Micro Star v. FormGen Inc.
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''Micro Star v. FormGen Inc.'' 154 F.3d 1107 (9th Cir. 1998) is a legal
case Case or CASE may refer to: Containers * Case (goods), a package of related merchandise * Cartridge case or casing, a firearm cartridge component * Bookcase, a piece of furniture used to store books * Briefcase or attaché case, a narrow box to c ...
applying copyright law to video games, stopping the sales of a compilation of user-generated
levels Level or levels may refer to: Engineering *Level (instrument), a device used to measure true horizontal or relative heights *Spirit level, an instrument designed to indicate whether a surface is horizontal or vertical *Canal pound or level *Regr ...
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 FormGen Corporation was a developer of business software and publisher of video games based in Scottsdale, Arizona. History FormGen was founded in 1987 by friends Randy MacLean and Robert Van Rycke in Bolton, Ontario. It was a software producer an ...
counter-sued, claiming that Micro Star created a
derivative work In copyright law, a derivative work is an expressive creation that includes major copyrightable elements of an original, previously created first work (the underlying work). The derivative work becomes a second, separate work independent in fo ...
based on ''Duke Nukem 3D'' and infringed their copyright. At the time, the most relevant
case law Case law, also used interchangeably with common law, is law that is based on precedents, that is the judicial decisions from previous cases, rather than law based on constitutions, statutes, or regulations. Case law uses the detailed facts of a l ...
was ''
Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. ''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 ...
'' (1992), where the court found that the Game Genie did not infringe
Nintendo is a Japanese Multinational corporation, multinational video game company headquartered in Kyoto, Japan. It develops video games and video game consoles. Nintendo was founded in 1889 as by craftsman Fusajiro Yamauchi and originally produce ...
'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 Machinima, originally machinema () is the use of real-time computer graphics engines to create a cinematic production. Most often, video games are used to generate the computer animation. The word "machinima" is a portmanteau of the words ''ma ...
, broadcasts, or even cheats, many game developers have authorized and encouraged some of these activities.


Background


Facts

Apogee is a
video game developer A video game developer is a broad term for a software developer specializing in video game development – the process and related disciplines of creating video games. A game developer can range from one person who undertakes all tasks to a large ...
responsible for creating the ''
Duke Nukem ''Duke Nukem'' is a video game series named for its main character, Duke Nukem. Created by the company Apogee Software Ltd. (now 3D Realms) as a series of video games for personal computers, the series expanded to games released for various co ...
'' series of
computer games A personal computer game, also known as a PC game or computer game, is a type of video game played on a personal computer (PC) rather than a video game console or arcade machine. Its defining characteristics include: more diverse and user-deter ...
. The game studio developed '' Duke Nukem 3D'' under their new name 3D Realms, with support from software publisher
FormGen FormGen Corporation was a developer of business software and publisher of video games based in Scottsdale, Arizona. History FormGen was founded in 1987 by friends Randy MacLean and Robert Van Rycke in Bolton, Ontario. It was a software producer an ...
. Released in 1996, ''Duke Nukem 3D'' was acclaimed as one of the best video games of all time by PC Gamer. The game also included a tool that allowed players to create their own levels using the game's graphics and gameplay. This was part of a growing trend of games that allowed user-generated video game modifications, with FormGen encouraging ''Duke Nukem'' players to share their creations on the growing Internet. 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 A CD-ROM (, compact disc read-only memory) is a type of read-only memory consisting of a pre-pressed optical compact disc that contains data. Computers can read—but not write or erase—CD-ROMs. Some CDs, called enhanced CDs, hold both comput ...
for commercial sale. The compilation ''Nuke It'' was adorned with screen shots of the levels created for ''Duke Nukem 3D''.


