`Pursuant to Sixth Circuit I.O.P. 32.1(b)
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`File Name: 20a0366p.06
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`UNITED STATES COURT OF APPEALS
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`FOR THE SIXTH CIRCUIT
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`RJ CONTROL CONSULTANTS, INC.; PAUL E. ROGERS,
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`No. 20-1009
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`Plaintiffs-Appellants,
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`v.
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`MULTIJECT, LLC; RSW TECHNOLOGIES, LLC; JACK
`ELDER,
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`Defendants-Appellees.
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`┐
`│
`│
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`│
`│
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`┘
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`Appeal from the United States District Court
`for the Eastern District of Michigan at Detroit.
`No. 2:16-cv-10728—Avern Cohn, District Judge.
`
`Decided and Filed: November 23, 2020
`
`Before: DAUGHTREY, DONALD, and READLER, Circuit Judges.
`_________________
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`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.
`
`_________________
`
`OPINION
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`_________________
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`
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`BERNICE BOUIE DONALD, Circuit Judge. This is a copyright dispute over the use of
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`software code and technical drawings for an industrial control system related to plastic injection
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`molding. The district court held that Plaintiff-Appellant RJ Control Consultants, Inc. and its sole
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`shareholder, Paul Rogers, (collectively, “Plaintiffs”) failed to establish copyright infringement
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 2
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`because the use of a design to manufacture a control system does not constitute copyright
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`infringement. The district court accordingly granted summary judgment against Plaintiffs on
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`their copyright infringement claim. The district court further granted summary judgment against
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`Plaintiffs as to their Lanham Act claim, declined to exercise supplemental jurisdiction over the
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`remaining state law claims, and denied as moot Plaintiffs’ motion to compel discovery.
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`Plaintiffs appeal the order denying reconsideration of the district court’s grant of summary
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`judgment as to the copyright claim as well as the denial of their motion to compel as moot.
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`I.
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`
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`The district court characterized this as a “business dispute which soured a friendship.”
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`That friendship was between Plaintiff-Appellant Paul Rogers and Defendant-Appellee Jack
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`Elder. Rogers was the principal and sole shareholder of RJ Control Consultants, Inc. (“RJ
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`Control”), a Michigan company that creates industrial control systems. Elder is the sole owner
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`of Defendant-Appellee Multiject, LLC (“Multiject”), a Michigan business which engineers and
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`sells various industrial accessories related to plastic injection molding. Their friendship turned
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`into a business relationship when Elder approached Rogers seeking Rogers’s expertise and
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`assistance in developing a control system for an injection molding machine.
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`
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`In 2008, Rogers and Elder entered into an oral agreement whereby Rogers would develop
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`a rotary turntable control system for Elder and Multiject. This turntable control system is the
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`“brain” of the turntable, allowing the turntable to move and operate. RJ Control, through
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`Rogers’s work, updated the control system design in 2013, labeling the newest iteration as
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`“Design 3.” The parties dispute the invoicing for Design 3.1
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`In March of 2014, Elder asked Rogers for copies of Design 3’s diagrams as well as the
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`software source code “in case something happened” to Rogers. Rogers disclosed that
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`information to Multiject, believing that Multiject and Elder would not improperly use or disclose
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`the information to third parties. Three days after providing that information to Multiject, Elder
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`informed Rogers and RJ Control that Elder and Multiject would no longer need Rogers’s
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`1In their briefing, the parties explain in detail the various contractual disputes raised in the district court.
`Because Rogers and RJ Control do not appeal the district court’s dismissal of the state law claims—the only claims
`for which these facts are relevant—we do not address those facts here.
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`
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 3
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`
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`services and would instead use Defendant-Appellee RSW Technologies, LLC (“RSW”) for the
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`assembly and wiring of the control systems. Elder said that Multiject would like to continue
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`working with Rogers as a technical consultant for the system design and that Multiject
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`appreciated his expertise but that “this comes down to a business decision.”
