1 

UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

SOUTHERN DIVISION 

FORD MOTOR COMPANY, 

 Plaintiff, Case No. 15-cv-10628 

 (consolidated with Case No. 15-11624) 

v. Hon. Matthew F. Leitman 

VERSATA SOFTWARE, INC., et al, 

 Defendants. 

_________________________________/ 

OPINION AND ORDER GRANTING PLAINTIFF FORD MOTOR 

COMPANY’S MOTION FOR SUMMARY JUDGMENT ON (1) FORD’S 

CLAIM FOR DECLARATORY JUDGMENT OF NO COPYRIGHT 

INFRINGEMENT AND (2) DEFENDANTS’ COPYRIGHT 

INFRINGEMENT CLAIM (ECF ## 526, 532) 

 In this action, Versata Software, Inc., Versata Development Group, Inc., and 

Trilogy, Inc. (collectively, “Versata”) assert, among other things, that Ford Motor 

Company committed copyright infringement when Ford copied automotive 

configuration software files known as “.jar” files belonging to Versata. (See 

Versata’s Sec. Am. Counterclaims at ¶¶ 172-73, ECF #244 at Pg. ID 13036-37.) 

Ford denies that allegation and seeks a declaratory judgment that it did not infringe 

Versata’s copyrights. (See Ford Compl. at ¶65, E.D. Mich. Case No. 15-cv-11264, 

ECF #1 at Pg. ID 14.1

) 

                                                            

1

 On July 14, 2015, the Court entered a stipulated order consolidating this action 

(E.D. Mich. Case No. 15-cv-10628) with the action Ford filed in E.D. Mich. Case 
2 

On August 28, 2018, Ford filed a motion for summary judgment with respect 

to (1) its request for declaratory judgment that it did not infringe Versata’s copyrights 

and (2) Versata’s affirmative claim of copyright infringement. (See Mot., ECF #526; 

Corrected Mot., ECF #532.2

) For the reasons that follow, Ford’s motion is 

GRANTED. 

I 

In 1998, Ford hired Versata to develop computer software that would allow 

Ford to more efficiently configure the millions of cars it manufactures each year. 

Versata created that software, called “ACM,” and licensed ACM and other related 

software to Ford. Versata “provided” at least some of the ACM software “to Ford 

in the form of Java ‘jar’ files.” (Declaration of Versata technical consultant Seth 

Krauss at ¶9, ECF 542-3 at Pg. ID 41197.) Many years later, Ford decided to replace 

ACM with its own automotive configuration software. Ford called this software 

“PDO.” 

At some time after Ford began developing PDO, Ford placed certain “.jar” 

files from the ACM software into a Ford software repository. Ford says that it used 

                                                            

No. 15-cv-11264. (See ECF #28.) The parties have made all subsequent filings in 

this action. Unless otherwise indicated, all citations and ECF references in this 

Opinion and Order correspond to the docket numbers in this action (E.D. Mich. Case 

No. 15-cv-10628). 

2

 Ford filed a “corrected” motion that corrected some minor typographic and citation 

errors on August 30, 2018. (See Corrected Mot., ECF #532.) 
3 

these “.jar” files “to confirm that the Ford data output from the ACM[] software 

matched the data output” from Ford’s replacement software. (Corrected Mot., ECF 

#532 at Pg. ID 40809-10.) Ford maintains that this use of the “.jar” files was 

consistent with its ACM software license and did not infringe Versata’s copyrights. 

(See id. at Pg. ID 40818.) 

 Versata disagrees. It says that this copying and use of the “.jar” files was 

“outside the scope” of Ford’s software license and constituted copyright 

infringement. (Versata Resp. Br., ECF #542 at Pg. ID 41114-15.) 

II 

Versata initially supported its copyright claim with expert analysis from Dr. 

Samuel Malek. (See Malek Rpt. at ¶¶ 32-33, 70-71, 421-37, ECF #430-3 at Pg. ID 

29477, 29490, 29663-65.) Dr. Malek opined that Ford “deliberately used” the “.jar” 

files in order to “help ensure that [Ford’s] PDO software functioned and produced 

the same results as ACM.” (Id. at ¶71, Pg. ID 29490.) He concluded that Ford’s 

conduct constituted “copyright infringement based on its creation of unauthorized 

copies of .jar files.” (Id. at ¶435, Pg. ID 29664.) 

