Free Post Trial Brief - District Court of Federal Claims - federal

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No. 02-1622C (Judge Lawrence J. Block)

In the United States Court of Federal Claims
BLUEPORT COMPANY LLC Plaintiff, v. THE UNITED STATES, Defendant.

PLAINTIFF'S POST TRIAL BRIEF

KURT M. RYLANDER Attorney at Law MARK E. BEATTY Attorney at Law RYLANDER & ASSOCIATES PC 406 West 12th Street Vancouver, Washington 98660 Tel: (360) 750-9931 Fax: (360) 397-0473 Attorneys for Plaintiff

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TABLE OF CONTENTS Page TABLE OF CONTENTS ................................................................................................... i TABLE OF AUTHORITIES..............................................................................................iv SPECIFIC QUESTIONS.................................................................................................. 1 1. 2. Section 1498(b) Defenses and Jurisdiction .......................................................... 1 Substantive Merits of Section 1498(b) Defenses.................................................. 3 A. B. Position to order, influence, or induce the use of AUMD............................ 3 AUMD was not prepared as a part of the official functions of Davenport .................................................................................................. 7 (1) (2) (3) (4) C. Davenport's superiors did not consider programming part of his duties............................................................................ 10 Defendant denied Davenport's requests for programmer training...................................................................... 12 Davenport's high marks were not based on AUMD....................... 13 AUMD was not within Davenport's "scope of employment" ................................................................................. 13

No use of government time, material, or facilities to create AUMD ...................................................................................................... 16 (1) (2) Davenport created AUMD exclusively through his own resources ...................................................................................... 16 Suggestions are not government time, materials, or resources ...................................................................................... 18

3. 4. 5.

The protections of the copyrighted AUMD 2.1d extend to version AUMD 2.1f. ........................................................................................... 19 Was there an implied license to AUMD, anf if so, when did it terminate? .......................................................................................................... 21 Section 117 Defense. ......................................................................................... 23 A. B. The Air Force did not own their copies of AUMD ..................................... 24 Adapting AUMD copies was not an essential step in the

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utilization of the programs........................................................................ 26 C. 6. 7. The creation of the derivative work MARS was clearly not "necessary" to utilize copies of AUMD ..................................................... 27

Was the government's copying of the AUMD program a fair use under 17 U.S.C. § 107?...................................................................................... 28 To what extent are the AUMD program's screen displays protected expression under copyright law. The court asks the parties to specifically cite other cases examining graphical user interfaces and copyright protection. ........................................................................................... 29 To what extent the merger doctrine and scenes a faire are applicable in this matter. ...................................................................................................... 41 The appropriate amount of damages?................................................................ 43

8. 9.

CONCLUSION .............................................................................................................. 45

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TABLE OF AUTHORITIES Page United States Supreme Court Cases Community For Creative Non-Violence v. Reid, 490 U.S. 730 (1989)........................ 7,14 Engine Mfrs. Ass'n v. South Coast Air Quality Mgt. Dist., 541 U.S. 246 (2004) ................................................................................................................... 4 Fiest Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S. Ct. 1282, 113 L.Ed.2d 358 (1991)...................................................................................... 35 Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 105 S.Ct. 2218 (1985) ............................................................................................... 28 Park `N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) ..................................... 4 U.S. v. Gaubert, 499 U.S. 315, 113 L.Ed. 2d 335 (1991) ............................................ 1, 2 Federal Cases & Decisions A.B. Dick Co. v. Burroughs Corp., 798 F.2d 1392, 230 USPQ 849 (Fed. Cir. 1986)...................................................................................................... 12, 18 Apple Computer Inc. v. Microsoft Corp., 821 F. Supp 616 (N.D. Cal. 1993) aff'd 35 F.3d 1435 (9th Cir. 1994)..................................................................... 1, 2 Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994).................... 29, 42 Autoskill, Inc. v. National Educational Support System, Inc., 994 F.2d 1476 (10th Cir. 1993).............................................................................................. 32, 41 Autery v. U.S., 992 F.2d 1523 (11th Cir. 1993), cert. denied 114 S. Ct 1829 (1994) ................................................................................................................... 1 Aymes v. Bonnelli, 47 F.3d 23 (2d Cir. 1995)................................................................ 26 Belmore v. City Pages, Inc., 880 F.Supp. 673 (D.Minn.1995) ....................................... 28 Berman v. U.S., 565 F. Supp. 1353................................................................................. 2 Broderbund Software, Inc. v. Unisorn World, Inc., 648 F. Supp. 1127 (N.D. Cal. 1986) ........................................................................................................... 34 Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir. 1992) ................. 34, 35 Careau Group v. United Farm Workers, 940 F.2d 1291 (11th Cir. 1991) ........................ 3 Carlyle v. U.S., 674 F.2d 554 (6th Cir. 1982) ............................................................... 1, 2 Carson v. Dynegy, Inc., 344 F.3d 446 (5th Cir. 2003) .............................................. 21, 22 Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624 (C.A.7 (Ill.) 2003) cert. denied, 125 S.Ct. 54................................................................................... 28 CMAX/Cleveland, Inc. v. UCR, Inc., 804 F.Supp. 337 (M.D.Ga. 1992)..............................................................19, 20, 279, 29, 31, 38, 41

