After years of tortuous, mind-numbing work your great American novel is finally finished. You spent the best years of your life laboring away at your typewriter, and you are finally satisfied with the finished product. Your book receives glowing reviews from critics all over the country, and you become a millionaire overnight. To celebrate your new affluence, you and your spouse go to see a movie. You just settle in with your popcorn and soda when the previews begin to roll. Imagine your surprise when the first preview is for an unauthorized movie based on your best-selling book. Clearly copyright law would protect you from such an upsetting scenario. However, a similar situation is happening to video game manufacturers and the applicable law for them is anything but clear.
Near the end of the 1970’s a new pastime developed that
would consume the quarters of an entire generation of America’s youth.
When arcade games came into existence, they were so popular that they quickly
became familiar sights in movie theaters, restaurants and shopping malls.
Trying to expand upon this success, Atari released a machine that allowed
users to play arcade games at home. The Atari 2600 was such a huge success
that it soon replaced television as the electronic baby-sitter of choice.
Other manufacturers soon followed, as the video game industry quickly became
a multi-billion dollar business. Because of the drastic advances in technology,
there have been corresponding greatly advances in video game systems. In
fact, the original Atari and Nintendo game systems have not been commercially
available for over a decade. However, thanks to emulation, a new audience
is being turned onto these older game systems.
II. What is emulation?
Basically, an emulator is a software program that allows one type of computer to run software written for another type of computer.[1] A close analogy of emulators would be the difference between watching movies in a theater versus watching movies at home. If seeing a movie in a theater is equivalent to playing a game in an arcade, then renting a movie on video and watching it on a VCR would be the same as downloading a game from the internet and playing it on an emulator. Until recently, the terms "computer emulation" and "slow as molasses" went hand in hand, however thanks to the breakneck speed of current computers, there has been an explosion of emulation in the last two years.
One of the earliest video game emulators was from a company
called Coleco. Coleco was the creator of the ColecoVision, a video game
machine for the home that competed directly with the Atari 2600. Since
the Atari 2600 had many more games than the ColecoVision, Coleco released
a $60 adapter for their game machine that allowed all Atari games to be
played on the ColecoVision.[2] Atari sued Coleco claiming that the adapter
violated several of Atari’s copyrights and patents. Strangely enough Atari
was unsuccessful[3] and Coleco was allowed to keep the adapter on the market.
Coleco then went a step further and released the Gemini, a video game system
that was a complete replication of the Atari 2600[4]. Although Coleco no
longer exists, the influence of their litigation with Atari is still felt
today. In fact, the Atari v. Coleco case has greatly contributed to the
situation that today’s game manufacturers find themselves in.
III. Emulation today
After the home video game market crashed in 1984, emulation moved from video games to business applications. In the 1990’s there have been several emulation products for the Apple Macintosh that allows the Mac user to exist in a Microsoft Windows world. Both SoftWindows and Virtual PC emulate Microsoft Windows, however it is useful to note that these products have the full support and blessing of Microsoft. Other emulation programs allow newer computers to exist and work with older, different computers. As with SoftWindows and Virtual PC, the creators of these types of emulators usually have the permission of the copyright holder.
In 1997, video games again became the primary focus of emulation efforts. Several programs were released that year which allowed the user to emulate home video and arcade games. Since the games being played on these emulators were no longer for sale, the release of the emulators at first was of little concern to game manufacturers. Most manufacturers felt that emulation would not hurt their bottom line, which is why they ignored these initial emulators. However, the release of the Connectix Virtual Game Station (CVGS), bleem and UltraHLE, in early 1999, quickly changed the view of the gaming industry. CVGS and bleem are fully functional emulators of the Sony PlayStation video game machine and UltraHLE is a Nintendo 64 video game machine emulator.
Video game manufacturers have viewed CVGS, bleem and UltraHLE far differently than the initial emulators, because these emulators replicate game systems that are still commercially available. As a result, both Nintendo and Sony quickly took action against the creators of these emulators.
