`FILED
`United States Court of Appeals
`Tenth Circuit
`PUBLISH
`
`
`July 21, 2020
`UNITED STATES COURT OF APPEALS
`
`
`Christopher M. Wolpert
`FOR THE TENTH CIRCUIT
`Clerk of Court
`____________________________________
`
`ZAHOUREK SYSTEMS, INC.;
`JON ZAHOUREK
`
` Plaintiffs Counterclaim
` Defendants - Appellants,
`
`v.
`
`BALANCED BODY UNIVERSITY,
`LLC,
`
` Defendant Counterclaimant -
` Appellee.
`______________________
`
`ZAHOUREK SYSTEMS, INC.;
`JON ZAHOUREK
`
` Plaintiffs Counterclaim
` Defendants - Appellee,
`
`v.
`
`BALANCED BODY UNIVERSITY,
`LLC,
`
` Defendant Counterclaimant -
` Appellant.
`
`
`
`
`
`
`
`
`No. 18-1300
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`
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`
`
`
`
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`
`
`
`
`
`
`No. 18-1312
`
`
`_________________________________
`
`Appeals from the United States District Court
`for the District of Colorado
`(D.C. No. 1:13-CV-01812-RM-MLC)
`_________________________________
`
`
`
`
`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 2
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`David Nimmer, Irell & Manella LLP, Los Angeles, California (Dennis J.
`Courtney, Irell & Manella LLP, Los Angeles, California; Luke Santangelo
`and Nicole Ressue, Santangelo Law Offices, P.C., Fort Collins, Colorado,
`with him on the briefs), on behalf of the Plaintiffs Counterclaim
`Defendants.
`
`Carolyn V. Juarez, Neugeboren O’Dowd P.C., Boulder, Colorado; John R.
`Posthumus, Polsinelli, Denver, Colorado (Gordon E.R. Troy, Shelburne,
`Vermont, with them on the briefs), on behalf of the Defendant
`Counterclaimant.
`
`_________________________________
`
`
`Before BACHARACH and CARSON,* Circuit Judges.
`_________________________________
`
`
`BACHARACH, Circuit Judge.
`________________________________
`
`
`
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`These appeals involves a sculptural work called “the Maniken,”
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`which portrays the human body. The overarching issue is whether the
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`Maniken is a “useful article” under the copyright laws. If the Maniken is a
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`useful article, it wouldn’t ordinarily be protectible under the copyright
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`laws. We conclude that a genuine issue of material fact exists on whether
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`the Maniken is a useful article.
`
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`The Honorable Monroe McKay served on the panel at the time of oral
`*
`argument, but he passed away before we issued this opinion. He did not
`participate in the decision, and the two remaining panel members
`constitute a quorum. See 28 U.S.C. § 46(d); Fish v. Schwab, 957 F.3d
`1105, 1110 n.* (10th Cir. 2020).
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`
`2
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 3
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`1.
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`
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`The Maniken portrays the human body.
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`Like a skeleton, the Maniken portrays the human body; but the
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`Maniken dwarfs a standard classroom skeleton and facilitates education by
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`allowing students to apply clay where human tissues would appear. On the
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`left of each picture is the Maniken, and on the right is a standard skeleton.1
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`2.
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`Balanced Body University uses the Maniken, and Mr. Zahourek
`and his company sue for copyright infringement.
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`The defendant, Balanced Body University, bought several Manikens
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`and used them to advertise and instruct students on human anatomy. Mr.
`
`
`
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`These pictures show a later version of the Maniken.
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`3
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`1
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 4
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`Zahourek and his company sued for copyright infringement (among other
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`claims). The district court granted summary judgment to Balanced Body
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`University on the copyright-infringement claim, concluding that the
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`Maniken was unprotected as a “useful article.” We reverse because the
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`Maniken’s classification as a useful article turns on a genuine issue of
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`material fact.2
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`3.
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`A genuine issue of material fact exists on whether the Maniken is
`a useful article.
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`Federal law defines a “useful article,” and a genuine issue of material
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`fact exists over whether the Maniken fits this definition.
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`A.
`
`The Standard of Review
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`We engage in de novo review of the grant of summary judgment,
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`
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`viewing the evidence in the light most favorable to the nonmoving party.
