Harcourt, Brace & World, Inc. v. Graphic Controls Corp.

• Decision Date: 27 July 1971
• Docket Number: No. 68 Civ. 4035.,68 Civ. 4035.
• Citation: 329 F. Supp. 517
• Parties: HARCOURT, BRACE & WORLD, INC., Plaintiff, v. GRAPHIC CONTROLS CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of New York

329 F. Supp. 517

HARCOURT, BRACE & WORLD, INC., Plaintiff, v. GRAPHIC CONTROLS CORPORATION, Defendant.

No. 68 Civ. 4035.

United States District Court, S. D. New York.

March 24, 1971.

As Amended May 12, 1971.

On Motion for Reconsideration and Clarification July 27, 1971.

Linden & Deutsch, New York City, for plaintiff; David Blasband, Frederick F. Greenman, Jr., New York City, of counsel.

Amster & Rothstein, New York City, Kegan, Kegan & Berkman, Chicago, Ill., for defendant; Esther O. Kegan, Chicago, Ill., George Gottlieb, New York City, of counsel.

LASKER, District Judge.

Both parties here seek summary judgment and present the court with a novel and difficult question of law: Are printed answer sheets, created for use in conjunction with student achievement and intelligence tests and designed to be corrected by optical scanning machines, the proper subject of copyright?

For the reasons set forth in the discussion below, we hold that such answer sheets are subject to the protection of the Copyright Act.¹

THE MOTIONS HERE PRESENTED

Defendant moves under Rule 56(b) of the Federal Rules of Civil Procedure for summary judgment on the first count of plaintiff's amended complaint and the first count of the counterclaim, which together raise questions of the copyrightability and infringement of certain answer sheets. Defendant urges (a) that the answer sheets were not subject to copyright, and (b) that even if they were, defendant's answer sheets were of independent design and not copies.

Plaintiff opposes defendant's motion for summary judgment, but urges that "there is no issue as to any material fact which would prevent the grant of summary judgment for plaintiff * * * on the complaint and on both counterclaims." (Plaintiff's Memorandum of Law, filed June 15, 1970, at pp. 15-16).

Thus plaintiff contends that summary judgment is appropriate at this time in its favor on both of the defendant's counterclaims, which sought (1) a declaratory judgment under 28 U.S.C.A. § 2201 and 28 U.S.C.A. § 1338(a) that the answer sheets were not proper subjects of copyright protection, and (2) that plaintiff be enjoined from violating the antitrust laws under 15 U.S.C.A. §§ 15 and 26 by tying the sale of blank answer sheets to its examination booklets, and by conspiring with the manufacturers and suppliers of optical scanning services to refuse to provide school districts with competitive bids for printed answer sheets or scoring them. Plaintiff also seeks summary judgment on the second count of the complaint, as well as the first which, in any event, must be determined by virtue of defendant's motion. The second count, brought pursuant to 28 U.S.C.A. § 1338(b), alleges that defendant copied plaintiff's answer sheet, produced an inferior sheet, and thereby damaged plaintiff's examinations and unfairly appropriated the benefits of plaintiff's research and expenditures in preparing its own answer sheet.

FACTS

The plaintiff publishes a large number of educational and psychological tests; among these are the Stanford Achievement Test ("SAT") and the Otis-Lennon Mental Ability Test ("Otis-Lennon") taken by school children across the United States every year in some 8,000 school districts. These tests have been repeatedly revised and refined over the years since they were first issued, and this effort has required a substantial investment on the part of the plaintiff.

Originally students taking these examinations entered their responses to the questions posed directly in the test booklet. As optical scanning machines became available, capable of scoring the examinations, separate answer sheets were devised to meet the requirements of the machine used. These separate answer sheets facilitated the grading of the examinations and also saved money for the schools administering the examinations because the same test booklet might be used several times.

As presently administered, a student is now presented with an examination booklet which poses a series of numbered questions or problems in a test booklet. Next to each question is a series of alternative possible answers or responses. Each of these multiple choice responses is individually identified by a given symbol, either a letter or a number. The number of the question is repeated on the separate answer sheet next to a series of slots or spaces in which the student is to indicate his response, each slot being marked with the letter or number corresponding to the alternative possible response appearing in the test booklet. Once the student has recorded his responses by marking the slots relating to the various answers offered with the question, the completed answer sheet is then either graded manually, or viewed by an optical scanning machine which automatically scores the responses on each sheet.

