Professor David Nimmer excluded as an expert witness in copyright case???

Last week the Ninth Circuit decided the appeal in the copyright dispute over the television series “My Name is Earl.”  The panel deemed the case as not requiring an oral argument.

The most interesting aspect of the case is that David Nimmer (of the Nimmer on Copyright treatise) was excluded as an expert witness by the district court judge and the Ninth Circuit panel did not view this as an abuse of discretion.  The panel wrote:

The district court also did not err in excluding expert testimony from David Nimmer and Eric Sherman.1 Some of Nimmer’s testimony contained inadmissible legal conclusions. See United States v. Scholl, 166 F.3d 964, 973 (9th Cir. 1999). According to the district court, although each were recognized to have a separate area of expertise, both Nimmer and Sherman also failed to establish that they had “knowledge, skill, experience, training, or education” relevant to the evidence at issue.  Fed. R. Evid. 702. Determinations of whether a particular witness has such expertise is “peculiarly within the sound discretion of the trial judge” and reviewing courts afford “a high degree of deference to the district court’s findings.” United States v. Chang, 207 F.3d 1169, 1172 (9th Cir. 2000) (citations and internal quotation marks omitted). The district judge in this case did not abuse his discretion in excluding Nimmer’s and Sherman’s testimony.

         (Emphasis added.)

The issue is made more clear by reviewing the district court opinion.  The district court noted that Nimmer is an expert with respect to legal issues of copyright law but was not established to be an expert witness with respect to literary issues.  The district court wrote:

Here, Plaintiff has not demonstrated that Nimmer is qualified to render an expert opinion on the issue of substantial similarity between two literary works. Nimmer’s experience, training, and education establish that Nimmer undoubtedly is an expert in the field of copyright law. He is a graduate of Yale Law School, and a partner at the Los Angeles-based firm of Irell & Manella. He specializes in and teaches copyright law and is the current author of the preeminent copyright treatise Nimmer on Copyright, which is often cited by appellate courts, including the Supreme Court. Over the past three decades, Nimmer has published numerous books and dozens of articles on copyright law, spoken at many copyright law conferences, and taught seminars to federal judges on the issue of substantial similarity in copyright law. Given this extensive background, there can be no question that Nimmer is well-qualified to perform a legal analysis regarding copyright claims. However, as discussed below, an expert cannot offer his legal opinion as to whether a triable issue of fact exists regarding copyright infringement; such an analysis is the exclusive province of the Court.

Instead, the relevant issue on summary judgment, and indeed the subject matter upon which Nimmer seeks to opine, is whether there is substantial similarity in the objective elements of theme, plot, dialogue, characters, sequence of events, mood, pace, and setting between Karma! and Earl. In short, Nimmer was tasked with performing a literary analysis of two fiction works. However, Nimmer offers little explanation as to how his legal expertise qualifies him to compare a screenplay and a television series on the eight criteria mentioned. Notably absent from Nimmer’s report and declarations is any indication that Nimmer has experience, knowledge, training, or education in the literary field—for example, there is no evidence 834*834 that Nimmer has ever worked as a film critic, a publisher, an. English professor, an editor or director, that Nimmer writes fiction works, or even that Nimmer is an avid movie buff or television-watcher. While the Court recognizes that the task of comparing two fiction works is not highly technical, and indeed requires no specific training, to offer an expert literary analysis there must be some indication that Nimmer has, in one capacity or another, watched, read, written, compared and/or analyzed literary works.[14] See e.g., Stewart v. Wachowski, 574 F.Supp.2d 1074, 1106 n. 130 (C.D.Cal.2005) (expert was an English professor who had previously testified in several matters regarding substantial similarity); West v. Perry, No. 2:07CV200, 2009 WL 2225569, at *5 (E.D.Tex.2009) (among other qualifications, expert had a film degree, was an accomplished screenwriter, and had worked as a screen credit arbitrator for the Writer’s Guild of America); A Slice of Pie Productions, LLC v. Wayans Bros. Entertainment, 487 F.Supp.2d 33, 41 (D.Conn.2007) (expert had extensive experience teaching, evaluating, studying, and writing about screen writing). No such evidence exists here.

Further, Nimmer’s prior experience as an expert witness or consultant, with perhaps one or two exceptions, is not relevant to the literary analysis offered in this case. Nimmer lists several cases in which he previously offered expert testimony regarding the substantial similarity of works such as technical drawings, architectural plans, bingo cards, instructions for the use of pesticides, and computer software. (Supp. Nimmer Decl. ¶¶ 7-10.) Nimmer does not explain the specific analysis he performed; however, his assignments in those cases did not involve fiction works such as television shows, plays, movies, or books. Thus, this prior experience does not inform the literary analysis offered here.[15] There are two instances in which Nimmer may have performed a similar analysis as that offered here, although given the vague descriptions of these assignments, it is difficult to know for certain. First, Nimmer declares that he assisted a publisher in overturning an injunction in a copyright case involving a comparison between 835*835 Margaret Mitchell’s Gone with the Wind and Alice Randall’s The Wind Done Gone. But Nimmer fails to describe the issue that he was asked to analyze or the opinion he ultimately rendered in that case.[16] (Id. ¶ 11.) Nimmer also notes one assignment, in Time Warner Entertainment Co. v. Continental Casualty Co., Case No. 02-01885 R (C.D.Cal.), where he was asked to compare a revised screenplay with the motion picture Contact and concluded that the unlicensed, protectable expression from the screenplay that was used in the film gave rise to a valid copyright claim. (Id. ¶ 6.) While this prior experience appears relevant, the fact that Nimmer testified as an expert once before in a case involving literary works is not a sufficient basis, without more, to accept his testimony here.[17]

In sum, Nimmer’s specialized knowledge of copyright law and his legal expertise does not qualify him as a literary expert. See, e.g., Gen. Battery Corp. v. Gould, Inc., 545 F.Supp. 731, 750 n. 24, 759 n. 30 (D.Delaware 1982) (patent lawyer, although knowledgeable about the patent office procedure, was not qualified to give an expert opinion on infringement where he was not skilled in the relevant art of the patented products); United States v. Chang, 207 F.3d 1169, 1172-73 (9th Cir. 2000) (witness who was “extremely qualified” in international finance was not qualified to render an opinion on the authenticity of a securities certificate where he had no training in identification of counterfeit securities); In re Canvas Specialty, Inc., 261 B.R. 12 (C.D.Cal.2001) (witness not qualified where witness was an architect but had not demonstrated how his training as an architect gave him the necessary expertise to determine whether metal cabanas met contract requirements or had structural defects). As such, Nimmer’s opinions as to the points of similarity between Karma! and Earl are not admissible.

 You can read the “My Name is Earl” Ninth Circuit opinion here: [Read].

You can read the district court opinion here: [Read].

It is interesting to consider this case in comparison to KSR v. Teleflex.  In the aftermath of KSR, one has seen “common sense” asserted with reckless abandon in regard to obviousness.  Yet, under copyright law, the seemingly simple issue of deciding if there is “substantial similarity” between a screenplay and a television series requires not only expert evidence but evidence from a highly specialized expert.

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