Nintendo ROM Distributor Owes Over $2 Million After Summary Judgement

Nintendo of America, Inc. v. Matthew Storman
United States District Court for the Central District of California
Case No. CV 19-7818
Filed: September 10, 2019

In 2019 Nintendo of America, Inc. (“Nintendo”) sued Matthew Storman (“Storman”) for copyright and trademark infringement stemming from his use of Nintendo’s intellectual property on his website, (“RomUniverse”). RomUniverse allowed users to download ROMs (Read-Only Memory Files) of Nintendo’s modern and retro video games. Nintendo made several claims against Storman, including: direct copyright infringement, contributory copyright infringement, vicarious copyright infringement, trademark infringement, and unfair competition. On May 26, 2021 the court granted summary judgement on nearly all of Nintendo’s claims and dismissed Storman’s counterclaims for failure to state a claim.

Copyright Infringement:
Since it was undisputed that Storman had uploaded, distributed, and profited off of Nintendo’s copyrighted video games for use by others, the court granted summary judgement to Nintendo on all three copyright claims. Because Nintendo’s unfair competition claim was dependent on the success of the copyright claims, under California law, the court was also compelled to grant Nintendo’s motion for summary judgement on unfair competition. California Bus. & Prof. Code § 17200.

In total, Storman was found to have willfully infringed 49 of Nintendo’s copyrights. Statutory damages for copyright infringement are limited to $30K per innocent infringement or $150K per willful infringement. 17 U.S. Code § 504(c). Nintendo sought $90K per infringement, equaling $4,410,000 for the copyright claims alone. Taking Storman’s lack of income into consideration, the court awarded $35K for each instance of copyright infringement, leading to total copyright infringement damages of $1,715,000.

Trademark Infringement:
Storman did not dispute Nintendo’s trademark ownership and Nintendo produced uncontested evidence that Storman used Nintendo’s protected trademarks on RomUniverse to promote the sale of illegal downloads of Nintendo’s copyrighted games. The court therefore found that Storman used counterfeit marks of Nintendo’s registered trademarks and granted summary judgement to Nintendo for trademark infringement.

Statutory damages for use of a counterfeit trademark under the Lanham Act can range from $1,000 to $200,000 per mark, or up to $2,000,000 per willful use of a counterfeit mark. 15 U.S. Code § 1117(c). Although the court found there were 28 instances of Storman’s willful use of counterfeit marks, Nintendo only requested (and was granted) $400,000 in damages for its trademark infringement claims.

Nintendo also sought a permanent injunction against Storman to prevent future infringement. A permanent injunction requires a showing of irreparable harm and an inadequate remedy at law, in addition to other factors. Nintendo failed to show either irreparable harm or an inadequate remedy at law, so the court denied Nintendo’s permanent injunction request.

Nintendo also requested attorney’s fees. Because Nintendo won on its copyright claims, the court confirmed Nintendo is entitled to reasonable attorney’s fees under the Copyright Act, and instructed Nintendo to file a separate motion with evidence of the fees requested. 17 U.S.C. § 505. Nintendo requested additional attorneys’ fees as sanctions against Storman for discovery violations, but the court denied this request in view of a previous order that Storman pay $3,100 in sanctions for discovery violations.

In the end, there were many factors that made this a clear win for Nintendo. Among other things, Storman, who represented himself, testified that he was the sole owner of RomUniverse, that he or his administrators uploaded Nintendo’s copyrighted works onto RomUniverse, and that RomUniverse used Nintendo’s trademarks and indicated Nintendo’s copyrighted works were available for download.