R.J. Control Consultants, Inc. v. Multiject, LLC

RECOMMENDED FOR PUBLICATION
Pursuant to Sixth Circuit I.O.P. 32.1(b)
File Name: 24a0075p.06

UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT

┐
RJ CONTROL CONSULTANTS, INC.; PAUL E. ROGERS,
│
Plaintiffs-Appellants, │
> No. 23-1591
│
v. │
│
MULTIJECT, LLC; RSW TECHNOLOGIES, LLC; JACK │
ELDER, │
Defendants-Appellees. │
┘

Appeal from the United States District Court for the Eastern District of Michigan at Detroit.
No. 2:16-cv-10728—David M. Lawson, District Judge.

Decided and Filed: April 3, 2024

Before: SILER, COLE, and MATHIS, Circuit Judges.
_________________

COUNSEL

ON BRIEF: Eric Scheible, Jonathan D. Sweik, FRASCO CAPONIGRO WINEMAN
SCHEIBLE HAUSER & LUTTMAN, Troy, Michigan, for Appellants. David C. Purdue,
PURDUE LAW OFFICES, LLC, Toledo, Ohio, for Appellee RSW Technologies, LLC. Richard
L. McDonnell, INTREPID LAW GROUP PLC, Rochester, Michigan, for Appellees Multiject,
LLC and Jack Elder.
_________________

OPINION
_________________

MATHIS, Circuit Judge. This case involves the alleged infringement of a copyright on
software code used in an industrial control system. This is the third time this case has come
before us. RJ Control Consultants, Inc. and its sole shareholder, Paul Rogers (collectively,
“Plaintiffs”), appeal the district court’s exclusion of their proposed expert and the grant of
 No. 23-1591 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 2

summary judgment to Multiject, LLC; its sole owner, Jack Elder; and RSW Technologies, LLC
(collectively, “Defendants”). In the first appeal, we reversed the district court’s grant of
summary judgment to Defendants on Plaintiffs’ copyright-infringement claim related to the
software code and remanded the case to the district court “for the taking of additional evidence.”
RJ Control Consultants, Inc. v. Multiject, LLC, 981 F.3d 446, 458–59 (6th Cir. 2020) (RJ
Control I). We dismissed the second appeal for lack of appellate jurisdiction. RJ Control
Consultants, Inc. v. Multiject, LLC, No. 22-1102, 2023 WL 2785764 (6th Cir. Apr. 5, 2023) (RJ
Control II). Because the district court did not abuse its discretion in excluding Plaintiffs’
proposed expert and because the district court did not err in granting summary judgment to
Defendants, we affirm.

I.

We previously summarized the facts underlying this matter as follows:

This is a copyright dispute over the use of software code and technical drawings
for an industrial control system related to plastic injection molding. . . .
The district court characterized this as a “business dispute which soured a
friendship.” That friendship was between . . . Rogers and . . . Elder. Rogers was
the principal and sole shareholder of [RJ Control], a Michigan company that
creates industrial control systems. Elder is the sole owner of [Multiject], a
Michigan business which engineers and sells various industrial accessories related
to plastic injection molding. Their friendship turned into a business relationship
when Elder approached Rogers seeking Rogers’s expertise and assistance in
developing a control system for an injection molding machine.
In 2008, Rogers and Elder entered into an oral agreement whereby Rogers would
develop a rotary turntable control system for Elder and Multiject. This turntable
control system is the “brain” of the turntable, allowing the turntable to move and
operate. RJ Control, through Rogers’s work, updated the control system design in
2013, labeling the newest iteration as “Design 3.” The parties dispute the
invoicing for Design 3.
In March of 2014, Elder asked Rogers for copies of Design 3’s diagrams as well
as the software source code “in case something happened” to Rogers. Rogers
disclosed that information to Multiject, believing that Multiject and Elder would
not improperly use or disclose the information to third parties. Three days after
providing that information to Multiject, Elder informed Rogers and RJ Control
that Elder and Multiject would no longer need Rogers’s services and would
instead use [RSW] for the assembly and wiring of the control systems. Elder said
that Multiject would like to continue working with Rogers as a technical
 No. 23-1591 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 3

