                                                              NOT PRECEDENTIAL


                    UNITED STATES COURT OF APPEALS
                         FOR THE THIRD CIRCUIT
                              _____________

                                  No. 11-1770
                                 _____________

                                    LE T. LE,
                                           Appellant

                                         v.

                           CITY OF WILMINGTON;
                         JOSEPH F. CAPODANNO, JR;
                            JAMES J. O’DONNELL
                               ______________

         APPEAL FROM THE UNITED STATES DISTRICT COURT
                 FOR THE DISTRICT OF DELAWARE
                       (D.C. Civ. No. 1-08-cv-00615)
                District Judge: Honorable Leonard P. Stark
                             ______________

                   Submitted Under Third Circuit LAR 34.1(a)
                               January 23, 2012
                               ______________

Before: FISHER, GREENAWAY, JR., Circuit Judges and JONES *, District Judge.


                         (Opinion Filed: April 24, 2012)
                               ______________

                                    OPINION
                                 ______________


*
 Hon. John E. Jones III, District Judge, United States District Court for the Middle
District of Pennsylvania, sitting by designation.
GREENAWAY, JR., Circuit Judge.
       Appellant Le T. Le (“Le”), a former employee of the City of Wilmington

(“Wilmington”), Information Technologies Department, filed suit against Wilmington

alleging, inter alia, copyright infringement, employment discrimination under Title VII

of the Civil Rights Act of 1964 (“Title VII”) and prima facie tort under Delaware state

law. During the discovery process, the District Court denied Le’s request to require

Appellees to identify the corresponding category of document or interrogatory request for

each produced discovery document as well as his motion to compel additional deposition

testimony from a former employee of Wilmington’s Law Department. The District Court

also granted Appellees’ motions for summary judgment relating to the discrimination

claims (Counts III-VIII) and the copyright claims (Counts I-II). Finally, the District

Court granted summary judgment to all Appellees regarding Le’s state law prima facie

tort claims. Le now appeals each of these determinations.

       Because we hold that there is no genuine dispute of material fact remaining with

respect to either the discrimination or the copyright claims, we will affirm the District

Court’s grant of summary judgment on Counts I-VIII. We will also affirm the District

Court’s decision to deny Le’s discovery requests as an appropriate application of Rule 34

of the Federal Rules of Civil Procedure (“Rule 34”) and attorney-client privilege.




                                              2
                                  I. BACKGROUND

       Because we write primarily for the benefit of the parties, we recount only the

essential facts.

       Le was an Information Analyst II in the Network Division working for the City of

Wilmington. He is of Vietnamese descent. During his tenure with Wilmington, Le

developed a computer software program, hereinafter “Instant Ticketing program” or “the

Work.” The Instant Ticketing program was developed to assist Wilmington’s

Department of Licenses and Inspections (“L&I”) in tracking traffic citations. Le claims

that he developed the Instant Ticketing program prototype exclusively at home, on his

own time. However, he admits to installing the program on Wilmington’s computer

network for testing and feedback. Wilmington began using the Instant Ticketing program

and members of the L&I department provided feedback in the ongoing development of

the program.

       On May 21, 2007, Le filed a Certificate of Registration with the United States

Copyright Office. A few weeks later, he removed the source code of the program from

Wilmington’s network server without permission from his supervisor, Terry Jones. In his

deposition, Le testified that he told the commissioner of L&I, Jeff Starkey, and Jones that

he was going to take his belongings with him when he left. He stated that he believed

this to include the program. Le’s removal of the source code rendered the Instant




                                             3
Ticketing tool useless. 1 Le was then suspended from his job, directed to reinstall the

Instant Ticketing program and threatened with prosecution if he did not reinstall it. After

he reinstalled the program, Wilmington terminated his employment.

       While Le was developing the Instant Ticketing program, he was also working on

other matters in the Network Division, alongside two individuals of African-American

descent. In preparation for the 2008 Fiscal Year Budget, and because of its desire to cut

costs, Wilmington considered outsourcing the functions of the Network Division.