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`Blehm v. Jacobs, 702 F.3d 1193, 1199 (10th Cir. 2012). With this view of
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`the evidence, we consider whether Balanced Body University has shown
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`the lack of a genuine dispute of material fact and entitlement to judgment
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`as a matter of law. Fed. R. Civ. P. 56(a).
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`
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`Within this framework, we consider the copyrightability of the
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`Maniken as a mixed question of law and fact. See Enterprise Mgt. Ltd. v.
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`Warrick, 717 F.3d 1112, 1117 n.5 (10th Cir. 2013). As a mixed question,
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`Balanced Body University cross-appealed on the issue of attorneys’
`2
`fees. Because Balanced Body University is no longer the prevailing party,
`its cross-appeal is moot.
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`4
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 5
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`copyrightability could include “potential jury questions in the presence of
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`materially disputed facts.” Meshwerks, Inc. v. Toyota Motor Sales U.S.A.,
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`Inc., 528 F.3d 1258, 1262 n.4 (10th Cir. 2008).
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`B.
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`The District Court’s Ruling
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`The district court issued two orders addressing whether the Maniken
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`
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`is a useful article. In the first order, the court ruled that the Maniken is a
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`useful article because it has “an intrinsic utilitarian function that is merely
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`to portray the appearance of a life-like form.” Joint App’x vol. 4, at 843.
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`In the second order, the district court reiterated that the Maniken is a
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`useful article, adding that an article is considered useful if it has any
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`“intrinsic utilitarian nature.” Id. at 925–26. The court considered the
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`Maniken intrinsically utilitarian because it merely portrays its own
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`appearance. Id. at 926 n.4.
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`C.
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`The Misfit Between the District Court’s Reasoning and the
`Statutory Definition of a “Useful Article”
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`The district court focused on the usefulness of the Maniken. This
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`
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`focus appears sensible but doesn’t fit the statutory definition of a useful
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`article. A useful article is defined as “having an intrinsic utilitarian
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`function that is not merely to portray the appearance of the article or to
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`convey information.” 17 U.S.C. § 101. Under this definition, an item is not
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`a “useful article” if its usefulness derives solely from its appearance. See
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`Superior Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488,
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`
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`5
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 6
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`493 (4th Cir. 1996) (stating that under 17 U.S.C. § 101, “a useful article
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`has as its function something more than portraying its own appearance”). If
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`an item isn’t a “useful article” under this definition, the item may be
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`copyrightable. Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d
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`913, 919 (7th Cir. 2004).3
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`Under the statutory definition, many functional items aren’t “useful
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`articles.” Consider a toy airplane or nose mask, which may be
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`copyrightable despite their usefulness.4 For example, a toy airplane might
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`be useful for child’s play, but it’s not a useful article because the
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`utilitarian function consists solely in its appearance. Gay Toys, Inc. v.
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`Buddy L Corp., 703 F.2d 970, 973 (6th Cir. 1983). And a nose mask isn’t a
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`useful article because the utilitarian function inheres solely in its
`
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`In enacting the exception for useful articles, Congress intended to
`3
`deny copyright protection to “industrial products” like “automobiles, food
`processors, and television sets.” Gay Toys, Inc. v. Buddy L Corp., 703 F.2d
`970, 973 (6th Cir. 1983) (citing H.R. Rep. No. 94-1476, at 55 (1976)).
`These industrial products may be protectible, but only through “the more
`temporary rights provided by the Patent Act.” Chosun Int’l, Inc. v. Chrisha
`Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005).
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`Even if part of an item constitutes a “useful article,” other parts may
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`be copyrightable if they “incorporate[] pictorial, graphic, or sculptural
`features that can be identified separately from, and are capable of
`existing independently of, the utilitarian aspects of the article.” See 17
`U.S.C. § 101. We need not consider whether the Maniken has sculptural
`elements separable from a utilitarian function.
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` 4
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`6
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 7
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`appearance. Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663,
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`671 (3d Cir. 1990).
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`Like a toy airplane or nose mask, the Maniken has utility only
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`because it portrays the appearance of something (the human body).