consultant for the system design and that Multiject appreciated his expertise but
that “this comes down to a business decision.”
Multiject and RSW—RJ Control’s replacement—had a long-standing business
relationship with each other, and Multiject was already considering switching to
RSW when it asked Rogers for the design diagrams. Elder claims that Multiject
was increasingly concerned with Rogers’s pricing, worrying that Rogers was
charging Multiject too much relative to competitors, at least to the extent Rogers
was performing manual labor rather than designing the systems. For that reason,
Elder and Multiject decided to “switch out” RJ Control and Rogers for RSW, for
purposes of manufacturing rotary tables.
On the same day that Elder informed Rogers that Multiject would be using RSW
to assemble and wire the control systems, RSW sent Elder a quote that explicitly
referenced the assembly and wiring of “RJ Table Control.” Elder, Multiject, and
RSW used Design 3—both the software code and the technical drawings—in the
assembly and wiring of new control systems. RSW did not make any changes in
the design when it used Design 3. RSW claims that it did not know Rogers and
RJ Control had separately designed Design 3 and did not know there was dispute
as to whether Elder properly paid Rogers for that work; that is to say, RSW
believed Multiject had permission to build the control systems using the software
and technical drawings.
On February 17, 2016—nearly two years after Rogers initially supplied the
software code and technical drawings to Elder—Rogers obtained two Copyright
Certificates of Registration: one for the “Control System Turn Table Software:
Design 3” (i.e., the software code) and another for “Control System Turn Table
Schematics: Design 3” (i.e., the technical drawings).
Nearly two weeks after receiving those copyrights, RJ Control brought suit
against Multiject, Elder, and RSW. Over a year later, RJ Control filed an
amended complaint, adding Rogers as a plaintiff. That amended complaint
brought several federal and state law claims: (1) copyright infringement,
(2) trademark infringement, (3) violation of the Michigan Consumer Protection
Act, (4) breach of contract, (5) unjust enrichment, (6) conversion, and (7) tortious
interference with contract/business expectancy.

RJ Control I, 981 F.3d at 450–52 (footnotes omitted).

The district court granted summary judgment to Defendants on Plaintiffs’ copyright-
infringement and trademark-infringement claims and declined to exercise supplemental
jurisdiction over Plaintiffs’ remaining state-law claims. Id. at 452. Plaintiffs appealed the
dismissal of its copyright-infringement claim. Id. We affirmed the district court’s decision
related to technical drawings, but we reversed the grant of summary judgment on the software
copyright claim and remanded the case to the district court. Id. at 456–59.
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On remand, the district court entered a supplemental scheduling order establishing
deadlines for expert disclosures and for filing dispositive motions and motions challenging
experts. The district court did not set a trial date.

Plaintiffs timely served their expert disclosures, identifying David Lockhart of Sycamore
Technical Services, LLC and Sycamore Automation and Controls as their expert. Defendants
also timely served their expert disclosures. None of the parties produced expert reports with
their disclosures.

In April 2021, the magistrate judge ordered Multiject to “produce the code that was used
in each control produced by RSW.” R. 87, PageID 2738. Later that same month, the district
court extended the discovery and motions deadlines. It did not, however, extend the expert-
disclosure deadline and stated that “[a]ll other provisions of the supplemental scheduling order
remain in full force and effect.” R. 89.

Multiject and Elder moved to exclude Plaintiffs’ expert on the grounds that Plaintiffs
failed to properly disclose Lockhart because they did not produce an expert report. That same
day, Defendants filed motions for summary judgment. The district court granted the motion to
exclude and the motions for summary judgment.

The district court excluded Lockhart as Plaintiffs’ expert witness because Plaintiffs failed
to comply with their obligation to produce an expert report. And the court found that Plaintiffs’
failure to comply with its disclosure obligations was neither substantially justified nor harmless.
The district court then granted Defendants’ motions for summary judgment, finding that
Plaintiffs had “failed to put forth any expert evidence that identifies any specific portions of the
code that they claim are protectible.” R. 106, PageID 4118.

After Plaintiffs appealed, we dismissed the appeal for lack of appellate jurisdiction,
holding that the district court’s decision was not final because the court had not disposed of
Multiject and Elder’s amended counterclaim. RJ Control II, 2023 WL 2785764, at *2.

The district court then dismissed the pending counterclaim without prejudice. Plaintiffs
timely appealed.
 No. 23-1591 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 5

II.

We begin with some of the basics of copyright law. The U.S. Constitution authorizes
Congress to “secur[e] for limited Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries.” U.S. Const. art. I, § 8, cl. 8. With that authority, Congress
has passed laws granting exclusive copyrights to “original works of authorship fixed in any
tangible medium of expression.” 17 U.S.C. § 102(a). The term “original” means “the work was
independently created by the author” and “possesses at least some minimal degree of creativity.”
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (citation omitted).
Copyright protection “grants an author an exclusive right to produce his work . . . to encourage
the production of works that others might reproduce more cheaply.” Google LLC v. Oracle Am.,
Inc., 141 S. Ct. 1183, 1195 (2021).

