WHY GIVE UP ON ROMS?

In recent video-game news, a number of loved ROM sites, including EmuParadise, have removed Nintendo titles or completely shut down in response to lawsuits filed by Nintendo. These lawsuits allege that ROM sites are engaging in widespread, willful copyright and trademark infringement by sharing illegally reproduced versions of classic Nintendo games. The penalty for willful copyright infringement is $150,000 in statutory damages. 

ROMs are generally regarded as illegitimate reproductions of copyrighted work--unauthorized reproductions of a cartridge's disk image that produce games like Super Mario Bros. or Mega Man. The ROM would allow someone to download those games onto their PCs, without need to purchase a separate console required to play the applicable game. But are ROMs generally unlawful under US copyright law, or is Nintendo overreaching? There are some limits that ROM platforms should explore before taking the drastic step of shutting down. 

One of those limits is the library or archive exception to the US Copyright Act. Under that exemption, there is no claim of copyright infringement if you meet a few conditions (this list is not exhaustive):

  • the reproduction of the original work is not for direct or indirect commercial advantage;
  • the collection is open to the public;
  • there's a copyright notice on the work being archived; 
  • the collection is not available for reproduction off the archive's premises; and
  • a copy of the work in question can't be obtained at a reasonable price elsewhere or is currently subject to normal commercial exploitation.

At first glance, there are some good arguments for why a ROM site might arguably be classified as an archive or library. For one, a number of retro Nintendo games are out of print. But there's also a sort of public service in archiving a game's original release state, before it was re-released with updates, modifications, or upgrades (even if they were buggy or broken). A number of Nintendo games from yesteryear cannot be legitimately played today in that state, if at all. Nintendo's virtual console and Switch Online are extremely limited in their game offerings (as compared to the entire library of publications), and many games released on Nintendo systems are, for one reason or another, unavailable today. This is particularly true of licensed IPs released on Nintendo systems. If Nintendo isn't making money on these orphaned games anyway, why shouldn't a site be able to archive those classics for current use?

There are admittedly some big hurdles to relying on this copyright exemption, however. For one, many ROM sites are ad-supported--they are indirectly obtaining a commercial advantage from releasing copyrighted work for download. Additionally, sites would need to implement some way to limit onward reproduction of ROMs (e.g., some sort of DRM or streaming service from ROM servers) to argue for the library exemption.  Finally, this exemption would not directly apply to potential trademark infringement claims, which are even more powerful when it comes to famous trademarks like Mario or Zelda. 

But this isn't a new problem, and game enthusiasts have tried to solve it for years. Last month, Ars Technica's Kyle Orland reported on a platform called Console Classix that has ripped ROMs directly from Nintendo cartridges since 2001. The key for them is that they lock a game from their servers while it's "checked out" on a user's machine. The checked-out game is loaded into RAM client-side so it evaporates as soon as the session is closed. Interestingly, Ars reports that Console Classix is relying on Section 117, not Section 108 (referenced above), of the Copyright Act. Section 117 allows for the personal backup of software for personal use, so it doesn't seem to fit the context of public distribution. Later in the article, Orland raises the possibility of a Section 108 exemption as well, but the article does not note, however, that the Copyright Office has never officially extended the archive exemption to the digital age. It's something they've been working on for some time--and the Copyright Office seems to indicate that the statute doesn't directly address the issue of digital preservation in archives (though admitting that there are limited circumstances where digital copies are allowed: e.g., for preservation, security, and replacement).

Indeed, ROM libraries need to consider whether they are offering a valuable public service by archiving versions of games that are no longer available. These sites may want to look at the 2015 Google Books decision. In that case, the Authors Guild sued Google over the Google books program, which scanned and digitized millions of books (mostly out of print) for the purpose of indexing a record of them. Instead of relying on any copyright exemption, the 2nd Circuit Court of Appeals held that this was a proper fair use of the copyrighted material. In other words, Google admitted to copying those works, but the reproduction was lawful under applicable law nonetheless. If we can find a way to limit access to these orphaned works so that they aren't reproduced across the web, ROM sites might find sanctuary in fair use for maintaining archival databases--a virtual "museum" containing the history of gaming culture.

Of course we can't offer broad legal advice in a blog post (you wouldn't want that!), but we must point out that there is some wiggle room here. Nintendo and other rightsholders will always push the boundaries of their rights to see if they can lock up their IP. But perhaps ROM sites that haven't been targeted yet should consider contacting their local office of the ACLU or EFF before acquiescing to these demands. A digital archive of games would be both unique and welcomed!!

 

THE PROBLEM WITH ICOs

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