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`Multiject and RSW—RJ Control’s replacement—had a
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`long-standing business
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`relationship with each other, and Multiject was already considering switching to RSW when it
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`asked Rogers for the design diagrams. Elder claims that Multiject was increasingly concerned
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`with Rogers’s pricing, worrying that Rogers was charging Multiject too much relative to
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`competitors, at least to the extent Rogers was performing manual labor rather than designing the
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`systems. For that reason, Elder and Multiject decided to “switch out” RJ Control and Rogers for
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`RSW, for purposes of manufacturing rotary tables.
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`On the same day that Elder informed Rogers that Multiject would be using RSW to
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`assemble and wire the control systems, RSW sent Elder a quote that explicitly referenced the
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`assembly and wiring of “RJ Table Control.” Elder, Multiject, and RSW used Design 3—both the
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`software code and the technical drawings—in the assembly and wiring of new control systems.
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`RSW did not make any changes in the design when it used Design 3. RSW claims that it did not
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`know Rogers and RJ Control had separately designed Design 3 and did not know there was
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`dispute as to whether Elder properly paid Rogers for that work; that is to say, RSW believed
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`Multiject had permission to build the control systems using the software and technical drawings.
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`
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`On February 17, 2016—nearly two years after Rogers initially supplied the software code
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`and technical drawings to Elder—Rogers obtained two Copyright Certificates of Registration:
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`one for the “Control System Turn Table Software: Design 3” (i.e., the software code) and
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`another for “Control System Turn Table Schematics: Design 3” (i.e., the technical drawings).
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`
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`Nearly two weeks after receiving those copyrights, RJ Control brought suit against
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`Multiject, Elder, and RSW. Over a year later, RJ Control filed an amended complaint, adding
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`Rogers as a plaintiff. That amended complaint brought several federal and state law claims:
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`(1) copyright infringement, (2) trademark infringement, (3) violation of the Michigan Consumer
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`Protection Act, (4) breach of contract, (5) unjust enrichment, (6) conversion, and (7) tortious
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`
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 4
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`
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`interference with contract/business expectancy. RSW and Elder/Multiject separately brought
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`motions for summary judgment on all claims. Before the district court ruled on those motions,
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`Plaintiffs brought a motion to compel discovery responses. On November 8, 2018, the district
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`court granted Defendants’ motions for summary judgment. In doing so, the court dismissed the
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`two federal claims (copyright and trademark infringement) with prejudice. The court dismissed
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`the state law claims without prejudice, declining to exercise supplemental jurisdiction after the
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`dismissal of the federal claims. Finally, the court denied as moot Plaintiffs’ motion to compel.
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`That same day, the district court entered its final judgment dismissing the case.
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`
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`That was not, however, the end of the matter. Plaintiffs thereafter filed a motion for
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`reconsideration of the dismissal of the copyright claim and denial as moot of their motion to
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`compel. The district court denied that motion on January 18, 2019, but a week later set a hearing
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`on the motion. Nearly two weeks later, the district court vacated its prior denial of the motion.
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`At the hearing on February 11, 2019, the district court expressed interest in seeing the entire
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`software code as it reconsidered its decision, also noting that the court may need an expert in
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`making its determination regarding the software’s copyrightability. Plaintiffs thereafter supplied
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`the full code to the court. Ten months later, the district court denied the motion for
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`reconsideration, finding that nothing in the papers supplied to the court—the full source code—
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`revealed that the court erred in its original dismissal of the copyright-infringement claim. The
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`district court provided no further explanation.2 Plaintiffs then brought this appeal.
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`II.
`
`We review a district court’s grant of summary judgment de novo. Gillis v. Miller,
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`845 F.3d 677, 683 (6th Cir. 2017).3 Summary judgment is proper “if the movant shows that
`
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`2The district judge, Avern Cohn, retired weeks after his denial of Plaintiffs’ motion for reconsideration.
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`3The notice of appeal itself is limited to appealing the denial of Plaintiffs’ motion for reconsideration.
