Property, intangible

a blog about ownership of intellectual property rights and its licensing

There Aren’t Regular Work Hours Anymore

I haven’t seen a lot of material to blog about, so I’ve resorted to writing about a fairly ho-hum case, albeit a court of appeals decision, albeit an unpublished one. Unless you have a compulsion to read all work-made-for-hire decisions, or at least those involving software development, you can probably just move on. I think what is somewhat noteworthy about this case is that it is undisputed that the plaintiff wrote the software on his own time and at home but ultimately that wasn’t enough to avoid a conclusion that his employer owned the work. In my opinion, the workplace is getting so flexible that it isn’t going to matter anymore what time of day a work was created.
The factual summary is from the district courtopinion – since the court of appeals decision is unpublished, it’s not very detailed.  Plaintiff Le T. Le, of Vietnamese descent, worked in the Network Division for the City of Wilmington (Delaware). He wrote a software program for the City’s Department of Licenses and Inspections (“L & I”) that would allow the department to keep track of citations electronically rather than on paper. Le testified that his immediate supervisor told him not to work on the software while at work. He therefore wrote the program on his own time at home. He thought if the program was successful he could provide it to the City and market it to other municipalities. He ultimately installed a prototype of the program on the City’s computer for testing.
The City then decided to outsource the Network Division’s function. It informed the staff in January, 2007, but had to wait to make the change until after the City Council approved it. Le (and at least one other member of the department) believed that the change was racially motivated. Three days after the City Council’s approval on May 18, 2007, Le filed an application to register the copyright to the software in his own name, having changed the copyright notice in the files from the “City of Wilmington, Department of Information Technology” to his own name. After the employees were formally notified of their termination Le removed the software from the City’s computers, although his supervisor told him he was not allowed to remove it. Removing the software meant that the City could not issue tickets. Le was then suspended, told to reinstall the software, and threatened with prosecution if he didn’t comply. He reinstalled the software and was then fired. Le sued for copyright infringement and for discrimination-based claims.
The City claimed that the program was a work-made-for-hire. Le responded that it was not in the scope of his duties, but even if it was, the City had ceded ownership back to him under 17 U.S.C. § 201(a) through a sequence of lettersbetween his lawyer and the City Solicitor’s office. 

The district court held, and the appeals court affirmed, that the work was indeed a work made for hire. Although Le worked on it at home:

There is no dispute that he developed the Work for the purpose of helping the L & I division reduce its workload and reliance on paper ticketing. Additionally, the evidence suggests that Le used sample paper tickets and other resources from Wilmington (such as feedback from the L & I division) in developing the program and its source code. As the District Court noted, Le admitted to reusing and modifying code from files he had created for other Wilmington owned programs in creating the source code for the Instant Ticketing program. Finally, Le testified that the three year gap between the completion of the source code and the copyright registration was based on the implementation of the program which involved testing by the L & I, layout changes and other modifications. For these reasons, we will affirm the District Court’s finding that the Instant Ticketing program was created within the scope of Le’s employment, for the benefit and use of his employer.

The exchange of letters between lawyers was clearly not disclaimer of the City’s ownership in the program, but rather simply expressed that the City did not want to spend money arguing about it (according to the letters, because the software was “an amateur work product”):

To the contrary, the letters clearly express an unwillingness to acknowledge Le’s ownership of the copyright. Additionally, Wilmington’s disinterest in spending money to contest Le’s claims does not qualify as a manifestation of its intent to transfer the copyright itself, thereby extinguishing its own rights in whole or in part.

The City also raised estoppel and license defenses, both successful in the district court also. The court of appeals didn’t mention the estoppel defense, but agreed, in dicta, on the license defense.
Le lost on the discrimination claims too.
Le v. City of Wilmington, No. 08-615-LPS (Sep. 7, 2010).
Le v. City of Wilmington, No. 11-1770(3d Cir. April 24, 2012) (unpublished).

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