Although a copyright owner enjoys various exclusive rights, see 17 U.S.C. § 106, “[t]he
mere fact that a work is copyrighted does not mean that every element of the work may be
protected,” Feist Publ’ns, 499 U.S. at 348. To that end, Congress has placed limits on copyright
protection: “In no case does copyright protection for an original work of authorship extend to
any idea, procedure, process, system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained, illustrated, or embodied in such work.”
17 U.S.C. § 102(b). Thus, “copyrights protect ‘expression’ but not the ‘ideas’ that lie behind it.”
Google, 141 S. Ct. at 1196; see Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d
522, 534 (6th Cir. 2004), abrogated on other grounds by eBay Inc. v. MercExchange, L.L.C., 547
U.S. 388 (2006). And, as we have explained, “the task of separating expression from idea in this
setting is a vexing one.” Lexmark, 387 F.3d at 535.

The Computer Software Copyright Act of 1980 extended copyright protection to
computer programs. Google, 141 S. Ct. at 1196. The Act defines a “computer program” as “a
set of statements or instructions to be used directly or indirectly in a computer in order to bring
about a certain result.” 17 U.S.C. § 101.

If a person improperly copies the work of a copyright owner, the copyright owner can
seek relief by pursuing a copyright-infringement claim. To succeed on a copyright-infringement
 No. 23-1591 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 6

claim, the claimant must prove two elements: “(1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original.” Feist Publ’ns, 499 U.S. at 361.
The second element, at issue here, “tests whether any copying occurred (a factual matter) and
whether the portions of the work copied were entitled to copyright protection (a legal matter).”
Lexmark, 387 F.3d at 534. To determine if a work is entitled to copyright protection, courts
consider several “qualifications,” including two that are relevant here: the doctrines of merger
and “scenes a faire.” Premier Dealer Servs., Inc. v. Allegiance Adm’rs, LLC, 93 F.4th 985, 989–
90 (6th Cir. 2024). We discuss these doctrines in more detail in Part III.C below.

III.

On appeal, Plaintiffs raise three issues: (1) whether we lacked jurisdiction to decide RJ
Control I; (2) whether the district court abused its discretion in excluding Lockhart as an expert
witness following Plaintiffs’ failure to provide an expert report; and (3) whether the district court
erred in granting summary judgment to Defendants. We take each issue in turn.

A.

RJ Control I. Plaintiffs seek vacatur of our decision in RJ Control I. As mentioned
above, in RJ Control II, we dismissed Plaintiffs’ appeal for lack of jurisdiction because, at the
time of the appeal, Multiject and Elder’s amended counterclaim remained pending in the district
court. 2023 WL 2785764, at *2. This necessarily means that we also lacked appellate
jurisdiction when we decided RJ Control I because the amended counterclaim was pending at the
time of that decision as well. Therefore, we will vacate our decision in RJ Control I. Still, we
affirm the district court’s grant of summary judgment to Defendants on Plaintiffs’ copyright-
infringement claim related to the technical drawings for the reasons provided in RJ Control I, as
Plaintiffs do not argue that the RJ Control I’s decision on that claim was erroneous. 981 F.3d at
454–57.

Plaintiffs also request that we vacate “all dispositive rulings by the district court based
on” RJ Control I. D. 37 at p.37. But there is no basis for doing so. And Plaintiffs offer none.
The district court had jurisdiction at the time(s) it issued any “dispositive rulings.”
 No. 23-1591 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 7

B.

Motion to Exclude Plaintiffs’ Expert. Next, we consider whether the district court abused
its discretion in disqualifying Plaintiffs’ proposed expert witness. We review the exclusion of
expert testimony under Federal Rule of Civil Procedure 37(c)(1) for an abuse of discretion.
Dickenson v. Cardiac & Thoracic Surgery of E. Tenn., P.C., 388 F.3d 976, 983 (6th Cir. 2004).
The “district court abuses its discretion when it relies on clearly erroneous findings of fact, when
it improperly applies the law, or uses an erroneous legal standard.” Bisig v. Time Warner Cable,
Inc., 940 F.3d 205, 218 (6th Cir. 2019) (quoting Stough v. Mayville Cmty. Schs., 138 F.3d 612,
614 (6th Cir. 1998)).

