United States District Court, D. Nebraska
MEMORANDUM AND ORDER
M. GERRARD UNITED STATES DISTRICT JUDGE
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.
DatabaseUSA's Failure to Disclose its Damages
Computations for its Counterclaims
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.
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.
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.
Blake Van Gilder
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
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.
Adverse Jury Instruction
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).
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.
Testimony of Sue Gardner
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.
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.
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
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).
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.
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
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.
Whether Infringement was Committed
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