OverClocked #6, "Detox" © 1999 David Lloyd

Changing the format ... from the original cartridge to a disk format also violates Nintendo's rights to prepare derivative works under 17 USC 106.2.

Nintendo v. Computer & Entertainment, No. 96-0187 (W.D. CA, 1996)

     Inside the confines of a warehouse located somewhere within the tightly packed mass of buildings that make up the waterfront district of Hong Kong, sometime around the early 1990s, an extraordinary event is occurring within an otherwise ordinary place.  It looks just just like what one might expect of such a place, both inside and out - boxes and crates, pallets stacked full of goods being moved around by intent-looking drivers on forklifts, the occasional foreman shouting out directions (albeit in Chinese), and the floor manager hiding out within the comfortable confines of his air-conditioned office.  Not far from him, though, in another air-conditioned room inside the warehouse, a quite different set of activities from those on the warehouse floor are taking place.  The two, to a casual eye, might seem unconnected at first, unless one were able to stay around long enough to see the process all the way through.  Let's sneak inside for a peak, shall we?
     The room is wall-to-wall electronics, with some dozen or so people doing several different things at once.  In one corner, we see a tall pile of oddly shaped black boxes, each about the size of a pack of cigarettes.  There are several different kinds, and each has different labels applied to them.  They are game cartridges for use with many of the popular videogame consoles of the day.  The gentlemen closest to them are pulling them from the piles, one at a time, and slapping them inside an odd-looking contraption attached to each the dilapidated personal computers sitting on their desks.  There is a flash of activity on the screen for about half-a-minute or so, then the cart gets yanked and tossed into a steadily growing pile building inside an old lidless wooden crate.  Meanwhile, across the room, the same process is happening in reverse, but in a somewhat expanded form.  There are many more people here, and many more computers with different-looking little devices attached to them.  This time, the pile of game cartridges have no labels, but they are going through the same process as the others.  One at a time, they are taken from their stacks and shoved into the weird-looking machines.  The appropriate computer hums for a bit, then spits a message back out at its operator.  Immediately, the cartridge is pulled off and handed to another person, who hurriedly but neatly slaps on a label and then packs it inside a box along with its brothers.  Intrigued, we manage to get a closer look at the boxes that are being so carefully filled.  The markings are the same as those on the large crates outside on the workroom floor.
     Carefully, so as not to be noticed, we manage to ease our way back out into the main work area of the warehouse, grabbing a hard hat and a pull bar in the process.  Walking nonchalantly so as not to attract attention, we eventually make our way to the far side of the warehouse, behind a large stack of crates that prevent us from being seen by the others.  Scanning down a row of smaller crates, we find one with those unusual markings that we noted earlier.  Using the pull bar as quietly as we can, we manage to prize the lid off of the crate and peer inside.  It is full of hundreds of videogame cartridges - ones that must have been made in that electronics-filled room we were inside earlier.  Carefully, without attracting attention, we manage to re-secure the lid and replace the crate in its original location, then make a quick yet deliberate exit though the loading doors.  As we walk down the loading dock and away from the place, we note several truckloads of these crates lined up alongside, each almost ready to roll.  Each manifest has a different destination printed on it ... Taiwan ... Japan ... Korea ... Malaysia ... Singapore ... Guam ... Hawaii ... the continental United States ... Mexico ... Brazil ... England ... Germany ... France ... and so on.  And as we slip back into the shadows and make good our escape, the implication hits us - what we saw is going on every day, around the clock, and affecting every part of the world.  Thousands, tens of thousands, perhaps even millions of illegally produced videogame cartridges.  The wind blows cold, and we shiver.  How many other buildings that we pass by have similar operations inside them?

     As you may recall, the bulk of the software base available to videogame emulator developers and users arose during the actual lifetime of the machines in question, during which unlicensed cart manufacturers turned out counterfeit products by the truckload.  It hasn't stopped, as anybody in the software community will tell you - it still goes on.  Every copy these folks make is illegal in both origin and purpose, resulting in what the law terms as counterfeit copies, but this matters little to them.  Not having to pay license fees to the real owners means more money in an unlicensed distributor's pockets, and that is why software piracy on a commercial level, which is often referred to by the quaint term of bootlegging, is such a tempting proposition.  Both the technologies involved and the resultant software remain with us, and such activities continue in many parts of the world even as we speak.  China is notorious as the bootleg capital of the world due to its lax interpretation of already weak local intellectual property laws, but they are not the only ones that are guilty.  Russia is another well known alternate source, as are other former Soviet states and any other country with a strong underground "black market."  The practices and equipment that videogame bootleggers have at their disposal are often the same as or based upon those used by bona fide developers.  They remain as popular and available as they ever were, and thanks to the Internet more and more users are becoming aware of their existence and potential.  Both the resultant copies of the software made from any original and copies of the bootleg forms, both of which were produced with this technology, are in many cases available to anyone with the determination and resolve to find them, no matter how long and where they must search.  In my youth, we called it going for the "warez."  Today's generation of unscrupulous gamers call it something else entirely.
     With this in mind, we shall now take a look at certain specific issues that deal with the emulation software base.  We shall deal with the concept of a "ROM," whether or not a "ROM" is legal, and what can be legally done with a "ROM."  We shall also finally address the issue of BIOS dumping, and we shall see whether or not there is such a thing as public domain software for an emulator.  At the end, I shall sum up the specific legal issues that are in doubt with regards to the emulation software base.

WHAT IS A "ROM?"

