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Justices rule on Web IP issue

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In a suit between a company and the marketing firm that created and hosted its Web site, the Indiana Supreme Court determined the Uniform Commercial Code doesn't apply and the marketing firm may collect for its work under principles of common law contract. The high court also held copyright law supports ownership by the designer in a counter-claim alleging conversion of the intellectual product.

The high court affirmed the judgment in favor of Gray Loon Outdoor Marketing Group, Inc. in its suit against Piece of America for non-payment of Web design and hosting fees and against Piece of America in its counter-claim for conversion.

POA hired Gray Loon to design and publish its Web site; Gray Loon completed the project in December 2003 and was paid in full by POA. Later, POA verbally requested changes be made to its Web site without requesting a proposal or quote. Once Gray Loon made the requested changes, POA said it didn't want to implement the changes. Gray Loon tried to recover the fees to make the changes, but POA didn't pay the invoice or the monthly hosting fee. After several months, Gray Loon took the Web site offline.

In Dennis Conwell and Frank Splittorff d/b/a Piece of America v. Gray Loon, No. 82S04-0806-CV-309, the high court had to determine which law applies in interpreting the agreement between the parties; whether the applicable law recognizes a contract here and whether POA should be required to pay Gray Loon; and whether Gray Loon committed conversion by taking down the Web site and not making a copy of the original site for POA.

Using the conventional "predominant thrust" doctrine to decide whether a transaction involves the transfer of goods or performance of services, the Supreme Court ruled the Uniform Commercial Code didn't apply because the arrangement between POA and Gray Loon contemplated a custom design for a single customer and an ongoing hosting relationship, wrote Chief Justice Randall T. Shepard. A Web site created under arrangements calling for the designer to fashion, program, and host its operation on the designer's server is neither tangible nor movable in the conventional sense.

Examining Gray Loon's claim for payment under common law principles, the trial court was correct to enforce the agreement even though Gray Loon hadn't provided a cost estimate for the Web site changes. The original contract didn't explicitly call for changes in writing. In addition, POA asked for changes and didn't ask how much it would cost and there's no evidence Gray Loon tried to force POA into paying an unreasonable fee, wrote the chief justice.

The justices determined Gray Loon was an independent contractor rather than POA's employee, so the Web site wasn't a "work made for hire" under the Copyright Act of 1976, which would have given POA ownership of the site. The Supreme Court also ruled the language in Gray Loon's proposal indicating the company's philosophy that clients purchase goods and services from Gray Loon and "that inherently means ownership of those goods and services" doesn't carry the weight and certainty required by the Copyright Act. In addition, POA had a nonexclusive license, which doesn't constitute transfer of ownership rights. Since POA never had ownership of the Web site, it can't bring a claim for conversion, wrote Chief Justice Shepard.

Justice Theodore Boehm concurred in result with a separate opinion, agreeing with the majority's analysis and conclusions on the record in the case, but he wrote separately to explain why he agrees POA isn't entitled to relief for "what amounts to a destruction of the website it had paid Gray Loon to construct." Because the first version of the Web site was paid in full, POA therefore acquired an irrevocable license for the Web site which Gray Loon dishonored when it performed its updates, wrote Justice Boehm. Gray Loon should have preserved the original version of the Web site and POA retained its right to access those files under its nonexclusive license, he wrote.

"Whether POA had any damages from Gray Loon's breach is a matter of speculation on this record. POA elected to pursue only a conversion theory, presumably in hopes of treble damages and attorney fees in this dispute over an amount that surely is dwarfed by the cost of this litigation," he wrote. "Similarly, when Gray Loon sued for its fees, POA did not assert breach of its license as either an affirmative defense or set-off."

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  1. YES I WENT THROUGH THIS BEFORE IN A DIFFERENT SITUATION WITH MY YOUNGEST SON PEOPLE NEED TO LEAVE US ALONE WITH DCS IF WE ARE NOT HURTING OR NEGLECT OUR CHILDREN WHY ARE THEY EVEN CALLED OUT AND THE PEOPLE MAKING FALSE REPORTS NEED TO GO TO JAIL AND HAVE A CLASS D FELONY ON THERE RECORD TO SEE HOW IT FEELS. I WENT THREW ALOT WHEN HE WAS TAKEN WHAT ELSE DOES THESE SCHOOL WANT ME TO SERVE 25 YEARS TO LIFE ON LIES THERE TELLING OR EVEN LE SAME THING LIED TO THE COUNTY PROSECUTOR JUST SO I WOULD GET ARRESTED AND GET TIME HE THOUGHT AND IT TURNED OUT I DID WHAT I HAD TO DO NOT PROUD OF WHAT HAPPEN AND SHOULD KNOW ABOUT SEEKING MEDICAL ATTENTION FOR MY CHILD I AM DISABLED AND SICK OF GETTING TREATED BADLY HOW WOULD THEY LIKE IT IF I CALLED APS ON THEM FOR A CHANGE THEN THEY CAN COME AND ARREST THEM RIGHT OUT OF THE SCHOOL. NOW WE ARE HOMELESS AND THE CHILDREN ARE STAYING WITH A RELATIVE AND GUARDIAN AND THE SCHOOL WON'T LET THEM GO TO SCHOOL THERE BUT WANT THEM TO GO TO SCHOOL WHERE BULLYING IS ALLOWED REAL SMART THINKING ON A SCHOOL STAFF.

  2. Family court judges never fail to surprise me with their irrational thinking. First of all any man who abuses his wife is not fit to be a parent. A man who can't control his anger should not be allowed around his child unsupervised period. Just because he's never been convicted of abusing his child doesn't mean he won't and maybe he hasn't but a man that has such poor judgement and control is not fit to parent without oversight - only a moron would think otherwise. Secondly, why should the mother have to pay? He's the one who made the poor decisions to abuse and he should be the one to pay the price - monetarily and otherwise. Yes it's sad that the little girl may be deprived of her father, but really what kind of father is he - the one that abuses her mother the one that can't even step up and do what's necessary on his own instead the abused mother is to pay for him???? What is this Judge thinking? Another example of how this world rewards bad behavior and punishes those who do right. Way to go Judge - NOT.

  3. Right on. Legalize it. We can take billions away from the drug cartels and help reduce violence in central America and more unwanted illegal immigration all in one fell swoop. cut taxes on the savings from needless incarcerations. On and stop eroding our fourth amendment freedom or whatever's left of it.

  4. "...a switch from crop production to hog production "does not constitute a significant change."??? REALLY?!?! Any judge that cannot see a significant difference between a plant and an animal needs to find another line of work.

  5. Why do so many lawyers get away with lying in court, Jamie Yoak?

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