GETTLEMAN, District Judge.
Plaintiff Joan T. Napoli ("Napoli") brings this action against
Sears, Roebuck and Co. ("Sears") and Keane, Inc., for copyright
infringement, misappropriation of trade secrets, breach of contract, and
conversion. Jurisdiction is based upon the federal question of the copyright
infringement count, 28 U.S.C. s 1331, and supplemental jurisdiction of the
state law counts, 28 U.S.C. s 1367. Currently before the Court is Napoli's
renewed motion for partial summary judgment and Sears' cross-motion for
partial summary judgment on the issue of the validity of Napoli's copyright.
Napoli claims that she is the sole author of a computer software program
(the "System") designed to improve the quality and efficiency
of services offered by the Home Fashion Department at Sears. On May 3,
1993, Napoli moved for partial summary judgment, seeking to establish her
sole ownership of a valid and enforceable copyright for the System. Sears
defended the motion by arguing, inter alia, that it was legally a joint
owner of the copyright. Judge Aspen, to whom this case was previously assigned,
denied the motion for summary judgment on October 5, 1993. Napoli moved
for reconsideration, which Judge Aspen also denied.
Napoli then brought a renewed motion for reconsideration based upon a recent
decision of the Seventh Circuit, Erickson v. Trinity Theatre, Inc., 13 F.3d
1061 (7th Cir.1994). Judge Williams, to whom the case had been reassigned,
granted the motion in part, based upon the new law, and vacated Judge Aspen's
opinions denying plaintiff's motion for partial summary judgment. Plaintiff
was granted leave to file a renewed motion for partial summary judgment,
and the parties were directed to file additional briefs on matters left
unaddressed by Judge Aspen's opinions. Napoli filed her renewed motion
and, as a result, Sears filed a cross-motion. The case was then assigned
to the undersigned. Both motions are fully briefed and ready for disposition.
The only issue raised is whether Napoli is the sole author of the System,
entitling her to summary judgment as to the validity of her copyright, or
whether under Erickson, Sears is legally considered a joint author.
Standard of Review
Fed.R.Civ.P. 56(c) provides that summary judgment shall be granted "if
the pleadings, depositions, answers to interrogatories, and admissions on
file, together with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is entitled to judgment
as a matter of law." This standard places the initial burden on the
movant to identify those portions of the record on file which it believes
demonstrates the absence of a genuine issue of material fact. Celotex Corp.
v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986).
Once movant has met this initial burden, the non-moving party must set forth
specific facts showing that there is a genuine issue for trial. Fed.R.Civ.P.
56(c). The Court must read all facts in the light most favorable to the
non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254, 106
S.Ct. 2505, 2513, 91 L.Ed.2d 202 (1986). After applying these standards
to the facts of this case, the Court denies both motions.
In 1989, Sears decided to develop a computer program designed to improve
the quality and efficiency of the services offered by the Home Fashions
Department at Sears. For the next year, various Sears employees, led by
Melody Villafana, the National Inventory and Systems Manager of Furniture
of the Home Fashions Department, worked on the "Sears System."
They planned the overall structure of the Sears System, provided the layout
and graphic design of the screens and reports to be generated, selected
all of the data that was to be included, and designed the layout and presentation
of that data. Finally, Villafana developed and introduced new terms necessary
for the computerization of Sears' business process.
Because the Sears employees had limited experience working in the DataEase
software that had been selected for the Sears System, Villafana contracted
with Norrell Services, an outside company, to help complete the programming
in August 1990. Norrell originally sent Richard Francis to assist Sears,
but he left Norrell in November 1990. Norrell then sent Napoli, who was
a Norrell employee. She worked with Villafana at Sears until March of 1991,
when she was fired from Norrell and left Sears. At that time, the Sears
System was still incomplete, and all work on it had apparently ceased.
In July 1991 Napoli contacted Sears and offered to complete the Sears System.
