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Important Court Decisions Concerning Emulation
The following are selected summaries and accompanying commentary of many of the major examples of case law that are referenced in the EmuFAQ. I have done what I can to explain their significance; however, I would appreciate someone with real legal credentials, such as a law student or professional attorney, to aid in revising them and filling in the gaps. The eventual goal is to include a summary for every court case listed in the EmuFAQ credits.
Allen-Myland, Inc. v. International Business Machines, Inc. 33 F.3d 194 (3rd Cir., 1994).
Allen-Myland was a third-party service provider for IBM 3090 mainframe systems. They had the practice of routinely archiving 3090 system microcode on tape, and would then later combine selected portions of their vast tape archive in order to recreate copies of this code for their customers - all of whom were legitimate licensees for the programs involved. IBM sued for copyright infringement of its proprietary 3090 system software, and the matter eventually wound up in the U.S. Court of Appeals. The high court ruled that it was not legal for Allen-Myland to build its archive in the first place; also, the "adaptation" clause of the U.S. Copyright Act did not give Allen-Myland the right to create "rainbow copies" (the court's term) from multiple sources. It also ruled that Allen-Myland's intent was not purely archival; the tape archive had been created with the intent of recreating copies of that software at will for other systems and customers; therefore, their actions did not qualify for protection under the "archival" clause of the U.S. Copyright Act.American Geophysical Union v. Texaco, Inc. 37 F.3d 881, 894 (2nd Cir., 1994).
This case defined the concept of rainbow code, determining that such creates an infringing derivative work under the current form of U.S. copyright law.
Texaco, the well-known international petroleum firm, was charged by the American Geophysical Union for copyright infringement by illegally duplicating copies of AGU-licensed periodicals for its large research staff. The courts ruled in favor of the AGU, noting that Texaco's operations were commercial in nature and therefore did not qualify the corporations' research libraries for the "safe harbor" exception. As such, its duplication of the copied journals was not permissible under "fair use" and thus violated copyright law.
This case helped define the limits of the "safe harbor" exception with regards to unauthorized "fair use" of copyrighted materials by anyone making the claim that they are a qualifying archival institution. As a general rule, any organization that is hosted or directly sponsored by a commercial firm does not qualify for "safe harbor" protection. Educational institutions and non-profit organizations, such as libraries and public archiving services, are qualified for "safe harbor" exemption. Their dealings with commercial firms are at best indirect, usually via donations. The implications with regards to Internet distribution of copyrighted material are obvious.Apple Computer, Inc. v. Franklin Computer Corp. 714 F.2d 1240 (3rd Cir., 1983), 464 U.S. 1033 (1984)
In 1982, Franklin Computer produced a working clone of the Apple II computer called the Franklin ACE 100 that incorporated Apple microcode into its system ROMs. Apple promptly took Franklin to court, claiming copyright infringement of its proprietary programs. The First District Court ruled that object code (machine language) is not readable by the average person and is therefore not copyrightable. This decision was subsequently reversed by the U.S. Court of Appeals, who ruled that operating system object code, whether it is embedded in ROM (i.e. a system BIOS) or stored on some other form oft media, is covered by copyright law. An appeal to the U.S. Supreme Court was later rejected out-of-hand. Franklin was forced stop production of its Apple II clone and pay hefty damages to Apple, and it eventually withdrew from the personal computer industry altogether.
One of the results of this case was the rewriting of the U.S. Copyright Act in order to be more explicit with regards to all forms of computer software - to wit, copyright protection is now afforded to both the source and object code forms of a program. This is key with regards to the legality of both making and using an unauthorized binary dump of computer code stored in some form of permanent media, such as a ROM chip, since that is a form of object code and is therefore protected by vendor copyright. This case has grave implications for the practice of BIOS dumping and the unauthorized distribution of a BIOS image.Apple Computer, Inc. v. Microsoft Corporation. No. 93-16883 (9th Cir., 1994).
Sometime around 1983, Microsoft founder Bill Gates noted his admiration for what would eventually become MacOS and warned Apple executives that they should take out copyrights on its chief features. Apple decided not to do so, so it should have come as no surprise when Microsoft eventually released its own GUI environment, Microsoft Windows, in 1985. It went largely unnoticed until 1988, when it adopted a layout that bore a striking resemblance to MacOS. While it didn't quite duplicate the "look-and-feel" of MacOS, Apple felt it sufficiently close enough to file suit anyway the following year. They also took advantage of the opportunity to sue non-contender Hewlett-Packard over its NewWave GUI for the same reasons. In 1989, Xerox weighed in on the dispute and sued Apple, claiming that MacOS was little more than a direct ripoff of its Xerox Star GUI environment originally designed for its business workstations. The court threw out the Xerox lawsuit, but took note of their contentions with regards to the continuing dispute between Microsoft and Apple. MacOS was eventually broken down into more than 180 distinct elements in order to test the validity of Apple's claims. Notice was also taken of Apple's lack of legal protections for its GUI, as well as Xerox's argument about Apple's "borrowing" from Xerox Star. The court eventually ruled in 1992 that only specific screen elements of a computer program are copyrightable - not the entire on-screen presentation. As a result, Apple was only granted copyright protection to a very small number of GUI elements. Apple appealed the decision, but the appeal was subsequently denied. Microsoft Windows had now been legitimzed as a vaild GUI for personal computer systems.
This case is important to the emulation industry with regards to the successful duplication of original vendor product functions and user interfaces, as well as the overall "look-and-feel" of an similar product in comparison with the original. Ideas cannot copyrighted, therefore similar-looking products do not necessarily violate copyright law.Apple Computer, Inc. v. Readysoft, Inc. (aka the A-Max precedent, 1989)
While this court case never happened to the best of my knowledge, the potential threat of it and the subseqent inaction on Apple's part to bring it about set a imprtant precedent for emulation technology. A-Max was the brainchild of Simon Douglas and the first Macintosh emulator for any platform. It allowed any Amiga computer to emulate a Mac via a combination of software and special hardware. Apple was unable to mount a case against A-Max due to the fact that it had been designed so as to not interfere with Apple's rights with regards to Mac technology and the Mac market. Therefore, by default, Readysoft was allowed to continue marketing and improving A-Max at will.
The A-Max precedent is important to anyone who may be required to defend the development and subsequent release of an emulator. It established the legality of an unauthorized emulator for a proprietary system so long as it does not infringe upon the original vendor's intellectual property rights.Asahi Metal Industry v. Superior Court. 480 U.S. 102, 112 (1987).
Asahi Metai was a well-known Japanese industrial firm whose products were shipped worldwide. A number of these eventually made their way to California, where Asahi was subsequently sued under California law for violating certain portions of commerce law. Asahi appealed their conviction, and the case eventually wound up before the U.S. Supreme Court, which upheld the decision in a 5-4 ruling.
The importance of Asahi is twofold, First, the Internet is considered be a viable "stream of commerce" as defined by the Supreme Court's ruling. Second, the case laid down the five point "Asahi test" for determining fairness of jurisdiction in such a dispute. The Asahi test is frequently used in conjuction with the three-fold test of jurisdicitional locale laid down in the International Shoe case in order to determine proper venue and scope of prosecution in cross-border disputes. See also International Shoe v. Washington, 1945.Atari, Inc. v. Coleco. (docket number unknown, 1983)
In 1982, Coleco produced a special adapter for its ColecoVision videogame console that would allow the system to both use and play videogame cartridges designed for the Atari 2600 videogame console. It was able to do so because Coleco's product was actually a scaled-down Japanese personal computer (built along the lines of what would later be known as the MSX standard), and its more powerful hardware could easily support the simpler Atari games. Atari filed suit in federal court charging Coleco with patent violation, but subsequently lost the case. Atari 's argument was that any product derived from a unique one already on the market was by default the intellectual property of the original producer. The courts determined that Atari's videogame technology was too generic to be considered unique, and the concept of a videogame was also generic and therefor could not be used to establish the uniqueness of Atari's product. The resultant setback for Atari caused it to seek an out-of-court settlement, and the end result was that Coleco continued to manufacture its Atari videogame adapter for the ColecoVision.
This was the very first court case involving cross-platform support for videogame systems, and as such is significant with regards to videogame emulation due to the unique origins of the ColecoVision console. It had almost been forgotten by everyone until the dispute over the legality of PlayStation emulation was first raised in 1998.Atari, Inc. v. JS&A Group, Inc. 597 F.Supp. 5 (N.D. IL, 1983)
JS&A Group were the vendors of a cart dumper called the "PROM Blaster" for Atari 2600 videogames. It was a device designed to allow its operators to dump the object code from within the ROMs of an Atari 2600 videogame cartridge. Atari sued JS&A for contributory copyright infringement of its proprietary videogame software. JS&A argued that archival copying was permitted under copyright law (17 USC 117), so the purpose of a cart dumper constituted "substantial non-infringing use." The court found that a computer program embedded within a piece of hardware, such as the ROMs used within a typical videogame cartridge, cannot be reprogrammed or erased. As such, it was contained within a form of storage media designed to permanently preserve the program. JS&A's contention that cart dumps protected the actual cartridge against possible physical harm (and thus the program embedded inside) might also be applied to other forms of physical media, such as phonograph records and books. Since copyright law did not allow for this practice in regard to these and other such forms of physical media (photocopying a book, physically duplicating a phonograph record), they likewise did not apply to the practice of archiving computer programs embedded within a piece of hardware. The archival exception for computer software did not apply to programs stored within permanent storage media (in this case a videogame cartridge) because these forms of media are not subject to the sort of risks that the archival clause was designed to guard against. As a result, the court ruled that dumping a videogame cartridge for archival purposes is not covered by the archival clause of copyright law.
