''Micro Star v. FormGen Inc.'' 154 F.3d 1107 (9th Cir. 1998) is a legal

case Case or CASE may refer to: Instances * Instantiation (disambiguation), a realization of a concept, theme, or design * Special case, an instance that differs in a certain way from others of the type Containers * Case (goods), a package of relate ...

applying copyright law to video games, stopping the sales of a compilation of user-generated levels that infringed the

copyright A copyright is a type of intellectual property that gives its owner the exclusive legal 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, ...

of ''

Duke Nukem 3D ''Duke Nukem 3D'' is a 1996 first-person shooter, first-person shooter game developed by 3D Realms and published by FormGen for MS-DOS. It is a sequel to the platform games ''Duke Nukem (video game), Duke Nukem'' and ''Duke Nukem II'', published ...

.'' Micro Star downloaded the ''Duke Nukem 3D'' levels and re-packaged them as ''Nuke It'', after seeing their popularity on the

internet The Internet (or internet) is the Global network, global system of interconnected computer networks that uses the Internet protocol suite (TCP/IP) to communicate between networks and devices. It is a internetworking, network of networks ...

. Micro Star filed suit in the

United States District Court for the Southern District of California The United States District Court for the Southern District of California (in case citations, S.D. Cal.) is a federal court in the Ninth Circuit (except for patent claims and claims against the U.S. government under the Tucker Act, which are ap ...

, asking for

declaratory judgment A declaratory judgment, also called a declaration, is the legal determination of a court that resolves legal uncertainty for the litigants. It is a form of legally binding preventive by which a party involved in an actual or possible legal ma ...

that they had not infringed any copyright. Game publisher FormGen 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 a first, previously created original work (the underlying work). The derivative work becomes a second, separate work independent from ...

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 a 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 ...

was '' Lewis Galoob Toys, Inc. v. Nintendo of America, Inc.'' (1992), where the court found that the

Game Genie The Game Genie was a line of Video game accessory, video game accessories that allowed players to alter codes transmitted between ROM cartridge, game cartridges and a video game console, known informally as a cheat cartridge. Developed by Codemas ...

did not infringe

Nintendo is a Japanese Multinational corporation, multinational video game company headquartered in Kyoto. It develops, publishes, and releases both video games and video game consoles. The history of Nintendo began when craftsman Fusajiro Yamauchi ...

's copyrights, because the device did not store any modified images in any concrete or permanent form. The

district court District courts are a category of courts which exists in several nations, some call them "small case court" usually as the lowest level of the hierarchy. These courts generally work under a higher court which exercises control over the lower co ...

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 In law, an appeal is the process in which cases are reviewed by a higher authority, where parties request a formal change to an official decision. Appeals function both as a process for error correction as well as a process of clarifying and ...

the ruling, and the

appeal court An appellate court, commonly called a court of appeal(s), appeal court, court of second instance or second instance court, is any court of law that is empowered to hear a case upon appeal from a trial court or other lower tribunal. Appellate ...

held decisively against Micro Star. Copyright law gives the copyright holder the

exclusive right An exclusive right, or exclusivity, is a ''de facto'', non-tangible prerogative existing in law (that is, the power or, in a wider sense, right) to perform an action or acquire a benefit and to permit or deny others the right to perform the same ...

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 Duke is a male title either of a monarch ruling over a duchy, or of a member of Royal family, royalty, or nobility. As rulers, dukes are ranked below emperors, kings, grand princes, grand dukes, and above sovereign princes. As royalty or nobi ...

's fabulous adventures". The ruling continues to apply to the legal status of

video game modding Video game modding (short for "modifying") 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''. A set of modifications, commonly c ...

, with mods viewed as derivative works that require the

consent Consent occurs when one person voluntarily agrees to the proposal or desires of another. It is a term of common speech, with specific definitions used in such fields as the law, medicine, research, and sexual consent. Consent as understood i ...

of the copyright holder. While this may legally limit the creation of mods,

machinima Machinima () is the use of Real-time computing, real-time computer graphics engines to create a cinematic production. The word "Machinima" is a portmanteau of the words ''machine'' and ''Film, cinema''. According to Guinness World Records, ma ...

, broadcasts, or even

cheats Cheating generally describes various actions designed to subvert or disobey rules in order to obtain unfair advantages without being noticed. This includes acts of bribery, cronyism and nepotism in any situation where individuals are given pr ...

, many game developers have authorized and encouraged some of these activities.

Background

Facts

Apogee An apsis (; ) is the farthest or nearest point in the orbit of a planetary body about its primary body. The line of apsides (also called apse line, or major axis of the orbit) is the line connecting the two extreme values. Apsides perta ...

is a

video game developer A video game developer is 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 business with em ...

responsible for creating the ''

Duke Nukem ''Duke Nukem'' is a video game series and media franchise created by the company Apogee Software Ltd. (now 3D Realms). The franchise follows the titular Duke Nukem as he battles against a military or extraterrestrial force. Originally a serie ...

