Enter. Mgmt. Ltd. v. Warrick

• Decision Date: 21 May 2013
• Docket Number: No. 12–1135.,12–1135.
• Citation: 717 F.3d 1112
• Parties: ENTERPRISE MANAGEMENT LIMITED, INC.; Mary Lippitt, Plaintiffs–Appellants, v. Donald W. WARRICK, Defendant–Appellee.
• Court: U.S. Court of Appeals — Tenth Circuit

717 F.3d 1112

ENTERPRISE MANAGEMENT LIMITED, INC.; Mary Lippitt, Plaintiffs–Appellants,

v.Donald W. WARRICK, Defendant–Appellee.

No. 12–1135.

United States Court of Appeals, Tenth Circuit.

May 21, 2013.

Kirstin Marie Jahn of Jahn & Associates, LLC, Boulder, CO, for Plaintiffs–Appellants.

John Roger Mann of Kennedy Childs & Fogg, P.C., Denver, CO, for Defendant–Appellee.

Before O'BRIEN, McKAY, and TYMKOVICH, Circuit Judges.

O'BRIEN, Circuit Judge.

In this copyright infringement case, Enterprise Management Limited, Inc.,¹ and Mary Lippitt (collectively Lippitt) appeal from a summary judgment in favor of Donald Warrick. Lippitt contends, contrary to the district court's holding, she demonstrated a prima facie case of copyright infringement. We agree.

FACTUAL BACKGROUND

This case involves a diagram Lippitt created in the course of her work in the field of organizational management. It aims to encapsulate and communicate the results of her research on the failures of complex organizational change initiatives. Dissatisfied with other visual aids depicting the reasons for such failures, she created and registered the first version of the diagram in 1987:

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Diagram 1A: Lippitt's “Managing Complex Change”

(Appellants' App'x 213.) As she explains, the diagram “eliminate[ed] the detailed narrative approach and par[ed] it down to a visual format listing what she considered to be the most basic variables and likely outcomes.” (Appellants' Op'g Br. 6.) She claims to have registered a work containing this diagram in 1987, although she concedes she no longer has the work as actually submitted for registration.

Sometime around 1996, Lippitt revised the diagram. She updated it slightly, as shown below. The revision reflected several minor changes: (1) she used ovals instead of rectangles; (2) she changed the arrows between elements to plus signs and equal signs; and (3) she replaced the word “skills” with the word “capabilities” to accommodate changing parlance in her field; (4) she changed the title of the diagram; and (5) added a decorative diagonal line.

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Diagram 1B: Lippitt's “Aligning for Success”

(Appellants' App'x 176, 214.)

Lippitt registered Diagram 1B as part of a larger work in 2000. It was also included in materials she registered in 2003. Warrick acknowledges a version of this diagram was included in materials Lippitt registered in 2000 and 2003.

Warrick, who teaches in the organizational development field, admitted receiving Lippitt's diagram from a student. He incorporated and used a similar diagram in his course materials and in his consulting business. Although Warrick did not initially know Lippitt was the diagram's creator, he later discovered this fact and began to credit her work at the bottom of his diagram.

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Diagram 2: Warrick's Allegedly Infringing Diagram²

PROCEDURAL HISTORY

During discovery, Lippitt realized she had lost her copy of the deposit materials submitted with her 1987 registration of Diagram 1A. She explains she was unable to get a replacement copy because the Library of Congress, the registrar of copyrights, had not retained these materials. As a substitute, she provided a notarized letter from one of her licensees describing and attesting to the existence of her diagram.³

After discovery, Warrick moved for summary judgment on Lippitt's copyright infringement claim. As pertinent to this appeal, Warrick argued: (1) Lippitt could not prove she held a valid copyright on the diagram because she could not produce the diagram from the materials accompanying her 1987 registration to show its similarity to Warrick's diagram. (2) Lippitt's diagram was not copyrightable; and (3) Warrick's diagram did not infringe on any protected expression in Lippitt's diagram. After hearing arguments, the court granted Warrick's motion without issuing a written opinion.⁴

DISCUSSION

Lippitt contends summary judgment was inappropriate. In her view, her copyright infringement claim is viable because her diagram is entitled to copyright protectionand Warrick admits to copying her duly registered diagram. Warrick disagrees and, in what is generally a preliminary matter, contends Lippitt failed to preserve certain issues for appellate review. As the preservation issue is easily resolved in Lippitt's favor, we reserve discussion of it until the end.

