Implied License to Use Custom Created Software Defeats Copyright and Trade Secret Claims

Case: Asset Marketing v. Gagnon, 9th Cir. No. 07-55217 (9/9/08)

The One Sentence Summary: An implied license to use and modify software arose between a contractor who created customized software for a customer and the customer.



Ninth Circuit Holdings:

• Implied, unlimited license arose under copyright law from relationship where plaintiff created customized software for defendant where the contract was silent regarding a license, the contractor was paid on an hourly basis, and software was delivered without indication that there were any limits on use by the defendant.
• Trade secrets alleged to be in the software were not misappropriated where defendant had an implied license to use and modify the software.
• A non-compete agreement for plaintiff's fomer employees was unenforceable absent any trade secrets due to California Business & Professions Code section 16600.
  
  

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Watches Manufactured Abroad Bearing US Copyrighted Design Cannot Be Imported Without Copyright Owner's Consent According to Ninth Circuit

Case: Omega S.A. v. Costco Wholesale, 9th Cir. No. 07-55368 (09/03/08)
The Two Sentence Summary: The Ninth Circuit panel reaffirmed their precedent holding that importation and sale of imported "gray market" watches manufactured overseas bearing a copyrighted design registered in the United States was an infringement of copyright. The panel distinguished the Supreme Court’s decision in Quality King Distributors, Inc. v. L’anza Research International, Inc., 523 U.S. 135 (1998), which held that the first sale doctrine allowed resale of gray market products which had been manufactured in the United States.

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