Genzmer v. Public Health Trust of Miami-Dade

• Decision Date: 01 August 2002
• Docket Number: No. 01-1041-CIV.,01-1041-CIV.
• Citation: 219 F.Supp.2d 1275
• Parties: Ulrich GENZMER, Plaintiff, v. PUBLIC HEALTH TRUST OF MIAMI-DADE COUNTY d/b/a Jackson Memorial Hospital, Defendant.
• Court: U.S. District Court — Southern District of Florida

219 F.Supp.2d 1275

Ulrich GENZMER, Plaintiff, v. PUBLIC HEALTH TRUST OF MIAMI-DADE COUNTY d/b/a Jackson Memorial Hospital, Defendant.

No. 01-1041-CIV.

No. 01-1041-CIV.

United States District Court, S.D. Florida.

August 1, 2002.

Bradley J. Gross, Miami, FL.

Richard B. Rosenthal, Miami, FL.

ORDER ON PARTIES' MOTIONS FOR PARTIAL SUMMARY JUDGMENT

GOLD, District Judge.

THIS CAUSE is before the court upon the motion for summary judgment (DE # 38) filed by the plaintiff, Ulrich Genzmer ("Genzmer"), and the cross motion for partial summary judgment (DE # 42) filed by the defendant, Public Health Trust of Miami-Dade County ("the Trust"). This case involves a dispute between the plaintiff and his former employer over the ownership of a computer program that the plaintiff designed during the time he was employed by the defendant. Genzmer has filed a four-count complaint against the Trust alleging as follows: count I, copyright infringement; count II, copyright infringement; count III, copyright infringement; and count IV, breach of contract¹. The Trust has filed a counterclaim against Genzmer for declaratory and injunctive relief for copyright infringement. The court has federal question subject matter jurisdiction over this case because it involves the interpretation and application of the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. Each party requests summary judgment on the limited issue of ownership of the computer program. The court heard oral argument on the parties' motions on July 26, 2002. After carefully considering the pleadings, evidence, and arguments of counsel, the court denies the plaintiff's motion for partial summary judgment and grants the defendant's cross-motion for partial summary judgment.

The Undisputed Facts and Procedural History²

On July 1, 1996, Genzmer began work as a full-time fellow in the Pulmonary and Critical Care Department ("the Department") at Jackson Memorial Hospital ("JMH"). Genzmer's position was identified as a PGY6 level, which means that he received a yearly salary at the six-year post-graduate level, irrespective of the hours he actually worked. (Genzmer Depo., Ex. 1 at 13). Baier was the Director of the Department and Genzmer's immediate supervisor. Genzmer's duties as a fellow were described in a manual provided to the fellows. The job description included instructing house staff on pulmonary and critical care medicine, taking care of patients, taking progress notes, ordering treatments, and conducting research projects related to the field of pulmonary and critical care medicine. Additionally, the manual stated, "The fellows will acquire skills required to organize, administer, and direct a critical care unit, and to work effectively as a member of a multidisciplinary team." (Def.Ex. 2 at 2). Genzmer's job description did not contain any references to computers or computer programing nor was computer programing experience a prerequisite to Genzmer's employment. (Baier Depo. at 45-46; Def. Ex. 2).

All fellows, including Genzmer, were required to complete approximately six months of research during their employment with the Department. (Def.Ex. 2 at 16). The employment manual states that the responsibilities of the research fellows "is original pulmonary research under the supervision of an attending or full-time Ph.D." (Def.Ex. 2 at 16). According to Baier, "There is a myriad of activities that may comprise the `research' component of the Fellowship program through JMH." (Baier Affid. at 2-3). These activities range from a fellow working with high tech equipment, gathering articles or studies from the library, reviewing literary materials in a fellow's own home, or formulating administrative materials designed to improve the efficiency or effectiveness of patient care at JMH. (Baier Affid. at 2-3). The Division Chief has confirmed that fellows have been required to program computers as part of their duties. (Wanner Depo. at 28-29).

During Genzmer's research period, Genzmer developed the software for a program to computerize the Department's consultation reports. (Genzmer Depo. at 100).³ Prior to the development of the software, the Department completed all patient consultation reports by hand. It is undisputed that Genzmer wrote the program, at least in part, on his own time, during nonbusiness hours, and using his home computer. (Genzmer Depo. at 88, 92-93, 98, 132-33; Baier Depo. at 51). It is unclear whether Genzmer came up with the idea of computerizing consultation reports on his own or whether Baier suggested this to him as part of his research project, but it is undisputed that Baier and Genzmer had discussions about the computer program as it was being developed by Genzmer. Baier avers that he approved Genzmer's development of the computer program as part of his research assignment because he knew Genzmer had experience with computers, and, without this assignment, Genzmer would have nothing to do for the remainder of his research period. (Baier Affid. at 2).

