U.S. Auto Parts Network, Inc. v. Parts Geek, LLC, et al.
Justia.com Opinion Summary: USAP brought suit against Parts Geek and various individuals alleging, among other things, copyright infringement in certain e-commerce software. The district court granted summary judgment against USAP on its claim of copyright infringement because it concluded that USAP did not own the allegedly infringed copyright. Because there were genuine issues of material fact as to whether USAP owned a copyright in all or part of the software at issue, the court reversed in part, vacated in part, and remanded.
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FOR PUBLICATION UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT U.S. AUTO PARTS NETWORK, INC., Plaintiff-Appellant, v. PARTS GEEK, LLC, a New Jersey limited liability company; RICHARD E. PINE; BRIAN TINARI, an individual; LOWELL E. MANN, an individual; DANNIE HENDERSHOT, an individual; LUCAS THOMASON, an individual, Defendants-Appellees. U.S. AUTO PARTS NETWORK, INC., Plaintiff-Appellee, v. PARTS GEEK, LLC, a New Jersey limited liability company; RICHARD E. PINE; BRIAN TINARI, an individual; LOWELL E. MANN, an individual; DANNIE HENDERSHOT, an individual; LUCAS THOMASON, an individual, Defendants-Appellants. ï£¼ ï£½ No. 10-56129 D.C. No. 2:09-cv-04609JFW-RZ ï£¾ ï£¼ ï£½ No. 10-56194 D.C. No. 2:09-cv-04609JFW-RZ OPINION ï£¾ Appeal from the United States District Court for the Central District of California John F. Walter, District Judge, Presiding Argued and Submitted March 6, 2012âÄĒPasadena, California 10395 10396 U.S. AUTO PARTS NETWORK v. PARTS GEEK Filed August 31, 2012 Before: Jerome Farris, Richard R. Clifton, and Sandra S. Ikuta, Circuit Judges. Opinion by Judge Ikuta U.S. AUTO PARTS NETWORK v. PARTS GEEK 10399 COUNSEL Gerald E. Hawxhurst (argued), Crowe Hawxhurst LLP, Los Angeles, California; Michael H. Simon, Christopher L. Garrett, Nathan R. Christensen, Perkins Coie LLP, Portland, Oregon, for appellant/cross-appellee U.S. Auto Parts Network, Inc. Steven E. Angstreich (argued), Weir and Partners LLP, Cherry Hill, New Jersey; Daniel E. Sobelsohn, The Sobelsohn Law Firm, Los Angeles, California, for appellee/crossappellant Parts Geek LLC. Wendy S. Albers (argued), Reed Smith LLP, Los Angeles, California, for appellee Lucas Thomason. OPINION IKUTA, Circuit Judge: U.S. Auto Parts Network (USAP) brought suit against Parts Geek, LLC and various individuals alleging, among other things, copyright infringement in certain e-commerce soft- 10400 U.S. AUTO PARTS NETWORK v. PARTS GEEK ware. The district court granted summary judgment against USAP on its claim of copyright infringement because it concluded that USAP did not own the allegedly infringed copyright. Because there are genuine issues of material fact as to whether USAP owns a copyright in all or part of the software at issue, we reverse in part, vacate in part, and remand.1 I The story starts in 1996, when Richard Pine and Todd Daugherty founded BenzBin, a website that sold MercedesBenz car parts. By 2000, Pine and Daugherty met two more internet entrepreneurs, Brian Tinari and Lowell Mann. Together they began to work on what had by then become Partsbin, a website selling replacement parts for cars of all makes. Partsbin needed software to help it process customer orders over the internet (e-commerce software) and so Tinari entered into discussions with a computer programmer, Lucas Thomason, to license an order processing program of ThomasonâÄôs called Manager 2000.2 Thomason wrote the program in âÄúlate 1999 or early 2000,âÄĚ while he was âÄúself-employed and doing business as âÄėLucas Networks.âÄô âÄĚ Thomason gave Partsbin a âÄúperpetual license to useâÄĚ Manager 2000 and Partsbin began using the software in its business. Sometime around April 2001, after Thomason provided the company with the Manager software, Partsbin hired him as its âÄúdirector of eServices.âÄĚ As part of the position, Thomason moved into one of PineâÄôs houses that doubled as a Partsbin office. While at Partsbin, Thomason worked on, among other things, âÄúcreating websites, catalogs and maintaining the network.âÄĚ He also continued to make âÄúmodifications and 1 In this opinion, we address only USAPâÄôs claim of copyright infringement. In a memorandum disposition filed concurrently with this opinion, we address the balance of the district courtâÄôs summary judgment order. 