     If you start surfing the multitude of emulation and "warez" site on the Internet, you will run into a term familiar to most computer users but employed in a new and rather unique way.  That term is "ROM," written with quotes here to distinguish it from the traditional definition of Read-Only Memory.  "ROM" is emulation slang for a piece of software that is used with an emulator, but it is now actually a bit more involved than that - thanks to the activities of the software pirates, who tend to use the term "ROMz" rather loosely.
     To formalize the slang use of the word in its widest sense, a "ROM" is a piece of computer software stored within a unique archival format not found in everyday personal computer usage that is intended to work with special program development tools, or some form of an emulator, or both.  There are to date two distinct types of "ROM" - the binary image file and the disk image file.  The common form of the binary image file as of today is the cart dump; this term arises from the use of special hardware to literally "dump" the computer code stored within a ROM-based delivery system like those used in your typical videogame cartridge.  This is where the slang use of "ROM" first originated.  The disk image file arose from the need to support software storage formats that are for obsolete or niche systems.  The main reasons for doing so involves either the slowness or obsolescence of the original storage device (being able to use the data on more modern devices is faster and more convenient), or the copy protection techniques for certain forms of software (which are commonly disk-based).  The disk image file is a one-pass "dump" of the entire contents of an original disk stored as a single continuous file, which appropriate routines inside an emulator can then treat as if it were the actual disk.  Disk image files are usually of older floppy disk formats, but it is conceivable that this practice will be applied to other forms of removable storage media.  It is almost certain that the image files generated by today's CD copiers and recorders could very well become the "ROMz" of tomorrow.
     We are not here to debate the legality of using a "ROM" with an emulator.  We have already established in our prior discussion that it is perfectly legal to run legitimately obtained software under emulation.  The question that immediately comes to mind is whether or not "ROMs" are legitimate in themselves.  This brings up two related issues that have a direct bearing on the question, and we shall deal with each in turn before answering that question: the practice of ROM dumping, and the theory of ROM backups.
     The following discussions will deal primarily with those "ROMs" that originated on some form of permanent storage media.  Practically all forms of regular computer software are stored on recordable storage media, with the most popular forms at this time being the ubiquitous floppy disk and the ever-increasing usage of CD-R (i.e. the write-once form of the CD-ROM).   As for "ROMs" originating in permanent storage media, videogame cartridges for handheld and tabletop consoles come immediately to mind; however, the same principles apply to dumps of the integrated circuits and other forms of hardware-based storage media used in coin-op arcade videogames, since "ROMs" for these standalone systems are also quite widespread.  It should also be noted that the videogame industry is currently attempting to redefine the meaning of the term permanent storage media so that it will apply to recordable storage media intended for long-term storage, such as CD-ROMs and DVD-ROMs (see the Digital Media Recording Act of 1995).  There is an ongoing fight in the courts between proprietary minded vendors and freedom of media advocates over this issue, and it will doubtless continue right along with the industries that require both permanent and recordable storage media.  Insofar as computer based systems are concerned, original system vendors will continue to develop custom storage formats and new forms of copy protection in a concerted effort to prevent any kind of duplication regardless of intent.  As a result, all of what we are about to discuss here will also apply to these new iterationss of "ROM."

