Full opinion text
ORDER JAMES E. GRITZNER, District Judge. This matter is before the Court on Defendants/Counter Claimants/Third-Party Plaintiffs Walter & Associates, L.L.C., and Marvin Walter’s Motion for Partial Summary Judgment, and Plaintiffs/Counter Defendants and Third-Party Defendant’s Motion for Partial Summary Judgment. Hearing was held on both motions on August 24, 2007. Defendants/Counter Claimants/ Third-Party Plaintiffs were represented by attorney Randall Armentrout. Plaintiffs/Counter Defendants and Third-Party Defendant were represented by attorney Bryan Hayes. The matter is now fully submitted for review. RELEVANT PARTIES AND ENTITIES Plaintiffs Dr. Gene Rouse (Rouse) and Dr. Doyle Wilson (Wilson) were employed by Iowa State University of Science and Technology (ISU). Rouse was employed by ISU between 1971 and June 30, 2004. Rouse was a Professor of Animal Science between 1984 and 2004. Wilson was employed by ISU between 1980 and October 1, 2001. Wilson was an assistant, associate, or full Professor of Animal Science between 1982 and 2001. Third-Party Defendant Dr. Viren Amin is an Associate Scientist with the ISU Department of Animal Science. Biotron-ics, Inc., is an Iowa corporation that was formed in 1998 by Wilson, Rouse, Amin, and Craig Hayes. Defendant Walter & Associates, L.L.C., markets and provides agricultural consulting services through the United States, Canada, and Latin America. Defendant Marvin J. Walter is President and Chairman of Walter & Associates, L.L.C., and was a member of the board of directors of the Iowa State University Research Foundation (ISURF) prior to the formation of Walter & Associates. ISURF is a not-for-profit corporation that is a separate entity from ISU. ISURF owns and licenses ISU’s intellectual property. The Office of Intellectual Property and Technology Transfer (OIPTT) at ISU is charged with serving ISU as the vehicle for marketing and licensing intellectual property owned by ISÜRF. Dr. Kenneth Kirkland is the Executive Director of ISURF and the Director of OIPTT. Nita Lovejoy is the Associate Director of ISURF and OIPTT. SUMMARY OF MATERIAL FACTS Plaintiffs Rouse and Wilson, as research professors at ISU, began a large research project in the late 1980’s, researching the ability to use an ultrasound machine to scan cattle in order to determine the quality of the beef on live cattle before the cattle are slaughtered. Rouse and Wilson applied for multiple grants from various entities, including the United States Department of Agriculture, the American Angus Association, and the Beef Industry Council, among others, to fund their research efforts. Rouse and Wilson raised $1.6-million in outside grant funding to support their efforts to explore and research the application of real-time ultrasound technology to predict compositional traits in live beef cattle., The primary portable scanning device in use at the time the research was being conducted was known as the Aloka. Rouse and Wilson’s research was directed generally to the development of ultrasound technology to measure the compositional traits in beef cattle, and the Aloka was the primary scanning device used in one component of this research. Rouse and Wilson’s research resulted in the development of live animal intramuscular fat prediction software (LAIPS). LAIPS was used to predict the degree of intramuscular fat shown on the cattle scans in the lab and contains algorithms that analyze data and provide comprehensive information in terms of the percentage of intramuscular fat. LAIPS takes a scanned image as an input and makes a computation using the algorithms. The initial LAIPS algorithms were designed to work with the Aloka ultrasound device. Because the LAIPS program arose from the sponsored research, Rouse and Wilson assigned the copyright to the software to ISURF in February of 1995. LAIPS was given ISURF Reference No. 1480. ISU began to license the LAIPS program to third parties in approximately May of 1995. Rouse, Wilson, and Amin, who had assisted Rouse and Wilson during the development of LAIPS, received royalties from ISURF’s licensing of the LAIPS software until 2001. LAIPS requires the use of another software program, a “front-end” interface program, to serve as a user interface and a means to display the images. Rouse, Wilson, and Amin used “PV-WAVE” and “SAS” software programs in conjunction with the LAIPS software. PV-WAVE was used in conjunction with the MF prediction model in the LAIPS software in order to conduct the research. The PV-WAVE was relatively slow compared to other software programs like Rib-O-Matic, which was a front-end program that could be used with LAIPS. Using a small part of the $1.6-million in grant money, the ISU Department of Animal Science purchased new computers that had increased processor speed and used Microsoft Windows © as an operating system. Rouse and Wilson wanted to develop a Windows © compatible front-end program that could process large numbers of images and asked Amin to develop a front-end program that would allow the LAIPS program to run on the new, faster, Windows ©-based computers. Amin drafted USOFT in response to this request. In May 1995, while still developing the USOFT program, Amin contacted Evergreen Technologies, Inc., in order to obtain a license for Evergreen’s VisionTools software. Amin wanted to use VisionTools in creating USOFT. Amin obtained a license for VisionTools from Evergreen. Pursuant to this license agreement, ISU was granted a nonexclusive, nontransferable license to copy the VisionTools software for the sole purpose of incorporating the software into ISU’s programs. The license also permitted the distribution of the software within the departments of the University on a noncommercial basis. The license agreement specifically stated the software “may not be distributed commercially to any person or organization” and further stated that ISU may not use, reproduce, sub-license, distribute, or dispose of the software, in whole or in part, other than as permitted under the license agreement. Amin signed the license agreement as an employee of ISU. USOFT, developed in 1996, is described as a “front-end” software program for use with the Aloka 500 and Classic 200 intramuscular fat prediction models. USOFT, when used in combination with an intramuscular fat prediction model such as LAIPS, allows for the analysis of real-time ultrasound images collected on live beef cattle to estimate beef carcass composition traits. The USOFT program requires access to the VisionTools libraries in order to be able to return and display meaningful data on a computer screen; thus, Vision-Tools, while not embedded in the USOFT program, is a necessary component of USOFT. Amin testified during his deposition that USOFT was created to support the research they were doing into intramuscular fat and some of the other traits they were researching. Rouse testified during his deposition that Amin alone was the one who wrote the software code but that Rouse and Wilson were involved in calculating and preparing certain algorithms used in the USOFT program. Rouse and Wilson also directed and planned the type of information that would be beneficial to an individual using the software and how to display the information on the screen. Amin programmed the