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Electronic Arts Inc. faces trial next month in a case brought by a former college football player who claims its employees copied his source code to develop the company’s successful Madden NFL football video games.

Robin Antonick, who developed the first version of the game during the late 1980s for the Commodore 64, MS DOS and Apple II, sued Electronic Arts on March 30, 2011, alleging the company breached its 1986 contract with him by using his intellectual property without his permission. Furthermore, the suit alleges, Electronic Arts executives fraudulently promised Antonick that his intellectual property had not been used on several of its games developed after 1990.

U.S. District Judge Charles Breyer ruled that Antonick’s fraud and breach of contract claims should go to trial. He also found that Antonick could claim "substantial similarity"as to two elements of the games.

The April 25 ruling paves the way for the first phase of a trial, scheduled for June 17, to determine liability and damages associated with games made before 1996, according to Rob Carey, managing partner of Hagens Berman Sobol Shapiro’s Phoenix office, who represents Antonick. A second phase will assess damages as to more recent games. His client seeks at least $17 million in unpaid royalties, plus undetermined profits from the later games.

"It’s really a misuse of his IP without his permission, and what should he get for that?" he said.

Susan Harriman, a partner at Keker & Van Nest in San Francisco who represents Redwood City, Calif.’s Electronic Arts, did not return a call for comment.

Antonick, who lives in Chicago, was most recently chief Web officer and chief online marketing officer for The Christian Science Monitor. According to the suit, Electronic Arts sold more than 85 million copies of Madden NFL games worth more than $4 billion in 2010.

The 1986 contract required Electronic Arts to pay Antonick royalties on versions of his Madden NFL game and any derivative works.

"For decades, Electronic Arts has avoided paying these royalties by affirmatively and fraudulently misrepresenting to Antonick the derivation of the current generation of Madden football games," the suit says. "As a result of Electronic Arts’ fraudulent behavior, Antonick has been unlawfully deprived of tens of millions of dollars in royalty payments owed under the 1986 Contract and has been deprived of the right to collect even more royalties going forward."

The suit also claims that Electronic Arts breached the 1986 contract’s confidentiality provisions. Under industry standards, development of new versions of previously licensed software should take place in a "clean room" environment, or one in which the designers, developers and programmers have no access to prior intellectual property.

But in 1990, Electronic Arts hired Park Place Productions to make a version of Madden NFL for the Sega Genesis console. An Electronic Arts executive told Antonick that the new version would be more of an "arcade" game that didn’t depend on his intellectual property. The following year, Antonick, relying on the promises of Electronic Arts executives that the company’s latest Madden NFL game did not use his intellectual property, signed an amendment that terminated his contract due to "legal issues" with Nintendo.

Those statements, Antonick now claims, were false. "Had Antonick known that Electronic Arts was, in fact, stealing his technology, Antonick would have taken immediate steps to protect his contractual and intellectual property rights," he wrote. "Antonick, however, had no reason to believe that Electronic Arts’ statements were false or that it had misappropriated his intellectual property or breached its contractual obligations."

Antonick received his last royalty payment in 1992.

Antonick claims he believed he wasn’t entitled to royalties until Electronic Arts announced the latest version of the game, Madden NFL 25 Playbook, scheduled for release on August 27 for Xbox 360 and PlayStation 3 at a price of $59.99. The suit says that Electronic Arts founder Trip Hawkins, in promoting the game during a 2009 interview on CNBC, said that the current generation of Madden NFL software was traced to the original 1988 version.

In addition to royalties, Antonick claims Electronic Arts owes him profits it has earned as a result of its fraud.The suit also seeks damages for "derivative works," such as Electronic Arts’ hockey games, NCAA college football games and other Madden games, Carey said.

The summary judgment ruling was the third by Breyer in the case. On July 20, he denied Electronic Arts’ motion for summary judgment based on statute of limitations ground. On January 20, he denied a second summary judgment motion claiming that Antonick was contractually barred under a 1987 amendment from receiving royalties for games that worked on anything other than the Apple II.

In the third summary judgment motion, filed on January 29, Electronic Arts claimed that Antonick had presented "not a shred of percipient witness testimony" to back up its claims that it copied any of his code or that the Sega Genesis game had not been independently developed. Furthermore, Electronic Arts sought to discredit Antonick’s expert regarding whether certain elements of the subsequent games bore similarities to his original game.

"The issue is: Is there evidence it was essentially a translation from the first language to the language in the Sega genesis game?" Carey said. "What elements of the second code could you trace back to the first game?"

In his order, Breyer found that two of those elements—the width of the field and the plays and formations in the games—were protectable and that a jury should decide whether they were similar to aspects in the later games. He also refused to dismiss the fraud and contract claims.

"The Court has serious concerns about the fraud claim, but finds that it will be in a better position to rule on that claim once the evidence has been presented at trial," he wrote.

Electronic Arts is fending off separate claims that it stole the names and likenesses of various NFL and college football stars in its games, including Madden NFL. Carey, at Hagens Berman, also represents plaintiffs in that case, which is before the U.S. Court of Appeals for the Ninth Circuit.

Electronic Arts last year settled claims by rival Activision Blizzard Inc. that it had hired away the designers of its Call of Duty series. The terms of the settlement were undisclosed.
 

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