Robin Antonick v. Electronic Arts, Inc. , 841 F.3d 1062 ( 2016 )


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  •                   FOR PUBLICATION
    UNITED STATES COURT OF APPEALS
    FOR THE NINTH CIRCUIT
    ROBIN ANTONICK, an Illinois           No. 14-15298
    Citizen,
    Plaintiff-Appellant,          D.C. No.
    3:11-cv-01543-CRB
    v.
    ELECTRONIC ARTS, INC., a               OPINION
    California corporation,
    Defendant-Appellee.
    Appeal from the United States District Court
    for the Northern District of California
    Charles R. Breyer, Senior District Judge, Presiding
    Argued and Submitted March 16, 2016
    San Francisco, California
    Filed November 22, 2016
    Before: Andrew J. Kleinfeld, Johnnie B. Rawlinson,
    and Andrew D. Hurwitz, Circuit Judges.
    Opinion by Judge Hurwitz
    2               ANTONICK V. ELECTRONIC ARTS
    SUMMARY *
    Copyright
    The panel affirmed the district court’s judgment as a
    matter of law in favor of Electronic Arts, Inc., in a diversity
    action seeking unpaid royalties pursuant to a contract,
    arising from alleged copyright infringement.
    Plaintiff Robin Antonick developed the computer code
    for the original John Madden Football game for the Apple II
    computer, which was released by Electronic Arts. Electronic
    Arts subsequently released Madden games for Sega Genesis
    and Super Nintendo for which plaintiff received no royalties
    under a 1986 contract.
    Concerning plaintiff’s Sega claims, the panel held that
    the plaintiff did not provide sufficient evidence of copyright
    infringement because neither the source code used for Apple
    II Madden nor Sega Madden was in evidence. The panel
    also rejected plaintiff’s argument that Electronic Arts’s post-
    verdict Fed. R. Civ. P. 50(b) motion for judgment as a matter
    of law regarding the intrinsic test for copyright infringement
    should not have been considered.
    Concerning plaintiff’s Super Nintendo claims, the panel
    held that the district court did not err in dismissing plaintiff’s
    derivative work claims because the Apple II and Super
    Nintendo processors were not in the same microprocessor
    *
    This summary constitutes no part of the opinion of the court. It
    has been prepared by court staff for the convenience of the reader.
    ANTONICK V. ELECTRONIC ARTS                     3
    family, as defined by the parties’ contract. The panel also
    affirmed the district court’s conclusion that the jury could
    not have determined plaintiff’s damages from the alleged
    breach of contract to a reasonable certainty. The panel
    further held that, even if the district court erred, there was no
    harm, because plaintiff’s failure to introduce any source
    code precluded a finding that Super Nintendo Madden was a
    derivative work.
    Finally, the panel held that plaintiff offered no evidence
    of purported damages arising from plaintiff’s claim that
    Electronic Arts used development aids to create non-
    derivative works without seeking a negotiated license.
    COUNSEL
    David Nimmer (argued), Irell & Manella LLP, Los Angeles,
    California; Stuart McKinley Paynter (argued), Jennifer L.
    Murray, and Sara Willingham, The Paynter Law Firm
    PLLC, Washington, D.C.; Robert B. Carey and Leonard W.
    Aragon, Hagens Berman Sobol Shapiro LLP, Phoenix,
    Arizona; Steve W. Berman, Hagens Berman Sobol Shapiro
    LLP, Seattle, Washington; Walter H. Sargent, Walter H.
    Sargent P.C., Colorado Springs, Colorado; Peter S. Menell,
    Berkley, California; for Plaintiff-Appellant.
    Eric H. MacMichael (argued), Tia A. Sherringham, R. Adam
    Lauridsen, Steven A. Hirsch, and Susan J. Harriman, Keker
    & Van Nest LLP, San Francisco, California, for Defendant-
    Appellee.
    4             ANTONICK V. ELECTRONIC ARTS
    OPINION
    HURWITZ, Circuit Judge:
    In this case, the plaintiff claimed copyright infringement.
    But the contents of the copyrighted work and the allegedly
    infringing works were never introduced into evidence. The
    district court held that the claim failed as a matter of law.
    We agree, and affirm.
    I. Background
    Robin Antonick developed the computer code for the
    original John Madden Football game for the Apple II
    computer (“Apple II Madden”). Electronic Arts, Inc. (“EA”)
    released Apple II Madden in 1988. Apple II Madden, the
    first football video game with 11 players on each side, was
    an instant hit, the best seller of any sports video game of its
    time. Antonick subsequently programmed Madden games
    for the Commodore 64 and IBM-compatible computers
    (“IBM Madden”).
    In 1989, Antonick began working for EA on Madden
