United States District Court, N.D. California
BLIZZARD ENTERTAINMENT, INC., AND VALVE CORPORATION, Plaintiffs,
LILITH GAMES (SHANGHAI) CO. LTD., AND UCOOL, INC., Defendants.
ORDER DENYING MOTION FOR PARTIAL SUMMARY JUDGMENT AND
DENYING MOTION FOR RULE 11 SANCTIONS
CHARLES R. BREYER, UNITED STATES DISTRICT JUDGE
various video games at issue in this copyright case take
players to fantastical worlds populated by elves, demons, and
at least one elf-demon. The earliest of these games, Plaintiff
Blizzard Entertainment's “Warcraft III: Reign of
Chaos, ” lets them build their own fantastical worlds
populated by custom characters. Playing off the word
modification, players call this process “modding”
and their modding creations “mods.”
this rather remarkable chance to play God, like too many
human endeavors, devolved into a fight over money. In the
early 2000s, a particular Warcraft III mod called
“DotA” (short for “Defense of the
Ancients”) took the gaming community by storm.
Companies took notice. In 2013, Plaintiff Valve Corporation
released a stand-alone game modeled on DotA called
“Dota 2, ” which also took the gaming community
by storm.Still more companies took notice.
Defendants Lilith Games and uCool, Inc. released their own
iterations-“DotA Legends” and “Heroes
Charge, ” respectively-built specially for smart
phones. Blizzard and Valve, who themselves settled copyright
disputes between them, are now suing Lilith and uCool. uCool
has moved for partial summary judgment against Valve, arguing
that Valve does not own copyrights in the original DotA and
subsequent mods, and thus has no viable copyright claims
the Copyright Act of 1976, copyright protects “original
works of authorship fixed in any tangible medium of
expression, ” like books and paintings. 17 U.S.C.
§ 102. It also protects “audiovisual works,
” like movies and video games. Id.; Micro
Star v. Formgen Inc., 154 F.3d 1107, 1109-10 (9th Cir.
1998). A work is “created” when it is
“fixed.” 17 U.S.C. § 101. When a work is
created “over a period of time, the portion of it that
has been fixed at any particular time constitutes the work as
of that time.” Id. And when it “has been
prepared in different versions, each version constitutes a
separate work.” Id. The owner of a copyright
has the exclusive right to, among other things,
“reproduce” and “distribute” their
works. Id. §§ 106(1), (3).
“vests initially in the author or authors of” a
work. Id. § 201(a). But being an
“author” requires more than making a creative
contribution, even a “valuable and copyrightable”
one. Aalmuhammed v. Lee, 202 F.3d 1227, 1232 (9th
Cir. 1999). An author must have “superintended the
whole work, ” acting as a “master mind”
with “creative control.” Id. at 1233
(quoting Burrow-Giles Lithographic Co. v. Sarony,
111 U.S. 53, 61 (1884)). When two or more people superintend
a work and intend that their contributions will “be
merged into inseparable or interdependent parts of a unitary
whole”-like a novel or song-they have authored a
“joint work.” 17 U.S.C. § 101;
Aalmuhammed, 202 F.3d at 1232. Joint authors are
joint owners of the copyright in a joint work, 17 U.S.C.
§ 201(a), and so may “sue third-party infringers
without joining [their] fellow co-owners.” Corbello
v. DeVito, 777 F.3d 1058, 1065-66 (9th Cir. 2015).
contrast, when a person superintends the assembly of a number
of “separate and independent works” into “a
collective whole”-like a magazine or encyclopedia-he or
she has authored a “collective work.” 17 U.S.C.
§ 101. The author of a collective work holds copyright
“in the collective work as a whole, ” but
“is presumed to have acquired only the privilege of
reproducing and distributing” the contributions that
make up the collection. Id. § 201(c). The
authors of contributions retain those copyrights. See
id. § 201(c); § 103(b) (“The copyright
in a compilation . . . extends only to the material
contributed by the author of such work, as distinguished from
the preexisting material employed in the work.”);
id. § 101 (“The term
‘compilation' includes collective works.”).
that is “based upon one or more preexisting
works” is a “derivative work, ”
id. § 101, if it “substantially
incorporate[s] protected material from the preexisting work,
” Micro Star, 154 F.3d at 1111; see
also 17 U.S.C. § 101 (noting that a derivative work
may consist of “editorial revisions, annotations,
elaborations, or other modifications which, as a whole,
represent an original work of authorship”). The owner
of a copyright “has the exclusive right” to
“prepare derivative works based upon the copyrighted
work” or authorize others to do the same. Id.
