Zahourek Systems v. Balanced Body University ( 2020 )

FILED
United States Court of Appeals
PUBLISH Tenth Circuit
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. No. 18-1300
BALANCED BODY UNIVERSITY,
LLC,
Defendant Counterclaimant -
Appellee.
______________________
ZAHOUREK SYSTEMS, INC.;
JON ZAHOUREK
Plaintiffs Counterclaim
Defendants - Appellee,
v. No. 18-1312
BALANCED BODY UNIVERSITY,
LLC,
Defendant Counterclaimant -
Appellant.
_________________________________
Appeals from the United States District Court
for the District of Colorado
(D.C. No. 1:13-CV-01812-RM-MLC)
_________________________________
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.
________________________________
These appeals involves a sculptural work called “the Maniken,”
which portrays the human body. The overarching issue is whether the
Maniken is a “useful article” under the copyright laws. If the Maniken is a
useful article, it wouldn’t ordinarily be protectible under the copyright
laws. We conclude that a genuine issue of material fact exists on whether
the Maniken is a useful article.
*
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).
2
1. The Maniken portrays the human body.
Like a skeleton, the Maniken portrays the human body; but the
Maniken dwarfs a standard classroom skeleton and facilitates education by
allowing students to apply clay where human tissues would appear. On the
left of each picture is the Maniken, and on the right is a standard skeleton. 1
2. Balanced Body University uses the Maniken, and Mr. Zahourek
and his company sue for copyright infringement.
The defendant, Balanced Body University, bought several Manikens
and used them to advertise and instruct students on human anatomy. Mr.
1
These pictures show a later version of the Maniken.
3
Zahourek and his company sued for copyright infringement (among other
claims). The district court granted summary judgment to Balanced Body
University on the copyright-infringement claim, concluding that the
Maniken was unprotected as a “useful article.” We reverse because the
Maniken’s classification as a useful article turns on a genuine issue of
material fact. 2
3. A genuine issue of material fact exists on whether the Maniken is
a useful article.
Federal law defines a “useful article,” and a genuine issue of material
fact exists over whether the Maniken fits this definition.
A. The Standard of Review
We engage in de novo review of the grant of summary judgment,
viewing the evidence in the light most favorable to the nonmoving party.
Blehm v. Jacobs, 702 F.3d 1193, 1199 (10th Cir. 2012). With this view of
the evidence, we consider whether Balanced Body University has shown
the lack of a genuine dispute of material fact and entitlement to judgment
as a matter of law. Fed. R. Civ. P. 56(a).
Within this framework, we consider the copyrightability of the
Maniken as a mixed question of law and fact. See Enterprise Mgt. Ltd. v.
Warrick, 717 F.3d 1112, 1117 n.5 (10th Cir. 2013). As a mixed question,
2
Balanced Body University cross-appealed on the issue of attorneys’
fees. Because Balanced Body University is no longer the prevailing party,
its cross-appeal is moot.
4
copyrightability could include “potential jury questions in the presence of
materially disputed facts.” Meshwerks, Inc. v. Toyota Motor Sales U.S.A.,
Inc., 528 F.3d 1258, 1262 n.4 (10th Cir. 2008).
B. The District Court’s Ruling
The district court issued two orders addressing whether the Maniken
is a useful article. In the first order, the court ruled that the Maniken is a
useful article because it has “an intrinsic utilitarian function that is merely
to portray the appearance of a life-like form.” Joint App’x vol. 4, at 843.
In the second order, the district court reiterated that the Maniken is a
useful article, adding that an article is considered useful if it has any
“intrinsic utilitarian nature.” Id. at 925–26. The court considered the
Maniken intrinsically utilitarian because it merely portrays its own
appearance. Id. at 926 n.4.
C. The Misfit Between the District Court’s Reasoning and the
Statutory Definition of a “Useful Article”
The district court focused on the usefulness of the Maniken. This
focus appears sensible but doesn’t fit the statutory definition of a useful
article. A useful article is defined as “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. Under this definition, an item is not
a “useful article” if its usefulness derives solely from its appearance. See
Superior Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488,
5
493 (4th Cir. 1996) (stating that under 17 U.S.C. § 101, “a useful article
has as its function something more than portraying its own appearance”). If
an item isn’t a “useful article” under this definition, the item may be
copyrightable. Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d
913, 919 (7th Cir. 2004). 3
Under the statutory definition, many functional items aren’t “useful
articles.” Consider a toy airplane or nose mask, which may be
copyrightable despite their usefulness. 4 For example, a toy airplane might
be useful for child’s play, but it’s not a useful article because the
utilitarian function consists solely in its appearance. Gay Toys, Inc. v.
Buddy L Corp., 703 F.2d 970, 973 (6th Cir. 1983). And a nose mask isn’t a
useful article because the utilitarian function inheres solely in its
3
In enacting the exception for useful articles, Congress intended to
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).
4
Even if part of an item constitutes a “useful article,” other parts may
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.
6
appearance. Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663,
671 (3d Cir. 1990).
Like a toy airplane or nose mask, the Maniken has utility only
because it portrays the appearance of something (the human body).
Because the human body is accurately depicted, the Maniken helps students
learn human anatomy. Without this accurate depiction of the human body,
the Maniken could lack any utilitarian function. So a material factual issue
exists on whether the Maniken fits the statutory definition of a useful
article. See Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320, 323 (2d
Cir. 1996) (concluding that animal mannequins were copyrightable because
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
Cir. 1996) (concluding that animal mannequins were not useful articles
because “[their] usefulness [was] their portrayal of the appearance of
animals”).
