Expert Witness Profiler

Tag: Copyright Infringement

  • Economics Expert’s Opinion on Copyright Damages Excluded

    Economics Expert’s Opinion on Copyright Damages Excluded

    Plaintiff The Upper Deck Company (“Upper Deck”) sued its former contractor, Ryan Miller (“Miller”), and its competitor, Ravensburger North America Inc. (“Ravensburger”), for claims arising from the alleged copying of Upper Deck’s new trading card game (“TCG”), Rush of Ikorr.

    Miller filed motions to exclude Plaintiff’s expert witnesses Dr. Roberto J. Cavazos and Dr. Ian Bogost while Plaintiff filed a motion to exclude Miller’s expert witness James E. Pampinella.

    Gaming Expert Witness

    Dr. Ian Bogost serves as a professor of Film and Media Studies as well as Computer Science and Engineering at Washington University in St. Louis and enjoys international recognition “as a key figure in game design and game studies.”

    Want to know more about the challenges Ian Bogost has faced? Get the full details with our Challenge Study report.

    Economics Expert Witness 

    Dr. Roberto J. Cavazos is an economics professor with thirty years of experience. He has worked in a number of areas including lost earnings, business damages, labor management relations for global
    multinationals.

    Fortify your strategy by reviewing a Challenge Study detailing grounds for excluding Roberto Cavazos’s expert testimony. 

    Accounting Expert Witness

    James E. Pampinella CPA, CFF, CLP has been providing consultation services in the area of complex commercial litigation and valuation services for over 30 years, specializing in intellectual property strategic consulting and disputes, including matters involving copyrighted works.

    Get the full story on challenges to James Pampinella’s expert opinions and testimony with an in-depth Challenge Study.

    Discussion by the Court

    Miller’s Motion to Exclude Plaintiff’s Expert  Bogost

    Bogost is qualified to testify about TCGs

    Miller sought to exclude Bogost’s testimony, arguing that he is not qualified to opine on TCGs, that his methods are unreliable, and that he offered improper legal opinions.

    The Court noted that Bogost’s CV has a marked video game slant. However, his CV also contains several indications of general game expertise: throughout his career, Bogost has written several publications on games and game theory generally, taught multiple university courses on game design, and presented at several conferences on games.

    Given Bogost’s ample experience in the field of games, game design, and game review—and because his opinions are based on specialized knowledge other than science—the Court found that Bogost met the minimum bar set by Rule 702 to qualify as an expert on TCGs.

    Bogost’s methodology is sufficiently reliable to offer expert opinions about the two TCGs

    Miller also challenged the reliability of Bogost’s methodology. Bogost first obtained two sets of Lorcana starter decks, which included “ready to play” decks, a booster pack of cards, a tabletop play mat, printed rules, and “a set of cardboard chits.” Bogost next considered what version of Rush of Ikorr to use in his analysis. After reviewing case materials, Bogost obtained the materials Miller submitted to Upper Deck prior to his departure (“Version 2.6”), then played both games. After playing the games, Bogost made observations about each game, and formed opinions as to particular “bundles of expression” drawing on his experience in game design. 

    Miller took issue with how Bogost played Version 2.6 because he did not use overlays, and did not play in team mode. But as Upper Deck pointed out, Bogost could not recall whether he used the overlays and Rush of Ikorr can be played as a single-player or team-based game.

    Bogost initially made determinations as to which versions of the games to obtain based on the particular facts in the record, then proceeded to play the games, and draw conclusions based on his knowledge of game mechanics.

    Miller also moved to exclude Section E of Bogost’s report. In Section E, Bogost first explained that “rough-looking” materials, such as Version 2.6, still represent a substantially complete work product in the game design process. While the completeness of Version 2.6 was relevant to the copyright claim, the state of that work product when Miller left Upper Deck and whether it was sufficiently complete or valuable may also be relevant to Plaintiff’s contract claim.

    Accordingly, the Court denied Miller’s motion to exclude Bogost.

    B. Defendant’s Motion to Exclude Upper Deck’s Copyright Damages Expert Dr. Roberto Cavazos

    In this case, Cavazos provided his opinion on copyright damages, estimating economic harm by analyzing the “market value” of rights allegedly taken, and by calculating Defendant Ravensburger’s profits allegedly derived from infringement of Upper Deck’s TCG.

    Cavazos testified that his methods arise under copyright law, and were based upon his understanding from counsel of the applicable measure of copyright damages.

    Cavazos does not attempt to quantify any alleged breach of contract by Miller, nor assign value to Miller’s work on Version 2.6 in the context of the profits from the Lorcana game, nor does it seem he would be qualified to do so. Rather, the royalty rate that Cavazos calculated considered only Ravensburger’s total global revenues and profits from sales of Lorcana, and did not attempt to apportion any value to Miller’s alleged disclosures of confidential information.

    Cavazos admitted that he was not an expert in game design, did not identify the intellectual property at issue, and did not provide a basis for his one-third opinion, beyond that it “stands to reason” that some people would buy the game because of the underlying game design, not just because of the use of Disney IP. 

    The Court held that Cavazos’s opinions are no longer relevant to the issues in this case, and to the extent that they could be, he is not qualified to provide them. 

    C. Plaintiff’s Motion to Exclude Defense Damages Expert James Pampinella 

    With regard to Upper Deck’s general objection to Pampinella’s use of the costs approach, Upper Deck acknowledged that the method is one of three that is accepted by economic literature. Thus, Upper Deck’s objection to Pampinella’s decision to rely solely upon the costs approach concerned the weight rather than admissibility.

    Upper Deck also took issue with Pampinella’s results under the costs approach, arguing that “it is illogical and unreliable for Pampinella to assert that there are no actual damages.” While Pampinella found no actual damages as to the alleged conduct of Ravensburger and Miller, he also concluded that Upper Deck could have suffered economic damages of up to $39,000—the amount paid to Miller under his contracts with Upper Deck.

    The Court is also unpersuaded that Pampinella’s lack of expertise in the gaming industry damages renders his opinion inadmissible for the same reason it found Bogost’s lack of specialized TCGs experience not to be dispositive. 

    Held

    • The Court denied Miller’s motion to exclude Dr. Ian Bogost’s testimony.
    • The Court denied Upper Deck’s motion to exclude James E. Pampinella’s testimony.
    • The Court granted Miller’s motion to exclude Dr. Roberto Cavazos’ testimony.

    Key Takeaway:

    It is true that the Daubert standard can be more difficult to apply where “expert testimony is ‘experience-based’ rather than ‘science-based.’ But here, Bogost obtained the materials Miller submitted to Upper Deck prior to his departure (“Version 2.6”), then played both games. After playing the games, Bogost made observations about each game, and formed opinions as to particular “bundles of expression” drawing on his experience in game design.

    Case Details:

    Case Caption: The Upper Deck Company V. Miller Et Al
    Docket Number: 2:23cv1936
    Court Name: United States District Court, Washington Western
    Order Date: October 20, 2025

  • Mechanical Engineering Expert Witness is not Qualified to Opine as to the Copyright Infringement Analysis Itself

    Mechanical Engineering Expert Witness is not Qualified to Opine as to the Copyright Infringement Analysis Itself

    In early 2015, Plaintiffs, US Thrillrides, LLC  (“USTR”) and Polercoaster, LLC began discussions with Defendant, Intamin Amusement Rides Int. Corp. Est. about partnering to build Polercoasters for Plaintiffs’ customers. The Polercoaster is a unique attraction that provides a complete roller coaster experience on a very small footprint, unlike traditional roller coasters which require several acres of land.

    On January 15, 2015, the Parties entered into a Confidentiality and Non-Disclosure Agreement (the “CNDA”) to allow them to begin conversations. In the CNDA, Defendant agreed that information about the Polercoaster was protected and agreed not to create products similar to those offered by Plaintiffs, or to enable or cause others to do so. Once the CNDA was executed, Plaintiffs began discussions with Defendant about serving as the manufacturing partner for Polercoasters they were selling to their customers in different parts of the United States. Ultimately, Defendant was chosen to be the manufacturer for the US Projects.

    Later, Plaintiffs executed a letter of acceptance (the “LOA”) with Emaar Entertainment, LLC (“Emaar”) to build a Polercoaster at the Dubai Hills Mall. Unbeknownst to Plaintiffs, Defendant was actively undercutting them, negotiating directly with Emaar and submitting its own bid, in secret, to build the ride without Plaintiffs’ involvement or permission. The result was that Plaintiffs were terminated and Defendant was hired.

    Emaar and Defendant entered into a Letter of Intent, memorializing their agreement to move forward on developing a smaller roller coaster for the Dubai Hills Mall. Ultimately, this roller coaster was built and named the Storm Coaster.

    Plaintiffs alleged that Defendant unlawfully breached the CNDA and is also liable under various Florida and federal laws for wrongfully using Plaintiffs’ intellectual property in connection with the Dubai Project.