THE PRACTICE OF ROM DUMPING

     ROM dumping first originated with program developers who wanted to examine the computer microcode stored within integrated circuits.  You see, actual ROMs come in two flavors - programmable read-only memory (PROM) and erasable-programmable read-only memory (EPROM).  PROMs are the most common - you "burn" in the code once and then forget about it.  EPROMs, on the other hand, can be erased and "re-burned" with new code (for example, most BIOS chips are EPROMs).  Regardless of which form you use, there is no way to get at the machine data code stored within the ROM once it is burned into those little black rectangles of silica and metal unless you come up with a way to download it from the chip itself.  Downloading in this case refers to some kind of special interface linked to the ROM itself whereby its internal code can then be "dumped."  The result is object code in software instead of hardware, which is easier by far for a developer to work with.  This may sound a little convoluted to you non-technical types out there, but there is a common example.  A cart dumper is a special kind of ROM dumper designed to work with the ROMs found in videogame cartridges.  You plug in the videogame cart, and the cart dumper spits out the game's object code in the form of a binary dump file - which is how the emulation slang use of "ROM" came about.  Cart dumpers are but one form of ROM dumping, but there are many more.  How do you think all of those arcade "ROMs" are being produced?  ROM dumping, of course.  The resultant "ROM" is almost always a perfect copy of the game's complete object code.  The only problems coming from this procedure are either due to incomplete dumps or special hardware installed by the original vendor to thwart ROM dumping, and the latter is usually the result of antipiracy systems for console and arcade videogames developed for exactly this contingency.
     There is a legitimate basis for ROM dumping, though, and it is best to address this now.  Videogame vendors often provided pre-upload copies of their software to licensed potential developers for their own use, but there were more than a few who did not want to be subject to the whims of a dictatorial vendor.  They wanted to know how certain games worked to produce the effects that they did on-screen, not necessarily with the original vendor's consent, so they could either duplicate or adapt those ideas into their own titles.  The only way to do this was without the vendor's permission, and the only way to find out these ideas was to dump the game(s) in question and analyze the actual machine code, which would often help once they began the actual process of reverse engineering the concepts for use with their products.  Having a dump of the original game served a multitude of purposes, chief of which was to ensure that the object code form of the reverse engineered code bore as little resemblance as possible to the original object code.  This practice is almost as old as the computer industry itself (IBM v. Compaq, 1982) but is not just limited to old-fashioned console videogames.  Everybody who has dipped into the arcade and personal computer videogame markets is aware of what happens when a new and successful title is released - it gets cloned beyond belief.  It is safe to say that those vendors who produce clone products that do not use licensed code have spent at least part of their time reverse engineering the original game.
     Prior to 28 October 1998, ROM dumping hardware in and of itself was not illegal for the average user to purchase and own.  If it had been, then any piece of equipment that could make a copy of anything would have been illegal.  Why?  The original argument went something like this.  Most folks own an audiocassette deck or one of those fancy audio CD recorders.  Just because they can use them to make copies of their favorite albums doesn't necessarily mean that they will.  Likewise, just because you have floppy disk drives or a CD recorder in your computer doesn't necessarily make you a software pirate.  To use another example, this time from the auto industry, owning a police radar detector is not in itself illegal.  It is the use to which you put it and in what part of the country that you use it that makes it illegal.  The ultimate responsibility for the use of these and other such kinds of devices rests upon the user, and not with the manufacturer or vendor.  To repeat an oft-quoted expression that is commonly heard from the gun rights lobby, "Guns don't kill people - people kill people."  It is not the fault of the product or its design; it is the use to which that product is put. Owning a cart dumper or other such piece of equipment does not make someone a software pirate.  It is what they do with it that makes them one.  A lot of average users picked up on this defense for ROM dumping hardware and began purchasing the equipment on their own, provided they had deep enough pockets and could find somebody who sold it .  As for the videogame bootleggers, they cared little about justifying themselves.  You already know how they put both their ROM dumpers and ROM burners to use.
     Original software vendors have never approved of the practice of ROM dumping due to its bootlegging implications.  They treated copies of their software produced by ROM dumping just as they would any illegal duplication of a copyrighted work.  Any unauthorized copies of their computer software were considered to be counterfeit copies of those products, and the illegal production and distribution of such copies was thus punishable under federal computer fraud statutes (15 USC 1127, 18 USC 1030).  These are the same statutes used to deal with counterfeit copies of software for regular computer systems, and the best known and most notorious example of the invoking of these statutes was the FBI/Secret Service joint exercise Operation Sun Devil in 1990.  Unfortunately, despite their best efforts, which at least managed to make the practice of videogame cartridge dumping unjustifiable by the average user under the backup clause of copyright law, (Atari v. JS&A Group, 1983), there was little decisive legal action in this regard until 1992, when two important court cases happened within the same year.  These two cases (Sega v. Accolade and Nintendo v. Atari) legalized the practice of ROM dumping by recognizing it as a legitimate practice of videogame developers for the process of developing their products.  In other words, any developers who saw an unusual or intriguing aspect or feature of a videogame that they had not developed had the legal right to go out and buy a copy of that game, dump or decompile the game's object code (regardless of original storage format or media), and then attempt to reverse engineer those functions that attracted their attention in the first place.  Insofar as the home videogame consoles of the day were concerned, this meant obtaining cart dumpers or other similar devices so they could download the game's object code from the cartridge ROMs.  The resultant copy was ruled by the courts to be an intermediate copy, since a change in format from the original delivery system had taken place.  Since the developers had obtained an original copy of the title in question by legal means, and the change in format was necessary for the efforts of the developers in question, any intermediate copies that they produced as part of the reverse engineering process were therefore deemed to be noninfringing.  The practice of reverse engineering computer programs, regardless of original storage media, by this and other such techniques has recently become embodied into federal law with the passage of the Digital Millenium Copyright Act in 1998 (17 USC 1201.f).
     It is important to note two things in regard to the legalization of ROM dumping.  First, an original has to be involved at all times.  If a group of developers dump one or more ROMs associated with a particular program, then the original must be maintained so long as the resultant intermediate copy remains in their possession - just as if a legitimate backup copy had been produced.  Second, even though a change in format from the original delivery system has taken place, intermediate copies are still protected under copyright law as if they are the actual originals.  The latter means that intermediate copies cannot be freely distributed, since such an act would void a developer's special protections under case law and make them eligible for prosecution by the usual means.  They may distribute copies within their immediate circle of associates, but not beyond - not even for review purposes by outside parties - without the consent of the original vendor.
     Needless to say, the fact that ROM dumping had now been legitimized, even within the supposedly strict constraints of case law, did not sit well with system vendors.  In particular, Nintendo began doing anything it could to discourage the practice.  It still held that any kind of ROM dump was an unauthorized infringing copy of its proprietary software (MAI v. Peak, 1993) and therefore still illegal under copyright law.  While they could no longer touch software developers and their associates in this regard, they were going to make absolutely sure that the camel's nose didn't get any farther under the edge of the tent with regards to the user base.  Many different approaches were tried, with varying degrees of success, but the one on which they and other software developers eventually settled after five years of effort was the EULA.  The Ziedenberg decision (ProCD v. Ziedenberg, 1996) had restored the vendor's rights to include certain forms of restrictive language within their software EULAs under the terms of the Uniform Commercial Code (UCC 2-204 and 2-606), and computer software produced in the post-Ziedenberg era soon included EULA clauses similar to that reproduced below.  This is the form of Nintendo's standard EULA included with my nephew's STAR WARS: Rogue Squadron N64 videogame cartridge, and I reprint it in its entirety straight from page 36 of the owner's manual.  Even though it was printed in 1998, it is typical of most post-Ziedenberg EULAs imposed upon the purchasers of a videogame cartridge:

IMPORTANT (REV B)

WARNING:  Copying of any Nintendo game (including this game) is illegal and is strictly prohibited by domestic and international copyright laws.  "Back-up" or "archival" copies are not authorized and are not necessary to protect your software.  Violators will be prosecuted.

This game is not designed for use with any unauthorized copying device.  Use of any such device will invalidate your product warranty.  Nintendo, LucasArts (and/or any Nintendo licensee or distributor) are not responsible for any damage or loss caused by the use of any such device.  If use of such device causes your game to stop operating, disconnect the device carefully to avoid damage and resume normal game play.  If you game ceases to operate and you have no device attached to it, please contact your local authorized Nintendo retailer.

The contents of this notice do not interfere with your statutory rights.

This manual and other printed matter accompanying this game are protected by domestic and international copyright laws.

The rental of this game without permission of Nintendo or its licensees is strictly prohibited.

THE THEORY OF ROM BACKUPS

     A common argument you will hear from the emulation community goes something like this:  "It's okay for me to back up my game carts.  Copyright law says so."  You will also hear this variation:  "I download 'ROMz' because I want backups for my real carts.  It's okay, because backups are legal."  Another one you might here is this:  "Second copies of 'ROMs' are legal because they are backups of legal developer copies."  Are 'ROMs' legal?  Is it legal for you to backup a piece of software that is contained within some form of permanent storage media?  Its it legal for you to backup a 'ROM?'  While the actual reference is to the "ROMs" generated from a videogame cartridge, the same argument is also used to justify ROM dumps of arcade videogames, so they also have to be dealt with in this regard.  Let's see what the law and the courts have to say about the subject.
     It is legal for you to make a backup copy of a piece of computer software that you have obtained through appropriate means, and emulation sites are often fond of quoting paragraphs (a) and (b) of 17 USC 117 on that subject.  Let's refresh our memory and see what the law as we know it says:

a)   Making of additional copy or adaptation by owner of copy

Notwithstanding the provisions of section 106, it is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided:

1. that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner, or
2. that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.

b)  Lease, sale, or other transfer of additional copy or adaptation

Any exact copies prepared in accordance with the provisions of this section may be leased, sold, or otherwise transferred, along with the copy from which such copies were prepared, only as part of the lease, sale, or other transfer of all rights in the program.  Adaptations so prepared may be transferred only with the authorization of the copyright owner.

