FLETCHER, Circuit Judge:
This appeal from grants of summary judgment turns on the interpretation of a computer software agreement and presents issues of copyright law as well as pendent state law claims arising under trade secret, contract, and tort law. We affirm in part, reverse in part, and remand.
STANDARD OF REVIEW
We review grants of summary judgment de novo. Darring v. Kincheloe, 783 F.2d 874, 876 (9th Cir.1986). We must determine, viewing the evidence in the light most favorable to the nonmoving party, whether there are any genuine issues of material fact and whether the district court correctly applied the relevant substantive law. Ashton v. Cory, 780 F.2d 816, 818 (9th Cir.1986). Because we begin our review with the district court's grants of summary judgment in favor of Payday, we view the facts initially in the light most favorable to S.O.S.
S.O.S., Inc. specializes in furnishing computer hardware and software to companies that process payrolls, ledgers, and accounts receivable. Payday, Inc. is a company which provides payroll and financial services to the entertainment industry.
In October 1978, S.O.S. acquired from Hagen Systems (not a party to this action) a non-exclusive license to unpublished business software called "Brown Tank." Under the license, S.O.S. could sublicense Brown Tank to end users provided Hagen Systems' proprietary and confidential rights in the software were protected. S.O.S. also had the right to prepare derivative works based on Brown Tank.
In November or December 1983, Payday's outside accountant, Mike Waldrip, told S.O.S.'s president, Bob Oliver, that Payday wanted to computerize in order to attract an important client. The initial understanding between Oliver and Waldrip was that Payday would use software furnished by S.O.S. on Waldrip's computer instead of installing a computer in its own office.
On December 14, 1983, Oliver sent Payday a draft contract, which Payday's president signed, providing for the purchase of a terminal and other hardware, to be installed in Payday's office; the lease of a disk drive and other hardware to be installed at Waldrip's office; and a software agreement. The software agreement provides, in full:
The contract does not use the terms "copyright" or "trade secrets." The parties did not discuss the meaning of the highlighted language referring to rights of "ownership" and "use."
Most of the programming of the payroll software was done by two employees of S.O.S., Eiichi Koyama and Bacchus Chu. 236 separate programs comprise the total package prepared for Payday. Of these, approximately 89 were derived or adapted from Brown Tank. Payday's controller, Sharon Goodman, was the liaison to the programming team. She described Payday's needs to S.O.S. but did not participate in the coding process.
The system (software and hardware) that S.O.S. provided was adequate for Payday's new client but not for Payday's entire business. In March 1984, S.O.S. and Payday modified portions of the contract. Under the modified agreement, Payday was to use S.O.S.'s computer for a monthly fee of $1,500; also, Payday agreed to pay monthly an additional $1,500 against accumulated programming charges. S.O.S. continued developing programs for Payday.
In late February 1985, Chu and Koyama left S.O.S. to form an independent consulting
Notes taken by Goodman indicate concern over the cost of securing a copy of the payroll programs. She noted that Chu and Koyama could "make [a] copy and put [it] somewhere." Chu and Koyama told her they could change the programs 20%, and that this would make them new programs, no longer the property of S.O.S. They planned to copy the payroll programs into Payday's computer and then convert them into a different computer language called "BITS BASIC." Payday intended to send a letter to S.O.S. in July 1985, telling S.O.S. that Payday needed a copy of the payroll programs, but this letter was never sent. Instead, Payday solicited a competing bid from S.O.S. to provide an in-house computer system.
Chu and Koyama met with Oliver on July 6, 1985. They told Oliver that Payday would pay its account balance with S.O.S. if S.O.S. would give Payday an unprotected copy of the payroll programs. Oliver rejected this proposal.
On July 7, 1985, Koyama went to the S.O.S. office and made at least one copy of the payroll software, which he gave to Payday.
