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On May 3, 2024, in Geospatial Technology Associates, LLC v. United States, COFC No. 16-346C, the U.S. Court of Federal Claims denied the government’s motion to dismiss for lack of jurisdiction and, alternatively, for summary judgment due to alleged inaccuracies in a copyright registration, holding that plaintiff Geospatial Technology Associates, LLC’s (“plaintiff” or “GTA”) patent and copyright infringement claims pursuant to 28 U.S.C. § 1498 raise issues that “must be addressed at trial.” This newest development follows GTA’s original March 2016 lawsuit against several government agencies—including the Department of the Army, the Department of the Air Force, and the National Geospatial-Intelligence Agency (“NGA”)—alleging patent and copyright infringement of the underlying software code of its product, “NINJA.pro.” 

Dr. William Basener, GTA’s president and the author of NINJA.pro, was in government service as a visiting scientist contractor at the NGA from 2007 to 2008 with Dr. Thomas Braun. Dr. Basener’s second period in government service was as a subcontractor on the GeoSage contract for the NGA from February to May 2010. In a previous filing, the government made two relevant arguments. First, it argued that Dr. Basener prepared NINJA.pro under the GeoSage contract from February to May 2010—which GTA rebutted with secondary evidence, showing that a version of NINJA.pro pre-dated Dr. Basener’s work under the GeoSage contract. Second, the government argued that NINJA.pro began as a file named “background_mod_mf.pro” that was written by Dr. Basener and Dr. Braun during Dr. Basener’s first period of government service from 2007 to 2008. In response, GTA asserted both that (1) the government relied on the wrong version of background_mod_mf.pro to make its argument, and (2) only the “NINJA functionality” of NINJA.pro was relevant to the copyright claims. GTA offered evidence to demonstrate that Dr. Basener wrote the NINJA functionality in July 2009 (between his two distinct periods of government service as a contractor).

Relevant to the Court’s May 3, 2024 decision is 28 U.S.C. § 1498(b), which provides a waiver of sovereign immunity for allegations of copyright infringement against the United States. However, § 1498(b) does not create a 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, or in the preparation of which Government time, material, or facilities were used.”

As part of its motion to dismiss for lack of jurisdiction, the government argued that GTA’s claim was 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. According to the Court, the fundamental issue in the motion to dismiss was what copyrighted work needed to have been “prepared” for the exclusions in § 1498(b) to apply. The government argued that the exclusions apply whenever there is any overlapping code between an original file and the copyrighted work, while GTA argued that the Court retained jurisdiction when the core functionality of the copyrighted work was written outside of the scope of the exclusions. Neither party concretely addressed what the appropriate legal standard was, and the Court’s own examination suggested that there was no direct precedent to help resolve this issue. Thus, the Court expressed that the first step was to identify the relevant facts, since “the legal question [must be answered] in the context of the facts, and they are not yet fully developed.” The Court ultimately held that GTA raised enough questions to deny defendant’s motion to dismiss. 

Next, the Court turned to the government’s motion for summary judgment, which alleged that GTA knowingly made three critical errors in its copyright registration application that ultimately rendered the entire registration invalid. Specifically, the government argued that: (1) the year of first completion and the date of first publication in the registration were both incorrect; (2) the source code submitted as a deposit copy in the registration was not the correct copy of the claimed work; and (3) despite GTA’s contention that it only claimed copyright over the “NINJA functionality,” GTA failed to disclose or disclaim an appreciable amount of preexisting material within the claimed work. The Court noted that inaccuracies in copyright registrations can be excused so long as there was no “willful blindness” in making those mistakes. Willful blindness has two basic requirements: (1) the party’s subjective belief that a fact probably exists; and (2) the party’s deliberate actions to avoid learning that fact. Although the Court agreed that plaintiff “was very likely careless in submitting the application,” it was not persuaded that the government’s evidence on summary judgment demonstrated that GTA had actual knowledge of these inaccuracies or was willfully blind to them. Accordingly, the Court denied the government’s motion for summary judgment and set the deadline for the parties to file their responses to currently pending motions in limine on or before May 31, 2024 to prepare for trial.

