ACT, Inc. v. Worldwide Interactive Network

RECOMMENDED FOR PUBLICATION

Pursuant to Sixth Circuit I.O.P. 32.1(b)

File Name: 22a0200p.06

UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT

┐

ACT, INC.,

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Plaintiff-Appellee, │

> Nos. 21-5889/5907/6155

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v. │

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WORLDWIDE INTERACTIVE NETWORK, INC.; TERESA │

CHASTEEN, │

Defendants-Appellants. │

│

┘

Appeal from the United States District Court for the Eastern District of Tennessee at Knoxville.

No. 3:18-cv-00186—Travis Randall McDonough, District Judge.

Argued: June 9, 2022

Decided and Filed: August 23, 2022

Before: WHITE, BUSH, and READLER, Circuit Judges.

_________________

COUNSEL

ARGUED: Lorin J. Lapidus, NELSON MULLINS RILEY & SCARBOROUGH LLP,

Winston-Salem, North Carolina, for Appellants. Laura L. Chapman, SHEPPARD, MULLIN,

RICHTER & HAMPTON LLP, San Francisco, California, for Appellee. ON BRIEF: Lorin J.

Lapidus, NELSON MULLINS RILEY & SCARBOROUGH LLP, Winston-Salem, North

Carolina, A. Mattison Bogan, NELSON MULLINS RILEY & SCARBOROUGH LLP,

Columbia, South Carolina, W. Kyle Carpenter, WOOLF, MCCLANE, BRIGHT, ALLEN &

CARPENTER, Knoxville, Tennessee, for Appellants. Laura L. Chapman, Yasamin Parsafar,

SHEPPARD, MULLIN, RICHTER & HAMPTON LLP, San Francisco, California, Matthew G.

Halgren, SHEPPARD, MULLIN, RICHTER & HAMPTON LLP, San Diego, California, for

Appellee.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 2

_________________

OPINION

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JOHN K. BUSH, Circuit Judge. Before us are two appeals that arise from the same

intellectual-property dispute. Relevant to both, the testing company ACT, Inc. (“ACT”) asserts

that its former-partner-turned-competitor, Worldwide Interactive Network, Inc. (“WIN”),

infringed ACT’s copyright in its “Skill Definitions.” Skill Definitions are, in essence,

descriptions of the various workplace skills that ACT intends to test with its career-readiness

assessments. ACT markets those assessments to schools, workplaces, and state departments of

education.

After the parties’ relationship soured, WIN began to market its own career-readiness

assessments that purported to test various “Learning Objectives”—descriptions of workplace

skills suspiciously similar to ACT’s Skill Definitions. In response, ACT filed suit. The district

court awarded partial summary judgment to ACT on its copyright-infringement claims and later

preliminarily enjoined WIN from continued infringement. WIN’s first appeal concerns the

imposition (and scope) of that preliminary injunction. Finding WIN’s objections unpersuasive,

however, we affirm.

We then turn to WIN’s second appeal, which concerns a distinct but related issue. After

WIN began to infringe ACT’s Skill Definitions once again with a set of “revised” Learning

Objectives, the district court ordered ACT to amend its complaint with new allegations that the

revised Learning Objectives are likewise infringing. In response to the amended complaint,

WIN filed an amended answer asserting a never-before-offered defense: that because WIN

designed the Learning Objectives to bid on various state contracts, it was entitled to assert those

states’ sovereign immunity from the copyright claims—so-called “derivative sovereign

immunity.” See Am. Answer ¶¶242–44, R. 551. But the district court struck the new defense as

both untimely and “frivolous.” Relying on the timeliness ground alone, we affirm that decision

as well.1

1Separately, we deny ACT’s motion, ECF No. 34, to supplement the record on appeal.

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I.

ACT has long published a product called “WorkKeys”—“a system of workforce-

development assessments that measure skills affecting job performance.” Op. at 2, R. 316.

“Three of those assessments are relevant to this case: Applied Mathematics, Locating

Information, and Reading for Information.” Id. Also relevant—indeed, the crux of this

dispute—are the various “Skill Definitions” corresponding to those assessments. “Skill

Definitions”—published by ACT in technical manuals accompanying the assessments—are

essentially descriptions of the skills tested by each respective assessment.

For many years, ACT collaborated with WIN to promulgate those assessments. The

parties had an “ongoing business relationship” from 1997 to 2011, Am. Answer ¶147, R. 120,

and specifically entered a “WorkKeys Publisher Agreement” in 2006, Op. at 5, R. 316. Under

that agreement, ACT designated WIN a “Preferred Content Provider” “with authority to develop

and sell WorkKeys curricula in exchange for the payment of annual fees and royalties to ACT.”

Id. As part of that agreement, WIN also stipulated that ACT had the exclusive right to distribute

WorkKeys materials and to prepare derivative works based on the same. ACT thus provided

WIN “much information related to WorkKeys,” including its tables of Skill Definitions from its

technical manuals. Id. ACT “periodically reviewed” WIN’s curricula “to ensure alignment

between [WIN’s] product[s] and ACT’s WorkKeys.” Id.

After disagreements arose, however, “[t]he contractual relationship between WIN and

ACT terminated in 2011.” Id. at 7. Thus, WIN and its president, Teresa Chasteen, began to

develop and promote their own career-readiness-assessment materials.

Following a period of apparently peaceful coexistence, WIN and ACT found themselves

at odds yet again over a contract with the state of South Carolina, this time in mid-2018. For

about a year before, ACT had contracted with the South Carolina Department of Education and

Workforce “to provide its WorkKeys assessments to employers within the state.” Id. But the

state later issued a “request for proposal” soliciting competing bids for new assessments. Id.

After both ACT and WIN bid on the contract, the state awarded it to WIN. A review of the “Test

Blueprint” WIN submitted during the bidding revealed that its “Learning Objectives” for the

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Applied Mathematics, Locating Information, and Reading for Information assessments were

virtually indistinguishable from ACT’s Skill Definitions.

ACT sued in response, asserting several claims against WIN. One was copyright

infringement, predicated on ACT’s claim that WIN directly copied its “Learning Objectives”

from ACT’s Skill Definitions, which ACT furnished to WIN under the parties’ former contract.

Despite WIN’s defenses, the district court granted partial summary judgment to ACT on the

copyright claims in March 2020. The parties anticipated going to trial on the other claims soon

after, but the COVID-19 pandemic caused a series of prolonged delays.

In the interim, WIN sought to salvage its original Learning Objectives by enlisting an

education consultant, Amy Burkam, to make several revisions. WIN claims that Burkam’s

revisions—which resulted in, fittingly, the revised Learning Objectives—do “not infringe upon

the description, selection, or arrangement of ACT’s Skill Definitions.” Appellants’ Br. [21-

5889] at 10. But ACT disagreed, so it voiced its objections to the revised Learning Objectives at

a pretrial conference in July 2021. Acting sua sponte, the district court ordered ACT to amend

its complaint to include new allegations about the revised Learning Objectives—an amendment

ACT contends was unnecessary, since the extant complaint already put WIN on notice that the

revised Learning Objectives were also infringing.

ACT complied nonetheless, amending its complaint with the new allegations. But soon

after, WIN tried to assert a never-before-raised defense in its amended answer: derivative

sovereign immunity. According to WIN, because it had submitted bids on various state

contracts, it was entitled to derivatively assert those states’ sovereign immunity from suit. ACT

objected, however, and the district court struck the new defense, reasoning that it was both

untimely and “frivolous.” Order at 3–4, R. 605.