Nintendo threatened legal action against the creators
of UltraHLE and aggressively attempted to shut down all web sites that
offered the program. Several web sites have posted copies of correspondence
they have received from Nintendo. The following is a typical message from
Nintendo:
Dear webmaster:
It has come to our attention that you are offering on your web site unauthorized copies of Nintendo video game titles available for downloading. This letter constitutes a demand that you immediately cease offering, reproducing and distributing Nintendo's video game titles and remove all such references from your web site.
Nintendo is the owner of numerous copyrights in its video games. As the owner of such copyrights, Nintendo has the exclusive right under U.S. law to authorize copies of its video games. In addition to its copyright protection, Nintendo has rights under Federal and State Trademark laws. Your unauthorized activities with respect to the offering, distribution, trade and display of unauthorized copies of Nintendo's video games constitutes both copyright and trademark infringements in violation of 17 U.S.C. § 101 et seq. and 15 U.S.C. § 1114, 1115, and 1116, and other applicable federal and state criminal and civil laws.
This letter constitutes notice to you that your actions are illegal and may subject you to criminal prosecution and civil liability. We will be monitoring your web site to see if you are in compliance with the law and reserve the right to take all steps necessary to protect Nintendo's rights.
Sincerely,
NINTENDO OF AMERICA INC.[5]
Instead of focusing on the web sites that offer the emulators,
Sony decided to go after the programmers who created the emulators. Sony
immediately requested an injunction to prevent the sale of both bleem and
CVGS. Sony argued that bleem and CVGS infringed Sony’s copyright, circumvented
the PlayStation’s piracy protection and diluted Sony’s.[6] Connectix responded
that it had "worked hard to prevent the use of pirated [games]."[7] In
addition, Connectix believes that Sony has no basis for legal action, since
it did not use any of Sony’s copyrights in creating CVGS.[8] Connectix
also stated their belief that software emulation of a hardware system does
not violate patent law.[9] In keeping with Atari v. Coleco, no preliminary
injunctions were issued to block the sale of either bleem or CVGS.10[10]http://come.to/PSFAQ
IV. Emulation and the Internet
One of the key differences between the newer emulators
and the ColecoVision emulator is the ease with which the current software
can be obtained. The Internet has made it significantly easier to get an
emulator. In the 1980’s, to emulate the Atari 2600 you had to own a ColecoVision,
buy the Atari emulator and buy an Atari game. In the 1990’s, to emulate
any video game systems all you need is Internet access.[11] The ease with
which any emulator can now be obtained raises an interesting legal question.
For example, even if Nintendo wins its lawsuits, what would it ultimately
gain? Nintendo would run up substantial legal fees and obtain a judgment
from a defendant who likely has no money. As for the injunction, how would
it be enforced? As soon as Nintendo closes down one site, fifteen more
will spring up. Although the Internet is a great tool for sharing information,
it currently is an even greater tool for copyright infringement.
V. Legal Issues
There is plenty of case law concerning disputes over video games[12]; but there is little legal precedent regarding the emulators themselves. In fact the only quasi-legal precedent is the early 1980’s decision between Atari and Coleco. Unfortunately, as often as that case is mentioned it is impossible to locate. In addition there are conflicting reports how the dispute was resolved. Most stories have Coleco winning outright in court.[13] However, there are some accounts that say the parties settled.[14]
As a result of the lack of case law concerning emulation,
the legal issues discussed below are based on the issues that Sony has
raised in their current litigation against CVGS and bleem.
A. Copyright and Intellectual Property
One of Sony’s key claims is that emulation is a violation
of Copyright law. A copyright protects a creative work from unauthorized
use by others.[15] An owner of a copyrighted work has the exclusive rights
to reproduce the copyrighted and to prepare derivative works.[16]
To understand how copyright law works it is important to understand that copyrights apply only to a specific expression of an idea and not the actual idea.[17] Therefore, copyright law would protect the game "PacMan", but not the idea of a little yellow man eating little yellow dots. Copyright law makes it clear that distributing copies of video games over the Internet is a violation of copyright law, however it is not clear that distributing the emulator software violates any copyright. Although the law is unclear regarding emulators, it is probable that Sony would attempt to show a copyright violation in the same manner that video game manufactures have shown violations in the past.