It is undisputed that Genzmer solely determined the programming language used to create the software and how the software should operate. (Genzmer Depo. at 92-93, 98; Baier Depo. at 51, 97-98). Baier did have input, however, as to the final appearance of the reports generated by the software. (Genzmer Depo. at 94-95, 99, 131-32; Baier Depo. at 53). For example, Baier referred Genzmer to preprinted forms used by JMH, told Genzmer how the finished product should look, and directed him to add and delete certain items in the final forms. (Baier Affid. at 2; Baier Depo. at 53). Baier admits that he was not interested in how Genzmer went about achieving the desired result; rather, he was interested only in obtaining the outcome of computerized consultation reports. (Baier Depo. at 59). Although Genzmer developed the computer program primarily in his home, he conducted the second phase, or the test phase, of the program's development on JMH pulmonary department computers. (Genzmer Depo. at 102). As a result of his observations during the test phase, Genzmer made some alterations to the software to adapt the program to JMH's needs. (Genzmer Depo. at 96, 101-102).

From the beginning of Genzmer's employment in 1996, he began to receive negative employment evaluations. On February 21, 1997, he was placed on internal probation. (Def.Ex.4). These evaluations began to improve at around the same time that Genzmer completed the computer program. Whereas Genzmer previously had been criticized as "reluctant to accept added clinical responsibilities when the need arises," his May 1998 evaluation noted his work on a research assignment: "Dr. Genzmer is presently on research assignment. His work so far shows promise. Mentioned by the faculty were his excellent technical skills. . . . Dr. Genzmer significantly facilitated the routine of the pulmonary service by voluntarily computerizing bronschoscopy reports." (Def.Ex.9). Genzmer has not shown that the assignment referred to in this evaluation is anything other than the development of the software at issue in this case. In November of 1998 his evaluation stated, "[A]lthough there occasionally seems to be some differences of opinion Dr. Genzmer has been able [to] adapt better to the system. In addition, Dr. Genzmer took the initiative and computerized the consultation reports used on the JMH Service. Both faculty and fellows consider this a major contribution to the program." (Def.Ex.10).

Genzmer eventually loaded the software into the Department's computers, after showing the program to Baier and obtaining his approval. (Baier Affid. at 2). On May 26, 1999, Genzmer submitted the software to the United States Copyright Officer in order to obtain copyright registration. (Genzmer Depo. at 107, 142). Genzmer eventually obtained a United States copyright in the software under registration number TX 4-990-146. (Genzmer Depo. at 142, Ex. A). Genzmer placed notices of his copyright in numerous places throughout the visual display and the source code of his computer program, such as on the splash screen that was displayed each time the program was run and at the bottom of every "help" window. (Genzmer Depo. at 133-35; Baier Depo. at 73, 77). Neither Baier, JMH, nor the Trust ever filed an objection or notice with the United States Copyright Office related to the software.

Genzmer's fellowship ended in June or July of 1999. On July 15, 1999, Genzmer's program became inoperable, as Genzmer had programmed a "bug" to disable the software after the termination of his employment. Upon the termination of his fellowship, Genzmer demanded that he receive payment for the Department's use of the software, but the Department refused. Genzmer filed his complaint in this court on March 15, 2001.

On April 15, 2002, the court granted the parties' motion to bifurcate this case into two phases. The order was based upon the parties' representation that such a procedure was likely to result in the amicable settlement of this case. As proposed by the parties, during the first phase, the court is to determine the owner of the computer program's copyright.⁴ During the second phase, the issue of damages will be addressed. This case currently is at the first phase, as the parties' cross motions for summary judgment request that the court determine the owner of the software's copyright. During the oral argument on summary judgment, the court discussed with the parties the procedures to be followed during the second phase of this case. Based upon the parties' representations, the court has determined that discovery must be conducted on the issue of damages, and the amount of damages, if any, will be determined either on summary judgment or following a bench trial.

Summary Judgment Standard

Rule 56(c) of the Federal Rules of Civil Procedure authorizes summary judgment where the pleadings and supporting materials show that there is no genuine issue as to any material fact and that the moving part...