## Facts

- FormGen owned the copyright in the video game *Duke Nukem 3D*, which included 29 levels and a “Build Editor” that allowed users to create new levels.
- FormGen encouraged users to share user-created levels online for others to download.
- Micro Star collected approximately 300 user-created level files (“MAP” files), copied them onto a CD-ROM, and sold the compilation commercially as *Nuke It*.
- The *Nuke It* packaging included multiple gameplay screen shots depicting protected audiovisual elements from *Duke Nukem 3D*.
- Micro Star sought a declaratory judgment of noninfringement; FormGen counterclaimed for infringement and sought a preliminary injunction against the CD and the packaging.

## Issues

1. Whether distributing and selling a CD of MAP files for use with *Duke Nukem 3D* constituted infringement as an unauthorized derivative work.
2. Whether reproducing gameplay screen shots on *Nuke It* packaging infringed FormGen’s copyrighted audiovisual work.
3. Whether Micro Star’s commercial distribution and packaging use were protected by fair use.

## Decision

- The Ninth Circuit reversed the district court’s ruling that the *Nuke It* CD was noninfringing.
- The court held that the MAP files embodied unauthorized derivative works because they described new game levels that, when run with the game engine, generated new fixed audiovisual displays based on FormGen’s protected expression.
- The court ordered that a preliminary injunction should issue barring further production and distribution of *Nuke It*.
- The court affirmed the preliminary injunction against Micro Star’s use of infringing gameplay screen shots on the packaging (and related screen saver use).
- The court rejected Micro Star’s fair use defense as to both the CD and the packaging.

## Legal Principles

- A copyright owner’s exclusive rights include the right to prepare and market derivative works, including sequels and new versions built from protected characters, settings, and audiovisual elements.
- A work can be “fixed” even if it must be processed by software to be perceived; level files that contain a detailed description of an audiovisual display may qualify as fixed expression for derivative-work analysis.
- Modifications that are not fixed and merely alter gameplay temporarily (without producing a permanent new work) are materially different from fixed files distributed to generate new audiovisual displays.
- Encouraging users to create and freely share levels does not, without more, authorize a third party to commercially reproduce and sell those levels or extinguish the owner’s derivative-work rights.
- Fair use is disfavored where the use is commercial, targets a creative work, appropriates substantial protected expression, and usurps the market for authorized expansions or other derivative works.

## Conclusion

The Ninth Circuit held that Micro Star’s commercial sale of a CD compiling user-created *Duke Nukem 3D* levels infringed as an unauthorized derivative work and was not fair use, and it upheld an injunction against infringing gameplay screen shots on the product packaging while directing injunctive relief against the CD’s production and distribution.


Micro Star v. FormGen Inc., 154 F.3d 1107 (9th Cir. 1998)