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CMS Software Design Sys., Inc. v. Info Designs, Inc., 785 F.2d 1246 (5th Cir.1986)....................................................................................................... 21, 23 Computer Access Technology Corp. v. Catalyst Enterprises, Inc., 2001 WL 34118030 (N.D. Cal. 2001) .......................................................................... 35 DSC Comm. Corp. v. Pulse Comm., Inc., 170 F.3d 1354 (Fed. Cir. 1999) . 23, 24, 25, 26 Eaton v. Dorchester Dev., Inc., 692 F.2d 727 (11th Cir. 1982)......................................... 3 Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1994)............................................................................................................ 34 Escholar, LLC v. Otis Educational Systems, Inc., 2005 WL 2977569, 76 USPQ2d 1880 (S.D. N.Y. 2005) ......................................................................... 36 Gates Rubber Co. v. Bando Chem. Ind., Ltd., 9 F.3d 823 (10th Cir. 1993) .............. 19, 20 Herbert v. U.S., 36 Fed. Cl. 299 (1996)..................................................... 8, 9, 13, 15, 16 Hess v. U. S., 537 F.2d 457 (Ct. Cl. 1976) .................................................................... 24 Hughes v. U.S., 71 Fed.Cl. 284 (Fed. Cl. 2006)............................................................ 12 Hughes v. U.S., 86 F.3d 1566, (Fed. Cir. 1996), reh'g en banc denied , cert denied and judgment vacated on other grounds 520 U.S. 1183 (1997) ................................................................................................................. 43 ILOG, Inc. v. Bell Logic, LLC, 181 F. Supp. 2d 3 (D. Mass. 2002) ................................ 37 Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527 (5th Cir. 1994), cert den'd 513 U.S. 820 (1994) ................................................... 19, 20, 35 Kiehn v. U.S., 984 F.2d 1100 (10th Cir. 1993) ................................................................. 2 Krause v. Titleserve, Inc., 402 F.3d 119 (2d Cir. 2005) ................................................. 24 Leesona Corp. v. U.S., 599 F.2d 958 (Ct.Cl. 1979)....................................................... 43 Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 34 USPQ2d (BNA) 1014 (1st Cir. 1995), judgment a'ffd by equally divided court, 516 U.S. 233, 133 L.Ed.2d 610 (1996) ...................................................................... 36 Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37 (D. Mass. 1990) ............................................................................................................ 36, 38 Lulirama Ltd., Inc. v. Axcess Broadcast Services, Inc., 128 F.3d 872 (5th Cir. 1997)............................................................................................................ 21 Laurence v. U.S., 851 F. Supp. 1445 (N.D. Cal. 1994) ................................................... 1 Madison River Mgt. Co., v. Bus. Mgt. Software Corp., 387 F.Supp.2d 521 (M.D.N.C. 2005) ................................................................................................. 26 Manufacturers Technologies, Inc. v. CAMS, Inc., 706 F. Supp. 984 (D. Conn. 1989)............................................................................................ 32, 33, 34 Martinez v. U.S., 740 F. Supp. 399 (D.S.C. 1990) .......................................................... 2 Matter of Government Acquisition of License to Employee's Invention, B199,026, 60 Comp. Gen. 248, 1981 WL 22453 (Comp. Gen. Feb. 11, 1981) .............................................................................................................. 5 Meyers v. U.S., 177 F.Supp. 952 (C.Cl. 1959) ................................................................ 8

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Meridian Project Sys., Inc. v. Hardin Constr. Co., 426 F. Supp.2d 1101 (E.D. Cal. 2006).................................................................................................. 42 Miller v. C.P. Chemicals, Inc., 808 F.Supp. 1238 (D.S.C. 1992) ....................... 13, 14, 15 Mitek Holdings, Inc. v. Ace Eng'g Co., Inc., 89 F.3d 1548 (11th Cir. 1996).................... 35 Playmedia Sys. Inc. v. Am. Online, Inc., 171 F. Supp. 2d 1094 (C.D. Call. 2001) .................................................................................................................. 21 Porter v. U.S., 619 F. Supp. 137 (S.D. Ohio 1985) ......................................................... 2 Prescott v. U.S., 973 F.2d 696 (9th Cir. 1992) ............................................................. 1, 2 Quinn v. City of Detroit, 988 F.Supp. 1044 (E.D. Mich. 1997) ........................... 13, 14, 15 Rockwell Automation v. U.S., 70 Fed. Cl. 114 (2006) ................................................... 23 Roeslin v. Dist. of Columbia, 921 F.Supp. 793 (D.D.C. 1995)........................... 13, 14, 15 Rogallo v. U.S., 475 F.2d 1 (4th Cir. 1973) ................................................................ 8, 15 Safe Air for Everyone v. Meyer, 373 F.3d 1035 (9th Cir. 2004)........................................ 3 Schalk v. Associates Anesthesiology Practice, 316 F. Supp. 2d 244 (D. Md 2004) .............................................................................................................. 3 Sega Enterprises, Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992).................. 26, 28 Stewart v. U.S., 199 F.2d 517 (7th Cir. 1952) .................................................................. 1 UMG Recordings v. Disco Azteca Distr., Inc., 2006 WL 2354791 (Slip Copy) (E.D. Cal. 2006) ....................................................................................... 22 U.S. v. North Carolina, 180 F.3d 574 (4th Cir. 1999) ....................................................... 3 Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1988) .................................. 26 Waymire v. U.S., 629 F. Supp. 1396 (D.Kan. 1986)........................................................ 2 Wechsberg v. U.S., 54 Fed. Cl. 158, 165-66 (Fed. Cl. 2002) ........................................ 43 Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir. 1986).......................................................................................... 33, 34, 38 Williamson v. Tucker, 645 F.2d 404 (5th Cir. 1981), cert denied 454 U.S. 897 (1981) ............................................................................................................ 2 Wright v. U.S., 56 Fed.Cl. 350 (Fed. Cl. 2003).............................................................. 43 Statutes, Regulations, and Rules 17 U.S.C. § 101............................................................................................................... 7 17 U.S.C. § 102(a) ........................................................................................................ 20 17 U.S.C. § 107............................................................................................................. 28 17 U.S.C. § 117........................................................................................................ 23-27 17 USC § 117(a) ..................................................................................................... 23, 24 17 U.S.C. §117(a)(1) ..................................................................................................... 23

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17 USC § 117(b) ........................................................................................................... 17 28 U.S.C. § 1498.................................................................................................... passim 28 U.S.C. § 1498(b) ............................................................................................... passim 28 U.S.C. § 1498(a) ........................................................................................................ 5 28 U.S.C. § 2680............................................................................................................. 1 Rules of the Court of Federal Claims 8(c) ..................................................................... 23 Secondary Authority 2 Melville B. Nimmer & David Nimmer, NIMMER ON COPYRIGHT § 8.08[B][1], 10:03[A] (1991)............................................................................................. 23, 26 RESTATEMENT (SECOND) OF AGENCY § 228 ................................................................. 7, 14 WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1981) .......................... 4

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PLAINTIFF'S TRIAL BRIEF COMES NOW Plaintiff and submits this, its Post Trial Brief, in accordance with the Court's Order dated August 10, 2006. SPECIFIC QUESTIONS 1. Section 1498(b) Defenses And Jurisdiction The defenses in 1498(b) are very similar in effect to the discretionary function exception to jurisdiction in the Federal Tort Claims Act (FTCA). See 28 U.S.C. § 2680. The treatment of that exception guides this Court on how the 1498(b) defenses should be treated here. The discretionary function exception is jurisdictional. U.S. v. Gaubert, 499 U.S. 315, 113 L.Ed. 2d 335 (1991). However, the government bears the burden of proving the discretionary function exception. Prescott v. U.S., 973 F.2d 696, 701-02 (9th Cir. 1992); Laurence v. U.S., 851 F. Supp. 1445, 1450 (N.D. Cal. 1994) (citing Prescott); see also Autery v. U.S., 992 F.2d 1523, 1526 (11th Cir. 1993), cert. denied 114 S. Ct 1829 (1994); Carlyle v. U.S., 674 F.2d 554, 556 (6th Cir.1982); Stewart v. U.S., 199 F.2d 517, 520 (7th Cir.1952). All circuits to address the issue have concluded that the burden of proving the discretionary function exception lies with the government. Prescott, 973 F.2d at 701; Carlyle, 674 F.2d at 556; Stewart, 199 F.2d at 520; Autery, 992 F.2d at 1526. "Only after a plaintiff has successfully invoked jurisdiction by a pleading that facially alleges matters not excepted by § 2680 does the burden fall on the government to prove the applicability of a specific provision of § 2680." Carlyle, 674 F.2d at 556 quoted in Prescott, 973 F.2d at 702 n. 4. In Prescott, the court addressed, among other things, the burden of proof on the jurisdictional defense, the discretionary function, under the FTCA. Under the FTCA, the plaintiff can only invoke jurisdiction if the complaint is outside of the exceptions of

