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Case brief – Autodesk, Inc. v. Feinberg & Associates, P.C.

Posted by Steve Vondran | Feb 25, 2016 | 0 Comments

Software infringement law


Case Summary

On October 30, 2002, Autodesk, Inc. (“Autodesk”) filed a complaint in United States District Court, Northern District of California (“Court”), alleging Copyright Infringement against Feinberg & Associates, P.C. (“Feinberg”), an architecture firm in New Jersey.  The civil action arises under the copyright laws of the United States, 17 U.S.C. §§ 101, et seq.  The Court has subject matter jurisdiction over the claim relating to copyright infringement pursuant to 17 U.S.C. § 501, 28 U.S.C. § 1331, and 28 U.S.C. § 1338(a).

Autodesk claims that it has not authorized Feinberg to copy, reproduce, manufacture, duplicate, disseminate, or distribute AutoCAD®, Release 14 software, AutoCAD® 2000 software, and AutoCAD® 2000i software (“Autodesk Products”), including their reference manuals, and other accompanying documentation. Autodesk's copyright infringement claims arise based on information and belief that Feinberg is in the business of providing engineering and architectural services, for which purpose Feinberg uses Autodesk AutoCAD® software, and to conduct its business, Feinberg has engaged in the unauthorized reproduction of the Autodesk Products, in violation of  17 U.S.C. §§ 101, et seq.

Claims Alleged

Reproduction of the Autodesk Products was deliberate, willful, malicious, oppressive, and without regard to Autodesk's proprietary rights.  Autodesk further claims that Feinberg's copyright infringement has caused, and will continue to cause Autodesk to suffer substantial injuries, loss, and damage to its proprietary and exclusive rights to, and copyright in, the Autodesk Products, and further, has damaged Autodesk's business reputation and goodwill, diverted its trade, and caused a loss of profits (in an amount to be determined). 

Damages & Remedies Sought

  • Preliminary and Permanent injunction:
    • copying reproducing, manufacturing, duplicating, disseminating, distributing, or using any unauthorized copies of the Autodesk copyrights;
    • otherwise infringing any of the Autodesk's copyrights;
    • destroying any documents or software pertaining to copying reproducing, manufacturing, duplicating, disseminating, distributing, or using any unauthorized copies of the Autodesk copyrights
    • destroying any copies of infringing materials pertaining to the Autodesk Products
  • Actual damages, together with Feinberg's profit derived from infringement; or
  • Statutory damages of each act of infringement per 17 U.S.C. § 504;
  • Attorneys' fees per 17 U.S.C. § 505.

Procedural History

The Complaint was filed on October 30, 2002, and the Case Management Conference was scheduled for March 4, 2003.  On November 5, 2012, Autodesk filed a Request for Reassignment from a U.S. Magistrate Judge to a U.S. District Judge.  Subsequently, Autodesk filed a Motion for Intradistrict Transfer to Oakland or San Francisco Division.  The Request for Reassignment was granted on November 6, 2002, and the Motion for Intradistrict Transfer was denied (moot) in July 2013.  After assigning the Initial Case Management Conference for September 2013, Autodesk and Feinberg stipulated to postpone the Case Management Conference until February 2014 due to the parties entering into a Settlement Agreement.

Settlement Agreement

On January 29, 2014, the parties filed a Stipulation and Order of Dismissal based on the following agreed upon terms:

(1) Feinberg, its agents, and employees shall not anywhere in the United States, unlawfully copy, reproduce, manufacture, duplicate, disseminate, distribute, or use any unauthorized copies of copyrighted computer software products including:

  • AutoCAD® Release 13 software, AutoCAD® Release 14 software, and AutoCAD® 2000i software and any corresponding reference manuals and documentation relating to the software products.

Final status – case dismissed.  Part of this law blog was contributed to by staff law clerk

Copyright infringement of software – general concepts

To prevail on a claim of copyright infringement, a plaintiff must prove ownership of a copyright and a “ ‘copying' of protectable expression” beyond the scope of a license. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085 (9th Cir.1989).   MAI software licenses allow MAI customers to use the software for their own internal information processing. This allowed use necessarily includes the loading of the software into the computer's random access memory (“RAM”) by a MAI customer. However, MAI software licenses do not allow for the use or copying of MAI software by third parties such as Peak. Therefore, any “copying” done by Peak is “beyond the scope” of the license. It is not disputed that MAI owns the copyright to the software at issue here, however, Peak vigorously disputes the district court's conclusion that a “copying” occurred under the Copyright Act. The Copyright Act defines “copies” as: material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. 17 U.S.C. § 101. The Copyright Act then explains: A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated *518 for a period of more than transitory duration. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 517-18 (9th Cir. 1993).

Loading RAM caselaw

Other cases have discussed: “The law also supports the conclusion that Peak's loading of copyrighted software into RAM creates a “copy” of that software in violation of the Copyright Act. In Apple Computer, Inc. v. Formula Int'l, Inc., 594 F.Supp. 617, 621 (C.D.Cal.1984), the district court held that the copying of copyrighted software onto silicon chips and subsequent sale of those chips is not protected by § 117 of the Copyright Act. Section 117 allows “the ‘owner' 5 of a copy of a computer program to make or authorize the making of another copy” without infringing copyright law, if it “is an essential step in the utilization of the computer program” or if the new copy is “for archival purposes only.” 17 U.S.C. § 117 (Supp.1988). One of the grounds for finding that § 117 did not apply was the court's conclusion that the permanent copying of the software onto the silicon chips was not an “essential step” in the utilization of the software because the software could be used through RAM without making a permanent copy.” The court stated: “RAM can be simply defined as a computer component in which data and computer programs can be temporarily recorded. Thus, the purchaser of [software] desiring to utilize all of the programs on the diskette could arrange to copy [the software] into RAM. This would only be a temporary fixation. It is a property of RAM that when the computer is turned off, the copy of the program recorded in RAM is lost.”  See  Apple Computer at 622. The Court continued: “While we recognize that this language is not dispositive, it supports the view that the copy made in RAM is “fixed” and qualifies as a copy under the Copyright Act.  We have found no case which specifically holds that the copying of software into RAM creates a “copy” under the Copyright Act. However, it is generally accepted that the loading of software into a computer constitutes the creation of a copy under the Copyright Act. See e.g. Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 260 (5th Cir.1988) (“the act of loading a program from a medium of storage into a computer's memory creates a copy of the program”); 2 Nimmer on Copyright, § 8.08 at 8–105 (1983) (“Inputting a computer program entails the preparation of a copy.”); Final Report of the National Commission on the New Technological Uses of Copyrighted Works, at 13 (1978) (“the placement of a work into a computer is the preparation of a copy”). We recognize that these authorities are somewhat troubling since they do not specify that a copy is created regardless of whether the software is loaded into the RAM, the hard disk or the read only memory (“ROM”). However, since we find that the copy created in the RAM can be “perceived, reproduced, or otherwise communicated,” we hold that the loading of software into the RAM creates a copy under the Copyright Act. 17 U.S.C. § 101. We affirm the district court's grant of summary judgment as well as the permanent injunction as it relates to this issue.” Citation: MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 518-19 (9th Cir. 1993)

Contact our intellectual property law firm

We can help both software publishers in pursuing software infringement claims and licensing disputes and companies charged with software infringement.  We can also assist with DMCA litigation, safe harbors and EULA disputes.  We can be reached at (877) 276-5084.  We offer a free initial consultation and are able to offer flat rate legal fees in many cases. 

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337


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