## Facts

- Sidwell Company, Inc. created and sold real-estate and tax maps, including the official tax maps used by Cook County, Illinois.
- In 1957 and 1959, Cook County contracted with Sidwell to prepare sets of tax maps (including a major county-wide mapping project and later updates).
- Sidwell provided sample maps during the contracting process that displayed a copyright notice naming Sidwell as the copyright holder.
- The written contracts and bid specifications did not expressly address copyright ownership; Sidwell contended there was an oral understanding that it would retain copyright.
- After the mapping work began, Sidwell registered copyrights in its own name and continued to place copyright notices on the maps it distributed and updated.
- Real Estate Data, Inc. (REDI), a competitor that supplied real-estate information and related products, obtained and sold copies of the Cook County tax maps.
- Sidwell sued REDI for copyright infringement, and REDI disputed Sidwell’s ownership/validity of the claimed copyrights.
- Following prior appellate proceedings that required further factual findings, the district court issued this decision on remand addressing whether Sidwell had a valid copyright interest that could support an infringement claim.

## Issues

1. Whether Cook County, as the party that commissioned the official tax maps under contracts that were silent on copyright, owned the copyrights rather than Sidwell.
2. Whether Sidwell could establish copyright ownership through incorporation of sample maps bearing Sidwell’s notice, an alleged oral agreement, or the parties’ later conduct (including Sidwell’s registrations and the County’s inaction).
3. If Sidwell lacked ownership, whether Sidwell’s infringement claims against REDI necessarily failed.

## Decision

- The district court held that Cook County owned the copyright interest in the official Cook County tax maps and had not transferred that interest to Sidwell.
- The court rejected Sidwell’s arguments that sample-map copyright notices, an alleged oral understanding, or later conduct showed a valid transfer or confirmation of copyright ownership in Sidwell.
- Because Sidwell did not own the copyrights it asserted, the court entered judgment for REDI on Sidwell’s infringement claims.

## Legal Principles

- Copyright ownership in commissioned works can turn on the parties’ agreement and the commissioning relationship; silence in the written contract may support a finding that the commissioning party retained rights absent a clear contrary agreement.
- A contractor’s unilateral placement of a copyright notice on samples or delivered work does not, by itself, establish that the contractor owns the copyright against the commissioning party.
- Under the governing law for these works (created and first published under the 1909 Act framework), a transfer of copyright ownership generally required a written assignment; alleged oral understandings and later course-of-dealing evidence may be insufficient to prove an ownership transfer.
- A government entity’s failure to object to a contractor’s later copyright registrations and notices does not necessarily amount to ratification or an implied transfer of the government’s copyright interest.

## Conclusion

The district court concluded that Cook County retained the copyright in its official tax maps because the written agreements did not transfer copyright to Sidwell and the surrounding circumstances did not establish a valid written assignment, ratification, or other basis for Sidwell’s claimed ownership; accordingly, Sidwell could not maintain an infringement action against REDI based on those maps.


Sidwell Co., Inc. v. Real Estate Data, Inc., 1987 WL 7831 (1987)