"State trooper lays claim to software he developed"

Interesting story over at
http://www.jsonline.com/story/index.aspx?id=552682 ...

Basic facts are that a Wisconsin state trooper modified some software, apparently originally written by the state of Iowa. Whether he did so on state time and using state facilities, or under the state's direction, is apparently subject to dispute. Wisconsin is demanding he turn over the code. The trooper has filed suit, in a state court.

This would make a great exam question.

Work made for hire: he's an employee, but is this within the scope of employment? What if the state specifically gave him time and facilities for development, as it claims? What if he also did it on his own time? He's in a union, so the state must have a collective bargaining agreement with his union; assuming that that agreements spells out the duties of a state trooper, and software development is not among them, what impact does that have on the issue of scope of employment?

Implied license: even if the state loses on the ownership issue, if it really did give him time and facilities, does it at least get an implied license? Including to the source code?

If the trooper is the author and owner, can he commercialize it? The state of Iowa is the owner of the underlying code he modified. And distribution of his code would necessarily distribute the Iowa work. See Stewart v. Abend for the impact of that.

Wait a minute... is this even copyrightable? Iowa provided the program on the condition that it not be commercialized. Under 103(a), which denies copyright to any part of a derivative work in which pre-existing material has been used unlawfully, maybe no one even has a copyright here.

And can this case go forward in state court? What's his claim? Does it amount to a declaratory action for copyright ownership? If so, that's probably exclusively in the federal courts. But if it's for, for example, breach of the union agreement, maybe it's not preempted. Which might even lead to a counterclaim of infringement, by the state of Wisconsin, in state court. (At least one state has held that a counterclaim of infringement does not divest the state court of jurisdiction.)

And if Wisconsin successfully removes to federal court, can it still plead Eleventh Amendment immunity, or will the removal amount to waiver? (I seem to recall a case saying that removal does not amount to waiver, but couldn't cite it if I had to.)

Like I said, great exam question. Received on Wed Jan 17 2007 - 03:55:30 GMT