June 2013 Issue
Copyright Cases
Am. Registry of Radiologic Technologists v. Bennett,
No. 5:12-cv-00109 (W.D. Tex. Apr. 11, 2013)
CASE SUMMARY
FACTS
American Registry of Radiologic Technicians (“Plantiff”) is a nonprofit organization that develops and administers examinations for individuals seeking certification in medical radiologic technology. A number of states use Plaintiff’s examinations as state-licensing examinations. In addition to developing and administering examinations, Plaintiff maintains a registry of certified radiologic technologists. To be certified, one must graduate from an approved educational program, agree to comply with certain standards, and pass a certification examination.
In 2007, Diane Bennett (“Defendant”), a certified radiologic technologist, launched a test-preparation business under the name Limited X-Ray Licensure Course Providers. Understanding that Plaintiff often reused questions on the examination, Defendant asked former test takers to e-mail her questions from their prior exams, which she then compiled into a series of e-mails to prep course students.
Plaintiff filed suit against Defendant for copyright infringement, breach of contract, tortious interference, and misappropriation of trade secrets. The U.S. District Court for the District of Minnesota concluded that it lacked personal jurisdiction over Defendant and transferred the case to the Western District of Texas. Both parties filed cross-motions for summary judgment.ANALYSIS
Plaintiff argued that Defendant willfully infringed Plaintiff’s copyrights by reproducing and distributing copies of Plaintiff’s examination questions. To establish a claim of copyright infringement, the court held that Plaintiff must show that it owned a valid copyright, that Defendant had access to the copyrighted materials, and that the copyrighted material and allegedly infringing material were substantially similar. Defendant argued that Plaintiff did not own a valid copyright in the individual examination questions because “facts themselves are not copyrightable.” The court disagreed, holding that “although a question that appears on a test may be intended to assess the test-taker’s knowledge of facts, the question itself—in its form and substance—is the original product of some author’s labor.” Defendant also argued that Plaintiff’s questions were “public knowledge,” almost identical to questions found on other tests, and therefore not sufficiently original to qualify for copyright protection. The court rejected these arguments, holding that the questions were similar but not identical and that the similarities appeared to be a result of the fact that both Plaintiff and other companies seek to test knowledge of the same facts. The court found that Plaintiff owned a valid copyright in both the test bank as a whole and the individual examination questions.
Although the court found that Plaintiff’s materials were subject to copyright protection, the court denied Plaintiff’s motion for summary judgment, finding Plaintiff failed to satisfy its burden of establishing Defendant’s access to the copyrighted work. Whereas Plaintiff provided ample evidence that Defendant asked students to send her questions they had seen on examinations, distributed questions she had solicited from students to other individuals, and promised students that she would provide them with prior exam questions, the court held that such evidence did not conclusively establish that Defendant solicited and received questions from Plaintiff’s specific examinations. Plaintiff likewise failed its burden of demonstrating that Defendant’s examination questions were “substantially similar” to Plaintiff’s questions, as none of the questions Defendant obtained were identical to Plaintiff’s and some were “significantly different.” Finding that there was a sufficient question of fact as to whether Defendant had access to Plaintiff’s test questions, the court found Plaintiff had failed to meet its burden with respect to the “factual copying” element of a copyright-infringement claim.
The court also emphasized that even if Plaintiff could establish that Defendant had access to the copyrighted work, Plaintiff’s motion for summary judgment would fail due to the Fifth Circuit’s adherence to the rule that the question of “substantial similarity” should “typically . . . be left to the fact finder” unless “the court can conclude, after viewing the evidence and drawing inferences in a manner most favorable to the nonmoving party, that no reasonable juror could find substantial similarity of ideas and expression.” Finding that Plaintiff’s comparison of the copyrighted questions and the allegedly infringing material revealed that, although not identical, the “works were similar enough that a reasonable juror could find substantial similarity of ideas and expression,” the court also denied Defendant’s cross-motion for summary judgment.
Turning to the breach-of-contract claim, the court held that both parties failed to meet their burdens for summary judgment. The court found that Plaintiff and Defendant formed a valid contract when Defendant registered to take the examination and submitted her annual renewal applications. Those registration and renewals required Defendant to agree to Plaintiff’s Standard of Ethics, which prohibit, among other things, “disclosing information concerning any portion of a future, current, or previously administered examination,” and “disclosing what purports to be, or under all circumstances is likely to be understood by the recipient as . . . ‘inside’ information concerning any portion of a future, current, or previously administered examination.” Finding that the evidence did not establish with a sufficient level of certainty that Defendant had solicited questions from students who had taken Plaintiff’s exam, the court found Plaintiff had likewise failed to satisfy its burden on its breach-of-contract claim. The court also denied both parties’ motions for summary judgment on Plaintiff’s tortious-interference claim. Plaintiff claimed that by “demanding” that her students “recall and relay [exam] questions to her,” Defendant induced her students to violate their agreement with Plaintiff. The evidence, the court held, showed that one student actually sent Defendant a question, but nothing in the e-mail exchanges established that the student in question had taken Plaintiff’s exam. Plaintiff did not produce any nondisclosure agreements signed by any of the individuals with whom Defendant engaged in e-mail correspondence. Thus, the court held, Plaintiff failed to show the absence of any genuine dispute of material fact with respect to its claim for tortious interference. In addition, the court disagreed with Defendant’s argument that it was entitled to summary judgment on Plaintiff’s tortious-interference claim because Plaintiff failed to prove that Defendant committed an “independent tort.” The court stated that Defendant’s argument applied to tortious interference with business relations, not tortious interference with a contract, and therefore did not apply.
Turning to Plaintiff’s trade-secret misappropriations claim, the court again denied both parties’ motions for summary judgment. In Texas, a claim of misappropriation of trade secrets is established by showing “(a) a trade secret existed; (b) the trade secret was acquired through a breach of a confidential relationship or discovered by improper means; and (c) use of the trade secret without authorization from the plaintiff.” Finding that Plaintiff did not publish the questions publicly and had set up procedures to ensure that test takers did not disseminate the questions, and that the questions were “extremely valuable” due to the time and expertise required to create them, the court concluded Plaintiff’s test bank was a valid trade secret. The court disagreed with Defendant’s argument that the questions were in the “public domain” because they tested knowledge found in public resources, such as the Internet or libraries. Because Plaintiff did not establish that Defendant acquired its examination questions by improper means, as nothing in Defendant’s e-mail solicitations showed that the students in question had taken Plaintiff’s examination, it was not entitled to summary judgment on its trade-secret misappropriation claim. CONCLUSION
This case confirms that test questions that test knowledge found in public resources are copyrightable both individually and as in test banks, and can qualify as protectable trade secrets. It emphasizes that the question of both access and substantial similarity are highly fact-specific inquiries not easily resolvable on summary judgment.
