Micro Star v. FormGen Inc.

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Micro Star v. FormGen Inc.
Seal of the United States Courts, Ninth Judicial Circuit.svg
CourtUnited States Court of Appeals, Ninth Circuit
Full case nameMICRO STAR v. FORMGEN INC., a corporation; GT Interactive Software Corp.; 3D Realms Entertainment, aka 3D Realms Entertainment.
ArguedNovember 4 1997
DecidedSeptember 11 1998
Citation(s) 154 F.3d 1107
Case history
Prior action(s)Micro Star v. FormGen Inc., No. CV 96-3435 H(CM) (C.D. Cal. September 30, 1996)
Holding
Micro Star infringed FormGen's copyright by creating unauthorized derivative works which were not a fair use
Court membership
Judge(s) sitting Alex Kozinski, David R. Thompson, Stephen S. Trott
Case opinions
Majority Alex Kozinski
Laws applied
17 U.S.C.   § 103,§ 106, § 107

Micro Star v. FormGen Inc. 154 F.3d 1107 (9th Cir. 1998) is a legal case applying copyright law to video games, stopping the sales of a compilation of user-generated levels that infringed the copyright of Duke Nukem 3D. Micro Star downloaded the Duke Nukem 3D levels and re-packaged them as Nuke It, after seeing their popularity on the internet. Micro Star filed suit in the United States District Court for the Southern District of California, asking for declaratory judgment that they had not infringed any copyright. Game publisher FormGen counter-sued, claiming that Micro Star created a derivative work based on Duke Nukem 3D and infringed their copyright.

Contents

At the time, the most relevant case law was Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. (1992), where the court found that the Game Genie did not infringe Nintendo's copyrights, because the device did not store any modified images in any concrete or permanent form. The district court found that Micro Star had likely infringed copyright with their packaging, which included artwork from Duke Nukem 3D, but found that the levels themselves were non-infringing. Both parties appealed the ruling, and the appeal court held decisively against Micro Star. Copyright law gives the copyright holder the exclusive right to make sequels to their work, and the court found that the stories told in the Nuke It map files are "surely sequels, telling new tales of Duke's fabulous adventures".

The ruling continues to apply to the legal status of video game modding, with mods viewed as derivative works that require the consent of the copyright holder. While this may legally limit the creation of mods, machinima, broadcasts, or even cheats, many game developers have authorized and encouraged some of these activities.

Background

Facts

Apogee is a video game developer responsible for creating the Duke Nukem series of computer games. [1] The game studio developed Duke Nukem 3D under their new name 3D Realms, with support from software publisher FormGen. [2] Released in 1996, Duke Nukem 3D was acclaimed as one of the best video games of all time by PC Gamer. [3] The game also included a tool that allowed players to create their own levels using the game's graphics and gameplay. [4] This was part of a growing trend of games that allowed user-generated video game modifications, [4] with FormGen encouraging Duke Nukem players to share their creations on the growing Internet. [5]

The popularity of these levels was noticed by Micro Star, a computer software distributor, which downloaded 300 levels and mass produced them on CD-ROM for commercial sale. [5] The compilation Nuke It was adorned with screen shots of the levels created for Duke Nukem 3D. [6]

Law

In the case Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., the court found that the Game Genie did not infringe copyright, because it did not store any Nintendo images in any permanent form. Game-Genie-NES.jpg
In the case Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. , the court found that the Game Genie did not infringe copyright, because it did not store any Nintendo images in any permanent form.

According to United States copyright law, the copyright holder has the exclusive right to create derivative works based on the original work. [5] Micro Star filed suit in the United States District Court for the Southern District of California, asking for a declaratory judgment that they had not committed copyright infringement. FormGen counter-sued, claiming that Micro Star infringed their copyright by making derivative works of Duke Nukem 3D. [7]

At issue was the legal precedent from Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. (1992), where the court found that the Game Genie did not infringe Nintendo's copyrights, because the device did not store any modified images in any concrete or permanent form. [5] Micro Star cited the case to show that their map files did not contain any of FormGen's copyrighted content, as they only referenced the art files in Duke Nukem 3D, without creating a permanent derivative work. [7]

