You must know where you are going when deposing any expert, as the deponent will be intelligent, previously-deposed, and better versed in the subject than you. Copyright experts often prepare lengthy disclosures containing many opinions, challenging you to cover much in the allotted seven hours. This article is offered to help you meet that challenge.
Expert opinions will have been disclosed. Establish testimony in three areas: (1) the expertise supporting the disclosed opinions; (2) the methodology leading to those opinions, and (3) the facts underlying the opinions.
Typical Copyright Experts
There are often two opposing copyright experts: a technical expert to opine on infringement, and a financial expert to opine on calculating damages. This article discusses deposing the latter, whose financial opinions address the damages provisions in the Copyright Act.
To illustrate how to question this expert, let’s consider reasons he is there. A copyright plaintiff may recover statutory damages and attorneys’ fees if he registered within three months of first publication or prior to infringement. If not, he can still recover “actual” damages and disgorgement of profits attributable to infringement. “Actual damages” means what would have been charged to license the copying. Profits from infringement means gross revenue minus costs. The plaintiff must only prove gross revenue from the infringement. Defendants must prove costs. If the defendant accounts for revenue, but not costs, by product, an expert can help protect from the rule that a plaintiff proving the gross infringement revenue can obtain the entire gross revenues from the infringement if the defendant cannot prove the cost. An expert may opine that a portion of total operating costs can be attributed to the infringing product using accounting principles.
Using that example, let’s turn to your three goals.
Scope of Expertise.
Budget time carefully, maybe less than 25% in this area. Plan questions using the disclosure. Focus on eventual cross examination, as exclusion for lack of expertise is rare.
Move from education, career, publication and teaching toward the expertise specific to the opinions. Ask directly what the expertise is. Get clear admissions of limits of expertise on the record. Ask for all authoritative treatises on the area of concern—those cited in the expert disclosure, and any others.
Once limits to expertise are on the record, take a break to scan the disclosure for opinions the expert is not qualified to offer. If any, discuss them to see if the expert will admit lack of expertise. An experienced expert may be candid on such points. An admission on the record that an opinion is on the fringe of expertise may also be useful at trial.
Your second focus is the “scientific” methodology used to reach the disclosed opinions. Ask the expert to describe the disclosed methodology. Ask why that methodology was chosen. Ask about alternative methodologies. Ask what learned treatises support using the chosen method. Ask whether each treatise is “reliable authority” in the field. At trial, you may use the deposition transcript to establish the treatise is authoritative, then, as authorized by FRE 803(18), you can read to the jury any portion of that treatise rejecting the choice of methodology.
Facts Underlying Opinions.
This the most important part of the deposition. Reserve adequate time to confirm all facts used to make all opinions. Opinions based on incorrect factual assumptions will discredit the opinion, even the expert, at trial.
For each disclosed opinion, ask open-ended questions about the relied-upon facts, ask about related facts, and work toward an unequivocal statement that no other facts were relied upon. Facts supporting opinions should be in the expert report. If you are aware of facts that should have been, but were not, relied upon, or of a factual error in the stated factual basis, get confirmation on the record that the facts in the report were the only facts relied upon.
This exercise is critical. For example, one defendant’s financial expert testified that, under accounting principles, it was acceptable to attribute to the infringing item the same percentage of total corporate costs as the percentage of total revenues the infringing product generated, and on that basis, attributed 20% of total corporate costs to the infringing product because it generated 20% of total corporate revenues taking into account four corporate products. Trial revealed fifteen other products the expert was unaware of, discrediting his calculation, and his opinion, and the jury awarded significant disgorgement in the face of his expert opinion that none was due.
Focusing on these three areas, after acquiring a good grasp of the expert’s pre-deposition disclosures, should make your expert deposition an important part of a successful copyright trial.
This article was originally published in The Marin Lawyer, Volume 43, Issue 6.
Authored by Antonio L. Cortés