Intellectual Property | Copyright Infringement | Technology | Software

Substantial similarity in infringement cases involving written materials

Jan 15th, 2018 | By | Category: Book Infringement

Copyright Case Briefs:  RMC Publications, Inc. v. Phoenix Technology Solutions, LLC (E.D. Va. Oct. 27, 2015).

infringement of exam prep materials

Summary

RMC, as the owner of the copyright in the PMP Exam Prep book, brought suit against a PMP exam preparation company Phoenix Technology Solutions for the unauthorized use of the PMP Exam Prep book materials in the class presentation and teaching materials. Phoenix filed a motion to dismiss under 12(b)(6) asserting Plaintiff’s Complaint did not adequately plead copying. The Court disagreed and denied Defendant’s motion to dismiss.

Facts

Plaintiff RMC Publications (“RMC” or “Plaintiff”) publishes books and other materials in the area of project management, including the PMP Exam preparation book “PMP Exam Prep,” which RMC owns the copyrights in every edition. Defendant Phoenix Technology Solutions (“Phoenix” or “Defendant”) sells courses at an admission cost of $1,990.00 to help people pass the PMP exam and other project management certification exams. In 2014, RMC discovered Phoenix used RMC’s copyrighted materials in the presentation and teaching of the PMP prep course. RMC never licensed or otherwise authorized Phoenix to use its copyrighted materials in course presentation materials or other derivative work teaching materials.

As a result, RMC filed a copyright infringement action against Phoenix for this unauthorized use. Phoenix filed a 12(b)(6) motion arguing RMC failed to state a claim for copyright infringement because the Complaint fails to meet the second element of copyright infringement: “copying of protected original elements of the work.”

Legal Issue

Whether Plaintiff’s complaint sufficiently pleads copying to survive a 12(b)(6) motion to dismiss?

Analysis

Defendant Phoenix focuses its Motion to Dismiss on the requirements that Plaintiff show Defendant has copied original elements of the Plaintiff’s work. First, Defendant argues Plaintiff has failed to adequately allege that any similarities between its products and Defendant’s are the result of copying. Second, Defendant argues that even if Plaintiff adequately alleges copyright, it fails to allege that the copied material was original in nature, and therefore protected by the copyright.

A showing of access and substantial similarities creates a “presumption of copying.” However, there is no copyright infringement where the similarities between two works genuinely do not result from copying, but merely “from the fact that both works deal with the same subject or have the same common sources.” Defendant argues that the similarities between the book and the prep course presentation materials are not the result of Plaintiff’s work, but rather the use of generic concepts and industry standards. Importantly, at the 12(b)(6) stage, the Court must accept all allege facts as true and construe them favorably to the plaintiff. Here, Plaintiff alleges that its “PMP Exam Prep” copyrighted book is the bestselling PMP exam preparation book in the world and that Defendant is in the business of offering PMP exam preparation classes.

From these facts, the Court reasoned that it is reasonable to assume a company who offers PMP exam preparation classes would have access to and some familiarity with the “best selling PMP exam preparation book in the world” and, thus, supports a finding that Defendant had access to Plaintiff’s copyrighted materials. In finding Defendant had access, the Court turned to the issue of substantial similarity, finding that Plaintiff’s Complaint met the pleading standards of substantial similarity because it alleges Defendant engaged in extensive VERBATIM copying.

Similarly, Defendant’s argument at the 12(b)(6) stage as to originality also fail. Here, Plaintiff’s Complaint clearly alleges that the copyrighted material in “PMP Exam Prep” was the creation of Rita Mulcahy, the president and founder of RMC, and was “the result of many years’ experience and feedback from Mulcahy’s work with more than 7500 project managers.”

In fact, the Eight Circuit, in addressing the same issue, found that Mulcahy had “done far more than merely copy or distribute materials in creating the PMP Exam Prep” book. The Court reasoned that the PMP Exam Prep book condensed and organized the material in a specific fashion to enhance comprehension by students, adding concrete examples to abstract concepts and regular tests to aid in retention. Thus, the Court found that Plaintiff’s allegations regarding originality to be sufficient at the 12(b)(6) stage.

