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Customer Has Implied License to Software Developed by Contractor

Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748 (C.A. 9, Sept. 9, 2008)

Asset Marketing Systems, Inc. ("AMS"), which sells insurance sales and marketing support, used Kevin Gagnon as an at-will independent contractor to develop custom software products. AMS accounted for 98% of Gagnon’s business. Over four years, AMS paid Gagnon more than $2 million to develop six computer programs and support.

During their relationship, AMS and Gagnon entered into a Technical Services Agreement (TSA), scheduled to expire on April 30, 2001. The TSA, printed on Gagnon’s “Mister Computer” letterhead, specified the services Gagnon was to provide, including “specific add-on products to enhance Contractor’s current in-house database application.” The TSA was not renewed in April 2001, but the relationship continued.

After the TSA expired, Gagnon proposed an Outside Vendor Agreement (OVA), which contained a provision that all processes developed by the outside vendor belonged to the vendor and were only licensed to the customer. AMS modified the proposed OVA to state just the opposite property rights, but the parties never signed either version of the OVA.

Gagnon then demanded $1.75 million from AMS for his agreement that AMS could continue to use the programs he developed. AMS responded by terminating Gagnon’s services, and continued to use the programs.

Gagnon sued AMS for copyright infringement of the computer programs, arguing that AMS continued to use and modify the programs without his consent. AMS claimed the right to use the programs, in part claiming that Gagnon signed a Vendor Nondisclosure Agreement (NDA), giving AMS ownership of all intellectual property Gagnon developed for Gagnon. Gagnon replied that the NDA was a forged document.

Without relying on the NDA, the District Court (S.D. Calif.) granted summary judgment in favor of AMS, finding that by the course of dealings Gagnon granted AMS an unlimited, non-exclusive, implied license to use, modify and retain the source code of the programs thereby defeating Gagnon’s claims. The District Court also denied Gagnon’s application for an order denying or continuing summary judgment and to file written objections to evidence.

The Ninth Circuit affirmed, holding that AMS had an implied unlimited, irrevocable license for the computer programs. Although 17 U.S.C. §204 requires that exclusive licenses be in writing, a court will grant an implied license when: (1) the licensee request creation of the work; and (2) the licensor makes that particular work and delivers it to the requesting licensee. Effects Assocs., Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990). Here, Gagnon conceded that he created the programs specifically for AMS and that AMS paid for the work.

The Court also held that Gagnon delivered the programs when he installed them onto the AMS computers and stored the source code on-site at AMS, and that his intent to deliver was manifested by his conduct, including the executed TSA, the OVA which he submitted, and his ongoing technical support to AMS.

The Court further affirmed denial of Gagnon’s ex parte motion, holding that Gagnon needed no additional evidence to oppose AMS’s summary judgment motion.



 

 

Judge(s): Milan D. Smith, Jr., Circuit Judge
Jurisdiction: U.S. Court of Appeals, Ninth Circuit
Related Categories: Contracts
 
Appellant Lawyer(s) Appellant Law Firm(s)
Todd A. Moore

 
Appellee Lawyer(s) Appellee Law Firm(s)
John M. Morris Higgs Fletcher & Mack LLP
Philip C. Samouris Higgs Fletcher & Mack LLP

 

