RJ CONTROL CONSULTANTS, INC.; PAUL E. ROGERS, Plaintiffs-Appellants, v. MULTIJECT, LLC; RSW TECHNOLOGIES, LLC; JACK ELDER, Defendants-Appellees.
No. 20-1009
UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT
November 23, 2020
20a0366p.06
RECOMMENDED FOR PUBLICATION Pursuant to Sixth Circuit I.O.P. 32.1(b). Appeal from the United States District Court for the Eastern District of Michigan at Detroit. No. 2:16-cv-10728—Avern Cohn, District Judge.
COUNSEL
ON BRIEF: Eric D. Scheible, FRASCO CAPONIGRO WINEMAN SCHEIBLE HAUSER & LUTTMANN, PLLC, Troy, Michigan, for Appellants. Richard L. McDonnell, INTREPID LAW GROUP, PLC, Rochester, Michigan, for Appellees Multiject and Jack Elder. David C. Purdue, PURDUE LAW OFFICES, LLC, Toledo, Ohio, for Appellee RSW Technologies.
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BERNICE BOUIE DONALD, Circuit Judge. This is a copyright dispute over the use of software code and technical drawings for an industrial control system related to plastic injection molding. The district court held that Plaintiff-Appellant RJ Control Consultants, Inc. and its sole shareholder, Paul Rogers, (collectively, “Plaintiffs“) failed to establish copyright infringement because the use of a design to manufacture a control system does not constitute copyright infringement. The district court accordingly granted summary judgment against Plaintiffs on their copyright infringement claim. The district court further granted summary judgment against Plaintiffs as to their Lanham Act claim, declined to exercise supplemental jurisdiction over the remaining state law claims, and denied as moot Plaintiffs’ motion to compel discovery. Plaintiffs appeal the order denying reconsideration of the district court‘s grant of summary judgment as to the copyright claim as well as the denial of their motion to compel as moot.
I.
The district court characterized this as a “business dispute which soured a friendship.” That friendship was between Plaintiff-Appellant Paul Rogers and Defendant-Appellee Jack Elder. Rogers was the principal and sole shareholder of RJ Control Consultants, Inc. (“RJ Control“), a Michigan company that creates industrial control systems. Elder is the sole owner of Defendant-Appellee Multiject, LLC (“Multiject“), a Michigan business which engineers and sells various industrial accessories related to plastic injection molding. Their friendship turned into a business relationship when Elder approached Rogers
In 2008, Rogers and Elder entered into an oral agreement whereby Rogers would develop a rotary turntable control system for Elder and Multiject. This turntable control system is the “brain” of the turntable, allowing the turntable to move and operate. RJ Control, through Rogers‘s work, updated the control system design in 2013, labeling the newest iteration as “Design 3.” The parties dispute the invoicing for Design 3.1
In March of 2014, Elder asked Rogers for copies of Design 3‘s diagrams as well as the software source code “in case something happened” to Rogers. Rogers disclosed that information to Multiject, believing that Multiject and Elder would not improperly use or disclose the information to third parties. Three days after providing that information to Multiject, Elder informed Rogers and RJ Control that Elder and Multiject would no longer need Rogers‘s services and would instead use Defendant-Appellee RSW Technologies, LLC (“RSW“) for the assembly and wiring of the control systems. Elder said that Multiject would like to continue working with Rogers as a technical consultant for the system design and that Multiject appreciated his expertise but that “this comes down to a business decision.”
Multiject and RSW—RJ Control‘s replacement—had a long-standing business relationship with each other, and Multiject was already considering switching to RSW when it asked Rogers for the design diagrams. Elder claims that Multiject was increasingly concerned with Rogers‘s pricing, worrying that Rogers was charging Multiject too much relative to competitors, at least to the extent Rogers was performing manual labor rather than designing the systems. For that reason, Elder and Multiject decided to “switch out” RJ Control and Rogers for RSW, for purposes of manufacturing rotary tables.
