RJ Control Consultants, Inc. v. Multiject, LLC

RECOMMENDED FOR PUBLICATION
Pursuant to Sixth Circuit I.O.P. 32.1(b)
File Name: 20a0366p.06

UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT

RJ CONTROL CONSULTANTS, INC.; PAUL E. ROGERS, ┐
Plaintiffs-Appellants, │
│
> No. 20-1009
v. │
│
│
│
MULTIJECT, LLC; RSW TECHNOLOGIES, LLC; JACK │
ELDER, │
Defendants-Appellees. │
┘

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.
_________________

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
_________________

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
 No. 20-1009 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 2

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 seeking Rogers’s expertise and
assistance in developing a control system for an injection molding machine.

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

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.
 No. 20-1009 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 3

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 federal and state law claims:
(1) copyright infringement, (2) trademark infringement, (3) violation of the Michigan Consumer
Protection Act, (4) breach of contract, (5) unjust enrichment, (6) conversion, and (7) tortious
 No. 20-1009 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 4

interference with contract/business expectancy. RSW and Elder/Multiject separately brought
motions for summary judgment on all claims. Before the district court ruled on those motions,
Plaintiffs brought a motion to compel discovery responses. On November 8, 2018, the district
court granted Defendants’ motions for summary judgment. In doing so, the court dismissed the
two federal claims (copyright and trademark infringement) with prejudice. The court dismissed
the state law claims without prejudice, declining to exercise supplemental jurisdiction after the
dismissal of the federal claims. Finally, the court denied as moot Plaintiffs’ motion to compel.
That same day, the district court entered its final judgment dismissing the case.

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

2The district judge, Avern Cohn, retired weeks after his denial of Plaintiffs’ motion for reconsideration.
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).
 No. 20-1009 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 5

there is no genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a). The moving party bears the burden of showing that no
genuine issues of material fact exist. Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). The
nonmoving party “must set forth specific facts showing that there is a genuine issue for trial,”
and in turn, the reviewing court must determine “whether the evidence presents a sufficient
disagreement to require submission to a jury or whether it is so one-sided that one party must
prevail as a matter of law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250-52 (1986). In
copyright infringement cases, “granting summary judgment, particularly in favor of a defendant,
is a practice to be used sparingly.” Wickham v. Knoxville Int’l Energy Exposition, Inc., 739 F.2d
1094, 1097 (6th Cir. 1984).

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
 No. 20-1009 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 6

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.” 17 U.S.C. § 102(a).4 The owner of the copyright has the exclusive right to
reproduce the copyrighted work, to prepare derivative works, and to distribute copies of the
works to the public. Id. § 106. However, “[t]he mere fact that a work is copyrighted does not
mean that every element of the work may be protected.” Feist Publ’ns Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 348 (1991). The statute limits that protection in two relevant ways. First,
“[i]n no case does copyright protection for an original work of authorship extend to any idea,
procedure, process, system, method of operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated, or embodied in such a work.” 17 U.S.C.
§ 102(b). Second, as applied to rights in “pictorial, graphic, and sculptural work,” the Copyright
Act “does not afford, to the owner of copyright in a work that portrays a useful article as such,
any greater or lesser rights with respect to the making, distribution, or display of the useful
article so portrayed than those afforded to such works under the law . . . in effect on December
31, 1977.” Id. § 113(b).

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., 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.” 17 U.S.C. § 410(c). Once the
plaintiff produces that copyright certificate, the burden shifts to the defendant to explain why the

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).
 No. 20-1009 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 7

copyright is invalid. Lexmark, 387 F.3d at 334. RJ Control had two valid copyrights: one for the
software (TXu 1-978-284, with an effective registration date of February 17, 2016) and one for
the technical drawings (VAu 1-234-630, with an effective registration date of February 18,
2016). Defendants do not assert that the copyrights themselves are invalid but rather that
Defendants’ use of those drawings does not constitute prohibited copying.5

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, 378 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 in patent law rather than copyright. Accordingly, we
agree with the district court that the manufacture of the control system from the copyrighted
technical drawing was not copyright infringement because the recreation of a control system by
using a copyrighted technical drawing is not “copying” for purposes of the Copyright Act.

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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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.
Baker, 101 U.S. at 100.

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.” 17 U.S.C.
§ 102(b); see, e.g., Victor Stanley, Inc. v. Creative Pipe, Inc., No. MJG-06-2662, 2011 WL
4596043, at *3 (D. Md. Sept. 30, 2011) (“[T]o allow the act of manufacturing a non-architectural
useful item by using a copyright protected drawing of that item to constitute copyright
infringement would be to elevate the copyright to a patent.”) aff’d, 499 F. App’x 971 (Fed. Cir.
2013); see also 1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 2.18[A] (“Where the owner
of a patent obtains the right to exclude others from using the invention, the rights granted to a
copyright owner under [§] 106 of the Copyright Act do not include the right to prevent others
from using the copyrighted work.”). A copyright protects the author’s expression but does not
 No. 20-1009 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 9

give the author the exclusive right to use the ideas expressed in the author’s work. An author
may only obtain protection for the ideas expressed by obtaining a patent. Baker, 101 U.S. at
102. As Defendants note, the Copyright Act may protect a cookbook itself, but that copyright
protection does not prevent an amateur chef from using the cookbook to prepare a recipe
contained within that copyrighted book.

Both the congressional record and case law support the distinction between copyright and
patent law as it pertains to technical drawings and copyright infringement claims made on the
basis of using those drawings to create something else. The congressional record preceding the
enactment of the Copyright Act notes that “[a] copyrighted technical drawing showing the
construction of a machine, used to manufacture the machine” is not entitled to copyright
protection to the extent the work “portray[s] a useful article.” Staff of H.R. Comm. on the
Judiciary, 87th Cong., Rep. of the Register of Copyrights on the General Revision of the U.S.
Copyright Law (1961). “A ‘useful article’ is an article having an intrinsic utilitarian function
that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C.
§ 101.7

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

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.
 No. 20-1009 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 10

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. 17 U.S.C. § 106. Such protection, however, does not extend
to the use of those drawings to create the useful article described in those drawings, as patent
law—with its stricter standards requiring novelty—governs such use protection. Mazer,
347 U.S. at 217; see Espiritu, 284 F. Supp. 2d at 434–35. We thus affirm the district court to the
extent the court found that there was no copyright infringement as to the technical drawings
themselves.

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

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).
 No. 20-1009 RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al. Page 11

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
H.R. Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
5670).

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, 328 F.3d at 856. “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 intertwined with any expressive lines.
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See Lexmark, 387 F.3d at 535; Sega Enters., 977 F.2d at 1524. If there are “many possible ways
of accomplishing a given task,” then “the programmer’s choice of program structure and design
may be highly creative and idiosyncratic,” thus pointing in favor of the software—or at least, that
particular line—being a protectible expression. Sega Enters., 977 F.3d at 1254. On the other
hand, such computer programs are, “in essence, utilitarian articles” and “[a]s such, they contain
many logical, structural, and visual display elements that are dictated by the function to be
performed, by considerations of efficiency, or by external factors such as compatibility
requirements and industry demands.” Id. Such utilitarian features of the program are not
protected, and if they are intertwined with any copyrightable elements, the unprotected elements
trump the protected elements. Lexmark, 387 F.3d at 535; Murray Hill, 361 F.3d at 318 n.2.

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
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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 reverse the district court’s grant of summary judgment as to the copyright-infringement claim
regarding the software copyright, Copyright Registration Number TXu 1-978-284, and remand
the matter to the district court for the taking of additional evidence.

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.