Decisions in Brief

AuthorJohn C. Gatz
Published in Landslide, Volume 14, Number 1, 2021. © 2021 by the American Bar Association. Reproduced with permission. All rights reserved. This information or
any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written
consent of the American Bar Association.
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.

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