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`UNITED STATES DISTRICT COURT
`
`MIDDLE DISTRICT OF FLORIDA
`
`ORLANDO DIVISION
`
`PACIFIC COAST MARINE
`
`WINDSHIELDS LIMITED,
`
`Plaintiff,
`
`v.
`
`Case No: 6:12-cv-33-Orl-28DAB
`
`MALIBU BOATS, LLC, MARINE
`HARDWARE, lNC., TRESSMARK, |NC.,
`MH WINDOWS, LLC and JOHN F.
`
`PUGH,
`
`Defendants.
`
`
`ORDER
`
`This case is before the Court on Defendants’ Consolidated Motion for Summary
`
`Judgment (Doc. 211) and Plaintiffs Motion for Summary Judgment (Doc. 176).
`
`in a prior
`
`Order, this Court resolved issues raised in these motions, including patent inventorship,
`
`the shop right affinnative defense, and damages. (Order, Doc. 420). This Order addresses
`
`' the remaining issues pertaining to Plaintiff Pacific Coast Marine Windshields Limited's
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`claim for copyright infringement‘ and Defendant Malibu Boats. LLC’s counterclaim for
`
`breach of contract.’-' Because Defendants are not entitled to summary judgment on the
`
`
`
`" This case has had three case numbers. (Case No. 6:10-cv—'l285, Case No. 6:11-
`cv—133, and Case No. 6:12—cv-33). Unless otherwise noted, citations to the record are to
`Case No. 6:12-cv—33. Pacific's copyright claim was not asserted in the most recent
`Complaint, (Doc. 69), but it was asserted in the First Amended Complaint in Case No. 6:10-
`cv—1285. (Case No. 6:10-cv—1285, Doc. 37’, 111142-47). The parties agree that the copyright
`claim is before the Court.
`(Joint Notice, Doc. 415).
`
`3 Other issues were raised in the motions, but the parties represent that those issues
`have been resolved.
`(Doc. 415). Pacific aiso has a remaining claim for trade secret
`misappropriation, (Q), but that claim is not before the Court on these motions.
`
`

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`issue of copyright infringement and Pacific is not entitled to summary judgment on the issue
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`of breach of contract, the motions must be denied.
`
`I.
`
`Summary Judgment Standard
`
`Summary judgment shall be granted “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. 58(a).
`
`In ruling on a motion for summary judgment, a court construes the
`
`facts and all reasonable inferences therefrom in the light most favorable to the nonmoving
`
`party, and it may not weigh evidence or determine credibility. Reeves v. Sanderson
`
`Plumbing Prods.,' Inc, 530 U.S. 133, 150 (2000). However, summaryjudgment should be
`
`granted “against a party who fails to make a showing sufficient to establish the existence
`
`of an element essential to that party's case, and on which that party will bear the burden of
`
`proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1988).
`
`ll.
`
`Copyright Claim
`
`A.
`
`Background Facts3
`
`Defendants move for
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`summary judgment on Pacific’s
`
`claim of copyright
`
`infringement.
`
`(Doc. 211 at 30-37).
`
`In 2007, Pacific obtained a design patent (“the ’070
`
`Patent”) for a boat windshield.
`
`(‘O70 Patent, Doc. 69, at 34-38). Pacific also obtained two
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`certificates of registration—Registration Numbers VAu 956-510 and TXu 1-5"/’1—279—from
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`the Copyright Office for data and files with computer aided design (CAD) pictures of a
`
`windshield.
`
`(Certificates of Registration, Docs. 182-4 & 182-5). The certificates of
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`registration have an effective date of February 5, 2008, and they state that the work was
`
`3 The facts in this case are set out extensively in the prior Order on the motions for
`summary judgment.
`(Doc. 420). Consequently, detailed facts are not presented in this
`Order, except those relevant to pending issues.
`
`

