The American subsidiary of Japanese video game developer Nintendo recently filed a complaint alleging claims of copyright and trademark infringement as well as unfair competition against an operator of a website offering pirated copies of read-only memory (ROM) files collected from Nintendo cartridges without authorization. The case, filed in the District of Arizona, has already resulted in the successful shutdown of the two websites at issue which have been offering unauthorized ROM files, but it may also be an indication that the video game industry might benefit from the use of a freemium platform such as has been developed in the music and movie industries.
As Nintendo’s lawsuit notes, ROMs involve a process of copying video game software from a game cartridge or disc and then making copies of those files available online. These ROM files can then be played using an emulator program that runs on a computer or a mobile phone, mimicking the functionality of physical video game console systems.
Nintendo’s complaint targets the operator of LoveROMS.com and LoveRETRO.co who has made thousands of Nintendo titles available online for free from platforms including the Game Boy, the original Nintendo Entertainment System, Super NES, Nintendo 64 and Nintendo DS, among others. Nintendo alleges that just the top 10 games on the LoveROMs site in which Nintendo is a copyright claimant and trademark owner have been downloaded more than 60 million times. Further, the LoveROMs website allegedly receives more than 17 million visits each month.
According to Luca Hickman, associate and patent attorney at Grimes LLC, although the issue of ROM piracy is a big one in the video game industry, this type of case presents a dilemma for rights holders like Nintendo. “On the one hand, you have certain incentives to police rights,” Hickman said. “On the other hand, you don’t want to be seen as being heavy-handed within the gaming community, which is a particularly strong fan-based consumer base.” While the ROMs themselves might be illegal to offer or play, a Nintendo fan who wants to play the original Donkey Kong game might take a negative view of Nintendo’s legal action if they have no legitimate way to play a game which is no longer supported by consoles currently being marketed by Nintendo.
To Hickman, the issues presented by this case are reminiscent of issues which were rife in the music industry about 10 to 15 years ago during the heyday of Napster and peer-to-peer music file sharing. “For rights holders, they look at this and think that Napster’s pirating our music,” he said. “In part, the file sharing is a reaction to a failure on the part of rights holders to offer a market alternative.” Today, music file sharing online is not the issue it once was thanks to freemium platforms offered by Spotify and Pandora. Hickman noted that the video game industry could benefit from the use of rights organizations like BMI or ASCAP in the music industry which offer licenses to tens of millions of songs and allow organizations like Spotify to license certain rights to the catalog. “The video game industry could come together for this,” Hickman said. “There’s only a few major rights holders to get on board, Nintendo being one of them.”
Although the copyright violations in this particular case appeared to be more cut-and-dry, Hickman contemplated a more interesting case in which a website operator offered to take old cartridges owned by video game players and then making a single ROM file from that cartridge available to that single player online. “The real issue in Nintendo’s lawsuit is that the website operator is taking a single cartridge and making it available for tens of millions of people simultaneously,” he said. “If that person was merely facilitating online gameplay solely for the owner of the cartridge, that would be a much different case. For example, there might be a fair use defense.”
Along with compensatory and enhanced damages, Nintendo is also seeking relief through a statutory damages award in an amount of up to $150,000 for the infringement of each Nintendo copyrighted work and up to $2 million for the infringement of each Nintendo trademark. Although damages could quickly build up to a multi-million dollar award in this case, Hickman reiterated his views that the issue could be indicative that the video game industry needs a new model for these legacy games. “When is the last time you’ve seen a case about bootlegging films?” he asked, noting that such cases have dropped off since the introduction of platforms like Netflix and Hulu. “I think people want a similar alternative for gaming. Until the industry comes together to offer that, I think you’ll get a whack-a-mole situation where another ROM site pops up after you knock one down.”