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Section 2680, which includes the discretionary function exception. Id. at 701-702. This does not require the plaintiff to disprove every exception. Id. If the plaintiff has facially plead matters that do not fall within the exception, the burden falls upon the government to prove the applicability of a specific provision. Id. (a contrary result "would border on the preposterous"); accord Carlyle, 674 F.2d at 556; Martinez v. U.S., 740 F. Supp. 399, 401 (D.S.C. 1990); Berman v. U.S., 565 F. Supp. 1353, 1404-05; contra. Waymire v. U.S., 629 F. Supp. 1396, 1397 D.Kan. 1986); Porter v. U.S., 619 F. Supp. 137, 142 (S.D. Ohio 1985). The Ninth Circuit in Prescott specifically examined Gaubert, in which the Supreme Court appeared to impose the burden on the tort plaintiff to show that the government's conduct is not protected under the discretionary function exception. Gaubert, 111 S. Ct. at 1274-75. The Ninth Circuit, in Prescott, held that Gaubert does not conflict with its ruling that the government bears the burden of proof because Gaubert requires plaintiffs only to allege facts sufficient to state a claim under the FTCA, but does not deal specifically with the burden of proof issue. Prescott, 973 F.2d at 702 n. 4. The Tenth Circuit questioned the approach taken in Prescott, but has not made a formal ruling on the issue. Kiehn v. U.S., 984 F.2d 1100, 1105 n. 7 (10th Cir. 1993). Moreover, a separate doctrine further underscores placing the burden of establishing the defenses on the Government. Where the government's challenge to jurisdiction implicates the elements of the plaintiff's cause of action, i.e., where the "jurisdiction is so intertwined with the merits that its resolution depends on resolution of the merits", the trial court should find that jurisdiction exists and deal with the challenge as a direct attack on the merits of the plaintiff's case, for purposes of judicial economy. Williamson v. Tucker, 645 F.2d 404, 415-16 (5th Cir. 1981), cert denied 454 U.S. 897

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(1981); Careau Group v. United Farm Workers, 940 F.2d 1291, 1293 (11th Cir. 1991); Eaton v. Dorchester Dev., Inc., 692 F.2d 727, 734 (11th Cir. 1982); Schalk v. Associates Anesthesiology Practice, 316 F. Supp. 2d 244, 248-49 (D. Maryland 2004); U.S. v. North Carolina, 180 F.3d 574, 580-81 (4th Cir. 1999); Safe Air for Everyone v. Meyer, 373 F.3d 1035, 1039-40 (9th Cir. 2004) 2. Substantive Merits Of Section1498(b) Defenses Plaintiff has met the burden of proof to overcome the § 1498(b) defenses, regardless of whether they are jurisdictional or merely affirmative defenses. The

evidence presented at trial by Plaintiff established that: (1) Mark Davenport was a junior enlisted person not in a position to order or influence decisions on the adoption of his AUMD software, nor the derivative work MARS; (2) he did not induce the Air Force to use the AUMD or MARS software, but its use spread by actions of his superiors and word of mouth due to superior performance; (3) software programming was never a type of work that was part of his's official functions or duties; and, (4) he did not use government time, materials or facilities to create the AUMD software. A. Position to order, influence, or induce the use of AUMD. As a junior enlisted person Davenport was never in a position to order, influence or induce the use of his software. He was a Technical Sergeant in the Air Force, a Manpower Specialist, paygrade E-6, when he created the AUMD programs at issue in this suit in May of 1998. Tr. 91, 470. He retired at the same paygrade in 2001 after twenty years of service. Tr. 429,; Pl. Exh. 94. The most junior Manpower

Specialists were paygrade E-5, only one paygrade below Davenport. Tr. 63, 465, 471. His official position during that time was a Manpower Data Manager in the Pacific Air Force Command (PACAF). Tr. 74-5. At no time was Davenport a reporting senior over

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anyone, nor was he a direct supervisor over anyone.

Tr. p75.

Davenport did not

possess contracting authority to issue or modify contracts, although he was occasionally responsible for monitoring existing contracts. Tr. 82; Pl. Exh. 101. "Statutory construction must begin with the language employed by Congress and the assumption that the ordinary meaning of that language accurately expresses the legislative purpose." Engine Mfrs. Ass'n v. South Coast Air Quality Mgt. Dist., 541 U.S. 246, 252-3 (2004) (citing Park `N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, (1985)) (using ordinary dictionary to define words of statute according to their ordinary meaning). Nothing in the text of 28 U.S.C. § 1498 indicates other than the ordinary meaning for the terms "order, influence, or induce." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1981) defines "order" as (in relevant part): "2a: to issue commands : COMMAND... b: to give or place an order." WEBSTER'S at 1588. Similarly, "influence" is defined as: "1: to affect or alter the conduct, thought, or character of by indirect or intangible means: SWAY... 2: to have an effect on the

condition or development of : determine partially : MODIFY... 3 obs: INDUCE, INFUSE..." WEBSTER'S at 1160. And "induce" is defined as: "1a: to move and lead (as by persuasion or influence)...: prevail upon: INFLUENCE, PERSUADE... [1b]: to inspire, call forth, or bring about by influence or stimulation..." WEBSTER'S at 1154. The clear implications of the ordinary meanings of "order, influence, or induce" are therefore to require a position of decision making authority, or to actively exert pressure to overcome opposition. All the evidence presented at trial demonstrates that Davenport did not do this ­ in fact quite the opposite was demonstrated. These words should not be interpreted to deny compensation to low level government employees for