    games for the Nintendo and Sega Genesis entertainment
    systems. But in August 1990, EA told him to stop—
    Nintendo was becoming obsolete, and EA had decided on a
    new direction for the Sega game, hiring Park Place
    Productions to create a version with “more of an arcade
    style.” In November 1990, EA released its first version of
    Sega Madden. In late 1991 or early 1992, EA released
    Antonick’s last Madden game, an update of IBM Madden.
    Each year from 1992 to 1996, EA released Madden
    games for Sega Genesis and Super Nintendo (“Super
    Nintendo Madden”). The Madden games have remained
    incredibly lucrative, selling millions of copies and even
    ANTONICK V. ELECTRONIC ARTS                    5
    attracting a loyal fan base among professional football
    players.
    Antonick’s 1986 contract with EA defined “a custom
    computer software program known as John Madden
    Football” designed for the “Apple [II] Family of Computers”
    as the “Work,” and provided that Antonick would receive
    royalties on any “Derivative Work,” 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.” Antonick
    received no royalties for Sega Madden or Super Nintendo
    Madden, which EA assured him were not Derivative Works.
    In 2011, Antonick brought this diversity action against
    EA, seeking contract damages in the form of unpaid royalties
    for Sega Madden and Super Nintendo Madden. The district
    court bifurcated the trial. In Phase I, the jury found that the
    statute of limitations did not bar Antonick’s claims. Phase
    II involved the merits of Antonick’s claims. Antonick
    produced evidence that Park Place was rushed and
    inadequately staffed, and argued that it copied his code to
    meet the demanding deadline for the first Sega Madden.
    Antonick’s expert, Michael Barr, opined that Sega Madden
    was substantially similar to certain elements of Apple II
    Madden. In particular, Barr opined that the games had
    similar formations, plays, play numberings, and player
    ratings; a similar, disproportionately wide field; a similar
    eight-point directional system; and similar variable names,
    6               ANTONICK V. ELECTRONIC ARTS
    including variables that misspelled “scrimmage.” 1 But
    neither the source code for Apple II Madden—the “Work”—
    nor the source code of any allegedly infringing works were
    introduced into evidence. Nor were images of the games at
    issue introduced. 2
    Nonetheless, the jury found that the Sega Madden games
    were Derivative Works under the 1986 contract. The district
    court then granted judgment as a matter of law (“JMOL”) to
    EA, holding that Antonick had not provided sufficient
    evidence of copyright infringement, because neither the
    source code used for Apple II Madden nor Sega Madden was
    in evidence.
    II. Discussion
    A. The Sega Claims
    Although this is a contract case, because royalties are
    available to Antonick under the 1986 contract only for a
    derivative work of Apple II Madden “within the meaning of
    the United States copyright law,” he had to prove copyright
    infringement to prevail on his contract claims. Antonick was
    thus required to prove that EA “copied protected elements of
    the work.” Jada Toys, Inc. v. Mattel, Inc., 
    518 F.3d 628
    , 636
    (9th Cir. 2008) (citations omitted). “Absent direct evidence
    of copying, proof of infringement involves fact-based
    1
    Barr was only able to examine a partial draft version of the Apple
    II Madden source code, because the complete final version could not be
    found. The draft version he examined was not introduced into evidence.
    2
    EA showed the jury a video of Sega Madden, but the jury did not
    view a video of Apple II Madden.
    ANTONICK V. ELECTRONIC ARTS                    7
    showings that the defendant had ‘access’ to the plaintiff’s
    work and that the two works are ‘substantially similar.’”
    Three Boys Music Corp. v. Bolton, 
    212 F.3d 477
    , 481 (9th
    Cir. 2000) (citation omitted).
    “The Ninth Circuit employs a two-part test for
    determining whether one work is substantially similar to
    another.” Benay v. Warner Bros. Entm’t, Inc., 
    607 F.3d 620
    ,
    624 (9th Cir. 2010) (citation omitted).
    [A plaintiff] must prove both substantial
    similarity under the “extrinsic test” and
    substantial similarity under the “intrinsic
    test.” The “extrinsic test” is an objective
    comparison of specific expressive elements.
    The “intrinsic test” is a subjective
    comparison that focuses on whether the
    ordinary, reasonable audience would find the
    works substantially similar in the total
    concept and feel of the works.
    