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`completed in 2006.
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`(Docs. 182-4 8. 182-5). Both certificates list the title of the work as
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`"Vent Wing Marine Windshield" and the author as Pacific.
`
`(Docs. ‘I82-4 & 182-5).
`
`With its application for registration, Pacific deposited a compact disc containing a
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`representation of the work for which it was seeking copyright protection.
`
`(Ex.
`
`‘I to Walters
`
`Decl., Doc. 182-1).‘ The pictures in the ‘O70 Patent and the copyright deposit materials
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`are similar, but there are some differences.
`
`(|_cl_. at 6; Doc. 69 at 34-38). According to
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`Darren Bach. the Chief Executive Officer and owner of Pacific, the image submitted to the
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`Copyright Office is more detailed than the drawings in the ’070 Patent and contains “all of
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`the dimensions, geometry and extrusion profiles of the various windshield parts.” (Bach
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`DecI., Doc. 254, 11 3). The evidence indicates that the files were last saved5 on January
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`28. 2008, by someone with the user name “Stevem." (Exs. 6 & 7 to Walters Decl, Docs.
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`182-6 & 182-7). According to Bach, the deposit materials are "electronic copies” of original
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`computer files and the metadata on the deposited file "merely reflects the date that the
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`copy was made."
`
`(Bach Decl., Doc. 254, 1] 4). Bach also testified that he directed an
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`individual named Steve Michell to create the copies.
`
`(|d_.).
`
`Defendants argue that
`
`the deposit materials accompanying the registration
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`application are defective because there is a significant difference in the design between
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`earlier drawings and the deposit materials and because there are errors in the dates and
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`creators of the documents.
`
`(Doc. 211 at 30-37). Pacific responds that it is seeking to
`
`4 Citations to depositions and declarations are indicated by "[Last Name] Dep." or
`"[Last Name] Decl.” Deposition page numbers refer to the individual pageof the deposition
`transcript, not the page of the document o.n the docket.
`
`5 Defendants point out that the files also state they were created on January 28,
`(Doc. 211 at 32). However, Pacific argues that they were created earlier and then
`2008.
`copied on that date for deposit with the Copyright Office.
`(Doc. 253 at 32 n.‘l7).
`
`

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`enforce a copyright on the CAD files that were filed with the Copyright Office, not the design
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`of the windshield or earlier drawings, and that any errors in the deposit materials are
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`insufficient to render the registration invalid.
`
`(Doc. 253 at 29-32).
`
`B.
`
`Analysis
`
`“[N]o civil action for infringement of the copyright in any United States work shall be
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`instituted until preregistration or registration of the copyright claim has been made .
`
`.
`
`.
`
`17 U.S.C. § 411(a). Generally, a certificate of registration issued by the Copyright Office
`
`is sufficient to satisfy the requirement of § 411(a), even if it contains inaccurate information.
`
`St. Luke's Cataract & Laser |nst., P.A. v. Sanderson, 573 F.3d 1186, 1201 (11th Cir. 2009).
`
`However,
`
`if “inaccurate information was included on the application for copyright
`
`registration with knowledge that
`
`it was inaccurate” and if
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`‘”the inaccuracy of the
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`information, if known, would have caused the Register of Copyrights to refuse registration,”’
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`the prerequisites of § 411(a) have not been met.
`
`ld_. (quoting 17 U.S.C. § 411(b)(1)).
`
`in addition to a registration application, an individual seeking registration of an
`
`unpublished work must deposit a complete copy of the work with the Copyright Office. 17
`
`U.S.C. § 408(b)(1). The deposited material must be a bona fide copy of the original, not
`
`merely a reconstruction or later version of the work. E Coles v. Wonder, 283 F.3d 798,
`
`801-02 (6th Cir. 2002); Kodadek v. MTV Networks, lnc., 152 F.3d 1209, 1211-12 (9th Cir.
`
`1998); Pegasus Imaging Corp. v. Allscripts Healthcare Solutions, |nc., No. 8:08-cv—1?70-
`
`T-30EAJ, 2010 WL 497720, at *8 (MD. Fla. Feb. 9, 2010).
`
`Some courts have found that minor errors in a registration application, such as an
`
`error in the date of creation, are harmless and that a plaintiff may thus proceed with a
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`copyright infringement suit. E Gallup, Inc. v. Kenexa Corp., 149 F. App’x 94, 96 (3d Cir.
`
`2005); Dynamic Solutions,
`
`Inc. v. Planning & Control, Inc, 646 F. Supp. 1329, 1341
`
`