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`Because the human body is accurately depicted, the Maniken helps students
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`learn human anatomy. Without this accurate depiction of the human body,
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`the Maniken could lack any utilitarian function. So a material factual issue
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`exists on whether the Maniken fits the statutory definition of a useful
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`article. See Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320, 323 (2d
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`Cir. 1996) (concluding that animal mannequins were copyrightable because
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`their function was “to portray [their] own appearance);5 Superior Form
`
`Builders, Inc. v. Dan Chase Taxidermy Supply Co., 74 F.3d 488, 494 (4th
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`Cir. 1996) (concluding that animal mannequins were not useful articles
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`because “[their] usefulness [was] their portrayal of the appearance of
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`animals”).
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`D.
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`The Potential Usefulness of Applying Clay to the Maniken
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`Despite the statutory definition of a “useful article,” Balanced Body
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`University relies on the district court’s finding that the Maniken provides
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`The Second Circuit noted that it had earlier treated a clothing
`5
`mannequin as a useful article. Hart, 86 F.3d at 323; see Carol Barnhart
`Inc. v. Economy Cover Corp., 773 F.2d 411 (2d. Cir. 1985). In the earlier
`case, however, the parties had stipulated that the mannequin was a useful
`article. Carol Barnhart, 773 F.3d at 414; see Hart, 86 F.3d at 323.
`7
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 8
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`utilitarian value for learning anatomy. In relying on this finding, Balanced
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`Body University argues that the Maniken’s primary purpose is to teach
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`anatomy, allowing students to study muscle articulation through the
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`application of clay.
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`This argument erroneously assumes that the Maniken must be a
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`“useful article” because it can serve as an educational tool. But countless
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`items may be copyrightable despite their utility as educational tools. For
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`example, consider textbooks. They are often useful for teaching. But
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`textbooks are not useful articles because their utility lies solely in the
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`information conveyed. See Samson Vermont, The Sine Qua Non of
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`Copyright Is Uniqueness, Not Originality, 20 Tex. Intell. Prop. L.J. 327,
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`353 (2012) (stating that textbooks are copyrightable despite their practical
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`utility); see also ATC Distribution Grp., Inc. v. Whatever It Takes
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`Transmissions & Parts, Inc., 402 F.3d 700, 707 n.3 (6th Cir. 2004) (“[T]he
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`usefulness of a taxonomy, which is intended to convey information, and
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`which is neither pictorial, graphic, nor sculptural, does not preclude its
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`being eligible for copyright protection under [17 U.S.C.§ 101].”).
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`So too here. The Maniken might be useful for teaching anatomy, but
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`a fact finder could reasonably attribute this usefulness to the information
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`that the Maniken conveys about human anatomy. If the Maniken’s
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`usefulness lies solely in the information it conveys, the Maniken would not
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`be a useful article. 17 U.S.C. § 101.
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`8
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 9
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`Balanced Body University argues that the Maniken does more than
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`convey information: its design allows students to apply clay to learn about
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`muscles. But the University did not make this argument in district court
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`when seeking summary judgment. Because the University didn’t make this
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`argument, the burden never shifted to Mr. Zahourek and his company to
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`present evidence that the Maniken’s utility lay solely in its portrayal of a
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`human skeleton. See Alpine Bank v. Hubbell, 555 F.3d 1097, 1110 (10th
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`Cir. 2009);6 cf. Tavery v. United States, 32 F.3d 1423, 1427 n.5 (10th Cir.
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`1994) (refusing to affirm the award of summary judgment on an alternative
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`ground because the moving party had not raised the issue in district court,
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`failing to put the nonmoving party on notice of a duty to present evidence
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`on the issue).
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`But let’s assume for the sake of argument that a fact finder could
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`reasonably infer that the Maniken had served partly as a prop to showcase
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`There we explained:
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`6
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`To be sure, there is one situation in which the [plaintiffs]
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`would have no burden to show the merits of a nondisclosure
`claim [based on Colorado’s five ways to establish a duty of
`disclosure]. If [the plaintiffs] had raised such a claim in district
`court and the [defendant’s] motion for summary judgment had
`not presented argument and evidence showing that the claim
`lacked merit,
`summary
`judgment would
`have
`been
`inappropriate. After all, it is not the party opposing summary
`judgment that has the burden of justifying its claim; the movant
`must establish the lack of merit.