This case would prove to be the most important one in subsequent cases regarding the desire to duplicate program code contained within some form of permanent storage media in general, and the twin practices of videogame cartridge and arcade ROM dumping in particular. It has been modified in at least one respect over the years; see also Sega v. Accolade, 1992.Atari Games Corp. v. Nintendo of America, Inc. No. 91-1293 (9th Cir., 1992)
Rival videogame company Atari sued Nintendo in U.S. Federal District Court under the claim that the Japanese videogame giant was trying to establish an unlawful monopoly within the American videogame industry through such techniques as price fixing, unethical business practices, and the shutting-out of independent software developers due to the use of proprietary hardware (i.e. Nintendo's antipiracy systems). The initial case dragged through the courts until 1993, when Nintendo was cleared of all charges - they were no longer the dominant force in the videogame market due to Sega's rise. It should be noted that both the New York State Attorney's Office and America Video Entertainment (AVE) took Nintendo to court in 1991 in separate cases accusing Nintendo of an illegal monopoly on the videogame market and won, at which time Nintendo was forced to pay considerable sums in damages. On a parallel track, however, events were unfolding along different and indisputably infringing lines. Not willing to tolerate what they perceived as an unlawful market by Nintendo on the videogame market, Atari decided not to license NES ports of its software titles and to find a means of emulating the NES antipiracy system. They obtained a copy of the 10NES lockout program souce code via fraudlent means, and used it to creat their new Rabbit lockout emulation technology. Once they determined that Rabbit would work, they began releasing unlicensed NES titles in 1989 under the newly created Tengen banner. As Atari was still a licensed developer for Nintendo, the latter promptly filed suit for both copyright and patent infringement (the NES antipiracy system was protected by company patent). They also charged Atari with violation of the RICO Act, claiming Tengen had been created for the express purpose of fronting unlicensed videogames. Nintendo began systematically taking other measures against Atari and its supporters in the videogame market by various means - actively discouraging its vendors from carrying Tengen software, "freezing out" Atari and/or limiting their presence in industry trade shows, and so on. Atari won the initial round by gaining a preliminary injunction against Nintendo's behavior; however, that injuction was subsequently thrown out on appeal. The case wound up with the U.S. Court of Appeals, which eventually ruled that although it was not unlawful for Atari to produce and sell unlicensed videogames, it was within Nintendo's rights to discourage the purchase of said product by its customer base. They further ruled that Atari had violated Nintendo's copyrights on the 10NES lockout codes used in the NES antipiracy system because of the way in which had developed their Rabbit emulator; it "incorporated elements of the 10NES program unnecessary for the chip's performance." The following year, the court upheld Nintendo's claim of patent protection, and the two parties eventually settled out of court.
The practical upshot of this case was that Nintendo gained the court's blessing to continue its practice of intimidation against anyone who chose to market or distribute unlicensed videogames for Nintendo's proprietary home console technology, illustrating Nintendo's monopolistic and often overreaching attitude with regards to any forms of competition for its videogame products. Nintendo has since chosen to interpret this as giving them the full legal right to intimidate anyone who produces or distributes what they believe to be a product that infringes upon their intellectual property rights - including emulators, by the way, since emulation was one of the points brought up in the case. Interestingly enough, this case is often quoted as one of the prima facie examples of the practice of decompilation of computer code as acceptable under the concept of "fair use," since it is often the only means whereby the underlying ideas and concepts behind the code can be derived. The other is Sega v. Accolade, 1992.Bally Total Fitness Holding Corp. v. Andrew S. Faber. 29 F.Supp. 2d 1161 (C.D. Cal, 1998).
Andrew Faber was a young man who didn't particularly care for the way Bally Total Fitness ran its health clubs. In fact, he was so critical of them that he set up an Internet site titled "Bally Sucks" to air his opinion. The site included the word "bally" in its URL, and opened with the Bally logo followed by the word "sucks." It should have come as no surprise that Bally chose to sue him for trademark infringement in an effort to shut down his site. The courts sided with Faber, first dismssing Bally's claim and later dismissing the case altogether. In rendering its decision, the U.S. District Court ruled that users of Bally Sucks would have no illusions that they were using an anti-Bally Internet site. On the countrary, users would most likely assume that the site was in no way authorized by Bally. Since such action did not infringe upon Bally's reputation, neither did Faber infringe upon Bally's trademarks and Bally's claim was therefore without grounds. It also noted that Bally Sucks was not a commercial operation, and that it would be improper to deny Faber the right to use the word "bally" in his URL because this would effectively isolate him from the bulk of the Internet. Bally had no right to oppose criticism to its business practices in the matter that Faber was conducting, which was perfectly legal and the reason why the court eventually threw out the case.
This is as close as will you get to a "free speech" justification for the use of a registered trademark on the Internet. Open criticism is perfectly acceptable so long as it is not of a competitive nature, as was the case with Andrew Faber and the Bally Sucks website.CompuServe, Inc. v. Richard S. Patterson and Flashpoint Development. (9th Cir., 1996).
CompuServe, the telecommunications networking giant, was taken to court by shareware developer Richard Patterson for illegally duplicating an Internet browser that he had developed. Patterson won in federal district court, but the decision was overturned on appeal. The Sixth Circuit Court of Appeals noted that the reach of the Internet meant that existing legal precedent for due process had to be reinterpreted in light of its capabilities. It used the three-point jurisdiction test laid down by the International Shoe and Asahi cases to redetermine culpability. First, it found that Patterson's contacts with CompuServe had indeed established a viable forum for commerce, or to quote the court, "a relationship intended to be ongoing in nature." Second, it found that "CompuServe's claims against [Patterson] arise out of his activities in Ohio if we are to find the exercise of jurisdiction proper" - which meant that the state of Ohio was the proper venue of prosecution. Third, it found that, based on the Asahi precedent, that "there is a substantial enough connection between Patterson and Ohio to make it reasonable for an Ohio court to assert personal jurisdiction over him." In accordance with its findings, the Court of Appeals reversed the lower court's decision and remanded the case for re-hearing.
What this means for any party on the Internet is that one can be prosecuted for any activity that infringes upon any form of intellectual property protection, regardless of where the respective parties are located or how the infringement took place. This case is considered one of the landmark cases with regards to resolving jurisdictional disputes arising from infringmenet via the Internet; see also International Shoe v. Washington, 1945, and Asahi Metal Industry v. Superior Court, 1996.Diamond v. Diehr. 450 U.S. 175 (1981)
In one of the true landmark cases for the computer software industry that made it all the way to the U.S. Supreme Court, the U.S. Patent and Trademark Office had granted a patent to a firm under the terms of the U.S. Patent Act (35 USC) who had developed a computer program to aid in a rubber refining process. The Court of Customs and Patents reversed the patent when it was contested, but the decision was subsequently overturned on appeal by the Supreme Court. Writing for the majority, Chief Justice William Rehnquist noted the following:
Digital Communications Associates, Inc. v. Softklone Distributing Corp. 449 F.Supp 449 (N.D. Ga., 1987)"... when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claims satisifes the requirements of Section 101 [of the Patent Act]."This case opened the door for software patents.
One of the early "look-and-feel" lawsuits arose in a dispute over Softklone's Mirror telecommunications software which Digital felt violated its copyrights on its own proprietary Crosstalk XVI software. The courts noted that copyright infringement did not occur with regards to either the source or object code, but agreed with Digital that the near-identical screen displays constituted such an infringemnt. The court noted that copyrights could be applied to "the placement, arrangement, and design" of words on a computer display so long as such a display served to explain a given program function and was not a mere represntation of program function or status. Softklone's Mirror too closely followed the setup of Digital's Crosstalk in this regard, and the court ruled in Digital's favor. Digital did not succeed in stopping Softklone, however, becasue the latter redesigned its user interface so as not to duplicate Digital's and later re-released Mirror using the new display format.
This case had strong implications three years later in the Lotus v. Borland dispute, and should be noted by those who plan on making unauthorized translation patches of foreign computer software.Franklin Mint, Co. v. Franklin Mint, Ltd. 331 F.Supp 827, 830 (E.D. Pa., 1971)
The Franklin Mint Company is a well-known firm located in Pennsylvania specalizing in cast and stamped metal collectables, such as coins, sculpture, and so on. When another company took a similar name and began to produce its own products, the original Franklin Mint sued in the Pennsylvania court system, accusing its competitor of irreperable harm to its business practices. The courts eventually ruled in favor of the original Franklin Mint.
