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January 25, 1995

JOAN T. NAPOLI, Plaintiff,
SEARS, ROEBUCK AND CO., a corporation, and KEANE, INC., a corporation, Defendants. SEARS, ROEBUCK AND CO., a corporation, Counter-Plaintiff, v. JOAN T. NAPOLI and THE OBJECT GROUP, INC., a corporation, Counter-Defendants.

The opinion of the court was delivered by: ROBERT W. GETTLEMAN

 Plaintiff Joan T. Napoli ("Napoli") brings this action against Sears, Roebuck and Co. ("Sears") and Keane, Inc., for copyright infringement, misappropriation of trade secrets, breach of contract, and conversion. Jurisdiction is based upon the federal question of the copyright infringement count, 28 U.S.C. § 1331, and supplemental jurisdiction of the state law counts, 28 U.S.C. § 1367. Currently before the Court is Napoli's renewed motion for partial summary judgment and Sears' cross-motion for partial summary judgment on the issue of the validity of Napoli's copyright.


 Napoli claims that she is the sole author of a computer software program (the "System") designed to improve the quality and efficiency of services offered by the Home Fashion Department at Sears. On May 3, 1993, Napoli moved for partial summary judgment, seeking to establish her sole ownership of a valid and enforceable copyright for the System. Sears defended the motion by arguing, inter alia, that it was legally a joint owner of the copyright. Judge Aspen, to whom this case was previously assigned, denied the motion for summary judgment on October 5, 1993. Napoli moved for reconsideration, which Judge Aspen also denied.

 Napoli then brought a renewed motion for reconsideration based upon a recent decision of the Seventh Circuit, Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994). Judge Williams, to whom the case had been reassigned, granted the motion in part, based upon the new law, and vacated Judge Aspen's opinions denying plaintiff's motion for partial summary judgment. Plaintiff was granted leave to file a renewed motion for partial summary judgment, and the parties were directed to file additional briefs on matters left unaddressed by Judge Aspen's opinions. Napoli filed her renewed motion and, as a result, Sears filed a cross-motion. The case was then assigned to the undersigned. Both motions are fully briefed and ready for disposition. The only issue raised is whether Napoli is the sole author of the System, entitling her to summary judgment as to the validity of her copyright, or whether under Erickson, Sears is legally considered a joint author.

 Standard of Review

 Fed. R. Civ. P. 56(c) provides that summary judgment shall be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." This standard places the initial burden on the movant to identify those portions of the record on file which it believes demonstrates the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). Once movant has met this initial burden, the non-moving party must set forth specific facts showing that there is a genuine issue for trial. Fed. R. Civ. P. 56(c). The Court must read all facts in the light most favorable to the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). After applying these standards to the facts of this case, the Court denies both motions.


 In 1989, Sears decided to develop a computer program designed to improve the quality and efficiency of the services offered by the Home Fashions Department at Sears. For the next year, various Sears employees, led by Melody Villafana, the National Inventory and Systems Manager of Furniture of the Home Fashions Department, worked on the "Sears System." They planned the overall structure of the Sears System, provided the layout and graphic design of the screens and reports to be generated, selected all of the data that was to be included, and designed the layout and presentation of that data. Finally, Villafana developed and introduced new terms necessary for the computerization of Sears' business process.

 Because the Sears employees had limited experience working in the DataEase software that had been selected for the Sears System, Villafana contracted with Norrell Services, an outside company, to help complete the programming in August 1990. Norrell originally sent Richard Francis to assist Sears, but he left Norrell in November 1990. Norrell then sent Napoli, who was a Norrell employee. She worked with Villafana at Sears until March of 1991, when she was fired from Norrell and left Sears. At that time, the Sears System was still incomplete, and all work on it had apparently ceased.

 In July 1991 Napoli contacted Sears and offered to complete the Sears System. Napoli and Sears then entered into an agreement whereby Napoli would complete the Sears System and provide a limited warranty period. In return, Sears agreed to pay Napoli $ 10,000. Napoli began work on completing the existing system, but claims that in October 1991, she concluded that the Sears System, as it had been developed, suffered from a fundamental design flaw. She informed Villafana of this fact, and told her that she (Napoli) was considering entirely redesigning the internal structure of the system. Villafana told her not to do so, and informed her that Sears would be under no obligation to her if she did. Nevertheless Sears claims to have continued to provide extensive assistance to Napoli, allegedly giving her mock-ups of visual screens and sample reports produced by the uncompleted system. Villafana and Napoli remained in frequent contact.


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