Arcade Kit Seller Applies for MAME Trademark [updated]

An anonymous reader submits "Zophar's Domain is reporting that the CEO of commerical multi-arcade kit seller UltraCade has applied to trademark the name and logo of the ubiquitous open-source multi-arcade emulator MAME and is planning to sue MAME's authors." Update: 02/21 13:26 GMT by T : UltraCade Technologies CEO David R. Foley contacted Slashdot with an emailed explanation of the filing, reproduced below at his request. Update: 02/21 18:16 GMT by T : Please note that Foley's email specifically states that "There have been no lawsuits filed against any of the M.A.M.E. authors, and there have been no claims towards the open source engine, nor will there be."

"Subject: I would hope that you post this to correct your misstated comments on slash dot
Date: Mon, 21 Feb 2005 01:27:43 -0800

Like most things that are spread by rumor, the facts about me, UltraCade Technologies, and the M.A.M.E. emulation system are quite distorted. I will try and educate anyone who cares to listen about the reality of our marketplace and what we are doing and what we are not. Simply put, we are making an effort to stamp out the commercial sales of M.A.M.E. based systems that advertise the ability to play thousands of games while relying on the customer to obtain the ROMs which can not legally be obtained. What we are not doing is trying to claim ownership of the M.A.M.E. open source emulator or sue its authors. We are concerned about the commercial marketplace, and not the readers of the many M.A.M.E. user groups and forums.

I have been working on emulation technology since the mid 80's when I did work on an emulation project in college. In 1994, while working on games for companies like Sega and Williams, we developed an emulation of the arcade games Joust, Defender and Robotron that ran on a Sega Genesis. In 1996, we started the Lucky 8 project which turned into the UltraCade project. In 1998 we were one of the first companies to acquire the rights to classic arcade games from various publishers. We have licensed games from several manufacturers including Capcom, Jaleco, Taito, Stern, Incredible Technologies, Midway, Atari and more. We have started several projects and built prototypes for companies like Sega, based on technology that was licensed from authors from the emulation community. We have licensed technology from many of the communities programmers, paying them to use their code in our products and demonstrations. We have been the leader of the retro arcade movement, and have invested millions of dollars creating a market for retro games. UltraCade was the first successful multi-game arcade machine combining many of the old classics. We further enhanced the market by creating Arcade Legends, our consumer version of the UltraCade product. We have also paid hundreds of thousands of dollars in licensing fees to have the right to sell our games.

In the past couple of years, there has been a huge wave of resellers competing with our UltraCade and Arcade Legends products. They build a similar style cabinet, install a PC in the machine, load M.A.M.E., and sell it for a very low price. Lower than we could ever offer our machines for sale. How? Quite Simple. They profit by stealing others work. If you look at the web sites, and read the eBay ads they offer machines that "Play over 4,000 Classic Arcade Games" They then try and skirt the law by pretending that they are not promoting piracy of these same 4,000 games with statements like "we don't load the ROMs" but of course, almost all of them do. The others that don't, they provide you with an instruction sheet with a link to several web sites where you can illegally download the ROMs, or provide you with the contact information for a CD/DVD duplication house that will sell you a set of ROMs for all 4,000 games for less than $200. Would anyone really buy this arcade machine if they knew that there was no legal way for them to run over 99% of the games that they were promised, I don't think so, and if you really look at this without emotion, I'm sure you would agree. These companies are simply selling the promise of thousands of games on a machine that can not possibly run them legally. I sometimes hear the argument, "well, I could go on eBay and buy up all of these games and then run it", and while plausible, it certainly would not be anywhere near cost effective, and again, if the customer knew that to legally operate these games, they have to spend thousands of dollars buying legal ROMs I seriously doubt that they would consider purchasing a M.A.M.E. machine. Anyone reading this email thread is an intelligent person, and if they put emotions aside, they will realize that what we are saying about selling M.A.M.E. machines and the promise of getting 4,000 games for the average consumer can't possibly happen. Unlike most of you reading this, the average consumer looking to buy a machine for their game room has no idea how emulation works, or what is legal and illegal to do. To them, they read an advertisement on a website or on eBay and compare our product with 50 games or an ad for a machine that promises thousands of games, with the promise of instructions about how to obtain those games. Of course, in this skewed environment the average consumer would gravitate towards the thousands of games machine, not realizing that the software and the games are unlicensed and illegal to play. Most consumers who are pointed at a web site selling a 7 DVD set of ROMs have no idea that this is an act of piracy, they were simply instructed to do this by the person selling them their arcade cabinet, and told this is how you get the games.

Now that we have attempted to take legal recourse to prevent illegal competition, the same people, who steal the work of the M.A.M.E. authors, and then profit by selling machines that have no value without the pirated games being made available, turn around and cry foul when we call them on their ways. They run to the M.A.M.E. discussion forums and spread rumors about UltraCade suing the authors of M.A.M.E. or stealing the M.A.M.E. engine. I'm amazed at the response of the community, a community that is being whipped into action by the same people who are stealing and profiting from them and they're efforts. Many people have reacted with hate mail without even considering to look at the facts of the situation, or to realize who is spreading the rumors. They are being spread by those who wish to profit by selling unlicensed games.

The simple fact is that we are attempting to stop the tide of illegal arcade machines, and the promotion of unlicensed games. The M.A.M.E. platform, while a technical marvel, consists of many violations of copyrights and trademarks. The authors have always stated in the documentation that it was not put into the public domain to steal from the game authors or publishers, and they have always been hands off about how to obtain the ROMs. They have also clearly stated that it is not to be used for commercial gains. A majority of the publishers who own the copyrighted material have not paid much attention to this marketplace, as until recently it has not had a huge commercial impact. But now, there are websites and eBay sellers selling machines that directly compete with legitimate publishers like us who publish games from Capcom, Taito, Midway, Atari and others, or publishers like Namco that publish Ms. Pac-Man/Galaga or the Donkey Kong/Mario Bros. machines.

