IP Law Daily Failure to produce source code precluded jury’s verdict that EA owed royalties to developer of first Madden video game
Tuesday, November 22, 2016

Failure to produce source code precluded jury’s verdict that EA owed royalties to developer of first Madden video game

By Cheryl Beise, J.D.

The federal district court in San Francisco properly granted judgment as a matter of law (JMOL) to Electronic Arts, Inc. (EA), on copyright infringement and breach of contract claims brought by computer programmer Robin Antonick, who had written source code for EA’s original John Madden Football game for the Apple II computer (Apple II Madden) pursuant to a 1986 agreement. The U.S. Court of Appeals in San Francisco agreed that there was insufficient evidence at trial to support the jury’s finding that subsequent versions of EA’s Madden games developed for Sega Genesis and Super Nintendo were similar enough to the original Apple II Madden game to qualify as "derivative works" entitling Antonick to royalties under the 1986 contract. Because no source code for Apple II or the accused games was introduced into evidence, the jury had no basis for finding that the games were the same for purposes of the intrinsic test (Antonick v. Electronic Arts, Inc., November 22, 2016, Hurwitz, A.).

EA hired Antonick in 1984 to write source code for a football video game. In 1986, Antonick and EA entered into a contract to develop a game for the Apple II computer called John Madden Football. The contract gave Antonick the right to royalties on "Derivative Works," defined as "any computer software program or electronic game which … constitutes a derivative work of the Work within the meaning of the United States Copyright law."

In 2011, Antonick brought this suit against EA alleging breach of contract and fraud based on EA’s failure to pay him royalties on allegedly derivative works. Because royalties were available to Antonick under the 1986 contract only for a derivative work of Apple II Madden, Antonick had to prove copyright infringement to prevail on his contract claims.

The court held a jury trial in two phases. In Phase I, the jury determined that Antonick’s claims were not time-barred. In Phase II, the same jury was asked to determine whether Antonick proved that there were substantial similarities between Sega Madden and Apple II Madden with respect to the expression in the source code of (1) field width or (2) plays and formations (Question 1). Then, for any Sega Madden game for which the jury found substantial similarities in either of those elements, the jury was asked whether Antonick proved that the game was virtually identical to Apple II Madden, when considering the games as a whole—pursuant to the intrinsic (subjective) test (Question 2). The jury found that Antonick established substantial similarities between the expression of the source code for plays and formations and that Antonick proved that each of the accused seven Sega Madden games at issue was "virtually identical" to the original version.

The district court later granted EA’s motion for JMOL. The court concluded that no reasonable jury could find that the seven Sega Madden games were virtually identical because the only information presented about the subsequent games as a whole was Antonick’s expert’s opinion that the games were "essentially the same" as a whole. However, expert testimony is not admissible evidence of similarity for purposes of the intrinsic test. Without the opportunity to view the games, the jury had no basis for evaluating whether they could be considered one and the same for purposes of the intrinsic test.

The Ninth Circuit affirmed the district court’s JMOL ruling. The appeals court agreed that Antonick failed to provide sufficient evidence of copyright infringement because none of the source code used for Apple II Madden, Sega Madden, or Super Nintendo was in evidence. The Super Nintendo games additionally were not derivative works because Super Nintendo’s processor differed from Apple II Madden’s processor and was outside the Apple II "Microprocessor Family" described in an amendment to the 1986 contract’s derivative works provision.

The district court also properly rejected Antonick’s alternative argument that EA breached the contract by failing to give him the opportunity to develop the Super Nintendo Madden game. Damages for such a breach would be purely speculative. Similarly, Antonick offered no evidence of purported damages arising from EA’s alleged use of certain tools or development aids developed by Antonick to create non-derivative works without seeking a negotiated license under the 1986 agreement.

The case is No. 14-15298.

Attorneys: David Nimmer (Irell & Manella LLP) and Stuart McKinley Paynter (The Paynter Law Firm PLLC) for Robin Antonick. Eric H. MacMichael (Keker & Van Nest LLP) for Electronic Arts, Inc.

Companies: Electronic Arts, Inc.

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