IP Law Daily On remand, claim of joint authorship of ethnic identification system rejected
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Monday, December 3, 2018

On remand, claim of joint authorship of ethnic identification system rejected

By Joseph Arshawsky, J.D.

Plaintiff Peter Brownstein was denied a declaratory judgment of joint authorship of an ethnic identification system that he purportedly created with defendant Tina Lindsay, the federal district court in Trenton, New Jersey ruled, granting Lindsay’s motion for summary judgment. Brownstein could not demonstrate that he was a co-author of a version of the software licensed after a 1998 settlement agreement, which was the sole issue remaining following remand from the United States Court of Appeals for the Third Circuit (Brownstein v. Lindsay, November 28, 2018, Wolfson, F.).

In March 2010, Brownstein brought this suit seeking a declaratory judgment that he is a co-author of a joint work for which Lindsay registered a copyright in 1996. This copyright, also known as the Ethnic Determinant System ("EDS"), developed rules for computer programs to predict and categorize people’s names by ethnicity. At the time the EDS was conceived, Brownstein and Lindsay worked together at what is now List Services Direct, Inc. ("LSDI"). Because of their working relationship, in January 1994, Lindsay enlisted Brownstein’s expertise to turn her rules into computer codes. Brownstein, for his part, created a number of computer programs, which were known as the ETHN programs, that converted lists of names into data format and turned EDS rules into code. The combined product of the EDS and the ETHN programs was named the Lindsay Cultural Identification Determinant ("LCID"). In that regard, as the Third Circuit recognized, "Lindsay was the sole author of the EDS, as an independent work of the LCID, Brownstein was the sole author of the ETHN programs, as another independent work of the LCID, and they both had an equal authorship interest in the LCID as a joint work of the EDS and ETHN programs."

The 1998 LSDI Settlement Agreement. LSDI brought a lawsuit against Lindsay and Brownstein over Lindsay’s copyrighted works, claiming that they were created as works for hire. The suit eventually settled in September 1998 (the "1998 LSDI Settlement Agreement") which substantially impacted the rights of the parties vis-aÌ-vis the EDS copyrights, particularly Brownstein. Essentially, Lindsay retained sole ownership of the EDS, but Lindsay and Brownstein both relinquished any interest in the programs that the pair had created while employed at LSDI, including any derivative works based upon those programs. In other words, pursuant to the terms of the settlement, Brownstein and Lindsay could no longer utilize the version of the LCID program developed by them while employed at LSDI.

The Third Circuit decision. Regarding the joint authorship claim, the Third Circuit found that Brownstein and Lindsay were co-authors of the LCID up until its 1997 iteration. The Third Circuit made legal conclusions regarding Brownstein’s work and contribution to the LCID: "Brownstein had copyrights exclusively in his ETHN programs as an independent work and non-exclusively in the LCID as a co-author." The Third Circuit found that Brownstein’s 2009 copyright registrations would cover any post-1998 generations of the ETHN programs that were not covered by the 1998 Settlement Agreement with LSDI. Importantly, the court left open the very factual question dispositive on this motion: to what extent did the 1998 LSDI Settlement Agreement abrogate Brownstein’s ownership of the pre-1998 generations of the LCID. More importantly, while it is possible that the later versions of the LCID continued to employ the code created by Brownstein, it was incumbent upon him to make that evidentiary showing. The Third Circuit found that the 1996 registered works, i.e., EDS, belonged to Lindsay. Thus, the remaining question was whether any derivatives of the LCID, which is the joint work of Brownstein and Lindsay, continued to be utilized by Lindsay without compensating Brownstein.

Joint authorship. The court concluded that Brownstein failed to prove that he was a joint author of the LCID System following the 1998 LSDI Settlement Agreement. Brownstein maintains that he is the co-owner of the latest version of the software because it is a derivative of the LCID. Brownstein’s case is basically that as a co-author of the LCID since 1996, Brownstein is entitled to profits of any derivative works that were created from the LCID during the period of 2010 to the present. "I am not persuaded by Plaintiff’s simplistic view of the facts, particularly since he has not carried his burden of proving that he is a co-author of the later version of the LCID that was licensed ... after the 1998 LSDI Settlement Agreement," the court said. Brownstein failed to present evidence to show that he is a co-author of the version of the LCID that was licensed to create derivative works. While it is undisputed that Brownstein is a co-author of the LCID, the important distinction that must be drawn—which was highlighted by the Third Circuit—is that Brownstein co-owned the LCID "up until its 1997 iteration," before he entered into a settlement agreement with LSDI, the court said. This distinction has a significant legal implication on Brownstein’s rights as co-owner of the LCID. In 1998, however, the settlement with LSDI significantly changed Brownstein’s ownership in the LCID. In the settlement agreement, the LSDI Defendants, which included Brownstein, agreed not to claim ownership or any of the rights to the LSDI program or any derivative work. Importantly, the LSDI program refers to the version of LCID that Plaintiff had created during his employment with LSDI. Pursuant to the terms of the settlement, the LSDI Defendants agreed that LSDI would retain ownership of the 1998 version of LCID. However, Lindsay retained her sole ownership to the EDS copyrights. In sum, the settlement agreement deprived Brownstein of ownership in the pre-1998 version of the LCID. To survive summary judgment, Brownstein had to present some evidence to show that the later versions of the software contained his work, and Brownstein failed to so.

After years of discovery, numerous rounds of motion practice, and a trial, Brownstein still has not adduced any cogent evidence to establish that he is a co-author of any versions of the LCID, and in turn E-Tech, after the 1998 LSDI settlement. "Plaintiff must make an affirmative showing that later versions of the LCID included his work, and he has come up empty handed in that respect," the court said. Plaintiff’s attempt to create issues of fact failed, and because Plaintiff could demonstrate, on this motion, that he was a co-author of a version of the LCID or E Tech licensed by ET after September 1998, the defendants’ motion for summary judgment was granted.

This case is No. 3:10-cv-01581-FLW-TJB.

Attorneys: Jay R. McDaniel (Weiner Law Group LLP) for Peter Brownstein. Jesse Colin Klaproth (Klaproth Law PLLC) and Thomas Smith Howard (Gartenberg Howard LLP) for Tina Lindsay and Ethnic Technologies, LLC.

Companies: Ethnic Technologies, LLC

MainStory: TopStory Copyright NewJerseyNews

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