By Ellen M. Zavian, Esquire, with Lauryn Robinson, GW Law, 2L
If it is too good to be true, then it probably is… illegal. This is exactly what gaming company team-executor, Sergio Moreno, found out the hard way. In 2018, his company, Offer-Up, enabled hundreds of users to play their favorite Nintendo games for free or at a reduced cost.
In March of 2017, Nintendo of America (“Nintendo”) released the Nintendo Switch, a multifunctional video game system designed to be used at home or on-the-go. Users can purchase games online or insert an authorized game cartridge (“Nintendo Switch Game Card”) into the Nintendo Switch device. Either way, the Switch costs at least $300 and the cartridges start at $50. A hefty price for any gamer!
So it is no wonder why gamers flocked to Offer-Up for a free version of the Nintendo games. Since the pirated games attracted hundreds of users, it is no surprise that this illegal behavior was on Nintendo’s radar screen. In response, Nintendo filed suit against Moreno for copyright and trademark infringement on Dec. 11, 2018 in the United States District Court, Central District of California, Southern Division.
Nintendo claims Moreno committed various counts of copyright and trademark infringement. By alleging that “defendants modifications are (a) designed or produced for the primary purpose of circumventing technological measures that control access to works protected by Nintendo’s copyrights or that protect Nintendo’s copyrights as a copyright owner; (b) have no commercially significant purpose or use other than to circumvent a technological measure that control access to a copyrighted work and (c) marketed by the Defendant with knowing of its use to circumvent, therefore in violation of 17 U.S. §§102(a)(1), 1201(a)(2) and 1201(b).”
In sum, Nintendo believed Moreno circumvented Nintendo’s copyrights to sell and distribute gaming cartridges loaded with pirated games. In practice, fraudulent cartridges sold online through sites such as Offer-Up would come with four to six Nintendo Switch games of the player’s choice. The online site would also include photos and detailed descriptions of the modification along with directions for game console installation.
About two weeks following the filing of the Complaint (Dec. 20, 2019), Nintendo filed a motion for permanent Injunction against Moreno.
It did not take long for the Court to rule in Nintendo’s favor (Dec. 30, 2019), ruling that Moreno and any other accomplice(s) were guilty of copyright and trademark infringement and were prohibited from selling, distributing, and marketing any games bearing the Nintendo copyright. The Court further required Moreno to certify a written letter to Nintendo stating he no longer possessed any hardware or software owned by Nintendo. With compliance, Moreno would not have to pay any fines for his activity.
This is not the first time Nintendo sought to protect its intellectual property and won. In September of 2018, Nintendo obtained a court order from the United Kington High Court that required UK Internet Service Providers to block access to websites that allowed piracy on the Nintendo Switch.
As the gaming industry matures, and billions of dollars flow in, closing down these types of pirate operations will become a game of ‘whac-a-mole’. And while users would love to play unlimited games for free, they know that beloved characters like Mario and Donkey Kong need to protect their images too!
