James Kachmar 08_webA recent Ninth Circuit decision in Antonick v. Electronic Arts, Inc. (filed Nov. 22, 2016), shows some of the proof issues that a plaintiff may encounter in prosecuting claims for copyright infringement in connection with software.  A jury found in favor of plaintiff’s claims of infringement; however, the trial court granted the defendant’s motion for judgment as a matter of law because plaintiff had not offered the “source code” for the software games at issue into evidence during the trial. In affirming the trial court’s decision, the Ninth Circuit illustrated some of the pitfalls a plaintiff may encounter in prosecuting copyright infringement claims.

In 1986, Antonick entered into a contract with EA to develop “a custom computer software program known as John Madden Football,” which was to be designed for Apple II computers.  His contract provided Antonick with a royalty on any derivative work which was defined as “any computer software program or electronic game which … constitutes a derivative work … within the meaning of the United States copyright law.”

EA released Apple II Madden in 1988 and it became an instant best seller.  EA had Antonick subsequently program Madden games for the Commodore 64 and IBM-compatible computers.    In 1989, EA asked Antonick to begin work on Madden games for the Nintendo and Sega Genesis entertainment systems.  However, about one year later, Antonick was told to stop work on those projects since Nintendo was becoming obsolete and EA had decided to take a new direction for the Sega game.  Park Place Productions was hired by EA to create a Sega version of the Madden game, which was released in November 1990.  From 1992 to 1996, EA continued to release Madden games for Sega Genesis.  Antonick did not receive any royalties for the Sega version of the Madden game.  (This article will not address Antonick’s claims with respect to the Super Nintendo Madden version.)

Antonick sued EA in 2011 for breach of contract with regard to the unpaid royalties for the Sega Madden game.  After a jury found that Antonick’s claims were not barred by the statute of limitations, trial proceeded as to the merits of his contract claims for unpaid royalties.  He produced evidence at trial that Park Place had problems developing its own version of the game and may have resorted to copying his code to meet demanding deadlines.  Antonick also produced an expert, Michael Barr, to opine that Sega Madden was “substantially similar to certain elements of Apple II Madden,” in that it had similar formations, plays, play numbering, etc.  For some reason, Antonick did not offer the source code for either Apple II Madden (the “work”) nor the source code for Sega Madden into evidence.  (It is unclear from the opinion whether this was because Antonick did not obtain all of the source code or chose not to offer it.0  In reversing the jury’s verdict in Antonick’s favor, the trial court found that the failure to produce the source code into evidence meant that Antonick could not provide sufficient evidence of copyright infringement that would entitle him to a royalty under his 1986 contract with EA and entered judgment in EA’s favor.

The Ninth Circuit began by concluding that because the contract entitled Antonick to royalties only if he could show a derivative work “within the meaning of the United States copyright law,” Antonick had to establish a copyright infringement claim to prevail on his contract claims.  In essence, Antonick had to prove “that EA `copied protected elements of the work’”.  Given that Antonick apparently had no direct evidence of copying, the Ninth Circuit reasoned that he could only provide infringement by showing: (1) EA’s “access to his work;” and (2) that the two works are “substantially similar.”  As to the “substantially similar” prong, the Ninth Circuit has developed a two-part test which requires a plaintiff to prove both “substantial similarity under the `extrinsic test’ [objective comparison and specific expressive elements] and substantial similarity under the `intrinsic test’ [a subjective comparison that focuses on whether the ordinary reasonable audience would find the work substantially similar].”

The Ninth Circuit agreed with the trial court that the failure to provide the source code for the two versions of the game meant that the jury had no evidence to make a subjective comparison under the intrinsic test.  Antonick’s whole claim was premised on the contention that the “source code” of the Sega version of the Madden game infringed on the source code of his Apple II version.  Without introducing the source codes into evidence, the jury could not compare the two works (i.e., “source code”) to determine substantial similarity.

Antonick tried to argue around this proof issue by claiming that Park Place had both access to his source code for the Apple II version and a motive to copy it; and that his expert and others had testified as to the similarity of the two works. The Ninth Circuit relied on three reasons for rejecting these arguments.

First, the Ninth Circuit assumed that even if the evidence showed access and motive to copy, it still did not establish that the “protected portions of the works are substantially similar.”  The Ninth Circuit has held for more than two decades that “access alone cannot establish copyright infringement.”

Second, the Ninth Circuit has repeatedly found that expert testimony alone cannot satisfy a plaintiff’s burden of proof under the intrinsic test which “depends on the response of the ordinary reasonable person.”  Although the expert’s testimony may have established “substantial similarity under the extrinsic test,” it could not satisfy the plaintiff’s burden of proof under the intrinsic test.

Finally, the testimony given as to how the games “appear” was not relevant to the crucial issue as to whether there was substantial similarity in the source code.  The Ninth Circuit recognized that it was the source code that was the protected work, not the audio visual appearance of the games.

The Ninth Circuit also found that lay witness testimony concerning EA’s “approach” to developing the Sega game could not satisfy plaintiff’s burden of proof as to the underlying source code.  The Ninth Circuit concluded that “an `approach’ is an idea that cannot be copyrighted – only its expression and code is protectable – and Sega Madden could have used Apple II Madden’s `approach’ to football video games without violating the copyright laws.”

The Antonick case is a reminder to plaintiffs prosecuting copyright infringement claims to make sure that they have identified the “work” at issue and make sure they have competent evidence in the record to support a verdict in their favor.  Otherwise, they are at risk of having  defeat snatched from the jaws of victory.


James Kachmar is a shareholder in Weintraub Tobin Chediak Coleman Grodin’s litigation section.  He represents corporate and individual clients in both state and federal courts in various business litigation matters, including trade secret misappropriation, unfair business competition, stockholder disputes, and intellectual property disputes.  For additional articles on intellectual property issues, please visit Weintraub’s law blog at www.theiplawblog.com