No video game is perfect in the eyes of every one of its players. While some players vent their frustrations by complaining on a video game forum, more enterprising players seek to improve upon the game. These players engaging in “modding,” or modifying the source code of the video game, to improve it in some way. These mods range from graphics updates, such as the Skyrim mod seen here, to creating entirely new game types, such as turning the single player game Half-Life into the wildly popular, multiplayer game Counterstrike
(Skyrim graphical mod; click to enhance)
However, most of these mods take place without the game developer’s permission. Can the modder publish his mod without fearing retribution from a stingy developer? What remedies do poor developers have against these enterprising players allegedly infringing the developer’s copyright? This week’s blog post will discuss the legal approaches that developers have taken to deal with modders. The first part will discuss the available legal remedies in the abstract (generally), while the second will discuss specific fights between video game developers and modders.
- Legal Remedies
Suppose Chris decides to create a website, HaxRUs.net, where he allows users to post any mod that they create. These mods are freely available to the public. Suppose Alan posts a mod for Super Smash Bros. on Hax-R-Us.net, which inserts into the game as a playable character his favorite Nintendo character, Dragoon from Super Metroid. Super Smash Bros. is owned by Nintendo. If Nintendo believes that its copyright on Super Smash Bros. is infringed, and wishes to remove Alan’s mod, it has two options. First, it can issue a cease-and-desist letter to Alan. This letter orders Alan to remove his content, to stop infringing Nintendo’s copyright, and to cut a check for whatever amount Nintendo thinks that it can receive without going to litigation. Now Alan, a poor modder who just wanted to add his favorite Nintendo character to his favorite game, is faced with a choice: does he try to fight this in court just to have a more fun in a game, but at the risk of paying $30,000? Not a chance. He sadly removes his mod from Hax-R-Us.net.
Nintendo notices, however, that Hax-R-Us.net has many infringements of its copyrights. Chris, as the mere owner of the website, who does not actively post any content, probably cannot be held liable. Indeed, the criminal provisions of the copyright infringement statute require “intent;” thus, mere willful blindness to the posted infringements would not trigger any criminal penalties. In theory, Nintendo could attempt to prove this, but the law provides an easier method to remove infringing content: the DMCA takedown notice. Nintendo may send Chris a notice of the infringing content, with a demand for its immediate removal. Under the safe harbor provisions of the DMCA, 17 U.S.C. § 512(c)(1), if Chris:
- Does not know and should not know that material on his website is infringing,
- Does not receive a financial benefit directly attributable to the infringing activity, and
- Upon notification of infringement, promptly removes or disables access to the infringing content,
then Chris will not be subject to liability for the infringing content.
The safe harbor provision makes sense as a matter of public policy. If it did not exist, then websites like YouTube, a site where millions of users upload videos daily, would not last more than a day. Surely one user, oblivious to copyright law, would post infringing material, and the infringed party could sue to take down YouTube. Indeed, a content provider, Viacom, did try to sue YouTube in 2013. The court held that YouTube qualified for the safe harbor provision of the DMCA because although YouTube knew that users were posting infringing material, it had no way of knowing what was and was not infringing.
- Specific Fights Between Developers and Modders
In this Part, we will examine some of the conflicts that IP holders have had with modders. In particular, we will look at a case where a developer sued a modder for providing access to the developer’s pirated games (Nintendo), a case where a developer sued a modder for basing a mod for a different game on the developer’s IP (Warner Bros), and a case where a developer sued a modder for modding the developer’s game to provide new content within the game (Blizzard). On the other hand, some IP holders are more willing to work with modders, as we will see in the Bukkit, Spigot, and Battlestar Galactica cases.
Our abstract case from Part I., supra, may be different from the YouTube case. Arguably, Chris knew that nearly all of the content posted on Hax-R-Us.net would be infringing (see: its name). If Nintendo believed this, then the safe harbor provisions of the DMCA would not be triggered, and Nintendo could sue. Indeed, it did just this in 2013, when Nintendo sued a website called HackYourConsole.com (“HYC”). HYC sold “flash carts.” A flash cart permits a user to download pirated games from the internet and play them on the user’s 3DS gaming system. Nintendo alleged that these flash carts cost them a lot of money, because gamers no longer had an incentive to buy legitimate copies of the games. HYC, on the other hand, had a notice on its webpage that the carts were “not illegal, however, the software you put on the [cart] may be.” Nintendo forced HYC into a settlement, the website is shut down, and the URL HackYourConsole.com now redirects to Nintendo’s anti-piracy webpage. Thus, IP holders are not afraid to sue for direct copyright infringement like piracy.
