Judge Kosinski opens his opinion by positing the most poignant of questions: “Duke Nukem routinely vanquishes Octabrain and the Protozoid Slimer. But what about the dreaded Micro Star?” Duke Nukem 3D, the well known first person shooter that was distributed and owned by FormGen Inc., included an editor that enabled players to create their own levels [Editor’s Note: I once created a map duplicating two decks of a Carnival cruise ship. Regrettably, it didn’t make it onto the CD at issue]. Player-created levels could be posted onto the Internet for download by other players. Micro Star acquired 300 user-created levels, placed them onto a CD, and sold that CD commercially as Nuke It, whose packaging displayed screen shots of the new levels. FormGen threatened to sue, so Micro Star sought a declaratory judgment for non-infringement of FormGen’s copyrights in the game, while FormGen counterclaimed for a preliminary injunction against future copyright infringement by Micro Star. While the district court did grant a preliminary injunction as to the use of the screen shots, it also held that Nuke It was not a derivative work and therefore did not infringe FormGen’s copyright.

On appeal, Kozinski focused on whether Micro Star copied FormGen’s protected expression. Ultimately, the Court disagreed with Micro Star’s arguments that Nuke It was not a derivative work because the MAP files, which contain the instructions defining the custom levels, did not incorporate in a concrete or permanent form any of Duke Nukem 3D’s protected expression (i.e., the artwork rendered onto the screen). Instead, the Court found Nuke It to be a derivative work in concrete or permanent form because it was embodied onto a CD and the MAP files described in detail the audiovisual display that appears on the computer monitor. Additionally, Micro Star’s motive of financial gain worked against their position and foreclosed their ability to assert fair use protection. By selling Nuke It, the Court held, Micro Star “impinged on FormGen’s ability to market new versions of the Duke Nukem 3D story” and “only FormGen [as the owner of the copyright] has the right to enter that market.” FormGen, therefore, did not abandon their right to profit commercially from new levels by granting a license to players to freely distribute new levels to other players. Thus, FormGen received a preliminary injunction as to Nuke It’s commercial distribution. Now if only 3D Realms would hurry up and release Duke Nukem Forever, because we’re all getting a little tired their mantra “it’s done when it’s done…”