Napoli and Sears then entered into an agreement whereby Napoli would complete
the Sears System and provide a limited warranty period. In return, Sears
agreed to pay Napoli $10,000. Napoli began work on completing the existing
system, but claims that in October 1991, she concluded that the Sears System,
as it had been developed, suffered from a fundamental design flaw. She
informed Villafana of this fact, and told her that she (Napoli) was considering
entirely redesigning the internal structure of the system. Villafana told
her not to do so, and informed her that Sears would be under no obligation
to her if she did. Nevertheless Sears claims to have continued to provide
extensive assistance to Napoli, allegedly giving her mock-ups of visual
screens and sample reports produced by the uncompleted system. Villafana
and Napoli remained in frequent contact.
In January 1992 Napoli delivered a computer system to Sears, which Napoli
claims is the system she developed after the failure of the Sears System.
Sears paid her $10,000, pursuant to the July 1991 agreement, and Napoli
provided the repair assistance that she had promised. Sears claims, however,
that the system which Napoli provided was never fully functional. The relationship
between the two parties began to break down in the spring of 1992, and Napoli
ultimately demanded that Sears return her source code, which Sears did. [FN2] However, Napoli
contends that Sears made and retained a copy of the source code, which it
wrongfully provided to defendant Keane, Inc., for the purpose of evaluating
it and preparing a derivative version.
Napoli's Motion
Despite the multitude of paper filed containing rampant bickering between
the lawyers, the issue before the Court is fairly narrow.
[FN3] Napoli claims that she is the sole owner
of the computer software application (the System) by virtue of her claim
that she is the sole author of the entire source code. Therefore, she claims
to be entitled to summary judgment with respect to the validity of her copyright.
In response, Sears argues that Napoli is not entitled to summary judgment
because: (1) there is a genuine issue of fact as to whether Napoli is the
author of the entire source code and, in any event; (2) Sears supplied the
graphic screen design and report designs classifying the System as a "joint
work," making Sears a joint author and giving it the right to use and
to license the System.
Under federal copyright law if a work is considered "joint,"
the joint authors hold undivided interests in the work, despite any differences
in each author's contribution. 17 U.S.C. s 201. Each author, as co-owner,
has the right to use or to license the use of the work, subject to an accounting
to the other co-owners for any profits. Childress v. Taylor, 945 F.2d 500,
505 (2nd Cir.1991); Weinstein v. University of Illinois, 811 F.2d 1091,
1095 (7th Cir.1987). Thus, the only issue before the Court is whether Sears
can be considered a joint author. If so, then Sears has a right to use
and license the System, and Napoli's claim for partial summary judgment
as well as her claim for copyright infringement must fail.
A "joint work" is defined as "a work prepared by two or
more authors with the intention that their contributions be merged into
inseparable or interdependent parts of a unitary whole." 17 U.S.C.
s 101 (1972). In Erickson, the Seventh Circuit adopted the copyright or
subject matter test formulated by Professor Goldstein to determine the issue
of joint authorship. Under this standard, "[a] collaborative contribution
will not produce a joint work, and a contribution will not obtain a co-ownership
interest, unless the contribution represents original expression that could
stand on its own as the subject matter of copyright." Erickson, 13
F.3d at 1070. In addition, the test requires that the parties must have
intended to be joint authors at the time the work was created. Id. That
intent requirement is satisfied if the parties intended to merge their respective
contributions into a single whole. 17 U.S.C. s 101 (1977).
Napoli asserts initially that she is sole author of the literal text (source
code) of the System, and that only the source code can stand on its own
as copyrightable matter. Therefore, she claims that she is the sole author
and owner, and her copyright is valid. To support her factual claim of
authorship Napoli has provided a listing of the hundreds of files that in
their entirety comprise the System, and has challenged Sears to identify
any literal text that it wrote. According to Napoli, it is a relatively
simple matter for Sears to print out the entire literal text of the System
and then identify which lines it claims to have authored. Sears has not
elected to do so, and Napoli claims that Sears has not because it cannot.
