HQ 471202 - Ruling Request as to infringing status of "GB Flash Advance Linker" device; Protected work: “Game Boy Advance” hand-held electronic LCD game manufactured by Nintendo, Inc.; Protected Right: "Game Boy Advance Boot Code", U.S. Copyright Office Registration No. TX 5-222-753, owned by Nintendo of America, Inc; 17 U.S.C. § 1201; Digital Millennium Copyright Act; Circumvention of technological measures which effectively control access to a work. - United States International Trade Commision Rulings

United States International Trade Commision Rulings And Harmonized Tariff Schedule

faqs.org Rulings By Number Rulings By Category Tariff Numbers

faqs.org > Rulings and Tariffs Home > Rulings By Number > 2002 HQ Rulings > HQ 229414 - HQ 547435 > HQ 471202

Previous Ruling Next Ruling
HQ 471202

December 20, 2001

ENF 4-02-RR:IT:IP 471202 GFM

CATEGORY: COPYRIGHT

Jodi M. Daugherty
Director, Anti-Piracy
Nintendo of America, Inc.
4820 50th Avenue NE
Redmond WA 98052

RE: Ruling Request as to infringing status of "GB Flash Advance Linker" device; Protected work: “Game Boy Advance” hand-held electronic LCD game manufactured by Nintendo, Inc.; Protected Right: "Game Boy Advance Boot Code", U.S. Copyright Office Registration No. TX 5-222-753, owned by Nintendo of America, Inc; 17 U.S.C. § 1201; Digital Millennium Copyright Act; Circumvention of technological measures which effectively control access to a work.

Dear Ms. Daugherty:

This is in reply to your letter dated June 19, 2001, in which you request a Headquarters ruling as to whether the above-referenced device constitutes a violation of Section 1201 of Title 17, United States Code, also known as the Digital Millennium Copyright Act.

FACTS:

Nintendo of America (the copyright owner, and ruling requestor) is the North American headquarters for Nintendo Co., Ltd., of Kyoto, Japan. Nintendo is one of the leading entities in the interactive entertainment market. In June 2001, Nintendo released its "Game Boy Advance" product in the United States. The "Game Boy" product line ("Game Boy", "Game Boy Pocket", "Game Boy Color" and "Game Boy Advance") includes all of Ninthendo's portable game hardware systems. Authorized software for all "Game Boy" systems is manufactured by Nintendo solely in cartridge format. These cartridges contain computer programs and data stored in "Read Only Memory" (ROM) chips affixed to printed circuit boards which are inserted into slots in the hardware unit in order to enable play.

The security systems resident in the "Game Boy Advance", like all "Game Boy" systems, operates under the same basic principles. That is, each authorized "Game Boy Advance" cartridge contains a password or unlocking data, protected by copyright, which is identified by the Boot Code software, which then causes the Nintendo logo to be displayed on the screen. "Game Boy Advance" will not operate unless it receives this data from the inserted cartridge.

Subsequent to the very successful release of the "Game Boy Advance", a device known as the "GB Flash Advance Linker" came upon the market. Nintendo alleges that this "GB Flash Advance Linker" constitutes a violation of the Digital Millennium Copyright Act due to the fact that the "GB Flash Advance Linker" allows users to bypass "Game Boy Advance" access restrictions, allows for illegal copying in contravention of the copyright owner's reproduction rights, and allows for the playing of illegal software. Each of these bases, Nintendo claims, is sufficient to prevent the importation of the "GB Flash Advance Linker" on the grounds that the device violates Section 1201 of Title 17, United States Code.

ISSUE: Whether the subject “GB Flash Advance Linker" constitutes a violation of the Digital Millennium Copyright Act.

LAW AND ANALYSIS:

In the instant case, the question before us deviates somewhat from the more traditional cases involving Customs copyright infringement enforcement in that the subject question involves application of certain provisions of the Digitial Millennium Copyright Act (17 U.S.C. § 1201) (hereinafter DMCA). That is, Customs here is providing administrative enforcement not on the basis of whether one work is "substantially similar" to another, but rather, on those provisions of the Copyright Act of 1976 that address "circumvention" which the DMCA was promulgated to address. Regardless, the question presented is whether a particular device constitutes an infringement of law under Title 17, U.S. Code.