    Defendant filed a motion to exclude the expert testimony of Plaintiffs’ expert Nathan Macdonald.

    Mechanical Engineering Expert Witness

    Nathan Macdonald is a registered professional engineer, a certified safety professional, and a certified commercial building inspector. He has a Bachelor of Science degree in mechanical engineering and eleven years of experience working as a mechanical engineering consultant, including experience working on the design, manufacture, and testing of amusement rides. 

    Get the full story on challenges to Nathan Macdonald’s expert opinions and testimony with an in-depth Challenge Study. 

    Discussion by the Court

    Defendant sought to exclude the following opinions of Plaintiffs’ expert, Nathan Macdonald: (1) designs and drawings created for the Storm Coaster are substantially similar to and incorporate major design features of USTR’s copyrighted materials; and (2) the Storm Coaster design is both similar to the Polercoaster designs developed by USTR and embodies and is derived from Confidential Information and Intellectual Property Rights (as defined by the CNDA) conveyed by USTR to Defendant pursuant to the CNDA.

    Qualifications

    First, Defendant argued that Macdonald is not qualified to opine on any of the issues here because he did not have specific experience with roller coaster design. While Macdonald has not designed a roller coaster, he has has a significant amount of experience related to coasters and the engineering and design work that is involved. Therefore, Macdonald’s experience and training makes him qualified to opine on the mechanics, engineering, and technical design aspects of the roller coasters and drawings at issue here.

    Second, Defendant also challenged Macdonald’s qualifications to opine as to analyzing copyright, trade secret, and misuse of confidential information issues. The Court held that Macdonald is qualified to conduct a technical and engineering comparison between Plaintiffs’ designs and drawings with Defendant’s designs, drawings, and the Storm Coaster. Macdonald is also qualified to testify regarding how confidential information and trade secrets are treated and used within the industry.

    On the other hand, Macdonald is not qualified to opine as to whether information constitutes a trade secret or is confidential information as this is a legal analysis, not a technical one. Nor is he qualified to opine as to whether the copyright “substantial similarity” analysis is satisfied. To be clear, Macdonald could testify that certain aspects of Defendant’s design drawings are similar to certain aspects of Polercoaster’s copyrighted drawings from a technical or engineering standpoint. And Plaintiffs’ attorneys could then use that testimony to argue that the “substantial similarity” analysis for copyright infringement is satisfied. But Macdonald is not qualified to opine as to the copyright infringement analysis itself.

    Methodology

    As to Macdonald’s methodology, Defendant first argued that Macdonald’s copyright opinions must be excluded because Macdonald did not conduct a copyright protectability analysis and because his opinions regarding substantial similarity invade the province of the jury. These issues were addressed in the qualifications analysis—Macdonald is only permitted to testify as to similarities between Defendant’s purportedly infringing drawings and Polercoaster’s copyrighted drawings from a technical and engineering standpoint. He is not permitted to testify as to whether these similarities are protectable under copyright law.

    Defendant also objected to Macdonald’s opinions because they assume that the designs and drawings attributed to Polercoaster actually belong to Polercoaster, and Defendant argues that they do not. This is not an issue with Macdonald’s methodology in comparing the designs. The Court held that the Defendant is free to offer evidence at trial that the drawings do not belong to Polercoaster, but an expert is allowed to offer opinions based on assumptions given to them. 

    Next, Defendant argued that Macdonald’s opinions comparing Polercoaster’s copyrighted works to the as-built Storm Coaster must be excluded because an as-built structure cannot infringe Polercoaster’s copyrights. Polercoaster conceded that Defendant is correct. Additionally, Defendant’s remaining objections to Macdonald’s opinions were rendered moot by the Court because Plaintiffs’ trade secrets and non-copyright-based breach of the CNDA claims failed on the merits.

    Held

    The Court granted in part and denied in part Defendant’s motion to exclude the testimony of Nathan Macdonald.

    Key Takeaway:

    Macdonald is only permitted to testify as to similarities between Defendant’s purportedly infringing drawings and Polercoaster’s copyrighted drawings from a technical and engineering standpoint. He is not permitted to testify as to whether these similarities are protectable under copyright law.

    Case Details:

    Case Caption: US Thrillrides, LLC & Polercoaster, LLC V. Intamin Amusement Rides Int. Corp. Est.
    Docket Number: 6:22cv2338
    Court: United States District Court, Florida Middle
    Order Date: February 19, 2025
  • Accounting Expert Witness’ Report Indicated Missing Data Points

    Accounting Expert Witness’ Report Indicated Missing Data Points

    Between 1983 and 1986, MSI, a music company solely owned by Nealy, engaged a number of recording artists and created a catalog of popular sound recordings and musical compositions. MSI was administratively dissolved in 1986, and Nealy was arrested and later sentenced to a twenty (20) year prison term in late 1988. During Nealy’s first incarceration from 1988 to 2008, unbeknownst to and without authorization from Nealy, former MSI Vice President, producer, and recording artist, Tony Butler (“Butler”) began unlawfully transferring rights to use and exploit the Subject Musical Works.

    Defendant Artist Publishing Group LLC’s (“APG”) entered into a publishing agreement with the author of the compositions at issue in this case, Tony butler, through his wholly owned company, 321 Music, LLC, pursuant to which APG agreed, inter alia, to license certain musical compositions authored by Butler to third parties, for which APG was paid a percentage of the royalties earned from those efforts (the “APG/321 Music Agreement”).

    As part of a separate administration agreement between APG and Defendant Warner Chappell Music, Inc.’s (“WC”), WC assumed certain of APG’s duties in the APG/321 Music Agreement, including licensing the musical compositions to third parties in exchange for licensing fees and royalties. It was alleged that no monies earned from the licensing of the compositions at issue in this case were ever received by APG, other than the royalties it was entitled to receive as publisher pursuant to its publishing agreement with 321 Music, LLC. Those monies have been accounted to Plaintiffs in discovery in this case, totaling $125,738.81.

    Both WC and APG filed Daubert motions to exclude the testimony of John Menneci.

    Accounting Expert Witness

    John Menneci joined Gelfand, Rennert & Feldman (GRF) in 2001 and works out of its White Plains, New York office. He currently co-heads the New York arm of GRF’s New York Royalty Examination Group.

    John specializes in conducting royalty examinations on behalf of prominent recording artists, songwriters and merchandise licensors and has over 25 years of experience in this field. He has travelled across the globe to conduct examinations on behalf of the firm’s clients and has audited an array of different licensees in both the physical and digital space with great success. John also specializes in conducting due diligence and valuations in connection with copyright acquisitions and estate tax matters.

    Want to know more about the challenges John Menneci has faced? Get the full details with our Challenge Study report. 

    Discussion by the Court

    The Menneci Report formed the basis for two opinions: (1) Defendants received $410,920.10 in gross publishing income from copyright infringements and (2) Defendants, or parties connected to Defendants, received $54,960,000 in master recording income from copyright infringement of Plaintiffs’ works.

    Menneci’s conclusion that Defendants, or parties connected to Defendants, received $54,960,000 in master recording income from copyright infringement of Plaintiffs’ works must be excluded

    Starting first with the eye-popping damages figure of almost $55 million, the Court held that the Report did not specify how Menneci reached this conclusion. Indeed, when asked several different times at the Hearing to provide either the methodology or data utilized in reaching this astronomical figure, Plaintiffs’ counsel was unable to provide a response. Even when the Court broke the inquiry down further by asking Plaintiffs’ counsel to explain how Menneci calculated alleged foreign income through some sort of extrapolation, Plaintiffs’ counsel was simply unable to proffer or explain the methodology employed by his damages expert.

    Also, Menneci relied on whole album sales, despite the fact that only a handful of isolated tracks remain at issue in this case. In conclusion, Menneci’s calculation includes revenue generated from individual tracks not at issue here, as well as album versions that do not include a single track at issue in this case.

    Menneci’s conclusion that Defendants received $410,920.10 in gross publishing income from copyright infringements must also be excluded

    The Court noted that Menneci improperly included funds received by other entities in his calculations—apparently on a theory of contributory infringement by non-party Interscope Records.

    In addition to being premised on an incorrect theory of recovery, Menneci’s conclusion that Defendants received $410,920.10 in gross publishing income from copyright infringements is not based on sufficient facts and data or reliable principles or methods.

    Further, since these monies are not accounted for in the financial documentation produced by Warner Chappell, Menneci conceded that he “estimated” the songwriter’s share of performance income based on his “assumption” that “music publishing income is generally split 50/50 between the [song]writer and publisher.” Similarly, Menneci improperly assumed that Warner Chappell administered 100% of the musical composition for “Weekends”—when in reality, Warner only received 33% of the publishing monies. The Court held that such assumptions fail to meet the standard imposed by Rule 702 for expert testimony.

