MiTek vs. Simpson Lawsuit: Ruling, Cross-References, and Impact

The MiTek vs. Simpson lawsuit ended in December 2023 with MiTek Inc. winning on every claim after a bench trial in the U.S. District Court for the Northern District of California.¹ Despite how the case is often described online, it was not an antitrust suit. Simpson Strong-Tie sued MiTek for false advertising, passing off, unfair competition, and copyright infringement over MiTek’s use of Simpson’s product names in its own catalogs and cross-reference materials. The court rejected all of it.

What Simpson Actually Sued Over

Simpson filed the complaint in October 2020 with five claims: false advertising under the federal Lanham Act, false advertising under California state law, passing off under the Lanham Act, unfair competition under California law, and copyright infringement.¹

The core accusation was about naming. When MiTek developed a connector to compete with an existing Simpson product, it often gave the new connector the same name. MiTek also published “conversion guides” and reference indexes listing Simpson product names alongside MiTek equivalents. Simpson argued this misled customers into thinking MiTek’s products were affiliated with Simpson’s, and that copying names from Simpson’s alphabetical product index amounted to copyright infringement.²

Simpson also objected to MiTek encouraging engineers to specify both brands on drawings (a practice called dual specification) and encouraging builders to substitute MiTek connectors where Simpson connectors had been specified.²

How the Court Ruled

The case terminated on December 18, 2023, with judgment for MiTek across the board.³

Copyright: Too Little Copying to Matter

The court acknowledged that most of Simpson’s part names had enough minimal creativity to qualify for copyright protection. But it found MiTek’s copying was “de minimis,” meaning too small to be legally actionable. The math: MiTek copied 12 part names out of a list of roughly 400, arranged alphabetically, inside a catalog exceeding 300 pages. The court also noted that the part names were not source-identifying and the indexes were “essentially functional,” since they simply helped readers find the right catalog page.¹

Even if the copying had been substantial enough to be actionable, the court held, it would still qualify as fair use.¹

False Advertising and Passing Off: No Confusion

On the Lanham Act claims, the question was whether MiTek’s use of Simpson’s product names in conversion guides and catalogs created a likelihood of confusion about who actually made the products. Both sides presented expert survey testimony. The court concluded that industry professionals understood MiTek was referencing a competitor’s product for comparison purposes and not claiming any affiliation with Simpson.²

The Doctrine That Made Cross-References Legal

Much of MiTek’s defense rested on a Ninth Circuit doctrine called nominative fair use. It recognizes that sometimes you have to use a competitor’s trademark or product name to talk about their product at all. A company selling printer cartridges compatible with HP printers has to say “HP” somewhere on the packaging. The same logic covers MiTek publishing a guide showing which of its connectors match up with Simpson’s.

The Ninth Circuit uses a three-part test: the competitor’s product wasn’t easily identifiable without the trademarked name; the defendant used only as much of the trademark as reasonably necessary; and the defendant did nothing to suggest sponsorship or endorsement. The burden falls on the plaintiff to prove the use fails this test, not on the defendant to prove it passes.⁴

This mattered here because connector product names function almost like technical specifications. Builders and engineers use them as shorthand for particular load capacities, dimensions, and applications. A guide saying “if the plans call for Simpson Product X, our equivalent is MiTek Product Y” is exactly the kind of comparative communication the doctrine protects.

Why the Case Gets Called an Antitrust Dispute

It shouldn’t. No antitrust claims appeared in the complaint, and the court did not analyze any antitrust theories. Every claim came from the Lanham Act, California business statutes, or federal copyright law.¹

The label sticks because the underlying facts sound like an antitrust story. Simpson holds more than 75 percent of the North American structural connector market and has for several years. MiTek is the primary challenger, having entered the space by acquiring USP Structural Connectors in 2011.² The dispute involved allegations that a dominant company was trying to stop a competitor from cross-referencing products. But Simpson was the plaintiff, and its claims were about protecting intellectual property, not about MiTek engaging in anticompetitive conduct. This was an IP case with a competitive backdrop, not a competition case.

What the Ruling Means Going Forward

For builders, engineers, and distributors, the practical result is that cross-reference guides and conversion charts remain legal. A competitor can publish materials showing which of its products correspond to another manufacturer’s line, provided the materials don’t falsely suggest an affiliation or endorsement. In an industry where most retailers stock only one manufacturer’s products, those guides are often the only way professionals can evaluate alternatives on a project.

The ruling also confirms that product names serving a primarily functional role in catalogs get thin copyright protection at best. Copying a handful of part names from a 300-page catalog to build a comparison tool falls within what courts treat as acceptable. Companies can still protect their catalogs from wholesale copying. They cannot use copyright to block competitors from referencing individual product identifiers in cross-reference materials.¹

1
Justia. Simpson Strong-Tie Company Inc v MiTek Inc, No 5:2020cv06957
2
Justia. Simpson Strong-Tie Company Inc v MiTek Inc
3
CourtListener. Simpson Strong-Tie Company Inc v MiTek Inc
4
Ninth Circuit District and Bankruptcy Courts. 15.26 Defenses – Nominative Fair Use