Micro Star v. Formgen, Inc.
154 F.3d 1107 (1998)
Rule of Law:
A collection of computer files containing instructions for generating new audiovisual displays for a video game constitutes a derivative work under copyright law. The commercial sale of such files, which use the original game's copyrighted characters and setting to tell new stories, infringes upon the copyright holder's exclusive right to create sequels and is not protected by the fair use doctrine.
Facts:
- FormGen Inc., GT Interactive Software Corp., and Apogee Software, Ltd. (FormGen) created and own the copyright to the computer game Duke Nukem 3D (D/N-3D).
- D/N-3D includes a 'Build Editor' utility that allows players to create their own custom game levels.
- FormGen encouraged players to create and share these new levels, provided they were distributed solely for free.
- Micro Star, a computer software distributor, downloaded 300 of these user-created levels from the internet.
- Micro Star compiled the levels onto a CD-ROM titled 'Nuke It' (N/I) and sold it commercially.
- The N/I levels function as MAP files, which are instruction sets that call upon the D/N-3D game engine and art library to generate the on-screen audiovisual display.
- The packaging for N/I was decorated with 'screen shots' taken from the new game levels.
Procedural Posture:
- Micro Star filed a suit in U.S. district court seeking a declaratory judgment that its 'Nuke It' product did not infringe FormGen's copyright.
- FormGen filed a counterclaim against Micro Star for copyright infringement and sought a preliminary injunction to stop the production and sale of 'Nuke It'.
- The district court denied FormGen's request for a preliminary injunction regarding the N/I game levels, holding they were not derivative works.
- The district court granted a preliminary injunction for FormGen regarding the screen shots on the N/I packaging, finding they infringed FormGen's copyright.
- Both parties appealed the portions of the district court's ruling that they lost to the U.S. Court of Appeals for the Ninth Circuit.
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Issue:
Does the commercial distribution of a CD-ROM containing user-created video game levels, which require the original copyrighted game to function and which generate new audiovisual displays using the original game's assets, create an infringing derivative work under the Copyright Act?
Opinions:
Majority - Kozinski, Circuit Judge
Yes, the commercial distribution of the user-created levels creates an infringing derivative work. The audiovisual displays generated when D/N-3D is run with the N/I MAP files are derivative works that infringe on FormGen's copyright. Unlike the transient modifications in Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., the N/I MAP files provide an exact, detailed description of the audiovisual display, which constitutes a 'concrete or permanent form' of the work, analogous to sheet music describing a musical composition. Furthermore, the N/I levels incorporate FormGen's protected expression not just by using its art files, but by creating sequels that tell new stories with the copyrighted Duke Nukem character, setting, and plot. Micro Star's commercial exploitation is not fair use, as it is for-profit, involves a highly creative work, uses substantial protected material, and harms FormGen's potential market for sequels. FormGen's license to users specifically prohibited commercial distribution, meaning it did not license or abandon its commercial rights.
Analysis:
This decision significantly clarifies the definition of a 'derivative work' in the context of digital, interactive media, particularly for video games with user-generated content. By distinguishing from the Galoob precedent, the court established that a data file containing instructions for creating an audiovisual display can itself be the 'concrete or permanent form' of a derivative work. This strengthens the rights of copyright holders over the commercial exploitation of content created by fans using their intellectual property. The ruling solidifies the principle that a copyright protects the story, characters, and setting of a work, and that unauthorized sequels, even in the form of new game levels, constitute infringement.
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