ACT then moved the district court to enjoin WIN’s infringement. The district court

entered a preliminary injunction in August 2021. Its order restrains WIN “from knowingly

infringing ACT’s copyrights in its Skill Definitions, including by distributing, copying,

reproducing, displaying, creating derivative works from, or engaging in any other activity

deemed infringing by 17 U.S.C. § 106 involving ACT’s Skill Definitions.” Op. & Order at 27,

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R. 541. And, in a subsequent order, the district court clarified that this injunction bars WIN from

distributing not only the original and revised Learning Objectives, but WIN’s corresponding

assessments as well.

These interlocutory appeals followed. In the first, defendants WIN and Chasteen contest

the district court’s grant of a preliminary injunction. They argue that the district court

misapplied all four of the preliminary-injunction factors—in particular, that it erred in deeming

WIN’s original and revised Learning Objectives infringing and that it merely presumed rather

than actually found irreparable harm to ACT.

In the second, WIN and Chasteen object to the district court’s decision to strike its novel

derivative-sovereign-immunity defense. The defense was timely raised, they argue, because it

was unavailable before the Supreme Court’s decision in Allen v. Cooper, 140 S. Ct. 994 (2020),

which held that Congress has not validly abrogated states’ sovereign immunity from copyright

claims. Id. at 1007. And Allen only emerged long after defendants had filed the previous

version of their answer. Likewise, they contend that the defense is not the sort of “redundant,

immaterial, impertinent, or scandalous matter” that may be stricken under Rule 12(f) of the

Federal Rules of Civil Procedure. Fed. R. Civ. P. 12(f).

II.

We first examine our jurisdiction and standards of review before explaining why both of

WIN’s appeals lack merit. As to the first, we have jurisdiction over the preliminary-injunction

orders via 28 U.S.C. § 1292(a). See 28 U.S.C. § 1292(a)(1) (providing appellate-court

jurisdiction over “[i]nterlocutory orders of the district courts . . . granting, continuing, modifying,

refusing or dissolving injunctions, or refusing to dissolve or modify injunctions”). We also have

pendent-appellate jurisdiction over the district court’s earlier partial-summary-judgment order on

ACT’s copyright claims. The district court relied extensively on its infringement analysis from

that order in determining whether to grant a preliminary injunction. See, e.g., Op. & Order at 3,

13, R. 541. Indeed, if the copyright analysis is wrong in the summary-judgment order, it is

necessarily wrong in the preliminary-injunction order. Thus, those orders are inextricably

intertwined, and review of the summary-judgment order is necessary to ensure meaningful

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review of the preliminary-injunction order. See Swint v. Chambers Cnty. Comm’n, 514 U.S. 35,

51 (1995).

As to the second appeal, we have jurisdiction under 28 U.S.C. § 1291 and the collateral-

order doctrine. Section 1291 authorizes appellate-court jurisdiction over the “final decisions of

the district courts.” 28 U.S.C. § 1291. And under the collateral-order doctrine, we treat

interlocutory decisions as “final” when they involve a “conclusive” decision on an important

issue separate from the merits that is “effectively unreviewable” on appeal from a final

judgment. Swint, 514 U.S. at 42; see also Black v. Dixie Consumer Prods. LLC, 835 F.3d 579,

582 (6th Cir. 2016). The interlocutory order that WIN claims is otherwise unreviewable is the

district court’s denial of its assertion of derivative sovereign immunity. Whether the denial of

that immunity is immediately appealable hinges on what we believe it an immunity from. Black,

835 F.3d at 582. ACT claims the “immunity” is really a mere defense to liability. If that were

the case, it would render the denial effectively reviewable on appeal from a final judgment, and

thus outside the collateral-order doctrine. See, e.g., Puerto Rico Aqueduct & Sewer Auth. v.

Metcalf & Eddy, Inc., 506 U.S. 139, 145 (1993). After all, if the district court erroneously

entered relief against WIN, we could simply reverse the decision on appeal.

WIN, by contrast, claims that the asserted immunity is an immunity from suit itself.

Thus, it argues that the immunity denial is appealable now. For if we were to wait and make

WIN undergo further litigation, its purported immunity from suit would be irretrievably lost.

See, e.g., Appellants’ Br. [21-6155] at 3 (describing appellants’ asserted “privilege not to stand

trial in the first instance”); Reply Br. [21-6155] at 3 (“Defendants’ derivative sovereign

immunity defense insulates them from suit and not merely liability.”); cf. Mitchell v. Forsyth,

472 U.S. 511, 526 (1985) (“[Qualified immunity] is an immunity from suit, rather than a mere

defense to liability; and like an absolute immunity, it is effectively lost if a case is erroneously

permitted to go to trial.”).

We lack on-point circuit precedent about the nature of derivative sovereign immunity—

whether it is a true immunity from suit or merely a defense to liability. And there appears to be

no uniform answer to the related question of how to construe federal contractors’ immunities.

Compare In re World Trade Ctr. Disaster Site Litig., 521 F.3d 169, 191–93 (2d Cir. 2008)

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 7

(concluding that because section 305 of the Stafford Act provides immunity from suit, there was

jurisdiction “to determine the substantive question of whether that immunity may extend

derivatively to non-federal entities working in cooperation with federal agencies under the

Stafford Act”), and McMahon v. Presidential Airways, Inc., 502 F.3d 1331, 1339–40, 1343 (11th

Cir. 2007) (concluding that there was jurisdiction over the district court’s denial of derivative

immunity claimed to arise from Feres v. United States, 340 U.S. 135 (1950)), with Childs v. San

Diego Fam. Hous. LLC, 22 F.4th 1092, 1097 (9th Cir. 2022) (concluding that the denial of

derivative sovereign immunity is not immediately appealable for the same reasons that, under

Ninth Circuit precedent, denial of sovereign immunity is not immediately appealable), and

Martin v. Halliburton, 618 F.3d 476, 484–85 (5th Cir. 2010) (concluding that, under Fifth Circuit

precedent, the denial of derivative sovereign immunity is not immediately appealable under the

collateral-order doctrine).

We ultimately agree with WIN, however, that the immunity denial here is immediately

appealable, since the relevant immunity is one from suit. A few reasons motivate that

conclusion. First, we have explained before that the immunity government contractors enjoy

derives from whatever immunity the relevant government would have “in the same situation.”2

Adkisson v. Jacobs Eng’g Grp., 790 F.3d 641, 645 (6th Cir. 2015). Second, no one disputes that

“in the same situation,” id.—a lawsuit for copyright infringement—states would enjoy an

immunity from suit itself, the denial of which would be immediately appealable. See Allen, 140

S. Ct. at 1007; Puerto Rico Aqueduct & Sewer Auth., 506 U.S. at 145; Lowe v. Hamilton Cnty.

Dep’t of Job & Fam. Servs., 610 F.3d 321, 323 (6th Cir. 2010) (“Because sovereign immunity is

an immunity from trial, . . . the denial of a claim of sovereign immunity is immediately

appealable under the collateral order doctrine as a final decision . . . .” (internal quotation marks

omitted)). And third, ACT has identified no waivers from the relevant states—South Carolina,

2To be clear, however, our statement that contractors’ immunity derives from the relevant sovereign’s

immunity “in the same situation” does not mean that the contractor’s immunity functions exactly the same as would

the sovereign’s immunity. For instance, we have explained that contractors’ immunity is not jurisdictional, as might

be, for instance, a state’s immunity under the Eleventh Amendment. Adkisson, 790 F.3d at 647; see also U.S. Const.

amend. XI. And the Supreme Court has described federal contractors’ immunity as “qualified,” given that its

applicability hinges on whether the contractor was closely following the government’s precise instructions. See

Campbell-Ewald Co. v. Gomez, 577 U.S. 153, 166–67 (2016). Contractors enjoy no derivative immunity, in other

words, for acts that deviate from those instructions.

