Frank Betz Associates, Inc. v. J. O. Clark Construction, L.L.C.
3:08-cv-00159
M.D. Tenn.Nov 5, 2010Background
- Defendants move under Rule 42(b) to trifurcate the trial into a bench phase on copyright protection scope and two jury phases for liability and damages.
- Plaintiff opposed the motion, arguing trifurcation is inappropriate and would waste resources.
- Court has already granted summary judgment that Plaintiff owns valid copyrights and that the designs possess minimal creativity.
- Court recognizes the two-part test for substantial similarity and the AWCPA framework distinguishing protectable expression from unprotectable ideas or standard features.
- Court declines to trifurcate; concludes the designs are protectable overall and that jury should decide substantial similarity and damages in a single trial.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether to grant separate bench trial on protection scope | Betz argues for efficiency and clarity by resolving protectable elements first. | Clark defendants contend bifurcation avoids prejudice and jury confusion. | Denied; no separate bench trial on protectability. |
| Whether elements of Betz designs may be protected or are unprotectable as functional/standard features | Betz designs contain protectable expression despite functional parts. | Elements may be functional; unprotectable features should be filtered out. | Court finds the designs are protectable overall; elements are not exclusively functional. |
| Whether substantial similarity should be resolved by the jury rather than the bench | N/A in summary; focus on jury would be appropriate for similarity. | N/A in summary; seeks separate phases to avoid confusion. | Jurors to decide substantial similarity; court will instruct on the law. |
| Whether to conduct separate trials on damages | Damages phase could be separated to streamline proceedings. | Damages presentation could be time-consuming and burdensome if separated. | Denied; no separate damages trial. |
Key Cases Cited
- Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003) (two-step test for substantial similarity; identify protectible elements, then substantial similarity)
- Sturdza v. United Arab Emirates, 281 F.3d 1287 (D.C. Cir. 2002) (two-step substantial similarity analysis with filter of unprotectible elements)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (copyrights require originality and substantial similarity to protectable elements)
- Tiseo Architects, Inc. v. B&B Pools Service & Supply Co., 495 F.3d 344 (6th Cir. 2007) (application of the two-step analysis in architectural works)
- Intervest Construction, Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914 (11th Cir. 2008) (discussion of originality vs functionality in architectural works)
- Atari, Inc. v. N. Am. Phillips Consumer Elecs. Corp., 672 F.2d 607 (7th Cir. 1982) (scènes à faire and not protectable as standard features; ideas vs expression)