Of the many thousands of games that M.A.M.E. supports, only a minute fraction of them can legally be played on a M.A.M.E. equipped machine, and many can not. There are many fallacies about the legality of owning ROMs and how you can play the game. Many people claim that they have a board set and therefore they can download as many ROMs as they like. The law is very strict. You can transfer the image from the actual original ROM chips, which you legally own, to another piece of hardware, provided that you actually transfer the code from the chips. Just having a board sitting around, and saying I have the right to play it is not the case. Many people point to StarROMs and say that they can then sell the games with the ROMs installed. This is not the case either. StarROMs license prohibits the resale of the game licenses, and only the end user can purchase these ROM images, resellers can not. Our market is further plagued by the rash of 4 in 1, 9 in 1, 24 in 1 39 in 1 and the new 300 in 1 "multicade" boards. These boards come from Taiwan and Hong Kong and contain illegal copies of the ROMs of several games.

This is a complex case amongst companies that are trying to make it about UltraCade stealing something from the M.A.M.E. team. That is not what this is about. This is simply UltraCade Technologies and other publishers doing whatever it takes to protect our commercial interests and prevent other companies from stealing our market by capitalizing on unlicensed games and selling products that only have value when coupled with illegally obtained games. Our application towards a trademark is to simply prevent anyone from commercially marketing an illegal product, nothing more. There have been no lawsuits filed against any of the M.A.M.E. authors, and there have been no claims towards the open source engine, nor will there be We are simply protecting our commercial market, and nothing more. We have no interest in the hobby community. We have no interest in the open source project. Our goal is to simply stop the rampant piracy in our marketplace, and we will use every means at our disposal to do so.

I welcome open discussions about this situation, and will respond to legitimate communications or questions.

-David R. Foley

---------------------------------------------------------------------------- ---------------------------------------------------------

David R. Foley
UltraCade Technologies"

Comments

There's a discussion here.

[planetjay]

BYOAC Forum: http://forum.arcadecontrols.com/index.php/topic,32 339.0.html

David R Foley

[SirPhobos]

I'd just like to point out his personal website, which contains his resume with his email address (david@davidrfoley.com or david@hyperware.com) and phone number attached. Don't be too mean. ;-)

Re:David R Foley

[Anonymous Coward]

His address also happens to be

David R. Foley
1281 Wayne Avenue
San Jose, CA 95131
United States

And His Lawyer seems to be:
Lee Hagelshaw (Attorney of record)

LEE HAGELSHAW
LEE HAGELSHAW OF TECH LAW
350 TOWNSEND STREET SUITE 406
SAN FRANCISCO, CA 94107

Phone Number: (415) 615-9300
Fax Number: (415) 615-9301

TM Law

[marko123]

If MAME and it's logo has not been registered as a trademark, then Foley can apply to register it, regardless of how long it has been used by someone else. If he can slip this one past the TM Office, possibly by overwhelming the existing MAME folks with advertising and publicity, he will have the registered trademark for MAME.

HOWEVER, since the MAME folks have been using said name and logo for years, they will be protected BY LAW from being sued by Foley for their continued usage of the marks. This is one way that these particular intellectual property laws protect you from cretins like him :)

I am not a trademark attorney, but I do IT in an IP firm. This is not legal advice, blah, blah, blah. These laws apply at least in both US and Australia.

Some helpful information for the kids...

[AcidDan]

I'm sure if anyone has any queries about who this gentlemen is, the Us Patent Office has the relevant details:

1. Foley, David R.

Address:
Foley, David R.
1281 Wayne Avenue
San Jose, CA 95131
United States
Legal Entity Type: Individual
Country of Citizenship: United States

Re:Geez, what a toughie...

[marko123]

Prior Art is for Patent law. This is TM law. See my comment below for the MAME folks' protections.

Backwards

[fm6]

Doesn't one have to own the trademark before something is created in its name in order to sue the creators of the something?

Actually, the way you establish ownership of a trademark is by using it. Registering it is just a way of documenting your claim that you own it. So the guy who invented Bittorrent can claim that he already owns the trademark, whether he's registered it or not.

Is this a troll?

[retro128]

Do we have any more substantial information than a small blurb at the top of a emu website?

Even if it is real, he has no hope of winning. Trademarks need not be registered to be protected, and I think there is more than enough evidence out there to prove conclusively that the logo belongs to the MAME developers.

False Declaration

[epsalon]

To register the trademark, they had to sign this declaration, which is obviously false.

Declaration
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

Re:Easy ./ing

[X0563511]

Make sure you tell your browser not to cache anything first!

UltraCade Technologies
1281 Wayne Avenue
San Jose, CA 95131
Phone: (408) 436-8885
Fax: (408) 715-6183

Let's slashdot his phoneline as well!

Attempted theft. Registration NOT required.

[dwheeler]

This is absolute nonsense. In the U.S., you do not need to register a trademark to be the owner of it - just use the mark. Perhaps the MAME folks ought to register the name to prevent another clown from trying to steal their name. I've posted a trademark notice on my own site to keep away at least some of the predators. I did that after learning of the problems of problems of Katie Jones, owner of the katie.com domain. Linus Torvalds eventually had to register "Linux" everywhere because of a similar set of thefts.

Re:Uhh.

[shione]

They do relate. You can't trademark something you don't have the copyright to

it is a new application, file an opposition

[bhouston]

On the USPTO webpage for this application (here) it says that its status is "Newly filed application, not yet assigned to an examining attorney." Anyone can file any trademark -- I could file one for the term "Microsoft" -- and it would get to this stage.