`
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`Hubbell, 555 F.3d at 1110.
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`9
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 10
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`the location and movement of human muscles. On summary judgment, a
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`fact finder must view the evidence in the light most favorable to the non-
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`movant (Mr. Zahourek and his company). See Part 3(A), above. A fact
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`finder could reasonably infer that the Maniken had facilitated learning
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`through the application of clay only because the skeletal frame accurately
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`portrayed a human skeleton. Indeed, Balanced Body University repeatedly
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`argues that
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`the Maniken is “anatomically accurate” and
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`the accuracy enhances the educational “experience for students
`learning about muscle structure and placement.”
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`Appellee’s Resp. Br. at 4, 15. Given these arguments, a fact finder could
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`reasonably infer that the Maniken had served as a useful learning tool only
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`because of its anatomical accuracy.
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`A similar issue arose in Superior Form Builders, Inc. v. Chase
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`Taxidermy Supply Co., 74 F.3d 488 (4th Cir. 1996); see p. 7, above. That
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`case involved animal mannequins used by the defendant to mount animal
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`skins. 74 F.3d at 491. Given this use, the defendant argued that the animal
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`mannequins had a utilitarian function of acting as mounts to display animal
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`skins. Id. at 493–94.
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`The Fourth Circuit rejected this argument, reasoning that the
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`mannequins’ utility still consisted of their portrayal of the animals’
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`appearance:
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`10
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 11
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`[T]his argument overlooks that which distinguishes mannequins
`from ordinary plastic foam pellet animal stuffing: A mannequin
`provides the creative form and expression of the ultimate animal
`display, whereas pellets do not. Even though covered with a skin,
`the mannequin is not invisible but conspicuous in the final
`display. The angle of the animal’s head, the juxtaposition of its
`body parts, and the shape of the body parts in the final display
`is little more than the portrayal of the underlying mannequin.
`Indeed, the mannequin can even portray the intensity of flexed
`body parts, or it can reveal the grace of relaxed ones. None of
`these expressive aspects of a mannequin is lost by covering the
`mannequin with a skin. Thus, any utilitarian aspect of the
`mannequin exists “merely to portray the appearance” of the
`animal.
`
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`Id. at 493–94 (quoting 17 U.S.C. § 101); see p. 7, above.
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`The Fourth Circuit’s reasoning applies here. Like the animal
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`mannequins in Superior Form Builders, Mr. Zahourek’s sculpture of a
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`human form retains its utilitarian function even though clay (rather than
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`animal skins) is used to cover the exterior. Just as the mannequins retained
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`their utility in Superior Form Builders based on their portrayal of animals,
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`the Maniken retains its utility based on its portrayal of a human skeleton.7
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`In Superior Form Builders, the court pointed out that without the
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`mannequins’ portrayal of the animals, the skins could have been draped on
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`foam pellet stuffing. Superior Form Builders, Inc. v. Chase Taxidermy
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`Balanced Body University tries to distinguish Superior Form
`7
`Builders by noting that the animal mannequins retained expressive
`elements even after being covered with skins. Appellee’s Resp. Br. at 16.
`But Balanced Body University does not explain the relevance of this
`observation. The Maniken’s utilitarian value lies in its appearance even if
`that appearance reveals few expressive elements.
`11
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`Appellate Case: 18-1300 Document: 010110379599 Date Filed: 07/21/2020 Page: 12
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`Supply Co., 74 F.3d 488, 494 (4th Cir. 1996). Here too, the clay could
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`otherwise have been added to any three-dimensional structure. But the
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`Maniken was not just any three-dimensional structure, and a fact finder
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`could reasonably find that the spaces to add clay provided utility only
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`because of the Maniken’s resemblance to a human skeleton. So even if
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`Balanced Body University had pressed its current argument in district
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`court, summary judgment would have remained unavailable.
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`4.
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`Conclusion
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`Viewing the evidence in the light most favorable to Mr. Zahourek
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`and his company, a fact finder could reasonably determine that the
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`Maniken was not a useful article. So we reverse the award of summary
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`judgment on the claim of copyright infringement and remand for further
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`proceedings.
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`12
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`