Technology Contracting for Transit Projects (2017)

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30 B. Technology That Is Copyrightable and Patentable Software demonstrates characteristics of works that traditionally come within the protection of the copyright laws, as well as characteristics that may be patentable; thus, technology may have features that are subject to the copyright laws and the patent laws. In general, inventions with a function are patentable, whereas a work that conveys informa- tion or an image is copyrightable.421 Although a patent requires that an inventor apply for a patent, a work that is copyrightable is protected as soon as the author or designer creates the work.422 C. Copyrightability of Digital Intellectual Property IP law consists of patent, trademark, copyright, unfair competition, and trade secret law.423 Copy- right law applies to the protection of digital IP, because “virtual space consists mainly of text and images, and therefore, by its nature, makes copyright a powerful tool for determining ownership.”424 The copyright laws recognize three types of copyrighted works in which the copyright holder may have rights: the section 102(a) creative work, the section 103 compilation, and the section 103 derivative work.425 Only an author of an original “work,” as defined in the Copyright Act, is entitled to copyright protec- tion.426 Copyright law balances an author’s interest in receiving the benefit of a work with the public’s interest in having access to the work.427 The copy- right laws derive from the U.S. Constitution that gives Congress the power to grant “Authors and Inventors the exclusive right to their respective Writings and Discoveries.”428 One does not have to be professionally licensed to be the author of an orig- inal work. Registration of a copyright is not required for an author to have a copyright in a work, because “copyright automatically inheres in a work the moment it is ‘created,’ which is to say ‘when it is fixed in a copy…for the first time.’”429 However, a X. TECHNOLOGY CONTRACTS AND PROTECTION OF A TRANSIT AGENCY’S RIGHTS UNDER THE COPYRIGHT LAWS A. Introduction A transit agency may choose to develop and own its technology; for example, it may engage an inde- pendent contractor to design software and related systems. Under 17 U.S.C. § 201(a) (2016), a “work” is one that is protected under the copyright laws that “vests initially in the author or authors of the work.” Unless a contract provides otherwise, an indepen- dent contractor will hold the copyright in any soft- ware designed or developed for the agency. Thus, transit agencies should consider including a work product clause in their agreements with software designers, developers, or programmers so that tran- sit agencies own the copyright in any work. One source states that agencies “should consider work product clauses in all their service contracts.”418 Under 17 U.S.C. § 201(b), unless a signed contract provides to the contrary, a “work for hire” is a work for which an “employer or other person for whom the work was prepared is considered the author” and the owner of all rights in the copyright. Therefore, unless there is a contrary agreement, when software is developed by a transit agency’s employee that is within the scope of his or her work, the software is a work made for hire and owned by the transit agency as the employer.419 As one source confirms, “compa- nies often own [intellectual property] their employ- ees create within the scope of their duties.”420 418 Tollen, supra note 26, at 28. See also, Robert K. Huff- man & Lynda T. O’Sullivan, Uncharted Waters: State Con- tracting Terms and Conditions, Intellectual Property, and the Homeland Security Era, 33 PuB. cont. L.J. 163, 185–86 (2003), hereinafter referred to as “Huffman & O’Sullivan” (stating, for example, that Michigan’s standard terms and conditions for procurement of information technology and professional services define the term work product as “any data compilations, reports, and any other media materials or other objects or works of authorship created or produced by the Contractor as a result of and in furtherance of per- forming the services required by this Contract” and that the “state’s rights in the work product include the right to use and the right to authorize others to use for any purpose, regardless of the existence therein of preexisting work, materials, and/or development tools (unless specifically limited by the contract”)). 419 Classen 5th ed., supra note 257, at 207. See also, Moffat v. Acad. of Geriatric Physical Therapy, Case No. 15-CV-626-jdp., 2016 U.S. Dist. LEXIS 177209, at *1, 35 (W.D. Wis. Dec. 22, 2016) (stating that under common law principles of agency, the plaintiffs’ contributions to course materials were made as Academy employees; thus, the works were works for hire under the Copy- right Act). 420 Tollen, supra note 26, at 175. 421 Dennis S. Karjala, The Relative Roles of Patent and Copyright in the Protection of Computer Programs, 17 J. marsHaLL j. comPuter & info. L. 41, 45–46 (1998–99). 422 Id. at 45. 423 Daniel C. Miller, Determining Ownership in Virtual Worlds: Copyright and License Agreements, 22 rev. Litig. 435, 438 (2003), hereinafter cited as “Daniel Miller.” 424 Id. 425 L. Ray Patterson & Stanley F. Birch, Jr., A Unified Theory of Copyright, 46 Hous. L. rev. 321, 332 (2009). 426 1 Nimmer on Copyright § 1-103. 427 Daniel Miller, supra note 423, at 438. 428 U.S. const. art. I, § 8, cl. 8. 429 1 Nimmer on Copyright § 7.16[A][1] (citation omitted).

