Autoskill v. Nat. Educational Support Systems
| Decision Date | 21 April 1992 |
| Docket Number | No. 91-960-M Civil,CV91-0740M.,91-960-M Civil |
| Citation | 793 F. Supp. 1557 |
| Parties | AUTOSKILL, INC., A Canadian corporation, Plaintiff, v. NATIONAL EDUCATIONAL SUPPORT SYSTEMS INCORPORATED, A New Mexico corporation, Defendant. |
| Court | U.S. District Court — District of New Mexico |
John R. Lansdowne, Robert N. Singer, Ross B. Perkal, Albuquerque, N.M., for defendant.
Robert Wooten Harris, Albuquerque, N.M., for plaintiff.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
This matter came on for consideration on the motion of Autoskill Inc. (Autoskill) for a preliminary injunction against National Educational Support Systems, Inc. (NESS) based upon copyright infringement and misappropriation of trade secrets. A hearing was held on this matter from December 12-17, 1991. Prior to this hearing, NESS filed suit in this court for declaratory judgment in case No. Civ. 91-740-M that its computer reading software program did not infringe upon Autoskill's reading software system and for other relief. A hearing was held on that matter in August, 1991. These cases have been consolidated. My Findings of Fact and Conclusions of Law relating to Autoskill's motion for preliminary injunction pursuant to Fed. R.Civ.P. 52 follow.
1. Autoskill is a Canadian Corporation, with its principal place of business in Ottawa, Canada, which sells software used in the teaching of reading.
2. NESS is a New Mexico Corporation with its principal place of business in Albuquerque, New Mexico which also sells software used in the teaching of reading.
3. The matter in controversy exceeds $50,000 exclusive of interest and costs, and is between a citizen of a State of the United States and a citizen of Canada.
4. This matter concerns claims of copyright infringement and trade secret appropriation.
5. As a Canadian national, Autoskill is entitled to claim copyright protection because the protected work was first published in 1985 at which time Canada was a party to the Universal Copyright Convention. 17 U.S.C. § 104(b)(2) ()
6. Autoskill claims that the NESSI Program copied substantially from the Autoskill Program with regard to its sequence, structure and organization; and also with regard to the "total concept and feel" of the Autoskill Program.
7. Autoskill makes no claim that NESS copied its source code. Autoskill therefore claims NESS violated 17 U.S.C. § 106 and other provisions of the Copyright Act.
8. Autoskill prays for preliminary and permanent injunctions pursuant to 17 U.S.C. § 502(a) to restrain what it believes to be further infringement. Autoskill requests impoundment of the NESSI Program during the pendency of the action as allowed under 17 U.S.C. § 503(a). Autoskill also asks for destruction of the NESSI Program, damages and attorneys fees.
9. Autoskill also claims NESS misappropriated its trade secrets and asks for a preliminary injunction restraining NESS' use of trade secrets.
10. Autoskill sells computer software used for testing, diagnosis and training in the area of reading (the Autoskill Program). NESS also sells computer software used in testing, diagnosis and training in the area of reading (the NESSI Program).
11. The Autoskill reading program was authored and developed by Dr. Ronald Trites (Trites) and Dr. Christina Fiedorowicz (Fiedorowicz). Edfour Education Consultants did the original computer programming for the Autoskill reading program.
12. Autoskill obtained a certificate of registration for its copyright of the Autoskill Component Reading Sub-skills Testing and Training Program numbered TX 1 742 632 effective January 27, 1986. In the section for indicating the nature of authorship the applicant stated "(h)irer of entire work comprising program and including manual."
13. No evidence exists showing that Autoskill knowingly misled the Copyright Office.
14. NESS had access to the Autoskill Program. In 1989, NESS was formed by Ron Neil (Neil) and Byron Manning (Manning). Ron Neil had been employed as salesperson for UNISYS and in that capacity he sold ICON computers with Autoskill software from March or April of 1986 until April 27, 1990. Neil admitted that he and Manning were thoroughly familiar with the Autoskill Program.
15. Negotiations for the purpose of obtaining a license to distribute Autoskill software took place between NESS and Autoskill from about June until November of 1989.
