FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ROBIN ANTONICK, an Illinois 

Citizen,

Plaintiff-Appellant,

v.

ELECTRONIC ARTS, INC., a 

California corporation,

Defendant-Appellee.

No. 14-15298

D.C. No.

3:11-cv-01543-CRB

OPINION

Appeal from the United States District Court

for the Northern District of California

Charles R. Breyer, Senior District Judge, Presiding

Argued and Submitted March 16, 2016

San Francisco, California

Filed November 22, 2016

Before: Andrew J. Kleinfeld, Johnnie B. Rawlinson,

and Andrew D. Hurwitz, Circuit Judges.

Opinion by Judge Hurwitz
2 ANTONICK V. ELECTRONIC ARTS

SUMMARY*

Copyright

The panel affirmed the district court’s judgment as a 

matter of law in favor of Electronic Arts, Inc., in a diversity 

action seeking unpaid royalties pursuant to a contract, 

arising from alleged copyright infringement.

Plaintiff 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.

Concerning plaintiff’s Sega claims, the panel held that 

the plaintiff did not provide sufficient evidence of copyright 

infringement because neither the source code used for Apple 

II Madden nor Sega Madden was in evidence. The panel 

also rejected plaintiff’s argument that Electronic Arts’s postverdict Fed. R. Civ. P. 50(b) motion for judgment as a matter 

of law regarding the intrinsic test for copyright infringement 

should not have been considered.

Concerning plaintiff’s Super Nintendo claims, the panel 

held that the district court did not err in dismissing plaintiff’s 

derivative work claims because the Apple II and Super 

Nintendo processors were not in the same microprocessor 

 

* This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
ANTONICK V. ELECTRONIC ARTS 3

family, as defined by the parties’ contract. The panel also 

affirmed the district court’s conclusion that the jury could 

not have determined plaintiff’s damages from the alleged 

breach of contract to a reasonable certainty. The panel 

further held that, even if the district court erred, there was no 

harm, because plaintiff’s failure to introduce any source 

code precluded a finding that Super Nintendo Madden was a 

derivative work.

Finally, the panel held that plaintiff offered no evidence 

of purported damages arising from plaintiff’s claim that 

Electronic Arts used development aids to create nonderivative works without seeking a negotiated license.

COUNSEL

David Nimmer (argued), Irell & Manella LLP, Los Angeles, 

California; Stuart McKinley Paynter (argued), Jennifer L. 

Murray, and Sara Willingham, The Paynter Law Firm 

PLLC, Washington, D.C.; Robert B. Carey and Leonard W. 

Aragon, Hagens Berman Sobol Shapiro LLP, Phoenix, 

Arizona; Steve W. Berman, Hagens Berman Sobol Shapiro 

LLP, Seattle, Washington; Walter H. Sargent, Walter H. 

Sargent P.C., Colorado Springs, Colorado; Peter S. Menell, 

Berkley, California; for Plaintiff-Appellant.

Eric H. MacMichael (argued), Tia A. Sherringham, R. Adam 

Lauridsen, Steven A. Hirsch, and Susan J. Harriman, Keker 

& Van Nest LLP, San Francisco, California, for DefendantAppellee.
4 ANTONICK V. ELECTRONIC ARTS

OPINION

HURWITZ, Circuit Judge:

In this case, the plaintiff claimed copyright infringement. 

But the contents of the copyrighted work and the allegedly 

infringing works were never introduced into evidence. The 

district court held that the claim failed as a matter of law. 

We agree, and affirm.

I. Background

Robin Antonick developed the computer code for the 

original John Madden Football game for the Apple II 

computer (“Apple II Madden”). Electronic Arts, Inc. (“EA”) 

released Apple II Madden in 1988. Apple II Madden, the 

first football video game with 11 players on each side, was 

an instant hit, the best seller of any sports video game of its 

time. Antonick subsequently programmed Madden games 

for the Commodore 64 and IBM-compatible computers 

(“IBM Madden”).

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.

Each year from 1992 to 1996, EA released Madden 

games for Sega Genesis and Super Nintendo (“Super 

Nintendo Madden”). The Madden games have remained 

incredibly lucrative, selling millions of copies and even 
ANTONICK V. ELECTRONIC ARTS 5

attracting a loyal fan base among professional football 

players.

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 this diversity 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, 
6 ANTONICK V. ELECTRONIC ARTS

including variables that misspelled “scrimmage.”1 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.2

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 (“JMOL”) 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.

II. Discussion

A. The Sega Claims

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.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636 

(9th Cir. 2008) (citations omitted). “Absent direct evidence 

of copying, proof of infringement involves fact-based 

 

1 Barr was only able to examine a partial draft version of the Apple 

II Madden source code, because the complete final version could not be 

found. The draft version he examined was not introduced into evidence.

2 EA showed the jury a video of Sega Madden, but the jury did not 

view a video of Apple II Madden.
ANTONICK V. ELECTRONIC ARTS 7

showings that the defendant had ‘access’ to the plaintiff’s 

work and that the two works are ‘substantially similar.’” 

Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th

Cir. 2000) (citation omitted).