The key is getting your trademark application approved. The main impediment is from either already registed trademarks that are similar in name or from people that file oppositions. The process of filing an opposition is described on this USTPO page.

As someone who knows a little bit about trademarks I can say that the individual who filed this is really wasting their time -- the only way he could get and keep this trademark is if no one noticed he filed for it.

-ben houston
http://www.exocortex.org/ben

Re:Everything is in order here...

[Eil]

His motivation for registering the trademark might not have as much to do with defrauding the MAME community as the Slashdot article speculates... this guy is well known for taking down eBay auctions for roms and MAME-supported hardware that compete with his. If he is awarded this trademark, this would give him even more leverage, since no one would be able use the official MAME logo on any auction site or web store, even if they were just selling their own homebrew arcade stick.

Re:Wait a second : He will probably get a TM......

[Fallen Kell]

I want to say this. He will most likely recieve a TM on that "exact" image, and that "exact image" alone. (i.e. not the word mame, not the word mame in that font, style, size, color, but that EXACT font, size, color, background, and that one ONLY). There are other trademarks granted for the same word, even for the same type of product, but when existing art is already there or the word is a common word (think Windows(TM)) a trademark can still be given on an exact image. Prior art already exists for using that same font and color scheme, but what I havn't been able to find is an exact copy of that image that was submitted.

There is a big but in this. It should be noted that he will not be able to sue people unless they use the EXACT same image. And I mean EXACT. He may still own the copywrite on it if he really did make it himself, and thus can still sue under that basis for people who use his exact image. But if you look around, most people are using stuff a little fancier, crisper, flashier with backgrounds behind or stylings around the word MAME, and all of those will stand as they are already, and he will not be able to do anything about it. It is the same reason why Microsoft has never wanted to have a true court case involving its trademarking of the word Windows, it has always managed to skirt the issue and or settle cases before rulings could get made to make the case go away before being striped of the TM. If it ever does actually make it to court, it would most likely be stripped in the current court system.

This is not a huge deal

[cpt kangarooski]

It was pretty foolish for the Ultracade guys to have filed for the mark since they clearly knew there was a prior user.

Here's what will likely happen, assuming that neither side just gives up:

Eventually the mark will be published for opposition, unless the examiner at the PTO has a problem with it first. Since the PTO doesn't perform exhaustive searches (relying on the fact that people rarely invest the time and money to get a federal registration without themselves searching thoroughly and taking pains to avoid conflicts with others) it could easily get to this point. MAME will then have a brief window to file a notice of opposition, claiming that they were using the mark in commerce first, and that it is confusingly similar. This'll result in some discovery on both sides, and evidence and briefs being sumbitted to the TTAB, which will make a decision. I have a hard time seeing that MAME could lose this, but it costs money.

Meanwhile, the MAME folks should really be thinking about just getting a federal registration for their mark to make it easier to deter this sort of thing in the future, but again, it costs money for the initial registration, and for periodic affidavits and renewals that would need to be filed every so often for as long as they wanted to keep the federal registration.

Regarding the copyright issue, it's actually less clear. Ordinarily just because some piece of art is a logo, that doesn't make it uncopyrightable. However, you cannot copyright a name, and you cannot copyright mere variations of typography. Since the MAME logo is basically the stylized word 'MAME' it would have a tough time with copyright. A fancier logo would work better. Still, MAME could always try to register and see what happens. It also costs money, but not much.

As for people talking about prior art, that's patents. There's no such thing for trademark or copyright. Try again.

Read actual status of application

[tod_miller]

Here: Current Status: Newly filed application, not yet assigned to an examining attorney.

and copy paste this into an email to:
TrademarkAssistanceCenter@uspto.gov
--------
Regarding:

http://tarr.uspto.gov/servlet/tarr?regser=serial &e ntry=76627578

This person (David R Foley) is trying to trademark a copyrighted work. I cannot trademark the mona lisa, so I do not think I could copyright MAME, the name or the logo as they are copyright works of art (both the image and text).

For more information of the true owner, please visit:

http://www.mame.net/

Thank you
--------

Optionally include contact info:

David R. Foley
144 S. 3rd Street
Suite 626
San Jose, CA 95112
(408) 685-5403
david@davidrfoley.com

There may be fines for fraudulent applications that break copyright laws. (image)

Different address and attournee email

[tod_miller]

(this is sounding wierd, but I checked the page is on the uspto.gov site... almost too dumb to be true)

Here is Foley second address:

1. Foley, David R.
Address:
Foley, David R.
1281 Wayne Avenue
San Jose, CA 95131
United States
Legal Entity Type: Individual
Country of Citizenship: United States

Correspondent
Lee Hagelshaw (Attorney of record)
LEE HAGELSHAW
LEE HAGELSHAW OF TECH LAW
350 TOWNSEND STREET SUITE 406
SAN FRANCISCO, CA 94107
Phone Number: (415) 615-9300
Fax Number: (415) 615-9301

Some googling:

http://www.hagelshaw.com/

E-mail your questions or interest to law@hagelshaw.com
or call: Tel. 415.615-9300 . Fax. 415.615-9301.
Address: 350 Townsend Street, Suite 406, San Francisco, Ca 94107

Copy paste this email to

law@hagelshaw.com

Dear Mr Lee Hagelshaw,

Regarding a trademark application from a Mr David R Foley (see http://tarr.uspto.gov/servlet/tarr?regser=serial&e ntry=76627578 ) I would like to bring to your attention his breach of copyright laws. Please refer to www.mame.net for the original owners. I have asked all those who can vouch for this to contact you in kind so that this matter can be resolved.

Please let me know if you have any relationship with the aforementioned David R. Foley,

I trust that you will treat this matter with all the serious attention it deserves.

Warmest regards

Re:Uhh.

