Nintendogs, Patents, and How the System is Lacking

by Micah Kindred, Associate Member, University of Cincinnati Law Review Vol. 91

I. Introduction

Those who grew up playing on their GameBoys or Nintendo DSes probably remember the game Nintendogs. Nintendo’s newest patent hints that a Nintendogs revival may be on the horizon.¹ This patent, dated January 17, 2023, is focused on augmented reality.² In the examples given in the patent, a user on a smartphone would be able to place a virtual dog into a real environment through the lens of the smartphone’s camera.³ These examples seem to be a nod to Nintendo’s old Nintendogs game, and fans of the game are getting excited that a smartphone app version of the game may be coming.⁴ Even though this patent may bring a lot of people back to their childhood and provide a fun experience for many users, it also illustrates a major issue in intellectual property law: the lack of sufficient protection for software. Instead of Nintendo fully protecting the new version of the game, the company had to focus the patent on a specific technical element of the game, which may not protect everything the company hoped.⁵

This article will discuss the lack of protection that United States (“U.S.”) intellectual property law provides for software and potential remedies using the Nintendogs game as a case study. Part II will provide background on current intellectual property protections. Part III will discuss how current intellectual property protections apply to software and potential ways to protect software in the future. Part IV concludes with suggestions on how the U.S. could improve intellectual property protections for software.

II. Background

Intellectual property is a critical part of innovation in the U.S., and it includes copyrights, patents, and trade secrets.⁶ This type of law gives a person or persons the control over “creations of their minds.”⁷ Each type of intellectual property has its own individual purpose.⁸ Software creators may use these intellectual property protections in an attempt to protect their creations, but none are totally sufficient.

A. Copyrights

Copyrights protect “original works of authorship as soon as an author fixes the work in a tangible form of expression.”⁹ In this context, “original” means “independently created by a human author and have a minimal degree of creativity.” ¹⁰ “Fixed” means “captured (either by or under the authority of an author) in a sufficiently permanent medium such that the work can be perceived, reproduced, or communicated for more than a short time.”¹¹ Another key limitation on copyright protection is that copyrights only protect the expression of a work, not the idea itself.¹² Works protected by copyright typically include “paintings, photographs, illustrations, musical compositions, sound recordings, computer programs, books, poems, blog posts, movies, architectural works, plays,” and more.¹³

Copyrights provide the owner protection against others making copies of the copyrighted work, creating derivative works from the copyrighted work, distributing copies of the work to the public, performing the work publicly if possible, and displaying the work publicly if possible.¹⁴ The copyright owner has the power to allow others to do these things, but the right to do these things falls solely with the copyright owner.¹⁵ This protection generally lasts for the “life of the author plus seventy years after the author’s death” if the copyright was created on or before January 1, 1978.¹⁶

B. Patents

Patents are generally used to protect inventions. ¹⁷ Inventions are the “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” ¹⁸ There are some exclusions for what can be patented in the U.S.¹⁹ These exclusions include: “abstract ideas, laws of nature, and natural phenomenon.”²⁰ In the U.S., patents grant the patent holder “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.²¹

The term of U.S. patents is “20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees.”²² There are three types of patents: utility patents, design patents, and plant patents.²³ Utility patents can be granted to “anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.”²⁴ Design patents can be granted to “anyone who invents a new, original, and ornamental design for an article of manufacture.”²⁵ Plant patents can be granted to “anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.”²⁶

C. Trade Secrets

Trade secrets protect “confidential information which may be sold or licensed.”²⁷ Confidential information is “information that has either actual or potential independent economic value by virtue of not being generally known, has value to others who cannot legitimately obtain the information, and is subject to reasonable efforts to maintain its secrecy.”²⁸ Trade secret protection does not expire like other forms of intellectual property security.²⁹ Trade secret protection prevents the misappropriation or theft of trade secrets; however, competitors are allowed to use reverse engineering or other ways of discovering trade secrets without misappropriation or theft.³⁰

III. Discussion

Although there are many types of protection for intellectual property, there are no perfect options for software, as it does not fall seamlessly into any one type of intellectual property. Software can be somewhat protected under copyrights, patents, and trade secrets, but none provide sufficient protection.³¹