    However, the Court will bifurcate this trial as to liability and damages. During the initial liability phase, Plaintiffs may attempt to establish that Defendants
    should be held jointly and severally liable for the profits of other entities given the existence of a “practical partner” relationship. If the jury returns an initial verdict finding that Plaintiffs have established either a practical partnership or predicate act, the Court will hold a brief status conference with the parties as to how Plaintiffs intend to prove their joint and several damages and foreign profits damages, given that the Menneci Report is excluded in its entirety under Rule 702.

    Held

    The Court granted Warner’s Daubert motion to exclude the testimony of John Menneci but denied as moot APG’s Daubert motion.

    Key Takeaway:

    The Court decided that even a cursory review of the Menneci Report—which spans a mere five pages—indicated significant gaps in methodology and numerous missing data points. Menneci’s deposition did little to clarify his methods; on the contrary, the lack of reliable methodology was further exposed and made even more readily apparent.

    Case Details:

    Case Caption: Nealy Et Al V. Atlantic Recording Corp. Et Al
    Docket Number: 1:18cv25474
    Court: United States District Court, Florida Southern
    Order Date: July 17, 2024
  • Art and Humanities Expert Witness’ Testimony Did Not Employ a “Prior Art” Methodology

    Art and Humanities Expert Witness’ Testimony Did Not Employ a “Prior Art” Methodology

    A district judge in California limited the testimony of the Defendant’s substantial similarity expert witness as he lacked the requisite qualifications to express his opinions regarding Polynesian, Oceanic, or Hawaiian mythology, folklore, history, religion, or culture.

    Plaintiff Buck Goodday Woodall filed a copyright infringement case against Defendant The Walt Disney Company, Buena Vista Home Entertainment Inc et al. The present case involves allegations of copyright infringement and misappropriation of trade secrets between Plaintiff’s “Bucky” and Defendants’ animated film Moana.

    The Defendants disclosed expert Jeff Rovin as their “substantial similarity expert.” Plaintiff filed a motion to exclude Rovin’s testimony on Daubert grounds. Plaintiff aimed to prevent Defendants’ expert, Jeff Rovin, from presenting testimony and opinions, arguing two primary grounds. Firstly, Plaintiff contended that Rovin’s “prior art” methodology was unreliable and had been dismissed by Ninth Circuit Courts, asserting its inapplicability to copyright cases. Secondly, Plaintiff argued that Rovin lacked the qualifications to provide opinions on “Oceanic mythology, folklore, religion, culture, and/or history.”

    Art and Humanities Expert Witness

    Jeff Rovin has written numerous histories on heroic and fantasy films, including works such as Of Mice and Mickey (1975), The Fabulous Fantasy Films (1977), From the Land Beyond Beyond (1977), The Fantasy Almanac (1979), The Encyclopedia of Monsters (1989), The Illustrated Encyclopedia of Cartoon Animals (1991), and Adventure Heroes (1995). During his career, he wrote, edited, and created many comic book characters, several of whom were teenagers like The Dark Avenger, Wulf, and Vicki P.I. He also served as a testifying and consulting expert in numerous intellectual property claims.

    Get the full story on challenges to Jeff Rovin’s expert opinions and testimony with an in-depth Challenge Study. 

    Discussion by the Court

    A. Expert’s Methodology

    Defense expert Rovin’s initial and rebuttal reports cited various other works. Plaintiff sought to exclude both reports entirely, arguing that Rovin’s opinions relied on an unreliable “prior art” methodology rejected by Courts within and beyond that Circuit.

    Rovin clarified the methodology he employed in applying the extrinsic test for substantial similarity. The Court found that he did not utilize a “prior art” approach but instead referenced other works to support his opinion that the alleged similarities identified by Plaintiff included elements not protected under copyright.

    Additionally, the Court held that merely referencing prior works within the same genre does not automatically render an expert’s opinion unreliable or inadmissible. Plaintiff also contested Rovin’s identification of different genres in his reports but Defendants countered that these genres were defined by Plaintiff’s own expert. Even if there were differences in how the experts defined relevant genres, this does not justify excluding Rovin’s reports and testimony under Daubert standards.

    Furthermore, if Rovin’s reports referenced works outside the relevant genres, this would affect the weight of his opinion, not its admissibility. Plaintiff further argued that Rovin’s references to other “prior art” could mislead the fact-finder into believing certain scenes were familiar stock scenes when they were not. But this concern also pertained to the weight of Rovin’s testimony, not its admissibility.

    The Court concluded that Rovin’s methodology did not involve a “prior art” approach, thus refuting Plaintiff’s assertion that his opinions and testimony were unreliable and inadmissible. Consequently, the Court rejected Plaintiff’s motion to exclude Rovin’s testimony and opinions based on reliability concerns.

    B. Expert’s Qualifications

    Plaintiff had also sought to exclude Rovin’s opinions and testimony, arguing he lacked the requisite qualifications to discuss “Oceanic mythology, folklore, religion, culture, and/or history.”

    Defense counsel had disclosed that they specifically designated Rovin “as their substantial similarity expert.” Therefore, the Court prohibited Rovin from offering expert opinions or testimony concerning Polynesian, Oceanic, or Hawaiian mythology, folklore, history, religion, or culture.

    Held

    The Court ruled as follows:

    The Plaintiff’s motion to exclude opinions and testimony from defense expert Rovin, arguing his opinion was unreliable, was denied.

    Plaintiff’s motion to exclude expert testimony or opinions from defense expert Rovin regarding Polynesian, Oceanic, or Hawaiian mythology, folklore, history, religion, or culture was granted.

    Key Takeaway:

    The Court rejected Plaintiff’s argument that employing “prior art” approach rendered Jeff Rovin’s opinions unreliable, stating that referencing works within the same genre does not inherently undermine an expert’s credibility. The Court held that Rovin did not use a “prior art” methodology, but instead referenced other works in opining that the alleged similarities in the parties’ works identified by Plaintiff include unprotectable elements.

    As Rovin was designated solely as a substantial similarity expert, the Court granted Plaintiff’s motion to preclude him from providing opinions or testimony on Polynesian, Oceanic, or Hawaiian subjects.

    Case Details:

     Case Caption:  Buck G. Woodall V. The Walt Disney Company
     Docket number:  2:20cv3772
     Court:  United States District Court, California Central
    (Western Division – Los Angeles)
     Date:  May 22, 2024
  • Expert’s Lack of Knowledge and Experience more specific to Product Design found to carry a grave risk of juror confusion

    Expert’s Lack of Knowledge and Experience more specific to Product Design found to carry a grave risk of juror confusion

    In March 2022, Defendants Edition Modern and Denis De La Mésière faced a lawsuit filed by Plaintiffs Jean Royère SAS and Jelena Markovic. Edition Modern, a small business, operated with approximately three full-time employees, including both owners and a few part-time workers. Denis De La Mésière, one of the owners, possessed over 40 years of experience in the furniture industry and immigrated to the United States from France in 1987. Since 2015, Edition Modern had been marketing and selling furniture inspired by Jean Royere, alongside pieces influenced by other modern French designers and items designed by Mésière himself. The Defendants countered by asserting that the Plaintiffs lacked copyright registrations for the works claimed in the case. The works in question comprised lighting products and furniture pieces, all categorized as useful articles, requiring Plaintiffs to demonstrate their separable features capable of existing independently from the utilitarian aspects of the articles.

    The Plaintiff Jean Royère SAS and Jelena Markovic filed a motion to exclude testimony of the Defendants’ expert Charles Vranian. The Defendants Edition Modern and Denis de la Meisière had also filed a motion to exclude testimony of the Plaintiffs’ expert Paul Hatch.

    Industrial Design Expert Witness

    Paul Hatch has over 25 years of experience in product and industrial design. He is currently pursuing his Ph.D. in Learning Sciences from the University of Illinois at Chicago, where he also works as an adjunct faculty member. Hatch also earned a Bachelor’s degree with honors in Design for Industry from the University of Northumbria in the UK. His educational background includes Diploma in general art and design as well. Hatch has served as a CEO of TEAMS Design USA. Hatch has designed numerous furniture pieces across a diverse array of materials and manufacturing methods, including chairs, shelves, cabinets, tables and more. 

    Management Consulting  Expert Witness

    Charles J. Vranian has over 35 years of experience in the furniture industry, including 26 years at the renowned furniture company Herman Miller. He holds a Bachelor’s degree in Economics from Michigan State University and completed MBA coursework at Wayne State University. Vranian’s currently serves as a Founder and President of Vranian Business Development LLC, where he focuses on consulting, M&A projects, and patent disputes.Through his extensive work in the furniture industry, including in senior positions at a leading furniture design company, Vranian has developed expertise related to furniture design, development, manufacturing, and intellectual property issues. 

    Discussions by the Court

    The Defendants contended that Paul Hatch, despite having experience in “product design” and “industrial design,” lacked a background in “sculptural” or “purely artistic” design. The claim suggested that Hatch’s assessment of works of art was irrelevant to the case, as he evaluated the “merit” of unrelated artworks to form opinions on the “sculptural features” and “aesthetic qualities” of the designs in question. The assertion emphasized that Hatch’s opinions hinged on an inexpert analysis, including references to certain “visual elements” explored by “many artists” without proper qualification or justification. The argument concluded that Hatch’s improper comparison of artworks and industrial designs should lead to the exclusion of his testimony by the Court.  

