UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MISSOURI EASTERN DIVISION ) ) FOUR POINTS COMMUNICATION ) SERVICES, INC., ) ) Plaintiff, ) No. 4:13-CV-1003 JAR ) v. ) ) BRYAN BOHNERT, et al., ) ) Defendants. ) MEMORANDUM AND ORDER This matter is before the court on Defendants’ Motion for Summary Judgment(ECF No. 28) and Defendants’ Motion for Leave to File Their Motion to Strike the Expert Report of Kristopher Bleich (ECF N o. 63). This matter is fully briefed and ready for disposi tion. BACKGROUND Plaintiff Four Points Communications Service, Inc. (“Plaintiff”) is a contractor who engineers, furnishes and installs various types of communications systems, primarily to the military. (Defendants’ Statement of Uncontroverted Material Facts in Accordance with Local Rule 7-4.01(c) (“DSUMF”), ECF No. 30, ¶2) . Plaintiff was formed in April 1999 by Thomas Foreman, Harry Groppel, and Kevin Pinson. (DSUMF, ¶1). Defendant Bryan Bohnert was Plaintiff’sVice President of Business Development. (DSUMF, ¶4). Plaintiff alleges that it hired Defendant Cory Cannon as a draftsman and network computer engineer from February 2011 through February 201 3, and that Bohnert was Cannon’s immediate supervisor. (First Amended Complaint, ECF No. 68, ¶¶5, 7).
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Four Points Communicaitons Svcs v. Bohnert - SSAM Software Copyright
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8/11/2019 Four Points Communicaitons Svcs v. Bohnert - SSAM Software Copyright
At issue in this case is whether Defendant Bohnert’s development of the Site Survey
Assistance Manager (“SSAM”) software was “work for hire” by Plaintiff or whether Defendant
Bohnert developed the SSAM software on his own time and independent of his employer,
Plaintiff. Plaintiff alleges that Cannon used FileMaker Pro to develop the SSAM while
employed by Plaintiff. (PSAMF, ¶12).1
Bohnert signed an Employment Agreement, which provided in part:
Employee acknowledges that any opportunity, in any way related to the businessof the Company, of which he becomes aware during the Employment Period shall be considered to be an opportunity of the Company….Employee further agrees that,during the Employment Period, he will refer to the Company all ideas, procedures orwork of any nature related to the business of the Company (which then become theexclusive property of the Company) which may come to the attention of Employee or be under the control of Employee, but Employee understands that the Company shallhave the right to accept or reject any such ideas, procedures or work within its solediscretion and to set fees related thereto.
(First Amended Complaint, ECF No. 68, ¶9).
Part of Bohnert’s job descri ption included networking with contacts and learning about
requests for proposals to bring new business to Plaintiff. (DSUMF, ¶4). Defendants contend
that Bohnert’s job description did not include software development. (DSUMF, ¶9). Plaintiff
denies this limitation and asserts that Bohnert’s job included all tasks assigned to him by the
president of the company, Thomas Foreman, and the Board. (PSUMF, ¶9). Mr. Foreman was
Bohnert’s direct boss while he worked for Plaintiff. (DSUMF, ¶5).
Prior to Bohnert’s employment with Plaintiff, Plaintiff’s field engineers performed
surveys with note pads. (DSUMF, ¶14). When he began working for Plaintiff in October 2007,
Bohnert emailed a CITS survey form to several members of Plaintiff. (DSUMF, ¶15). The
proposed SSAM application is a digitalized form of the CITS checklist, which has been revised,
1 The Court references Plaintiff’s Responses and Objections to Defendants’ Statement of
Uncontroverted Material Facts as “PSUMF” and Plaintiff’s Statement of Additional Material
Facts as “PSAMF”. See ECF No. 39.
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Roehrig was second in command under Mr. Groppel over operations for Plaintiff. (DSUMF,
¶40).
Plaintiff claims that Mr. Roehrig was not “second in command” but that he report ed
directly to Mr. Groppel. (PSUMF, ¶40). Plaintiff states that Mr. Roehrig, an employee of
Plaintiff, did not know what the License Agreement was and that Mr. Roehrig signed it at the
directive of Bohnert, the Vice President of Plaintiff, in order to take the iPads. (PSUMF, ¶37).
Mr. Roehrig did not read the License Agreement prior to signing it. (DSUMF, ¶46; PSUMF,
¶46). Mr. Roehrig was not given a copy of the License Agreement. (PSUMF, ¶37). Rapid Jack
was not in existence at the time the License Agreement was executed. (PSUMF, ¶37). Mr.
