The opinion of the court was delivered by: BOYLE
By order dated November 9, 1995 discovery was certified as complete, however, the defendants, EKD Computer Sales & Supplies Corp. ("EKD") and Thomas Green ("Green") were granted permission to proceed by formal motion to compel production of the source code relating to pcAnywhere, a software program that is the subject of this action.
1. BACKGROUND AND PLEADINGS
The computer software programs pcAnywhere III and pcAnywhere IV are the subject matter of this act on brought in June 1992 by the plaintiff, Dynamic Microprocessor Associates, Inc. ("Dynamic") based on claims (among others) of copyright infringement, violation of the Lanham Act, and breach of a licensing agreement. Dynamic seeks a permanent injunction and damages based on EKD's alleged unauthorized manufacture and sale of Dynamic's software program, pcAnywhere III. The district court (Wexler, J.) issued a preliminary injunction barring EKD from manufacturing and selling pcAnywhere III pending the trial of this action.
In the Third Amended Answer the defendants, EKD and Green, in addition to denying the essential allegations of the complaint, among other defenses, assert that the licensing agreement provided EKD with the exclusive right to manufacture and sublease pcAnywhere III (Third Affirmative Defense) and that Dynamic wrongfully terminated the agreement by falsely claiming that EKD was in default of its royalty obligations. As a Ninth Affirmative Defense, EKD and Green maintain that the alleged copyright is based on a "wholly functional computer program in which there are no copyrightable elements" and that the alleged copyright is void. Third Amended Answer paras. 22 to 24, annexed to defendants' moving papers at Exhibit 13 p. 10.
As a counterclaim and Third-party complaint EKD requests an accounting of profits and declaratory judgment (28 U.S.C. § 2201) relating to sales of pcAnywhere III and IV, EKD alleges that it had a wrongfully terminated licensing agreement for pcAnywhere III which is "substantially the same program (with a "minor upgrade") as pcAnywhere IV and therefore within the purview of the licensing agreement which existed between the parties. Seventh Amended Claim, paras. 72-79, pp. 27 and 28, annexed to EKD's moving papers at Ex. 13.
2. EKD'S REQUESTS FOR PRODUCTION OF THE SOURCE CODES
EKD has made repeated requests during this litigation for production of the source codes for pcAnywhere III and IV, going back to March 10, 1993. EKD has continually opposed production.
A protective order was entered, on consent, on June 22, 1993 (Wexler, J.). Pursuant to that agreement the parties have produced a substantial volume of documents. The sole remaining issue is production of the source code
which plaintiff vehemently opposes on the ground of its high degree of confidentiality.
EKD's present application is based in part on the joint affidavit, dated October 15, 1993
, of independent computer software experts (Gerard Gress and Kenneth McKillop) retained by EKD for purposes of this litigation. The affidavit is an expert opinion, requested by EKD, on the following issues which are relevant to the motion to compel:
1) Is "Version 3 of pcAnywhere wholly functional? That is, is its code determined by the job it has to do and therefore not copyrightable because it lacks originality?" and
2) Is "Version 4 of pcAnywhere substantially the same as Version 3?"
Affidavit of Messrs. Gress and McKillop, annexed to EKD's moving papers at Exhibit 3 at para. 3.
The joint affidavit notes at para. 4 that the affidavit was prepared without access to the complete source code. Dynamic maintained that the questions could be answered based on "inspection of the release versions of the programs and their files." See para. 4, affidavit of Messrs. Gress and McKillop. The experts' affidavit sets forth, in detail, why the questions cannot be answered without examination of the full source code, and addresses ...