Federal Rule of Civil Procedure 26(a)(2)(A) requires parties to disclose expert witnesses.
If a party relies on a retained expert witness (like Lockhart), in addition to disclosing the expert,
the party must produce an expert report that includes the expert’s qualifications, opinions, and
the information the expert relied on for his opinion. Fed. R. Civ. P. 26(a)(2)(B).

Rule 26(a)(2) also outlines timing requirements for expert disclosures. The default
deadline for expert disclosures is “at least 90 days before the date set for trial or for the case to be
ready for trial.” Fed. R. Civ. P. 26(a)(2)(D)(i). The district court can modify the default
deadline by court order. Fed. R. Civ. P. 26(a)(2)(D).

The district court ordered the parties to disclose their experts by February 26, 2021.
Plaintiffs timely served their expert disclosures on Defendants by that deadline, identifying
Lockhart as their retained “expert in industrial control system design, engineering, and
integration including, but not limited to, control panel design, implementation, programming,
performance, and integration as well as concept development and evaluation.” R. 93-8, PageID
3341–42. But Plaintiffs did not produce an expert report. Instead, Plaintiffs stated that “[f]urther
substance and basis of Mr. Lockhart’s opinions will be provided once the [district c]ourt rules on
Plaintiff’s Motion to Compel Discovery [ECF No. 54], in accordance with the Court’s further
scheduling order(s), and in accordance with Fed. R. Civ. P. 26(a)(2) and Fed. R. Civ. P. 26(e).”
Id. at 3342.
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Plaintiffs never supplemented their expert disclosure or produced an expert report. And
though the district court later extended the deadline to complete discovery, it did not extend the
expert-disclosure deadline.

Because Plaintiffs failed to properly disclose Lockhart as an expert, the district court
excluded him under Rule 37(c)(1). That rule bars a party from using information or a witness “to
supply evidence on a motion, at a hearing, or at a trial” when the party fails to comply with Rule
26(a)’s requirements. Fed. R. Civ. P. 37(c)(1). The exclusion of such evidence is “automatic
and mandatory” unless the offending party can show that its nondisclosure was substantially
“justified or harmless.” Dickenson, 388 F.3d at 983 (quoting Musser v. Gentiva Health Servs.,
356 F.3d 751, 758 (7th Cir. 2004)); Roberts ex rel. Johnson v. Galen of Va., Inc., 325 F.3d 776,
782 (6th Cir. 2003).

We have explained that district courts should consider five factors when assessing
substantial justification and harmlessness. Those factors are:

(1) the surprise to the party against whom the evidence would be offered; (2) the
ability of that party to cure the surprise; (3) the extent to which allowing the
evidence would disrupt the trial; (4) the importance of the evidence; and (5) the
nondisclosing party’s explanation for its failure to disclose the evidence.

Howe v. City of Akron, 801 F.3d 718, 748 (6th Cir. 2015) (quoting Russell v. Absolute Collection
Servs., Inc., 763 F.3d 385, 396–97 (4th Cir. 2014)). “District courts have broad discretion in
applying these factors and need not apply each one rigidly.” Bisig, 940 F.3d at 219 (citation
omitted).

In considering these factors, we hold that the district court did not abuse its discretion in
excluding Lockhart as Plaintiffs’ expert.

1. Surprise to the Opposing Party

Plaintiffs contend that the Defendants should not have been surprised about Lockhart’s
identity and anticipated testimony based on their expert disclosure. Although Defendants were
aware of Lockhart’s identity and the general areas of his alleged expertise, they had no idea
about the nature of Lockhart’s anticipated testimony, other than he intended to cover “the
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Plaintiffs’ code that was used in each control system . . . , industry standard practices for control
systems and other external considerations, as well as the unique nature of Plaintiffs’ code.” R.
93-8, PageID 3342. Plaintiffs assert that their disclosure was sufficient because they provided
Lockhart’s “opinion regarding RSW and Multiject’s infringing use of RJ Control’s software
code.” D. 37 at p.29. But this misconstrues Plaintiffs’ disclosure, which did not provide the
substance of any of Lockhart’s opinions or the bases and reasons for those opinions. Without
more, it would be difficult for Defendants to combat Lockhart’s opinions at trial. Indeed, the
rules require more. See Reese v. Herbert, 527 F.3d 1253, 1265 (11th Cir. 2008) (“‘Disclosure of
expert testimony’ within the meaning of the federal rule contemplates not only the identification
of the expert, but also the provision of a written report containing ‘a complete statement of all
opinions’ and ‘the basis and reasons therefor.’” (quoting Fed. R. Civ. P. 26(a)(2)(B))).