    However, the Court disagreed, citing Rule 702, which allowed expertise based on knowledge, skill, experience, training, or education. The Court emphasized a broad interpretation of expert qualifications and found Hatch’s over twenty-five years of professional experience in furniture and product design sufficient to testify on design-related issues. The Court dismissed the argument that Hatch’s industrial background disqualified him from addressing artistic questions, stating that no binding case law mandated the exclusion of his testimony on that basis.

    Plaintiffs filed a motion to exclude Defendants’ Supplement to Rebuttal Expert Report of Charles Vranian, citing untimeliness and prejudice. According to Federal Rule of Civil Procedure 26(a), expert reports had to be disclosed by a specified deadline in the pretrial schedule. Failure to do so may result in exclusion unless the failure was justified or harmless under Rule 37(c)(1). Courts considered factors such as prejudice, the opposing party’s ability to remedy it, trial disruption likelihood, and bad faith or willfulness in determining harmlessness. The burden of proving harmlessness lay with the party facing sanctions. Courts possessed wide latitude in issuing sanctions under Rule 37(c)(1).  

    In this case, the Court-established pretrial schedule mandated initial expert disclosures by April 28, 2023, rebuttal expert disclosures by May 19, 2023, and set the expert discovery cut-off date for June 2, 2023. Following Plaintiffs’ service of the Expert Report of Paul Hatch on April 28, 2023, Defendants provided their Rebuttal Expert Report of Charles Vranian on May 19, 2023. Plaintiffs deposed Vranian on June 1, 2023. After both parties submitted motions for summary judgment on June 23, 2023, Defendants served a Supplement to Rebuttal Expert Report of Charles Vranian on June 27, 2023.

    The Court determined that Defendants’ late submission of supplemental report did not comply with Rule 26(e)(1) and was prejudicial. Rule 26(e) allowed supplementation for correcting inaccuracies or filling gaps with information unavailable during the initial disclosure. The supplemental report, containing over fifty substantive revisions to Vranian’s original report, did not rely on previously unavailable information. The Court rejected Defendants’ characterization of the revisions as “clarifications,” deeming them an attempt to fortify Vranian’s opinions. This was considered inappropriate supplementation. The Court emphasized that the revisions aimed at strengthening opinions were improper. Moreover, Defendants submitted the supplemental report after the expert discovery period closed, without warning and without providing Plaintiffs the opportunity to depose Vranian regarding the changes. Consequently, the Court struck Defendants’ Supplement to Rebuttal Expert Report of Charles Vranian. 

    Plaintiffs sought the Court’s exclusion of Vranian’s testimony concerning copyright protection, contending that he did not apply the correct legal standard established in Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405, 137 S. Ct. 1002, 197 L. Ed. 2d 354 (2017). Additionally, Plaintiffs argued that Vranian lacked the necessary background and experience to qualify as an expert on this specific topic.

    In 2017, the Supreme Court in the case of Star Athletica, L.L.C. v. Varsity Brands, Inc. established a two-part test for determining copyright protection concerning elements incorporated into the design of a useful article. The statute provides that a “pictorial, graphic, or sculptural featur[e]” incorporated into the “design of a useful article” is eligible for copyright protection if it is (1) identified separately from the utilitarian aspects and (2) capable of existing independently of those utilitarian aspects. Meeting the first criterion was relatively straightforward, requiring the recognition of a two- or three-dimensional element with pictorial, graphic, or sculptural qualities within the useful article. However, the second criterion, independent existence, was more challenging. It necessitated a determination that the identified feature could exist distinctly from the utilitarian functions of the article.

    In essence, a component of a useful article’s design could obtain copyright protection if, when isolated from the article, it could be considered a pictorial, graphic, or sculptural work independently or when placed within another tangible medium.

    During Vranian’s deposition, he explicitly stated his disagreement with the legal standards established in Star Athletica regarding copyright protection. Despite repeated questioning about the test for copyrightability, Vranian consistently expressed his disagreement with the established standards. The Plaintiff argued that instead of applying the correct legal standard, Vranian formulated his own tests for copyrightability. One such test was based on the “Furniture Customer Buying Process” outlined in his original report. Vranian suggested that when an interior designer is involved, the primary selection driver is the function of the pieces, and the design is intentionally holistic. He asserted that the selected piece’s elements are inseparable, constituting component parts of an overall holistic design for the client.

    The Plaintiff objected strongly to Vranian’s creation of multiple ad hoc tests for copyright protection. Vranian devised various unconventional tests, including the “slight-modification test,” which suggested that copyright protection wouldn’t apply even if modifications allowed for separate imagining of the article’s features as a standalone sculptural work. He also introduced the “difficult-to-see-on-a-dark-floor test,” proposing that products not visible on a dark floor were ineligible for copyright protection. Furthermore, he introduced the “seating-and-table-product test,” excluding seating and table products from copyright protection based solely on his subjective experience that function precedes form for such items. Vranian also proposed the “fundamental-geometric-shape test,” stating that copyright protection wouldn’t extend to design features comprising basic shapes. Finally, he suggested the “furniture-pieces-with-useful-functions test,” asserting that furniture pieces, due to their functional nature, weren’t eligible for copyright protection, disregarding the potential separability of certain design features as sculptural works in their own right.

    Vranian’s “supplement” was found to showcase numerous revisions attempting to align with the test established in Star Athletica. However, this highlighted his evident failure to adhere to the correct legal standard. Among the 57 substantial revisions made to the original report, about thirty replaced earlier conclusions regarding copyrightability, which Vranian had evidently misconstrued, with new language and analyses that mimicked and attempted to apply the legal standards delineated in Star Athletica.

    The Court concurred with Plaintiffs, determining that Vranian lacked the qualifications to provide expert testimony on design issues. His background primarily involved business development roles. While he worked at Ford Motor Company in accounting and finance for ten years, and later spent twenty-six years at Herman Miller in product management and marketing roles, he never specifically served as a product designer. Although his general background at a furniture company made him qualified to speak on less design-intensive matters, the Court found that specific knowledge and experience in product design were essential for analyses under Star Athletica. Vranian’s demonstrated inability to correctly apply the key Star Athletica standard, as well as his reliance on an unsupported functionality test, indicated his lack of qualification. Additionally, the Court expressed concerns about the risk of juror confusion due to the improper legal tests underlying Vranian’s opinions on separability and independent existence.  

    Held

    The Court denied Defendants’ Motion to Exclude the testimony of Plaintiffs’ expert Paul Hatch. However, Plaintiffs’ Motion to Exclude the testimony of Defendants’ expert Charles Vranian was granted in part. Vranian’s opinions on separability and independent existence were excluded, along with his supplemental report in its entirety. The Court allowed Vranian’s testimony solely on the issue of originality, with further limitations restricting it to the opinions contained in his original expert report. The Court has not arrived on an outcome for this case since the remaining issues involved in this case still await resolution.

    Key Takeaways

    In the legal proceedings between Plaintiffs Jean Royère SAS and Jelena Markovic and Defendants Edition Modern and Denis De La Mésière, the expert testimony played a crucial role. Plaintiffs relied on the expertise of Paul Hatch, whose extensive background in product and industrial design was deemed sufficient by the Court, rejecting the Defendants’ motion to exclude his testimony. However, Defendants faced challenges with their expert, Charles Vranian. The Court limited Vranian’s testimony, excluding his opinions on separability and independent existence, citing his lack of specific qualifications and failure to apply the correct legal standard. The Court also struck Defendants’ late-filed supplemental report for Vranian, emphasizing the importance of timely and proper disclosure in adherence to the legal procedures. These decisions underscored the significance of expert witnesses in intellectual property cases and the need for their qualifications and methodologies to align with legal standards.

  • Court rejects the Film Finance and Distribution Expert Witness’ opinion on substantial similarity citing lack of literary expertise in Copyright Infringement Suit

    Court rejects the Film Finance and Distribution Expert Witness’ opinion on substantial similarity citing lack of literary expertise in Copyright Infringement Suit

    In the legal case involving Nicole Gilbert-Daniels as the Plaintiff and Lions Gate Entertainment Corp., Starz Entertainment, LLC, Chernin Entertainment, LLC, Katori Hall, Liz Garcia, and Patrik-Ian Polk as Defendants, Plaintiff contended that Defendants’ television show, “P-Valley”, infringed on her copyright for her musical stage play, “Soul Kitten Cabaret” which led to a pivotal moment during a hearing on September 18, 2023.

    During this hearing, the Defendants moved to strike Plaintiff’s expert Rob Aft’s declaration, contending that its filing was untimely per the Federal Rules of Civil Procedure and was barred by the Court’s earlier order from July 5, 2023. However, the Court didn’t find these arguments convincing and declined to consider them further when reiterated in subsequent papers.

