Technology Law Column

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Published in the Chicago Daily Law Bulletin, December 12, 1996 at page 6.

Duke Nukem battle radiates with issues

Copyright 1996 by David Loundy

If you are getting tired of blowing away the usual assortment of evil monsters in the same old 3D-realms, there is hope for you yet. Polish up that shrink-ray and lace up your combat boots, because Judge Marilyn L. Huff in the Southern District of California has held that Microstar may continue to sell a CD-ROM with 300 game scenarios/levels made for the game Duke Nukem 3D.

Duke Nukem 3D is a game manufactured and distributed by Formgen, Inc. and Apogee Software, Ltd. (collectively, "Movants"). The game features a number of levels of play. After the explosive success of the game "Doom," which allowed users to create and trade their own playing levels, a number of other games, including Duke Nukem, have also included this feature. Purchasers of the game receive the software which contains 29 levels, plus an editor to create new levels, the data for which are stored as ".MAP" files. These files can then be uploaded to the Internet, Bulletin Board Systems, or traded on disk.

Microstar downloaded 300 of these .MAP files from the Internet, collected them on a CD-ROM, added some Duke Nukem 3D screen savers, came up with some nifty packaging, and has since sold some 61,000 copies of the resulting CD, "Nuke It."

In Microstar v. Formgen, No. CV 96-3435 H(CM), in the United States District Court for the Southern District of California (Sept. 30, 1996), we are treated to a glowing presentation of the fallout from the sale of the additional Duke Nukem levels. After Microstar started selling its CD-ROM, Formgen, et al (the Movants), sued claiming the CD-ROM and packaging constituted an infringement of the Copyright and Lanham Acts, in addition to constituting false advertising. Microstar claims that Apogee had waived or abandoned any right to claim copyright infringement, even though it claimed there was no such infringement, and that the software license was unenforceable anyway.

The court decided to split the elements, and found some arguments in favor of each party.

The court had little difficulty in finding in its examination of the application for a preliminary injunction that the 30 scenes from Duke Nukem used on the Nuke It box constituted infringements of the Movant's copyrights. The images from Duke Nukem used in the screen savers included on the Nuke It disk were also found to be infringements. Both the screen saver images and the packaging images were found not to be a fair use of the images, due to the potential impact the infringements would have on the market for future uses of the copyright holder's work (Apogee now offers the competing Duke Nukem Plutonium Pak, complete with additional levels and screen saver, and an upgrade of the game to the Atomic Edition).

The court also atomized the Lanham Act claims of false association and trade dress, in finding that there was no likelihood of confusion between the two products. The Nuke It package contained different type, logos, pictures, and colors, and each package had at least two disclaimers (some had a third sticker added) explaining that the Plaintiff and the Defendant have no relationship with one another.

The claim that the Nuke It package constituted false advertising was dismissed as being largely a fission-expedition, which had little chance of sparking a chain reaction.

Where the interest really starts to mushroom in this case is in the copyright analysis of the .MAP files and the associated license. Both the Duke Nukem box and screen display contain copyright notices. However, upon exiting the program, the screen also displays a message explaining the tools to create new levels, which it says "you can then pass to your friends, or upload to other Dukers on-line." The opening screen for the level editor also states that the editor and related tools are not to be re-packaged and sold, and states that further information on levels created with the editor are contained in the file "LICENSE.DOC."

This license file contains several restrictions, including a restriction against commercial sales of any levels created with the editor, and a statement that all rights in these created levels are granted back to the Movants.

Microstar claims that the license is invalid, and that the levels do not constitute a derivative work based on the Movant's product and therefore are non-infringing.

In ruling on the argument that the levels are not copyrightable matter, the court focused on the issue that the Nuke IT .MAP files are merely generic data that interact with the Duke Nukem game, and they do not even constitute programming. The court looked to the decision in Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 964 F.2d 965 (9th Cir. 1992) cert. denied 113 S. Ct. 1582 (1993) to illuminate the issue. The Galoob case involved the "Game Genie" which worked with the Nintendo system to alter certain features of the game play. The Galoob court held that the Game Genie did not create a derivative work in that it only "enhanced the audiovisual displays originating in the Nintendo cartridge" and that it never incorporated the protected work in a permanent form. Id. at 969.

In a covalent-type relationship, the Game Genie cannot work without sharing input provided by the Nintendo cartridge-- nor in this case can Nuke It work without the Duke Nukem 3D software. Therefore, Microstar was sheltered from the claim that the .MAP files are infringing derivative works because all of the copyrightable elements appearing on the screen originated from the Duke Nukem software, and not from the .MAP files, and the Movants failed to prove otherwise.

Microstar further argued that the license is not enforceable. Microstar argued that, even if it were a "shrink-wrap" license (which it is not) it would not be sufficient to create a binding contract (citing Step-Saver Data Systems, Inc. v. Wyse Technology, Inc., 939 F.2d 91 (3d Cir. 1991) and Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255 (5th Cir. 1988)).

Microstar further argued that the Seventh Circuit Court of Appeals ProCD v. Zeidenberg case is distinguishable because in that case the software user unquestionably had the license terms presented to him. ProCD, 86 F.3d 1447 (1996), held that a shrink-wrap license was enforceable even though the software purchaser did not have the opportunity to read the complete license before buying the product. Microstar claimed the buyer in ProCD was consenting to the terms by his actions, and because the license also stated that the software could be returned if the user refused to assent to the license terms.

In the Duke Nukem 3D case, however, it is possible that a user could never read the license file. While the level editor software refers to the LICENSE.DOC file, there is nothing to force the user to look at the file. The court shot down this argument by stating that regardless of what anyone else does or does not do with the license file, Microstar had read the license and was familiar with its terms.

Finally, Microstar claimed that because the Movants encouraged people to create and distribute game levels, the Movants had waved or abandoned any claim to copyright protection. The court, in addition to pointing out that the need to resolve this issue was moot, refused to accept the argument that because the Movants allowed free distribution of user-created game levels, they therefore lost any right to limit commercial distribution of user-created levels.

There probably will not be a lot of fallout as a result of the Microstar case. Both parties in this case made mistakes. This case is not revolutionary-- however, it does present an overview of some of the interesting issues affecting parts of the software industry.

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