Woods v. Resnick, 2010 WL 2814414 (W.D. Wis. July 16, 2010) involved two men who were members of an LLC. One was the "idea guy". The other was a software programmer who worked from home.
The "idea guy" claimed that he owned the software. He hired an expert to show that he'd made independently copyrightable contributions, which is one of the requirements of joint authorship. The court disregarded the expert's findings in part because the expert was not an expert in copyright law and found that the "idea guy" had supplied only some non-copyrightable formulas.
The software programmer worked at home, was the only one with access to the source code, worked independently, and importantly, never signed a work for hire agreement.
The court considered cross-motions for summary judgment. From the decision, it does not appear that either party registered any claims with the Copyright Office. The court found the software programmer to be the "sole author" of the software program and thus the owner.
Interestingly, the court considered an argument that the LLC's representations to third party that it was the sole owner were admissions that the software programmer had transferred the copyright to the LLC. 17 USC 204(a) provides
§ 204. Execution of transfers of copyright ownership
(a) 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.
The court rejected the argument that the representations and warranties contained in service agreements to licensees that the LLC owned the copyright were sufficient to create an assignment satisfying 17 USC 204(a).
More on joint authorship here.
More on work for hire doctrine here.
More on assignments of copyright here.
More on declaratory judgments here.
Purchase Copyright Litigation Handbook from West here
Copyright law, fine art and navigating the courts. Author Copyright Litigation Handbook (Thomson Reuters Westlaw 2019-2020)
Wednesday, September 01, 2010
Software Programs: Joint Authorship, Work for Hire and Declaratory Judgment Actions for Copyright Ownership
Posted by Ray Dowd at Wednesday, September 01, 2010
Labels: assignments of copyright, copyright law, declaratory judgment, joint authorship, software copyright, software licenses, work for hire doctrine
Partner in law firm Dunnington Bartholow & Miller LLP in New York City litigating in federal and state courts and arbitrations. Experienced trial and appellate practitioner. Author: Copyright Litigation Handbook (Thomson Reuters 2019-2020). The New York Law Journal called it "an indispensable guide". Board of Directors of the Fordham Law Alumni Association, former General Counsel & Director Federal Bar Association, FBA Chair of the Circuit VPs, ViP for Second Circuit. Member Board of Governors, National Arts Club. President, Network of Bar Leaders (2013-2014). Attorney advertising disclaimer - prior results do not guarantee success. The statements and opinions voiced here are my own and not of my law firm.
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