Payday installed its new computer on July 14, 1985. The next day, Chu and Koyama put into Payday's computer the payroll software and various other programs taken from S.O.S.'s computer. During the next few days, Chu and Koyama converted the payroll programs from their original language into a format called "ASCII," which was in turn translated into the BITS BASIC computer language. Payday continued to request a copy of the payroll programs from S.O.S., requests intended, according to S.O.S., to conceal its software piracy. S.O.S. offered to install a protected copy of the software on Payday's computer, a copy which Payday could use but not enter, copy or change. Payday rejected this offer.
S.O.S. now suspected that Payday had copied its programs, because Payday was servicing its clients and Oliver did not believe Payday had had time independently to create new programs. S.O.S. registered the payroll programs on Oct. 11, 1985, in anticipation of litigation. Payday continued to modify the payroll programs on its computer. S.O.S. and Payday sued one another.
S.O.S. sued for infringement of copyright and pendent state law claims for breach of contract, misappropriation of trade secrets, and account stated. Payday counterclaimed under various state law theories, including abuse of process, breach of contract and tortious breach of the covenant of good faith and fair dealing, and sought a declaratory judgment that S.O.S.'s copyright is invalid. The district court granted summary judgment in favor of Payday on S.O.S.'s copyright infringement, breach of contract, and misappropriation claims, and
SCOPE OF THE APPEAL
Payday asserts that S.O.S. did not appeal the denial of its motion for reconsideration, and thus evidence presented for the first time at the hearing on that motion should not be considered here. The motion for reconsideration was denied on January 4, 1988; the final judgment was entered March 9, 1988. The notice of appeal was filed March 11, 1988, purporting to appeal from the entire final judgment but only specifying denials of earlier motions. An amended notice of appeal was filed April 6, 1988, specifically appealing the motion for reconsideration as incorporated in the final judgment. The amended notice was filed within the 30 days provided by Fed.R. App.P. 4(a)(1).
This court has the inherent power to permit a party to amend a notice of appeal even without a formal motion. Pope v. Savings Bank of Puget Sound, 850 F.2d 1345, 1347 (9th Cir.1988). The amendment generally will be allowed where the intent to appeal a specific judgment can fairly be inferred and the appellee is not prejudiced by the mistake. Id. Both requirements are met here. The principal effect of including the motion for reconsideration within the notice of appeal is to expand the factual record on appeal. No new legal claims are presented. Payday was not prejudiced: it was able to deal with the "new" facts in both its briefs. See Lynn v. Sheet Metal Workers' Int'l Ass'n, 804 F.2d 1472, 1481 (9th Cir.1986), aff'd, ___ U.S. ___, 109 S.Ct. 639, 102 L.Ed.2d 700 (1989). We conclude that the appeal properly includes the denial of S.O.S.'s motion for reconsideration.
I. Copyright Law Issues
To prevail on its claim of copyright infringement, S.O.S. must prove (1) ownership of copyright in the payroll programs, and (2) "copying" of protectible expression by Payday beyond the scope of Payday's license.
A. The Validity of S.O.S.'s Copyright
As a general rule, copyright vests initially in the author or authors of a work. 17 U.S.C. § 201(a). Copyright protection subsists from the moment the work is "fixed in any tangible medium of expression." 17 U.S.C. § 102(a). Registration is not a prerequisite to a valid copyright, although it is a prerequisite to suit. 17 U.S.C. § 408(a), § 411.
Payday advances three arguments to rebut the presumption of validity. First, it argues that S.O.S.'s initial registration was a fraud on the copyright office which should prevent S.O.S. from enforcing its copyright. Second, Payday argues that the registrations were defective because they failed to disclose that Payday employee Sharon Goodman was a joint author of the software. Finally, Payday asserts there is an issue of fact as to the ownership of modifications made by Chu and Koyama after their regular employment with S.O.S. ended. We will address each of these contentions in turn.
