Contractor's Copyright Infringement Claims Raise Issues That "Must Be Addressed At Trial"

On May 3, 2024, inGeospatial Technology Associates, LLC v. United States,COFC No. 16-346C, the U.S. Court of Federal Claims denied the government's motion to dismiss for lack of jurisdiction and, alternatively, for summary judgment due to alleged inaccuracies in a copyright registration, holding that plaintiff Geospatial Technology Associates, LLC's ("plaintiff" or "GTA") patent and copyright infringement claims pursuant to 28 U.S.C. § 1498 raise issues that "must be addressed at trial." This newest development follows GTA's original March 2016 lawsuit against several government agencies—including the Department of the Army, the Department of the Air Force, and the National Geospatial-Intelligence Agency ("NGA")—alleging patent and copyright infringement of the underlying software code of its product, "NINJA.pro."

Dr. William Basener, GTA's president and the author of NINJA.pro, was in government service as a visiting scientist contractor at the NGA from 2007 to 2008 with Dr.Thomas Braun. Dr. Basener's second period in government service was as a subcontractor on the GeoSage contract for the NGA from February to May 2010. In a previous filing, the government made two relevant arguments.First, it argued that Dr.Basener prepared NINJA.pro under the GeoSage contract from February to May 2010—which GTA rebutted with secondary evidence, showing that a version of NINJA.pro pre-dated Dr. Basener's work under the GeoSage contract.Second, the government argued that NINJA.pro began as a file named "background_mod_mf.pro" that was written by Dr. Basener and Dr. Braun during Dr. Basener's first period of government service from 2007 to 2008. In response, GTA asserted both that (1)the government relied on the wrong version of background_mod_mf.pro to make its argument, and (2)only the "NINJA functionality" of NINJA.pro was relevant to the copyright claims. GTA offered evidence to demonstrate that Dr.Basener wrote the NINJA functionality in July 2009 (between his two distinct periods of government service as a contractor).

Relevant to the Court's May 3, 2024 decision is 28 U.S.C. § 1498(b), which provides a waiver of sovereign immunity for allegations of copyright infringement against the United States. However, §1498(b) doesnotcreate a right of action with respect to "any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee, or in the preparation of which Government time, material, or facilities were used."

As part of its motion to dismiss for lack of jurisdiction, the government argued that GTA's claim was jurisdictionally barred by 28 U.S.C. § 1498(b) because approximately half of the copyrighted work was prepared by persons in the service of the United States, as part of their official functions, and because the copyrighted work was prepared with government time, material, or facilities. According to the Court, the fundamental issue in the motion to dismiss was what copyrighted work needed to have been "prepared" for the exclusions in § 1498(b) to apply. The government argued that the exclusions apply whenever there isanyoverlapping code between an original file and the copyrighted work, while GTA argued that the Court retained jurisdiction when the core functionality of the copyrighted work was written outside of the scope of the exclusions. Neither party concretely addressed what the appropriate legal standard was, and the Court's own examination suggested that there was no direct precedent to help resolve this issue. Thus, the Court expressed that the first step was to identify the relevant facts, since "the legal question [must be answered] in the context of the facts, and they are not yet fully developed." The Court ultimately held that GTA raised enough questions to deny defendant's motion to dismiss.

Next, the Court turned to the government's motion for summary judgment, which alleged that GTA knowingly made three critical errors in its copyright registration application that ultimately rendered the entire registration invalid. Specifically, the government argued that: (1)the year of first completion and the date of first publication in the registration were both incorrect; (2)the source code submitted as a deposit copy in the registration was not the correct copy of the claimed work; and (3)despite GTA's contention that it only claimed copyright over the "NINJA functionality," GTA failed to disclose or disclaim an appreciable amount of preexisting material within the claimed work. The Court noted that inaccuracies in copyright registrations can be excused so long as there was no "willful blindness" in making those mistakes. Willful blindness has two basic requirements: (1)the party's subjective belief that a fact probably exists; and (2)the party's deliberate actions to avoid learning that fact. Although the Court agreed that plaintiff "was very likely careless in submitting the application," it was not persuaded that the government's evidence on summary judgment demonstrated that GTA had actual knowledge of these inaccuracies or was willfully blind to them. Accordingly, the Court denied the government's motion for summary judgment and set the deadline for the parties to file their responses to currently pending motionsin limineon or before May 31, 2024 to prepare for trial.

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