Free Notice of Filing Proposed Pretrial Order - District Court of Arizona - Arizona

EXHIBIT 10 JOINT PARTIES' PROPOSED JURY INSTRUCTIONS

Proposed Jury Instruction No. 1 Standard Instructions

The Joint Parties request that the following instructions from the Ninth Circuit Manual of Model Jury Instructions ­ Civil should be given: Preliminary Instructions: 1.1, 1.3, 1.4, 1.5, 1.6, 1.7, 1.8, 1.9, 1.10, 1.11, and 1.13. Instructions During Trial When Appropriate: 2.1, 2.2, 2.5, 2.6, 2.10, 2.13 Instructions At End of Case: 3.1, 3.2, 3.3, 3.5, 3.6, 3.7, 3.9, 3.10, 3.11, 4.1, 4.2, 4.3, 4.4, 5.1, and 6.1.

Source:

Ninth Circuit Manual of Model Jury Instructions ­ Civil

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Proposed Jury Instruction No. 2 Agreed Upon Preliminary Instruction re Claims And Defenses To help you follow the evidence, I will give you a brief summary of the positions of the parties. This case involves competing claims of ownership of computer software. There are four groups of parties in this case: the Lexcel Parties, the MTSI Parties, the POST Parties, and the Nelcela Parties. Each group of parties consists of one or more companies and their owners or officers. This Court has previously found substantial similarity between the Lexcel software and the Nelcela software. The Lexcel, MTSI, and POST Parties claim that Lexcel owns the software at issue in this case, and that the Nelcela Parties have copied and modified that software without permission. The Nelcela Parties claim that Nelcela owns the software at issue and that Lexcel has copied and modified that software without permission. The Nelcela Parties also claim that POST is using a particular software file that is part of the software Nelcela claims to own. The POST Parties deny that they use that file or that Nelcela owns that file.

Source:

Ninth Circuit Model Civil Jury Instruction 1.2 (with insertions); Sept. 30, 2006 Order on Motions for Summary Judgment at 2829

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Proposed Jury Instruction No. 3 Agreed Upon Preliminary Instruction re Outline of the Trial The next phase of the trial will now begin. First, each side may make an opening statement. An opening statement is not evidence. It is simply an outline to help you understand what the party expects the evidence will show. A party is not required to make an opening statement. The Lexcel, MTSI, and POST Parties will then present evidence of their claim that Lexcel owns the software at issue, and the Nelcela Parties may crossexamine. Then the Nelcela Parties will present evidence of their claim that POST is using a particular software file that is part of the software Nelcela claims to own. Then the Lexcel, MTSI, and POST Parties may cross-examine. After the evidence has been presented, the attorneys will make closing arguments and I will instruct you on the law that applies to the case. After that, you will go to the jury room to deliberate on your verdict.

Source:

Ninth Circuit Model Civil Jury Instruction 1.12 (second paragraph modified consistent with proposed instruction I.B).

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Proposed Jury Instruction No. 4 Agreed Upon Preliminary Instruction re Copyright The Lexcel and Nelcela Parties each claim to own the software at issue. The Lexcel Parties claim that the Nelcela Parties have copied the software from Lexcel. The Nelcela Parties claim that the Lexcel Parties have copied the software from Nelcela. The Nelcela Parties also claim that the POST Parties have copied a particular software file from Nelcela. To help you understand the evidence in this case, I will explain some of the legal terms you will hear during this trial. DEFINITION OF COPYRIGHT Copyright is the exclusive right to copy. The owner of a copyright has the right to exclude any other person from reproducing, preparing distributive works, distributing, performing, displaying, or using the work covered by copyright for a specific period of time. A computer program can be a copyrighted work. Facts, ideas, procedures, processes, systems, methods of operation, concepts, principles or discoveries cannot themselves be copyrighted. The copyrighted work must be original. An original work that closely resembles other works can be copyrighted so long as the similarity between the two works is not the result of copying. COPYRIGHT INTERESTS The copyright owner may transfer, sell, or convey to another person all or part of the owner's property interest in the copyright, that is, the right to exclude others from reproducing, preparing a derivative work from, distributing, performing, or displaying the copyrighted work. To be valid, the transfer, sale, or conveyance must be in writing. The person to whom a right is transferred is called an assignee. One who owns a copyright may agree to let another reproduce, prepare a derivative work of, distribute, perform, or display the copyrighted work. To be valid, the transfer, sale, or conveyance must be in writing. The person to whom this right is transferred is called an exclusive licensee. The exclusive licensee has

