The court conducted a hearing in advance of trial to determine whether the asserted works were copyrightable.
On the eve of a jury trial in this case, Judge Gilstrap found before him two opposing motions for summary judgment on copyrightability. Finding that resolving copyrightability within the limited framework of Federal Rule of Civil Procedure 56 would not be faithful to precedent, the Court issued an Order as to Copyrightability and set a Copyrightability hearing to allow the parties to present evidence in support of the abstraction and filtration steps of the abstraction-filtration-comparison test, as addressed in Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 706 (2d Cir. 1992) and later adopted by the Fifth Circuit in Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1341 (5th Cir. 1994). “It is intended,” Judge Gilstrap wrote, “that this hearing will facilitate a determination by the Court as to what is the core protectable expression, if any, covered by each asserted work. Should the Court identify any such core protectable expression, then such determination will subsequently facilitate an accurate “comparison” as part of the infringement analysis by the jury.”

Burden of Proof

The Court noted that the Fifth Circuit has not presently provided clear authority on the burden of proof in the filtration analysis of copyrightability, but that the Eleventh Circuit recently addressed this issue in Compulife Software Inc. v. Newman, 959 F.3d 1288 (11th Cir. 2020). In Compulife, the Eleventh Circuit held that a burden-shifting framework was appropriate, in which plaintiff first proves a valid copyright and factual copying. Id. at 1306. The burden then shifts to defendant to “prove that some or all of the copied material is unprotectable.” Id.  If the defendant so shows, the burden shifts back to the plaintiff to respond. Finding that this burden-shifting framework was a sensible way to determine copyrightability, the Court adopts this framework.


The Court concluded that Plaintiff SAS held that it holds a registered copyright, amply argued that its asserted works are creative, and presented repeated evidence of factual copying. This shifted the burden to Defendant WPL. Defendant WPL then came forward with evidence showing that material within the copyrighted work was unprotectable. But the Court concluded that SAS thereafter failed to show any remaining protectability, either by affirmatively showing some elements of the work to be protectable or by combatting Defendant’s showing of unprotectability.


The Court separately found that the AFC analysis performed by the Plaintiff’s expert was not sufficiently liable in that it found that his failure to filter out unprotectable elements resulted in an improper comparison of unprotectable elements to the accused products, rendering his opinions unreliable and unhelpful to the jury. Accordingly, the Court granted a pending motion to exclude the expert.

The Court then ordered the parties to meet and confer and to file a Joint Status Report setting forth their views on the current status of the case in light of this ruling and identifying any remaining claims ripe for the currently-set January 4, 2021 trial, as well as which, if any, previously asserted pretrial motions need to be renewed or supplemented and why.

SAS – copyrightability

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