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Kentucky, Arizona, and Florida—disclaiming immunity for themselves or their contractors. To

the contrary, these states have codified reservations of their own immunities from suit in federal

court. See S.C. Code Ann. § 15-78-20(e); Fl. Stat. Ann. § 768.28(18); Ky. Rev. Stat. § 49.060;

Ariz. Rev. Stat. § 12-820.05 (describing immunity from tort suits). Thus, we believe the denial

of contractor immunity immediately appealable where, as here, state contractors purport to enjoy

the same immunity as would the relevant states, the relevant states would themselves enjoy

immunity from federal suit, and no on-point statute or precedent explains otherwise.

We turn now to the relevant standards of review. To obtain a preliminary injunction, the

plaintiff “must establish that he is likely to succeed on the merits, that he is likely to suffer

irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor,

and that an injunction is in the public interest.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S.

7, 20 (2008). “The ultimate decision to grant an injunction is reviewed for an abuse of

discretion.” S. Glazer’s Distribs. of Ohio, LLC v. Great Lakes Brewing Co., 860 F.3d 844, 849

(6th Cir. 2017). But we “examine legal questions de novo and findings of fact for clear error.”

Enchant Christmas Light Maze & Mkt. Ltd. v. Glowco, LLC, 958 F.3d 532, 536 (6th Cir. 2020).

Copyrightability is either a mixed question of law and fact or a pure question of law, so in any

event should be reviewed de novo. See Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1353 n.3

(Fed. Cir. 2014); see also Tri Cnty. Wholesale Distribs., Inc. v. Labatt USA Operating Co.,

828 F.3d 421, 430 (6th Cir. 2016).3 An alleged infringer’s access to an original work, however,

is an essentially factual question, so our review is for clear error. See Guzman v. Hacienda Recs.

& Recording Studio, Inc., 808 F.3d 1031, 1036 (5th Cir. 2015) (explaining that access is a factual

question meriting clear-error review); Sarkadi v. Wiman, 135 F.2d 1002, 1003 (2d Cir. 1943)

(same).

3Technically, the Supreme Court has held that mixed questions warrant de novo review when they concern

mainly issues of law and deferential review when they concern mainly issues of fact. See U.S. Bank. Nat’l Ass’n ex

rel. CWCapital Asset Mgmt. LLC v. Vill. at Lakeridge, LLC, 138 S. Ct. 960, 966–67 (2018). Here, it seems that to

the extent copyrightability could be understood as a mixed question at all, de novo review is warranted. The parties

do not dispute the content of ACT’s Skill Definitions or of WIN’s Learning Objectives. The dispute is instead

largely legal: whether the Skill Definitions’ uncontested content qualifies for copyright protection under federal law.

To resolve this appeal, we need not decide whether de novo review is warranted in all copyrightability disputes. See

Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 480–81 (6th Cir. 2015) (noting the circuit split on this

issue but treating copyrightability as a question of law after explaining the lack of disagreement about the underlying

facts in the case at hand).

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As for the immunity defense, Rule 12(f) authorizes district courts to “strike from a

pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous

matter.” Fed. R. Civ. P. 12(f). But “[m]otions to strike are viewed with disfavor and are not

frequently granted.” Operating Eng’rs Loc. 324 Health Care Plan v. G & W Constr. Co.,

783 F.3d 1045, 1050 (6th Cir. 2015). Indeed, “federal courts are very reluctant to determine

disputed or substantial issues of law on a motion to strike; these questions quite properly are

viewed as best determined only after further development by way of discovery and a hearing on

the merits.” 5C Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure

§ 1381 (3d ed. Apr. 2022 update) (footnote omitted). A decision on a motion to strike is

ultimately reviewed for an abuse of discretion, though constituent legal decisions are reviewed

de novo. See Operating Eng’rs Loc. 324 Health Care Plan, 783 F.3d at 1050.

III.

We consider first whether the district court abused its discretion in imposing, or imposed

an overly broad, preliminary injunction. We then turn to whether the district court properly

struck the derivative-sovereign-immunity defense.

A. ACT’s Likelihood of Success in Establishing Copyright Infringement

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

owns the copyrighted creation, and that the defendant copied it.” Kohus v. Mariol, 328 F.3d 848,

853 (6th Cir. 2003). But not all copying is actionable. See Feist Publ’ns, Inc. v. Rural Tel. Serv.

Co., 499 U.S. 340, 361 (1991). Rather, copyright protection extends “only to those components

of a work that are original to the author”—those components “independently created” and that

possess “some minimal degree of creativity.” Id. at 348, 345. Thus, in assessing whether

copying is actionable, courts must “identify and eliminate those elements that are unoriginal and

therefore unprotected.” Kohus, 328 F.3d at 853.4

4We note, as does ACT, that substantial-similarity analysis is not relevant here because there is direct

evidence of copying. See Appellee’s Br. [21-5889] at 43. Substantial similarity matters in the absence of direct

evidence of copying, as it creates an inference that the defendant copied the plaintiff’s work. See Jones v. Blige,

558 F.3d 485, 490–91 (6th Cir. 2009).

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Here, WIN does not dispute that ACT registered its copyrights in the Skill Definitions.

See Appellants’ Br. [21-5889] at 8.5 WIN also had direct access to the Skill Definitions through

the parties’ former contract, as the district court correctly found. See Op. & Order at 12–13,

R. 541. And WIN admits to copying the Skill Definitions when creating the original Learning

Objectives. See id. at 13–14; Reply Br. at 12. Its argument instead focuses on its contention that

the Skill Definitions—in particular, their “description,” “selection,” and “arrangement”—are not

creative or original to ACT, and thus are not copyrightable. See Appellants’ Br. [21-5889] at

27–35. Rather, says WIN, the Skill Definitions’ expression merges with the underlying ideas,

and their selection and arrangement represent merely an uncopyrightable system of skills testing.

We address those points in turn.

1. “Selection” vs. “Description” vs. “Arrangement” of Skills

The first critical task here is deciphering what ACT means when it uses the term “Skill.”

As we understand it, there are three “Skills” relevant to this lawsuit—Locating Information,

Reading for Information, and Applied Mathematics. See, e.g., Appellee’s Br. [21-5889] at 15.

Those “Skills” are then defined (that is to say, their “Skill Definitions” consist of) all the various

“subskills” listed under the relevant skill category, which themselves are grouped by different

levels of difficulty. See id. For instance, the “Skill” of Reading for Information would be

defined as exhibiting competency in all the various “subskills” listed within that Skill Definition.

(For an example, see Appendix A to this opinion.) Understanding these various distinctions is

key, as each aspect of what ACT asserts is copyrightable merits its own analysis.6

5Registration can raise a presumption of validity, Varsity Brands, 799 F.3d at 477 (citing 17 U.S.C.

§ 410(c)), though the district court did not rely on it in determining that ACT’s material is copyrightable, see Op. at

12, R. 316. More importantly, registration is generally required to sue over alleged copyright infringement. See 17

U.S.C. § 411(a); Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 887 (2019).

