Expert opinion or specialist opinion?

There were a lot of lances broken in disputes about whether a specialist opinion, prepared extrajudicially at the request of a party to the case, is relevant and admissible evidence, and whether it makes sense to prepare such an opinion before filing a lawsuit in court, or is it easier to declare in court that an expert examination has been ordered and not waste time and money for an extrajudicial conclusion.

In this article, I will express my opinion on these issues based on personal experience and practice of using expert opinions as evidence in cases of intellectual property protection.

Most people are far from litigation. The average person in his life may never face a court at all, so people often do not see the difference between a specialist's opinion and an expert's opinion. Therefore, at the beginning of my article, I propose to sort out the terminology and determine the difference between a specialist and an expert opinion.

Following the definition given in paragraph 8 of Article 9 of the Federal Law of May 31, 2001 No. 73-FZ "On State Forensic Activities in the Russian Federation" (hereinafter referred to as the Law on Expertise) expert opinion is a written document reflecting the progress and results of research carried out by an expert.

Following the Russian procedural legislation provisions, expertise is one of the evidence types. The purpose of an expert study is to extract information about the facts relevant to the case, with the help of an expert opinion, the facts that are part of the subject of evidence in the case or are essential for verifying other evidence in the case are established or refuted.

At the same time, unlike other types of evidence, expert examination by Article 9 of the Law on Expertise is a procedural action provided for by the legislation of the Russian Federation on legal proceedings, which includes conducting research and giving an opinion by an expert on issues requiring specialized knowledge in the field of science, technology, arts or crafts.

If we consider the issue of appointing an examination through the Arbitration Procedure Code of the Russian Federation prism, by virtue of Article 82 of the Arbitration Procedure Code of the Russian Federation, the examination is appointed by the court, the scope and content of the issues on which the examination should be carried out, the expert or expert institution are determined by the arbitration court. At the same time, in the court ruling on an examination appointment, it is also indicated that the expert is warned about criminal liability for giving a knowingly false opinion. The parties may challenge the expert at the request of the person participating in the case, or at the initiative of the arbitration court, and the expert may be summoned to the court session to give the necessary explanations on it.

There is no legally established wording of the term "specialist opinion". Meanwhile, at the end of its existence, the Supreme Arbitration Court of the Russian Federation in the resolution of the Plenum “On some issues of the practice of application of the legislation on expertise by arbitration courts” dated April 4, 2014 No. 23 (hereinafter referred to as Resolution No. 23) indicated that an expert opinion appointed during the consideration of another court case and an expert opinion obtained as a result of an out-of-court expert examination cannot be recognized as expert opinions on the case under consideration. The court may recognize such a conclusion as another document admitted as evidence in accordance with Article 89 of the Arbitration Procedure Code of the Russian Federation .” (Item 13 of Decree No. 23).

For convenience, to understand what is being discussed in the court case, the legal community began to call the expert opinion obtained due to an extrajudicial examination the expert opinion.

Thus, it can be concluded that a specialist opinion is also a written document reflecting the course and results of research conducted by a person with special knowledge in science, technology, art, or craft.

At the same time, the critical difference between the "specialist opinion" and the "expert opinion" is that the latter's preparation is carried out on issues determined by the court and based on a court ruling, with the obligatory warning of the expert about criminal liability. At the same time, a specialist opinion is prepared at the request of any interested person, based on an agreement concluded with an expert institution and on issues determined by this person.

As mentioned above, a specialist opinion is recognized by the courts as another document admitted as evidence, in connection with which the persons participating in the case can use this procedural tool to prove the presence or absence of circumstances substantiating their claims and objections, as well as other circumstances that are important for the correct consideration of the case.

However, not every opinion of a specialist can be accepted by the court as evidence in the case.

According to the explanations contained in paragraph 8 of Resolution No. 23, when determining the range and content of issues on which it is necessary to conduct an examination, the court must proceed from the fact that issues of law (interpretation of law) and the legal consequences of the assessment of evidence cannot be raised before an expert and fall within the exclusive jurisdiction of the court.

A similar approach is to be applied to the conclusions of law enforcement specialists, which is confirmed by the position set out in the decision of the Intellectual Property Rights Court dated October 30, 2020, in case No. SIP-591/2020.

