Paycom Payroll, LLC v. Richison ( 2014 )

FILED
United States Court of Appeals
Tenth Circuit
July 11, 2014
PUBLISH Elisabeth A. Shumaker
Clerk of Court
UNITED STATES COURT OF APPEALS
TENTH CIRCUIT
PAYCOM PAYROLL, LLC; ERNEST
GROUP, INC.,
Plaintiffs - Appellees,
v. No. 13-6181
DAVID RICHISON; PERIOD
FINANCIAL CORPORATION, d/b/a
Period Payroll Services,
Defendants - Appellants.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF OKLAHOMA
(D.C. No. 5:09-CV-00488-W)
Drew T. Palmer, (Melanie Wilson Rughani with him on the briefs), of Crowe &
Dunlevy, Oklahoma City, Oklahoma, for Defendants-Appellants.
Robert E. Norman, of Cheek & Falcone, PLLC, Oklahoma City, Oklahoma,
for Plaintiffs-Appellees.
Before BRISCOE, Chief Judge, MCKAY and PHILLIPS, Circuit Judges.
BRISCOE, Chief Judge.
This is a copyright infringement action involving computer software code.
Pursuant to a consent decree, the district court appointed a special master to
review the software and to opine on the issue of infringement. The special master
found copyright infringement and submitted a report containing his analysis. The
district court agreed with the special master that copyright infringement had
occurred, adopted the special master’s report, and ordered all copies of the
infringing software destroyed. Defendants appeal from the district court’s order.
We have jurisdiction under 28 U.S.C. § 1291, and we vacate the district court’s
order and remand.
I
In the 1990s, David Richison began a payroll processing company in
Oklahoma with his niece and nephew, Shannon and Chad Richison. The company
was called Ernest Group, Inc., and it did business under the name Paycom Payroll
(collectively, “Ernest Group”). During David’s tenure at Ernest Group, he wrote
two software programs for use at the company. He called the first program
BOSS, and he assigned his authorship interest in BOSS to Ernest Group in 1999.
He called the second program Independence.
Amidst a souring relationship between him and Chad, David left Ernest
Group in 2001. David moved to Maryland, where he formed his own payroll
2
processing company called Period Financial Corporation (“Period”). At Period,
David wrote a third program called Period Indy. Period Indy was based, at least
in part, on Independence.
In May 2009, Ernest Group filed this action against David and Period. The
complaint alleged, inter alia, that Period Indy infringed on Ernest Group’s
copyright in BOSS. Shortly after filing its complaint, Ernest Group registered a
copyright in Independence by representing the program as a work for hire.
By 2011, David had written a fourth program, called Cromwell, which
would become the new basis for Ernest Group’s lawsuit. In August of that year,
the parties settled and agreed to the entry of a consent decree. All of Ernest
Group’s claims were released, with the exception of its claim for injunctive relief
based on copyright infringement. All rights to Independence were assigned to
Ernest Group. And the parties agreed that the district court should appoint a
special master “to review, analyze, and report to the Court concerning whether the
‘Cromwell software program,’ and/or any prior versions of it not previously
destroyed, infringe upon ‘Paycom BOSS’ and/or ‘Paycom Independence.’” Aplt.
App. II at 566. In other words, the special master was to write a report opining
on whether the fourth program infringed on the first or second. Then the district
court should decide the issue by consulting the special master’s report.
A dispute arose, however, as to which version of Cromwell should be the
subject of the special master’s analysis—the version filed under seal with the
3
district court in July 2011, or the most recent version. David argued for the
latter; Ernest Group argued for the former. The district court agreed with Ernest
Group, reasoning that the settlement agreement only contemplated the use of the
version of Cromwell filed under seal.
As for which versions of BOSS and Independence the special master should
analyze, there was no disagreement. Although the 1999 versions of BOSS and
Independence were registered with the Copyright Office, the parties agreed that
the 2001 versions of both programs should be the subject of the special master’s
analysis. For his part, David submitted two drafts of a proposed order appointing
the special master, and both drafts indicated that the special master should use the
2001 versions of BOSS and Independence. The district court incorporated this
proposal into its order appointing Kendyl Román as special master.
On August 6, 2012, Román filed his report with the district court. He
concluded that Cromwell infringed on Ernest Group’s copyright in both BOSS
and Independence. In accordance with the consent decree, the report was filed
under seal and designated for “Attorneys’ Eyes Only.”