    Instead, the Court indicated its intention to focus on the substantive claims presented within the motion to strike.

    Film Finance and Distribution Expert Witness

    Rob Aft has substantial experience in the film and television business, with a particular focus on copyright ownership. For the past fifteen years, he has worked as the “main film consultant/lecturer for the UN’s World Intellectual Property Organization (WIPO).” He helps to organize and speaks at conferences around the world “on business topics related to film and TV.” He has written several books on copyright directed at professionals working in the film and TV industry. He has also been engaged as an expert in cases “involving COT [chain of title] and proper licensing of derivative works on multiple occasions.” All told, his experience in the “film finance/production/distribution industry” exceeds 33 years. Aft has also worked as an “independent financial consultant” and has run sales “at a number of independent production/distribution companies.” Aft’s previous work experiences have included “the negotiation of distribution agreements with major studios, revenue projection, contract negotiation/drafting and dispute resolution.” Id. He was also “very involved in the development and acquisition of content for sale, including chain of title . . . review.”

    Discussion by the Court

    In the evaluation of substantial similarity between the Plaintiff’s and Defendant’s works, the legal process involved a two-part test. The first part, termed the extrinsic component, focused on assessing the likeness between the Defendant’s work and the protectible elements within the Plaintiff’s work. This assessment was distinct from the probative similarities evaluation, specifically considering only the protectible elements while filtering out the non-protectible ones.

    The extrinsic test employed an objective approach, examining specific expressive elements such as plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in both works. Notably, the Court clarified that, at this stage of the litigation, its assessment was solely centered on whether the extrinsic test for substantial similarity had been met.

    Furthermore, the Court highlighted the varying significance of expert testimony in cases of substantial similarity. It acknowledged that while an expert’s opinion could be particularly beneficial in some instances, in this specific case, which involved works targeting a general audience and dealing with easily understandable subject matter, expert testimony was deemed less critical. Both the Plaintiff’s and Defendant’s works were categorized as aiming at a broad audience and addressing subject matters comprehensible to the ordinary person, thus diverging from cases where expert testimony would hold greater relevance.

    Expert testimony  is admissible pursuant to Federal Rule of Evidence (“FRE”) 702 if it is helpful and reliable. Pursuant to FRE 702, a witness may offer an expert opinion only if they draw on some special “knowledge, skill, experience, training or education to formulate that opinion.”

    In the legal proceedings, the Defendants contested Aft’s qualifications as a literary expert. Both parties referenced a precedent set by the Court in the case of Gable v. Nat’l Broad. Co., where the Court excluded an expert report by David Nimmer, acknowledged as an “expert in the field of copyright law,” due to limitations in Nimmer’s ability to perform a literary analysis of two fiction works.

    The Court in Gable highlighted a crucial flaw in relying on Nimmer’s expertise for commenting on substantial similarity. It noted that despite Nimmer’s impressive legal credentials, there was a lack of evidence indicating his experience, knowledge, training, or education in the literary field. The absence of indications that Nimmer had worked in capacities such as film criticism, publishing, teaching English, editing, directing, writing fiction, or engaging extensively with literary works led the Court to conclude that his expertise did not extend to providing an expert literary analysis.

    The Court acknowledged that while comparing two fiction works might not demand highly technical skills and could be conducted without specific training, offering an expert literary analysis required some form of demonstrated experience or involvement in watching, reading, writing, comparing, or analyzing literary works, which Nimmer lacked.

    Defendants contested Aft’s credentials, paralleling the accusation made against David Nimmer in the Gable case, highlighting the absence of specific literary qualifications in Aft’s background. They argued that Aft lacked formal education or training in literature, comparative literary analysis, or creative professions like writing for film or television.

    In response, the Plaintiff asserted Aft’s extensive experience of 34 years involving the review, analysis, and comparison of numerous scripts, films, and literary works. They emphasized Aft’s role in advising on similarities between literary pieces in various professional contexts, such as evaluating Errors and Omissions coverage for film projects, providing opinions on chain of title, and advising on literary endeavors.

    The Plaintiff’s reliance on a specific language excerpt from the Gable case lacked important context. They argued that because Nimmer hadn’t alleged certain relevant facts, his testimony’s inability to be considered on substantial similarity was evident. However, the Court clarified that highlighting the absence of these crucial facts didn’t inherently imply that presenting such facts would have met the required standard for expertise. The Court indicated that to qualify as a literary expert, Aft needed to demonstrate expertise in literary analysis or writing akin to the illustrative examples listed in Gable.

    Upon scrutinizing Aft’s qualifications, the Court found the assessment less straightforward than in the Gable case. While Aft boasted over three decades of experience in the finance/production/distribution industry, these roles didn’t involve writing, instructing writing, or literary analysis. Nonetheless, the Plaintiff argued that Aft’s extensive experience in reviewing, analyzing, and comparing thousands of scripts and literary works over the years validated his qualifications as an expert in the field.

    In referencing the Counts v. Meriwether, 2015 U.S. Dist. LEXIS 173790, the Court acknowledged two experts, Mark Rose and Kathryn Arnold, as qualified to offer substantial similarity analysis. Rose held a Ph.D. in English literature, had extensive teaching experience, published books on literary subjects, and had been retained as a copyright infringement expert multiple times. Arnold, having worked in script development and reviewed numerous scripts, was also deemed qualified.

    In contrast, while recognizing Aft’s substantial experience in the entertainment industry involving various roles like negotiating agreements, assessing risks of production loans, and dealing with copyright elements, the Court aligned with the Defendants’ analysis. The Court reasoned that mere extensive script review, a common aspect of the film industry, wasn’t sufficient to qualify Aft as an expert on substantial similarity.

    The Court emphasized that relying solely on years of experience in the entertainment industry to define expertise would undermine the gatekeeping function of standards like FRE 702. It highlighted that the case didn’t necessitate expert opinion significantly and concluded that Aft’s qualifications didn’t meet the criteria for expertise on substantial similarity.

    Clarifying its decision, the Court explained that it didn’t base its conclusion on whether Aft specifically specialized in performing substantial similarity analyses for copyright infringement. Rather, the decision stemmed from Aft’s lack of expertise in the craft of writing or the field of literary analysis. The ruling, therefore, centered on Aft’s insufficient relevant qualifications rather than a blanket exclusion of expert testimony.

    The Defendants contested the admissibility of Aft’s report, alleging that he didn’t apply the Ninth Circuit’s extrinsic test for substantial similarity. This test mandates filtering out unprotectable elements before comparing the works in question.

    The Court acknowledged that Aft’s description of performing the extrinsic test was brief and somewhat implied. Aft indicated that he reviewed other films in the same genre to identify common tropes or scenes, outlining specific similarities between the Plaintiff’s and Defendants’ works that weren’t present in other films he reviewed within the genre. Although the analysis was concise, the Court highlighted that brevity alone didn’t render an expert report deficient.

    While Aft’s report primarily focused on countering the Defendants’ portrayal of the works, the Court refrained from concluding that Aft hadn’t conducted a substantial similarity analysis. Despite the emphasis on rebutting the Defendants’ characterization, Aft’s report centered on comparing elements that he deemed protectible, indicating an implicit filtering out of those elements he considered unprotectable. The Court noted that “a comparison that includes both unprotectible and protectible elements is invalid under the extrinsic test and is legally irrelevant” renders an expert report inadmissible which was not the case with Aft’s report. But that did not not change the Court’s finding that Aft is not qualified to offer an expert opinion on that analysis.

    The ongoing dispute between the parties regarding the usefulness of Aft’s report echoes their prior arguments about his qualifications and adherence to the Ninth Circuit’s extrinsic test for substantial similarity. The Court reiterates its stance on the limited value of expert testimony in cases where works are aimed at a general audience and deal with easily comprehensible subject matter.

    While acknowledging the marginal potential usefulness of expert testimony, the Court underscored a particularly unhelpful aspect of Aft’s report. A substantial part of Aft’s declaration delved into what he termed a “practical question” concerning the risk of a lawsuit related to licensing underlying rights. He posed a hypothetical scenario wherein the Plaintiff pitched her work in a world where the Defendants’ work already existed, concluding that a production company interested in the Plaintiff’s work should expect a lawsuit. However, the Court deemed this portion irrelevant and unhelpful to the substantial similarity analysis.

    Highlighting that the consideration of the likelihood of litigation wasn’t within the scope of the extrinsic analysis of substantial similarity, the Court concluded that this section of Aft’s report complicated matters by venturing beyond the necessary focus of the analysis.

    Held

    The Court granted Defendants’ request to strike the declaration of Plaintiff’s expert Rob Aft.

    The Court has not arrived on an outcome for this case since the remaining issues involved in this case still await resolution.

