Roeslin v. District of Columbia
921 F. Supp. 793, 38 U.S.P.Q. 2d (BNA) 1906, 1995 U.S. Dist. LEXIS 20749 (1995)
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Rule of Law:
A work created by an employee is not a "work made for hire" if it is not the kind of work the employee was hired to perform, was created primarily on the employee's own time and with their own resources, and was not primarily motivated by a purpose to serve the employer, especially when the employer initially discouraged the project.
Facts:
- In November 1986, plaintiff was hired by the District of Columbia's Department of Employment Services (D.O.E.S.) as a Labor Economist for a four-year term; he had no computer programming skills at the time.
- Plaintiff's job duties involved improving survey responses and developing employment projections, not computer programming.
- In June 1988, plaintiff proposed creating a PC-based system to his supervisor, Mr. Groner, who discouraged the idea, stating it was not feasible and would interfere with plaintiff's assigned duties.
- Mr. Groner told plaintiff that if he created the program on his own time, it would be in the "public domain," which plaintiff understood to mean no one would own it.
- Plaintiff proceeded to teach himself programming and spent approximately 3,000 hours creating the DC-790 software system at home, using a personal computer and software he purchased with his own funds.
- Plaintiff brought completed modules of the program into the office to test with actual data and eventually incorporated the full system into D.O.E.S.'s workflow.
- In April 1991, plaintiff learned for the first time that the District was asserting a proprietary interest in the program.
- Upon learning of the District's claim, plaintiff immediately asserted his own copyright ownership and subsequently registered the copyright for the DC-790 system.
Procedural Posture:
- Plaintiff, an employee of the Department of Employment Services, filed a copyright infringement action against the District of Columbia in the United States District Court for the District of Columbia.
- The matter proceeded to a trial before the court.
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Issue:
Does a computer program developed by an employee on their own time, with their own resources, and for their own career goals, constitute a "work made for hire" under 17 U.S.C. § 101, thereby making the employer the copyright owner, especially when the employer initially discouraged the creation of the program?
Opinions:
Majority - Harold H. Greene
No. A computer program developed by an employee under these circumstances is not a "work made for hire," and the copyright is owned by the employee-author, not the employer. The court applied the three-prong test for scope of employment from the Restatement (Second) of Agency, which the defendant employer must prove. First, creating the program was not the kind of work the plaintiff was employed to perform; he was a labor economist, not a computer programmer, and his employer explicitly discouraged the project. Second, the work did not occur substantially within authorized time and space limits, as the plaintiff spent 3,000 hours creating it at home on his own computer. Third, the plaintiff was not primarily motivated by a purpose to serve the employer but by a desire to create job opportunities for himself and prove the concept was viable. Because the defendant failed to establish that the work was created within the scope of employment, the copyright belongs to the plaintiff.
Analysis:
This decision provides a clear application of the agency law framework established in Community for Creative Non-Violence v. Reid to determine what constitutes a "work made for hire." It establishes that an employer's ownership is not automatic and depends heavily on the specific facts surrounding the work's creation. The ruling serves as a significant precedent, especially in technology and software development, by reinforcing that employee-created intellectual property developed outside of defined job duties, on personal time and resources, belongs to the employee. It also highlights that an employer's initial discouragement of a project can critically undermine a later claim that the work was done to serve them.