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for this footage." id. at 559. we have previously considered the grant of an implied license were unnecessary. third, the motion was untimely because before: barry g. silverman, johnnie b. rawlinson, and his work." i.a.e., inc. v. shaver, 74 f.3d 768, 776 (7th cir. which gagnon provided technical support for all computer- explain below, gagnon's conduct manifested an objective performing services under this agreement. on oped and that copies of our saleslogix software and c. procedural history mister computer letterhead, stated only that gagnon "will ten license from effects associates, we found that an implied utilized throughout that software which would pre- plaintiff-counter- information generated by employee in the performance of the because gagnon had already admitted that the source code gagnon alleges that ams's continued use of the six pro- tractual agreement" with ams for twenty-four months asset marketing systems, inc., thus, the existence of this limited license failed to settle employer's trade secrets); application group, inc. v. hunter also on september 23, seven of gagnon's twelve employ- & prof. code 16600 (voiding any contract that restrains contractor agrees that all designs, plans, specifica- when "(1) a person (the licensee) requests the creation of a inc. v. payday, inc., 886 f.2d 1081, 1087 (9th cir. 1989). fails. and may be granted orally or by implication. foad consulting gagnon relies on s.o.s., inc. v. payday, inc., which akerstein declined to execute the ova, but countered with [4] the remaining question is whether gagnon delivered sole property of client. any source code or intellec- milan d. smith, jr., circuit judge: gagnon expressed a contrary intent was in his letter to aker- we find this approach to be persuasive. by the end of june 2003, ams had decided to terminate 12521asset marketing v. gagnon on its own computer systems after his services were termi- llp, san diego, california, for the plaintiff-counter- substantial sums were paid, was not sufficient to negate all the programs, and we do not reach the other defenses asserted permit discovery for abuse of discretion. volk v. d.a. david- district court also denied gagnon's ex parte application. we finally, the district court did not abuse its discretion in licensing of software developed for company," eliminating which was for custom software development and computer when programmers write code, they write in "source code," which is unlimited license. to expire in one year; one would expect some indication of the treated as confidential and safeguarded. finally, the employ- is owned and all copyrights belong to asset market- licensor intends that the licensee-requestor copy and distribute right office. code for all software developed by and on behalf of employment agreement also stated that "all information relat- ova submitted by gagnon, and gagnon's letter objecting to it also asserted that the hiring of gagnon's prior employees to another party. see, e.g., s.o.s, 886 f.2d at 1090. even party opposing the summary judgment motion could not, for according to a declaration by one of gagnon's former 12522 asset marketing v. gagnon was delivered. b. the programs ents, or trademarks obtained by contractor while computers because they might contain emails establishing express permission; and (3) whether the creator's able to gain access to the source code itself." id. at 1088. ing systems. furthermore, despite your claimed ams to qualify an agent or create a territory." the source son, reconstructing the software license, 35 loy. u. chi. l.j. 275, 280- fully moved this court for a limited remand so that judge related problems at ams; he also created certain custom soft- ams responded by asserting that gagnon could not unilat- vices agreement (tsa), which was scheduled to expire on effects associates, gagnon was well paid for his services. intent to give ams an unlimited license at the time of cre- ered the software without any caveats or limitations on in the context of movie footage and architectural drawings. case to federal court. gagnon then filed counterclaims, alleg- other ams employees' requests. no genuine issue of material without gagnon's future involvement. the finding that an implied license existed); see also john g. property of contractor and will be licensed to client at that time. tionship; (2) whether the creator utilized written con- b. trade secret misappropriation claim consultant will provide contractor with specific add-on prod- favorable to the non-moving party and determine whether challenges the denial of his ex parte application for an order courts have judge brewster. at that point, the parties stipulated to a dis- for the ninth circuit development computers, which were located at ams's facili- were no longer enforceable in this case. in may 2000, ams and gagnon entered a technical ser- gagnon, but he declined to accept the offer. ams and relationship with asset marketing systems." the parties tion." id. (citing fed. r. civ. p. 56(f)). delivered it 12526 asset marketing v. gagnon computer, inc. v. franklin computer corp., 714 f.2d 1240, 1243 (3d cir. accounting for 98% of his business. jay akerstein, a partner axcess broad. servs., inc., 128 f.3d 872, 882 (5th cir. 1997); and protectable. sega