    Key Takeaways:

    In this case, the Court delved into the qualifications and relevance of expert testimony, particularly regarding substantial similarity analysis. It scrutinized experts’ backgrounds to ascertain their eligibility to provide such analysis, emphasizing the need for expertise in literary analysis or writing for individuals to qualify as literary experts in these evaluations. The Court highlighted that having a career in the entertainment industry or reviewing scripts, while valuable, might not suffice for expert opinion on substantial similarity. It stressed the importance of specific expertise in literary analysis or writing for these cases. Additionally, the Court evaluated whether experts adhered to the Ninth Circuit’s extrinsic test for substantial similarity, emphasizing the focus on protectible elements and the implicit filtering of unprotectible elements in expert reports. The Court noted that expert testimony might hold limited value in cases involving works aimed at broad audiences and dealing with easily understandable subject matter, questioning the necessity and relevance of such testimony in these instances. Furthermore, the Court highlighted the importance of keeping expert testimony within the scope of the extrinsic analysis of substantial similarity, as deviation into irrelevant areas could render portions of an expert report irrelevant to the legal analysis. Ultimately, the decision underscored the need for specific expertise in literary analysis or writing for offering expert opinions on substantial similarity, as well as the significance of keeping expert testimony focused on relevant aspects of the legal analysis.

  • Evidence of Causation Necessary to Support Damages Theory; Court Limits Clashing Expert Testimony on Economic Damages

    Evidence of Causation Necessary to Support Damages Theory; Court Limits Clashing Expert Testimony on Economic Damages

    This copyright infringement case was brought by JBrick, LLC (“JBrick”) against Chazak Kinder, Inc., Chazak Distribution, Inc., Marav USA LLC, and Yaacov Schwartz (collectively “Defendants”) in the United States District Court for the Eastern District of New York. JBrick alleged that the Defendants infringed on their copyright for a lego model of the Second Holy Temple by creating and selling a similar product.  

    JBrick was established in 2014 by Yitzchok and Channie Kasowitz with the goal of creating Jewish-themed custom lego sets, one of which was an accurately scaled lego model of the Second Holy Temple. In November 2018, Kasowitz displayed JBrick’s completed Second Holy Temple model at a convention where he met Defendant Schwartz. Shortly thereafter, Defendants began selling a model that JBrick alleged was nearly identical to their copyrighted Second Holy Temple model. 

    In May 2021, JBrick filed a complaint against the Defendants for copyright infringement. On April 25, 2022, Plaintiff filed its second amended complaint. On August 19, 2022, the parties completed expert discovery. JBrick hired a damages expert, Michael D. Pakter, to calculate the actual damages suffered by JBrick and any profits earned by the Defendants that were attributable to the alleged infringement. The Defendants retained their own rebuttal expert on damages, Trevor McClain-Duer.  Plaintiff moved to exclude certain of McClain-Duer’s opinions and testimony in response.

    After discovery concluded, the Defendants filed a motion to strike the expert opinions of Pakter. Specifically, Defendants had raised several objections to Pakter’s opinions. These objections included his assertion that Plaintiff would have sold an equal number of the copyrighted set as Defendants sold of the accused product, his claim that damages should encompass the Temple Mount Product and the unsold inventory of the Temple Mount Product, his evaluation of Defendants’ profits from the allegedly infringing product, and his suggestion that “JBrick can recover both its lost profits and a disgorgement of Defendants’ profits.” During that time, Plaintiff had maintained that Pakter’s opinions were grounded in “complex but transparent calculations” designed to help the jury comprehend the financial aspects underpinning the damages asserted in the case. 

    Accounting Expert Witnesses 

    Michael D. Pakter is a certified public accountant, registered and licensed in the State of Illinois, with over 40 years of experience in accounting and forensic accounting. He holds a Bachelor of Commerce and a Bachelor of Accountancy from Witwatersrand University, in South Africa. The American Institute of Certified Public Accountants has recognized him as “Certified in Financial Forensics” and as a “Chartered Global Management Accountant.” He has earned several other certifications including as a “Certified Valuation Analyst” and “Master Analyst in Financial Forensics” from the National Association of Certified Valuators and Analysts, and as a “Certified Insolvency and Restructuring Advisor” from the Association of Insolvency and Restructuring Advisors. Michael Pakter has over 20 years of experience in determining economic damages and performing business valuations. He is currently the Managing Member of Gould & Pakter Associates, LLC (“G&P”). He was retained on account of his extensive accounting experience to opine about the Plaintiff’s damages assuming Defendants’ liability. 

    Trevor McClain-Duer is a certified public accountant, registered and licensed in the State of Illinois. He holds a Bachelor of Business Administration from the University of Notre Dame and a Master’s Degree in Accounting from Ohio State University. He is a Chartered Financial Analyst with over 15 years of experience in valuation and determining economic damages. He is currently the Director of Valuation at Caliber Advisors, Inc., an expert valuation and economic consulting firm.  

    Discussions by the Court 

     The Court first examined Pakter’s qualifications and found he had significant accounting and damages calculation experience to serve as an expert on economic damages. Turning to the reliability of Pakter’s opinions, the Court addressed four disputed aspects of his testimony. 

    First, it denied striking Pakter’s opinion that JBrick would have sold an equivalent number of temple models as Defendants, despite the price difference between the products. Pakter had suggested that, assuming the Defendants’ liability, one possible method for calculating actual damages was to consider “JBrick’s lost profits for its Holy Temple product.” This calculation involved assuming that Plaintiff would have made all or various fractions of the infringing sales that Defendants had made. However, the Defendants had raised objections to this calculation, deeming it speculative. They pointed out a significant disparity in the sale price between the two products, with Plaintiff’s Second Holy Temple Product priced at $613 compared to the Defendants’ allegedly infringing product priced at $60. 

    Nonetheless, it was argued that nothing indicated that Pakter’s conclusion, which suggested that Plaintiff would have sold an equal number of its Second Holy Temple Product as Defendants, was so unrealistic or contradictory as to imply bad faith on his part. 

    Second, Plaintiff contended that its Second Holy Temple Product and a second product known as the “Temple Mount Product” were “directly related.” Consequently, they argued that Pakter could factor in the lost sales of the Temple Mount Product when calculating Plaintiff’s damages. The Temple Mount Product was designed to complement and enhance the educational value of the Second Holy Temple Product. Court determined that while such a damages theory was not inconceivable, the Plaintiff had failed to provide credible evidence of a clear relationship between the sales of the two products absent evidence of lost customers or canceled orders for the Temple Mount Product as a direct result of the alleged infringement. 

    Third, Defendants argued that Pakter’s calculation of their profits was not reliable. They pointed out that his use of a “per unit cost” figure and his failure to account for the total loss of 300 products donated by Defendants to charity were issues of concern. In response, the Plaintiff had maintained that Pakter’s methodology was indeed reliable. According to the Plaintiff, the core of the dispute between the parties revolved around whether profits and costs should be calculated on a per-unit bought-and-sold basis or based on all products manufactured at one time and the decisions made by the Defendants regarding the disposition of those products. Court held that the Defendants showed no authority proving Pakter’s approach was unreliable. At most, the parties disagreed on the appropriate profit analysis, weighing on Pakter’s credibility rather than admissibility. The Court ruled the jury should resolve this battle of the experts. 

    Fourth, Defendants argued that Pakter had inappropriately opined that the Plaintiff should be entitled to profits from Chazak’s downstream distributors. Furthermore, the Defendants had contended that Pakter’s opinion was based on the premise that the Plaintiff could not only recover for Chazak’s alleged infringement but also claim downstream profits resulting from the same alleged infringement of a single product. 

    However, the Court had determined that in cases where two or more individuals were involved in or contributed to a single infringement, they were all jointly and severally liable. In such instances, within a single infringement action, only a single set of statutory damages could be considered. This was because the Copyright Act allowed for only a single recovery for a single sale, and the Court’s decision addressed the issue of multiple parties and liability in the context of copyright infringement. 

    Plaintiff had sought the exclusion of specific opinions and testimony from McClain-Duer. Their basis for this exclusion request rested on the assertion that McClain-Duer lacked the qualifications to provide expert opinions on three key aspects: (i) the size of the market for JBrick’s Second Holy Temple Product; (ii) “price-point comparisons” related to the Second Holy Temple Product; and (iii) JBrick’s manufacturing capabilities. 

    In response to this request, the Defendants had argued that McClain-Duer was functioning as a rebuttal expert. His role was primarily focused on identifying deficiencies in Pakter’s report, specifically highlighting the Plaintiff’s failure to establish, using competent evidence, the size of the market for the Second Holy Temple Product and the manufacturing capabilities of JBrick. This dispute had centered on the qualifications and role of McClain-Duer in the case. 