After Román filed his report, David moved to lift the “Attorneys’ Eyes
Only” restriction. As the author of the software, David felt that if he had access
to the report, then he could assist his attorney in reviewing the substance of the
report. Ernest Group opposed David’s motion. The district court denied the
motion, explaining that “no grounds [were] advanced by [David] that would
4
justify [his] access to the Special Master’s Report.” Id. at 665.
David’s attorneys filed their objections to Román’s report on September 28,
2012. In it, they argued that Román’s report failed to conduct the abstraction-
filtration-comparison test, or at least to document his application of the test. See
generally Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1371 (10th Cir. 1997)
(discussing the abstraction-filtration-comparison test). To a certain extent, Ernest
Group agreed with David’s attorneys’ criticism, replying that “[t]he consensus
among the parties’ experts and the Master is that the Master could and/or should
do more to explain, document, and establish the basis and support for his
opinion.” Aplt. App. II at 675. It was Ernest Group’s position, then, that the
district court should “resubmit this matter to the Master with instructions to
review and respond in detail to the matters raised.” Id. at 678.
Before the district court could resolve the dispute, Ernest Group mailed
David’s attorneys’ objections directly to Román. David’s attorneys called foul.
They urged that Ernest Group had “irrevocably tainted the Master’s neutrality” by
exposing Román to David’s attorneys’ “highly critical evaluation of the Report.”
Id. at 685.
The district court declined to resubmit the issue to Román. Instead, the
court ordered Ernest Group to offer a more substantive response to David’s
attorneys’ critique of the report. Ernest Group complied, arguing that the report
was accurate, thoroughly reasoned and explained, and should be adopted by the
5
court.
On July 25, 2013, the district court agreed with Román and found that
Cromwell infringed on BOSS and Independence. Therefore, the court ordered
that all copies and versions of Cromwell should be destroyed.
II
David raises four arguments on appeal. First, David argues that the district
court should have lifted the “Attorneys’ Eyes Only” restriction on Román’s
report. Second, David argues that Román erred by analyzing versions of BOSS
and Independence which were never registered with the Copyright Office. Third,
David argues that Román’s report is inadequate and the software is not
substantially similar. Fourth, if remand is necessary, David argues that a new
special master should be appointed.
A
David’s first argument is that the district court erred when it declined to lift
the “Attorneys’ Eyes Only” restriction on Román’s report. According to David,
notwithstanding his initial agreement to the restriction, the district court’s failure
to lift the restriction was a violation of his due process rights.
David agreed to the “Attorneys’ Eyes Only” restriction in a consent decree.
“[A] consent decree is afforded the same effect as any other judgment.” Satsky v.
Paramount Commc’ns, Inc., 7 F.3d 1464, 1468 (10th Cir. 1993). “If . . . the
decree appealed from was assented to by the appellant, we cannot consider any
6
errors that may be assigned which were in law waived by the consent . . . . If all
the errors complained of come within the waiver, the decree below will be
affirmed.” Pac. R.R. v. Ketchum, 101 U.S. 289, 290 (1879). As a result, David’s
argument boils down to whether he has a right to see Román’s report that is so
fundamental as to be unwaivable.
No fundamental right is at issue here. “The disclosure of confidential
information on an ‘attorneys’ eyes only’ basis is a routine feature of civil
litigation involving trade secrets.” In re City of New York, 607 F.3d 923, 935 (2d
Cir. 2010) (citing Fed. R. Civ. P. 26(c)(1)(G)). “The purpose of this form of
limited disclosure is to prevent a party from viewing the sensitive information
while nevertheless allowing the party’s lawyers to litigate on the basis of that
information.” Id. at 935-36 (emphases omitted). As a court may impose such a
restriction over the objection of a party, see Fed. R. Civ. P. 26(c)(1), we have no
trouble concluding that the same party may consent to the restriction in the first
place.
Therefore, we reject David’s argument that he has a right to see Román’s
report that is so fundamental as to be unwaivable.
B
David’s second argument is that Román analyzed the wrong versions of
BOSS and Independence. David contends that the only versions of BOSS and
Independence registered with the Copyright Office are from 1999, and therefore
7
Román erred by analyzing the 2001 versions.
As we explained the last time these parties were before this court, “[i]f [a]
theory was intentionally relinquished or abandoned in the district court, we
usually deem it waived and refuse to consider it.” Richison v. Ernest Grp., Inc.,
634 F.3d 1123, 1127 (10th Cir. 2011); see also Singleton v. Wulff, 428 U.S. 106,
120 (1976) (“It is the general rule, of course, that a federal appellate court does
not consider an issue not passed upon below.”). “By contrast, if the theory
simply wasn’t raised before the district court, we usually hold it forfeited.”