1. Fraud on the Copyright Office
In S.O.S.'s initial application for copyright registration, S.O.S. identified itself as sole author of the payroll software, even though the work included the Brown Tank programs prepared by Hagen. S.O.S. subsequently filed a supplemental registration disclosing its use of Brown Tank. Payday asserts that this omission was a fraud on the Copyright Office which should be remedied by barring S.O.S. from enforcing its otherwise valid copyright.
We need not decide whether S.O.S.'s registration was in fact fraudulent for failing to disclose the identity of an unpublished underlying work. "Absent intent to defraud and prejudice, inaccuracies in copyright registration do not bar actions for infringement." Harris v. Emus Records Corp., 734 F.2d 1329, 1335 (9th Cir.1984). Payday alleges that S.O.S. intentionally omitted reference to Brown Tank in its registration in order to facilitate execution of a writ of seizure against Payday. However, this writ was quickly modified, and Payday has not claimed any injury resulting from it. Payday has not demonstrated prejudice that would persuade us at the summary judgment stage to prohibit S.O.S. from pursuing its claim of copyright infringement.
2. Joint Authorship
Payday argues that S.O.S.'s registration is invalid because it failed to designate Sharon Goodman, a Payday employee, as a joint author. Although Payday frames its joint authorship argument only in terms of its effect on S.O.S.'s registration, it should be noted that if the claim were successful it would dispose of the merits. As a joint author, Payday (through Goodman) would be entitled to modify, reproduce, or distribute copies of the work. 17 U.S.C. § 201(a), 106(1)-(3); Pye v. Mitchell, 574 F.2d 476, 480 (9th Cir.1978).
Authorship is a question of fact. Del Madera Properties v. Rhodes and Gardner, Inc., 820 F.2d 973, 980 (9th Cir.1987). Payday has not presented evidence sufficient to raise a genuine issue of material fact regarding joint authorship. Payday alleges only that Goodman told the programmers what tasks the software was to perform and how it was to sort data. She did none of the coding and does not understand any computer language.
A claim of joint authorship on similar facts was rejected in Whelan Assocs. v. Jaslow Dental Laboratory, 609 F.Supp. 1307, 1318-19 (E.D.Pa.1985), aff'd, 797 F.2d 1222 (3d Cir.1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987). In that case, a dental laboratory owner commissioned software for use in his business, disclosed to the programmers the detailed operation of his business, dictated the functions to be performed by the computer, and even helped design the language and format of some of the screens that would appear on the computer's visual displays. The court nonetheless found that the programmer was the sole author of the software. The court's principal focus was on the creation of the source and object
We conclude that the Whelan court's analysis is sound. Goodman, in our view, is not a joint author of the payroll programs. She did nothing more than describe the sort of programs Payday wanted S.O.S. to write. A person who merely describes to an author what the commissioned work should do or look like is not a joint author for purposes of the Copyright Act. 17 U.S.C. § 101 defines a "joint work" as a "work prepared by two or more authors." To be an author, one must supply more than mere direction or ideas: one must "translate an idea into a fixed, tangible expression entitled to copyright protection." Community for Creative Non-Violence v. Reid, ___ U.S. ___, 109 S.Ct. 2166, 2171, 104 L.Ed.2d 811 (1989). The supplier of an idea is no more an "author" of a program than is the supplier of the disk on which the program is stored. Cf. 17 U.S.C. § 102(b) (no copyright protection for ideas); 17 U.S.C. § 202 (copyright distinct from material object in which work is embodied). We therefore decline to affirm the district court's grant of summary judgment on the alternate basis of joint authorship.
