Client Alerts & Newsletters

Stopped in its Tracks: The Government’s Failure to Track Software Use Constitutes Infringement Under 28 U.S.C. § 1498

March 9, 2021

In Bitmanagement Software GmbH v. United States, the Federal Circuit vacated and remanded a decision by the Court of Federal Claims (COFC) that found the Navy was not liable for copyright infringement even though it was undisputed that the Navy made 429,604 copies of Bitmanagement’s BS Contact Geo software when it only paid for 119 copies. The COFC reasoned that the Navy was not liable because it had an implied-in-fact license that permitted it to make copies. The Federal Circuit’s majority agreed the Navy had an implied-in-fact license, but that the COFC’s analysis should not have stopped there; rather, the COFC should have also considered whether the Navy complied with the terms of that implied license. The Navy did not. According to the Court, the implied license was conditioned on the Navy’s use of a license-tracking software at the time of copying to monitor usage by limiting the number of simultaneous users of Bitmanagement’s software. However, the Navy failed to use that license-tracking software. The Court held that the Navy’s copying outside of the scope of the implied license created liability for infringement. In a concurring opinion, Judge Newman reached the same conclusion; however, she disagreed as to the existence of an implied license, simply finding that the Navy’s “massive copying” infringed Bitmanagement’s copyright.

The case was remanded to the COFC for the calculation of a reasonable royalty for the Navy’s actual usage in excess of the licensed number of copies, which the burden is on the Government to prove.

For more information, please contact the professional(s) listed below, or your regular Crowell & Moring contact.

Jonathan M. Baker
Partner – Washington, D.C.
Phone: +1.202.624.2641

John E. McCarthy Jr.
Partner – Washington, D.C.
Phone: +1.202.624.2579

Nicole Owren-Wiest
Partner – Washington, D.C.
Phone: +1.202.624.2863

Crowell & Moring LLP is an international law firm with offices in the United States, Europe, MENA, and Asia that represents clients in litigation and arbitration, regulatory and policy, and transactional and corporate matters. The firm is internationally recognized for its representation of Fortune 500 companies in high-stakes litigation and government-facing matters, as well as its ongoing commitment to pro bono service and diversity, equity, and inclusion.

View Desktop Site | Mobile Sitemap |

Contact | Subscribe | Terms of Use | Privacy Statement | Alumni

© Crowell & Moring LLP 2022
Attorney advertising - prior results do not guarantee a similar outcome.