enters. ltd. v. accolade, inc., 977 f.2d 1510, 1519- john morris and phillip c. samouris, higgs, fletcher & mack ware applications at ams's request. the relationship of the 1 vices. stated: to which key ams personnel had access--conduct that does parte motion a week after the district court ordered the case exclusive, implied license to use, modify, and retain the tor will allow company non exclusive, unlimited his trade secrets from the ams personnel who had passes to databases and included "detailed information concerning never received any promises of confidentiality with respect to by ams. mr. gagnon and he satisfied them by providing either com- appeal from the united states district court hold that effects did not at the same time convey a license to 12511 righted material indicated that use of the material a. ams and gagnon's relationship forming services under this agreement will be the property of computers and stored the source code on-site at ams. summary judgment and to file written objection to evidence. defendant-appellee, no. 07-55217 through gagnon. according to ams, gagnon's former (cal. 2008) (cal. bus. & prof. code 16600 invalidates non- ownership in that copyright, we believe that asset kevin gagnon, doing business as mister computer ment specified that the intellectual property arising out of or judgment. after remand, the district court denied the motion summary judgment motion and the discovery motion." tsa indicates gagnon's understanding or intent that contin- mister computer," in the splash screens for each program. at ams who later became the chief operating officer, was attorneys fees and costs. gagnon appealed the grant of sum- license is a "creature of law, much like any other implied-in- 6 morningside dev., llc, 284 f.3d 505, 516 (4th cir. 2002)). without the ability to modify it and because the tsa was set tected trade secrets even when the software is licensed for use included access to any trade secret embodied therein. demanded $1.75 million for ams to have the right to con- verted for use by another company, gagnon admitted that the ter, asserting that the use of the programs was unauthorized. cation," and mentioned nothing about a license. the tsa was made no attempt to hide the source code from ams employ- lulirama, 128 f.3d at 882-83. parties indicates neither an intent to grant nor deny a license well after the creation and delivery of the programs for which though gagnon argues that the programs could be con- that gagnon could not use the programs because it contained need for future licensing if the custom programs were to the proprietary rights clause to read: was located on ams's computers, computer backup tapes shall remain the company's said property. contrac- information or items produced by contractor while 12515asset marketing v. gagnon relevant times. 12527asset marketing v. gagnon to reconsider its order granting summary judgment and stayed gagnon then discussed an exit strategy, and by late july, the gagnon's remaining state law claims failed. 12523asset marketing v. gagnon performing services under this agreement will be the ited them. gagnon disputes this. each employee had signed gagnon contests its validity and argues that his signature was forged, cre- grams were used by ams without its obtaining a license or identified numerous problems with gagnon's work. it also where architect submitted contracts containing express provi- gagnon primarily points to ams's inability to locate the code ation; thus, when he stored the source code at ams, the code that delivery is not dispositive, but "one factor that may be relied upon in nated to show that ams did not possess the code. but, as we the district court subsequently granted ams's motion for come into your possession during our relationship. assuming a trade secret exists, however, gagnon's argument danielson, 322 f.3d at 41 (quoting nelson-salabes, inc. v. [8] the ova submitted by gagnon, but never executed, ness); edwards v. arthur andersen llp, 189 p.3d 285, 288 1990). did not evidence any intent by gagnon to limit ams's use of marketing support to insurance marketing entities. from may in his deposition, gagnon admitted that after he hired grams because it had an irrevocable license to use, copy, and tracts . . . providing that copyrighted materials could forming services under this agreement" modifies the produc- violated their employment agreement with him. gagnon akerstein's proposed changes to the ova.6 [2] thus, we have held that an implied license is granted his employees3 12528 asset marketing v. gagnon claimant-appellant. tinue to use the programs and $2 million for gagnon's agree- ties' conduct. see effects, 908 f.2d at 559 n.6 (noting that without the creator's involvement or consent was we conclude that ams could not have misappropriated that he create the programs, but "rather relayed its needs to copies of the source code for the software we devel- puter can understand and execute. id. at 280. generally, when software is son & co., 816 f.2d 1406, 1417 (9th cir. 1987). "a district ing to [ams] disclosed to employee by employer, and all c. ex parte application 2. gagnon created the software for ams and erally stop ams from continuing to use and update the pro- transfer of copyright ownership via the nda, and 17 u.s.c. order denying or continuing summary judgment and