Roehrig did not receive any discipline from Plaintiff for signing the License Agreement, other
than counseling from Mr. Foreman regarding Mr. Roehrig’s lack of authority to sign contracts.
(PSUMF, ¶57).
On May 23, 2013, Plaintiff filed a one-count Complaint for Declaratory Judgment
Regarding Ownership of Copyright against Defendants Bryan Bohnert and Rapid Jack Solutions,
Inc. (ECF No. 1). On September 11, 2013, Defendants filed their Counterclaim against Plaintiff
for Declaratory Judgment Regarding Ownership of the SSAM technology. (ECF No. 17). On
July 29, 2014, Plaintiff was granted leave to file a First Amended Complaint that added Cory
Cannon as a defendant, alleging that Cannon created a “substantial portion of the source code for
SSAM.” (ECF Nos. 67-68).
DISCUSSION
I. MOTION FOR SUMMARY JUDGMENT2
2 The Motion for Summary Judgment was filed on December 31, 2013. (ECF No. 28). On July29, 2014, this Court granted Plaintiff’s Motion for Leave to Add Defendant and to File Its First
Amended Complaint (ECF Nos. 67-68), which added Cory Cannon as a defendant. Although the
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The Court may grant a motion for summary judgment if “the pleadings, depositions, answers
to interrogatories, and admissions on file, together with the affidavits, if any, show that there is
no genuine issue as to any material fact and that the moving party is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(c); Celotex Corp. v. Citrate, 477 U.S. 317, 322 (1986);
Torgerson v. City of Rochester, 643 F.3d 1031, 1042 (8th Cir. 2011). The substantive law
determines which facts are critical and which are irrelevant. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986). Only disputes over facts that might affect the outcome will properly
preclude summary judgment. Id. Summary judgment is not proper if the evidence is such that a
reasonable jury could return a verdict for the nonmoving party. Id.
A moving party always bears the burden of informing the Court of the basis of its motion.
Celotex Corp., 477 U.S. at 323. Once the moving party discharges this burden, the nonmoving
party must set forth specific facts demonstrating that there is a dispute as to a genuine issue of
material fact, not the “mere existence of some alleged factual dispute.” Fed. R. Civ. P. 56(e);
Anderson, 477 U.S. at 248. The nonmoving party may not rest upon mere allegations or denials
of his pleading. Anderson, 477 U.S. at 258.
In passing on a motion for summary judgment, the Court must view the facts in the light
most favorable to the nonmoving party, and all justifiable inferences are to be drawn in his favor.
Motion for Summary Judgment was filed prior to the filing of the First Amended Complaint, the parties agreed that the new complaint does not affect the legal issues involved in the Motion forSummary Judgment and agreed that the Court can consider the Motion for Summary Judgment.See Joint Memorandum Acknowledging the Filing of Plaintiff’s First Amended Complaint Does
Not Affect the Court From Ruling on Defendant Bryan Bohnert and Defendant Rapid JackSolutions Inc.’s Motion for Summary Judgment, ECF No. 76. Thus, with the consent of the parties, the Court rules on Defendants’ Motion for Summary Judgment even though it was filed
prior to the entry of the First Amended Complaint. For purposes of this Motion, the Court willrefer to defendants Bryan Bohnert and defendant Rapid Jack Solutions, Inc. as “Defendants”.
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§201(b). In their Motion for Summary Judgment, Defendants assert that Bohnert’s development
of the SSAM application was not work for hire.3
In analyzing whether a creation constitutes work made for hire, the Court examines three
factors.
As expressed in Section 228 of the Restatement, the key principle is that aservant’s conduct is within the scope of employment “only if: (a) it is of the kindhe is employed to perform; (b) it occurs substantially within the authorized timeand space limits; [and] (c) it is actuated, at least in part, by a purpose to serve themaster.”
Rouse v. Walter & Associates, L.L.C., 513 F. Supp. 2d 1041, 1056 (S.D. Iowa 2007)(quoting
Avtec Sys., Inc. v. Peiffer , 21 F.3d 568, 571 (4th Cir. 1994)); see also Kirk v. Harter, 188 F.3d
1005, 1007 (8th Cir. 1999)(noting that the court examines several factors to determine
employment status, including the hiring party’s right to control the manner and means by which
the product is accomplished; the skill required; the source of the instrumentalities and tools; the
location of the work; the duration of the relationship between the parties; whether the hiring
party has the right to assign additional projects to the hired party; the extent of the hired party’s
discretion over when and how long to work; the method of payment; the hired party’s role in
hiring and paying assistants; whether the work is part of the regular business of the hiring party;
whether the hiring party is in business; the provision of employee benefits; and the tax treatment
of the hired party). “ No single factor is determinative of employment status.” Kirk, 188 F.3d at
1007. As discussed below, the Court holds that issues of fact exist as to all three factors that
preclude entry of summary judgment in favor of Defendants.