Under a typical analysis, the first step in showing that a video game violates copyright law requires evidence of direct copying or evidence of access and substantial similarity.[18] Because emulators are software versions of computer hardware, they would not meet the "direct copying" requirement. The second step requires that the programmer both had access to the copied game, and that there is substantial similarity between the two games. In a recent case, a judge found there was "access," because the plaintiff’s game had been released all over the country.[19] If "access" is found when an arcade game is released across the country, then a court should find "access" when Sony’s video game system is also available throughout the country.
The third step requires a court to apply an extrinsic/intrinsic test. This test first looks at the objective similarities between the games. In the current litigation this favors the emulators since, "extrinsically" at least, Sony’s hardware and the emulation software do not appear to have anything in common on the outside. Instead Sony should focus on the intrinsic test by arguing that an ‘ordinary reasonable person’ would find that emulation captures the ‘total concept and feel’ of the video game system.[20]
Sony should also attack the emulators for their contribution to the massive violations of video game copyrights, since it is impossible to use most emulators without a pirated duplicate of a copyrighted game. However, emulation proponents argue that, without emulators, people who make backup copies of games would not be able to play those backups if something would happen to the original game. Unfortunately for emulation proponents, the language of the Copyright Act has been interpreted as not always allowing backup copies of software.[21]
The primary way the emulation web sites have fended off legal challenges has been to claim that, under the terms of the Copyright Act, it is legal to make a backup copy of all software, including video games. However, although the Copyright Act permits owner of copyrighted program to prepare backup copies of software, courts have placed limits on the ability to make backup software. Backups are only allowed for a single reason, "to protect use of program against particular type of risk of destruction or damage by mechanical or electrical failure."[22] Under this interpretation, backups are legal only when the storage medium may be destroyed by mechanical or electrical means.[23] This would preclude copying video game cartridges, since they are much more durable than the computer software that the Copyright Act was originally intended to protect.[24]
In addition, although an owner of a copyrighted program may make a backup of certain types of software, the backup must be destroyed if the holder should cease to own the original.[25] Since the majority of the emulated games are from the early 1980’s, even if making backups of the video games is legal, the overwhelming majority of "backups" available on the Internet are used by people who no longer own, or who never owned the original game. This is important since there is a 1983 decision that held that, to defend a claim of copyright infringement, it is not enough to establish that a machine has a legal use.[26] Rather, the defendant must show that the machine has a substantial non-infringing use to preclude an injunction against its sale.[27] If this holding could be expanded to include emulators, then the emulator programmers would be required to show that their emulators have a substantial legal use. Unfortunately for emulation proponents, because most games used with emulators are duplicated copies, it is unlikely that any emulator could show a substantial non-infringing use.
Finally, there is another copyright tactic that Sony and
other hardware manufacturers can take to stop emulation. In a 1996 case,
a federal court held that changing the format of Nintendo’s game from the
original cartridge to a software file violated Nintendo’s exclusive rights
to prepare derivative works under the Copyright Act.[28] If the holding
from this case is applied to emulators, it is likely that the use of a
copied game on an emulator would also impair the exclusive distribution
right accorded to the copyright holder.[29] By applying section 106(2)
of the Copyright Act to emulation, Sony can argue that an emulator is a
"derivative work", therefore, under the Act, it has the exclusive rights
to create any emulators or to decide if their programs are to be used with
emulators.