2 The parties use numerous names for this software, but this opinion will use Manager 2000 to avoid confusion. U.S. AUTO PARTS NETWORK v. PARTS GEEK 10401 enhancementsâÄĚ to Manager 2000, some at the direction of his supervisors, and some of his own accord because he thought it âÄúmight be helpful or neededâÄĚ given PartsbinâÄôs changing needs. For example, Partsbin began as both a retailer and direct distributor of the parts it sold online; it carried stock, sold, and delivered whatever parts customers ordered. But this integrated business model meant that the size of its online catalog was limited by the size of its warehouse. PartsbinâÄôs business entered a new phase after its primary supplier agreed to ship parts directly to Partsbin customers without having Partsbin keep the parts in stock. Use of this drop shipping technique expanded PartsbinâÄôs business to the extent that Tinari, one of the Partsbin founders, called it a âÄúmaterial breakthrough.âÄĚ Thomason tailored the Manager software to fit PartsbinâÄôs business changes. He added one of these modifications, called Auto Vend, around âÄú2003 to early 2004.âÄĚ Auto Vend is a distributor selection system: if a customer orders a part that is out of stock in PartsbinâÄôs own warehouse, Auto Vend will identify an appropriate distributor to fill the customerâÄôs order. As Partsbin evolved, so did Manager 2000. In his time working at Partsbin, Thomason developed at least four more versions of ManagerâÄĒManager 2001, Manager 2001 v2, Manager 2003, and Manager 2005.3 There is no record of a written agreement between Thomason and Partsbin regarding the ownership rights to ThomasonâÄôs âÄúmodifications and enhancementsâÄĚ to Manager 2000. Partsbin became an internet success story. By 2006, its annual sales had reached approximately $80 million. PartsbinâÄôs success attracted suitors, one of which was USAP, another online retailer of aftermarket auto parts. In May 2006, 3 Thomason was employed at Partsbin from April 2001 to May 2006 with a possible gap from âÄúthe end of 2001âÄĚ to âÄúpossibly midsummer of 2002.âÄĚ 10402 U.S. AUTO PARTS NETWORK v. PARTS GEEK USAP and Partsbin entered into an acquisition agreement, whereby USAP agreed to purchase Partsbin for some $50 million. The acquisition agreement listed PartsbinâÄôs assets as including all its âÄúIntellectual Property,âÄĚ defined in relevant part as âÄúall rights to and interests in . . . all Software, copyrights . . . registrations and applications thereof . . . .âÄĚ âÄúSoftwareâÄĚ was defined, in turn, to mean âÄútitle and interest in the [Partsbin] software programsâÄĚ identified in a schedule attached to the agreement. The attached schedule of intellectual property rights stated in relevant part: e-commerce system âÄĒ owned by Company [Partsbin] manager âÄĒ owned by Company [Partsbin] After the acquisition, USAP hired many of PartsbinâÄôs key employees, including the four founders (Pine, Daugherty, Tinari, and Mann), Thomason, and PineâÄôs son-in-law, Dannie Hendershot, who was also an early-stage Partsbin employee. According to Thomason, his âÄúprimary roleâÄĚ at USAP was to âÄúmanage ManagerâÄĚ by again making âÄúmodifications and enhancementsâÄĚ to the software in order to accommodate the needs of his co-workers and supervisors. Eventually, these updates led to the development of at least two more versions of e-commerce software, Manager July 2008, and Versapart. Thomason resigned from USAP in July 2008. Around that same time, Pine, Tinari, Mann, and Hendershot also left USAP to launch a new online aftermarket car parts retailer named Parts Geek. Parts Geek needed e-commerce software, so it contacted Thomason. Thomason began work on the Parts Geek project about four weeks before he left USAP. He finished writing the new software, called Admin, by October 2008 and Parts Geek began accepting orders through Admin shortly thereafter. Parts Geek was another success, growing to over $12 million in sales by the end of 2009. This rapid growth attracted U.S. AUTO PARTS NETWORK v. PARTS GEEK 10403 USAPâÄôs attention and suspicion, culminating in this suit by USAP against Parts Geek and Thomason claiming, among other things, that Admin infringes USAPâÄôs copyrights in Manager. USAP also brought three state law causes of action (misappropriation of trade secrets, breach of contract, and unfair competition), and Parts Geek responded with federal antitrust and state tortious interference counterclaims. Parts Geek and Thomason moved for summary judgment on USAPâÄôs claims, and USAP did the same on Parts GeekâÄôs counterclaims. As