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5:20-cv-06957
N.D. Cal.
May 16, 2024
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Background

  • Simpson Strong-Tie (Simpson) sued MiTek, Inc. (MiTek) alleging copyright infringement and several unfair competition claims related to the alleged copying and use of product names for structural connectors.
  • The central copyright dispute focused on whether MiTek infringed copyright in Simpson’s Wood Construction Connectors catalogs, particularly in the Alphabetical Product Index (API) of part names.
  • Initially, Simpson based its claims on 18 registered works (catalogs from 2000-2020) but narrowed this to the two most recent catalogs and ultimately to new material in their APIs.
  • The court denied MiTek’s motions to dismiss and for summary judgment, finding triable issues existed regarding protectability and copying.
  • After a bench trial, the court ruled for MiTek on all claims, finding MiTek’s copying was de minimis and, alternatively, constituted fair use.
  • MiTek moved for attorney’s fees under 17 U.S.C. § 505, while both parties sought to seal MiTek’s attorney billing records submitted in relation to the motion.

Issues

Issue Simpson's Argument MiTek's Argument Held
Attorney’s Fees Entitlement MiTek is not entitled to fees under the Copyright Act. Entitled to fees because Simpson’s copyright claim was unreasonable in scope and position. Fees denied; discretion not exercised for fee award.
Limitation of Fees If any fees are awarded, they should be limited to the copyright claim only. Sought fees for all work on the case (over $1.4 million). Court did not reach this issue as fees denied.
Reasonableness of Fees MiTek’s requested fees are unreasonable. (Not clearly argued; argument predicated on entitlement.) Court did not reach this issue as fees denied.
Motions to Seal Billing Recs No good cause to seal; documents are not confidential or strategic in substance. Billing records contain work product, sensitive fee info, and could impact future litigation. Denied both motions; records to be unsealed.

Key Cases Cited

  • Fogerty v. Fantasy, Inc., 510 U.S. 517 (discusses discretion in awarding attorney’s fees under the Copyright Act and the equal treatment of prevailing plaintiffs and defendants)
  • Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. 197 (outlines key factors—objective reasonableness, deterrence, purposes of the Act—that guide courts in fee determinations)
  • Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (clarifies the standard for copyrightable expression and the idea/expression dichotomy)
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Case Details

Case Name: Simpson Strong-Tie Company Inc. v. MiTek Inc.
Court Name: District Court, N.D. California
Date Published: May 16, 2024
Citation: 5:20-cv-06957
Docket Number: 5:20-cv-06957
Court Abbreviation: N.D. Cal.
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    Simpson Strong-Tie Company Inc. v. MiTek Inc., 5:20-cv-06957