This case is important to consider concerning the unauthorized distribution of active commercial "ROMs." Its importance is noted in Sega v. MAPHIA, which states, "Each illegal copy of a Sega game which Defendants distribute deprives Sega of revenue. Moreover, distribution of altered, inferior copies of Sega games and of confidential, pre-release unperfected games subjects Sega to damage to its business and reputation." This case provides incontrovertible evidence that copyright protection covers any and all forms of a commercially released product, including any pre-release copies that may be in existence.Futuredontics, Inc., v. Applied Anagramics, Inc., et. al. No. 97-6991 (C.D. Cal, 1998), also No. 97-56711 (9th. Cir., 1998).
As part of its Internet site, Applied Anagramics created a link to the Futuredontics site within one of the frames of its web pages. This allowed copyrighted material to appear on the Applied Anagramics site without authorization. Furthermore, since the balance of the page was filled with Applied Anagramics content, an unsuspecting user might erronously believe that the material in question belonged to them. As a result, Futuredontics filed suit in U.S. District Court charging Applied Anagramics with copyright infringement. Initially, the court refused a preliminary injuction due to lack of evidence, but later granted it after Futuredontics was able to better establish its claim. The case is still winding its way through the legal system on appeal as of this date; however, the district court eventually found in favor of Futuredontics and granted the injunction. In its ruling, the court based its final decision on the possibly that the link may have allowed Applied Anagramics to create an unauthorized derivative work on its own web site.
This case extended the principle of intellectual property infringement on the Internet to include "framed" content copied or displayed from another Internet site. It is a natural extension of the Shetland precedent; see also Shetland Times v. Wills and Zetnews, 1996.Harper & Row Publishers, Inc. v. Nation Enterprises. 471 U.S. 539, 592 (1985)
This particular case involved the newsmagazine The Nation, which had secured a preview copy of former U.S. President Gerald Ford's soon-to-be-published memoirs. They were particularly interested in his thoughts regarding the pardon of his predecessor, Richard Nixon, concerning the Watergate affair; so they published a small excerpt from the unreleased manuscript. The book's publisher, Harper & Row, promptly filed suit. The case went all the way to the U.S. Supreme Court, which ruled in favor of the manuscript's originally contracted publisher. In the court's opinion, the marketability of the manuscript had been compromised by the premature publication of the except, as it was the most important part of the book at the time with regards to potential sales, and that pressing concerns with regard to the public interest were insufficient to justify said usage. As such, the "fair use" claim of The Nation were without grounds.
This case established the marketability principle of fair use, which is point four in the fair use test (17 USC 107). Noted legal scholar Raymond Nimmer has called it the most important of all four points of the test (Nimmer on Coypright), even though the law states that all four points are to be given equal weight when deciding a fair use dispute.In re Compton's New Media. USPTO No. 5241671, Control No. 90/003270 (1994).
While this is not an actual legal case per se, this action filed with the U.S. Patent and Trademark Office deserves mention. Compton's Interactive Encyclopedia was the first widely acknowledged CD-ROM based encyclopedia to hit the software market. It used a patented search engine that made for quick and easy research. The only problem with this was that the original software patent for that search engine was so broadly worded that it effectly blocked anybody else from developing or using any other kind of search engine, as well as making owners of previously existing search engines liable for back royalties. Compton made it clear that it expected and would be seeking concurrent and back royalties from anybody employing any kind of search engine within their software. The patent was successfully challenged by the IMA, and subsequently thrown out by the Patent Office as too expansive in its claims.
This case is important to remember whenever an original vendor or licensee begins making broadly worded claims against an unlicensed developer. It also has certain implications with regards to the patenting of computer software.Intel Corporation v. Advanced Micro Designs (AMD). 12 F.3d 908 (9th Cir., 1993)
Intel found it difficult to keep up with production of its x86 family of CPUs during the heady days of sales for the early 8-bit personal computers. To offset the shortage, it subcontracted several firms to produce compatable CPUs, among them AMD. In 1982, the same year that Intel unveiled the16-bit 80286 CPU to the public, it entered into a special agreement with AMD that permitted AMD to build 100% working clones of Intel CPUs by using real Intel microcode within them. When it came time for Intel to roll out the 80386 (also known as the i386) in 1985, it decided that it had sufficient production capability and didn't need AMD's help anymore. AMD countered by releasing its own 80386 clone CPU, dubbed the Am386, which was a combination of Intel's internal 80286 microcode and certain reverse-engineered features of the 80386. Intel promptly took AMD to court claiming both copyright and trademark infringement, and the legal battle raged throughout the lifetime of the 80386 and well into that of its successor, the 80486 (which AMD also cloned in a similar fashion). The courts eventually ruled in 1994 that Intel's prior licensing agreement with Intel gave AMD the legal right to use 80286 microcode inside its clone processors, but it would have to discontinue the practice in future products. Also notable was the ruling that Intel had no legal claim to the number "386" as a trademark, since it was too generic. The following year, Intel and AMD settled their few remaining differences out of court, with AMD paying Intel for the right to continue using proprietary Intel microcode in its Am386 and Am486 product line.
This case is the one most frequently quoted with regards to the use of proprietary vendor code within an independent product, and is also important with regards to reverse-engineering and valid trademarking issues.International Business Machines v. Compaq Computer Corp. (docket number unknown, 1982)
IBM sued the fledgling Compaq for using what they contended to be an counterfeit copy of the IBM PC BIOS in their Compaq Portable PC and therefore an unlawful duplication of copyrighted computer code. Compaq had foreseen the legal challenge and produced a reverse-engineered product known as the Phoenix BIOS (after its developer, Phoenix Technologies) that did not contain any proprietary IBM microcode. They also omitted duplicating the internal ROM BASIC (i.e. "Cassette BASIC") of the IBM BIOS within the Phoenix BIOS for a number of reasons (avoidance of counterfeiting charges, for starters), thus rendering it not entirely compatible with the then-existing base of IBM PC software. As a result, the courts eventually ruled in favor of Compaq and allowed the continued manufacture and use of the Phoenix BIOS. This case opened the floodgates on the PC compatible market, since the rest of the computer was comprised of standard hardware. An interesting sidebar to note is that Microsoft's Bill Gates quickly moved to include a software version of BASIC in his MS-DOS package for the new PC clones, thereby providing full compatability with the rest of that day's IBM PC software base. ROM BASIC is now largely forgotten, except for those of us who remember that time and the unlucky few who have stumbled across its absence. This is the reason behind the situation that occurs whenever anyone tries to boot up a PC compatible without an installed operating system and finds the message "NO ROM BASIC - SYSTEM HALTED" displayed on their computer monitor.
The IBM v. Compaq case is considered the key case with regards to the legality of reverse-engineering computer code contained within firmware. It is also important from an emulation perspective, considering the fact that Compaq deliberately crippled the Phoenix BIOS in order to maintain legality and the market responded by working around the omission in a legal fashion. The case is important for emulator developers for two reasons. First, it established the bulletproof legality of "clean room" reverse engineered procedures. Second, it established that reverse-engineering should be limited to only those functions necessary to duplicate necessary functions of the original product, and this concept would be strengthened in Nintendo v. Atari, 1992.Intermatic v. Toeppen Magistrate's Report (N.D. Ill, 1996) and Panavision v. Toeppen. 938 F.Supp. 616 (C.D. Cal, 1996).
The defendant in this case was a resident of the state of Illinois and ran a web site featuring various aerial views of major cities within the state. In order to attract attention to his site, he registered a number of domain names that contained well-known trademarked terms within the photographic industry. Two of these were Intermatic and Panavision, and their owners subsequently sued for trademark infringement. In the case of the Intermatic violation, a federal district court ruled that Toeppen's use of the Intermatic trademark violated both state and federal anti-dilution statutes, since Intermatic did not want and had no intention of associating itself with Toeppen's activities, and so it found in favor of Intermatic. In the case of the Panavision violation, the plantiff filed suit in California under both state and federal anti-dilution laws, and a federal district court found that Toeppen's use of a registered trademark within an Internet domain name was sufficient grounds to establish trademark infringement. Even though Toeppen was not conducting any business on his site, the cross-border nature of the Internet permitted California residents to access his site, and the court ruled accordingly in favor of Panavision.
These cases serve to confirm that intellectual property disputes can cross borders. They are especially important with regards to trademark infringement within domain names and determination of proper jurisdiction in such cases.International Shoe v. Washington. 326 US 310, 316 (1945)
In a case that goes back to the closing days of World War II, the International Shoe Company filed suit against the state of Washington concerning a dispute over due process under the state's unemployment compensation laws. The case was eventually appealed to the U.S. Supreme Court, which ruled that International Shoe was liable for prosecution under Washington state law per federal statute (26 USC 1606A), that the state had every right to sue it to recover payments not already rendered to the state unemployment compensation fund, and that the taxes levied by the state to support that fund was not a violation of the "due process" clause of the 14th Amendment to the U.S. Constitution.
