Cite as 203 F.3d 596 (9th Cir. 2000)
cluded that Sony was likely to succeed on its infringement claim because Connectix’s “intermediate copying” was not a protected “fair use” under 17 U.S.C. § 107. The district court enjoined Connectix from selling the Virtual Game Station or from copying or using the Sony BIOS code in the development of other Virtual Game Station products.
Connectix now appeals. We reverse and remand with instruction to dissolve the injunction. The intermediate copies made and used by Connectix during the course of its reverse engineering of the Sony BIOS were protected fair use, necessary to permit Connectix to make its non-infringing Virtual Game Station function with PlayStation games. Any other intermediate copies made by Connectix do not support injunctive relief, even if those copies were infringing.
The district court also found that Sony is likely to prevail on its claim that Connectix’s sale of the Virtual Game Station program tarnishes the Sony PlayStation mark under 15 U.S.C. § 1125. We reverse that ruling as well.
I. Background
- A. The products
Sony is the developer, manufacturer and distributor of both the Sony PlayStation and Sony PlayStation games. Sony also licenses other companies to make games that can play on the PlayStation. The PlayStation system consists of a console (essentially a mini-computer), controllers, and software that produce a three-dimensional game for play on a television set. The PlayStation games are CDs that load into the top of the console. The PlayStation console contains both (1) hardware components and (2) software known as firmware that is written onto a read-only memory (ROM) chip. The firmware is the Sony BIOS. Sony has a copyright on the BIOS. It has claimed no patent relevant to this proceeding on any component of the PlayStation. PlayStation is a registered trademark of Sony.
Connectix’s Virtual Game Station is software that “emulates” the functioning of the PlayStation console. That is, a consumer can load the Virtual Game Station software onto a computer, load a PlayStation game into the computer’s CD–ROM drive, and play the PlayStation game. The Virtual Game Station software thus emulates both the hardware and firmware components of the Sony console. The Virtual Game Station does not play PlayStation games as well as Sony’s PlayStation does. At the time of the injunction, Connectix had marketed its Virtual Game Station for Macintosh computer systems but had not yet completed Virtual Game Station software for Windows.
- B. Reverse engineering
Copyrighted software ordinarily contains both copyrighted and unprotected or functional elements. Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510, 1520 (9th Cir.1992) (amended opinion); see 17 U.S.C. § 102(b) (Copyright protection does not extend to any “idea, procedure, process, system, method of operation, concept, principle, or discovery” embodied in the copyrighted work.). Software engineers designing a product that must be compatible with a copyrighted product frequently must “reverse engineer” the copyrighted product to gain access to the functional elements of the copyrighted product. See Andrew Johnson-Laird, Software Reverse Engineering in the Real World, 19 U. Dayton L.Rev. 843, 845–46 (1994).
Reverse engineering encompasses several methods of gaining access to the functional elements of a software program. They include (1) reading about the program; (2) observing “the program in operation by using it on a computer;” (3) performing a “static examination of the individual computer instructions contained within the program;” and (4) performing a “dynamic examination of the individual computer instructions as the program is being run on a computer.” Id. at 846.
