                  United States Court of Appeals
                         FOR THE EIGHTH CIRCUIT
           ___________

          No. 05-1296
          ___________

The Rottlund Company, Inc., doing    *
business as Rottlund Homes, a        *
Minnesota corporation,               *
                                     *
             Plaintiff/Appellant,    *
                                     *
       v.                            *
                                     *
Pinnacle Corporation, doing business *   Appeals from the United States
as Town & Country Homes, an Illinois *   District Court for the
corporation; Town & Country Homes, *     District of Minnesota.
Inc., a Minnesota corporation;       *
Bloodgood Sharp Buster Architects    *
and Planners of Iowa, Inc., an Iowa  *
corporation; The Bloodgood Group,    *
Inc., an Iowa corporation,           *
                                     *
             Defendants/Appellees.   *

           ___________

          No. 05-1398
          ___________

The Rottlund Company, Inc., doing   *
business as Rottlund Homes, a       *
Minnesota corporation,              *
                                    *
           Plaintiff/Appellee,      *
                                    *
     v.                             *
                                    *
Pinnacle Corporation, doing business   *
as Town & Country Homes, an Illinois   *
corporation; Town & Country Homes,     *
Inc., a Minnesota corporation,         *
                                       *
            Defendants,                *
                                       *
Bloodgood Sharp Buster Architects      *
and Planners of Iowa, Inc., an Iowa    *
corporation; The Bloodgood Group,      *
Inc., an Iowa corporation,             *
                                       *
            Defendants/Appellants.     *

            ___________

           No. 05-1501
           ___________

The Rottlund Company, Inc., doing    *
business as Rottlund Homes, a        *
Minnesota corporation,               *
                                     *
             Plaintiff/Appellee,     *
                                     *
       v.                            *
                                     *
Pinnacle Corporation, doing business *
as Town & Country Homes, an Illinois *
corporation; Town & Country Homes, *
Inc., a Minnesota corporation,       *
                                     *
             Defendants/Appellants,  *
                                     *
Bloodgood Sharp Buster Architects    *
and Planners of Iowa, Inc., an Iowa  *
corporation; The Bloodgood Group,    *


                                       -2-
Inc., an Iowa corporation,              *
                                        *
             Defendants.                *
                                   ___________

                             Submitted: December 15, 2005
                                Filed: June 20, 2006
                                 ___________

Before WOLLMAN, McMILLIAN,1 and RILEY, Circuit Judges.
                         ___________

WOLLMAN, Circuit Judge.

       The Rottlund Company, Inc. (Rottlund) appeals from the district court’s denial
of its motion for a new trial following a jury verdict adverse to its copyright
infringement claim. Because we agree with Rottlund’s contention that the district
court erred in admitting certain expert testimony, we reverse and remand for a new
trial. Appellees have filed a conditional cross appeal, arguing that if a new trial is
granted, the district court’s grant of partial summary judgment should be reversed.
The cross appeal is denied.

                                          I.
       Rottlund is a production home builder that owns copyrights on the architectural
design plans and architectural works covering the Villa II townhome technical
drawings and as-built works. Rottlund alleged infringement of its Villa II copyrights
and filed suit against Pinnacle Corporation (Pinnacle), Town & Country Homes, Inc.
(T&C), and eventually, Bloodgood Sharpbusters Architects and Planners of Iowa, Inc.
(BSB) and The Bloodgood Group, Inc. (BGI). Pinnacle and T&C are production


      1
        The Honorable Theodore McMillian died on January 18, 2006. This opinion
is being filed by the remaining judges of the panel pursuant to 8th Cir. Rule 47E. The
opinion is consistent with the views expressed by Judge McMillian at the conference
following oral argument.

                                         -3-
home builders, and BSB is an architectural firm utilized by Pinnacle and T&C to
develop two of the alleged infringing collections. BGI is BSB’s parent company.

       Before trial began, the district court granted partial summary judgment in favor
of Rottlund, holding that (1) Rottlund owned valid copyrights in its Villa II technical
drawings; (2) Pinnacle, T&C, and BSB (collectively, Appellees) had access to
Rottlund’s Villa II copyrighted materials; and (3) the ideas in Appellees’ Homestead
Collection, Washington Square, and Chateau Collection technical drawings and
architectural works were substantially similar to Rottlund’s Villa II technical drawings
and architectural works. D. Ct. Order of Oct. 19, 2004, at 6-7; D. Ct. Order of Nov.
9, 2004, at 2. The district court further held that there was a triable dispute of material
fact for the jury as to whether Appellees directly copied Rottlund’s copyrighted
material and whether the expression of ideas in Appellees’ alleged infringing technical
drawings and architectural works was substantially similar to that in Rottlund’s Villa
II technical drawings and architectural works. The jury trial commenced on
November 15, 2004, and continued on for some sixteen trial days.