Although the decision would not be formalized until the City Council voted on it,

Wilmington informed the potentially affected staff members of its intention to outsource

the division and the employment options for the staff. These employment options

included placement in other positions (if qualified), shifting to other positions with

similar pay scales, seeking employment with other entities and lay-offs. Ultimately, the

Wilmington City Council passed the budget as proposed, which led to the elimination of

the Network Division.

       Contrary to Wilmington’s articulation of business necessity as the driving force

behind the Network Division’s demise, Le alleges that the decision to outsource the

Network Division was racially motivated. Specifically, Le notes that the Division was

replaced by an all-white team from an outside contractor, Diamond Technologies. Le


1
 The source code is the part of the Instant Ticketing program that contains the computer
programming language that enables the program to run as directed. In this case, the
source code is one of the most critical parts of the Work because it contains the computer
programming language that makes the program run.
                                              4
also claims that Appellees Joseph Capodanno (“Capodanno”), Manager of Integrated

Technologies, and James O’Donnell (“O’Donnell”), Wilmington’s Director of Integrated

Technologies, made derogatory remarks about their difficulty in understanding his accent

as well as other racially insensitive remarks.

       As a consequence of these actions, Le filed suit. After discovery, the District

Court granted summary judgment in favor of Appellees – Wilmington, Capodanno, and

O’Donnell – on Le’s discrimination and copyright claims. Le filed a timely notice of

appeal, challenging the summary judgment rulings. In addition to the summary judgment

rulings, Le also appeals the District Court’s oral rulings on February 3, 2010 and

February 16, 2010 stating that Appellees were not required to identify documents

produced in response to specific discovery requests or interrogatories. 2 Le also appeals

the District Court’s May 5, 2010 oral ruling denying his request that the District Court

vitiate the attorney-client privilege regarding a former employee of Wilmington’s Law

Department.

                II. JURISDICTION AND STANDARD OF REVIEW

       The District Court had jurisdiction, pursuant to 28 U.S.C. §§ 1331, 1338(a) and

1343. We have appellate jurisdiction, pursuant to 28 U.S.C. § 1291.

       We review the District Court’s order granting summary judgment de novo. Azur v.

Chase Bank, USA, Nat’l Ass’n, 601 F.3d 212, 216 (3d Cir. 2010). “To that end, we are


2
 These rulings were memorialized in the Amended Scheduling Order, entered February
19, 2010.
                                                 5
required to apply the same test the [D]istrict [C]ourt should have utilized initially.”

Chambers ex rel. Chambers v. Sch. Dist. of Phila. Bd. of Educ., 587 F.3d 176, 181 (3d

Cir. 2009) (internal quotation marks omitted).

       “Our standard of review with regard to the [D]istrict [C]ourt’s management of

discovery is abuse of discretion.” Gallas v. Supreme Court of Pa., 211 F.3d 760, 778 (3d

Cir. 2000) (citation omitted). “We will not upset a [d]istrict [c]ourt’s conduct of

discovery procedures absent a demonstration that the court’s action made it impossible to

obtain crucial evidence.” Id. (quoting In re Fine Paper Antitrust Litig., 685 F.2d 810,

818 (3d Cir. 1982)). However, we will exercise plenary review where the decision is

based upon the interpretation of a legal issue, such as the Rules of Civil Procedure. EBC

Inc. v. Clark Bldg. Sys., 618 F.3d 253, 264 (3d Cir. 2010).

       We exercise plenary review over discovery orders regarding claims of attorney-

client privilege. Tucker v. Fischbein, 237 F.3d 275, 288 (3d Cir. 2001).