31 amendment in 1980 to the Copyright Act, a defini- tion of the term computer program is included in the section on copyrightable subject matter.438 A computer program is protected from unauthorized copying as a literary work if the program satisfies the originality and fixation requirements of the Copyright Act.439 Expression in a computer program is copyrightable, but the actual processes or meth- ods embodied in a program are not.440 An audiovi- sual program and the computer program that implements it are separately copyrightable.441 An infringer may copy the audiovisuals or the underly- ing computer program;442 thus, who owns a work and any derivative works depends on the copyright laws and any contract applicable to the creation of the work. With some exceptions as discussed in this report, under the copyright laws it is the creator of a work who has exclusive rights to the work, including the rights to derivative works.443 For the most part, the default rules established by the copyright laws may be altered by a license or other agreement. copyright must be registered before an owner may bring an action for infringement.430 Whether a designer, for example, may hold a copy- right in a work depends on the originality of the designer’s work, as well as on whether the work is copyrightable under one of the classifications in section 102(a).431 Architectural plans and drawings are copyrightable as “pictorial, graphic, [or] sculp- tural works”432 and receive copyright protection as both technical drawings and as architectural works.433 Whether a design is copyrightable depends on the originality of “the selection of [the] elements and in the coordination and arrangement of those elements into a design.”434 Also copyrightable are “audiovisual works.”435 Thus, a designer’s original work is subject to and protected by the copyright laws.436 A computer program is protected under the Copy- right Act as a “literary work.”437 Because of an 430 Id. § 7.16[B][1][a]. Also, “[o]nce the plaintiff produces a copyright certificate he establishes a prima facie case of validity of the copyright and the burden of production shifts to the defendant to introduce evidence of invalidity.” Fred Riley Home Bldg. Corp. v. Cosgrove, 883 F. Supp. 1478, 1481 (D. Kan. 1985) (citing Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 826 (11th Cir. 1982)). 431 Raghu Seshadri, Bridging the Digital Divide: How the Implied License Doctrine Could Narrow the Copynorm- Copyright Gap, 2007 U.C.L.A. J. L. & tecH. 3, Vol. 11, at P14 (2007) (explaining that the requirements of copyright own- ership “include originality, copyrightability of the subject matter, compliance with statutory formalities, and transfer of rights”) (citing Nimmer on Copyright § 13.01[A])). 432 Eales v. Environmental Lifestyles, Inc., 958 F.2d 876 (9th Cir. 1992). 433 Thomas v. Artino, 723 F. Supp. 2d 822 (D. Md. 2010). See Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, 716 F. Supp. 2d 428, 436 (E.D. Va. 2010) (stating that architec- tural drawings receive copyright protection under both 17 U.S.C. § 102(a)(5) (“pictorial, graphic, and sculptural works”) and § 102(a)(8) (“architectural works”). See also, Dawn M. Larsen, The Effect of the Berne Implementation Act of 1988 on Copyright Protection for Architectural Structures, 1990 U. iLL. L. rev. 151 (1990) (stating that “[i]t is clear that copy- right protects an architect’s plans from direct copying to make another set of plans, but whether protection extends to the use of copyrighted plans to build a structure is less clear”). 434 David Shipley, The Architectural Works Copyright Pro- tection Act at Twenty: Has Full Protection Made a Difference? 18 J. inteLL. ProP. L. 1, 23 (2010) (quoting Lindal Cedar Homes, Inc. v. Ireland, 2004 U.S. Dist. LEXIS 18878, at *1, 6 (D. Or. 2004) (noting that the AWCPA did not affect the pro- tection of plans as pictorial, graphic, or sculptural works)). 435 17 U.S.C. §§ 102(a)(1) and (6) (2016). 436 Christina Brunka, The Drawing is Mine! The Chal- lenges of Copyright Protection in the Architectural World, 2011 u. iLL. j.L. tecH. & PoL’y 169, 184–85 (2011) (citing Meshwerks, Inc. v. Toyota Motor Sales U.S.A., 528 F.3d 1258 (10th Cir. 2008), cert. denied, 2009 U.S. LEXIS 727, at *1 (U.S., Jan. 21, 2009)), hereinafter cited as “Brunka.” 437 17 U.S.C. § 101 (2016) and Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1249 (3d Cir. 1983). 