[EDITOR'S NOTE - EmuFAQ contributor Chuck Cochems has recently advanced a novel theory concerning unauthorized "ROMs."  According to Chuck's theory, the average user could legally make and use "ROMs" of games stored in permanent media that they legitimately own under the concept of personal use, which is a protected form of noncommercial use under the concept of fair use as outlined by the Supreme Court's Betamax decision (Sony v. Universal, 1984).  While I have certain problems with some of Chuck's arguments, I believe that the basis of his theory is sound enough to warrant closer inspection.  You can read his complete thesis in the EmuFAQ's Y2K supplemental article, "The Question of ROMs."]

     This brings up another related issue that I have been putting off until now, since it goes along the same lines as the cart dump.  This is the BIOS dump, which is an image of the original BIOS required by a computer system or videogame console for its initialization and proper operation.  The practice of BIOS dumping goes as far back as 1982 and is still quite common in both the computer industry and the emulation scene.  Reverse engineering a BIOS is rather tricky, and continues to be a considerable time and resource consuming process as the complexity of newer systems increases.  Many emulator developers would rather not involve themselves in this process; therefore, they find it more convenient to dump a copy of the actual system BIOS and build their emulator around that.  This is where the modern variation of the combined hardware/software emulator, the BIOS dump dependent emulator, first emerged, and the best known current example of this is the now-discontinued PSEmu Pro emulator for the Sony PlayStation.
     So is it legal for a user to dump a BIOS?  Absolutely not, for the same reason that cart dumping is illegal - it is a violation of the copyrights on the computer code contained within the BIOS.  Why?  To find the answer, we need to look back at the early days of personal computing.
     The year is 1982.  The place is the "clean room" of Phoenix Technologies, which is in a flurry of activity.  Why?  Because the company is under contract to Compaq Computer and is currently in the midst of a concerted effort at reverse engineering the IBM PC BIOS.  Compaq wants a reverse engineered BIOS so it can build the world's first legal PC clone computer.  If they can accomplish that one task, Compaq reasons, then they can build the rest of the computer from off-the-shelf parts.  The suggestion comes up that Phoenix should make an exact copy of the IBM PC BIOS.  "No, no!" someone shouts, "that's copyrighted computer code!"  The decision is eventually made to reverse engineer as many functions as possible in order to get it to work exactly like the real thing, while dropping ROM BASIC along the way.  The finished product is subsequently released to the market, and IBM sues for copyright infringement.  The courts are unable to find any proprietary IBM microcode within the Phoenix BIOS.  Phoenix is cleared of all charges, and the "clean room" reverse engineering technique becomes a legitimate bulletproof means of software development.
     About the same time, in the same year, a deal is quietly being completed behind closed doors that would prove to have profound implications for the CPU industry.  The senior partner in the deal is Intel Corporation, and the junior partner in the deal is AMD Technologies.  Intel needs some help in producing the x86 series processors of the day - especially with regards to its new 80286 processor.  The two companies enter into a technology transfer agreement, in which AMD receives copies of proprietary Intel microcode to use inside its clone CPUs so long as they do not share it with anybody else.  AMD agrees, and shortly thereafter begins producing legal clones of Intel's 80286 CPU.
     Move ahead in time to the year 1983.  The place is federal district court, where a copyright infringement lawsuit is underway.  The plaintiff is Apple Computer, maker of the immensely popular Apple II personal computer.  The defendant is Franklin Computer, makers of the Franklin ACE 1000 clone computer.  Franklin had decided to cash in on the success of the Apple II by producing its own clone.  In order to cut corners and reduce development time, they dumped the Apple II BIOS and used parts of its microcode inside the Franklin ACE 100 BIOS.  Apple sues, and the court finds Franklin guilty of copyright infringement under federal law.  The resultant fines and levies effectively end Franklin's involvement in the personal computer industry.
     Jump ahead in time six years to 1988, where a young man named Simon Douglas is working on a product called A-Max that will provide Macintosh emulation for the Amiga.  Fully aware of the IBM v. Compaq and Apple v. Franklin lawsuits, he builds his product so that it requires the use of a genuine Macintosh BIOS in order to function.  He also designs an external adapter (and later a plug-in card) that will allow users to use the Macintosh BIOS with A-Max without violating Apple's copyrights on the internal BIOS microcode.  His foresight is confirmed a year later in the courts, who rule that this use of the Macintosh BIOS in its original format is perfectly legal.
     Now we shall take a rather large a jump to 1994, in which an appeals court ruling was handed down that shook the CPU industry.  The plaintiff is Intel Corporation.  The defendant is AMD Technologies.  The issue is the Am386 CPU, which uses proprietary Intel 80286 microcode that the company had originally licensed from Intel as part of their secret pact back in 1982.  The court rules that AMD's use of proprietary microcode, although originally permitted under their secret pact with Intel, will have to cease.  AMD promptly settles with Intel and pays them for the right to continue using that code within their current product line.
     Are you beginning to get the picture?  It is illegal for users to dump, duplicate, use, or distribute any copy or portion thereof of a computer system BIOS without authorization from its copyright owner.  The computer code stored within a system BIOS is specifically covered by case law, as the examples involving IBM and Apple demonstrate.  If it has not been placed into the public domain, then licensing that code is the only legal way to use it, as the Intel v. AMD case shows.  If you can come up with a way to use an original system BIOS without dumping it, as was the case with the original A-Max, then that is also legal.  What does this mean?  It is illegal to duplicate an actual system BIOS in any way without the authorization of its vendor.
      I know some of you are immediately going to start claiming that you are only making or obtaining a "BIOS backup," but you will not find any refuge in that outlandish theory, either - no more than you did with the preposterous theory of cart backups.  Like a game cart, a system BIOS is a piece of computer hardware.  In its original form, it is not intended for any use other than proper operation of the computer system in which it is installed.  You do not backup hardware components of your system in the same manner as you would a piece of system software - you obtain spares for the part(s) in question.  A BIOS dump is not a valid spare due to the change in delivery system, which is the same case as with cart dumps.  If you need to obtain a replacement part for your system, like the integrated circuits used to store a computer BIOS, then you have to obtain the part from the original vendor or a licensed vendor.  If a legal clone exists, regardless of format, you may use that instead.  Even if the system in question is equipped with a so-called flash BIOS, you do not have the right to dump it except for the sole purpose of upgrading - an action of which most system vendors approve, provided you destroy the resultant dump of the original BIOS once the upgrade is complete. The only legal ways in which you can use a BIOS image with an emulator is if either the original vendor authorizes the use of an BIOS dump or you can find a reverse engineered BIOS image whose author(s) have placed it into the public domain (which is something of a rarity).  The novel concept of a "BIOS backup" of proprietary original system vendor computer code is both ridiculous and unsupported by either the industry or the courts except in certain carefully defined vendor-approved cases, such as the flash BIOS upgrade that I briefly touched upon a moment ago. The only way you can legally dump a BIOS image for any purpose other than reverse engineering is with the approval of the original system vendor (Apple v. Franklin, 1983).  Creating an image for the purpose of a "BIOS backup" is as illegal as it is to use an unauthorized BIOS image with an emulator.
     "A-ha!" you respond.  "Reverse engineering!  That makes it legal for me to use a dumped BIOS with an emulator, right?"  No, not if you're a user.  It's the same situation that we had with the argument over "ROM" backups - developers have this right, but users don't, and even there developers only have limited rights to use that dumped code.  They can use a dumped BIOS to develop an emulator, but the final product can't require that dump for proper operation.  They've got to either reverse engineer the BIOS as well or license the code.  As a matter of fact, and this may surprise you, their dumping rights don't just stop with "ROMs" and the system BIOS.  The U.S. 9th Circuit Court of Appeals has recently ruled that it is perfectly legal for an emulator developer to dump any code from the original system or its accessories that they need, including the BIOS, so long as that code is not protected by patent and the end result is a noninfringing product (Sony v. Connectix, 2000).  In plain English, developers can do just about whatever it takes to make an emulator, so long as it doesn't require its users to do illegal things in order to make it work.  If you're not a developer, then you can't claim reverse engineering to justify a BIOS dump.

