## Facts

- David Miller, Sr. worked for CP Chemicals, Inc. and became supervisor of its quality-control laboratory.
- To perform his job more efficiently, Miller wrote customized computer programs that automated calculations and laboratory record-keeping used in CP’s operations.
- Miller created much of the software on his own time using his personal home computer.
- Miller did not request or receive additional compensation specifically for writing the programs.
- Miller’s supervisors knew about the software and encouraged him to continue developing it for laboratory needs.
- There was no written agreement addressing ownership, licensing, or compensation for the programs.
- After Miller was terminated following a drug-related arrest, CP continued using the programs.
- Miller demanded return of the programs or payment of a license fee; CP refused.
- Miller sued for copyright infringement and state-law claims; by summary judgment, only a breach of contract claim remained among the state claims.

## Issues

1. Whether a plaintiff may maintain a federal copyright infringement action without registering the copyrighted works.
2. Whether the software constituted a “work made for hire” created within the scope of employment, making the employer the copyright owner absent a signed written agreement to the contrary.
3. Whether the state-law breach of contract claim was preempted because it sought to enforce rights equivalent to copyright.
4. Whether the breach of contract claim could succeed without an express agreement allocating ownership or requiring additional compensation.

## Decision

- The court granted CP’s motion for summary judgment on all remaining claims.
- The copyright infringement claim was dismissed because the programs were not registered.
- Alternatively, the court held the programs were works made for hire owned by CP, defeating Miller’s infringement theory on ownership grounds.
- The breach of contract claim was held preempted by the Copyright Act.
- Even if not preempted, the breach of contract claim failed for lack of an express agreement granting Miller ownership or requiring CP to pay for continued use.

## Legal Principles

- Registration is a statutory prerequisite to bringing a copyright infringement action.
- For works made for hire created within the scope of employment, the employer is deemed the author and owns the copyright unless the parties expressly agree otherwise in a written instrument signed by them.
- Work performed on an employee’s own time and equipment may still fall within the scope of employment when created to carry out job responsibilities and used in the employer’s business.
- State-law claims are preempted under 17 U.S.C. § 301 when they seek to vindicate rights equivalent to copyright and lack an “extra element” that changes the claim’s nature.
- A contract claim seeking to control use of a copyrighted work or obtain compensation for that use is subject to preemption absent a distinct contractual promise independent of copyright rights.

## Conclusion

The court entered summary judgment for CP because Miller’s unregistered programs could not support an infringement suit, the software was owned by CP as work made for hire absent a signed written agreement to the contrary, and the remaining contract theory both duplicated copyright rights (triggering preemption) and lacked any express contractual basis for Miller’s claimed ownership or compensation.


Miller v. CP Chemicals, Inc., 808 F. Supp. 1238 (D.S.C. 1992)