6The district court appears at times to have defined “Skill” differently, stating that “[t]he skills identified

include, for example, ‘add, subtract, multiply, and divide whole numbers, decimals, and fractions accurately,’ and

‘problem solving.’” Op. at 41, R. 316; see also Op. & Order at 18, R. 541 (listing “the following skills to be tested,”

including “Decide what information, calculations, or unit conversions to use to solve the problem” and “Calculate

percentage discounts or markups”). We, by contrast, refer to these more specific tasks as “subskills.” Of course, the

choice of terminology has no bearing on the outcome.

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2. ACT’s Selection of the Skills is Likely Not Copyrightable

Thus understood, ACT’s mere “selection” of its three Skills—its decision to test the

fields of Locating Information, Reading for Information, and Applied Mathematics—is likely

unprotectable. ACT claims that it invested much thought and labor in its decisions to test these

three skills. But there is no labor theory of copyright. See Feist Publ’ns, Inc., 499 U.S. at 359–

60 (explaining that “the 1976 revisions to the Copyright Act leave no doubt that originality, not

‘sweat of the brow,’ is the touchstone of copyright protection” for fact-based works). Rather,

copyright affords protection only to an author’s expression of a system—not the system itself.

See Baker v. Selden, 101 U.S. 99, 101–02 (1879); see also RJ Control Consultants, Inc. v.

Multiject, LLC, 981 F.3d 446, 455 (6th Cir. 2020). And the short phrases used to label ACT’s

skills—“Locating Information,” “Reading for Information,” and “Applied Mathematics”—

warrant no protection either. These are simply non-creative descriptions of the relevant fields.

See Hiller, LLC v. Success Grp. Int’l Learning All., LLC, 976 F.3d 620, 628 (6th Cir. 2020). So

WIN or some other company would be free to independently design an assessment program that

happened to test these skills, even if it got the idea of testing them from ACT.

3. ACT’s Description of the Skills Likely is Protectable

ACT’s description of the Skills, by contrast, likely is protectable. Again, ACT seems to

define its “description” of the Skills as its collective expression of all the various “subskills”

tested to assess competency in the overall Skill. See Appellee’s Br. [21-5889] at 15. In

reference to Appendix A, for example, ACT’s “description” of the Skill of Reading for

Information is its expression of the twenty-two various subskills pertinent to that Skill.

That collective description of a “Skill” via the compilation of the various subskills, as the

district court correctly held, is protectable under copyright law. As the Supreme Court has

explained, “the requisite level of creativity” required to secure a copyright is “extremely low,”

and even a “crude, humble or obvious” degree of creativity suffices. Feist Publ’ns, Inc.,

499 U.S. at 345. ACT’s decision to compile all of its particular subskills into the Skill

Definitions was not inevitable, as ACT points out, and one could imagine different collective

descriptions of the various Skills.

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In response, WIN asserts that ACT cannot claim copyright protection in the expression of

each constituent “subskill” in the Skill Definitions. WIN’s argument is likely strongest in the

context of “Applied Mathematics,” given the few ways to express discrete mathematical

procedures. For instance, one of the listed “subskills” is to “[d]ivide negative numbers,” while

another is to “[m]ultiply negative numbers.” See Appendix A. It is difficult to understand how

the expression “divide negative numbers” manifests any degree of creativity beyond merely

describing the phenomenon of dividing negative numbers, and so here fact and expression

merge. See, e.g., Hiller, LLC, 976 F.3d at 628 (“Where the expression is essential to the

statement of the idea, or where there is only one way or very few ways of expressing the idea,

copyright protection does not exist because granting protection to the expressive component of

the work necessarily would extend protection to the work’s uncopyrightable ideas as well.”

(cleaned up)). Thus, ACT would be unlikely to succeed in showing the copyrightability of its

phrasing of every subskill.

True, ACT might be able to establish copyright protection in how it expressed some of

the subskills. For instance, some courts—in the testing context no less—have deemed certain

“short, simple, declarative sentences” worthy of protection. See, e.g., Applied Innovations, Inc.

v. Regents of Univ. of Minn., 876 F.2d 626, 635 (8th Cir. 1989) (collecting cases). But the more

important point is that ACT’s argument does not hinge on whether copyright protection extends

to its expression of any individual subskill. Instead, its claim is that its compilation of the

subskills into a coherent Skill Definition is what merits protection. See, e.g., Appellee’s Br. [21-

5889] at 30–31 (“The question is not whether a short phrase or series of short phrases can be

extracted from the work, but whether the manner in which they are used exhibits creativity.”).

And its claim to protection is likely to succeed, given the low creativity threshold described by

the Supreme Court. See Feist Publ’ns, Inc., 499 U.S. at 345. Indeed, any degree of creative

arrangement will support a compilation copyright in the way the subskills are compiled. See id.

(“[T]he requisite level of creativity is extremely low; even a slight amount will suffice. The vast

majority of works make the grade quite easily, as they possess some creative spark, ‘no matter

how crude, humble or obvious’ it might be.”). Thus understood, the district court correctly

concluded that the Skills’ “description”—in other words, ACT’s creative choices in compiling

all the various subskills—merits protection.

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4. ACT’s Arrangement of the Skills is Likely Protectable

Likewise, ACT’s arrangement of the subskills across skill levels in the Skill Definitions

was also sufficiently creative to warrant copyright protection. For instance, ACT made the non-

obvious and non-inevitable decision to place the “Use the reading material to figure out the

meaning of words that are not defined” subskill in Level 4 of the Reading for Information Skill

Definition, rather than in Level 5. See Appendix A. And it made similar decisions when

arranging all the various subskills. As ACT points out, “[t]he skills and subskills could have

been grouped in other ways, such as by field of work in which they are most useful[,] or by

subtopic.” Appellee’s Br. [21-5889] at 17. Or “ACT could have designed the Skill Definitions

to reveal aptitude in a particular subskill rather than a particular level of ability related to the

general skill.” Id. Its method of arranging the subskills, therefore, did not follow some

blindingly obvious scheme (like alphabetization) that would have vitiated copyright protection.

See Feist Publ’ns, Inc., 499 U.S. at 363. It instead exhibits at least the minimal degree of

creativity required to obtain a compilation copyright. See id. at 345.

ACT is thus likely to succeed in showing that WIN’s original and revised Learning

Objectives infringe at least ACT’s description and arrangement of its Skills and subskills. The

original Learning Objectives are virtually identical copies of ACT’s Skill Definitions. See, e.g.,

Appendix A. And the revised Learning Objectives preserve much of the same arrangement of

subskills across different levels, while simply regurgitating the original Learning Objectives with

slight rewording. See, e.g., Appendix B. Yet such “immaterial variations” cannot insulate the

revised Learning Objectives from infringement. Nichols v. Universal Pictures Corp., 45 F.2d

119, 121 (2d Cir. 1930) (L. Hand, J.) (“It is of course essential to any protection of literary

property, whether at common-law or under the statute, that the right cannot be limited literally to

the text, else a plagiarist would escape by immaterial variations.”). Indeed, as Appendix B

reflects, WIN merely sought to conceal the revised Learning Objectives’ origin with ultimately

superficial wordsmithing.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 14

5. WIN’s Claim that the Revised Learning Objectives Did Not Copy from

ACT’s Skill Definitions

Relatedly, WIN asserts that even if the original Learning Objectives are likely infringing,

the revised Learning Objectives are not. See Appellants’ Br. [21-5889] at 35. Its argument

appears to be that, as to the revised Learning Objectives, “there is no direct evidence of

copying.” Id. Thus, WIN claims, we must assess potential infringement with the substantial-

similarity test. Id. at 37. And, WIN argues, because the revised Learning Objectives are

supposedly dissimilar to ACT’s Skill Definitions, they are not infringing. Id.