This does not appear to have anything to do with emulation until the Internet becomes involved. It is one of the precedent-setting cases for Internet litigation in that it helped to establish the legal concept of a viable forum, in which two parties can conduct business in a cross-border fashion. It also established the precedent that an offending party can be prosecuted under the laws of the place of residence of the offended party. See also Asahi Metal Industry v. Superior Court and Compuserve v. Patterson.Kewanee Oil v. Bicron. 416 U.S. 470 (1974)
This case dealt with the violation of confidental trade secrets that were protected under the terms of an exclusive contract. Kewanee Oil, developers of a specialized crystal-growing process, sued Bicron after the latter company obtained the process from former Kewanee employees and utilized it themselves. It was eventually heard in the U.S. Supreme Court, which wound up overturning a permanent injunction against Bicron's use of the process. The Supreme Court ruled that a state (in this case Ohio) could not protect a trade secret via statutory law, that the public as a whole does not benefit by such disclosure, that federal patent law does not conflict with trade secret issues, that a public domain process is not eligible for patent protection, and that a trade secret cannot be patented if serious questions arise as to its patentability. Below are some of the quotes from that decision that are frequently cited with regards to contracts for computer software.Lasercomb America v. Reynolds. 911 F.2d 970 (4th Cir., 1990)."If something is to be discovered at all, very likely it will be discovered by more than one person.... Even were an inventor to keep his discovery completely to himself, something that neither the patent nor trade secret laws forbid, there is a high probability that it will be soon independently developed. If the invention, though still a trade secret, is put into public use, the competition is alerted to the existence of the inventor's solution to the problem and may be encouraged to make an extra effort to independently find the solution thus known to be possible."The implications with regards to reverse engineering and the presumed sanctity of the EULA are obvious, with the second quote about contracts and statutory rights often frequently noted in contract violation disputes. This was the defining case concerning EULA limits for over two decades, but its reach has been sharply limited due to recent developments. See also ProCD v. Ziedenberg.
"A contract cannot be used to go beyond the limits of the statutory right. Under our law, as it has developed, the statutes provide the limits to contract."
"The necessity of good faith and honest, fair dealing, is the very life and spirit of the commercial world."
This dispute centered around a computer program called Interact that had been developed for an industrial die-making process. Lasercomb, the author, had licensed the object code to a company named Holiday Steel under the terms of a highly restrictive EULA containing a number of non-competetive and non-intrusional clauses. Holiday duplicated the program in violation of the EULA, had one of their programmers reverse-engineer it, encrypt the output so as to disguise its origins, and then sold the resultant program under the name PDS-100. Lasercomb promptly charged them with two counts of intellectual property infringement, two counts of fraud, and one count of unfair competition. The district court found for Lasercomb on all counts, but Holiday Steel appealed the decision. One of the arguments in the appeal was that Lasercomb's EULA was anti-competetive and contrary to public policy. The Fourth Circuit Court of Appeals agreed, and subsequently threw out everything except for one count of fraud.
This decision is important with regards to the anti-competitive natures of certain types of EULAs that might be imposed on a user. See also ProCD v. Ziedenberg, 1996.Lotus Development. Corporation v. Borland Internationall, Inc. 49 F.3d 807 (1st Cir., 1995), aff'd per curiam U.S., No. 94-2003 (1996).
Lotus had made its fortunes with its Lotus 1-2-3 spreadsheet package, staving off many attempts by its competitors to cut into its market share. Borland, better known for its programming packages, had decided to widen its horizons by producing several pieces of application software. The most popular one of these was Quattro, a speedy spreadsheet package that included as an extra feature a perfect copy of 1-2-3's "slash-bar" menu and support for 1-2-3 macros. Lotus promptly took Borland to court claiming that Borland had unlawfully duplicated these feature from 1-2-3. The courts agreed and Borland was forced to remove them from subsequent releases of Quattro, as well as pay back royalties to Lotus and a heavy fine. Borland eventually won on appeal several years later, with the court noting that an application program's menu structure was analagous to the controls of a VCR. As such, it was a mode of operation rather than a unique expression and did not qualify for copyright protection. It was a hollow victory, though - they had already sold the rights to Quattro to another company, and Lotus 1-2-3 had by that time already lost its one-time dominance in the spreadsheet market to newcomer Microsoft Excel - but it did save them from having to pay damages to Lotus over the affair.
At the 1990 Spring CES, Lewis Galoob Toys announced the release of the Game Genie, a device that allowed NES users to enter codes that would make it easier to play their videogames. Nintendo promptly sued, claiming that the Game Genie lessend the life and playability of the game, and was eventually successful in blocking sales of the Game Genie within the U.S. before its commercial release. Meanwhile, across the border in Canada the following year, the Canadian federal courts ruled that the Game Genie did not pose a viable threat to Nintendo's profits and found in favor of Galoob. The Game Genie was commercially released in Canada, and U.S. courts reversed their decision in October 1991, permitting the sale of the Game Genie within the U.S. In 1992, Galoob sued Nintendo for compensation resulting from lost sales of the Game Genie as a direct result of Nintendo's legal maneuvering, and Nintendo was forced to pay Galoob US$15 millon in damages. This resulted in the legalization of so-called "game enhancement technology" that allowed users to play videogames in a manner which the original designer did not intend to occur.
This case has significant implications for the videogame emulation community. It legitimized the generation of a videogame display by the use of a device not approved by the original vendor, it ruled that such use was indeed "fair use" provided that the users paid for the original software, and that a videogame hardware or software vendor could not redefine its interpretation of the market impact of its products at whim to prevent derivative works based on same. It is also one of the key cases to consider when attempting to to defeat a "market impact" charge by a vendor.M. Kramer Manufacturing v. Andrews. 783 F.2d 421 (4th Cir., 1986)
This dispute arose over the unauthorized duplication of a video poker game. The defendant had one of its engineers remove the ROMs from the poker game, dump them, and then make minor changes to them, including changing the vending company's name and portions of the displayed game text. The U.S. Fourth Circuit Court of Appeals held that copyright protection covers both the program itself and the displays that it generates to the extent that such displays are necessary for the proper function and operation of the program by a user. The court specfically noted the "fixed" nature of ROMs, and commented that a audiovisual work so "fixed" could not be altered without violating copyright law. As a result, it found in favor of the plantiff.
And you wondered why certain original software vendors get so upset about "ROM" hacking and patching? This was the first such case of its kind on record, to the best of my knowledge, and subsequent cases followed its lead in confirming the "uncorruptable" intent of computer programs that are "fixed" in ROM.MAI Systems Corp. v. Peak Computer, Inc. 991 F.2D 511, 518 (9th Cir., 1993).
MAI Systems was both an manufacturer and software developer of computer systems. It held a number of copyrights on software developed specifically for its computers. Peak Computer was a computer support firm that often had to perform maintenance on MAI products. In order to do so, it would frequently have to turn on the computer and load proprietary MAI program code into system memory. It did not copy the code, which was wiped whenever the system was shut down. The problem arose when Peak began offering its customers the temporary loan of a similar MAI system until repairs could be made to the customer's own. MAI filed suit against Peak with regards to this practice, charging it with copyright infringement - the customer had not paid for the right to use a loaned system and loaned software in place of that which it purchased. The courts ruled in favor of MAI, and the Ninth Circuit Court of Appeals upheld the lower court's ruling. They found that "...unauthorized copying, for purposes of copyright law, occurs when a computer program is transferred from a permanent storage device to the computer's RAM." Such an action, regardless of its results, produced a copy of the copyrighted work as defined by the U.S. Copyright Act (17 USC). The resultant code in system RAM was considered to be a "fixed work" and therefore an unauthorized copy of same. To further quote the court, "the unauthorized copying of copyrighted computer programs is prima facie an infringement of the copyright."
While nobody in the computer industry seriously accepts the argument that any program uploaded to system RAM is copyright infringement, it is interesting to note that all vendor EULAs made since this decision now specifically authorize this action on the part of the user. The court's ruling is broad enough that it can be interpreted any number of ways and often is, but the key quote from the verdict is the last one. To wit, any copy that you make of a piece of software, whether it is legal or not, that is not authorized by the copyright owner is by definintion an infringing copy of same. The problem posed in the original situation was recently resolved with the passage of the Digital Millenium Copyright Act of 1998, which amended 17 USC 117 in order to make the uploading of computer software into system memory by any third party trying to service that computer legal under copyright law.Maritz, Inc. v. Cybergold, Inc. 947 F.Supp 1328 (D. Mo., 1996).
