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Robert Craig Attig v. DRG, Inc.

Civ. Act. No. 04-CV-3740 (E.D. Pa., March 30, 2005)

Defendants Do Not Infringe Copyright By Using Websites Developer Updated For Them

Court holds that defendants, who hired web developer to update their websites, have implied non-exclusive license to use resulting updated websites, and thus are not infringing any copyright developer had therein by making sites available for viewing on the Internet.  The Court accordingly granted defendants' motion for summary judgment, and dismissed copyright infringement claims brought by web developer against his former clients.

Web Developer Hired To Update Websites Claims Defendants' Use Infringes  

Defendants hired plaintiff Robert Attig, a computer consultant, to update and host two websites defendants had previously created and made available on the Internet.  After plaintiff completed his work, he was paid the agreed fee, and made the updated sites available on the Internet through a hosting service provided by a third party.  The sites were viewable at domain names owned by the defendants.

Unfortunately, the parties did not enter into a formal written agreement either governing the rendition of plaintiff's services or specifying who would own the websites after plaintiff completed his work.

When a dispute arose over web hosting fees plaintiff claimed were due him, plaintiff asserted ownership of the copyright in the code and files associated with the websites in question, and filed copyright registration therefor.  Claiming that defendants infringed his copyright in these works by transferring the web sites to another hosting service, and making them available on the Internet, plaintiff commenced this suit.

Plaintiff claimed that as the author and creator of the works in question, he owned the copyright therein.  Because he had never agreed in writing to sell or license these works to defendants, and was not their employee, plaintiff alleged their use constituted an infringement of his copyright.

Defendants Have Implied Non-Exclusive License To Use Updated Web Sites

Defendants moved for summary judgment, arguing that they were not infringing any copyright plaintiff had in the websites because they had, by operation of law, a non-exclusive license to use the websites in the manner they were using them.  The Court agreed and, on defendants' motion for summary judgment, dismissed plaintiff's suit.

As explained by the court "a non-exclusive license is a judicially created solution for situations in which two parties intend to transfer a copyright, but neglect to do so in writing."  To establish the existence of a non-exclusive license, the licensee must establish that "(1) a person (the licensee) requests the creation of a work; (2) the creator (licensor) makes that particular work and delivers it to the licensee; and (3) the licensor intends that the licensee copy and distribute his work."

Given that defendants hired and paid plaintiff to update their sites, and he posted it on the Internet at domains they controlled after finishing the sites to their satisfaction, the first two prongs of this test were met.

The Court held that third prong was also met.  In reaching this result, the court relied on the fact that: (1) plaintiff, on one of the two websites in question, had placed a notice stating the copyright was owned by the defendant Safety Hoist Company; (2) in a letter plaintiff wrote describing the services he would render, plaintiff stated "I am sure we can make great improvements on your site"; and (3) plaintiff failed to warn defendants of his claimed ownership interest, either via copyright notice, or warning of misuse or infringement.  Finding plaintiff's oral testimony that he did not intend that defendants copy and distribute the websites insufficient to overcome this evidence, or create an issue of fact, the court held defendants had a non- exclusive license to display the websites at issue on the Internet, and accordingly dismissed plaintiff's copyright infringement claims.

Get A Web Site Development Agreement

Hopefully, this cautionary tale will remind you to make sure you either have an appropriate website development agreement signed when you develop or update your website, which identifies your ownership rights in the finished product, or have obtained appropriate copyright assignments from those who created your site.

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