In most civil trials, such as personal injury claims, expert testimony is an invaluable tool used by both sides to help explain complex technical concepts to lay jurors. You would think expert testimony would be especially welcome in cases involving software copyrights, where jurors may be asked to examine and compare source code written in highly specialized programming languages. But at least one federal appeals court has maintained a ban on such testimony for nearly 40 years–and the U.S. Supreme Court has been asked to put an end to this practice.

Jury Rules EA Illegally Reused Game Developer’s Original Code

Last month, a computer programmer named Robin Antonick petitioned the Supreme Court to review and overturn a November 2016 decision by the U.S. Ninth Circuit Court of Appeals in San Francisco. Antonick was one of the original developers of John Madden Football, which was first published by Electronic Arts (EA) in 1988 for the Apple II. Antonick retained the copyright, and his contract with EA stated that he would receive royalties for any “derivative work” based on his code.

The Apple II version of John Madden Football was later ported to other platforms. At issue here are the versions developed for the Sega Genesis and Super Nintendo game consoles during the 1990s. At the time, EA told Antonick these versions were “developed independently” and did not reuse any of his original code. Thus, they were not derivative works subject to his copyright. It was not until 2009, Antonick claimed, that he learned the company hired by EA to develop the Genesis and Super Nintendo versions “had access to his design and code.”

This prompted Antonick to sue EA for copyright infringement. The case was tried before a jury that ruled in his favor. The judge threw out the verdict, however, because the jury relied on testimony from Antonick’s expert witness–another programmer who compared the binary and source code from the Apple II version to those used in the Sega Genesis program.

Ninth Circuit Stands by 1977 Test Rejected by Other Courts

The problem was not the expert was unqualified or that his testimony was inaccurate. Rather, the Ninth Circuit–which has jurisdiction over all federal courts in California and several other western states–has previously said experts of any kind are barred from testifying in copyright infringement cases. Instead, the jury is supposed to decide if there is “substantial similarity” between the copyrighted and allegedly infringing works “depending on the response of the ordinary reasonable person.”

The Ninth Circuit first adopted this rule in 1977–coincidentally, just a few months after the release of the Apple II–in the case of Sid & Marty Krofft Television v. McDonald’s Corp. Known today as the Krofft rule, the issue in that case was the alleged copying of characters developed for a children’s television program. The Court said the test for assessing infringement was “intrinsic” rather than extrinsic, and therefore “analytical dissection and expert testimony are not appropriate.”

Applying the Krofft rule, the trial judge in Antonick’s case said the jury should have never heard his expert’s testimony. The Ninth Circuit agreed. In its 2016 opinion, the appeals court said it was still bound by Krofft, even while acknowledging in a footnote the rule has come under increasing attack in recent years:

Antonick is not alone in contending that experts should be allowed to help juries assess the holistic similarity of technical works such as computer programs. But, given our precedents, that argument must be addressed to an en banc court. (citations omitted)

Indeed, as Antonick’s Supreme Court petition explains, no other federal appeals court follows the Krofft rule when it comes to software copyright cases. In 1992, the Second Circuit in New York adopted its own rule in Computer Associates International, Inc. v. Altai, where that court expressly stated, “In making its finding on substantial similarity with respect to computer programs, we believe that the trier of fact need not be limited by the strictures of its own lay perspective.” Expert testimony was “appropriate,” the Second Circuit maintained, given “the reality that computer programs are likely to be somewhat impenetrable by lay observers.”

Similarly, the Fourth Circuit in Richmond, Virginia, held in a 1990 decision, Dawson v. Hinshaw Music Inc., held that “the advent of computer programming infringement actions has forced courts to recognize that sometimes the non-interested or uninformed lay observer simply lacks the necessary expertise to determine similarities or differences between products.” The Fourth Circuit actually cited a decision issued four years earlier by the Third Circuit in Philadelphia, Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., where that court noted, “The ordinary observer test, which was developed in cases involving novels, plays, and paintings, and which does not permit expert testimony, is of doubtful value in cases involving computer programs on account of the programs’ complexity and unfamiliarity to most members of the public.”

The Supreme Court Needs to Abolish This “Nutty” Rule

Despite the fact that courts going back to the 1980s have recognized the critical importance of expert testimony in software copyright cases, the Ninth Circuit remains stuck with its horribly outdated Krafft rule. This is especially problematic because two of the most important states to the software industry–California and Washington–are within the Ninth Circuit’s jurisdiction. As things stand now, copyright litigation in those states is subject to different rules of evidence than cases brought in New York and throughout most of the country.

Even the Ninth Circuit’s own judges realize the Krafft rule needs to go. During oral argumentsbefore the Ninth Circuit in Antonick’s case one of the panel members, Circuit Judge Andrew D. Hurwitz, called the ban on expert testimony in software copyright cases “nutty.” And as Antonick explained in his Supreme Court petition, the Krafft rule would lead to ridiculous outcomes if applied to “translations” of other types of literary and scientific works:

Suppose that someone were to translate J.K. Rowling’s iconic Harry Potter and the Philosopher’s Stone into Japanese and the publisher brought a copyright infringement action. Under the Ninth Circuit’s Krofft rule, as reinforced by the Antonick decision, the plaintiff would not be able to call a bilingual translator to testify about the overlap. Given the dissimilarities of Kanji and English characters, there would be no basis for a jury to assess substantial similarity. Such an absurd result defies the clear text and logic of the Copyright Act.

Ultimately, only the Supreme Court can step in and force the Ninth Circuit to follow the more logical path taken by its sister courts. The Court has given Electronic Arts until October 2 to respond to Antonick’s petition. After that, if 4 of the 9 justices agree to hear the case, it will be placed on the Court’s schedule for oral arguments, which will likely be sometime in 2018.

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