Microprocessor Associates, Inc., and who additionally serves as General Counsel to Symantec, another third-party defendant herein. These persons are undoubtedly knowledgeable in the computer field and profess a "familiarity with the practices of software companies," Declaration of Derek Witte, dated December 19, 1995, however, they do not succeed in rebutting the need for the source code, on which EKD's experts have opined.
Ironically, the affidavit of Mr. Hersh, the software developer of pcAnywhere III and IV, crystalizes the disability under which EKD is laboring without access to the code. Mr. Hersh's declaration opines on the very issues of functionality and similarity which are critical to the prosecution and defense of claims relating to copyrightability and breach of contract. This affidavit crystalizes the substantial disadvantage that will continue to work under in this litigation, if it is unable to adequately investigate and counter Dynamics' claims through its own experts.
The areas of dispute herein are ones where the court clearly recognizes the value of assistance by experts. Computer Associates Intern., Inc. v. Altai, Inc., 775 F. Supp. 544, 549 (E.D.N.Y.) (Pratt, J.),
aff'd in part and vacated and remanded in part, 982 F.2d 693 (2d Cir. 1992). Indeed, the use of experts is virtually essential to the trier of the facts in examining and evaluating the structural parts of a computer program, Computer Associates, supra, 982 F.2d at 714-15, of which the source code is a fundamental component.
Plaintiff's counsel has acknowledged in its moving papers (see opposing declaration of Kathryn J. Fritz, Esq. dated December 21, 1995 at para. 26) that the dispositive motions to be filed before Judge Block will not be limited to judgment on the pleadings, but instead, will also seek relief in the form of summary judgment pursuant to Rule 56, Fed. R. Civ. P.
The defendants are entitled to any relevant non-privileged evidence, Rule 26(b)(1), Fed. R. Civ. P., to defend against plaintiff's causes related to copyright infringement and to substantiate their asserted affirmative defense that the programs involved here are functional and, therefore, not copyrightable. See e.g., Lotus Development Corp. v. Borland International Inc., 49 F.3d 807 (1st Cir. 1995), aff'd 116 S. Ct. 804 (Mem.) 64 U.S.L.W. (decided January 16, 1996, affirming, without opinion, by an equally divided court).
Similarly, the source code is relevant and non-privileged evidence with respect to EKD's counterclaim and third-party complaint seeking an accounting for profits and declaratory judgment relating to pcAnywhere IV which defendants allege is substantially similar to pcAnywhere III for which it held a valid licensing agreement.
EKD's reliance on Bell Atlantic Business Systems Services, Inc. v. Hitachi Data Systems Corp., 1995 U.S. Dist. LEXIS 265 decided January 13, 1995 (S.D.N.Y.) (Knapp, J.) is misplaced. The defendant there, Hitachi Data Systems Corp. ("Hitachi") asserted a counterclaim that the plaintiff, Bell Atlantic Business Systems Services, Inc. ("Bell") infringed the copyright on Hitachi's INLINE microprogram. A defense to this counterclaim, asserted by Bell, was the claim that Hitachi's program had been illegally obtained from International Business Machines Corp. ("IBM") and accordingly Hitachi's copyright claim lacks the essential element of originality which is a prerequisite for copyright infringement. Ibid. In an effort to establish its claim Bell moved to compel the production of the source code from IBM, pursuant to a third party subpoena issued under Rule 45 Fed. R. Civ. P. Although the district court was clearly concerned with protecting the highly sensitive nature of the information sought, Bell's motion to compel was denied not for that reason, but because Bell had failed to show that Hitachi ever had access to the program. Accordingly, the district court concluded that Bell had failed to establish that the documents were relevant to the litigation. For the reasons stated above, EKD has clearly established the relevance of the source codes to the issues herein.
The source code constitutes a trade secret, see, Softel Inc. v. Dragon Medical & Scientific Communications, Ltd., 891 F. Supp. 935 (S.D.N.Y. 1995); Control Data Systems, Inc. v. Infoware, Inc., 903 F. Supp. 1316 (D. Minn. 1995). As such, the source codes are clearly subject to the terms and conditions of a protective order issued pursuant to Rule 26(c), Fed. R. Civ. P. See e.g., Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992).
The conditions under which discovery may take place and the protective conditions imposed depend on the facts of the particular case.
Ray v. Allied Chemical Corp., 34 F.R.D. 456, 457 (S.D.N.Y.) (Weinfeld, J.); Microwave Research Corp. V. Sanders, Associates, 110 F.R.D. 669, 672 (D. Mass. 1986) (Collings, M.J.).
Accordingly, pursuant to Rule 26(c), the court directs the plaintiff to produce the source codes for pcAnywhere III and IV subject to the following conditions:
1. The source codes shall be produced pursuant to the terms and conditions set forth in the protective order, on consent, dated June 22, 1993 (Wexler, J.) (Annexed as Exhibit 1 to defendants' moving papers).
2. Pursuant to the terms of the order Dynamic shall be afforded an opportunity to review the background of EKD's expert and to make an objection and obtain a ruling from the court pursuant to section 2(d) and 3 of the Consent Order.