Re: "State trooper lays claim to software he developed"

It's a better exam question if the union contract forbids heavy-lifting and software-writing. The we have either a work of joint authorship, or a derivative, which might be authorized or unauthorized.

A work of joint authorship would entitle the State to common law equitable remedies with neat Latin names. The source code might be a bailment, giving rise to an action in detinue (detinue sur bailment, rather than detinue sur trover, I think). In any event, the State would have a right to register its copyright, which would require, and entitle it to obtain, a copy of the source code.

If it's a derivative, it's either authorized or unauthorized. If the State concedes an implied license to create the derivative, the Court would have to determine the terms of the implied license, which might be implied in fact (e.g., based on course of dealing, or industry practice), or implied in law (e.g. to avoid unjust enrichment, or to recognize partial performance). In either case, again, I think the State is entitled to a copy of the source code because it would facilitate its right to use the software without undermining the author's exercise of his exclusive rights in the derivative, but it's a closer question because software is commonly licensed without providing the licensee with a copy of the source code, and even restricting the licensee's right to help himself to the source code by decompiling the object code.

Whether or not the case is removed to federal court, it's not clear that the trooper's suit for declaratory judgment is barred by sovereign immunity, unless a judgment for the trooper would tap the State's coffers. In fact, I assume the trooper sued for declaratory judgment because his infringement claim was barred by sovereign immunity. As it stands, he can't lose because the State doesn't have a claim, but he can't really win either because a declaratory judgment without an ad damnum is like kissing your sister. However, he's put the State in the position of having to claim its own copyright in a joint work of authorship, or its rights under the implied license to create a derivative, or for infringement by the creation of an unauthorized derivative. Whatever the claim, it's a compulsory counterclaim, and that claim will waive sovereign immunity -- allowing the trooper to amend his complaint to add an infringement count, and remove the case to federal court, presuming he doesn't want to sue the State in State court.

John Noble

At 5:55 PM -0500 16/1/07, Terry Carroll wrote:
>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.
>
>
>
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Received on Fri Jan 19 2007 - 04:30:45 GMT