part of its opposition to summary judgment, USAP submitted the first report of its software expert, which stated that Admin included a feature âÄúsubstantially similarâÄĚ to Auto Vend in Manager. In addition, USAP requested a continuance of the summary judgment proceedings until (1) it could depose Thomason and, (2) its software expert could prepare a second report comparing the first four versions of Manager (2000, 2001, 2001 v2, and 2003) to the later versions of the software (Versapart and Admin). The district court denied the continuance for USAPâÄôs software expertâÄôs second report, but allowed the continuance as to ThomasonâÄôs deposition. Both parties filed supplemental summary judgment briefing following the deposition. The district court granted summary judgment to Parts Geek and Thomason on USAPâÄôs copyright infringement claim for Manager, concluding that USAP did not own the copyright to any versions of Manager because âÄúThomason never agreed to transfer his ownership of the Manager program (or any of its subsequent versions) to either Partsbin or USAP.âÄĚ Because the district court concluded that USAP had no ownership interest in Manager, it ruled that USAP had no standing to bring suit for infringement. Following summary judgment, Parts Geek and Thomason moved for attorneysâÄô fees for USAPâÄôs claims related to the Manager software. The district court granted the motions and awarded fees. The parties timely appealed. 10404 U.S. AUTO PARTS NETWORK v. PARTS GEEK On appeal, USAP claims that the district court erred in granting summary judgment in favor of Parts Geek and Thomason because USAP does have an ownership interest in those portions of Manager that Thomason prepared while he was working at Partsbin. According to USAP, ThomasonâÄôs work while employed at Partsbin was âÄúwork made for hire,âÄĚ 17 U.S.C. Â§ 101, and therefore Partsbin was the copyright owner of (at a minimum) any copyrightable enhancements Thomason added to Manager 2000 while working for Partsbin, id. at Â§ 201(b). USAP asserts that it became the copyright owner of these enhancements when it acquired PartsbinâÄôs intellectual property. By the same work for hire theory, USAP also claims the copyright to the enhancements Thomason added to Manager while he was employed at USAP. Finally, USAP asserts that Parts Geek and Thomason infringed USAPâÄôs copyright to these enhancements by using substantially similar features as part of Admin. We have jurisdiction pursuant to 28 U.S.C. Â§ 1291 and review de novo a district courtâÄôs grant of summary judgment, as well as its interpretation of the Copyright Act. Ellison v. Robertson, 357 F.3d 1072, 1075-76 (9th Cir. 2004). As the moving parties, Parts Geek and Thomason bear the burden of proving the absence of a genuine issue of material fact. Id. A genuine issue of material fact exists if there is evidence from which a jury could reasonably render a verdict in favor of USAP, the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). In determining whether a jury could so find, we draw all reasonable inferences in favor of USAP. Ellison, 357 F.3d at 1075. II We must first determine whether USAPâÄôs theory of copyright ownership is based on a correct legal interpretation. The key to USAPâÄôs argument is the interaction of two provisions in the Copyright Act: the provision making employers the copyright owner of an employeeâÄôs âÄúwork made for hire,âÄĚ 17 U.S. AUTO PARTS NETWORK v. PARTS GEEK 10405 U.S.C. Â§ 201(b), and the provision governing copyright ownership of âÄúderivative works,âÄĚ id. at Â§ 103. We consider each in turn. A  We begin by considering the applicability of the âÄúwork made for hireâÄĚ doctrine to ThomasonâÄôs development of software enhancements to Manager 2000 while employed at Partsbin and USAP. Software source code is subject to copyright protection. JustMed, Inc. v. Byce, 600 F.3d 1118, 1125 n.3 (9th Cir. 2010). Under Â§ 201(a)4 of the Copyright Act, copyright ownership âÄúvests initially in the author or authors of the work,âÄĚ which is generally the creator of the copyrighted work. See Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989). âÄúThe Act carves out an important exception, however, for âÄėworks made for hire.âÄô âÄĚ Id. at 737. If a work is made for hire, âÄúthe employer or other person for whom the work was prepared is considered the authorâÄĚ and owns the copyright âÄúunless the parties have expressly agreed otherwise in a written instrument signed by them.