Saturday, November 13, 2010
In Conclusion: Southern District Of Texas Finds Testimony About Copyright Violations Violates Rule 704(a)
Federal Rule of Evidence 704(a) states that
Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact.
Conversely, expert witnesses are not allowed not testify in the form of ultimate legal conclusions? So, when does an opinion properly embrace an ultimate issue, and when does an opinion improperly embrace an ultimate legal conclusion? It's a thin line, but it is one that was recently crossed according to the recent opinion of the United States District Court for the Southern District of Texas in Interplan Architects, Inc. v. C.L. Thomas, Inc., 2010 WL 4065465 (S.D.Tex. 2010).
C.L. Thomas involved the following facts:
Interplan Architects, Inc. ("Plaintiff") is a company whose business involves architectural planning, architectural design, and preparation of architectural construction documents, including, but not limited to, architectural site plans, architectural floor plans, architectural exterior elevations, interior designs, and construction documents ("Architectural Documents")....
Between 2003 and 2004, Plaintiff was hired by C.L. Thomas ("Defendant Thomas") to prepare Architectural Documents for nine different Speedy Stop convenience stores in south Texas. For Speedy Stop store numbers 59 and 82, Plaintiff submitted proposals to Defendant Thomas describing the services it would provide in connection with the projects (the "Design Proposals"). The Design Proposals contained language asserting Plaintiff's ownership of the Architectural Documents it prepared in connection with the projects and limiting Defendant Thomas's ability to copy or distribute the plans without Plaintiff's permission....
Defendant Thomas allege[d] that, during the design process, it provided Plaintiff with many drawings and files from other third-party vendors, consultants, and even other architects in order to prepare the Architectural Documents....In 2003 and 2004, employees of C.L. Thomas requested and received from Plaintiff electronic copies of Plaintiff's Architectural Documents. Plaintiff provided the requested electronic Architectural Documents as CAD files in electronic format on a computer-readable disk...
In 2004, Defendant Thomas hired Morris & Associates ("Defendant Morris") and Hermes Architects ("Defendant Hermes") to provide architectural design and construction drawings for a total of thirteen different Speedy Stop stores (the "Infringing Stores")....Defendant Thomas admits that it furnished Defendant Morris with CAD files of at least some of Plaintiff's Architectural Documents and that Defendant Morris replaced Plaintiff's title block on the Architectural Documents with its own. Defendant Thomas also admits that it furnished Defendant Hermes with copies of Defendant Morris's Architectural Documents.
In 2006, Plaintiff's president, Marcel Meijer, allegedly discovered the existence of the Infringing Stores. Plaintiff subsequently registered copyrights for architectural works and technical drawings related to the Speedy Stop stores it had designed for Defendant Thomas. Thereafter, Plaintiff filed suit against Defendant Thomas, Defendant Morris, and Defendant Hermes...for copyright infringement...and violation of integrity of copyright management information under the Digital Millennium Copyright Act....Defendants...asserted various defenses to Plaintiff's claims, including, among others, that Defendant Thomas is a joint author of Plaintiff's Architectural Documents, that Plaintiff granted Defendant Thomas an implied nonexclusive license to copy and use Plaintiff's Architectural Documents, and that Plaintiff does not hold a valid copyright for architectural works and technical drawings.
Defendant Thomas planned to present the testimony of architect Andrew Noble, who would have testified consistent with his expert report. In that report, inter alia, Noble
cite(d) various publications of the U.S. Copyright Office regarding copyright law, applies them to the facts presented to him, and concludes that: (a) Defendant Thomas was a joint author with Plaintiff in the design of Speedy Stop Store No. 85; (b) the plans for Store No. 85 were a derivative work; (c) the design of Store No. 85 was not uniquely Plaintiff's; (d) Plaintiff did not acquire transfer of ownership from Defendant Thomas or other contributors for their respective portions of the design; and (e) Plaintiff did not possess sufficient ownership to claim a sole copyright to the Speedy Stop stores....
In deeming this proposed testimony inadmissible, the United States District Court for the Southern District of Texas correctly concluded that
Whether Defendant Thomas is a joint author, whether Plaintiff's designs are derivative works, whether Plaintiff has sufficient ownership to claim copyright, whether Plaintiff's design is unique and gives rise to ownership, and whether Plaintiff acquired ownership from Defendant Thomas are all issues for the trier of fact to decide....Mr. Noble impermissibly uses the legal standards and applies them to the facts of the case in order to make legal conclusions....Mr. Noble may not tell the trier of fact what result to reach with respect to these issues.