93 F.4th 985
6th Cir.2024Background
- Premier Dealer Services (Premier) created and copyrighted a Lifetime Powertrain Loyalty Program certificate used by car dealers to enroll customers in after-sale service programs.
- Premier licensed a modified version of the certificate to Tricor Automotive Group, which in turn began working with Allegiance Administrators (Allegiance) after ending its relationship with Premier.
- Allegiance continued to use the Premier-designed certificates, changing only the contact information, after Tricor provided them with a copy.
- Premier sued Allegiance for copyright infringement for using the certificates without permission.
- The district court granted summary judgment for Premier, awarded disgorgement of Allegiance's profits, attorney’s fees, and issued a permanent injunction.
- Allegiance appealed, challenging the originality of the certificates, the disgorgement calculation, and the attorney’s fees award.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Originality & Copyrightability of Certificates | Certificates are original and protectable by copyright | Certificates lack originality and are constrained by industry norms | Premier’s certificates are copyrightable |
| Application of Scenes a Faire/Merger Doctrines | No external constraints dictate certificate content | Industry practices/insurance dictate certificate format | No evidence constraints dictated form; defense fails |
| Disgorgement of Profits for Infringement | All relevant revenues reasonably related to infringement | Revenues unrelated to certificate’s text; should not be disgorged | Gross revenues reasonably relate; award upheld |
| Award of Attorney’s Fees | Fees warranted due to continued infringement and unreasonable defense | No reasonable basis for fee award, especially after injunction | District court did not abuse its discretion |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340 (minimal creativity required for copyright originality)
- Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (artistic merit is not a requirement for originality)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (original expression of facts is protectable)
- Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390 (allocation of profits for copyright infringement)
- Balsley v. LFP, Inc., 691 F.3d 747 (plaintiff’s burden in showing revenue reasonably related to infringement)
- Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (reasonableness standard for attorney’s fee awards)
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (scenes a faire doctrine and expert testimony)