This dispute arose over two on-line vendors offering identical services. One was located in the state of California, and the other in the state of Missouri. Maritz was the first to file suit, claiming that Cybergold was unlawfuly infringing upon its business. Cybergold countersued on the grounds of trademark infringement, claiming that Maritz's "goldmail" service might be confused with its own service (named after itself). Called in to resolve the dispute, a Missouri district court ruled that Cybergold's business activities crossed Missouri borders, thanks to its presence on the Internet, and it therefore had jurisdiction in the matter. Surprisingly, though, it ruled in favor of Cybergold, since Maritz was unable to provide sufficient proof to support its contention of trademark infringement. The two parties eventually elected to settle out of court.
What this means is that the mere presence of a venture on the Internet is sufficient to open the backers of such a venture to the possibility of an intellectual property dispute in a cross-border dispute, as the very nature of the Internet allows it to cross all borders.MiTek Holdings v. Arce Engineering. No. 94-5262 (11th Cir., 1996).
MiTek and Arce were two well-known wood truss manufacturers in the building industry. Each company created their own computer program for determining the proper placement of these trusses during the construction of a building's roof. MiTek sued Arce over their rival's program, claiming that the menu structure of Arce's TrussPro was so much like that used by MiTek's ACES that it constituted copyright infringement. Arce lost its case in district court, and the decision was affirmed by the Eleventh Circuit Court of Appeals. Basing its ruling on the Lotus v. Borland precedent, the court ruled in effect that the command structure of a computer program is a generic process and therefore not copyrightable.
This pretty much sets the seal on the uncopyrightability on any kind of menu, option, or other kind of command structure contained within a computer program, an issue first addressed in Lotus v. Borland, 1990. It is now perfectly legal to duplicate the command structure of a competitor's program; however, it is still not legal to duplicate any unique texts (such as help and information screens) generated by those commands, as established by Digital v. Softklone, 1987.Narrell v. Freeman. 872 F.2d 907, 913 (9th Cir., 1989).
I don't have much on this case beyond the following two quotes - one from the Sega v. MAPHIA docket, and the other from ADA v. Delta Dental, 1996 (not included in this document)Nintendo of America, Inc. v. Blockbuster Entertainment. (1987)"The doctrine of fair use allows a holder of the privilege to use copyrighted material in a reasonable manner without the consent of the copyright owner.""Phrases and expressions conveying an idea typically expressed in a limited number of stereotyped fashions are not subject to copyright protection.... "The implications are clear with regards to intent of the user versus intent of the developer or owner of a copyrighted work. For example, if you wanted to hit your friend in the back of the head with a rolled-up newspaper, then you could not be prosecuted for copyright infringement; however, you might be prosecuted for assault under criminal law. In a computer-related example, you might decide to replace the worn-out circuit board inside a videogame cartridge with a better one from another copy of the same cartridge whose label is not in as good shape as the first one; such an action would be considered reasonable even though it was not intended by the original vendor.
Blockbuster Video built its business upon providing surprisingly lenient terms for the rental of commercially released videotapes. When home console videogames came along in the 1980s, they rented them out to their customers, too. Nintendo, the largest manufacturer and licensor of videogames at the time, sued Blockbuster for copyright infringement. The chief complaint was that the practice of unauthorized software rentals of Nintendo videogames on the part of Blockbuster was a violation of federal law. The two parties eventually settled out of court, with Blockbuster retaining the legal right to continue the practice, but one particular aspect of the case deserves special mention. Nintendo successfully prosecuted Blockbuster for providing photocopied instruction manuals along with its rental NES carts. Blockbuster unsuccessfully argued that it was only protecting its investment in the original manuals, as it would cost more to replace the originals than it would to photocopy replacements. In this particular part of the case, the courts found in favor of Nintendo, therefore Blockbuster was required to start providing the original manuals with its rental games. After the settlement was reached, Blockbuster and other videogame rental outlets all but discontinued the practice of providing the manual with a rental game except by request - an action which went unchallenged. The practice continues to this day.
The implications from this are obvious - any copy of the original instruction manual for a piece of computer software that has not been authorized by the original vendor or developer is illegal. This has also been extended in later cases to cover documentation for any and all computer-based systems.Nintendo of America, Inc. v. Bung Enterprises and Carl Industries. (C.D. Cal, 1997)
Bung Enterprises was a Hong Kong technology firm who had invented a sophisticated accessory for the N64 videogame console. The Doctor V64 plugged into a standard N64 console and allowed its users to dump their N64 cartridges to recordable CD media, as well as play the dumped games straight off the CD. Carl Industries was the primary distributor of the Doctor V64 in the United States. Nintendo sued both in a joint action in federal district court, seeking significant financial compensation for and an immediate injunction against the sale of the device within the United States and its territorial possessions. Nintendo claimed that its publishers and developers had lost an estimated US$810 million in potential worldwide sales as a result of software piracy, and Bung's product was the chief cause of that piracy. Carl Industries claimed that the Doctor V64 served a legitimate development need as defined by several court cases on the subject under U.S. law (Sega v. Accolade and Nintendo v. Atari, 1992) and that Nintendo's sole purpose in the dispute was to prevent any non-licensed Nintendo developer from working on products designed for the N64 - despite ample public evidence to the contrary. As a result, Bung was forced to change the way that it manufactured the Doctor V64 so that it could no longer be used to directly dump N64 cartridge data. Nintendo eventually triumphed in the affair, and the resultant decision effectively banned the manufacture, distribution, and sale of unauthorized cart dumpers for commercial purposes.
This represents the last and greatest victory for Nintendo in the cart dumper wars. The only way around the legal instructions imposed on cart dumping technology by this case would be under the concept of noncommerical use. See the "Betamax case," i.e. Sony v. Universal, 1984.Nintendo of America, Inc. v. Games City. (S.D. Ca, 1997)
Games City was a retailer based in Monterey Park, CA who sold a number of cart-dumping devices for several videogame systems. Among these were cart dumpers for the Super Nintendo and Nintendo 64 videogame consoles. Due to the widespread underground popularity of the N64 cart dumpers, Nintendo elected to sue Games City for intellectual property infringement. Among the charges that it leveled against Games City, Nintendo claimed that its promotion of cart dumpers was an infringment of Nintendo's copyrights, since they could be used to create illegal copies of Nintendo video games. Games City eventually elected to settle out-of-court and paid a $100,000 settlement to Nintendo in order to resolve the dispute.
This was one of Nintendo's biggest victories in its prosecution of the practice of cart dumping, and helped them to build their case against cart dump manufacturers. See also Nintendo v. Bung Enterprises and Carl Industries, 1997.Nintendo of America, Inc. v. Prima Publishing. (W.D. Wa, 1997)
Nintendo contended that a reproduction of a screenshot map used in Prima's guidebook to the videogame GoldenEye was an illegal copy of the same used in the official Nintendo guidebook. The judge dismissed the case, noting that the screenshot of the map display from the game fell under the definition of "public knowledge." It was meant to be shared gameplayers; therefore, Nintendo had no grounds for their claim.
Among other things, this confirmed the legality of screenshots and their free distribution, which is a practice often employed by emulator developers and videogame players to illustrate their achievements.Nintendo v. Samsung. (1995)
Nintendo alleged that the Korean electronics giant was promoting software piracy by making certain hardware and software widely available to interested third parties. These parties were mostly Oriental outfits known for producing bootleg Nintendo games, including one firm owned by the Chinese government (no surprise there). The dispute was eventally settled out of court, with both sides pledging to help each other in efforts to stop software piracy.
This case helps to highlight the rampant bootleg markets in the Orient, especially with regards to computer software and videogames.Nintendo v. Tengen. (1989)
In what is perhaps one of the most famous cases of software distribution rights for a videogame, Nintendo sued Tengen over their distribution of a copy of the popular Russian videogame Tetris designed for use with the Nintendo Entertainment System (NES). Nintendo had previously released its own version of Tetris, and claimed that Tengen's version was an unlawful violation of its distribution agreement with the game's original author, Alexy Pajitnov. Tengen countered that it had obtained its rights for distribution from a European licensee, Mirrorsoft. The courts ruled that Mirrorsoft did not have the authority to grant Tengen the U.S. distribution rights to Tetris and found in favor of Nintendo. Both Tengen and Mirrorsoft were forced to pull their copies from U.S. distribution and pay heavy damages to Nintendo. The Tengen Tetris NES game cartridge has since become something of a collector's item.
The "Tetris case" is important to consider with regards to the proper authorization of software distribution rights in accordance with copyright laws.Penwalt v. Durand-Weyland, Inc. 833 F.2d 931 en banc, 4 USPQ 2d 1737 (Fed. Cir., 1987)
In this dispute, which involved the unintentional and independently derived duplication of a patented process, "the court applied the 'all elements rule,' holding that 'the district court correctly relied on an element-by-element comparison to conclude that there was no infringement under the doctrine of equivalents,' holding that this was the proper method of analyzing equivalents. Judge Nies, in a concurring opinion, emphasized this feature of the opinion: 'If an accused device does not contain at least an equivalent for each limitation of the claim, there is no infringement because a required part of the claimed invention is missing.'"
