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Infogroup, Inc. v. DatabaseUSA.com LLC

United States District Court, D. Nebraska

August 10, 2018

Infogroup, Inc., Plaintiff and Counterclaim-defendant,
v.
DatabaseUSA.com LLC, Defendant and Counterclaimant, Vinod Gupta, Defendant.

          MEMORANDUM AND ORDER

          JOHN M. GERRARD UNITED STATES DISTRICT JUDGE

         This matter is before the Court on defendants DatabaseUSA's and Vinod Gupta's (collectively, "DatabaseUSA") motions in limine, (filing 337, filing 406), Infogroup's motion in limine (filing 404), and Infogroup's motion to determine admissibility (filing 404). As set forth below, the Court will grant those motions in part, and deny those motions in part.

         I. INFOGROUP'S MOTIONS

          A. DatabaseUSA's Failure to Disclose its Damages Computations for its Counterclaims

         To begin, Infogroup objects to any "reference to monetary damages relating to [DatabaseUSA's] counterclaims." Filing 404 at 1. According to Infogroup, DatabaseUSA has yet to disclose any, much less sufficient, information concerning their purported monetary damages computation. And DatabaseUSA admitted that--at least as of the date of the hearing at the pre-trial conference--it had not, in fact, disclosed this information.

         DatabaseUSA was required to disclose "a computation of each category of damages claimed" in its initial disclosures. Fed.R.Civ.P. 26(a)(1)(A)(iii). DatabaseUSA was also required to supplement those disclosures if, at any point during discovery, the initial disclosure was no longer complete or correct. Fed.R.Civ.P. 26(e)(1)(A). And under Fed.R.Civ.P. 37(c)(1), exclusion of evidence not disclosed is appropriate unless a party shows that failure to comply with Rule 26(a) or 26(e) was substantially justified or harmless.

         To determine whether a failure to disclose was justified or harmless the Court considers four factors: (1) the importance of the excluded material; (2) the explanation for failing to comply with the disclosure rules; (3) the potential prejudice from allowing the material to be used at trial; and (4) the availability of a continuance to cure such prejudice. Citizens Bank v. Ford Motor Co., 16 F.3d 965, 966 (8th Cir. 1994). All the available factors weigh against DatabaseUSA--which offered the court no reason as to why it did not, or could not, disclose its computation of damages. In other words, DatabaseUSA's failure to disclose its counterclaim damages was neither substantially justified nor harmless. As such, the Court will grant Infogroup's motion in limine on this issue.

         B. Blake Van Gilder

         Infogroup seeks to exclude any and all "reference[s] to claims asserted against Blake Van Gilder, Infogroup or Koley Jessen P.C., L.L.O., or its attorneys, in DatabaseUSA.com, LLC's suit against Infogroup and Koley Jessen . . . ." Filing 404 at 1. Infogroup also seeks to preclude evidence of "Blake Van Gilder's non-felony criminal convictions or arrests, or his mental and emotional conditions and treatments."

         The Court will grant that motion in part, and deny that motion in part. In particular, Van Gilder's felony escape conviction is admissible under Fed.R.Evid. 609, but any reference to Van Gilder's other non-felony criminal convictions, arrests, mental health struggles, or the lawsuit will be precluded under Fed.R.Evid. 401 and 403.

         C. Adverse Jury Instruction

         Infogroup also moves to determine admissibility of evidence pertaining to the adverse jury instruction. To be clear, the Court will be giving an adverse jury instruction, but precisely how the Court will instruct the jury on the adverse inference is a matter the Court will take up with jury instructions. The Court will, however, provide the parties with some guidance as to the principles that will govern that instruction. To begin, the language of the adverse inference will not instruct the jury that they "must" determine that the destruction was intentional, nor will the jury be informed that the Court has found that the destruction was intentional. Instead, the jury will be allowed, but not required, to draw an adverse inference. See Stevenson v. Union Pac. R. Co., 354 F.3d 739, 750 (8th Cir. 2004).