The role of Customs in issuing substantive decisions of copyright infringement as to imported merchandise was addressed in The Miss America Organization v. Mattel, Inc., 945 F.2d 536 (2d Cir. 1991). Citing section 603 of the Copyright Act of 1976 (17 U.S.C. § 603), the court recognized Customs authority to enforce the provisions of the law prohibiting importations of infringing goods. Id. at 538.

Also, the court acknowledged that as a result of its duties, Customs has developed expertise in determining whether merchandise does or does not infringe. Id. at 539. Further, the court stated that since sections 602 and 603 (17 U.S.C. §§ 602, 603) direct the Secretary of the Treasury to enact regulations to aid in combating copyright infringement, it is implicit in these directions that the agency (Customs) would be involved in making infringement determinations. Id. at 541. Therefore, because the Treasury Department has been assigned the duty to enforce the copyright laws in cases where there is a reason to believe infringement exists with regard to an imported item, it follows that it is within Customs jurisdiction to take appropriate action to fulfill this duty. Id. at 542.

Further, Customs has some independence and autonomy in making infringement determinations regarding imported merchandise. Id. at 544. Accordingly, as the court stated, there is no reason to enjoin Customs from performing its statutory duties so long as the agency proceeds in conformity with the statutory scheme. Id.

In substantive part, the DMCA implements two intellectual property treaties drafted by the World Intellectual Property Organization (WIPO), the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, which were both executed in Geneva, Switzerland in December 1996. Each treaty requires contracting parties to (1) provide "adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention" and (2) restrict acts, relative to such works, "which are not authorized by the authors concerned or permitted by law."

On October 28, 1998, in order to implement the World Intellectual Property Organization Copyright Treaty and the Performances and Phonograms Treaty, the United States Congress amended Title 17, United States Code, by approving H.R. 2281, a.k.a. the "Digital Millennium Copyright Act" (hereinafter "DMCA").

Among the numerous forms of infringement the DMCA was designed to address, is that form of copyright infringement known as "circumvention of technological measures which effectively control access to a work." These provisions are located at 17 U.S.C. § 1201.

Specifically, 17 U.S.C. § 1201(b) reads:

"(b) Additional Violations.--(1) No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof that--

(A) is primarily designed or produced for the purpose of circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof;

(B) has only limited commercially significant purpose or use other than to circumvent protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof; or

(C) is marketed by that person or another acting in concert with that person with that person's knowledge for use in circumventing protection afforded by a technological measure that effectively protects a right of copyright under this title in a work or a portion thereof."

According to the requestor's submission, the "GB Flash Advance Linker" is sold with three separate components: the "GB Flash Advance Linker" device itself, a 64-MB RAM (random access memory) cartridge, and a PC floppy disk containing pre-programmed software, which is solely used to provide Nintendo copyright boot-up code.

According to one website where the GB Flash Advance Linker is offered for sale (www.visoly.com), the device can be used in two ways, as follows:

"Reading out game ROM data ("dumping"): Once your original GBA game has been plugged into the Flash Advance Linker, you can use the provided software to read out the ROM data and save it to our local PC hard drive as a so-called ROM file. The Flash Advance Linker also lets you read out the save-game to store it in an extra file--you
won't use any game data, (e.g. when the battery in your original GBA games gets empty).

"Sending ROM files to your empty cartridge (Flash Advance 64M): Simply use the provided software to open the ROM file from your hard drive, it will then send the data through the printer port to the Flash Advance Linker, which will store the data in the cartridge..."