[aichpvee]

That's not anything like what is going on here. In your example the VFAT implementation is completely irrelevent. Since you wouldn't be trademarking it, you would be trademarking the name that you use to resell a version of that VFAT implementation.

It's much more similar to you being a reseller of HP computers and applying for a trademark on their case design.

Re:Anyone remember the Linux trademark?

[Anonymous Coward]

The USPTO site provides an email address for questions relating to the application: TrademarkAssistanceCenter@uspto.gov. I've sent them an email pointing out the MAME web site and it's preexisting use of the applied for mark. If every slashdotter does the same, the USPTO might be forced to ask some questions (and may even be appeciative of being notified of a scam in the making).

Nomenclature

[tepples]

In patents, it's called prior art. In trademarks, it's called prior use in commerce. Big whoop.

Re:Copyright should apply

[Mekabyte]

MAME logo information... the logo's been around since at least 1999 (can't remember if it's been around even longer)... maybe Chemical and Exodus3D can do something directly. Additionally, there have been a large number of magazine articles about MAME since it first came out in 1997, so there is plenty of printed evidence, should it have to come to that.

Re:Legal system

[Anonymous Coward]

Melanie Burns http://exodus3d.com is the copyright holder of the MAME logo. I don't think there was ever any legal transfer of ownership over to Santeri of mame.net (unless Gridle still has IRC logs from years ago).

Re:Wait a second : He will probably get a TM......

[autopr0n]

How's that so if they managed to force Lindows to change their name? Can you please enlighten me on this one? They started suing Lindows in country after country, and Lindows decided they didn't want to have to fight the case in every single nation on earth and gave up. Lindows won their case in the United States.

Re:Frell Zophar's Domain

[Suddenly_Dead]

I'm using Firefox. It told me it had blocked a popup. That's it.

Re:Oh, fuck them.

[mushroom blue]

Wha? you mean Marat isn't running a totally successful business?

sorry. I couldn't even say that one with a straight face.

I'm not too worried. the image is already copyrighted by Oscar Controls, and has been in commercial use for ages, as MAMEworld.net uses it for all their banner advertising. not to mention all the people contacting the USPTO on the MAMEdev's behalf.

if I were a MAMEdev, I'd be contacting the Electronic Frontier Foundation about this.

maybe a certain Site Admin or two should start a campaign to email the USPTO to make sure this never goes through.

Re:Everything is in order here...

[Nonoche]

MAME on its own isn't illegal and isn't ripping off of any other's work. You can use it completely legally, either by ripping an arcade board you own, or by buying legal ROMs on Starroms or the Capcom ones that come for free with the gear from HanaHo. You can also use the couple of ROMs that are freely available on mame.net, courtesy of their own copyright owners.

So what you're refering to is piracy from MAME's users. Should the MAME devteam be punished because of what others do with their hard work? Don't think so.

Foley responded to my email

[Anonymous Coward]

Granted he likely gave this same response to everyone else who wrote him (since my original email was basically a troll that deserved being sent to the recycling bin... hey i was angry :D ) but here it is for everyones reference

_____________

Like most things that are spread by rumor, the facts about me, UltraCade Technologies, and the M.A.M.E. emulation system are quite distorted. I will try and educate anyone who cares to listen about the reality of our marketplace and what we are doing and what we are not. Simply put, we are making an effort to stamp out the commercial sales of M.A.M.E. based systems that advertise the ability to play thousands of games while relying on the customer to obtain the ROMs which can not legally be obtained. What we are not doing is trying to claim ownership of the M.A.M.E. open source emulator or sue its authors. We are concerned about the commercial marketplace, and not the readers of the many M.A.M.E. user groups and forums.

I have been working on emulation technology since the mid 80's when I did work on an emulation project in college. In 1994, while working on games for companies like Sega and Williams, we developed an emulation of the arcade games Joust, Defender and Robotron that ran on a Sega Genesis. In 1996, we started the Lucky 8 project which turned into the UltraCade project. In 1998 we were one of the first companies to acquire the rights to classic arcade games from various publishers. We have licensed games from several manufacturers including Capcom, Jaleco, Taito, Stern, Incredible Technologies, Midway, Atari and more. We have started several projects and built prototypes for companies like Sega, based on technology that was licensed from authors from the emulation community. We have licensed technology from many of the communities programmers, paying them to use their code in our products and demonstrations. We have been the leader of the retro arcade movement, and have invested millions of dollars creating a market for retro games. UltraCade was the first successful multi-game arcade machine combining many of the old classics. We further enhanced the market by creating Arcade Legends, our consumer version of the UltraCade product. We have also paid hundreds of thousands of dollars in licensing fees to have the right to sell our games.

In the past couple of years, there has been a huge wave of resellers competing with our UltraCade and Arcade Legends products. They build a similar style cabinet, install a PC in the machine, load M.A.M.E., and sell it for a very low price. Lower than we could ever offer our machines for sale. How? Quite Simple. They profit by stealing others work. If you look at the web sites, and read the eBay ads they offer machines that "Play over 4,000 Classic Arcade Games" They then try and skirt the law by pretending that they are not promoting piracy of these same 4,000 games with statements like "we don't load the ROMs" but of course, almost all of them do. The others that don't, they provide you with an instruction sheet with a link to several web sites where you can illegally download the ROMs, or provide you with the contact information for a CD/DVD duplication house that will sell you a set of ROMs for all 4,000 games for less than $200. Would anyone really buy this arcade machine if they knew that there was no legal way for them to run over 99% of the games that they were promised, I don't think so, and if you really look at this without emotion, I'm sure you would agree. These companies are simply selling the promise of thousands of games on a machine that can not possibly run them legally. I sometimes hear the argument, "well, I could go on eBay and buy up all of these games and then run it", and while plausible, it certainly would not be anywhere near cost effective, and again, if the customer knew that to legally operate these games, they have to spend thousands of dollars buying legal ROMs I seriously doubt that they would consider purchasing a M.A.M.E. machine. Anyo

Re:double standard.....

