Canada: Only Memories: Intellectual Property Considerations Related To Video Game Emulation

Video Games and Computer Games Bulletin
Last Updated: January 3 2019
Article by Mark D. Penner, Mark Vanderveken and Demetre Vasilounis

What are Emulators and ROMs?

With the holiday season upon us, gifts of video games and gaming consoles are no doubt top of mind for many holiday shoppers. Recent years have been notable for the resurgence in interest in the classic video games of the 1980s and 1990s, but gone are the days where a dedicated gaming system or a trip to the arcade was required to play these classic games. Today, the video game classics of the 1980s and 1990s are readily playable on our computers and smartphones.

These "retro" games are also easily accessible, and for years have been available for free via unauthorized third-party websites. This is made possible through the use of software applications called emulators, which are designed to play games in the read-only memory ("ROM") format. ROMs are essentially versions of games that have been "ripped" from their original cartridges or discs.

Copyright Infringement Issues

Distributing video games in this manner raises the issue of copyright infringement. Canada's Copyright Act gives copyright owners the sole right to produce, reproduce, perform or publish any translation of work.1 The Act also provides that it is an infringement of copyright for any person, without the copyright owner's consent, to do anything that only the copyright owner has the right to do.2 Although the Copyright Act does not specifically classify video games as "works", Canadian courts have recognized them as such3, and they are registrable as copyrighted works with the Canadian Intellectual Property Office.

On this basis, it appears that the acts of producing and publishing video games in ROM format without the consent of the copyright owner could give rise to a claim of copyright infringement. While this particular issue has not yet been considered by Canadian courts, there are recent examples of video game publishers challenging the owners of websites that distribute ROMs in the United States.

Nintendo of America ("NoA") recently made headlines for its claim against Jacob Mathias and his Arizona-based company Mathias Designs LLC for operating LoveROMS.com and LoveRETRO.co, two websites that have made hundreds of ROMs from classic games available for free.

In its complaint, NoA's primary allegation was that Mathias reproduced, distributed, publicly performed and displayed unauthorized copies of NoA's games contrary to its exclusive rights under the U.S. Copyright Act. NoA's complaint is also notable with respect to its prayer for relief - statutory damages of up to USD $150,000 for the infringement of each copyrighted work. It is estimated that there could have been as many as 140 games made available on these websites, but the parties recently settled for USD $12 million.

Could a Claim for Copyright Infringement be Brought Against a Canadian Website Distributing ROMs?

While this issue has not been expressly considered by a Canadian court, a decision on a related issue offers some guidance. In Nintendo of America Inc. v. King4, NoA claimed that its copyright was infringed by a website selling "game copiers" and "mod chips" which enabled customers to play ROMs on NoA's game consoles.

As a preliminary matter, the Federal Court acknowledged that NoA's copyrights in all of the 585 video game works involved were enforceable in Canada (even though only 217 were registered in Canada, the remainder being registered in the U.S.) by virtue of Canada's membership in the Berne Convention for the Protection of Literary and Artistic Works, which requires the recognition of copyrights of persons resident in other member states.

The copyright issue in King was secondary infringement under subsection 27(2) of the Canadian Copyright Act. The "game copiers" and "mod chips" sold by the defendant contained copyrighted code that had been reproduced from NoA's consoles in order to enable the copiers and chips to bypass the consoles' built-in technological protection measures ("TPMs") to play the ROMs. The Federal Court held that these activities infringed NoA's copyright and circumvented its TPMs, and awarded damages accordingly.

The outcome of King suggests that Canadian copyright law will protect the software code underlying video games and related game consoles, meaning Canadian websites distributing ROMs and emulators could be vulnerable to claims of copyright infringement by domestic and foreign copyright owners. Such websites might also be found to be infringing under the Copyright Act as services provided primarily for the purpose of enabling acts of copyright infringement.5 On the other hand, the Copyright Act could be interpreted to allow an individual's use of emulators and ROMs to play legitimately owned or licensed copies of video games, on the basis of computer program interoperability.6

Interestingly, U.S. courts have distinguished infringement by ROMs and emulators, on the basis that an emulator is not infringing to the extent its software code is unique (e.g., due to having been independently reverse-engineered) and that copying for the purpose of reverse-engineering represents an instance of fair use under U.S. copyright law.7 It is unclear whether Canadian courts would reach the same conclusion, particularly in light of the prohibitions on the circumvention of TPMs in the Copyright Act and the narrower concept of fair dealing in Canada as opposed to the American doctrine of fair use.

It remains to be seen how Canadian copyright law will treat video game ROMs and emulators. Copyright owners should seek legal advice to ensure that their copyrighted works are adequately protected, and for guidance on the strategic enforcement of their intellectual property rights.

Footnotes

1 Copyright Act, RSC 1985, c C-42, s 3(1)(a) [Act].

2 Ibid at s 27(1).

3 Seggie c Roofdog Games Inc., 2015 QCCS 6462. See also our analysis of this decision here.

4 Nintendo of America Inc v King, 2017 FC 246. See also our analysis of this decision here.

5 Act, supra note 1 at s 27(2.3).

6 Ibid at s 30.61(1).

7 Sony Computer Entertainment v. Connectix Corp., (2000), 203 F3d 596 (Ninth Circuit Court of Appeals)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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