USOFT menu pages with “© Iowa State University” on each screen of the program, resulting in the following being displayed at the top of each screen: “U-SOFT for Beef Quality Grading (vl.5d 9/17/98) © Iowa State University” A print-screen depicting a screen displayed by the USOFT software shows the software also displays the following message to users: “This software is developed at Iowa State University (U.S.A.) and copyrighted by the ISU Research Foundation, Inc.” Amin testified that he wrote this message into the software. USOFT was never assigned to ISURF in written form, and an express written agreement regarding the ownership of the USOFT copyright does not exist between Plaintiffs and Amin and ISU. In approximately 1996 or 1997, after USOFT was developed, Amin, Wilson, and Rouse co-authored a research paper entitled “USOFT: an Ultrasound Image Analysis Software for Beef Quality Research” that was published in ISU Beef Research Report. The first page of this research paper says, in part: Iowa State University has developed technology for objective evaluation of beef quality by predicting the percentage of intramuscular fat (IMFAT) from ultrasound scans of live animals as well as carcasses. The technology for live animal evaluation has been licensed to a commercial company for field use (A.S. Leaflet R1326, 1996 Beef Research Report). For further research, development and evaluation of this technology, a personal-computer based software has been developed, which is copyrighted by the ISU Research Foundation, Inc. The software, USOFT, is an image analysis software designed and developed specifically for processing ultrasound images collected for beef quality grading research. USOFT analyzes images acquired using a real-time ultrasound scanner ... the prediction models used in USOFT are also developed by Iowa State University and are copyrighted by the ISU Research Foundation, Inc. In July of 1996, pursuant to a Material Transfer and Limited Use License Agreement, ISURF licensed LAIPS and USOFT to the Animal Genetics and Breeding United at the University of New England in Armidale, Australia. The Material Transfer Agreement identified the research materials as “Ultrasound Software for Beef Quality Research (U-Soft)/ISURF 01480” and stated the research materials identified were the property of ISURF. Wilson signed this Material .Transfer Agreement in July of 1996. In October of 1997, Rouse, Wilson, and Amin executed a “gold sheet” research proposal for “Centralized Processing of Real Time Ultrasound Images Research Project.” A “gold sheet” is an ISU document that ISU researchers must fill out when they are receiving research funding from external sources, such as private companies, the" government, or other groups. On this “gold sheet”, the researchers must describe the research, state the source of the research funding, and must also make a statement that they will disclose any intellectual property that results from their research to ISURF. The funding for the proposed project involved grants from the AAA to ISU in the amount of $200,000 over a two-year period from January 1, 1998, through December 31, 1999. Under the terms of the proposal, Wilson, Rouse, and Amin agreed to develop a centralized ultrasound processing (CUP) laboratory and to develop the structure that would allow for transitioning of the CUP lab to the private sector. As part of the proposal, ISU agreed to make available approximately $63,000 in University resources annually, including faculty, secretarial staff, facilities, and equipment. A “gold sheet” was signed by Rouse and Wilson to ISURF for the Centralized Processing of Real Time Ultrasound Images Research Project. Via this “gold sheet”, Rouse and Wilson agreed to assign the rights to any intellectual property arising from the sponsored research to ISURF. ISU ran the AAA and ISU-sponsored CUP lab from January 1998 through December 1999 in the basement of ISU’s Kildee Hall. As part of the two-year research project, the ISU Department of Animal Science developed an intramuscular fat prediction model for the Classic ultrasound scanner. USOFT, which was being used in the CUP lab, was updated by Amin during the time it was in use, but there is no evidence these updates constituted anything more than updates occurring in the normal life of a research software tool. LAIPS was also being used in the CUP lab. ISURF repeatedly requested disclosures from Rouse and Wilson of newly developed software, but Kirkland testified they were not forthcoming, and he felt that by not responding, he and the ISURF staff were being given the runaround by Rouse and Wilson. Specifically, ISURF had been trying to obtain any updates to LAIPS, as ISURF had licensing agreements with third parties for the use of LAIPS, and pursuant to these licensing agreements, the third parties were entitled to receive copies of any updates to the software. Kirkland testified USOFT was never disclosed to ISURF, and it was his opinion that USOFT should have been disclosed pursuant to ISU policies because it was their belief that University resources had been used to develop the software. Kirkland testified USOFT should have been disclosed to ISURF as soon as the code had been written. Lovejoy testified that ISURF staff expected USOFT would be disclosed to ISURF, but it never was, despite requests from ISURF for a disclosure. Lovejoy believes USOFT belonged to ISU. After the AAA-ISU sponsored project ended, the CUP lab continued to operate in the basement of Kildee Hall throughout the year of 2000. Due to the volume of scans the CUP lab was processing, in 2000 ISU became concerned their CUP lab would be competing with private industry, so the decision was made to transition the CUP lab from ISU to the private sector. Defendant Marvin Walter was approached to take the CUP lab into the private sector. ISURF, the entity responsible for handling the licensing of intellectual property for ISU, became involved in the negotiation of a licensing agreement to Walter & Associates. ISURF asked Wilson for a list of all of the hardware and software that would be needed to transition the CUP lab to Marvin Walter, and Wilson drafted such a list. USOFT was on the list among various other software programs, and Amin was listed as the contact person for USOFT. Lovejoy states she discussed with Amin the USOFT software and that Amin informed her USOFT was “free - to anyone who wants it.” Lovejoy contemporaneously made a notation of such on a copy of- the list of software Wilson had drafted (Pis.’ App. 150). Love-joy, on behalf of ISURF, represented to Marvin Walter that the licensing agreement would include software that had everything needed to operate the CUP lab in the private setting. The licensing agreement was signed in early 2001. The Software License Agreement (SLA) specifically defined the term “software” as used in the SLA as follows: “Software” shall mean the computer program in machine readable object code and source code identified as, Live Animal Intramuscular Percentage Fat Prediction Software (LAIPS) which is docketed as ISURF 01480 and developed at Iowa State University and any subsequent error corrections or updates supplied to LICENSEE by ISURF pursuant to this Agreement. A package of software, which included the USOFT program, was delivered to Walter & Associates, and Walter & Associates began using the software and operating for profit in the private sector doing the same ultrasound scanning of cattle that had been done at ISU. The parties do not dispute that when Walter & Associates was formed, it leased several personal computers from Iowa State University’s Department of Animal Science in order to get the CUP laboratory up and running; these computers contained copies of the USOFT and VisionTools software programs on their hard drives. This distribution of the VisionTools software to Walter & Associates constituted a breach of the specific terms of the license agreement ISU had entered into with Evergreen Technologies. Walter & Associates used USOFT to interpret both Aloka and Classic scans in 2001-2002. Walter & Associates licensed different software to be used with a new version of the Aloka scanner, thus Walter & Associates did not use USOFT as an interface for LAIPS on the Aloka scans after December 21, 2002. Walter & Associates continued to used USOFT as the interface program for LAIPS in processing the Classic scans from 2001 to the end of 2006. In 2002, Rouse, Wilson, and Amin, through their company, Biotronics, decided to éstablish a commercial business and compete in the ultrasound market. Bio-tronics would thus be directly competing with Walter & Associates. Biotronics does not use USOFT in the course of its ultrasound business. In January 2005, Rouse and Wilson drafted a letter to Kirkland, asserting for the first time that they, along with Amin, were the exclusive owners of USOFT. On April 14, 2005, counsel for Rouse and Wilson sent a letter to Kirkland requesting that he sign a form admitting that Rouse, Wilson, and Amin, and not ISURF, were the owners of USOFT. Kirkland refused to sign the document and testified he did not sign the form because he did not believe Rouse, Wilson, and Amin owned USOFT due to the existence of third-party software in USOFT. On May 6, 2005, Kirkland sent a letter to counsel for Rouse and Wilson that stated, “In response to the above memo, I acknowledge that the Iowa State University Research Foundation, Inc. does not own the copyright to the USOFT software.” On approximately May 6, 2005, Lovejoy spoke with Amin, who indicated he would speak to Rouse and Wilson about their opinion on placing USOFT in the public domain. Amin was concerned about liability related to the third-party software, Vi-sionTools, and wanted some assurances ISU would protect him from any liability related to any misuse of VisionTools. On May 11, 2005, Rouse, Wilson, and Amin signed an Agreement Between Joint Owners that stated they are the joint owners of all right, title, and interest in the copyright to the USOFT software program. On June 8, 2005, Wilson, Rouse, and Amin filed a Certificate of Registration with the United States Copyright Office for the USOFT program. The copyright was registered on June 9, 2005. At some time during 2005, prior to the filing of the present suit, Rouse and Wilson sent a cease and desist letter to Walter, claiming USOFT was independently owned by them. Walter & Associates refused to discontinue their use of the USOFT program. PROCEDURAL HISTORY On August 1, 2005, Plaintiffs (Rouse and Wilson) filed a Complaint against Walter & Associates alleging a single claim of copyright infringement based on Walter & Associates’ use of the USOFT software. On August 31, 2005, Walter & Associates filed an Answer and included counterclaims against Rouse, Wilson, and Biotronics for declaratory judgment, tortious interference with contract, tortious interference with prospective business relationship, and slander per se. On January 30, 2006, Plaintiffs filed a First Amended Complaint, adding Marvin Walter as a defendant. On February 20, 2006, Defendants (Walter & Associates and Walter) filed an Answer to the First Amended Complaint and again asserted the same counterclaims against Rouse, Wilson, and Biotronics. On September 20, 2006, Defendants filed a Motion for Leave to Amend Answer and File Third-Party Complaint, which Plaintiffs resisted. Hearing was held on the matter on October 4, 2006, and Magistrate Judge Celeste Bremer determined that Defendants had established good cause to allow the Amended Answer to be filed. The Amended Answer was filed on October 9, 2006, and added Amin as a necessary party to the declaratory judgment claim; added a claim of negligent misrepresentation against Rouse and Wilson; added ISURF as a third-party defendant based on claims of fraud, negligent misrepresentation, breach of contract, and indemnity; and conformed its counterclaim to the information Defendants had subsequently learned during the course of discovery. On November 9, 2006, Defendants filed an Unresisted Motion for Leave to File Second Amended Answer seeking to amend its answer to clarify its answer to paragraph 20 of the First Amended Complaint and to remove the affirmative defense that the copyright at issue has been assigned. The motion was granted on November 20, 2006, and the Second Amended Answer was filed on December 11, 2006. Rouse and Wilson were deposed on February 5 and 6, 2007. It was during these depositions that Defendants learned Rouse and Wilson had provided ISURF with a list of software programs that could be used to operate a CUP lab. At some time after these depositions took place, Defendants learned that on January 2, 2001, Nita Lovejoy of ISURF had contacted Amin regarding obtaining USOFT for use in Walter & Associates’ CUP lab. Lovejoy states in her February 9, 2007, affidavit that Amin represented to her that USOFT was “free to anyone who wants it.” On February 9, 2007, Defendants/Third-Party Plaintiffs Walter & Associates and Marvin Walter and Third-Party Defendant ISURF filed a Joint Motion for Dismissal With Prejudice, pursuant to a settlement agreement these parties had entered. The Court granted the Joint Motion for Dismissal with Prejudice on February 12, 2007, and Third-Party Defendant ISURF was dismissed from the case with prejudice. On March 23, 2007, Defendants filed a Motion to Dismiss and for Leave to File Third Amended Answer arguing that their recent discovery that Amin was the person who represented USOFT was in the public domain necessitated amendments to their Answer to the First Amended Complaint. Specifically, Defendants requested leave to do the following: amend the answer to paragraph 20 of Plaintiffs’ First Amended Complaint to account for recent changes in Walter & Associates’ use of USOFT; add as an affirmative defense that the USOFT copyright owner assigned the USOFT copyright to Walter & Associates; add to the Third-Party Complaint a claim of negligent misrepresentation against Amin; dismiss Biotronics as a party; and dismiss the counterclaims of tortious interference with contract, tortious interference with prospective business relationship, and slander per se against Rouse and Wilson. On May 9, 2007, the counterclaims of tor-tious interference with contract, tortious interference with prospective business relationship, and slander per se against Gene Rouse and Doyle Wilson were dismissed with prejudice. The claim against Third-Party Defendant Biotronics, Inc., was also dismissed with prejudice. Defendants’ Motion For Leave to Amend was granted, and the