On July 9, 2018, the Court excluded Dr. Malek’s copyright opinions in a 

written Opinion and Order. (See ECF #507 at Pg. ID 40234-43.) The Court excluded 

Dr. Malek’s copyright opinions because his analysis failed to filter out and eliminate 

the elements of the ACM software that are unoriginal and unprotected under the 
4 

United States Copyright Act, 17 U.S.C. § 101 et seq. (the “Copyright Act”). Versata 

did not seek reconsideration of that portion of the Court’s order, and Versata later 

informed the Court that it would not replace or supplement Dr. Malek’s excluded 

opinions. (See ECF #514.) Versata therefore has no expert testimony supporting its 

copyright claim. 

III 

Ford filed its current summary judgment motion on August 28, 2018. (See 

Mot., ECF #526; Corrected Mot., ECF #532.) It seeks summary judgment on both 

its request for declaratory relief and on Versata’s affirmative copyright infringement 

claim. The Court held a hearing on the motion on December 19, 2018. 

IV 

A movant is entitled to summary judgment when it “shows that there is no 

genuine dispute as to any material fact . . . .” SEC v. Sierra Brokerage Servs., Inc., 

712 F.3d 321, 326-27 (6th Cir. 2013) (citing Anderson v. Liberty Lobby, Inc., 477 

U.S. 242, 251-52 (1986)) (quotations omitted). At the summary judgment stage, the 

moving party has the initial “burden of production” to show that “‘there is an absence 

of evidence to support the nonmoving party’s case.’” Moore v. Philip Morris 

Companies, Inc., 8 F.3d 335, 339 (6th Cir. 1993) (quoting Celotex Corp. v. Catrett, 

477 U.S. 317, 325 (1986)). If the moving party satisfies this burden, “the nonmoving 

party then must go beyond the pleadings and by affidavits, or by ‘depositions, 
5 

answers to interrogatories, and admissions on file,’ designate ‘specific facts showing 

that there is a genuine issue for trial.’” Id. (quoting Celtoex, 477 U.S. at 325). 

Indeed, the nonmoving party “must present significant probative evidence ... to 

defeat [a properly supported] motion for summary judgment.” Id. at 340. 

When reviewing the record, “the court must view the evidence in the light 

most favorable to the non-moving party and draw all reasonable inferences in its 

favor.” Id. “The mere existence of a scintilla of evidence in support of the 

[nonmoving party’s] position will be insufficient; there must be evidence on which 

the jury could reasonably find for [that party].” Anderson, 477 U.S. at 252. Summary 

judgment is not appropriate when “the evidence presents a sufficient disagreement 

to require submission to a jury.” Id. at 251-252. 

V 

“To succeed in a copyright infringement action, a plaintiff must establish that 

he or she owns a copyrighted creation, and that the defendant copied it.” Kohus v. 

Mariol, 328 F.3d 848, 853 (6th Cir. 2003). However, “[n]ot all copying [of a 

copyrighted work] is actionable.” Id. That is because certain “aspects” of a 

registered work may not be “protectable by copyright.” Id. at 855. For example, 

“unoriginal [] elements – elements that were not independently created by the 

inventor, and that possess no minimal degree of creativity” are not protected under 

the Copyright Act. Id. Indeed, “it is a constitutional requirement that a plaintiff 
6 

bringing an infringement claim must prove copying of constituent elements of the 

work that are original.” Id. at 853 (internal quotation marks omitted; emphasis in 

original). In addition, elements of a disputed work “dictated by efficiency” are not 

protectable. Id. at 856. Furthermore, under the doctrine of merger, “if [a] patentable 

process is embodied inextricably in the line-by-line instructions of the computer 

program, [ ] then the process merges with the expression and precludes copyright 

protection.” Lexmark Intern. Inc. v. Static Control Components, Inc., 387 F.3d 522, 

535 (6th Cir. 2004). Finally, pursuant to the doctrine of scenes a faire, “the 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 [copyright] protection.” Id. 

A court confronted with a copyright infringement action must begin its 

analysis by identifying and “filter[ing] out” these “unprotected” elements of a 

disputed work. Kohus, 328 F.3d at 855. Stated another way, a court must start by 

“identif[ing] which aspects of the artist’s work, if any, are protectible by copyright.” 