Conclusion

The Court denied Defendant’s Motion to Dismiss because Plaintiff sufficiently alleges the element of copyright infringement in its Complaint.

What is substantial similarity in copyright law?

One excellent case that discusses the concept of substantial similarity in copyright cases is Hassett v. Hasselbeck, 757 F. Supp. 2d 73, 79–81 (D. Mass. 2010).  In this case the Court discussed:

Copyright Infringement: Substantial Similarity
The plaintiff bears the burden of proving the two elements of copyright infringement:
 ‘(1) ownership of a valid copyright[;]
and
(2) copying of constituent elements of the work that are original.’
See Johnson v. Gordon, 409 F.3d 12, 17 (1st Cir.2005) (quoting Feist, 499 U.S. at 361, 111 S.Ct. 1282).
To establish copying, a plaintiff must show actual copying and substantial similarityActual copying is shown by direct or circumstantial evidence, including evidence of access coupled with probative similarity.
Substantial similarity is shown by “proof that the copying was so extensive that it rendered the works so similar that the later work represented a wrongful appropriation of expression.”  (citing Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 33 (1st Cir.2001)).
A plaintiff’s failure to show substantial similarity entitles a defendant to judgment. See Yankee Candle, 259 F.3d at 33, 37 (affirming summary judgment based on lack of substantial similarity where validity of the copyright was undisputed and actual copying was assumed).
Substantial similarity is measured by the ordinary observer test, which provides that “two works will be said to be substantially similar if a reasonable, ordinary observer, upon examination of the two works, would ‘conclude that the defendant unlawfully appropriated the plaintiff’s protectable expression.’   See T–Peg, Inc. v. Vermont Timber Works, Inc., 459 F.3d 97, 112 (1st Cir.2006)
The volume of similar material is not necessarily dispositive, as the fact that “the copying involved only a small portion of the plaintiff’s work does not by itself make the copying permissible.” Situation Mgmt. Sys., Inc. v. ASP Consulting LLC, 560 F.3d 53, 59 (1st Cir.2009).
“Indeed, even if the similar material is quantitatively small, if it is qualitatively important, the trier of fact may properly find substantial similarity.”
Additionally, slight or trivial variations between works will not preclude a finding of infringement under the ordinary observer test.’ Segrets, 207 F.3d at 65 (quoting Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 608 (1st Cir.1988)).
An artist may avoid infringement “ ‘by intentionally making substantial alterations in the design of a copyrighted work so as to provide a substantially different expression of the idea embodied in the copyrighted work,’ ” but only if “ ‘the points of dissimmilarity not only exceed the points of similarity, but indicate that the remaining points of similarity are (within the context of plaintiff’s work) of minimal importance either quantitatively or qualitatively.’ ” Id. at 65–66 (quoting Concrete Mach., 843 F.2d at 608).
Importantly, however, the examination for substantial similarity “must focus on ‘what aspects of the plaintiff’s work are protectible under copyright laws and whether whatever copying took place appropriated those protected elements.’ ” Johnson, 409 F.3d at 19 (quoting Matthews v. Freedman, 157 F.3d 25, 27 (1st Cir.1998)); see T–Peg, 459 F.3d at 112. “[O]nly the ‘protected expression’ is relevant to an evaluation of substantial similarity.” Yankee Candle, 259 F.3d at 33–34. Thus, an impression of overall similarity will not establish substantial similarity if the “impression flows from similarities as to elements that are not themselves copyrightable.” Johnson, 409 F.3d at 19.
For this reason, a court evaluating substantial similarity must recognize and apply certain limits on the scope of copyright protection. See id. “Copyright law protects original expressions of ideas but it does not safeguard either the ideas themselves or banal expressions of them.
Yankee Candle, 259 F.3d at 33 (“[I]deas cannot be copyrighted” (internal quotation marks omitted)); Dunn v. Brown, 517 F.Supp.2d 541, 544–45 (D.Mass.2007) (Ponsor, J.); see also 17 U.S.C. § 102(b) (“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”).
Under the merger doctrine, even the expression of an idea is unprotected “when there is only one way to express a particular idea.” Coquico, Inc. v. Rodriguez–Miranda, 562 F.3d 62, 68 (1st Cir.2009). Although a particular selection and arrangement of facts may be “thin[ly]” protected, the facts themselves are not. See Feist, 499 U.S. at 348–49, 111 S.Ct. 1282. Under the doctrine of scenes a faire, there is no protection for “elements of a work that are for all practical purposes indispensable, or at least customary, in the treatment of a given subject matter.” Coquico, 562 F.3d at 68. Additionally, “copyright law denies protection to fragmentary words and phrases and to forms of expression dictated solely at functional considerations.” CMM Cable Rep, Inc. v. Ocean Coast Props., Inc., 97 F.3d 1504, 1519 (1st Cir.1996) (internal quotation marks omitted) (holding short, clichéd phrases conveying the idea of employment were not protected because, among other reasons, they did not involve an appreciable amount of text or the minimal creativity necessary to warrant copyright protection); see Johnson, 409 F.3d at 24 (holding that the phrase “You’re the One for Me” did not warrant copyright protection); see also Matthews, 157 F.3d at 28.
The Court continued:
The process of identifying the unprotected elements of a work and removing them from consideration is sometimes called “dissection analysis.” See Yankee Candle, 259 F.3d at 34. “In performing the substantial similarity analysis, a court should be careful not to over-dissect the plaintiff’s work, causing it to ignore the plaintiff’s protectable expression.” Situation Mgmt., 560 F.3d at 59 (citing CMM, 97 F.3d at 1515 (stating that the court must be aware of the danger of “so dissecting the work as to classify all its elements as unprotectable.  Thereby possibly blinding [the court] to the expressiveness of their ensemble.” “[T]he court should not lose sight of the forest for the trees; that is, it should take pains not to focus too intently on particular unprotected elements at the expense of a work’s overall protected expression.” Coquico, 562 F.3d at 68.
“Summary judgment on substantial similarity is ‘unusual’ but can be warranted on the right set of facts.” T–Peg, 459 F.3d at 112 (quoting Segrets, 207 F.3d at 62). “ ‘Summary judgment on substantial similarity is appropriate only when a rational factfinder, correctly applying the pertinent legal standards, would be compelled to conclude that no substantial similarity exists between the copyrighted work and the allegedly infringing work.