We review summary judgments de novo. Colo. Dep't of Pub. Health & Env't, Haz. Mat'ls & Waste Mgmt. Div. v. United States, 693 F.3d 1214, 1221 (10th Cir.2012). “Summary judgment is appropriate” only if Warrick has shown “ ‘there is no genuine dispute as to any material fact and [he] is entitled to judgment as a matter of law.’ ” See id. (quoting Fed.R.Civ.P. 56(a)). In our review, we construe the evidence in the light most favorable to the non-moving party, Lippitt. See id.

There are two elements to a copyright infringement claim; a plaintiff must show both ownership of a valid copyright, and copying of protectable constituent elements of the work. La Resolana Architects, PA v. Reno, Inc., 555 F.3d 1171, 1177–78 (10th Cir.2009); Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir.1996); see17 U.S.C. §§ 106, 501(a). Lippitt, as plaintiff, bears the burden of proof on both elements. See Reno, 555 F.3d at 1177. A plaintiff may prove copying either with direct evidence or by showing the alleged infringer had access to the copyrighted work and “there are probative similarities between the copyrighted material and the allegedly copied material.” Id. at 1178;Sheen, 77 F.3d at 1284.

A. Eligibility for Copyright Protection

According to Warrick, Lippitt's diagram is not eligible for copyright protection because (A) it consists primarily of “ideas, concepts, principles or discoveries” that are not copyrightable or are inextricably woven with the ideas they depict (Appellee Br. 17) and (B) the other elements of the diagram lack the creativity necessary to merit copyright protection. We disagree.

1. Merger of Idea and Expression

While “pictorial, graphic, and sculptural works” are generally copyrightable, the protection does not “extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery....” 17 U.S.C. § 102(a)(5) & (b). In short, the copyright law is not a patent law: it protects the expression of ideas rather than the underlying ideas themselves. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344–45, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) (“The most fundamental axiom of copyright law is that no author may copyright his ideas or the facts he narrates.”) (quotations omitted). And, when a work expresses an idea in the only way it can be expressed, courts deny those expressions protection under the “merger doctrine” to avoid giving the author a monopoly over the underlying idea. See Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823, 838 (10th Cir.1993). Conversely, when an idea is capable of many different “modes of expression,” the expression of the idea is eligible for copyright protection. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir.1983).⁵

Warrick argues Lippitt's diagram is not eligible for copyright protection because it consists only of unprotectable ideas or expression so intertwined with the underlying ideas as to lose their protection under the merger doctrine. In Warrick's view, Lippitt's diagram expresses a “fundamental” idea about organizational change and development. (Answer Br. 25.) It is, he says, a “statement about objective reality, not a work of fiction or the imagination.” (Id.)

Warrick misses the point. Although Lippitt's diagram may express an idea, Warrick could express the same ideas in his own fashion. He might have organized the components in a pie-chart-style format to show how each is a component of a larger whole. He could have approached the concept in a two-column format, listing each defect in the left column and the missing component in the right column. He could have simply described the concepts in prose, as he did in his motion for summary judgment. He could have used his own words to describe the components. He might have broken down or combined the components in a different way. He could have expressed the absence of one of the components with an “X” over the component, as did another writer's sample diagram; one Lippitt attached as Exhibit 10 to her response to Warrick's summary judgment motion. (Appellant's App'x 247–52.)

The freedom Warrick enjoyed to express the ideas depicted in Lippitt's diagram in an alternative way is what distinguishes this case from the cases Warrick cites in defense of the summary judgment. For instance, in Ho v. Taflove, the model at issue was “a new mathematical model of how electrons behave under certain circumstances.” 648 F.3d 489, 497 (7th Cir.2011) (quotations omitted). It was intended to mirror, as realistically as possible, a natural physical phenomenon. Id. at 498. Thus, the form of the model was dictated by technical concerns rather than expressive choices. See id.

This case is more like Arica Institute, Inc. v. Palmer, 970 F.2d 1067 (2d Cir.1992). There, the court concluded the idea inherent in a diagram about “ego fixations” was not merged with its expression because there were “any number of ways” to construct the diagram. Id. at 1076. The diagrams at issue were constructed in the form of nine-pointed stars (“enneagrams”), with labels at the points, within a circle. Id. at 1070–71. The court imagined several alternative ways of expressing the same idea without the nine-pointed star, such as a numbered listing with interconnecting arrows. Id. at 1076.

In short, because there are many ways to express the ideas depicted in Lippitt's diagram, the expression does not “merge” with the underlying ideas.

2. Eligibility of Constituent Elements for Copyright Protection

Even though Lippitt's diagram does not merge with the underlying idea, we are also asked to determine whether the...