Id. 

In the Court’s July 9, 2018, Opinion and Order striking Dr. Malek’s expert 

copyright opinions, it concluded that this filtration analysis is required even where 

there is evidence of direct copying. (See ECF #507 at Pg. ID 40240-43.) 
7 

VI 

Ford argues that it is entitled to summary judgment on the copyright claims at 

issue because (1) Versata has not presented sufficient evidence that the allegedlycopied “.jar” files came from a registered version of the ACM software3

 and (2) 

Versata has not satisfied its burden with respect to the required filtration analysis. 

The Court agrees with both contentions and addresses them, in turn, below. 

A 

The Copyright Act provides that “no civil action for infringement of the 

copyright in any United States work shall be instituted ... until registration of the 

copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a). 

Thus, subject to “certain exceptions ... the Copyright Act [] requires copyright 

holders to register their works before suing for copyright infringement.” Reed 

Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157 (2010). 

Here, Ford has presented evidence that Versata did not register with the 

United States Copyright Office the version of the ACM software from which the 

allegedly-copied “.jar” files came. (See Malek Rpt. at ¶¶ 422-25, ECF #430-3; 

                                                            

3

 The Court recognizes that the version of the ACM software that Versata registered 

with the United States Copyright Office is not in the “.jar” file format. Instead, 

Versata registered human-readable source code that corresponds to computerreadable “.jar” files. Thus, as a technical matter, “.jar” files correspond to, and do 

not come from, registered software. However, for ease of reference, the Court will 

refer above to the “.jar” files as having come from the ACM software. 
8 

Krauss Decl. at ¶¶ 5-7, ECF #542-3 at Pg. ID 41197.) In fact, both parties agree that 

Versata registered only a later version of ACM. (See id.; see also Versata Resp. Br., 

ECF #542 at Pg. ID 41129.) Because Ford produced this undisputed evidence of 

non-registration, the burden shifted to Versata to show that the allegedly-copied 

“.jar” files should be treated as if they are protected by a registration. 

In an attempt to satisfy that burden, Versata argues that its registration of a 

later version of ACM protects the earlier, non-registered version from which the 

allegedly-copied “.jar” files came because the later version is “derivative” of the 

earlier version. Versata contends that since “a derivative work is cumulative of an 

earlier work, the registration of the derivative work relates back [and protects] the 

original work.” (Versata Resp. Br., ECF #542 at Pg. ID 41129, citing cases.4

) 

                                                            

4

 Some courts have held that this theory – known as the “effective-registration 

doctrine” – does not afford protection to an earlier, non-registered work where “the 

registration certificate [for the later, registered work] did not properly identify the 

preexisting work upon which the infringement claim was based.” Oravec v. Sunny 

Isles Luxury Ventures, L.C., 527 F.3d 1218, 1229-30 (11th Cir. 2008). Relying on 

this line of cases, Ford suggested earlier in this action that Versata’s copyright 

infringement claim failed because the registration certificate for the later, registered 

version of ACM did not sufficiently identify the earlier, non-registered version from 

which the allegedly-copied “.jar” files came. This Court need not, and does not, 

decide the purely legal question of whether the effective-registration doctrine applies 

where a registration certificate does not identify an earlier, non-registered version of 

a work. Even if, as Versata contends, the doctrine does apply in those circumstances, 

for the reasons explained above, Versata’s effort to invoke the doctrine would still 

fail due to a lack of evidence linking the two version of the ACM software at issue 

here. 
9 

But Versata has not presented enough evidence to support this theory. More 

specifically, Versata has not sufficiently linked the later, registered version of the 

ACM software to the earlier version from which the allegedly-copied “.jar” files 

came. The primary evidence that Versata presents to tie the two versions together is 

the declaration of its former employee and “technical consultant” Seth Krauss. (See 

Krauss Decl., ECF #542-3.) Krauss says that he “reviewed the registrations” of the 

registered version of the ACM software and concluded that: 

The versions [of the ACM software] registered with the 

Copyright Office are original and later updated versions of 

the software licensed to and used by Ford, and are 

therefore, derivative of that software. The code and 

functionality of the versions used by Ford overlaps 

substantially with the versions of the software registered 

with the Copyright Office. 