If we draw a parallel with disputes over the protection of intellectual property rights, then the following can be cited as an example of a right:

• the issue of whether the disputed product is counterfeit;
• the issue of whether the designation placed on the product is similar to the trademark;
• the issue of fame from the state of the art of the distinctive features of the controversial invention and others.

As a general rule, an expert opinion containing answers to questions of law is not subject to evaluation as evidence in a case.

An exception is the consideration of issues related to the establishment of the content of foreign law, for the resolution of which the court may apply in the prescribed manner for assistance and clarification to the competent authorities or organizations, involve a specialist or expert (part 2 of article 14 of the Arbitration Procedure Code of the Russian Federation, paragraph 2 of article 1191 of the Civil Code Russian Federation). When engaging a person with special knowledge in the field of foreign law as an expert, the court is guided by the legislation of the Russian Federation on forensic activities, as well as the norms of the Arbitration Procedure Code of the Russian Federation governing the appointment and conduct of an examination. This legal position is reflected in paragraph 8 of Resolution No. 23.

If we consider the question of whether it is advisable to prepare a specialist's opinion before filing a claim or filing a petition for the appointment of an examination, then, it seems to me, it all depends on the category of the dispute.

For example, if considering a dispute related to the protection of rights to a utility model protected by a patent, to establish the violation of the exclusive right to a utility model, it is necessary to find out whether the fact of its use in the product.

Following paragraph 3 of Article 1358 of the Civil Code of the Russian Federation, A utility model is recognized as being used in a product if the product contains every feature of the utility model listed in an independent clause of the utility model formula contained in the patent.

Considering that a technical solution related to a device is protected as a utility model, to answer the question of whether a utility model is used in a product, special technical knowledge is required, which a lawyer may not have, and therefore he cannot be sure of the prospects of presenting a claim for the protection of the exclusive right to a utility model.

In this regard, to understand even before going to the court whether such a claim will be justified, and equally whether it can be satisfied in principle, it is necessary to contact a person with special knowledge in the field of technology to prepare an opinion to answer the question of whether useful information has been used—model in the product of the alleged defendant, which the copyright holder considers infringing his right.

Such an action, according to some right holders, is excessive, since it entails additional costs on their part, while they are sure that the fact of violation is obvious. However, as the proverb says: “The cheap man pays twice,” and in this case, it works flawlessly.

Having spared the money for preparing a pre-trial conclusion, the copyright holder has filed a lawsuit, actually acts at random and this chance can cost him quite a lot, because, having lost the case, the plaintiff will have to pay not only for the work of lawyers representing his interests in several judicial instances, but also he bears the risk of reimbursement of legal costs to the other party, which is a multiple of the costs of pre-trial detention. Whereas, having paid money for a pre-trial conclusion and received an answer that there is no use of the utility model in the product, the copyright holder will no longer spend money on litigation, which is futile for him.

Moreover, if the expert's answer is positive, such a conclusion, in accordance with the above explanations of the Supreme Arbitration Court of the Russian Federation, can be used as evidence on which the plaintiff bases his claims. Moreover, even by filing a lawsuit, he will show the court that his demands are not unfounded.

Of course, this does not exclude the fact that the defendant will challenge this opinion already in the trial, submitting a review of it or a similar opinion of another expert with opposite conclusions.

Just in this case, if there are expert opinions in the case that contain directly opposite conclusions, the court will invite the parties to think about the appointment of a forensic examination in the case, which will dot the “and”.

If we consider the issue of preparing a pre-trial opinion in a copyright case, then, in this case, everything depends on the object, in the protection of the rights to which the plaintiff plans to apply for judicial protection.

By paragraph 1 of Article 1259 of the Civil Code of the Russian Federation, objects of copyright include:

• literary works;
• dramatic and musical-dramatic works, scenario works;
• choreographic works and pantomimes;
• musical works with or without text;
• audiovisual works;
• works of painting, sculpture, graphics, design, graphic stories, comics, and other pieces of fine art;
• works of arts and crafts and scenographic art;
• works of architecture, urban planning, and gardening art, including in the form of projects, drawings, images, and models;
• photographic works and works obtained by methods analogous to photography;
• geographical and other maps, plans, sketches, and plastic works related to geography and other sciences.

The copyright objects also include computer programs that are protected as literary works.

