The Murky Waters of Authorship in a Software World

Author: Reid Dammann

It is quite common for parties to enter into agreements to develop software. Often times, one party has a general understanding of how they would like the software to function on either the back or front end, and/or how they would like the graphical user interface to be displayed to a user. More often than not, the second party to this kind of an agreement is a software programmer. The software programmer is generally able to understand the requirements and otherwise code such that the software performs the functions that are required when it is executed.

One of the bigger issues that springs out of these kinds of arrangements is authorship. This area is constantly evolving and is more or less a factual question generally reserved for the jury. Authorship becomes an issue when the agreement is silent on the same and the respective programming knowledge base between the parties overlaps, leading to confusion as to who contributed to the resulting source code.

The Copyright Act does not explicitly define the term “author.” However, to gain the Copyright Act’s protection, a person must create copyrightable work that is “original” and “fixed” in a “tangible medium of expression.” Copyright Act, 17 U.S.C. § 102. A work is considered “fixed” when “its embodiment in a copy…by or under the authority of the author, is sufficiently permanent or stable to permit it to be reproduced (emphasis added).” Id. at§ 101. Therefore, the Copyright Act expressly provides that an author can empower another to “fix” the author’s original idea. Both tangibility and originality are necessary to be an “author.” One who has an original idea that is not expressed in tangible form is not an author. Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222, 1234 (3d Cir.1986), cert. denied, 479 U.S. 1031, 107 S. Ct. 877, 93 L.Ed.2d 831 (1987) Neither is one who embodies in tangible form another person’s idea, without making any original contribution of his own. The Supreme Court has stated that “[a]s a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.” Community for Creative Non-Violence v. Reid, 109 S. Ct. 2166, 2171 (1989). The critical phrase in determining authorship is “by or under the authority of the author.”

That statutory language and the Supreme Court’s guidance produce a definition of an author as the party who actually creates the work—that is, the person who translates an idea into an expression that is embodied in a copy by himself or herself, or who authorizes another to embody the expression in a copy. The definition, however, has limits. When one authorizes embodiment, that process must be rote or mechanical transcription that does not require intellectual modification or highly technical enhancement such as what occurred in M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir. 1990) (architectural drawings), Geshwind v. Garrick, 734 F.Supp. 644 (S.D.N.Y. 1990) (computer animated film), and Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 609 F.Supp. 1307 (E.D. Pa. 1985) (computer program), 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).

There is a “fundamental distinction” between an “original work” of authorship and “the multitude of material objects in which it can be embodied.” H.R.Rep. No. 1476, 94th Cong., 2d Sess. 53, reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5666. As the House Report for the Copyright Act’s precursor bill explained: “Thus, in the sense of the bill, a ‘book’ is not a work of authorship, but is a particular kind of ‘copy.’ Instead, the author may write a ‘literary work,’ which in turn can be embodied in a wide range of ‘copies’ and ‘phonorecords,’ including books, periodicals, computer punch cards, microfilm, tape recordings, and so forth.” In questioning the House Report, Professor Nimmer remarked that the solitary act of “setting up the recording session” is “ill-based” for claiming authorship on behalf of the record producer. 1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 2.10[A][b] at 2-146 (1990). Indeed, “this is no more an act of ‘authorship’ than is the act of one who makes available to a writer a room, a stenographer, a typewriter, and paper.” Id.

In S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081 (9th Cir. 1989), a Payday employee (Goodman) asserted that she was a joint author. In that particular case, the Court stated that 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, 93 L. Ed. 2d 831, 107 S. Ct. 877 (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 code. The owner’s “general assistance and contributions to the fund of knowledge of the author did not make [him] a creator of any original work, nor even the co-author. It is similar to an owner explaining to an architect the type and functions of a building the architect is to design for the owner. The architectural drawings are not co-authored by the owner, no matter how detailed the ideas and limitations expressed by the owner.”

In Payday, the Court stated “[w]e 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.” The Court further stated, “[t]he 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.”

In sum, on the one hand, the case law supports the programmer as the author in the situation where the programmer fixes the code into a tangible medium of expression with just a general guidance on how the software is to function from the other party, essentially giving the programmer a large amount of discretion on the expression. On the other hand, as the other party to the agreement contributes more specifically to the project, and even the code itself, along with the programmer, joint authorship emerges as the idea becomes fixed in the source code, therefore reducing the amount of originality provided by the programmer and attributing it to the other party. There is no guarantee of joint authorship for the programmer just because that person wrote the program. If that programmer acts as, essentially, a scrivener, then there may be no authorship at all.

About the author: Reid Dammann is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on litigation matters involving copyright, trademarks, trade secrets, and patents, with a particular emphasis on software. Mr. Dammann is a registered patent attorney with an advanced dual degree in Computer Science and Electrical Engineering. Mr. Dammann’s biography can be found here.