The above quote is from Horseshoes, Hand Grenades, and the Doctrine of Equivalents: Where 'Almost' Counts by Alston and Bird LLP. The conclusion was there must be either literal or equivalent infringement to justify a patent violation claim. This opens the possibility that substituting a piece of software for physical hardware (i.e. an emulator) could be construed as patent violation. The requirement that "an accused device [must] contain at least an equivalent for each limitation of the claim" is important, as this was indirectly referenced in Atari v. Nintendo, 1992. It leads one to the inescapable conclusion that an unlicensed emulator's design may not go beyond those functions absolutely required to duplicate necessary functions from the original system unless otherwise approved by the vendor.Playboy Enterprises, Inc. v. George Frena. 839 F.Supp. 1552 (M.D. Fla., 1993).
George Frena, the sysop of the Techs Warehouse BBS, had 170 digitized images from both Playboy and Playgirl magazine posted to his computerized bulletin board system. The two magazines were commercial adult publications protected under copyright law. Playboy Enterprises, owner and publisher of both magazines, sued Frena for copyright infringement. The Federal District Court acknowledged Frena's claims that the uploading had been done by his users without his approval; however, it still found him liable for intellectual property violation. It ruled that Frena's users had illegaly copied the pictures by digitizing them; furthermore, Frena had infringed on exclusive vendor distribution rights by making the pictures available for download by his users. It also found Frena in violation of trademark law, since the infringing material contained registered trademarks belonging to Playboy Enterprises (the Playboy and Playgirl logos).
This case established two things. First, courts can find against a defendant in an intellectual property dispute whether or not the defendant is aware of such activity. Second, intellectual property protection extends to all copies of a given work regardless of how they are made or the media on which they are presented.Playboy Enterprises, Inc. v. Terri Welles. 7 F.Supp. 2d 1098 (S.D. Cal., 1998).
In yet another grand legal case of FUBAR for the famous men's magazine, Playboy sued a young woman named Terri Welles for trademark infringement. Ms. Welles had previously appeared in a number of issues of Playboy and other such adult magzines published by the company, even going so far as to receive the honor of being the 1981 Playmate of the Year. She created her own semierotic website, which among other things (including adult content) advertised her former relationship with Playboy and repeatedly used Playboy trademarks as metatags for the various Internet search engines. In deciding the matter, the court ruled that Ms. Welles' use of the Playboy trademark was not infringing and justified by the "fair use" princple, as her prior relationship with Playboy was a matter of public record. The court noted that the so-called honor of being awarded the title of Playmate of the Year "... becomes part of their identity and adds value to their name. Indisputably, these winners represent the awarding organization of sponsor, but the title becomes part of who they are to the public." The court ruled in favor of Ms. Welles because "... it references not only her identity as a 'Playboy Playmate of the Year 1981' but it may also reference the legitimate editorial uses of the term 'Playboy" contained in the text of defendant's website."
Well, well, how 'bout that? It seems that if you are given a form of special identity by a particular sponsor which incorporates one or more of their registered trademarks, then you have the right to use those trademarks when such is absolutely essential to prove your claim to that identity. This is one of only a handful of "fair use" exceptions insofar as unauthorized trademark usage is concerned.Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc., et. al. No. 96-6961 (E.D. Pa., 1998).
In one of the more amusing cases of trademark infringement, the world-famous adult magazine publisher sued Tel-A-Talk for using the Playboy logo as a link to Playboy's own web site. Playboy made two charges: first, that use of its trademarked logo without authorization was a violation of the Landham Act; second, that such usage also constituted counterfeiting under federal law (which would have tripled any damages and attorney compensation fees it might have received). The U.S. District Court ruled against Playboy on both counts. On the first charge, it noted that Tel-A-Talk was not claiming to provide the same "services" as Playboy, therefore its use of the trademark to direct users of its website to Playboy's in order to obtain those aforementioned "services" was deemed valid. It threw out the second charge on the basis that the Playboy trademark had been registered to cover its magazine, which Tel-A-Talk had not attempted to duplicate in any way. The court gave Playboy the option to renew its motion as soon as it came up with a better case.
While you may be laughing as hard as I did when I first read about this dispute, there is an important point worth considering here. It is perfectly legal for you to use a trademarked name, phrase, or graphic to represent a link on your Internet site if such a link takes a user directly to the Internet site of the trademark owner. Many folks have seen this practice in use on a multitude of Internet sites, and this is the case that firmly established the validity of same.Princeton University Press v. Michigan Document Services. 1996 U.S. App LEXIS 7474 (6th Cir., 1996).
Michigan Document was a photocopying service that did many jobs for nearby Princeton University. One of these was the making of "coursepacks" for certain classes. A coursepack is a compilation of readings from various print works assigned by a professor for a given class that are collected together into one document. Copyright law grants limited exemptions for educational institutions and other non-profit organizations to use copyrighted material in certain ways not available to the average person, and coursepacks are one of these accepted methods. Over the years, a system has developed whereby the copyright owner of any material used within a coursepack receives some compensation for same. Michigan Document did not honor this system; they made the required coursepacks without recompense to the copyright owners. They were subsequently sued for copyright infringment, but won in district court arguing that the practice was an exercise of "fair use" for educational purposes. The U.S. Sixth Circuit Court of Appeals reversed the decision of the lower court in an en banc opinion after careful consideration of all "fair use" factors.
What this means to the emulation community is that the vast majority of those beloved "ROM" packs that are floating around are illegal, as they contain copyrighted material for which the copyright owner has not granted the right of free distribution without recompense.ProCD, Inc. v. Ziedenberg. 86 F.3d 1447 (7th Cir., 1996).
ProCD was the author of the SelectPhone database, which incorporated phone number and address information from over 3,000 phone directories across the United States. As a database, it could not be copyrighted due to an earlier court decision (Feist v. Rural Telephone Service, 1991). ProCD sought protection for its program through two different EULAs - one for end-users, and one for businesses wishing to further disseminate its data. Matthew Ziedenberg, owner of Silken Mountain Web Services, violated the EULA on ProCD's SelectPhone package by purchasing the product as an end-user and then disseminating the data on his web site. The business EULA for SelectPhone permitted this activity; however, Ziedenberg bought the cheaper version of the package whose EULA did not include this clause. Ziedenberg initially won in district court by arguing that the EULA imposed on the average end-user was too restrictive; however ProCD appealed the decision. The Software Publishers Association (SPA) and many other industry orgainzations filed numerous "friend of the court" briefs on behalf of ProCD, essentially saying that the federal government was letting users get away with too much with regards to intellectual property infringement, and recommending that EULA protections be strengthened. In the end, the Seventh Circuit Court of Appeals noted the high cost and tremendous effort that ProCD had put into the SelectPhone project - a massive undertaking that any competitor could duplicate if it so chose. Ziedenberg was attempting to enjoy the fruits of ProCD's labor without proper recompense. Its ruling found in favor of ProCD, noting three things. First, the court found that a EULA was implicitly accepted by the user at the moment that software was obtained (in this case, through purchase). Second, the court found that a EULA was a legally binding contract under sections 2-204 and 2-606 of the Uniform Commercial Code (UCC). Third, the court found that a EULA was to be considered a contract between two private parties (the vendor and the end-user) and therefore enforceable under federal law (17 USC 301, 49 USC 1305).
This case effectively overturned protections for computer software formerly assumed under Kewanee Oil v. Bicron, with the result that EULAs are once again the front line of defense for software vendors seeking to protect their intellectual property rights. In order to ensure that this protection is not taken away from them again, software vendors have adopted a standardized format and use of phrasing approved by the federal government for EULAs issued since this decision was rendered. EULAs are no longer as restrictive as they once were, but the resultant language is quite specific with regards to priviliges that a vendor may grant to a user regarding computer software. One can still challenge the terms of a EULA as being overly restrictive, but the burden of proof once again rests on the user, not the copyright holder.Recording Industry Association of America v. Diamond Multimedia Systems. No. 98-5627 (9th Cir., 1999)
Diamond Multimedia Systems, better known for their audiovisual products for personal computer systems, produced the Rio MP3 audio recorder/player for sale. The Recording Industry Association of America promptly took Diamond to court over the issue, noting that the MP3 format was an unlawful duplication of music originally recorded in "Red Book" format for audio CDs and thus violated the Audio Home Recording Act of 1992 (17 USC 1001, et. seq.). The district court found in favor of the RIAA, but their decision was reversed upon appeal. The U.S. Ninth Circuit Court of Appeals noted that maufacturers of audio recording and playing equipment pay a small per-unit royalty to the music industry to partially offset the threat of audio piracy; however, this same agreement did not cover computer equipment. The Rio was not a "digital audio recording device" as defined by the AHRA, but "... the Rio is a device that makes copies in order to render portable, or 'space-shift,' those files that already reside on a user's hard drive .... Such copying is paradigimatic non-commercial personal use entirely consistent with the purposes of the [AHRA]." As a result, Diamond won their case and was allowed to continue the sale and manufacture of the Rio.
