965 F.3d 365
5th Cir.2020Background
- Digidrill developed DataLogger (logs and corrects MWD drilling data into a Firebird database) and LiveLog (real-time visualization). DataLogger used a USB security dongle and an Interface Process but stored data in an open Firebird file and left internal DB credentials at Firebird defaults.
- Petrolink obtained a DataLogger laptop and dongle, used Firebird default credentials to access the database, and installed a scraper called RIG WITSML on MWD computers to read corrected data in real time and feed it to Petrolink’s PetroVault visualization product.
- RIG WITSML read a small subset of DataLogger’s database (17 columns across 4 tables) and copied portions of the database schema into program memory and source code; Petrolink did not get Digidrill’s permission to do so.
- Digidrill sued for copyright infringement, DMCA violations, and unjust enrichment (and other claims); the district court granted summary judgment to Petrolink on copyright and DMCA claims, denied summary judgment on unjust enrichment, and a jury awarded Digidrill $414,940 on unjust enrichment.
- Both parties appealed. The Fifth Circuit affirmed summary judgment on copyright and DMCA and affirmed denial of JMOL on unjust enrichment liability and damages, but vacated and remanded the district court’s denial of attorneys’ fees to Petrolink under the Copyright Act and DMCA for lack of Fogerty analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright infringement — substantial similarity of database schema | Digidrill: qualitative importance of the copied schema (even if only ~5%) makes it substantially similar | Petrolink: copying was minimal and not qualitatively important; Digidrill waived the new qualitative argument | Court: Affirmed summary judgment for Petrolink — Digidrill failed to show the copied schema was qualitatively important to DataLogger; argument likely waived in any event |
| DMCA — whether Petrolink circumvented a technological measure controlling access | Digidrill: USB dongle and Interface Process effectively controlled access and were circumvented | Petrolink: DB/schema were accessible via third-party programs; measures did not control access to the DB; Petrolink did not circumvent the internal password | Court: Affirmed summary judgment for Petrolink — USB dongle/Interface did not control access to the database/schema, so no DMCA violation |
| Preemption — whether Texas unjust enrichment claim is preempted by Copyright Act | Digidrill: unjust enrichment requires extra element (fraud, duress, or taking of an undue advantage) so not preempted | Petrolink: claim is essentially copying and thus falls within federal copyright scope and is preempted | Court: Reversed preemption argument — Digidrill’s claim required wrongful conduct (taking of an undue advantage) beyond mere copying, so not preempted |
| Sufficiency of evidence for unjust enrichment liability and damages | Digidrill: evidence showed RIG WITSML installations at many EOG sites and Petrolink’s revenue attributable to RIG WITSML ($414,940) | Petrolink: insufficient proof of liability/value; should be measured by profits not revenues; evidence was underinclusive | Court: Affirmed denial of JMOL — jury verdict supported by some evidence tying the benefit to Petrolink’s revenues attributable to RIG WITSML; profits measure not required under Texas unjust enrichment theory |
| Attorneys’ fees under Copyright Act and DMCA | Petrolink: prevailed on copyright and DMCA claims and is entitled to fees; district court should have analyzed Fogerty factors | Digidrill: argued equities supported denying fees (court did not elaborate) | Court: Vacated and remanded — district court abused discretion by failing to treat Petrolink as prevailing party on copyright/DMCA and by not applying Fogerty/Kirtsaeng guidance; remand for full Fogerty analysis |
Key Cases Cited
- Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000) (DMCA analysis recognizing that a measure need not be impregnable to be "effective")
- Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001) (affirming Reimerdes on DMCA questions)
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004) (distinguishing measures that restrict use from measures that restrict access for DMCA purposes)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (facts and compilations in copyright subject matter analysis)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (standards for awarding attorney’s fees in copyright cases)
- GlobeRanger Corp. v. Software AG U.S. of Am., Inc., 836 F.3d 477 (5th Cir. 2016) (state misappropriation claim not preempted where wrongful means element exists)
- Motion Medical Techs., L.L.C. v. Thermotek, Inc., 875 F.3d 765 (5th Cir. 2017) (preemption where state claim lacked an improper-means element)
- G.S. Rasmussen & Assocs., Inc. v. Kalitta Flying Serv., Inc., 958 F.2d 896 (9th Cir. 1992) (unjust enrichment not preempted where claim rests on wrongful use beyond copying)
- Del Madera Props. v. Rhodes & Gardner, Inc., 820 F.2d 973 (9th Cir. 1987) (state unjust enrichment preempted when claim equates to exclusive right to copy)
- Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772 (5th Cir. 1999) (extra-element test for preemption)