Requestor alleges that the "GB Flash Advance Linker" violates the DMCA, which makes illegal the importation of devices which circumvent access control technology, on four grounds:

(1) the floppy disk which is provided as part of the "GB Flash Advance Linker" has no function other than to bypass the "Game Boy Advance" access restrictions, and therefore meets the statutory requirements of 17 U.S.C. § 1201(b)(1)(A);

(2) the "GB Flash Advance Linker" illegally copies Nintendo's Game Boy Advance video game data from its cartridge format to a flash memory cartridge (Flash 64M RAM card, distributed with the "GB Flash Advance Linker" device, in contravention of 17 U.S.C. § 1201(b)(1)(A));

(3) the "GB Flash Advance Linker" illegally copies Nintendo's "Game Boy Advance" video game data from its cartridge format directly to a PC hard drive, using the printer port connection of the "GB Flash Advance Linker", from whence it can be uploaded to the internet for unlimited copying, in contravention of 17 U.S.C. § 1201(b)(1)(A); and

(4) the "GB Flash Advance Linker" is also primarily designed to circumvent technological protections, and has only the most limited commercially significant purpose other than to circumvent protections, in contravention of 17 U.S.C. § 1201(b)(1)(B).

In evaluating the claims of the requestor, Customs Office of Laboratory & Scientific Services (OLSS) analyzed a sample of the "GB Flash Advance Linker" which was provided by the requestor. In its report dated October 31, 2001, Customs OLSS in San Francisco issued Laboratory Report # SF20011080. In pertinent part, that report states:

The sample consists of a "Flash Advance Linker" device, "Flash Advance 64M Card, memory card, floppy disk, and a cable. This floppy disk contains files one of which is an executable file to operate with the device and memory card...Laboratory analysis found [that] the "Flash Advance Linker" device [when used] in conjunction with the memory card, allows a user to make copies of authentic Nintendo "Game Boy Advance" games. The Flash Advance device downloads authentic Nintendo "Game Boy Advance" games to a personal computer, then uploads these games to memory cards, such as [the] "Flash Advance 64M Card." These memory cards or cartridges containing unauthorized game copies along with Nintendo's copyrighted "boot code", can be inserted into a genuine "Game Boy Advance" player. The player must receive this "boot code" from the inserted cartridge before it will operate. After insertion, the registered "Nintendo" trademark is then displayed...By copying the boot code, the "GB Flash Advance Linker" circumvents technological measures..."

In sum, Customs Laboratory Report SF20010180 recognizes violations on each of the grounds cited by the requestor.

In evaluating this case, Customs also takes notice of the judgment entered in the Central District of California on December 14, 1999 in the case of Nintendo of America, Inc. v. Bung Enterprises, Ltd., (Case No. 97-8511-GAF VAPx)(hereinafter, Bung). In Bung, at issue were a number of similar devices which Nintendo alleged constituted violations of the DMCA. One item in particular, the "Doctor GB Xchanger", according to requestor, is a device which is substantially similar in design and function as the the "GB Flash Advance Linker" with the only difference being that the "Doctor GB Xchanger" was designed to circumvent access control technologies resident on the original Nintendo "Game Boy" device, while the "GB Flash Advance Linker" is specifically designed to circumvent access control technologies resident in the next-generation Nintendo "Game Boy Advance" device.

In issuing its permanent injunction enjoining the defendant from selling, manufacturing, importing, etc. the "Doctor GB Xchanger", U.S. District Court Judge Feess noted that:

"the DOCTOR GB Xchanger [is] clearly "designed or produced for the purpose or use in circumventing that protection in violation of the express provisions of the DMCA...Since [the] device [does not] have a library of software or compiler programs necessary for game design, and could not reasonably be used for that purpose even if they did, [its] only commercially significant purpose is to allow purchasers to infringe Nintendo's copyrights through unauthorized copying or playing pirated Nintendo games." Based upon the analysis of our internal laboratory's testing of the suspect device, a comparative evaluation of the design and function of the "DOCTOR GB Xchanger" and the "GB Flash Advance Linker", and in recognition of the holding in Bung, as enunciated above, we find that the "GB Flash Advance Linker" constitutes a violation of the DMCA on each of the grounds claimed by the requestor.

HOLDING:

The subject "GB Flash Advance Linker" constitutes a violation of 17 U.S.C. § 1201(b) and, if imported, would properly be subject to seizure under 19 U.S.C § 1595a(c)(2)(C) for a violation of 17 U.S.C. § 1201.

Sincerely,

Joanne Roman Stump, Chief

Previous Ruling Next Ruling