to file gagnon correctly asserts that source code may contain pro- mer retains the source code. id. at 280-81. regardless of whether the com- 3. gagnon's intent as manifested by his conduct relationship, ams paid gagnon over $2 million, $250,000 of essary to protect gagnon's trade secrets against ams, they ment not to sell or disclose the programs to ams's paid gagnon for his programming services if ams could not [14] here, however, having concluded that gagnon granted defendant-counter- 12519asset marketing v. gagnon for the southern district of california in october 2003, gagnon sent ams a cease and desist let- grams constitutes copyright infringement because the pro- [7] the tsa, signed by both parties in 2000 and printed on supported by consideration is a contract." lulirama, 128 f.3d opinion by judge milan d. smith, jr. ams's allegedly unlawful solicitation of gagnon's employ- a redlined version of the ova, which substantially rewrote missal of all counter-counterclaims, and ams moved for tor's will remain the property of contractor. grams. 12516 asset marketing v. gagnon an unprotected copy of the code that gave it access to the the nda was located and produced six months into the litigation. cv-03-02234-bkevin gagnon, d/b/a mister we apply the same analysis we did in effects to implied affirmed. copyright by exceeding the scope of its license. see s.o.s., for summary judgment was fully briefed by both parties. [11] for the reasons outlined, we hold that gagnon granted dence was not necessary for gagnon to oppose the summary [9] moreover, gagnon and ams did not discuss a licensing f.2d at 555-556. though the film footage containing the spe- ees resigned and were hired by ams to provide directly to for ams by gagnon. gagnon claims that the document is a and other information, as well as assisting contractor were contained in the programs' source code by hiring away judgment motion. in fact, gagnon was apparently able to craft 4 and (3) the only be used with the creator's future involvement or [6] several documents exist, however, that reflect the par- the magistrate judge recommended that the motion be to ams; rather, he created them in response to ams's ation and delivery of the software as manifested by the par- finally, the splash screens containing the copyright notice gagnon did not request the continuance until after the motion basis as will any copyrights, patents, or trademarks obtained id.; effects assocs., inc. v. cohen, 908 f.2d 555, 558 (9th cir. 2 12530 asset marketing v. gagnon court against kevin gagnon, d/b/a mister computer, two of by contractor while performing services under this agreement 1996) (citing effects, 908 f.2d at 558-59) (footnote added). we do not consider the nda, allegedly signed by gagnon, because group, inc., 72 cal. rptr. 2d 73, 85 (ct. app. 1998) (same). ment on the trade secret misappropriation claim. danielson, inc. v. winchester-conant props., inc., 322 f.3d nology needs. subsequently, gagnon was asked to develop we review the district court's decision to deny an applica- head, set forth gagnon's fees and the services to be provided. contractor for ams, hired to assist with its information tech- stein, sent after ams had decided to terminate gagnon's ser- a separate licensing arrangement that was never mentioned in [5] gagnon argues that he never intended that ams would that he wrote for ams by continuing to use and modify them puter hardware or computer software at his discretion." we etary rights clause providing: have used the programs without further payment pursuant to ova draft with a letter asserting that his "position has always gagnon was able to file his opposition to summary judgment rudi m. brewster, district judge, presiding classes. gagnon developed six computer programs for ams. mary judgment. the district court then indicated that it wished nia law, misappropriation of trade secrets, interference with become unusable after the tsa expired. denied because it was untimely, and the district court judge april 30, 2001. the tsa, printed on mister computer letter- work, (2) the creator (the licensor) makes that particular work squared with the fact that cohen paid effects almost $56,000 marketing systems' trade secrets are embedded and 12520 asset marketing v. gagnon he made changes to the programs in response to akerstein and client agrees that all designs, plans, specifications, created these programs for ams. found that gagnon had granted ams an implied, nonexclu- ments with gagnon's employees were invalid. under califor- the licensor, s.o.s., granted to payday, its licensee, a limited other objective manifestations of intent to grant ams an united states court of appeals we review the district court's grant of summary judgment that gagnon granted ams a license, it is a relevant factor that we may defendant-appellee. ment agreements was unenforceable under california law, any ties.2 81 (2003) (same). this source code is then compiled into object code an opposition to summary judgment without this discovery code, they programmed on-site at ams on ams computers modify the software. furthermore, because ams paid consid- looked to contracts, even if unexecuted, as evidence of the the services included "custom application programming-- business advantage, and sought accounting and declaratory given ams ownership of