Nintendo of America, Inc. v. Mathias et al
United States District Court for the District of Arizona
Case No. 2:18-cv-02282-SPL

On July 19, 2018, Nintendo of America filed a lawsuit in the District of Arizona against LoveROMs.com and LoveRETRO.co, alleging copyright and trademark infringement. Nintendo alleges that LoveROMs and LoveRETRO operate as hubs for consumers to pirate Nintendo’s video games. The Complaint also claims that the websites unfairly benefit from Nintendo’s goodwill by using Nintendo’s trademarks. Nintendo is seeking monetary damages as well as permanent injunctions preventing the websites from operating.

The sites provide ROMs (Read-Only-Memory) for classic games. A ROM is a computer file which contains data from a read-only memory chip. An emulator is needed to transform the ROM into a playable game. Emulators occupy an intriguing area of copyright law due to a series of cases from the Ninth Circuit. The Ninth Circuit found emulators to be fair use because the emulator’s use of copyrighted code was for reverse engineering and the emulators, at least the ones at trial, had non-infringing purposes. Despite the case law, Nintendo maintains a strict policy against any form of emulation, contending that emulators promote infringement. It is worth noting that the last emulator case was decided in 2000, which is five years before the Supreme Court determined MGM Studios v. Grokster, holding the file-sharing website induced users to commit copyright infringement of music.

If this case proceeds to trial, then the defendants will most likely raise a fair use defense citing to the emulator cases from the Ninth Circuit. There are fundamental differences between ROMs and emulators which may make the court unwilling to extend fair use to ROMs. The emulator cases were concerned about how the defendants used the copyrighted code and not the use of any audiovisual work. The Ninth Circuit determined the defendants were using the copyrighted code to reverse engineer the console. It will be difficult for the defendants in the current case to rely upon the reverse engineering defense in regards to allegations of unauthorized distribution of an audiovisual work. Also, the Ninth Circuit found the emulators allowed a user to play a legally obtained copy of a video game which was considered a non-infringing use. An argument often cited in defense of ROMs is that the websites provide a way for the owner of a video game to create a backup copy. The defendants in Grokster raised a similar argument, but the Supreme Court found the majority of people used the file-sharing site for infringement and thus could not claim to have a non-infringing use. Plus, the ROM sites provide no method to verify if a user owns a copy of the game he/she is downloading.

The sites have already taken action in response to Nintendo’s lawsuit. One site has completely shut down while the other site has removed any reference to Nintendo. Other ROM sites have also reacted to the lawsuit by removing any material related to Nintendo. We will continue to follow this case and provide updates when possible.