NOT FOR PUBLICATION FILED

UNITED STATES COURT OF APPEALS FEB 27 2025

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

FOR THE NINTH CIRCUIT

SOFTKETEERS, INC., a California Nos. 24-150 corporation, 24-451 D.C. No. Plaintiff – Appellee / 8:19-cv-00519-JWH-JDE Cross – Appellant,

v. MEMORANDUM*

REGAL WEST CORPORATION, a Washington corporation doing business as Regal Logistics Inc; VU HO INC.; THAI

TRAN INC.; RAND NEEVES; VU

HO; THAI QUOC TRAN; DONG BAO

PHAM,

Defendants – Appellants / Cross – Appellees.

Appeal from the United States District Court for the Central District of California John W. Holcomb, District Judge, Presiding

Argued and Submitted February 12, 2025 Pasadena, California

Before: GRABER, HAMILTON, and BUMATAY, Circuit Judges.**

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. ** The Honorable David F. Hamilton, United States Circuit Judge for the Court of Appeals, 7th Circuit, sitting by designation. Plaintiff-Counterdefendant Softketeers, Inc. (“Softketeers”) developed

software for Defendant-Counterclaimant Regal West Corporation d/b/a Regal

Logistics (“Regal”)1 for almost two decades. The parties never signed an

agreement clarifying who owned the rights to the software, though each side came

to believe that it held the rights. Shortly after Regal ended the relationship,

Softketeers initiated this action, asserting, as relevant here, claims for copyright

infringement and for misappropriation of trade secrets. In response, Regal raised

several counterclaims, including requests to declare (1) that Regal owns—under

the work-for-hire doctrine—the copyrights to the software; and (2) that Regal has

an implied license for the software. A jury found in Softketeers’ favor regarding

its infringement and trade-secrets claims. Deferring to the jury’s implicit factual

findings, the district court ruled against Regal on its counterclaims, which were

tried to the court. The district court also ruled on several post-trial motions.

Regal timely appeals several of the district court’s decisions and, on cross-

appeal, Softketeers timely challenges the district court’s denial of contempt

sanctions.2 We affirm in all respects.

1 Regal is joined on appeal by Vu Ho, Inc.; Thai Tran; Thai Tran, Inc.; Dong Bao Kevin Pham; and Rand Neeves. We will refer to all Defendants as “Regal” in this disposition. 2 Softketeers’ cross-appeal targets only Regal and Neeves.

2 24-150 1. Concerning Softketeers’ claim for copyright infringement, Regal

contends that the district court erred by denying its motion for judgment as a

matter of law because (a) no findings bearing on work-for-hire ownership or the

existence of an implied license can be inferred from the jury’s verdict and (b) any

findings the jury might have made are not supported by substantial evidence.

Reviewing de novo, Alaska Rent-A-Car, Inc. v. Avis Budget Grp., Inc., 738 F.3d

960, 970 (9th Cir. 2013), we perceive no error.

Analyzing the jury’s instructions alongside the verdict form, we can infer

that the jury—by finding in Softketeers’ favor regarding the copyright and trade-

secrets claims—must have determined that Regal was neither the work-for-hire

owner nor an implied licensee of the software.3 See Westinghouse Elec. Corp. v.

Gen. Cir. Breaker & Elec. Supply Inc., 106 F.3d 894, 902 (9th Cir. 1997)

(examining the jury instructions and “the pattern of jury verdicts” to “determine

what facts a rational juror must have found”). The jury was instructed on both the

work-for-hire and implied-license issues, and it rendered a general verdict in favor

of Softketeers. Despite Regal’s argument to the contrary, the instruction pertaining

to certificates of copyright registration did not permit the jury to ignore the

3 Though Regal does not appeal the district court’s treatment of Softketeers’ trade-secrets claim, the jury instructions pertaining to that claim inform our analysis of Regal’s other arguments. In addition, we note that Regal does not challenge any of the jury instructions on their merits.

3 24-150 remaining instructions by assuming Softketeers’ ownership of—and, by extension,

Regal’s lack of an ownership interest in—the copyright. See id. at 901 (“[W]e

must assume that the jury followed the trial court’s instructions.”).

Substantial evidence supports the jury’s finding that Softketeers was not

Regal’s employee for purposes of the work-for-hire doctrine. See Dees v. County

of San Diego, 960 F.3d 1145, 1151 (9th Cir. 2020) (stating legal standard

applicable to motions for judgment as a matter of law); U.S. Auto Parts Network,

Inc. v. Parts Geek, LLC, 692 F.3d 1009, 1015 (9th Cir. 2012) (explaining that a

work is made for hire if it is prepared (1) by an employee (2) within the scope of

their employment). The multi-factor test set forth in Community for Creative Non-

Violence v. Reid, 490 U.S. 730, 751–52 (1989), governs our analysis. All Reid

factors made relevant by the circumstances of a case should be weighed. JustMed,

Inc. v. Byce, 600 F.3d 1118, 1125–26 (9th Cir. 2010). From the evidence

introduced at trial, a reasonable jury could have concluded that several significant

Reid factors weigh against categorizing Softketeers as Regal’s employee. See id.

at 1125 (explaining that the “central inquiry” is “the hiring party’s right to control

the manner and means by which the product is accomplished” (citation and internal

quotation marks omitted)). For example, the jury heard testimony that Regal’s

management had limited insight into the day-to-day work of the software’s

programmers, and that the programmers worked under Softketeers’ direction.

