Tuesday, May 30, 2017

Guard to HD Nirvana : HDMI Licensing

The HDMI connector and cables are ubiquitous today for all high definition digital video devices.  The DVI port is essentially deprecated, DisplayPort has not really caught on at all outside PC Monitors and Thunderbolt is seldom used outside of Apple products.  All consumer HDTVs can be counted on having at least one or two HDMI inputs, and some even have an HDMI output for passing audio through to an audio receiver.

The HDMI connector is a consumer's dream, it just plugs in.  The connector is keyed and robust, you are unlikely to break any pins on an insertion.  The fit is snug enough that you don't need to fiddle with screws and cables can be hotswapped.  The connector and cable are thin enough to be mounted horizontally or vertically.  The cable carries audio and video, so it is as simple as you can get to hook up AV equipment.  Cables are cheap if you know where to shop, Monoprice built much of its business model on affordable HDMI cables.  Frequently, the HDMI connector is the only way to obtain HD input to your TV or monitor (apart from the digital TV/cable tuner using the coaxial screw, but the High Definition picture produced by this method usually leaves much to be desired).  HDMI is great but it is not free.  Let's take a look at the costs associated with HDMI and how some individuals and smaller, hobbyist and enthusiast-oriented retrogaming entities try to get around paying those costs.

As TVs and displays have increasingly moved toward the digital realm, gaming consoles have moved with them.  The Wii U, Switch, Xbox 360 (most models), Xbox One, PlayStation 3 (almost all models) & PlayStation 4 all have an HDMI connector.  Through the HDMI connector, all of these devices can support at least 720p resolutions, some can go higher.  Previous consoles only offered analog video outputs (RF, composite, S-Video, Component & RGB) and SDTV (240p or 480i) or EDTV resolutions (480p).  Unfortunately modern TVs do a very poor job of upscaling analog SD video used by older consoles.  Blurry, smeary graphics and noticeable latency can be expected from SD upscaling.

How HDMI is Licensed

The HDMI Trademarks are managed by HDMI Licensing, LLC.  It maintains a list of HDMI Adopters (licensees) and Terminated Adopters here : http://www.hdmi.org/learningcenter/adopters_founders.aspx  The RetroAVS is sold through RetroUSB, LLC, the Analogue Nt Mini is sold by Analogue, LLC (both California LLCs) and the XRGB-mini Framemeister is sold by Micomsoft, Co. Ltd., (a Japanese Corporation).  None of those entities are on the active or terminated adopters lists.

One has to be careful with assumptions, I could not find motherboard manufacturer ASRock on the list even though virtually all of its products have an HDMI connector on them.  But I found that its parent company, Pegatron, is on the official Adopter list.  Moreover, you won't find high end "budget-TV" manufacturer Vizio on that list either.  But Vizio sells rebranded TVs made in China, and at least one of its suppliers, Amtran, is an HDMI 2.0 Adopter.  Apparently the rules of HDMI licensing are flexible when it comes to rebranding or sublicensing.

The HDMI Trademark is usually seen with the distinctive HDMI logo on products and their packaging.  It looks like this in the U.S. (with the Registered Trademark symbol ®) :

Note the unusual "D" and "M".  In other countries, the ™ symbol is used instead on the logo.

There are two pricing plans to license the HDMI Trademark.  There is an annual fee of $10,000 or a low volume option of $5,000 per year plus a $1.00 unit administration fee.  All HDMI-equipped products must also pay a royalty of $0.15 per product sold.  This royalty drops to $0.05 if the HDMI logo is used on the product and packaging and $0.04 if HDCP content protection is implemented (a separate license).

Micomsoft is strange because its most popular product, the XRGB-mini Framemeister, doesn't have the official HDMI Logo on its box or product.  No do some of its other products which have an HDMI connector like the XCAPTURE-MINI or the XCAPTURE-1.  But other products like the ROOTY HD SP2PRO, the XDAC-1 and XC-HDMI do have the official stylized logo on them. http://www.micomsoft.co.jp/  My explanation is that the Framemeister and the capture cards are custom-designed products while the other products, which are splitters and cables, are rebranded products from other manufacturers.  The manufacturer may be an HDMI Adopter, which makes Micomsoft safe as to these products.

As far as the FPGA NES clones, the retroAVS and the Analogue Nt and Nt mini, the official HDMI logos are nowhere to be seen on these devices or their packaging.  But like the Framemeiser, the acronym "HDMI" is on their website, in their manuals and for the retroAVS, on the box.  The ports on the back of the retroAVS and Nt are unlabeled and the Nt Mini just has "HD".  The recently released RetroN 1 HD, which uses a Nes-on-a-Chip and an HDMI converter chip, does not have HDMI anywhere on the box or the console.

All these devices should have HDMI encoder chips and have HDMI connectors whose manfacturers have officially licensed (one hopes) the HDMI patents, but is that enough?  Not according to HDMI Licensing :

"An HDMI product that consists entirely of licensed components does not necessarily
mean the final product is a licensed product. Every end-user product, such as a Digital TV
or tablet, must itself be a duly licensed product even though it may contain one or more
duly licensed components.

The following is required for an HDMI product to be licensed and authorized to bear the
HDMI trademarks.

a. The manufacturer of the finished end-user product MUST be a licensed HDMI
Adopter, and

b. The finished end-user product MUST satisfy all requirements as defined in the
Adopter Agreement including but not limited to passing compliance testing either
at an HDMI ATC or through self-testing.

. . .

HDMI, the HDMI logo, and High-Definition Multimedia Interface are trademarks or
registered trademarks of HDMI Licensing Administrator, Inc. in the United States and/or
other countries."

I would suggest that HDMI Licensing would view products like the Analogue Nt Mini and the Framemeister as "end-user" products which contain licensed HDMI components.

How HDMI is Trademarked

"High-Definition Multimedia Interface" is almost certainly an example of a descriptive mark, the individual words pre-existed and were combined to describe a particular type of product.  But the name is so generic that on its own, it may not be protectable.  It can only become protectable if it acquires "secondary meaning" in that those words would associate themselves with source of the product in the minds of consumers.  Sierra On-Line, Inc. v. Phx. Software, Inc., 739 F.2d 1415, 1422-23 (9th Cir. 1984).  In other words, when the consumer reads or hears the words "High-Definition Multimedia Interface", they must associate those words with this :

You could see why that association might be a bit of a cognitive leap for your average consumer.  But acryonyms of generic terms can be trademarked and often are much more easy to associate with a particular product or service.  Everyone knows IBM and AMD, will everybody associate "International Business Machines" and "Advanced Micro Devices" with those companies?

When you use the term "HDMI", a consumer is much more likely to think of the above connector, its cables and its general functionality than if you use the full name of the product.  Thus when "High-Definition Multimedia Interface" and "HDMI" are used in the official logo, the mark has a much stronger likelihood of being protected.  Martahaus v. Video Duplication Services Inc., 3 F.3d 417 (Fed. Cir. 1993).  HDMI Licensing requires the Logo and Text to be used except when size is a real concern, such as on cables and buttons.  The ubiquity of "HDMI" when used with the stylized logo itself is probably sufficient given how dominant HDMI when connecting high definition video devices.  Welding Services Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007).

The Nominative Use Defense to Trademark Infringement

The above devices and other HDMI-enabled upscaling mods like the Hi-Def NES Mod, the UltraHDMI for the N64 and the hdmyboy for the Game Boy are the end-user products and according to HDMI Licensing, they must be manufactured by HDMI Adopters.  By HDMI Licensing's definitions, the use of HDMI in connection with an audio/visual connector comes within its trademark protection.  For this reason other products like the Open Source Scan Converter (OSSC) upscaler use a DVI port, which appears to be license and royalty free.  DisplayPort may or may not be royalty free, but access to the standard costs $5,000.  I was informed from a knowledgeable source on a chat log recently that the next version of the OSSC will be using the HDMI connector because it works is essentially HDMI in its audio/video transmission except for the cable.