D. The Potential Usefulness of Applying Clay to the Maniken
Despite the statutory definition of a “useful article,” Balanced Body
University relies on the district court’s finding that the Maniken provides
5
The Second Circuit noted that it had earlier treated a clothing
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
utilitarian value for learning anatomy. In relying on this finding, Balanced
Body University argues that the Maniken’s primary purpose is to teach
anatomy, allowing students to study muscle articulation through the
application of clay.
This argument erroneously assumes that the Maniken must be a
“useful article” because it can serve as an educational tool. But countless
items may be copyrightable despite their utility as educational tools. For
example, consider textbooks. They are often useful for teaching. But
textbooks are not useful articles because their utility lies solely in the
information conveyed. See Samson Vermont, The Sine Qua Non of
Copyright Is Uniqueness, Not Originality, 20 Tex. Intell. Prop. L.J. 327,
353 (2012) (stating that textbooks are copyrightable despite their practical
utility); see also ATC Distribution Grp., Inc. v. Whatever It Takes
Transmissions & Parts, Inc., 402 F.3d 700, 707 n.3 (6th Cir. 2004) (“[T]he
usefulness of a taxonomy, which is intended to convey information, and
which is neither pictorial, graphic, nor sculptural, does not preclude its
being eligible for copyright protection under [17 U.S.C.§ 101].”).
So too here. The Maniken might be useful for teaching anatomy, but
a fact finder could reasonably attribute this usefulness to the information
that the Maniken conveys about human anatomy. If the Maniken’s
usefulness lies solely in the information it conveys, the Maniken would not
be a useful article. 17 U.S.C. § 101.
8
Balanced Body University argues that the Maniken does more than
convey information: its design allows students to apply clay to learn about
muscles. But the University did not make this argument in district court
when seeking summary judgment. Because the University didn’t make this
argument, the burden never shifted to Mr. Zahourek and his company to
present evidence that the Maniken’s utility lay solely in its portrayal of a
human skeleton. See Alpine Bank v. Hubbell, 555 F.3d 1097, 1110 (10th
Cir. 2009); 6 cf. Tavery v. United States, 32 F.3d 1423, 1427 n.5 (10th Cir.
1994) (refusing to affirm the award of summary judgment on an alternative
ground because the moving party had not raised the issue in district court,
failing to put the nonmoving party on notice of a duty to present evidence
on the issue).
But let’s assume for the sake of argument that a fact finder could
reasonably infer that the Maniken had served partly as a prop to showcase
6
There we explained:
To be sure, there is one situation in which the [plaintiffs]
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.
Hubbell, 555 F.3d at 1110.
9
the location and movement of human muscles. On summary judgment, a
fact finder must view the evidence in the light most favorable to the non-
movant (Mr. Zahourek and his company). See Part 3(A), above. A fact
finder could reasonably infer that the Maniken had facilitated learning
through the application of clay only because the skeletal frame accurately
portrayed a human skeleton. Indeed, Balanced Body University repeatedly
argues that
 the Maniken is “anatomically accurate” and
 the accuracy enhances the educational “experience for students
learning about muscle structure and placement.”
Appellee’s Resp. Br. at 4, 15. Given these arguments, a fact finder could
reasonably infer that the Maniken had served as a useful learning tool only
because of its anatomical accuracy.
A similar issue arose in Superior Form Builders, Inc. v. Chase
Taxidermy Supply Co., 74 F.3d 488 (4th Cir. 1996); see p. 7, above. That
case involved animal mannequins used by the defendant to mount animal
skins. 74 F.3d at 491. Given this use, the defendant argued that the animal
mannequins had a utilitarian function of acting as mounts to display animal
skins. Id. at 493–94.
The Fourth Circuit rejected this argument, reasoning that the
mannequins’ utility still consisted of their portrayal of the animals’
appearance:
10
[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.
Id. at 493–94 (quoting 17 U.S.C. § 101); see p. 7, above.
The Fourth Circuit’s reasoning applies here. Like the animal
mannequins in Superior Form Builders, Mr. Zahourek’s sculpture of a
human form retains its utilitarian function even though clay (rather than
animal skins) is used to cover the exterior. Just as the mannequins retained
their utility in Superior Form Builders based on their portrayal of animals,
the Maniken retains its utility based on its portrayal of a human skeleton. 7
In Superior Form Builders, the court pointed out that without the
mannequins’ portrayal of the animals, the skins could have been draped on
foam pellet stuffing. Superior Form Builders, Inc. v. Chase Taxidermy
7
Balanced Body University tries to distinguish Superior Form
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
Supply Co., 74 F.3d 488, 494 (4th Cir. 1996). Here too, the clay could
otherwise have been added to any three-dimensional structure. But the
Maniken was not just any three-dimensional structure, and a fact finder
could reasonably find that the spaces to add clay provided utility only
because of the Maniken’s resemblance to a human skeleton. So even if
Balanced Body University had pressed its current argument in district
court, summary judgment would have remained unavailable.
4. Conclusion
Viewing the evidence in the light most favorable to Mr. Zahourek
and his company, a fact finder could reasonably determine that the
Maniken was not a useful article. So we reverse the award of summary
judgment on the claim of copyright infringement and remand for further
proceedings.
12