City Attorney Owns Any Copyright in Computer Program
Plaintiff, an attorney in the Law Department of the City of Detroit (City), sued the City for infringement of his copyright in a computer program. Plaintiff developed the program using Professional File, a commercially available data management and programming application. Plaintiff's program was used by the City in managing litigation, and the City claimed a proprietary interest in it. Plaintiff withdrew his permission for use of the program by the City, registered a copyright, and sued the City for copyright infringement. The City defended on the grounds that (1) it owned the copyright as a "work made for hire," and (2) alternatively, the program was not a copyrightable work.
The court granted summary judgment for Plaintiff as to the work made for hire provision. Under the Copyright Act of 1976, a work made for hire is a work prepared by an employee within the scope of his or her employment. Under the Restatement 2d of Agency, §228, the work is within the scope of employment if it is the kind the employee is employed to perform, occurs substantially within the authorized time and space limits, and is actuated, at least in part, by a purpose to serve the master. Here, Plaintiff was an attorney and manager, not a computer programmer. He was not requested to develop software, and the program was not specific to the Law Department of the City. Thus, the program was not the kind of work Plaintiff was hired to perform. In addition, Plaintiff designed the program at home on his own time using a software package that he bought with his own funds. Accordingly, it was created outside the authorized time and space limits of his job.
However, an issue of fact remained as to whether the program reflected a sufficient level of creativity to qualify for copyright protection. The City contended that the program was simply a customized user interface of Professional File, adapting it for use as a case management system. Due to serious questions as to the nature and operation of the program, and how it was created, this issue could not be resolved by summary judgment.
John P. Quinn v. City of Detroit, Civil Action No. 96-40291 (December 11, 1997)(Gadola, Paul V.)(Docket No. 40, 29 pp.). This article was written by Ronald S. Longhofer, a partner in our Litigation Department, and previously appeared in the March 1998 edition of the Michigan Bar Journal.