Geospatial Tech. Assocs. v. United States

1

GEOSPATIAL TECHNOLOGY ASSOCIATES, LLC Plaintiff, v. THE UNITED STATES, Defendant.

No. 16-346C

United States Court of Federal Claims

May 3, 2024

(Re-issued: May 20, 2024)^[1]

Richard T. Matthews, Williams Mullen, P.C., of Washington DC, for plaintiff.

Jenna Munnelly, Trial Attorney, United States Department of Justice, Civil Division, Commercial Litigation Branch Washington, DC, with whom were Brian M. Boynton, Principal Deputy Assistant Attorney General, and Scott Bolden, Director, for defendant. Brian N. Gross, of counsel.

OPINION

Eric G. Bruggink, Senior Judge.

This is a patent and copyright infringement suit brought against the United States for the alleged unauthorized use of plaintiff's intellectual property in its target detection system and software, known as NINJA.pro. Pending before the court are two motions relating solely to plaintiff's copyright claim: defendant's motion to dismiss, or in the alternative for summary judgment, ECF No. 360, and defendant's motion for summary judgment, ECF No. 361.^[2] For the reasons discussed below, we deny both motions. The issues they raise must be addressed at trial.

DISCUSSION

I. Defendant's Motion to Dismiss^[3]

Defendant first moves to dismiss plaintiff Geospatial Technology Associates, LLC's ("GTA") copyright infringement claim for lack of jurisdiction under Rule 12(b)(1) of the Rules of the Court of Federal Claims ("RCFC"), or in the alternative for summary judgment under RCFC Rule 56. Defendant argues that GTA's claim is jurisdictionally barred by 28 U.S.C. § 1498(b) because approximately half of the copyrighted work was prepared by persons in the service of the United States, as part of their official functions, and because the copyrighted work was prepared with government time, material, or facilities.

28 U.S.C. § 1498(b) governs allegations of copyright infringement against the United States and provides a waiver of sovereign immunity for such claims. The waiver is followed by three disjunctive provisos, the second and third of which are relevant here:

Provided, however, That this subsection shall not confer a right of action on any copyright owner or any assignee of such owner with respect to any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee, or in the preparation of which Government time, material, or facilities were used.

28 U.S.C. § 1498(b). For clarity, we will refer to the provisos separately as "the official functions proviso" and "the government time, material, or facilities proviso."

The Federal Circuit has held that the § 1498(b) provisos are jurisdictional, in that the provisos "carv[e] out three classes of copyright infringement claims from the Government's general waiver of sovereign immunity for copyright infringement." Blueport Co. LLC v. United States, 533 F.3d 1374, 1380 (Fed. Cir. 2008). Plaintiffs bringing a copyright infringement claim have the burden of showing that their claim is not barred jurisdictionally by these provisos. Id. at 1381. Plaintiffs must prove this by a preponderance of the evidence. Reynolds v. Army &Air Force Exch. Serv., 846 F.2d 746, 748 (Fed. Cir. 1988). Accordingly, GTA must show that the copyrighted work was prepared by persons not in the "employment or service of the United States"-so that neither proviso applies-or, if it was prepared by persons in the "employment or service of the United States," that (1) the work was not prepared as part of the persons' official functions, and (2) the work was not prepared using government time, material, or facilities. For purposes of this analysis, we have previously determined that the term "in service of the United States," as used in the § 1498(b) provisos, encompasses contractual relationships, and is not limited to employer-employee relationships. Order at 1-2 n.1, Sept. 2, 2022, ECF No. 322.

Before discussing the present motion in any further detail, we find it useful to briefly set out some relevant background. First, two undisputed time periods are relevant to this motion: the periods during which Dr. William Basener, GTA's president and the author of NINJA.pro, was in government service. Dr. Basener's first stint in government service was from 2007 to 2008, under contract as a visiting scientist at the National Geospatial-Intelligence Agency ("NGA"). His second period in government service was from February to May 2010, as a subcontractor on the GeoSage contract for the NGA.

Second, a previous motion to dismiss filed by defendant provides helpful context for the present motion. Defendant first filed a motion to dismiss based on these provisos on January 3, 2022. ECF No. 277. There, defendant argued that NINJA.pro was prepared by Dr. Basener while in service of the United States under the GeoSage contract from February to May 2010. In response, plaintiff provided secondary evidence that a version of NINJA.pro pre-existed Dr. Basener's work under the GeoSage contract.