438 17 USCS § 101 (2016). See M. Kramer Manuf. Co. v. Andrews, 783 F.2d 421, 432 (4th Cir. 1986) (footnote omit- ted); 1 Nimmer on Copyright § 2.04 [C][3] at 2–51 (stating that “[i]t is … firmly established that computer programs qualify as [a] work of authorship” subject to copyright pro- tection); Brignoli v. Balch Hardy and Scheinman, Inc., 645 F. Supp. 1201, 1204 (1986) (stating that “[t]he great weight of authority indicates that computer programs are entitled to protection under copyright law”) (citing Videotronics, Inc. v. Bend Electronics, 564 F. Supp. 1471, 1477 (D. Nev. 1983); Williams Electronics, Inc. v. Artic Int’l, Inc., 685 F.2d 870, 875 (3d Cir. 1982); and Apple Computer, Inc. v. For- mula Int’l, Inc., 562 F. Supp. 775 (C.D. Cal. 1983), aff ’d, 725 F.2d 521 (9th Cir. 1984)). 439 Daniel Miller, supra note 423, at 448 and Apple Computer, Inc. v. Franklin Computer Corp. 714 F.2d 1240 (3d Cir. 1983). See also, annot., Deborah F. Buckman, Copyright Protection of Computer Programs, 180 A.L.R. fed 1 (2002). 440 As for processes, one writer observes that “[p]atent law, not copyright law, provides the traditional mode of protection for utilitarian works such as processes. Processes imple- mented by computer programs are patentable. The Patent and Trademark Office has issued a large number of patents claiming processes implemented by computer programs.” Steven R. Englund, Idea, Process, or Protected Expression?: Determining the Scope of Copyright Protection of the Struc- ture of Computer Programs, 88 micH. L. rev. 866 (1990) at material accompanying notes 136–38 (footnotes omitted). 441 M. Kramer Manuf. Co., 783 F.2d at 441 (citation omitted). 442 Id. at 445. “Copying is ordinarily, due to the lack of direct evidence, established by proof that the defendant had access to the plaintiff ’s work and produced a work that is substantially similar to the plaintiff ’s work.” Id. (citation omitted). 443 Dwight A. Larson & Kate A. Golden, Construction Law: Entering the Brave, New World: An Introduction to Contracting for Building Information Modeling, 34 wm. mitcHeLL L. rev. 75, 89–91 (2007), hereinafter cited as “Larson & Golden.”

32 employees.452 However, a work created for a transit agency by an independent contractor belongs to the independent contractor unless there is a work product clause in the agreement designating the transit agency as the owner of the work and copyright therein.453 E. Identification of the Owner in the Contract Documents 1. Author as Owner The contract documents should address who owns the copyright in a work.454 The contract documents also should specify the party having “the legal rights to reproduce, use, make derivative works, distribute, and publicly display” the work.455 A transit agency may want an author or creator of a work to sign a disclaimer of interest or ownership so that the agency owns any later contributions to a work.456 The General Services Administration maintains owner- ship rights in all data and deliverables provided to the organization.457 In Maryland, a public agency’s rights in technical data are covered by the agency’s standard special conditions that are included in the agency’s contract solicitation packages.458 2. Ownership of a Work Under the Work for Hire Rule Under the work for hire provision of the Copyright Act, a copyright in a work prepared by an employee within the scope of his or her employment is owned by the employer.459 The work for hire doctrine does D. Whether the Government May Have a Copyright in Digital Intellectual Property 1. U.S. Government Under § 105 of the Copyright Act, copyright protection is not available for any work of the U.S. Government. Federal agencies do not have copyright protection for any work created by the government;444 for example, the decennial census is not copyrightable.445 However, the government may hold copyrights that are transferred to the govern- ment (including by an assignment or a bequest)446 or when the government commissions a work prepared by an independent contractor.447 2. State and Local Governments Whether a state or local agency may copyright a work is a matter of state law.448 In response to the survey, five transit agencies stated that any technol- ogy that was developed for their projects in the previous five years was copyrightable.449 The Copyright Act does not preclude a government employee’s work from being copyrightable by the state or its subdivisions.450 At least twenty-eight states claim the right to copyright, “and state copyright claims are routinely made for some categories of state data….”451 The majority rule appears to be that, unless prohibited by state law, state and local agencies may seek copy- right protection for works prepared by their 444 17 U.S.C. §§ 101 and 105 (2009). 445 Robert Gellman, Twin Evils: Government Copyright and Copyright-Like Controls over Government Informa- tion, 45 syracuse L. rev. 999, 1003 (1995), hereinafter cited as “Gellman.” 446 17 U.S.C. § 105. 