Simpson Strong-Tie Company Inc. v. MiTek Inc.

Background

Simpson sued MiTek over MiTek’s alleged copying and use of product names that Simpson gave to structural connectors. Simpson asserted claims for false advertising under federal and California law, passing off under federal law, unfair competition under California law, and copyright infringement.

The copyright claim concerned Simpson’s Wood Construction Connectors catalogs, particularly the alphabetical product indexes. Simpson initially asserted infringement involving 18 registered catalogs from 2000 through 2020. During the case, Simpson narrowed the claim to its two most recent catalogs, then to new material in the alphabetical product index in those catalogs.

The court denied MiTek’s motion to dismiss the copyright claim and later denied both parties’ motions for summary judgment, finding that factual disputes remained about which parts of the indexes were protected and how much copying occurred. After a bench trial, the court ruled for MiTek on all of Simpson’s claims. For the copyright claim, the court found that MiTek’s copying was too limited to be legally actionable and also concluded that the copying would be protected as fair use even if it were actionable.

Attorney’s-Fee Motion

MiTek sought $1,467,953.15 in attorney’s fees under Section 505 of the Copyright Act. That law allows a court to award reasonable fees to the winning party, but the award is discretionary rather than automatic. MiTek argued that Simpson’s litigation positions were unreasonable and that MiTek should recover fees for all of its counsel’s work in the case. Simpson argued that MiTek was not entitled to fees, that any award should be limited to work on the copyright claim, and that the requested amount was unreasonable.

The court considered the relevant circumstances, including MiTek’s success, the reasonableness of Simpson’s arguments, whether the claim was frivolous, Simpson’s motivation, deterrence and compensation, and the purposes of copyright law.

MiTek’s complete success favored a fee award. However, the court found that Simpson’s copyright claim, although weak, was not objectively unreasonable. MiTek’s efforts to defeat the claim earlier had been unsuccessful, and the court had previously found that factual disputes could be decided in Simpson’s favor. The court also found that the claim was not frivolous, that MiTek had not shown bad faith or an improper motive, and that the record did not show that Simpson had made an abusive or overaggressive copyright claim requiring deterrence.

The court further concluded that the purposes of copyright law weighed against awarding fees. Although MiTek’s successful defenses promoted those purposes in some respects, MiTek did not identify unusually significant copyright issues that the litigation had clarified, and Simpson’s claim was not objectively unreasonable.

The court therefore declined to exercise its discretion to award fees and denied MiTek’s motion for attorney’s fees.

Motions to Seal

MiTek and Simpson separately moved to seal the same attorney billing records. MiTek argued that the records contained attorney work product, information that could affect future litigation or negotiations, and sensitive fee information that competitors could exploit.

Because the fee motion did not concern the merits of the parties’ claims or defenses, the court applied the lower “good cause” standard for sealing. The court found that MiTek had not shown that the records disclosed attorney work product or that public disclosure would cause specific harm. The court also noted that unredacted versions of the records had already been filed publicly and that billing rates and hours generally do not justify sealing.

Judge Virginia K. Demarchi denied both parties’ administrative motions to seal and directed the Clerk’s Office to unseal the provisionally sealed documents at Docket Nos. 201-1 through 201-4 and 204-2 through 204-5.

Disposition

MiTek’s motion for attorney’s fees was denied. The parties’ administrative motions to seal were also denied.