IP Law Daily, COPYRIGHT—E.D. Mich.: Contract to draft and submit study protocol created implied license to use the protocol in attempt to publish, (Apr 1, 2025)

By Kevin M. Finson, J.D.

The contract specifically contemplated publication to an online medical database, which was the use at issue.

A healthcare communications agency held an implied license to use a study protocol drafted for it by a contractor, the U.S. District Court in Detroit has held. The contract between the parties expressly contemplated that the protocol would be submitted to a particular online database, so it was not infringement to do so (Hanna v. Jespersen & Associates LLC, No. 2:23-cv-13258-SKD-KGA (E.D. Mich. Mar. 31, 2025)).

Dr. Michael Hanna and his company Mercury Medical Research and Writing were in the business of providing medical writing services to clients seeking to publish studies in scientific journals. Jespersen & Associates, LLC (Jespersen), a healthcare communications agency, contracted with Hanna to draft a “systematic review” of medical literature. One step of having such a review published in the industry was the preparation of a “study protocol” which would be submitted to an online registry known as PROSPERO. Under the contract between the parties, Hanna would write the study protocol, Jespersen would review it, and Hanna would incorporate any requested revisions and then submit it to PROSPERO. Sometime after Hanna submitted the final version of the study protocol to PROSPERO, the relationship soured and Jespersen sent an email to Hanna purporting to cancel the contract. Hanna then applied for copyright registration on various drafts of the study protocol. Jespersen then, despite the copyrights, submitted its own study protocol to PROSPERO which was substantially the same as Hanna’s now-copyrighted work. Hanna then brought suit for copyright infringement, violations of the Digital Millenium Copyright Act, and breach of contract. Jespersen moved to dismiss, arguing that it had a license, that the copyright registrations were invalid, and that its own employees were co-authors. The court took up only the license issue.

License. Jespersen argued first that the contract between the parties was an express license. The court disagreed, finding that there was no copyright-protected work contemplated at the time the contract was written. Rather, the court found that the contract created an implied license because the creation of the work had been requested by Jespersen, Hanna had created and delivered the work, and the understanding of the parties as expressed by the contract was that the work would be submitted to PROSPERO, which was the allegedly infringing use. Hanna argued that the understanding of the parties was that he, not Jespersen, would make the actual submission to PROSPERO, but the court found that there was no language in the contract from which it could find that Hanna had an exclusive right to control that submission. Instead, the court found that submitting to the work to PROSPERO was one of the services which Hanna would be paid to perform. A violation of that agreement would sound in contract, not in copyright. The court held that there was an implied license, so the copyright claim was dismissed.

Finding that the issue of license was sufficient to dispose of the case, the court did not reach Hanna’s other arguments. The court also found that claims under the Digital Millenium Copyright Act necessarily failed because there was no underlying act of infringement, and it declined to exercise supplemental jurisdiction over the surviving state law breach of contract claim. The court dismissed the case.

The Case is No. 2:23-cv-13258-SKD-KGA.

Judge: DeClercq, S.

Attorneys: Thomas P. Heed (Heed Law Group PLLC) for Michael Hanna. Justin Paul Bagdady (Bodman PLC) for Jesperson & Associates LLC.

Companies: Jesperson & Associates LLC

Cases: Copyright MichiganNews