§ 106(2). Copyright in a derivative work protects
“the material contributed by the author” of a
derivative work, provided that it does not “affect or
enlarge” copyright protection of the preexisting
material. Id. § 103(b). Copyright in a
derivative work “does not imply any exclusive right in
the preexisting material, ” id., nor does it
“extend to any part of the work in which [preexisting]
material has been used unlawfully, ” id.
“prepared by an employee within the scope of his or her
employment” is a “work made for hire.”
Id. § 101. Parties may agree to treat a work as
one made for hire, so long as they do so in writing.
Id. Either way, “the employer or other person
for whom the work was prepared is considered the author,
” unless otherwise agreed. Id. § 201(b).
most assets, “ownership of a copyright may be
transferred in whole or in part by any means of
conveyance.” Id. § 201(d)(1). Any
copyright transfer must be made in writing, id.
§ 204(a), except for a nonexclusive license,
id. § 101, which may be granted orally or
implied by conduct, Effects Associates, Inc. v.
Cohen, 908 F.2d 555, 558 (9th Cir. 1990). Copyright may
also be abandoned if the owner performs “some overt act
indicating an intention to abandon.” Micro
Star, 154 F.3d at 1114. Abandonment, like a transfer,
may be made in whole or in part. See id.
with the Copyright Office is not necessary to own a valid
copyright, 17 U.S.C. § 408(a), but it does create a
presumption of ownership if made within five years after
first publication. 17 U.S.C. § 410(c).
story is far from linear, but the Court will try to make
sense of the sprawl. And as it confronts a motion for partial
summary judgment, the following facts cast the record in the
light most favorable to the non-moving party, Valve. See
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255
2002, Blizzard released “Warcraft III: Reign of Chaos,
” what was then the latest installment in its popular
fantasy franchise. Like its predecessors, Warcraft III was a
computer strategy game. Eul Decl. ¶ 2. Players
controlled armies made up of humans, orcs, elves, and zombies
fighting for dominance over the fictional, computer-generated
world of Azeroth. Id. ¶ 2. To aid in the quest,
Warcraft III armies came not just with standard soldiers but
also “heroes, ” special warriors that grew more
and more powerful with more and more game play. Id.
fantasy afficionados had reason to rejoice besides their new
ability to hone a hero into a force to be reckoned with.
Warcraft III also included a program called the “World
Editor, ” which enabled players to create new settings,
characters, storylines, and rules-and then share them online
with the gaming community. Id. ¶¶ 4, 6;
see also Micro Star, 154 F.3d at 1110 (discussing
similar program available with another video game,
“Duke Nukem 3D”). Other players could then choose
from a list of these “mods” (also called
“maps”), download them, and join the
custom-designed fray. Eul Decl. ¶ 6. They could even
take an existing mod and make further changes themselves.
See Guinsoo Depo. 17:4-10. The catch was that mods
could not stand alone; players needed a copy of Warcraft III
to build or play them. Eul Decl. ¶ 6.
affording players formidable tools for creative expression,
Blizzard did not ensure that Warcraft III's End User
License Agreements (“EULAs”) assigned
intellectual property created using the World Editor back to
the company. See EULAs (dkts. 120-8 &
120-9). The EULAs did, however, make clear that players could
not “use or allow third parties to use the [World
Editor or mods] created thereby for commercial purposes
including, but not limited to, distribution of [mods] on a
stand-alone basis or packaged with other software or hardware
through any and all distribution channels, including, but not
limited to, retail sales and on-line electronic distribution
without the express written consent of Blizzard.”
