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It is ironic that Microsoft Corp. launched its next generation video game machine, X-Box 360, on MTV, the same network that hosts the popular show “Pimp My Ride,” in which jalopies are transformed into mint-looking cars. If a video game owner decides to “pimp” his X-Box — by modifying the way games are played or the way they look — he runs the risk of civil or possibly criminal violations of federal copyright law. Even if those modifications are made solely for the owner’s personal use, there are apparently legal limits to the kinds of changes one can make to copyrighted works such as video games, DVDs, and other types of software. The developers that create software that allows video game owners to pimp their programs run the risk of being held liable for contributory infringement. Making changes to a copyrighted work is generally considered a fair use. No one will sue you for marking up a copy of “The Da Vinci Code,” or singing “Satisfaction” in the shower. But altering a video game isn’t so simple. The original software generally must be accessed, decompiled, possibly reverse-engineered, and new code must be developed and possibly inserted into the old code. Do individuals or companies have the right to do this — even for noncommercial purposes? The courts have been inconsistent on this question, and a recent law muddies the waters further (more on that later). Video game “modders” modify copies of games — adding characters, changing scenery, or changing the way the game is played. Many game makers actively encourage modding, believing that it enhances interest in the original game. But some manufacturers want to control exactly how consumers play. For example, in January, Tecmo, Inc., which makes an X-Box game called “Dead or Alive Xtreme Beach Volleyball,” sued the operators, hosters, and users of an online bulletin board service, “ninja-hacker.net,” in Chicago federal court. Modders had posted lines of code that alters the way Dead or Alive is played if installed into the game. (According to the complaint, one change made the “Xtreme” volleyball players nude.) The suit was dismissed in May, but the court ruled that Tecmo could refile its suit against the site itself and the “John Does” who posted the allegedly infringing code. If the hackers had sold versions of “Xtreme Volleyball” featuring nude players, this would have undoubtedly been an infringing derivative work. Indeed, when Micro Star, the makers of “Duke Nukem 3D,” caught a competitor selling game modifiers, the company sued. In 1998 the 9th U.S. Circuit Court of Appeals found the sale infringing, even though the company allowed individuals to modify the games themselves. It is not always clear what circumstances create an infringing derivative work. For example, in 1982 a company sold computer chips that were installed on the motherboard of arcade games like “PacMan” and “Galaxian” to make the games play faster (an advantage to the arcade operator, but not the player), but did not alter the original software. A Chicago federal court found that the chip created an infringing derivative work because it changed the way the game itself was displayed — which was the subject of the copyright. However a decade later, when Lewis Galoob Toys, Inc., sold a product that attached to a Nintendo video game and gave users’ characters new lives, effectively altering how the game was displayed — but not changing the actual code — a San Francisco federal court found that the modification did not create any “fixed” derivative work, and the sale was not a copyright violation. The court reasoned that the mere private display of a work that is not in fixed form and “merely enhances the audiovisual displays that originate in Nintendo game cartridges” is not an infringement. Because the final displayed work was not in a “fixed form,” it could not be copyrighted, and was not a “derivative” work. Changing the way a copyrighted work is displayed in ways the copyright holder did not intend may offend the copyright holder’s “moral rights.” Under the copyright act, these rights allow visual artists to control the use of their name when it is associated with a modification to their work. Associating the nude volleyballers with the original product would likely violate these rights, but only vis � vis the actual author of the video game — not his or her corporate employer. It is unclear from the case law, or the copyright act, whether the fair use doctrine permits an individual to modify their own copy of a work in any way they like — provided they don’t make public use of it. If the consumer is permitted to make derivative works, then how can someone who distributes software to empower its creation “contribute” to an infringement? Partially because of the ambiguity in copyright law, some video game manufacturers have relied on provisions of the Digital Millennium Copyright Act to go after companies that distribute modding technologies. Access to the code that makes these games play is blocked by technological measures. Users must install special “MOD” chips into their video game console to play mod games. Sony Corp., Microsoft Corp., and other companies have successfully gone after distributors of such chips not for contributory infringement, but for violating the provisions of the DMCA, which make it unlawful (with civil and criminal penalties) to distribute technologies designed to circumvent such technological measures. The DMCA appears to extend well beyond the protections of copyright law. For example, in 1999 a federal court in Northern California enjoined the sale of PlayStation Game Enhancers, which make temporary modifications to how a game is played — even though the court concluded that there was no evidence that the game enhancers themselves infringed the original copyrighted work. The court issued the injunction because it found that the enhancers violated the DMCA. Of course, this was before Chamberlain Group, Inc. v. Skylink Technologies, Inc., the U.S. Court of Appeals for the Federal Circuit’s August 2004 decision that essentially held that the DMCA could not create new copyright rights, but could only be used to enforce existing rights. So it is not clear whether the DMCA will empower video game manufacturers. Video manufacturers also claim that modders unlawfully reverse-engineer the original copyrighted software to make their mod code, in violation of both copyright law and the software license agreement, but once again, it is not clear that such reverse engineering is unlawful. For example, when a copyrighted video game was reverse-engineered and modified to permit it to play on a different video game platform, the 9th Circuit in 1992 found that this was not infringement because the ultimate use by the consumer was not infringing. Indeed, the same court held in a similar case that, absent fraud, reverse engineering would constitute a fair use. So it is not clear that a provision of a software license agreement that mandated that a user give up his right to a fair use would even be enforceable, or would constitute an unlawful “misuse” of a copyright. Courts considering the legality of modding seem to engage in a balancing act, rather than a strict analysis of copyright law. If the modification is limited, temporary, for private display only, and the modifying software is distributed for free, the court is more likely to allow it. If the modification is more permanent and distributed for commercial purposes, it is more likely to be found to be infringing, even if the ultimate use by the consumer is itself not infringing. The modding controversy extends beyond video games. For example, ClearPlay, Family Shield, and Trilogy Studios sold technologies that allow users to put a movie DVD into a computer and automatically mute or skip supposedly objectionable parts of that DVD. Some movie studios and directors sued these companies last year, alleging that altering the viewing experience was an infringement, that these companies were making an unauthorized derivative work, and that they were “passing off” the sanitized version as the original. The companies responded that no fixed derivative work was ever made, that the consumers had the right to see the work in any way they wanted, and that, because the consumer did not infringe, the companies could not contribute to infringement. The Clearplay dispute was cut off in April, when President George W. Bush signed the Family Entertainment and Copyright Act. The legislation expressly noted that it was not a violation of any provision of the copyright law to make portions of a copyrighted work “imperceptible” for home viewing, as long as no fixed copy of the altered work is made, and the “modified” work clearly states that it has been altered for viewing. The registrar of copyrights, Marybeth Peters, told the House committee that the legislation was unnecessary under current law because, in part, she believed that the mere private performance of a modification, which does not change the original work itself, is not an infringement. Rather than making the law clear, the congressional action confounds the question of the rights of individuals to alter their own copies of copyrighted works, and of companies to distribute technologies to assist them. If the copyright law permitted such personal alterations the new law would have been unnecessary. Does the fact that Congress felt compelled to pass the law mean that Congress believed that personal modifications and private performances were not fair use? We may never know. From 1984 to 1991, Mark D. Rasch led the U.S. Department of Justice’s criminal division’s efforts to investigate and prosecute computer and high technology crime. He is currently senior vice president and chief security counsel for Internet security firm Solutionary, and is based in Bethesda, Md.

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