`Nonetheless, “where it can be reasonably inferred from the notice of appeal that the intent of the appellant was to
`appeal from the final judgment” rather than merely the denial of the motion for reconsideration, we may treat the
`appeal as an appeal from the final judgment, particularly where the appellee has not been misled. Peabody Coal Co.
`v. Local Union Nos. 1734, 1508, & 1548, UMW, 484 F.2d 78, 81 (6th Cir. 1973). Here, the appellees have not been
`misled, particularly considering that both parties have briefed the merits of the underlying motion for summary
`judgment rather than constraining themselves to the motion for reconsideration. See also Boburka v. Adcock,
`979 F.2d 424, 426 (6th Cir. 1992).
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`
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 5
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`
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`there is no genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law.” Fed. R. Civ. P. 56(a). The moving party bears the burden of showing that no
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`genuine issues of material fact exist. Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). The
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`nonmoving party “must set forth specific facts showing that there is a genuine issue for trial,”
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`and in turn, the reviewing court must determine “whether the evidence presents a sufficient
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`disagreement to require submission to a jury or whether it is so one-sided that one party must
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`prevail as a matter of law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250-52 (1986). In
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`copyright infringement cases, “granting summary judgment, particularly in favor of a defendant,
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`is a practice to be used sparingly.” Wickham v. Knoxville Int’l Energy Exposition, Inc., 739 F.2d
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`1094, 1097 (6th Cir. 1984).
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`III.
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`
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`On appeal, Rogers and RJ control argue that the district court erred in granting summary
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`judgment as to the copyright claim and in denying their motion to compel as moot. Considering
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`first the copyright claim, they argue that Defendants’ access to the copyright, combined with the
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`substantial similarity between the control systems, at minimum raises a genuine dispute as to
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`whether Defendants copied their works. They argue that the “useful article” exception does not
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`apply where the alleged infringer directly copied the article, as they allege Defendants did here.
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`Finally, RJ Control and Rogers argue that the district court erred in not considering the copying
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`of the software code, instead analyzing only the copying of the technical drawings.
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`
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`In their responses, Defendants address the two copyrighted works separately. First,
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`considering the software copyright, they argue that “copyright protection does not extend to the
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`control system software at issue because it embodies a procedure, a system[,] and a method of
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`operating an injection molding machine” and that “[n]o[t] one of these is eligible for copyright
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`protection.” Thus, even if the district court did not specifically address the software code in its
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`initial opinion granting summary judgment, Plaintiffs cannot claim copyright protection in the
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`software code. Second, considering the technical drawings—which the district court did address
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`at length—Defendants claim that the use of copyrighted technical drawings to produce a control
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`system does not constitute copyright infringement of the technical drawings in the same way that
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`making a recipe out of a copyrighted cookbook does not constitute copyright infringement of the
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 6
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`
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`cookbook. Defendants submit that to the extent Plaintiffs seek to protect the use of the technical
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`drawings to create something else, such as the control systems here, Plaintiffs should seek
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`protection under patent law, not copyright law.
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`The Copyright Act protects “original works of authorship fixed in any tangible medium
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`of expression.” 17 U.S.C. § 102(a).4 The owner of the copyright has the exclusive right to
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`reproduce the copyrighted work, to prepare derivative works, and to distribute copies of the
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`works to the public. Id. § 106. However, “[t]he mere fact that a work is copyrighted does not
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`mean that every element of the work may be protected.” Feist Publ’ns Inc. v. Rural Tel. Serv.
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`Co., 499 U.S. 340, 348 (1991). The statute limits that protection in two relevant ways. First,
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`“[i]n no case does copyright protection for an original work of authorship extend to any idea,
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`procedure, process, system, method of operation, concept, principle, or discovery, regardless of
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`the form in which it is described, explained, illustrated, or embodied in such a work.” 17 U.S.C.
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`§ 102(b). Second, as applied to rights in “pictorial, graphic, and sculptural work,” the Copyright
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`Act “does not afford, to the owner of copyright in a work that portrays a useful article as such,
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`any greater or lesser rights with respect to the making, distribution, or display of the useful
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`article so portrayed than those afforded to such works under the law . . . in effect on December
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`31, 1977.” Id. § 113(b).