(1) Was the Work the Kind of Work that Plaintiff was Employed to Perform?
3 The Court notes that there is dispute over whether Bohnert or Cannon was the author of theSSAM technology, but this is not relevant for purposes of Defendants’ motion.
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claims that Bohnert, as Cannon’s direct supervisor, asked Cannon to assist him in developing the
SSAM survey tool, which he did. (ECF No. 38 at 9). Plaintiff contends that it incurred costs for
the development of the SSAM technology. Specifically, Plaintiff paid the cost of Bohnert’s
salary and Cannon’s wages. Further, Plaintiff asserts that Mr. Foreman tasked Bohnert with
leading the development of this technology, but that Bohnert never asked for any funding for his
expenditures. (ECF No. 38 at 3, 11). In addition, Plaintiff states that Defendants’ argument that
Bohnert did not work on the SSAM technology at work and only discussed it outside of the
office also can cut in favor of Plaintiff. Plaintiff contends that Bohnert’s refusal to disclose to
Plaintiff his work on the SSAM technology indicates that Bohnert was trying to keep it a secret
because he knew it was contrary to his employment agreement. Further, Plaintiff contends that
the survey tool application was prepared for its benefit because the survey process was a part of
Plaintiff’s business. (ECF No. 38 at 7-8).
The Court finds that an issue of fact also exists as to this factor. The parties have both
presented evidence that they incurred costs to develop the SSAM technology. In addition, the
parties have presented contradictory information regarding whether Plaintiff approved and
facilitated the development of the SSAM technology. The Court also does not believe that
Plaintiff’s work on the SSAM technology outside of Plaintiff’s offices is dispositive of this
factor. An employee cannot establish copyright ownership rights solely on the basis that the
work was done at home on off-hours. Avtec Sys., Inc., 21 F.3d at 571.
Neither case law nor the legislative history suggests that a person can avoid the“work made for hire” doctrine merely by preparing the work during nonworking
hours or in a facility not controlled by the employer. The mere fact that preparations were done outside an employee's office or normal working hoursdoes not remove such preparations from the scope of employment.
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When the facts relied upon to establish the existence of an agency are undisputed,and conflicting inferences cannot be drawn from them, the question of theexistence of an agency is one of law for the court. On the other hand, when thefacts pertaining to the existence of an agency are conflicting, or conflictinginferences may be drawn from the evidence, the question is one of fact for the jury, or for the court as the trier of fact if the case is tried without a jury.
3 Am.Jur.2d Agency § 352; Am. Prairie Const. Co, 560 F.3d at 793; CIT Fin. Servs., Inc. v. Gott,
615 P.2d 774, 779 (1980)(“Where the existence of an agency is disputed, its existence or non-
existence is ordinarily a question of fact for the jury to be determined on proper instructions.”).
Recognizing that the existence of an agency relationship is a question of fact for a fact
finder to determine and based upon the evidence presented by both sides, the Court finds that an
issue of material fact exists as to whether Mr. Roehrig had apparent authority to enter into the
License Agreement with Defendants. Further, the Court finds that an issue of fact exists as to
whether entering into intellectual property contracts was within Mr. Roehrig’s job description.
Clearly, he had the authority to accept equipment and materials from contractors and
subcontractors, but it is unclear from the record whether he had the authority execute the License
Agreement and potentially to sign away Plaintiff’s intellectual property rights in the SSAM.
Likewise, an issue of fact exists as to whether Bohnert was acting in good faith when he
presented the License Agreement to Mr. Roehrig for signature. Defendants have presented
evidence that Bohnert emailed Mr. Roehrig about the License Agreement prior to having him
sign it, but Plaintiff has also provided evidence that Mr. Roehrig did not know what the License
Agreement was and that he was simply acting in accordance with the direction of his superior,
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Bohnert. Based upon the conflicting record before it, the Court denies Defendants’ Motion for
Summary Judgment.
II. MOTION TO STRIKE/DAUBERT MOTION5
A. Standard Under Daubert
The admission of expert testimony in federal court is governed by Federal Rule of
Evidence 702:
If scientific, technical, or other specialized knowledge will assist thetrier of fact to understand the evidence or to determine a fact in issue, awitness qualified as an expert by knowledge, skill, experience,training, or education, may testify thereto in the form of an opinion or
otherwise, if (1) the testimony is based upon sufficient facts or data,(2) the testimony is the product of reliable principles and methods, and(3) the witness has applied the principles and methods reliably to thefacts of the case.