[Breakfast Pants]

The reason it's bad is because it kills the public domain. Since the Bono act, which made this automatic copyright thing happen, nothing is automatically entering the public domain. The public domain is actually dieing as a concept in America. Consider this: the point of copyright is to encourage the creation of new works. With the Bono Act the government extended the copyrights on hundreds of thousands of already published works. They were already published. How could increasing their protection time under copyright law possibly encourage the creation of new works? The creators of these works saw how long they were protected, agreed to it, and spent the resources to create the works. Going back and giving them a longer protection is a slap in the face to everyone. It is a direct subsidy to media companies worth billions.

Mirrored Forum Posting from MAME.NET by David Fol

[Anonymous Coward]

Like most things that are spread by rumor, the facts about me, UltraCade
Technologies, and the M.A.M.E. emulation system are quite distorted. I will
try and educate anyone who cares to listen about the reality of our
marketplace and what we are doing and what we are not. Simply put, we are
making an effort to stamp out the commercial sales of M.A.M.E. based systems
that advertise the ability to play thousands of games while relying on the
customer to obtain the ROMs which can not legally be obtained. What we are
not doing is trying to claim ownership of the M.A.M.E. open source emulator
or sue its authors. We are concerned about the commercial marketplace, and
not the readers of the many M.A.M.E. user groups and forums.

I have been working on emulation technology since the mid 80's when I did
work on an emulation project in college. In 1994, while working on games
for companies like Sega and Williams, we developed an emulation of the
arcade games Joust, Defender and Robotron that ran on a Sega Genesis. In
1996, we started the Lucky 8 project which turned into the UltraCade
project. In 1998 we were one of the first companies to acquire the rights to
classic arcade games from various publishers. We have licensed games from
several manufacturers including Capcom, Jaleco, Taito, Stern, Incredible
Technologies, Midway, Atari and more. We have started several projects and
built prototypes for companies like Sega, based on technology that was
licensed from authors from the emulation community. We have licensed
technology from many of the communities programmers, paying them to use
their code in our products and demonstrations. We have been the leader of
the retro arcade movement, and have invested millions of dollars creating a
market for retro games. UltraCade was the first successful multi-game
arcade machine combining many of the old classics. We further enhanced the
market by creating Arcade Legends, our consumer version of the UltraCade
product. We have also paid hundreds of thousands of dollars in licensing
fees to have the right to sell our games.

In the past couple of years, there has been a huge wave of resellers
competing with our UltraCade and Arcade Legends products. They build a
similar style cabinet, install a PC in the machine, load M.A.M.E., and sell
it for a very low price. Lower than we could ever offer our machines for
sale. How? Quite Simple. They profit by stealing others work. If you
look at the web sites, and read the eBay ads they offer machines that "Play
over 4,000 Classic Arcade Games" They then try and skirt the law by
pretending that they are not promoting piracy of these same 4,000 games with
statements like "we don't load the ROMs" but of course, almost all of them
do. The others that don't, they provide you with an instruction sheet with
a link to several web sites where you can illegally download the ROMs, or
provide you with the contact information for a CD/DVD duplication house that
will sell you a set of ROMs for all 4,000 games for less than $200. Would
anyone really buy this arcade machine if they knew that there was no legal
way for them to run over 99% of the games that they were promised, I don't
think so, and if you really look at this without emotion, I'm sure you would
agree. These companies are simply selling the promise of thousands of games
on a machine that can not possibly run them legally. I sometimes hear the
argument, "well, I could go on eBay and buy up all of these games and then
run it", and while plausible, it certainly would not be anywhere near cost
effective, and again, if the customer knew that to legally operate these
games, they have to spend thousands of dollars buying legal ROMs I seriously
doubt that they would consider purchasing a M.A.M.E. machine. Anyone
reading this email thread is an intelligent person, and if they put emotions
aside, they will realize that what we are saying about selling M.A

Ultracade's side of the story?

[Anonymous Coward]

Before jumping to conclusions, did anyone actually consider looking for Ultracade's side of the story?

http://www.ultracade.com/mame.pdf

February 21, 2005
Like most things that are spread by rumor, the facts about me, UltraCade Technologies, and the M.A.M.E. emulation system are quite distorted. I will try and educate anyone who cares to listen about the reality of our marketplace and what we are doing and what we are not. Simply put, we are making an effort to stamp out the commercial sales of M.A.M.E. based systems that advertise the ability to play thousands of games while relying on the customer to obtain the ROMs which can not legally be obtained. What we are not doing is trying to claim ownership of the M.A.M.E. open source emulator or sue its authors. We are concerned about the commercial marketplace, and not the readers of the many M.A.M.E. user groups and forums. I have been working on emulation technology since the mid 80's when I did work on an emulation project in college. In 1994, while working on games for companies like Sega and Williams, we developed an emulation of the arcade games Joust, Defender and Robotron that ran on a Sega Genesis. In 1996, we started the Lucky 8 project which turned into the UltraCade project. In 1998 we were one of the first companies to acquire the rights to classic arcade games from various publishers. We have licensed games from several manufacturers including Capcom, Jaleco, Taito, Stern, Incredible Technologies, Midway, Atari and more. We have started several projects and built prototypes for companies like Sega, based on technology that was licensed from authors from the emulation community. We have licensed technology from many of the community's programmers, paying them to use their code in our products and demonstrations. We have been the leader of the retro arcade movement, and have invested millions of dollars creating a market for retro games. UltraCade was the first successful multi-game arcade machine combining many of the old classics. We further enhanced the market by creating Arcade Legends, our consumer version of the UltraCade product. We have also paid hundreds of thousands of dollars in licensing fees to have the right to sell our games. In the past couple of years, there has been a huge wave of resellers competing with our UltraCade and Arcade Legends products. They build a similar style cabinet, install a PC in the machine, load M.A.M.E., and sell it for a very low price. Lower than we could ever offer our machines for sale. How? Quite Simple. They profit by stealing others work. If you look at the web sites, and read the eBay ads they offer machines that "Play over 4,000 Classic Arcade Games" They then try and skirt the law by pretending that they are not promoting piracy of these same 4,000 games with statements like "we don't load the ROMs" but of course, almost all of them do. The others that don't, they provide you with an instruction sheet with a link to several web sites where you can illegally download the ROMs, or provide you with the contact information for a CD/DVD duplication house that will sell you a set of ROMs for all 4,000 games for less than $200. Would anyone really buy this arcade machine if they knew that there was no legal way for them to run over 99% of the games that they were promised, I don't think so, and if you really look at this without emotion, I'm sure you would agree. These companies are simply selling the promise of thousands of games on a machine that can not possibly run them legally. I sometimes hear the argument, "well, I could go on eBay and buy up all of these games and then run it", and while plausible, it certainly would not be anywhere near cost effective, and again, if the customer knew that to legally operate these games, they have to spend thousands of dollars buying legal ROMs I seriously doubt that they would consider purchasing a M.A.M.E. machine. Anyone reading this email thread is an intelligent person, and if they put emotions aside, they