    The Court found McClain-Duer qualified as an expert on economic damages but lacking in foundation to opine on the size of the market for JBrick’s product or its manufacturing capabilities. McClain-Duer was capable of identifying deficiencies in Pakter’s report. However, he was not qualified to go further and provide an opinion based on research indicating that lego branded sets from popular movies and TV shows sold for significantly less, indicating an insufficiently large market for the Temple product. Similarly, while McClain-Duer could point out that Pakter’s calculations assumed that the Plaintiff could have produced and sold over 15 times the number of sets he actually sold during the same time period, he lacked the qualifications to opine that the Plaintiff did not have the product manufacturing capabilities or capacity to manage such a significant increase in sales. This was because McClain-Duer did not possess the necessary expertise in the field more closely aligned with this opinion, which would be industrial engineering. 

    Therefore, the Court struck McClain-Duer’s testimony regarding the potential market for JBrick’s temple model, comparisons to other lego prices, and JBrick’s ability to meet higher production levels. It found these opinions exceeded McClain-Duer’s economic damages expertise and amounted to advocacy without qualification.  

    Court excluded the portions of Duer-McClain’s report and testimony purporting to describe the size of the market for JBrick’s Second Holy Temple Product, “price-point comparisons” related to the Second Holy Temple Product, and JBrick’s manufacturing capabilities. 

    Held 

    The Court granted in part and denied in part the Defendants’ motion to strike the opinions of Michael Pakter, and granted the Plaintiff’s motion to strike certain opinions and testimony of Trevor McClain-Duer.  The Court has not arrived on an outcome for this case since the remaining issues involved in this case still await resolution. 

    Key Takeaways 

    This case demonstrates the importance of scrutinizing the scope and reliability of expert witness testimony through Daubert motions. The Court served a gatekeeping role to restrict expert opinions to only what the witness was qualified to offer and exclude speculative or unsupported theories. 

    For Pakter, most of his damages calculations passed muster as grounded in reasonable methodology for the jury to assess. However, his assumption of losses on a non-infringed product went too far without evidence of causation. This highlights how courts will strike expansive expert opinions that lack factual support in the record.  

    Meanwhile, for McClain-Duer, his opinions on the size of the market for the Second Holy Temple Product and manufacturing capability of the Plaintiff required demonstration of expertise in the field more closely aligned to such opinions. This shows how rebuttal experts cannot provide opinions that go beyond the scope of their own expertise. 

    In summary, this case reinforces the principles that expert testimony must stay within the witness’s area of specialized knowledge and have a reliable factual basis.

  • Court admits image valuation and consumer perception theories with regard to the model and talent industry provided by the Plaintiff’s experts in copyright infringement suit

    Court admits image valuation and consumer perception theories with regard to the model and talent industry provided by the Plaintiff’s experts in copyright infringement suit

    Lopez v. Meyers’ G.M. Enters., Inc. was a copyright infringement case decided in the United States District Court for the Western District of Wisconsin on September 12, 2023. The Plaintiffs were models whose photographs were used without authorization in promotional materials by the Defendants, two businesses operating as Cajun Club. The Plaintiffs filed a motion to allow certain witnesses to testify via video conference at the upcoming trial. The Defendant filed two Daubert motions in limine seeking to exclude the expert testimony of the Plaintiffs’ witnesses, Stephen Chamberlin and Thomas Maronick. 

    Regarding the Plaintiffs’ motion for remote testimony, the Court reserved ruling pending more information from the parties. The Court acknowledged the general rule requiring in-person testimony under Rule 43(a), but also noted possible unique circumstances of this case where the Defendants’ unauthorized use of the Plaintiffs’ images may call for allowing remote testimony. However, the Court required the Plaintiffs to provide more details on which Plaintiffs intended to testify, the necessity of their testimony, and additional legal authority supporting remote testimony.

    Image Valuation Expert Witness

    Stephen Chamberlin holds a Bachelor of Laws and Economics degree from the University of New South Wales, which he completed in 1984. He has over 30 years of experience working full-time in the model and talent industry. Chamberlin is currently associated with Premier International Model Management as an international agent and negotiation director. He previously served in leadership roles at prominent talent agencies including LA Models Management, Warning Management Inc., and Michele Pommier Models. Chamberlin has also represented high-profile celebrity models and talent including Tyra Banks, Claudia Schiffer, and Paris Hilton.

    Marketing Expert Witness

    Thomas Joseph Maronick holds a Juris Doctor degree from the University of Baltimore School of Law, with an emphasis on corporate, business and consumer law. He is a member of the Maryland Bar. He also earned a Doctor of Business Administration degree from the University of Kentucky, as well as a Master of Science in Business Administration from the University of Denver, having majored in marketing.

    Maronick is an Emeritus Professor of Marketing at Towson University College of Business and Economics, where he taught marketing, strategy, and research courses from 1987 to 2017. He previously held faculty positions teaching marketing at the University of Baltimore School of Business and Virginia Commonwealth University.  Additionally, Maronick worked as the Director of the Office of Impact Evaluation at the Federal Trade Commission from 1980 to 1997. Since 1997, Maronick has worked as a marketing consultant and expert witness. He has provided expert services in over 150 cases involving consumer litigation, advertising, trademarks, and survey research.

    Discussions by the Court

    The Court then analyzed the Defendant’s motions in limine in sufficient detail under the Daubert standard and Rule 702.

    For Stephen Chamberlin, the Defendant argued he was unqualified to provide an objective estimate of the value of the photographs because as the Plaintiffs’ agent, his role was to secure the highest possible price. The Defendant also asserted Chamberlin lacked experience pricing specific images in the adult entertainment industry and did not have a marketing degree. Additionally, the Defendant contended Chamberlin improperly inflated his calculations by using Plaintiffs’ highest paying previous jobs with organizations offering significantly more public exposure than Cajun Club. Defendant also appeared to argue Chamberlin improperly multiplied the damages as well. 

    In response, the Plaintiffs stated Chamberlin’s extensive experience as a models’ agent qualified him to testify on the value of the photographs. They contended he reliably applied industry principles to the Plaintiffs’ situation. The Plaintiffs argued Chamberlin’s testimony would help determine fair market value because negotiating modeling jobs requires specialized skills.

    The Court found Chamberlin passed the Daubert test, except for the multiplier issue. Chamberlin’s 30 years of experience representing over 3000 models established he was qualified to testify on image value. The Court stated Chamberlin’s role negotiating for models demonstrated his industry knowledge, making him qualified despite the Defendant’s bias argument. The Court noted Chamberlin’s valuation methodology was well-explained. He based the hypothetical day rate on factors like Plaintiff models’ desirability, work history and the nature of the business seeking her services to calculate the day rate. However, some of the sample contracts used by Chamberlin, presumably as a basis for calculating a day rate, involved photoshoots that lasted longer than one day which, in turn, could lead to an overestimation of the Plaintiffs’ payment history for one-day photoshoots, though the Defendant could address the same through cross-examination. 

    The Court explained Chamberlin reliably identified four categories of “use” including advertising, social media, branding and coupon/third party that influenced costs beyond the day rate. While the Defendant cited cases excluding Chamberlin, the Court found them factually distinct. Chamberlin’s methodology here was laid out sufficiently to be admissible, though the Defendant could still challenge it on cross-examination. The Court denied excluding Chamberlin overall but reserved in part judgment as to Chamberlin’s use of a multiplier pending further explanation.

    For Thomas Maronick, the Defendant argued his survey had flawed methodology because it did not use the actual promotional materials, omitted Plaintiff Brenda Geiger, and lacked respondent recruitment details. The Defendant asserted the survey was further flawed because respondents could not identify the models and ambiguous terms like “events” and “ads” were used. 

    The Plaintiffs responded that the survey did use Cajun Club’s actual materials and pictures of Geiger. They stated Maronick described the internet panel recruitment method. The Plaintiffs argued any lack of an open-ended name identification question only went to the weight of the survey rather than its admissibility. They contended the terms “events” and “ads” were accurate.

    The Court found Maronick qualified as a marketing expert and professor. It determined he reliably applied this experience in designing the survey, which included Defendant’s materials and Geiger. The Court stated Maronick’s description of using an internet panel for recruitment was sufficient, with the details only going to weight not admissibility. Similarly, the Court found the lack of an open-ended identification and term choices were issues of weight for the jury to consider, not grounds for exclusion. Finally, the Court concluded the survey would assist the jury in determining whether Cajun Club used the pictures in a manner that is likely to cause confusion. For these reasons, the Court denied the motion to exclude Maronick.

    Held

    The Court reserved ruling on remote witness testimony, denied the motion to exclude Chamberlin but reserved in part its ruling on the multiplier issue, and denied the motion to exclude Maronick’s survey methodology.

    The Court has not arrived on an outcome for this case since the remaining issues involved in this case still await resolution.

    Key Takeaways

    This case demonstrates that courts serve a gatekeeping function in screening expert witness testimony for relevance and reliability under Rule 702 and Daubert. Experts must be qualified, use reliable principles and methods, and provide testimony that assists the trier of fact. However, the admissibility threshold is meant to be liberal, with rigorous cross-examination as the appropriate tool for scrutinizing “shaky but admissible evidence.” 