B. Trademark and Unfair Competition
An alternative to attacking emulation under the Copyright
Act would be to attack the emulators for violating Sony’s trademarks. "A
trademark is a distinctive work, phrase, logo, graphic symbol or other
device that is used to identify the source of a product or service, and
to distinguish a manufacturer’s or merchant’s product from anyone else’s."[30]
In a claim for trademark infringement, Sony would be arguing that the emulator
of their product causes unfair competition. Courts are willing to find
"unfair competition" when one company uses another company’s trademark
"in a context likely to confuse the public."[31]
To show a trademark infringement, Sony must show confusion. The courts have listed a number of factors to be considered in finding confusion. These include; the strength or weakness of the trademark, similarity in appearance, sound and meaning the class of goods in question, the marketing channels, evidence of actual confusion, and evidence of the intention of the defendant in selecting and using the alleged infringing name.[32] Since the emulators typically have not "incorporated" Sony’s name into the emulators, at first glance this would not seem to be a winning strategy. However, Sony certainly would want to bring to a court’s attention the decision in Sega v. Maphia.[33]
In Sega, that court held that "confusion" was found when a copied game began with showing of Sega’s trademark and logo.[34] Sony can try to push this holding even farther by arguing that "confusion" also occurs in other ways. For example, several emulators incorporate pictures of the emulated game systems into the software. Also, most emulators have documentation that contains references to the emulated machines. If a court has already decided that a logo’s momentary appearance at the start of a game caused "confusion", then use of pictures and logos in the emulators’ documentation certainly should also cause "confusion."
Emulation proponents do have some defenses to an attack
based on a trademark violation. In a recent case, a court found that the
use of a trademark to exclude competitors from the market is inconsistent
with the Trademark Act.[35] That court believed that a claim of trademark
infringement is often a guise to allow the removal of competition from
a market. However, there is a problem with using that ruling as a defense.
Most emulators are not commercial products. In fact, most emulators run
games that were discontinued years ago and are no longer commercially available.
So although the "exclusion" argument may have some merit for CVGS and bleem
(the commercial emulators), any other emulator would have a much more difficult
time with this line of reasoning.
C. Patent Law
Patent law has not been used extensively by software
developers in their fight against game copiers, however it is an area that
can be useful for Sony and other game system manufacturers. A patent is
a document that grants a monopoly for a limited time (around 20 years)
on the use and development of an invention.[36] To qualify for a patent,
an invention must be useful, novel and non-obvious. The invention also
must fit into an existing patent category.[37] Of the three types of patents
that can be issued, the utility patent is the type that likely would be
issued for video game hardware. There are five categories of utility patents:
a process, a machine, a manufacture, a composition of matter, or an improvement.[38]
Video game hardware should qualify as a machine, "a device that takes information
from an input device and moves it to an output device."[39]
Sony’s lawsuit would claim unauthorized use of its patent, but to be successful, it must show both that its patent is valid, and that the emulator infringed upon the patent.[40] Assuming that the patent is held to be valid, Sony would attempt to show infringement according to the "means-plus-function" test.[41] Under this type of analysis, infringement would be found if the emulator performed an identical, important function of the hardware, and performed that function using either the structure disclosed in patent specification or an equivalent structure.[42] This test favors the hardware manufacturers because the courts have found that interchangeability is evidence of equivalency in a patent infringement case.[43] Since the emulators and the hardware run the same games, interchangeability would not be a difficult issue for Sony to prove.
The argument that Sony would want to make should consist of two parts. First a video game manufacturer would have to prove that it held a valid patent for the game system. Patents are typically held invalid for one of three reasons. First, patents are invalid if the applicant committed fraud on the U.S. Patent and Trademark Office during the application period.[44] Second, a patent is invalid if it is a violation of anti-trust laws that curb restraint of trade and monopolistic practices.[45] Third, patents are held invalid if an alleged violator can show that the invention is not useful, is obvious or is not novel.[46] Declaring patents invalid is a complicated area of patent law beyond the scope of this paper. Therefore, assuming that Sony proves the patent it holds is valid, the next step would be to show "equivalency." As stated previously, since emulators allow the user to play the exact same games on the emulator as on the hardware, there is "interchangeability." The evidence of interchangeability appears to be enough for the courts to find equivalency.
For emulation proponents, things are not as bleak as they
seem. Even though the claims of many patent holders appear to satisfy the
elements of the "means-plus-function" test, the overwhelming majority of
patent cases fail to find infringement.[47] Also, the parties in the previous
video game patent cases all have been competing manufacturers. It stands
to reason, that if the courts are unwilling to find a competing business
infringing on a patent, then it is unlikely they would be more willing
to find a non-commercial party infringed a patent. In addition to the favorable
prior decisions, the ace-in-the hold for most emulators is that typically
a utility patent only lasts twenty years, therefore, the emulators of the
older system should not be able to be sued for a claim of patent infringement.