Additionally, as the district court pointed out, Defendants would not have had an
opportunity to depose Lockhart if the court denied the motion to exclude his testimony because
the discovery period had long been closed. See Fed. R. Civ. P. 26(b)(4)(A). Therefore,
Lockhart’s trial testimony would have been a complete surprise to Defendants. The first Howe
factor favors Defendants.

2. Ability to Cure Surprise & Disruption of Trial

Factors two and three also favor Defendants. The district court found that reopening
discovery was the only way to cure the surprise to Defendants. Even though the district court
had not set a trial date when it excluded Lockhart, it found that reopening discovery would cause
disruptions because its “trial docket [was] extremely congested due to circumstances arising
from the ongoing global pandemic,” such that the court’s “calendar restrictions [did] not permit
the luxury of setting cases for trial when motion practice is all that might be necessary to bring
the case to an efficient resolution.” R. 106, PageID 4109. Indeed, “trial courts have inherent
power to control their dockets. The timing of trials and docket control are matters best left to the
discretion of the trial court.” Anthony v. BTR Auto. Sealing Sys., Inc., 339 F.3d 506, 516–17 (6th
Cir. 2003) (citations omitted).
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Keep in mind, this is not a scenario where Plaintiffs provided the expert report late. They
never provided the report. This means the district court would have had to reopen discovery
more than a year after the discovery deadline to allow Plaintiffs to produce the report and
provide Defendants an opportunity to depose Lockhart. The parties have been litigating this case
since 2016, and reopening discovery would reward Plaintiffs for their inability to obey the
district court’s orders while punishing Defendants. Cf. EQT Prod. Co. v. Magnum Hunter Prod.,
Inc., 768 F. App’x 459, 469 (6th Cir. 2019) (finding that allowing expert testimony would
require the non-defaulting party “to bear the effort and expense necessary to cure [the plaintiff’s]
failure to disclose,” which “would arguably reward [the plaintiff] for its untimeliness and does
nothing to deter similar conduct from future litigants”); Reese, 527 F.3d at 1265 (affirming the
district court’s exclusion of expert affidavit when disclosure “almost seven weeks after the close
of discovery foreclosed the defendants’ opportunity to depose [the expert] and to obtain an
expert of their own”).

Even though we have held that being able to cross-examine an expert during trial helps to
remedy surprise and limit disruptions during trial, EQT Prod., 768 F. App’x at 469 (citing Howe,
801 F.3d at 749), cross-examination here would not be meaningful unless the court reopened
discovery, which it was not obligated to do.

3. Importance of the Evidence

We have said that “this factor can cut both ways. The more important the proof, the
greater the effect of preclusion, but also the greater the harm in tardy disclosure.” Bisig, 940
F.3d at 220 (quotation omitted). The district court determined that it needed expert evidence to
resolve Plaintiffs’ copyright-infringement claim. Even if expert evidence is not always
indispensable to the resolution of copyright claims, Plaintiffs needed expert evidence to rebut the
expert testimony Defendants presented in support of their motions for summary judgment, which
the district court granted. See, e.g., EQT Prod., 768 F. App’x at 469 (finding that evidence was
crucial when the plaintiff “lost on a substantial portion of its claim” because of the exclusion of
evidence). This factor also weighs in Defendants’ favor.
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4. Explanation for Nondisclosure

Plaintiffs offer several reasons why their failure to provide an expert report was harmless
or substantially justified. None has merit.

First, Plaintiffs argue that no harm or prejudice resulted from their failure because
Defendants also did not produce reports for their experts. Plaintiffs’ reliance on the fact that
none of the parties provided expert reports does not show harmlessness or substantial
justification for its failure to do so, particularly considering Defendants were not required to
produce expert reports because they did not disclose any retained experts.

Second, Plaintiffs argue that Defendants should have done more outreach to obtain
Lockhart’s expert report. But Plaintiffs’ attempt to place the onus on Defendants ignores
Plaintiffs’ responsibility to abide by the district court’s orders and provide the required
disclosures. After all, Plaintiffs chose to disclose Lockhart as an expert witness, and it was
Plaintiffs’ responsibility to manage and prosecute their case.

