United States: Relating A Software Copyright Infringement Claim Back To Its Source

In a recent order, Judge Douglas P. Woodlock of the District of Massachusetts untangled a complicated timeline to decide motions for summary judgment regarding several copyright infringement and related claims on a statute of limitations basis. The analysis is instructive to prospective plaintiffs as to when a complaint should be filed, which potential defendants it should include, and what level of knowledge provides proper notice of a claim.

While a copyright case at its core, the litigation snowballed over the course of three years and two amended complaints to include ten causes of action and multiple defendants. In 2007, while employed as a software developer at plaintiff Iconics, defendant Simone Massaro began developing video surveillance system software for Volpe Industries, a company founded by defendant Chris Volpe.  Upon his resignation from Iconics, Massaro allegedly copied Iconics' software source code and brought it with him to Volpe Industries.

The original complaint was filed on August 30, 2011, alleging only one count of copyright infringement against only Massaro. A first amended complaint was filed on May 20, 2013, adding new causes of action and defendant BaxEnergy GmbH; a second amended complaint was filed on April 10, 2014, adding further causes of action and other defendants including Volpe.  A preceding state court complaint was filed against Volpe Industries on January 27, 2009, resulting in a declaratory judgment that Iconics owned all of Massaro's interests in the Volpe Industries project.  In 2010, Volpe Industries filed for bankruptcy in the District of Massachusetts.

Judge Woodlock first determined that the three year statute of limitations for the original copyright claim began on either August 30, 2008, the date on which Iconics received an anonymous email informing it of Massaro's use of the source code, or September 15, 2008, the date on which Iconics' counsel asserted actual knowledge in a letter to Volpe Industries. Using either date, the original complaint fell within the statute of limitations, but both amended complaints fell outside of the three year period.  For the copyright infringement claims to be timely and survive summary judgment, they would have to relate back to the original complaint.  (A claim relates back to the date of an original pleading when it arises out of the same conduct, transaction, or occurrence set out in the original pleading and the defendant was given adequate notice of that conduct, transaction, or occurrence.)

When applied to defendant Massaro, the analysis was straightforward because the original complaint alleged the copyright infringement by Massaro. The same infringing actions by Massaro – the copying of Iconics' source code – provided the basis for all copyright claims asserted in the amended complaints, thus allowing those claims against Massaro to relate back.

When applied to defendant Chris Volpe, the analysis became more complicated because Volpe was not named in the original complaint. The first portion of the analysis was clear: the original complaint identified Massaro's alleged copyright infringement as being undertaken for Volpe, thus the same occurrence formed the basis of the later claims against Volpe for the same reasons as for Massaro.  However, with respect to notice, Judge Woodlock found that Iconics failed to show that Volpe had the proper notice of the original complaint necessary for the later claims against him to relate back.

Iconics' evidence that Volpe had general knowledge of the original complaint against Massaro without more specific details of that lawsuit did not rise to level of knowledge that could give Volpe proper notice.  As a result, the claims against Volpe could not relate back to the original complaint and they were found time-barred for falling outside of the statute of limitations.

For other relevant claims arising out of the same actions, including theft of trade secrets and removal and alteration of copyright management information – both also having three year statutes of limitations, the same result was found, relating the claims back as to Massaro but not as to Volpe. A distinction was made regarding two allegations of copyright infringement that arose out of different, later activity involving the use of Iconics' source code on a project for BaxEnergy.  While these claims were first raised in the first amended complaint of May 20, 2013, Iconics first could have learned of the activity on September 27, 2010 and thus, fell within the three year statute of limitations window.

This decision serves as a reminder to prospective plaintiffs that causes of action should be timely filed and careful consideration should be given to who the necessary defendants are and that proper notice is provided to them. Failure to meet these requirements within the statute of limitations can result in lost claims – not just in the copyright infringement context, but in all causes of action where a statute of limitations applies.

The case is Iconics, Inc. v. Massaro, Civil Action No. 11-11526-DPW (D. Mass. Jan. 15, 2016), before Hon. Douglas P. Woodlock. A copy of the order can be found here.

Relating A Software Copyright Infringement Claim Back To Its Source

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