                                      III. ANALYSIS

         We address five issues on appeal: first, Le’s argument that genuine disputes of

material fact exist precluding the grant of summary judgment on his copyright

infringement claims; second, whether genuine disputes of material fact exist precluding

the grant of summary judgment on the employment discrimination claims; third, whether

the District Court erred in dismissing Le’s prima facie tort claims under Delaware state

law; fourth, whether the District Court erroneously applied Rule 34 to deny Le’s request

for specified document identification during discovery; and fifth, whether the District

                                              6
Court erred in refusing to compel testimony from a former Wilmington lawyer based on

attorney-client privilege.

a) Summary Judgment Rulings

       Summary judgment is appropriate “where the pleadings, depositions, answers to

interrogatories, admissions, and affidavits show there is no genuine issue of material fact

and that the moving party is entitled to judgment as a matter of law.” Nicini v. Morra,

212 F.3d 798, 805-06 (3d Cir. 2000) (en banc) (citing Fed. R. Civ. P. 56(c)). 3 “Once the

moving party points to evidence demonstrating no issue of material fact exists, the non-

moving party has the duty to set forth specific facts showing that a genuine issue of

material fact exists and that a reasonable factfinder could rule in its favor.” Azur, 601

F.3d at 216 (citation omitted). In determining whether summary judgment is warranted

“[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be

drawn in his favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986);

Chambers, 587 F.3d at 181. “Further, [w]e may affirm the District Court=s order granting

summary judgment on any grounds supported by the record.” Kossler v. Crisanti, 564

F.3d 181, 186 (3d Cir. 2009).




3
  FED. R. CIV. P. 56 was revised in 2010. The standard previously set forth in subsection
(c) is now codified as subsection (a). The language of this subsection is unchanged,
except for “one word — genuine ‘issue’ bec[ame] genuine ‘dispute.’” Fed. R. Civ. P. 56
advisory committee’s note, 2010 amend.


                                              7
       1) Copyright Claims

       The District Court granted summary judgment on the copyright claim, finding that

the Instant Ticketing program was a work made for hire and that, consequently, Le did

not hold a copyright in the program. In the alternative, the District Court found that even

if Le had a copyright in the program, his conduct granted Wilmington an implied and

irrevocable license in the Work. On appeal, Le argues that his copyright claims stem

from Wilmington’s June 5, 2007 act of forcing him to place his source code back on its

network after he registered for a copyright in May of that year. 4 As such, he suggests that

the two principal questions are whether the program was a work made for hire and

whether the City’s letters transferred any interest it had in the Work to Le.

       Our review of the record indicates that there is no genuine dispute of material fact

regarding the copyright claim because Le has no copyright in the Work.

       In the case of a work made for hire, the employer or other person for whom
       the work was prepared is considered the author for purposes [of the
       Copyright Act], and, unless the parties have expressly agreed otherwise in a
       written instrument signed by them, owns all of the rights comprised in the
       copyright.




4
 Le also argues that Wilmington committed copyright infringement by using the Code
after allegedly transferring rights in the Code to him through a series of letters to his
counsel in August 2007.
                                              8
17 U.S.C. § 201(b). Neither party disputes the fact that Le was employed with

Wilmington when he developed the program. Therefore, the primary question is whether

the Work was prepared for the employer, Wilmington. 5

       Le contends that he created the Work exclusively during his personal time outside

of the office and that development of the source code was not within his job description.

There is no dispute that he developed the Work for the purpose of helping the L&I

division reduce its workload and reliance on paper ticketing. Additionally, the evidence

suggests that Le used sample paper tickets and other resources from Wilmington (such as

feedback from the L&I division) in developing the program and its source code. As the

District Court noted, Le admitted to reusing and modifying code from files he had created

for other Wilmington owned programs in creating the source code for the Instant

Ticketing program. Finally, Le testified that the three year gap between the completion

of the source code and the copyright registration was based on the implementation of the

program which involved testing by the L&I, layout changes and other modifications. For

these reasons, we will affirm the District Court’s finding that the Instant Ticketing


5
  Le posits that there are factual disputes regarding whether the Work was created within
the scope of his employment. He argues that it was not within the scope of his
employment because his job description did not list computer programming as the work
that he was employed to do. We find such a narrow position regarding the scope of
employment unpersuasive. See Restatement (Second) Agency § 229(1) (“To be within
the scope of the employment, conduct must be of the same general nature as that
authorized, or incidental to the conduct authorized”). Rather, we suggest that the more
relevant question is whether he created the program while an employee and for the
benefit of his employer.
                                             9
program was created within the scope of Le’s employment, for the benefit and use of his

employer. See Restatement (Second) Agency § 229(1) (“To be within the scope of the

employment, conduct must be of the same general nature as that authorized, or incidental

to the conduct authorized”). Consequently, there is no genuine dispute of material fact

regarding whether the Instant Ticketing program and source code qualify as a work made

for hire.