16. While license negotiations were going on with Autoskill, Neil began discussions with Lynn Beckwith (Beckwith) president of a software programming firm Automation Consultants Inc. (ACI) for the purpose of developing a reading software program for NESS. Programming of the NESS reading program began in January 1990 by ACI and Beckwith supervised the work.
17. ACI did the programming for the NESS software.
18. NESS specified the substantive and pedantic content of the NESSI Program to ACI.
19. Mr. Beckwith supervised the NESSI programming.
20. Mr. Beckwith had written on notes of initial conversations with Neil that the Ness software was "to be like AUTOSKILL" and was to be an "AUTOSKILL REPLACEMENT." These notes contained Beckwith's initial understanding of Neil's wishes concerning the NESSI Program.
21. Beckwith had indicated in October 1989 in his notes that "AUTOSKILL PAPERS ARE EXCELLENT" and he testified that prior to that time he had received documents concerning Autoskill's product and techniques.
22. Prior to programming the NESSI Program Beckwith reviewed a document which describes the Autoskill Program in detail.
23. Neil had demonstrated the Autoskill software to Beckwith prior to 1989.
24. The following description of the reading program is the "core" of the Autoskill Program which has been a part of the program since it was first used.
25. The Autoskill Program is a reading program that is based primarily upon the identification of three reading sub-types of students who are experiencing reading difficulties.
26. The three specific sub-types of reading deficits which were used in the Autoskill Program are the Type O, Type A, and Type S. Type O is the oral reading sub-type. Type A is the intermodal-associative deficit sub-type and Type S is the sequential deficit sub-type.
27. These sub-types were originally described in an article by Doerhing and Hoshko and a major book by Doerhing, Trites, Patel and Fiedorowicz.
28. The rationale behind the Autoskill Program is to improve the rapid automatic responses of the student to the training stimuli which are broken down in a particular way to train students who belong to the different sub-types.
29. Students are first tested in order to determine their sub-type. The tests are for oral reading, audio-visual matching, visual matching and visual scanning. The tests are presented in the above sequence. All the tests are administered with the aid of the computer with the exception of the visual scanning test which is a paper and pencil test.
30. The tests are presented according to thirteen different categories of word form types based upon different combinations of consonants and vowels and ranging from single letters to four letters. Words and non-words are used. Accuracy and speed of response are tested and recorded.
31. This baseline testing automatically results in a profile graph of student strengths and weaknesses. From these results the sub-type is determined by reference to specific criteria.
32. From the determination of student sub-types, a corresponding training program is assigned.
33. Training proceeds hierarchically from the simplest skills to the most complex. The training modules are the same three categories used for testing with the exception of the visual scanning. Sub-programs within each module are based upon thirteen categories of word form types. The oral reading module progresses from words to phrases to sentences to paragraphs and grade level is indicated.
34. In training, after each try, the student receives immediate feedback as to whether he is correct or incorrect. The computer records the speed of response.
35. In order to move on to the next sub-program the student must meet certain criteria for speed and accuracy. He must get 95% correct over three consecutive fifty trial blocks with speed no slower than 100 milliseconds.
36. Following each training block, students are presented with graphs which show the results in terms of accuracy and speed.
37. The Autoskill Program contains information and cannot be considered a blank form.
38. There is no evidence that the idea of testing, diagnosing and training the particular sub-types could be expressed in only one way.
39. The idea of testing, diagnosing and training the particular sub-types is capable of being expressed in more than one way.
40. The thirteen different categories or skill levels, based upon different combinations of vowels and consonants, which both programs utilize are dictated by the letter/sound relationships of the English language. Therefore, this aspect of the Autoskill Program is merged with the idea.
41. The "Silent Sentence" and "Silent Paragraph" components of the Autoskill Program are so standard in the teaching of reading that they cannot be afforded protection.
42. Autoskill contains the following tests: oral reading, auditory visual match, visual match and visual scanning. The NESSI Program contains the following tests: reading aloud, audio identification, visual identification and visual scanning. Although the tests for each program have different names, they employ the same techniques and are substantially the same.
43. The three main sections to each of the programs are testing or diagnosis, profile analysis and training.
44. Students progress...
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