The Software IP Report

Use of Copyrighted Software’s Output and Mere Downloading of Copy Held Not to Constitute Infringement

By Charles Bieneman

Categories: Copyright, The Software IP Report

Neither using output from copyrighted software, nor downloading (but not installing or using) the copyrighted software, constituted actionable copyright infringement under the US copyright statute.  Design Data Corporation v.  Unigate Enterprise, Inc., No. 12-cv-04131-WHO (N.D. Cal. Aug. 6, 2014).  Accordingly, the court in this case granted summary judgment in favor of the defendants on the plaintiff’s claims of direct as well as contributory copyright infringement.

The plaintiff “created and owns copyrighted structural steel detailing software called SDS/2.”  The plaintiff never sold licenses to SDS/2 to any of the defendants.  Although the defendants contended that they merely acted as intermediaries between Chinese contractors and US clients, and had never used SDS/2 themselves, it was undisputed that SDS/2 “appear[ed] to have been used to create drawings and images for five of” their projects.  Moreover, the defendants admitted that they had forwarded SDS/2 output files “to clients and prospective clients,” even while contending they had never used the software themselves.

The defendants also admitted that one of them had downloaded the SDS/2 software.  The purpose of this download was in dispute.  The plaintiff contended that the download was of a “cracked” copy that then did not work.  The defendant averrred that she had downloaded the software thinking it was a legitimate copy, “but did not install it or try to use it.”  Her expert performed a forensic examination yielding results consistent with this testimony.

The court first made short work of the plantiff’s contributory infringement claim.  Quoting the Ninth Circuit in Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088, 1092, 1995 (9th Cir. 1994), the court explained that “wholly extraterritorial acts of infringement cannot support a claim under the Copyright Act.”  Authorization of infringing acts from within the Unites States did not change this principle.  Summary judgment of no contributory infringement was granted because the plaintiff “present[ed] no evidence that any of the steel detailing work (creation of drawings and images) provided by defendants to clients in the United States was actually done in the United States.”

Turning to the plaintiff’s claim of direct infringement, the court first considered the question “whether the copyright registration on the software is broad enough to protect the program’s outputted files and drawings.”  The answer was that “the ‘job files’ and other documents produced by the program are ‘data’ not covered by the program’s copyright.” Moreover, “[w]ith respect to the drawings produced from SDS/2, those might be copyrightable but they are not automatically entitled to protection as the output of SDS/2.”  Accordingly, the plaintiff had “failed to raise a material question of fact to show that the files and images created by SDS/2 at issue were themselves protected by the SDS/2 copyright.”

Next, the court considered whether one defendant’s undisputed download of SDS/2 to her external hard drive constituted infringement.  The “Defendants’ expert found no evidence that the program was installed or used,” and the plaintiff’s “expert present[ed] no testimony or evidence to the contrary.”  The defendants argued that this copying was therefore de minimis.  The plaintiff responded “that because defendants copied the entire software code for SDS/2, the copying cannot be de minimis as a matter of law.”  But there was at most circumstantial evidence that the defendants actually used the software.  The court concluded that the mere downloading that could be proved was de minimis copying not actionable under the Copyright statute.