works in general’ under Article 29a of the Dutch Copyright Act, or for computer software under Article 32a.
The court stated that the element that demands the most creative effort of the producer should be decisive. In line with this, it deemed the general protection more appropriate. This decision was based on Nintendo's presentation of the creative process in which a video game is developed. The creative process as described by Nintendo falls into three phases. In the first the basic outline of the game is developed: the main features such as its design, concept, storyline and characters. During the second, which solely concerns the game's design, the basic outline is worked out in further detail: for example the appearance and gestures of the characters are developed. In the third the contents and course of the story are designed by merging the various components. It is only in this phase that the computer software which enables the game to be played and controlled is created.
This led to the court's conclusion that, since the software programming has to be fitted to the video game as it is designed, that programming is subordinated to the design. The defence that Nintendo's use of the term ‘video game software’ indicates that the element of software predominates was not followed by the court.
The court added that the protective technological measures taken by Nintendo can be viewed as measures as mentioned in Article 29a. The defendants submitted that those measures had a wider reach than Article 29a provides, since they disabled not only copied software but also software from third parties. The court however decided that Article 29a does not prohibit measures which reach further than is strictly necessary. Nor would such a restrictive interpretation of the term ‘technological measure’ be congruent with the other paragraphs of Article 29a.
Finally the defence that Nintendo abused its power was not accepted. Nintendo successfully refuted this by referring to the fact that it also grants licences to other producers.
Based on the violation of Article 29a the dealers were prohibited from importing, distributing, selling or carrying out any commercial activity with the flash cards or mod chips, on pain of a penalty of EUR 10,000 per day, or EUR 1,000 per product. Destruction of all flash cards and mod chips in the possession of the defendants was also ordered. Finally Nintendo was entitled to damages suffered by the actions of the resellers, including the cost of the proceedings.
The court did not give a decision in relation to the trade mark infringement claim, as Nintendo did not have an interest which would exceed the legal measures to which it was entitled for copyright infringement.
In this case the court ruled that under the Dutch Copyright Act a video game, although it holds elements of a ‘work in general’ and of computer software, is considered to be a ‘work in general’. The decision of the court is based on the description of the creative process in which a video game is developed. After analysis of this process the court decided that the element of design (such as that of the characters, levels, storyline, texts, etc.) dominated the actual programming of the software, since the programming only occurred in the final phase of development and had to be accommodated to the existing design.
In concrete terms this protection as a ‘work in general’ leads to the judgment that the sale of flash cards and mod chips that circumvent the technological measures Nintendo has taken to prevent or restrict acts regarding its video games is not permitted, being an infringement of Nintendo's copyrights: an important battle was thus won by Nintendo.