Micro Star also argued that the players had created the map files as non-commercial fair use, or alternatively, that FormGen abandoned their copyright to the user-created levels by authorizing users to create them. [5] Under the fair use doctrine, copying a copyrighted work is sometimes allowed in the public interest, depending on four factors: (1) the purpose and character of the use, including whether it is commercial in nature; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copied material in relation to the copyrighted work as a whole; and (4) the effect of the use on the potential market for the copyrighted work. [5]

Ruling

District Court

The district court granted a preliminary injunction against MicroStar, preventing them from using the screenshots from Duke Nukem 3D on their packaging, and rejecting Micro Star's argument that these images qualified as fair use. [5] However, the district court considered the precedent from Galoob v. Nintendo, and found that Nuke It was not a derivative work and did not violate FormGen's copyright. [7] Both sides filed appeals with United States Court of Appeals for the Ninth Circuit. [5]

Appeal Court

The Richard H. Chambers United States Court of Appeals, which houses the United States Court of Appeals for the Ninth Circuit Court of Appeals.jpg
The Richard H. Chambers United States Court of Appeals, which houses the United States Court of Appeals for the Ninth Circuit

The appeal decision was written by Judge Alex Kozinski. [7] Citing the precedent in Galoob v. Nintendo, the court narrowed the definition of a derivative work to two main requirements: that the derivative work must exist in a concrete and permanent form, and that it must substantially incorporate protected material from the original work. [5] In this case, the Nuke It map files generated audiovisual displays in interaction with the Duke Nukem 3D game, and the court concluded that the description of an audiovisual display counts as a permanent or concrete form. [7] This clearly applied to Nuke It as these descriptions were stored in a file on a compact disc. [5] On the second requirement, the court concluded that Nuke It makes significant use of the art library from Duke Nukem 3D, despite the fact that the map files only referred to that art. [7] Copyright law gives the copyright holder the exclusive right to make sequels to their work, and the court found that the stories told in the Nuke It map files are "surely sequels, telling new tales of Duke's fabulous adventures". [7]

After finding that Nuke It was indeed a derivative work based upon Duke Nukem 3D, the court went on to consider Micro Star's fair use argument. Micro Star asked the court to examine fair use from the user's point of view, but the court refused. [5] Considering all of the fair use factors, the court found that Micro Star made heavy use of the FormGen's copyrighted game in terms of both quantity and importance, allowing Micro Star to profit from this use while also harming the market for sequels to Duke Nukem 3D. [7] The court also rejected Micro Star's argument that FormGen abandoned all rights to their protected expression in Duke Nukem 3D, saying that this could only be done through an overt act. [5]

The court reversed the district court's order denying a preliminary injunction on distributing Nuke It, concluding that FormGen would likely succeed in a claim against Micro Star for copyright infringement. [7] The court also affirmed the district court's preliminary injunction preventing Micro Star from using Duke Nukem 3D screenshots on their packaging. [7]

Outcome

Micro Star's parent company, GT Interactive, [8] reacted with support for user-generated levels, while also stating that "the commercial exploitation of player-created levels is a clear violation of the Duke Nukem 3D copyright". [9] The court distinguished the facts in Micro Star v. FormGen from those of the Game Genie case in Galoob v. Nintendo, because the Duke Nukem 3D mods were recorded in permanent files. [5] Law professors Ron and Elizabeth Gard summarized that the ruling treated the user generated maps as non-copyrightable derivative works, even though the map files did not contain the original game's code. [10] Attorney Ross Dannenberg also noted that the Duke Nukem maps were found to be infringing derivative works because they incorporated elements of the original game's art and story. [11]

The impact of the case was overshadowed by the Digital Millennium Copyright Act that also passed in 1998, which prohibited anyone from circumventing technological access controls for copyrighted works. [12] Alessandra Garbagnati in the Hastings Communications and Entertainment Law Journal argues that the Formgen case limited the rights previously afforded to consumers in Galoob, and these rights were further narrowed by the Digital Millennium Copyright Act. [13]

Legacy

The Micro Star decision may apply to any derivative work based on a copyrighted video game, including mods, machinima, and even live broadcasts of esports, pictured above. LOL2016WorldsFinalsArena.jpg
The Micro Star decision may apply to any derivative work based on a copyrighted video game, including mods, machinima, and even live broadcasts of esports, pictured above.