         And that presumption is subject to reasonable rebuttal. Id. In other words, while the Court will not permit a complete retrial of the sanction during trial, it would be unfairly prejudicial--and amount to reversible error -- if DatabaseUSA were not allowed to put on some evidence as to why, in its view, this database not longer exists. Id. So, the Court will deny Infogroup's motion to the extent that Infogroup seeks a mandatory adverse inference: the adverse inference will be permissive.

         D. Testimony of Sue Gardner

         Infogroup moves to exclude the testimony of Sue Gardner, whom the defendants proffer as a copyright expert. Filing 404; see filing 405-2. Specifically, Infogroup asserts that Gardner is unqualified to opine on the matters to which her testimony is directed, that her methodology is not sufficiently reliable, and that her opinion includes legal conclusions that are not a proper subject for expert testimony. Filing 404 at 3-5. The Court agrees on each point.

         The opinion of a qualified expert witness is admissible if (1) it is based on sufficient facts or data, (2) it is the product of reliable principles and methods, and (3) the expert has reliably applied the principles and methods to the facts of the case. Fed.R.Evid. 702. The expert's scientific, technical, or specialized knowledge must also assist the trier of fact to understand the evidence or determine a fact in issue. Id.

         Those determinations, of course, depend upon the facts at issue. The elements of copyright infringement are (1) ownership of a valid copyright and (2) copying original elements of the copyrighted work. Cy Wakeman, Inc. v. Nicole Price Consulting, LLC, 284 F.Supp.3d 985, 990 (D. Neb. 2018). Copying can be shown either by (1) direct evidence, or (2) access to the copyrighted material and substantial similarity between the copyrighted work and the allegedly infringing work. Id. As the Court understands Gardner's proffered testimony, it does not implicate direct evidence (and, as explained below, the few opinions she does proffer that might relate to direct evidence are not appropriate expert testimony). So, her opinions relate to substantial similarity.

         Determination of substantial similarity involves a two-step analysis. Id. at 991. There must be substantial similarity both of ideas and of expression. Id. Similarity of ideas is evaluated extrinsically, focusing on objective similarities in the details of the works. Id. If the ideas are substantially similar, then similarity of expression is evaluated using an intrinsic test depending on the response of the ordinary, reasonable person to the forms of expression. Id. In other words, the Court must first consider whether the general idea of the works is objectively similar (the "extrinsic" portion of the test) and then determine whether there is similarity of expression (the "intrinsic" portion of the test). Id.

         As a general matter, expert opinion evidence may be admissible in connection with the first step of the substantial similarity analysis to show similarity of ideas. Hartman v. Hallmark Cards, Inc., 833 F.2d 117, 120 (8th Cir. 1987). But analytical dissection and expert opinion are not called for under the second step in which substantial similarity of expression is measured by a different standard-the response of the ordinary, reasonable person. Id.

         Gardner is the "Scholarly Communications Librarian" at the University of Nebraska-Lincoln. Filing 405-2 at 3. That job requires her to, among other things, advise patrons regarding copyright infringement, and occasionally to train faculty, staff, and students at UNL regarding copyright. Filing 405-2 at 3. Her educational experience includes graduate-level work in copyright from Harvard Law School. Filing 405-2 at 4. In addition, Gardner has graduate-level education in XML (a data markup language) instruction in research data management, and undergraduate education in computer programming. Filing 405-2 at 4. And she has extensive experience with database creation, in connection with library catalogs. Filing 405-2 at 4.

         To be clear: the Court has no reason to question Gardner's competency, or her expertise in either copyright law or databases. But her opinions about copyright law are not a proper subject for expert testimony, and her opinions regarding the parties' databases are primarily premised on evidentiary deficiency, which is also not a proper subject for expert testimony. But explaining that will require examining her opinions in more detail.

         1. Whether Infringement was Committed

         To begin with, Gardner was asked whether she had "an opinion regarding whether any infringement was committed by Database in any of the copyrights held by Infogroup and identified in the claims it asserts." Filing 405-2 at 12. Gardner answered that question by addressing three types of ...


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