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work outside their expected duties, for which they have not received compensation through salary or benefits commensurate with the work. officially agrees with Plaintiff's interpretation. The Air Force explained its position concerning this very language previously in the context of 28 U.S.C. § 1498(a) (a subsection with an identical provision). In Matter of Government Acquisition of License to Employee's Invention, B-199,026, 60 Comp. Gen. 248, 1981 WL 22453 (Comp. Gen. Feb. 11, 1981), in response to an inquiry about the propriety of a licensing agreement between an Air Force employee (Mr. Jeffers) and the Air Force, the Comptroller General stated that a licensing agreement would not be proper if the employee was in a position to order, influence or induce use of an Ironically, the Air Force

invention, but that if the "employee can be insulated from decision to use patented device...the Air Force may enter into the licensing agreement. Id. at 248. The Comptroller General explained: "The purpose of Section 1498 is to prevent an employee who is in a position to order, influence or induce the government to use his invention and thus infringe his patent from successfully suing the government for patent infringement. *** The issue as we see it is whether the inventor can be insulated form the decision making process. We have no objection to his assisting in the testing and use of the invention if he is in no way in a position to determine whether, or how many, items involving his patent are procured." Id. at 251. Just as Mr. Jeffers' case, above, Davenport was never in a decision making position where he could determine, or even affect, the outcome of a decision to adopt or reject a license for the AUMD software. He was never in a position to order anyone to use the AUMD software. He was not even the ranking enlisted person in his work group, much less of sufficient rank to give orders to Manpower Specialists throughout the Air Force. Davenport provided copies personally when requested, but was not in

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charge of those he provided copies to and did not force or encourage them to do so. The reason AUMD became widely used was that it was so effective, not because Davenport promoted it. Glendon Hendricks, a Defense witness described AUMD as "Very slick. Very good." Tr. 890. Col. Manning and Maj. Meaker testified that it was Davenport's superiors and other senior officers who actually promoted the distribution of AUMD due to its superior qualities. Tr. 504-7 ; id. ("Q. Now, to your knowledge, at any time when Technical Sergeant Davenport was in your chain of command was he trying to get people to use the program who didn't want to? A. No, he was not."). Maj. Meaker, a Defense witness, corroborated the fact that Davenport's seniors, his chain-ofcommand, were the source of pushing distribution of the AUMD software, not Davenport. Tr. 794-6. Being "helpful" to senior officers who are trying to distribute your software is not to "order, influence, or induce." This was a pull-system, where people requested from Davenport, not a push-system where Davenport campaigned for implementing AUMD. Mr. Hendricks' testimony did not contradict this. Any knowledge that Mr. Hendricks had relating to how the AUMD software came to be distributed was not certain at best, and based on second hand knowledge and assumptions. Even where Davenport presented the programs at the San Antonio "conference of colonels," it was at the direction of his superiors or the requests of others, not at his own initiative or request, and so acts of inducement or influence cannot be attributed to him. Col. Manning testified that TSgt Davenport was "invited" to a Manpower annual conference by a Col. Jensen from the Air Education and Training Command (AETC), but that as a junior enlisted person Davenport was not in a position to refuse the invitation. Tr. 508-11. Col Jensen requested Davenport's presentation because Jensen

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had seen the software in operation and was impressed by its efficiency ­ not because Davenport had contacted the Colonel. Tr. 506-7. Davenport also testified that he made presentations on AUMD at several air bases during visits scheduled for training on MDS, but only at the request of the recipients and not of his own initiative. Davenport participated un the Manpower User Group, or "MUG", but he testified that the MUG was merely a group that passed requests or wish lists up to the decision makers. Tr. 115-16. At some point it appears that MUG evaluated AUMD to determine if it should be adopted as an official program ­ this was rejected. Tr. 116-18; Pl. Exh. 110c. However, if MUG did evaluate Davenport's AUMD software, then Davenport was not a part of that ­ he was not even aware that this had happened. Tr. 116-20; Pl. Exh. 110C; Pl. Exh. 138. Mr. Hendricks' testimony did not contradict Davenport's testimony on these points. Clearly, this would not amount to "influence" or "inducement". B. AUMD was not prepared as a part of the official functions of Davenport. Whether a copyrighted work was prepared as a part of the official functions of a government employee is a question of fact. The analysis of the "official functions" defense is analogous to, but narrower than, the analysis of the "work made for hire" doctrine in the Copyright Act. 17 U.S.C. § 101 (definition of work made for hire: "a work prepared by an employee within the scope of his or her employment.") The Supreme Court has held that courts should look to common law agency principles, as delineated in the RESTATEMENT (SECOND)
OF

AGENCY § 228, to determine whether a

person is an "employee" under 17 U.S.C. § 101, based on the assumption that Congress intended to use the term according to its ordinary meaning. See Comm. For Creative Non-Violence v. Reid, 490 U.S. 730, 739-40 (1989). However, courts have not

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looked to general principles of agency law to interpret the term "official functions" used in 28 U.S.C. § 1498. See Herbert v. U.S., 36 Fed. Cl. 299, 305-6 (1996) (scientist employed to do research); Meyers v. U.S., 177 F.Supp. 952, 955 (C.Cl. 1959) (aeronautical engineer assigned to research and development tasks); Rogallo v. U.S., 475 F.2d 1, 2-3 (4th Cir. 1973) (engineer employed for research and development). Common law agency principles are not needed in this context because the government ­ especially in the case of the Air Force ­ provides clear definitions of an employee's "official functions." Civilian employees in business may tend to have

undefined or poorly defined duties, necessitating a more general approach. Congress, in enacting § 1498(b), could have made reference to the "work for hire" definition but chose instead to use more narrow and specific language by referring to works "prepared as a part of the official functions of the employee." 28 U.S.C. § 1498(b). The Air Force publishes detailed training and performance requirements for its members. See Pl. Exhs. 60, 63A & 63B (defining duties and responsibilities for Manpower AFSC's); Pl. Exhs. 59 (defining requirements for "V" prefix on AFSC); Pl. Exhs. 65 & 66 (Career Field Education and Training Plans (CFETP) for Manpower field). These publications are considered official Air Force policy by Air Force personnel, and are used for planning, budgeting, training, and manpower distribution purposes. Pl. Exh. 65, at Part I, ¶ 1 (Pl. Exh. 66 uses identical language) (CFETP). CMS Dant explained the CFETP as the "job description" for the Manpower field. Tr. 480. The Air Force's policies define the "official functions" of a Manpower Specialist, paygrade E-6, not common law principles. The leading case on this issue is Herbert v. U.S., 36 Fed.Cl. 299, (Fed. Cl. 1996). Herbert is more telling in the differences than any similarities. In Herbert, the Plaintiff