Third Amended Answer to Plaintiffs’ First Amended Complaint was filed on May 22, 2007. In the Third Amended Answer to Plaintiffs’ First Amended Complaint, Defendants denied the allegations contained in Plaintiffs’ First Amended Complaint and set forth counter claims seeking a declaratory judgment that Walter & Associates has not infringed any copyright of Rouse, Wilson, or Amin, and asserting a counterclaim of negligent misrepresentation against Rouse and Wilson. Defendants also set forth a Third-Party Complaint against Amin, seeking a declaratory judgment and including a claim of negligent misrepresentation. On May 1, 2007, Defendants filed a Motion for Partial Summary Judgment contending that Rouse and Wilson’s claims for copyright infringement must be dismissed because Rouse and Wilson cannot establish as a matter of law that USOFT is an expression of their creation, rather than merely their idea, which is not subject to copyright protection, and that USOFT was created by Amin, Rouse, and Wilson within the scope of their employment at ISU and thus is owned by ISU as work made for hire. Rouse, Wilson, and Amin have resisted this Motion for Partial Summary Judgment. On May 8, 2007, Rouse, Wilson, and Amin filed a Motion for Partial Summary Judgment asserting Defendants’ claims of negligent misrepresentation against them must be dismissed because as a matter of law they did not and do not owe Defendants a duty of care, a necessary element in any claim for negligent misrepresentation. Defendants have resisted this Motion for Partial Summary Judgment, contending a duty of care did exist. APPLICABLE LAW AND DISCUSSION Motion for Summary Judgment Standard of Review “[CJlaims lacking merit may be dealt with through summary judgment under Rule 56.” Swierkiewicz v. Sorema, 534 U.S. 506, 514, 122 S.Ct. 992, 152 L.Ed.2d 1 (2002). Summary judgment is a drastic remedy, and the Eighth Circuit has recognized that it “must be exercised with extreme care to prevent taking genuine issues of fact away from juries.” Wallace v. DTG Operations, Inc., 442 F.3d 1112, 1118 (8th Cir.2006) (quotation omitted). However, “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 a judgment as a matter of law,” judgment should be rendered. Fed. R.Civ.P. 56(c). See also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); P & O Nedlloyd, Ltd. v. Sanderson Farms, Inc., 462 F.3d 1015, 1018 (8th Cir.2006). The party moving for summary judgment bears the initial burden of “informing the district court of the basis for its motion and identifying those portions of the record which show a lack of a genuine issue.” Heisler v. Metro. Council, 339 F.3d 622, 631 (8th Cir.2003) (quoting Celotex, 477 U.S. at 323, 106 S.Ct. 2548). “If the moving party has carried its burden, the non-moving party must demonstrate the existence of specific facts in the record that create a genuine issue for trial.” Winthrop Resources Corp. v. Eaton Hydraulics, Inc., 361 F.3d 465, 468 (8th Cir.2004). The court gives the nonmoving party the benefit of all reasonable inferences and views the facts in the light most favorable to that party. Liberty Mut. Fire Ins. Co. v. Scott, 486 F.3d 418, 422 (8th Cir.2007); de Llano v. Berglund, 282 F.3d 1031, 1034 (8th Cir.2002). “Summary judgment is proper if, after viewing the evidence and drawing all reasonable inferences in the light most favorable to the nonmovant, no genuine issues of material fact exist and the movant is entitled to judgment as a matter of law.” Hayek v. City of St. Paul, 488 F.3d 1049, 1054 (8th Cir.2007) (citing Pope v. ESA Servs., Inc., 406 F.3d 1001, 1006 (8th Cir.2005)). Summary judgment should not be granted if the court can conclude that a reasonable trier of fact could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Turner v. Gonzales, 421 F.3d 688, 694 (8th Cir.2005) (“If a reasonable jury could return a verdict for the non-moving party based on the evidence presented, summary judgment is inappropriate.”). In light of these standards, the Court considers the present motion. DEFENDANTS/COUNTER CLAIMANTS/THIRD-PARTY PLAINTIFFS WALTER & ASSOCIATES, L.L.C., AND MARVIN WALTER’S MOTION FOR PARTIAL SUMMARY JUDGMENT Defendants argue that Rouse and Wilson’s claims for copyright infringement against Walter & Associates and Walter must be dismissed because (1) Rouse and Wilson cannot establish as a matter of law that USOFT is an expression of their ere-ation, rather than merely their idea, which is not subject to copyright protection; (2) USOFT was created by Amin, Rouse, and Wilson within the scope of their employment at ISU and thus is owned by ISU as work made for hire; (3) USOFT is a method of operating other software and thus is not entitled to copyright protection; (4) Rouse and Wilson’s delay in asserting their claim of ownership precludes an award of damages based on laches; (5) they are barred from recovering damages for any alleged infringement occurring pri- or to August 1, 2002, by virtue of the statute of limitations contained within 17 U.S.C. § 507(b); (6) Rouse, Wilson, and Amin are estopped from obtaining relief under the Copyright Act; and (7) they. have abandoned their alleged ownership right for the copyright for USOFT. I. OWNERSHIP OF A VALID COPYRIGHT UNDER THE COPYRIGHT ACT. In order to establish a copyright infringement claim, a plaintiff is required to establish (1) ownership of a valid copyright, and (2) copying of original elements. Rottlund Co. v. Pinnacle Corp., 452 F.3d 726, 731 (8th Cir.2006). There is no dispute that copying of USOFT took place. Defendants argue Rouse and Wilson do not have standing to sue for infringement because they lack ownership, as they did not create USOFT and it has not been assigned to them, ISU owns USOFT as a work made for hire, and there is no written agreement from ISU granting ownership in Rouse, Wilson, or Amin. A. Standing to Sue For Infringement. Only “[t]he legal or beneficial owner of an exclusive right under a copyright is entitled ... to institute an action for any infringement of that particular right committed while he or she is the owner of it.” 17 U.S.C. § 501(b). “As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.” Cmty. For Creative Non-Violence v. Reid, 490 U.S. 730, 737, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989). “A ‘joint work’ is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 101. There is no requirement that “the several authors must necessarily work in physical propinquity, or in concert, nor that the respective contributions made by each joint author must be equal either in quantity or quality.” Nimmer on Copyright § 6.03, at 7. Each author’s contribution, however, must be more than de minimis. Id. § 6.07[A][1], at 21. Baker v. Robert I. Lappin Charitable Found., 415 F.Supp.2d 473, 487 (S.D.N.Y.2006). Defendants contend it is undisputed that Rouse and Wilson did not write any part of USOFT and that Amin wrote all of the code to USOFT, and therefore they do not have standing to sue for infringement. Defendants contend that simply having the “idea” for the software or explaining the process to another is insufficient to establish a copyrightable ownership interest because the Copyright Act does not protect “facts or ideas” but instead protects the expression of those ideas, arguing that while computer