Whose Line (Of Source Code) Is It Anyway?

While almost every business relies on the Internet these days for commercial purposes—making sales, tracking orders, providing customer service—that does not mean that every business is in the business of software development. Most e–commerce source code, for example, is not home–grown, or at least not exclusively home grown.

Once you’ve been sued for patent infringement by some feature of your website, plaintiffs are generally going to demand that you produce your source code to them for inspection—so they can look under the hood of your website to see where the (alleged) infringement is happening. So what do you do if a patent–owner has asked for “your” source code, and “your” source code originated with a third–party vendor? One approach is to produce what technical documents are in your possession, but decline to produce source code (or related documents) that belong to vendors on the ground that they are not in your possession, custody, or control. Indeed, ownership of source code may well be the subject of a vendor agreement that places limits on what users can do with the code, including to whom it can be shown.

The result is a dispute like the one between TQP Development and United Parcel Service recently decided in the Eastern District of Texas. UPS initially produced fewer than 4,000 pages of documents, and no source code, arguing that the source code wasn’t UPS’s. TQP complained about that production (and other issues), and UPS created and produced some 80,000 additional pages of documents in an effort at compromise. Unmollified, TQP took its complaints to the court. While the court did order UPS to produce other categories of documents that UPS had not previously produced—such as patent licenses, website sales revenues, and website metrics—the court did not require UPS to produce any additional technical documents.

The channel between a party’s discovery obligations and its obligations to third–party vendors may be narrow, but it can be navigated.

TQP Development (ED Tex Feb 9, 2012)

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Posted by David Swetnam-Burland