Most often, disputes on copyright protection are considered about audiovisual works, works of fine art and design, as well as computer programs.

When it comes to the use of works of fine art or the use of audiovisual works, in this case, as a rule, an examination is not required, since such use on the part of the infringer mainly occurs by simply copying the object or part of it, followed by placement on a tangible medium or by distribution works, for example, on the Internet. In this case, the court does not need to involve special knowledge to establish its use since it is enough to compare the original work and the counterfeit copy.

At the same time, if we consider the issue of the need to prepare a pre-trial opinion of a specialist or conduct a forensic examination in disputes on the protection of rights to computer programs, in such cases, one cannot do without special knowledge, since, under the provisions of Article 1261 of the Civil Code of the Russian Federation, the computer program is presented in an objective form, a set of data and commands intended for the operation of computers and other computer devices to obtain a certain result, including preparatory materials obtained during the development of a computer program and the audiovisual displays generated by it. At the same time, copyrights for all computer programs types (including operating systems and software packages) that can be expressed in any language and in any form, including source text and object code, are protected in the same way as copyrights for works of literature.

The source code volume of one computer program can be several thousand and sometimes several tens of thousands of sheets of printed text.

At the same time, unlike classical literary works, the source text of a computer program is the text of a computer program written in some programming language or markup language that a person can read. Not everyone will understand what is written there, but only those who have special knowledge in programming.

Considering that the source code is written in a special language and may also be significant in volume, the court will not be able to independently determine whether the source code of the disputed program is a reproduction (copy) or processing of the source code of the original program, or whether the programs are independent works. In this regard, for the court to consider such a dispute is impossible to do without using the knowledge of experts in the field of computer technology.

In disputes on the protection of rights to trademarks, the fact whether a designation similar to its trademark has been used without the permission of the right holder concerning goods for the individualization of which the trademark is registered, or homogeneous goods if as a result of such use there is a possibility of confusion.

However, due to the clarifications contained in paragraph seven of clause 75 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10 “On the Application of Part Four of the Civil Code of the Russian Federation”, the issue of assessing the similarity to the degree of confusion of the compared trademarks cannot be put before the expert, since the court gives such an assessment from the point of view of an ordinary consumer of the relevant product who does not have special knowledge of the addressee of the goods for the individualization of which the trademark is registered, taking into account paragraph 162 of the said resolution of the Plenum, which states that special knowledge to establish the degree of similarity of designations and homogeneity of goods not required.

Thus, a forensic examination in cases on the protection of trademark rights to determine confusing similarity is not appointed, the opinions of specialists prepared on such issues, submitted by the parties, are not recognized in court as evidence in the case, and therefore the need to prepare There are no such findings in these cases.

If we evaluate which of the evidence the courts, so to speak, give preference to when considering a case (the opinion of a specialist or the opinion of an expert), then without a doubt it can be argued that the court will have more confidence in the conclusions set out in the expert’s opinion since the appointment of an expert to conduct forensic examination is carried out by the court, the court warns the expert about criminal liability, the expert, after submitting the conclusion to the case file, may be summoned to the court session at the request of the person participating in the case, or at the initiative of the arbitration court, to give the necessary explanations regarding his conclusion, answer additional questions of the persons participating in the case and the court.

However, one should not write off a specialist's opinion as evidence because none of the evidence, including documents expressing the opinion of specialists and experts, has a predetermined force for the arbitration court. The court evaluates all evidence on the merits in their entirety. This legal approach is reflected in the ruling of the Constitutional Court of the Russian Federation dated June 5, 2014, No. 1102-O.

Moreover, a specialist opinion obtained out of court may allow the party to the case to raise doubts with the court regarding the forensic expert opinion's correctness, which will allow motivating the petition for the need to conduct a second or additional examination in the case in case of disagreement with the expert opinion who conducted the initial study.

Summing up my article, I would like to note that when the dispute between the parties goes to the judicial plane, then, of course, you should not save on evidence, since "all means are good in war" and the more convincingly this evidence will confirm the position of the party in the case the higher the probability of getting a decision in your favor. At the same time, the issue of choosing a method of proof in each specific case should be approached individually, based on the subject of the litigation, analyzing the proof of what specific circumstances it is aimed at and what legal consequences it can lead to.