Id. ¶ 3.C.iii. Mods were for play, not pay.
mods proved more contagious than others. A high-school
student named Kyle Sommer, operating under (and hereinafter
referred to by) his online moniker “Eul, ” was
Patient Zero for one of the most infectious: “Defense
of the Ancients” a/k/a “DotA.” His mod
pitted two teams of heroes against one another, each trying
to destroy the other's “central structure”
while defending one's own. Eul Decl. ¶ 8. Eul
conceived of DotA's setting, heroes, rules, and name-and
then built them using the World Editor in late 2002. Eul
Depo. at 46:19-50:7. A video game called “Diablo
II” and a card game called “Magic: The
Gathering” inspired many of Eul's heroes, while
another video game called “Aeon of Strife”
inspired DotA's rules. Id. at 55:11-56:4. Eul
continued working on DotA for roughly two years, adding,
subtracting and changing heroes and their powers in
subsequent versions. Id. at 62:1-4. He also changed
many other game elements. Id. at 62:4-7. In an
attempt to retain control over the process, Eul
“locked” his mod, meaning that he deliberately
corrupted DotA's code to stop others from building
directly off of it (though copycat versions appeared just the
same). Guinsoo Depo. at 18:6-20:6; id. at 33:8-36:1.
2004, Eul wanted to go to college and didn't have time to
continue updating DotA. Eul Depo. at 53:3-8. On September 23
of that year, he posted on a gaming community web forum,
declaring that “from this point forward, DotA is now
open source. Whoever wishes to release a version of DotA may
without my consent, I just ask for a nod in the credits to
your map.” Eul Online Post (dkt. 120-17); see
also Eul Depo. at 59:16-60:8; id. at
64:2-67:18. The eighteen-year-old Eul then moved on to other
things. Eul. Depo. at 60:3-11. Despite believing
that he owned what he had created, and despite knowing that
other players were building their own versions of DotA, Eul
does not remember trying to register a copyright.
Id. at 68:8-69:24.
strains of DotA quickly grew out of Eul's original
mod-well before he open-sourced it. See Eul Depo. at
69:12-24; Guinsoo Depo. at 18:2-20:13. Much of this case
concerns a super-strain of DotA called DotA Allstars.
Meian & Madcow
point in 2003, two still-unidentified players who called
themselves “Meian” and “Madcow” took
what they thought were “the best, most enjoyable
characters from all the other version of DotA and put them in
one” mod. Guinsoo Depo. at 14:24-15:1, 18:23-19:18.
They called it DotA Allstars. Id. Meian and
Madcow's mod was not locked like Eul's, so anyone
could build off of their code. Id. at 17:4-10,
33:8-34. That feature allowed Stephen Feak, a/k/a
“Guinsoo, ” to transform DotA Allstars into a
2003, Guinsoo started building off one of Meian and
Madcow's unlocked versions of DotA Allstars. Guinsoo
Depo. at 14:24-15:1; id. at 18:23-19:18. Guinsoo
picked this mod as a base because it was “the most
stable” and “the most played version at the
time.” Id. at 30:19-20. He looked at lists of
customs games, figured out which one the most people were
playing, and ran with it. Id. at 30:22-31:6. Guinsoo
did not tell Meian and Madcow what he was doing. Id.
on, Guinsoo simply hoped fix problems and
“polish” DotA Allstars by, for example, ensuring
that heroes were evenly matched. Id. at 28:23-29:20.
It was only after he finished “fixing the really low
hang[ing] fruit, ” that he transitioned to expanding
the mod's content. Id. at 29:16-30:9; see
also id. at 213:15-215:10. Unlike Eul, Guinsoo welcomed
input from others, friends and strangers alike. Id.
at 41:16-43:20. Contributors had varying levels of input.
Some, like Stephen Moss a/k/a “Neichus” and the
still-unidentified players “Syl-la-ble” and
“Zetta, ” were in a top tier that contributed
“really heavy design” work and actual
programming; they also helped Guinsoo with “intimate
decision-making” about the broader vision for DotA
Allstars. Id. at 46:18-48:12; Neichus Depo. at
23:16-21. Others, such as Derek Baker a/k/a
“Terrorblaze, ” were in a tier below that pitched
detailed ideas to Guinsoo and sometimes helped make them a
reality. For example, Terrorblaze and Guinsoo did “a
hand-in-hand design” of a character called
“Terrorblade, ” which Guinsoo-as the mod
“authority”-then chose to include. Guinsoo Depo.
at 49:9-50:18. People in the bottom tier posted ideas on
public forums that Guinsoo read, or gave him direct feedback
about what was good or bad about existing versions, but left
it at that. Id. at 53:3-54:16.
this process Guinsoo considered himself a
“chieftain” of sorts. Id. at 85:7.
