The Paris Court of Appeal recently ruled in favour of Nintendo against retailers and importers of linker devices.

'Linkers' are devices that allow users to download counterfeit video games on cartridges which can be inserted in Nintendo games consoles, such as the Nintendo DS. The digital rights management set up by Nintendo on its game consoles prevents users from using counterfeit games. However, a linker can circumvent the digital rights management and allow counterfeit games to be played on the Nintendo games console.

The Paris Court of Appeal overruled a September 5 2011 decision of the Paris Court of First Instance of and held that the defendants - retailers and importers of linker devices - were liable on three grounds.

First, the court said that the linker devices infringed the digital rights management set up by Nintendo on its games consoles and cartridges. Under the IP Code, "efficient" technical protection measures implemented by the owner of author rights in its work or software are protected against infringing acts aimed at circumventing digital rights management. This is the first time that the law on digital rights management has been enforced by a court since it was passed in 2006.

Second, the court held that the retailers of linkers were liable for the infringement of Nintendo's author rights on its software program by selling products designed to use, reproduce and edit software to be included in Nintendo consoles and cartridges. In order to facilitate the interoperability of a counterfeit game with a Nintendo console, the linker had to access Nintendo's original games source code. Therefore, the manufacturer of a linker had to introduce a process of reverse engineering, which involved translating a machine-readable file into human-readable code, such as source code.

As this operation involved the unlawful reproduction and editing of software codes, it infringed Nintendo's author's rights. The court ruled that as the exception under the IP Code allowing the reproduction and translation of codes for the purpose of interoperability does not cover such reverse engineering processes, these constitute infringement. In order to stay within the scope of the exception, the user must be a lawful user of the software aiming to design an independent software program.

Third, the court held that the retailers were also liable for trademark infringement, as the Nintendo logo appeared on the console screen after the cartridge was inserted, as well as on the linkers' packaging.

As a result, the Paris Court of Appeal awarded 4.5 million in damages to Nintendo, ordered prohibition measures and sentenced the defendants to a fine of 460,000 and two years' imprisonment with respite for a probationary period.

For further information on this topic please contact Camille Pecnard at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email ([email protected]).