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was a member of the Committee on Dietary Allowances (the Kamin Committee) specifically empanelled to produce the 10th Edition of the Recommended Daily Allowances (10th RDA) that the Government had contracted the National Academy of Sciences to produce. Id. at 302. Dr. Herbert's primary duties were "research, teaching, and patient care" as the director of the Hematology and Nutrition Laboratory at the Bronx Veterans Administration Hospital, a Federal facility. Id. at 305. Dr. Herbert's supervisors testified that his specific duties included "conducting research in his field of expertise and publishing the results." Id.. The court found that even if the specific research task had not been assigned by the Government, the fact that Herbert's primary duties included research, the subjects of which could be chosen at his discretion, meant that any research which was even related to his employment at the VA was part of his official functions. Id. at 306. The Herbert court emphasized the fact that Herbert's colleagues viewed their own work on the Kamin Committee as part of their official government duties. Id.. Not only was Herbert a research scientist in the employment of the VA, but Herbert's work on the Kamin Committee was under a government contract specifically intended to generate the RDA guidelines which Herbert produced, and which were the subject of the infringement action. Id. Additionally, the court specifically found that Herbert's superior performance evaluations, awards and promotions were based in large part on his research work generally, and his work for the Kamin Committee in particular. Id. at 305. The present case is markedly distinguishable. Davenport was a data operator, and his duties did not in any way involve computer programming or research. Every witness with knowledge of Davenport's official duties testified that they did not consider

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programming part of Davenport's duties, and that they considered his AUMD software to be his personal work. 1 Additionally, the Air Force denied Davenport training in

programming based on his official functions. (1) Davenport's superiors did not consider programming part of his duties. CMS Dant's testimony was particularly noteworthy. CMS Dant is one of the most senior enlisted personnel in the Manpower community, with over 21 years of experience in the field, and is now the Enlisted Career Field Manager for the Manpower community ­ i.e. he is responsible for producing the CFETP and other documents defining the duties and responsibilities of Manpower Specialists. Tr. 475, 479-80. CMS Dant, therefore, possesses a uniquely authoritative perspective on the expected duties of other enlisted personnel in the Manpower community. Tr. 474-5, 479-81. He testified, from his 21 years of experience and his supervisory experience, that soneon in Mr. Davenport's career field, "V" or otherwise, would never be exepeced to write software programs for use by Manpower--that that is something done by the dedicated programmers with different AFSC. Tr. at 479-82. Also telling is Dant's

testimony regarding his own skills, that he didn't have the ability to program. Tr. 472-3. There was no hesitation in his response ­ he didn't know how to program and he was never expected to know how to program. Id. Not only was programming not a part of Davenport's official duties, but none of his superiors ever ordered Davenport to produce the programs, nor would they have felt it was their place to do so. Tr. 474.

Keohane's Expert Report, Def. Exh. 44, throws out an opinion relating to official functions. However, Keohane has no expertise in this area, his voire dire did not indicate any experience in military personnel matters, and Defendant represented in response to Plaintiff's objections to this portion of Keohane's report that Defendant would not rely on Keohane's opinion in this matter as evidence. It should be given, and is entitled to, no weight whatsoever.

1

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Even the Government's own witnesses, Maj. Meaker and Glendon Hendricks, supported the Plaintiff's case. Maj. Meaker testified that he did not believe it was his place to direct Davenport, then a Technical Sergeant of paygrade E-6, to add features or fix problems related to the AUMD software, because it was considered Davenport's personal work. Maj. Meaker merely "asked", and TSgt Davenport was free to decline: "... if he said no, you know, this was never something that I saw as something that he had to do. And I always did it asking him, you know, do you think you can make this change, or is it too hard." Tr. 805. If the commissioned officers in Davenport's direct chain of command believed a project was part of an enlisted person's official duties they would have had no hesitation in directing him to perform those duties. Mr. Hendricks, a Defense witness, did not contradict this testimony. Although Mr. Hendricks testified that many personnel donated their work to the Air Force as part of various projects, he did not testify that this was a requirement. Further, he related that these were projects initiated at the Air Force's request, and that these efficiency improvement projects were then turned over to an "programming shop" to develop into software for distribution. Tr. 853. Mr. Hendricks referred again, later, to the fact that personnel within the Air Force Manpower community were specifically designated and trained to do computer programming work. Tr. 858. Mr. Hendricks' testimony thus emphasizes the fact that Davenport's work was not part of his official duties: the AUMD was initiated by Davenport without direction; Davenport did all programming; Davenport was not listed as a computer programmer by the Air Force; other software development projects were developed by "engineering shops" with personnel trained in software; when the Air Force decided to develop a derivative program from AUMD they selected a

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software development contractor ­ not a Manpower Specialist from the Air Force. CMS Lucky was listed as a defense witness on the issue of Davenport's official job functions but was not called by Defendant, although present in the courthouse. The Court can infer that his testimony would have been harmful to the defense or they would have called him, because he was a witness listed by the defense, and as a member of the Armed Forces in the unique control of the Government. A.B. Dick Co. v. Burroughs Corp., 798 F.2d 1392, 1400 n. 9 (Fed. Cir. 1986) ("When a party knows of witnesses on a material issue and they are within his control to produce, if the party chooses to not call the witnesses, the fact finder may draw the inference that the testimony would have been unfavorable."); Hughes v. U.S., 71 Fed.Cl. 284, 304 (Fed. Cl. 2006). (2) Defendant denied Davenport's requests for programmer training. Davenport's requests for programming training were denied by the Air Force, which is further support that programming was not part of Davenport's official functions. Davenport testified that he requested training on multiple occasions, through different supervisors, but was denied each time because, as explained by CMS Ralph Jones (at the time a Senior Master Sergeant (SMS)), Davenport was a Manpower person, not a programmer, and since programming was not part of his AFSC the Air Force would not spend the money. These denials occurred when Davenport was assigned to Gunter Annex (later Gunter Air Force Base) as a Manpower functional assisting the development of the MDS system. Tr. 72-3. Davenport's testimony on this is corroborated by CMS Jones' later emails which expressed frustration that Davenport had developed an alternative program in competition with the official Air Force system. Tr. 894; Def. Exh. 7 ("In addition, I am concerned that you have assumed the

