Nintendo Responds To RomUniverse's Lame Argument That First Sale Doctrine Makes The Site Non-Infringing

from the that's-not-gonna-work dept

You will recall that Nintendo, as part of its sweeping new war on ROM sites initiated a year or so ago, went particularly hard at RomUniverse and its site operator, Matthew Storman. Differentiating RomUniverse from other ROM sites is some combination of the fact that it’s run out of California as opposed to overseas, that the site is also a place to go get lots of other media that sure looks to be infringing on copyright, and Storman’s verbose attitude in making public comments that don’t paint him or his site in the best light. At the onset, as part of an attempt to crowdfund its legal battle with Nintendo, RomUniverse trotted out the claim that it was offering ROMs in an attempt to preserve video gaming history. It wasn’t a particularly believable argument given the rest of the site’s behavior and RomUniverse quickly opted for other legal arguments in court.

Storman appears to be defending himself in the matter and attempted to have the case dismissed on two grounds. The first is that Safe Harbor protections extend to RomUniverse, which Storman claims is simply a service provider and not participating or reaping commercial benefit from infringing material. Storman claims that Nintendo has acknowledged RomUniverse as a service provider by sending DMCA takedown requests to the admin for the site, at least some of which have been complied with. That, unfortunately, is not really how any of this works, as Nintendo details in its own response to Storman’s motion.

In 2009, Mr. Storman emailed members of his website that he would be adding new content including ROMs for various Nintendo game systems. In 2018, when Nintendo was successfully enforcing its intellectual property rights against other pirates, Mr. Storman bragged that he would continue to offer copies of Nintendo’s games.

Mr. Storman directly profits from this infringing activity by allowing users to sign up for “Premium Memberships.” While non-members are limited to one free download through the website, premium members pay $30 per year to Mr. Storman to download an unlimited number of pirated games, and at higher speeds than non-members.

That seems to be evidence of Storman and the site participating in the infringing activity and somewhat directly profiting from it. Whatever the DMCA safe harbors protect, that ain’t it. Nintendo goes on to argue that this sort of affirmative defense is not one to be made in preliminary motions, either, making one wonder if it isn’t time for Storman to get himself some actual professional legal counsel.

Storman’s latter claim doesn’t assuage that concern. In his petition for a dismissal, Storman claims that Nintendo actually has no standing to make the infringement claim, arguing that the uploads of the game content to the site were done by those that had legally purchased copies of these games. As such, Storman claims that First Sale Doctrine makes that game code the property of the purchaser of the game, who can resell it at will without it being infringing. As Nintendo again claims in its response, nah, dawg.

The first sale doctrine does not permit mass distribution of copyrighted works, copying of the copyrighted works or distribution of those copies, or the creation and sale of derivative works based on Nintendo’s copyrighted video games. See 17 U.S.C. § 109(a) (“the owner of a particular copy [of a copyrighted work]. . . lawfully made . . . is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy.”) (emphasis added). Indeed, Mr. Storman’s actions fall well outside of the first sale doctrine. The first sale doctrine only allows an owner of a lawful copy of the copyrighted work to dispose of that individual copy.

We have argued in the past that Nintendo, and other gaming companies, should really find better routes for mitigating or even making good use of the effects of piracy…but none of that makes the company’s rebuttal to Storman’s claims any less valid and correct. These are claims made at the improper time, that don’t seem to comport with the site’s behavior, and that represent a misreading of the law. That isn’t going to be good for Storman’s legal outcome prospects.

Again, to reiterate from our last post on this matter, it’s time for Storman to go into damage control mode. And for the love of god, get some professional legal assistance.

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Companies: nintendo, romuniverse

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Comments on “Nintendo Responds To RomUniverse's Lame Argument That First Sale Doctrine Makes The Site Non-Infringing”

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17 Comments
Wendy Cockcroft (profile) says:

Proof that Techdirt is NOT anti-copyright

I wonder how our resident trolls will spin this into "TD hates copyright!"

The fact is, as described here, it only hates copyright abuse. Nintendo is clearly in the right here and ROMUniverse is going to be ground to powder.

While I’m not a mad fan of copyright, it’s good to see the law, and the spirit of the law being followed here instead of the more usual copyright bullying I’m accustomed to seeing.

JoeCool (profile) says:

Re: Proof that Techdirt is NOT anti-copyright

I’d argue they aren’t following the spirit of the law. The law originally only allowed 28 years (after the optional extension). Companies (one in particular) bought extensions until the law is now a parody of what was originally intended. Claiming to follow the "spirit" of an obscene law is still obscene.

Thad (profile) says:

Re: Re: Re:2 Proof that Techdirt is NOT anti-copyright

Cooking Mama was released in 2006.

I think it’s reasonable to assume that Nintendo would have renewed all its copyrights, if required to do so. It’s Nintendo.

While it’s true that there are a number of NES, SNES, and Game Boy games that would have been out of copyright in 2009 under a 14-year copyright term, I don’t think any of Nintendo’s would be.

Stephen T. Stone (profile) says:

Re: Re: Re:3

(For the purposes of this discussion, assume I am referring only to Nintendo’s North American releases.)

Nintendo released the NES in October 1985. Under only a 14-year copyright term, the earliest NES games released on the system would fall into the public doman is October 1999. That would include Super Mario Bros. as well as Duck Hunt, Excitebike, and Mach Rider. If Nintendo renewed that copyright for its 14 year extension (which it absolutely would have), those games would not hit the public domain until October 2013. The extended copyright for The Legend of Zelda, which Nintendo released in August 1987, would not expire until 2015. The extended copyright for the last officially licensed NES game (Wario’s Woods, December 1994) would not expire until well over two years from now (December 2022). But judging by the list of release dates on Wikipedia, yes, the overwhelming majority of the system’s 717 games would be in the public domain by now under an extended copyright scheme.

The release dates of the Game Boy (1989) and the SNES (1991), as well as the release dates of the last officially licensed games on those systems (Pokémon Yellow Version: Special Pikachu Edition, October 1999; and Frogger, October 1998, respectively) that a majority of the nearly 3,000 games across both systems would not be in the public domain by now. Only a handful of SNES games, including Super Mario World and Pilotwings, would be in the public domain by now under an extended copyright scheme.

And under that same extended copyright scheme, no games from any hardware Nintendo produced after the SNES would be in the public domain by now. Not even the Virtual Boy, the red-screened bastard child that Nintendo loves to ignore, would have any games in the public domain.

Without ROM dumping and illicit distribution of those ROMs, all of that gaming history would likely be digital dust, never to be seen again — and all because corporations decided that copyright needed to last an entire lifetime (and beyond).

Anonymous Coward says:

Re: Re:

What? Nintendo just took the entirety of the first sale doctrine and applied it wholesale to copyrighted works, rather than carve out the current exceptions for "licensed" digital copies which are usually excluded from the first sale doctrine entirely. It’s a really beneficial and expansive take on our rights, quite a bit more expansive than the current law.

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