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`A copyright-infringement claim must establish: (1) ownership of a valid copyright, and
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`(2) the fact “that the defendant copied protectable elements of the work.” Lexmark Int., Inc. v.
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`Static Control Components, Inc., 387 F.3d 522, 534 (6th Cir. 2004). The first element tests both
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`originality and non-functionality which are “presumptively established by the copyright
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`registration.” Id. A plaintiff may provide “the certificate of a registration made before or within
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`five years after first publication of the work” which “shall constitute prima facie evidence of the
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`validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c). Once the
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`plaintiff produces that copyright certificate, the burden shifts to the defendant to explain why the
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`4As relevant here, software codes may be entitled to copyright protection as “literary works” under
`17 U.S.C. § 101. Lexmark Int’l Inc. v. Static Control Components, Inc., 387 F.3d 522, 533 (6th Cir. 2004) (citing
`H.R. Rep. No. 1476 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667 (“The term ‘literary works’. . . includes . . .
`computer programs to the extent that they incorporate authorship in the programmer’s expression of original ideas,
`as distinguished from the ideas themselves.”)). Technical drawings are covered under “pictorial, graph, and
`sculptural works.” 17 U.S.C. § 102(a)(5).
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 7
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`copyright is invalid. Lexmark, 387 F.3d at 334. RJ Control had two valid copyrights: one for the
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`software (TXu 1-978-284, with an effective registration date of February 17, 2016) and one for
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`the technical drawings (VAu 1-234-630, with an effective registration date of February 18,
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`2016). Defendants do not assert that the copyrights themselves are invalid but rather that
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`Defendants’ use of those drawings does not constitute prohibited copying.5
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`Because the validity of the copyrights is not contested, we consider the technical drawing
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`and software code copyrights under the second prong. The second prong “tests whether any
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`copying occurred (a factual matter) and whether the portions of the work copied were entitled to
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`copyright protection (a legal matter).” Lexmark, 378 F.3d at 534.
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`A. Copying of the Technical Drawings
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`We first consider the copyright titled “Control System Turn Table Schematics: Design
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`3,” i.e., the technical drawings. We hold that although physical copying may have occurred,6 the
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`basis for RJ Control and Rogers’s complaint—that the drawings were copied to reproduce the
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`control system contained therein—sounds in patent law rather than copyright. Accordingly, we
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`agree with the district court that the manufacture of the control system from the copyrighted
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`technical drawing was not copyright infringement because the recreation of a control system by
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`using a copyrighted technical drawing is not “copying” for purposes of the Copyright Act.
`
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`5Courts consider “copyrightability” in both aspects of the infringement test. Lexmark, 387 F.3d at 538.
`Here, we address the copyrightability of the copyrights under the second prong to ensure our holding does not
`establish that technical drawings are never protected by copyright. They may be. However, as we hold today, any
`such copyright protection does not extend to the use of such drawings to construct the object or process contained
`within those drawings. Patent law provides the appropriate protection for such usage.
`
`6Plaintiffs assert that there is a fact issue regarding whether RSW physically reproduced the technical
`drawings. That may be true, but the question of whether the drawings were themselves reproduced—a separate
`question from whether the drawing was used to create the system portrayed in that drawing—was not clearly raised
`in Plaintiffs’ amended complaint. No facts allude to the physical reproduction of the technical drawings, instead
`alleging only that Defendants used the “Copyright Information” to infringe on “one or more” of Plaintiffs’
`copyrights. Even to the extent this new theory of copyright infringement was raised in Plaintiffs’ response to
`Defendants’ motion for summary judgment, a plaintiff may not expand its claims to assert new theories, either in
`response to summary judgment or on appeal. Bridgeport Music, Inc. v. WM Music Corp., 508 F.3d 394, 400 (6th
`Cir. 2007). Further, even if we were to consider such copyright infringement of the drawings based on the physical
`reproduction thereof, it is unclear what damages—if any—are attributable to that physical copying.