       Because we affirm the District Court’s conclusion that the Instant Ticketing

program was a work made for hire, we need not reach its alternative conclusion that Le

granted Wilmington an implied and irrevocable license in the Work. Nonetheless, we

would also affirm the District Court’s grant of summary judgment on this ground because

there is no genuine dispute of material fact regarding: (1) Wilmington’s request that a

program be created to alleviate issues with paper ticketing; (2) Le’s creation and

development of the Work with the assistance of other members of the L&I department;

and (3) Le’s knowledge of and intent that Wilmington use the Work for the purpose of

issuing tickets. See MacLean Assocs., Inc. v. Wm. M. Mercer-Meidinger-Hansen, Inc.,

952 F.2d 769, 779 (3d Cir. 1991).

       We also find that Wilmington did not transfer its copyright interest to Le in its

August 2007 exchange of letters. Le contends that Wilmington transferred any copyright

ownership it had through two letters exchanged in August 2007 (“August 2007 letters”).

See 17 U.S.C. § 201(b) (acknowledging that the rights to a work made for hire may vest

in a party other than the employer if the parties have expressly agreed to such in a written

                                             10
instrument signed by them). “A transfer of copyright ownership, other than by operation

of law, is not valid unless an instrument of conveyance, or a note or memorandum of the

transfer, is in writing and signed by the owner of the rights conveyed or such owner’s

duly authorized agent.” 17 U.S.C. § 204(a).

       In the letters, Wilmington emphasized that Le had no copyright in the source code

as a work made for hire and that the source code was its property. Wilmington then

stated that it would, nonetheless, allow Le to keep the source code, even though the city

owned it. In its August 13, 2007 letter, Wilmington stated that it had discontinued use of

the computer (source) code and highlighted its shortcomings. In its August 29, 2007

letter, Wilmington again reiterated that it rejected Le’s purported ownership of the

copyright, but stated that it would not expend time and money contesting the issue of

ownership.

       Such statements do not constitute an instrument of conveyance or memorandum of

transferred ownership interest, as required by 17 U.S.C. § 204(a). See e.g., Barefoot

Architect, Inc. v. Bunge, 632 F.3d 822, 831 (3d Cir. 2011) (“An assignment of a

copyright is a manifestation of the assignor’s intention to transfer [the copyright] by

virtue of which the assignor’s [copy]right ... is extinguished in whole or in part and the

assignee acquires [the copyright].”) (emphasis added). To the contrary, the letters clearly

express an unwillingness to acknowledge Le’s ownership of the copyright. Additionally,

Wilmington’s disinterest in spending money to contest Le’s claims does not qualify as a

manifestation of its intent to transfer the copyright itself, thereby extinguishing its own

                                              11
rights in whole or in part. See Barefoot Architect, 632 F.3d at 831. Consequently, there

is no genuine dispute of material fact regarding copyright ownership. We will affirm the

District Court’s grant of summary judgment regarding the copyright claims.

       2) Employment Discrimination Claims

       Le further asserts that the District Court erred in granting summary judgment on

his employment discrimination claims. 6 In an employment discrimination case, the

complainant bears the initial burden of establishing a prima facie case of racial

discrimination. Once established, the burden shifts to the employer to establish a

legitimate, nondiscriminatory reason for its actions. If the employer presents sufficient

reasons for its actions, the burden shifts back to the complainant to show that the

rationale is pretextual. McDonnell Douglass Corp. v. Green, 411 U.S. 792, 802-03

(1973); Jones v. Sch. Dist. of Phila., 198 F.3d 403, 410 (3d Cir. 1999).