A. Copyrights

The Copyright Act, 17 U.S.C. § 101 considers computer programs literary works.³² Therefore, computer programs can be copyrighted.³³ While computer programs can technically be copyrighted, copyright only protects exact copying and derivative works that use significant portions of the code.³⁴ Copyrighting software gives the copyright holder the sole right to “make copies of the software code, sell or give away the code, make a ‘derivative work,’ which is a second software that uses a lot of the original code, and post the code somewhere, or otherwise display it.”³⁵

Copyright may seem like an effective way to protect software, but it provides very little protection for software. Copyright only protects the expression, so for software this means only the exact way the software is written, meaning the code in its exact or extremely similar form.³⁶ This leaves a lot of room for copying a work that does not fall under violation of copyright law. Luckily, directly translating the code from the original programming language to another is considered a derivative work and is a violation of copyright law.³⁷ However, “anything that is very short or provides only functional capabilities would not be considered copyrightable.”³⁸ This means any functional piece of code is not copyrightable. That can make figuring out what can and cannot be used from copyrighted code a complicated endeavor.

In Nintendo’s case, a copyright could protect the depictions of the dogs in the Nintendogs game, the game’s user interface, or even the code behind the game itself. However, copyright offers limited protection. Even if Nintendo copyrighted everything listed above, others could still recreate the game significantly. Someone could create their own drawings for the dogs, a slightly different user interface, and write the code themselves in a different way and all while not violating Nintendo’s copyrights. Essentially, copyrights protect some of the technical functions of the software, but not the idea itself. This is just one example of how copyrights are not enough to protect software intellectual property.

Beyond that, to prove copyright infringement, the copyright holder must prove that the infringer had access to the software.³⁹ Independent creations do not infringe copyrights because the entire purpose of copyright is to prevent copying.⁴⁰ If someone has never had access to the copyrighted work, they cannot infringe the copyright.⁴¹ For software, this element can make the option to copyright software unhelpful.⁴² Many software companies are very strict about who has access to the software code, so the likelihood of someone accessing the code and then copying it is slim.⁴³ Because of this, copyrighting software is often not a useful means of protection.⁴⁴

One important caveat to this is that if “non-literal” elements of the software are copied and were accessed by the infringer, the copyright is still infringed.⁴⁵ Non-literal elements are the elements of a computer program besides the code itself, like “structure, sequence, organization, screen displays, menu structures and user interfaces.”⁴⁶ This means that even if the code is not directly copied, but the look the copyrighted code creates, like the user interface, is copied and was seen by the infringer, then the infringer still infringes the copyright. Even with this caveat, proving copyright infringement for software can be difficult, and it does not actually protect the functional elements of the software. So, a copyright does not fully protect software and thus, is an insufficient option.

B. Patents

Software can be patentable, dependent on a couple factors: “(1) if it improves computer functionality in some way (i.e. it enables certain computations that were previously unavailable, speeds up processes, or requires fewer resources), or (2) if it solves a computing challenge in an unconventional way.”⁴⁷ If the software satisfies both of these factors, it may be patentable; thus, the way a software patent application is written is incredibly important.⁴⁸ If the patent application focuses on a specific way to solve a computer-related issue rather than the benefit the solution provides, the application is more likely to be patentable.⁴⁹

Patents also take a relatively long time to be granted.⁵⁰ This is especially true for software patents.⁵¹ Software patents can stay pending for three to five years or sometimes even longer.⁵² This can cause problems when it comes to protecting software with patents, since software innovation is incredibly fast.⁵³ The rate at which software innovation occurs makes getting a patent on software often useless. New software and the features of it “have an effective commercial life of only a few years,” and after that short time, new software has typically entered the arena and rendered prior inventions “obsolete.”⁵⁴ This means that often the software being patented is not in use anymore by the time the patent is granted.⁵⁵ Between the nuances required for software to be patentable and the significant difference in the rate at which software is innovated and patents are issued, patents are not a sufficient option for protecting software either.