âÄĚ Â§ 201(b)5; see also Thomson v. Larson, 147 F.3d 195, 205 n.27 (2d Cir. 1998) (âÄúThe work-for-hire provisions are an exception to the rule that copyrights belong in the first instance only to creators.âÄĚ). Relevant here, a âÄúwork made for hireâÄĚ is defined as âÄúa work prepared  by an employee  within the scope of his or her employment.âÄĚ Â§ 101. 4 Section 201(a) provides: Initial Ownership.âÄĒ Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowners of copyright in the work. 5 Section 201(b) provides: Works Made for Hire.âÄĒ In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright. 10406 U.S. AUTO PARTS NETWORK v. PARTS GEEK  Although the Copyright Act does not define either âÄúemployeeâÄĚ or âÄúscope of employment,âÄĚ these terms must be âÄúunderstood in light of the general common law of agency.âÄĚ Reid, 490 U.S. at 739-41 (applying agency principles to conclude that an artist who had been commissioned by a nonprofit corporation to create a sculpture was not an âÄúemployeeâÄĚ who had created the work within the âÄúscope of his employment.âÄĚ). Reid cited to section 228 of the Restatement (Second) of Agency as a source of these common law principles, id. at 740, and courts have accordingly adopted section 228âÄôs three-prong test for determining when a work is made by an employee âÄúwithin the scopeâÄĚ of employment: âÄú(a) it is of the kind [the employee] is employed to perform; (b) it occurs substantially within the authorized time and space limits; [and] (c) it is actuated, at least in part, by a purpose to serve the [employer].âÄĚ Avtec Sys., Inc. v. Peiffer, 21 F.3d 568, 571 (4th Cir. 1994) (quoting Restatement Â§ 228); accord Shaul v. Cherry Valley-Springfield Cent. Sch. Dist., 363 F.3d 177, 186 (2d Cir. 2004) (same); see also 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright Â§ 5.03[B][b][I] (2011).  We join our sister circuits in adopting this approach. Provided that Partsbin and USAP had the right to create derivative work based on Manager 2000, any separately copyrightable software source code developed by Thomason while at Partsbin, and later USAP, is a âÄúwork made for hireâÄĚ if (1) Thomason was an employee of Partsbin and USAP, and (2) the development of software code was the type of work he was employed to perform, the work occurred substantially within the authorized work hours and space limits, and the work was actuated, at least in part, by a purpose to serve Partsbin and USAP. B We next consider how and when enhancements to software programs such as Manager 2000 can be separately copyright- U.S. AUTO PARTS NETWORK v. PARTS GEEK 10407 able as derivative works. A âÄúwork based upon one or more preexisting worksâÄĚ that âÄúrecast[s], transform[s], or adapt[s]âÄĚ the preexisting work is referred to as a âÄúderivative work.âÄĚ 17 U.S.C. Â§ 101.6 A copyright owner has the exclusive right to âÄúprepareâÄĚ and authorize the preparation of âÄúderivative works based upon the copyrighted work.âÄĚ Id. at Â§ 106(2). A nonexclusive license of this right âÄúmay be granted orally, or may even be implied by conduct.âÄĚ Effects Assocs. v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990) (quoting Nimmer on Copyright Â§ 10.03[A] (1989)).  The resulting derivative work may be independently copyrightable, but the scope of this copyright is limited. For example, where the copyright owner has authorized a third party to prepare a derivative work based on the ownerâÄôs preexisting work, copyright protection in the derivative work will cover only âÄúthe material contributed by the author of such work, as distinguished from the preexisting material employed in the work.âÄĚ Â§ 103(b); see Stewart v. Abend, 495 U.S. 207, 223 (1990) (âÄúThe aspects of a derivative work added by the derivative author are that authorâÄôs property, but the element drawn from the pre-existing work remains on grant from the owner of the pre-existing work.âÄĚ); Russell v. Price, 612 F.2d 1123, 1128 (9th Cir. 1979). Copyright in this contributed material âÄúis independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.âÄĚ Â§ 103(b). However, copyright protection for a derivative work âÄúdoes not extend to any part of the work in which such [preexisting] 6 Section 101 defines a âÄúderivative workâÄĚ as: a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a âÄúderivative work.âÄĚ 10408 U.S. AUTO PARTS NETWORK v. PARTS GEEK material has been used unlawfully.