“The Ninth Circuit employs a two-part test for 

determining whether one work is substantially similar to 

another.” Benay v. Warner Bros. Entm’t, Inc., 607 F.3d 620, 

624 (9th Cir. 2010) (citation omitted).

[A plaintiff] must prove both substantial 

similarity under the “extrinsic test” and 

substantial similarity under the “intrinsic 

test.” The “extrinsic test” is an objective 

comparison of specific expressive elements. 

The “intrinsic test” is a subjective 

comparison that focuses on whether the 

ordinary, reasonable audience would find the 

works substantially similar in the total

concept and feel of the works.

Id. (citations and question marks omitted). 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. See Seiler v. Lucasfilm, Ltd., 808 F.2d 

1316, 1319 (9th Cir. 1987) (“There can be no proof of 

‘substantial similarity’ and thus of copyright infringement 

unless Seiler’s works are juxtaposed with Lucas’ and their 
8 ANTONICK V. ELECTRONIC ARTS

contents compared.”) (applying the best evidence rule in a 

copyright action); id. (“[P]roof of the infringement claim 

consists of the works alleged to be infringed.”); accord 

Airframe Sys., Inc. v. L-3 Commc’ns Corp., 658 F.3d 100, 

107 (1st Cir. 2011) (“Having presented no evidence 

sufficient to prove the content of its registered source code 

versions, Airframe cannot show that any of its registered 

works is substantially similar to the allegedly infringing M3 

program.”); Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 

146 (5th Cir. 2004) (per curiam) (“Without providing its own 

source code for comparison, GUS did not satisfy the 

requirement that the infringed and infringing work be 

compared side-by-side.”). And, absent evidence of the 

copyrighted work and the allegedly infringing works, the 

record is insufficient to allow appellate review of the jury’s 

verdict. See, e.g., Olson v. Nat’l Broad. Co., 855 F.2d 1446, 

1448, 1451 (9th Cir. 1988) (granting JMOL to copyright 

defendant because no reasonable jury could have found 

substantial similarity); cf. Shaw v. Lindheim, 919 F.2d 1353, 

1355 (9th Cir. 1990) (“We have frequently affirmed 

summary judgment in favor of copyright defendants on the 

issue of substantial similarity.”).

Antonick argues there was no need to introduce the 

source code (or even the games at issue), because Park Place 

had access to the Apple II Madden code and a motive to copy 

it, and his expert and others testified to the similarity of the 

works. These arguments fail for three reasons.

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.” 
ANTONICK V. ELECTRONIC ARTS 9

Jada Toys, 518 F.3d at 637.3 Access alone cannot establish 

copyright infringement. Shaw, 919 F.2d at 1361.

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.” Brown Bag Software v. Symantec Corp., 960 F.2d 

1465, 1475 (9th Cir. 1992) (quoting Sid & Marty Krofft 

Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 

1164 (9th Cir. 1977)).4 Barr’s testimony may have been 

 

3 If the range of possible expression is narrow, the copyrighted work 

is entitled to thin protection, and a plaintiff must show virtual identity 

between the copyrighted work and the allegedly infringing work. See 

Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 913–14 (9th Cir. 2010). 

If the range of possible expression is wide, the work is entitled to broad 

protection and the plaintiff must show only substantial similarity. Id.

The district court held that “[d]ue 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,” Antonick’s work was entitled only to 

thin protection, requiring him to show virtual identity of the works as a 

whole. Antonick disputes that conclusion, arguing that he needed to 

show only substantial similarity. We need not resolve that dispute, 

because we conclude that Antonick, having presented insufficient 

evidence of the works as a whole, loses under either standard.

4 Antonick’s contrary cases are from other circuits; of the two Ninth 

Circuit cases he cites, one is a memorandum disposition holding expert 

testimony admissible in a case in which the relevant works themselves 

were in evidence, Lucky Break Wishbone Corp. v. Sears Roebuck & Co., 

373 F. App’x 752, 755–56 (9th Cir. 2010), and the other concerned a 

special master’s report, not expert testimony, Johnson Controls, Inc. v. 

Phoenix Control Sys., Inc., 886 F.2d 1173, 1176 (9th Cir. 1989).
10 ANTONICK V. ELECTRONIC ARTS

enough to establish substantial similarity under the extrinsic 

test, but it cannot satisfy Antonick’s burden of production 

under the intrinsic test. Id.

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.

Antonick argues that copying was shown by testimony 

of Michael Kawahara, an Apple II Madden assistant 

producer. When asked whether he recognized any of the 

plays in Sega Madden from Apple II Madden, Kawahara 

answered affirmatively, stating that “[it] was – well, since 

the interface was – well, it was the same as we used in the 

Apple II. It was very easy to look at all of the plays in the 

Genesis version and they looked identical . . . to the original 

Apple II version.” This comment, however, does not 

establish that the source code for the two games were 

substantially similar. Kawahara had no programming 

responsibilities for Apple II Madden; did not understand the 

Apple II Madden code; did not see the Sega Madden code; 

and admitted that he had no knowledge about differences in 

the games’ codes.