447 See Robert A. Gorman, coPyrigHt Law 52, 60 (2d ed. 2006). See also, M. B. Schnapper Public Affairs Press v. Foley, 667 F.2d 102 (D.C. Dir. 1981), cert. denied, 455 U.S. 948, 102 S. Ct. 1448, 71 L. Ed. 2d 661 (1982). 448 County of Santa Clara v. Superior Court, 170 Cal. App. 4th 1301, 1332, 89 Cal. Rptr. 3d 374, 397 (2009) (stat- ing that some state laws “explicitly recognize the author- ity of public officials or agencies to copyright specific pub- lic records that they have created”). 449 See Appendix C, responses of Central Florida Regional Transportation Authority (LYNX), Jacksonville Transporta- tion Authority, Shoreline Metro, Transit Authority of North- ern Kentucky, and Washington Metropolitan Transit Author- ity to question 15(a). The Central Florida Regional Transportation Authority (LYNX) observed that the work for one of its projects was copyrightable “by the vendor, not by LYNX.” Thirty-five agencies said that they had not had any copyrightable technology. Two agencies did not respond to the question. Id. No agency reported that it had registered a copyright. Id., transit agencies’ responses to question 16(a). 450 County of Suffolk, New York v. First American Real Estate Solutions, 261 F.3d 179, 187 (2d Cir. 2001) (citations omitted). 451 Gellman, supra note 445, at 1027 (footnote omitted). 452 17 U.S.C. § 201(b) (2016) (“In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed other- wise in a written instrument signed by them, owns all of the rights comprised in the copyright.”) 453 See Huffman & O’Sullivan, supra note 418, at 185–86. 454 Larson & Golden, supra note 443. 455 Id. at 104. 456 E.g., by an independent designer, engineer, project manager, team, contractor, or subcontractor for a project. For the government to use copyrighted material, the gov- ernment must have the copyright owner’s consent. 4 Patry on Copyright § 10:73. 457 Benson T. Wheatley & Travis W. Brown, An Introduc- tion to Building Information Modeling, 27 constr. Law. 33, 34 (2007). 458 SGP – 7.04 Rights in Technical Data (provided by the Maryland Transit Administration). 459 17 U.S.C. § 201(b) (2016). See Raphael Winick, Copy- right Protection for Architecture after the Architectural Works Copyright Protection Act of 1990, 41 duke L. J. 1598, 1641 (1992) (quoting 17 U.S.C. § 201(b)), hereinafter referred to as “Winick,” and James R. Sims III & Brett I. Miller, A Blueprint for Understanding Copyright Owner- ship in Architectural Works, 20 francHise L.J. 52, 54 (2000), hereinafter cited as “Sims & Miller.” A written agreement between an employer and an employee is not needed for the copyright to “vest” in the employer. John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 186 F. Supp. 2d 1, 11 N 1 (D. Mass. 2002), aff’d, 322 F.3d 26 (1st Cir. 2003).

33 their respective contributions.467 Each co-owner may revise the work, make a derivative work, or publish an original or a revision of the work.468 Consultants, contractors, or subcontractors may make significant contributions to a work and conse- quently want to claim joint authorship of it. For there to be joint authorship, a work must be “‘prepared by two or more authors with the inten- tion that their contributions be merged into insepa- rable or interdependent parts of a unitary whole.’”469 In the absence of an agreement with a consultant or other developer of a work, for a transit agency to claim joint authorship of a work, the transit agency would have to establish both that it made an inde- pendently copyrightable contribution to a work and that the parties’ intent was that they would be co-authors.470 The intent to be joint authors is deter- mined as of the time a work is created.471 There are at least two approaches to determining joint ownership, the first being whether a collabora- tor’s contribution meets the originality test of authorship of an original work. Although the Copy- right Act does not specifically require copyrightabil- ity of a collaborator’s contribution,472 the majority view is that a collaborator’s contribution does not result in a joint work “‘unless the contribution repre- sents original expression that could stand on its own as the subject matter of copyright.’”473 In other words, a purported joint author’s contribution must be original and independently copyrightable. If the test for the creation of a joint work is a contribu- tion’s copyrightability,474 then contributions that are not apply when a work is created by an independent contractor. The work belongs to the independent contractor unless there is a signed agreement desig- nating the work as one for hire.460 In the absence of a written agreement to the contrary, an independent architect, consultant, designer, developer, engineer, or planner creating a work usually holds the copy- right in any