924 F. Supp. 2d 757
S.D. Tex.2013Background
- Engenium sues Symphonic and Carr for copyright infringement related to Scheduling Workbench (Engenium) and Harmonix (Symphonic); multiple motions to strike, exclude, and for summary judgment are filed by both sides.
- Court analyzes whether expert testimony should be admitted or struck (Wright, Faiola, Muppavarapu, Johnson) before addressing copyright issues.
- Key contracts: Development License Agreement (DLA) with SAP and Master License Agreement (MLA) with ConocoPhillips; MLA contemplates Work Product ownership and license rights.
- Disputes over ownership and transfer of Scheduling Workbench rights via DLA/MLA; SAP certification of add-on status for Scheduling Workbench.
- Evidence shows Carr’s resignation from Engenium and involvement with Symphonic; Ross’s access to Scheduling Workbench on personal server; alleged copying of code and similarities between Scheduling Workbench and Harmonix.
- Court ultimately grants in part and denies in part on summary judgment, and grants plaintiff’s partial motion for summary judgment on copyright infringement; addresses state-law claims subsequently.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Admissibility of Wright’s testimony | Wright unreliable; not qualified; improper methodology | Wright qualified by SAP experience; side-by-side comparison | Wright excluded; Wright’s report struck |
| Admissibility of Faiola’s testimony | Faiola unreliable; improper methodology; lack of exhibits | Faiola's side-by-side approach credible | Faiola excluded; Faiola’s report struck |
| Muppavarapu’s opinions admissibility | Muppavarapu credible expert; code similarity supports copying | Methodology and scope insufficient; some similarities SAP standards | Muppavarapu’s opinions admitted; exclusion denied |
| Johnson’s damages testimony admissibility | Damages under copyright and related claims; supports value | Damages under state-law claims; jurisdiction concerns; assumptions challenged | Johnson’s opinions denied for exclusion on state-law scope but admitted on copyright damages to extent relevant; not fully excluded |
| Copyright ownership and copying sufficiency | Engenium owns Scheduling Workbench; Harmonix copies protectable code | DLA/MLA transfer issues; SAP ownership; add-on vs. work product; scenes a faire | Engenium owns valid copyright; Harmonix is a copy; Defendants liable for reproduction; summary judgment granted for infringement; other state-law claims considered |
Key Cases Cited
- Kumho Tire Co. v. Carmichael, 526 U.S. 137 (Supreme Court 1999) (flexible Daubert standard; gatekeeping for reliability of expert testimony)
- Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (Supreme Court 1993) (gatekeeping reliability of expert testimony; factors for admissibility)
- Wilson v. Woods, 163 F.3d 935 (5th Cir. 1999) (qualification not strictly required; weight rather than admissibility)
- Moore v. Ashland Chem., Inc., 151 F.3d 269 (5th Cir. 1998) (burden on party seeking to rely on expert testimony)
- Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357 (5th Cir. 2004) (probative similarity includes non-protectable elements to assess copying)
- Altai, Inc. v. Borland Intl., Inc., 982 F.2d 693 (2d Cir. 1992) (abstraction-filtration-comparison framework for copyright in software)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340 (Supreme Court 1991) (originality requires minimal creativity; protectable expression)
- Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45 (5th Cir. 1995) (certificate of registration creates a rebuttable presumption of validity)
- Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586 (7th Cir. 2003) (transfer agreements cannot defeat liability for infringement by third parties)