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FINAL EDITION
copyright (c) 1999 Sam Pettus (aka "the
Scribe"), all rights reserved
All copies must not be altered in any way, including but not limited to reformatting and conversion to alternate document formats, without the express consent of the author. The sole exception is for necessary formatting changes that may be required to adapt this document to suit your particular needs; however, the complete original text must be retained in as close a layout to the original as possible. For any questions in this regard, please contact the author.
No copy may be reproduced in whole or in part within a for-profit commercial publication or Internet site without the express consent of the author. The author recognizes the right of said vendors to reproduce limited portions of his work under the "fair use" clause of the appropriate sections of the U.S. Copyright Act and the Berne Convention for the Protection of Literary and Artistic Works.
Any trademark or other such indica to be
found within this document is the exclusive property of its respective
owner, and is reproduced here merely for the sake of reference.
Y2K Addendum: The
Effects
Sony v. Connectix
- Analysis and Implications
OverClocked #86, "A Polite Reaction" © 2000 David Lloyd
We believe that this landmark decision will have broad ramifications throughout the software and other media industries. This ruling supports the clear goal of U.S. copyright law to allow fair use of prior works to create new intellectual property which broadens consumer choice. This is a great victory for every American.THE PARADIGM SHIFT REALIZED- Roy McDonald, CEO of Connectix, Inc.
For over a year, the first legal battle to draw blood in the great emulation debate of the late 1990s had been working its way though the courts. The fight between Sony Corporation and Connectix, Inc. over the Virtual Game Station (a PlayStation emulator for the Macintosh personal computer) was the first of its kind to address in a straightfoward manner the legality of emulation as a whole and videogame system emulation in particular. Sony was under the impression that it was going to win the dispute when on 22 April 1999 it won a permanent injunction against Connectix's product. The U.S. 9th Circuit Federal District Court ruled that Connectix had made improper and infringing use of the actual microcode contained within the PlayStation BIOS, which would be a violation of the U.S. Copyright Act (17 USC 101, et. seq.). It also found that the Connectix product had the potential of "tarnishing the Sony PlayStation [trade]mark," thus constituting trademark infringement under the terms of the Landham Act (15 USC 1051, et. seq.). As a result, it ordered Connectix to pull Virtual Game Station from the market and halt all moves towards preparing future retail releases of same. Connectix disagreed with the court's findings and appealed the decision. The case was subsequently reviewed by the U.S. Court of Appeals some five months later, beginning on 14 September 1999. The 9th Circuit Court of Appeals was well-schooled in the application of intellectual property law in the Information Age, having already made a number of landmark decisions with regards to its role in the ever-changing field of computer technology. On 10 February 2000, Judge William C. Canby Jr. issued the following decision on behalf of the full Court of Appeals.
The intermediate copies made and used by Connectix during the course of its reverse engineering of the Sony [PlayStation] BIOS were protected fair use, necessary to permit Connectix to make its non-infringing Virtual Game Station function with PlayStation games. Any other intermediate copies made by Connectix [of the BIOS] do not support injunctive relief, even if those copies were infringing.The court's decision hit Sony like a bombshell. To make matters worse, Connectix promptly filed a motion with the district court that, in light of the appellate court ruling, Sony's lawsuit against them should be thrown out in its entirety. Connectix employees were rejoicing in their sudden good fortune, from the lowest clerk all the way up to its corporate board of directors. "Everybody's really excited," noted Connectix CEO Roy McDonald, "but a whole huge load of work has just landed on everybody's desk." He was referring to the long-stalled Macintosh update and impending Windows port of Virtual Game Station, both of which had been languishing in limbo ever since Sony's restraining injunction had been granted. Now that the legal hurdles had been cleared, Virtual Game Station could rightfully resume its place next to bleem! on retail store shelves as a viable alternative for buyers interested in running PlayStation games on their personal computers.
Sony v.
