164 F. Supp. 3d 964
E.D. Mich.2016Background
- Mahavisno, a University of Michigan employee, wrote Oncomine software (versions 2.0–3.0) for Chinnaiyan and Rhodes while at UM; UM owned the IP under his employment agreement.
- Chinnaiyan and Rhodes formed Compendia in 2006, obtained a license from UM for Oncomine 3.0, and asked Mahavisno to continue developing/augmenting the software for Compendia from 2006–2007.
- Mahavisno alleges Compendia promised him compensation and an ownership interest (stock/options/proceeds on sale) in exchange for his continued development; he was never paid and never signed a written agreement with Compendia.
- Mahavisno stopped working for Compendia in April 2007; Compendia was acquired by Life Technologies in 2012; Compendia offered Mahavisno $25,000 for assignment of IP rights shortly before the sale, which he refused, and he later registered a copyright and sued.
- Claims: (I & II) Copyright infringement against Compendia and Life; (III) Breach of implied-in-fact contract (promises of salary, bonus, stock/options, and ownership interest/proceeds).
- District court granted summary judgment to defendants on copyright claims (implied license) and granted-in-part / denied-in-part summary judgment on the implied-in-fact contract claim: salary/bonus claims time-barred; ownership-interest claim survives.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether defendants infringed Mahavisno’s copyright or had an implied license | Mahavisno wrote code but retained copyright; any use by Compendia without full compensation is infringement | Compendia requested, received, and was intended to use the code — an implied (nonexclusive) license bars infringement claims | Court: Implied license existed; copyright claims (Counts I & II) dismissed |
| Whether Mahavisno revoked the implied license by suing in 2013 | Mahavisno contends he did not consent to post-relationship use and seeks relief for infringement | Defendants: license was supported by consideration and thus irrevocable; filing suit does not revoke it | Court: License was supported by consideration (contract/performance) and not unilaterally revocable; revocation argument rejected |
| Whether implied-in-fact contract claims for salary and bonus are time-barred | Mahavisno conceded those claims accrued earlier and are timely or excused | Defendants: Michigan 6-year statute bars salary/bonus claims because accrual occurred by April 2007 | Court: Plaintiff conceded; salary and bonus claims dismissed as time-barred |
| Whether the ownership-interest promise claim is time-barred | Mahavisno: promise to receive ownership/proceeds upon sale was breached when Compendia was sold in 2012 | Defendants: all promises were effectively breached by 2007, triggering the statute earlier | Court: Issue of fact whether breach of ownership promise occurred at sale (2012); claim survives summary judgment |
Key Cases Cited
- Johnson v. Jones, 149 F.3d 494 (6th Cir. 1998) (licenses may be implied by conduct and bar infringement suits)
- Lulirama Ltd., Inc. v. Axcess Broad. Serv., 128 F.3d 872 (5th Cir. 1997) (three-part test for implied license: request, creation/delivery, intent to copy/distribute)
- IAE, Inc. v. Shaver, 74 F.3d 768 (7th Cir. 1996) (discussing elements for implied license)
- Effects Assocs., Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) (creator who delivers work at request, intending use, grants implied nonexclusive license; remedy is contract claim for unpaid compensation)
- Miller-Davis Co. v. Ahrens Constr., 495 Mich. 161 (Mich. 2014) (separate breaches of the same contract can have distinct accrual dates for statute-of-limitations purposes)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment standard)