Richison, 634 F.3d at 1128. “‘Waiver is accomplished by intent, but forfeiture
comes about through neglect.’” Id. (quoting United States v. Zubia–Torres, 550
F.3d 1202, 1205 (10th Cir. 2008)).
In the district court, David twice proposed that the special master analyze
the 2001 versions of BOSS and Independence. He did so both in a red-line
version of a proposed order appointing the special master, and in a clean version
of the same proposed order. This led the district court to conclude that “[t]here
[was] no dispute as to the first element” of a copyright infringement claim,
namely whether “the plaintiff owns a valid copyright.” Aplt. App. IV at 1257.
Recently, the Supreme Court held that the copyright registration
requirement is nonjurisdictional. Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154,
166 (2010) (“Section 411(a) imposes a precondition to filing a claim that is not
clearly labeled jurisdictional, is not located in a jurisdiction-granting provision,
8
and admits of congressionally authorized exceptions. Section 411(a) thus
imposes a type of precondition to suit that supports nonjurisdictional treatment
under our precedents.” (citation omitted)). And, of course, “a party may waive or
forfeit the benefit of a nonjurisdictional rule.” Muskrat v. Deer Creek Pub. Sch.,
715 F.3d 775, 784 (10th Cir. 2013).
We conclude that David intentionally relinquished any argument
concerning the copyright registration status of the 2001 versions of BOSS and
Independence. Therefore, we deem the argument waived in the district court and
we decline to entertain it on appeal.
C
David’s third argument is that Román’s report, which was adopted in toto
by the district court, is flawed. According to David, Román’s report provides
inadequate support for its conclusions, and, in any event, Cromwell is not
substantially similar to BOSS or Independence. 1
1
David also argues that Román erred by applying an insurmountable
standard for software copyright cases. Specifically, David points us to Román’s
statement that “[w]ithout identified significant portions of copied code, the
Defendants’ Pmaster software program would not function to provide a payroll
service that would meet the needs of diverse group of customers.” Aplt. App. III
at 810. This same line is echoed in the district court’s order. Id. IV at 1261
(noting parenthetically that “copying was essential to the functions of the program
itself”). “[N]early every allegedly infringing piece of software would fail the
Special Master’s test,” David says, because “[f]or most even reasonably efficient
computer programs, removal of a single line of code could result in a failure of
that program to function.” Aplt. Br. at 48-49. Ernest Group replies that “the
(continued...)
9
We review a determination of substantial similarity de novo. Blehm v.
Jacobs, 702 F.3d 1193, 1199 (10th Cir. 2012).
1
We begin with the applicable law. “In order to establish copyright
infringement plaintiff must prove (1) that it owns a valid copyright, and (2) that
the defendant copied protectable elements of the copyrighted work.” Mitel, 124
F.3d at 1370. “The second element requires us to consider two distinct issues.”
Id. “First we must determine whether, as a factual matter, the defendant copied
plaintiff’s work.” Id. (footnote omitted); see also Julie E. Cohen et al., Copyright
in a Global Information Economy 291 (3d ed. 2010) (referring to “whether the
defendant copied from the plaintiff” as “copying in fact”). “Second, as a mixed
question of law and fact, we must evaluate whether the elements copied by the
defendant are protected by copyright.” Mitel, 124 F.3d at 1370. In essence, this
second consideration asks whether defendant took “too much” of plaintiff’s work;
1
(...continued)
Master’s observation that the Cromwell software would not function as a payroll
processing program without the copied source code was not the lynchpin of the
Master’s conclusion; it was merely one component of his analysis.” Aplee. Br. at
30.
We agree with Ernest Group. Román’s conclusions do not appear to rest on
the rationale that if the removal of a line of code would cause a program to fail,
then that line of code is copyright-protected expression. Were that his view, the
report would not have proceeded to address additional rationales. Still, we
acknowledge that David is correct insofar as he asserts that this “would not
function” idea is not the governing standard.
10
it asks what the level of “sameness” is between the two works. See Cohen et al.,
supra, at 302-03.
A corollary of the “sameness” requirement is that “[c]opying deleted or so
disguised as to be unrecognizable is not copying.” See v. Durang, 711 F.2d 141,
142 (9th Cir. 1983); see also Int’l Ass’n of Machinists & Aerospace Workers,
AFL-CIO v. Winship Green Nursing Ctr., 103 F.3d 196, 203 n.6 (1st Cir. 1996)
(“Even if a work is copied, however, no copyright infringement exists if
substantial changes render the work unrecognizable.”); Warner Bros. Inc. v. Am.
