Team Play, Inc. v. Boyer

Decision Date28 September 2005
Docket NumberNo. 03 C 7240.,03 C 7240.
Citation391 F.Supp.2d 695
CourtU.S. District Court — Northern District of Illinois
PartiesTEAM PLAY, INC., P & P Marketing, Inc., & Cosmodog, Ltd., Plaintiffs, v. Stephen W. BOYER D/B/A Skyboy Productions & Skyboy Productions, Inc., Defendants. Stephen W. Boyer, Counter-Plaintiff, v. Team Play, Inc., P & P Marketing, Inc., & Cosmodog, Ltd., Counter-Defendants.

Timothy C. Meece, Mark T. Banner, Jason Shull of Banner & Witcoff, Ltd., Chicago, IL, for Plaintiffs.

Sheri A. Pellegrini, Law Offices of Sheri Pellegrini, Naperville, IL, for Defendants.


BUCKLO, District Judge.

This action involves disputed intellectual property rights and royalties in connection with video games played both in arcades and on personal computers. Plaintiffs Team Play, Inc. ("Team Play"), P & P Marketing, Inc. ("P & P"), and Cosmodog, Ltd. ("CMD"), Illinois corporations (collectively, "plaintiffs"), are all engaged in one or more aspects of producing, marketing and selling video games. Plaintiffs sue Stephen W. Boyer d/b/a Skyboy Productions, a citizen and resident of California ("Boyer") for a declaratory judgment that plaintiffs'"Police Trainer 2" video game does not infringe any of Boyer's rights and that plaintiffs do not owe Boyer further royalties. Plaintiffs also seek to recover from Boyer their fees and costs associated with bringing this action and "at least $175,000 in duplicative royalty payments mistakenly paid to Boyer." Boyer counterclaims, asserting that plaintiffs have violated his copyright registrations for Police Trainer and Sharpshooter by selling Police Trainer 2, which is derived from his copyrighted video games; and that P & P and Team Play have breached a contract term requiring royalty payments on sequels and derivative games.

Before the court are plaintiffs' separate motions for summary judgment of noninfringement of the Sharpshooter and Police Trainer copyrights; and both sides' motions for summary judgment on contract issues. Also before the court are Boyer's motions to strike the declaration of Ralph Oman, one of plaintiffs' experts, and to strike the reply materials filed by plaintiffs in support of their summary judgment motions for declarations of noninfringement. I take up the summary judgment motions in the order in which they were filed.


P & P and TP are owned or controlled by Edward (Ed) Pellegrini, individually or with his brother Frank Pellegrini. Ed Pellegrini also owns or controls other companies in the video game field.

Boyer taught analog and digital electronics, kinetics and sound design from 1995 through 2001 at the School of the Art Institute of Chicago. Boyer worked as a producer of interactive music for MTV and other media companies. During the period 1989-93 he worked as a software engineer and lead architect and manager of programing staff for Exit Entertainment, the development team of plaintiff P & P. In 1995, Boyer formed Skyboy and employed staff to assist him in the business of creating and developing video games.

In December 2000, Boyer caused Skyboy to be dissolved and in connection with its liquidation took an assignment of all of Skyboy's intellectual property rights. Boyer alleges as follows: In mid 1995, Ed Pellegrini spoke to Boyer about having Skyboy develop a video game with a shooting theme. In late 1995, Boyer, as president of Skyboy, and Pellegrini as president of P & P, entered into an oral agreement under which Skyboy would author and develop intellectual property for the game which ultimately was titled "Police Trainer".1 Pursuant to the agreement, Skyboy was to be paid a sum for development work plus certain royalties. On or about April 18, 1996, Boyer sent Ed Pellegrini a letter memorializing the terms of the oral agreement under which they were operating. The letter stipulated that in addition to development fees and royalties on units sold, Skyboy was to be paid 33 percent of all revenues received by P & P from ancillary products including sequels and home games. P & P never objected to the terms of the April 18, 1996 letter. Plaintiffs subsequently made sales of the game Skyboy had developed, marketing the game under the name "Police Trainer". TP paid Skyboy/Boyer approximately $500,000 pursuant to the agreement but has failed to account for all royalties owed, or to acknowledge any liability for royalties in connection with Police Trainer 2, which Boyer claims is an ancillary product or sequel within the meaning of the agreement.

