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DSMC, Inc. v. Convera Corp.

March 27, 2007


The opinion of the court was delivered by: Emmet G. Sullivan United States District Judge


This cases arises from a dispute between two companies involved in the migration of National Geographic film footage onto a searchable Internet website. Pending before the Court is defendant's motion for summary judgment. Upon consideration of the motion, responses and replies thereto, oral argument during the motions hearing, applicable law, and the entire record, the Court grants in part and denies in part defendant's motion.


NGT Library, Inc. ("NGTL") is a wholly owned subsidiary of National Geographic Television, Inc. NGTL manages, preserves, and distributes film footage produced by National Geographic Television and used on the National Geographic Channel. NGTL developed a plan for moving the films produced for National Geographic Television into a searchable Internet website, which led to the controversy in this case. NGTL adopted a three-phase plan: (1) prepare a database of digitized footage and associated metadata and temporarily host it on the Internet; (2) select and implement permanent video management software; and (3) move the Internet website in-house.

A. DSMCi's Product

Plaintiff DSMC, Inc. ("DSMCi") developed its first Media Archive System*fn2 ("MAS") in late 1998 while working on contracts with Computer Science Corporation and South Carolina Educational Television. DSMCi released three versions of is MAS Version 1 software. While the basic architecture of the MAS system remained constant in each version, DSMCi customized the product for each client. The third version, MAS Version 1.3, was for NGTL.*fn3 In customizing DMAS for NGTL, DSMCi used and integrated several third-party products including Oracle and Netscape products and Virage VideoLogger. DMAS consists of a series of HTML and JavaScripts that link the searchable NGTL Database to the Netscape web server, allowing users to access the website from the Internet, search through the database, and view selected video clips. DSMCi claims that its product contains capabilities not found in any other media archive system, including Convera's Screening Room.

Defendant Convera Corporation ("Convera") claims that DSMCi's MAS Version 1 closely resembles a product described in a 1997 Virage publication and a 1997 Oracle software guide. Convera also claims that the methods required to implement a web-based, interactive, video-clip-asset indexing, search, and management system with a graphic user interface were published in thirteen patents prior to November 15, 2000. DSMCi disagrees with these characterizations to the extent it suggests that the trade secrets DSMCi claims exist in DMAS were present in these publications.*fn4

B. Convera's Product

Convera developed a video database management product similar to MAS Version 1. Convera's product, Screening Room, is a video cataloging, previewing and retrieval system that manages significant video libraries. Convera began development on Screening Room in 1997 and released the first version of the product in July 1998. As of December 2000, Screening Room included capture, edit, browse, analysis and search capabilities. By 2001, Convera had invested over $30 million in Screening Room and over $30 million in RetrievalWare, which provides the search capability in Screening Room.

Convera used Screening Room for a project with NASA to manage video from space shuttle flights and from the international space station. According to Convera, the Screening Room product customized for NASA allowed NASA to download, digitize and store online video feeds. The entire video library could also be searched and selected clips replayed. Convera claims that the Screening Room/NASA deployment in late 2000 was Convera's first implementation of a clip level search capability.

C. NGTL's Contract with DSMCi

In November 2000, NGTL signed an Integration Services Agreement ("ISA") with DSMCi, with an effective date of September 13, 2000. See ISA, Ex. 1 to Def.'s Mot. for Summ. J. Convera was not a party to the ISA and Convera claims that NGTL did not provide Convera a copy of the ISA. Convera further claims that it did not see a copy until this litigation commenced.

Under the ISA, DSMCi was to digitize approximately 2000 hours of NGTL video footage, create a searchable database of the metadata associated with the footage, together with descriptions of video clips, and host the NGTL Database on the Internet from December 6 2000 until July 9, 2001, unless the hosting term was extended by NGTL.*fn5 In consultation with NGTL, DSMCi also developed the "structure, graphic design elements, and functionality requirements for the user interface." ISA, Ex. A: Integration Services ¶ 1. The ISA also provided that DSMCi was to deliver to NGTL the "final NGTL Database backup" and also deliver to NGTL each month a back-up copy of the database. Def.'s Facts ¶ 12.