PUBLIC DOMAIN "ROMS"

     This leads us to the next obvious question, and the one which the frustrated majority is by now quietly asking.  "Is there such a thing as a public domain 'ROM'?"  You may be surprised to know that the answer to that question is "Yes."  Public domain "ROMs" do in fact exist, even though a lot of original system vendors and their allies seemingly do not want you know about this - with some even going so far as to flatly deny their existence.  Are you intrigued?  Read on!
     The idea of public domain software is widely credited to the invention of the LOGO programming language in 1980, which was generally available to anybody who wanted to use and modify it free of charge.  The concept was given the modern twist of shareware in 1982 by Andrew Fluegelman with his PC-Talk communications software; the initial version was free, but continued support and updates were only available at a price.  Today, both concepts are firmly established parts of the computer software community, with thousands of such pieces of software produced each year.
     Computer software operating under emulation is no different that computer software operating under real hardware.  It is regulated by the same laws and principles as any other kind of software.  This means that there are a group of individuals either directly or indirectly involved with the emulation community who, like the "real" software community, do not mind or object to their software running under emulation.  Therefore, they do what regular software authors and vendors do who feel the same way - they place their software in the public domain.  Emulator authors do the same thing, with a handful making available their programs as either shareware or commercial products and the vast majority as public domain offerings.  Back to the subject, though - there are a steadily growing number of public domain "ROMs" available for use with your favorite emulator.  Public domain "ROMs" are perfectly legal to both possess and distribute, since they are not under any kind of copyright restriction in this regard.
     Unfortunately, there is a body of opinion within the emulation community that feels that there are a number of "ROMs" that were commercial in origin but are now public domain.  Let us take a brief look at some of these "ROMs" and whether or not they are indeed public domain.

"ROMs" without a copyright notice

Prior to the United States joining the Berne Convention, all copyrighted works (with certain exceptions such as paintings and so on) were required to contain a copyright notice.  Berne waives this requirement, and grants automatic copyright protection to a given work the moment that it is created. This means that any "ROM" you may run across without a copyright notice is still protected by copyright.  The only way to know for sure whether or not these "ROMs" are public domain is to check with either the original author or vendor (preferred), or with a person or organization that is an established authority on the subject.  That way, you can find out whether or not the author has indeed placed that "ROM" into the public domain.

Prototype "ROMs"

These go by a number of names, depending on the development stage they had reached prior to their conversion into "ROM" format.  Alphas are early copies of a computer program that are almost always non-functional to a large degree, and represent an early stab at actually implementing the intended concept. Betas are late-stage copies that are at least functional to some extent, though they tend to be rough around the edges and rather buggy.  Test copies, which are more commonly called protos, are usually identical or almost identical to the finished product, intended for late-stage performance testing or "sneak peak" distribution, and can usually be identified by the crudeness or lack of title screens or legal disclaimers.  Regardless of which of these examples you encounter, a prototype "ROM" is protected by the same copyrights as if it were an actual finished product.  Just because the "ROM" in question is a prototype does not automatically mean that it is a public domain "ROM."  It must be released into the public domain by either its author or vendor before it can be freely distributed, just as if it were a real commercial title.

Unreleased "ROMs"

 These are programs that for one reason or another were never commercially vended.  Unreleased "ROMs" are protected by copyright law.  The fact that the program was never released does not void its copyright protection.  Remember, distribution is one of the rights of the copyright owner.  If they chose not to distribute it, then that does not automatically put that program into the public domain.  You must first get permission from the copyright holder before you can legally distribute an unreleased "ROM."