software can obtain copyright protection, this protection extends only to the “literal” elements of the software, such as its source code, and may extend to “nonliteral” elements such as its structure, sequence, organization, user interface, screen displays, and menu structures. Defendants contend that because no part of Rouse or Wilson’s contribution to USOFT constitutes the actual expression of the software, they lack standing under the Act to assert ownership. Defendants contend Rouse and Wilson attempted to manufacture standing for themselves by signing a document dated May 11, 2005, and entitled “Agreement Between Joint Owners” with Amin, the actual creator of USOFT. Defendants argue the Agreement is not a valid assignment of ownership of intellectual property in the software because Rouse and Wilson admit they gave Amin no consideration for the Agreement, and the Agreement would not confer a copyrightable interest from Amin to Rouse and Wilson because Amin created USOFT within the scope of his employment with ISU; thus USOFT is owned by ISU as work made for hire. Rouse and Wilson contend the argument regarding the May 11, 2005, Agreement Between Joint Owners is irrelevant and this agreement was not concluded because of any concerns over standing to sue or transfer of ownership. Instead, Rouse and Wilson contend the evidence demonstrates that they wanted to confirm their rights in an agreement in order to prevent independent action because Amin had been pressured by ISURF to place USOFT in the public domain. Rouse and Wilson assert that because they, along with Amin, have always been joint owners to the copyright in the USOFT program, the May 11, 2005, Agreement did not alter or assign any amount of ownership. Rouse testified he did not do anything with regard to the drafting of the USOFT software and that Amin wrote the actual lines of code for USOFT. Wilson also testified that he did not have anything to do with the actual writing of the code for USOFT and that Amin wrote the lines of code for USOFT. Wilson testified he did not believe he could have personally applied for registration of the USOFT copyright without entering into a joint owner agreement with Amin and that neither he nor Rouse gave Amin any consideration for this joint owner agreement. Rouse and Wilson dispute they were not joint creators of USOFT. Wilson testified he oversaw the development of USOFT by indicating the type of information that would be useful to an individual using the software, how to display information on the screen, and that he worked with Amin in the development of USOFT. Rouse testified he believed he had some ownership interest in USOFT because Amin was working at the direction of Rouse and Wilson, and they instructed Amin and gave him the idea to write USOFT. Rouse testified his involvement was mainly putting together a flow chart on how the program needed to function and what it needed to say or do, and that he helped develop underlying algorithms or mathematics that would be used to calculate the formulas in predicting intramuscular fat. It is not entirely clear whether Rouse was referring to LAIPS or USOFT when giving this testimony; however, as the nonmoving party, Plaintiffs are entitled to all favorable inferences. Rouse testified that with respect to USOFT, he oversaw the development of the software and indicated the type of information that would be useful to an individual using the software and how to display the information on the screen. Amin testified that Rouse and Wilson helped define the algorithms he would implement in the source code for USOFT and that while he did the final typing of the source code, the algorithm task needed the specialty of Rouse and Wilson. Amin stated in his declaration that Rouse and Wilson worked closely with him in calculating and preparing certain algorithms used in the USOFT program, which he then inputted directly into the source code, stating that he was not an expert in those areas of ultrasound technology. Amin stated Rouse and Wilson also assisted him in designing and planning the type of information that would be useful to an individual using the software, how to display information on the screen, and that in sum they worked with him throughout the development of USOFT. Copyright law only protects expression, and not ideas or facts. Schoolhouse, Inc. v. Anderson, 275 F.3d 726, 728 (8th Cir.2002). It is settled that computer programs are entitled to copyright protection. This protection extends not only to the “literal” elements of computer software — the source code and object code — but also to a program’s nonliteral elements, including its structure, sequence, organization, user interface, screen displays, and menu structures. Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 142 (5th Cir.2004). “Whether a particular component of a program is protected by a copyright depends on whether it qualifies as an ‘expression’ of an idea, rather than the idea itself.” Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir.1989) (citing Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985); Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 207-08 (9th Cir.1988); 17 U.S.C. § 102(b)). Source and object code, the literal components of a program, are consistently held protected by a copyright on the program. See, e.g., CMS Software Design Sys., Inc. v. Info Designs, Inc., 785 F.2d 1246, 1249 (5th Cir.1986) (source code); Apple Computer, Inc. v. Formula Intern., Inc., 725 F.2d 521, 525 (9th Cir.1984) (object code). Whether the nonli-teral components of a program, including the structure, sequence and organization and user interface, are protected depends on whether, on the particular facts of each case, the component in question qualifies as an expression of an idea, or an idea itself. Id. The testimony of Wilson, Rouse, and Amin indicates the development of USOFT was a collaborative process, with Wilson and Rouse directing Amin, who was doing the actual drafting and typing of the software program. Considering the facts in the light most favorable to Rouse and Wilson, the Court cannot decide as a matter of law that Plaintiffs did not co-author some protectable interest in the USOFT program with Amin. However, under the circumstances of this ease, a finding that Rouse and Wilson co-authored the work with Amin does not end the inquiry regarding standing because the analysis continues into the “work for hire” doctrine, as that doctrine ultimately determines the “author” of a work for purposes of the Copyright Act. B. Work Made for Hire. “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 [co-owners] of copyright in the work.” 17 U.S.C. § 201(a). “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.” 