Robin Antonick v. Electronic Arts, Inc.

In 1986 Antonick entered into a contract with Electronic Arts, Inc. to work on the software program of John Madden Football, the contract included a right to royalties for derivative works. A derivate work was 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.”

However, Antonick never received any royalties and brought this suit in 2011 and even though the jury found that the materials were derivate works, the district court found as a judgment as a matter of law that Antonick did not have a valid copyright infringement case, to which the plaintiff appealed. Unfortunately for Antonick, the appeals court agreed with the district court for the following reasons.

Antonick had to prove that Electronic Arts, Inc. copied protected “elements” of the work either through a direct copying or by showing that the defendant had significant access to his work and produced a very similar product as a result of it.

Here, the ninth circuit provides a two-step test to determine whether the work is an infringement:

1. Extrinsic test: an objective comparison of specific expressive elements
2. Intrinsic test: subjective comparison that looks at whether the ordinary, reasonable audience would find the works substantially similar in the total concept and feel of the works

Both courts declined Antonick’s claim when looking at the intrinsic test because the claim revolved around the source code that Antonick produced; however, that same source code was never entered into evidence. While the jury found that the end products were substantially similar, the court held that because the products were the result of the missing source code sufficient evidence was not provided.

Antonick did provide expert testimony to help explain how the products were substantially similar even though the specific source code could not be identified; however, the court reaffirmed that a plaintiff cannot overcome their burden of proof in such a matter with expert testimony.

Ultimately, the less room for speculation on the part of the fact finder the better the likelihood of being successful on such a claim.

This article is provided for informational purposes only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.