Connectix is the single most important court decision to date concerning
the legality of emulation. It has established beyond a shadow of
a doubt the legality of the technology within the bounds of intellectual
property law. This was the point that I was trying to drive home
in the original EmuFAQ, and the basis for my stance had been asserted
by the emuscene long before my arrival. "Emulation is legal.
It's that simple and not open to debate," noted longtime emucoder Steve
Snake (KGen 98, Sega Smash Pack) when queried on the subject.
His assertion has now been vindicated by the U.S. Court of Appeals.
If these were Biblical times, some might consider him a prophet.
In these modern times, though, he must content himself with a smile and
a smug, "I told you so."
There has been
a lot of argument since the release of the original EmuFAQ over
the merits of case law as opposed to statutory law. I must remind
you that both hold equal weight within the U.S. legal system. Each
augments the other. Statutory law is established by Congress, then
case law interprets those statutes for a given situation. If the
statutory law is found to be wanting or in error, then the courts have
the constitutional right to re-interpret or nullify it with case law.
It is then the responsibility of Congress to issue new statutory law which
takes that case law into account over the situation in question.
That is how the system works, whether you like it or not, and it has worked
pretty well for the United States ever since the Constitution became the
basis for our laws. A lot of you have taken me to task for backing
up my arguments in the EmuFAQ with case law, failing to understand
how the system works. It would be interesting to see how these same
individuals feel now that a major case law ruling in their favor has finally
come down the pike.
Why I am making
such a big deal about this ruling? Is it just because of the subject
matter, videogame emulation? No, there's more to it than that.
This decision was issued by the U.S. Court of Appeals - not a federal district
court, nor a state court, nor a local court. There is only one federal
court higher than the Court of Appeals, and that is the U.S. Supreme Court.
Because of this, federal appellate court rulings carry a lot of weight
in our nation's legal system at all levels, and they play a major role
in shaping the development of statutory law. While Sony v. Connectix
does not refute any current intellectual property laws, it permits the
legal system to better apply those laws to the concept of computer system
emulation. Only twice before (to the best of my knowledge) has our
federal legal system dealt with computer system emulation in any form (Penwalt
v. Durand-Weyland, 1987 and Atari v. Nintendo, 1992).
Neither case boded well for the emuscene, as the first inferred that emulation
could be an infringing technology and the second demonstrated an example
of the possibility realized. Sony v. Connectix was the
first federal court case to deal directly with the development of a potentially
infringing emulator. Coupled with the fact that its resolution came
by the capable minds of the U.S. Court of Appeals, it becomes a case law
ruling of utmost importance to everyone within the emuscene.
THE IMPORTANCE OF PATENT PROTECTION
One of the most unusual aspects of this case is that Sony did not claim patent infringement on the part of Connectix. To quote from the docket's introductory paragraph's:
Sony has asserted no patent rights in this proceeding.One would think that this would have been their first line of attack. Back in 1982, Atari sued Coleco for patent violation over the ColecoVision Expansion Module #1, an add-on adapter that allowed a stock ColecoVision to handle and play Atari VCS (2600) games. Videogame consoles have almost always contained patentable parts since those early days. The Nintendo Entertainment System (NES) led the pack of Atari's successors back in 1984 with a patent for the first antipiracy security system (APSS) designed for a home videogame console, and others have patented other parts of their respective systems. For example, Atari successfully sued Sega back in the heyday of the Sega Genesis for patent infringement, since the Genesis gamepads and gamepad ports were essentially unlicensed modifications of the ones that Atari had first developed for the Atari VCS. I can only speculate that Sony's legal team initially felt that no patentable part of the PlayStation had been violated by the actions of Connectix; therefore, they did not have a case for patent infringement. It would have been quite a different affair if Sony had made such a claim. If you will recall from our discussion in the EmuFAQ, the standards for patent protection are considerably more stringent than any other form of intellectual property protection. Accordingly, the protection it affords is more complete. It is conceivable that Connectix might not have able to make their case of "fair use" had Sony claimed the higher standard of patent infringement instead of copyright infringement.
