Source Code Evidence Required to Establish Computer Game Copyright Infringement

Robin Antonick developed the computer code for the original John Madden Football game for Apple II (Apple II Madden), released by Electronic Arts (EA) in 1988. Antonick also developed Madden games for IBM-compatible computers. Antonick began work on Nintendo and Sega Genesis games, but EA told him to stop work on games for those platforms. EA then hired Park Place Productions to develop Madden games for the Sega Genesis and Super Nintendo platforms. EA agreed in its 1986 contract with Antonick to pay royalties on derivative works of the Apple II Madden game. EA did not pay Antonick royalties on the games Park Place developed and informed Antonick that those games were not derivative works.

Antonick sued EA for breach of contract in 2011 for EA’s refusal to pay Antonick royalties on the Madden games Park Place developed. At trial, neither the source code for the Apple II Madden game nor the source code for the allegedly infringing Park Place Madden games was introduced into evidence. Likewise, no images of the games were introduced into evidence. At the end of the jury trial, the district court granted judgment as a matter of law to EA. The district court determined that Antonick did not provide sufficient evidence of copyright infringement because Antonick did not introduce into evidence either the source code for the Apple II Madden game or the source code for the Sega Madden game developed by Park Place. The Ninth Circuit Court of Appeals affirmed. The jury found that the statute of limitations did not bar Antonick’s claims, but that issue was not appealed and therefore the Ninth Circuit did not discuss it.

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.

(Opinion pdf page 6).

Unless there is direct evidence of copying, proving copyright infringement requires showing that the defendant had access to plaintiff’s work and that the two works are substantially similar. In the Ninth Circuit, substantially similarity is established using a two-part test.

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.

(Opinion pdf page 7).

In this case, the district court ruled that the “intrinsic test” requirement was not met because no evidence was presented to the jury of either Apple II Madden or Sega Madden as a whole to allow the jury to make the subjective comparison. The Ninth Circuit agreed. The jury could not determine the substantial similarity of the works from the evidence in the record.

In addition,

absent evidence of the copyrighted work and the allegedly infringing works, the record is insufficient to allow appellate review of the jury’s verdict.

(Opinion pdf page 8).

Antonick argued that he did not need to introduce the source code or the games, because Park Place had access to Apple II Madden code and motive to copy it and Antonick’s expert and others testified to the similarity of the works. The Ninth Circuit ruled that Antonick’s arguments failed. The evidence presented by Antonick at most demonstrated access and motive to copy, but did not prove substantial similarity of the protected portions of the works. “Access alone cannot establish copyright infringement.”

In addition, the intrinsic test relies on an ordinary reasonable person approach, which cannot be provided by expert testimony. Finally, the lay testimony focused on the games’ appearance. But Antonick’s claim involved only the coding, not the appearance of the games.

The Ninth Circuit also ruled that EA’s representative witness’ testimony that he may have said 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,” did not establish a copyright violation.

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. Recognizing 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.

(Opinion pdf page 11).

This case is Antonick v. Electronic Arts, Inc., No. 14-15298, Ninth Circuit Court of Appeals.

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