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 8
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`Unlike patent law, “a copyright gives no exclusive right to the art disclosed; protection is
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`given only to the expression of the idea—not the idea itself.” Mazer v. Stein, 347 U.S. 201, 217
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`(1954); see also Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 703 (2d Cir. 1992) (“It
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`is a fundamental principle of copyright law that a copyright does not protect an idea, but only the
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`expression of the idea.”). This distinction between ideas and expression is consistent with the
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`distinction between patent and copyright law; copyright law protects an author’s original
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`expression but does not give the author the exclusive right to use the ideas expressed in that
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`work. Such ideas may only be protected by obtaining a patent. See Nat’l Med. Care, Inc. v.
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`Espiritu, 284 F. Supp. 2d 424, 435 (S.D. W. Va. 2003) (citing Baker v. Selden, 101 U.S. 99
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`(1879) (“Copyright law protects an author’s original expression, but does not give the author the
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`exclusive right to use the ideas expressed in the author’s work. Baker, 101 U.S. at 102. An author
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`may only obtain protection for the ideas expressed by obtaining a patent.”). In Baker, the
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`plaintiff held a copyright in a book which outlined a bookkeeping system, and the defendant
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`created duplicates of forms used within that book. Baker, 101 U.S. at 100. The plaintiff claimed
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`that the forms sold by the defendant infringed on the plaintiff’s copyright in the book itself. The
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`Supreme Court disagreed, holding that copyright protection extends to the particular expression
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`of an art of work, but not to the use of the art of work described in the copyrighted material.
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`Baker, 101 U.S. at 100.
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`The exclusive right to use the drawings to reconstruct any idea contained therein sounds
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`in patent law rather than copyright. In contrast to patent law’s protection of use, copyright
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`protection does not “extend to any idea, procedure, process, [or] system . . . , regardless of the
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`form in which it is described, explained, illustrated or embodied in such a work.” 17 U.S.C.
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`§ 102(b); see, e.g., Victor Stanley, Inc. v. Creative Pipe, Inc., No. MJG-06-2662, 2011 WL
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`4596043, at *3 (D. Md. Sept. 30, 2011) (“[T]o allow the act of manufacturing a non-architectural
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`useful item by using a copyright protected drawing of that item to constitute copyright
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`infringement would be to elevate the copyright to a patent.”) aff’d, 499 F. App’x 971 (Fed. Cir.
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`2013); see also 1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 2.18[A] (“Where the owner
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`of a patent obtains the right to exclude others from using the invention, the rights granted to a
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`copyright owner under [§] 106 of the Copyright Act do not include the right to prevent others
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`from using the copyrighted work.”). A copyright protects the author’s expression but does not
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 9
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`
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`give the author the exclusive right to use the ideas expressed in the author’s work. An author
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`may only obtain protection for the ideas expressed by obtaining a patent. Baker, 101 U.S. at
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`102. As Defendants note, the Copyright Act may protect a cookbook itself, but that copyright
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`protection does not prevent an amateur chef from using the cookbook to prepare a recipe
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`contained within that copyrighted book.
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`Both the congressional record and case law support the distinction between copyright and
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`patent law as it pertains to technical drawings and copyright infringement claims made on the
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`basis of using those drawings to create something else. The congressional record preceding the
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`enactment of the Copyright Act notes that “[a] copyrighted technical drawing showing the
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`construction of a machine, used to manufacture the machine” is not entitled to copyright
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`protection to the extent the work “portray[s] a useful article.” Staff of H.R. Comm. on the
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`Judiciary, 87th Cong., Rep. of the Register of Copyrights on the General Revision of the U.S.
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`Copyright Law (1961). “A ‘useful article’ is an article having an intrinsic utilitarian function
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`that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C.
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`§ 101.7
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`In construing this language, courts have routinely held that “the manufacture of a
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`machine from a copyrighted technical drawing is clearly not copyright infringement.” Niemi v.
