The Use of Technical Experts in Software Copyright Cases: Rectifying the Ninth Circuit’s “Nutty” Rule

Intellectual Property and Copyright and Trademark

Article Snapshot


Shyamkrishna Balganesh and Peter Menell


Berkeley Technology Law Journal, Vol. 34, pp. 663-716, 2021


The Ninth Circuit has ruled that experts may not testify to help juries understand whether one computer program is similar to another. Ninth Circuit cases fail to properly assess software copyright violations.

Policy Relevance

The Ninth Circuit has ruled differently from other Circuits on this issue. The Supreme Court should establish a national rule.

Main Points

  • Since the 1980s, courts have almost always allowed expert witnesses to help juries understand software code in software copyright infringement cases.
  • Leading cases explain that the “ordinary observer” rule, which limits expert witnesses in copyright cases, was appropriate in cases involving novels, plays, and paintings; however, for computer programs, the trial court should have discretion to allow experts to testify as to whether two programs are substantially similar.
  • Ninth Circuit cases have failed to appreciate that an expert must help determine whether elements of a computer program are protectable under copyright law.
    • Elements are not protectable if they represent abstract ideas, or if they are in the public domain.
    • In the Ninth Circuit, juries may confuse the question of similarity with the question of protectability.
  • Shockingly, in Antonick v. Electronic Arts, Inc., the Ninth Circuit ruled that juries must assess the software code at issue without assistance from expert witnesses.
    • At trial, the jury found for the plaintiff after plaintiff’s expert presented substantial evidence that defendants directly copied plaintiff’s source code.
    • The trial judge overturned the verdict, misinterpreting case law on the role of experts in software cases.
    • On appeal, one judge referred to the rule barring experts in software cases as “nutty,” but the court upheld the trial court’s ruling.
  • The Ninth Circuit has since decided that expert testimony is allowable to help a jury understand the different between a play and a film.
  • Every court outside the Ninth Circuit has ruled that courts may permit technical experts to aid judges and juries in understanding computer code; the Supreme Court should take up this issue to ensure that experts may testify in software copyright cases nationwide.

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