The court denied that motion without prejudice because the facts were not sufficiently developed to show what was prepared before versus during the GeoSage contract. Order at 3, Sept. 22, 2022, ECF No. 322.

Turning to the present motion, defendant first argues that NINJA.pro falls within the official functions proviso. This proviso qualifies our jurisdiction in that it prohibits any right of action "with respect to any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee." § 1498(b). As explained by Judge Block in Blueport Co. LLP v. United States, the term "official functions" as used in the provisos is similar to the term "scope of employment" as used in agency law. 76 Fed.Cl. 702, 725 (2007), aff'd, 533 F.3d 1374 (Fed. Cir. 2008). Judge Block looked to the Restatement (Second) of Agency, which indicates that:

Conduct of a servant is within the scope of employment if, but only if: (a) it is of the kind he is employed to perform; (b) it occurs substantially within the authorized time and space limits; [and] (c) it is actuated, at least in part, by a purpose to serve the master.

Id. (quoting Restatement (Second) of Agency § 228(1) (Am. Law. Inst. 1958)). The Restatement explains further that "[t]o be within the scope of the employment, conduct must be of the same general nature as that authorized, or incidental to the conduct authorized." Id. at 726 (quoting Restatement (Second) of Agency § 229(1)). Thus, to determine what one's "official functions" are for purposes of § 1498(b), we address three factors: (1) "the general type of work performed" for that position, (2) "if the work occurred within the authorized time and space limits," and (3) "the employee's motivation in producing the work." Blueport, 76 Fed.Cl. at 726, 727, 729.

Defendant argues that the official functions proviso applies to NINJA.pro because the software file that started under a different name, but eventually became NINJA.pro, was prepared by people employed by or in service of the United States, and as part of their official duties. Defendant's argument focuses on Dr. Basener's first period of government service from 2007 to 2008, and his work with Dr. Thomas Braun at NGA.^[4] At a high level, defendant argues that the copyrighted work, NINJA.pro, began as a file named background_mod_mf.pro; that the official functions proviso applies to background_mod_mf.pro; and that the official functions proviso, therefore, applies to NINJA.pro.

The facts relied on by defendant to support this argument are relatively straightforward and are drawn primarily from the deposition transcripts of Dr. Basener and Dr. Braun, as well as an email sent by Dr. Braun. The file named background_mod_mf.pro was written by Dr. Basener and Dr. Braun during Dr. Basener's first period of government service, 2007 to 2008. See ECF No. 360-3 at 102:21-103:1 (Dr. Basener's deposition transcript); ECF No. 360-2 (email from Dr. Braun). Dr. Basener continued working on a version of background_mod_mf.pro after leaving that first period of government service, renaming the file NINJA.pro at some time prior to his second period of government service in 2010. See ECF No. 3603 at 265:16-266:4 (Dr. Basener's deposition transcript).

Other than the extent of Dr. Braun's involvement in the creation of background_mod_mf.pro, none of these facts are meaningfully disputed by plaintiff anywhere in its response to defendant's motion. See ECF No. 374 at 3-13 (Response to Alleged Undisputed Facts). Plaintiff notes in response that, at his deposition, Dr. Braun was unable to identify any particular lines of the code he had written in an exhibit he was provided, ECF 374-2 at 65:712. The preceding portion of the deposition transcript shows, however, that Dr. Braun confirmed that he and Dr. Basener had worked on background_mod_mf.pro together at NGA. Id. at 64:12-17.

Relying on these facts, defendant argues that background_mod_mf.pro was prepared by Dr. Braun (a government employee) and Dr Basener (in service of the United States under his Visiting Scientist contract) as part of their official functions. Using Dr. Braun's deposition transcript, defendant argues that Dr. Braun was hired to work on hyperspectral technologies, and that preparing background_mod_mf.pro was of the general type of work performed for his position. Background_mod_mf.pro was written to be part of software called Topological Anomaly Detector ("TAD"), which itself falls within the scope of Dr. Braun's work on hyperspectral technologies. Defendant also notes that nothing in the record indicates that Dr. Braun worked on...