On the same day that Elder informed Rogers that Multiject would be using RSW to assemble and wire the control systems, RSW sent Elder a quote that explicitly referenced the assembly and wiring of “RJ Table Control.” Elder, Multiject, and RSW used Design 3—both the software code and the technical drawings—in the assembly and wiring of new control systems. RSW did not make any changes in the design when it used Design 3. RSW claims that it did not know Rogers and RJ Control had separately designed Design 3 and did not know there was dispute as to whether Elder properly paid Rogers for that work; that is to say, RSW believed Multiject had permission to build the control systems using the software and technical drawings.
On February 17, 2016—nearly two years after Rogers initially supplied the software code and technical drawings to Elder—Rogers obtained two Copyright Certificates of Registration: one for the “Control System Turn Table Software: Design 3” (i.e., the software code) and another for “Control System Turn Table Schematics: Design 3” (i.e., the technical drawings).
Nearly two weeks after receiving those copyrights, RJ Control brought suit against Multiject, Elder, and RSW. Over a year later, RJ Control filed an amended complaint, adding Rogers as a plaintiff. That amended complaint brought several
That was not, however, the end of the matter. Plaintiffs thereafter filed a motion for reconsideration of the dismissal of the copyright claim and denial as moot of their motion to compel. The district court denied that motion on January 18, 2019, but a week later set a hearing on the motion. Nearly two weeks later, the district court vacated its prior denial of the motion. At the hearing on February 11, 2019, the district court expressed interest in seeing the entire software code as it reconsidered its decision, also noting that the court may need an expert in making its determination regarding the software‘s copyrightability. Plaintiffs thereafter supplied the full code to the court. Ten months later, the district court denied the motion for reconsideration, finding that nothing in the papers supplied to the court—the full source code—revealed that the court erred in its original dismissal of the copyright-infringement claim. The district court provided no further explanation.2 Plaintiffs then brought this appeal.
II.
We review a district court‘s grant of summary judgment de novo. Gillis v. Miller, 845 F.3d 677, 683 (6th Cir. 2017).3 Summary judgment is proper “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
III.
On appeal, Rogers and RJ control argue that the district court erred in granting summary judgment as to the copyright claim and in denying their motion to compel as moot. Considering first the copyright claim, they argue that Defendants’ access to the copyright, combined with the substantial similarity between the control systems, at minimum raises a genuine dispute as to whether Defendants copied their works. They argue that the “useful article” exception does not apply where the alleged infringer directly copied the article, as they allege Defendants did here. Finally, RJ Control and Rogers argue that the district court erred in not considering the copying of the software code, instead analyzing only the copying of the technical drawings.
In their responses, Defendants address the two copyrighted works separately. First, considering the software copyright, they argue that “copyright protection does not extend to the control system software at issue because it embodies a procedure, a system[,] and a method of operating an injection molding machine” and that “[n]o[t] one of these is eligible for copyright protection.” Thus, even if the district court did not specifically address the software code in its initial opinion granting summary judgment, Plaintiffs cannot claim copyright protection in the software code. Second, considering the technical drawings—which the district court did address at length—Defendants claim that the use of copyrighted technical drawings to produce a control system does not constitute copyright infringement of the technical drawings in the same way that making a recipe out of a copyrighted cookbook does not constitute copyright infringement of the cookbook. Defendants submit that to the extent Plaintiffs seek to protect the use of the technical drawings to create something else, such as the control systems here, Plaintiffs should seek protection under patent law, not copyright law.
The Copyright Act protects “original works of authorship fixed in any tangible medium of expression.”
A copyright-infringement claim must establish: (1) ownership of a valid copyright, and (2) the fact “that the defendant copied protectable elements of the work.” Lexmark Int‘l Inc. v. Static Control Components, Inc., 387 F.3d 522, 534 (6th Cir. 2004). The first element tests both originality and non-functionality which are “presumptively established by the copyright registration.” Id. A plaintiff may provide “the certificate of a registration made before or within five years after first publication of the work” which “shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.”
Because the validity of the copyrights is not contested, we consider the technical drawing and software code copyrights under the second prong. The second prong “tests whether any copying occurred (a factual matter) and whether the portions of the work copied were entitled to copyright protection (a legal matter).” Lexmark, 387 F.3d at 534.