See Clark v. Heidrick, 150 F.3d 912, 915 (8th Cir. 1998). Doubt regarding Awhether an expert=s
testimony will be useful should generally be resolved in favor of admissibility. @ Id. (citation and
internal quotation omitted). In Daubert, the Supreme Court explained that in examining an
expert=s opinions for admissibility, trial courts should consider the following criteria: (1) whether
the theory being offered by the expert has been tested; (2) whether the theory has been subjected
to peer review, publication, or analysis by others considered experts in the field; (3) whether the
theory has a Aknown or potential rate of error @; and (4) whether the theory has been generally
accepted by others in the field. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 593-94,
113 S. Ct. 2786, 2796-97 (1993). AThe proponent of the expert testimony must prove its
5 This motion is entitled “Defendants’ Motion for Leave to File Their Motion to Strike the ExpertReport of Kristopher Bleich” (ECF No. 63). In addition to addressing whether Defendants couldfile such a motion, the parties also fully briefed the merits of the Motion to Strike, which really isa Daubert motion. The Court grants Defendants leave to file their Motion to Strike andaddresses the merits of the motion herein.
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Plaintiff has designated Kristopher Bleich as its expert witness to offer his opinion as to
whether the software application (FileMaker Pro) that was used to create SSAM has the
functional equivalent of source code, even though it does not contain source code as the term is
traditionally defined. (ECF No. 63-1 at 1). Defendants ask this Court to strike the report of Mr.
Bleich. Defendants claim that Mr. Bleich’s testimony should be excluded because he failed to
examine the software program, FileMaker Pro 12, which was used to create the SSAM. (ECF
No. 75 at 3). Instead, Mr. Bleich utilized FileMaker Pro 13. Mr. Bleich claims that the version
of FileMaker Pro would not make a difference to his opinion. (ECF No. 65 at 5). Plaintiff notes
that FileMaker Pro has its own source code, which is the same no matter the version used. (Id.)
Defendants, however, point out that Mr. Bleich never reviewed the other FileMaker Pro versions
so he cannot state that examining a different version would change his opinion. (ECF No. 75 at
3).
The Court will deny Defendants’ Motion to Strike. Mr. Bleich is a well-qualified expert
whose credentials are not in dispute. (ECF No. 65 at 4). Instead, Defendants take issue only with
the version of FileMaker Pro that Mr. Bleich used when evaluating FileMaker Pro. The Court
6 Defendants filed their Motion to Strike the Expert Report of Kristopher Bleich twenty one daysafter the deadline expired. (ECF No. 75 at 1). The Court finds that Plaintiff has suffered no prejudice from this delay and this issue is fully briefed and ready for disposition.
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finds that this factual issue goes only to the credibility of Mr. Bleich’s expert opinion, which can
be addressed through expert cross-examination. See Larson v. Kempker, 414 F.3d 936, 941 (8th
Cir. 2005)(“the factual basis of an expert opinion goes to the credibility of the testimony, not the
admissibility, and it is up to the opposing party to examine the factual basis for the opinion in
cross-examination”)(citation omitted). The Court does not believe that Mr. Bleich’s testimony is
so fundamentally unsupported that it can offer no assistance to the jury. See Loudermill v. Dow
Chem. Co. , 863 F.2d 566, 570 (8th Cir. 1988)(“only if an expert's opinion is so fundamentally
unsupported that it can offer no assistance to the jury must such testimony be excluded.” ).
Rather, the Court holds that Mr. Bleich’s testimony, even if it is addressi ng a different version of
FileMaker Pro, is relevant to the issue of whether any source code existed for the SSAM survey
software. Therefore, the Court denies Defendants’ Motion to Strike. The Court also gives
Plaintiff seven (7) days to correct any technical deficiencies in Mr. Bleich’s report.7
Accordingly,
IT IS HEREBY ORDERED that Defendants’ Motion for Summary Judgment [28] is
DENIED.
IT IS HEREBY ORDERED that Defendants’ Motion for Leave to File Their Motion to
Strike the Expert Report of Kristopher Bleich [63] is GRANTED, but that the Motion to Strike
the Expert Report of Kristopher Bleich is DENIED. The Court gives Plaintiff seven (7) days to
correct any technical deficiencies in Mr. Bleich’s report.
7 Defendants claim that Mr. Bleich’s report should be stricken because it is not signed and
because the report does not have a statement of the compensation to be paid for his study andtestimony. This information has already been provided to Defendants (ECF No. 65 at 7-8), butthe Court formally orders Plaintiff to provide a supplemental report to Defendants.
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