âÄĚ Â§ 103(a). Thus, if a third party uses preexisting work in violation of the Copyright Act, see Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1078 n.7 (9th Cir. 2000), the resulting derivative work is not entitled to copyright protection. In short, Â§ 103 provides that a derivative author may own the copyright in material the author contributed to a preexisting work, but not in infringing material or material the author did not create. We have adopted the Second CircuitâÄôs test for ascertaining whether a derivative work meets copyright lawâÄôs fundamental requirement of originality. In order to be copyrightable, (1) âÄúthe original aspects of a derivative work must be more than trivialâÄĚ and (2) âÄúthe original aspects of a derivative work must reflect the degree to which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material.âÄĚ EntmâÄôt Research Grp. v. Genesis Creative Grp., 122 F.3d 1211, 1220 (9th Cir. 1997) (quoting Durham Indus. v. Tomy Corp., 630 F.2d 905, 909 (2d Cir. 1980)). This Durham test establishes two ways of asking the same underlying question: whether the derivative work meets the âÄúconstitutional requirementâÄĚ of originality enunciated in Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 346 (1991). In Feist, the Supreme Court held that âÄú[t]o qualify for copyright protection, a work must be original to the author,âÄĚ meaning that âÄúthe work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.âÄĚ Id. at 345. Thus, the first prong of the Durham test asks whether the derivative work is original to the author and non-trivial, i.e., possesses the minimal degree of independent creativity required by Feist. Durham, 630 F.2d at 909; EntmâÄôt Research Grp., 122 F.3d at 1220. The second prong asks whether the author of the derivative work made so few changes to the preexisting work that issuing a copyright for the derivative work would prevent the owner of the preexisting work from exercising some of its rights under copyright law. EntmâÄôt Research Grp., 122 F.3d at 1220. U.S. AUTO PARTS NETWORK v. PARTS GEEK 10409 Durham illustrates how this test should be applied. In that case, a toy company that produced Mickey Mouse, Pluto, and Donald Duck toys claimed that it owned a derivative copyright in these Disney characters. Durham, 630 F.2d at 908-11. The court rejected this claim. First, the court held that the toys contained âÄúno independent creationâÄĚ and lacked âÄúeven a modest degree of originality.âÄĚ Id. at 910-11. Second, the court explained that if it recognized the toymakerâÄôs derivative copyright in the toys, then other licensees of Disney would âÄúas a practical matter, have to make substantial changes in these characters in order to avoid infringing [the toymakerâÄôs derivative] rights.âÄĚ Id. at 911. As a result, âÄúDisneyâÄôs right to copy (or to permit others to copy) its own creations would, in effect, be circumscribed.âÄĚ Id. Because any material the toymaker contributed to the Disney characters was trivial and lacked the requisite originality, Durham concluded the toys were not copyrightable. Id. at 910-11; see also EntmâÄôt Research Grp., 122 F.3d at 1220.  Applying this test, we conclude that in order to be copyrightable derivative works, ThomasonâÄôs contributions to Manager 2000 would have to be lawfully based on Manager 2000 and contain non-trivial enhancements that do not affect the scope of copyright protection in Manager 2000. See EntmâÄôt Research Grp., 122 F.3d at 1220. C  Having separately examined the work for hire and derivative work provisions of the Copyright Act, we now must read them together. Based on our review, we conclude that absent a written agreement to the contrary, the employer is the author of a work made for hire. Â§ 201(b). If such a work is lawfully derived from a preexisting copyrighted work, the employer holds the copyright to the original, non-trivial material contributed to the preexisting work. Â§ 103. Therefore, we agree with USAPâÄôs interpretation of the law: if ThomasonâÄôs contributions to Manager 2000 while he was an employee at 10410 U.S. AUTO PARTS NETWORK v. PARTS GEEK Partsbin and USAP were works made for hire and were also copyrightable derivative works, then Partsbin and USAP would be the copyright owners of those works. III We next apply these legal principles to the facts of this case in order to determine whether there is a genuine issue of material fact that USAP owned copyrightable portions of the post-2000 versions of Manager.7 Our analysis of the Copyright Act demonstrates that this question consists of two intertwined threshold issues: whether a jury could reasonably infer (1) that ThomasonâÄôs enhancements to Manager 2000 constituted âÄúwork made for hireâÄĚ as defined in the Copyright Act (and thus potentially owned by Partsbin and USAP), and (2) that such enhancements are copyrightable, meaning that Partsbin and USAP held non-exclusive licenses to modify Manager 2000 and these modifications are sufficiently original. A We begin with the question whether a jury could reasonably infer that ThomasonâÄôs work on the Manager software for Partsbin and USAP constituted âÄúwork made for hire.