3. Work for Hire
Chu and Koyama continued to work on the payroll programs for S.O.S. between the time their formal employment relationship with S.O.S. ceased and the time they began working directly for Payday. This interim work was most likely not work for hire, in which case copyright in that work would not automatically have vested in S.O.S. 17 U.S.C. § 201(a), (b); see also Community for Creative Non-Violence, 109 S.Ct. at 2178-79. Whether Chu and Koyama remained "employees" for purposes of the work for hire doctrine after their formal employment relationship with S.O.S. ceased, and the copyright implications of such a midstream change of status, are questions which we do not reach on this appeal. The parties did not present evidence or argument on these questions, and the district court did not consider them. We will generally not consider issues which were not presented to the district court. See Bolker v. C.I.R., 760 F.2d 1039, 1042 (9th Cir.1985).
B. Copyright Infringement
The district court granted Payday's motion for summary judgment on S.O.S.'s claim of copyright infringement. The district court concluded that because Payday had a license to use the payroll programs, it could not infringe S.O.S.'s copyright. It also held that California law required that the contract be construed against S.O.S., placing the burden on S.O.S. explicitly to restrict Payday from making modifications. Absent such a restriction in the contract, the district court held, Payday acquired the unrestricted right to adopt and utilize the program.
The district court erred in assuming that a license to use a copyrighted work necessarily precludes infringement. A licensee infringes the owner's copyright if its use exceeds the scope of its license. Gilliam v. American Broadcasting Cos., 538 F.2d 14, 20 (2d Cir.1976). The critical
The license must be construed in accordance with the purposes underlying federal copyright law. Cohen v. Paramount Pictures Corp., 845 F.2d 851, 854 (9th Cir.1988); Harris, 734 F.2d at 1334. Chief among these purposes is the protection of the author's rights. Cohen, 845 F.2d at 854. We rely on state law to provide the canons of contractual construction, but only to the extent such rules do not interfere with federal copyright law or policy. See Fantastic Fakes, Inc. v. Pickwick Int'l, Inc., 661 F.2d 479, 482-83 (5th Cir.1981) (state law rules of contract construction not preempted by federal law; however, application of state law to supply implied terms in copyright license would raise preemption question).
The district court applied the California rule that the contract should be interpreted against the drafter, see Heston v. Farmers Ins. Group, 160 Cal.App.3d 402, 415, 206 Cal.Rptr. 585, 593 (1984), thereby deeming S.O.S. to have granted to Payday any right which it did not expressly retain. This result is contrary to federal copyright policy: copyright licenses are assumed to prohibit any use not authorized. Cf. Cohen, 845 F.2d at 853 (license analyzed to determine what uses it affirmatively permits); 17 U.S.C. § 204(a) (transfer of copyright ownership must be in writing).
The contract between S.O.S. and Payday states, "This series of programs is the property of SOS, and PAYDAY is acquiring the right of use, SOS retains all rights of ownership." This language is unambiguous. Payday acquired the right to use the software, but S.O.S. retained all ownership rights. In the context of the parties' entire agreement, it is clear that the "right of use" was not intended to refer to copyright use. The contract does not refer explicitly to copyright or to any of the copyright owner's exclusive rights. Payday clearly was concerned solely with obtaining output in the form of processing payroll information for its customers.
S.O.S. concedes that Payday had a right to use the software on its own machines, but insists S.O.S. retained title to any copies. We agree. The literal language of the parties' contract provides that S.O.S. retains "all rights of ownership." (Emphasis added.) This language plainly encompasses not only copyright ownership, but also ownership of any copies of the software. Payday has not demonstrated that it acquired any more than the right to possess a copy of the software for the purpose of producing "product" for its customers.
II. Trade Secrets
S.O.S. appeals the district court's grant of summary judgment in favor of Payday on S.O.S.'s trade secrets count under the Uniform Trade Secrets Act, Cal. Civ.Code §§ 3426 et seq.
The district court relied on its copyright license analysis to reject S.O.S.'s claim:
E.R. at 86.
The district court should have focused on how Payday acquired its copy. There is a genuine issue of fact as to whether the contract gave Payday a right to possess only a protected copy of the software if it elected to process its customers' work on its own computer, or whether Payday was entitled to possess an unprotected copy.