Broad. Cos., Inc., 720 F.2d 231, 241 (2d Cir. 1983) (“‘[A] defendant may
legitimately avoid infringement by intentionally making sufficient changes in a
work which would otherwise be regarded as substantially similar to that of the
plaintiff’s.’” (quoting 3 Nimmer on Copyright § 13.03[B] at 13-38.1 to -38.2
(1983)).
Importantly, our concern for “sameness” is limited to those elements of
plaintiff’s work that constitute protectable expression. See Country Kids ‘N City
Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996) (“[T]he question of
whether Defendants infringed on Plaintiff’s copyright turns on whether
Defendants’ product is substantially similar to the protectable elements of
Plaintiff’s product.” (emphasis added)); Gates Rubber Co. v. Bando Chem. Indus.,
Ltd., 9 F.3d 823, 833 (10th Cir. 1993) (“The court’s inquiry does not end with a
finding that the defendant copied portions of the plaintiff’s program. Liability for
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copyright infringement will only attach where protected elements of a copyrighted
work are copied.” (emphasis in original)); see also 17 U.S.C. § 102(b) (“In 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 work.”); 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.”).
As a result, we must ensure that we are comparing only those protectable
elements of plaintiff’s work to defendant’s work. To that end, “we find it useful
to apply the ‘abstraction-filtration-comparison’ test.” Country Kids, 77 F.3d at
1284. As we explained in Country Kids,
[a]t the abstraction step, we separate the ideas (and basic
utilitarian functions), which are not protectable, from the
particular expression of the work. Then, we filter out
the nonprotectable components of the product from the
original expression. Finally, we compare the remaining
protected elements to the allegedly copied work to
determine if the two works are substantially similar.
Id. at 1284-85; see Gates Rubber Co., 9 F.3d at 834 (“First, in order to provide a
framework for analysis, we conclude that a court should dissect the program
according to its varying levels of generality as provided in the abstractions test.
Second, poised with this framework, the court should examine each level of
abstraction in order to filter out those elements of the program which are
12
unprotectable. Filtration should eliminate from comparison the unprotectable
elements of ideas, processes, facts, public domain information, merger material,
scenes a faire material, and other unprotectable elements suggested by the
particular facts of the program under examination. Third, the court should then
compare the remaining protectable elements with the allegedly infringing program
to determine whether the defendants have misappropriated substantial elements of
the plaintiff’s program.”).
2
With these settled principles in mind, we turn our focus to Román’s report.
In the report, Román should have documented his application of each step of the
abstraction-filtration-comparison test. Because we conclude that he did not do so,
we vacate the district court’s order adopting the report and remand.
To begin, Román’s report contains little evidence that he performed the
abstraction step. In this first step, “we separate the ideas (and basic utilitarian
functions), which are not protectable, from the particular expression of the work.”
Country Kids, 77 F.3d at 1285. The task of abstraction must be undertaken
“conscientiously and systematically” in order to “‘separate ideas from expression
and eliminate from the substantial similarity analysis those portions of a work that
are not eligible for copyright protection.’” Gates Rubber Co., 9 F.3d at 834
(quoting 3 Nimmer on Copyright § 13.03[F], at 13-102.17 (1983)). Although
“[a]pplication of the abstractions test will necessarily vary from case-to-case and
13
program-to-program,” a “computer program can often be parsed into at least six
levels of generally declining abstraction: (i) the main purpose, (ii) the program
structure or architecture, (iii) modules, (iv) algorithms and data structures, (v)
source code, and (vi) object code.” Id. at 834-35.
Taking this first level as an example, “[w]hen defining a program’s main
purpose, the court”—or in this case, the special master—“must take care to
describe the program’s function as specifically as possible without reference to
the technical aspects of the program.” Id. at 835. Román did not do this. Nor
did he “conscientiously and systematically” document any other level of
abstraction. See Gates Rubber Co., 9 F.3d at 834 (quoting 3 Nimmer on
Copyright § 13.03[F], at 13-102.17 (1983)).
If anything, a fair reading of the report suggests that Román thought
abstraction was superfluous. Paragraph 51 states that “[b]ecause of the extensive
literal copying, it is not necessary [to] spend much time on abstracting the non-
literal elements.” Aplt. App. III at 821. In addition, in the “Principles and
Guidance” portion of his report, Román cites to Mitel for the proposition that
where “the alleged infringement constitutes the admitted literal copying of a
discrete, easily-conceptualized portion of a work, we need not perform complete
abstraction-filtration-comparison analysis.” Id. at 809 (quoting Mitel, 124 F.3d at
1373).
