Case3:11-cv-01543-CRB Document460 Filed07/02/13 Page1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`ROBIN ANTONICK,
`Plaintiff,
`
` v.
`ELECTRONIC ARTS INC.,
`Defendant.
` /
`
`No. CV 11-01543 CRB
`PHASE TWO PRETRIAL ORDER
`
`In preparation for Phase Two of the trial in this action, the Court makes the following
`rulings regarding Antonick’s remaining claims.
`I.
`Antonick’s Claim for Breach of Contract with Respect to Derivative Works
`The Court first briefly reviews the status of Antonick’s Derivative Works claim to
`explain how the trial of this claim will proceed. Antonick alleges that EA breached the 1986
`Contract by failing to pay him royalties on Derivative Works of the Madden game he
`developed. The 1986 Contract, in relevant part, defines “Derivative Work” 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.” 1986 Contract § 1.03. In Phase
`Two, the jury must therefore decide whether the subsequent versions of Madden are
`derivative works of Antonick’s version—that is, whether the subsequent versions copied
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`For the Northern District of California
`For the Northern District of California
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`United States District Court
`United States District Court
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`Case3:11-cv-01543-CRB Document460 Filed07/02/13 Page2 of 5
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`from Antonick’s version.1 Copying can be proven circumstantially by showing that (1) the
`defendant had access to the copyrighted work, and (2) the protected portions of the works are
`substantially similar. See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636-37 (9th Cir.
`2008).2
`In its Order granting in part and denying in part EA’s Third Motion for Summary
`Judgment (dkt. 355) (“Order”), the Court applied the extrinsic part of the Ninth Circuit’s test
`for substantial similarity by examining each of the alleged similarities between Antonick’s
`work and the challenged versions and then determining whether each element is protectable.
`See Order at 15-32. Having found that eight elements are unprotectable and two are
`protectable, id., the Court must now filter out the unprotectable elements to determine the
`scope of copyright protection Antonick’s version should be afforded: broad or thin. See
`Mattel, Inc. v. MGA Entm’t, 616 F.3d 904, 914-15 (9th Cir. 2010).3 As the Ninth Circuit has
`explained,
`If there’s a wide range of expression (for example, there are gazillions of ways to
`make an aliens-attack movie), then copyright protection is “broad” and a work will
`infringe if it's “substantially similar” to the copyrighted work. If there’s only a narrow
`range of expression (for example, there are only so many ways to paint a red bouncy
`ball on blank canvas), then copyright protection is “thin” and a work must be
`“virtually identical” to infringe.
`Id. at 913-14.
`
`1 “Under U.S. copyright law, ‘a work will be considered a derivative work only if it would be
`considered an infringing work if the material that it has derived from a preexisting work had been taken
`without the consent of a copyright proprietor of such preexisting work.’” 1 Melville B. Nimmer & David
`Nimmer, Nimmer on Copyright § 3.01 (2011); Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856
`F.2d 1341, 1343 (9th Cir.1988).
`
`2 Antonick continues to try to persuade the Court that “Derivative Work” means something
`other than its meaning within United States copyright law. See Joint Jury Instruct. (dkt. 400) at 26
`(“Infringement is not an issue relevant to Section 1.03(a) of Exhibit A to the 1986 Contract.
`Compensation triggers on a showing that the subsequent game was ‘based on’ the Work.”). The Court
`has already rejected Antonick’s argument that he is entitled to royalties any time his work was used,
`regardless of whether that work was copyrightable. See Order at 9-10; see also Allen v. Academic
`Games, 89 F.3d 614, 617 (9th Cir. 2007) (rejecting plaintiff’s assertion “that to constitute a derivative
`work, the infringing work need only incorporate in some form a portion of the copyrighted material.”).
`
`3 Filtering out the unprotectable elements during the extrinsic test is necessary because “the
`party claiming in infringement may place ‘no reliance upon any similarity in expression resulting from’
`unprotectable elements.” Apple Computer v. Microsoft Corp., 35 F.3d 1435, 1446 (9th Cir. 1994)
`(quoting Aliotti v. R. Dakin & Co., 831 F.2d 898, 901 (9th Cir. 1987)).
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`For the Northern District of California
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`United States District Court
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`Case3:11-cv-01543-CRB Document460 Filed07/02/13 Page3 of 5
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`Broad protection has been given to works such as fabric designs,4 fashion dolls,5 and
`decorative plates6, while thin protection has been given to works such as graphical user
`interfaces7 and animal sculptures.8 Due to the narrow range of possible expression for a
`football video game and the fact that only two of the ten similar elements are protectable, the
`Court concludes that Antonick’s work is entitled to only thin protection.9 Like a karate video
`game or a jellyfish sculpture, the game of football is not “susceptible of a wholly fanciful
`presentation.” Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 209 (9th Cir. 1988) (“[T]he
`visual depiction of karate matches is subject to the constraints inherent in the sport of karate
`itself.”). For the purposes of the intrinsic test, therefore, “the appropriate standard for illicit
`copying is virtual identity.”10 Apple Computer, 35 F.3d at 1439.