In Nintendo’s case, the patent protects a very specific piece of the Nintendogs game: the augmented reality development that Nintendo created.⁵⁶ The patent does not cover the code behind the game except for the pieces of code that create the augmented reality function. The patent provides broad protection for the augmented reality element of the game, but that element is a relatively narrow part of the game. This is common with software patents, as they often provide broad protection for a narrow piece of what the developers actually created. This is just one example of how copyrights are not enough to protect software intellectual property.

C. Trade Secrets

Software can be somewhat protected as a trade secret; however, it can be difficult to actually maintain software as a trade secret.⁵⁷ First, for software to be a trade secret, the owner of the trade secret must take “reasonable measures” to keep the software secret.⁵⁸ This can include “keep[ing] the software away from the public,” “hav[ing] employees sign non-disclosure agreements,” “hav[ing] employees sign non-compete agreements,” “do[ing] exit interviews with employees who are leaving to make sure they aren’t bringing IP with them,” and “investigat[ing] any suspicious employee activity.”⁵⁹ Companies have to be stringent on this protection to ensure it sticks.⁶⁰ If someone can openly access the software, a trade secret likely will not protect the software.⁶¹ Most importantly, the trade secret approach does not protect against reverse engineering, a method of taking apart a finished product to determine how it is created, or any other discovery by fair and honest means.⁶² So, a trade secret does not present a good option to protect software because it allows reverse engineering and requires significant steps to ensure the secrecy of the software that may not be feasible.

For Nintendo, a trade secret would be an extremely risky way to protect the Nintendogs software. While Nintendo likely has the resources to protect a trade secret, Nintendo would have to keep all of the code for the game from the public to fully protect it. Nintendogs is a game meant for consumers, so, it would be bad business for Nintendo to take significant measures to attempt to keep the code away from all of the consumers that may want to play the game in order to protect the trade secret. Beyond that, if Nintendo fails, the company loses every aspect of the game it could have otherwise protected. That is a risk most companies and creators likely will not want to take; so, a trade secret is not the perfect solution to protect software either.

V. Conclusion

Intellectual property protections for software in the U.S. are lacking. While copyright, patent, and trade secret law provide some form of protection for software, none of them are sufficient to meaningfully protect software. Copyright does not protect functional elements of software. Patents take too long to be granted, so they do not provide protection in an appropriate time frame. Trade secrets require stringent standards of protection and leave significant gaps in the protection of software.

There are a few ways the U.S. could create better protections for software. The best option would likely be to create an additional type of patent like design and plant patents that were expedited to meet demands, have a shorter term than traditional patents, and exclusively tailored for software related patents such that they include protection for user interface elements as well. This type of patent could reflect a combination of utility and design patents, which would allow software creators to protect the functional elements of their creations in a timely manner. However, this type of patent would likely be expensive because of the quick turnaround. Software companies would have to weigh the costs associated with getting the patent and protecting their unique program.

This type of patent would allow software companies and developers to fully protect their inventions. For example, Nintendo could potentially protect the entire Nintendog’s game. This protection would cover all innovative pieces of the game like the user interface, the augmented reality code, and all other potentially innovative ideas incorporated into the code that may not be worth the expense of an entire patent on their own.

Protecting software related intellectual property is a complicated issue. Our current protections do not protect software in a way that is sustainable or sufficient. Creating a new type of intellectual property protection for software specifically is likely one of the only ways to protect software in a way that is timely and complete. This probably will not occur any time soon, but with society’s newfound reliance on software, more complete protection is necessary.

Cover Photo by Rob Hampson on Unsplash

Micah Kindred

Micah Kindred graduated from the University of Louisville in 2021 with a degree in Computer Science and Engineering with a minor in Business Management. Micah spent her undergraduate co-ops working in software development, enterprise architecture, and data science. Micah hopes to pursue a career in patent and corporate law after law school.

References

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I. Introduction

II. Background

A. Copyrights

B. Patents

C. Trade Secrets

III. Discussion

A. Copyrights

B. Patents

C. Trade Secrets

V. Conclusion

Author

References