MICRO STAR v. FORMGEN INC.154 F.3d 1107 (9th Cir. 1998)KOZINSKI, Circuit Judge.Duke Nukem routinely vanquishes Octabrain and the Protozoid Slimer. But what about thedreaded Micro Star?IFormGen Inc., GT Interactive Software Corp. and Apogee Software, Ltd. (collectively Form-Gen) made, distributed and own the rights to Duke Nukem 3D (D/N-3D), an immensely popular(and very cool) computer game. D/N-3D is played from the first-person perspective; the player as-sumes the personality and point of view of the title character, who is seen on the screen only as apair of hands and an occasional boot, much as one might see oneself in real life without the aid of amirror.1 Players explore a futuristic city infested with evil aliens and other hazards. The goal is tozap them before they zap you, while searching for the hidden passage to the next level. The basicgame comes with twenty-nine levels, each with a different combination of scenery, aliens, and otherchallenges. The game also includes a "Build Editor," a utility that enables players to create theirown levels. With FormGen's encouragement, players frequently post levels they have created on theInternet where others can download them. Micro Star, a computer software distributor, did just that:It downloaded 300 user-created levels and stamped them onto a CD, which it then sold commer-cially as Nuke It (N/I). N/I is packaged in a box decorated with numerous "screen shots," pictures ofwhat the new levels look like when played. Micro Star filed suit in district court, seeking a declaratory judgment that N/I did not infringeon any of FormGen's copyrights. FormGen counterclaimed, seeking a preliminary injunction bar-ring further production and distribution of N/I. Relying on Lewis Galoob Toys, Inc. v. Nintendo ofAm., Inc., 964 F.2d 965 (9th Cir. 1992), the district court held that N/I was not a derivative work andtherefore did not infringe FormGen's copyright. The district court did, however, grant a preliminaryinjunction as to the screen shots, finding that N/I's packaging violated FormGen's copyright by re-producing pictures of D/N-3D characters without a license. The court rejected Micro Star's fair useclaims. Both sides appeal their losses.IIA party seeking a preliminary injunction must show "either a likelihood of success on the meritsand the possibility of irreparable injury, or that serious questions going to the merits were raised andthe balance of hardships tips sharply in its favor." Johnson Controls, Inc. v. Phoenix Control Sys-tems, Inc., 886 F.2d 1173, 1174 (9th Cir. 1989). Because "in a copyright infringement claim, a show-ing of a reasonable likelihood of success on the merits raises a presumption of irreparable harm,"id., FormGen need only show a likelihood of success on the merits to get the preliminary injunctionit seeks (barring the manufacture and distribution of N/I) and to preserve the preliminary injunctionit already won (barring the screen shots on N/I's packaging).1 This form of play was pioneered by a company called id Software with its classic Wolfenstein 3D character.1IIITo succeed on the merits of its claim that N/I infringes FormGen's copyright, FormGen mustshow (1) ownership of the copyright to D/N-3D, and (2) copying of protected expression by MicroStar. See Triad Systems Corp. v. Southeastern Express Co., 64 F.3d 1330, 1335 (9th Cir. 1995).[*1110] FormGen's copyright registration creates a presumption of ownership, see id., and we aresatisfied that FormGen has established its ownership of the copyright. We therefore focus on the lat-ter issue.FormGen alleges that its copyright is infringed by Micro Star's unauthorized commercial ex-ploitation of user-created game levels. In order to understand FormGen's claims, one must first un-derstand the way D/N-3D works. The game consists of three separate components: the game engine,the source art library and the MAP files. 2 The game engine is the heart of the computer program; insome sense, it is the program. It tells the computer when to read data, save and load games, playsounds and project images onto the screen. In order to create the audiovisual display for a particularlevel, the game engine invokes the MAP file that corresponds to that level. Each MAP file containsa series of instructions that tell the game engine (and, through it, the computer) what to put where.For instance, the MAP file might say scuba gear goes at the bottom of the screen. The game enginethen goes to the source art library, finds the image of the scuba gear, and puts it in just the rightplace on the screen.3 The MAP file describes the level in painstaking detail, but it does not actuallycontain any of the copyrighted art itself; everything that appears on the screen actually comes fromthe art library. Think of the game's audiovisual display as a paint-by-numbers kit. The MAP filemight tell you to put blue paint in section number 565, but it doesn't contain any blue paint itself;the blue paint comes from your palette, which is the low-tech analog of the art library, while youplay the role of the game engine. When the player selects one of the N/I levels, the game enginereferences the N/I MAP files, but still uses the D/N-3D art library to generate the images that makeup that level.FormGen points out that a copyright holder enjoys the exclusive right to prepare derivativeworks based on D/N-3D. See 17 U.S.C. § 106(2) (1994). According to FormGen, the audiovisualdisplays generated when D/N-3D is run in conjunction with the N/I CD MAP files are derivativeworks that infringe this exclusivity. Is FormGen right? The answer is not obvious. The Copyright Act defines a derivative work as a work based upon one or more preex-isting works, such as a translation, musical arrangement, dramatization, fictionalization,motion picture version, sound recording, art reproduction, abridgment, condensation, orany other form in which a work may be recast, transformed, or adapted. A work con-sisting of editorial revisions, annotations, elaborations, or other modifications which, asa whole, represent an original work of authorship, is a "derivative work."2 So-called because the files all end with the extension ".MAP". Also, no doubt, because they contain the layout for thevarious levels.3 Actually, this is all a bit metaphorical. Computer programs don't actually go anywhere or fetch anything. Rather, thegame engine receives the player's instruction as to which game level to select and instructs the processor to