Nintendo Says “Game Over” in Trademark Suit

[Len]

Nintendo of America Inc. has a well-established stance against the infringement of its parent company’s intellectual property, and on July 19, 2018, the company filed suit against the owner of two websites that trafficked exclusively in infringing material. Jacob Mathias, the owner of Mathias Designs, L.L.C., is alleged to be the owner and operator of the websites www.LoveROMs.com and www.LoveRETRO.co, both of which played host to a number of Nintendo’s intellectual property. Since initiating the lawsuit, Nintendo of America Inc. has amended its complaint to add as a party Cristian Mathias, Jacob Mathias’ wife.

In its complaint, Nintendo of America Inc. alleges that the Defendants’ websites have reproduced, distributed, publicly performed, and displayed thousands of video games for past Nintendo systems without permission. Starting around 2010, Defendants began posting instructional videos on how to download and use copies of Nintendo’s video games from their websites. The Defendants also violated Nintendo’s other copyrighted works like music and audio. Finally, Nintendo of America Inc. alleges the Defendants prominently displayed Nintendo’s registered trademarks on their websites in order to capitalize on Nintendo’s reputation and mislead consumers. Registered marks such as Nintendo’s logo and popular characters were used in order to promote the website and increase traffic. While offering access to the video game files for no cost, the Defendants made a profit from the websites by seeking donations and selling advertising space.

The websites, which were both shut down shortly after the complaint was filed, provided consumers access to Read Only Memory files or images, more commonly known as ROMs. When accessing these files through an emulation program, one is able to mimic the functionality of a physical video game system. The websites hosted a large library of ROMs, including over a thousand Nintendo video games. The titles ranged from those released on the original Nintendo Entertainment System (NES), which have been recently re-released in an updated model, to modern systems like the Nintendo 3DS and Nintendo Switch.

In terms of relief, Nintendo of America Inc. is seeking compensatory and enhanced damages, along with statutory damages of up to $150,000 for each infringed copyrighted work and up to $2,000,000 for each infringed Nintendo mark. According to the complaint, the Defendants infringed over 100 copyrighted works and 40 trademarks, so theoretically the damages could reach over $100,000,000. Nintendo of America Inc. is also seeking a permanent injunction against the Defendants to cease all infringing activity. Finally, in what seems in line with Nintendo’s strong stance against piracy and infringing activity, it is demanding the Defendants “identify every one of [their] suppliers and sources of unauthorized copies of Nintendo’s copyrighted works.”

At this time, the case against Jacob and Cristian Mathias and Mathias Designs, L.L.C. is pending in the U.S. District Court of Arizona. The complaint has been served upon the Defendants, and a formal response is still forthcoming. As previously noted, however, both websites in question have been shut down.

Nintendo of America Inc. has a self-proclaimed aggressive stance regarding the use of ROMs and emulators to violate its intellectual property. A portion of its website is dedicated to laying out its position in detail and for the reporting of violations such as the websites the Defendants ran.