June 2012 – 6th Circuit Copyright Litigation Update

Courts within the U.S. Court of Appeals for the Sixth Circuit decided the following three copyright cases during the month of June 2012:


Copyrightability; Expression vs. Functionality; Expert Testimony

Varsity Brands, Inc. v. Star Athletica, LLC, Case No. 10-02508 (E.D. Mich. June 21, 2012)

This is a copyright infringement lawsuit between two manufacturers of cheerleading uniforms.  Before the court was plaintiff’s motion to strike the defendant’s proposed expert testimony.  These experts would have testified on the degree to which the relevant aspects of the parties’ uniforms (called the “stripe design features” and the “solid color panels”) were necessary to the uniforms’ function.  In this Order, the district court affirmed a magistrate judge’s determination that the expert testimony should be allowed.  The court explained the applicable filtration test for separating creative expression from functional elements, and decided that the experts were likely to assist the court in applying that test here.  In rejecting plaintiff’s argument that this testimony would invade the province of the court, the judge concluded that it is an open question in the Sixth Circuit whether copyrightability is a pure issue of law for the court to decide, or a mixed question of law and fact.

Prevailing Party; Award of Attorneys’ Fees 

Checkpoint Sys. v. Hangzhou Century Co., Case No. 5:11CV1199 (N.D. Ohio June 13, 2012)

Checkpoint brought a multi-count complaint against Chinese defendant USS related to the parties’ theft-prevention and supply chain management products.  Most of Checkpoint’s claims were for patent infringement.  The complaint included one copyright infringement claim, but Checkpoint sought leave to drop the count in order to streamline the litigation.  USS argued that any dismissal of the claim should be with prejudice, and that it should therefore receive an award of attorneys’ fees under Section 505.

The court sided with Checkpoint, and dismissed the claim without prejudice. It believed Checkpoint’s explanation that the amendment was for the purpose of reducing litigation expense, and found no prejudice to USS.  Similarly, the court declined to find USS a “prevailing party” for purposes of Section 505, as no material aspect of the parties’ relationship had changed.  Even if it was a prevailing party, however, the court foudn that USS was not entitled to a discretionary award of fees.


Voluntary Dismissal

Wise v. Williams, Case No. 3:11-cv-00572 (M.D. Tenn. June 1, 2012)

 “This case concerns Defendants’ alleged infringement of a musical work composed by Plaintiffs, all members of the band Tenspoke Indies.”  Plaintiffs sued soon after Defendants released a song Plaintiffs considered infringing.  Defendants repeatedly denied having ever heard of Plaintiffs’ song, but the litigation continued until Plaintiffs discovered an email that they claim caused them to realize that Defendants really hadn’t ever had access to their song.  At that point, Plaintiffs filed a notice of voluntary dismissal, but the court refused to accept it–requiring them to file a motion instead.  They did, seeking dismissal without prejudice and without conditions on refiling.

The court granted dismissal without prejudice, crediting Plaintiffs’ explanation for dismissing.  The court declined to dismiss with prejudice because it did not wish to completely foreclose Plaintiffs from any possible future remedy. It was also leery of Defendants’ expressed desire to seek fees as a prevailing party, given the early stage of the litigation.  Nevertheless, the court also recognized that Defendants had incurred significant litigation expenses, so it remanded the matter to the magistrate judge–who was more intimately familiar with the case–to make a decision on whether to award Defendants any of their fees.