VI. Policy issues for Emulation
As shown from the preceding discussion of emulation legal issues, the applicable law is developing, and is anything but clear. In litigation it is always useful to touch upon policy reasons for the desired outcome, however this is especially true when the law is unclear and there are no established precedents. Emulation proponents often argue that since most emulation systems have been discontinued and the programs created for them are no longer available, there’s no way for people to otherwise play these games.[48]
Nicola Salmoria, the creator of a popular emulator program, puts forth the typical argument in support of emulation. He doesn't believe emulation infringes on the intellectual property of others, because most emulated games no longer produce revenues. "Although using the ROM images if you are not entitled to them is technically illegal, we are not really doing any harm by playing 10- or 20-year-old arcade games. They are no longer being sold, and the copyright owners have already earned all the money out of them that they could."[49] However, recently (possibly in preparation for litigation) several game manufacturers have released emulated versions of popular older games that run on newer game systems.
Another policy argument advanced by emulation proponents is that "emulation helps preserve arcade games, many of which would be approaching extinction if not for the efforts of fans."[50] These emulator programmers believe that their work is "culturally significant: [they] are trying to preserve all these games for future generations…if [they] don't do it now, and do it quickly, many games [are at] risk [of] disappearing forever."[51] What they are apparently arguing is that many of the original game manufacturers and hardware manufacturers have gone out of business or have no interest in their old games. So without emulation we would all lose a slice of Americana.
What these emulation proponents lose sight of is the law.
Regardless of how philanthropic the efforts of these programmers are, they
are still fighting an uphill battle. They need to remember that, under
the Copyright Act, the system manufacturers and game programmers have exclusive
rights to their creations. If Nintendo wants to destroy every last copy
of "Donkey Kong", then, under the Copyright Act, it should be able to have
its way.
VII. Conclusion
Regardless of any policy or emotional reasons for the continued existence of emulation, the outcome of the Atari v. Coleco case should be ignored. It is not disputed that emulators provide hours of enjoyment or that emulators are preserving a part of computer history that would otherwise be forgotten. However, there is not a substantial legal reason for the existence of emulators. The only way most emulators can be used is with illegal copies of games. Therefore, the continued existence of the emulators, combined with the ease of game distribution through the Internet, will eventually cause irreparable harm to video game manufacturers.
Even if the emulators never actually hurt the sales of video game manufacturers, emulation should be illegal anyway. Regardless of any economic loss, playing video games on an emulator "impairs the exclusive distribution right accorded to copyright holder."[52] In other words, emulation prevents the video game creator and the hardware manufacturer from deciding how and where their games will be played. If emulation continues to damage the legal rights of these companies, then it is likely that many video game companies will cease to develop new video games or game systems. The ultimate irony is that using video game emulators to preserve the past could eventually destroy the future of video games.
[2] Malcolm Maclachlan, Game Makers Challenge Emulation Precedent, CMP TechWeb, (Feb. 3, 1999), 1999 WL 2493283
[3] Id.
[4] Id.
[5] <http://www.demonsbane.com/newhome.html>
[6] No More Games…Sony Sues Connectix, Official U.S. PlayStation Magazine, Apr. 1999, at 27
[7] Connectix Corporation Announces Connectix Virtual Game Station Version 1.1., (Jan. 28, 1999), <http://www.connectix.com>
[8] Imitation PlayStation for PCs, Official U.S. PlayStation Magazine, March 1999, at 30
[9] Id.
[10] Id.