A closer look at Mitel helps to clarify Román’s apparent misstep. Mitel
14
concerned the copyrightability of four-digit computer “command” codes used to
operate telecommunications equipment. 124 F.3d at 1368-69. Iqtel admitted to
copying elements of Mitel’s command codes in order to make Iqtel’s equipment
compatible with Mitel’s. Id. Because Mitel contended that copyright protection
extended only to the command codes—indeed, only to a discrete characteristic of
the command codes—we determined that it was appropriate to “proceed directly
to the protectability analysis that is normally subsumed in the filtration portion of
the abstraction-filtration-comparison approach.” Id. at 1373.
In contrast to Iqtel’s position in Mitel, David has not “admitted literal
copying of a discrete, easily-conceptualized portion of a work.” See id. Ernest
Group’s allegation of copyright infringement is broad, and Román himself seems
to think that evidence of infringement can be found across a wide spectrum of
Cromwell’s code. As a result, the expedited analysis sanctioned in Mitel has no
place in Román’s report. Abstraction is important, and it cannot be neglected
here.
The next step is filtration. Gates Rubber Co., 9 F.3d at 834. But a
deficient abstraction analysis necessarily undermines even the most careful
attempt at filtration. This is because proper filtration involves “examin[ation of]
each level of abstraction in order to filter out those elements of the program
which are unprotectable.” Id. Absent abstraction, therefore, filtration cannot
proceed. Perhaps this gap in Román’s analysis is why he could identify only a
15
single element of BOSS and Independence that he filtered out—menus. And
when he did so, he could provide no more than one sentence of analysis: “At a
high level of abstraction, menus are arguably unprotectable as a mode of
operation, as being in the public domain, or being unoriginal.” Aplt. App. III at
816-17. Simply put, we cannot conclude that Román performed abstraction and
filtration “conscientiously and systematically.” See Gates Rubber Co., 9 F.3d at
834 (quoting 3 Nimmer on Copyright § 13.03[F], at 13–102.17 (1983)). Indeed,
not even Ernest Group contends that menus are the only unprotected element of
the highly utilitarian software at issue in this case.
But Román’s approach suffers from an even greater flaw. His report reads
consonantly with the misconception that an infringement analysis begins and ends
with “copying in fact.” See Cohen et al., supra, at 291 (referring to “whether the
defendant copied from the plaintiff” as “copying in fact”); see also Mitel, 124
F.3d at 1370 (“[W]e must determine whether, as a factual matter, the defendant
copied plaintiff’s work.” (footnote omitted)). Román takes great pains to prove
that portions of BOSS and Independence were “not written independently from
scratch.” Aplt. App. III at 822. At one point, he catalogues six techniques for
“obscur[ing] similarities[, the use of which] can indicate purposeful concealment
of copying,” id. at 813-15, and then he lists for the reader example after example
of the use of those techniques in Cromwell. Román even argues, at different
points, that the absence in Cromwell of field comments or particular elements of
16
code creates the inference of copying followed by purposeful concealment. In
short, the question with which Román’s report is concerned most is whether
Cromwell was created from scratch.
But, of course, an infringement analysis does not begin and end with
“copying in fact.” A finding of infringement also necessitates the conclusion that
“the elements copied by the defendant are protected by copyright.” Mitel, 124
F.3d at 1370. It is that conclusion that we assess using the abstraction-filtration-
comparison test. And, as we have explained, Román does not appear to have
conducted that test.
Defending the report at oral argument, counsel for Ernest Group held up
paragraph 52 as an example of Román’s sound application of the abstraction-
filtration-comparison test. See Oral Arg. at 27:59-29:07. In point of fact, we
agree with counsel that paragraph 52 constitutes Román’s best analysis. Here is
the complete paragraph:
52. Exhibit 3-2 shows the S TATE T AX D ATES .S ET D ATES
procedure on the left and the corresponding
S TATE D EPOSIT D ATES .D ETERMINE D ATES on the right.
