Court: United States District Court for the District of New Jersey
Case Name: Air Express International v. Log-Net, Inc.
Citation: 2017 U.S. Dist. LEXIS 142220
In a case involving a software licensing agreement, it was determined that an expert qualified in database reconstruction may not opine on copyright infringement issues if not qualified as a copyright expert.
This case involved a dispute between plaintiff Air Express International (DHL) and defendant Log-Net, Inc. which arose from the terms of a software agreement. The case came before this court on several motions filed by the plaintiff including one to exclude the defendant expert’s testimony.
In February 2008, the defendant and the plaintiff entered into a 3-year Master License and Subscription Agreement. The agreement created a licensing structure based on both software deployment and concurrent user access. The licenses permitted only the plaintiff and its customers to access Log-Net. The agreement expressly prohibited the plaintiff from attempting to change the nature of the software or to merge the related data into any other software.
This action began as a dispute regarding whether the agreement obligated the plaintiff to pay an annual subscription fee for each of its defendant’s licenses or not. The plaintiff contended that it had acquired a perpetual right to use Log-Net, and thus, was not required to pay subscription fees. The defendant asserted that subscription fees were a condition of the plaintiff’s access to Log-Net.
Arguments Advanced and Court’s Discussions
The plaintiff argued that permitting the defendant’s expert to testify as an expert witness as well a fact witness would confuse the jury. The court found that there was nothing wrong with providing dual testimony, and hence allowed the expert to provide testimony as both an expert and fact witness.
The plaintiff argued that the expert should not be able to provide expert testimony with respect to legal conclusions. The defendant agreed with the plaintiff’s “general principles of law” and argued that the court should rule on the issue during the trial where the plaintiff may object. The court found that excerpts from the defendant expert’s report appeared to reach legal conclusions.
Admissibility of Opinions on Copyright Infringement
The plaintiff argued that the expert should not be permitted to provide expert testimony on the issues of copyright infringement as he was not qualified to do so. The defendant argued that the expert was a database reconstruction expert but that he was not an expert on the issues of copyrights. In his deposition, the expert admitted that he did not consider himself an expert on issues relating to copyright infringement. Accordingly, the court found that the expert may not provide testimony with respect to copyright infringement. Rather, he was qualified as an expert in LOG-NET’ s database and database reconstruction.
The plaintiff’s motion to exclude the expert testimony was granted in part and denied in part.