Re: Help with another copyright problem

On Fri, 24 Sep 1993 lewis[_at_]radonc.unc.edu wrote:

> We're having some problems with an ex-employee programmer who is claiming
> copyright protection for some code that he produced while he was working
> here. He was annoying enough about it (filing suit) that we signed an
> agreement stating that he can have the copyright, as long as we are
> licensed to both modify his code and continue distributing the software
> he developed free of charge. But the problem we're having now is that our
> programmers have been building on and refining and debugging that code, as
> well as incorporating pieces of it in entirely new programs. The ex-employee
> feels that use of any piece of the code he has copyrighted in a new
> program means that the agreement we signed must apply to that new piece
> of software.

I'm a lawyer representing a plaintiff software-development company in a trade secret misappropriation against a large software company that hired my client's senior programmer then (we allege) used source code and algorithms developed by the employee for my client in the defendant company's product. In our case, the programmer had signed an "Invention and Non-Disclosure Agreement" giving my client rights in all code he developed for my client.

Your question can't be answered generically. An intellectual property lawyer needs to (1) look at the agreement you signed with the employee and (2) examine the code or data structures you're using as a basis for further work.

However, one hint: is the code your present programmers are debugging original with the ex-employee and not simply some data structure that's available from the books or otherwise in the public domain?  

> My first question is, what kind of granularity can he legally claim for the
> copyright protection on his code? Does the incorporation of 4 lines of code
> from one of his programs give him any claim on the new program? Or does it
> take the use of a whole function? Or a library of functions?

Again, one needs to review the agreement and look at the code. Copyright law (as you know) protects expression, not ideas. If you have granted him copyright in his code, you may not publish it elsewhere. However, how much you can safely build on it and tranform it without liability is a fact-intensive question that requires specific legal advice.

> And my second question is whether there is any concept of a derived work that
> applies here - how much modification must a software system go through before
> it's a new work? Can we claim that our agreement allows us to produce
> derived works, and therefore we get all the copyright protection for the new
> software?

The key is likely to be, not whether a new work emerges, but simply whether you've used his code. Once more, this needs specific fact-analysis by an intellectual property lawyer. It would be perilous to rely on any broad-brush answers to questions like these, other than from a qualified professional who knows all the relevant facts.

Regards.

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