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`(S.D.N.Y. 1986). However, other courts have found that if a registrant submits something
`
`other than a complete bona fide copy for deposit, the error is material. Torres—Negron v. J
`
`
`& N Records LLC, 504 F.3d 151, 158 (3d Cir. 2007); see also Geoscan, Inc. of Tex. v.
`
`
`
` Geotrace Tech. inc., 226 F.3d 387, 393 (5th Cir. 2000).
`
`Contrary to Defendants’ argument that the registration requirement implicates the
`
`Court's subject matter jurisdiction, the requirement in § 411(a) “is a precondition to filing a '
`
`claim,” not a jurisdictional predicate. Reed Elsevier Inc. v. Muchnick, 559 U.S. 154, ‘I5?
`
`(2010). Deposit materials, part of the registration process, are also a precondition.
`
`Defendants are not entitled to summary judgment on Pacific’s copyright claim. The
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`files were deposited to obtain a copyright on the files submitted, not on the windshield or
`
`on earlier drawings. (E Docs. 182-1, 182-4, & ‘I82-5). Additionally, the Amended
`
`Complaint states that Pacific’s copyright claim pertains to the particular files submitted to
`
`the Copyright Office. (Case No. 6:10-cv—1285, Am. Compl., Doc. 37. 1] 43). Defendants’
`
`argument that these drawings represented a final design in the evolutionary process, not
`
`a bona fide copy of the design, is not we|l—taken because the copyright was for the files,
`
`not an earlier design. Si , 149 F. App’x at 95 (“The words ‘material deposited for
`
`registration’ indicate that the registration attaches to the material deposited .
`
`.
`
`.
`
`.”).
`
`Additionally, the fact that metadata of the deposit material included a statement that
`
`the material was created in 2008 by a person named “Stevem” does not result in a
`
`conclusion that the copyright is void as a matter of law. As noted by Pacific, there is a
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`question of fact as to whether the date appears only because the files were copied on that
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`date for submission to the Copyright Office and whether Steve Michell was erroneously
`
`listed as a creator because he was the person who electronically copied Pacific's original
`
`

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`files at Bach's direction. (Bach Dec|., Doc. 254, ‘H 4). And, even if the deposit materials or
`
`registration application contain errors, Defendants have not established or even argued
`
`that any errors were made with knowledge or would have caused the Copyright Office to
`
`deny the registration. (fie Doc. 211 at 30-37; Reply, Doc. 263, at 14). Defendants’ motion
`
`for summary judgment as to the copyright claim must be denied.
`
`lll.
`
`Breach of Warranty Claim
`
`A.
`
`Background Facts
`
`Pacific moves for summaryjudgment on Malibu’s counterclaim of breach of contract
`
`based on an express warranty.3 (Doc. 178 at 26-30).
`
`It is undisputed that an express
`
`warranty applies to the windshields. that Pacific sold to Malibu.7 (Id_. at 26; Doc. 205 at 26-
`
`29). The warranty was a “limited warranty covering the quality and workmanship" of
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`Pacific’s windshields.
`
`(Doc. 177-11 at 9).
`
`It provided that “[a]ny product claime[d] to be
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`defective by the purchaser must be returned in [its] original packaging, including the quality
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`control tag supplied with the product” and required a purchaser who noticed a defect to
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`5 In addition to its express warranty claim, Malibu raises an argument of implied
`warranty of fitness for a particular purpose for the first time at the summaryjudgment stage.
`(Doc. 205 at 28; see also Case No. 6:10—cv-1285, Doc. 45). “A pleading that states a claim
`for relief must contain .
`.
`. a short and plain statement of the claim showing that the pleader
`is entitled to relief .
`.
`.
`Fed. R. Civ. P. 8(a). Affirmative defenses can be raised for the
`first time at the summary judgment stage, (gag Doc. 420 at 14-15), but Malibu cites no
`authority that a claim for relief may be raised for the first time at this point. Accordingly,
`the Court will only consider Malibu’s claim for breach of an express warranty.
`
`7 The counterclaim references a Preferred Supplier Agreement. (Case No. 6:10—cv-
`1285, Answer 8. Countercls., Doc. 45, at 17). Pacific and Independent Boat Builders Inc.
`(IBBI), a marine purchasing cooperative that includes Malibu as a member, (i_d_. at 13; Doc.
`178 at 26), entered into the Preferred Supplier Agreement, to which Malibu was not a party.
`(Ex. 11 to Bach Decl., Doc. 177-11, at 3; see also Case No. 6:10-cv—1285, Doc. 45, at 17).
`Nevertheless, Pacific acknowledges that an express warranty applied to Malibu. (Doc. 176
`at 26). The Court will thus only examine the terms of the express warranty, not the
`Preferred Supplier Agreement.
`
`