plans for a project.461 The foregoing rule is not affected by an owner’s involvement or participation in a project, such as by furnishing ideas, preliminary drawings, sketches, or specifications for a project or by having control of a project.462 The owner’s involvement does not make the owner an author or co-author of the work.463 Moreover, in the absence of contract, an owner of a project does not acquire a copyright in any work simply because the owner paid for the work.464 Of course, a transit agency may provide as part of its contract that the agency either owns or is a joint owner of any copyright in a work or derivative work.465 3. Joint Authorship Rule A party who is unable to claim a copyright in a work because of a work product clause or the work for hire rule “may turn to a theory of joint author- ship.”466 As with the work for hire doctrine, under the joint authorship rule, unless otherwise provided by contract, an owner’s involvement, simply by virtue of the owner’s ownership of or participation in the creation of a work, does not render the owner a joint author. The issue of joint authorship is impor- tant because joint authors have an undivided, equal interest in a copyright regardless of the difference in 460 Winick, supra note 459, at 1642 (citing Nimmer on Copyright § 5.03[B]). See also, Creative Non-Violence v. Reid, 490 U.S. 730, 109 S. Ct. 2166, 104 L. Ed. 2d 811 (1989) and Sims & Miller, supra note 456, at 54. 461 Sims & Miller, supra note 459, at 55 and Hi-Tech Video Productions, Inc. v. Capital Cities/ABC, Inc., 58 F.3d 1093 (6th Cir. 1995) (holding that a travel video produced by a pro- duction company having control of a project was not a work made for hire under the copyright statute because the assis- tants who worked on the project were independent contrac- tors, not employees). 462 Norbert F. Kugele, How Much Does it Take?: Copyright- ability as a Minimum Standard for Determining Joint Authorship, 1991 U. iLL. L. rev. 809, 810 (1991), hereinafter referred to as “Kugele” (citing Community for Creative Non- Violence v. Reid, 490 U.S. 730, 750 (1989)). 463 Id. at 828 (citing Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Construction Co., 542 F. Supp. 252 (D. Neb. 1982)). 464 Brunka, supra note 436, at 179 and Sims & Miller, supra note 459, at 53 (citing 17 U.S.C. §§ 201(a) and (b)). 465 Kugele, supra note 462, at 837 (footnote omitted). 466 See id. at 810 (stating that under 17 U.S.C. § 201 a joint author is a joint owner of the copyright and thus entitled to all the privileges of copyright ownership). 467 Sims & Miller, supra note 459, at 56 (quoting 17 U.S.C. §§ 101, 201(a)) and Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994). 468 Weinstein v. University of Illinois, 811 F.2d 1091 (7th Cir. 1987). 469 Daniel Miller, supra note 423, at 458 (quoting 17 U.S.C. § 101). 470 Id. (quoting Thomson v. Larson, 147 F.3d 195, 200 (2d Cir. 1998)). 471 Fred Riley Home Bldg. Corp. v. Cosgrove, 883 F. Supp. 1478 (D. Kan. 1975) (holding that a firm and a builder did not intend to be co-authors at the time that the builder cre- ated the alleged derivative work). 472 Kugele, supra note 462, at 821 (quoting 135 H.R. REP. NO. 1476, reprinted in 1976 U.S.C.C.A.N. at 5736). 473 Id. at 819 (quoting Goldstein § 4.2.1.2, at 379.118). 474 Berman v. Johnson, 518 F. Supp. 2d 791 (E.D. Va. 2007), aff’d 315 Fed. Appx. 461 (2009) (holding that a pro- moter and a film maker had intended to be joint authors and that the promoter’s contributions to the film were independently copyrightable). See Kugele, supra note 462, at 840. Kugele argues that the copyrightability standard is only the “minimum threshold for determining intent” and that other factors should be considered, such as “the extent of the collaboration, the amount contributed in relation to the size of the entire work, and any express agreements that the parties have made between themselves.”

34 of part 200.482 Chapter XII of subtitle B sets forth the U.S. DOT’s regulations for grants and agreements. Appendix A.16 also references 2 C.F.R. § 200.326, which provides that a non-federal entity’s contracts must contain the clauses required by 2 C.F.R. part 200, Appendix II.483 In addition, Appendix A.16 references 37 C.F.R. part 401 on rights to inventions made by nonprofit organizations and small business firms under government grants, contracts, and cooperative agreements. Although “[c]ontractors are expected to use efforts that are reasonable under the circum- stances to attract small business licensees…[w]hat constitutes reasonable efforts to attract small busi- ness licensees will vary with the circumstances and the nature, duration, and expense of efforts needed to bring the invention to the