Decisions in Brief

• Author: John C. Gatz
• Pages: 56-61

Published in Landslide, Volume 14, Number 1, 2021. © 2021 by the American Bar Association. Reproduced with permission. All rights reserved. This information or

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56

COPYRIGHTS By John C. Gatz

Decisions in Brief

Oh, How the Tables Have Turned

RJ Control Consultants, Inc. v. Multiject, LLC, 981 F.3d 446,

2020 U.S.P.Q.2d 11394 (6th Cir. 2020). RJ Control and Paul

E. Rogers appealed the district court’s summary judgment

grant in favor of the defendants and its denial of the plain-

tiffs’ motion to compel discovery, asserting that the district

court erred in granting summary judgment and arguing that

there is a genuine issue of fact as to whether the defendants

copied their design of a turntable control system and that the

district court failed to even consider the copying of their soft-

ware code.

The parties agreed that plaintiff Rogers as the principal

and sole shareholder of RJ Control would develop a rotary

turntable control system for Jack Elder and his company,

Multiject. Rogers’s work included the design of the system

and the underlying software code to operate the turntable.

Rogers updated the design of the control system and labeled

the new drawing “Design 3.” The parties disputed the status

of payment for Design 3.

Rogers obtained two copyright registrations for the Design

3 control system, one for the technical drawings of the system

and another for the system software code. Rogers sued the

defendants, alleging, among other claims, copyright infringe-

ment of both copyright registrations. The district court

granted the defendants’ motions for summary judgment.

The Sixth Circuit Court of Appeals agreed with the defen-

dants and upheld the district court’s summary judgment

decision regarding the claim of infringement of the techni-

cal drawings of Design 3. The Sixth Circuit held that, under

the Copyright Act, the defendants did not infringe the plain-

tiffs’ copyright in the drawing by producing the turntable

control system depicted in the design. The Sixth Circuit cited

several cases clearly explaining that a copyright in a techni-

cal drawing extends only to the drawing itself, and not to the

subject of the drawing or the use of that drawing to create

the useful article described in the drawing. The Sixth Circuit

reversed summary judgment as to the copyright of the soft-

ware code. The Sixth Circuit noted that to properly consider

the copyright of software requires a line-by-line analysis, by

a software expert, which the district court did not do before

granting summary judgment.

Transformation of a Derivative Is Not Transformative

for Fair Use

Andy Warhol Foundation for the Visual Arts, Inc. v. Gold-

smith, 992 F.3d 99, 2021 U.S.P.Q.2d 363 (2d Cir. 2021).

Defendants Lynn Goldsmith and Lynn Goldsmith, Ltd.,

appealed the district court’s grant of summary judgment in

favor of plaintiff Andy Warhol Foundation (AWF), asserting

that the district court erred in its assessment of the four-factor

test for fair use.

Goldsmith is a professional photographer primarily

focusing on celebrity photography, with a special focus on

rock-and-roll musicians. Goldsmith photographed the artist

Prince and later licensed one photograph (Goldsmith Pho-

tograph) to Vanity Fair to use as a source photograph for

an artist, which allowed Vanity Fair to publish an illustra-

tion based on the photograph. Goldsmith was unaware the

artist was to be Andy Warhol. At the request of Vanity Fair,

Warhol created an image that was used by Vanity Fair along-

side an article on Prince, with an attribution to Goldsmith.

In addition to the Vanity Fair image, Warhol also created 15

additional works based on the Goldsmith Photograph that

became known as the “Prince Series,” without Goldsmith’s

authorization or knowledge. After Prince’s death, Condé Nast

obtained permission from AWF to utilize another image from

the Prince Series in a tribute magazine, for which Goldsmith

received no credit.

AWF sought a declaratory judgment that the Prince

Series was fair use, and the district court granted it sum-

mary judgment after determining that the Prince Series was

so transformative that Warhol created a new work altogether,

with a different purpose, expression, meaning, or message

from the Goldsmith Photograph.

The Second Circuit Court of Appeals conducted its own

fair use assessment of the Prince Series, outlining what it

felt was an important distinction for the rst factor, namely,

the differences between the meaning of “transformed” as

used in the denition for a derivative work in Copyright Act

§ 101, which a copyright owner has the exclusive right to cre-

ate or to authorize the creation of, and the way in which a

copyrighted work must be “transformative” to create a funda-

mentally different and new artistic purpose and character that

stands apart from the raw material used to create it, in order

to support the position that the unauthorized use of another’s

work is fair. The Second Circuit also carefully distinguished

its current analysis of the rst fair use factor from an earlier

decision in order to highlight that fair use is a context-

sensitive inquiry with no bright-line rules, and in fact there

are many mitigating and aggravating facts that may arise in

certain scenarios.

After nding that each fair use factor ultimately weighed

in favor of Goldsmith and nding the Prince Series not to be

fair use, the Second Circuit turned to the plaintiff’s request

that if not fair use, the Second Circuit nd the Prince Series

not substantially similar to the Goldsmith Photograph. The

Second Circuit noted that such a request is illogical because

there would be no reason to invoke the fair use afrmative

John C. Gatz is a member of the rm Nixon Peabody LLP in Chicago, Illinois. Column contributors include the following writers:

Copyrights: Jenni Psihoules and Kaleigh Morrison, Nixon Peabody LLP; and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K.

Barnett, Johnson & Johnson; R. Trevor Carter and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP; Robert W. (Bill) Mason, Southwest

Research Institute; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks:

Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki, Blumeneld & Shereff LLP.