Law

According to United States copyright law, the copyright holder has the exclusive right to create derivative works based on the original work. 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''.''Micro Star v. FormGen Inc.'
154.F.3d 1107
(9th Cir. 1999) (opinion full text).
At issue was the legal precedent from ''
Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. ''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 ...
'' (1992), where the court found that the Game Genie did not infringe
Nintendo is a Japanese Multinational corporation, multinational video game company headquartered in Kyoto, Japan. It develops video games and video game consoles. Nintendo was founded in 1889 as by craftsman Fusajiro Yamauchi and originally produce ...
's copyrights, because the device did not store any modified images in any concrete or permanent form. 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. 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. 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.


Ruling


District Court

The district court granted a preliminary
injunction An injunction is a legal and equitable remedy in the form of a special court order that compels a party to do or refrain from specific acts. ("The court of appeals ... has exclusive jurisdiction to enjoin, set aside, suspend (in whole or in pa ...
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. 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. Both sides filed appeals with United States Court of Appeals for the Ninth Circuit.


Appeal Court

The appeal decision was written by Judge Alex Kozinski. 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. 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. This clearly applied to ''Nuke It'' as these descriptions were stored in a file on a compact disc. 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. 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". 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. 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''. 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. 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. The court also affirmed the district court's preliminary injunction preventing Micro Star from using ''Duke Nukem 3D'' screenshots on their packaging.


Outcome

Micro Star's parent company, GT Interactive, 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". 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. 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. 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. 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. 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.


Legacy

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. 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." Melinda Schlinsog in the ''
Tulane Journal of Technology and Intellectual Property The ''Tulane Journal of Technology and Intellectual Property'' (JTIP) is a student-edited journal of the Tulane University Law School. JTIP examines legal issues relating to technology, including topics such as antitrust, computer law, contracts, ...
'' 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. J. Remy Green wrote for the ''
North Carolina Journal of Law & Technology ''North Carolina Journal of Law & Technology'' (JOLT) is a semi-annual student publication of the University of North Carolina School of Law. The journal, one of the first of its kind, was founded in 1998 and is viewed as one of the top law and te ...
'', discussing whether awarding more rights to modders would discourage original games, or encourage more derivative works. 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 The ''Brigham Young University Law Review'' is a law journal edited by students at Brigham Young University Brigham Young University (BYU, sometimes referred to colloquially as The Y) is a private research university in Provo, Utah. It was ...
'' praised the video game industry for allowing and encouraging mods for popular video games. In the '' Journal of Intellectual Property Law'', Matthew Freedman cautioned that the case could effect the legality of
machinima Machinima, originally machinema () is the use of real-time computer graphics engines to create a cinematic production. Most often, video games are used to generate the computer animation. The word "machinima" is a portmanteau of the words ''ma ...
, where artists use copyrighted video game assets to produce animated films. Dan Burk in the '' University of Pennsylvania Law Review'' also cautioned that ''Microstar'' may apply to make
esports Esports, short for electronic sports, is a form of competition using video games. Esports often takes the form of organized, multiplayer video game competitions, particularly between professional players, individually or as teams. Although orga ...
broadcasts an infringing activity, as the copyright of each game belongs to its creators. 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. The Verge discussed whether it would infringe copyright if a player uses a video game mod to
cheat Cheating generally describes various actions designed to subvert rules in order to obtain unfair advantages. This includes acts of bribery, cronyism and nepotism in any situation where individuals are given preference using inappropriate cr ...
, and noted that ''Microstar v. Formgen'' is unclear about whether ''any'' video game mods are permissible fair use. Regardless, Zvi Rosen in the ''
Chicago-Kent Journal of Intellectual Property The ''Chicago-Kent Journal of Intellectual Property'' is a student-run law journal published at Chicago-Kent College of Law since 1999. It covers all aspects of intellectual property law, including patent law, trademark law, copyright law, and trad ...
'' 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".


References

{{Video game copyright United States Court of Appeals for the Ninth Circuit cases United States copyright case law 1999 in United States case law Duke Nukem Video game copyright case law