'' series of

computer games A video game or computer game is an electronic game that involves interaction with a user interface or input device (such as a joystick, game controller, controller, computer keyboard, keyboard, or motion sensing device) to generate visual fe ...

. The game studio developed ''

'' under their new name 3D Realms, with support from software publisher FormGen. Released in 1996, ''Duke Nukem 3D'' was acclaimed as one of the best video games of all time by

PC Gamer ''PC Gamer'' is a magazine and website founded in the United Kingdom in 1993 devoted to PC gaming and published monthly by Future plc. The magazine has several regional editions, with the UK and US editions becoming the best selling PC games m ...

. The game also included a tool that allowed players to create their own levels using the game's graphics and

gameplay Gameplay is the specific way in which players interact with a game. The term applies to both video games and Tabletop game, tabletop games. Gameplay is the connection between the player and the game, the player's overcoming of challenges, and t ...

. 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 Internet (or internet) is the Global network, global system of interconnected computer networks that uses the Internet protocol suite (TCP/IP) to communicate between networks and devices. It is a internetworking, network of networks ...

. 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 computer data storage, data computers can read, but not write or erase. Some CDs, called enhanced CDs, hold b ...

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 law of the United States grants monopoly A monopoly (from Greek language, Greek and ) is a market in which one person or company is the only supplier of a particular good or service. A monopoly is characterized by a lack ...

, the copyright holder has the exclusive right to create derivative works based on the original work. Micro Star filed suit in the

, asking for a

that they had not committed

copyright infringement Copyright infringement (at times referred to as piracy) is the use of Copyright#Scope, works protected by copyright without permission for a usage where such permission is required, thereby infringing certain exclusive rights granted to the c ...

. FormGen counter-sued, claiming that Micro Star infringed their copyright by making

derivative works In copyright law, a derivative work is an expressive creation that includes major copyrightable elements of a first, previously created original work (the underlying work). The derivative work becomes a second, separate work independent from t ...

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 Precedent is a judicial decision that serves as an authority for courts when deciding subsequent identical or similar cases. Fundamental to common law legal systems, precedent operates under the principle of ''stare decisis'' ("to stand by thin ...

from '' Lewis Galoob Toys, Inc. v. Nintendo of America, Inc.'' (1992), where the court found that the

did not infringe

'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 Fair use is a Legal doctrine, doctrine in United States law that permits limited use of copyrighted material without having to first acquire permission from the copyright holder. Fair use is one of the limitations to copyright intended to bal ...

, 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 an equitable remedy in the form of a special court order compelling a party to do or refrain from doing certain acts. It was developed by the English courts of equity but its origins go back to Roman law and the equitable rem ...

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 The United States Court of Appeals for the Ninth Circuit (in case citations, 9th Cir.) is the U.S. federal court of appeals that has appellate jurisdiction over the U.S. district courts for the following federal judicial districts: * Distric ...

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 The compact disc (CD) is a Digital media, digital optical disc data storage format co-developed by Philips and Sony to store and play digital audio recordings. It employs the Compact Disc Digital Audio (CD-DA) standard and was capable of hol ...

. On the second requirement, the court concluded that ''Nuke It'' did not incorporate protected artwork of ''Duke Nukem 3D'', since the map files only referred to that art, but rather incorporated the copyrighted characters and story. 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 Atari, Inc. is an American video gaming company based in New York City, and a subsidiary of the Atari SA holding company. It is the main entity serving the commercial Atari brand globally since 2003. The company currently publishes games based o ...

, 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 The Digital Millennium Copyright Act (DMCA) is a 1998 United States copyright law that implements two 1996 treaties of the World Intellectual Property Organization (WIPO). It criminalizes production and dissemination of technology, devices, or ...

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 User-generated content (UGC), alternatively known as user-created content (UCC), emerged from the rise of web services which allow a system's User (computing), users to create Content (media), content, such as images, videos, audio, text, testi ...

. 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'', 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

," the '' BYU Law Review'' praised the

video game industry The video game industry is the tertiary industry, tertiary and quaternary industry, quaternary sectors of the entertainment industry that specialize in the video game development, development, marketing, distribution (marketing), distribution, ...

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

, where artists use copyrighted video game assets to produce animated films. Dan Burk in the ''

University of Pennsylvania Law Review The ''University of Pennsylvania Law Review'', formerly known as the ''American Law Register'', is a law review published by an organization of second and third year J.D. students at the University of Pennsylvania Law School. It is the oldest law ...

'' 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, played individually or as teams. ...

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 ''The Verge'' is an American Technology journalism, technology news website headquarters, headquartered in Lower Manhattan, New York City and operated by Vox Media. The website publishes news, feature stories, guidebooks, product reviews, cons ...

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. 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".

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