17 U.S.C. § 201(b) (emphasis added). Defendants assert that ISU owns the copyright to USOFT as work made for hire. Rouse, Wilson, and Amin contend the work-for-hire doctrine does not apply in this case because Rouse, Wilson, and Amin expressly agreed otherwise in a written instrument. Plaintiffs contend that at the commencement of their employment with ISU, they signed a “letter of intent” with the University that expressly incorporated into the letter of intent the ISU Faculty Handbook, and that this Faculty Handbook contains a policy that vests ownership rights in the authors unless assigned to ISURF. Plaintiffs further contend that even if the work-for-hire doctrine could apply in this case, the required elements are not met, and disputed issues of material fact exist that preclude summary judgment on the issue of work for hire. The Court must therefore examine whether USOFT was “work for hire” and if so whether an express written agreement regarding the ownership of its copyright exists. In analyzing whether a creation constitutes work made for hire, the Court examines three factors. As expressed in Section 228 of the Restatement, the key principle is that a servant’s conduct is within the scope of employment “only if: (a) it is of the kind he 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 master.” Avtec Sys., Inc. v. Peiffer, 21 F.3d 568, 571 (4th Cir.1994). The Court will address each of these three factors in turn. 1. Was the work of the kind Amin, Rouse and Wilson were employed to perform? Defendants assert that as ISU tenured faculty, Rouse and Wilson were expected to and did in fact engage in research activities. Rouse and Wilson argue that the creation of USOFT was not the kind of work they were expected to perform. ■ Rouse testified that he and Wilson devoted approximately fifteen years of their ISU careers working on the research project relating to the prediction of intramuscular fat in live cattle, bringing in over $1.6-million in sponsored research funding to support such work. Rouse’s curriculum vitae shows that since as early as 1995 he has published numerous scholarly articles pertaining to real-time ultrasound image processing in relation to predicting intramuscular fat in beef cattle. Wilson’s curriculum vitae similarly shows he has published numerous articles during his tenure with ISU regarding the ultrasound imaging of intramuscular fat of beef cattle. Wilson testified that there were two major research projects he worked on when he worked for ISU. One research project centered on helping the Department of Animal Science develop a breeding project, with the focus of that research being to develop two genetically diverse lines of beef cattle. Wilson testified the technology used in that research was based upon ultrasound technology. Complementary to that research was the development of ultrasound technology to measure compositional traits in beef cattle. Rouse testified that at some point they determined they had to write some front-end software for LAIPS if they were going to process large numbers of images, and this front-end software is what is now known as USOFT. The record shows that using a small portion of the $1.6-million in research funding, new Windows ©-based computers were purchased for use in the research project, and thus a need arose for Windows © compatible front-end software that would allow the researchers to process larger numbers of images at a faster pace on these new computers. Rouse testified he instructed Amin to put the USOFT software together on a Windows ©-based platform. Rouse testified the code itself would speed up the process and the fact that it ran on a computer with a faster processor would speed up the process. Rouse testified USOFT was a front-end program that would help them interpret the LAIPS program quicker but that it was not used directly to predict intramuscular fat; LAIPS performed that function. Rouse testified that when a large number of images are brought in and interpreted with LAIPS, USOFT helps bring those images in and line them up so an individual can generate the actual percent of intramuscular fat faster. Wilson testified Amin developed USOFT to assist and support Wilson and Rouse in their research at ISU and to speed up their research process. Amin testified he began working with the Department of Animal Science after he graduated in 1992, working on beef ultrasound, and that he was still working in the Department of Animal Science when he was developing USOFT. Amin testified that he did research, developed algorithms to analyze the images, assisted in developing a procedure to derive information out of the images, assisted in scanning the images and, wrote source codes. Amin also assisted in making improvements to the LAIPS software program, and he developed a program to interpret images from the Classic scanner. Although Amin stated in his May 24, 2007, declaration that his position was “as a scientist, not a programmer,” this more recent declaration contradicts not only Amin’s own deposition testimony that in performing work for the Department of Animal Science he had programmed software, but also his own curriculum vitae, in which he included, under the header “Primary areas of interest and expertise,” “computer based system and software development for bio-medical and agricultural imaging applications,” and under the header “Other Professional Activities,” “Developed USOFT and related software products for animal ultrasound researchers.” Given these facts, there exists no genuine issue of material fact that the development of USOFT was within the scope of duties Amin was hired to perform. Amin testified USOFT was developed to support the research they were doing into intramuscular fat and some of the other compositional traits, such as how to measure the depth and area of the fat. Amin testified USOFT allowed them to do their research at ISU in a particular way. Rouse and Wilson argue that although part of Amin’s salary was paid by grant funding, this salary was paid for his work as a scientist, not as a computer programmer. Courts have found that although not hired to program software, where the development of software occurred within the scope of the employee’s employment it can be deemed work of the kind the employee was hired to perform. See Genzmer v. Public Health Trust of Miami-Dade County, 219 F.Supp.2d 1275, 1280-81 (S.D.Fla.2002) (employee was required to undertake a research assignment that encompassed “a myriad of activities” and the evidence showed that at times such research included the drafting of computer programs); Miller v. CP Chemicals, Inc., 808 F.Supp. 1238, 1243 (D.S.C.1992) (although employee not hired primarily to develop software, the development of computer programs was at least incidental to his job responsibilities because he was responsible for the organizing and updating the laboratory). An Iowa State University Proposal Data Form signed by Rouse, Wilson, and Amin on October 9, 1997, shows the three proposed a project entitled “Centralized Processing of Real Time Ultrasound Images Research Project.” The project was approved by the University. There is overwhelming testimony in the record from Wilson, Rouse, and Amin that Wilson and Rouse directed Amin to develop a front-end program, USOFT, in order to provide them with a faster interface for the LAIPS software. This faster interface for LAIPS would certainly assist Rouse and Wilson in continuing their ultrasound research project' at ISU and allow them to run the ultrasound processing laboratory more efficiently based on the ability to process the images more quickly. Further, ISURF licensed USOFT, along with LAIPS, to a third party, evidence that USOFT was important to the process of ultrasound imaging and clearly integral to the work and an obvious part of the research task. The Court concludes Plaintiffs