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`Am. Axle Mfg. & Holding Inc., No. 05-74210, 2006 WL 2077590, at *3 (E.D. Mich. July 24,
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`2006). Holding a “copyright in a pictorial representation of a useful article does not vest the
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`owner of the picture with a derivative copyright in the useful article itself.” Gusler v. Fischer,
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`580 F. Supp. 2d 309, 315 (S.D.N.Y. 2008) (quoting Eliya, Inc. v. Kohl’s Dept. Stores, No. 06 Civ
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`195(GEL), 2006 WL 2645196, at *9 (S.D.N.Y. Sept. 13, 2006)); id. (“[The plaintiff] holds a
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`copyright in a technical drawing of a useful article, which does not preclude [the] [d]efendants’
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`manufacturing . . . of the article itself.”); Espiritu, 284 F. Supp. 2d at 433, 435–36 (finding that
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`7At least one court has found that technical drawings themselves are not “useful articles” because they are
`created to “convey information” and, thus, are not themselves useful but rather depict useful articles. See, e.g.,
`Oldcaste Precast, Inc. v. Granite Precasting & Concrete, Inc., No. C10-322, 2011 WL 813759, at *5 (W.D. Wash.
`Mar. 2, 2011). The House Committee Report, however, uses the above example—excluding technical drawings
`from copyright protection—where they portray a useful article, not where they themselves are useful articles. The
`analysis, then, is on whether the depicted item is itself a useful article. The control system itself is a useful article in
`that it is the “brain” used to direct the plastic injection molding and is not designed merely to “convey information.”
`17 U.S.C. § 101.
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`
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 10
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`
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`copyright protection does not extend to structures built from technical drawings, even where the
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`defendant stipulated to using unauthorized copies of the technical drawings).8
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`We thus agree with the district court that “the use of the Design 3 drawing to manufacture
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`a control system is not an act of copyright infringement.” The copyright protection extends to
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`the drawing itself, affording Plaintiffs the exclusive right to prepare derivative works, distribute
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`copies, and display the copyright. 17 U.S.C. § 106. Such protection, however, does not extend
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`to the use of those drawings to create the useful article described in those drawings, as patent
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`law—with its stricter standards requiring novelty—governs such use protection. Mazer,
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`347 U.S. at 217; see Espiritu, 284 F. Supp. 2d at 434–35. We thus affirm the district court to the
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`extent the court found that there was no copyright infringement as to the technical drawings
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`themselves.
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`B. Software Copyright
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`We next consider the software copyright registered as “Control System Turn Table
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`Software: Design 3.” In its order granting summary judgment, the district court did not analyze
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`the software code, looking instead solely to the copyrightability of the technical drawings. In a
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`hearing on Plaintiffs’ motion for reconsideration, however, the court expressed an understanding
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`that it still needed to consider the copyrightability of the software code itself. R. 73, PageID
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`#2556 (“[T]he problem with my Opinion is I didn’t know what the [software] program was[,]
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`and it’s a question of what is the program, whether it’s covered.”). The district court questioned
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`whether the court, without an expert, could make an appropriate judgment as to the
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`copyrightability of a software program.
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`We begin again with the distinction between an unprotectible idea and a protectible
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`expression, a distinction which poses “unique problems” when considering computer
`
`
`8Plaintiffs cite Nino Homes for the opposite conclusion: that “one may construct a house which is identical
`to a house depicted in copyrighted architectural plans, but one may not directly copy those plans and then use the
`infringing copy to construct the house.” Robert R. Jones Assoc., Inc. v. Nino Homes, 858 F.2d 274, 280 (6th Cir.
`1988). Courts have repeatedly, however, explicitly declined to extend these architecture cases to non-architectural
`technical drawings, largely because the two categories are covered separately under the Copyright Act. See, e.g.,
`Niemi, 2006 WL 2077590, at *4 (noting that the holding in Nino Homes is “limited to architectural works”); see also
`Forest River, Inc. v. Heartland Recreational Vehicles LLC, 753 F. Supp. 2d 753, 759 (N.D. Ind. 2010); Niemi v.
