MICRO CONSULTING, INC. v. ZUBELDIA
813 F.Supp. 1514 (1990)
United States District Court, W.D. Oklahoma.
September 19, 1990.
33. The plaintiff has advanced additional, but related, arguments: (1) "but for" Claimnet, Uniclaim — the "next generation" — would not exist and (2) Uniclaim is a "substantial derivation" of Claimnet.
34. As stated, the plaintiff must prove both prongs of the second element: access and substantial similarity. E.g., Krofft, 562 F.2d at 1172 (no amount of proof of access will suffice to show copying if no similarities). "It is not enough that [the] defendant have access to [the] plaintiff's work and that [the] plaintiff's work serve as a sine qua non to the creation of [the] defendant's work. The works still must be `substantially similar' for liability to ensue." A Structured Approach, 20 Ariz.St.L.J. at 627 n. 6 (citation omitted).17 Furthermore, originality under the Copyright Act requires neither novelty nor uniqueness. E.g., Hutchinson Telephone Co. v. Fronteer Directory Co.,770 F.2d 128, 131 (8th Cir.1985) (originality does not connote novelty or uniqueness but simply that a work be independently created). To be original, a work need only be created independently by the author, not copied from a preexisting work and as stated, copying is proven by substantial similarity between the two works. 35. The evidence is undisputed that there is deliberate noncopying. The defendants did not merely make superficial changes in the literal and nonliteral aspects of Claimnet to disguise intentional appropriation, e.g., See v. Durang,711 F.2d 141, 142 (9th Cir.1983) ("Copying deleted or so disguised as to be unrecognizable is not copying."); they have legitimately avoided infringement by intentionally making sufficient significant changes in Uniclaim. E.g., Eden Toys, Inc. v. Marshall Field & Co.,675 F.2d 498, 501 (2d Cir.1982) (citations omitted). Zubeldia's experience in creating Claimnet inevitably became part of his expertise. He testified that he did not undertake
to copy Claimnet and the plaintiff presented no credible evidence which mandates a contrary conclusion. 36. The second argument advanced by the plaintiff is that Uniclaim is a "substantial derivative" of Claimnet. The term under the Copyright Act is "derivative work" and like any other accused work, a derivative work does not infringe unless it has been substantially copied from the preexisting work. E.g., Vault Corp. v. Quaid Software Ltd.,847 F.2d 255, 267 (5th Cir.1988) (to be considered a derivative work, infringing work must incorporate portion of and be substantially similar to copyrighted work); Litchfield v. Spielberg,736 F.2d 1352, 1357 (9th Cir.1984). Thus, substantial similarity is again the key to finding a violation under section 501. 37. The second claim brought by the plaintiff is that the defendants engaged in unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), which proscribes false designations of origin and false representations. This statute, as amended by the Trademark Law Revision Act of 1988, provides that
"[a]ny person who, on or in connection with any goods or services, ... uses in commerce ... any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —
(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
1. Having determined that a complete presentation of the evidence was necessary to adjudicate the issues raised by the parties in their Motions for Summary Judgment, the Court deferred ruling on the motions. Since the matter has now been fully presented and argued, since the standards imposed by Rule 56, F.R.Civ.P., no longer apply and so that there will be no unresolved motions, the Court finds
(a) the Motion to Strike Affidavit of Defendant Zubeldia filed by the plaintiff is moot;
(b) the defendants' Motion for Summary Judgment on the First, Second and Third Causes of Action is denied; and
(c) the plaintiff's Motion for Summary Judgment on Count 1 and for an Injunction is denied.
The parties are advised that the arguments and authorities contained in these submissions were used by the Court in resolving the legal issues in this matter.
2. Defendant Medical Electronic Data Exchange, Inc., has advised the Court in its trial brief that it intends to dismiss its counterclaim for tortious interference with business and contractual relations. Accordingly, the Court has not considered the merits of this counterclaim and deems it dismissed.
3. As the parties were advised at trial, the Court has accepted Dr. Hedrick's report of January 30, 1990, and thus, the defendants' Motion to Strike Special Master's Report is denied. The plaintiff's Motion to Confirm Special Master's Report is granted to the extent stated in the Court's Conclusions of Law.
* Purchased
** See Findings of Fact 12, 13
*** Public domain or free distribution
4. The registration form bears the notation that this was a "work for hire."
5. In this space, the copyright claimant is asked to "[b]riefly describe nature of the material created by this author in which copyright is claimed."
6. In Count IV of its amended complaint, the plaintiff alleged an action for replevin to obtain possession of the 1982 Honda automobile. The vehicle was returned and the plaintiff has not pursued this cause of action. In Count V, the plaintiff alleged a cause of action for tortious interference with business relationships. This cause of action has likewise been abandoned.
7. The defendants have argued that such damages are unavailable should the plaintiff prevail on this claim since Zubeldia commenced work on Uniclaim prior to registration by Micro Consulting of Claimnet on August 25, 1988. The infringement, if any, occurred (and continues to occur) when Uniclaim became operational in December 1988. Thus, registration preceded infringement as required by 17 U.S.C. § 412.
8. Copies are defined as "material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term `copies' includes the material objection, other than a phonorecord, in which the work is first fixed." 17 U.S.C. § 101.
9. "A `derivative work' is a work based upon one or more preexisting works, such as a translation, ... abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a `derivative work.'" Id.
10. "A `computer program' is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result." Id.
11. According to the 1984 Compendium of Copyright Office Practices, the following descriptions of authorship will ordinarily not be questioned: "computer program," "entire program," "entire test," and "text of program." The Compendium also provides that special relief may be granted to an registrant which permits it to deposit less or other than that which is required under general deposit provisions. Such relief is available to computer program applicants when they are unable or unwilling to deposit the usual identifying material in source code format. The Compendium is the manual used by the staff of the Copyright Office. D. Bender, 2 Computer Law App. 4A[18], at 181-98 (1989); see 37 C.F.R. § 202.20 (1989).
12. "It is axiomatic that material in the public domain is not protected by copyright, even when incorporated into a copyrighted work." 3 Nimmer on Copyright § 13.03[F][4], at 13-62.37 (1989) (citing Sheldon v. Metro-Goldwyn Pictures Corp.,81 F.2d 49, 54 (2d Cir.1936), aff'd,309 U.S. 390, 60 S.Ct. 681, 84 L.Ed. 825 (1940)). 13. "Obviously, no principle can be stated as to when an imitator has gone beyond copying the `idea,' and has borrowed ... `expression.' Decisions must therefore inevitably be ad hoc." Peter Pan Fabrics, Inc. v. Martin Weiner Corp.,274 F.2d 487, 489 (2d Cir.1960). 14. See R. Laurie, "Comment: Use of a `Levels of Abstraction' Analysis for Computer Programs," 17 AIPLA Q.J. 232 (1989).
15. The functions of the modules together with each module's relationships to other modules constitute the "structure" of the program.
16. No evidence was presented of substantial similarity between the algorithms implemented by these codes or between the definitions and interrelationships of any subroutines, modules or larger functional units.
17. [I]t is not enough to show merely that the defendant used, referred to, was inspired by, or had in mind the plaintiff's work during the creation of the accused work. It must also be shown that the defendant appropriated (by incorporation into his own work) more than a deminimis amount of protected expression from the plaintiff's work." Id. at 232; see also 30 Jurimetrics J. of L., Sci. & Tech. 11, 23-24 (1989) (programmer may examine and study existing programs protected by copyright and base new programs, even competing programs, upon them, provided new programs copy no protectible elements).
18. The plaintiff did not discuss these factors; indeed, the plaintiff failed to address the essential element of "likelihood of confusion" despite the fact that it is the plaintiff which has the burden of proving likelihood of confusion to prevail on a claim under the Lanham Act. E.g., Jordache Enterprises, 828 F.2d at 1484.
19. The defendants have argued that this third claim is preempted by federal copyright law. 17 U.S.C. § 301. Copyright law protects against copying of expression but not copying of underlying ideas. Trade secret law prevents unauthorized use of information.
Copyright law does not automatically preempt state laws including state trade secret law. "Attention must be paid in each case to determine what [the] plaintiff seeks to protect, the theories in which the matter is thought to be protected and the rights sought to be enforced." 1 Milgrim on Trade Secrets § 2.06A[3], at 2-149 (1990) (footnote omitted).
In Ehat v. Tanner,780 F.2d 876 (10th Cir. 1985), the Tenth Circuit found the plaintiff's state common law claims for misappropriation of material was preempted by federal copyright law because the circuit court saw "no distinction between such a state right and those exclusive rights encompassed by federal copyright laws." Id. at 878 (citations omitted).
In the instant case, it appears that the plaintiffs claim that Uniclaim "is derived" from Claimnet and therefore "embraces and incorporates" the trade secrets of Micro Consulting falls within the scope of copyright law and its protection against copying and thus, is preempted by such law. Nevertheless, the Court has examined the merits of this cause of action.
20. The Court is mindful that the exact amount of wages need not be shown. It is enough if the evidence is sufficient to enable the factfinder to arrive at a fair and reasonable approximation thereof. E.g. Blankenship v. Rowntree,238 F.2d 500, 503 (10th Cir.1956) (itemized statements not required where compensation expressly fixed and number of days worked could be calculated with reasonable certainty).