Upon further review, the call by a U.S. District Court to wipe out Madden NFL Football creator Robin Antonick's $11 million trial win has been confirmed.
In 2011, Antonick sued Electronic Arts for allegedly breaching a development contract he signed in 1986 that entitled him to royalties on derivative versions of the Madden game. Although this was a contract dispute, he was entitled to royalties for derivatives of the original Apple II version "within the meaning of the United States copyright law," which had the trial judge examining arguments whether such things as the width of a playing field, virtual player attributes, and "plays and formations" could be protected.
A California federal judge permitted just enough for Antonick to go to trial, and there, he scored a touchdown in 2013 with an $11 million verdict. But a few months later, the judge entered a judgment as a matter of law in EA's favor with the conclusion that there wasn't enough evidence for a reasonable juror to conclude that the Apple II game and subsequent Sega versions were "virtually identical."
On appeal, the 9th Circuit turned to the question of whether Antonick's failure to introduce source code into evidence doomed his claim.
On Monday, Circuit Judge Andrew Hurwitz writes the opinion affirming the trial judge's conclusion that without the source code, the jury could not compare the works to determine substantial similarity.
Antonick argued it was enough that the defendants had access to his code and a motive to copy, and that the introduction of source code wasn't necessary because he had experts and witnesses testifying to the similarity of the works.
Hurwitz gives three reasons why the argument fails.
"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,'" he writes. "Access alone cannot establish copyright infringement."
"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,'" he continues. "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."
Importantly, the 9th Circuit doesn't rule out the possibility of royalties owed or infringement made from copying computer code. The decision figures to shape how such claims are litigated in the future.
The appeals court also tackles Antonick's claim of royalties from Super Nintendo versions of the Madden game, flowing from a provision of his contract that provided for royalties for derivative works in the "Same Microprocessor Family" as the Apple II platform. That meant the games weren't only being compared; Apple's computers were. Hurwitz affirms the lower court's conclusion that Apple II and Super Nintendo processors having different instruction sizes and data word sizes meant it was outside the zone of the contractual provision.
Lastly, Antonick argued alternatively that EA breached the contract by failing to give him the opportunity to develop the Super Nintendo Madden game.
"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," writes Hurwitz. "The district court was correct; the jury could not have determined Antonick's damages from the alleged breach to a 'reasonable certainty.' Moreover, even if the district court erred, there was no harm, because Antonick's failure to introduce any source code precluded a finding that Super Nintendo Madden was a Derivative Work."
Here's the full opinion.