EA Secures JMOL: Sega ‘Madden' Games Not ‘Virtually Identical' to ‘86 Apple II ‘Madden’

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By Tamlin H. Bason  

Jan. 24 -- When compared as a whole, there is no legal basis that would support a jury's determination that seven “Madden” football games created for the Sega Genesis console are virtually identical to the 1986 “John Madden Football” game that was developed for the Apple II computer, the U.S. District Court for the Northern District of California ruled Jan. 22 (Antonick v. Elec. Arts Inc., N.D. Cal., No. 3:11-cv-01543-CRB, 1/22/14).

The court granted Electronic Arts Inc. judgment as a matter of law on a plaintiff's breach of contract claim. The complaint alleged that all of the Sega games--released between 1990 and 1996--were derivative works of the 1986 Apple II game that the plaintiff had developed.

In granting EA's motion for JMOL, the court held that the jury's determination that the Sega games were derivative works of the Apple II game, and therefore that EA breached its contract by not paying the plaintiff royalties, was not supported by the evidence. Indeed, a finding that the games were virtually identical could not be supported for the simple reason that the jury never saw either the Apple II game or any of the Sega games in their entirety, the court said.

Extrinsic and Intrinsic Tests

The jury's verdict was primarily based on its determination that there were substantial similarities between the expression of the source code for plays and formations. That is, the jury determined that source code that the plaintiff, Robin Antonick, developed for the 1986 Apple II, was infringed--with respect to the expression of plays and formations--by the Sega games that were released later. Because the later games were infringing, they were derivative works, and therefore Antonick was entitled to royalties pursuant to his agreement with EA, the jury determined.

Courts in the Ninth Circuit apply both an extrinsic and intrinsic test to determine if two works are similar. The extrinsic test considers the objective similarities between the protected ideas in the copyrighted work and the work that is alleged to be infringing. The intrinsic test is a subjective comparison of the two works through the eyes of an ordinary observer that focuses on whether the two works, compared as a whole, are “virtually identical.”


“Comparing the works element by element is plainly counter to Ninth Circuit law.”

 

--Judge Charles R. Breyer

Works Must Be Compared as a Whole

The problem with the jury's determination was that it was not based on a comparison of the games as a whole, according to Judge Charles R. Breyer. Indeed, the jury's verdict was based on its observation that there were substantial similarities in a number of elements found in each game. But, “Comparing the works element by element is plainly counter to Ninth Circuit law,” the court said, noting that since at least 1993 the circuit has required that works be compared as a whole. Quoting Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 32 U.S.P.Q.2d 1086 (9th Cir. 1994), the court said:

If the jury's comparison of the works could be accomplished by merely comparing each of the elements head-to-head without considering the significance of the protected expression copied, “there would be no point to the extrinsic test, or to distinguishing ideas from expression” and a copyright holder could impermissibly rely on similarities in expression resulting from unprotectable elements.  

 

Because Antonick never introduced any of the complete games into evidence, there was no evidentiary basis for the jury's determination that the Sega games as whole were virtually identical to the Apple II game, the court said. Antonick argued that the jury's verdict was sound because it was based on the fact that the Sega games copied the “critical” components of his code. Accordingly, the jury's verdict is supported based on a “qualitative” comparison of the games, even if the jury was unable to determine the specific quantity of the code that was copied, Antonick argued.

“The Court does not dispute the proposition that infringement can result from the significance of the expression copied rather than the sheer quantity,” the court said. “However, this proposition does not substitute for sufficient evidence to allow the jury to place the protected expression--Antonick's source code for plays and formations--in the context of Apple II Madden as a whole,” the court said.

The court granted EA's motion for judgment as a matter of law on Antonick's breach of contract claim. In the alternative, the court said EA was entitled to a new trial on the issue of whether the Sega games were derivative works of the Apple II game.

EA was represented by Brian L. Ferrall of Keker & Van Nest LLP, San Francisco. Antonick was represented by Stuart McKinley Paynter of Paynter Law Firm PLLC, Washington, D.C.

 

To contact the reporter on this story: Tamlin Bason in Washington at tbason@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com


Text is available at http://www.bloomberglaw.com/public/document/Antonick_v_Electronic_Arts_Inc_Docket_No_311cv01543_ND_Cal_Mar_30.