In early 2015, Plaintiffs, US Thrillrides, LLC (“USTR”) and Polercoaster, LLC began discussions with Defendant, Intamin Amusement Rides Int. Corp. Est. about partnering to build Polercoasters for Plaintiffs’ customers. The Polercoaster is a unique attraction that provides a complete roller coaster experience on a very small footprint, unlike traditional roller coasters which require several acres of land.
On January 15, 2015, the Parties entered into a Confidentiality and Non-Disclosure Agreement (the “CNDA”) to allow them to begin conversations. In the CNDA, Defendant agreed that information about the Polercoaster was protected and agreed not to create products similar to those offered by Plaintiffs, or to enable or cause others to do so. Once the CNDA was executed, Plaintiffs began discussions with Defendant about serving as the manufacturing partner for Polercoasters they were selling to their customers in different parts of the United States. Ultimately, Defendant was chosen to be the manufacturer for the US Projects.
Later, Plaintiffs executed a letter of acceptance (the “LOA”) with Emaar Entertainment, LLC (“Emaar”) to build a Polercoaster at the Dubai Hills Mall. Unbeknownst to Plaintiffs, Defendant was actively undercutting them, negotiating directly with Emaar and submitting its own bid, in secret, to build the ride without Plaintiffs’ involvement or permission. The result was that Plaintiffs were terminated and Defendant was hired.
Emaar and Defendant entered into a Letter of Intent, memorializing their agreement to move forward on developing a smaller roller coaster for the Dubai Hills Mall. Ultimately, this roller coaster was built and named the Storm Coaster.
Plaintiffs alleged that Defendant unlawfully breached the CNDA and is also liable under various Florida and federal laws for wrongfully using Plaintiffs’ intellectual property in connection with the Dubai Project.
Defendant filed a motion to exclude the expert testimony of Plaintiffs’ expert Nathan Macdonald.
Mechanical Engineering Expert Witness
Nathan Macdonald is a registered professional engineer, a certified safety professional, and a certified commercial building inspector. He has a Bachelor of Science degree in mechanical engineering and eleven years of experience working as a mechanical engineering consultant, including experience working on the design, manufacture, and testing of amusement rides.
Discussion by the Court
Defendant sought to exclude the following opinions of Plaintiffs’ expert, Nathan Macdonald: (1) designs and drawings created for the Storm Coaster are substantially similar to and incorporate major design features of USTR’s copyrighted materials; and (2) the Storm Coaster design is both similar to the Polercoaster designs developed by USTR and embodies and is derived from Confidential Information and Intellectual Property Rights (as defined by the CNDA) conveyed by USTR to Defendant pursuant to the CNDA.
Qualifications
First, Defendant argued that Macdonald is not qualified to opine on any of the issues here because he did not have specific experience with roller coaster design. While Macdonald has not designed a roller coaster, he has has a significant amount of experience related to coasters and the engineering and design work that is involved. Therefore, Macdonald’s experience and training makes him qualified to opine on the mechanics, engineering, and technical design aspects of the roller coasters and drawings at issue here.
Second, Defendant also challenged Macdonald’s qualifications to opine as to analyzing copyright, trade secret, and misuse of confidential information issues. The Court held that Macdonald is qualified to conduct a technical and engineering comparison between Plaintiffs’ designs and drawings with Defendant’s designs, drawings, and the Storm Coaster. Macdonald is also qualified to testify regarding how confidential information and trade secrets are treated and used within the industry.
On the other hand, Macdonald is not qualified to opine as to whether information constitutes a trade secret or is confidential information as this is a legal analysis, not a technical one. Nor is he qualified to opine as to whether the copyright “substantial similarity” analysis is satisfied. To be clear, Macdonald could testify that certain aspects of Defendant’s design drawings are similar to certain aspects of Polercoaster’s copyrighted drawings from a technical or engineering standpoint. And Plaintiffs’ attorneys could then use that testimony to argue that the “substantial similarity” analysis for copyright infringement is satisfied. But Macdonald is not qualified to opine as to the copyright infringement analysis itself.
Methodology
As to Macdonald’s methodology, Defendant first argued that Macdonald’s copyright opinions must be excluded because Macdonald did not conduct a copyright protectability analysis and because his opinions regarding substantial similarity invade the province of the jury. These issues were addressed in the qualifications analysis—Macdonald is only permitted to testify as to similarities between Defendant’s purportedly infringing drawings and Polercoaster’s copyrighted drawings from a technical and engineering standpoint. He is not permitted to testify as to whether these similarities are protectable under copyright law.
Defendant also objected to Macdonald’s opinions because they assume that the designs and drawings attributed to Polercoaster actually belong to Polercoaster, and Defendant argues that they do not. This is not an issue with Macdonald’s methodology in comparing the designs. The Court held that the Defendant is free to offer evidence at trial that the drawings do not belong to Polercoaster, but an expert is allowed to offer opinions based on assumptions given to them.
Next, Defendant argued that Macdonald’s opinions comparing Polercoaster’s copyrighted works to the as-built Storm Coaster must be excluded because an as-built structure cannot infringe Polercoaster’s copyrights. Polercoaster conceded that Defendant is correct. Additionally, Defendant’s remaining objections to Macdonald’s opinions were rendered moot by the Court because Plaintiffs’ trade secrets and non-copyright-based breach of the CNDA claims failed on the merits.
Held
The Court granted in part and denied in part Defendant’s motion to exclude the testimony of Nathan Macdonald.
Key Takeaway:
Macdonald is only permitted to testify as to similarities between Defendant’s purportedly infringing drawings and Polercoaster’s copyrighted drawings from a technical and engineering standpoint. He is not permitted to testify as to whether these similarities are protectable under copyright law.
Case Details:
| Case Caption: | US Thrillrides, LLC & Polercoaster, LLC V. Intamin Amusement Rides Int. Corp. Est. |
| Docket Number: | 6:22cv2338 |
| Court: | United States District Court, Florida Middle |
| Order Date: | February 19, 2025 |
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