By Pamela C. Maloney, J.D.
Rotary turntable control system’s technical drawings were not copyrightable, but underlying software source code could be, depending on full development of factual record.
Whether the software source code for a rotary turntable control system was copyrightable raised a question of fact that required full development of a factual record, the U.S. Court of Appeals for the Sixth Circuit has held. The appellate court reversed and remanded a district court’s grant of summary judgment, and granted the software copyright owner’s request to compel discovery on this issue. The Sixth Circuit did affirm the lower court’s ruling that infringement claims related to the copying of the technical drawings for the control system were not protected by the Copyright Act but were, instead, subject only to patent law (RJ Control Consultants, Inc. v. Multiject, LLC, November 23, 2020, Donald, B.).
In 2008, RJ Control Consultants, Inc., a company that creates industrial control systems, and its principal, Paul E. Rogers (together, "RJ Control") entered into an oral agreement with Multiject, LLC, a company that engineers and sells various industrial accessories related to plastic injection molding, and its principal, Jack Elder (together, "Multiject") pursuant to which Rogers agreed to develop a rotary turntable control system for Multiject. The turntable control system was the "brain" of the turntable, allowing it to move and operate. In 2013, RJ Control updated the system and labeled the newest iteration of the system, which consisted of technical drawings and source code, as "Design 3." One year later, Multiject asked for and received copies of Design 3’s diagrams and software source code. Multiject then terminated its relationship with RJ Control, substituting RSW Technologies, LLC to perform assembly and wiring of the control systems.
On February 17, 2016, Rogers obtained two copyright registrations for Design 3—one for the software code and a second for the technical drawing. RJ Control then sued Multiject and RSW for infringement, alleging that they improperly had used the copyrighted Design 3 in the assembly and wiring of new control systems without making any changes to the design. The district court granted Multiject and RSW’s summary judgment motions, holding that Multiject’s use of the asserted design—which consisted of technical drawings—to create control systems was not actionable as infringement under the Copyright Act. According to the district court, copyright law protected the copyright owner’s exclusive right to reproduce the design, prepare derivative works, distribute copies, and display it, but that "use" rights were governed by the Patent Act. Moreover, the design portrayed a useful article and was, therefore, excluded from copyright protection by Section 113(b) of the Copyright Act. The district court denied RJ Control’s motion for reconsideration and this appeal ensued.
Copying of technical drawings. The Sixth Circuit agreed with the district court’s conclusion that the manufacture of a control system from the copyrighted technical drawing was not copyright infringement because the recreation of a control system using a copyrighted technical drawing was not "copying" for purposes of the Copyright Act. A copyright did not grant the owner an exclusive right to the art disclosed; instead, protection was given only to the expression of the idea. Thus, copyright protection was limited to Design 3’s technical drawing alone, affording RJ Control the exclusive right to prepare derivative works, distribute copies, and display the copyright. The exclusive right to use the drawings to reconstruct the useful article described in those drawings sounded in patent law and could be protected only by obtaining a patent, the Sixth Circuit concluded.
Software copyright. However, the Sixth Circuit reversed the district court’s grant of summary judgment on RJ Control’s software source code infringement claims.The question of whether the software code was copyrightable began with the distinction between an unprotectible idea and a protectable expression, a question that posedunique problems in the context of computer programming, the Sixth Circuit noted. To distinguish ideas from expression in the software context, courts have considered two doctrines to filter out "unprotectible elements": the doctrine of merger and "scenes a faire." Any analysis undertaken under either doctrine required expert testimony regarding standard industry practices relative to control systems and software. Although the district court had acknowledged that an expert would be needed to assist in its determination regarding the copyrightability of the software, it denied RJ Control’s motion for reconsideration before an expert could be hired or appointed. The complex nature of the technology involved in the case at bar raised questions of material fact as to whether the software was protected under the Copyright Act, including: which aspects or lines of the software code were functional, which were expressive, which were commonplace or standard in the industry, and which elements were inextricably intertwined? Without any record evidence addressing those issues, there remained a genuine factual dispute that required the reversal and remand of the district court’s grant of summary judgment on RJ Control’s infringement claims involving the software.
This case is No. 20-1009.
Attorneys: Eric D. Scheible (Scheible Law office) for RJ Control Consultants, Inc. and Paul E. Rogers. Richard L. Mcdonnell (Intrepid Law Group) for Multiject LLC and Jack Elder. David C. Purdue (Purdue Law Offices, LLC) for RSW Technologies LLC.
Companies: RJ Control Consultants, Inc., Multiject LLC; RSW Technologies LLC
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