Third, Plaintiffs claim it was “impossible for Plaintiffs’ expert to have reviewed and
analyzed this discovery to include in any report” by the expert-disclosure deadline because the
magistrate judge had not yet ruled on Plaintiffs’ motion to compel discovery of copies of “the
code that was used in each control produced by RSW.” R. 98, PageID 3369. This argument also
falls short: Rogers created the source code at issue and admitted he always had possession of it.
Thus, as the district court found, “the undisputed record contradicts [Plaintiffs’] assertion that
their experts’ analysis of the codebase was delayed or obstructed by any late discovery
production.” R. 106, PageID 4112. And Lockhart did not need the code copies to identify
portions of the source code that were protectable. At best, Lockhart could use the code copies to
determine whether Defendants copied portions of the source code. But that does not answer the
question of the protectability of the code.

Fourth, Plaintiffs’ argument that they operated in good faith that they had until 90 days
before trial to provide the report under Rule 26(a)(2)(D)(i)’s default expert-disclosure deadline is
unavailing. As mentioned above, the default deadline applies only when there is no stipulation
or court order addressing the deadline. See Fed. R. Civ. P. 26(a)(2)(D)(i). Here, the district
 No. 23-1591 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 12

court entered a scheduling order setting February 26, 2021, as the expert-disclosure deadline.
The district court’s deadline governed, not the default deadline in the rules. Even though the
district court modified some discovery deadlines, it never modified the expert-disclosure
deadline. And Plaintiffs never requested an extension of that deadline. Under these
circumstances, Plaintiffs were not substantially justified in failing to provide the report.

Fifth, Plaintiffs contend that they “reasonably misinterpreted” Rule 26(a)(2) and the
district court’s orders and made an “honest mistake” as to when the report was due, rendering
any error harmless and excusing them from the automatic sanctions of Rule 37(c)(1). R. 98,
PageID 3369, 3371. But even if Plaintiffs made an honest mistake about when the report was
due, their failure to provide the report was not harmless. Although Defendants had notice that
Lockhart was Plaintiffs’ proposed expert witness, Defendants had no information about
Lockhart’s qualifications, opinions, and the bases for such opinions. See Howe, 801 F.3d at 747.

* * *

In sum, application of the Howe factors supports the district court’s decision to exclude
Lockhart as an expert witness. Plaintiffs have failed to show that the district court abused its
discretion in disqualifying Lockhart, as the court did not rely on clearly erroneous factual
findings, misapply the law, or use an erroneous legal standard.

C.

Copyright-Infringement Claim. Plaintiffs contend that the district court erred in granting
Defendants’ motions for summary judgment. We review a district court’s grant of summary
judgment de novo. Joe Hand Promotions, Inc. v. Griffith, 49 F.4th 1018, 1021 (6th Cir. 2022).
Summary judgment is proper “if the movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a).
In response to a properly supported motion for summary judgment, the nonmoving party “must
set forth specific facts showing that there is a genuine issue for trial.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 250 (1986) (citation omitted).
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The resolution of Plaintiffs’ copyright-infringement claim turns primarily on whether
Plaintiffs needed expert evidence to defeat Defendants’ motions for summary judgment. We
have never held that we require expert evidence in all cases of copyright infringement of
software code, and we will not do so today. We instead leave the decision “to the discretion of
the trial court under Federal Rule of Evidence 702.” Stromback v. New Line Cinema, 384 F.3d
283, 295 (6th Cir. 2004); see also Kohus v. Mariol, 328 F.3d 848, 857 (6th Cir. 2003) (“Rather,
we leave it to the discretion of the district court to decide to what extent, if any, expert opinion,
regarding the highly technical nature of computer programs, is warranted in a given case.”
(quoting Comp. Assocs. Int’l, Inc. v. Altai, Inc., 982 F.3d 693, 713 (2d Cir. 1992))). We have,
however, opined that when considering the doctrines of merger and scenes a faire as they relate
to a complex technology, “expert testimony is desirable, if not required.” Premier Dealer, 93
F.4th at 990 (quotation omitted); Kohus, 328 F.3d at 856. And the district court is in the best
position to determine whether it requires expert testimony. See Kohus, 328 F.3d at 857 (“Expert
testimony will usually be necessary to educate the trier of fact in those elements for which the
specialist will look.”).

Here, the district court acted within its discretion by requiring expert testimony. The
court determined that “without expert testimony the plaintiff will have difficulty or it may be
even impossible for the plaintiff to establish a factual predicate for his argument that the software
code is protectable.” R. 113, PageID 4193. In doing so, the district court did not misconstrue
our guidance on the use of expert evidence. See Kohus, 328 F.3d at 856 (noting that expert
testimony would “likely be required” in that case to distinguish expression from idea under the
merger doctrine); Premier Dealer, 93 F.4th at 990.