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the right to exclude others from copying the work to the extent of the rights granted in the license. HOW COPYRIGHT IS OBTAINED Copyright automatically exists in a work the moment it is fixed in any tangible medium of expression. The owner of the copyright may register the copyright by delivering to the Copyright Office of the Library of Congress a copy of the copyrighted work. After examination and a determination that the material deposited constitutes copyrightable subject matter and that legal and formal requirements are satisfied, the Register of Copyrights registers the work and issues a certificate of registration to the copyright owner. PARTIES' BURDEN OF PROOF The Lexcel Parties claim that Lexcel owns the copyright of the Lexcel computer software and that Nelcela has copied the Lexcel software. The Lexcel Parties have the burden of proving by a preponderance of the evidence that Lexcel is the owner of the copyright and that Nelcela copied original elements of the copyrighted work. The Nelcela Parties claim that Nelcela owns the copyright of the Nelcela computer software and that Lexcel has copied the Nelcela software. The Nelcela Parties have the burden of proving by a preponderance of the evidence that Nelcela is the owner of the copyright. The Nelcela Parties also claim that the POST Parties have copied a particular software file from the Nelcela computer software. The Nelcela Parties have the burden of proving by a preponderance of the evidence that Nelcela is the owner of the copyright and that POST copied original elements of the copyrighted work. Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the copyrighted work was infringed. Source: Ninth Circuit Model Civil Jury Instruction 20.0 (changed to reflect specific claims in the case and to remove references to damages).

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Proposed Jury Instruction No. 5 Copyright ­ Defined (17 U.S.C. § 106) Copyright is the exclusive right to copy. The right to copy includes the exclusive rights to: (1) authorize, or make additional copies, or otherwise reproduce the copyrighted work; (2) recast, transform, adapt the work, that is prepare derivative works based upon the copyrighted work; (3) distribute the copyrighted work to the public by sale or other transfer or ownership or lending; It is the owner of a copyright who may exercise these exclusive rights to copy. The term "owner" includes the author of a work, an assignee, and an exclusive licensee. In general, copyright law protects against production, adaptation, and distribution of substantially similar copies of the owner's copyrighted work without the owner's permission. An owner may enforce these rights to exclude others in an action for copyright infringement. Even though one may acquire a copy of the copyrighted work, the copyright owner retains rights and control of that copy, including uses that may result in additional copies or alterations of the work. Source: Ninth Circuit Model Civil Jury Instruction 20.1 (only relevant parts included)

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Proposed Jury Instruction No. 6 Copyright ­ Subject Matter (17 U.S.C. § 102) The works involved in this trial are known as computer programs, that is, a literary work composed of a set of statements or instructions to be used directly or indirectly in a computer to bring about a certain result. You are instructed that a copyright may be obtained in the software at issue in this case. Source: Ninth Circuit Model Civil Jury Instruction 20.2 (only relevant parts included)

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Proposed Jury Instruction No. 7 Copyright Infringement ­ Elements ­ Ownership and Copying (17 U.S.C. § 501(A)-(B)) Anyone who copies original elements of a copyrighted work during the term of the copyright without the owner's permission infringes the copyright. On a copyright infringement claim, the party claiming infringement has the burden of proving both of the following by a preponderance of the evidence: 1. 2. the plaintiff is the owner of a valid copyright; and the defendant copied original elements from the copyrighted work.

If you find that both of the elements on which the party claiming infringement has the burden of proof have been proved, your verdict should be for the party claiming infringement. If, on the other hand, the party claiming infringement has failed to prove either of these elements, your verdict should be for the other party.

Source:

Ninth Circuit Model Civil Jury Instruction 20.4 (references to parties changed to reflect present case)

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Proposed Jury Instruction No. 8 Copyright Infringement ­ Ownership Of Valid Copyright ­ Definition (17 U.S.C. §§ 201-205) A party is the owner of a valid copyright if the party proves by a preponderance of the evidence that: 1. the party's work is original; and 2. the party is the author or creator of the work or received a transfer of the copyright.

Source:

Ninth Circuit Model Civil Jury Instruction 20.5 (reference to "plaintiff" changed to reflect present case)

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Proposed Jury Instruction No. 9 Copyright Interests ­ Authorship (17 U.S.C. § 201(A)) The creator of an original work is called the author of that work. An author originates or "masterminds" the original work, controlling the whole work's creation and causing it to come into being. Others may help or make valuable or creative contributions to a work. However, such contributors cannot be the authors of the work unless they caused the work to come into being. One must translate an idea into a fixed, tangible expression in order to be the author of the work. Merely giving an idea to another does not make the giver an author of a work embodying that idea. Source: Ninth Circuit Model Civil Jury Instruction 20.6 (verbatim).

