Late Expert Report Dooms Copyright Case

By on April 18, 2024
Posted In Copyrights

The US Court of Appeals for the Sixth Circuit weighed in for a third time on an eight-year copyright battle, this time finding that a district court did not abuse its discretion in excluding the plaintiff’s proposed expert or granting summary judgment to the defendant with respect to a copyright claim related to software. RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al., Case No. 23-1591 (6th Cir. Apr. 3, 2024) (Siler, Cole, Mathis, JJ.)

This case concerns a copyright infringement claim filed by Paul Rogers through his company RJ Control Consultants (RJC) against his former friend Jack Elder, sole owner of Multiject. Multiject engineers and sells industrial accessories related to plastic injection molding. Rogers developed technical diagrams and software source code for a rotary turntable control system for Multiject. After Elder obtained copies of the code and drawings, he fired Rogers and hired a different company, RSW, to implement the technology. Rogers obtained copyright registrations for the code and drawings and filed suit against Elder, Multiject and RSW for copyright and trademark infringement, as well as certain state law claims.

The district court granted summary judgment to the defendants on RJC’s copyright infringement and trademark infringement claims and declined to exercise supplemental jurisdiction over the state law claims. RJC appealed the dismissal of its copyright infringement claim. In December 2020, in RJ Control I, the Sixth Circuit affirmed the decision regarding the technical drawings but reversed and remanded the copyright claim to the district court, finding that the software technology was complex and required an expert to answer material questions related to the functionality of the code.

On remand, the district court established deadlines for expert disclosures and for filing dispositive motions and motions challenging experts. Both parties timely served expert disclosures in which they identified the names of their respective experts, but neither side produced an expert report with their disclosures.

In April 2021, the district court extended the discovery and motions deadlines but not the expert disclosure deadline. The defendants moved to exclude RJC’s expert on the grounds that RJC failed to properly disclose the expert because RJC did not produce an expert report. The defendants also filed motions for summary judgment. The district court granted the defendants’ motions, finding that RJC “failed to put forth any expert evidence that identifies any specific portions of the code that they claim are protectible.” RJC appealed.

The Sixth Circuit dismissed the second appeal for lack of appellate jurisdiction, finding that the district court’s decision was not final because the court had not disposed of Multiject and Elder’s counterclaim (RJ Control II). The case was remanded again. On remand, the district court dismissed the then-pending counterclaim. RJC appealed again.

RJC argued that the Sixth Circuit lacked jurisdiction to decide RJ Control I, just as it did in RJ Control II, because at that time the counterclaim remained pending in district court. The Court agreed and vacated its decision in RJ Control I, but then affirmed its original holding because RJC did not argue that the underlying decision was erroneous.

RJC next argued that the exclusion of its expert by the district court was erroneous and denied RJC due process. Because RJC never produced an expert report, which Fed. R. Civ. P. 26(a)(2)(B) requires as part of the timely disclosure of an expert witness, the district court excluded the expert under Fed R. Civ. P. 37(c)(1), which bars a party from using information or a witness “to supply evidence on a motion, at a hearing, or at trial” when the party fails to comply with Rule 26(a), unless the party can show that its nondisclosure was substantially “justified or harmless.” The Sixth Circuit used a five-factor analysis to assess substantial justification and harmlessness, ultimately concluding that the district court did not abuse its discretion in excluding RJC’s expert because no report was disclosed.

Finally, the Sixth Circuit affirmed the district court’s grant of summary judgment to the defendants on the copyright infringement claim. The district court had previously determined that expert opinion was necessary for it to assess the infringement claim regarding the technical software and had warned RJC of this more than once. Since RJC had presented no expert evidence to rebut the defendants’ evidence, the Sixth Circuit agreed that the doctrines of merger and scenes a faire operated to bar copyright protection of RJC’s software code. To evaluate application of the merger doctrine, a court evaluates whether unprotected elements are intertwined with any copyrightable elements. If so, and if the unprotected elements dominate, the expression will not be protected. Here, with respect to the merger doctrine, the Court agreed that the noncopyrightable and copyrightable elements of the software code were inextricably intertwined and that the software “code is all functional.”

The scenes a faire doctrine “operates to bar certain otherwise creative expression from copyright protection . . . . Scenes a faire arise when the expectations of an industry or subject matter require an author to express facts in a certain way, rendering only a few choices ‘feasible in that setting’ even if alternatives theoretically remain.” Here, the Sixth Circuit agreed that several aspects of the code were dictated by standard programming procedure and thus not protectable.

Practice Note: Disclosure of an expert requires not just identification of the individual, but also provision of the expert report. In this case, the failure to provide an expert opinion was determinative of the case outcome. In copyright infringement cases involving technical computer software, a court may require expert guidance to assess the protectability of the code. Moreover, if a court determines that there are a limited number of ways in which computer code can be written to achieve an outcome, it can find that the code’s expression “merges” with the idea, such that there is no protectable expression.

Karen Gover
Karen Gover is a member of the Intellectual Property Practice Group. Read Karen Gover's full bio.