Their side of the story

[Mmm coffee]

The ultracade front page has a link to a PDF file explaining their side of the story. A quick snippet from the first paragraph of the letter -

Simply put, we are making an effort to stamp out the commercial sales of M.A.M.E. based systems that advertise the ability to play thousands of games while relying on the customer to obtain the ROMs which can not be legally obtained. What we are not doing is trying to claim ownership of the M.A.M.E. open source emulator or sue its authors. We are concerned about the commercial marketplace, and not the readers of the many M.A.M.E. usergroups and forums.

They're not trying to sue MAME's authors

[zestyalbino]

Have a read of the following statements from the Ultracade website:

http://www.ultracade.com/mame.pdf

http://www.ultracade.com/openoffer.pdf

Sounds like it was either a false rumor or the bad publicity changed their attitute Ultraquick.

Re:Everything is in order here...

[HyperHyper]

So before I sent a kneejerk reaction email based off this topic.. I went to the Ultracade site to see if they had any argument to offer. Sure enough they do. The link to it is here..

http://www.ultracade.com/mame.pdf

David Foley provides a reasoning at least for his actions. While it may not be the correct way of going about it, it is how he plans to fight his "competitors" who use illegal software and piracy methods. I'm not saying that I'm in total agreement with him but I do see his side of things. Perhaps there is another way to deal with it.....?

Re:Wait a second : He will probably get a TM......

[TheRaven64]

No. Under trademark law there is a concept known as `passing off'. If you market a product with a name / logo that is sufficiently similar to an existing trademark for there to be confusion between the two then you are regarded in law as attempting to pass off your product as being affiliated with the trademark owner and are liable for prosecution. If the owner of the trademark is aware of this and fails to prosecute then they may be unable to do so at a later date, because the trademark will have become a generic term.

Re:Still has to go under review.

[Carl Oppedahl]

Well, I sent the following email to the trademark office. I suggest others do the same ...

There is a correct way to bring such things to the attention of the Trademark Office, and this is not it.

The constructive next step is to monitor the status of the application, and when it gets "published for opposition" then file an opposition.

One convenient way to monitor the status of a pending US trademark application is by means of free software called Feathers.

Translation

[wren337]

I have a business problem. People are selling pirated ROMS for less then I can sell them legally. My problems would go away if I took legal control of your logo and trademark. Can't you see this is a good thing, for me?

Re:Everything is in order here...

[tambo]

Wouldn't he then be defrauding the MAME community by saying, fraudulently, "I'm MAME"?

Very astute. This is effectively what UltraCade is doing by trying to trademark the term MAME.

Now, I am definitely not nearly as corporation-paranoid as even the average Slashdot member - I would usually take the company at face value in such statements. The problem here is that the stated goal has nothing to do with the stated action. Trademarking MAME will not help UltraCade bust competitors, for several reasons:

• The proper grounds for evicting illegal manufacturers is copyright infringement, not trademark infringement. And that's very easy to do, since the "official" channels of Internet policing (courts and ISPs) are very pro-copyright - a simple email to the site hosting the content is enough to get some hosting yanked. (In fact, this is exactly how the MAME community has policed commercial sales of MAME [with ROMs] on eBay - it's a routine occurrence, and the "cease-and-desist" notice is efficient and effective.) Why anyone thinks trademark infringement would provide more leverage than copyright infringement is something of a mystery.
• The MAME trademark will only be effective in the U.S. The world isn't nearly as unified about the enforcement of trademark law as they are for copyright (and patent) law. Even trying to enforce the trademark in Canada is likely to be difficult.
• Any illegal-software-sales company that wants to avoid a trademark claim for using MAME can simply... uh... not use the MAME name in its adverts. Most n00b-idiot purchasers of such hardware don't know what "MAME" is, anyway. Their attention latches onto "4,000 arcade games in cabinet for $200!" - they don't know the term "MAME" anyway.

For these reasons, I must doubt UltraCade's stated reason for seeking a trademark on the term MAME. So what's really going on here? More likely, and reading between the lines here, UltraCade wants to block anyone else from selling a cabinet bearing the word "MAME" - even if it's solely a cabinet (with no emulation software of any kind embedded.) This is their true "competition," and it has nothing to do with copyright. There's nothing illegal about selling a hunk of wood and circuitry... unless, of course, there's a trademark issue. This is likely their goal.

