Sony Computer Entertainment, Inc. v. Connectix Corporation
Encyclopedia
Sony Computer Entertainment v. Connectix Corp., 203 F.3d 596 (2000), is a decision by the Ninth Circuit Court of Appeals which ruled that the copying of a copyrighted BIOS
software during the development of an emulator
software does not constitute copyright infringement
, but is covered by fair use
. The court also ruled that Connectix Corp.
had not tarnished Sony
's PlayStation trademark by selling its emulator software, the Virtual Game Station.
platform in July of 1998 with the aim of creating a software program that emulated Sony's popular PlayStation video games console's hardware and firmware
. This would make it possible for the VGS' users to play games developed for the PlayStation on Macintosh hardware, with plans to release a Windows PC compatible version at a later date. To accomplish the emulation goals, Connectix reverse engineered
the BIOS software, i.e., the firmware, of the PlayStation, first by using the unchanged BIOS to develop emulation for the hardware, and after that, by developing a BIOS of their own using the original firmware as an aid for debugging. During the development work Connectix contacted Sony, requesting “technical assistance” for completing the VGS, but this request was eventually declined in September 1998.
The Video Game Station development reached completion in December 1998, with the software being commercially released the following month, in January of 1999. Sony perceived the VGS as a threat to its video game business, and filed a complaint alleging copyright infringement and other causes of action against Connectix on January 27, 1999. The district court awarded Sony an injunction blocking Connectix
The district court also impounded all of Connectix' copies of the Sony BIOS and all copies of works based upon or incorporating Sony BIOS. Connectix then successfully appealed the ruling, with the United States Courts of Appeals for the Ninth Circuit reversing the earlier decision.
Each of the four components of fair use, the nature of the copyrighted work, the amount and substantiality of the portion used, the purpose and character of the use and the effect of the use on the potential market were considered by the court individually:
Additionally, Sony had argued that Connectix infringed Sony's copyright by making numerous copies of the PlayStation BIOS during the reverse engineering process. The court rejected also this notion, ruling that Sega had made no specification on a possible number of allowed copies.
“With respect to the third statutory factor, amount and substantiality of the portion [p*606] used in relation to the copyrighted work as a whole, Connectix disassembled parts of the Sony BIOS and copied the entire Sony BIOS multiple times. This factor therefore weighs against Connectix. But as we concluded in Sega, in a case of intermediate infringement when the final product does not itself contain infringing material, this factor is of "very little weight."“
“As an initial matter, we conclude that the district court applied an erroneous legal standard; the district court held that Connectix's commercial purpose in copying the Sony BIOS gave rise to a "presumption of unfairness that . . . can be rebutted by the characteristics of a particular commercial use." ... Since Sega, however, the Supreme Court has rejected this presumption as applied to the first and fourth factor of the fair use analysis. ... Instead, the fact that Connectix's copying of the Sony BIOS was for a commercial purpose is only a "separate factor that tends to weigh against a finding of fair use."“
“We find that Connectix's Virtual Game Station is modestly transformative. The product creates a new platform, the personal computer, on which consumers can play games designed for the Sony PlayStation. This innovation affords opportunities for game play in new environments, specifically anywhere a Sony PlayStation console and television are not available, but a computer with a CD-ROM drive is. More important, the Virtual Game Station itself is a wholly new product, notwithstanding the similarity of uses and functions between the Sony PlayStation and the Virtual Game Station. ... Sony does not claim that the Virtual Game Station itself contains object code that infringes Sony's copyright. We are therefore at a loss to see how Connectix's drafting of entirely new object code for its VGS program could not be transformative, despite the similarities in function and screen output.”
“For this reason, some economic loss by Sony as a result of this competition does not compel a finding of no fair use. 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.”
The Ninth Circuit Court also reversed the district court's ruling that the Video Game Station tarnished Sony's “PlayStation” trademark. Sony had to show that (1) the PlayStation “mark is famous;” (2) Connectix is “making commercial use of the mark;” (3) Connectix's “use began after the mark became famous;” and that (4) Connectix's “use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services.” As the first three points were not under debate (Connectix conceded points (1) and (3) ), the court addressed only the fourth point.