        Jeffrey Scherer, Appellees’ architectural expert, served as a principal witness
at trial. Although Rottlund moved in limine to exclude Scherer’s testimony and
objected vigorously to his testimony at trial, the district court permitted Scherer to
testify that, in his expert opinion, there was no direct evidence of copying.

       To illustrate his point, Scherer created electronic overlays of the townhome
products at issue in the lawsuit. The set of exhibits included drawings and overlays
of T&C’s Homestead Collection end unit and Rottlund’s Villa II end unit. The
sequence started with side-by-side drawings of both units. The next slide showed an
overlay of T&C’s unit outlined in red over Rottlund’s unit to show “the comparable
differences which led [Scherer] to conclude that they were not direct copies.” Tr. at
3148. Although the district court did not admit this set of exhibits into evidence, it
permitted Appellees to use the drawings and overlays as demonstrative exhibits from

                                           -4-
which Scherer testified. The court acknowledged, that the overlays “would encroach
on the jury’s work that they have to do. . . . They would not be in conformance with
the law of the Eight Circuit as relates to this kind of a case.” Tr. at 3147.

      Scherer then testified regarding the differences of the key elements of the plans.
He described in detail the differences between the plans and how those differences
would affect the people who lived in each unit. For example, he explained that meal
preparation would be different in the Rottlund kitchen than it would be in the T&C
kitchen:

      On the Rottlund plan, if I take my food out of the refrigerator and I go
      to the sink to clean it, then I go to the cooktop to cook it, I then have to
      pass by the sink again to go to the dining room. Whereas in the Town
      & Country example, I can take the food out of the refrigerator, go to the
      sink, cook it, and go immediately into the dining room. That’s totally
      different ways to prepare food and lay out a kitchen.

Tr. at 3149-50.

       In a similar manner, Scherer discussed the differences between the location of
the stairs, the width of the passageways, and the design of the breakfast area, the
dining area, the living room, and the loft. Scherer testified that the differences
between the gabled entries, “illustrate[d] to [him] that the columns supporting the
gables are not copies of each other.” Tr. at 3157. In response to Rottlund’s objection
and request that the answer be stricken, the district court stated that although the issue
of element comparison was not before the jury, there was a dispute over what
constituted an “element.” The court instructed the jury that it would be charged with
the question of whether there is substantial similarity between the designs and that a
“breakdown by elements is not appropriate in that kind of determination.” Tr. at 3157.
The district court permitted Scherer to continue testifying, but it reminded the jury that



                                           -5-
“to the extent that there is an analysis of elements to show why there has not been
copying[, that analysis] is inappropriate.” Tr. at 3158.

       Throughout his testimony, Scherer testified that he “didn’t see any evidence of
copying.” Generally, he stated that the plans “were not a copy of each other,” that
certain overlays Scherer made “gave [him] clear evidence that they were not copies
of each other,” that “if they were copies, it seemed to [Scherer] in [his] analysis that
those locations would be in the same place,” that he “compared these for the purposes
of determining whether they were copies and [he] concluded they were not.”
Specifically, Scherer compared rooms and living space, stating that“there [was] not
evidence of copying because the breakfast area[s] are in different locations,” the
drawing of the second floor of the Rottlund plan and the T&C plan “show[] that the
Rottlund plan is not a copy of the Town & Country plan or vice versa. . . . So that
gave [him] clear evidence that one was not a copy of the other,” that the master
bedroom plans led him to “conclude that they were not copies of each other.”
Finally, when asked if he compared the drawings of the Chateau Collection with
Rottlund’s Villa II, he concluded that, “there was no evidence of copying at all. They
were distinctly different products.”

      The jury found that none of Appellees’ technical drawings or architectural
works infringed on Rottlund’s Villa II copyrights. The district court denied
Rottlund’s motion for judgment as a matter of law and its motion for a new trial. D.
Ct. Order of Dec 23, 2004, at 3.


