By: Charles Wells
Video games are a massive and rapidly developing industry with novel legal challenges are developing alongside those advancements. A key challenge in this developing area is the practice of “modding,” a process by which people other than the original video game developers access the software or hardware comprising a game and modify its contents.[i] The unique technological character of modding stretches the conventional application of important intellectual property doctrines such as fair use and the treatment of derivative works.[ii] The current state of the law heavily favors developers and wealthy third parties, stifling the creative efforts of individual modders.
Background: The Practice of Modding
The practice of modding involves accessing the actual code that makes up the software of the game and making alterations.[iii] The most extensive modding efforts involve changing almost the entirety of the original game.[iv]These “total conversion mods” change all visual, narrative, and gameplay mechanics essentially creating a new, unique game based on the framework of software from the original game.[v] While some developers allow or even encourage modding, other developers fight to prohibit any modification of their work.[vi] Although the practice of modding is a large source of controversy within the industry, the legal landscape remains relatively unclear.
The Dangers and Opportunities of Modding
Video game developers seek to limit or ban modding for various reasons. Some may be concerned with third parties accessing the game source code and then stealing various assets.[vii] Others may be more concerned that modders will hurt their brand or damage their reputation with unauthorized use of their creations.[viii] These fears over reputational damage are stoked by the controversial nature of some mods, which have historically included sexually explicit, graphically violent, sexist, racist, or other material considered offensive by many people.[ix] Game developers have even taken to the courts to prevent parties from reselling compilations of modded versions of their games in direct competition with the original.[x] For these and many other reasons, some companies rightfully pushback against modders.
Third parties may also object to the content of mods that involve their own products. Modding is frequently used to substitute in-game characters with pop culture figures. A classic example of this is a 1982 mod of the monster fighting game Wolfenstein which replaced the monsters with Smurfs.[xi] Companies may object, however, especially when the representation is unflattering and might hurt their reputation.[xii] For example, a technical problem with the newly released Samsung Galaxy Note 7 smartphone resulted in a large number of these phones spontaneously combusting.[xiii] Someone then created a mod for the popular video game Grand Theft Auto V (GTA V) creating a new weapon that players could use in the game: a cellphone clearly designed to look like a Samsung product.[xiv]Users could throw the imitation Samsung which would explode like a grenade.[xv] Samsung objected to this and filed legal action to have videos of the mod removed from YouTube.[xvi]
Modding can, however, also provide tremendous benefits to game producers. An active modding scene for a particular game can help sustain interest in the original and help push sales years after the initial release.[xvii] There are multiple, high profile examples of this phenomenon. Two of the most popular video games of the early 2000’s began as mods and brought substantial profit to the publishers of the original game.[xviii] The competitive online game DotA began as a modification of Blizzard Entertainment’s already popular Warcraft 3.[xix] The DotA mod helped sustain popularity of the original game, released in 2003, until 2008 and beyond.[xx] The mod led to multiple spin-offs developed and marketed as stand-alone games and helped popularize a new genre of game.[xxi] Similarly, the Counter Strike line of games began as a user made mod of the popular first person shooter Half-Life.[xxii] The original Counter Strike mod became a massive popular success drawing new players to Half-Life and sustaining sales.[xxiii] The mod became so successful that Valve, the game developers who produced Half-Life, acquired the intellectual property rights to the Counter Strike mod and began publishing Counter Strike as a new standalone series.[xxiv] The examples of Counter Strike and DotA show how active modding communities can not only support sales of the original game but also push development in the video game industry. Both DotA and Counter Strike launched successful new game series and helped develop competitive online play.
While the success of individual mods can benefit game producers, the active practice of fan modding can also have a positive influence on the availability of skilled labor in the game industry.[xxv] Bethesda, producers of the massively popular Elder Scrolls and Fallout series, will even consider an applicant’s modding history when hiring new staff.[xxvi] Access to modding tools allows enthusiastic fans to build technical skills in game production and may even help them land future jobs with prominent companies.