Antonick also cites a statement by Richard Hilleman, an 

EA representative, that it was “possible” he had told an 

 

Antonick is not alone in contending that experts should be allowed 

to help juries assess the holistic similarity of technical works such as 

computer programs. See Brown Bag, 960 F.2d at 1478 (Sneed, J., 

concurring); Comput. Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 713

(2d Cir. 1992). But, given our precedents, that argument must be 

addressed to an en banc court.
ANTONICK V. ELECTRONIC ARTS 11

interviewer that “the Sega game took the system’s approach 

from Mr. Antonick’s game and just simply put a different 

aesthetic on top of it.” But, an “approach” is an idea that 

cannot be copyrighted—only its expression in code is 

protectable—and Sega Madden could have used Apple II 

Madden’s “approach” to football video games without 

violating the copyright laws. See Bikram’s Yoga Coll. of 

India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032, 1037–38 

(9th Cir. 2015) (“[R]ecognizing this vital distinction 

between ideas and expression, courts have routinely held 

that the copyright for a work describing how to perform a 

process does not extend to the process itself.”).

Finally, Antonick argues that EA’s post-verdict Rule 

50(b) motion for JMOL regarding the intrinsic test should 

not have been considered because the pre-verdict Rule 50(a) 

motion argued only that the evidence was insufficient to 

show substantial similarity between the two elements of the 

code that the district court had ruled protectable, rather than 

discussing similarity of the works as a whole. See EEOC v. 

Go Daddy Software, Inc., 581 F.3d 951, 961 (9th Cir. 2009) 

(“Because it is a renewed motion, a proper post-verdict Rule 

50(b) motion is limited to the grounds asserted in the predeliberation Rule 50(a) motion.”). But, both motions argued 

that the failure to place the source code in evidence was fatal 

to Antonick’s claim that EA had copied his work. That 

preserved the argument. Id. (“Rule 50(b) ‘may be satisfied 

by an ambiguous or inartfully made motion’ under Rule

50(a).”) (quoting Reeves v. Teuscher, 881 F.2d 1495, 1498 

(9th Cir. 1989)).

B. The Super Nintendo Claims

Antonick sought royalties for the Super Nintendo 

Madden games under Amendment 1 to his contract, which 
12 ANTONICK V. ELECTRONIC ARTS

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.”

Antonick’s expert, Garry Kitchen, testified that the 

Apple II used the 6502 processor, which had an 8-bit data 

word size and 56 instructions of up to 3 bytes in length. The 

Super Nintendo used the more advanced 5A22 processor, 

which in its native mode used a 16-bit data word size and at 

least 92 instructions of up to 4 bytes in length; but which 

could also act as a 6502 processor for purposes of backwards 

compatibility. Kitchen testified that this backwards 

compatibility meant that the microprocessors were in the 

same “family,” as the industry uses the term. He 

acknowledged that Super Nintendo Madden was designed to 

use that system’s advanced capabilities, utilizing a larger 

instruction set, longer data word sizes, and longer 

instructions than Apple II Madden.

After Kitchen’s testimony, 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 

argues 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. Antonick’s factual 

premise may well be correct. But we deal here 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 
ANTONICK V. ELECTRONIC ARTS 13

size.” The Apple II and Super Nintendo processors have 

different instruction sizes and data word sizes.5 The district 

court therefore did not err in dismissing the Super Nintendo 

derivative work claims.

Antonick argues in the alternative that EA breached the 

contract by failing to give him the opportunity to develop the 

Super Nintendo Madden game. The contract provided that, 

if Antonick developed any Derivative Works for new 

microprocessor families, he would be entitled “to written 

notice and the opportunity to develop additional Derivative 

Works for the New Microprocessor Family.” Antonick 

developed a Madden game for the Apple II GS, which he 

argues, and EA does not appear to deny, is in the same 

microprocessor family as the Super Nintendo. As damages, 

he seeks royalties based on the actual Super Nintendo game 

sales.

The district court dismissed this claim because a factfinder would have to speculate on whether Antonick could 

have developed such a work, how well an Antonickdeveloped 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. The district court 

was correct; the jury could not have determined Antonick’s 

damages from the alleged breach to a “reasonable certainty.” 

Sargon Enters., Inc. v. Univ. of S. Cal., 288 P.3d 1237, 1254 

(Cal. 2012). Moreover, even if the district court erred, there 

was no harm, because Antonick’s failure to introduce any 

 

5 Arguably, the chips “utilize the same instruction set” because the 

6502 uses a subset of the 5A22’s instructions.
14 ANTONICK V. ELECTRONIC ARTS

source code precluded a finding that Super Nintendo 

Madden was a Derivative Work.

C. The Development Aids

The contract also gave EA a license to create derivative 

works using certain tools designed by Antonick 

(“Development Aids”), 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 

alleges 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 district court 

correctly kept this unsubstantiated claim from the jury. See 

Amelco Elec. v. City of Thousand Oaks, 38 P.3d 1120, 1130, 

1132 (Cal. 2002).

CONCLUSION

The judgment of the district court is AFFIRMED.