                                          II.
       Rottlund appeals from the district court’s denial of its motion for a new trial,
arguing that the district court’s admission of expert testimony resulted in prejudice.
For its part, “‘[a] trial court must determine whether an evidentiary ruling was so
prejudicial as to require a new trial which would be likely to produce a different
result.’” Moses.com Sec., Inc. v. Comprehensive Software Sys., Inc., 406 F.3d. 1052,

                                          -6-
1058-59 (8th Cir. 2005) (quoting O’Dell v. Hercules, Inc., 904 F.2d 1194, 1200 (8th
Cir. 1990)). We review a district court’s denial of a motion for a new trial for abuse
of discretion. Id. We will reverse the district court’s decision to admit expert
testimony only if it amounts to a prejudicial abuse of discretion. Id.

      To establish its claim for copyright infringement, Rottlund was required to
prove “ownership of a valid copyright and copying of original elements.” Taylor
Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958, 962-63 (8th Cir. 2005) (internal
quotations omitted). Copying may be established (1) by direct evidence or (2) by
showing that the defendants had access to the copyrighted materials and showing that
substantial similarity of ideas and expression existed between the alleged infringing
materials and the copyrighted materials. Hartman v. Hallmark Cards, Inc., 833 F.2d
117, 120 (8th Cir. 1987).

      Rottlund argues that the district court erred in admitting Scherer’s expert
testimony evidence regarding substantial similarity. Determination of substantial
similarity involves a two-step analysis under Hartman v. Hallmark Cards, Inc., 833
F.2d 117 (8th Cir. 1987). There must be substantial similarity both of ideas and of
expression. Id. at 120. Similarity of ideas is evaluated extrinsically, focusing on
objective similarities in the details of the works. Id. Because this extrinsic test
depends “on such objective criteria as the type of artwork involved, the materials used,
the subject matter, and the setting for the subject,” expert opinion evidence may be
considered. Nelson v. PRN Prods., Inc., 873 F.2d 1141, 1143 (8th Cir. 1989) (internal
quotation omitted). 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.” Hartman, 833 F.2d at 120.
The only issue before the jury was whether the expression in Appellees’ works was
substantially similar to the expression in Rottlund’s copyrighted works.




                                          -7-
       Expert opinion and analytical dissection are not appropriate to establish or rebut
similarity of expression. Id. Rather, “substantial similarity of expression is measured
by the response of the ordinary, reasonable person to the forms of expression.” Id.
This step is considered the intrinsic test because it does not depend on the “type of
external criteria and analysis which marks the extrinsic test.” Sid & Marty Krofft
Television Prod., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977)
(cited with approval in Hartman, 833 F.2d at 120). Specifically, the similarity of
expression between the two works should not be considered “hypercritically or with
meticulous scrutiny.” Id.

       Although he couched his opinion in other language, Scherer in effect testified
that there was no substantial similarity of expression between alleged infringing works
and Rottlund’s copyrighted works. As discussed above, Scherer distinguished the
layout of Appellees’ plans from Rottlund’s plans, explaining how those differences
would affect life in each unit. He engaged in comparative analysis, couched in terms
of “copying.” Scherer’s testimony and accompanying demonstrative exhibits may
well have been appropriate to determine whether there existed substantial similarities
of ideas, but that question was not before the jury, having been earlier decided by the
district court as a matter of law. Instead, Scherer’s testimony went to the substantial
similarity of expression. Accordingly, because expert opinion and analytical
dissection are inadmissible to prove similarity of expression, the district court abused
its discretion when it allowed the jury to consider Scherer’s testimony and the
demonstrative exhibits.

                                          III.
      Appellees counter that Scherer testified only on the disputed issues of copying
and independent creation. Appellees cite no cases to support their argument, stating
simply that Hartman does not preclude expert testimony on these issues. In the
circumstances of this case, however, we conclude that expert opinion was not
appropriate to establish or rebut direct evidence of copying or independent creation.

                                          -8-
       To prove direct copying is to disprove independent creation. Direct evidence
of copying is rarely available because it includes evidence such as party admissions,
witness accounts of the physical act of copying, and common errors in the works of
plaintiffs and the defendants. See, e.g., Fischer-Price, Inc. v. Well-Made Toy Mfg.
Corp., 25 F.3d 119, 123 (2nd Cir. 1994) (defendant’s former employee testified that
she heard the president say that he was sending plaintiff’s dolls to a factory in China
for copying and that the president bragged that the finished product was
indistinguishable from the plaintiff’s doll); Rogers v. Koons, 960 F.2d 301, 307 (2nd
Cir. 1992) (defendant gave a copy of plaintiff’s photograph to Italian artisans and
instructed them to copy it); Koontz v. Jaffarian, 617 F. Supp. 1108, 1113-15 (E.D. Va.
1985), aff'd, 787 F.2d 906 (4th Cir. 1986) (defendant’s former employee testified that
defendant made a page by page display of the plaintiff’s electrical estimating labor
manual, making some modifications and including the same errors). Independent
creation, on the other hand, can rebut a presumption of copying after the copyright
plaintiff establishes access and substantial similarity. Taylor Corp. v. Four Seasons
Greetings, LLC, 403 F.3d 958, 967 (8th Cir. 2005). Independent creation exists when
a defendant created its own work without copying anything or if it copied something
other than plaintiff’s material. See Susan Wakeen Doll Co. v. Ashton-Drake
Galleries, 272 F.3d 441, 450 (7th Cir. 2001).