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unenviable role of operating in essence an ad hoc reports and query `hobby shop' for the Manpower Community." Pl. Exh. 7, p. G000104.) Davenport went ahead and taught himself how to program by purchasing software and books with his own money, and spending his personal off-duty time learning to program: "Just a hobby. I liked it. I enjoyed it." Tr. 74. Davenport was motivated to write AUMD in order to learn to program, and chose a practical real-world application to make it a more effective learning tool. Tr. 93. Davenport learned on his own initiative, his own time, with his own money ­ now the Air Force wants to claim he was a programmer all along and take possession of his hard work for free. The Air Force wants it both ways ­ the law says they cannot do that. (3) Davenport's high marks were not based on AUMD. The defenses' own witness, Maj. Meaker, testified that Davenport would have received the highest marks regardless of his work on AUMD ­ because he was a stellar performer. Tr. 801. This is distinguishes Herbert, where the court found it important that Herbert's supervisors testified that his high performance evaluations and advancement were predicated on his research work and his work for the Kamin Committee ­ the subject of the infringement claim - in particular. Herbert, id. at at 306. (4) AUMD was not within Davenport's "scope of employment." The "work made for hire doctrine" of the Copyright Act (17 U.S.C. § 101) is similar to, although not coextensive with, the "official functions" analysis under section 1498. Courts look to the common law of agency to determine the scope of employment in such circumstances. Roeslin v. Dist. of Columbia, 921 F.Supp. 793, 797-8 (D.D.C. 1995); Quinn v. City of Detroit, 988 F.Supp. 1044, 1051 (E.D. Mich. 1997) (citing Roeslin and Miller v. C.P. Chemicals, Inc., 808 F.Supp. 1238 (D.S.C. 1992)).

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RESTATEMENT (SECOND)

OF

AGENCY § 228, which the Supreme Court relied upon in

Community for Creative Non-violence, supra, defines a three-part test: "(1) Conduct of a servant is within the scope of employment if, but only if: (a) it is within the kind he is employed to perform; (b) it occurs substantially within the authorized time and space limits; and (c) it is actuated, at least in part, by a purpose to serve the master." (emphasis added). All three elements must be present to deny the Plaintiff. Both Roeslin and Quinn are especially instructive in the present case, if the Court looks to work-made-for-hire as analogy, because both involved government workers ­ albeit city workers. In Roeslin the court found the copyrighted software, written by an economist with a college degree working on salary, was not a work made for hire. "[D]eveloping computer software is not the kind of work plaintiff was employed to perform. Plaintiff was hired as a labor economist, not as a computer programmer. There is no reference in his job description to computer programming; nor was his supervisor aware of whether plaintiff had any programming skills when he was hired. Plaintiff was hired to improve certain aspects of the CES survey [relating to employment statistics] and develop projections based on that survey. He was not hired to create a computer program that would assist the entire office and receive, process, and transmit the survey results." Roeslin, 921 F.Supp. at 799. Similarly, in Quinn (again a professional with advanced degree) the court found that the first and second prongs of the test were not present. "Quinn was an attorney and a manager for the City's Law Department. His job description did not require him to create computer software, his employer never requested him to develop software, Quinn had no prior computer programming experience and in fact, the City had its very own computer programming department to do programming of the type Quinn decided on his own to do." Quinn, 988 F.Supp. at 1051. Quinn specifically distinguished this from Miller, where all three prongs were found present. Particularly, the Quinn court noted that in Miller, the employee "was a supervisor responsible for organizing and updating a laboratory at CP Chemical, Inc." Quinn, 988 F.Supp. at 1050. Additionally the court noted that, "In

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Miller, the employee was specifically requested by his employer to computerize the quality control laboratory of which he was in charge..." Quinn, 988 F.Supp. at 1051. Both Quinn and Roeslin, and Miller as well, are basically in accord with cases such as Herbert, Meyers, and Rogallo which interpreted section 1498. In each of these cases infringement claims were denied where the plaintiffs were engineers or scientists engaged for the purpose of research, Herbert, Meyers, Rogallo, or in supervisory roles, Miller, or assigned specifically to produce computer programs, Miller. However, claims were not denied where personnel were working outside of their job descriptions, Roeslin, Quinn, where they had never been tasked with that type of work, Roeslin, Quinn, and where they had actually been discouraged from learning and doing programming work, Roeslin. In this case, while Plaintiff concedes that Davenport's program was created primarily as a personal project to learn and develop programming skills, he was secondarily motivated to develop the programs in an effort to improve efficiency in the Manpower community. However, the first two prongs are completely lacking here.

Davenport, as established by all of the evidence, was not a programmer nor was he expected or desired to be a software developer. The Air Force, and particularly the Manpower community, had its own separate programming shops. Davenport was

discouraged from learning to program. Beyond this, the evidence was conclusive that none of the work on AUMD was conducted during work hours, or using government time material or facilities (see discussion below). This was uncontradicted by

Defendant. Thus, if the Court looks to work-made-for-hire law as an analogous guide in the present case, the conclusion is clear: Davenport's work would not be considered a

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work-made-for-hire. In short, all of the evidence demonstrates that AUMD was not created as part of Davenport's official functions or duties, regardless of who carries the burden on this point, and Defendant has produced no evidence which rebuts Plaintiff's evidence. Therefore, AUMD was not created as part of Davenport's official functions or duties. C. No use of government time, material, or facilities to create AUMD. Plaintiff produced substantial evidence at trial that no government time, material, or facilities were used in the preparation of the AUMD programs. Defendant produced no evidence to directly rebut this. (1) Davenport created AUMD exclusively through his own resources. Testimony at trial was that Davenport programmed AUMD only at home, on his personal time. Davenport was adamant on this point and his testimony was corroborated by senior Air Force personnel with direct knowledge of the circumstances. Again, this case is distinguishable from Herbert. There, the court found that Dr. Herbert conducted all of the relevant research and actually wrote the guidelines within government facilities ­ i.e. his office at the Bronx VA. Herbert, 36 Fed. Cl. at 306. The court did not find that Herbert did any creative work outside the physical boundaries of the government facilities. Id. And, again, the court looked specifically to the time "during their creation", i.e. the "preparation of his 10th RDA writings." Herbert, 36 Fed. Cl. at 307. Here, Davenport testified that he developed and tested his AUMD software at all times at home, without any government data, by creating a dummy database with fake data. Tr. 99 & 100-102. Davenport did not have any connection to government databases while developing the AUMD software at home. Tr. 99. The testimony of CMS Dant and Col. Manning both support Davenport's