market.”484 Appendix A.16 states that if a recipient or subrecipient wishes to enter into a contract (or subcontract) with a small business firm or nonprofit organization for the performance of experimental, developmental, or research work under the FTA award, the recipient or subrecipient must comply with the requirements of 37 C.F.R. part 401….485 Recipients are encouraged to consult 37 C.F.R. § 401.3 for guidance on “appropriate” clauses to include in contracts with their contractors on the government’s data and patent rights in federally funded projects. Section 401.3(a) states that “[e]ach funding agreement awarded to a small business firm or nonprofit organization…shall contain the clause found in § 401.14(a) with such modifications and tailoring as authorized or required elsewhere in this part. However, a funding agreement may contain alternative provisions….”486 FTA’s data and patent requirements “flow down” to all third party contractors and their contracts not copyrightable are excluded in determining joint authorship even though the contributions “were important to the final product.”475 The second approach is that joint authorship does not require a copyrightable contribution. Rather, joint authorship results when authors simply intend that their collaboration is joint.476 The issue of copyright ownership should be addressed by contract, because the evidence of intent to create a joint work does not have to be in writing. Moreover, an author’s contributions do not have to be “qualitatively or quantitatively equiva- lent” or “prepared in similar ways or with any day- to-day contact with the other authors.”477 It is not necessary that the parties work together for there to be a joint work as long as their contributions are sufficiently complementary “to be embodied in a single work….”478 The quantity and quality of the contributions do bear on the ultimate question of the parties’ intent.479 F. FTA Rights in Data Involving Experimental, Developmental, or Research Work FTA’s IP rights clause (IP clause hereafter) on patent rights and rights in data is included as appen- dix A.16 to FTA’s Best Practices Procurement & Lessons Learned Manual (BPP & LLM).480 Appendix A.16 references 2 C.F.R. part 200 for which the Office of Management and Budget (OMB) has issued regu- lations and guidance for federal agencies on govern- ment-wide policies and procedures for the award and administration of grants and agreements.481 Each federal agency that publishes regulations imple- menting OMB’s guidance has a chapter in subtitle B 475 Kugele, supra note 462, at 822 (citing David A. Ger- ber, Joint Authorship Requirement Questioned by Courts, Experts, nat’L. L.J., at 24 (Apr. 30, 1990)). 476 Id. at 825 (citing Nimmer on Copyright § 6.07, at 6-20 to 6-22). 477 Winick, supra note 459, at 1644 (citing Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 42 F. Supp. 859, 863–64 (S.D.N.Y. 1942), aff’d, 140 F.2d 266 (2d Cir. 1944); Ashton-Tate Corp. v. Ross, 916 F.2d 516, 522 (9th Cir. 1990) (joint authorship of a prior work not itself sufficient to make a developer a joint author of a derivative work); and Nimmer on Copyright § 6.03 (“The essence of joint authorship is a joint laboring in furtherance of a preconcerted design.”). 478 Kugele, supra note 462, at 815. 479 Id. at 831 (quoting Eckert v. Hurley Chicago Co., 638 F. Supp. 699, 704 (N.D. Ill. 1986) (quotation marks omitted)). 480 FTA, Best Practices Procurement & Lessons Learned Manual, at 1 (Oct. 2016), hereinafter referred to as “BPP & LLM,” https://www.transit.dot.gov/funding/procurement/ best-practices-procurement-manual (last accessed February 9, 2017). 481 2 C.F.R. § 1.100 (2016). 482 2 C.F.R. § 1.105(c) (2016).The section further explains that the federal agency “regulations in subtitle B differ in nature from the OMB guidance in subtitle A because the OMB guidance is not regulatory (Federal agency regula- tions in subtitle B may give regulatory effect to the OMB guidance, to the extent that the agency regulations require compliance with all or portions of the guidance).” Id. 483 BPP & LLM, Appendix A.16, Patent Rights and Rights in Data, at A-1, hereinafter referred to as “BPP & LLM, Appendix A.16,” manual located at https://www.transit.dot. gov/funding/procurement/best-practices-procurement- manual, (last accessed February 9, 2017). The appendix states in part that a “non-Federal entity’s contracts must contain the applicable contract clauses described in Appen- dix II to the Uniform Rules (Contract Provisions for non- Federal Entity Contracts Under Federal Awards), which are set forth below.” 484 37 C.F.R. § 401.7(a) (2016). 485 BPP & LLM, Appendix A.16, supra note 480, at A-50. 486 37 C.F.R. § 401.3(a) (2016).