       The District Court held that Le failed to make out a prima facie case that his

termination gave rise to an inference of unlawful discrimination. See Jones, 198 F.3d at

410-11. 7 In the alternative, the District Court concluded that even if Le had established a


6
 Le brought an employment discrimination claim against Wilmington for violation of
Title VII of the Civil Rights Act (Count III) and against Capodanno and O’Donnell for
violation of 42 U.S.C. §§ 1981, 1983 (Counts IV and V). Le also alleged that Capodanno
and O’Donnell engaged in a conspiracy to interfere with his civil rights, in violation of 42
U.S.C. § 1985.
7
 In this case, we lent our imprimatur to a district court’s articulation of the factors
considered in establishing a prima facie case:
        [A] prima facie case is established when a plaintiff shows the following:
       (1) that he is a member of a protected class; (2) that he is qualified for the
       position; (3) that he “was either not hired or fired from that position; (4)
                                              12
prima facie case of discrimination, he failed to present evidence that the non-

discriminatory justifications articulated by Wilmington – the outsourcing of the Network

Division and Le’s act of removing the Instant Ticketing source code from Wilmington’s

network – were mere pretexts for discrimination.

       Le asserts that the evidence in the record establishes a prima facie case for

employment discrimination. Specifically, he contends that Wilmington’s decision to

terminate his employment and replace the Network Division with an all-white team from

Diamond Technologies establishes the inference of discrimination necessary to establish

a prima facie case. We disagree.

       Wilmington presented evidence indicating that Diamond Technologies was an

independent contractor and that Wilmington had no influence on the Diamond

Technologies’s hiring or selection of the team replacing the Network Division.

Wilmington also presented evidence that there were performance issues in the Network

Division. Le did not refute Wilmington’s evidence on this point with any contradictory

facts from which one could draw an adverse inference. Although Le asserts that

replacement by the all-white team combined with evidence of past discriminatory

treatment – namely, alleged statements about not being able to understand him and other

comments about African-American employees – establish an inference of discrimination,


       under circumstances that give rise to an inference of unlawful
       discrimination such as might occur when the position is filled by a person
       not of the protected class.
See Jones, 198 F.3d at 410-11 (internal quotation marks and citation omitted).
                                             13
we again disagree. Such facts are not sufficient to establish a prima facie case of

discrimination. We will affirm the District Court’s conclusion that Le failed to establish

a prima facie case of employment discrimination. 8

       After finding that Le failed to assert a prima facie discrimination case under

federal law, the District Court granted summary judgment on his prima facie tort claim

under Delaware law on the ground that such claims were not recognized in the

employment context. 9 We agree. See Lord v. Souder, 748 A.2d 393, 403 (Del. 2000)

(“We view [complainant]’s prima facie tort claim to be inconsistent with the employment

at-will doctrine and affirm its dismissal.”). Le attempts to distinguish his allegations

from the line of wrongful termination cases dismissed by the Delaware Supreme Court,

noting that his allegations focus on alleged threats to prosecute him for theft and alleged

retaliation against him as the purported copyright owner of the Instant Ticketing program.

We find this distinction unpersuasive because it fails to address the Delaware Supreme

Court’s primary concern of maintaining consistency with the at-will employment




8
   Alternatively, even if we found that Le established a prima facie case, we would still
affirm the District Court’s grant of summary judgment on the ground that Le failed to
establish that Wilmington’s legitimate, nondiscriminatory explanations for terminating
his employment (i.e., budget considerations and Le’s act of impermissibly removing the
source code from the network) were pretexts for discrimination.
9
 Delaware law defines a prima facie tort as an intentional infliction of harm “resulting in
damage, without excuse or justification, by an act or series of acts which would otherwise
be lawful and which acts do not fall within the categories of traditional tort.” Lord, 748
A.2d at 402-03.
                                             14
doctrine. Consequently, we will affirm the District Court’s grant of summary judgment

on this ground. 10

b) Rule 34

       During the discovery phase of the case, Le requested that the District Court require

Appellees to identify the category of document or interrogatory request to which each

electronic discovery document was responsive. The District Court denied the request,

finding that Appellees had satisfied their obligations under Rule 34 by producing the

documents in the manner in which they were kept with the exceptions outlined by the

agreement with Le. Le now appeals the District Court’s ruling, arguing that the Court

misconstrued the requirements under Rule 34 or otherwise abused its discretion. 11