(glorious leader Mario dislikes piracy)
Another possible form of copyright infringement is a novel work based on a pre-existing IP. In 2012, Warner Bros. (“WB”) sued a group who was making a Lord of the Rings mod for the PC game Skyrim. This mod, the Middle-Earth Roleplaying Project (“MERP”) changed Skyrim into a game designed around Lord of the Rings – everything from the aesthetic, to some of the characters, to a recreation of the Lord of the Rings story (“Ringbearer quest”). WB responded with a cease-and-desist letter to the development team of MERP. WB argued that this mod amounted to a Lord of the Rings video game. WB was involved in the production of several Lord of the Rings games, so MERP represented a competitive threat to WB’s games. Initially, the MERP team tried to bargain with WB, and WB seemed open. The MERP team offered to remove the Ringbearer quest, as well as player access to some of the main characters from the books, such as Frodo and Gandalf. Ultimately, WB stonewalled these negotiations and forced the MERP team to cease development on the mod. The MERP team responded with a Facebook petition, imploring WB to revoke its cease-and-desist letter. That petition has garnered 32,493 signatures in its two years of life; however, the MERP team appears to have given into the cease-and-desist order.
A more direct type of mod than a device that enables piracy, or one that transforms another game into the IP holder’s IP, is an actual mod of a developer’s game against that developer’s consent. In May, 2014, Blizzard pounced when a group of StarCraft II modders created a hack called the ValiantChaos MapHack. These modders committed two sins in Blizzard’s eyes. The first was that the hack cost money – $62.50. The second, however, was that the hack provided a competitive edge to purchasers. This made the game less fun for legitimate players, which resulted in Blizzard losing players from StarCraft II. Because Blizzard released its own, paid mods and expansions for StarCraft II, this represented a loss of profit to Blizzard. Moreover, because StarCraft II is one of the most popular e-Sports, Blizzard stood to lose a lot of market power if its game even appeared to be less than legitimate. Thus, Blizzard sued, alleging copyright infringement, trafficking in circumvention devices, and breach of contract. This case is still pending.
In the middle of the modder-developer antagonism spectrum are IP holders that initially send cease-and-desist orders, but who eventually revoke them. The facts of this incident are similar to the Warner Bros./MERP conflict above. Modders in the game Second Life created a roleplaying simulation modeled on Battlestar Galactica. Universal, the holder for the Battlestar IP, sent the modders a cease-and-desist order. The modders complied, but then they lobbied for Universal to permit the content. Unlike Warner Bros., Universal gave in. They permitted the users of the Second Life sim to continue, provided that they earned no profit. In particular, Universal wrote “Users may continue to create and interact with each other as BSG fans . . . you may re-create BSG items under the fair use act. Owners of any re-created items sold and/or purchased will be approached by the company’s lawyers hand handled accordingly.” Users were also not permitted to create or sell “unlicensed  real-life or virtual items featuring our intellectual property.” This sensible solution is a win-win – Battlestar Galactica fans get to keep their simulation, and Universal gets free publicity and fosters a fan community.
At the far end of the developer-modder antagonism spectrum are developers that, from the beginning, try to peaceably coexist with the modding community, such as the developers of Minecraft (Mojang) with the Bukkit Project. Players play Minecraft on servers that are set up through the program. This permits the owners of the servers to configure settings of the game – to a certain degree. Bukkit sought to give these owners greater freedom in configuring their servers.  The Bukkit community accomplished this by modding the Minecraft Server software, and creating a mod called CraftBukkit. This took a tremendous amount of work and relied on contributions from many members of the community, as most good mods do. This can lead to creative differences among the Internet strangers. During the development of CraftBukkit, one modder, Wesley, decided that he no longer wanted his contribution to the project included in CraftBukkit. When Bukkit refused to cooperate, Wesley issued a DMCA takedown notice, citing support from Mojang.
