                                                                       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