`NHK Spring Co., No. 3:06-CV-1117, 2007 WL 2460348, at *2 (N.D. Ohio Aug. 27, 2007).
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`
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 11
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`programming. Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992); Mazer,
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`347 U.S. at 217. The 1976 House Report on the Copyright Act applies the statutory limitation in
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`§ 102(b) directly to computer programs, noting that:
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`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.
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`Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832, 838–39 (Fed. Cir. 1992) (quoting
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`H.R. Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
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`5670).
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`In Lexmark, this Court considered this distinction with a software program and noted that
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`“the task of separating expression from idea in this setting is a vexing one,” describing the
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`distinction between idea and expression as an “elusive boundary line.” Lexmark, 387 F.3d at
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`535. To distinguish ideas from expression in the software context, courts have considered two
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`doctrines: the doctrine of merger and “scenes a faire.” Id. These doctrines are used to filter out
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`“unprotectible elements.” See Kohus, 328 F.3d at 856. “Where the expression is essential to the
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`statement of the idea . . . the idea and expression are said to have merged. In these instances,
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`copyright protection does not exist because granting protection to the expressive component of
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`the work necessarily would extend protection to the work’s uncopyrightable ideas as well.”
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`Lexmark, 387 F.3d at 535 (internal citations and quotation marks omitted). In other words, if the
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`noncopyrightable and copyrightable elements are inextricably intertwined, the noncopyrightable
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`aspect trumps the copyrightable one, rendering the entire work uncopyrightable. Murray Hill
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`Publ’ns Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 318 n.2 (6th Cir. 2004)
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`(“Of the two principles, that ideas are not protectible and that expressions are protectible, it is the
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`former that is the stronger.”).
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`Distinguishing between those ideas and expression in the context of software code
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`requires a line-by-line understanding of the code, including what specific lines in that code are
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`purely functional and whether those unprotectible lines are intertwined with any expressive lines.
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`
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`No. 20-1009
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`RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al.
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`Page 12
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`
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`See Lexmark, 387 F.3d at 535; Sega Enters., 977 F.2d at 1524. If there are “many possible ways
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`of accomplishing a given task,” then “the programmer’s choice of program structure and design
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`may be highly creative and idiosyncratic,” thus pointing in favor of the software—or at least, that
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`particular line—being a protectible expression. Sega Enters., 977 F.3d at 1254. On the other
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`hand, such computer programs are, “in essence, utilitarian articles” and “[a]s such, they contain
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`many logical, structural, and visual display elements that are dictated by the function to be
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`performed, by considerations of efficiency, or by external factors such as compatibility
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`requirements and industry demands.” Id. Such utilitarian features of the program are not
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`protected, and if they are intertwined with any copyrightable elements, the unprotected elements
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`trump the protected elements. Lexmark, 387 F.3d at 535; Murray Hill, 361 F.3d at 318 n.2.
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`The “scenes a faire” doctrine similarly distinguishes between ideas and expression.
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`Under this doctrine, certain stock or standard phrases or code lines that “necessarily follow from
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`a common theme or setting” are not protected.” Lexmark, 387 F.3d at 535 (citing Gates Rubber
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`Co. v. Bando Chem. Indus. Ltd., 9 F.3d 823, 838 (10th Cir. 1993)). “In the computer software
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`context, the doctrine means that the elements of a program dictated by practical realities—e.g.,
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`by hardware standards and mechanical specifications, software standards and compatibility
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`requirements, computer manufacturer design standards, target industry practices, and standard
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`computer programming practices—may not obtain protection.” Id.; Sega Enters., 977 F.2d at
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`1524 (“To the extent that a work is functional or factual, it may be copied.”). In considering the
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`protectability of a particular copyright under this doctrine, courts may look at “external
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`considerations” such as industry standard practices. Kohus, 328 F.3d at 856. Where the
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`expression is standard or commonplace, t