all intellectual property developed have jurisdiction under 28 u.s.c. 1291, and we affirm the remain the property of contractor. trademarks, ser- $1.75 to $2 million he had requested in september. in effects associates, a movie producer hired effects asso- agreement and compensation); nelson-salabes, 284 f.3d at programs were created specifically for ams and that ams ciates to create certain special effects for a movie. effects, 908 the court also denied gagnon's ex parte applications for an side vendor agreement (ova). the ova included a propri- discrete transaction as opposed to an ongoing rela- license had been granted because the footage was created at of the saleslogix software or asset marketing data- gagnon argues that even if he had installed the programs onto without written consent from gagnon. ees, and would establish the location of the source code at all license or royalty agreement with them. [1] though exclusive licenses must be in writing, 17 u.s.c. [3] gagnon argues that ams never specifically requested relationship with ams. we disagree. the clause "while per- the development room nor did he discuss terms of a potential plans, specifications, descriptions, documentation, infringement. id. at 558-59 & n.6. we determined that "[t]o ams's use of the programs. even if gagnon and his employ- ees agreed not to "engage in any employment or personal con- modify the programs based on the course of conduct of the employees, the source code was stored on ams computers in ties' objective intent: the tsa, signed by both parties, the computer, opinion counsel bases, programs or other materials that may have fourth circuits consider the following factors to determine fact remains as to whether ams requested the programs. the programs and limit ams's license if he intended to do so. . . . ," means that his license was conditioned on a continuing ees maintained the software and had primary control over the explained that a licensee of a computer program may misap- employees approached ams for jobs, and ams never solic- began when ams filed a complaint in california superior ams is a field marketing organization offering sales and conclusively locating the source code on ams computers his employees in violation of their employment agreements. infringement and trade secret misappropriation claims. the claims as counter-counterclaims to gagnon's federal counter- use the footage . . . would mean that plaintiff's contribution employees, the programs were designed to work with ams's [13] gagnon contends that even if ams obtained an services at an hourly rate. like the special effects creators in 12531asset marketing v. gagnon ing copyright infringement, unfair competition under califor- fact contract"). if an implied license accompanied by consid- tion of the intellectual property and the obtainment of mary judgment is specifically at issue are the six programs that gagnon cre- [15] we affirm the district court's grant of summary judg- and delivers it to the licensee who requested it,4 ated for ams. he included a copyright notice, "copyright under the circumstances, it defies logic that ams would have secrets contained in the programs' source code. gagnon also conduct during the creation or delivery of the copy- in june 2003, gagnon proposed that ams execute an out- court. submitted, causing "undue delay in the resolution of both the 3 (internal quotation marks omitted). "the district court should an "employee's work agreement" with gagnon. the agree- derstands the inquiry into intent, and we conclude that his no language indicating an intent to retain control); see also adopted that recommendation. the district court first reasoned that [intellectual property] produced by contractor while per- v. d.c. no. that ams infringed his copyright in six computer programs permissible. this case has a convoluted procedural history. the case acquired. id. his reliance on this case is misplaced. in s.o.s., necessary to protect an employer's trade secret. see cal. bus. foad consulting, 270 f.3d at 835-36 (kozinski, j., concur- in completing any required application or registra- code for these programs was installed on several of ams's copyright 10.02[b][5] (2008). "[a] nonexclusive license a license as would be his right as the copyright owner. gagnon disputes that the source code was ever stored on the ams tion claim was also defeated, and because no trade secret gagnon's copyright infringement claim: an implied license, a not demonstrate an intent to retain sole control. the first time (1) whether the parties were engaged in a short-term source code. id. at 1090. custom software for ams. ams was gagnon's largest client, in connection with that separation, you must in a letter to ams dated september 18, 2003, gagnon written objections to evidence. gagnon's ex parte application priation of trade secrets and conversion. gagnon removed the the ams computers, he never delivered the source code so intent of the party submitting the contract. see johnson v. counter-claimant-appellant. district court. there exists a genuine issue of material fact and whether the tion to continue a ruling on a summary judgment motion to provide" ams "specific add-on products." nothing in the by gagnon would be prohibited after the tsa terminated. the which is essentially a translation of source code into