       Rottlund offered some direct evidence of copying, including a purported party
admission and certain internal memos by Appellees. Appellees argue that they offered
expert testimony to rebut this evidence and to introduce a defense of independent
creation. Scherer, however, had no first hand knowledge of Appellees’ design
process; he could testify only on the basis of his experience, the documents he
reviewed, and the tours of the townhomes he attended. Scherer opined repeatedly that
there was no direct evidence of copying, squarely addressing the ultimate issue of fact.
Although expert opinion embracing an ultimate issue is permissible under Federal
Rules of Evidence 704(a), “courts must guard against invading the province of the
jury on a question which the jury was entirely capable of answering without the

                                          -9-
benefit of expert opinion.” Robertson v. Norton Co., 148 F.3d 905, 908 (8th Cir.
1998) (internal quotations omitted). Because Scherer’s testimony added nothing
helpful to the jury’s consideration of these issues, his expert opinion should have been
excluded.

                                           IV.
       Having concluded that the district court erred in admitting Scherer’s testimony,
we must now determine whether it abused its discretion in denying Rottlund’s motion
for a new trial. Pointer v. DART, 417 F.3d 819, 822 (8th Cir. 2005). For reversal,
Rottlund must show that the error affected his substantial rights and that a new trial
would likely produce a different result. Id. Rottlund argues that the district court’s
receipt of Scherer’s testimony and related demonstrative exhibits and Appellees’
reliance on Scherer’s testimony in closing argument resulted in prejudicial error.
Because experts enjoy an aura of reliability and trustworthiness and it is probable that
the disputed evidence persuaded the jury in this close case, we agree. We thus reverse
the district court’s denial of Rottlund’s motion for a new trial and remand to the
district court for a new trial consistent with this opinion.

                                            V.
       Rottlund also contends that the district court erred in refusing to submit its
requested instruction number sixty-four, which explained and described substantial
similarity of expression. The requested instruction was similar to the language that
the district court used in its opinions in CSM Investors, Inc. v. Everest Dev., Ltd. 840
F. Supp. 1304, 1312 (D. Minn. 1994); Taylor Corp. v. Four Seasons Greetings LLC,
171 F. Supp. 2d 970, 975-76 (D. Minn. 2001). Given our reversal on the erroneous
admission of Scherer’s testimony, we need not determine whether the refusal to give
this instruction would by itself have warranted a new trial. Suffice it to say that the
proposed instruction appears to be a more complete statement of the law than that
reflected in the instruction actually given by the court.



                                         -10-
      Further, Rottlund contends that the district court erroneously denied Rottlund’s
request for an adverse inference instruction. Again, in light of our reversal on other
grounds we need not rule on this contention, other than to advert to Pinnacle’s conduct
during the course of discovery that led to the substantial sanctions imposed upon it by
the magistrate judge, conduct that we assume will not be repeated at retrial.

                                            V.
       We turn now to Appellees’ cross appeal. Adopting the magistrate judge’s2
thorough report and recommendation, the district court entered partial summary
judgment in favor of Rottlund. D. Ct. Order of Oct. 19, 2004. Appellees’ argue that
the district court incorrectly applied the extrinsic test in the substantial similarity
analysis and that the order should be reversed. Having reviewed the grant of summary
judgment de novo, applying the same standard as applied by the district court, Davis
v. Walt Disney Co., 430 F.3d 901, 902-03 (8th Cir. 2005), we conclude that the
district court did not err in granting partial summary judgment.

                                   CONCLUSION
     The cross appeal is therefore denied, the judgment is reversed, and the case is
remanded to the district court for proceedings consistent with this opinion.
                       ______________________________




      2
        The Honorable Susan Richard Nelson, United States Magistrate Judge for the
District of Minnesota.

                                         -11-
