100 F.4th 659
6th Cir.2024Background:
- This dispute centers on RJ Control Consultants, Inc. and its principal, Paul Rogers, alleging that Multiject, LLC, Jack Elder, and RSW Technologies, LLC infringed Rogers’s copyright in software code and technical drawings for a plastic injection molding industrial control system.
- Rogers provided Multiject with the source code (Design 3) and diagrams, after which Multiject ended its business relationship with RJ Control and began using RSW for systems assembly, continuing to use Design 3’s code and drawings.
- Rogers obtained copyright registrations for the software and drawings nearly two years later and then filed suit for several federal and state law claims, including copyright infringement.
- The District Court initially granted summary judgment to Defendants on copyright and trademark claims; the Sixth Circuit reversed in part and remanded for more evidence on the software code claim.
- On remand, the District Court excluded Plaintiffs' expert for failure to provide a required expert report and again granted summary judgment to Defendants for lack of expert evidence on protectability under copyright law’s merger and scenes a faire doctrines.
- The Sixth Circuit affirmed the judgment and vacated its prior decision for lack of appellate jurisdiction (due to unresolved counterclaims at the time).
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Jurisdiction of RJ Control I | RJ Control I lacked appellate jurisdiction and should be vacated | Prior dispositive rulings should stand | Vacated RJ Control I; no basis to vacate district court's dispositive rulings |
| Exclusion of Expert (Rule 37) | Expert report was not required/was excused by circumstances | Plaintiffs failed to serve a required expert report | No abuse of discretion; exclusion proper under Rule 37 |
| Grant of Summary Judgment | Expert testimony not required; lay testimony and declarations suffice | Expert evidence essential due to technical complexity | Affirmed summary judgment; expert evidence required in this context |
| Copyrightability (Merger & Scenes a faire) | Code contains original expression warranting protection | Code is functional/industry-dictated and thus unprotectable | No protectable elements; doctrines bar copyright protection |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (copyright requires originality and creativity)
- Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (copyright protection extends to software, but not to ideas/functionality)
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (discussing merger and scenes a faire in software copyright)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment standard)
- Kohus v. Mariol, 328 F.3d 848 (district court discretion for requiring expert testimony in technical copyright cases)