Super Mario Bros.: An Appreciation (Best Of)
By David A. Boag, BOAG | LAW, PLLC
In December 1986 I unwrapped a birthday gift, fully aware of what was inside. The 8-bit Nintendo system—the gray box that came packaged with Super Mario Brothers and Duck Hunt—was the hottest thing going and it was my turn.
More than a game system, the original NES offers a primer on the forms of IP and a lesson in intellectual property management. Nintendo’s solid IP strategy has been paying off now for decades.
As an example, let’s take a look at the NES and its star title, Super Mario Bros.
Copyright protects an original work of authorship—music, a video, a graphic, source code, and object code—so there’s a lot of copyright here. Copyright might be what gives Nintendo the most leverage to protect its creations—the iconic musical score, the pixelated graphic of Mario himself, the game packaging, and even the source code. These are all protected for a generous 95 years from publication or 120 years from creation, whichever expires first.
This means that if Super Mario made his home debut in the mid 1980s, the data stored on the cartridges is protected and cannot lawfully be copied through the 2080s—even if it’s transferred to another medium. Companies that once turned a blind eye to online trading of vintage game ROMs have become more aggressive as they target the nostalgia market with their own emulators and services.
The Nintendo legal team made sure to register their key copyrights as well, a step that isn’t required but is inexpensive (currently $45), places the public on notice of your claim, and is a predicate to enforcement in federal court. It also opens the door to recovering statutory damages from infringers, which can range from $750-$30,000 per work infringed, and up to $150,000 where the infringement was willful.
As the creators of the Flappy Bird games learned, being inspired by or borrowing content from an existing work presents risks, even where the copyright is 30 years old and the amount borrowed is marginal.
The owner of a utility patent has right to exclude others from making, using, selling, offering for sale or importing the covered product for 20 years from filing (or for older patents like these, the longer of 20 years from filing or 17 years from issuance).
The Nintendo legal team pursued a strategy of applying for patents to protect the system from copycats and to close off the market for games produced by unlicensed developers.
For example, Nintendo secured a patent on the game cartridge itself, the front loading mechanism, and the lockout chip that confirmed the authenticity of a cartridge inserted into the system. The D-pad on the controller was protected, as was the ability to select one of multiple games stored on a cartridge, like the joint Super Mario Bros./Duck Hunt cartridge.
Anyone looking to develop a game for the system would need to purchase a license from Nintendo to access the cartridge and lockout technology or run the risk of a patent infringement claim. Designing around a patent is an option, but in addition to being complex and expensive, there might still have been no way to guarantee compatibility. The same is true for the controller technology—take a license from Nintendo or design your own.
Design patents cover the aesthetics (i.e., shape, texture, appearance) of an article and give the owner the right to exclude from the market any designs that are substantially similar to the patented design. A design patent issued in the 1980s would have had a 14-year term (15 now) from issuance and cover designs that are substantially similar to the claimed design. A design patent is generally easier to get than a utility patent, and also less costly.
The design patents have all long expired, and most of the utility patents lapsed in the early 2000s. While Nintendo no longer had exclusive rights in its lockout chip and cartridge, it had something else to ward off emulator makers. Enter the trademark.
A trademark acts as an indicator of the source of a product, and precludes others from using a similar mark on related goods or services. Like luggage, you can hold onto trademark rights in perpetuity—provided that you use the trademark more or less continuously and meet all renewal deadlines.
Federal registration of a trademark isn’t required, but it’s advisable. It gives the owner national rights in the trademark, the right to use the (R), the right to sue infringers in federal court and obtain damages, potentially including the infringer’s profits, and a spot in the database used by examiners when examining new applications.
Nintendo the brand has been a registered trademark since 1980, as a word, and the iconic mid-1980s logo. Nintendo was also file for federal registration of their trademark rights in Super Mario Brothers (among other titles like Excitebike and Legend of Zelda), as well as stuffed toys, action figures, and the like.
The design of the system and controller are well known and associated with Nintendo to the point that they each function as trademark in their own right. “Secondary meaning” like this is required to claim rights in a product’s design. An emulator copying these designs would likely infringe Nintendo’s trademark rights so even with the patents long expired, Nintendo is still able to maintain its hold over the system.
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Decisions that Nintendo made more than 30 years ago continue to reap benefits for the company as Super Mario and friends are introduced to yet another generation.
Best Of: A series of posts an articles from the archive that we still enjoy and are still relevant.