THE URGE TO PATCH

     Computer software, being a human creation, is never perfect.  It may have one or more internal coding problems that prevent it from working as designed.  It may have been designed in such a way as to not work with your computer system.  There are even cases where users develop a personal pique against certain aspects of a computer program, even though that program may work just fine.  This is where software patches enter the picture, which are designed to fix a program in one or more ways so that it will better serve the needs of the user.  So how does this apply to the concept of "ROMs?"
     Insofar as I have been able to determine, there are at least three different kinds of software patch for a "ROM."  The hack patch alters the graphics, sound, or performance of the "ROM" in some noticeable manner.  These are most commonly made for videogame "ROMs," as they tend to enhance or otherwise change the game involved in some fashion.  The runtime patch permits an otherwise difficult "ROM" to work with a given emulator.  It removes or alters certain parts of the internal "ROM" microcode that would otherwise cause difficulties for the emulator.  Finally, and most importantly, there is the ever-popular translation patch.  This can be installed into a given "ROM" so that it is readable in the user's native language.
     This begs the question - is "ROM" patching legal?  Yes and no, depending on the kind of patch and the "ROM" involved.  Yes, it is legal if you are dealing with a public domain "ROM."  No, it is not legal if you are dealing with a "ROM" that is still protected by copyright.  Why?  The right of alteration with regards to a copyrighted piece of computer code is exclusive to the copyright owner (17 USC 106).  Users have a limited right to adapt a piece of copyrighted computer code to work on a given system (17 USC 117).  The right of adaptation deals exclusively with the actual operation of that piece of code on the system in question.  Users have the right to adapt a program to work with their system, so if a legal "ROM" is involved then runtime patches are perfectly legal (point 7 on the user rights list); however, the same is not true of either hack or translation patches.  The right of adaptation does not extend to the on-screen presentation (Playboy v. Frena, 1993).  Limited copyright protection is afforded to on-screen presentations (Apple v. Microsoft, 1992); furthermore, any textual presentations displayed on a computer screen can be protected under copyright law (Digital v. Softklone, 1987).  Furthermore, it is illegal to alter the contents of a program originally stored in ROM without consent of the copyright owner (Kramer v. Andrews, 1986).  On top of that, the United States recognizes copyright protection for computer software manufactured in foreign markets (US 17 USC 104A).  This means that foreign market "ROMs" are protected by copyright just the same as domestic "ROMs."  It is illegal to patch a "ROM" so as to alter the on-screen presentation of any protected material, regardless of country of origin, without the consent of the copyright holder.  This provision of U.S. copyright law that includes foreign-produced "ROMs" was added as a direct result of the United States becoming a member of the Berne Convention in 1995.
     This problem was recently illustrated by an incident on 13 April 1999 involving the KanjiHack "ROM" translation service and ASCII Software of Japan.  KanjiHack had produced an English translation patch for the "ROM" of the ASCII release RPG Tukuru 2 for the Super Famicom videogame console.  This title is better known to English-speaking Super Nintendo fans as RPG Tool: Super Dante 2.  They offered this patch via their Internet site, which was apparently hosted by a service operating out of the United Kingdom (UK).  ASCII had never authorized any third party to develop an English patch for the program, which meant that KanjiHack's translation patch was a direct violation of ASCII's copyright on RPG Tukuru 2.  As such, it was within ASCII's legal rights under UK copyright law to demand that KanjiHack pull the patch, and they did so following the procedures laid out by that law.  KanjiHack complied, with the result that ASCII did not carry through with its threatened legal action against them.  The reason why this should be noted is that both Japan and the UK are WIPO Treaty signatories, and they have modified their copyright laws in this regard.  Since the United States also recognizes the WIPO Treaty, and has also modified its laws along the same lines as Japan and the UK, then anybody who distributes the KanjiHack translation patch for the RPG Tukuru 2 "ROM" within the United States without ASCII's consent is violating federal copyright law.

PATCHING IN PART

     I can now hear the inevitable objection.  "So does that mean all translation patches are illegal?  What about a partial patch?"
     The answer is, "No, not all translation patches are illegal."  There is an exception to every rule, as the old saying goes, and so it is with translation patches.  There is at least one kind of partial translation patch that is perfectly legal, and that is the menu patch.
     "So what's a menu patch?"
     A menu patch is one that translates only the command structure of a given program.  For example, a given program will start up and present you with a list of options - i.e. a menu of selections from which to choose.  You pick one, and it either causes the program to perform some action or takes you to a sub-menu, from which you can make additional choices, and so on, and so on.  You might also have additional options screens that allow you to change various program settings and other such minor items, and these too are considered part of the program's command structure.  All a menu patch would do is render the program's command structure so it can be read in your native tongue.  It does not translate any other part of the program - no help screens, no prompts, no conversations with program or player characters (in videogames), and so on.  As such, the menu patch is rather limited in comparison to a full translation patch, but it does allow someone who is not familiar with the original language used in program presentations to actually use the program to some degree.
     I can now hear the immediate question that comes from the various "ROM" translation groups our there.  "Why is a menu patch legal, whereas a full translation patch is not?"
     You will recall that copyright protections were established early on for interactive texts (Digital v. Softklone, 1987).  You will recall that the courts have determined that user menus are generic items, analogous to the controls of a VCR, and therefore specific menu layouts do not qualify for copyright protection (Lotus v. Borland, 1990).  You will also recall that only specific portions of an on-screen presentation can be copyrighted (Apple v. Microsoft & Hewlett-Packard, 1992).  There is now a fourth case to consider that cements the legality of a menu patch, and that is the MiTek case (MiTek v. Arce, 1996).  The gist of the MiTek case is that ANY command structure for ANY program is a generic concept and therefore cannot be protected by copyright.  That includes menus, options screens, and the like - in short, a program's entire command structure. Since a program command structure cannot be copyrighted, then it is perfectly legal to make a menu patch for it.
     So does this mean that all menu patches are now legal?  Yes.  They always have been, and always will be.  "Cool - now I can patch all of my 'ROMs' and not worry about it anymore, right?!"  Wrong.  You still have to deal with the questionable legality of the actual 'ROM.'  While the menu patch in and of itself may be legal, applying it to an illegal 'ROM' is not, nor does it make that illegal 'ROM' suddenly become legal.  Remember, the ultimate right of adaptation rests with the copyright owner (17 USC 106).  Copyright protections are afforded to foreign software within the bounds of various recognized international treaties (17 USC 104A).  It may be perfectly legal for you to write a menu patch for your favorite 'ROM,' but it is not legal to apply that patch to an illegally generated 'ROM' without permission from the copyright owner.  This is considered to be the same as an unauthorized modification of the original object code stored within the "ROM" (Kramer v. Andrews, 1986) and therefore illegal under copyright law (17 USC 501).  For example, the MiTek case would not have helped KanjiHack one bit in their dispute with ASCII, as the real issue was the questionable legality of the RPG Tukuru 2 "ROM" that needed patching in the first place.