Others held him in similarly high esteem. See
Neichus Depo. at 22:25-23:3; id. at 45:22-47:13;
Terrorblaze Depo. at 87:18-88:8. Guinsoo gave credit to his
helpers but controlled what made it into the mod and what did
not-and he kept it locked. Guinsoo Depo. at 41:13-43:24;
id. at 198:9-199:23.
early 2005, Guinsoo had shepherded DotA Allstars from version
2.0 to 6.0, iterations that added some 40 new heroes, wrought
substantial changes to other game elements, and rewrote a
majority of the code. Id. at 207:16-210:3;
id. at 235:19-236:24. He then called it quits. But
rather than open-source DotA Allstars, Guinsoo gave Neichus
an unlocked version so that he could keep developing what was
fast becoming the dominant line of DotA mods. See
id. at 218:16-219:21; Neichus Depo. at 100:1-9.
promptly enlisted Abdul Ismail a/k/a “Icefrog” to
work “work jointly as developers of DotA
Allstars.” Icefrog Depo. at 25:19-28:6. Icefrog had
done some work on DotA Allstars while Guinsoo was the lead
developer, Neichus Depo. at 58:13-15, and also had
“much greater skills and training in programming”
than Neichus,  id. at 57:2-16. Although Guinsoo
“hadn't really considered” Icefrog taking on
a leadership role, he knew-indeed hoped-that subsequent
modders would keep DotA Allstars alive. Guinsoo Depo. at
219:6-220:12. Icefrog therefore had his
“blessing” to continue developing the mod.
Icefrog Depo. at 248:7-249:4.
long, DotA Allstars's increasing popularity
“scared” Neichus and made working on the mod feel
“more like a job” than a hobby, so he stopped.
Neichus Depo. at 99:22-100:9. Icefrog then became the sole
lead developer. Icefrog Depo. At 25:17-26:9. Much like
Guinsoo before him, Icefrog took suggestions from others and
decided what elements made it into the mod and what elements
did not. Id. at 34:7-43:18. And like Guinsoo,
Icefrog often credited those whose suggestions made the cut.
Id. at 45:24-46:2. But while Guinsoo's oversight
had been somewhat informal, Icefrog regularly enlisted a team
of helpers. See Terrorblaze Depo. at 96:12-99:6.
point in early 2006, Marc DeForest, the founder of a company
called S2 Games (“S2”), contacted Icefrog
online. Icefrog Depo. at 76:21-77:2. DeForest was
a fan of DotA Allstars, id. at 77:20-22, and
eventually convinced Icefrog to join S2 as a designer,
id. at 75:4-9. While there, Icefrog mainly worked on
a game called “Heroes of Newerth.” Id.
at 132:3-134:15. Initially, Icefrog's employment
agreement gave him all intellectual property rights
“created in connection” with Heroes of Newerth,
but was later revised to grant S2 those rights. See
2006 S2 Agreement (dkt. 120-29) ¶ 5; Icefrog Depo. at
125:25-129:8. Icefrog also agreed from the get-go to
“continually update DotA Allstars and its associated
websites so as to maintain the current player
base.” Id. at 122:15-23. Because DotA
Allstars inspired Heroes of Newerth's game play, S2
looked to capitalize on continued interest in DotA Allstars.
See id. at 133:16-134:20.
2009, Valve began developing Dota 2, a stand-alone computer
game based on DotA and DotA Allstars. Lynch Depo. at
144:23-145:12. That same year, Valve hired Icefrog as a
developer. On May 24, 2010, Icefrog assigned any and all of
his rights in DotA and DotA Allstars to Valve for a handsome
price. See Icefrog Assignment (dkt. 120-10) at 1, 3.
Four months later, Eul did the same with this ...