INTERMEDIATE COPIES REVISITED
It was during
the final development stages of the EmuFAQ back in mid-1999 that
I had the opportunity to contact Connectix regarding their legal dispute
with Sony. While they could not give me a straight answer at the
time as to the legality of Virtual Game Station, I learned that
their approach would be through the Sega v. Accolade decision of
1992. This caused me to re-examine my own questions on the subject
and eventually led toward the development of the A-Max test - the
EmuFAQ's
seven-point test for determining the legality of any emulator. It
also led me to the conclusion that there were certain things that emulator
programmers could do that emulator users could not - like dumping the ROMs
within videogame cartridges for testing the accuracy of any emulator they
might be developing. Not only has Sony v. Connectix vindicated
my assertions, it has taken them one step farther.
Sega v. Accolade
is the case most frequently cited regarding the legality of reverse
engineering. This is the technique by which computer programmers independently
develop a non-infringing compatable copy of any given system or program
through close and detailed examination of the original. This is the
case upon which the reverse engineering clause of U.S. copyright law is
based (US 17 CR 1201, paragraph f). It introduced the legal concept
of the intermediate copy, which is a copy of copyrighted computer
code generated from an original vendor product in order to develop a non-infringing
product. It does not matter how the intermediate copy is produced
so long as it is made, but it is significant to note that this dispute
involved the dumping and disassembly of object code originally stored in
ROM. Here are the exact quotes from the decision docket concerning
the legality of Accolade's intermediate copies of Sega object code.
... [W]e conclude that Accolade copied Sega's code for a legitimate, essentially non-exploitative purpose, and that the commercial aspect of its use can best be described as of minimal significance ... We conclude that where disassembly is the only way to gain access to the ideas and functional elements embodied in a copyrighted computer program and where there is a legitimate reason for seeking such access, disassembly is a fair use of the copyrighted work, as a matter of law.Since the intermediate copy is utilized in the production of a non-infringing product, and since the copy in question does not become part and parcel of the resultant product, it is held to be a non-infringing copy of original vendor code. In addition, the court found that Accolade's use of Sega-derived intermediate copies to develop its own non-infringing software passed the "fair use" test of copyright law (17 USC 107). With this in mind, let us now examine the Sony v. Connectix ruling and how the concept of intermediate copying was brought to bear on this dispute.
Nature of work - PASSED. Under the terms of the Sega v. Accolade precedent, the court noted that it would be wrong for Sony to erect an "artificial legal barrier" against anyone who wanted to examine the PlayStation BIOS object code. The only way that it could erect such a barrier was under patent law, not copyright law. Copyright law was not designed to grant the kind of protections that Sony was seeking for its BIOS code. Since Sony had failed to assert patent protection for the PlayStation BIOS, they had no grounds for claiming violation of their intellectual property under copyright law. Sony counter-claimed that there were other methods available to Connectix for developing their non-infringing code, and that making multiple copies of its dumped BIOS were unnecessary to their development effort. The court refuted Sony's argument, noting that "this construction stretches Sega too far .... If Sony wishes to obtain a monopoly on the functional concepts in its software, it must satisfy the more stringent requirements of the patent laws .... This Sony has not done."Finally, the Court of Appeals noted the statutory requirement (17 USC 107) that all four factors of the fair use test had to be weighed equally before any "fair use" claim could be granted. As the only factor that could have killed Connectix's claim had been thrown out per case law precedent, the court granted their request. "[W]e conclude," reads the docket, "that Connectix's intermediate copying of the Sony BIOS during the course of its reverse engineering was a fair use .... With respect to its claim of copyright infringement, Sony has not established either a likelihood of success on the merits or that the balance of hardships tips in its favor." With that, Sony's claims of copyright infringement went down in flames at the hands of the Court of Appeals.Amount and substantiality of use - DISMISSED. Connectix had not only dumped the entire Sony PlayStation BIOS, but they had also made multiple copies of it. Furthermore, they had used these copies in developmental copies of Virtual Game Station while debugging their own non-infringing code. One would think that this would have ended Connectix's case right there, as their actions failed this part of the fair use test. In an unusual move, however, the court threw out this part of the fair use test. Why did the court do that? The answer can be found in Sega v. Accolade, where the same thing happened with regards to Accolade's use of the fair use defense. That court had ruled that if a final product based on intermediate copying did not contain any infringing code, then this part of the fair use test "was of very little weight." Accordingly, the Court of Appeals followed case law precedent and dismissed this part of the fair use test as irrelevant.