The code on the left, starting at line 2363, has program
instructions that select 26 cases that were identified by
the Plaintiffs as “A” through “Z.” The assignments of
the letters A-Z was not driven by external factors and
could have been assigned in a different order. Note that
the Defendants’ PMaster source on the left does not
implement all 26 cases, but instead only implements
A-H, Q, R, S, W, X, and Y. The corresponding
assignments of A-E, G-H, R, and X are identical the
original cases. Further, the comments, although split on
17
separate lines, are identical (e.g. lines 2363 vs. 655;
2409 vs. 703) or almost identical (e.g. lines 2365 v. 659;
2367 v. 663; 2369 v. 667; 2371 v. 671; 2375 v. 679;
2377 v. 683; 2397 v. 691) to the original comments.
This combination of information strongly supports a
finding that the source code was copied and obscured,
and was not written independently from scratch.
Aplt. App. III at 821-22.
Even in paragraph 52, though, Román falls short. His report fails to
explain the function of the code in Exhibit 3-2, leaving us unable to meaningfully
review Román’s apparent conclusion that the ordering of these dates falls on the
“expression” side of the “idea/expression” and “process/expression” distinctions.
See Blehm, 702 F.3d at 1201; Gates Rubber Co., 9 F.3d at 836-37. Nor can we
say whether Exhibit 3-2 was “subject to the rigors of filtration analysis which
excludes from protection expression that is in the public domain, otherwise
unoriginal, or subject to the doctrines of merger and scenes a faire.” Mitel, 124
F.3d at 1372. Simply incanting that the dates “could have been assigned in a
different order,” Aplt. App. III at 822, is not analysis; it is mere conclusion.
Perhaps worse, Román seems to believe that the paragraph serves primarily to
support his determination that the code was “copied and obscured, and was not
written independently from scratch.” Id. This is yet more evidence that Román
proceeded from the false premise that an infringement analysis begins and ends
with “copying in fact.”
Finally, we think it bears repeating that, in the district court, Ernest Group
18
asked the court to “resubmit this matter to the Master” because “the Master could
and/or should do more to explain, document, and establish the basis and support
for his opinion.” Id. II at 675, 678. As it turns out, we agree.
In fairness, it could be the case that Román applied the complete
abstraction-filtration-comparison test during his work prior to drafting his report.
Perhaps Román did an exemplary job, and perhaps his conclusions are
unassailable. But with only the meager support included in his report, we cannot
know for sure. Therefore, we vacate the district court’s order and remand.
IV
On remand, David asks that a different special master be appointed. In
David’s view, Román was “tainted” with bias when Román received David’s
attorneys’ critical evaluation of his report, and, furthermore, Román’s work is so
inadequate as to prove that he is unqualified to serve as special master in this
case. David cites to no authority for either proposition.
Under 28 U.S.C. § 455(a), “[a]ny justice, judge, or magistrate judge of the
United States shall disqualify himself in any proceeding in which his impartiality
might reasonably be questioned.” Federal Rule of Civil Procedure 53(a)(2)
applies § 455 to special masters. See Fed. R. Civ. P. 53(a)(2) (“A master must
not have a relationship to the parties, attorneys, action, or court that would
require disqualification of a judge under 28 U.S.C. § 455, unless the parties, with
the court’s approval, consent to the appointment after the master discloses any
19
potential grounds for disqualification.”); Guardian Pipeline, L.L.C. v. 950.80
Acres of Land, 525 F.3d 554, 556 (7th Cir. 2008) (“[C]ircuits have disagreed
about the application of § 455 to special masters and land commissioners. To
resolve this conflict the Supreme Court amended Fed.R.Civ.P. 53(a)(2) in 2003 to
subject special masters to the requirements of § 455.” (citations omitted)).
We disagree with David’s contention that Román has been tainted with
bias. Just as a district court judge should not be disqualified on the ground that
one party disagreed with the judge’s decision, so should Román not be
disqualified on the ground that one party disagreed with his report. We also
reject David’s assertion that Román is unqualified to continue as special master.
Román was appointed “[u]pon agreement of the parties,” Aplt. App. II at 632, and
we discern no basis for concluding that Román is unqualified to supplement his
work on remand. In fact, at the end of his report, Román offered to do additional
analysis if needed. Id. III at 828.
Therefore, we reject David’s assertion that Román is biased and
unqualified. We also decline David’s invitation to require the appointment of a
different special master on remand. Whether it becomes necessary to appoint a
different special master on remand for other reasons remains to be seen, and we
intend no absolute prohibition in that regard. We address here only the
allegations raised by David in seeking Román’s removal.
20
V
We VACATE the district court’s order adopting Román’s report, and
REMAND with instructions for the district court to request a more thorough
report with which to analyze Ernest Group’s copyright infringement claim. The
briefs and appendix filed in this case are to remain under seal.
21