Legal scholars have highlighted Micro Star v. Formgen as a pivotal legal holding on the issue of unauthorized derivative works, including mods and other user-generated content. [10] [11] Writing for the William & Mary Business Law Review in 2020, Carl Lindstrom states that "Micro Star v. Formgen's holding still remains the final word on the legal status of mods, even when created using developer-furnished tools." [14] Melinda Schlinsog in the Tulane Journal of Technology and Intellectual Property also noted Microstar v. Formgen could apply to all video game mods, though the Galoob v. Nintendo precedent may still protect mods that are non-commercial in nature. [6]

J. Remy Green wrote for the North Carolina Journal of Law & Technology , discussing whether awarding more rights to modders would discourage original games, or encourage more derivative works. [15] While Microstar determined that "mods are viewed as derivative works and are, therefore, violations of the copyright holder’s rights if made without the copyright holder’s consent," the BYU Law Review praised the video game industry for allowing and encouraging mods for popular video games. [16]

In the Journal of Intellectual Property Law , Matthew Freedman cautioned that the case could effect the legality of machinima, where artists use copyrighted video game assets to produce animated films. [17] Dan Burk in the University of Pennsylvania Law Review also cautioned that Microstar may apply to make esports broadcasts an infringing activity, as the copyright of each game belongs to its creators. [18] Since the court interpreted the Nuke It map files distributed by Micro Star to be sequels, this ruling is also noted for showing that video game copyright owners have the exclusive right to make sequels. [15] The Verge discussed whether it would infringe copyright if a player uses a video game mod to cheat, and noted that Microstar v. Formgen is unclear about whether any video game mods are permissible fair use. [19] Regardless, Zvi Rosen in the Chicago-Kent Journal of Intellectual Property notes that many game developers have openly supported the creation of game modifications, and that the "relationship of mods to the computer game industry has shifted," even if "the law's view of mods has not". [4]

Related Research Articles

A copyright is a type of intellectual property that gives its owner the exclusive right to copy, distribute, adapt, display, and perform a creative work, usually for a limited time. The creative work may be in a literary, artistic, educational, or musical form. Copyright is intended to protect the original expression of an idea in the form of a creative work, but not the idea itself. A copyright is subject to limitations based on public interest considerations, such as the fair use doctrine in the United States.

<i>Duke Nukem 3D</i> 1996 first-person shooter video game

Duke Nukem 3D is a first-person shooter video game developed by 3D Realms. It is a sequel to the platform games Duke Nukem and Duke Nukem II, published by 3D Realms.

Game Genie is a line of video game cheat cartridges originally designed by Codemasters, sold by Camerica and Galoob. The first device in the series was released in 1990 for the Nintendo Entertainment System, with subsequent devices released for the Super NES, Game Boy, Genesis, and Game Gear. All Game Genie devices temporarily modify game data, allowing the player to do things unintended by developers such as, depending on the game, cheating, manipulating various aspects of games, and accessing unused assets and functions. Five million units of the original Game Genie products were sold worldwide, and most video game console emulators feature Game Genie code support. Emulators that have Game Genie support also allow a near-unlimited number of codes to be entered whereas the actual products have an upper and lower limit, between three and six codes.

Modding is a slang expression derived from the English verb "to modify". The term refers to modification of hardware, software, or anything else, to perform a function not originally intended by the designer, or to achieve bespoke specification or appearance. The term is often used in relation to video games, particularly in regard to creating new or altered content and sharing that via the web. It may be applied to the overclocking of computers in order to increase the frequency at which the CPU operates. Case modding is a popular activity amongst many computer enthusiasts which involves the customization of a computer case or the installation of water cooling technology. In connection with automobiles, modding can connote engine tuning, remapping of a vehicle's engine control unit or customization of the coachwork.

Video game modding is the process of alteration by players or fans of one or more aspects of a video game, such as how it looks or behaves, and is a sub-discipline of general modding. Mods may range from small changes and tweaks to complete overhauls, and can extend the replay value and interest of the game.