Sears' response is both factual and legal. First, it contends that the
System is merely a completion of a product begun by Sears' employees and
by the Norrell contracted employees (including Napoli) through March of
1991, and that the contribution of the Sears and Norrell employees is incorporated
into the work. To support this argument, Sears points to the similarity
of the screens and reports generated by the System before and after Napoli
became involved, and argues that the similarity supports an inference that
Napoli did not delete and rewrite all of the source code as she contends.
Secondly, Sears maintains that Napoli is wrong in her legal contention
that only source code or literal text is considered copyrightable matter.
Sears maintains that its graphic design of the screens and reports constitutes
matter independently copyrightable from the literal text and, therefore,
under Erickson, Sears is legally a joint author. (This argument is also
the basis for Sears' cross- motion for partial summary judgment which will
be discussed below.)
In reply, Napoli first suggests that because Sears failed to print out
and analyze the source code to determine conclusively which parts, if any,
it wrote, Sears is precluded from arguing that Napoli did not write it all.
Secondly, Napoli argues that because she was the Norrell contracted employee
who wrote the source code incorporated into the Sears System from October,
1990 to March, 1991, she alone can claim authorship/ownership of the source
code created during that period. The Court finds both arguments unpersuasive.
Paragraph 12 of Sears' contract with Norrell provided in part: Agency [Norrell]
acknowledges and agrees that all materials prepared by the Agency is work
specifically ordered for commission by Sears, and Agency hereby irrevocably
grants, sells and assigns to Sears each and every right whatsoever in and
to such materials. Accordingly, Sears shall be the sole and exclusive owner
and titleholder of all rights of every kind and nature whatsoever in and
to such materials including, but not limited to, enhancements, amendments
and updates.
Under this agreement, it appears likely that ownership rights of any source
code produced by Napoli while employed by Norrell are retained by Sears.
Therefore, if after October 1, 1991, Napoli incorporated any of the source
code that she had written while previously employed by Norrell, then she
is not the sole author/owner of the entire source code and is not entitled
to partial summary judgment. Despite her contentions otherwise, whether
Napoli did incorporate any of the previous work (or any work of the other
Norrell or Sears employees) is a question of fact in dispute that cannot
be determined by summary judgment. All that Napoli has presented (or claims
that can be produced easily) is a printout of the final source code, which
by itself proves nothing without a comparison to a printout of the source
code she claims to have deleted. Because of the similarity of the final
visual product to the "interim" product, it can be reasonably
inferred that some of the original source code was incorporated.
For purposes of a motion for summary judgment, the court must view the
facts in the light most favorable to the non-movant. Accordingly, because
the court finds that there is a genuine issue of material fact as to whether
Napoli was the sole author of the source code for this System, her motion
for partial summary judgment is denied.
Sears has also moved for partial summary judgment, claiming that its
design of the screens and reports generated by the System gives it joint
author status under the Erickson test. Napoli responds by once again arguing
that only literal text is subject to copyright, and that the graphic design
of the screens and reports alone without the literal text that produces
it on the computer is not independently copyrightable. In essence Napoli
argues that although her copyright protection extends to the screen displays
and reports because she wrote the literal text that instructs the computer
to produce them, the actual author/designer of those screens and reports
can have no claim to joint authorship. The Court disagrees.
First, it is now beyond dispute that a copyright in a computer program
extends to its screen displays. Manufacturers Technologies, Inc. v. Cams,
Inc., 706 F.Supp. 984, 992 (D.Conn.1989). The Copyright Office has stated
that a single copyright registration of a computer program extends copyright
protection not only to the literal elements of the program--its source and
object codes--but also to the screen displays it generates to the extent
that they contain original creative authorship. Id. This statement of
the Copyright Office was a reaffirmation of its long-standing policy, and
was made only because of confusion that had arisen as a result of the Office's
concurrent acceptance of separate registration of screen displays. It no
longer accepts such separate registration. Id. at 990. Thus, according
to Cams a single registration of a computer program accomplishes two interrelated
yet distinct registrations: one of the program itself, and one of the screen
displays or user interface of that program, to the extent that each contains
copyrightable subject matter. Id. at 992-93. Therefore, a computer program
and its screen displays are, for copyright purposes, fundamentally distinct.