âÄĚ More specifically, we must determine whether a jury could reasonably conclude that (1) Thomason was an employee of Partsbin and then USAP when he created the later versions of Manager (2001, 2001 v2, 2003, 2005, July 2008, and Versapart) and (2) these works were made âÄúwithin the scope of his employment.âÄĚ Â§ 101. As a threshold matter, it is undisputed that Thomason was a Partsbin employee from April 2001 to sometime in 2006, and after that, a USAP employee until July 2008. 7 The parties do not dispute that Thomason is the author and copyright owner of Manager 2000. U.S. AUTO PARTS NETWORK v. PARTS GEEK 10411 We therefore turn to the question whether ThomasonâÄôs updates to Manager were made within the scope of his employment, that is, whether such coding was the kind of work Partsbin and USAP employed Thomason to perform, occurred within authorized work hours and space limits, and was actuated, at least in part, by a purpose to serve Partsbin and USAP. See Avtec, 21 F.3d at 571. There is evidence in the record to support such an inference.  First, a jury could reasonably find that ThomasonâÄôs modifications to Manager 2000 were the kind of work Thomason was âÄúemployed to perform.âÄĚ See id. According to testimony in the record, Thomason was hired as an employee by Partsbin shortly after âÄúhe provided the company with the Manager software for it to use as its e-commerce system.âÄĚ At Partsbin, Thomason worked as the âÄúdirector of eServices,âÄĚ where his job included âÄúcreating websites, catalogs and maintaining the network,âÄĚ and making âÄúchanges or modificationsâÄĚ to Manager. Thomason acknowledged that many of these modifications were made in response to requests by his Partsbin supervisors. Similarly, Thomason testified that his âÄúprimary roleâÄĚ at USAP was to âÄúmanage ManagerâÄĚ by making âÄúmodifications and enhancementsâÄĚ to the software that were, at least in part, requested by the company.  As to the second prong, whether Thomason wrote the source code for these later versions of Manager 2000 âÄúsubstantially within authorized time and space limits,âÄĚ id., there is little evidence in the record either way. But this lack of evidence is not dispositive. Rather, as Avtec noted, when there is evidence that the employeeâÄôs creation was the âÄúkind of workâÄĚ the employee was employed to perform, courts have tended to put little weight on evidence that âÄúthe work was done at home on off-hours.âÄĚ Id. at 571-72 (citing cases); cf. JustMed, 600 F.3d at 1128 (recognizing that for the purposes of a work for hire situation, courts must be sensitive to the fact that a âÄúsmall start-up companyâÄĚ might âÄúconduct[ ] its business more informally than an established enterprise mightâÄĚ). In any 10412 U.S. AUTO PARTS NETWORK v. PARTS GEEK event, here, the small amount of record evidence on this issue supports USAPâÄôs position. Because Thomason testified that he lived rent-free in a house that doubled as a Partsbin office while working on PartsbinâÄôs software, a jury could reasonably infer that neither Thomason nor Partsbin strictly differentiated between work and home, or between work hours and off hours, and thus all of ThomasonâÄôs work on Manager was within authorized work hours and space limits. See Shaul, 363 F.3d at 186.  Finally, a reasonable jury could infer from the record that ThomasonâÄôs creation of these updated Manager programs was âÄúactuated, at least in part, by a purpose to serveâÄĚ Partsbin and USAP by making the software better suited to their businesses. See id. For example, Thomason explained that some of the âÄúmodifications or enhancementsâÄĚ he made to Manager while at Partsbin were ones that he determined to be âÄúhelpful or neededâÄĚ to the company as determined by his own research. He testified similarly regarding his work at USAP.  