We find no merit in WIN’s contention that there is no evidence of direct copying. The

original Learning Objectives were copied from ACT, and the revised Learning Objectives are

simply reworded versions of the original Learning Objectives. Indeed, recall that after the

district court awarded partial summary judgment to ACT on the copyright-infringement claims,

WIN employed an education consultant, Amy Burkam, to edit the original Learning Objectives.

Her effort resulted in the revised Learning Objectives, which merely reworded the original

Learning Objectives to obscure their status as direct copies of ACT’s Skill Definitions.

Unsurprisingly, as the district court noted, WIN already admitted in its briefing below that the

Revised Learning Objectives “were based on the substance of the original Learning Objectives.”

Op. & Order at 14, R. 541 (quoting Opp’n to Mot. for Permanent Injunction at 12, R. 534).

Directly copying the Skill Definitions in the original Learning Objectives and then rewording

them to create the revised Learning Objectives does not prove that the revised Learning

Objectives were not copied from the Skill Definitions. They too were copies—just slightly

modified copies. Thus, as the district court held, ACT is likely to succeed on its copyright claim

as to the revised Learning Objectives as well.

B. WIN’s Contention that the District Court Erroneously Presumed Irreparable

Harm

WIN next asserts that rather than finding irreparable harm, the district court erroneously

relied on a presumption of irreparable harm in copyright cases, see, e.g., Lexmark Int’l, Inc. v.

Static Control Components, Inc., 387 F.3d 522, 532 (6th Cir. 2004), which WIN argues was

abrogated by the Supreme Court’s decisions in Winter and eBay. See Winter, 555 U.S. at 22;

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 15

eBay v. MercExchange, L.L.C., 547 U.S. 388, 392–94 (2006). Accordingly, it asks us to

formally recognize the presumption’s abrogation and remand the case to the district court so that

it can find, rather than merely presume, irreparable harm.7

We need not reach this issue. There is no merit to WIN’s claim that the district court

improperly relied on a presumption of irreparable harm. To the contrary, the district court

explicitly acknowledged the presumption’s likely abrogation, and so it independently found

irreparable harm. As the district court remarked,

The Sixth Circuit has previously recognized that, “[i]n a copyright-infringement

action[,] a plaintiff establishes a rebuttable presumption of irreparable harm by

demonstrating a likelihood of success on the merits.” Sony/ATV Publishing, LLC

v. Marcos, 651 F. App’x 482, 487 (6th Cir. 2016) (citing Lexmark, 387 F.3d at

532–33). However, more recently, the Court of Appeals recognized that, as other

circuits have done away with it, “the rebuttable presumption appears to be on its

last legs.” Enchant Christmas, 958 F.3d at 540 n.3. Accordingly, while the Court

acknowledges that such a presumption may yet exist in this Circuit, the Court

separately finds that ACT will be irreparably harmed if WIN is not enjoined.

Op. & Order at 24, R. 541 (emphasis added).

And the district court then explained why, in its view, ACT would likely suffer

irreparable harm absent an injunction: WIN was “harming ACT’s competitive position in the

marketplace.” Id. at 24–25. Indeed, WIN had “already used the infringing materials to bid on

contracts with consumers and compete with ACT.” Id. at 26. That history, the court concluded,

“suggests that [WIN] will continue harming ACT’s reputation, diminishing the perceived value

of ACT’s intellectual property, and unfairly competing with ACT. Consequently, ACT has

demonstrated irreparable harm.” Id. Such interference with customer relationships and damage

to reputation are precisely the sorts of injuries this circuit has said are difficult to quantify

monetarily, and thus constitute irreparable harm. See, e.g., Certified Restoration Dry Cleaning

7WIN offered a somewhat different version of this critique at oral argument. Rather than asserting that the

district court relied directly on a presumption of harm, WIN argued that (1) despite its claimed effort to

independently find irreparable harm, the district court made no satisfactory finding, as its reasoning on the harm

issue was too thin; (2) in the absence of a genuine harm finding, the district court’s injunction could only be

alternatively sustained via a presumption of irreparable harm; and (3) because no such presumption exists, the

injunction cannot be sustained. See, e.g., Recording of Oral Arg. [21-5889] at 8:10–9:34; 11:10–12:37. We reject

this late-arriving syllogism, however, for the same reason we reject its predecessor: the district court independently

found irreparable harm, and that finding is not clearly erroneous.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 16

Network, L.L.C. v. Tenke Corp., 511 F.3d 535, 550 (6th Cir. 2007); see also Basicomputer Corp.

v. Scott, 973 F.2d 507, 511–12 (6th Cir. 1992). Certainly, the district court “did not clearly err”

in finding that ACT faces irreparable harm on these bases. Babler v. Futhey, 618 F.3d 514, 524

(6th Cir. 2010).

In response, WIN offers a backup argument: Even if we believe the district court made

independent findings, it found merely that harm was possible, rather than likely, as required by

Supreme Court precedent. See Winter, 555 U.S. at 22. Reading the opinion like a statute, but

see Reiter v. Sonotone Corp., 442 U.S. 330, 341 (1979), WIN homes in on the district court’s

remark that “WIN’s history of using ACT’s materials suggests that it will continue harming

ACT’s reputation.” Op. & Order at 26, R. 541 (emphasis added). And, citing a dictionary, WIN

says that a “suggestion” of irreparable harm is tantamount to the mere “possibility” of irreparable

harm, which the Supreme Court has explicitly held will not suffice for a preliminary injunction.

See Appellants’ Br. [21-5889] at 22–24; see also Winter, 555 U.S. at 22.

We find WIN’s contentions here similarly unpersuasive. The district court elsewhere

employed just the concrete language that WIN claims is lacking—it found “that ACT will be

irreparably harmed” and that “ACT has demonstrated irreparable harm.” Op. & Order at 24, 26,

R. 541 (emphases added). The idea that the district court was satisfied with a merely conjectural

harm is undercut by these references to an apparent certainty of irreparable harm in the absence

of an injunction. Moreover, the district court’s irreparable-harm findings were well-supported,

given WIN’s demonstrated history of likely infringement and its stated desire to continue

distributing products that are likely infringing. See Appellee’s Br. [21-5889] at 65;

Basicomputer Corp., 973 F.2d at 512 (affirming a preliminary injunction when “[t]he record

contain[ed] ample evidence to support the court’s findings” regarding irreparable harm). Once

again, we cannot say that on the evidence before it, the district court clearly erred in finding

irreparable harm.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 17

C. WIN’s Contention that the District Court Improperly Gave it the Burden to

Prove that an Injunction Was Inconsistent with the Balance of the Equities

and Public Interest

WIN last alleges that the district court misapplied both the balance-of-the-equities and

public-interest factors by requiring WIN to prove an injunction should not issue, rather than

forcing ACT to prove an injunction should issue. Indeed, WIN claims, the district court “solely

evaluated Defendants’ contentions regarding why an injunction would not be in the public

interest and why the equities tip in Defendants’ favor.” Appellants’ Br. [21-5889] at 26. In other

words, it asserts that the district court improperly shifted the burden onto WIN to establish why

an injunction would not respect the balance of the equities and accord with the public interest,

rather than requiring ACT to establish those showings.

A simple review of the preliminary-injunction opinion, however, reveals that WIN’s

assertions are meritless. As the district court explained, the balance of the equities tipped in

ACT’s favor because of “the harm ACT has suffered and will continue to suffer if WIN

continues infringing.” Op. & Order at 26, R. 541. It then balanced that consideration against

WIN’s counterargument—that “WIN will likely go out of business” if the court were to issue a

preliminary injunction. Id. But, as the district court noted, that possibility was simply a

consequence of the fact that WIN’s business model is to infringe ACT’s intellectual property.

