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Distinguishing Mayor McCheese from Hexadecimal Assembly Code for Madden Football: The Need to Correct the 9th Circuit's ‘Nutty’ Rule barring Expert Testimony in Software Copyright Cases

89 Pages Posted: 27 Oct 2017  

Peter S. Menell

University of California, Berkeley - School of Law

David Nimmer

Irell & Manella LLP

Kevin Green

Hagens, Berman, Sobol & Shapiro LLP

Date Written: October 26, 2017

Abstract

Four decades ago, the Ninth Circuit ruled that expert testimony was inadmissible to determine whether Mayor McCheese and the merry band of McDonaldland characters infringed copyright protection for Wilhelmina W. Witchiepoo and the other imaginative H.R. Pufnstuf costumed characters. Since the emergence of software copyright infringement cases in the 1980s, substantially all software copyright cases have employed expert witnesses to aid juries in understanding software code. As the Second Circuit wisely recognized in Computer Associates Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 713 (2d Cir. 1992), the ordinary observer standard “may well have served its purpose when the material under scrutiny was limited to art forms readily comprehensible and generally familiar to the average lay person,” but as to computer programs, district courts must have “discretion . . . to decide to what extent, if any, expert opinion, regarding the highly technical nature of computer programs, is warranted in a given case.”

Yet in a shocking departure from the decisions of every other circuit that has confronted software copyright infringement litigation, the Ninth Circuit reaffirmed and applied an anachronistic bar on expert testimony — originating in Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977) — to all copyright disputes, including those involving highly technical works. Antonick v. Electronic Arts, Inc., 841 F.3d 1061 (9th Cir. 2016), holds that lay juries must decipher and analyze software code — in this case, hexadecimal assembly code for different processors — without the assistance of expert witnesses. The author of the Ninth Circuit’s Antonick decision called the rule that he was following “nutty.” This paper argues that Supreme Court intervention is required to crack open that nutty rule.

Keywords: Copyright, Computer Software, Expert Testimony, Evidence

Suggested Citation

Menell, Peter S. and Nimmer, David and Green, Kevin, Distinguishing Mayor McCheese from Hexadecimal Assembly Code for Madden Football: The Need to Correct the 9th Circuit's ‘Nutty’ Rule barring Expert Testimony in Software Copyright Cases (October 26, 2017). Available at SSRN: https://ssrn.com/abstract=3059854

Peter Menell (Contact Author)

University of California, Berkeley - School of Law ( email )

215 Boalt Hall
Berkeley, CA 94720-7200
United States

David Nimmer

Irell & Manella LLP ( email )

1800 Avenue of the Stars, Suite 900
Los Angeles, CA 90067
United States
310-277-1010 or (310) 203-7079 (Phone)

Kevin Green

Hagens, Berman, Sobol & Shapiro LLP ( email )

55 Cambridge Parkway, Ste 301
Cambridge, MA 02142
United States

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