Ripping is extracting all or parts of digital content from a container. Originally, it meant to rip music out of Commodore 64 games. Later, the term was used to extract WAV or MP3 format files from digital audio CDs, but got applied as well to extract the contents of any media, including DVD and Blu-ray discs, and video game sprites.

Software copyright is the application of copyright in law to machine-readable software. While many of the legal principles and policy debates concerning software copyright have close parallels in other domains of copyright law, there are a number of distinctive issues that arise with software. This article primarily focuses on topics particular to software.

Camerica was a Canadian video game company founded in 1988. It released various unlicensed video games and accessories for the Nintendo Entertainment System, such as the Game Genie, and was the North American publisher for British developer Codemasters.

<span class="mw-page-title-main">Galoob</span> American toy company

Lewis Galoob Toys, Inc., was a toy company headquartered in South San Francisco, California. They are perhaps best known for creating Micro Machines, which accounted for 50% of its sales in 1989, and distributing the Game Genie in the United States.

A copyright is the legal protection extended to the owner of the rights in an original work. Original work refers to every production in the literary, scientific, and artistic domains. The Intellectual Property Office (IPOPHL) is the leading agency responsible for handling the registration and conflict resolution of intellectual property rights and to enforce the copyright laws. IPOPHL was created by virtue of Republic Act No. 8293 or the Intellectual Property Code of the Philippines which took effect on January 1, 1998, under the presidency of Fidel V. Ramos.

<i>Midway Manufacturing Co. v. Artic International, Inc.</i> U.S. Court of Appeals case

Midway Manufacturing Co. v. Artic International, Inc., 704 F.2d 1009, was a legal case where the United States Court of Appeals for the Seventh Circuit found that Artic violated Midway's copyright in their arcade games Pac-Man and Galaxian. The lawsuit was part of a trend of "knock-off" video games in the early 1980s, with courts recognizing that a video game can qualify for protection as a copyrighted audiovisual work.

<span class="mw-page-title-main">FormGen</span>

FormGen Corporation was a developer of business software and publisher of video games based in Scottsdale, Arizona.

<span class="mw-page-title-main">Video game console emulator</span> Program that reproduces video game consoles behavior

A video game console emulator is a type of emulator that allows a computing device to emulate a video game console's hardware and play its games on the emulating platform. More often than not, emulators carry additional features that surpass limitations of the original hardware, such as broader controller compatibility, timescale control, easier access to memory modifications, and unlocking of gameplay features. Emulators are also a useful tool in the development process of homebrew demos and the creation of new games for older, discontinued, or rare consoles.

<i>Lewis Galoob Toys, Inc. v. Nintendo of America, Inc.</i> 1992 American court case on copyright

Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. is a 1992 legal case where the United States Court of Appeals for the Ninth Circuit concluded that there was no copyright infringement made by the Game Genie, a video game accessory that could alter the output of games for the Nintendo Entertainment System. The court determined that Galoob's Game Genie did not violate Nintendo's exclusive right to make derivative works of their games, because the Game Genie did not create a new permanent work. The court also found that the alterations produced by the Game Genie qualified as non-commercial fair use, and none of the alterations were supplanting demand for Nintendo's games.

<span class="mw-page-title-main">Derivative work</span> Expressive work created from a major part of a different, original artwork

In copyright law, a derivative work is an expressive creation that includes major copyrightable elements of a first, previously created original work. The derivative work becomes a second, separate work independent in form from the first. The transformation, modification or adaptation of the work must be substantial and bear its author's personality sufficiently to be original and thus protected by copyright. Translations, cinematic adaptations and musical arrangements are common types of derivative works.

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<span class="mw-page-title-main">Copyright infringement</span> Usage of a copyrighted work without the authors permission

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Duke Nukem is a media franchise named for its main character, Duke Nukem. Created by the company Apogee Software Ltd. as a series of video games for personal computers, the series expanded to games released for various consoles by third-party developers. The first two games in the main series were 2D platformers, while the later games have been a mix of first-person and third-person shooters.