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Proposed Jury Instruction No. 10 Copyright Interests ­ Works Made For Hire A copyright owner is entitled to exclude others from copying a work made for hire. A work made for hire is one that is prepared by an employee in carrying out the employer's business. The employer is considered to be the author of the work and owns the copyright unless the employer and employee have agreed otherwise in writing. A copyright owner of a work made for hire may enforce the right to exclude others in an action for copyright infringement. Source: Ninth Circuit Model Civil Jury Instruction 20.9 (verbatim).

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Proposed Jury Instruction No. 11 Copyright Interests ­ Derivative Works (17 U.S.C. §§ 101, 106(2)) A copyright owner is entitled to exclude others from creating derivative works based upon the owner's copyrighted work. The term derivative work refers to a work based on one or more pre-existing works, such as a translation, abridgement, condensation, or any other form in which the pre-existing work is recast, transformed, or adapted. Accordingly, the owner of a copyrighted work is entitled to exclude others from recasting, transforming or adapting the copyrighted work without the owner's permission. If the copyright owner exercises the right to create or allow others to create a derivative work based on the copyrighted work, this derivative work may also be copyrighted. The original works of authorship in the derivation, such as the editorial revisions, annotations, elaboration, or other modifications to the preexisting work are considered to be the derivative work. Source: Ninth Circuit Model Civil Jury Instruction 20.13 (only relevant portions included).

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Proposed Jury Instruction No. 12 Copyright Infringement­Definition­Copying­Access and Substantial Similarity The Lexcel Parties and the Nelcela Parties each claim that the other party copied their computer software. A first party claiming that a second party copied original elements of its copyrighted work has the burden of proving the following elements by a preponderance of the evidence: 1. that the second party who is alleged to have engaged in copying had access to the first party's copyrighted work; and 2. that there are substantial similarities between the second party's work and original elements of the first party's copyrighted work; and 3. that the second party's work was not independently created. Source: Ninth Circuit Model Civil Jury Instruction 20.15 (changed to reflect specific claims in the case).

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Proposed Jury Instruction No. 13 Copyright Infringement­Definition­Copying­Access Defined 4. The first party alleging that its computer software was copied must show by a preponderance of the evidence that the second party had access to its computer software. You may find that the second party had access to the first party's software if the second party had a reasonable opportunity to copy the first party's software before the second party's software was created. This reasonable opportunity or access is not based on mere speculation or conjecture. Reasonable opportunity or access means that there was a reasonable possibility the second party had an opportunity to see the first party's software.

Source:

Ninth Circuit Model Civil Jury Instruction 20.16 (changed to reflect specific claims in the case).

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Proposed Jury Instruction No. 14 Substantial Similarity This Court has already determined that there is substantial similarity between the Lexcel software and the Nelcela software. This Court's determination is binding on your decision in this case; you must accept as true that there is substantial similarity between the Lexcel and Nelcela softwares. The Court has not determined, however, which software was created first. Accordingly, the primary fact issue for your determination is whether the Lexcel Software was created before the Nelcela Software, on instead the Nelcela Software was created before the Lexcel Software. Source: . Sept. 30, 2006 Order at 27-29; Trans. of Nov. 20, 2006 Hearing at 29, lns. 20-21 ("I think we are at a narrow issue of which came first.").

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Proposed Jury Instruction No. 15 Copyright Infringement ­ Definition ­ Copying ­ Access and Substantial Similarity ­ Nelcela's Claim For Infringement Against the POST Parties The Nelcela Parties claim that the POST Parties copied a particular software file that included original elements of the Nelcela Parties' copyrighted work. The Nelcela Parties have the burden of proving by a preponderance of the evidence: 1. that the Nelcela Parties hold a valid copyright in the software file "bnkmrch.pbl"; and 2. that the POST Parties use the software file "bnkmrch.pbl" in their credit card processing software. Source: Ninth Circuit Model Civil Jury Instruction 20.15 (modified to reflect issues remaining on this claim after this Court's ruling on summary judgment).

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Proposed Jury Instruction No. 16 The parties in this lawsuit had a duty to preserve evidence that they knew, or reasonably should have known, was relevant to any claim or defense asserted in this lawsuit. If you find that a party willfully destroyed evidence that was relevant to any claim or defense in this lawsuit, then you may infer that the destroyed evidence would have been unfavorable to the party who destroyed it.

Source:

Medical Laboratory Management Consultants v. American Broadcasting Companies, Inc., 306 F.3d 806, 824 (9th Cir. 2002); Akiona v. United States, 938 F.2d 158, 161 (9th Cir.1991).

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