United States District Court, D. Minnesota
N. ERICKSEN UNITED STATES DISTRICT JUDGE
in 2004 and then approximately yearly, Alexander Kushner
wrote software for Vickerman Company, a wholesale supplier of
decorative items. Compl. ¶¶ 1, 16, 20 Dkt. No. 1-1;
see Countercl. ¶¶ 3-4, Dkt. No. 6.
Alexander Kushner and April, Inc., are related, so, here,
Counter Claimants are referred to simply as
“Kushner.” Countercl. ¶ 2. Vickerman Company
and Kushner's relationship ended in March 2017, which led
to this lawsuit. See Compl. ¶¶ 39-40.
Kushner counterclaimed for infringement of the copyright in
the software he wrote. Dkt. Nos. 1, 6. On December 13, 2017,
Kushner moved to preliminarily enjoin Vickerman Company from
the alleged copyright infringement. Mot., Dkt. No. 21. The
Court granted that Motion in part at a March 19, 2018
Hearing. Dkt. No. 53. The Court explains its Order below.
Court “may . . . grant temporary . . . injunctions on
such terms as it may deem reasonable to prevent . . .
infringement of a copyright.” 17 U.S.C. § 502(a)
(2018). On a preliminary record, a court reasonably enjoins
copyright infringement when “the balance of equities .
. . requires the court to intervene to preserve the status
quo.” Hill v. Xyquad, Inc., 939 F.2d 627, 630
(8th Cir. 1991). These equities include “the
probability that [the] movant will succeed on the merits,
” “the threat of irreparable harm to the movant,
” “the balance between this harm and the injury
[from] granting the injunction, ” and “the public
interest.” Dataphase Sys., Inc. v. CL Sys.,
Inc., 640 F.2d 109, 113 (8th Cir. 1981) (en banc).
must show a fair chance of prevailing on his
copyright-infringement claim. Richland/Wilkin Jt. Powers
Auth. v. U.S. Army Corps of Eng'rs, 826 F.3d 1030,
1040 (8th Cir. 2016). Vickerman Company can infringe
Kushner's copyright if, among other ways, the Company
“prepare[s] derivative works based upon [Kushner's]
copyrighted work.” See 17 U.S.C. § 106(2)
(2018). But Kushner could have licensed activities that would
otherwise infringe. See Fed. R. Civ. P. 8(c)(1)
(listing “license” as an “affirmative
defense”). The “scope of [that] license . . . is
limited . . . to a specific purpose.” Florida v.
Jardines, 569 U.S. 1, 9 (2013).
the software he wrote, see Compl. ¶¶ 16,
20; Countercl. ¶ 4, Kushner wants a preliminary
injunction covering use of that software and access to that
software's source code. Dkt. No. 22, at 16. As to use,
Kushner does not have a fair chance of defeating Vickerman
Company's license defense. A license to use the software
is implied because, on the preliminary record, Vickerman
Company paid Kushner to write and adapt the software for the
Company's use. Kushner's 2016 Invoice lists a rated
payment for his recorded hours and a lump payment for
Vickerman Company's website. Dkt. No. 23-2 (describing
total payment of $60, 250 for Kushner's 2016 services).
Kushner wrote that website's source code. Countercl.
¶ 4 (“Counter Defendant's website”).
More generally, Kushner adapted the software he wrote for
Vickerman Company's use. See, e.g., id.
(“This program records products information that
[Vickerman Company's] customer(s) offer on their own
websites. [The Company's CEO] suspected that some of
[the] customers were counterfeiting [Company]
products.”). Depriving Vickerman Company of that use
would deny the Company the benefit of paying Kushner to write
the software. The Motion is thus DENIED IN
PART as to Vickerman Company's use of any copies
installed and compiled on Company machines.
more limited injunction covering only source-code access,
Kushner has a fair chance of prevailing as to threatened
derivation from that source code. One, he is fairly likely to
show that Vickerman Company has threatened infringement in
that way. And, two, he is fairly likely to defeat the
Company's license defense as to that form of
infringement. In an October 4, 2017 Email, a Company
programmer proposed “add[ing] a watcher to the printing
process” while “looking at the code” for a
program called Epick. Dkt. No. 40. For Vickerman
Company's use, Kushner wrote a program called Epick.
Countercl. ¶ 4. In an October 16, 2017 Email, that
programmer proposed “go[ing] into the PrintIt! [source]
code and replac[ing]” something. Dkt. No. 41. Kushner
wrote a program called PrintIt for Vickerman Company's
use. Countercl. ¶ 4. On the preliminary record,
Vickerman Company is fairly likely to have the source code
Kushner wrote and to at least stand at the threshold of
preparing a derivative work from it.
license is implied to derivation. While writing the software,
Kushner mostly kept the source code on his machines. Compl.
¶ 14. Although Vickerman Company paid Kushner to write
software for its use, the Company also paid him annually for
“writing, monitoring, maintaining, and
troubleshooting.” Compl. ¶¶ 16, 20. If
unlicensed, these updating activities would infringe the
copyright in the software Kushner wrote. An implied license
to prepare derivative works would thus be inconsistent with
the preliminary record.
prevent infringement by preparation of derivative works, the
Court ENJOINS Vickerman Company to return to
Kushner and then delete any source-code copies of that
software. This Order applies to the following programs that
Kushner titled: PDF Printer, PrintIt,
Integrated FedEx, Integrated UPS,
EDI (Electronic Data Interchange),
Epick, Integrated Electronic Scale,
Integrated Everest API, Product Selector,
Integrated UPS shipment charges calculator,
Counter Defendant's website, Receipt
processor, Data exchange between Everest and
Aleran, Csv2Xml and Website scraper.
See Fed. R. Civ. P. 65(d)(1).
equities support this injunction. As discussed above, it fits
what Kushner has a fair chance of showing on the merits. And
because copyright infringement is fairly likely to be shown,
irreparable harm is presumed. Taylor Corp. v. Four
Seasons Greetings, LLC, 315 F.3d 1039, 1041-42 (8th Cir.
2003). Kushner moved about two months after Vickerman
Company's critical emails were made-a longer period than
from when they were discovered-so that presumption is not
rebutted by movant's delay. See Novus Franchising,
Inc. v. Dawson, 725 F.3d 885, 895 (8th Cir. 2013)
(holding no abuse when irreparable-harm presumption was
rebutted by movant's “failure to seek injunctive
relief for . . . seventeen months”).
injunction is “narrowly tailored to protect
[Kushner's] interest” in sole control of the source
code. See Hill, 939 F.2d at 631. Vickerman Company
would not be injured much if it lost access to that source
code. The Company denies access. The Company also derides the
source code as “obsolete” and has already
“hire[d] others to independently rewrite and
replace” the software Kushner wrote. Vickerman
Company's Opp'n 25 (arguing “Balance of
Harm”), Dkt No. 31. Besides, Vickerman Company may
continue using any copies of that software it has compiled
and installed on its machines. SECURITY is
thus set at $25, 000. See Fed. R. Civ. P. 65(c).
this injunction serves the “public interest . . . in
protecting the holders of valid copyrights from infringing
activity.” Taylor Corp., 315 F.3d at 1042.
This injunction's harms are borne by small, private
actors within a competitive marketplace and thus do not
amount to a public interest. Cf. Winter v. Nat. Res. Def.
Council, Inc., 555 U.S. 7, 26 (2008).
Kushner's Motion for a preliminary injunction [Dkt. No.
21] is GRANTED IN PART as to source-code
access and DENIED IN PART ...