MELDING A UNIFIED "ROM"

     A new form of "ROM" alteration has been brought to my attention since the first drafts of the EmuFAQ were released, and that is "ROM" merging.  The idea seems to have originated with the M.A.M.E. team and the various Street Fighter 2 arcade ROM variants for that program's Capcom CPS-1 arcade hardware emulator, but has since been applied to other similar sets of "ROMs."  The premise seems simple enough - take the different variant "ROM" sets for a given title, weed out the duplicate "ROM" dumps that are common to all sets (leaving you with only unique dumps), and then keying the emulator so can load up the appropriate configuration of "ROM" for each title variant.  It's actually a rather neat idea, and it's a surprise that no one had thought of it earlier.
     I've got bad news for the M.A.M.E. team, though, and for anybody else involved in "ROM" merging and the use of merged "ROM" sets.  What you are doing is illegal.
     "Aw, come on!  Enough already!  Leave us alone!"
     No can do.  I've been painfully honest so far, and I'm not about to stop now.  Here's the lowdown.
     It is illegal to alter or otherwise modify the contents of a computer program stored in ROM without the consent of its copyright holder (Kramer v. Andrews, 1986).  It is also illegal to take parts of different versions or generations of a computer program and patch them together into a workable program (Allen-Myland v. IBM, 1994).  This is classified as rainbow code, and it's easy enough to understand the allusion - a rainbow is a visible material object composed of different colors of the spectrum.  Likewise, rainbow code is comprised of material that came from different sources and then melded together into a single, unified whole.  Remember, the ultimate right of modification rests with the copyright holder (17 USC 106).  You do not have the legal right to create rainbow code without the authorization of the copyright holder.  That means that it is illegal to merge "ROM" sets, let alone distribute them.  This is another additional avenue of attack that a vendor who feels that its intellectual property rights have been infringed by emulation might choose to use should it ever decide to take the matter to court.  At least the emuscene now know about this possibility, and that way you can better prepare yourselves should the unthinkable happen to you someday.

THE RULES HAVE CHANGED

     Almost everything that we have discussed up to this point changed when President Bill Clinton signed the Digital Millenium Copyright Act (DMCA) into law on 28 October 1998.  Among other things, it modified several sections of the current U.S. Copyright Act and added a whole new section - Chapter 12, Copyright Protection and Management Systems (17 USC 1201-1205).  I will deal in greater detail with the DMCA in our discussion of Internet-related issues, since that is where it has the greater impact on the emulation scene.  There is a provision that deals specifically with the concepts that underlie the creation of "ROMs," though, and the relevant section is 17 USC 1201.a.1-3:

1.  No person shall circumvent a technological measure that effectively controls access to a work protected under this title.

[editor's note - I have omitted the rest, as it deals primarily with regulatory oversight, implementation provisions, and a survey to be conducted on a regular basis by the Library of Congress in conjunction with the Department of Commerce with regards to the legalization of selective technologies covered by this law.]

2.  No person shall manufacture, import, offer to the public, provide or otherwise traffic in any technology, product, service, device, component, or part thereof, that --

A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title.

B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title.

C) is marketed by that person or another acting in concert with that person, with that person's knowledge, for use in circumventing a technological measure that effectively controls access to a work protected under this title.

3.  As used in this subsection,

A) to "circumvent a technological measure" means to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure without the authority of the copyright owner.

B) a technological measure "effectively controls access to a work" if the measure, in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to that work.

Restoration of Copyright Protection:

Both treaties require parties to protect preexisting works from other member countries that have not fallen into the public domain in the country of origin through the expiry of the term of protection.  A similar obligation is contained in both the Berne Convention and the TRIPS Agreement.  In 1995 this obligation was mentioned in the Uruguay Round Agreements Act, creating a new section 104A in the Copyright Act to restore protection to works from Berne or WTO member countries that are still protected in the country of origin, but fell into the public domain in the United States in the past because of a failure to comply with formalities that then existed in U.S. law, or due to a lack of treaty relations. Section 102(c) of the DMCA amends section 104A to restore copyright protection in the same circumstances to works from WCT and WPPT member countries.

[EDITOR'S NOTE - see Chuck Cochem's EmuFAQ article "The Question of ROMs" for a different opinion on this issue.]

     So what have we learned?  We can now agree on a common definition for the emulation community's use of the term "ROM." A ROM is piece of computer software stored within a unique archival format not found in everyday personal computer usage that is intended to work with special program development tools, or some form of an emulator, or both.  As far as the first part of "the great emulation debate" goes, we have established the following:

It is legal to produce a "ROM" from a piece of computer software stored within any form of permanent storage media if and only if you are a bonafide developer or legitimately affiliated with same.

Such "ROMs" are defined under case law as intermediate copies of said software, and they are to be treated as if they are the actual originals from which they were made.  You must maintain the original hardware from which the dump was made so long as you maintain the intermediate copy, and you may not share that dump with anybody who is not directly involved with your development efforts.  Free distribution of intermediate copies voids the special protections that developers enjoy in this regard and makes them prosecutable for intellectual property violation as if they were no different than the average user.

It is illegal for the average user to produce or obtain a "ROM" of a piece of computer software stored within any form of permanent storage media unless such practices are authorized by its copyright owner(s) or otherwise specified within its EULA.

