46 F.4th 489
6th Cir.2022Background
- ACT publishes WorkKeys assessments and accompanying "Skill Definitions" (compilations of subskills organized by difficulty) used to measure workplace skills.
- From 1997–2011 WIN was a partner and had direct access to ACT’s Skill Definitions under a publisher agreement; relationship later terminated and WIN became a competitor.
- In response to state RFPs, WIN submitted "Learning Objectives" for three assessments that closely mirrored ACT’s Skill Definitions; ACT sued for copyright infringement and won partial summary judgment on infringement.
- WIN revised those Learning Objectives after the partial-judgment ruling (using a consultant); the district court nonetheless preliminarily enjoined WIN from knowingly infringing ACT’s Skill Definitions and clarified the injunction covered WIN’s corresponding assessments.
- WIN then asserted a novel derivative-sovereign-immunity defense in an amended answer (arguing it could invoke states’ immunity for contracts with states after Allen v. Cooper); the district court struck the defense as untimely and frivolous.
- The Sixth Circuit affirmed both the preliminary injunction (including scope) and the district court’s decision to strike the immunity defense (on timeliness grounds); it also held the immunity-denial was immediately appealable under the collateral-order doctrine.
Issues
| Issue | Plaintiff's Argument (ACT) | Defendant's Argument (WIN) | Held |
|---|---|---|---|
| Copyrightability of Skill Definitions (selection, description, arrangement) | Skill Definitions are original compilations of subskills and arrangement and thus copyrightable. | Many elements (skill labels, some subskill phrases) are unprotectable facts or systems; selection is unprotectable. | Selection (choice of three skills) not protected; description (compilation of subskills) and arrangement (grouping by level) meet low originality threshold and likely protected. |
| Infringement of original and revised Learning Objectives | WIN copied originals and revised versions remain infringing despite rewording; direct evidence of copying exists. | Revised Learning Objectives differ enough to require substantial-similarity analysis and are not infringing. | WIN admitted copying originals; revisions are reworded copies and still infringe ACT’s protectable description and arrangement. |
| Irreparable harm / presumption of irreparable harm in copyright cases | ACT likely to suffer irreparable market/reputational harm; injunction warranted. | District court relied on an abrogated presumption (post-Winter/eBay) and did not independently find likely irreparable harm. | District court explicitly made independent findings of irreparable harm (market harm, reputational/customer relationships); findings not clearly erroneous. |
| Scope of injunction: does it bar distribution of assessments derived from Learning Objectives? | Assessments that mirror arrangement/levels are derivative works and infringing. | Even if Learning Objectives infringe, corresponding assessments are distinct and lawful; injunction is overbroad. | Injunction validly covered assessments: tests that replicate ACT’s protected arrangement create unauthorized derivative works. |
| Derivative sovereign immunity defense (timeliness & appealability) | (N/A) | Defense became available after Allen; WIN timely raised it only after amended complaint; denial is appealable as immunity from suit. | Denial of derivative immunity was immediately appealable; but WIN forfeited/waived the defense by raising it very late and failing to explain delay—district court’s striking affirmed on timeliness. |
Key Cases Cited
- Winter v. Natural Res. Def. Council, 555 U.S. 7 (2008) (standard for preliminary injunctions requires likely success and likely irreparable harm)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (permanent-injunction standards and caution about presumptions of irreparable harm)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (originality standard; compilations protected only for original selection/arrangement)
- Baker v. Selden, 101 U.S. 99 (1880) (distinguishing protection for expression from unprotectable systems/ideas)
- Campbell-Ewald Co. v. Gomez, 577 U.S. 153 (2016) (contractor/derivative-immunity doctrine requires following government directions)
- Allen v. Cooper, 140 S. Ct. 994 (2020) (Supreme Court held Congress did not validly abrogate states’ sovereign immunity for copyright claims)
- Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003) (elements of copyright infringement: ownership and copying)
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004) (discussion of presumption/rebuttable presumption of irreparable harm in copyright cases)
- Yearsley v. W.A. Ross Constr. Co., 309 U.S. 18 (1940) (derivative immunity principles for contractors)
- Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) (immaterial variations doctrine in assessing copying)
- Adkisson v. Jacobs Eng’g Grp., 790 F.3d 641 (6th Cir. 2015) (contractor immunity derives from the sovereign’s immunity in the same situation)