something the com- eration were revocable at will, the contract would be illusory. two weeks prior to his motion, and failed to raise an objection demanded that ams certify that it had undertaken to remove nia law, non-competition agreements are unenforceable unless propriate a trade secret if the trade secret was unlawfully such an intent: de novo. giles v. gen. motors acceptance corp., 494 f.3d clude use by you as well. 20 (9th cir. 1993). any ambiguity. opinion a week prior to his termination, gagnon registered the retain and modify the programs he delivered. gagnon misun- gagnon and ams had an ongoing service relationship in requests. moreover, after prototype software was developed, ited software licensing as long as my company had a business contractual relations, intentional interference with prospective ams personnel, including akerstein, possessed. gagnon the producer's request with the intent that it be used in the asset marketing systems immediately. you are not your agents offsite. jones, 149 f.3d 494, 501 (6th cir. 1998) (finding no license though delivery of a copy of software does not compel the conclusion deemed invalid under california law. for the same reasons, our entire database may be maintained by you and parties over the past two-and-a-half years. ams also asserted gagnon's primary contact. over the course of their four-year group, inc. v. azzalino, 270 f.3d 821, 825-26 (9th cir. 2001). tual property agreed to and documented as contrac- immediately provide any and all copies of the source source code, gagnon's noncompetition agreements were (gagnon), appeals from a grant of summary judgment in favor 117. we hold that ams has an implied unlimited license for the district court (then judge jones) remanded ams's claims for reconsideration, deferred resolution of attorneys fees until sion that drawings could not be used by others except with written in a programming language that humans can understand. apple ring) (comparing johnson and i.a.e.). denying gagnon's motion for an order denying or continuing out a pass that gagnon's software developers and a few key that ams could modify the code.5 1999 to september 2003, gagnon was an at-will, independent standard of review 204, grants of nonexclusive licenses need not be in writing, ams's trade secrets. ams also declined to pay gagnon the above work is a valuable trade secret of employer" to be and gagnon's new company, national mar- vice marks, or any items identifying said company drawings, inventions, processes, and other informa- competitors. copyright for these six programs with the united states copy- 12524 asset marketing v. gagnon help contractor obtain patents and copyrights for the employee was not instructed by gagnon to maintain ees. implied license, it still misappropriated his trade secrets that access to this trade secret, we also conclude that the district determining that an implied license has been granted"). because the non-competition agreements were no longer nec- on a non-exclusive basis as will any copyrights, pat- gagnon next filed a motion for reconsideration, which was july 18, 2008--pasadena, california ams' network of sales persons, including information related existed as between gagnon and ams with respect to the 865, 872 (9th cir. 2007). we view the facts in the light most the programs to ams. we agree with the district court that 26, 42 (1st cir. 2003); i.a.e., 74 f.3d at 777. the first and the source code at any location other than ams, and gagnon 516 (same); cf. i.a.e., 74 f.3d at 776-77 (architect submitted request and at contractor's expense, client agrees to right to modify the code, it may have infringed gagnon's forgery and that his signature cannot be authenticated. film with no warning that use of the footage would constitute 12518 asset marketing v. gagnon ating a factual dispute inappropriate for resolution on summary judgment. "contractor will allow company non-exclusive, unlimited 12532 asset marketing v. gagnon tions, drawings, inventions, processes, and other gagnon intended that ams use, retain, and modify the pro- the development room. the room could not be accessed with- source code of the programs that defeated his copyright milan d. smith, jr., circuit judges. of fact remained as to whether payday was entitled to possess court has wide latitude in controlling discovery." id. at 1416 relationship with gagnon. according to ams, a consultant gagnon's permission. ams asserts three defenses to to ams' agent lists, their territories, and the criteria used by the programs. gagnon argues that the clause, "client agrees 12517asset marketing v. gagnon do not negate ams's license to use the product. the splash paid for the work related to drafting of the programs as well without his consent, and that ams misappropriated trade server. district court correctly applied the law. id. a. copyright infringement claim licensing of software developed for company. "every objective fact concerning the transaction" supported find this interpretation of "request" to be strained. gagnon did reasons stated, present facts essential to justify his opposi- puter program is in object code or source code form, it is copyrightable court did not err in holding that the non-competition agree- later, counsel for both parties requested a stay of pending dis- the tsa, and never otherwise requested at the time. this is requested a continuance to obtain the backup tapes of ams's factual and procedural background for publication screens speak to gagnon's intent to retain copyright owner- if ams did not have the not renewed, though the relationship continued. 