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testimony, and nothing else contradicted this. CMS Dant testified that during his time working with Davenport he was in frequent and close contact with Davenport throughout the day: they worked in shoulder-high cubicles; their desks were within 10-15 feet of one another; Dant passed by Davenport's desk approximately "30-40 times a day", and that he was sure Davenport did not develop AUMD while at work. Tr. 469, 474 & 479. Col. Manning also testified that to his knowledge all of the development and programming of the AUMD software was done by Davenport at home and not on government computers: Tr. at 503, 518-19. Mr. Hendricks did not contradict Davenport's testimony regarding use of government time, material, or facilities. For one thing, Mr. Hendricks' recollection of dates versus computer programs was fuzzy at best. He recalled a Mr. Jerry Hayes calling him in 1997 to request a "data extract" to send to Mark Davenport, "And that's how we, how it worked out that knew [sic] that Mark was working on a program doing different things." Tr. 876. However, Mr. Hendricks was not sure of the year, and was not clear as to the use for this extract and the date indicates that if it was actually for any program developed by Davenport it was the "Net Worth" program ­ which Davenport donated to the Air Force. Tr. 911; 89-90; Pl. Exh. 101 page 100030. Other witnesses corroborated Davenport's testimony that the AUMD did not come into existence until spring of 1998 at the earliest. Later Hendricks also confused

Davenport's IDEA suggestion to use ODBC drivers rather than the Oracle product, for cost savings, with Davenport's AUMD software. Tr. 884-86 & 893. Other evidence presented made clear that Davenport never submitted AUMD for an IDEA award, but rather he submitted an IDEA for using ODBC drivers in place of Oracle Discovery

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drivers. Tr. 134-5, 892-4; Pl, Exh. 136; Def. Exh. 6. Mr. Hendricks also testified that he thought Davenport presented AUMD to a Manpower Users Group meeting, but Mr. Hendricks did not testify that he was present, and this was simply what he assumed. Tr. 883. Thus, his testimony on this point must be discounted. Again, the defense listed CMS Lucky as a witness concerning "whether government time, material, and/or facilities were used in the preparation of the AUMD program." CMS Lucky, a witness uniquely in the control of the defense, was present in the courthouse but not called by the defense. The Court should infer therefore, that his testimony would have been that NO government time, material, and/or facilities were used in the preparation of the AUMD program. A.B. Dick Co., 798 F.2d at 1400. The mere fact that Davenport used his general knowledge gained through work to create the dummy database at home does not translate into use of government facilities or resources. Davenport's brain is not a government facility. Further, this clearly excludes the development of the MARS software and infringing activities after May 15, 2000, using modified copies of AUMD, from the defenses, since these occurred when Davenport was either officially excluded from participation or after he had retired. (2) Suggestions are not government time, materials, or resources. Defendant pointed out that many Air Force personnel made suggestions for features to Davenport and many of those features were incorporated by Davenport. However, suggestions are just that­suggestions. Each witness who testified to suggestions made clear that Davenport decided what features would be incorporated, that Davenport did all the programming, and that Davenport did this programming on his own time rather than at work. See, e.g., Tr. 468, 471-73. Additionally, Defendant never once pointed out a specific feature that was incorporated due to the input of any person

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other than Davenport himself. It was Defendant's burden to establish what those were and how they related to protectable portions of the copyrighted work. Beyond this, even if some Air Force personnel provided suggestions for functions, it was Davenport who selected those features and Davenport who determined how to convert those functions into expressive content ­ which is what is protected under the Copyright Act. Based on all of the evidence presented at trial the only possible conclusions are that: (1) Davenport was not in a position to order, influence, or induce the offending use of AUMD­and in fact he did not; (2) computer programming was not part of Davenport's official functions; (3) government time, materials, or facilities were not used in the development of AUMD; and (4) even under common law analogy to work-made-for-hire doctrine, AUMD was not within the scope of Davenport's employment. 3. The protections of the copyrighted AUMD 2.1d extend to version AUMD 2.1f The proper question is not merely whether the protections of 2.1d extend to 2.1f, but rather whether the protected elements of 2.1d alleged to have been copied were present in 2.1f in order to provide a comparison. The answer is yes. Gates Rubber Co. v. Bando Chem. Ind., Ltd., 9 F.3d 823, 832 (10th Cir. 1993). See also Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 532-33 (5th Cir. 1994) (affirming copyright infringement based on derivation from third party copies of licensed extracts of copyrighted work); cert den'd 513 U.S. 820 (1994); CMAX/Cleveland, Inc. v. UCR, Inc., 804 F.Supp. 337 (M.D.Ga. 1992) (finding infringement from copying and derivation from lawfully obtained copies of software). Copyright inheres at the moment that creative expression is fixed in a tangible medium of expression so distributing copies of a work which lawfully contains all or part of a registered copyrighted work (i.e. AUMD version 2.1f), along with proper copyright notice, does not extinguish the underlying copyright in

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the original work. 17 U.S.C. § 102(a). Thus, if a subsequent publication includes both the original work plus additional unregistered material, which can be segregated and is not subject to suit, then the court is able to compare the copyrighted work to the accused work. Indeed, as Gates, and other cases make clear, the court need only compare the accused portions­the entire work does not need to be infringed. Kepner and CMAX are instructive. In Kepner the issue was whether a computer program developed licensed training manuals could infringe the copyrights of the original software from which the manuals were derived. The answer was YES ­ it did not matter whether the copied content came from the original work or a licensed derivative of the original work ­ it was still copying portions of the original. Kepner, 12 F.3d at 532. In CMAX the defendants decided to use copies of software they had obtained lawfully to create a replacement program when their relationship with the software supplier soured. The court there held that the fact that defendant UCR copied only portions of the copyrighted software, including the screens and data structures, did not negate infringement. CMAX, 804 F.Supp. at 356-7. Other courts agree that

infringement may be found through copying only a portion of the protected work­so long as that portion encompasses protected expression. See e.g. Gates Rubber, above. In the present case, Defendant seeks to escape liability by claiming somehow that if they copied the screens from version 2.1f rather than 2.1d then this did not infringe the copyright of 2.1d. Davenport testified that the 2.1d and f were virtually identical, the only difference being additional Visual Basic code in 2.1f. There was some dispute at trial as to how much code was added, but this is essentially irrelevant. Plaintiff conceded that the Visual Basic code was not directly copied ­ it was reverse