[11] <http://www.vghq.com/romblvd/snes.html>; <http://top-100.virtualave.net/gaming/topsites.html>; <http://www.snes9x.com/>; <http://home.talkcity.com/technologyway/intothinair/>; <http://www.komkon.org/fms/VGB/>; <http://www.general.uwa.edu.au/u/darrins/2600/>; <http://members.aol.com/CHA0SM8N/index.html>; <http://www.v-champion.com/play.htm>; <http://www.top-25.com/emu/index.html>; < ;">http://www.emulation.net/>; < http://www.arcadeathome.com/>
[12] Atari, Inc. v. JS & A Group, Inc. 597 F.Supp 5 (N.D.Ill. 1983); Atari Games Corp. v. Nintendo of America Inc., 975 F.2d 832 (Fed.Cir. 1992); Nintendo of America Inc. v. Computer & Entertainment, Inc., 1996 WL 511619; Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1993); MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993); Sega Enterprises Ltd. v. Maphia, 857 F.Supp 679 (N.D.Ca. 1994)
[13] The history of video games, <http://classicgaming.com/museum/colecovision.shtml>;
The ColecoVision FAQ, <http://videogames.org/ColecovisionStuff/CVFAQ.shtml>
[14] The Dot Eaters Guide to the History of Video Games, <http://www.emuunlim.com/doteaters/play3sta4.htm>
[15] Stephen Elias, Nolo’s Legal Encyclopedia: Patent, Copyright & Trademark, <www.nolo.com>
[16] Copyright Act, 17 U.S.C. §§ 106(1) & 106(2) (1999)
[17] Stephen Elias, Nolo’s Legal Encyclopedia: Patent, Copyright & Trademark, <www.nolo.com>
[18] Court Refuses To Enjoin Sale of Video Game, Mealey’s Litigation Reports: Intellectual Property, (Apr. 8, 1994)
[19] Id.
[20] Id.
[21] Atari, Inc. v. JS & A Group, Inc., 597 F.Supp 5 (N.D.Ill. 1983)
[22] Id. at 9
[23] Id. at 9
[24] Copyright Act, 17 U.S.C. § 117 (1999)
[25] Copyright Act, 17 U.S.C. § 117(2) (1999)
[26] Atari, Inc. v. JS & A Group, Inc., 597 F.Supp 5, 8 (N.D.Ill. 1983)
[27] Id.
[28] Nintendo of America Inc. v. Computer & Entertainment Inc., 1996 WL 511619, Conclusions of Law #8
[29] Id. at Conclusions of Law #9
[30] Stephen Elias, Nolo’s Legal Encyclopedia: Patent, Copyright & Trademark, <www.nolo.com>
[31] Id.
[32] Jockey Club, Inc. v. Jockey Club of Las Vegas, 595 f.2d 1167, 1168 (9th Cir.1979)
[33] Sega v. Maphia, 875 F.Supp 679 (N.D.Ca. 1994)
[34] Id.
[35] Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1530 (9th Cir.1993)
[36] Stephen Elias, Nolo’s Legal Encyclopedia: Patent, Copyright & Trademark, <www.nolo.com>
[37] Id.
[38] Id.
[39] Id.
[40] Patent Act, 35 U.S.C. § 283 (1999)
[41] Atari Corporation v. Sega, 869 F.Supp 783 (N.D.Ca. 1994)
[42] Id.
[43] Id.
[44] Stephen Elias, Nolo’s Legal Encyclopedia: Patent, Copyright & Trademark, <www.nolo.com>
[45] Id.
[46] Id.
[47] For an example of a typical patent case that fails to find infringement, see, Alpex Computer Corp. v. Nintendo
Co., 102 F.3d 1214 (Fed.Cir. 1996)
[48] Technology’s Most Wanted, MacAddict, Feb. 1999, at 40
[49] Marc Saltzman, Emulation Nation: M.A.M.E and Fame (March 19, 1999),
<http://www.gamecenter.com/Consoles/Features/Emulation/ss02.html>
[50] John M. Moran, Going ‘Bezerk’ Software Emulating Classic Video Games Descends Like ‘Space Invaders’ From Web Sites, The Hartford Courant, Apr. 2, 1998.
[51] Marc Saltzman, Emulation Nation: M.A.M.E and Fame (March 19, 1999), <http://www.gamecenter.com/Consoles/Features/Emulation/ss02.html>
[52] Nintendo of America Inc. v. Computer & Entertainment
Inc., 1996 WL 511619, Conclusions of Law #9