<i>Atari Games Corp. v. Nintendo of America Inc.</i> Legal dispute between Atari and Nintendo

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The protection of intellectual property (IP) of video games through copyright, patents, and trademarks, shares similar issues with the copyrightability of software as a relatively new area of IP law. The video game industry itself is built on the nature of reusing game concepts from prior games to create new gameplay styles but bounded by illegally direct cloning of existing games, and has made defining intellectual property protections difficult since it is not a fixed medium.

References

  1. ↑ "Top 100 Video Games". Flux. No. 4. Harris Publications. April 1995. p. 30.
  2. ↑ Plante, Chris (October 26, 2017). "Apogee: Where Wolfenstein got its start". Polygon. Retrieved November 9, 2022.
  3. ↑ "The 50 Best Games Ever". PC Gamer US . Vol. 5, no. 10. October 1998. pp. 86, 87, 89, 90, 92, 98, 101, 102, 109, 110, 113, 114, 117, 118, 125, 126, 129, 130.
  4. 1 2 3 Rosen, Zvi (April 2005). "Mod, Man, and Law: A Reexamination of the Law of Computer Game Modifications". Chicago-Kent Journal of Intellectual Property . 4 (2): 196–216.
  5. 1 2 3 4 5 6 7 8 9 10 11 12 13 Leibsker, Brett (Fall 1998). "Micro Star v. FormGen, Inc. 154 F.3d 1107 (9th Cir. 1997)". DePaul Journal of Art, Technology & Intellectual Property Law. 9 (1): 211–218.
  6. 1 2 Schlinsog, Melinda J. (2013). "Endermen, Creepers, and Copyright: The Bogeymen of User-Generated Content in Minecraft". Tulane Journal of Technology and Intellectual Property. 16: 185–206.
  7. 1 2 3 4 5 6 7 8 9 10 Micro Star v. FormGen Inc.,154.F.3d 1107 (9th Cir. 1999) (opinion full text).
  8. ↑ "Company News;GT Interactive Acquires Humongous Entertainment". The New York Times . July 11, 1996. Archived from the original on September 25, 2021. Retrieved October 3, 2021.
  9. ↑ "Nuke It Gets Duked". Wired. September 28, 1998. ISSN   1059-1028 . Retrieved January 15, 2023.
  10. 1 2 Gard, Elizabeth Townsend; Gard, W. Ronald (January 12, 2017). Video Games and the Law. Taylor & Francis. p. 52. doi:10.4324/9781315209210. ISBN   978-1-351-80598-8.
  11. 1 2 Dannenberg, Ross A. (2010). Computer Games and Virtual Worlds: A New Frontier in Intellectual Property Law. American Bar Association. pp. 72–73. ISBN   978-1-60442-750-9.
  12. ↑ Netanel, Neil (Winter 1999). "Recent Developments in Copyright Law" (PDF). Texas Intellectual Property Law Journal. 7: 331–345.
  13. ↑ Garbagnati, Alessandra (January 2012). "The Wrath of the Blizz King: How the Ninth Circuit's Decision in MDY Industries, Inc. v. Blizzard Entertainment May Slay the Game Genie". Hastings Communications and Entertainment Law Journal. 34 (3): 313–340.
  14. ↑ Lindstrom, Carl (April 2020). "Mod Money, Mod Problems: A Critique of Copyright Restrictions on Video Game Modifications and an Evaluation of Associated Monetization Regimes". William & Mary Business Law Review. 11 (3): 811–843.
  15. 1 2 Green, J. Remy (March 2018). "All Your Works Are Belong to Us: New Frontiers for the Derivative Work Right in Video Games". North Carolina Journal of Law & Technology. 19 (3): 393–442.
  16. ↑ Wallace, Ryan (January 27, 2014). "Modding: Amateur Authorship and How the Video Game Industry is Actually Getting It Right". BYU Law Review. 2014 (1): 219–256.
  17. ↑ Freedman, Matthew (October 2005). "Machinima and Copyright Law". Journal of Intellectual Property Law. 13 (1): 235–254.
  18. ↑ Burk, Dan L. (2013). "Owning E-Sports: Proprietary Rights in Professional Computer Gaming". University of Pennsylvania Law Review. 161 (6): 1535–1576.
  19. ↑ Jeong, Sarah (May 9, 2018). "The curious case of the Fortnite cheater". The Verge. Retrieved November 6, 2022.
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