TrackMan, Inc. v. GSP Golf AB
1:23-cv-00598
S.D.N.Y.Sep 24, 2024Background
- Trackman, Inc. develops golf simulator software (notably "Perfect Golf") with user-created courses and APIs for tournament integration.
- Defendants (Bogavac/GSP and Cooke/SGT) developed competing software (GSPro and SGT) allegedly copying Trackman’s software components, including user-designed courses and API data structures, after Trackman restricted Perfect Golf’s hardware compatibility.
- Cooke/SGT also allegedly promoted availability of iconic/trademarked golf courses on their platform without authorization or required licenses, leading to cease-and-desist letters from trademark owners.
- Trackman sued for copyright infringement (direct and secondary), breach of contract (based on EULA violations), and false advertising under the Lanham Act.
- GSP sought to dismiss only the contract claim as preempted by copyright law; SGT moved to dismiss all claims against it.
- The court ruled on defendants’ motions to dismiss under Rule 12(b)(6).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyrightability of API structures | APIs are original, creative work eligible for copyright protection | APIs are uncopyrightable as mere processes/functionality; lack originality | Not suitable for dismissal — issue could not be decided on pleadings |
| License/Estoppel as defense | Not appropriate for resolution on motion to dismiss; facts disputed | Defendants contend their use was licensed/they are estopped from liability | Defenses not ripe; discovery required |
| Statute of Limitations (Copyright) | Claims timely as infringement not discovered/should not have been discovered | Claims are time-barred as alleged acts began >3 yrs before suit | Dismissal inappropriate; plausible claim within limits |
| Secondary Copyright Infringement | Cooke actively facilitated and benefited from infringement | No primary infringement established; Cooke only an owner, not actor | Sufficient secondary liability pled; claim survives |
| Copyright Preemption of Contract Claim | Breach of EULA reverse engineering ban is an extra element, not preempted | Contract claim is coextensive with exclusive rights in Copyright Act; no extra element | Claim preempted by Copyright Act; dismissed |
| False Advertising (Lanham Act) | Defendants’ statements implied authorization; caused confusion, harmed business | Statements not literally false; Dastar bars claim re licensing; no materiality/injury pled | Claim survives; implied falsity, materiality and injury plausibly pled |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (originality standard for copyright protection is extremely low)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading standard for plausibility on motion to dismiss)
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading must permit reasonable inference of liability)
- Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (copyrightability of APIs depends on facts; APIs can be protected)
- Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296 (preemption test—extra element must make state claim qualitatively different)
- Comput. Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693 (software as literary work under Copyright Act; preemption analysis)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (distinction between copyright and Lanham Act protection of origin)
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (Lanham Act standing and injury)