In a 1901 law review article, "Historical and Practical Considerations Regarding Expert Testimony," 15 Harv. L. Rev. 40 (1901), written before he took the bench in 1909, Learned Hand wrote: "No one will deny that the law should in some way effectively use expert knowledge wherever it will aid in settling disputes. The question is as to how it can do so." One area where Second Circuit judge Hand later used experts was at the damages phase of the trial, as in Sheldon v. MGM, 106 F.2d 45 (2d Cir. 1939), aff'd 309 U.S. 390 (1940). Hand, however, took a very strong negative view toward experts at the substantial similarity stage, writing in Nichols v. Universal Pictures Corp., 45 F.2d 119, 123 (2d Cir. 1930):
"We cannot approve the length of the record, which was due chiefly to the use of expert witnesses. Argument is argument whether in the box or at the bar, and its proper place is the last. The testimony of an expert upon such issues, especially his cross-examination, greatly extends that trial and contributes nothing which cannot be better heard after the evidence is all submitted. It ought not to be allowed at all; and while its admission is not a ground for reversal, it cumbers the case and tends to confusion for the more the court is led into the intricacies of dramatic craftsmanship, the less likely it is to stand upon the firmer, if more naïve, ground of its considered impressions upon its own perusal. We hope that in this class of cases such evidence may in the future be entirely excluded, and the case confined to the actual issues; that is, whether the copyrighted work was original, and whether the defendant copied it, so far as the supposed infringement is identical."
Unfortunately, in one of the Second Circuit's worst copyright opinions, Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)( by Jerome Frank, with Hand joining and Charles Clark dissenting), experts got their snouts under the tent through the malicious striking similarity doctrine. Things have been downhill from there. While most courts state that experts can testify only at the copying stage and not at the substantial similarity stage (except in software cases), routinely experts breach the barrier. A friend who is a circuit judge after a long career as a district judge refers (privately) to such experts as paid liars, but beyond concerns with untruthfulness, there is the institutional problem of confusing juries with a battle of the experts. In the same 1901 article Hand spoke to this issue:
"When an expert is on the stand what are the methods resorted to? Quite the same as when it is a witness. He is first examined in chief by the side which calls him. Assuming he has no direct evidence of facts to give, he must be plied with hypothetical questions, at as great length and in as great detail as seems necessary.
…He is then handed over to the opposite side for cross-examination. There are two and only two possible efforts which the cross-examiner will make. First, he may seek to bring out other general propositions favorable to his contention; second, he may seek to shake the validity of those already testified to. Similarly when it comes to the turn of the opposite side to submit evidence it has the same two possible objects, to introduce evidence showing the invalidity of what the opposite experts have said, or to bring out other general truths favorable to them.
The trouble with all this is that it is setting the jury to decide, where doctor disagree. The whole object of the expert is to tell the jury, not facts, as we have seen, but general truths derived from his specialized experienced. But how can the jury judge between two statements each founded upon an experience confessedly foreign in kind to their own? It is just because they are incompetent for such a task that the expert is necessary at all.
… What hope have the jury, or some other layman, of a rational decision between two such conflicting statements each based on such experience?"
The answer is that juries have had no hope and too many trials have been a farce; when coupled with meritless striking similarity claims, we have suffered from 60 years of the mess wrought by Arnstein v. Porter, a result Judge Clark predicted in dissent. There is a very happy development, however: yesterday, the Eighth Circuit, in Rottlund Co. v. Pinnacle Corp., 2006 WL 1676883, ordered a new trial after ruling that the district judge abused his discretion in letting an expert testify about substantial similarity. Now that will get trial courts' attention and it is precisely the sort of remedy that is necessary to start setting things aright.
Aside from the bold step itself, two other things are noteworthy about the opinion and cause joy in my heart. First, the court of appeals (per Judge Wollman), pierced the particular language used by the expert which was couched (or coached) as testimony about copying and not substantial similarity. This is very important because it closes a semantic loophole created by Arnstein. Second, even as to copying, the Eighth Circuit precluded testimony where the expert had no facts upon which to base his opinion.
I never thought I would see such an opinion. Praise the Lord.
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2 comments:
While I agree that the Rottlund opinion is a breath of much-needed fresh air on the subject of expert witnesses on substantial similarity, there is one portion of the opinion that is troubling.
As we all know, a copyright owner can prove copying by direct evidence, or circumstantially by proving access plus substantial similarity. A defendant can, of course, prove that he created the work independently, which if accepted by the trier of fact is a defense to copying, however proven. Thus, in short, where a plaintiff proves copying by either direct or circumstantial evidence, proof of independent creation is just controverting evidence of "no copying." The jury then weighs this evidence, with the plaintiff having the burden of proof by a preponderence of the evidence. In practice, it often boils down to whether the jury believes the defendant's claim of independent creation: if it does, he wins, if not, he loses.
So far so good. The problem here is that the Rottlund opinion says that rather than access + substantial similarity being circumstantial evidence of copying, the middle part of the opinion speaks in terms of it creating a *presumption* of copying. While Rottlund is not the first court to say this, I think this is erroneous and the result of sloppiness.
Access + substantial similarity does not create a FRE301 "bursting bubble" presumption, it's that access + substantial similarity is considered sufficient circumstantial evidence to support a prima facie showing of infringement.
This distinction is not insignificant. Take, for example, the typical plagiarism case. Plaintiff almost never can show direct evidence of copying, but can show that the defendant had a copy of his work, that there are myriad extrinsic and intrinsic similarities, etc. Defendant then says "trust me, I did it myself." If access plus substantial similarity is considered circumstantial evidence of copying, then the plaintiff wins if the jury disbelieves the defendant. On the other hand, if access plus substantial similarity creates only a FRE301 "bursting bubble" presumption, then the slightest and must facially incredible evidence from the defendant causes the presumption to disappear . . . which mean that the *only* way for the plaintiff to get to the jury is if he has direct evidence of copying.
I can't believe that this is what the law intends. If so, it renders access + substantial similarity analysis nugatory, as a defendant can defeat it utterly by simply testifying "I didn't do it." (This is not merely academic -- I've seen defendants argue make this argument.)
Needless to say, caselaw abounds where copying was found on the basis of access plus substantial similarity, notwithstanding the defendant's claim of independent creation. I thus cannot believe that the court intended to impact the law in this fashion; nevertheless, I suspect that we'll see defendants argue that it did.
Comments?
LKB in Houston
Dear LBK:
I decided not to comment on that part of the opinion out of concern of making a too long blog even longer, but yes, I share your concern
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