Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc.
964 F.2d 965 (1992)
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Rule of Law:
A work that temporarily alters the display of a copyrighted audiovisual work for private, non-commercial use does not constitute an infringing derivative work because it does not incorporate the copyrighted work in a concrete or permanent form.
Facts:
- Nintendo of America markets the Nintendo Entertainment System (NES), a home video game system, and produces or licenses copyrighted game cartridges for it.
- Lewis Galoob Toys, Inc. manufactured the Game Genie, a device that attaches to the NES between the console and a game cartridge.
- The Game Genie allows a player to alter certain features of a Nintendo game, such as the number of lives a character has or the character's speed, by entering codes.
- The device functions by intercepting and replacing a single data byte sent from the game cartridge to the console's central processing unit.
- The Game Genie does not alter the data stored in the game cartridge itself.
- The effects of the Game Genie are temporary and cease when the NES is turned off.
Procedural Posture:
- Lewis Galoob Toys, Inc. sought a declaratory judgment that its Game Genie did not infringe Nintendo's copyrights in the U.S. District Court for the Northern District of California.
- Nintendo counter-claimed for copyright infringement and sought a permanent injunction against Galoob.
- The district court granted a temporary injunction against Galoob pending trial.
- Following a bench trial, the district court ruled in favor of Galoob, finding the Game Genie did not create an infringing derivative work and that its use was a fair use.
- The district court dissolved the temporary injunction and denied Nintendo's request for a permanent injunction.
- Nintendo of America, as the appellant, appealed the judgment to the U.S. Court of Appeals for the Ninth Circuit.
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Issue:
Does a device that enables a user to temporarily alter the audiovisual display of a copyrighted video game for private enjoyment create an infringing derivative work under the Copyright Act?
Opinions:
Majority - Farris, Circuit Judge
No. A device that enables a user to temporarily alter a copyrighted work does not create a derivative work because it does not incorporate the protected work in a concrete or permanent form. The Copyright Act requires that a derivative work must recast, transform, or adapt the original work into a new, fixed form. The audiovisual displays created by the Game Genie are not incorporated into the device in any concrete or permanent way; the Game Genie cannot produce a display on its own and merely enhances the output originating from the Nintendo game cartridge. The court distinguished this from cases like Midway Mfg. Co. v. Artic Int'l, Inc., where the infringing product substantially copied and replaced a component of the original work. Furthermore, even if the altered display were a derivative work, its use by consumers would be a non-commercial, private 'fair use' that does not harm the market for Nintendo's games.
Concurring - Rymer, Circuit Judge
Yes, I concur in the judgment of the court. I would affirm the district court's decision for the reasons stated in its own opinion.
Analysis:
This case significantly narrowed the definition of a 'derivative work' in the context of emerging digital technology. By requiring that an infringing work incorporate the original in a 'concrete or permanent form,' the court created a legal space for add-on or enhancement technologies. The decision protects innovations that alter how a user experiences a copyrighted work without creating a new, permanent copy or supplanting the market for the original. This precedent is crucial for understanding the legality of video game modifications, software plug-ins, and other tools that enhance or customize existing copyrighted content for personal use.
