When it is necessary to present an evidence of your claims

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.

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.

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 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, including variables that misspelled “scrimmage.” 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.

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 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.

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.”

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.

Antonick sought royalties for the Super Nintendo Madden games under Amendment 1 to his contract, which 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.”

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 argued 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.

But the court dealt 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 size.” The Apple II and Super Nintendo processors have different instruction sizes and data word sizes. The district court therefore did not err in dismissing the Super Nintendo derivative work claims.

The contract also gave EA a license to create derivative works using certain tools designed by Antonic, 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 alleged 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 judgment of the district court has been affirmed.