Sony had provided two different studies produced by third parties pertaining to consumer perception between the VGS and the PlayStation, as well as print-out of reviews posted on the Internet. The online reviews held little value to the court:
“As the district court acknowledged, these reviews were neither authenticated nor identified. More important, the print-out of the comments does not reveal the context in which the comments were made; this omission makes the extent of any confusion by game players difficult to assess reliably. … This evidence is insufficient to support a conclusion that the shoddiness of the Virtual Game Station alone tarnishes the Sony mark.”
The court also took the opinion of the studies provided lacking sufficient evidence of diluting the PlayStation trademark:
“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 evidence is not even substantial on the quality of that performance. … Sony's tarnishment claim cannot support the injunction.”
BIOS
In IBM PC compatible computers, the basic input/output system , also known as the System BIOS or ROM BIOS , is a de facto standard defining a firmware interface....
software during the development of an emulator
Emulator
In computing, an emulator is hardware or software or both that duplicates the functions of a first computer system in a different second computer system, so that the behavior of the second system closely resembles the behavior of the first system...
software does not constitute copyright infringement
Copyright infringement
Copyright infringement is the unauthorized or prohibited use of works under copyright, infringing the copyright holder's exclusive rights, such as the right to reproduce or perform the copyrighted work, or to make derivative works.- "Piracy" :...
, but is covered by fair use
Fair use
Fair use is a limitation and exception to the exclusive right granted by copyright law to the author of a creative work. In United States copyright law, fair use is a doctrine that permits limited use of copyrighted material without acquiring permission from the rights holders...
. The court also ruled that Connectix Corp.
Connectix
Connectix Corporation was a software and hardware company, noted for having released innovative products that were either made obsolete as Apple Computer incorporated the ideas into system software, or were sold to other companies once they become popular...
had not tarnished Sony
Sony
, commonly referred to as Sony, is a Japanese multinational conglomerate corporation headquartered in Minato, Tokyo, Japan and the world's fifth largest media conglomerate measured by revenues....
's PlayStation trademark by selling its emulator software, the Virtual Game Station.
Background of the case
Connectix started the development of the Virtual Game Station (VGS) for the MacintoshMacintosh
The Macintosh , or Mac, is a series of several lines of personal computers designed, developed, and marketed by Apple Inc. The first Macintosh was introduced by Apple's then-chairman Steve Jobs on January 24, 1984; it was the first commercially successful personal computer to feature a mouse and a...
platform in July of 1998 with the aim of creating a software program that emulated Sony's popular PlayStation video games console's hardware and firmware
Firmware
In electronic systems and computing, firmware is a term often used to denote the fixed, usually rather small, programs and/or data structures that internally control various electronic devices...
. This would make it possible for the VGS' users to play games developed for the PlayStation on Macintosh hardware, with plans to release a Windows PC compatible version at a later date. To accomplish the emulation goals, Connectix reverse engineered
Reverse engineering
Reverse engineering is the process of discovering the technological principles of a device, object, or system through analysis of its structure, function, and operation...
the BIOS software, i.e., the firmware, of the PlayStation, first by using the unchanged BIOS to develop emulation for the hardware, and after that, by developing a BIOS of their own using the original firmware as an aid for debugging. During the development work Connectix contacted Sony, requesting “technical assistance” for completing the VGS, but this request was eventually declined in September 1998.
The Video Game Station development reached completion in December 1998, with the software being commercially released the following month, in January of 1999. Sony perceived the VGS as a threat to its video game business, and filed a complaint alleging copyright infringement and other causes of action against Connectix on January 27, 1999. The district court awarded Sony an injunction blocking Connectix
- from copying or using the Sony BIOS code in the development of the Virtual Game Station for Windows; and
- from selling the Virtual Game Station for Macintosh or the Virtual Game Station for Windows
The district court also impounded all of Connectix' copies of the Sony BIOS and all copies of works based upon or incorporating Sony BIOS. Connectix then successfully appealed the ruling, with the United States Courts of Appeals for the Ninth Circuit reversing the earlier decision.
