Sony v. Connectix: Reverse Engineering as Fair Use

Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000), is one of the pillars of the American rule that reverse engineering software can be fair use. Connectix built the Virtual Game Station, a software emulator that let owners play Sony PlayStation games on an ordinary personal computer. To do it, its engineers had to understand Sony’s copyrighted BIOS — the firmware that boots the console — and understanding it required copying and disassembling it many times over. Sony sued and won a preliminary injunction. The Ninth Circuit reversed, holding that Connectix’s intermediate copying was a fair use because it was a necessary means of reaching the unprotected functional elements of the BIOS in order to create a new, transformative, and non-infringing product. The decision, decided the same year the courts were wrestling with Napster, secured breathing room for interoperability and competitive emulation.

At a glance

• Case: Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000)
• Court: United States Court of Appeals for the Ninth Circuit, reversing a preliminary injunction from the Northern District of California
• Decided: February 10, 2000
• Opinion: Circuit Judge William C. Canby Jr., for a unanimous panel (with Judges Choy and Silverman)
• Subject matter: Whether intermediate copying of copyrighted console firmware during reverse engineering to build a lawful emulator is copyright infringement
• Holding: Connectix’s intermediate copying of the Sony BIOS to reverse engineer it was fair use; the district court erred in finding infringement and abused its discretion in enjoining sales of the Virtual Game Station

The facts and the technology

Sony manufactured the PlayStation and owned the copyright in its BIOS, the basic input-output firmware that the console runs at startup and that games call upon to function. Connectix set out to build the Virtual Game Station, an emulator that would let consumers run PlayStation game discs on a computer without owning the console. Because the games expected to talk to a PlayStation BIOS, Connectix had to reproduce the BIOS’s behavior in its own software.

Its engineers did so by reverse engineering. They repeatedly copied Sony’s BIOS into a computer’s memory, observed how it operated, and disassembled portions of it to study its functional requirements — a process of iterative “black box” and “disassembly” analysis. The final product, however, contained none of Sony’s code: Connectix wrote its own BIOS from scratch to reproduce the necessary functionality. The only copies of Sony’s copyrighted work were the intermediate ones made and discarded during development. Sony sued for copyright infringement (and on a trademark theory), and the district court preliminarily enjoined Connectix, reasoning that the intermediate copies were infringing and not fair use. Connectix appealed.

The fair-use analysis

The Ninth Circuit worked through the four statutory fair-use factors of 17 U.S.C. § 107, leaning heavily on its 1992 decision in Sega Enterprises Ltd. v. Accolade, Inc., which had already held that intermediate copying to discover a program’s unprotected functional elements can be fair use.

On the nature of the copyrighted work, the court emphasized that software contains both protectable expression and unprotectable functional ideas, and that the functional elements of Sony’s BIOS could not be examined without copying it. Because the work “contain[ed] unprotected aspects that cannot be examined without copying,” it was entitled to a “lower degree of protection than more traditional literary works.” This factor favored Connectix.

On the amount and substantiality of the use, Connectix had copied the entire BIOS, and repeatedly. But the court gave this factor “very little weight” in the intermediate-copying context, because the copying was a necessary step toward a final product that contained no infringing material. Wholesale intermediate copying, when it is the only way to reach unprotected function and leaves no trace in the shipped product, does not defeat fair use.

On the purpose and character of the use, the court found the intermediate copying “modestly transformative.” Connectix used the copies not to supplant the BIOS but to create a wholly new product — a new platform on which consumers could play games, expanding the market rather than merely republishing Sony’s work. The court acknowledged the commercial purpose but held it did not overcome the transformative aim, and it pointedly rejected Sony’s argument that Connectix should have used a less copying-intensive method: the law does not require an engineer to choose the path that minimizes intermediate copies when a chosen method of reverse engineering is otherwise legitimate.

On the effect on the market, the court conceded that the Virtual Game Station would compete with the PlayStation and might cost Sony console sales. But it drew the crucial distinction that copyright protects expression, not markets: because the VGS was a “legitimate competitor” and a transformative new product, any resulting harm was the ordinary consequence of lawful competition, not the cognizable market harm copyright forbids. “Sony understandably seeks control over the market for devices that play games Sony produces or licenses,” the court observed, but “copyright law… does not confer such a monopoly.” Weighing the factors together, the court held the intermediate copying was fair use and dissolved the injunction.

Open questions

Connectix validated reverse engineering for interoperability, but its boundaries continue to be litigated. How “necessary” must the copying be, and who bears the burden of showing a less intrusive route was available? What happens when reverse engineering is contractually forbidden by a shrink-wrap or click-wrap license or technologically blocked by measures that the DMCA’s anti-circumvention rules protect — a body of law enacted in 1998 that Connectix did not address? And how does the “transformative” characterization of an emulator hold up after Google LLC v. Oracle America, Inc. (2021) reframed transformative use for functional software interfaces? Connectix remains good law in the Ninth Circuit, but its interaction with contract and anti-circumvention doctrine leaves reverse engineers with real uncertainty outside the pure copyright analysis.

Implications

• Intermediate copying can be fair use. Copying an entire program to study its unprotected functional elements is permissible when it is a necessary step toward a legitimate, non-infringing end product.
• Ship clean code. The decisive fact was that the final Virtual Game Station contained none of Sony’s code; keeping copyrighted material out of the shipped product is what made the intermediate copying defensible.
• No “least-copying” duty. A defendant need not prove it used the method that minimized intermediate copies; courts will not second-guess a legitimate reverse-engineering approach on that basis.
• Competition is not cognizable harm. Lost sales from a lawful, transformative competitor do not count as the market harm copyright protects against; there is no copyright monopoly over devices that play a company’s games.

Frequently asked questions

What did Sony v. Connectix hold about reverse engineering? The Ninth Circuit held that the intermediate copies Connectix made while disassembling Sony’s copyrighted PlayStation BIOS to reverse engineer it were protected fair use, because copying was necessary to access the unprotected functional elements of the software and to create a new, non-infringing product.

Did the final emulator contain Sony’s copyrighted code? No. The Virtual Game Station shipped with Connectix’s own BIOS code, not Sony’s. The copyright dispute concerned only the temporary, intermediate copies of Sony’s firmware that Connectix made and discarded during development, which the court treated as a fair use.

How does Sony v. Connectix relate to Sega v. Accolade? It follows and extends Sega Enterprises v. Accolade (9th Cir. 1992), which first held that intermediate copying to reverse engineer software for interoperability can be fair use. Connectix applied that framework and rejected Sony’s argument that a cleaner, less copying-intensive method was required.

Authorities and sources

• Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000) (decided February 10, 2000; Canby, J.). Justia and FindLaw full-text opinions.
• Four-factor fair-use analysis and reliance on Sega corroborated by Wikipedia: Sony Computer Entertainment, Inc. v. Connectix Corp.
• Foundational reverse-engineering precedent: Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), Justia.
• Fair-use statute: 17 U.S.C. § 107 (Cornell Legal Information Institute).