Purpose and character of use - PASSED. The court noted that Virtual Game Station had been designed to supplement the PlayStation, not to replace it. It was an entirely new product, despite the fact that it had remarkable similarities to the actual hardware. In addition, the final product used Connectix-developed code, not original Sony code. Accordingly, the court was "at a loss" to see just how Connectix's development efforts, which resulted in a non-infringing product, violated any Sony copyrights. Even though Connectix's Virtual Game Station was running PlayStation games in an emulated environment on a personal computer instead of on actual PlayStation hardware, no harm came to Sony or its products as a result.
Effect of use on potential market - PASSED. The court acknowledged Sony's claim that it could lose "console sales and profits" in the PlayStation videogame market due to the presence of Virtual Game Station, but held that this made Connectix a "legitimate competitor" and not an infringing party. To quote the court, "Sony understandably seeks control over the market for devices that play games Sony produces or licenses. The copyright law, however, does not confer such a monopoly." They based their finding on Sega v. Accolade, which said, "[Any] attempt to monopolize the market by making it impossible for others to compete runs counter to the statutory purpose of promoting creative expression and cannot constitue a strong equitable basis for resisting the invocation of the fair use doctrine."
TRADEMARK TARNISHMENT
The final issue which the Court of Appeals had to address was Sony's claim of trademark infringement. Sony's "derringer shot" took the form of a tarnishment charge (15 USC 1125.c.1). The concept is akin to the oxidation of metal - the dark film that appears on polished silver - from which the legal concept was derived. Sony asserted that its world-famous PlayStation trademark was being tarnished by the arrival of an inferior competing product, Virtual Game Station. There is a four-part test for trademark tarnishment that is similar to the "fair use" test for copyright infringment. It is this test that the court applied to Sony's claim.
The PlayStation mark is "famous" - Connectix did not dispute this obvious fact.On the basis of the evidence at hand, the Court of Appeals summarily rejected Sony's claim of trademark infringement by Connectix. With that, Sony had no case left to bear against Connectix.Connectix is "making commercial use of the mark" - The Court of Appeals chose not to address this element of the test. Connectix was selling Virtual Game Station, not bootlegging PlayStations. Both were distinct and unique products - an observation upon which they elaborated in the fourth part of the test.
Connectix's "use began after the mark became famous" - Again, Connectix did not dispute the obvious. I remind you of one of the many observations from the EmuFAQ.