The court's decision
The Ninth Circuit Court's ruling centered on deciding whether or not Connectix' copying of the PlayStation firmware while reverse engineering it was protected by fair use. The court relied heavily on the similar case between Sega Enterprises Ltd. and Accolade Inc. in 1992, where the key finding relating to Connectix v. Sony was that copying for the purpose of reverse engineering was within fair use.Each of the four components of fair use, the nature of the copyrighted work, the amount and substantiality of the portion used, the purpose and character of the use and the effect of the use on the potential market were considered by the court individually:
1. Nature of the copyrighted work
The court deemed the PlayStation firmware to fall under a lowered degree of copyright protection due to it containing unprotected parts (functional elements) that could not be examined without copying, as per Sega. The court also rejected the semantic distinction between “studying” and “use” made by the district court ("[T]hey disassembled Sony's code not just to study the concepts. They actually used that code in the development of [their] product.") , finding it to be artificial.Additionally, Sony had argued that Connectix infringed Sony's copyright by making numerous copies of the PlayStation BIOS during the reverse engineering process. The court rejected also this notion, ruling that Sega had made no specification on a possible number of allowed copies.
2. Amount and substantiality of the portion used
The court saw this criterion as being of little significance to the case at hand:“With respect to the third statutory factor, amount and substantiality of the portion [p*606] used in relation to the copyrighted work as a whole, Connectix disassembled parts of the Sony BIOS and copied the entire Sony BIOS multiple times. This factor therefore weighs against Connectix. But as we concluded in Sega, in a case of intermediate infringement when the final product does not itself contain infringing material, this factor is of "very little weight."“
3. Purpose and character of the use
The court decided that Connectix purpose for the reverse engineering, although commercial, was also “transformative”, rejecting the district court's view that a commercial purpose in itself was enough to violate fair use:“As an initial matter, we conclude that the district court applied an erroneous legal standard; the district court held that Connectix's commercial purpose in copying the Sony BIOS gave rise to a "presumption of unfairness that . . . can be rebutted by the characteristics of a particular commercial use." ... Since Sega, however, the Supreme Court has rejected this presumption as applied to the first and fourth factor of the fair use analysis. ... Instead, the fact that Connectix's copying of the Sony BIOS was for a commercial purpose is only a "separate factor that tends to weigh against a finding of fair use."“
“We find that Connectix's Virtual Game Station is modestly transformative. The product creates a new platform, the personal computer, on which consumers can play games designed for the Sony PlayStation. This innovation affords opportunities for game play in new environments, specifically anywhere a Sony PlayStation console and television are not available, but a computer with a CD-ROM drive is. More important, the Virtual Game Station itself is a wholly new product, notwithstanding the similarity of uses and functions between the Sony PlayStation and the Virtual Game Station. ... Sony does not claim that the Virtual Game Station itself contains object code that infringes Sony's copyright. We are therefore at a loss to see how Connectix's drafting of entirely new object code for its VGS program could not be transformative, despite the similarities in function and screen output.”
4. Effect of the use upon the potential market
Owing to the finding that the VGS could be seen as a transformative product, the court ruled that the product did “not merely supplant the PlayStation console”, but was “a legitimate competitor in the market for platforms on which Sony and Sony-licensed games can be played” adding also that:“For this reason, some economic loss by Sony as a result of this competition does not compel a finding of no fair use. 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.”
The Ninth Circuit Court also reversed the district court's ruling that the Video Game Station tarnished Sony's “PlayStation” trademark. Sony had to show that (1) the PlayStation “mark is famous;” (2) Connectix is “making commercial use of the mark;” (3) Connectix's “use began after the mark became famous;” and that (4) Connectix's “use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services.” As the first three points were not under debate (Connectix conceded points (1) and (3) ), the court addressed only the fourth point.
Sony had provided two different studies produced by third parties pertaining to consumer perception between the VGS and the PlayStation, as well as print-out of reviews posted on the Internet. The online reviews held little value to the court:
“As the district court acknowledged, these reviews were neither authenticated nor identified. More important, the print-out of the comments does not reveal the context in which the comments were made; this omission makes the extent of any confusion by game players difficult to assess reliably. … This evidence is insufficient to support a conclusion that the shoddiness of the Virtual Game Station alone tarnishes the Sony mark.”
The court also took the opinion of the studies provided lacking sufficient evidence of diluting the PlayStation trademark:
“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 evidence is not even substantial on the quality of that performance. … Sony's tarnishment claim cannot support the injunction.”