The district court relied on Aktiebolaget Bofors v. United States, 194 F.2d 145, 148 (D.C.Cir.1951), to support its conclusion that a licensee of a trade secret cannot be an infringer. That case, however, holds only that one who lawfully acquires a trade secret, not just tangible property based on a trade secret, can use that trade secret in any manner not otherwise prohibited by contract or other body of law. It is precisely the lawfulness of Payday's acquisition of the trade secret, in the form of the unprotected source code, that is at issue here.
Summary judgment in favor of Payday on this issue was error. S.O.S. has produced evidence rendering the contract susceptible to the interpretation that Payday did not have the right to possess an unprotected copy of the program. S.O.S. also presented evidence sufficient to create genuine issues of material fact as to whether Payday knew or had reason to know that the source code was acquired by improper means, and whether the source code was subject to reasonable efforts by S.O.S. to maintain its secrecy.
III. Account Stated
The district court granted S.O.S.'s motion for summary judgment on its claim for an account stated. The underlying facts are not disputed. In April 1985, S.O.S. sent Payday a statement showing an amount due for programming services under the original contract. Payday does not dispute that S.O.S. performed these services and that the account stated was correct. Payday made payments until September, 1985, reducing its balance to approximately $21,500.00.
Payday next asserts that S.O.S.'s alleged breach of contract in refusing to give it an unprotected copy of the software should relieve Payday of the obligation to pay. However, even assuming arguendo that S.O.S. breached the contract, this would not affect the result. Under California law, an account stated is a new contract, and an action on it is not based on the original contract, but on the balance confirmed by the parties. Gleason v. Klamer, 103 Cal.App.3d 782, 786-87, 163 Cal.Rptr. 483, 485 (1980). An account stated may be attacked only by proof of "fraud, duress, mistake, or other grounds cognizable in equity for the avoidance of an instrument." Id. Although an account stated is dependent on a valid underlying liability which accrued before rendering the account, Trafton, 69 Cal.Rptr. at 574, "it is not open to a defendant to attempt to defeat the legal effect of [an account stated] by showing a lack of consideration in any other way. Thus, it is not open to a defendant in such a case merely to show that the account stated was based upon a disputed claim of the plaintiff's, which claim subsequently proved to be invalid.... All such evidence going to total or partial lack of consideration is forever debarred by the convention and agreement of the parties, for this is of the very essence of an account stated." Gardner v. Watson, 170 Cal. 570, 577, 150 P. 994, 996 (1915). A party who consents to an account stated has agreed that it has become liable for that amount by the other party's performance. Payday is claiming only that S.O.S.'s subsequent breach affected its previous liability. This defense to an account stated is not recognized in California law.
Payday's final argument is that there is no pendent jurisdiction, because an account stated is distinct from the underlying contract. This argument lacks merit. The state law account stated claim and federal law copyright claims "derive from a common nucleus of operative fact," "such that [the parties] would ordinarily be expected to try them all in one judicial proceeding." United Mine Workers v. Gibbs, 383 U.S. 715, 725, 86 S.Ct. 1130, 1138, 16 L.Ed.2d 218 (1966). Summary judgment in favor of S.O.S. on the account stated claim was proper and is affirmed.
IV. Abuse of Process
On November 22, 1985, S.O.S. sought and obtained an ex parte writ for the seizure of the computer programs in possession of Payday. Shortly after, Payday obtained a modification of the writ. In its counterclaim for abuse of process, Payday asserts that S.O.S.'s writ of seizure was obtained through misrepresentations including exaggeration of the scope of S.O. S.'s copyright and denial of Payday's license. Because Payday was able to obtain a prompt modification of the writ, it has not claimed damages other than its attorneys' fees incurred in its efforts to modify and vacate the writ. The district court granted summary judgment for S.O.S. on several grounds, only one of which is necessary for affirmance.