9th Circuit Reverses Itself: Clear Labeling and Proper Design of a Website May Avoid Initial Interest Confusion

On October 21, 2015, on a granted petition for panel rehearing, an opinion was filed in the case of Multi-Time Machine, Inc. v. Amazon.com, Inc., et al., No. 13-55575, D.C. No. 2:11-cv-09076-DDP-MAN. The panel granted a petition for rehearing, withdrew its prior July 6, 2015 opinion and filed a superseding opinion in an appeal from the lower court’s summary judgment in a trademark infringement action under the Lanham Act against the defendant, Amazon.com (“Amazon”).

On Amazon’s motion for summary judgment, the District Court granted summary judgment in favor of Amazon on the grounds that Multi-Time Machine, Inc. (“Multi-Time”) did not put forth sufficient evidence from which a jury could determine that there was a likelihood of confusion. Multi-Time appealed. The Ninth Circuit reversed the District Court’s grant of summary judgment, holding that Multi-Time presented sufficient evidence for a jury to determine that Amazon’s search function causes a likelihood of confusion under the “initial interest confusion” test.

Military-style watch manufacturer Multi-Time owns the trademark “MTM Special Ops” and does not sell watches on Amazon.com. When Amazon consumers searched for “MTM Special Ops” on Amazon.com, the search results included several of Multi-Time’s  competitors’ watches bearing the competitors’ labels and marks but without an explicit warning that Amazon does not sell Multi-Time watches.

The District Court focused on particular factors in Sleekcraft to reach its conclusion and up on appeal, the Ninth Circuit seemed to as well. The Ninth Circuit determined that Multi-Time’s trademark, “MTM Special Ops,” is suggestive and conceptually strong because it does not merely describe its military-style watches, but is potentially suggestive of them. Additionally, the Court determined that the “similarity of the goods” factor weighs in favor of infringement because Amazon sells military-style watches and even displays them in response to a search for Multi-Time’s trademark. The Court held that a jury could infer that the search results page, coupled with Amazon’s failure to warn the customer that it does not carry Multi-Time products, gives rise to an initial interest confusion. Therefore, because there was sufficient evidence to demonstrate likelihood of confusion, the Court reversed the District Court’s grant of summary judgment and remanded the case for a jury trial.

On rehearing, the panel of the Ninth Circuit reversed itself and held that the District Court was correct in ruling that there is no likelihood of confusion, but did so for different reasons. In so holding, the Ninth Circuit seemed to dispense with the Sleekcraft factors or a vast majority of the Sleekcraft factors, stating that it “is not particularly apt,” because it was developed for a different problem, “i.e., for analyzing whether two competing brands’ marks are sufficiently similar to cause consumer confusion.”

Here, Multi-Time argued that the design of Amazon’s search results page created a likelihood of initial interest confusion; that is, the issue focuses on a different type of confusion, not caused by a competitor’s mark, but by the design of a webpage that is displaying the competing marks and offering the competing products for sale. Setting aside the multifactor confusion test, the Ninth Circuit focused on the conduct of Amazon.com, as a non-competitor, clear labeling, and the arrangement and design of its webpage stating “the confusion is not caused by the design of the competitor’s mark, but by the design of the webpage that is displaying the competing mark and offering the competing products for sale.”

The panel went on to indicate that this “case can be resolved simply by an evaluation of the webpage at issue and the relevant consumer,” that is “(1) who is the relevant reasonable consumer?; and (2) what would he reasonably believe based on what he saw on the screen?”

First, the Ninth Circuit found that the goods in this case are expensive and that the relevant consumer is a reasonably prudent consumer accustomed to shopping online. In turning to the second question, the panel focused on labeling, stating that “clear labeling can eliminate the likelihood of initial interest confusion in cases involving Internet search terms,” however, instead of focusing on labeling that Amazon did not sell Multi-Time products in the prior appeal, the panel focused on the products themselves and whether they were clearly labeled.

Here, the panel stated, “the products at issue are clearly labeled by Amazon to avoid any likelihood of initial interest confusion by a reasonably prudent consumer accustomed to online shopping.” The Court further stated that products are labeled in bright, bold letters and includes a photograph of the item. Multi-Time argued that the use of “MTM special ops” three times within the page (produced as a result of the customer’s search term) could confuse customers, but the panel found that it would be unlikely, stating, “none of the watches produced are labeled with “MTM” or the phrase, “Special Ops.” Thus, the Court reasoned, the undisputed facts show that it is highly unlikely that a reasonably prudent consumer accustomed to shopping online would be confused as to the source of the goods offered for sale on Amazon’s web page.