Applying The "Helpfulness" Expert Witness Requirement For Complex Cases

In copyright infringement case, defense expert opinion on whether defendant copied plaintiff’s copyrighted architectural design was properly excluded as not helpful to the jury; while the expert presented a technical analysis of the issue of copying, this testimony was not relevant to whether an ordinary, reasonable person would consider the plaintiff’s and defendant’s designs sufficiently similar, allowing an inference of copying, which was the matter to be decided by the jury, in Rottlund Co. v. Pinnacle Corp., 452 F.3d 726 (8th Cir. June 20, 2006) (Nos. 05-1296, 05-1501, 05-1398)

Plaintiff Rottlund claimed that defendant Pinnacle infringed plaintiff’s copyright in its architectural work, townhome technical drawings. Prior to trial, the court granted partial summary judgment to the plaintiff, finding that it owned a valid copyright, that the defendant had access to those technical drawings, and that the ideas in defendant's technical drawings were substantially similar to the plaintiff's technical drawings. Having satisfied the elements of the extrinsic test of copying, the court left for determination by the jury the intrinsic test of copying (requiring the jury assess the response of the ordinary, reasonable person to the forms of expression in the allegedly infringed and infringing works. Rottlund, 452 F.3d at 731.

Ultimately, the jury decided for the defendant and the plaintiff appealed contending that the court erred in excluding testimony from its expert. The excluded evidence included testimony by the defendant’s expert, who used demonstrative exhibits to distinguish the difference in layout between the defendants' plans from the plaintiff's plans. The expert opined that the differences he identified would have had an impact on the life of the occupants of houses of plaintiff's design from those living in a building incorporating the defendant's design. each house built under the plans and concluded that based on this, the defendant did not copy the plaintiff.

The circuit concluded that this expert evidence was not helpful to aid the jury in its assessment of the questions it was charged with resolving. According to the circuit:

... the district court permitted [defense expert witness] Scherer to testify that, in his expert opinion, there was no direct evidence of copying.

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[Defense expert witness] Scherer then testified regarding the differences of the key elements of the plans. He described in detail the differences between the plans and how those differences would affect the people who lived in each unit.

* * *


Scherer discussed the differences between the location of the stairs, the width of the passageways, and the design of the breakfast area, the dining area, the living room, and the loft. Scherer testified that the differences between the gabled entries, “illustrate[d] to [him] that the columns supporting the gables are not copies of each other.” In response to Rottlund's objection and request that the answer be stricken, the district court stated that although the issue of element comparison was not before the jury, there was a dispute over what constituted an “element.” The court instructed the jury that it would be charged with the question of whether there is substantial similarity between the designs and that a “breakdown by elements is not appropriate in that kind of determination.” The district court permitted Scherer to continue testifying, but it reminded the jury that “to the extent that there is an analysis of elements to show why there has not been copying[, that analysis] is inappropriate.”
Rottlund, 452 F.3d at 730-31.

As the circuit found that district court abused its discretion in admitting the expert's testimony, it reversed and remanded for a new infringement trial. A foundation for the circuit's determination is that in the case the circuit found that the trial court had already applied the extrinsic test for copying in the summary judgment motion (ruling as matter of law that there was substantial similarity of ideas between the plaintiff’s and defendant’s works). This left the application of the intrinsic test for determination by the jury. This test involved considering whether there was any substantial similarity of expression. Under this test, the jury would make this assessment applying an “ordinary, reasonable person” standard. The expert's testimony did not add to the jury's consideration of this issue. The expert’s testimony was based on “his experience, the documents he reviewed and the tours of the townhomes he attended.” The expert’s testimony did nothing to aid the jury in determining whether an ordinary, reasonable person would consider the plaintiff’s and defendant’s designs sufficiently similar. Rottlund, 452 F.3d at 732. This was an issue the jury was entirely capable of answering without the benefit of expert opinion. Even if admissible under FRE 704 as an opinion on the ultimate issue before the jury, the expert’s testimony should have been excluded since it “added nothing helpful to the jury's consideration of these issues.” Rottlund, 452 F.3d at 732.

In Rottlund the circuit found the expert's testimony not helpful because it concerned an issue taken from the jury by the court's denial of summary judgment. According to some circuits, the test for copyright infringement uses a two-pronged test and that expert testimony is generally pertinent to only one of the tests. In general the circuits vary on whether there should be expert testimony on whether a copyrighted work's protected expression is infringed as a factual matter, because it resolved employing “an intrinsic test, [where] analytic dissection and expert testimony are not appropriate.” Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir. 1977). This approach has a long history, as reflected by an explanation provided by the Second Circuit in 1946, that an intrinsic “test is the response of the ordinary lay hearer; accordingly, on that issue … expert testimony [is] irrelevant.” Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Other circuits have explicitly used similar standards, for example Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 614 (7th Cir. 1982) (test of substantial similarity “does not involve 'analytic dissection and expert testimony”); Hartman v. Hallmark Cards, Inc., 833 F.2d 117 (8th Cir. 1987) (a showing of similarity of ideas does not necessarily require expert opinion on the industry's custom because substantial similarity of expression is measured by the response of ordinary, reasonable person).

Not all circuits adhere to this assessment of whether expert testimony is relevant in testing for infringement. The approach reflected in Rottlund which can limit expert testimony has been challenged in other circuits and the challenging party has prevailed. These courts do not assume that the ordinary reasonable observer would know what he or she is observing, particularly where the lay person is assessing similarities between musical compositions or computer games. If the rational observer is likely ignorant of the subject matter, the form and the genre of the allegedly infringed and infringing works, some circuits do not find expert testimony precluded. At least theoretically, the expert opinion testimony may be of assistance. See, e.g., Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003) (as audience for the allegedly infringed work had special expertise that could impact their decision to use it and a lay observer would not be aware of these factors; accordingly the test of copying or similarity could appropriately involve the perspective of the intended audience, in which expert testimony might be necessary to educate the jury of the user’s perspective); Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222, 1233 (3d Cir. 1986) (applying “a single substantial similarity inquiry in computer program infringement case, so that both "lay and expert testimony would be admissible”).

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