Even if Payday's claims of misrepresentation are true, it has pleaded the wrong cause of action:
V. Breach of Contract and Tortious Breach of the Implied Covenant of Good Faith and Fair Dealing
Payday asserts that S.O.S. committed a breach of contract and tortious breach of the implied covenant of good faith and fair dealing by denying implicitly the existence of Payday's license. Payday seeks nominal damages, attorneys' fees, and punitive damages. The district court dismissed the contract claim on the ground that the contract did not provide for attorneys' fees, which were the only actual damages sought, and the implied covenant claim on the ground that the contract between Payday and S.O.S. did not give rise to the sort of special relationship that would give rise to tort liability.
The district court decided these claims correctly. Payday cannot recover its attorneys' fees as damages under a contract theory, where neither statute nor contract provide for attorneys' fees in the event of breach. Cal.Code Civ.Proc. § 1021.
Nor does Payday have a cause of action in tort for breach of the implied covenant of good faith and fair dealing. California recognizes such torts only in the context of insurance contracts and other contracts where there is a "special relationship" between the parties to the contract, characterized by elements of public interest, adhesion, and fiduciary responsibility. Foley v. Interactive Data Corp., 47 Cal.3d 654, 687-88, 254 Cal.Rptr. 211, 230, 765 P.2d 373, 392 (1988), citing Seaman's Direct Buying Service v. Standard Oil Co., 36 Cal.3d 752, 768-69, 206 Cal.Rptr. 354, 362-63, 686 P.2d 1158, 1166-67 (1984). Payday can not demonstrate the existence of such a special relationship here.
We reverse the district court's grant of summary judgment in favor of Payday on the issue of copyright infringement, and remand for further proceedings consistent with this opinion. We also reverse and remand on S.O.S.'s breach of contract and trade secrets counts.
We affirm the district court's grants of summary judgment in favor of S.O.S. on its account stated claim and dismissing Payday's counterclaims for abuse of process, tortious breach of the implied covenant of good faith and fair dealing and breach of contract.
REVERSED IN PART, AFFIRMED IN PART, AND REMANDED.
C.R. 90, page 20.
Payday, on the other hand, may well have assumed that its purchase price for right of use would include the right to use the software on its own computer, if it ever purchased one. It could reasonably have assumed that S.O.S., not Payday, would bear the costs of protecting S.O. S.'s trade secret interests. This would not affect the extent of the license granted. Payday would be entitled to possess a copy of the software to enable it to exercise its limited right of use, but would not own that copy.
An owner of a copy of software has certain rights under the Copyright Act which a mere possessor does not. See, e.g., 17 U.S.C. § 117 (right to make copy or adaptation of program if essential to utilization of the program; right to make archival copy); 17 U.S.C. § 109(a) (right to sell or dispose of owned copy).
The district court dismissed as moot Payday's declaratory judgment claim of copyright invalidity after determining that Payday had a license to use and modify the software. Because S.O.S.'s claims of copyright infringment are not disposed of by reference to the contract, the issue of copyright invalidity is not moot. Payday will have the opportunity to challenge the validity of S.O.S.'s copyright on remand, by producing evidence of intent to defraud and prejudice to substantiate its allegation of fraud on the copyright office, and by developing its theory that portions of Chu and Koyama's work was not work for hire. Summary judgment in favor of S.O.S. will be appropriate on Payday's challenge based on joint authorship.
A second issue is whether Payday might have a defense to its copying of S.O.S.'s programs if it were found at trial that S.O.S. breached its contract by refusing to give Payday a copy of the software unless Payday paid for protective modifications. In that event, copying the software surreptitiously may have been the only means available to Payday to exercise its contractual right of use. We express no opinion as to whether a licensor's breach of contract depriving a licensee of access to copyrighted material can excuse the licensee's copying of that material in order to gain access.
Section 3426.1(a) provides:
Section 3426.1(d) provides: