Some 8Bitdo Nintendo Controllers Are Being Pulled From Sale

If you were looking to grab one 8Bitdo's SNES-style controllers for your Switch or other devices, you might want to move fast. At least one Australian retailer has pulled the devices from sale, after receiving copyright infringement notices from lawyers claiming to represent Nintendo.

Kotaku understands at least one retailer has received a trademark infringement notice over the 8Bitdo controllers, resulting in listings for the pads being taken offline. Not all retailers appear to have received the notice though, and at the time of writing there were multiple outlets still selling 8Bitdo pads in-store and online.

One retailer that appears to have pulled links offline, to a degree, is EB Games. Some of the links are still viewable through a qualified Google search, such as this one for the NES30 Pro Bluetooth pad and the SFC30 bluetooth controller, but none of the controllers appear when searching for 8Bitdo controllers directly through EB's site.

EB Games was not available for comment at the time of writing, although a staff member at one major store confirmed that the SFC30 controller and the older FC30 model were listed as "discontinued" in EB's system. That may simply mean, however, that EB has no plans to restock the controllers after their current inventory runs out.

According to the notice, which was supplied to Kotaku anonymously, the SF30 Pro, NES30 and SFC30 gamepads infringe upon Nintendo's trademarks for the SNES and the original NES, particularly the colour scheme and shape of the face buttons. The infringement notice appears to have been sent from a law firm headquartered in the United Kingdom, rather than Nintendo locally.

Kotaku has contacted Nintendo Australia for an official comment, as well as the firm responsible for the notice and other retailers. We will update this story as more information comes to light.

Update 8/3: Nintendo has replied via email, saying "we have nothing to comment on this topic".

This story is developing...


Comments

    What did they think was gonna happen. Big N isn't gonna let you just make almost-identical peripherals of their older controllers without payment.

      Probably a surprise to them 8bitdo has been trading for years with those nintendo styled controllers...

      there popularity though has risen with the Switch so finally someone noticed... but since its a UK law firm and not directly coming from Japan or North America is wierd.

      Or are Nintendo making an official controller or noticed sale number discrepencies at stores stocking them. Interesting.

        8bitdo is based in Hong Kong. So it does make some sense to engage a UK law form.

        It's not the Switch that's brought extra attention to them (I'm not even sure they work with the Switch at all?), it's the release of the Analogue Super Nt which is a complete SNES re-implementation on a FPGA board so 100% accurate emulation. They didn't bother making controllers and instead point people at 8bitdo, who made a range of 4 different types of SNES-shaped controllers that use the same colors as the four Super Nt variants.

    I'm surprised it took this long! They're a pretty high visibility manufacturer now, operating without licensing approval.

    Slight variation and they'll be back, the underlying hardware is decent.

    Interestingly, the copyright on these have almost certainly lapsed (between prior art and lack of positive affirmation of copyright between the end of snes manufacturing and now), I doubt these will become fully unavailable as long as you want to get them from eBay.

      The SNES controller design is trademarked, which is a 10 year term with unlimited renewals as long as the mark is still in use. Which it is, since the SNES Mini release was just last year.

        Discontinued in 2003, I am almost certain no design was released between 2003-2013, so trademark is gone (the colour issue mostly). Also you ignored that prior art in controller design almost certainly invalidates any copywrite.

        Last edited 07/03/18 6:37 pm

          Trademark's been renewed.

            Doesn't matter if it has been renewed if it wasn't used for a long period, that will invalidate it at court or if 8bitdo have used it for a number of years before Nintendo did anything, which I'm fairly sure they have.

            Also I just looked at every trademark owned by Nintendo on the Australian register and the only one relating to a controller they have is lapsed and is a logo, not a shape trade mark.

            Last edited 07/03/18 8:16 pm

          I noted below, the design was registered as class 9 and 28. Class 9 is software, where the controller design was in continuous use in the Virtual Console from 2006 to now, which would be enough to preserve protection. The disuse cancellation of a trademark isn't automatic and requires an application, otherwise the 10 year registration period applies.

          Is there any prior art of the SNES controller's shape prior to its first retail appearance in 1990? I remember the controller being pretty distinctive, but maybe I'm misremembering.

          This is just my reading of the situation based on the limited information we have, check with an IP attorney for a more definitive answer.

            I am an IP expert but don't want to put myself out there as providing advice. Trade marks and copyright are my main career focus. You seem pretty into this stuff so I figured I would respond and try to explain some things.

            You make some good points but are mixing a few things up. First of all I would try not to refer to a trade mark as a design, because a design is it's own ip right.

            A trade mark lapses if you don't renew it, as do it's rights. You are correct that this is every ten years. The only right I can see in Australia is that 2d black and white logo and is lapsed. Regardless it would be unlikely they could use that to stop a 3d shape. They would more likely need a shape trade mark to do this, but there are even more complicated debatable issues about that. It doesn't really matter though because it has lapsed.

            You also mention prior art. That is a patent consideration. The tm office considers something similar involving whether it is likely to be seen as a trade mark or not when allowing a trade mark to be registered. This is always a problem for shape trade marks because how often do you see a shape as a badge of origin? The correct way generally to protect such devices is a patent or a design, depending on certain factors. Both of them have a limited period of rights though unlike a trade mark which can be forever.

            Trade marks have an issue with becoming generic. You are expected to protect your right or lose it. This can be it either becoming so common place nobody sees it as your trade mark anymore, or letting someone else use it for so long they can also get their right registered. Also a registered trade mark requires continuous use, large lapses in years can result in the right being invalidated. All these issues would come up in any court case claiming infringement.

              I only mentioned prior art because Camm did, I don't think it's relevant to this situation personally.

        This sounds fake to me.

        First of all.. do they have a shape trade mark on these? It seems unlikely. Even if they do, they would need to prove in court that it is seen as a trade mark and not the giant Nintendo plastered across it, which seems unlikely. Shape trade marks always have this issue. The correct way to protect this is an industrial design, which wouldn't have lasted this long.

        They might have copyright in some aspect of it, unsure what, it's not really an artistic work and has been mass produced. Copyright lasts for the life of the author plus 80 years, but I don't think it matters because I don't think they would have any copyright due to the above reasoning.

        Also even if they do have a shape trade mark, the non-use action period is 3 years. Nintendo had a long period of not using these things. Also 8bitdo have been making these for years so furthermore honest concurrent use would be a defense.

        Last edited 07/03/18 6:48 pm

          The trademark registration number is 5964875, under application 2016-136902, for classes 9 and 28. The link to the Japanese trademark database is too long to want to post directly but you can find it with the numbers above.

          Three year non-use cancellation of a trademark isn't automatic, it's contingent on an application to the court. Until cancelled or expired (10 year duration), a trademark is in effect.

          Keep in mind, the mark is registered under two categories, and ongoing use only needs to be in one of them. Class 9 is software, which includes the SNES controller's appearance in the Virtual Console which first appeared in 2006 and still in use today.

            Having a Japanese trade mark doesn't give rights in Australia or anywhere else. Just Japan.

            I'm aware the cancellation for non use isn't automatic. Like I said though, it will be considered in court if infringement is claimed. Non use can be claimed in relation to any specific claim within either class. Each claim can be taken out, or amended, it does not have to be entire classes or the entire trade mark.

            There is still a huge issue with the entire 2d vs shape trade mark. But I feel I've explained that enough elsewhere on this page.

            Regardless. If Australian retailers are getting letters about a Japanese trade mark right, their lawyers are likely in breach of our laws for sending legal threats with no basis, or it is fake. Which seems more likely.

              I mentioned the Japanese one because it's the first of the applications globally. Nintendo EU and US both followed suit in the following days, from what I've been able to gather.

              Given you're uncertain about whether the prior trademark is for shape, perhaps you can comment on whether the current trademark is for shape? From my Google Translate reading of the trademark registration, it doesn't mention any type other than classes, and features a picture of the SNES controller sans labels and text.

    I'm more tempted to buy one now than ever. Almost pulled the trigger yesterday, but I feel like design has moved on, and they're going to be uncomfortable to use.

    But damn they look amazing!

        Thanks man. That's why i was tempted! Looked at this link and read many reviews yesterday. Even though these look amazing, I still think it's the right call not to get one.

        I can use my ps4 controller on my pc and still haven't had a moment with the switch where I've been like "i really need another whole controller."

        But thanks anyway. Legend!

    Kotaku understands at least one retailer has received a trademark infringement notice over the 8Bitdo controllers, 
    And only one it seems, web searches turn up no other results from any other retailers. I'd say it's a fake.

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