The format of the answer sheets is designed to meet the requirements of the optical scanning machine. These requirements are tailored to the needs of the specific scanning machine to be used —either the "IBM 805" or the "IBM 1230" or the "Digitek" or "MRC" machines. The machine's manufacturer recommends the size and the shape of the paper used for the answer sheet and the size and shape of the spaces in which the student is to record his response (rectangular boxes are most frequently suggested). The manufacturer provides master blanks as models or mock-up sheets for the design of any particular customer's answer sheet, and the grid area for these response spaces is limited and fixed by the "timing marks" printed on the side of each answer sheet. The maximum number of answer spaces and the distance between the spaces is fixed by the scanning machine's capabilities.

The designer of a given answer sheet fashions the balance of the answer sheet's content within the confines of the master blank just described. He decides where on the page the student shall record such information as his name, the date, his school, teacher, and whatever other specific information may be desired. He determines which of the possible response spaces shall be used and which left blank within the grid area. He directs the placing of the numbers corresponding to the numbered questions in the test booklet, and the letters or numbers indicating the multiple choice responses. Separate sections of the page may be titled to correlate with the appropriate sections in the test booklet. Each answer sheet is given a title and code number by the designer to identify it both to the person administering the examination and to the person responsible for its scoring by means of the optical scanning machine.

In the instant case plaintiff has obtained Copyright Registration Certificates for the editions of its SAT and Otis-Lennon examinations in their various grade levels and alternate forms. Initially, copyright was granted upon submission of the test booklet alone. More recently, including the 1964 SAT and 1967 Otis-Lennon editions here involved, copyright registration has followed multiple submissions consisting of test booklets, separate individual answer sheets, and key scoring guides. Subsequent to this litigation plaintiff has obtained copyright registration for single answer sheets alone, although none of these sheets is among the 10 copyrights allegedly infringed here.

Defendant is a manufacturer of quality charts for recording instruments and a printer of business forms. In 1968, both parties participated in the competitive bidding authorized by the Buffalo Board of Education for the printing and sale of 130,000 answer sheets for use in conjunction with SAT and Otis-Lennon examinations and for scoring on an IBM 1230 optical scanning machine. Prior to its decision to invite bids, the Buffalo Board of Education had purchased all the answer sheets it needed from the plaintiff. On the 1968 bids, plaintiff submitted a figure to the Board of $8,804.55 and the defendant a figure of $2,486.90. No other bids were received, and the contract was eventually awarded to the defendant, although the plaintiff advised both the defendant and the Buffalo Board of Education that in its view plaintiff alone had the right to provide such answer sheets.

Defendant designed its answer sheet on the master form provided for use with the IBM 1230 optical scanning machine. Defendant's designer, John F. Wynne, was provided copies of plaintiff's SAT and Otis-Lennon answer sheets by a representative of the Buffalo Board of Education. He used these sheets as source material in determining the content of defendant's answer sheet, i. e., the placement of response positions, numbers for questions and letters or numbers for responses, name of the examination, instructions for use of the answer sheet with the test booklet, and certain other details.

Defendant also included material different from that of plaintiff's answer sheet in response to requests of the staff of the Buffalo Board. For example, the student was asked to record information relating to his identification and ethnic grouping and qualification for the Head Start Program—which did not appear on plaintiff's answer sheets.

In designing the answer sheets Wynne made no use of the plaintiff's actual test booklets as distinct from plaintiff's answer sheets. He did use an IBM manual containing instructions on how to prepare material for use with its optical scanning machines.

THE ISSUES

While only the defendant has formally moved for summary judgment, and only as to the first cause of action of the amended complaint and the first counterclaim, nonetheless this court has "authority to grant summary judgment" for the non-moving party "in the absence of a cross-motion for summary judgment" in appropriate circumstances. Local 33, International Hod Carriers, etc. v. Mason Tenders, etc., 291 F.2d 496, 505 (2d Cir. 1961); Time, Inc. v. Bernard Geis Associates, 293 F.Supp. 130 (S.D. N.Y.1968); 6 Moore's Federal Practice § 56.12.

The claims here² give rise to three issues to be determined...