Pyrotechnics Mgmt., Inc. v. XFX Pyrotechnics LLC

38 F.4th 331

PYROTECHNICS MANAGEMENT, INC.

v.^* XFX PYROTECHNICS LLC ; FireTEK, Appellants

No. 21-1695

United States Court of Appeals, Third Circuit.

Argued on April 27, 2022

Filed: June 29, 2022

Louis J. Kroeck [Argued], LJK Law PLLC, 1200 Sarah Street, Pittsburgh, PA 15203, Counsel for Appellant

Kevin C. Harkins, Lucy E. Hill [Argued], Frederick L. Tolhurst, Dentons Cohen & Grigsby P.C., 625 Liberty Avenue, 5th Floor, Pittsburgh, PA 15222, Counsel for Appellee

Before: HARDIMAN, NYGAARD, and FISHER, Circuit Judges.

OPINION OF THE COURT

HARDIMAN, Circuit Judge.

This appeal arises under the copyright laws of the United States. The parties are competitors in the fireworks business. Appellee Pyrotechnics Management, LLC (Pyrotechnics) sued Appellant fireTEK under 17 U.S.C. § 106, claiming fireTEK violated Pyrotechnics's copyright in the communication protocol it uses to control fireworks displays. Pyrotechnics sought, and received, a preliminary injunction preventing fireTEK from distributing its allegedly infringing product. fireTEK contends here, as it did in the District Court, that Pyrotechnics's copyright in the protocol is invalid. We agree, so we will vacate the preliminary injunction entered by the District Court and remand the case for the District Court to dismiss Pyrotechnics's copyright claim.

I

A Pennsylvania company, Pyrotechnics manufactures and sells hardware and software that control fireworks displays under the "FireOne" brand. fireTEK App. 71–72. The FireOne system includes two main devices: a control panel and a field module.

The control panel accepts user input, creates digital messages, and converts the digital messages to analog signals that it sends to a field module over two wires. On receipt of the analog signal, the field module decodes the message and performs the assigned task—for example, the message may instruct the field module to ignite a particular firework. Sometimes the field module sends a response message to the control panel. Since around 1995, Pyrotechnics's control panels and field modules have used a proprietary protocol to communicate with each other. Pyrotechnics developed the protocol to enable the FireOne system to precisely—and safely—control complex fireworks displays, which can involve tens or hundreds of field modules.

Pyrotechnics's Romanian competitor, fireTEK, reverse-engineered Pyrotechnics's hardware to learn its communication protocol. In 2018, fireTEK developed a router that could send analog signals to Pyrotechnics's field module just like those sent by Pyrotechnics's control panel. In early 2019, fireTEK began promoting its router as a replacement for Pyrotechnics's control panel. Pyrotechnics responded by sending fireTEK a letter claiming the router infringed Pyrotechnics's copyright in its communication protocol.

In June 2019, Pyrotechnics filed a seven-page document describing its protocol (the Deposit Copy) with the United States Copyright Office and received from the Office a Certificate of Registration. Though the Certificate indicates the copyrighted work is "text," fireTEK App. 60, Pyrotechnics asserts that it submitted the Deposit Copy as "identifying material" for its protocol under 37 C.F.R. § 202.20(c)(2)(viii) (permitting submission of specified representative "identifying material" for certain "[m]achine-readable" electronic works). Pyrotechnics claims the protocol was first published when it was embedded inside its hardware in 1995.

With its Certificate of Registration in hand, Pyrotechnics sued fireTEK—and its United States distributor, XFX Pyrotechnics, LLC—for copyright infringement, tortious interference with prospective contractual relations, and unfair competition. See 17 U.S.C. § 411(a). Shortly after filing its complaint, Pyrotechnics moved for a preliminary injunction prohibiting fireTEK and XFX from selling or distributing fireTEK's router.

After hearing testimony from the principal of each company and Pyrotechnics's electrical engineering expert witness, the District Court granted Pyrotechnics's motion and enjoined fireTEK and XFX. Pyrotechnics Mgmt., Inc. v. XFX Pyrotechnics LLC , 2021 WL 925812, at *17 (W.D. Pa. Mar. 11, 2021). The District Court held that Pyrotechnics was likely to prevail on its infringement claim because the company's "command codes" (a part of the communication protocol) are protected by copyright and fireTEK's router infringed that copyright. Id. at *12, *15. The District Court rejected fireTEK's contentions that (1) the protocol was not copyrightable, (2) Pyrotechnics had not properly registered its protocol, (3) the merger and scènes à faire doctrines barred extending protection to the protocol, and (4) fireTEK's implementation of the protocol was fair use.¹ Id. at *8 & n.7, *9–11, *13–15. fireTEK timely appealed.²

II

The District Court had jurisdiction over Pyrotechnics's copyright infringement claim under 28 U.S.C. §§ 1331 and 1338. We have jurisdiction over this interlocutory appeal under 28 U.S.C. § 1292(a)(1). We review findings of fact for clear error, legal conclusions de novo, and the Court's decision to grant the preliminary injunction for abuse of discretion. Osorio-Martinez v. Att'y Gen. , 893 F.3d 153, 161 (3d Cir. 2018) (citation omitted).