    Id.
     (citations and question marks omitted). The district court
    granted JMOL to EA under the “intrinsic test” because “the
    jury had no evidence of Apple II Madden or Sega Madden
    as a whole to enable it to make this subjective comparison.”
    The district court was correct. Antonick’s claims rest on
    the contention that the source code of the Sega Madden
    games infringed on the source code for Apple II Madden.
    But, none of the source code was in evidence. The jury
    therefore could not compare the works to determine
    substantial similarity. See Seiler v. Lucasfilm, Ltd., 
    808 F.2d 1316
    , 1319 (9th Cir. 1987) (“There can be no proof of
    ‘substantial similarity’ and thus of copyright infringement
    unless Seiler’s works are juxtaposed with Lucas’ and their
    8             ANTONICK V. ELECTRONIC ARTS
    contents compared.”) (applying the best evidence rule in a
    copyright action); 
    id.
     (“[P]roof of the infringement claim
    consists of the works alleged to be infringed.”); accord
    Airframe Sys., Inc. v. L-3 Commc’ns Corp., 
    658 F.3d 100
    ,
    107 (1st Cir. 2011) (“Having presented no evidence
    sufficient to prove the content of its registered source code
    versions, Airframe cannot show that any of its registered
    works is substantially similar to the allegedly infringing M3
    program.”); Gen. Universal Sys., Inc. v. Lee, 
    379 F.3d 131
    ,
    146 (5th Cir. 2004) (per curiam) (“Without providing its own
    source code for comparison, GUS did not satisfy the
    requirement that the infringed and infringing work be
    compared side-by-side.”). And, absent evidence of the
    copyrighted work and the allegedly infringing works, the
    record is insufficient to allow appellate review of the jury’s
    verdict. See, e.g., Olson v. Nat’l Broad. Co., 
    855 F.2d 1446
    ,
    1448, 1451 (9th Cir. 1988) (granting JMOL to copyright
    defendant because no reasonable jury could have found
    substantial similarity); cf. Shaw v. Lindheim, 
    919 F.2d 1353
    ,
    1355 (9th Cir. 1990) (“We have frequently affirmed
    summary judgment in favor of copyright defendants on the
    issue of substantial similarity.”).
    Antonick argues there was no need to introduce the
    source code (or even the games at issue), because Park Place
    had access to the Apple II Madden code and a motive to copy
    it, and his expert and others testified to the similarity of the
    works. These arguments fail for three reasons.
    First, the evidence at most demonstrates access and a
    possible motive to copy; it does not establish that the
    “protected portions of the works are substantially similar.”
    ANTONICK V. ELECTRONIC ARTS                            9
    Jada Toys, 
    518 F.3d at 637
    . 3 Access alone cannot establish
    copyright infringement. Shaw, 
    919 F.2d at 1361
    .
    Second, our law is clear that expert testimony cannot
    satisfy a plaintiff’s burden of proof under the intrinsic test,
    which “depend[s] on the response of the ordinary reasonable
    person.” Brown Bag Software v. Symantec Corp., 
    960 F.2d 1465
    , 1475 (9th Cir. 1992) (quoting Sid & Marty Krofft
    Television Prods., Inc. v. McDonald’s Corp., 
    562 F.2d 1157
    ,
    1164 (9th Cir. 1977)). 4 Barr’s testimony may have been
    3
    If the range of possible expression is narrow, the copyrighted work
    is entitled to thin protection, and a plaintiff must show virtual identity
    between the copyrighted work and the allegedly infringing work. See
    Mattel, Inc. v. MGA Entm’t, Inc., 
    616 F.3d 904
    , 913–14 (9th Cir. 2010).
    If the range of possible expression is wide, the work is entitled to broad
    protection and the plaintiff must show only substantial similarity. 
    Id.
    The district court held that “[d]ue to the narrow range of possible
    expression for a football video game and the fact that only two of the ten
    similar elements are protectable,” Antonick’s work was entitled only to
    thin protection, requiring him to show virtual identity of the works as a
    whole. Antonick disputes that conclusion, arguing that he needed to
    show only substantial similarity. We need not resolve that dispute,
    because we conclude that Antonick, having presented insufficient
    evidence of the works as a whole, loses under either standard.
    4
    Antonick’s contrary cases are from other circuits; of the two Ninth
    Circuit cases he cites, one is a memorandum disposition holding expert
    testimony admissible in a case in which the relevant works themselves
    were in evidence, Lucky Break Wishbone Corp. v. Sears Roebuck & Co.,