An emulator by its very nature is an after-the-fact product. Remember, emulators are designed to replicate the functions of systems that are either already in existence or no longer being produced. You cannot make an emulator unless you have two things - knowledge of the system you are emulating and access to that system's software base.Connectix's "use of the mark dilutes the quality of the mark by dimishing the capacity of the mark to identify and distigush goods and services." - The legal concept of dilution is identical to the scientific one. For example, an alcoholic beverage diluted with water is not as strong as the original. The more you dilute the drink, the lower its "proof" rating and the lessening of the probability that it will make you drunk. In a similar fashion, Sony claimed that Virtual Game Station diluted the worldwide reputation of the original PlayStation. Since it was not as good as the actual hardware, unsuspecting users might associate its problems with the PlayStation itself. While Sony was able to convince the lower court on this basis, the Court of Appeals rejected this claim out-of-hand. They made two key observations in this regard. First, "the evidence on the record does not support such a finding of misattribution." The court noted that the only studies on the matter clearly distinguished the differences in quality between the two products but "shed no light in the question of misattribution." Second, "the evidence here fails to show or suggest that Sony's mark or product was regarded or was likely to be regarded negatively because of its performance on Connectix's Virtual Game Station." The court used Sony's own compatability studies to note that its testers were clearly able to distinguish the gaming experience delivered by both products running PlayStation games. While their opinions about Virtual Game Station ran the full range from "generally acceptable" to "nearly unplayable," all of the testers could make the distinction between the two. In fact, most of them "preferred the PlayStation experience over the Virtual Gaming Station experience."
THE VERDICT
The court's final conclusion in the case of Sony v. Connectix reads as follows:
Connectix's reverse engineering of the Sony BIOS extracted from a Sony PlayStation console purchased by Connectix's engineers is protected as a fair use. Other intermediate copies of the Sony BIOS made by Connectix, if they infringed Sony's copyright, do not justify injunctive relief. For these reasons, the district court's injunction is dissolved and the case is remanded backIMPLICATIONS FOR THE EMUSCENE
"Cool!" I can hear many of you say, "but spare the legalisms, please. Just give me the straight dope. Just how exactly does Sony v. Connectix affect the emuscene? Put it in plain language, Scribe!" Okay, here goes.
It is perfectly legal for you to use a emulator to execute software written for the original system. There's no more questioning the legality of emulation. Sony v. Connectix finally settles that issue once and for all. Both developing and using an emulator are protected under the "fair use" statute of copyright law. Whew! That's a relief for every emufan out there, myself included. Remember, it was my investigation into the "fair use" defense for "ROM" dumping that got me started on the EmuFAQ in the first place. While you're celebrating the emuscene's victory, however, don't forget that the Court of Appeals never dealt with the issue of "ROMs." This means that the "original format" requirement for the software you plan to run under emulation still stands (17 USC 106.2, c.f. "derivative work;" see also Nintendo v. Computer and Entertainment, 1996). I'm sure Nintendo will be happy to remind anybody who might attempt to convienently forget that point.I would now like to take this time to remind you of something that I brought up in the very first module of the EmuFAQ. It is the A-Max precedent, in which I first posited the legality of emulation technology.It is perfectly legal for a emulator developer to dump, decompile, and examine any object code stored within any ROM that is part of the system being emulated if such access is necessary for the production of a non-infringing emulator. This will be the biggest legal boost that emulation development gets out of this case. If you're a emulator developer and working within the strict legal confines of the concept of reverse engineering, then you can dump just about anything you need that isn't patented - the BIOS, the chipset, the CPU, the sound processor, the VDP, and whatever else is soldered to the planar - in order to get your emulator up and running. There's only two "gotchas" left to worry about. You can't mess with any code that is patented or contains patented code, and the public release of your emulator can neither contain any of the original object code you dumped nor require the use of same. Ouch. For that matter, you can neither post a dumped BIOS on the Internet nor download one that is already posted (see the actual decision brief, footnote 11). That means that any emulator you release has to be 100% non-infringing. Sorry, PSEmu fans, no relief here - your requirement of a BIOS dump is addressed in this case. You can't release an emulator that requires a BIOS dump because users don't have the legal right to download or dump a BIOS - even if they do own an original console. Only developers have that right, and not everybody's a developer. Just claiming to be one doesn't make you one. You real developers out there should be on your knees praising the Court of Appeals for broadening the terms of Sega v. Accolade. You didn't have such a broad right before Sony v. Connectix, but you do now. Try not to abuse it, okay? Remember, what the courts grant, they can also take away.