have failed to generate a genuine issue of material fact regarding whether directing Amin to develop USOFT, and assisting him in that development, was the type of work Rouse and Wilson were employed to perform. Plaintiffs have also failed to generate a genuine issue of material fact on the issue of whether drafting USOFT at the directive of the professors and creating the software with their assistance was of the type of work Amin was expected to perform at ISU. 2. Did the work of Amin, Rouse, and Wilson occur substantially within authorized time and space limits? Rouse, Wilson, and Amin contend the development of USOFT did not occur substantially within authorized space and time limits, asserting Amin used his own personal computer at home for the “vast” majority of programming the USOFT program. An employee cannot establish copyright ownership rights solely on the basis that the work was done at home on off-hours. Avtec Sys., Inc., 21 F.3d at 571. Neither case law nor the legislative history suggests that a person can avoid the “work made for hire” doctrine merely by preparing the work during nonworking hours or in a facility not controlled by the employer. The mere fact that preparations were done outside an employee’s office or normal working hours does not remove such preparations from the scope of employment. Marshall v. Miles Labs., Inc., 647 F.Supp. 1326, 1330 (N.D.Ind.1986); see also In re Simplified Info. Sys., Inc., 89 B.R. 538, 542 (W.D.Pa.1988) (citing Marshall, 647 F.Supp. at 1330) (“[T]he ‘work made for hire’ doctrine is not avoidable merely by performing the work in a separate location, or on non-work time.”); Vanderhurst v. Colorado Mountain Coll. Dist., 16 F.Supp.2d 1297, 1307 (D.Colo.1998) (concluding that even though the outline was prepared on the employee’s own time and using his own materials, it was clearly connected directly with the work for which he was hired to perform, and therefore it was work for hire and did not belong to the employee). Rouse and Wilson contend that James Bloedel, ISU’s Vice Provost for Research & Advanced Studies, sent Marvin Walter an email on September 5, 2002, that stated, “We cannot find any usable direct evidence that the product in question was developed with on-eampus facilities or that the University’s farm animals were used in the testing.” (Pis.’ Res.App. 176). However, the record indicates Bloedel was not referring to USOFT in making this statement; he was referring to new software created by Biotronics, the subject of an August 28, 2002, email inquiry from Lovejoy that had prompted Bloedel’s response to Walter. Amin has admitted he used on-eampus computers both to develop and test the USOFT program. Amin testified it was normal for him to perform his work both at ISU and at home, and when working on developing USOFT, he worked both at ISU and at home. Amin further testified that when he was working on USOFT at ISU, he would be working on ISU computers. Wilson also testified that some of the actual writing of the USOFT code was done with the computers at ISU. Amin testified that while he was working on the research project for Wilson and Rouse, he was a salaried employee of ISU. He further testified the testing of USOFT must have occurred at ISU’s Department of Animal Science because he did not keep a copy of the LAIPS program at his home, and LAIPS would have been necessary in testing how USOFT functioned. The facts of this case are strikingly similar to those of Genzmer v. Public Health Trust of Miami-Dade County. In that case, Genzmer contended he wrote the software at issue at his home, using his home computer, during off-duty hours. Genzmer, 219 F.Supp.2d at 1281-1282. In finding Genzmer’s work occurred substantially within the authorized time and space limits, the court noted Genzmer was a salaried employee involved in a research project and stated what mattered was that he performed the work on the software during the time period in which he had been employed to complete the research program. Id. at 1282. The court also found it was important that Genzmer tested the computer program using the employer’s resources. Id. The USOFT program was developed and tested on ISU computers, and because USOFT utilized the VisionTools software, pursuant to the VisionTools Noncommercial Run-Time Software Distribution Agreement between Evergreen Technologies and ISU, the VisionTools software could not be distributed to any computer system other than ISU’s computer system. Indeed, both Rouse and Wilson testified USOFT was not operational unless it had VisionTools attached to it, and USOFT required the VisionTools libraries to operate. The source code for USOFT is kept at the Department of Animal Science. In arguing the creation of USOFT did not occur substantially within authorized time and space limits, Plaintiffs argue ISURF has a specific disclosure form for (1) inventions arising in the employees’ work, (2) research that has “used significant university resources”, or (3) research that has a commercial application, and that no such disclosure form was submitted to ISURF for the USOFT program. It is undisputed that no disclosure form regarding USOFT was ever given to ISURF. Section 3.1(2) of ISU’s Personnel Policy states, “Faculty members have the responsibility of disclosing intellectual property in a timely fashion when it arises in their work.” Defs.’ App. 63. The lack of a disclosure form simply means Plaintiffs, the individuals who would have been responsible for completing such a disclosure form, never gave such a form to ISURF. Plaintiffs may not rely on their own failure to complete the requisite disclosure form as evidence that USOFT was not the type of invention subject to a disclosure form under ISU policies, and the lack of the requisite disclosure form does not generate a genuine issue of material fact. Rouse, Wilson, and Amin make the same argument regarding the absence of a “gold sheet” that specifically pertained to USOFT. This argument is without merit because, again, Rouse, Wilson, and Amin would have been the ones responsible for generating a gold sheet; thus, contrary to the assertions of Plaintiffs, the fact that one does not exist that specifically indicates “USOFT” as the funded research project does not generate a fact issue that USOFT was not created substantially within the authorized time and space limits of the job. The USOFT program was developed and tested on ISU computers. Rouse and Wilson testified they would direct Amin in the development of USOFT, and they wrote specific algorithms for inclusion into the USOFT program. Rouse and Wilson were paid faculty members during the time USOFT was being developed, and they were leading the research project for which USOFT would be utilized as an interface with LAIPS, the integral software program involved in the ultrasound imaging of the intramuscular composition of the beef cattle. Amin admits that while he sometimes worked on USOFT at his home, using his home computer, during off-duty hours, he also used ISU computers to develop, write, and test the USOFT code. Amin was a salaried employee involved in a research project, and he developed USOFT during the time period in which he had been employed to complete the research program. There exists no genuine issue regarding whether the development of USOFT occurred substantially within authorized time and space limits. 