A. Copying of the Technical Drawings
We first consider the copyright titled “Control System Turn Table Schematics: Design 3,” i.e., the technical drawings. We hold that although physical copying may have occurred,6 the basis for RJ Control and Rogers‘s complaint—that the drawings were copied to reproduce the control system contained therein—sounds
Unlike patent law, “a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself.” Mazer v. Stein, 347 U.S. 201, 217 (1954); see also Computer Assocs. Int‘l, Inc. v. Altai, Inc., 982 F.2d 693, 703 (2d Cir. 1992) (“It is a fundamental principle of copyright law that a copyright does not protect an idea, but only the expression of the idea.“). This distinction between ideas and expression is consistent with the distinction between patent and copyright law; copyright law protects an author‘s original expression but does not give the author the exclusive right to use the ideas expressed in that work. Such ideas may only be protected by obtaining a patent. See Nat‘l Med. Care, Inc. v. Espiritu, 284 F. Supp. 2d 424, 435 (S.D. W. Va. 2003) (citing Baker v. Selden, 101 U.S. 99 (1879) (“Copyright law protects an author‘s original expression, but does not give the author the exclusive right to use the ideas expressed in the author‘s work. Baker, 101 U.S. at 102. An author may only obtain protection for the ideas expressed by obtaining a patent.“)). In Baker, the plaintiff held a copyright in a book which outlined a bookkeeping system, and the defendant created duplicates of forms used within that book. Baker, 101 U.S. at 100. The plaintiff claimed that the forms sold by the defendant infringed on the plaintiff‘s copyright in the book itself. The Supreme Court disagreed, holding that copyright protection extends to the particular expression of an art of work, but not to the use of the art of work described in the copyrighted material. Id.
The exclusive right to use the drawings to reconstruct any idea contained therein sounds in patent law rather than copyright. In contrast to patent law‘s protection of use, copyright protection does not “extend to any idea, procedure, process, [or] system . . . , regardless of the form in which it is described, explained, illustrated or embodied in such a work.”
Both the congressional record and case law support the distinction between copyright and patent law as it pertains to technical drawings and copyright infringement
In construing this language, courts have routinely held that “the manufacture of a machine from a copyrighted technical drawing is clearly not copyright infringement.” Niemi v. Am. Axle Mfg. & Holding Inc., No. 05-74210, 2006 WL 2077590, at *3 (E.D. Mich. July 24, 2006). Holding a “copyright in a pictorial representation of a useful article does not vest the owner of the picture with a derivative copyright in the useful article itself.” Gusler v. Fischer, 580 F. Supp. 2d 309, 315 (S.D.N.Y. 2008) (quoting Eliya, Inc. v. Kohl‘s Dept. Stores, No. 06 Civ 195(GEL), 2006 WL 2645196, at *9 (S.D.N.Y. Sept. 13, 2006)); id. (“[The plaintiff] holds a copyright in a technical drawing of a useful article, which does not preclude [the] [d]efendants’ manufacturing . . . of the article itself.“); Espiritu, 284 F. Supp. 2d at 433, 435-36 (finding that copyright protection does not extend to structures built from technical drawings, even where the defendant stipulated to using unauthorized copies of the technical drawings).8
We thus agree with the district court that “the use of the Design 3 drawing to manufacture a control system is not an act of copyright infringement.” The copyright protection extends to the drawing itself, affording Plaintiffs the exclusive right to prepare derivative works, distribute copies, and display the copyright.
B. Software Copyright
We next consider the software copyright registered as “Control System Turn Table Software: Design 3.” In its order granting summary judgment, the district court did not analyze the software code, looking instead solely to the copyrightability of the technical drawings. In a hearing on Plaintiffs’ motion for reconsideration, however, the court expressed an understanding that it still needed to consider the copyrightability of the software code itself. R. 73, PageID #2556 (“[T]he problem with my Opinion is I didn‘t know what the [software] program was[,] and it‘s a question of what is the program, whether it‘s covered.“). The district court questioned whether the court, without an expert, could make an appropriate judgment as to the copyrightability of a software program.
We begin again with the distinction between an unprotectible idea and a protectible expression, a distinction which poses “unique problems” when considering computer programming. Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992); Mazer, 347 U.S. at 217. The 1976 House Report on the Copyright Act applies the statutory limitation in § 102(b) directly to computer programs, noting that:
Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer, rather than merely to the “writing” expressing his ideas. Section 102(b) is intended, among other things, to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law.
Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832, 838-39 (Fed. Cir. 1992) (quoting
In Lexmark, this Court considered this distinction with a software program and noted that “the task of separating expression from idea in this setting is a vexing one,” describing the distinction between idea and expression as an “elusive boundary line.” Lexmark, 387 F.3d at 535. To distinguish ideas from expression in the software context, courts have considered two doctrines: the doctrine of merger and “scenes a faire.” Id. These doctrines are used to filter out “unprotectible elements.” See Kohus v. Mariol, 328 F.3d 848, 856 (6th Cir. 2003). “Where the expression is essential to the statement of the idea . . . the idea and expression are said to have merged. In these instances, 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.” Lexmark, 387 F.3d at 535 (internal citations and quotation marks omitted). In other words, if the noncopyrightable and copyrightable elements are inextricably intertwined, the noncopyrightable aspect trumps the copyrightable one, rendering the entire work uncopyrightable. Murray Hill Publ‘ns Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 318 n.2 (6th Cir. 2004) (“Of the two principles, that ideas are not protectible and that expressions are protectible, it is the former that is the stronger.“).
Distinguishing between those ideas and expression in the context of software code requires a line-by-line understanding of the code, including what specific lines in that code are purely functional and whether those unprotectible lines are
The “scenes a faire” doctrine similarly distinguishes between ideas and expression. Under this doctrine, certain stock or standard phrases or code lines that “necessarily follow from a common theme or setting” are not protected.” Lexmark, 387 F.3d at 535 (citing Gates Rubber Co. v. Bando Chem. Indus. Ltd., 9 F.3d 823, 838 (10th Cir. 1993)). “In the computer software context, the doctrine means that 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 protection.” Id.; Sega Enters., 977 F.2d at 1524 (“To the extent that a work is functional or factual, it may be copied.“). In considering the protectability of a particular copyright under this doctrine, courts may look at “external considerations” such as industry standard practices. Kohus, 328 F.3d at 856. Where the expression is standard or commonplace, then plaintiffs may not claim copyright protection of that software. Lexmark, 387 F.3d at 535-36 (citing Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1473 (9th Cir. 1992) (affirming district court‘s finding that “[p]laintiffs may not claim copyright protection of an . . . expression that is, if not standard, then commonplace in the computer software industry“)).
In considering these two doctrines, the assistance of an expert is desirable, if not required. See Kohus, 328 F.3d at 856 (noting that expert testimony in that case would “likely be required” to discern expression from idea under the merger doctrine). Similarly, we are unable to undertake any analysis under the scenes a faire doctrine without any expert testimony—much less without any briefing or argument—regarding standard industry practices regarding control systems and the relevant software. See id. at 857-58 (remanding where the “inquiry [into copyrightability] will almost certainly require expert testimony, because the drawings are technical in nature“). The district court here noted as much but nonetheless denied the motion for reconsideration before any such expert was hired or appointed. The technology here is complex, as are the questions necessary to establish whether that technology is properly protected under the Copyright Act. Which aspects or lines of the software code are functional? Which are expressive? Which are commonplace or standard in the industry? Which elements, if any, are inextricably intertwined? Without any record evidence—whether expert or not—to answer these material questions, there indeed remains a genuine factual dispute. Accordingly, we
Plaintiffs also appeal the district court‘s denial of their motion to compel discovery. The district court denied that motion as moot. We review denials of motions to compel discovery for an abuse of discretion. Louzon v. Ford Motor Co., 718 F.3d 556, 560 (6th Cir. 2013). To the extent the discovery requests are relevant to the surviving claim, i.e. copyright infringement of the software, the district court‘s denial is vacated. The remaining requests, however—those relevant to the technical drawings and the state-law claims—are indeed moot and, as such, the district court‘s denial of those requests as moot is affirmed.
IV.
For the foregoing reasons, we AFFIRM the district court‘s grant of summary judgment with respect to the copyright infringement claim related to the technical drawings, REVERSE the district court‘s grant of summary judgment with respect to the copyright infringement claim related to the software code, and VACATE IN PART and AFFIRM IN PART the district court‘s denial of the motion to compel as moot. We REMAND for further proceedings consistent with this opinion.