Defending Modding in Court
Modding is a complex problem for the gaming industry, presenting both a wealth of opportunity and a multitude of potential dangers to game developers. Faced with the complexity of the intellectual property issues involved in modding, U.S. Courts have provided only very limited guidance. In 1992, the Ninth Circuit considered the legality of modding a game with a physical device in Lewis Galoob Toys, Inc. v. Nintendo of America, Inc.[xxvii] The device in question connected physically to the gaming system and allowed the player to change various aspects of the game.[xxviii] The court concluded that the modding device was protected by fair use and did not violate Nintendo’s copyright.[xxix] Furthermore, the court concluded that the playing experience was not a profit making activity because the product could only be used at home to change games already purchased from the developers.[xxx]
The Ninth Circuit reconsidered this ruling in 1998 and substantially narrowed the doctrine in Micro Star v. Formgen Inc..[xxxi] In Micro Star, the court considered a dispute between a video game producer and a defendant that sold game modifications.[xxxii] The game producer encouraged users to create and post new levels online.[xxxiii] The defendant created and sold CDs containing a large number of these user created mods for a substantial profit.[xxxiv]The court considered the advancement of video game technology and ultimately concluded that the mods violated copyright. The court distinguished Galoob, opining that the device at issue required the original cartridge purchasable only from the producer to function and therefore did not constitute expression that violated copyright.[xxxv] The modified game files in Microgen, by contrast, were freestanding and made use of the story and characters from the original game making them effectively sequels to the game and therefore derivative works over which the original publisher rightfully has control.[xxxvi] The decision in Microgen continues to be a leading case on modding and provides strong authority that mods are derivative works and are, generally, not covered by the doctrine of fair use.
The current state at of the law regarding modding is hotly contested in legal scholarship. Some commentators argue that the further protections of modding under fair use are unnecessary.[xxxvii] The current system allows modding if the game producers agree, and many producers do because it helps them further develop their products and attract new customers.[xxxviii] Others argue that certain types of mods are arguably protected under fair use and that protecting modding will stimulate creative development in the industry.[xxxix] Moving away from arguments over whether or not modding should be protected, it is necessary to highlight that the current state of the law is not clearly set. It may be true that some mods are covered by fair use and others are not; determining on which side of the line mods fall requires a highly fact specific inquiry by the courts.[xl] The decisions in Galoob and Micro Gen support this characterization. Both decisions considered the underlying technology of the mods in detail and also considered the purpose of the mods including how they were presented to the public. The current system of determining copyright infringement may have another problem. The decision in Micro Star seems to create a presumption against fair use that may deter valid claims.[xli] Commentators have noted that the pace of modding has not kept up with video game development because of the time and effort required and the likelihood of losing a legal challenge.[xlii] With a presumption against fair use, even valid cases may never be litigated, stymieing not only the development of modding, but legal development in the area.
[i] Ryan Wallace, Comment, Modding: Amateur Authorship and How the Video Game Industry Is Actually Getting It Right, 2014 B.Y.U.L. Rev. 219, 220 (2014).
[ii] See generally Zvi Rosen, Article: Man, Mod, and Law: Revisiting the Law of Computer Game Modifications, 59IDEA 269 (2018).
[iii] See Wallace, supra note i at 220.
[vi] Arthur Berger, Note, Spare the Mod: In Support of Total-Conversion Modified Video Games, 125 Harv. L. Rev.789, 796 (2012).
[vii] Id.; see also Rosen, supra note ii at 288 – 289.
[x] Micro Star v. Formgen Inc., 154 F.3d 1107 (9th Cir. 1998).
[xi] See Berger, supra note v at 792.
[xii] See Rosen, supra note ii at 288 – 289.
[xiii] Alex Perry, Samsung has ‘Grand Theft Auto’ Exploding Phone Video Removed From Youtube, Business Insider(Oct. 19, 2016) https://www.businessinsider.com/gta-v-mod-samsung-galaxy-note-7-2016-10?r=UK (last visited Nov. 18 2020).
[xvii] See Berger, supra note v.
[xviii] Paul Dean, The Story of DOTA: How a Bastard Mod Became its Own Genre, Eurogamer (Apr. 14, 2014), https://www.eurogamer.net/articles/2011-08-16-the-story-of-dota-article.
[xxii] See Berger, supra note v at 792.
[xxv] See Wallace, supra note i at 222.
[xxvii] Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965 (9th Cir. 1992).
[xxviii] See Berger, supra note v at 803.
[xxix] Lewis Galoob, 964 F. 2d at 965.
[xxxi] Micro Star v. Formgen Inc., 154 F.3d 1107 (9th Cir. 1998).
[xxxiii] Id. at 1109.
[xxxiv] See Wallace, supra note i at 236-237.
[xxxv] Micro Star, 154 F.3d at 1031.
[xxxvii] See generally Wallace, supra note i.
[xxxix] See generally Berger, supra note v at 803.
[xl] See Rosen, supra note ii.
[xli] See Wallace, supra note i at 245 – 150 (arguing that the Micro Star decision can be applied to generally foreclose on a fair use defense for mods); see also Berger, supra note v at 795 (identifying that the high cost of total conversion mods and the likelihood of a take-down notice may have a chilling effect on modding).
[xlii] See generally Berger, supra note v at 795.