Hmm, a dodgy company looking to frustrate its own market for its own gain - could the emulation community be seeing the emergence of is own SCO?

As a final note, I'm curious whether this inaccurate attempt to monopolize a market by laying an inaccurate trademark claim might violate the Sherman Antitrust Act.

(IAAL, by the way - the "intellectual property" kind.)

- David Stein

Re:Still has to go under review.

[dpille]

As others mentioned, a well-informed examiner will reject this application. I'd monitor here until an examiner is assigned and email that person.

The opposition idea discussed below, while viable, would require you to have standing and money. Getting the examiner to refuse it with a gentle nudge to the relevant facts would require neither.

Fraud on the PTO

[troyboy]

IAAL, and to make a trademark application of the kind that is at issue here, you have to make a declaration that you have a bona fide intent to use the trademark.

HOWEVER, on Ultracade's website, there is an open letter to the MAME community dated February 21, 2005 in which they write:

"We have no desire to use the M.A.M.E. name or logos."

In other words, they are admittedly committing fraud on the Trademark Office.

Re:Thw /. community continues to amaze

[Mr.Zong]

Probably because once it hits, oh lets say the 10 year mark on software, the damn thing IS public domain. Sure the law say's otherwise, but the laws WILL change. We just have the foresight to see WHY it will change. We KNOW we can't buy the hardware to run it anymore. We KNOW NOBODY carries the software anymore. We KNOW the authors aren't making jack anymore. We KNOW that access to classic works allows for a greater understanding and expanded creativity. Quit treating software like other mediums, IT'S NOT THE SAME. It exists within its own timeline, one which flows at a different speed and needs different rules ebb it. And on a side note, I can write a tetris clone in about a page of code nowdays, how in the hell do you justify protecting something thats basically become another trival (and common) programming problem? (The majority of all these games are the evolutionary equivalent of the wheelbarrow compared to the flying cars we have today.)

Re:Mirrored Forum Posting from MAME.NET by David F

[northcat]

Arcade game ROMs can be obtained legally:

Star ROMs
Our classic arcade ROM database contains over 25 games at prices as low as $2 per title!

StarROMs was established to provide an inexpensive and legal source for classic video games. These are the original games exactly as you played them in the arcade. Now you can legally download the ROM and play the game at home, as often as you like, with your favorite emulator!

I don't know anything about Arcade game ROMs. I found this after Googling for about 5 seconds. I'm sure there are many more ways of getting ROMs legally. So this invalidates UltraCade's argument in that forum post. I wish parent had posted the link to the forum thread as, I'm sure, there would have been many replies to UltraCade's post, stating my point.

Re:Everything is in order here...

[drinkypoo]

What you really wanted was http://www.ultracade.com/openoffer.pdf which is a reaction to the reaction to your link.

Contents of the document follow:

February 21, 2005
An open offer to the M.A.M.E. community.

Our recent actions to protect our products have met with a lot of controversy. Many people have been quick to judge and make accusations about what we are attempting to do, and what we have already done. It is my understanding that the spirit of the M.A.M.E. community is ""M.A.M.E.'s purpose is to preserve these decades of videogame history." It is further my understanding that "Selling either is not allowed" with regards to M.A.M.E.

Given this understanding, we are willing to help promote these goals and work to provide the original authors with the protection they deserve. Our goal is to prevent the commercial offering of machines with illegally obtained ROMs. I believe our goals can work in parallel.

Furthermore, we have a long standing relationship with many publishers of many games, and we are constantly working to obtain more and more licenses for these games.

Our goal in filing the trademark for the name M.A.M.E. was simply to give us leverage against those companies that promote and sell machines with M.A.M.E. installed on it, and more importantly, provide their customers with the means to illegally obtain the ROMs. This doesn't help our sales of our products. This doesn't help the community in general.

We have no desire to use the M.A.M.E. name or logos; we simply wish to find ways to prevent illegal distribution of classic arcade games. We will be happy to cancel our application and work with the M.A.M.E. team to assign it to its rightful owners; however we do want to prevent it from being awarded to someone that intends to use it commercially.

I am available to work with the community to ensure that this happens, and to help get more games made available to the community at a reasonable price.

David R. Foley
CEO
UltraCade Technologies

So the whole problem could theoretically be solved by giving it to someone appropriate.

For those who are wondering about the MAME license:

II. Cost

MAME is free. Its source code is free. Selling either is not allowed.

Also interesting:

III. ROM Images

ROM images are copyrighted material. Most of them cannot be distributed
freely. Distribution of MAME on the same physical medium as illegal copies
of ROM images is strictly forbidden.
You are not allowed to distribute MAME in any form if you sell, advertise,
or publicize illegal CD-ROMs or other media containing ROM images. This
restriction applies even if you don't make money, directly or indirectly,
from those activities. You are allowed to make ROMs and MAME available for
download on the same website, but only if you warn users about the ROMs's
copyright status, and make it clear that users must not download ROMs unless
they are legally entitled to do so.

IV. Source Code Distribution

If you distribute the binary (compiled) version of MAME, you should also
distribute the source code. If you can't do that, you must provide a link
to a site where the source can be obtained.

Confused and IAAL

[cenonce]

I agree that this is a complex case. I practice trademark law and I do not understand who advised Mr. Foley to file a trademark application for MAME.

While missappropriation and unfair competition can be enforced via the Trademark Act, filing a trademark application (in my opinion) for a mark that you do not lawfully own does nothing. It would in effect force the hand of the open source developers of MAME so that they would have to oppose the application. Trademark rights are acquired by use of the mark in commerce. The open source project known as MAME has likely been using the mark for way longer than Mr. Foley and his company. This doesn't even take into account the legal requirement in trademark law to pick a mark that you know or reasonably should know is not in use by another.