3. Were Amin, Rouse, and Wilson actuated at least in part by a purpose to serve the master? Plaintiffs contend the evidence indicates they were self-motivated to create the USOFT program and that further ultrasound research did not require the development of new interface software. Indeed, the record shows that further ultrasound research did not require the development of a new interface; however, faster ultrasound research did necessitate that a new Windows ©-based interface be developed. “[T]he Restatement does not require that the servant’s only motivation be to help his or her employer; the motivation need only be partial.” Genzmer, 219 F.Supp.2d at 1282; see also City of Newark v. Beasley, 883 F.Supp. 3, 9 (D.N.J.1995) (employer only required to prove that employee was at least “appreciably” motivated by a desire to further the goals of his employer). Conduct may be considered within the scope of employment even when done in part to serve the purposes of the employee, or a third party. Restatement (Second) of Agency § 236 (1958). Rouse testified that he and Wilson spent approximately fifteen years of their careers at ISU on the development of software to predict intramuscular fat on live cattle. Wilson similarly testified that the majority of their research was in this area. The record also reveals that in 1997, Rouse, Wilson, and Amin co-authored a published article in ISU’s Beef Research Reports publication entitled “USOFT: An Ultrasound Image Analysis Software for Beef Quality Research.” The article states as follows, in pertinent part: Iowa State University has developed technology for objective evaluation of beef quality by predicting the percentage of intramuscular fat (IMFAT) from ultrasound scans of live animals as well as carcasses. The technology for live animal evaluation has been licensed to a commercial company for field use (A.S. Leaflet R1326, 1996 Beef Research Report). For further research, development and evaluation of this technology, a personal-computer based software has been developed, which is copyrighted by the ISU Research Foundation, Inc. The software, USOFT, is an image analysis software designed and developed specifically for processing ultrasound images collected for beef quality grading research. USOFT analyzes images acquired using a real-time ultrasound scanner ... the prediction models used in USOFT are also developed by Iowa State University and are copyrighted by the ISU Research Foundation, Inc. Defs.’ App. 365. Plaintiffs argue the article’s reference to the software copyrighted by ISURF was with respect to LAIPS, but the plain language of the article speaks for itself. The article evidences USOFT was part of the research that was being conducted for ISU. As previously discussed, Rouse and Wilson testified they directed Amin to develop USOFT because they wanted a front-end program to use on the Windows ©-based computers that would allow for a faster interface to process larger numbers of images. USOFT permitted them to conduct the intramuscular fat research in a particular way and allowed them to speed up the processing of large numbers of images, which certainly assisted in their research at the centralized ultrasound processing laboratory. Further, the evidence clearly shows that Amin inserted into USOFT code lines which state, “U-SOFT for Beef Quality Grading (vl.5d 9/17/98) © Iowa State University.” Defs.’ App. 371-381. Amin further included in the USOFT program a screen that specifically states, “This software is developed at Iowa State University (U.S.A.) and copyrighted by the ISU Research Foundation, Inc. No part of this software should be copied in any form without written permission of the copyright holder.” Defs.’ App. 373. Amin admits he wrote that into the program. Plaintiffs argue these copyright statements were included in USOFT to protect the proprietary LAIPS software, but this argument runs contrary to Plaintiffs’ own assertion that USOFT and LAIPS were separate and distinct and that USOFT was capable of functioning with any program that has the appropriate MF prediction models. While the statements regarding an ISU copyright were technically inaccurate at that time, the references strongly demonstrate the understanding of the parties prior to any advocacy in the context of later claims and litigation. The record shows there is no genuine issue regarding whether Rouse, Wilson, and Amin were motivated at least in material part by a desire to further the research of the ISU Department of Animal Science by creating a front-end software program that would allow the CUP lab to process larger numbers of images at a faster pace, increasing the functionality of LAIPS on a larger scale. Rouse and Wilson were employed as faculty members of ISU and dedicated fifteen years to the development of ultrasound imaging of intramuscular fat on live beef cattle. Part of this research included such activities as developing algorithms for software and creating software programs to assist in the imaging and processing of the images. Indeed, it is undisputed that Rouse and Wilson created the LAIPS software as part of this research, and it is disputed that Rouse and Wilson directed Amin to develop USOFT for use with LAIPS on the Windows ©-based ISU computers. While Amin testified that some of the time he worked on USOFT at home, using his home computer, such information is not dispositive on the issue. Amin admitted he also worked on USOFT using ISU computers; in fact, he had to use ISU resources to test USOFT because Amin did not have a copy of LAIPS on his home computer to run in order to demonstrate how USOFT would interact with LAIPS. USOFT was developed to assist the LAIPS software in processing on ISU’s faster, Windows © -based computers, and the use of LAIPS was integral to the ultrasound imaging of the intramuscular fat research. Plaintiffs have failed to generate a genuine issue of material fact regarding whether USOFT was work made for hire. C. Is There a Written Document Establishing Amin, Rouse, and Wilson as Owners of USOFT? Where work is deemed “work made for hire”, under the Copyright Act such work automatically vests with the employer unless an express, written agreement between the employer and employee exists. 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. 17 U.S.C. § 201(b) (emphasis added). Rouse and Wilson assert they do have such a written instrument, arguing that at the time they began their employment, they signed a letter of intent with ISU. Rouse and Wilson contend this letter of intent expressly incorporated the ISU Faculty Handbook policy, stating, “I understand that this agreement is in accordance with the policies contained in the Iowa State University Faculty Handbook and I accept the position described above.” Specifically, Plaintiffs contend that Sections 8.3.6.3 and 8.3.6.5 constitute the written agreement that exempts them from the work-for-hire doctrine. The Faculty Handbook states, “The Faculty Handbook is the official statement of Iowa State University policy governing the rights, responsibilities, and performance of faculty.” Section 8.3.6.5 of the Faculty Handbook is entitled “Policies.” This section states as follows: 8.3.G.3. Policies Iowa S