Id., see also Engineering Dynamics, Inc. v. Structural Software, Inc.,
26 F.3d 1335, 1342 (5th Cir.1994) (non-literal elements of computer programs
may be copyrightable).
Napoli recognizes that copyright coverage extends to non-literal elements
of the program, but asserts that only the author of the source code for
the non- literal elements is entitled to claim authorship. Not surprisingly,
Napoli has cited no recent cases directly supporting this argument. It
is not surprising, because the reason copyright coverage extends to non-literal
elements is that the same non-literal element (i.e., the screen display)
can be produced by different source codes. Cams, 706 F.Supp. at 992 (and
cases cited therein). Thus, it is the actual design of the screen that
is subject to registration, assuming that the design contains original and
creative authorship (i.e., copyrightable subject matter). Therefore, if
Sears is actually the author of the screen designs and reports, then it
is a "joint" author of the System and co-owner entitled to use
or license the System. [FN4]
To be an author, however, Sears must have supplied more than mere direction
or an idea: it must be the "party who actually creates the work, that
is the person who translates an idea to a fixed, tangible expression entitled
to copyright protection." Erickson, 13 F.3d at 1071 (quoting Community
for Creative Non-Violence v. Reid, 490 U.S. 730, 737, 109 S.Ct. 2166, 2171,
104 L.Ed.2d 811 (1989)).
It is undisputed that Sears created the graphic design of screens and
reports to be used in the original Sears System prior to Napoli's involvement.
It is also undisputed that those designs were given to Napoli in a fixed,
tangible form for her review. She did in fact review them. Napoli denies,
however, that she used the designs in the final System, swearing in an affidavit
that she redesigned everything. Sears again asserts that the reports generated
by Napoli's System are so similar to the reports designed by Sears initially,
that the Court can infer that Napoli copied them in whole or in part.
The Court has reviewed the reports presented to it, and they are indeed
strikingly similar. Under copyright law, however, two exact same works
may be copyrightable separately so long as the similarity is fortuitous,
not the result of copy. Feist Publications, Inc. v. Rural Telephone Service
Co., Inc., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Despite
acknowledging her receipt of the original screen and report designs from
Sears, and despite the obvious similarities between the reports generated
by her System and those original designs, Napoli was willing to swear under
penalty of perjury that Sears' initial designs played no part in her work,
and that she completely ignored those original designs in redesigning the
System. In light of Napoli's affidavit, an issue of material fact has been
raised, requiring a denial of Sears' motion for partial summary judgment. [FN5]
For the reasons set forth above, Napoli's motion and Sears' cross-motion
for partial summary judgment are denied. This matter is set for a report
on status on February 7, 1995, at 9:15 a.m.
FN1. This general
statement of facts has been taken from Judge Aspen's Memorandum Opinion
and Order denying Napoli's original motion for partial summary judgment.
To the extent that the parties have submitted any additional information
creating a dispute as to any material fact that Judge Aspen found to be
undisputed, it will be noted in the body of this opinion.
FN2. Source code (or
literal text as Napoli often calls it) is the computer program code as the
programmer writes it, using a particular programming language, generally
written in a high level language such as BASIC, COBOL, or FORTRAN. Copyright
Office Practice for Computer Programs 321.01.
FN3. To "help"
the court decide the narrow issue presented in the pending motions, the
parties have presented six Local 12(M), (N) statements supported by six
affidavits, and twelve motions and/or memoranda of law. The memoranda, some
of which are oversized, are replete with unnecessary attacks on opposing
counsel and mischaracterizations of the arguments. In the future, the parties
are directed to confine their memoranda to proper argument and not burden
the court with childish name-calling. No further motions for leave to file
oversized briefs will be granted.
FN4. Napoli cannot
seriously dispute that whatever work Sears contributed was to be merged
with Napoli's work into a single whole, satisfying the intent requirement
of 17 U.S.C. s 101.
FN5. The court's conclusion
that the actual graphic design of the screens and reports without the source
code constitute copyrightable matter under Erickson, provides an additional
reason to deny Napoli's motion.