The ISA also provides that DSMCi granted a license for DSMCi's software to NGTL during the term of the contract. See ISA ¶ 16(c)(i). Under this licensing agreement, NGTL agreed that it would not authorize any third party to "modify, reproduce, reverse engineer, decompile, cross-compile, disassemble, translate or decode, or otherwise attempt to discover the source code of or any processes or algorithms embodied in" DSMCi's software. Id.

D. Convera Acquires NGTL Database Migration Project

In Spring 2001, Convera had several meetings with NGTL regarding Convera's video database management capabilities. In April 2001, Convera and NGTL representatives met at a conference and discussed the future requirements of NGTL's media archiving project. NGTL invited Convera to send its engineers to NGTL.

On May 10, 2001, Convera engineers Jim Rose and Brian Archibald met at the NGTL offices with representatives from NGTL and DSMCi. DSMCi CEO Duane Shugars attended at least part of this meeting. Shugars explained the DSMCi system to the Convera engineers. NGTL representative Gary Carter then demonstrated the NGTL website for Rose and Archibald. At the meeting, a Convera representative suggested that Convera and DSMCi sign a nondisclosure agreement. Such an agreement was signed by both companies on May 14, 2001.

The parties dispute a number of the facts surrounding the May 10, 2001 meeting. Convera states that Convera engineer Jim Rose asked Carter of NGTL if Convera could get the NGTL Database schema*fn6 and was told by Shugars that he could get the database schema from NGTL's database backup tapes. However, during his deposition, Shugars indicated that he could not recall whether or not Rose asked to see the schema. Shugars stated that the discussion he would have had with Rose would have been specific to accessing the data, not the entire schema, so that Convera could import the data into its own schema. At the same meeting, Rose asked how Convera could get access to the NGTL website. According to Rose, Shugars told Rose that he would have to go to NGTL for assignment of a username and password. Plaintiff disputes this fact, stating that DSMCi gave no such instructions and would not have given such instructions. Shugars' deposition provides no clarity on this point. See Shugars Dep. at 303 (discussing access to website on May 10 but not discussing any other access to website).

On May 11, 2001, NGTL assigned Convera a username/password combination for the NGTL website. NGTL assigned Convera the "Wart" username.

That same day, Convera engineer Archibald informed other Convera engineers via email that Convera would have a copy of the "customized Oracle schema" then being used by NGTL so that Convera could "analyze what is necessary to 'massage' it and/or our SR schema to make SR work with the current NGS data." Email from Brian Archibald to Convera engineers (May 11, 2001), Ex. 11 to Def.'s Mot. for Summ. J. Around the same time, NGTL sent Convera a backup copy of the NGTL database on DLT tape. Convera could not read this backup tape nor could it read a second tape sent by NGTL in June.

In mid-July, Convera project manager Shaun Henderson had NGTL load a copy of the NGTL backup for the database onto his laptop and then realized that the database was password protected. He then sent an email to Dean Watts and Gary Carter at NGTL to obtain a password so that Convera could look at the database schema. See Email from Shaun Henderson to Dean Watts and Gary Carter (July 17, 2001) ("I'm excited to report that we have got the DSMCi Oracle DB restored, but have found that it is password protected. Can we obtain the password to that DB, so that we can take a look at that schema?"). Two days later, Henderson obtained the "icepick" password from NGTL, allowing Convera access to the database on the backup tape and, as a result, DSMCi's database schema.

E. NGTL/Convera Contract

On July 20, 2001, DSMCi and NGTL signed a Master Services Agreement ("MSA"). The contract required Convera to migrate and integrate the NGTL Database into Convera's Screening Room software, add NGTL-requested functionality to operate Screening Room, and temporarily host the Screening Room/NGTL website. In the MSA, NGTL represented to Convera that "all Digital Content, Metadata, and other material provided to Convera by NGTL or on its behalf may be reproduced and otherwise utilized as necessary by Convera" in its work for NGTL. MSA ΒΆ 6(a), Ex. 2 to Def.'s Mot. for Sum. J. NGTL tasked Convera with acquiring NGTL's data from the existing NGTL Database and transferring it to the ...

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