Oliver v. Johanson
329 F. Supp. 3d 684
| S.D.N.Y. | 2018Background
- Dale Oliver (programmer) and Bruce and Blair Johanson (business/clients) formed DB Squared, LLC in 2005; operating agreement provided each member one-third interest.
- A software product evolved from JESAP (registered 2008) into DBCompensation (rebranded ~2009–2010); registration for JESAP 2008 listed DB Squared as author (work made for hire).
- Oliver, who implemented copyright notices in the code and served as CTO, emailed a resignation in October 2016 but did not execute any written transfer of his membership interest.
- In Feb. 2017 Oliver separately registered a copyright for DBCompensation in his name (not as work for hire) after altering submitted source-code pages to show him as author.
- Oliver sued seeking (inter alia) declaration that he remains a one-third member of DB Squared and that he owns the DBCompensation copyright; DB Squared counterclaimed that the Company owns the copyright and that Oliver breached fiduciary duties.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Oliver’s resignation as CTO terminated his LLC membership | Oliver: resignation as officer did not transfer or terminate membership; no written transfer per operating agreement | DB Squared: filing suit seeking dissolution terminated membership under Ark. Code § 4‑32‑802 | Held for Oliver: resignation and filing did not terminate membership; Oliver remains one‑third member |
| Whether DB Squared owns the DBCompensation copyright because Oliver exchanged authorship for membership/distributions | Oliver: Copyright initially belongs to author; no written transfer per 17 U.S.C. § 204 | DB Squared: Oliver contributed work in exchange for membership and distributions, so Company owns rights | Held for neither: summary judgment denied for DB Squared; transfer requires signed writing, genuine disputes remain |
| Whether Oliver’s alleged breach of fiduciary duty (corporate opportunity) vested copyright in DB Squared | Oliver: fiduciary theory cannot override Copyright Act and § 301 preemption issues | DB Squared: breach means copyright held in trust for Company | Held for neither: preemption and applicability of corporate-opportunity doctrine unresolved on summary judgment |
| Whether the DBCompensation software is a work made for hire (employee status) | Oliver: he worked as independent contractor via his company (ACT); no written work‑for‑hire agreement | DB Squared: evidence supports employee status and work made for hire | Held for neither: disputed facts on employee vs contractor and whether DBCompensation is derivative preclude summary judgment for DB Squared |
Key Cases Cited
- Canada v. Union Elec. Co., 135 F.3d 1211 (8th Cir.) (standard for viewing facts on summary judgment)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (U.S. 1986) (summary judgment burden analysis)
- Saxon v. Blann, 968 F.2d 676 (8th Cir.) (copyright transfer requires writing)
- Community for Creative Non‑Violence v. Reid, 490 U.S. 730 (U.S. 1989) (test for employee vs independent contractor for work‑for‑hire)
- Robinson v. R & R Publ’g, Inc., 943 F. Supp. 18 (D.D.C.) (corporate‑opportunity/fiduciary theory applied to copyright dispute)
- Crumpton v. Vick’s Mobile Homes, LLC, 335 Ga. App. 155 (Ga. Ct. App.) (interpreting statutory dissociation language similar to Ark. Code § 4‑32‑802)
- Kirk v. Harter, 188 F.3d 1005 (8th Cir.) (question of employment status is a question of law but may be submitted to a jury)
- Guth v. Loft, 5 A.2d 503 (Del. 1939) (corporate opportunity doctrine)