Robin Antonick v. Electronic Arts, Inc.
841 F.3d 1062
9th Cir.2016Background
- Robin Antonick created the Apple II "John Madden Football" source code and contracted with Electronic Arts (EA) in 1986; contract paid royalties for any "Derivative Work" as defined by U.S. copyright law.
- EA released multiple Madden versions (Sega Genesis, Super Nintendo) for which Antonick received no royalties; Antonick later sued EA (diversity action) claiming those games were derivative works.
- At trial Antonick offered expert and lay testimony claiming similarity and copying, but did not introduce the Apple II source code or the source code of the accused Sega/Super Nintendo games into evidence; images of the games were likewise incomplete (only Sega shown to jury).
- The jury found Sega Madden to be a Derivative Work; the district court granted JMOL for EA, concluding Antonick failed to prove copyright infringement because the works were not in evidence.
- The district court also dismissed Super Nintendo claims based on the contract’s definition of "Microprocessor Family" (different instruction/data word sizes) and dismissed a Development Aids damages claim for lack of proof of damages.
Issues
| Issue | Antonick's Argument | EA's Argument | Held |
|---|---|---|---|
| Whether Antonick had to prove copyright infringement to establish entitlement to royalties for Sega games | Contract ties royalties to "Derivative Work" as defined by copyright law; Antonick argued expert/lay testimony showed copying | EA argued Antonick needed to prove copying of protected code and failed because source code not in evidence | Held: Antonick needed to prove copyright infringement and failed without source-code evidence; JMOL for EA affirmed |
| Whether expert/lay testimony could substitute for absence of the works in proving intrinsic substantial similarity | Antonick claimed experts and witnesses established holistic similarity and access | EA argued intrinsic test requires evidence of the works themselves; expert opinion cannot satisfy the ordinary-observer intrinsic test | Held: Expert testimony may help extrinsic issues but cannot replace the intrinsic test (ordinary observer) without the works in evidence; testimony insufficient |
| Standard of protection (thin vs. broad) affecting required showing of similarity | Antonick contended only substantial similarity is required | EA argued football game has narrow expression (thin protection) requiring virtual identity | Held: Court did not decide which standard controlled because Antonick lost under either standard given absence of works in evidence |
| Whether Super Nintendo is in same "Microprocessor Family" under Amendment 1 | Antonick argued practical backward compatibility made them the same family | EA argued the contract requires the processors to "utilize the same instruction set and have the same instruction and data word size," which they do not | Held: Contract language controls; Super Nintendo not in same family — Super Nintendo claims dismissed |
| Whether EA breached by denying Antonick chance to develop Super Nintendo game and whether damages were provable | Antonick asserted he was deprived of the opportunity and sought royalties based on actual sales | EA argued damages would be speculative and Antonick provided no reliable damages model | Held: Damages too speculative and expert report inadequate; dismissal affirmed (and in any event lack of source code foreclosed derivative-finding) |
| Development Aids claim for license/use without negotiation and damages | Antonick claimed EA used his tools without negotiating required licenses | EA argued Antonick offered no evidence of the value of a license or EA’s benefit | Held: District court rightly excluded this claim for lack of proof of damages |
Key Cases Cited
- Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir.) (absence of copying proof defeats claim)
- Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir.) (access plus substantial similarity required absent direct evidence)
- Benay v. Warner Bros. Entm’t, Inc., 607 F.3d 620 (9th Cir.) (extrinsic/intrinsic two-part substantial-similarity test)
- Seiler v. Lucasfilm, Ltd., 808 F.2d 1316 (9th Cir.) (works must be juxtaposed; best-evidence principle in copyright cases)
- Airframe Sys., Inc. v. L-3 Commc’ns Corp., 658 F.3d 100 (1st Cir.) (no source-code evidence means no substantial-similarity showing)
- Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131 (5th Cir.) (side-by-side source-code comparison required)
- Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir.) (expert testimony cannot substitute for ordinary-observer intrinsic test)
- Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904 (9th Cir.) (thin vs. broad protection framework)
- Bikram’s Yoga Coll. of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir.) (distinguishing ideas/process from protected expression)
- Olson v. Nat’l Broad. Co., 855 F.2d 1446 (9th Cir.) (affirming JMOL where no substantial similarity evidence)
- Shaw v. Lindheim, 919 F.2d 1353 (9th Cir.) (affirming summary judgment for defendant on substantial similarity)
- EEOC v. Go Daddy Software, Inc., 581 F.3d 951 (9th Cir.) (preservation principles for Rule 50 motions)
- Sargon Enters., Inc. v. Univ. of S. Cal., 288 P.3d 1237 (Cal. 2012) (damages to reasonable certainty standard)
- Amelco Elec. v. City of Thousand Oaks, 38 P.3d 1120 (Cal. 2002) (requiring proof of damages for recovery)