That backfired when Mojang rushed to Bukkit’s aid. Posting on Bukkit’s forums, the COO of Mojang asserted Mojang’s rights to Minecraft in order to block Wesley’s DMCA takedown attempt. He posted that Wesley submitted his contributions to the project under an open source license, so Wesley could not claim infringement. Wesley had no rights, and Mojang bristled at the idea that modders could “assert rights which they do not have, against us or others.”
Moreover, the COO expressed support for the Bukkit Project. He wrote that he wanted to support it, while maintaining independence between Bukkit and Mojang, as well as refusing to compromise Mojang’s ownership of the Minecraft IP. Ultimately, he established that the Minecraft Server software would not be open source, nor would Mojang authorize its inclusion in any mods – but only to ensure that no one else tried to claim a right to Minecraft. Despite taking this apparent legal step back, the COO made it clear that Mojang fully supported Bukkit and that Wesley had no rights against Mojang or against Bukkit.
Unfortunately, the tactic Wesley chose for his fight with Bukkit – the DMCA takedown notice – is very difficult to fight. The DMCA requires only a good faith standard to issue takedown notices. This good faith standard is not subject to a penalty for perjury, so it has little bite. On the other hand, a counter-notification imposes a good faith standard under penalty of perjury. As a result, when Wesley tried to claim infringement against another modding project, Spigot, all he needed to do was issue a DMCA takedown notice and wait for Spigot to choose its course of action. In spite of Mojang’s pronounced support for the modding community in the Bukkit incident, Spigot decided to acquiesce to the takedown notice. Spigot’s reasoning was that, although they thought they could prevail in an infringement suit, litigating one in a U.S. District Court would require time and money. The Spigot community decided that removing the infringing content would give Spigot “the best chance of continuing to operate in the future.” Thus, Spigot gave into this legal bullying, and removed the infringing content.
In this post, we’ve seen developers taking a no-tolerance approach to any infringements of their IPs, to developers who appreciate that having these sub-communities actually helps to grow the IP. Here are a few questions for thought, but I’d like to hear any of your other thoughts too.
- Did any of the actions taken by the developers seem unreasonable to you?
- How would you handle infringement like this? Is there a distinction between the Blizzard case, where the mod incontrovertibly harmed the IP, and the Battlestar Galactica case?
- Is the DMCA fundamentally fair with regards to its takedown provisions? In particular, do you think that there is enough statutory protection against abuse of DMCA takedown notices? How might you change the DMCA?
- How could other provisions of Fair Use be applied to some of these examples?
 The helpfully named “patent-trademark-law.com” website provides a template: http://www.patent-trademark-law.com/copyrights/plagiarism-take-down-stolen-content/cease-desist-dmca-takedown/
 The template suggests $10,000. If the copyright is registered, and the holder can prove infringement in court, then the holder can collect up to $30,000 per copyrighted work. 17 U.S.C. § 504(c)(1).
 United States v. Liu, 731 F.3d 982, 989–92 (9th Cir. 2013).
 The content provider is also required to have a designated agent to receive such takedown notices. 17 U.S.C. § 512(c)(2).
 Viacom Int’l, Inc. v. YouTube, Inc., 2010 WL 2532404 (S.D.N.Y. 2010).
 Ordinarily, when a user downloads a pirated game off the Internet, that user is limited to playing the game on his computer. Flash carts permit the transfer of that game from the computer to the system for which the flash cart was designed – in this case, the 3DS.
 http://www.gamespot.com/articles/nintendo-launches-lawsuit-against-hacking-website/1100-6412649/. The link that this article provided, to HYC’s FAQ page, now links to a Nintendo anti-piracy page with a scary, authoritarian picture of Mario: https://ap.nintendo.com/.
 According to http://www.redbull.com/en/esports/stories/1331645000683/call-of-duty-tops-western-esports-audience, as of April 2014, StarCraft II was still the fourth most popular e-sport.
 17 U.S.C. § 1201(a)(2)
 Complaint, Blizzard Entertainment, Inc. v. Does, 8:14-CV-00781 (C.D. Calif.)
 Id. (emphasis added)
 17 U.S.C. § 512(c)(3)(A)(v)
 17 U.S.C § 512(g)(3)(C)