With regards to the specific practice of ROM dumping, this does not void the user's archival rights under copyright law, since one cannot restore a "ROM" copy to a read-only device.  Any so-called "backup copy" of computer code dumped from ROM is in fact a derivative work, and as such is unquestionably illegal without consent of the copyright owner.  In cases where a user needs a second copy of a program stored in ROM, the copyright owner must make reasonable provisions to replace any damaged or degraded copy of that software.  If such provisions are not made available to the user, or are not available by other means (such as buying used or aftermarket copies), then federal law takes precedent and the user may archive that software by any means necessary as permitted under said law.  [EDITOR'S NOTE - see Chuck Cochem's "The Question of ROMs" for a different opinion on this issue.]

It is illegal for the average user to manufacture, distribute, or use any kind of product that bypasses or violates the security systems of any computer-based system.

Among other things, this effectively makes the manufacture, sale, distribution, and use of videogame cartridge dumpers by anybody who cannot demonstrate bonafide development concerns illegal under federal copyright law.  [EDITOR'S NOTE - see Chuck Cochem's "The Question of ROMs" for a different opinion on this issue.]

It is illegal to dump, upload, download, distribute, modify, or otherwise infringe upon the copyrights for "ROMs" of computer software from foreign markets that are signatories to the Berne Convention, as well as those who are signatories to the TRIPS Agreement, the WCT,  or the WPPT treaties of the World Trade Organization (WTO).

Protections for qualifying foreign software were restored in full as of 1995 and further strengthened and expanded as of 1998.  Qualifying foreign software is accorded the same rights and protections as domestically produced software under U.S. copyright law.

It is illegal to produce any kind of patch for a "ROM" that alters any protected elements of copyrighted on-screen presentations without the consent or authorization of the copyright holder.

Case law has determined that specific elements of a given program's on-screen presentation may be protected by copyright, including any displayed texts outside of its command structure that are an integral and necessary part of the program's operation.  The only documented exception to date is for patches that only affect the program's command structure, since that and the ideas that underlie it are generic concepts and therefore uncopyrightable.  Any patch that goes beyond the subject program's command structure (menu, list of options, etc.) does not qualify for this exception.  This includes translation patches (except for limited forms such as the menu patch), as the original displayed language of the program's copyrighted texts has nothing to do with the actual internal execution of its object code.

Any computer program without a copyright notice, any prototype, or any title that was unreleased for any reason is still protected by copyright law to the same extent as is any other piece of computer software.

To lapse into emulation slang for a moment, it is illegal to distribute alphas, betas, protos, tests, or any other form of unfinished or unreleased piece of code without the consent of the copyright holder.

It is perfectly legal to produce a piece of software intended for public domain release that you then convert into some form of "ROM" format for use with a given emulator.

You, as the author of that program, have the right to develop it for use with any computer system you choose, and you have the right to place both the original and the resultant "ROM" into the public domain regardless of whether or not you are a licensee to the original vendor for the system(s) or emulator(s) in question.  Remember, the right of distribution, along with the ultimate right of alteration, rests with you - the copyright owner.  If you choose to release your program as a public domain "ROM" for use under emulation, then that is your business and not the original system vendor's.

It is illegal for the average user to produce, distribute, or use an unauthorized dump of the BIOS of a computer system.

Users cannot fool around with the original system BIOS or its internal microcode in any way without the authorization of the original system vendor.  Emulator developers have a limited right to do as they please not only with the system BIOS, but any other system code stored within system firmware, so long as that code is not protected by patent and their final product is noninfringing.   Developers may use a dump of an original system BIOS in developing an emulator, but the final or public release version of that emulator cannot require its use in order to function.    [EDITOR'S NOTE - see Chuck Cochem's "The Question of ROMs" for a different opinion on this issue.]

REVIEW QUESTIONS

1.   What is software bootlegging?  What illicit goods are marketed by this activity?  How does it relate to the concept of software piracy?

2.   What is a "ROM?"  What are the two different types of "ROM?"  How did each come about?

3.   What is ROM dumping?  How did this practice come about?  What is the most common form of ROM dumping, and why does it go under that name?

4.   Why was it not illegal for the average user in the United States to own a ROM dumper prior to 28 October 1998?

5.   What was the court case that defined the relationship of videogame archiving with copyright law?  What did it say?

6.   Which two court cases established the legality of ROM dumping?  What were the limits they placed on its use?  What are two important points to remember regarding the ruling in these two cases?

7.   What approach did videogame cartridge vendors eventually adopt to combat the perceived "broad legality" of cart dumping?  How were they able to justify this approach?

8.   Can you explain the ROM backup theory?  Why does it apply to other forms of "ROM," such as arcade ROM dumps and disk image files?

9.   Is a ROM dump an exact copy or a derivative work of the original program?  How does this square with the rulings by the courts with regards to intermediate copies made by developers?

10. Do emulators play a valid role in the ROM backup theory?  Why or why not?

11. Why are EULAs so important with regards to the cart dump backup theory?

12. What is the proper way to obtain a "backup" to a computer program stored within some form of permanent storage media?  Why must this approach be used as opposed to certain other techniques?

13. Are BIOS dumps legal?  Why or why not?  Are there any exceptions?  Why or why not?

14. Explain if you can why certain forms of "ROM" patching are legal, whereas others are not.  Give examples when appropriate to illustrate your contentions.

15. What is rainbow code?  How does this apply to the creation and distribution of "ROM" sets?

16. Is there such a thing as a public domain "ROM?"  Why or why not?

17. Name three different types of "ROM" that the emulation community frequently assumes to be in the public domain, and explain why each is not.

18. How did passage of the Digital Millenium Copyright Act affect "ROMs?"

THOUGHTS TO PONDER

1.  How would you define the term "permanent storage media" with regards to computer software?  Is it legal to archive forms of permanent storage media that are not hardware-based?  Why or why not?

2.  Can a EULA ever be used to ban all forms of software archiving?  Why or why not?  Be sure to justify your answer with federal statutes, examples of case law, or both.

3.  Is the mere claim of "developer intent" sufficient to justify either production or possession of copyrighted "ROMs?"  Why or why not?

4.  Will there ever come a time in which an emulator is created before its software base?  Why or why not?

5.  If unauthorized alteration of software is illegal under copyright law, regardless of country of origin, then why are there so many software patches available in the public domain?  Why do some vendors tolerate this situation and others do not?