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Photo of Nicole Owren-Wiest Nicole Owren-Wiest

Nicole Owren-Wiest is a partner and member of the Steering Committee of Crowell & Moring’s Government Contracts Group in the firm’s Washington, D.C. office. Nicole is nationally ranked by Chambers USA in Government Contracts and a recognized leader in two of the most…

Nicole Owren-Wiest is a partner and member of the Steering Committee of Crowell & Moring’s Government Contracts Group in the firm’s Washington, D.C. office. Nicole is nationally ranked by Chambers USA in Government Contracts and a recognized leader in two of the most complex areas in government contracting: accounting, cost, and pricing, and intellectual property/data rights. With over 20 years’ experience, Nicole has a broad counseling and dispute-resolution practice and leads the Group’s cost accounting practice, which focuses on helping clients navigate the government’s complex cost and pricing rules, including the FAR Part 31 cost principles, the Cost Accounting Standards (CAS), and Truth in Negotiations Act/Truthful Cost or Pricing Data (defective pricing).

Photo of John E. McCarthy Jr. John E. McCarthy Jr.

John E. McCarthy, Jr. is a partner in the Washington, D.C. office of Crowell & Moring and member of the firm’s Government Contracts Group. John has spent more than thirty years litigating all forms of government contracts cases for both large and small…

John E. McCarthy, Jr. is a partner in the Washington, D.C. office of Crowell & Moring and member of the firm’s Government Contracts Group. John has spent more than thirty years litigating all forms of government contracts cases for both large and small government contractors, with a particular emphasis on bid protests. Because of John’s strong engineering background, he has particular experience in technology related issues, including litigation regarding complex technology and data rights, patent and other intellectual property issues.

Photo of Jonathan M. Baker Jonathan M. Baker

Jonathan M. Baker is a partner in Crowell & Moring’s Washington, D.C. office. He practices in the Government Contracts Group.

Jon advises clients on a wide array of government contracts legal issues, including both federal and state bid protests, prime-sub disputes, government contracts…

Jonathan M. Baker is a partner in Crowell & Moring’s Washington, D.C. office. He practices in the Government Contracts Group.

Jon advises clients on a wide array of government contracts legal issues, including both federal and state bid protests, prime-sub disputes, government contracts due diligence and transactions, regulatory compliance, and contract terminations. Jon’s practice has a notable emphasis on technology-related issues, including counseling clients in the areas of patent and data rights, responding to government challenges to technical data and computer software rights assertions, and litigating cases involving complex and cutting edge technologies. Jon also provides guidance on national security matters, such as National Industrial Security Program Operating Manual compliance and facility and security clearance matters. In addition, Jon has advised clients on local government contract negotiation, internal and government investigations regarding potential False Claims Act issues, and export violations. Jon is also actively involved in the firm’s pro bono program, having litigated prisoner neglect, parental rights termination, and landlord-tenant matters.

Photo of Zariah Altman Zariah Altman

Zariah helps clients with antitrust investigations, government contracts matters, including bid protests, and other complex and fast-paced disputes.

In her antitrust practice, Zariah provides counsel on a range of issues and agency actions, including investigations into company hiring practices, such as no-poach/non-solicitation. In…

Zariah helps clients with antitrust investigations, government contracts matters, including bid protests, and other complex and fast-paced disputes.

In her antitrust practice, Zariah provides counsel on a range of issues and agency actions, including investigations into company hiring practices, such as no-poach/non-solicitation. In addition, in the area of government contracts, she advises clients on agency submissions, state and federal regulatory compliance, including FOIA requests, and bid protests.

She received her J.D., cum laude, from Howard University School of Law and served as a senior articles editor for the Howard Law Journal. Zariah worked as a Henry Ramsey Dean’s Fellow for a legal writing professor and as a student attorney in Howard’s Reentry Clinic, where she represented clients with criminal records that were seeking to have their records sealed or to terminate their parole early.