A defense to trademark infringement is a fair use defense called nominative use.  Nominative use uses the mark to describe goods without indicating that those goods are authorized by the trademark holder.  One example is software that used to say "100% IBM PCs & Compatibles" on their System Requirement labels in the 1980s and early 1990s.  Unless the software was being sold by or under license from IBM, there could be a trademark issue here.  "IBM" is a trademarked acronym, and "IBM PC" may also have been a trademarked acronym for its line of computers.

The standard test for determining whether the use of a trademark qualifies as nominative use was given in New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).  The court used a three part test.  First, was there any reasonable way for the unauthorized user to avoid using the trademarked term to describe the product or service?  Second, did the unauthorized user use more of the trademark than was necessary to inform the customer of the functionality of its product or service?  Third, did the unauthorized product or service indicate that it was authorized or sponsored by the trademark holder?

As to the first part of the New Kids test, while you could use a phrase like "that 19-pin six-sided video connector which transmits digital high definition video and audio content" to describe the physical HDMI connector, nominative use does not require absurd turns of phrase.   HDMI is the only way anyone is going to describe that particular plug or the cables which plug into it.  So ultimately you cannot identify the product without using the acronym "HDMI".

Prior to New Kids, Camerica put this on the boxes of its unlicensed NES cartridges : "For the 8-bit Game Deck from Nintendo of America, Inc.  This is a product of Camerica Limited, Inc. and is not designed, manufactured, distributed or endorsed by Nintendo of America, Inc."  But Tengen, when it made unlicensed NES games at the same time, indicated on its box "For play on the Nintendo Entertainment System®" but continued "This product is designed and manufactured by Tengen.  It is not designed, manufactured, sponsored, or endorsed by Nintendo®.  Nintendo and Nintendo Entertainment System are trademarks of Nintendo of America, Inc."  Nintendo sued Tengen not because it indicated compatibility with the NES on its advertising and boxes but because it cloned the code in the NES's lockout chip.  Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832 (Fed. Cir. 1992).

As to the second part of the New Kids test, some of these products do not use more of the mark than necessary to identify the video/audio connector used.  They do not have the protected HDMI Logo anywhere on their product pages, in their manuals or on their products or boxes.  They do use HDMI on several occasions in their manuals.  However, the number of uses alone has never been held to tip the balance between fair use and trademark infringement.  But see Playboy Enters. v. Welles, 279 F.3d 796, 804-05 (9th Cir. 2002) (repeated use of "PMOY 81" on website's wallpaper, an acronym for "Playmate of the Year, 1981" unnecessary when the full title had already been used on the website to describe defendant and which had been held to be fair use).  In at least two cases, the trademarked term "UltraHDMI" and (the confusingly similar) "hdmyboy" are the names of the product.  That may go too far, as the use of the mark may be more than necessary.  Other products discussed here have avoided using the trademarked term in the product name.  (The Hi-Def NES Mod uses Nintendo's trademarked "NES" in its title, so it may also have a problem here.)

The final New Kids factor, the sponsorship issue, has been conflated with the potential for confusion.  Health Grades, Inc. v. Robert Wood Johnson Univ. Hosp., Inc., 634 F. Supp. 2d 1226, 1241 (D. Colo. 2009)  Here, none of these products indicate that they are licensed HDMI products and none of the companies or people behind them hold themselves out as HDMI Adopters.  On the other hand, there are no disclaimers to that effect either.  While New Kids did not require disclaimers, without disclaimers a consumer may not appreciate the lack of the official HDMI logo, for example, and may believe that these are authorized products.  Of course, these products are intentionally vague on the issue, perhaps to avoid altering people to the issue.  By contrast, my Vizio TV's manual, for example, clearly implies that its usage is authorized and the ASRock website frequently uses the official logo. On the other hand, Micomsoft's use of the HDMI logo on some of its products, but others, may be more likely to confuse a consumer into believing that all its products are authorized.


Jonathan said...

Wow! That is a very detailed legal (and technical) analysis. I have some familiarity with IP law (especially copyright), but this is way above my pay grade.

SFCable said...

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