This case is worth considering with regards to cross-format duplication of copyrighted material.Religious Technology Center v. Netcom. No. 96-20091 (N.D. Cal., 1995).
This dispute arose between the Church of Scientology and a former disgruntled member (Dennis Elrich) who put certain confidential church documents on the Internet for public access. The Church of Scientology claimed that Netcom had no authority to permit the posting of these documents and that the Religious Technology Center (or RTC, the publishing branch of the Church of Scientology) had sole legal right to these documents. A federal district court granted a preliminary injunction in February 1995 permitting the search for and seizure of those documents; however, it was forced to amend its decision later that month when it became clear that the search had been conducted in an overzealous manner by law enforcement officials under the direction of the RTC. In its amended decision, the court that one of the documents in dispute had fallen into the public domain due to the plantiff's neglect in renewing the copyright; therefore, it was not an issue and could be legally posted. It next applied the four-point "fair use" test as defined by copyright law (17 USC 107). Netcom passed the first point in the test, since use for critical purposes is recognized by law. It failed the second point with regards to part of the documents (noted as Exhibit B in the official court documents) because of the claimed religious nature of the works in question - the undisputed portion (noted as Exhibit A) were of a purely informative nature and therefore non-infringing. It failed the third point on all counts, since either an entire document or the "heart" of the document was posted, per the Nation case (Harper and Row v. Nation, 1985), Finally, it passed the fourth and most important part of the test, the marketablility principle, since the defendant was not involved in "a systematic attempt ... at posting the complete works necessary for setting up a competing religious group." Subsequently the court determined that Netcom's usage of copyrighted Scientology material failed the "fair use" test. The court ruled that Netcom had no right to post any of the material in dispute save for third-party critical matter that was independent of the documents in dispute and the one document that had fallen into the public domain due to the lapse of its copyright. It did rule, however, that the subsequent search and seizure overreached its legal bounds, and RTC was directed to return or provide compensation for any and all material unlawfully seized that was not directly involved in the dispute within ten (10) days of the court's ruling. RTC had no choice but to comply with the court's order.
This is one of the defining cases with regards to copyright infringement on the Internet. The heart of the court's decision can be found in its concluding remarks, which state the following: "Unauthorized reproduction, transmission, or publication includes placement of a copyrighted work into a computer's hard drive or other storage device; 'browsing' the text of a copyrighted work resident on another computer through on-screen examination; scanning a copyrighted work into a digital file; 'uploading' a digital file containing a copyrighted work from the computer to a bulletin board system or other server; 'downloading' a digital file containing a copyrighted work from a bulletin board system or other server to the computer; and 'quoting' a copyrighted work that is cited in an on-line message in sending, responding to or forwarding that message...." It also affirmed that posted extracts from a copyrighted work "must comprise only a very small percentage of the copyrighted works both from a quantitative and a qualitative standpoint" and may not include "the heart of the work." It serves as an excellent example of the "fair use" test in action with regards to an Internet issue, and it should be noted that Netcom's failure to pass the test rested on the authorship and scope principles, which are frequently overlooked by both developer and vendor alike.Sega Enterprises, Ltd. v. Accolade, Inc. 977 F. 2d. 1510, 1517 (9th Cir., 1992).
Accolade, a noted developer of videogame software, had produced six unlicensed games for the Sega Genesis home videogame console. Sega promptly sued Accolade, claiming copyright and trademark violation. The courts upheld Sega's contentions, but the decision was later partially reversed upon appeal. The Ninth Circuit Federal Court found that it was "fair use" for Accolade to dump and decompile the internal codes of the Sega Genesis and its games for developmental purposes, provided there was no other way to gain access to the concepts involved in their operation. This would have permitted Sega to establish a de facto monopoly over games for the console, which would have been unfair to Accolade. However, it was also ruled illegal for Accolade to activate the Sega Trademark Security System (TMSS) within these unlicensed games, however unintentional that may have been, since this gave the wrong impression that Sega had authorized Accolade's unlicensed titles when in fact they had not. Sega and Accolade eventually settled their differences out of court.
This case is notable because it established the legality of dumping a ROM-based storage device (like a game cartridge) under the strict rule of pure development purposes. Such dumps are considered "intermediate copies" under the law, and it is clearly understood that they are not meant for distribution without the consent of the copyright holder. The decision is frequently applied to any kind of practice involving an IC dump, but apparently does not apply to the practice of BIOS dumping; see IBM v. Compaq, 1982 and Apple v. Franlklin, 1983. It is is the second precedent-setting case regarding the limited "fair use" protection for the practice of "cart dumping," with the first being Nintendo v. Atari, 1992. It is also an important ruling for the emulation community with regards to unauthorized trademark usage, due to the fact that many systems or software titles make use of trademarks (of display of same) during the bootstrap process, as well as actual system operation or performance. Such usage has been deemed to be non-infringing as a result of this case, since the original vendor put those trademarks in their software for the express purpose of being displayed. The emulator vendor therefore has no choice but to display them, as messing with a trademark display is a violation of the Landham Act per Playboy v. Frena, 1993.Sega Enterprises, Ltd. v. MAPHIA. 857 F.Supp. 679, 686 (N.D. Cal., 1994).
MAPHIA was the self-appointed moniker of a group of computer software pirates who owned and operated a number of computerized bulletin boards operating in and around the San Francisco area. Part of the "warez" that were offered on their site were cart dumps (nowdays called "ROMs") of Sega Genesis games, along with instructions on how to dump the original game carts and how to both obtain and operate the requisite cart dumpers. Users of the bulletin boards uploaded and downloaded Sega software with the full knowledge and encouragement of MAPHIA. Subsequently, Sega filed an action in federal district court against MAPHIA, charging them with multiple counts of trademark and copyright infringement. The copyright infringement was obvious; Sega also contended that downloading and then running these unlawful copies also infringed upon its corporate image and thus constituted trademark violation as well. The court granted an injunction in Sega's behalf, and in accord with that ruling local law enforcement officials barred MAPHIA from carrying unauthorized copies of Sega software on its bulletin board for any reason whatsoever. In accord with the court's injunction, they also seized all infringing copies of Sega software, as well as all materials relating to their storage and distribution, to ensure that MAPHIA would be seriously handicapped in any effort to resume such unlawful practices.
This is the most important court case up to this point with regards to the Internet and the emulation community. It appears to have served as one of the guides for a new provision of U.S. copyright law (17 USC 512) dealing specifically with on-line service provider liability that was laid down with the passage of the Digital Millenium Copyright Act in late 1998. The conclusions one should draw from this case are obvious and need not be explained.Shetland Times v. Dr. Jonathan Wills and Zetnews Ltd. Court of Session, Edinburgh, Scotland (Lord Hamilton, 1996).
Zetnews Ltd, an Internet information site based in Scotland, had developed the practice of duplicating headlines from the website of the Shetland Times newspaper, which served as links to the actual articles on the Shetland website. Once they learned of this practice, Shetland sought an injunction against Zetnews and its webmaster, Dr. Jonathan Wells, ordering them to cease and desist this practice. Their claim was based on perceived violations of the Scotland Copyright Design and Patents Act of 1988, sections 7 and 20. In granting the injunction, the Edinburgh Court of Session noted "access to the pursuer's items ... can be obtained by bypassing the pursuers' front page and accordingly missing any advertising material which may appear on it." The court ruled that Shetland had "... a prima facie case that the incorporation by the defenders in their Web site of the headlines provided at the pursuers' Web site consititutes and infringement ..." and granted the injunction, subject to further litigation on the subject.
Although decided under Scottish law, this is considered to be the landmark legal case with regards to the legality of linking. Any link that involves the unauthorized use of commercial materials or directs a users to or from a commercial site in an unauthorized manner is illegal under copyright law. The Shetland case has been the guiding factor in subsequent court decisions within the United States; see also Futuredontics v. Applied Anagramics, 1998.Sony Corporation of America v. Bleem LLC. (9th Cir., 1999)
Sony sued Bleem LLC over the release of bleem!, a commercially produced PlayStation (PSX) emulator for IBM compatible computer systems, using the usual arguments. Howerver, Judge Legge eventually refused to stop the release of bleem! after numerous requests by Sony for a restraining order, noting that Sony's claims in this case were without merit. Bleem LLC was able to successfully prove the use of "clean room" techniques during the development of their PSX emulator, with the result that their product did not contain any infringing code.