Boyer further alleges that beginning in about early 1997, the Skyboy design team began working on another target shooting game which eventually was called "Sharpshooter." Skyboy reached another oral agreement with P & P, pursuant to which Skyboy was to be paid an amount to defray development costs for Sharpshooter, plus royalties. Skyboy was never an author for hire and hence all original works of authorship created by Skyboy belonged exclusively to it. In 2000, Boyer caused Skyboy to be dissolved and, in 2001, as part of the corporate winding up process, took an assignment from Skyboy of all its intellectual property rights. He has since obtained certificates of registration from the Copyright Office for U.S. Copyrights on "Police Trainer Art Work", Sharpshooter, and Police Trainer Reference Graphics and Source Images Artwork.

Plaintiffs' version of the facts contradicts Boyer's in several material respects. Plaintiffs assert that Boyer and employees of Skyboy merely "contributed to the development of the source code and graphical images/artwork for Sharpshooter." (SS SMF ¶ 13) Plaintiffs deny Boyer's allegations that Boyer, Skyboy, and the members of Skyboy's design team did not have a "work-for-hire" agreement with plaintiffs, or were not employees of plaintiffs. According to plaintiffs, Fred Heyman, then an employee of a Pellegrini entity wrote some of the foundation-level source code for Sharpshooter. This is in turn disputed by Boyer, who alleges in his Declaration that Heyman was not an employee of any of the plaintiffs and provided only the low-level application programming interface necessary to interact with the hardware that Heyman had designed and built. (Boyer Dec. ¶ 40)


Works of art and other expressive materials may be subject to copyright protection for a period of time under the Copyright Act, Title 17 U.S.C. ("Act"), subject to certain exceptions. The Act expressly provides that ideas and concepts are not subject to its protection. 17 U.S.C. § 102(b). It is commonly said that the protection afforded goes only to expression and not to ideas. By judicial gloss, "scenes a faire" are unprotectable under the Act except in certain limited circumstances. The term "scenes a faire" refers to "incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic." Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 616 (7th Cir.1982) (quoting from Alexander v. Haley, 460 F.Supp. 40, 45 (S.D.N.Y.1978)). Similarly, expressive material which is so closely related to an idea or concept as to be indistinguishable from the idea or concept expressed will be given very limited protection, meaning that the copyright is protectable only against identical copying. Gentieu v. Tony Stone Images/Chicago, Inc., 255 F.Supp.2d 838, 850 (N.D.Ill.2003).

"To establish infringement a plaintiff must prove ownership of a valid copyright and `copying' by the defendant." Atari, 672 F.2d at 614. "Because direct evidence of copying is often unavailable, copying may be inferred where the defendant had access to the copyrighted work and the accused work is substantially similar to the copyrighted work." Id.

The fact that the United States Register of Copyrights has issued a certificate of registration for a work is only prima facie proof of copyright. It gives rise to a rebuttable presumption of validity, which the accused infringer may overcome by showing that the copyright is invalid. JCW Investments, Inc. v. Novelty, Inc., 289 F.Supp.2d 1023, 1031 (N.D.Ill.2003).


As a threshold matter, I first address Boyer's motion to strike the declaration of one of plaintiffs' experts, Ralph Oman. Mr. Oman opines that the Sharpshooter registration is invalid and void because it is only prima facie proof of copyright, and because the graphic art which Mr. Boyer points to as evidence of copying cannot be the subject of copyright protection. In his view, that art consists either of scenes-a-faire or "ideas" which, no matter how expressed, are not subject to protection under the Copyright Act. 17 U.S.C. § 117.

Boyer objects to the declaration on several grounds. He contends that: (1) the legal conclusions and arguments it sets forth are not helpful to the trier of fact in understanding evidence or determining any issue; (2) the opinions are wholly conclusory and not supported by facts admissible in evidence; and (3) Mr. Oman has not set forth in his declaration a factual basis sufficient for him to be accepted as an expert in such matters.

Boyer, citing Atari, supra, 672 F.2d at 614, bases his first argument on the premise that the test for "illicit copying" is based upon a substantial similarity test which looks to the response of the ordinary observer and thus bars the use of analytic dissection and expert testimony. But Atari itself recognizes the opposite principle.

This appeal requires us to address the related question of the scope of copyright protection to be afforded individual games such as PAC-MAN. To do so, we must first attempt to distill the protectable forms of expression in PAC-MAN from the game itself.

Atari, 672 F.2d at 615.

The district courts may and do rely on expert testimony to distinguish between protected and...

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