And, as it pointed out, such “illegal conduct does not merit significant equitable protection.” Id.

(quoting Disney Enters., Inc. v. VidAngel Inc., 869 F.3d 848, 867 (9th Cir. 2017)). So the district

court properly weighed the parties’ competing interests and reasonably concluded the

demonstrated harm to ACT’s business outweighed WIN’s minimal legitimate interest in

continued infringement.

Last, the district court did not err in concluding that the public interest favored a

preliminary injunction. Contrary to WIN’s claim that it never required ACT to make an

affirmative case about why an injunction would serve the public interest, the district court

expressly detailed why that was so. “[T]he public has a compelling interest in protecting

copyright owners’ marketable rights to their work,” it said, as well as in protecting “the

economic incentive to continue creating.” Id. at 26 (quoting WPIX, Inc. v. ivi, Inc., 691 F.3d

275, 287 (2d Cir. 2012)). It then balanced that interest against WIN’s asserted counter-interest:

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 18

that the contracting states of South Carolina, Arizona, Kentucky, and Florida could no longer

employ WIN’s products. As the district court pointed out, each of those states has an interest in

educational testing, to be sure, but in legal testing in compliance with federal copyright law.

Moreover, the district court delayed the effective date of its injunction to permit affected states to

locate alternative testing suppliers, thus mitigating negative effects on the public from the

injunction. The district court did not abuse its discretion, therefore, in concluding that the public

interest favored an injunction.

D. WIN’s Contention that the District Court’s Preliminary Injunction is

Overbroad

WIN’s last critique of the injunction is as follows: Assume (as we have just concluded)

that the district court justifiably imposed a preliminary injunction. Even so, WIN says, the scope

of that injunction is overbroad. See Appellants’ Br. [21-5889] at 53–54. WIN’s grievance is that

the injunction prevents it from distributing both its Learning Objectives and its corresponding

assessments testing those Learning Objectives. But no matter whether the Learning Objectives

themselves are infringing, WIN argues, the corresponding assessments are still lawful, and so

their distribution should not have been enjoined. See id.

The district court justified the injunction’s scope—that it restrained not only the Learning

Objectives but the assessments as well—on the ground that the assessments are “derivative” of

the Skill Definitions. And, true, 17 U.S.C. § 106 gives a copyright holder the exclusive right not

only to copy its protected work, but also to prepare “derivative works” based on the same.

17 U.S.C. § 106(2). Applying that rule, the district court held that the assessments were

derivative of ACT’s Skill Definitions for two reasons. First, WIN’s assessments test the same

skills as ACT chose to test, infringing ACT’s skill “selection.” And second, they feature

questions that test different skills at skill levels corresponding to the levels in the Skill

Definitions, thus infringing ACT’s skill “arrangement.”

The first rationale, of course, is a non-starter. As we explained before, ACT lacks

copyright protection in its “selection” of the skills—the mere fact that it chose to test Applied

Mathematics, Locating Information, and Reading for Information. Protecting the mere decision

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 19

to test those fields would be akin to granting a patent to ACT on such a testing system—not a

copyright protecting original expression. But see Baker, 101 U.S. at 101–02.

As to the “arrangement” rationale, however, we agree with the district court. As we

explained above, ACT has a valid compilation copyright in how it chose to arrange the various

subskills it tested across its respective skill levels. WIN’s assessments, as the district court

found, are structured in a closely corresponding manner. Indeed, that is the point of WIN’s

business model—WIN’s mimicry of ACT’s skill levels is why a state wishing to test ACT’s Skill

Definitions might choose to do so with WIN’s assessments rather than ACT’s. The district court

thus correctly held that WIN’s assessments were unauthorized derivative works, in that, while

they constitute distinct expression, elements of that expression substantially copy protectable

elements of ACT’s Skill Definitions. See 1 Melville B. Nimmer & David Nimmer, Nimmer on

Copyright §§ 3.01, 3.06 (2022). So we affirm the scope of the preliminary injunction as well.

IV.

We now take up WIN’s appeal of the district court’s decision to strike the derivative-

sovereign-immunity defense from its amended answer. By way of background, we will first

describe the theory behind this new defense. As we noted before, states themselves generally

enjoy sovereign immunity from suit. See supra 7; see also Puerto Rico Aqueduct & Sewer Auth.,

506 U.S. at 144. And private contractors may sometimes “obtain certain immunity in connection

with work which they do pursuant to their contractual undertakings with the [government]”—so-

called “derivative sovereign immunity.” Campbell-Ewald Co. v. Gomez, 577 U.S. 153, 166

(2016) (quoting Brady v. Roosevelt S.S. Co., 317 U.S. 575, 583 (1943)); see also Yearsley v.

W.A. Ross Constr. Co., 309 U.S. 18, 20–21 (1940).

This was the theory WIN wished to assert in its amended answer—that, because it was

contracting with various states to supply educational materials, it could assert their immunity

from ACT’s claims. See Am. Answer ¶¶242–44, R. 551. Soon after WIN’s addition of that

defense, however, ACT moved to strike it. And the district court granted the motion “on two

independently sufficient grounds.” Appellee’s Br. [21-6155] at 25. First, the district court

reasoned that defendants raised the defense extremely late in the litigation and gave no

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 20

reasonable explanation for the delay. The district court thus deemed the defense “waived”8 for

its untimeliness. Second, the district court labeled the defense “plainly[ ] frivolous.” Order at 4,

R. 605. As it explained, “[t]he Supreme Court has explicitly rejected a blanket extension of

sovereign immunity to persons performing work pursuant to a contract with the Government.”

Id. (citing Campbell-Ewald Co., 577 U.S. at 166). Rather, the contractor must show that it was

following the government’s precise specifications or directions when it engaged in the conduct

alleged to give rise to liability. See, e.g., Yearsley, 309 U.S. at 20–21; see also Campbell-Ewald

Co., 577 U.S. at 167 n.7. And WIN had shown nothing indicating “that any State government

directed the infringing activities”—only that it happened to sell states infringing materials of its

own design. Order at 4, R. 605 (emphasis added). So the district court struck the new defense

for also being “frivolous” on the merits. Id.

Because we agree with the district court that WIN’s significant delay in asserting the

defense resulted in a forfeiture, we need not address whether WIN’s defense is frivolous. So, as

we explain below, we affirm the district court’s decision on the timeliness ground alone.

As this circuit has held, defendants can forfeit affirmative defenses when they

inexplicably delay their assertion of those defenses. See Henricks v. Pickaway Corr. Inst.,

782 F.3d 744, 750–51 (6th Cir. 2015) (finding a qualified-immunity defense forfeited when

defendants failed to plead it in their answer and were “very tardy” in raising it later on); see also

Burton v. Ghosh, 961 F.3d 960, 966 (7th Cir. 2020) (noting that an “untimely” defense “is

forfeited and normally may not be considered by the court” when “the delay prejudices . . . the

plaintiff”); 5C Wright & Miller, supra, § 1381 nn.14 & 35 (citing cases in which forfeited

defenses were stricken). Indeed, “[w]hen the defendant is unable to offer any reasonable

explanation for its tardiness in presenting a defense, finding waiver is not an abuse of

discretion.” Henricks, 782 F.3d at 751. Rather, we hold, a district court may strike a defense as

“insufficient” when, even if it might otherwise have been valid, it is so untimely raised as to be

forfeited. See Fed. R. Civ. P. 12(f).

