Act Group, Inc. v. Waterfurnace International, Inc.
700 F. App'x 718
| 9th Cir. | 2017Background
- ACT Group sued Jody and James Hamlin for copyright infringement of ACT’s sales training materials; six-day jury trial resulted in judgment for ACT.
- The district court imposed discovery sanctions under Fed. R. Civ. P. 37(c)(1) for ACT’s failure to disclose certain documents and witnesses, limiting witness testimony and documentary evidence at trial.
- Hamlin requested a jury instruction stating that common, stock, or standard expressions are not copyrightable; the court instead gave an originality instruction based on the Ninth Circuit model jury instructions.
- The jury found ACT’s selection and arrangement of words in its materials were original and that Hamlin copied them, awarding damages for infringement.
- Hamlin asserted a counterclaim for wrongful appropriation of his likeness; the district court granted summary judgment for ACT, finding no economic harm or benefit.
Issues
| Issue | ACT's Argument | Hamlin's Argument | Held |
|---|---|---|---|
| Whether district court abused discretion by imposing Rule 37(c)(1) sanctions | Sanctions were appropriate to remedy nondisclosure and limited to fair scope | Sanctions were excessive and prejudicial | No abuse; sanctions (limiting testimony and documents) were within court’s broad discretion (Yeti) |
| Whether court erred by not giving instruction that common/stock expressions are not protectable | Model originality instruction adequately directed jury to selection/arrangement inquiry | Requested explicit warning that common phrases are unprotectable was necessary | No error; model instruction correctly stated law and sufficiently covered issue (Gantt, Satava) |
| Whether evidence supported the verdict for copyright infringement and damages | ACT: selection/arrangement of common phrases was original; there was access and substantial similarity | Hamlin: materials used common/public-domain phrases, so not protectable; no copying | Substantial evidence supported infringement and damages; selection and arrangement protectable and copying shown (Transgo, Satava, Smith) |
| Whether summary judgment on wrongful appropriation of likeness was proper | ACT: no evidence of economic harm to Hamlin or economic benefit to ACT | Hamlin: appropriation claim merited trial | Affirmed; lack of evidence of economic harm or benefit justified summary judgment (In re Estate of Reynolds) |
Key Cases Cited
- Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101 (9th Cir.) (broad appellate deference to district courts’ Rule 37(c)(1) sanctions decisions)
- Gantt v. City of Los Angeles, 717 F.3d 702 (9th Cir.) (jury instruction must correctly state law and adequately cover issues)
- Satava v. Lowry, 323 F.3d 805 (9th Cir.) (combination of unprotectable elements may be protectable if selection and arrangement are original)
- Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001 (9th Cir.) (standard for substantial evidence supporting infringement and damages)
- Smith v. Jackson, 84 F.3d 1213 (9th Cir.) (copying can be shown by access plus substantial similarity)
- In re Estate of Reynolds, 327 P.3d 213 (Ariz. Ct. App.) (economic harm/benefit required for commercial appropriation claim)