In light of this analysis, we conclude that there is a genuine issue of material fact as to whether ThomasonâÄôs work on Manager while at Partsbin and USAP constitutes work made for hire. Because there is no evidence that Thomason and his employers âÄúexpressly agreedâÄĚ in a âÄúwritten instrument signed by themâÄĚ that Thomason would be the author of any work he contributed to Manager during his employment,8 Â§ 201(b), a jury could reasonably infer that Partsbin and USAP became the owners of any such work made for hire, and that when USAP acquired Partsbin, it also acquired the work Thomason did on Manager while employed at Partsbin. Parts Geek and Thomason argue that USAP waived its argument that it owned ThomasonâÄôs modifications to Man8 The current dispute is largely the result of the partiesâÄô failures to express or document clearly the precise terms of their relevant understandings. U.S. AUTO PARTS NETWORK v. PARTS GEEK 10413 ager by failing to raise it to the district court. But USAP sufficiently raised this argument in its supplemental brief in opposition to summary judgment following ThomasonâÄôs deposition, which the district court permitted the parties to file. In that brief, USAP argued that Thomason âÄúmade changes, modifications, and enhancements to the Manager softwareâÄĚ while employed by Partsbin, and later, by USAP, and as a result, âÄúall of the work that Thomason did on the Manager software as an employee belongs to his employers.âÄĚ This argument was âÄúraised sufficiently for the trial court to rule on itâÄĚ and was therefore not waived. OâÄôRourke v. Seaboard Sur. Co. (In re E.R. Fegert, Inc.), 887 F.2d 955, 957 (9th Cir. 1989). B This conclusion leads to the next question, whether any of ThomasonâÄôs work on Manager while employed by Partsbin and USAP was copyrightable under the rules applicable to derivative works.9 To answer this question, a fact finder must determine (1) whether Partsbin and USAP lawfully derived the enhancements to Manager 2000 that led to the subsequent versions of the software, and (2) whether any of these enhancements were âÄúmore than trivialâÄĚ such that they did not affect the scope of the copyright in Manager. EntmâÄôt Research Grp., 122 F.3d at 1220; Durham, 630 F.2d at 909; Â§ 103(b).  First, Thomason and Parts Geek argue that ThomasonâÄôs enhancements to Manager 2000 are not copyrightable derivative works because they were made through an unlawful use of Manager 2000, the preexisting work. Specifically, 9 USAP argues that the later versions of Manager produced by Thomason while at Partsbin and USAP are not derivative works, but are in fact entirely new works owned by Partsbin, and now USAP. Because the district court denied USAPâÄôs request to introduce evidence on this point, the record is undeveloped on the issue. Therefore, for purposes of this appeal, we assume without deciding that Thomason created derivative works based on Manager 2000 while he was at Partsbin and USAP. 10414 U.S. AUTO PARTS NETWORK v. PARTS GEEK Parts Geek asserts that Partsbin infringed ThomasonâÄôs exclusive right to create and authorize the creation of derivative works based on Manager 2000. Â§ 106(2). We disagree. A reasonable jury could infer that Thomason provided Partsbin and USAP with an implied non-exclusive license to prepare derivative works from his software. See Effects Assocs., 908 F.2d at 558; see also Asset Mktg. Servs. v. Gagnon, 542 F.3d 748, 755-57 (9th Cir. 2008). While employed by both Partsbin and USAP, Thomason willingly modified and enhanced Manager 2000 and later versions of the software in response to his employerâÄôs requests. Thus, a genuine issue of material fact exists as to whether ThomasonâÄôs conduct created an implied license to Partsbin, USAP, or both, to use Manager 2000 (or other versions of Manager for which Thomason potentially retained copyright ownership) in developing the subsequent versions of Manager.  Second, although the record is relatively undeveloped on this issue, a reasonable jury could infer that Thomason added at least one original and non-trivial feature to Manager 2000 while working at Partsbin: Auto Vend, ManagerâÄôs distributor selection system that Thomason created in âÄú2003 to early 2004.âÄĚ The record shows that Auto Vend was integral to how Manager facilitated drop shipping because it allowed Partsbin to satisfy its customersâÄô orders from the appropriate parts suppliers. Given that a Partsbin founder described the companyâÄôs switch to using drop shipping as a âÄúmaterial breakthrough,âÄĚ it is reasonable to infer that Thomason needed to develop entirely new source code for the software feature facilitating this âÄúbreakthrough.