Any claim of potential market impact made by an original system vendor against the developers of a non-infringing emulator is without merit. If you will recall from the EmuFAQ, one of the front-line attacks made by vendors against emulation in the past is trademark infringement. Emulation impacts the market for a vendor's products, thus decreasing revenue and reducing potential profits. To paraphrase the judgement by the Court of Appeals in this case, this is a groundless argument that cannot be proven. In other words, it's pure bull$#!+. Nothing more, nothing less. Only an uneducated moron could confuse a software-based emulator with the actual original hardware. The public as a whole will trend towards distinguishing the two as separate entities, and will gauge potential purchase of either based on their own respective merits. "It is a fact that emulators are never as good as the actual hardware," to quote the EmuFAQ on this subject, and the Court of Appeals determined that the public as a whole would be able to distinguish between the two. Emulation is not the monster threat to profits that certain vendors made it out to be. It never was, and never will be.
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The U.S. Court of Appeals has confirmed
the legal validity of this precedent. "The Virtual Game Station
itself
infringes no copyright," reads their comment in one of the footnotes.
In upholding this precedent, though, they have also augmented it with another
one of equal importance. This I shall call the Connectix precedent,
named for the remarkable company that made emulation a legal reality.
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Both of these precedents, taken together, can be said to set the legal "bookends" for emulation technology. The A-Max precedent addresses the emuscene's point-of-view, whereas the Connectix precedent takes care of things from the vendor's perspective. Between these boundaries lie a broad legal space wherein emulation can be lawfully pursued.
As the matter stands now, Sony has brought yet another lawsuit against Connectix. On 16 February 2000, Sony filed with the U.S. 9th District Court claiming 11 different counts of patent infringement against Connectix over the technology that Virtual Game Station emulates. Sigh. Some folks never learn. They should have done that in the first place. Sony is going to have to defend its self-imposed monopoly from a weaker position than before. The emuscene now has the legal right to emulate, and that will be an important factor in weighing the merits of Sony's claim. All Connectix has to do is to prove that no Sony patents were violated, and that is going to be easier that most might think. It is ironic that Sony's misinterpretation of the law has done the most in making the legalization of emulation possible. Sony has a rather big job ahead as it tries to dig itself out of its own hole. This time around, the emuscene holds the high ground.
REVIEW QUESTIONS
1) What two forms of intellectual property protection did Sony seek against Connectix? What was the ruling of the district court? What was the ruling of the appellate court?
2) Why is Sony v. Connectix "the single most important court decision to date concerning the legality of emulation?" How does it differ from previous court cases regarding emulation?
3) What was one of the most unusual aspects of Sony's claims against Connectix? How did this ultimately work against them?
4) What is the significance of Sega v. Accolade with regards to the resolution of this case?
5) Describe in your own words how Virtual Game Station passed the "fair use" test of copyright law. What was so unusual about the manner in which the court resolved the test? Was there legal precedent for their action? If so, what was it? If not, where did they err?
6) If Sony were to press its claim for a monopoly on the market for PlayStation games, under what form of intellectual property protection could it do so? What makes it different from other forms in this regard?
7) What is "trademark tarnishment?" Can you describe how it works?
8) What were the two reasons behind the court's decisionregarding possible PlayStation trademark tarnishment? Can you describe the key role that product testers played in that decision?
9) What are the three conclusions that the emuscene can draw from Sony v. Connectix?
10) What major legal precedent regarding the activities of the emuscene was established by this case? How does it complement any earlier precedents?
THOUGHTS TO PONDER
1) What is the legal basis for Sony's new suit against Connectix? How does this differ from their previous action?
2) In your opinion, does Sony have grounds for their new claims? Why or why not?
3) Do you think Sony will succeed in its new case? Why or why not?
4) Is it possible to code, release, or use an emulator that does not violate the most stringent form of intellectual property protection? Be sure to justify your answer.