Plaintiffs argue that the district court violated their due-process rights by failing to inform
them that expert evidence was required because “it was the duty of the court to give adequate
notice to the parties that such expert evidence would be necessary.” This argument fails as
Plaintiffs provide no jurisprudential support for it. And they do not acknowledge that the district
court had the discretion to require expert evidence under our caselaw. See, e.g., Kohus, 328 F.3d
at 856; Stromback, 384 F.3d at 295 (noting the district court’s discretion in allowing expert
testimony, especially where the subject matter is “complex or technical, such as a computer
 No. 23-1591 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 14

program”). Also, the Federal Rules of Civil Procedure and Rules of Evidence provided Plaintiffs
further notice of their obligations regarding expert testimony.

And if that were not enough, Plaintiffs had multiple warnings that they may need expert
evidence in this case. The district court questioned (more than once) how it could determine
copyrightability of the software program without expert evidence. Plaintiffs also must have
known they needed it because they identified an expert witness. It was Plaintiffs’ failure to
comply with their discovery obligations that prevented them from using expert testimony in
response to Defendants’ motions for summary judgment. Simply put, Plaintiffs have failed to
show that the district court erred by requiring expert evidence.

As the Plaintiffs presented no expert evidence to rebut Defendants’ evidence, Defendants
contend that the related doctrines of merger and scenes a faire operate to bar copyright protection
for Plaintiffs’ software code. We agree.

1. Merger Doctrine

The merger doctrine arises when there are limited ways to express an idea. Premier
Dealer, 93 F.4th at 990. In those situations, “the idea and expression are said to have ‘merged’”
and the expression becomes unprotected. Lexmark, 387 F.3d at 535. The rationale behind the
doctrine is that when there are only a few ways to express an idea, “the first author to create a
work would prevent others from expressing the underlying idea.” Premier Dealer, 93 F.4th at
990.

To distinguish between idea and expression in a software code, courts must undertake a
line-by-line analysis to identify which lines are functional and whether such lines are intertwined
with expressive lines. See Lexmark, 387 F.3d at 535; Automated Sols. Corp. v. Paragon Data
Sys., 756 F.3d 504, 520–21 (6th Cir. 2014); Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510,
1524 (9th Cir. 1992). And if specific lines in the code “are the only and essential means of
accomplishing a given task,” the later copying of those lines is not infringement. Oracle Am.,
Inc. v. Google Inc., 750 F.3d 1339, 1360 (Fed. Cir. 2014) (quotation omitted). In other words, if
unprotected elements are intertwined with any copyrightable elements, the unprotected elements
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are stronger, and the expression will not be protected. See Lexmark, 387 F.3d at 535; Murray
Hill Publ’ns Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 318 n.2 (6th Cir. 2004).

In support of their motions for summary judgment, Defendants offered expert testimony
from Thomas Rozich that the noncopyrightable and copyrightable elements of the software code
are inextricably intertwined, and that the software “code is all functional.” R. 93-7, PageID
3332. Rozich further testified that “[t]he code logic is essential to the idea of the expression
because this is the only way the code will be able to make the parts work with each other.” Id.

In response to Defendants’ motions for summary judgment, Plaintiffs could offer no
expert testimony and they failed to put forth a line-by-line analysis detailing which lines of the
software code are functional and whether those lines intertwine with expressive lines. Instead,
Plaintiffs offered Rogers’s declaration, in which he generally claimed that the code “is the
expression of [his] views about the unique functions to be performed by the Control System,”
noting that “[t]he options available to [him] as the source code author to design and implement
[his] vision . . . are virtually limitless, with the possible combinations to express the intended
result bound only by [his] creative process.” R. 100-13, PageID 3537. According to Rogers,
“[o]ne input is as good as another.” Id. at 3540. But Rogers’s declaration fails to create a
genuine dispute of material fact as to the protectability of the code for two reasons.

First, Rogers’s declaration is not expert evidence. Plaintiffs never disclosed Rogers as an
expert witness and, as such, they did not comply with Rule 26(a)(2)(C). That Rule requires
parties that use nonretained experts to make a disclosure with the “subject matter” of the
expected testimony and “a summary of the facts and opinion” that serve as the basis for the
expert’s testimony. Fed. R. Civ. P. 26(a)(2)(C).