(Id. at ¶¶ 6-8, Pg. ID 41197.) 

 Krauss’ declaration does not create a genuine dispute of material fact as to 

whether the later version of the ACM software is, in fact, derivative of the earlier 

version. The relevant statements in the declaration are conclusory. Krauss does not 

identify sufficient facts or evidence to support his opinion that the two versions of 

the ACM software “overlap substantially” and that the registered version of the 

software is therefore “derivative” of the version from which the allegedly-copied 

“.jar” files came. For instance, he does not explain what methodology, if any, he 

used when conducting his analysis of the alleged overlap. Nor does he explain how
10 

the two versions of the ACM software are similar or which specific portions of 

software overlap. Moreover, Krauss does not say whether the portions of the two 

versions that overlap are (1) the allegedly-original (and thus potentially-protected) 

portions or (2) the unoriginal (and thus unprotected) portions derived from opensource materials.5

 Finally, Krauss’ use of the subjective term “overlaps 

substantially” does not provide the Court a sufficiently definite indication of the 

actual extent of the alleged overlap. 

Simply put, Krauss’ declaration does not provide sufficient competent 

evidence to support Versata’s theory that the registration of the later version of the 

ACM software covers and protects the earlier version from which the allegedlycopied “.jar” files came.6 See, e.g., Automated Solutions Corp. v. Paragon Data Sys., 

756 F.3d 504, 521 (6th Cir. 2014) (“Conclusory statements unadorned with 

supporting facts are insufficient to establish a factual dispute that will defeat 

summary judgment”). Accordingly, Ford is entitled to summary judgment on the 

                                                            

5

 As noted in sub-section VI(B) below, Versata has acknowledged that at least some 

portions of the ACM software are not original and came from open-source software 

created by others. (See Krauss Dep. at 187, ECF #542-7 at Pg. ID 41550; Versata 

discovery responses, ECF #528-3 at Pg. ID 40788.) 

6

 Furthermore, it is not even clear from Krauss’ declaration that he ever compared 

the two versions of the ACM software. Instead, he says only that he reviewed the 

registrations of the later version. The lack of clear evidence that Krauss reviewed 

the later version against the earlier version further counsels against accepting 

Krauss’ conclusions. 
11 

copyright infringement claims on the ground that the allegedly-copied “.jar” files are 

not protected by a valid copyright registration. 

B 

As explained above, in analyzing Versata’s copyright claim, the Court must 

“identify[] which aspects” of the ACM software from which the allegedly-copied 

“.jar” files came, “if any, are protectable by copyright,” and must “filter out” the 

unprotectible elements. Kohus, 328 F.3d at 855. In Ford’s summary judgment 

motion, it identified evidence that could support a finding that potentially significant 

portions of the software are not protectable. For instance, Ford directed the Court to 

evidence that (1) portions of the ACM software are comprised of “open source” 

software that is not original to Versata (see Krauss Dep. at 187, ECF #542-7 at Pg. 

ID 41550; Versata discovery responses, ECF #528-3 at Pg. ID 40788) and (2) other 

portions of the ACM software are dictated by efficiency, function, and/or regular 

business practices (see Krauss Decl. at ¶120, ECF #542-2 at Pg. ID 41194; Patent 

No. 7,200,582, ECF #549-2 at Pg. ID 42120, 42123, 42147-53.) 

In the face of this showing by Ford, Versata was obligated to conduct a 

filtration analysis and present specific evidence that identified the portions of the 

ACM software, if any, that do contain elements that are both original and not dictated 

by efficiency, function, and/or regular business practices and that are thus 

protectable. See, e.g., Kohus, 328 F.3d at 853-56. Versata has failed to do so. 
12 

First, Versata has not sufficiently countered Ford’s showing that potentially 

substantial portions of the ACM software are dictated by efficiency, function, and/or 

regular business practices. Versata’s response brief does not respond to this 

showing. At the hearing on Ford’s motion, Versata said that its technical consultant 

and fact witness Seth Krauss addressed this argument in paragraphs 8 and 9 of his 

declaration. (See Krauss Decl. at ¶¶ 8-9, ECF #542-3 at Pg. ID 41197.) But those 

cited paragraphs do not identify any specific portions of the ACM software that are 

not dictated by efficiency, function, and/or regular business practices. Versata has 

failed to present evidence as to which portions, if any, of the ACM software are not 

dictated by efficiency, function, and/or regular business practices and are therefore 

protected. 