In this appeal, fireTEK challenges only one element supporting the preliminary injunction: whether Pyrotechnics has shown a likelihood of success on its copyright infringement claim. See Dam Things From Den. v. Russ Berrie & Co. , 290 F.3d 548, 556 (3d Cir. 2002). To succeed, Pyrotechnics must show that (1) it owns a valid copyright and (2) fireTEK copied protected, original elements without authorization.³ See Dun & Bradstreet Software Svcs., Inc. v. Grace Consulting, Inc. , 307 F.3d 197, 206 (3d Cir. 2002).

III

Pyrotechnics's communication protocol and the Deposit Copy submitted to the Copyright Office are central to resolving this dispute, so we describe both in some detail. According to the Deposit Copy, the protocol includes three components: (1) a custom digital message format; (2) specified individual messages that conform to the format and communicate specific information; and (3) a transmission scheme that describes how an individual digital message is converted into an analog signal that can be sent over the wires that connect the control panel and field module.

The Deposit Copy states that each digital message must conform to a twelve-byte format. A byte is a series of eight bits, where each bit is a digital 0 or 1, so each twelve-byte digital message is a series of ninety-six bits. The first two bytes of each message are designated "header bytes" that contain synchronization information. The last byte of each message is a "cyclic redundancy check," whose value is calculated based on the values of the other eleven bytes. The cyclic redundancy check byte is used to ensure there are no errors in the transmitted message. Pyrotechnics acknowledges that using synchronization header bytes and cyclic redundancy check bytes are standard communication practices. The remaining nine bytes of Pyrotechnics's digital messages have different values depending on the message being communicated.

According to Pyrotechnics, its twelve-byte digital message format can generate more than four billion distinct digital messages. Yet Pyrotechnics's Deposit Copy identifies only four individual messages: three that the control panel can send to the field module (Enable Fire Power, Cue Test, and Fire Cue(s)) and one that the field module can send to the control panel (response to the Cue Test message). The Deposit Copy graphically depicts how each message is constructed by showing the values of specified bytes using a hexadecimal number.⁴ For example, the Deposit Copy describes the Enable Fire Power message this way:

0	1	2	3	4	5	6	7	8	9	10	11
0x23	0x23	X	X	X	X	X	X	X	FPE	X	CRC

See XFX App. 197; fireTEK App. 77. The second row indicates the value assigned to the byte number indicated in the first row. See XFX App. 197.

As shown, for the Enable Fire Power message the Deposit Copy specifies the values of only four of the twelve message bytes: it specifies the same hexadecimal number (0x23) for the first two synchronization header bytes; "CRC" for the last byte, which is the cyclic redundancy check value; and "FPE" for the tenth byte, which the Deposit Copy explains is the hexadecimal number 0x46 when fire power is enabled. XFX App. 197; fireTEK App. 77. The remaining eight bytes are labeled "X," which the Deposit Copy explains are "Don't care[s]," meaning those bytes are not used for that message. XFX App. 197; fireTEK App. 106–07. Pyrotechnics's expert testified that, in practice, the "Don't care" bytes must have a value of 0 for the control panel and field module to understand the message. fireTEK App. 106–07. For the other three messages, the Deposit Copy shows the contents of some bytes rather than specifying particular values. For example, the Deposit Copy shows that one byte of the Cue Test message contains the "address" of the module to which the message is directed, without specifying the particular value of that address. XFX App. 197, 199.

Finally, the Deposit Copy describes how the digital messages are converted to an analog signal that can be transmitted along the wires connecting the control panel and field module. The Deposit Copy states that the 0's and 1's of the message bits are encoded through frequency shift keying (FSK)—a standard modulation technique—using two non-standard frequencies at a specified data rate. Pyrotechnics selected the frequencies to avoid interference with other broadcast signals.

We have described what the Deposit Copy contains. But what the Deposit Copy omits is also relevant. The Deposit Copy does not reproduce any digital message verbatim (i.e. , it does not state the complete series of ninety-six bits for any message in either binary or hexadecimal formats). And though the parties and the District Court refer to the digital messages as "command codes," the Deposit Copy does...