[Editor's Note: This article originated when the Gamasutra editors noticed a number of online sources such as Wikipedia
stating that it was now completely legal to make NES 'clone' consoles,
because all of Nintendo's patents regarding the NES had expired. How
true was this statement? We asked game IP lawyer S. Gregory Boyd the
question: "Are the NES patents expired? If so, is a company free to
build and sell new NES-like systems?" Here's his response.]
particularly IP law, has a lot in common with quantum mechanics. In
both fields, answers are often given in the form of probabilities
rather than certainties. It is rare that a client can come in with a
question and receive a “yes” or “no” answer. Answers almost always
start off with “it depends” and end up talking about levels of risk and
the practical interaction of business decision making with potential
legal consequences. This short essay is a sample of one of those common
and difficult questions.
The Question – Are the NES patents expired? If so, is my company free to build and sell new NES-like systems?
is a deceptively simple inquiry. What follows in this short article is
a partial and woefully incomplete analysis of factors involved in
answering that question.
The Nintendo Entertainment System has sold over 62 million official hardware unitsworldwide since its launch.
search yields that the NES system is protected by at least the
following US utility patents, which cover the functionality of the
system: 4,687,200; 4,799,635; 5,070,479; 5,207,426; 5,426,762. In
addition, there are these design patents, which cover the system
design: D376,826; D376,795; D377,488; D379,832; D381,628; D382,868.
each of the patents above bears out several ideas. First, some of these
are expired, and some of them are not. The issue dates range from 1987
to 1995. The expiration dates show that at least one of the patents
does not expire until 2013, but at least two others are set to expire
in the next year.
a patent expiration date is complicated because the law is complicated
and changing, but a good rule of thumb is that patents that were
pending as applications in June 1995 are valid either for seventeen
years after the issue date or for twenty years after the earliest
priority date listed on the patent, whichever is longer. Patents filed
after June 1995 are generally valid for twenty years after the earliest
filing date listed on the patent. These dates are good for the most
common type of patent in the US , the utility patent. Of course, there
are separate rules that govern design patents (the patents with a “D”
before the number above). A design patent is valid for fourteen years
after the date on which it issues.
discussion above applies just to the US . What if the client considers
selling these new NES-like consoles internationally? In Canada alone,
there are at least the following patents to consider: 1,226,605;
1,270,339; 2,048,167; 77,894; 77,984; 78,658; 80,621. The complexity
does not end here.
NES Trademarks, Copyrights
about other types of IP protection, like copyright and trademark? These
types of protection are actually longer lasting than patent protection
and cheaper to apply for. A copyright registration is about thirty
dollars and a trademark registration can usually be done for a few
covers names, slogans, and phrases that designate the origin of goods.
The name “Nintendo” and “Nintendo Entertainment System” are both
federally registered trademarks in the US . A search of the trademark
office finds about forty live trademarks surrounding the word
“Nintendo.” Registered trademarks are valid as long as the fees are
paid and the mark is used in commerce. This means that the name
“Nintendo” and “Nintendo Entertainment System” have potentially
immortal IP protection. Any client wishing to build NES-like systems
should worry about this as a possible pitfall.
also has copyright registrations associated with the NES. Copyright is
not immortal, but it is cheaper to register and can last more than a
lifetime, literally. The length of copyright protection for works
created after 1978 is 95 years after publication or 120 years after
creation. This means the copyright registrations for the NES system are
valid until about 2090. Copyright also has some substantial legal
“teeth.” Under certain circumstances, it is possible for executives of
corporations to have personal liability for copyright infringement.
Statutory damages can be as much as $150,000 per instance of
infringement plus attorneys fees for egregious cases. Actual damages
can be even higher. Prison time is also possible for criminal copyright
infringement. All that power for a thirty dollar registration.
Nintendo has actually tested the power of one of its copyrights on the NES in the case, Atari Games Corp. v. Nintendo of America1.
This case was in the U.S. Court of Appeals for the Federal Circuit in
1992. The case involved Nintendo suing Atari for copyright and patent
infringement of its “10NES” cartridge authentication system. This
system is used by the NES to discern the difference between licensed
and unlicensed cartridges. The Federal Circuit upheld a judgment in
favor of Nintendo based on the copyright analysis alone. This copyright
is still valid and will be for about eighty more years. This is also
true for other Nintendo copyright registrations associated with the NES.
The PolyStation is a notable gray-market NES clone, with physical similarities to a certain Sony console.
it is clear that the answer to the question is not simple. Not all the
patents are expired, but some are and a few more will be this time next
year. The trademarks and copyrights are still valid and enforceable.
Furthermore, if past behavior is any indication, Nintendo will litigate
to protect its IP rights. On balance, making an NES-like console in the
next century appear to be a legally risky proposition.
the other hand consider the business realities. How many NES consoles
did Nintendo sell last year? Is it worth it to Nintendo to fight over
an obsolete product? These factors mitigate the business risk, but do
not remove it. In the final analysis Nintendo still has the power,
resources, and track record to come down hard on someone perceived as
infringing their IP. The more money made by an infringer, the more
worthwhile it would be for Nintendo to spend the resources to come
after them and try to collect damages.
may be possible to build an NES-like system without infringing any of
the remaining valid Nintendo IP, but the path is laden with traps for
the unwary. It is a risky proposition at best.
can game developers use this information to create better protection
for their own games? Consider the big picture. A well planned IP
strategy is a multi-layered offensive and defensive system. As
discussed above, the parts compliment each other and work together to
protect core product.
yields three useful points for game developers today. First, patents
are just the beginning of an IP analysis. They are a critical portion
of IP protection for any game company, but they are not the sole
protection available. Second, stay well-clear of another company's' IP
to minimize the risk of litigation. Your company may be operating
outside patent coverage, but what about trademark and copyright?
Finally, after developing new IP, consider and use every possible form
of IP protection available given your company's resources. Patents are
resource intensive, but trademark and copyright registration are also
important and available for a much smaller investment. The
multi-faceted and thorny protections of IP law can be just as powerful
for your company as they are for Nintendo.
1975 F.2d 832 (Fed. Cir. 1992)
information contained in this article is for general information
purposes only and should not be construed as legal advice. The opinions
are the author's alone and do not represent the opinions of Kenyon
& Kenyon or those of its clients. The author gratefully
acknowledges the assistance of attorneys Gary Morris and Jude Thomas of
Kenyon & Kenyon in the preparation of this article.]