It seems that the videogame console market has now going through what the personal computer industry endured a decade ago during the dispute between Apple and Readysoft over Macintosh emulation. These two cases marked the first release of an videogame console emulator for a product that was still commercially viable, which was also another eerie parallel to the Apple-Readysoft dispute (as the Mac was also a viable system at the time). Once again, rapid strides in the emulation community have caught up with the technology being emulated. These two cases are still working its way through the courts and will go to trial in the first half of the year 2000. It is important with regards to the future of videogame emulators, in particular those that are designed specifically for use with the actual console's software base within its original delivery system. See also IBM v. Compaq, 1982, Intel v. AMD, 1991, and Sony v. Connectix, 2000.Sony Corporation of America v. Connectix, Inc. No. 99-15852 (9th Cir., 2000).
Sony sued Connectix over the release of the Virtual Game Station (VGS), a commercially produced PlayStation (PSX) emulator for the Macintosh computer system, using the usual arguments. VGS was designed to use actual PlayStation videogames (as opposed to the cart dumps or disk image files used by many other videogame emulators), and these were manufactured by Sony and its licensees in the same CD-ROM format as that used by most personal computers - including the Macintosh. The U.S. District Court refused to grant a preliminary injunction against Connectix, noting that Sony's claims were without merit, but Sony appealed both cases. Judge Charles Legge of the 9th District Court of Appeals later agreed to block the sale of Virtual Game Station after agreeing with Sony that the Virtual Game Station possibly employed portions of PSX microcode as part of its operations, which was and still is a reverse-engineering "no-no" due to copyright violation. Connectix appealed the disctrict court's ruling, and the case was thrown out by the U.S. 9th Circuit Court of Appeals the following February. In its opinion, the high court deemed the development and release of an emulator to be noninfringing provided that no patents were violated and that the final product itself did not contain any infringing code; furthermore, it also ruled emulation itself to be protected fair use of computer software under 17 USC 107.Sony Corporation of America v. Universal Studios, Inc. 464 U.S. 417 (1984)
This is the case that legalized emulation once and for all. It should also be noted that the high court's ruling also permitted emucoders to use whatever copyrighted code they pleased from the original system (such as the BIOS) while developing their emulator, so long as the final product did not require the use of such code in order to function. That is why it is still illegal to use BIOS dumps with an emulator - the developer can do that all day long while coding the emulator, but not a user of any public release version. It is yet another example of the "developer's exception" first granted under the concept of the intermediate copy; see Sega v. Accolade, 1992.
In the now-famous "Betamax case," Sony argued that court actions on the part of Universal (and Disney) was an unlawful infringement of legal technology. Universal argued that Sony's new Betamax videocasette recorder (VCR) permitted the unlawful duplication of their copyrighted television programs. The case worked its way through the courts for years, eventually going all the way to the U.S. Supreme Court. As part of the case, a videotaped copy of The Mickey Mouse Club was played for the high court justices. Not amused, the court eventually ruled that private, non-commercial copying of television broadcasts does indeed qualify as fair use. To quote from the Supreme Court's ruling:The sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial noninfringing uses.... Whatever the future percentage of legal versus illegal home-use recording might be, an injunction which seeks to deprive the public of the very tool or article of commerce capable of some noninfringing use would be an extremely harsh remedy, as well as one unprecedented in copyright law.... [Even when an entire copyrighted work was recorded, such copying is deened fair use] because there is no accompanying reduction in the market for [the] plaintiff's original work.... A use that has no demonstrable effect upon the potential market for, or the value of, the copyrighted work need not be prohibited in order to protect the author's incentive to create."
This case is often cited by "free software" advocates concering personal duplication of computer software that is not intended for anything beyond private use, and has been successfully used on more than one occasion to defend the practice for various and sundry reasons. It has never succeeded as a defense for software piracy, though, since that activity goes beyond contributory infringment into direct infringement, and is therefore still illegal. EmuFAQ contributor Chuck Cochems argues that this case opens the door for personal use of noninfringing ROMs, and you can read all about it in his intriguing article, "The Question of ROMs."Stac Electronics v. Microsoft Corp. No. 93-0413 (C.D. Cal, 1994).
Stac Electronics had developed a popular personal computer utility program called Stacker, which allowed system owners with small hard drives and not enough money to buy larger ones to effectively double their available storage space. It did this by using advanced compression algorithims to reduce the amount of storage space required for all material stored on a user's hard drive, uncompressing it as needed by the user, and Stac took out a number of software patents on its compression technology. Microsoft, always on the make for any technologies that might complement or compete with sales of its MS-DOS operating system, developed the DoubleSpace utility for MS-DOS 6.20 to do the same thing. Stac prompty sued under the terms of the U.S. Patent Act, claiming infringment of its proprietary patents on disk compression technology. The courts found in favor of Stac, and Microsoft was forced to remove DoubleSpace and immediately issue a new release without it (MS-DOS 6.21). As always, the resourceful folks at Microsoft found a way to deal with the situation. First, it developed its own reverse-engineered disk-compression algorithim that, while not as effective as Stac's, did the job well enough - this was included in the next release of the operating system (MS-DOS 6.22's DriveSpace). Second, it eventually bought out Stac, thereby gaining the rights to its proprietary software patents on Stacker technology. Stacker as a standalone product subsequently disappeared, with the technology being folded into Windows 95 and all subsequent Windows releases.
This is perhaps the best-known example of software patent violation within the personal computer industry. Microsoft's reaction is typical of its behavior during its corporate growth - if you can't use the technology, then buy the company. Emulator developers should keep this example in mind whenever they have to deal with a piece of code protected by one or more software patents. As this case showed, reverse engineering is the only legal means available to bypass patent protection, but it does not necessarily protect you from subsequent court action on behalf of the patent owner.Tandy Corporation v. Personal Micro Computers. 524 F. Supp. 171 (N.D. Cal., 1981)
To quote the Schwegman summary, "Tandy claimed that Personal Micro Computers took Tandy's I/O routine from a ROM chip and copied the chip for use in Personal Micro's computer. A computer program is subject to copyright protection. A silicon chip having the program imprinted on it is a "tangible medium of expression" of the program and so is also subject to copyright law. Personal Micro's motion to dismiss was denied."
This ruling would set the stage for all subsequent cases regarding the unauthorized duplication of computer code stored within a ROM chip. It has grave implications for anyone who wants to dump the contents of a ROM without the permission of the copyright holder to the object code stored within the ROM.Vault Corporation v. Quaid Software. 655 F. Supp. 750 (E.D. La., 1987).
Vault had developed the PROLOK copy-protection scheme for software vendors in order to prevent unauthorized duplication of their products. Quaid Software designed and released a commercially available archiving program called CopyWrite that would bypass PROLOK, and allow any program protected by PROLOK to be successfully duplicated. Vault sued, claiming copyright violation via production of an infringing program that resulted in an unauthorized derivative work. The Fifth Circuit Court ruled that it was perfectly legal for CopyWrite to perform its archival function as designed, including its infringement by duplicating copyright Vault computer code, since it allowed a user to exercise legally acceptable archival rights as defined in the U.S. Copyright Act (17 USC 117). It also determined that the actual infringing code replicated from PROLOK was too small for the resultant copy to be considered an unauthorized derivative work. Another interesting ruling that came from this case was that Vault's EULA, which specifically prohibited decompilation or disassembly of its PROLOK program (which Quaid had done in order to understand its functions) was unenforceable under federal law.
This case helped establish the need to successfully duplicate copy-protection schemes in order to ensure successful function of a resultant archival copy. As such, it legitimized all forms of duplication software designed to replicate copy-protection schemes. It also opened the door to what is known as the "crack patch," a unique and popular offshoot that completely removed the copy-protection scheme altogether, provided that the use of such a patch was in accordance with copyright law. "Crack patches" were later outlawed by the Digital Millenium Copyright Act of 1998 (17 USC 1201), thus limiting lawful archiving of copy-protected software to only those technologies that duplicated the intended copy protection scheme along with the software being archived. This case is also important with regards to the concept of fair use, in that it recognized the legality of a software licensee's use or adaptation of a computer program without the authorization of its licensor if the resultant copy is "created as an essential step in the utilization of the program in conjunction with a machine."Williams and Wilkins v. United States. 487 F.2d 1345 (1973), 420 U.S. 376 (1975)
This case involved the National Library of Medicine, a private library operated by the National Institutes of Health (a federal government agency). In 1970, the library made some 93,000 photocopies of commercial perodicals in order to keep up with the demands of researchers using the facilities. The action was subsequently challenged in a class-action lawsuit by the publishers of 37 different medical perodicals, claiming that such wanton photocopying was copyright violation. The courts ruled that it was "in the public interest" of the National Library of Medicine to make these copies available, and a divided court found in favor of the federal government. The decision was subsequently upheld on appeal. It was not long after that Congress amended the U.S. Copyright Act to include the "safe harbor" proviso for libraries.
This case is important becasue it established the public interest principle of "fair use" - in other words, use of copyrighted material in an unauthorized manner is legal so long as it can be conclusively proven that such usage serves an acceptable public service. The courts tend to be rather sticky on just what is an "acceptable public service," which effectively limits the practice to established non-profit and public service institutions such as churches, libraries, schools, etc.