8The district court likely should have said “forfeited,” as WIN’s behavior was closer to the passive non-

assertion of a right than the active relinquishment of it. See United States v. Montgomery, 998 F.3d 693, 697–98

(6th Cir. 2021).

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 21

Application of this standard is, to be sure, a fact-bound inquiry, contingent on the

circumstances of each case. We thus confront two relevant questions: (1) when could the

derivative-sovereign-immunity defense first have been asserted?, and (2) assuming it was long

before the filing of the amended answer, did WIN present a reasonable explanation for why it

waited until then to raise the defense?

Understanding the first question requires examining the timeline of the litigation. Recall

that ACT first filed its complaint asserting its copyright claims in May 2018. WIN filed its

answer soon after, in July 2018. It then filed an amended answer in July 2019. The parties do not

seem to dispute that a derivative-sovereign-immunity defense, at least practically speaking, was

then unavailable.9 For at that time, the Copyright Remedy Clarification Act of 1990 (“CRCA”)

purported to abrogate states’ sovereign immunity from copyright claims. See 17 U.S.C.

§ 511(a). Assertion of a derivative-sovereign-immunity defense thus would have been futile, as

the states themselves were said to enjoy no immunity from which WIN could derive its own.

Then, on March 10, 2020, the district court granted partial summary judgment for ACT

on its copyright claims. Thirteen days later, the Supreme Court rendered its decision in Allen v.

Cooper. 140 S. Ct. at 994. Allen deemed invalid 17 U.S.C. § 511(a) of the CRCA, thus

clarifying that states may validly assert sovereign-immunity defenses against copyright-

infringement claims. See id. at 1007. So a derivative-sovereign-immunity defense was likewise

available after March 23, 2020. WIN moved the district court to reconsider its partial-summary-

judgment order soon after, in April 2020. See Mot. to Reconsider, R. 360. But it did not do so

on the basis of a derivative-sovereign-immunity argument—despite the argument’s availability at

that point after Allen had come down. See generally id.

After its loss at partial summary judgment, WIN then employed Burkam to create the

revised Learning Objectives. ACT raised its view that the revised Learning Objectives were

likewise infringing at the pretrial conference in July 2021. Soon after, the district court entered

its sua sponte order directing ACT to amend its complaint with new allegations about the revised

9Technically WIN could have asserted the defense for issue-preservation purposes to argue what became

the holding of Allen: that Congress did not validly abrogate states’ sovereign immunity from copyright claims. But

we grant that this defense was unavailable in all practicality until after Allen’s decision.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 22

Learning Objectives. ACT did so the next day, on July 30, 2021. WIN answered that amended

complaint on August 27, 2021, asserting derivative sovereign immunity for the first time in the

litigation. See Am. Answer ¶¶242–44, R. 551. Thus, WIN failed to raise the defense until about

a year and a half after it became available following Allen’s decision. No doubt, then, its

assertion of this new defense—after discovery and on the eve of trial—was very belated.

The second and more important question is whether WIN has a “reasonable explanation”

for why it waited so long to raise the defense. Henricks, 782 F.3d at 750–51. WIN claims that it

could not have done so until after ACT amended its complaint, because it was only at that point

that there was an “active copyright claim” in the suit once more. See Reply [21-6155] at 6.

Recall how the district court had already entered its partial-summary-judgment order finding that

the original Learning Objectives were infringing. It was only the new allegations about the

revised Learning Objectives in the amended complaint, WIN claims, that triggered its ability to

assert this new, copyright-related defense. See id.

Yet WIN is simply incorrect that it never could have raised the defense until its amended

answer. Indeed, as ACT points out, WIN could have moved the district court after its partial-

summary-judgment order to reconsider that order based on Allen and derivative sovereign

immunity.10 See Appellees’ Br. [21-6155] at 26. Partial-summary-judgment orders, after all, are

not final judgments. They are instead interlocutory, and so may be revised in the district court’s

discretion until final judgment. See Fed. R. Civ. P. 54(b); see also Mallory v. Eyrich, 922 F.2d

1273, 1282 (6th Cir. 1991); Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 118 F. App’x 942,

944–46 (6th Cir. 2004). And this circuit has held that new arguments may be raised in

motions to reconsider in light of intervening changes in controlling authority. See, e.g.,

Louisville/Jefferson Cnty. Metro Gov’t v. Hotels.com, L.P., 590 F.3d 381, 389 (6th Cir. 2009).

Despite these points, WIN offers no sufficient explanation for why it failed to raise the

derivative-sovereign-immunity defense after Allen’s decision in a motion to reconsider the

partial-summary-judgment order. See, e.g., Reply [21-6155] at 4–6 (conclusorily labeling ACT’s

10WIN’s counsel conceded at oral argument that WIN also could have asked the district court to permit a

discretionary amendment to WIN’s answer as soon as Allen came down, but that WIN failed to do so. See

Recording of Oral Arg. [21-6155] at 11:11–11:37.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 23

argument “untenable” but failing to explain why WIN did not move for reconsideration under

Allen).

After all, WIN’s amended answer says that WIN was a contractor “at all times” relevant

to ACT’s allegations. Am. Answer ¶242, R. 551 (emphasis added). And it was in WIN’s

response to South Carolina’s request for proposal that ACT first noticed the infringing nature of

the original Learning Objectives—back in 2017. See Complaint ¶¶66–74, R. 1. Thus, there was

no reason the immunity defense would have been relevant only to the revised Learning

Objectives and not the originals. Rather, to the extent the immunity defense was valid at all, it

should have applied “at all times” WIN was contracting with the states—which included WIN’s

creation of both the revised and the original Learning Objectives. Indeed, counsel for WIN

expressly conceded these points at oral argument. He frankly acknowledged that “the defense

would apply the same with respect to both,” see Recording of Oral Arg. [21-6155] at 9:00–9:15,

meaning that there was no specific feature of the revised Learning Objectives that would have

made the defense relevant only to them.

Moreover, the filing of the amended complaint did not “wipe the slate clean,” as WIN

seems to think, and permit it to act as if it were filing an answer for the very first time. Burton,

961 F.3d at 968. WIN’s contrary claim notwithstanding, Rule 8 does not confer an unqualified

right to amend an answer with any new defense in light of an amended complaint. Rather, the

question is whether addition of the allegations about the revised Learning Objectives somehow

“transform[ed] the litigation,” or whether, by contrast, they simply embellished allegations about

which WIN was already on notice. Id. True, when an amended complaint does “transform the

litigation”—as with the addition of a wholly new party or cause of action—it may permit the

allegation of novel defenses. Id. But here, the allegations about the revised Learning Objectives

simply note that WIN continued to infringe by creating a modified version of the original

Learning Objectives. In other words, the new allegations are just an extension of the extant

allegations—that WIN was infringing ACT’s copyrights by copying and distributing its Skill

Definitions under the banner of “Learning Objectives.”

For those reasons, we affirm the district court’s striking of the defense on timeliness

grounds. The defense was equally relevant to both the original and revised Learning Objectives,

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and it was available long before the filing of the amended complaint. Moreover, WIN could

have asserted it at any point in a motion to reconsider the partial-summary-judgment order. We

cannot say that the district court abused its discretion, therefore, particularly after discovery had

closed and on the eve of trial, in striking WIN’s “very tardy,” forfeited defense. See Henricks,

782 F.3d at 751.

V.