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`4 L.A. Printex Indus. v. Aeropostale, Inc., 676 F.3d 841, 851 (9th Cir. 2012).
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`5 Mattel, 616 F.3d at 916.
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`6 McCulloch v. Albert E. Price, Inc., 823 F.2d 316 (9th Cir. 1987).
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`7 Apple Computer, 35 F.3d at 1446.
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`8 Satava v. Lowry, 323 F.3d 805, 812 (9th Cir. 2003).
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`9 See also Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 765-66 (9th Cir. 2003) (The similarity
`of the two photographs at issue was “ inevitable, given the shared concept, or idea, of photographing
`the Skyy bottle. When we apply the limiting doctrines, subtracting the unoriginal elements, Ets-Hokin
`is left with only a “thin” copyright, which protects against only virtually identical copying.”); Apple
`Computer, 35 F.3d at 1447 (“Having correctly found that almost all the similarities spring either from
`the license or from basic ideas and their obvious expression, it correctly concluded that illicit copying
`could occur only if the works as a whole are virtually identical.”); Berkla v. Corel Corp., 66 F. Supp.
`2d 1129, 1142 (E.D. Cal. 1999) (“Weak copyrights such as Berkla has here, where the protectable
`expressions are few and the unprotectable similarities many, remain entitled to protection, but not
`pursuant to the traditional substantial similarity test. Only if the defendant has virtually identically
`copied the plaintiff's expressive work will infringement be found.”).
`
`10 Antonick contends that the Court already determined that the applicable standard is
`substantially similar rather than virtually identical. This is not so. The term “substantially similar” is
`admittedly confusing in the context of the extrinsic/intrinsic analysis. It refers to the second prong of
`the infringement standard, but also refers to the standard a jury applies during the intrinsic test if a court,
`as a result of the extrinsic test, finds that the work is entitled to broad copyright protection. In other
`words, if a court were to find that there is a wide range of possible expression, and the work is therefore
`entitled to broad copyright protection, then the jury would consider whether the copyrighted work and
`the challenged work are substantially similar when compared as a whole. On the other hand, if a court
`were to find that there is a narrow range of possible expression and the work is therefore entitled to thin
`copyright protection, then the jury must determine whether the two works are virtually identical when
`compared as a whole. Given the two standards under which a challenged work can meet the second
`prong of the infringement standard depending on whether the copyrighted work is granted broad or thin
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`For the Northern District of California
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`Case3:11-cv-01543-CRB Document460 Filed07/02/13 Page4 of 5
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` Accordingly, the jury in this case will be asked whether an ordinary reasonable
`observer would consider Antonick’s work and the later Madden versions virtually identical
`when viewed as a whole. Mattel, 616 F.3d at 914; see also Berkla, 66 F. Supp. 2d at 1142
`(“The intrinsic or subjective application looks at the reaction of a reasonable
`observer—would that observer believe that the works at issue are virtually identical when
`viewing them as a whole.”).
`The final issue for the Court to address at this time is whether the jury will hear
`evidence of the unprotectable elements of Antonick’s version. See EA MIL 1 (dkt. 372).
`The Court finds that it should, and therefore denies EA’s First Motion in Limine. Because
`the jurors must evaluate the works “as a whole,” it would be inappropriate to filter out the
`unprotectable elements and thus limit their ability to consider the games in their entirety. See
`Dream Games v. P.C. Onsite, 561 F.3d 983, 989 (9th Cir. 2009); Harper House v. Thomas
`Nelson, Inc., 889 F.2d 197, 207-08 (9th Cir. 1989). In accordance with the Ninth Circuit’s
`holding in Dream Games, 561 F.3d at 989, the Court’s instructions to the jury will identify
`which of the ten elements are unprotectable.
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`protection, the odd result is that a jury can find the work substantially similar if (a) it has broad
`protection and is substantially similar or (b) it has only thin protection and is virtually identical.
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`For the Northern District of California
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`Case3:11-cv-01543-CRB Document460 Filed07/02/13 Page5 of 5
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`II.
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`Antonick’s Other Breach of Contract Claims and Fraud Claims
`At the Phase Two Pretrial Conference on June 26, 2013, the Court granted EA’s Third
`Motion in Limine, which sought to exclude evidence of ancillary contract breaches. See
`generally EA MIL 3 (dkt. 374); 6/26/13 Hr’g Tr. at 47. In addition, upon consideration of
`the parties’ supplemental briefing regarding Antonick’s fraud claim and the entire record of
`the case, the Court now holds that Antonick has failed to state a claim for fraud. The Court
`will provide its reasoning for these rulings in a subsequent order.
`Accordingly, the sole claim that will proceed to trial is Antonick’s claim that EA
`breached the 1986 Contract by failing to pay him royalties on Derivative Works.
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`IT IS SO ORDERED.
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`Dated: July 2, 2013
`
`
`CHARLES R. BREYER
`UNITED STATES DISTRICT JUDGE
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`For the Northern District of California
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