    373 F. App’x 752, 755–56 (9th Cir. 2010), and the other concerned a
    special master’s report, not expert testimony, Johnson Controls, Inc. v.
    Phoenix Control Sys., Inc., 
    886 F.2d 1173
    , 1176 (9th Cir. 1989).
    10               ANTONICK V. ELECTRONIC ARTS
    enough to establish substantial similarity under the extrinsic
    test, but it cannot satisfy Antonick’s burden of production
    under the intrinsic test. 
    Id.
    Third, the lay testimony was about how the games
    appeared, not how they were coded—and Antonick does not
    assert a copyright interest in Apple II Madden’s audiovisual
    appearance, only in its coding.
    Antonick argues that copying was shown by testimony
    of Michael Kawahara, an Apple II Madden assistant
    producer. When asked whether he recognized any of the
    plays in Sega Madden from Apple II Madden, Kawahara
    answered affirmatively, stating that “[it] was – well, since
    the interface was – well, it was the same as we used in the
    Apple II. It was very easy to look at all of the plays in the
    Genesis version and they looked identical . . . to the original
    Apple II version.” This comment, however, does not
    establish that the source code for the two games were
    substantially similar. Kawahara had no programming
    responsibilities for Apple II Madden; did not understand the
    Apple II Madden code; did not see the Sega Madden code;
    and admitted that he had no knowledge about differences in
    the games’ codes.
    Antonick also cites a statement by Richard Hilleman, an
    EA representative, that it was “possible” he had told an
    Antonick is not alone in contending that experts should be allowed
    to help juries assess the holistic similarity of technical works such as
    computer programs. See Brown Bag, 
    960 F.2d at 1478
     (Sneed, J.,
    concurring); Comput. Assocs. Int’l, Inc. v. Altai, Inc., 
    982 F.2d 693
    , 713
    (2d Cir. 1992). But, given our precedents, that argument must be
    addressed to an en banc court.
    ANTONICK V. ELECTRONIC ARTS                   11
    interviewer that “the Sega game took the system’s approach
    from Mr. Antonick’s game and just simply put a different
    aesthetic on top of it.” But, an “approach” is an idea that
    cannot be copyrighted—only its expression in code is
    protectable—and Sega Madden could have used Apple II
    Madden’s “approach” to football video games without
    violating the copyright laws. See Bikram’s Yoga Coll. of
    India, L.P. v. Evolation Yoga, LLC, 
    803 F.3d 1032
    , 1037–38
    (9th Cir. 2015) (“[R]ecognizing this vital distinction
    between ideas and expression, courts have routinely held
    that the copyright for a work describing how to perform a
    process does not extend to the process itself.”).
    Finally, Antonick argues that EA’s post-verdict Rule
    50(b) motion for JMOL regarding the intrinsic test should
    not have been considered because the pre-verdict Rule 50(a)
    motion argued only that the evidence was insufficient to
    show substantial similarity between the two elements of the
    code that the district court had ruled protectable, rather than
    discussing similarity of the works as a whole. See EEOC v.
    Go Daddy Software, Inc., 
    581 F.3d 951
    , 961 (9th Cir. 2009)
    (“Because it is a renewed motion, a proper post-verdict Rule
    50(b) motion is limited to the grounds asserted in the pre-
    deliberation Rule 50(a) motion.”). But, both motions argued
    that the failure to place the source code in evidence was fatal
    to Antonick’s claim that EA had copied his work. That
    preserved the argument. 
    Id.
     (“Rule 50(b) ‘may be satisfied
    by an ambiguous or inartfully made motion’ under Rule
    50(a).”) (quoting Reeves v. Teuscher, 
    881 F.2d 1495
    , 1498
    (9th Cir. 1989)).
    B. The Super Nintendo Claims
    Antonick sought royalties for the Super Nintendo
    Madden games under Amendment 1 to his contract, which
    12            ANTONICK V. ELECTRONIC ARTS
    provided for royalties for derivative works for platforms in
    the “Same Microprocessor Family” as the Apple II. The
    Amendment defined “Microprocessor Family” as “a single
    microprocessor and all related microprocessors that utilize
    the same instruction set and have the same instruction and
    data word size.”
    Antonick’s expert, Garry Kitchen, testified that the
    Apple II used the 6502 processor, which had an 8-bit data
    word size and 56 instructions of up to 3 bytes in length. The
    Super Nintendo used the more advanced 5A22 processor,
    which in its native mode used a 16-bit data word size and at