 Second, Versata has also failed to provide sufficient evidence of which 

portions of the ACM software are original. Here again, Versata relies on the Kruass 

declaration. But Krauss says only that the registered version of the ACM software 

is “original.” (Krauss Decl. at ¶8, ECF #542-3 at Pg. ID 41197.) What Krauss does 

not say in his declaration is that the unregistered, earlier-created version of the 

software from which the allegedly-copied “.jar” files came from is “original.” More 

importantly, Krauss does not support his opinion that the registered version of the 

ACM software is “original” with sufficient facts or analysis. For example, Krauss 

does not identify which portions of the software are original and he does not filter 
13 

out the unoriginal portions of the software (such as the portions that are comprised 

of open-source material). 

In sum, Krauss’ declaration does not satisfy Versata’s filtration obligation 

because he has not identified “which portions of [the ACM software] are unique, 

what makes them unique, or why their particular form is not dictated by practical 

realities [], and therefore not subject to copyright protection.” Automated Solutions, 

756 F.3d at 535 (emphasis in original) (affirming summary judgment on copyright 

claim where proffered expert witness “focuse[d] solely on his legal conclusion” that 

allegedly-copied computer software contained “unique protectable expression” but 

failed to “explain[]” “how or why” the software was original and protectable). 

 Versata asserted at the hearing on Ford’s motion that Krauss could and would 

filter the protected portions of the ACM software from the unprotected portions 

during his testimony at trial. But Versata’s promise to produce that testimony later 

does not satisfy its burden now to identify evidence that creates a genuine issue of 

material fact. See, e.g., del Carmen Guadalupe v. Negron Agoso, 29 F.3d 15, 23 (1st 

Cir. 2002) (“A genuine issue of material fact does not spring into being simply 

because a litigant claims that one exists or promises to produce admissible evidence 

at trial”) (internal punctuation omitted); SG Industries, Inc. v. RSM McGladrey, Inc., 

2011 WL 6090247, at *6 (E.D. Mich. 2011) (“Under Federal Rule of Civil Procedure 

56, once a properly supported summary judgment motion has been made seeking 
14 

dismissal of a claim, a plaintiff must come forward—at the summary judgment 

stage—with admissible evidence supportive of its claim. A promise that such 

evidence will be forthcoming at trial does not suffice to overcome summary 

judgment”) (internal citations omitted; emphasis added).7

 Accordingly, Ford is 

entitled to summary judgment on the copyright infringement claims for the 

additional and independent bases set forth in this sub-section (VI(B)).8

VII 

 For all of the reasons stated above, IT IS HEREBY ORDERED that Ford’s 

motion for summary judgment (ECF ## 526, 532) on (1) its request for declaratory 

judgment that it did not infringe Versata’s copyrights and (2) Versata’s affirmative 

claim of copyright infringement is GRANTED. 

 s/Matthew F. Leitman 

 MATTHEW F. LEITMAN 

Dated: January 29, 2019 UNITED STATES DISTRICT JUDGE 

                                                            

7 See also Alexander v. CareSource, 576 F.3d 551, 558 (6th Cir. 2009) (A “party 

opposing summary judgment must show that she can make good on the promise of 

the pleadings by laying out enough evidence that will be admissible at trial to 

demonstrate that a genuine issue on a material fact exists, and that a trial is 

necessary”). 

8

 Versata argues that because Ford copied the relevant “.jar” files in whole, Ford 

“necessarily copied protectable elements of Versata’s copyrighted works, and no 

[filtration analysis] is necessary.” (Versata Resp. Br., ECF #542 at Pg. ID 41121.) 

But the Court rejected this argument and held that filtration is required when it held 

that Dr. Malek’s copyright analysis was inadmissible due to his failure to conduct a 

filtration analysis. Versata did not seek reconsideration of that ruling, and it has not 

persuaded the Court here that it erred when it issued that decision.
15 

 I hereby certify that a copy of the foregoing document was served upon the 

parties and/or counsel of record on January 29, 2019, by electronic means and/or 

ordinary mail. 

 s/Holly A. Monda 

 Case Manager 

 (810) 341-9764