Second, even if we ignore that Rogers, as a lay witness, purports to offer expert
testimony, his declaration does not identify any functional elements of the software code or
provide specific details on the “expressive elements” of his code. See Automated Sols., 756 F.3d
at 520–21 (requiring expert declaration to “elaborate which portions of [the code] are unique,
what makes them unique, or why their particular form is not dictated by practical realities”).
Instead, he summarizes how general aspects of the code are expressive because they “reflect
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[his] vision.” R. 100-13, PageID 3537–38. Rogers refers to “without limitation, . . . the
computer language the device supports, the internal capacity of the device that is programmable
. . . , and elements to store the composition of the computer software” as “expressive elements
unrelated to the basic function of the Control System[.]” Id. Rogers also claims the user
interface and the order of functions for the user interface “are the result of [his] unique vision
and design.” Id. at 3538–39. But vague references to general portions of the code are
insufficient. And despite Plaintiffs’ argument that a line-by-line analysis “is a highly impractical
and unreasonable exercise to undertake,” we need such an analysis to determine which parts of
the code, if any, are protectable. See Lexmark, 387 F.3d at 535 (citations omitted); Automated
Sols., 756 F.3d at 520–21. Furthermore, Rogers’s declaration does not address whether the
functional and expressive elements are inextricably intertwined.

Although Rogers attached lines of code and drawings to his declaration, we cannot
interpret these lines of code to determine which parts of the code are protectable and which are
not. Thus, Plaintiffs needed expert testimony and Rogers did not fill the gap. See Automated
Sols., 756 F.3d at 520–21; United States v. White, 492 F.3d 380, 400–01 (6th Cir. 2007) (noting
that by amending Rule 701, “the drafters intended to preclude a party from surreptitiously
circumventing the reliability requirements set forth in Rule 702 . . . through the simple expedient
of proffering an expert in lay witness clothing and to ensure[] that a party will not evade the
expert witness disclosure requirements” (alteration in original) (quotation omitted)). And despite
Plaintiffs’ arguments to the contrary, that an author can write a software program several ways
does not automatically entitle the program to copyright protection. See Lexmark, 387 F.3d at 537
(finding error in the district court’s determination that “because the Toner Loading Program
could be written in a number of different ways, it was entitled to copyright protection” (quotation
omitted)).

2. Scenes a Faire Doctrine

Plaintiffs’ claim faces a similar fate when we apply the scenes a faire doctrine. This
doctrine “operates to bar certain otherwise creative expression from copyright protection.”
Oracle, 750 F.3d at 1363. “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
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in that setting’ even if alternatives theoretically remain.” Premier Dealer, 93 F.4th at 990
(quoting Lexmark, 387 F.3d at 538). As to software programs specifically, “elements of a
program dictated by practical realities—e.g., by hardware standards and mechanical
specifications, software standards and compatibility requirements, computer manufacturer design
standards, target industry practices, and standard computer programming practices—may not
obtain protection.” Lexmark, 387 F.3d at 535 (citations omitted). In evaluating a copyright,
courts may look at external considerations such as industry standard practices. Kohus, 328 F.3d
at 856. If an expression is standard or commonplace in the industry, then copyright protection
may not be obtained. See Lexmark, 387 F.3d at 535–36 (citation omitted).

Rogers testified that although limited changes were made between previous versions of
the design and Design 3, such changes were made to accommodate new components—a different
controller, a new display, and a new communications protocol (Etherlink). Rogers admitted that
these changes were made “[b]ecause the components that [they] were using were not available
anymore or were not going to be available anymore.” R. 100-14, PageID 3601. Defendants’
experts confirmed as much in their affidavits. Therefore, even considering the evidence in a
light most favorable to Plaintiffs as we must, the software code is not protectable.

Looking to industry standard practices does not change this result. Defendants’ experts
noted several aspects of the code that were dictated by standard programming procedure. On the
other hand, Plaintiffs did not provide any expert evidence on industry standard practices, relying
only on Rogers’s statement in his declaration that such practices do not exist. As such, they
failed to provide sufficient evidence to survive summary judgment.

* * *

Plaintiffs have failed to create a genuine dispute of fact about the protectability of the
software code. Therefore, the district court did not err in granting summary judgment to
Defendants on the copyright-infringement claim.
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IV.

For the foregoing reasons, we AFFIRM the district court’s judgment. We VACATE our
prior decision in RJ Control Consultants, Inc. v. Multiject, LLC, 981 F.3d 446 (2020). And we
DENY the motion to supplement the appellate record with the transcript of the oral argument
from RJ Control II.