Nintendo of America, Inc. (Nintendo) filed suit yesterday in a Washington district court, accusing an individual, Kevin Niu, of infringing Nintendo's copyrights and trademarks in its Nintendo DS and Nintendo Wii. Specifically, Nintendo alleges that Niu makes and sells game copiers that are designed to copy the software in the game cartridges used by the Nintendo DS, and that he uses the "DS" and "Wii" trademarks on various websites to market the copiers.

As we read the complaint, it really struck us how history repeats itself, and how the battle between IP holders and alleged hackers/copiers is neverending. This post will just highlight one example tactic from each side of the battle.

From the hacker/copier side, those guys have been trying to fake out consoles for as long as consoles have been around. In the Nintendo suit, the copier product (said to be marketed under several names, including M3 DS Real Card, DS Linker, R4 DS Revolution, etc.) allegedly included a physical interface that would fit in the slot of a Nintendo DS, and allowed owners to connect a portable memory device containing downloaded/pirated copies of games. According to Nintendo, the physical interface (and some software associated with it) would fool the console into thinking it was talking to an authentic cartridge, and the portable memory device would then be permitted to load all sorts of pirated games for play.

However, trying to fake out consoles has been around for decades. In 1983 (before the crash of that year, and on the heels of the unfortunate ET The Extra Terrestrial game), Atari, Inc. prevailed on a similar suit against a company (JS & A Group, Inc.) that allegedly marketed a device called the PROM BLASTER. The PROM BLASTER had two slots for Atari 2600 cartridges: one for an original cartridge, and another for a blank, and it let you make a "backup" copy of the original. The court in that case didn't buy the defendant's argument that the device was only used for legitimate backup purposes, and enjoined them from selling the product.

From the console side, console makers have their own strategies for protecting their IP. Nintendo's complaint alleges that when the accused device runs a game on the Nintendo DS console, a NINTENDO logo first appears. Nintendo alleges that the display of this logo when playing a game using the unauthorized device is likely to cause confusion on the part of consumers.

This reminded us of an earlier case. In 1992, Sega Enterprises, Ltd. filed suit against Accolade, Inc. for making unauthorized cartridges for the Sega GENESIS system. The GENESIS console was programmed to authenticate a cartridge upon bootup, and then display the following message when an authorized cartridge was present: "PRODUCED BY OR UNDER LICENSE FROM SEGA ENTERPRISES LTD." The Accolade cartridges were designed to function in the GENESIS console, so this message displayed there as well, and Sega argued that this display was a trademark violation that would confuse consumers. Under the facts of that case, the court ultimately found that consumers were not likely to be confused, but only time will tell how this issue is resolved in the current Nintendo case.

In summary, and as you probably all know, these kinds of IP battles will probably never go away, and I'm sure we'll see similar facts and issues pop up along the way. They're all interesting, and we should be sure to learn what we can from them. Thanks for reading!

Cases mentioned:

Nintendo v. Niu, 10-cv-00791 (W.D. Wash, filed 5/11/2010)
Atari v. JS & A Group, 597 F.Supp. 5 (N.D. Ill, 1983)
Sega v. Accolade, 977 F.2d 1510 (9th Cir. 1992)
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Ross Dannenberg

Scott Kelly

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