PHASE TWO PRETRIAL ORDER

CHARLES R. BREYER, District Judge.

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 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,

Id. at 913-14.

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.

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.

II. 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.

IT IS SO ORDERED.