Ex©lusive Rights

Pearson Educ., Inc. v. Nugroho, 2009 WL 3429610 (S.D.N.Y. 2009)

The Defendant allegedly sold answer to the Plaintiff’s engineering and accounting textbooks questions, via the internet.  The answer sets were identical to the Plaintiff’s instructor’s solutions manuals. Uneventful simple case of copyright infringement?  Such was not the case.

The Plaintiff never registered its copyright in its solutions manuals. The Plaintiff instead claimed that the defendant’s distribution of the answers were infringing derivative works of the textbooks themselves. The Court granted summary judgment in favor of the Plaintiff:

[The Defendant's answer sets do] not have independent economic value, and they are not by themselves economically viable. The Schedule is by nature derivative and it is meaningless without the Manual. It has no purpose on its own as it merely lays out a schedule with repeated references to the Manual, using terms that appear in the Manual and that have little meaning without reference to the Manual. Similarly, the Addendum is by nature derivative, as it merely provides additional samples of papers written by students and a booklet prepared for a science symposium, to be used with the Manual. Pavlica v. Behr, 03 Civ. 9628, 04 Civ. 8152, 2006 WL 1596763 at * 1, 3 (S.D.N.Y. June 12, 2006) (Chin, D.J.) (record citation omitted). In Addison-Wesley Publ’g Co. v. Brown, 223 F.Supp. 219, 221-24, 226-28 (E.D.N.Y.1963), the Court held that defendant’s publication and sale of a “Manual of Solutions” corresponding to the questions posed in plaintiff’s copyrighted textbook infringed on plaintiff’s copyright, explaining:

The solutions, for their part, have no independent viability. Without appropriation of the exact dimensions and magnitudes stipulated, in their context of the postulates propounded in plaintiffs’ problems, whatever the form or version into which defendants in their effort at disguise may have translated what they purloined, the solutions would exist in vacuo and be meaningless. What gives the solutions their value is that which, and only that which is already in the pirated works.

Addison-Wesley Publ’g Co. v. Brown, 223 F.Supp. at 220, 223-24; see, e.g., Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d at 145 (trivia book about the television sitcom, Seinfeld, “substitutes for a derivative market that a television program copyright owner such as Castle Rock ‘would in general develop or license others to develop.’ ”) (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 592, 114 S.Ct. 1164, 1178, 127 L.Ed.2d 500 (1994)); Educ. Testing Serv. v. Simon, 95 F.Supp.2d 1081, 1089 (C.D.Cal.1999) (“Defendants have further violated [plaintiff's] right to create derivative works by incorporating the copied questions into a new work-defendants’ coaching materials-which add, among other things, suggested answers to the questions.”); Video Aided Instruction, Inc. v. Y & S Express, Inc ., No. 96 CV 518, 1996 WL 711513 at *5 (E.D.N.Y. Oct. 29, 1996) (study booklets and audio portions of an educational videocassette series were derivative works rather than separate works for purposes of statutory damages because their “viability [was] wholly dependent on the video-cassettes themselves”).FN5

FN5. See also, e.g., Midway Mfg. Co. v. Arctic Int’l, Inc., No. 80 C 5863, 1981 WL 1390 at * 9 (N.D.Ill. June 2, 1981) (“If defendant’s device is designed and used solely to modify plaintiff’s visual image, then plainly defendant’s device would only have value because of
plaintiff’s particular copyrighted audio visual work. Defendant, thus, by selling its device reaps the benefits of plaintiff’s artistic endeavor.”); Kepner-Tregoe, Inc. v. Carabio, No. 8-71025, 1979 WL 1072 at *17 (E.D.Mich. July 23, 1979) (materials used to train instructors to teach a program were “by nature derivative” because they could not“ ‘live their own copyright life’ “ and “would have no purpose” without the program); Procter & Gamble Co. v. Moskowitz, 127 U.S.P.Q. 523, 524 (E.D.N.Y.1960) (noting that “selling answers to a [copyrighted] puzzle contest [is]an unlawful interference with the plaintiff’s business and copyright”).

*5 Here, as in Pavlica and Addison-Wesley Publ’g Co., Nugroho’s instructor’s solutions manuals complement plaintiffs’ copyrighted textbooks, have no “independent economic value” and are “meaningless” without the textbooks because they merely provide answers to questions posed in the textbooks. Accordingly, this Court holds that Nugroho’s instructor’s solutions manuals are derivative works that infringe upon plaintiffs’ textbook copyrights.FN6

FN6. Nugroho relies upon Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F.Supp.2d 147 (E.D.N.Y.2002) (Weinstein, D.J.), aff’d, 354 F.3d 112 (2d Cir.2003), to argue that he did not infringe plaintiffs’ copyrights because (1) plaintiffs’ solutions manuals were not registered and (2) the solutions manuals he sold “failed to show any substantial similarity” to the textbooks. (Dkt. No. 38: Nugroho Br. at 2-4, emphasis omitted.) As plaintiffs aptly noted in their brief ( see Pls. Br. at 4-5), Nugroho’s arguments and Well-Made Toy Mfg. Corp. do not apply to this case because (1) plaintiffs are not arguing that Nugroho infringed its “unregistered instructors’ solutions manual[s]” and (2) plaintiffs are not arguing that Nugroho infringed their copyrights by selling a “substantially similar work” but instead are arguing that Nugroho infringed their copyrights by selling derivative works. (Dkt. No. 39: Pls. Reply Br. at 4-5.)