1. ams requested the creation of the programs ams claims that on june 12, 2002, gagnon signed a ven- anyone from engaging in a lawful profession, trade, or busi- license for use only and "neither party expected payday to be ment on the copyright infringement claim. in august 2003, gagnon responded to akerstein's redlined the letter then demanded: keting technologies alleging, among other things, misappro- despite the foregoing, i learned that we did not have been that asset marketing systems shall be entitled to unlim- the nda would have gagnon delivered them when he installed them onto the ams s.o.s.'s trade secret misappropriation claim because an issue the two employees were dismissed from the suit with prejudice. gagnon's services. ams extended an employment offer to 5 especially so because custom software is far less valuable discussion filed september 9, 2008 in a letter dated september 23, 2003, ams terminated its concluded that gagnon had granted ams an unlimited, non- for the foregoing reasons, the district court's grant of sum- 4. scope and irrevocability of implied license claims. agreement until their relationship was ending. gagnon deliv- argued and submitted for the programs from ams computers. tsa also provided that ams would be billed for gagnon's intent is the licensor's objective intent at the time of the cre- conclusion not create the programs on his own initiative and market them copyrights. furthermore, the contract then expressly stated, emails evidencing solicitation were irrelevant. second, tual property issues which have yet to be resolved. denied. the case was then reassigned from judge jones to never executed the ova. 3-10 melville b. nimmer & david nimmer, nimmer on todd a. moore, san diego, california, for the defendant- related to work performed for gagnon was his property. the brewster could reconsider judge jones's grant of summary of asset marketing systems, inc. (ams). gagnon contends as some related costs. it is, therefore, undisputed that gagnon the resolution of the appeal, and returned the case to this business advantage, negligent interference with prospective as the district court properly reasoned, the additional evi- licenses for computer programs. the last prong of the effects legally entitled to use and modify the source code; the license consider. see 17 u.s.c. 202; effects, 908 f.2d at 558 n.6 (recognizing the proceedings regarding the attorney fees. gagnon success- any new developments. this includes providing data, gagnon's trade secret. unlike payday in s.o.s., ams was instead we look at the protected right at issue--here, whether ams an unlimited, nonexclusive license to retain, use, and [12] we affirm the district court's grant of summary judg- ucts to enhance contractor's current in-house database appli- denying or continuing summary judgment. the district court authorized to utilize that software which we believe 1983) (describing source code and object code). see also michael j. madi- parties had set a target exit date of september 15, 2003. contractor and will be licensed to client on a non-exclusive tion or items produced by contractor while perform- sive license to use, modify, and retain the source code of the relief declaring gagnon the copyright owner of the programs. we also demand that you return to us any copies ams the same services they previously provided to ams without raising any discovery objections, and several days at 882; see also effects, 908 f.2d at 559 n.7 (an implied that because the non-competition clause in gagnon's employ- furthermore, having concluded that ams was entitled test, however, is not limited to copying and distribution; compete contracts unless they are necessary to protect an 12525asset marketing v. gagnon ing services under this agreement will be the gagnon's departure, made after the termination decision and distributed, only the compiled object code is distributed and the program- [10] gagnon had to express an intent to retain control over dor nondisclosure agreement (nda).1 cial effects was used without the producer's obtaining a writ- summary judgment as to gagnon's counterclaims. the court a belated statement that the programs could not be used after recently, we had discussed employee and intellec- "all original and derivative source code" and all related files permit discovery if it appears from the affidavits filed that the ship over the programs, not to his intent to grant or not grant conduct did manifest an intent to grant a license. the relevant programs. consequently, gagnon's trade secret misappropria- 12529asset marketing v. gagnon back to the state court. ams then filed its remanded state law to the film was `of minimal value,' a conclusion that can't be ued use of the custom application programming undertaken covery issues until summary judgment. gagnon filed his ex eration, this license is irrevocable. see lulirama ltd., inc. v. tion. any source code or intellectual property will ams an implied, unlimited license to the programs software,


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