    For expert Chamberlin, the takeaway is that extensive industry experience may establish qualifications to opine on specialized practices like image valuation. His method of calculating a hypothetical negotiation value based on prior work was deemed sufficiently reliable here considering the hypothetical was only necessary because of Defendant’s violation of copyright law.

    For expert Maronick, the takeaway is that reasonable survey methodology focused on consumer perceptions can assist the trier of fact despite its shortcomings. Specific critiques often go to the weight of survey evidence rather than preclusion.

    Overall, this case illustrates courts’ role in filtering unreliable principles and methods, but permitting testimony where an expert meets basic reliability and assists the trier of fact. Rigorous cross-examination is still vital for scrutinizing weaknesses.

  • California Court admits the testimony of film and television industry experts in copyright infringement action 

    California Court admits the testimony of film and television industry experts in copyright infringement action 

    This case involved claims of copyright infringement brought by WMTI Productions, WMTI Productions North, and The Next Season Company (Plaintiffs) against Kevin Healey, Propagate Content, and unnamed Does (Defendants). Plaintiffs alleged that certain episodes of Defendant’s shows Prank Encounters and Double Cross infringed on certain episodes of Plaintiff’s show Scare Tactics.

    Specifically, Plaintiffs alleged the following episodes infringed:

    • Prank Encounters “Camp Scarecrow” infringed Scare Tactics “Camp Kill”
    • Prank Encounters “Face Fears” infringed Scare Tactics “My Heart Belongs to Misery”
    • Prank Encounters “End of the Road” infringed Scare Tactics “Road Kill”
    • Prank Encounters “Split Party” infringed Scare Tactics “Send in the Clowns”
    • Prank Encounters “Graveyard Shift” infringed Scare Tactics “Bicentennialien”
    • Double Cross “Open House” infringed Scare Tactics “Room with a View”

    Defendants filed a motion for summary judgment arguing there was no genuine dispute of material fact on liability or damages. They also filed motions to exclude the testimony of Plaintiff’s proposed expert witnesses on liability (Paul Jackson) and damages (Tyler Massey).

    Film and Television Industry Experts

    Paul Jackson is a highly experienced film and television writer-producer, having worked in the industry since 1988. He has been a member of the Writers Guild of America since 1988, writing and producing numerous television series over his 30+ year career. His credits include serving as Executive Producer, Co-Executive Producer, Supervising Producer, and Consulting Producer on shows like Lois and Clark, Sliders, Charmed, She Spies, and When Calls the Heart. Since 1992, Jackson has arbitrated writing credits for the Writers Guild, which involves closely analyzing scripts and stories to determine the creative contributions of different writers. Through this work and his extensive experience as a “Writer-Staff” Producer, Jackson has developed expertise in comparing scripts and assessing similarities between stories, characters, sequencing, settings, and other elements. In this case, he was retained to analyze the alleged substantial similarities between Plaintiff’s Scare Tactics episodes and Defendant’s Prank Encounters and Double Cross episodes. Jackson provided detailed plot, character, sequence, setting, and mood comparisons between these works in his expert report, given his qualifications to conduct such analysis based on his 30+ years as a professional television writer and producer.

    Tyler Massey has over 20 years of experience in the film and television industry, including roles in international content distribution, acquisitions, licensing, and financial analysis. He has negotiated hundreds of deals for formats, finished productions, and media rights across broadcast, cable, SVOD, and AVOD platforms. Massey has extensive expertise in market valuation, revenue forecasting, and cost apportionment for television programming. He has worked for production companies, studios, and distribution firms, evaluating content sales strategies and revenue projections. In this case, Massey provided a damages analysis regarding lost revenues and brand value for Scott Hallock/WMTI based on alleged infringement and substitution of Defendant’s shows for a reboot of Scare Tactics. His industry experience qualifies him to opine on these matters.

    Discussions by the Court

    The Court denied Defendant’s motion for summary judgment on liability. The Court found there was a genuine dispute of material fact regarding substantial similarity under the extrinsic test, which looked at objective criteria like plot, themes, characters, etc. Plaintiff presented evidence about the selection and arrangement of unprotectable elements that could constitute an original work. The Court rejected Defendant’s argument that Plaintiff failed to properly invoke a selection and arrangement theory and found the allegations in the complaint gave adequate notice.

    The Court also denied summary judgment on damages. It found that Plaintiff presented evidence which supported at least some of their claimed damages categories tied to lost opportunities to monetize Scare Tactics due to the existence of Prank Encounters. For example, evidence indicated Netflix declined to exercise an option to produce new Scare Tactics episodes because its needs were satisfied after having acquired Prank Encounters around the same time.

    Defendant sought to exclude the expert opinions and testimony of Tyler Massey, Plaintiff’s proffered damages expert, on several grounds. First, Defendant asserted that Massey’s damages calculations had no relation to Plaintiff’s infringement allegations because he analyzed harm to the overall Scare Tactics format rather than damages resulting specifically from infringement of the six copyrighted segments at issue. However, the Court found that damages to the value of the broader Scare Tactics series were recoverable under 17 U.S. Code § 504, which allowed recovery for any harm caused by the infringement, not just harm to the intrinsic value of the copyrighted work. Second, Defendant argued that Massey’s testimony was unreliable because it relied on layers of speculation, including assuming Scare Tactics would have been rebooted if not for the existence of the show Prank Encounters. But the Court noted that assumptions are a necessary part of any damages calculation given the counterfactual nature of a world without infringement. As long as the assumptions were reasonable and grounded in evidence, any flaws went to the weight of Massey’s testimony rather than its admissibility. Third, Defendant sought to preclude Massey from opining on substantial similarity between the works accused of infringement and the asserted copyrighted works, an issue on which he lacked expertise. The Court agreed Massey could not offer his own opinion on similarity, but he could calculate damages based on the assumption that the works were substantially similar. Fourth, Defendant moved to exclude one category of Massey’s damages related to infringement of a wholly unrelated work, Joke’s On You, which seemed to stem from a settlement agreement rather than any copyright violation alleged in the case. Since this category did not arise from the claimed infringement, the Court excluded it. Aside from this one category, the Court otherwise denied exclusion of Massey’s damages calculations and held his assumptions and speculation permissible bases for expert testimony.

    Defendant separately sought to exclude the expert testimony of Paul Jackson, Plaintiff’s proposed witness on the similarities between the copyrighted Scare Tactics episodes and those of Defendant’s shows. Defendant argued Jackson failed to apply the extrinsic similarity test because he did not filter out non-expressive, unprotected elements before analyzing the works’ similarities. According to Defendant, this rendered Jackson’s opinion unreliable and unhelpful. However, the Court noted that wholesale filtering was not required under the selection-and-arrangement theory pursued by the Plaintiff, and in any event, Jackson’s similarity analysis methodology was valid and helpful to the factfinder. Which elements were protectable and which were unprotected scenes-a-faire was a factual issue for the jury to decide; Jackson could present his overall analysis, while Defendant could provide their own contradicting evidence on unprotected elements. Thus, Jackson’s failure to filter did not warrant exclusion but simply went to the weight the jury should accord his opinion. Defendant remained free to cross-examine Jackson and argue his testimony should receive little weight. But the Court denied exclusion of Jackson’s similarity analysis wholesale, finding his methodology sufficiently reliable despite the lack of filtering.

    Held

    The Court largely denied Defendant’s motion to exclude Plaintiff’s damages expert Tyler Massey, finding his assumptions and speculative damages calculations were permissible bases for expert testimony. The only exclusion was one category of damages unrelated to the asserted copyrights. Regarding Plaintiff’s liability expert Paul Jackson, the Court wholly denied Defendant’s motion to exclude his substantial similarity analysis. Despite Jackson’s failure to filter out unprotected elements, the court found his similarity analysis methodology was reliable and helpful to the factfinder. Any flaws in his approach went to the weight of Jackson’s testimony rather than its admissibility. Thus, aside from one minor carveout, the Court denied exclusion of the expert analyses of both Massey and Jackson. The Court has not arrived on an outcome for this case since the remaining issues involved in this case still await resolution.

    Key Takeaways

    • The motion to exclude the expert testimony of Paul Jackson in regards to substantial similarity was denied by the court as his methodology was reliable despite failing to differentiate the unprotected elements. The flaws in the methodology of Jackson raised issues for cross-examination and not for exclusion. 
    • The motion to exclude the expert testimony of Tyler Massey was partially denied. Massey was permitted to make assumptions in relation to the calculation of hypothetical damages. Massey was prohibited from providing opinions in relation to substantial similarity, as he lacked expertise. The damages unrelated to the asserted copyrights were excluded from the testimony of Massey. 
    • Disagreements or flaws regarding the expert testimony are often ruled to go to the weight of the testimony rather than admissibility. 

    In summary, the key takeaways are that  disagreements and questionable methodology choices generally should not be the grounds for the wholesale exclusion of the expert. In such scenarios, the court favors cross-examination and contrary evidence to address the flaws in the testimony of the expert.