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engineered by comparison of operations. However, the screens, data tables, and data table structures ­ the heart and soul of the AUMD programs ­ were directly copied (even Defendant's expert agreed on this point). Tr. 148, 1038-1042; Pl. Exh. 111, ¶ 2.4. The screens from 2.1D and F are the same. Tr. 171-193. Therefore, comparison of the screens in 2.1F provides the exact direct comparison for the screens in 2.1D ­ the registered software version. The screens and data structures are the issue ­ they are the essence of the program, providing the interface for the ordinary observer, and the main expressive content of the program. The Visual Basic code is just the plumbing. 4. Was there an implied license to AUMD, and if so, when did it terminate? Defendant bears the burden of proving the existence of any license as an affirmative defense to infringement, and if such existed, whether the license was irrevocable. Carson v. Dynegy, Inc., 344 F.3d 446, 451 (FN5) (5th Cir. 2003) (citing Lulirama Ltd., Inc. v. Axcess Broadcast Svcs, Inc., 128 F.3d 872, 884 (5th Cir. 1997) and CMS Software Design Sys., Inc. v. Info Designs, Inc., 785 F.2d 1246, 1248 (5th Cir.1986)). Such a license arises when: "(1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes the particular work and delivers it to the licensee who requested it, and (3) the licensor intends that the licensee-requestor copy and distribute his work." Id. Moreover, a non-exclusive license is fully revocable as a matter of law where it is not supported by consideration. Lulirama, 128 F.3d at 884 (omitting numerous citations). Copyright licenses are interpreted narrowly. Playmedia Sys. Inc. v. Am. Online, Inc., 171 F. Supp. 2d 1094, 1099 (C.D. Call. 2001). Copyright licenses are presumed to prohibit any use not expressly authorized. Id. at 1099. Here, the evidence was conclusive that Davenport was never requested to create AUMD so no implied license existed. Even if we assume a license existed it was fully

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revocable because it was not supported by separate consideration ans so must have expired as of May 15, 2000 (which is the date that the copies of the AUMD software expired, which Defendant acknowledged they had actual knowledge of, and the date that Blueport expressly declared to be the cutoff). Pl. Exh. 57. Beyond this, any

suggestion that the Air Force had a license to develop the derivative work called MARS is simply ludicrous and is not supported by any evidence whatsoever. No consideration was paid to Davenport. The Air Force never paid a dime to Davenport or Blueport for the software. Davenport's continued employment in the Air Force was based on an Enlistment Contract that was neither related to nor dependent upon production of any software, and as such simple continuation in employment cannot be construed as consideration. Carson v. Dynegy, Inc., 344 F.3d at 451. In fact, Davenport's promotion and progress within the Air Force did not depend on production of any software either, and any such claim lies with Defendant to prove. Davenport was not given promotion or pay raise based on the program, even if it was mentioned in his evaluations. First, Davenport was not promoted. Major Meaker also testified that Davenport would have received the same top rankings regardless of whether he wrote or distributed the AUMD software due to his superior technical skills, positive attitude, and team spirit. Tr. 800-801. No other witness testified otherwise. Therefore, if an implied license for use of the software existed prior to May 15, 2000, it was fully revocable because it was not supported by consideration. UMG Recordings v. Disco Azteca Distr., Inc., 2006 WL 2354791, 11 (Slip Copy) (E.D. Cal. 2006); NIMMER at 10:03[A], 10-38 (1991). And any such license was explicitly revoked by Blueport's letter of March 31, 2006. Pl. Exh. 57.

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Even if any such license were considered irrevocable, clearly not the case, it could not be considered unlimited. The course of dealing demonstrates that any license would not outlive the expiration date, or at the latest the retirement of Davenport. Even if it could be considered to outlive Davenport, it had to be limited to use of the existing copies ­ in no way could any implied license for creating a derivative work be construed by the course of conduct. If there was a license it was revocable due to lack of

consideration. If it was irrevocable then it was only what was advertised ­ use until the final expiration date and retirement of Davenport. Even if it went beyond this it was not unlimited ­ and certainly did not extend to creation of derivative works such as MARS. 2 5. Section 117 Defense Section 117 is recognized as a narrow exception within a statute that favors copyright owners' exclusive rights. DSC Comm. Corp. v. Pulse Comm., Inc., 170 F.3d 1354, 1360 (Fed. Cir. 1999). This provision does not create a general reliance

exception as Defendant seems to argue. To take advantage of the safe harbor of § 117(a) the copier must be an "owner of a copy of a computer program." 17 USC § 117(a); DSC, 170 F.3d at 1360; CMAX, 804 F.Supp. 337, 356 (M.D. Ga. 1992). Further, §117(a)(1) specifically provides that any such copies or adaptation may be used in "no other manner" than as an "essential step in the utilization of [that] computer program." Thus, three issues present themselves within this question. First, were the copies provided by Davenport to various individuals in the Air Force "owned" by the Air Force, or were they the subject of a fully revocable license? Second, if the Air Force owned the copies, was the adaptation of the AUMD by changing the date an "essential
2

Nor does an estoppel assist Defendant. Defendant did not plead it as an affirmative defense, did not prove the elements, and so waived it. See Def. Ans. and Def. First Am. Ans.. RCFC 8(c); Rockwell

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step in the utilization of that computer program?" Third, was the use of the AUMD program to develop the derivative MARS program an "essential element" in the utilization of the AUMD program? A. The Air Force did not own their copies of AUMD. Determination of "ownership" is a question of law, but requires consideration of the incident facts as a whole. Krause v. Titleserve, Inc., 402 F.3d 119, 123-4 (2d Cir. 2005). "It is not clear from the text of § 117(a) how many and what kind of sticks may be removed from the bundle before the possessor of a copy of a computer program is no longer considered its owner for purposes of § 117(a). Krause, id. at 122. Where a license agreement imposes restrictions on the licensee inconsistent with the rights of ownership then the licensee must be regarded as not a true owner of their copies under § 117. DSC, 170 F.3d at 1360-61. In Krause the court found the possessors were "owners" under § 117 after consideration of several factors: (1) title ownership; (2) payment of "substantial consideration" for "customized" software; (3) storing copies on defendant's servers; (4) the agreed right to continued possession for an unlimited time period "regardless whether its relationship with Krause terminated"; and, (5) freedom to discard or destroy copies. Krause, 402 F.3d at 124 (citing DSC). The Krause court found particularly important the fact that the defendants were permitted continued possession of the program copies indefinitely. Krause, id. at 123. The first factor, "title ownership," is ambiguous in this case, since there was no bargained transaction in this case, However, factors two and four clearly weigh against ownership in this case, and should be considered dispositive. Lack of consideration and an expiration date, coupled with
Automation v. U.S., 70 Fed. Cl. 114, 122-23 (2006); Hess v. U. S., 537 F.2d 457, 461 (Ct. Cl. 1976).

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Davenport's declared intentions to let the copies expire with no support, clearly demonstrates that the Air Force did not own its copies. In DSC, the Federal Circuit held that while transfer for an unlimited time period did not dispositively create an "owner" for § 117 purposes, transfer for an expressly limited time is a strong indication of lack of ownership. DSC, 170 F.3d at 1362.

Although the DSC court held that a single transfer of money for an unlimited possessory time period was not dispositive to "ownership", the transfer of possession with a visible expiration date, along with clear declarations by the author and copyright owner that the expiration would not be extended beyond his personal service, coupled with refusal to provide source code for future self-suppor