35 other party to any subject data developed under a contract or extend any copyright rights purchased by a contractor using any FTA assistance.496 The government’s rights apply to all “subject data” that are produced in performing a contract that is subject to FTA’s requirements. The term subject data means “recorded information,” whether or not copy- righted, that is delivered or specified to be delivered as required by a contract with a contractor.497 The term includes computer software, standards, specifications, engineering drawings and associated lists, process sheets, manuals, technical reports, catalog item identi- fications, and related information but does not include financial reports, cost analyses, or similar information used for contract administration or performance.498 As long as a contractor identifies its data in writ- ing “at the time of delivery of the Contract work,” subject data do not include data incorporated into work for a project that a contractor developed entirely without federal assistance.499 Until the FTA has released or approved the release of data to the public, a contractor is not permitted to publish or reproduce subject data, or authorize others to do so, without the FTA’s written consent.500 The IP clause includes an indemnity provision: Unless prohibited by state law, upon request by the Federal Government, the Contractor agrees to indemnify, save, and hold harmless the Federal Government, its officers, agents, and employees acting within the scope of their official duties against any liability, including costs and expenses, resulting from any willful or intentional violation by the Contractor of proprietary rights, copyrights, or right of privacy, arising out of the publication, translation, reproduction, delivery, use, or disposition of any data furnished under that contract.501 Furthermore, a contractor must “indemnify the Federal Government for any such liability arising out of the wrongful act of any employee, official, or agents of the Federal Government.”502 G. Digital Millennium Copyright Act In 1998, Congress enacted the Digital Millen- nium Copyright Act (DMCA).503 The Act applies only to a work protected by the Copyright Act.504 that come within the definition of a “research-type project under 37 U.S.C. § 401.2.”487 Moreover, a contractor must agree to include the clause’s require- ments “in each subcontract for experimental, devel- opmental, or research work financed in whole or in part with Federal assistance.”488 Appendix A.16 states that the IP clause is one that a recipient of federal funding “at a minimum… can include” in an IP agreement.489 Although the reader will want to refer to the entire IP clause,490 some key provisions are discussed briefly. The IP clause applies to a project funded by FTA for experi- mental, developmental, or research work purposes.491 The IP clause provides that, unless FTA otherwise determines, a contractor performing experimental, developmental, or research work required as part of this Contract agrees to permit FTA to make available to the public, either FTA’s license in the copyright to any subject data developed in the course of the Contract, or a copy of the subject data first produced under the Contract for which a copyright has not been obtained.492 An agreement on intellectual and software license rights must be “finalized” prior to the execution of the agreement with a contractor that must include the “restrictions” in the IP clause. For example, [e]xcept for its own internal use, the Contractor may not publish or reproduce subject data in whole or in part, or in any manner or form, nor may the Contractor authorize others to do so, without the written consent of FTA, until such time as FTA may have either released or approved the release of such data to the public.493 Unless the federal government agrees to exercise more limited rights, the government “is entitled to a nonexclusive, royalty free license to use the resulting invention, or patent the invention” for the govern- ment’s purposes.494 The federal government “reserves a royalty-free, non-exclusive and irrevocable license to reproduce, publish, or otherwise use, and to autho- rize others to use for the federal government’s purposes any subject data or copyright” subject to the IP clause.495 Unless a copyright owner consents, the government may not extend its license to any 487 BPP & LLM, Appendix A.16, supra note 480, at A-50. 488 Id. at A-52. 489 Id. A-50. 490 See id. at A-51. 491 Id. at A-51. 492 Id. at A-52, ¶ 2. When “experimental, developmental, or research work, which is the subject of this Contract, is not completed for any reason whatsoever, all data devel- oped under the Contract shall become subject data as defined herein and shall be delivered as the Federal Gov- ernment may direct.” Id. 493 Id. at A-51. 494 Id. at A-50. 495 Id. at 51, ¶ 1. 496 Id. at A-51, ¶¶ 1(a)–(b). 497 Id. at A-51. 498 Id. 499 Id. at A-52, ¶ 5. 500 The restriction on publication does not apply to a contract with an academic institution. Id. at A-51. 501 Id. at A-52, ¶ 3. 502 Id. (emphasis supplied). 503 Pub. L. No. 105-304, 112 Stat. 2860 (1998). 504 17 U.S.C. § 1201(a) (2016). Congress enacted the DMCA “to implement the World Intellectual Property Orga- nization Copyright Treaty and…to better protect copyright in the digital age.” Chamberlain Group, Inc. v. Skylink Tech- nologies, Inc., 292 F. Supp. 2d 1023, 1034 (N.D. Ill. 2003).