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`contact Pacific immediately and request a return authorization number, known as an RGA.
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`(|cl_.). Pacific had discretion to either authorize Malibu to “return the goods for repair” or
`
`othenivise to “rectify the defect.” (|_cL). Pacific had a separate "RGA Policy” that set forth
`
`certain required procedures for the purchaser to undertake upon noticing a defect.
`
`(|cl_. at
`
`8).
`
`it is undisputed that Malibu had problems with the windshields and that Pacific
`
`issued a recall. (S3 Bach Dep., Doc. 212-18, at 186). Bach maintains that Pacific fully
`
`addressed the problems.
`
`(Id_. at 18?). Malibu, however, alleges that it incurred substantial
`
`unreimbursed losses because the windshields were defective.
`
`(Bennett Decl., Doc. 206,
`
`‘ll 4)-
`
`Malibu sent a letter to Pacific, claiming a breach of the warranty and asserting
`
`entitlement to unreimbursed expenses.
`
`(Ex. 10 to Paine Decl., Doc. 180-10). According
`
`to Bach, Pacific rejected the warranty claim because Malibu did not comply with the
`
`requirements of purchasers to obtain relief under the warranty agreement and because the
`
`warranty did not contemplate reimbursement for some of Malibu's claim. (Bach Decl., Doc.
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`17?, 1] 19). Malibu argues that it was not required to follow the procedures because the
`
`RGA Policy was modified by the parties‘ course of dealing.
`
`(Bennett Decl., Doc. 206, 1111
`
`8, 10; Doc. 205 at 28-29).
`
`It is uncontested that Pacific provided Malibu with a $219,824
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`credit for replacement windshields, (Bach Decl., Doc. 177,11 19; Doc. 180-10 at 2); Pacific
`
`argues that this was all that was required under the warranty agreement because freight.
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`labor, and materials related to the replacement or repair of defective products were not
`
`included in the warranty and because there is no evidence that Malibu incurred such
`
`expenses, (Bach Decl., Doc. 177.1119; Doc. 176 at 27). Malibu, on the other hand. argues
`
`

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`that it is still entitled to unreimbursed expenses of at least $436,491.
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`(Doc. 180-10; %_e
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`a so Bennett Decl., Doc. 206, 114).
`
`B.
`
`Analysis
`
`The parties agree that this issue should be governed by Illinois law? which provides
`
`that a party can prevail on a claim for the breach of an express warranty by showing “breach
`
`of an affirmation of fact or promise which was made part of the basis of the bargain."
`
`
`
`Wheeler v. Sunbelt Tool Co. Inc., 537 N.E.2d 1332, 1341 (Ill. App. Ct. 1989). “Since
`
`express warranties are contractual in nature, the language of the warranty itself is what
`
`controls and dictates the obligations and rights of the various parties." Hasek v.
`
`'
`
`Daimlerchrysler Corp, 745 N.E.2d 627, 634 (Ill. App. Ct. 2001).
`
`A genuine dispute of material fact remains regarding whether Pacific breached its
`
`warranty. There is no dispute that a defect caused some economic damage to Malibu, but
`
`the existence and amount of unreimbursed expenses of Malibu is contested. Whether
`
`Malibu was required to abide by the terms of the RGA Policy is also disputed. Malibu has
`
`presented evidence on both of these points, (sci Bennett Decl., Doc. 206), and therefore
`
`summary judgment for Pacific is unwarranted.
`
`IV.
`
`Conclusion
`
`Having considered the evidence and arguments presented by the parties, the Court
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`concludes that genuine disputes of material fact remain regarding Pacific’s copyright claim
`
`and Malibu’s breach of contract claim. Accordingly,
`
`it
`
`is hereby ORDERED and
`
`
`
`3 The Preferred Supplier Agreement between Pacific and IBBI states that the
`agreement “shall be interpreted under the laws of the State of Illinois.” (Doc. ‘I77-11 at 6).
`Though the warranty agreement that the parties agree applies to Malibu does not have a
`choice—of-law clause, (lg; at 9), the Court will interpret the agreement under the laws of
`Illinois because the parties agree that Illinois law applies.
`
`

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`ADJUDGED that Plaintiff's Motion for Summary Judgment (Doc. 176) and Defendants‘
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`Consoiidated Motion for Summary Judgment (Doc. 21._1_)_are DENIED a?,afi<e’@a‘ims.
`DONE and ORDERED in Orlando. Flo ' a, on August 23
`__,s'!
` JOHN ANTOON II.
`
`nited States District Judge
`
`Copies furnished to:
`Counsei of Record