The opinion is sparse on the facts and the law, so we have to do some interpretation. But it’s worth some thought about how the court construed the scope of an implied copyright license.
Defendant Kushner wrote software for plaintiff Vickerman Co. Their relationship ended, Vickerman Co. sued Kushner (the court doesn’t say why, other than breach of contract) and Kushner counterclaimed for infringement of the copyright in his work. The court characterizes the situation as an implied copyright license. We’re not given any more details than that, other than the fact that Vickerman Co. paid Kushner. I’ll assume a more fulsome interpretation would have been that there was an implied license under the Effect Assocs. v. Cohen test, which was irrevocable because Kushner had been paid.
On a motion for preliminary injunction the court held that Vickerman Co. had an implied license to run the software, but not to create derivative works, i.e., not to make any changes to the source code. This was outside the scope of the implied license:
No license is implied to derivation. While writing the software, Kushner mostly kept the source code on his machines. Compl. ¶ 14. Although Vickerman Company paid Kushner to write software for its use, the Company also paid him annually for “writing, monitoring, maintaining, and troubleshooting.” Compl. ¶¶ 16, 20. If unlicensed, these updating activities would infringe the copyright in the software Kushner wrote. An implied license to prepare derivative works would thus be inconsistent with the preliminary record.
In other words, the exercise of an exclusive right normally performed by the licensor would be unlicensed when performed by the implied licensee. I suppose that’s one way of looking at it, although I’m not sure it’s the right way. At any rate, just another reminder to get those software licenses in writing.
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