36 Sections 1201(a)(2) and 1201(b)(1) are the “anti- trafficking provisions” of the DMCA. The provisions prohibit trafficking “in devices that circumvent access controls in ways that facilitate infringe- ment….”516 The two anti-trafficking provisions differ in that subsection 1201(a)(2) covers those who traffic in technology that can circumvent “a technological measure that effec- tively controls access to a work protected under” Title 17, whereas subsection 1201(b)(1) covers those who traffic in technology that can circumvent “protection afforded by a technological measure that effectively protects a right of a copyright owner under” Title 17.517 Section 1202 of the DMCA concerns the protection of copyright management information and is “limited to components of technological measures” that protect a copyright.518 For section 1202 to apply, “the information removed must function as a component of an automated copyright protection or manage- ment system;”519 however, the section does not apply if there is a “failure to prove the knowledge or intent requirements for [a] violation.”520 It has been held that neither a logo nor a hyperlink comes within the protection of section 1202 of the DMCA, because neither is “a component of an automated copyright protection or management system….”521 Section 1203 of the DMCA provides for jurisdic- tion in a federal court and for remedies that include injunctive relief;522 impoundment of any unlawful device or product523 or its destruction;524 damages, either actual or statutory;525 and costs and attor- ney’s fees in the discretion of the court.526 In Ticketmaster L.L.C. v. RMG Technologies, Inc.,527 Ticketmaster, the copyright owner, brought an action against the defendant RMG Technologies, Inc., for developing and marketing an automated device that accessed and navigated Ticketmaster’s web site in a manner that infringed Ticketmaster’s copyrights and violated the accepted terms of use for its web site. The court granted Ticketmaster’s A copyright holder may use digital rights manage- ment (DRM) technology to place a digital “fence” around any data provided, for example, to a requester of data.505 First, “[c]opyright owners use two main types of existing technologies, known as ‘watermark- ing’ and ‘fingerprinting,’ to create digital identifica- tions for their works....”506 Second, “‘DRM software may…provide copyright owners with control over the various excludable rights of copyright owner- ship, including…the ability to make copies of and redistribute the work.’”507 The courts apply the DMCA to cases involving copyright infringement; the Act is not limited to matters solely involving the Internet.508 However, the Act only creates causes of action; it does not create a new property right.509 Section 1201(a)(1) is the anti-circumvention provision of the DMCA. The section “prohibits a person from ‘circumventing a technological measure that effectively controls access to a work protected under [Title 17, governing copyright].’”510 It should be noted that individuals “who use such devices may be subject to liability under section 1201(a)(1) whether they infringe or not.”511 Thus, an element of the DMCA that a copyright holder must prove is that the circumvention was “undertaken ‘without the authority of the copyright owner.’”512 There are various exceptions in the DMCA, for example, for nonprofit libraries, archives, and educa- tional institutions.513 The statute permits reverse engi- neering.514 An important exception under the Act is that it does not prohibit the fair use of information, even if the information is unlawfully obtained under the Act.515 516 Chamberlain Group, Inc., 381 F.3d at 1195. 517 Universal City Studios, Inc., 273 F.3d at 441 (cita- tions omitted) (emphasis in original). 518 IQ Group, Ltd. v. Wiesner Publishing LLC, 409 F. Supp. 2d 587, 593 (D. N.J. 2006) (footnote omitted). 519 Id. at 597. 520 Id. at 593 (citations omitted). 521 Id. at 598. 522 17 U.S.C. § 1203(b)(1) (2016). 523 17 U.S.C. § 1203(b)(2) (2016). 524 17 U.S.C. § 1203(b)(6) (2016). 525 17 U.S.C. §§ 1203(b)(3) and (c) (2016). 526 17 U.S.C. §§ 1203(b)(4) and (5) (2016). 527 Ticketmaster L.L.C. v. RMG Technologies, Inc., 507 F. Supp. 2d 1096 (C.D. Cal. 2007), later proceeding, 536 F. Supp. 2d 1191 (C.D. Cal. 2008) (dismissing defendant’s counterclaims). 505 Ira Bloom, Freedom of Information Laws in the Dig- ital Age: The Death Knell of Informational Privacy, 12 ricH. j. L. & tecH. 9, text at notes 277–81 (2006), hereinaf- ter cited as “Bloom.” 506 Id., text at notes 277–81. 507 Id. (footnote omitted). 508 17 U.S.C. § 1201(a)(2) (2016) and Chamberlain Group, Inc. v. Skylink Technologies, Inc., 292 F. Supp. 2d 1023 (N.D. Ill. 2003), partial summary judgment granted, 292 F. Supp. 2d 1040, 2003 U.S. Dist. LEXIS 20351, at *1 (N.D. Ill., Nov. 13, 2003), aff’d, 381 F.3d 1178 (2004). 509 Chamberlain Group, Inc. v. Skylink Techs., Inc., 381 F.3d 1178, 1192 (Fed. Cir. 2004). 510 Id. at 1194 (quoting Universal City Studios v. Corley, 273 F.3d 429, 440–41 (2d Cir. 2001) (some internal quota- tion marks omitted)). 511 Id. at 1195. 512 Id. at 1193 (citation omitted). 513 17 U.S.C. § 1201(d) (2016). 514 17 U.S.C. § 1201(f) (2016). 515 Universal City Studios, Inc. v. Corley, 273 F.3d 429, 443–44 (2d Cir. 2001). “The legislative history of the enacted bill makes quite clear that Congress intended to adopt a ‘balanced’ approach to accommodating both piracy and fair use concerns, eschewing the quick fix of simply exempting from the statute all circumventions for fair use.” Id. at 444 N 13 (citing H.R. Rep. No. 105-551, pt. 2, at 25 (1998)).