    least 92 instructions of up to 4 bytes in length; but which
    could also act as a 6502 processor for purposes of backwards
    compatibility.     Kitchen testified that this backwards
    compatibility meant that the microprocessors were in the
    same “family,” as the industry uses the term. He
    acknowledged that Super Nintendo Madden was designed to
    use that system’s advanced capabilities, utilizing a larger
    instruction set, longer data word sizes, and longer
    instructions than Apple II Madden.
    After Kitchen’s testimony, the district court dismissed
    the Super Nintendo claims, holding that the Super Nintendo
    was not in the same Microprocessor Family as the Apple II
    under the contractual definition, because it used a larger
    instruction set, instruction size, and data size. Antonick
    argues that the two processors were in the same family as a
    practical matter because they could use the same instruction
    set, instruction size, and data size. Antonick’s factual
    premise may well be correct. But we deal here with contract
    interpretation, and the word “could” is not in the contractual
    definition. Instead, the contract requires that, to be in the
    same family, two processors must “utilize the same
    instruction set and have the same instruction and data word
    ANTONICK V. ELECTRONIC ARTS                          13
    size.” The Apple II and Super Nintendo processors have
    different instruction sizes and data word sizes. 5 The district
    court therefore did not err in dismissing the Super Nintendo
    derivative work claims.
    Antonick argues in the alternative that EA breached the
    contract by failing to give him the opportunity to develop the
    Super Nintendo Madden game. The contract provided that,
    if Antonick developed any Derivative Works for new
    microprocessor families, he would be entitled “to written
    notice and the opportunity to develop additional Derivative
    Works for the New Microprocessor Family.” Antonick
    developed a Madden game for the Apple II GS, which he
    argues, and EA does not appear to deny, is in the same
    microprocessor family as the Super Nintendo. As damages,
    he seeks royalties based on the actual Super Nintendo game
    sales.
    The district court dismissed this claim because a fact-
    finder would have to speculate on whether Antonick could
    have developed such a work, how well an Antonick-
    developed Super Nintendo game would have sold, and what
    royalty rate the parties would have agreed upon; Antonick’s
    expert report did not address these issues. The district court
    was correct; the jury could not have determined Antonick’s
    damages from the alleged breach to a “reasonable certainty.”
    Sargon Enters., Inc. v. Univ. of S. Cal., 
    288 P.3d 1237
    , 1254
    (Cal. 2012). Moreover, even if the district court erred, there
    was no harm, because Antonick’s failure to introduce any
    5
    Arguably, the chips “utilize the same instruction set” because the
    6502 uses a subset of the 5A22’s instructions.
    14            ANTONICK V. ELECTRONIC ARTS
    source code precluded a finding that Super Nintendo
    Madden was a Derivative Work.
    C. The Development Aids
    The contract also gave EA a license to create derivative
    works using certain tools designed by Antonick
    (“Development Aids”), and provided that the parties would
    “negotiate in good faith” for further licenses if EA wanted to
    use the aids to create non-derivative works. Antonick
    alleges that EA used the aids to create non-derivative works
    without seeking that license.
    The district court dismissed this claim because Antonick
    offered no evidence of purported damages. Antonick did not
    show the value of similar licenses or the benefit that EA
    received from using the Development Aids. Instead,
    Antonick cited only the report of his damages expert, which
    simply made generic royalty calculations based on existing
    sales without explaining how those calculations were
    relevant to the Development Aid claim. The district court
    correctly kept this unsubstantiated claim from the jury. See
    Amelco Elec. v. City of Thousand Oaks, 
    38 P.3d 1120
    , 1130,
    1132 (Cal. 2002).
    CONCLUSION
    The judgment of the district court is AFFIRMED.
    

Document Info

Docket Number: 14-15298

Citation Numbers: 841 F.3d 1062, 2016 U.S. App. LEXIS 20933, 2016 WL 6872072

Judges: Kleinfeld, Rawlinson, Hurwitz

Filed Date: 11/22/2016

Precedential Status: Precedential

Modified Date: 11/5/2024

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