The district court correctly determined that WIN likely infringed ACT’s intellectual

property, that the infringement threatened irreparable harm to ACT, and that the balance of the

equities and public interest favored an injunction. It likewise properly struck WIN’s belated

immunity defense. We thus AFFIRM the district court in both respects.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 25

_________________

APPENDIX A

_________________

ACT’s Side-by-Side Comparison11 of ACT’s Skill Definitions and WIN’s Original Learning

Objectives for “Reading for Information,” Submitted in Response to the 2017 South Carolina

RFP. See R. 209-1.12

ACT Reading for Information Skill WIN Reading for Information Original

Definitions Learning Objectives

Level 3 Skill Definitions/Learning Objectives

Identify main ideas and clearly states details Identify main idea and clearly stated details

Choose the correct meaning of a word that is Choose the correct meaning of a word that is

clearly defined in the reading clearly defined in the reading

Choose when to perform each step in a short Choose when to perform each step in a short

series of steps series of steps

Apply instructions to a situation that is the Apply instructions to a situation that is the

same as the one in the reading materials same as the one in the reading materials

Level 4 Skill Definitions/Learning Objectives

Identify important details that may not be Identify important details that may not be

clearly stated clearly stated

Use the reading material to figure out the Use the reading material to figure out the

meaning of words that are not defined meaning of words that are not defined

Choose what to do when changing conditions Choose what to do when changing

call for different action (follow directions that conditions call for a different action (follow

include “if-then” statements) directions that contain “if-then” statements)

11ACT produced this chart to compare ACT’s Skill Definitions and WIN’s original Learning Objectives.

We have corrected or noted errors in the chart.

12The “Locating Information” and “Applied Mathematics” tables are omitted because they are simply

duplicative of the point being made: that WIN’s original Learning Objectives were identical or near-identical copies

of ACT’s Skill Definitions.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 26

Level 5 Skill Definitions/Learning Objectives

Figure out the correct meaning of a word based Figure out the meaning of a word based on

on how the word is used how the word is used

Identify the correct meaning of an acronym Identify the correct meaning of an acronym

that is defined in the document that is defined in the document

Identify the paraphrased definition of a Identify the paraphrased definition of a

technical term or jargon that is defined in the technical term or jargon that is defined in the

document document

Apply technical terms and jargon and relate Apply technical terms and jargon and relate

them to stated situations them to stated situations

Apply straightforward instructions to a new Apply complex instructions that include

situation that is similar to the one described in conditionals to situations described in the

the material materials.13

Apply complex instructions that include Apply complex instructions that include

conditionals to situations described in the conditionals to situations described in the

materials. materials.

Level 6 Skill Definitions/Learning Objectives

Identify implied details Identify implied details

Figure out the less common meaning of a word Figure out the less common meaning of a

based on the context word based on context

Apply complicated instructions to new Apply complicated instructions to new

situations situations

Use technical terms and jargon in new Use technical terms and jargon in new

situations situations

Figure out the principles behind policies, rules, Figure out the principles behind policies,

and procedures rules, and procedures

Apply general principles from the materials to Apply general principles from the materials

similar and new situations to similar and new situations

Explain the rationale behind a procedure, Explain the rationale behind a procedure,

policy, or communication policy, or communication

13This entry appears to be an error in the chart that ACT created for the litigation. WIN’s subskill, like

ACT’s, reads: “Apply straightforward instructions to a new situation that is similar to the one described in the

material.” Joint Appendix at 1395, R. 129-8.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 27

Level 7 Skill Definitions/Learning Objectives

Figure out the definitions of difficult, Figure out the meaning of difficult,

uncommon words based on how they are used uncommon words based on how they are

used

Figure out the meaning of jargon or technical Figure out the meaning of jargon or

terms based on how they are used technical terms based on how they are used

Figure out the general principles behind the Figure out the general principles behind

policies and apply them to situations that are policies and apply them to situations that are

quite different from any described in the quite different from any described in the

materials materials

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 28

_________________

APPENDIX B

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Side-by-Side Comparison of ACT’s Skill Definitions and WIN’s Revised Learning Objectives

for “Reading for Information.” See R. 534-1.14

ACT Reading for Information Skill WIN Reading for Information Revised

Definitions Learning Objectives

Level 3 Skill Definitions/Learning Objectives

Identify main ideas and clearly stated details Identify the paraphrased definition of a word

that is defined in the text

Choose the correct meaning of a word that is Identify the meaning of common workplace

clearly defined in the reading terms

Choose the correct meaning of common, Summarize the main idea and identify explicit

everyday and workplace words details from a directive to employees

Choose when to perform each step in a short Follow step-by-step instructions for

series of steps employees and identify the order in which

steps should be taken

Apply instructions to a situation that is the Review instructions presented in a workplace

same as the one in the reading materials document and apply to another similar

situation

Level 4 Skill Definitions/Learning Objectives

Identify important details that may not be Use contextual clues to determine the

clearly stated meaning of unfamiliar words

Use the reading material to figure out the Recognize implied details from workplace

meaning of words that are not defined communications to employees

Apply instructions with several steps to a Apply multi-step instructions to employees to

situation that is the same as the situation in a scenario that is similar to the one described

the reading materials in the text

Choose what to do when changing conditions Apply conditional (if/then) instructions to a

call for a different action (follow directions situation similar to the situation described in

that include “if-then” statements) the text

14The “Locating Information” and “Applied Mathematics” tables are omitted because they are also

duplicative of the point being made: that WIN’s revised Learning Objectives were also near-identical copies of

ACT’s Skill Definitions.

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 29

Level 5 Skill Definitions/Learning Objectives

Figure out the correct meaning of a word Use contextual clues to determine the

based on how the word is used meaning of unfamiliar words

Identify the correct meaning of an acronym Select the meaning of a workplace acronym

that is defined in the document or initialism that is defined in the text

Identify the paraphrased definition of a Recognize the paraphrased definition of

technical term or jargon that is defined in the workplace jargon or technical terms defined

document in the text

Apply technical terms and jargon and relate Use technical terms and jargon to describe the

them to stated situations scenario in the text

Apply straightforward instructions to a new Review instructions presented in a workplace

situation that is similar to the one described in document and apply to a different situation

the material

Apply complex instructions that include Relate complex conditional (if/then)

conditionals to situations described in the instructions to situations similar to the

materials situations described in the text

Level 6 Skill Definitions/Learning Objectives

Identify implied details Use contextual clues to determine the

meaning of unfamiliar words

Use technical terms and jargon in new Identify implied details from complex

situations workplace instructions or articles

Figure out the less common meaning of a Apply workplace technical terms and jargon

word based on context to different scenarios

Apply complicated instructions to new Relate complicated instructions to different

situations situations

Figure out the principles behind policies, Relate general principles from the text to

rules, and procedures similar and new situations

Apply general principles from the materials to Determine the unstated rational [sic] or

similar and new situations principle behind a workplace policy, rule,

procedure, or communication

Explain the rationale behind a procedure,

policy, or communication

Nos. 21-5889/5907/6155 ACT, Inc. v. Worldwide Interactive Network, Inc., et al. Page 30

Level 7 Skill Definitions/Learning Objectives

Figure out the definitions of difficult, Use contextual clues to determine the

uncommon words based on how they are used meaning of very difficult words

Figure out the meaning of jargon or technical Use contextual clues to determine the

terms based on how they are used meaning of workplace jargon and technical

terms

Figure out the general principles behind the Relate unstated reasoning behind complex

policies and apply them to situations that are workplace policies to situations that are

quite different from any described in the different from those described in the text

materials