Contact a Book Infringement Law Firm

We can help if your company has a copyright dispute involving a book, magazine, trade publication, journal, or infringement of other written materials.  Call us at (877) 276-5084.

This copyright case brief was written primarily by Jennifer Cooper, Loyola Marymount law student.

The following two tabs change content below.
We are a business and civil litigation firm with a focus on copyright infringement cases involving illegal movie downloads (torrent cases such as London Has Fallen, ME2 Productions and Malibu Media defense), software audits (ex. Microsoft audits, SPLA, Autodesk audit notification letter, Siemens PLM defense, SIIA, Adobe and Business Software Alliance defense) and other software vendors threatening piracy and infringement. We also handle cases involving internet law, anti-SLAPP, media law, right of publicity, trademarks & domain name infringement, and we have a niche practice area handling California BRE licensing disputes, accusations, subpoena response, statement of issues and investigations. We have offices in San Francisco, Beverly Hills, Newport Beach, San Diego & Phoenix, Arizona and accept federal copyright and trademark cases nationwide. All content on our website is general legal information only and not a substitute for legal advice, and should not be relied upon. Decisions to hire counsel should not be based on advertising alone. Blogs, videos and podcasts are authored by Steve Vondran, Esq. unless otherwise noted. We can be reached at (877) 276-5084.

Latest posts by Vondran Legal - Civil Litigation firm handling Software audits, Copyright Infringement, Internet law, and general Business & Real Estate law (see all)

Comments are closed.