       Rule 34 states, in relevant part:

              Unless otherwise stipulated or ordered by the court, these procedures
       apply to producing documents or electronically stored information:

              (i) A party must produce documents as they are kept in the usual
              course of business or must organize and label them to correspond to
              the categories in the request;

              (ii) If a request does not specify a form for producing electronically
              stored information, a party must produce it in a form or forms in
              which it is ordinarily maintained or in a reasonably usable form or
              forms; and


10
  Even if we found Le’s distinction to be theoretically persuasive, the record indicates no
evidence supporting this allegation. Therefore, no genuine dispute of material fact exists
regarding this claim.
11
  Contrary to Le’s assertions, the District Court did not construe Rule 34 in issuing its
discovery ruling but rather applied the Rule in light of Le’s request. Therefore, we
review the decision for abuse of discretion. See EBC Inc., 618 F.3d at 264.
                                             15
              (iii) A party need not produce the same electronically stored
              information in more than one form.

Fed. R. Civ. P. 34(b)(2)(E). The District Court applied this rule and concluded that

Appellees had fulfilled their obligations under the Rule by producing the documents as

they were normally kept, producing them in paper form and limiting them to the agreed

upon search terms. While Le focuses on the language in Rule 34(b)(2)(E)(i) referencing

the labeling of documents, we note that such labeling is not required where the party

otherwise complies with the rule by producing the documents as they are kept in the

normal course of business. Le’s complaint does not take Wilmington to task for not

substantially complying with the discovery requests in this instance. As such, we find no

abuse of discretion in the District Court’s ruling. We will affirm the District Court’s

ruling on this ground.

c) Attorney-client privilege

       Finally, Le asserts that the District Court erred in refusing to compel testimony

from a former lawyer working in Wilmington’s legal department, Mr. Mili. During a

pre-trial deposition, Le asked Mili specific questions about his process and role in

preparing the two August 2007 letters from Wilmington to Le’s counsel. In the letters,

Wilmington stated that Le did not have a copyright interest in the Instant Ticketing

source code and that it would not contest his continued possession of the source code

because it was developing its own higher-quality program. During the deposition, Le’s

counsel asked Mili whether he had conducted an investigation in preparing the letters,

what his opinion was of the letter and if he could identify personnel who had provided
                                             16
information for the letters. Mili declined to answer these questions, invoking attorney-

client privilege, and the District Court concluded that this was a proper invocation of the

privilege. Le now appeals the District Court’s ruling arguing that the application of the

privilege was overly broad and that the substance of the information that he requested

was not covered by the privilege.

       We hold that attorney-client privilege was properly applied here. We will affirm

the District Court’s ruling. See In re Teleglobe Commc’ns Corp., 493 F.3d 345, 359 (3d

Cir. 2007) (“[Attorney-client privilege] applies to . . . (1) a communication (2) made

between privileged persons (3) in confidence (4) for the purpose of obtaining or

providing legal assistance for the client.” (internal quotation marks and citation omitted)).

       Le, invoking the disclosure rule, argues that Wilmington waived its attorney-client

privilege by disclosing the letters prepared by Mili to Le and his counsel. The disclosure

rule applies when a client “shares a privileged communication with a third party.” Id. at

361. Here, the letters themselves were the result of communications between a client and

lawyer. Any waiver of the attorney-client privilege must be invoked by the client. While

Wilmington shared the information and views stated in the letter, it did not share the

privileged information requested during the deposition (i.e., the nature of the

investigation and conversations that led up to the drafting of the letters or the names of

the information sources). Therefore, Wilmington engaged in no activity from which one

could infer a waiver of the privilege.




                                             17
      For these reasons, we will affirm the District Court’s denial of Le’s motion to

compel additional deposition testimony from Mili, pursuant to Rule 34.

                                 IV. CONCLUSION

      For the reasons stated above, we will affirm the District Court’s order granting

summary judgment on Counts I-VIII. We will also affirm the District Court’s decisions

denying Le’s request for specified document identification under Rule 34 and denying his

motion to compel additional testimony.




                                           18