âÄĚ See EntmâÄôt Research Grp., 122 F.3d at 1220; see also Feist, 499 U.S. at 345 (âÄúTo be sure, the requisite level of creativity is extremely low; even a slight amount will suffice.âÄĚ).  Moreover, a jury could reasonably conclude that the copyright to the Auto Vend feature is âÄúindependent of, and does not affect or enlarge the scopeâÄĚ of ThomasonâÄôs preexisting copyright in Manager 2000. Â§ 103(b). The record shows U.S. AUTO PARTS NETWORK v. PARTS GEEK 10415 that Partsbin used Manager 2000 for two or three years before Auto Vend was added, which provides evidence that Auto Vend added an independent functionality to the preexisting Manager 2000. Thus, it is reasonable to infer that Thomason would be free to copy and license Manager 2000 (without Auto Vend) to others, and that such licensees would not have to be concerned about vulnerability to suit from Partsbin for infringement of the Auto Vend feature. Cf. EntmâÄôt Research Grp., 122 F.3d at 1220; Durham, 630 F.2d at 909. Because PartsbinâÄôs ownership of the copyright to Auto Vend would not circumscribe ThomasonâÄôs right to copy or license Manager 2000, a jury could reasonably conclude that Auto Vend was a copyrightable element of ThomasonâÄôs work made for hire. See EntmâÄôt Research Grp., 122 F.3d at 1220.  Accordingly, a jury could reasonably conclude that Partsbin owned the copyright to Auto Vend because it was a non-trivial, original feature contributed to a lawfully used preexisting work, Manager 2000, as a work made for hire. A jury could also conclude that USAP acquired this copyright when it acquired PartsbinâÄôs âÄúIntellectual Property,âÄĚ including âÄútitle and interest in [PartsbinâÄôs] software programs,âÄĚ in 2006. IV  Although our analysis of USAPâÄôs claims required a long trip through a previously unexplored intersection of the Copyright ActâÄôs work for hire and derivative work provisions, our conclusion is straightforward: there is a genuine issue of material fact as to whether USAP owns the copyright to all or any part of Manager. Based on our review of the law and the record, and drawing all inferences in favor of USAP, a jury could reasonably determine that even though Thomason owned the copyright to Manager 2000, (1) Thomason granted Partsbin and USAP implied, non-exclusive licenses to create derivative work from that software, (2) ThomasonâÄôs modifications to that software while employed by Partsbin and USAP were made within the scope of his employment, (3) at least 10416 U.S. AUTO PARTS NETWORK v. PARTS GEEK one of those modifications made while employed by Partsbin, Auto Vend, was independently copyrightable as a work made for hire, and (4) such copyright was transferred to USAP in 2006 as part of its acquisition of Partsbin. Therefore, the district court erred in granting summary judgment on the ground that USAP could not show any such ownership interest as a matter of law. We reverse the district courtâÄôs grant of summary judgment to Parts Geek on USAPâÄôs copyright infringement claim on this basis. Because the district court granted summary judgment on this misunderstanding of USAPâÄôs ability to own a copyright to features of Manager, it did not reach the question whether ThomasonâÄôs creation and Parts GeekâÄôs use of Admin infringed USAPâÄôs copyright in the portions of Manager to which USAP holds the copyright. On remand, the parties may develop the record regarding this issue of infringement as well as the threshold issues of copyright ownership, such as the scope of ThomasonâÄôs work for hire while employed at Partsbin (including any agreements he may have had with Partsbin regarding his modifications to Manager 2000), the scope of ThomasonâÄôs work for hire while employed at USAP, and the relationship between Manager 2000 and the post-2000 versions of Manager.10 The district court should examine these issues in the first instance in light of this decision. REVERSED in part, VACATED in part, AND REMANDED. 10 USAPâÄôs appeal of the district courtâÄôs denial of its motion for continuance of summary judgment pending further discovery is dismissed as moot. See Noyes v. Kelly Servs., 488 F.3d 1163, 1174 (9th Cir. 2007). We also vacate the district courtâÄôs entry of attorneysâÄô fees as to USAPâÄôs copyright infringement claim. See United States v. 4,432 Mastercases of Cigarettes, More or Less, 448 F.3d 1168, 1194 (9th Cir. 2006).