4 24-150 Substantial evidence also supports the jury’s implicit finding on the implied-

license issue. One cannot establish the existence of an implied license without

showing that “the licensor intends that the licensee-requestor copy and distribute

his work.” Asset Mktg. Sys., Inc. v. Gagnon, 542 F.3d 748, 755 (9th Cir. 2008)

(quoting I.A.E., Inc. v. Shaver, 74 F.3d 768, 776 (7th Cir. 1996)). Of the three

factors relevant to the “intent” inquiry, see id. at 756 (listing those factors), a

reasonable juror could have concluded that two favored Softketeers’ position.

First, it is undisputed that the parties were engaged in a long-term, multi-decade

relationship. If Regal had been a licensee, it likely would not have kept

Softketeers on the premises. Second, a reasonable jury could have found that

Softketeers limited who could access the software and, therefore, evinced an intent

to prevent Regal from continuing to use the software absent Softketeers’

involvement.

2. The district court did not abuse its discretion by denying Regal’s motion

for a new trial. See Kode v. Carlson, 596 F.3d 608, 611 (9th Cir. 2010) (per

curiam) (stating standard of review). The district court applied the correct legal

standard and, as detailed above, the record contains evidence supporting the jury’s

verdict. See Hemmings v. Tidyman’s Inc., 285 F.3d 1174, 1189–90 (9th Cir.

2002) (“We will reverse the denial of a motion for new trial based on the

insufficiency of the evidence only if the district court made a legal error in

5 24-150 applying the standard for a new trial or if the record contains no evidence in

support of the verdict.”).

3. Regarding the district court’s bench-trial rulings on Regal’s work-for-hire

and implied-license counterclaims, Regal contends that the district court erred by

deferring to the jury’s verdict because work-for-hire ownership and the existence

of an implied license are questions of law. At oral argument, Regal’s lawyer

conceded that we need not address the counterclaims if (1) we decide that the jury

made findings regarding those issues and (2) we uphold the district court’s

judgment-as-a-matter-of-law and new-trial rulings. Because both of those

conditions are met, we decline to address the merits of Regal’s argument.

In any event, the doctrines of invited error and judicial estoppel bar Regal

from asserting its question-of-law contention. The former doctrine applies “where

a party ‘introduced, or directly set in motion, the error of which he complain[s].’”

Hunter v. U.S. Dep’t of Educ., 115 F.4th 955, 963–64 (9th Cir. 2024) (alteration in

original) (quoting United States v. Magdaleno, 43 F.4th 1215, 1220 (9th Cir.

2022)). Here, Regal insisted in the district court—and convinced that court—that

the issues of work-for-hire ownership and implied license were within the jury’s

province. Meanwhile, judicial estoppel bars litigants from

“asserti[ng] . . . inconsistent positions in the same litigation” or “making

incompatible statements in two different cases.” United States v. Paulson, 68 F.4th

6 24-150 528, 547 n.28 (9th Cir. 2023) (quoting Hamilton v. State Farm Fire & Cas. Co.,

270 F.3d 778, 783 (9th Cir. 2001)). All three factors that we typically consider

counsel in favor of applying judicial estoppel in this case. See id. at 547 (listing

those factors).

4. The district court did not abuse its discretion by awarding Softketeers

post-trial equitable relief. See Williams v. Gaye, 895 F.3d 1106, 1130 (9th Cir.

2018) (stating standard of review). Notwithstanding Regal’s contention to the

contrary, we see nothing to suggest that the jury intended to award forward-looking

relief. Nor was the sum awarded by the district court unduly speculative. See id.

at 1128 (stating legal standard).

5. Regarding Softketeers’ cross-appeal, the district court did not abuse its

discretion by denying Softketeers’ motion for contempt sanctions. See Hallett v.

Morgan, 296 F.3d 732, 749 (9th Cir. 2002) (stating standard of review). Even

assuming that the district court misinterpreted facts in the record pertaining to the

timing of Regal’s misuse of the software, we are not convinced that the district

court “rested its decision” on an erroneous finding. Id. (emphasis added). The

district court determined that its injunction had indeed been violated, but it also

concluded that it could not find by clear and convincing evidence—as required for

contempt sanctions, Parsons v. Ryan, 949 F.3d 443, 454 (9th Cir. 2020)—who was

responsible for the violations. That finding was not clearly erroneous. Nor has

7 24-150 Softketeers shown that the district court “misapprehended the law.” Hallett, 296

F.3d at 749.

AFFIRMED.

8 24-150