Supreme Court Asked to Consider Whether Expert Evidence Can Prove Similarity of Works in Copyright Infringement Claim

Written on Wednesday, September 13th, 2017 by T.C. Kelly
Filed under: ExpertWitness

Legal claims alleging copyright infringement of computer software code may be difficult for ordinary jurors to decide, simply because ordinary jurors lack the specialized knowledge needed to understand and compare the software code used by two competing programs. The task is even more difficult when two programs are written in different assembly code languages.

Witnesses who have the technical ability to understand software code might be able to help jurors make that comparison by testifying as experts at trial. In the Ninth Circuit, however, a court ruling disallows expert testimony about the ways in which one copyrighted work is similar to another copyrighted work.

Lawyers representing Robin Antonick in his claim against Electronic Arts are asking the Supreme Court to review the Ninth Circuit’s decision. They argue that the decision is at odds with rulings from other circuits and is particularly important since so much of the nation’s technology industry is centered in California, where copyright disputes must follow Ninth Circuit precedent.

Antonick’s Claim

Robin Antonick created the foundational software for Electronic Arts’ popular John Madden Football. The first version of the game was released for the Apple II in 1988. Antonick also developed the source code for versions that could be played on Commodore 64 and IBM-compatible machines.

Electronic Arts hired other software developers to create the source code for versions of John Madden Football that could be played on Sega Genesis and Nintendo game machines. While Electronic Arts agreed that Antonick was entitled to copyright royalties on the versions of the game that Antonick created, it disputed Antonick’s claim that the Sega versions were “derivative works” that also entitled him to royalties. According to Electronic Arts, the Sega versions were developed independently and were not derived from Antonick’s original work.

After Antonick learned that the developers of the Sega games were given access to his source code for the Apple II game, he sued for unpaid royalties on sales of the Sega versions of John Madden Football. The district court found that two game elements were copyrightable: plays and formations, and the width of the field. The court told the jury that if the Sega versions were substantially similar to the original Apple II version concerning either of those elements, it should then decide whether Antonick proved that they were virtually identical.

Expert Evidence

Antonick called Michael Barr as an expert witness. Barr explained that the computer code that Antonick created was written for a different processor, using a different assembly language, than the computer code written for the Sega Genesis games. Barr explained why the source codes, which look substantially different to the untrained eye, effectively produce the same plays.

Barr also explained other “uncanny parallels” in the programs, including “selection and expression of plays and formations, nonstandard and disproportionate field width, names of plays and variables, and misspellings that could not have occurred absent copying.”

The jury found that Antonick proved substantial similarities between the expression of source code for plays and formations. The jury also found that each of the seven Sega games at issue were virtually identical to Antonick’s version.

The district court, however, granted Electronic Arts’ motion for a judgment notwithstanding the verdict. That decision deprived Antonick of the jury’s award of $11 million in damages.

The district court agreed with the jury that the Sega game versions were substantially similar to the Apple II version, but concluded that the jury should not have heard expert testimony to establish that the versions were virtually identical. The court also held that since the source codes were not in evidence, the jury had no basis (other than the expert’s testimony) for concluding that they were virtually identical.

Relying on Ninth Circuit precedent, the court held that a comparison of the original work and the allegedly copied work must be established by an intrinsic test, not by extrinsic evidence. The intrinsic test is based on an ordinary person’s subjective impressions of whether two works are the same and cannot be guided by other evidence, including expert evidence.

A panel of the Ninth Circuit affirmed the district court. The panel agreed that circuit precedent precludes reliance on expert testimony to establish that two copyrighted works are virtually identical. The full court declined to review the panel’s decision.

Antonick’s Petition

Antonick petitioned the Supreme Court to reverse the Ninth Circuit’s decision. Antonick notes that the Ninth Circuit’s rule originated in a copyright dispute concerning the likenesses of characters in a children’s television show (H.R. Pufnstuf) that were allegedly copied when McDonald’s created its McDonaldland characters. According to Antonick, lay persons can “readily assess the similarities between costumed characters such as Wilhelmina W. Witchiepoo and Mayor McCheese,” but are not equipped to assess the similarities between two computer codes written in different assembly languages.

Antonick argues that the Ninth Circuit’s rule would prohibit experts from testifying in infringement cases that involve a work that is copied from English into another language. Antonick asks how a lay jury should be expected to compare a Harry Potter novel in English to a novel written in Japanese without having an expert translator explain the similarities between the Japanese and English texts. In that regard, Antonick likens his expert witness to a “software code translator.”

Antonick also points out that other federal circuits have decided infringement cases by shifting the perspective from that of an “ordinary observer” to that of the “intended audience.” When the question is whether software has been copied, the intended audience of software code consists of software developers. Those courts allow expert witnesses to assist lay juries in understanding the perspective of the intended audience.

Electronic Arts’ response to the petition is due in October. The Supreme Court will probably decide before the end of the year whether it will review the Ninth Circuit’s decision. If it does, the value of expert opinions in copyright cases will be a key issue.

About T.C. Kelly

Prior to his retirement, T.C. Kelly handled litigation and appeals in state and federal courts across the Midwest. He focused his practice on criminal defense, personal injury, and employment law. He now writes about legal issues for a variety of publications.

About T.C. Kelly

Prior to his retirement, T.C. Kelly handled litigation and appeals in state and federal courts across the Midwest. He focused his practice on criminal defense, personal injury, and employment law. He now writes about legal issues for a variety of publications.