The issue really is with the third party vendors instructing buyers on where to obtain illegal ROMs. It is not with the MAME trademark itself. Now, could there by vicarious infringement issues? Maybe, but that involves the copyrights on the game code, NOT with the MAME trademark.

A lot of times, clients ask their general business counsel for legal advice on trademarks and frankly, a lot of lawyers are too arrogant to say they don't know. I don't know if that is what happened here, but unless I have misread something, there is NO basis for Mr. Foley's company filing a trademark application for MAME. That is just bad legal advice. His company is not the lawful owner and he knows that there is already a company (i.e. open source project) using the mark in commerce.

Morons like you continue to amaze

[peteo]

This has NOTHING to do with the ILLEGAL Copies of Roms or Links to them.

The guy wants the Trademark the Name MAME so he can extort money out of people for using the MAME logo:

An email correspondence with Mr David Foley posted here: http://forum.arcadecontrols.com/index.php/topic,32 339.msg276462.html#msg276462

Message #1:

Comments: Your use of the MAME name and MAME logo is a violation of our registered trademark (USPTO Reg # 76627578). Rather than proceed with legal action against you and your company, and getting lawyers involved, we would like to resolve this directly. Please contact me by Wednsday to discuss. David R. Foley, CEO UltraCade Technologies.

My reply to message #1:

I remember looking up the Mame logo and it had a "dead" indicator
meaning it wasn't registered. I just print arcade marquees for enthusiasts'
cabinets. What information do you need from me, or what are you
requesting?

Regards,
Brent Bilis

Message #2:

It's not dead, and we own it. If you would like to pay us a royalty on the
graphics that you print, then we could probably come to some compromise.

My reply to message #2:

What type of fee structure are you considering?

Regards,
Brent Bilis

Message #3:

What do you sell them for, what is your cost of goods?

My reply to message #3:

I see that your status on the Mame logo as a trademark is only pending, and has not actually been granted. The USPTO Reg # you posted below clearly states that your new application is pending - how could you state that you own it? The US Patent and Trademark Office must not condone someone stating that they own a trademark when it is in this status. It can be said with certainty that ultracade is not the proprietor of the Mame logo. I'm certain that you're familiar with Nicola Salmoria. I don't think it would be wise to discuss royalties until you have actually been granted the trademark, wouldn't you agree? I will have to contact the attorney assigned to this trademark showing details of the Mame logo existing before ultracade along with your claim of ownership before considering any sort of royalty fees.

Regards,
Brent Bilis

Message #4:

I'm not looking for a royalty, but rather just an agreement that these will not be sold into commercial establishments. Our goal is to prevent companies from selling machines that are based on the MAME system, because these machines can not legally run 99% of the games on MAME.

Re:Copyrighted

[John Hasler]

> Because Ultracade won't be able to use the
> trademark if it's tied to someone else's
> copyrighted material unless that, too, is part
> of the agreement.

If the owner of the copyright blocks them from using the trademark it will lapse. Trademarks are not like copyrights. You must use them or lose them.

If what he is trying to register as a trademark is truly the MAME logo and if the MAME authors have been using it publically for years his application should be rejected. The MAME authors (and anyone else who has been using the logo) should file objections, attaching evidence of their use. Go to the USPTO Web site to learn how. You do not have to have a lawyer, though if you wish to spend the money to consult one you are likely to get better results.

The MAME authors might want to contact some of the Free Software support organizations for legal assistance.

Stealing is stealing nonetheless...

[Anonymous Coward]

Honestly, this is such a strange course of action, if you have no intrest in the open source project, why steal their logo and name. I, as a graphic designer 7 years in the field, know how much work goes into a good logo and a strong Identity system, and how morally wrong it is to steal legal content which others have created. You are trying to steal the identity of another company, you are lowering yourself to the level of those people on ebay stealing games and selling them using mame software to play them, why attack the mame team personally, you of all people should know that the source code is given away for free, what is stopping any other company from compiling their own verson, giving it a different name and logo and selling it on ebay in an arcade box anyway. Honestly you are taking a very idiotic approach to your problem. And... on a slightly different subject... I think you could use a better logo, balloon script is so 1995.

Open Letter to the Slashdot / MAME Community

[davidrfoley]

I'd like to take a moment and respond to the dribble that has been sent our way in response to this weekend's flurry about our trademark application with regards to MAME. I'd appreciate it if this would be spread to the same websites, blogs, and newsgroups that the unfounded rumors were that resulted in the very juvenile attacks on me personally, and my company. I have been in communication with one of the original MAME authors, and we are will be working together to ensure that the MAME trademark is assigned to the proper individuals and protect it from commercial exploitation, as was our intent all along. We have even offered to pay for all costs associated with that process. During the past three days, I have received many personal attacks and insults from several immature individuals that read a simple headline, and then go off on a child like rant about what they think we are doing. This was followed by several denial of service attacks on our corporate resources, phone calls to my office and cell phone. I received 270 emails in response to this. Most of them were single line insults against me personally. A few were misguided, but well articulated remarks. Even fewer were questions, asking for more information. I took the time to answer each and every message personally, explaining the facts. Many return to email addresses were not valid. Some people refused to listen to my explanation, or didn't care to believe what I told them. A few even apologized for their statements and we started a productive dialog and exchange of ideas. In summary, what we are doing moving forward is: Working directly with the original authors to secure the TM assigned in their name and protect the mark from commercial exploitation as expressed in the MAME distribution license Continuing to work with all major publishers to eliminate all illegal distribution of ROMs. Working on accelerating the rollout of our iROMs(TM) service to bring ROM distribution to the MAME community, following the music industries success in content distribution. We have put together a business model and later this summer will start to roll out affordable, legal ROM images for personal use on PC's running emulation software. We are working with all of the major publishers to get as much contact as possible, available to the general public. Continuing to police eBay and the Internet for sites that reference unlicensed games