College Entrance Examination Bd. v. Pataki

• Decision Date: 09 June 1995
• Docket Number: No. 90-CV-437.,90-CV-437.
• Citation: 889 F. Supp. 554
• Parties: COLLEGE ENTRANCE EXAMINATION BOARD; Graduate Management Admissions Council, Inc.; Test of English as a Foreign Language Policy Council; and Educational Testing Service, Plaintiffs, v. George E. PATAKI, as Governor of the State of New York; Thomas Sobol, as Commissioner of Education of the State of New York; Regents of the University of the State of New York; Martin C. Barell, as Chancellor, Board of Regents of the University of the State of New York; R. Carlos Carballada, as Vice Chancellor, Board of Regents of the University of the State of New York; Jorge L. Batista, Shirley C. Brown, Laura Bradley Chodos, Walter Cooper, Willard A. Genrich, Norma Gluck, Emlyn I. Griffith, Carl T. Hayden, Mimi Levin Lieber, Floyd S. Linton, Gerald J. Lustig, Louise P. Matteoni, J. Edward Meyer and Adelaide L. Sanford, as Members of the Board of Regents of the University of the State of New York; and Dennis C. Vacco, as Attorney General of the State of New York, Defendants.
• Court: U.S. District Court — Northern District of New York

889 F. Supp. 554

COLLEGE ENTRANCE EXAMINATION BOARD; Graduate Management Admissions Council, Inc.; Test of English as a Foreign Language Policy Council; and Educational Testing Service, Plaintiffs, v. George E. PATAKI, as Governor of the State of New York; Thomas Sobol, as Commissioner of Education of the State of New York; Regents of the University of the State of New York; Martin C. Barell, as Chancellor, Board of Regents of the University of the State of New York; R. Carlos Carballada, as Vice Chancellor, Board of Regents of the University of the State of New York; Jorge L. Batista, Shirley C. Brown, Laura Bradley Chodos, Walter Cooper, Willard A. Genrich, Norma Gluck, Emlyn I. Griffith, Carl T. Hayden, Mimi Levin Lieber, Floyd S. Linton, Gerald J. Lustig, Louise P. Matteoni, J. Edward Meyer and Adelaide L. Sanford, as Members of the Board of Regents of the University of the State of New York; and Dennis C. Vacco, as Attorney General of the State of New York, Defendants.¹

No. 90-CV-437.

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

June 9, 1995.

COPYRIGHT MATERIAL OMITTED

Sullivan & Cromwell, New York City, James H. Carter, Lori S. Sherman, of counsel, for plaintiff College Entrance Examination Bd.

Wilmer, Cutler & Pickering, Washington, DC, Thomas P. Olson, Susan P. Crawford, of counsel, for plaintiffs Graduate Record Examinations Bd., Test of English as a Foreign Language Policy Council, and Educ. Testing Service.

Stanford von Mayrhauser, General Counsel, Educ. Testing Service, Princeton, NJ.

Perkins & Coie, Washington, DC, John M. Devaney, of counsel, for plaintiff Graduate Management Admissions Council, Inc.

Nixon, Hargrave, Devans & Doyle, Rochester, NY, Harold A. Kurland, of counsel, for plaintiffs.

Dennis C. Vacco, Atty. Gen. for the State of N.Y., Albany, NY, David B. Roberts, Asst. Atty. Gen., of counsel, for defendants.

MEMORANDUM-DECISION AND ORDER

McCURN, Senior District Judge.

INTRODUCTION

Plaintiffs College Entrance Examination Board ("CEEB"), Graduate Record Examinations Board ("GRE"), Test of English as a Foreign Language Policy Council ("TOEFL") and Educational Testing Service ("ETS") (referred to collectively as "the moving plaintiffs") move for a preliminary injunction enjoining defendants (collectively referred to as "the State") from enforcing New York Education Law ?? 341 and 342 ("Standardized Testing Act" or "STA") against them during the pendency of this litigation.² As a basis for their motion, the moving plaintiffs contend that the STA conflicts with, and is therefore preempted by, the Federal Copyright Act of 1976. In addition, the moving plaintiffs assert that they are likely to succeed on the merits of their claim of copyright infringement and that they will suffer irreparable injury if the court does not grant them the preliminary relief they seek.³

BACKGROUND⁴

The moving plaintiffs, together with GMAC, commenced this suit in 1990 seeking a declaration that sections 341 and 342 of the STA ("the disclosure provisions") as applied to them, inter alia, conflict with, and therefore are preempted by, the Federal Copyright Act of 1976.⁵ In addition, plaintiffs sought a judgment permanently enjoining the State from enforcing sections 341 and 342 of the STA against them.

Upon commencing this action, the moving plaintiffs sought a preliminary injunction to enjoin enforcement of the STA against them. In support of that motion, the moving plaintiffs claimed that in the years between 1979 when the STA was enacted and 1990 they had curtailed the number of tests that they offered in New York while at the same time increasing the number of test dates nationwide because they did not want to subject additional tests to the STA's disclosure requirements. Moreover, the moving plaintiffs asserted that if the court granted their motion, they would increase the number of administrations of their tests in New York to national levels and would continue to disclose the same number of tests as they had in prior years.

Shortly before the present action was commenced, this court granted summary judgment to the plaintiff in Association of Am. Medical Colleges v. Carey, 728 F.Supp. 873 (N.D.N.Y.1990), reversed, permanent injunction vacated and remanded, 928 F.2d 519 (2d Cir.), cert. denied, 502 U.S. 862, 112 S.Ct. 184, 116 L.Ed.2d 146 (1991) ("AAMC I"), and permanently enjoined the State from enforcing sections 341 and 342 of the STA against it. At the time that the present action was commenced, an appeal was pending in AAMC I. In light of the status of that case, the State decided to enter into an agreement with regard to the temporary relief sought by the moving plaintiffs rather than risk the entry of a preliminary injunction. Thus, the motion for preliminary injunction was resolved by a stipulation in which it was agreed that during the 1990-1991 test year the moving plaintiffs would continue to disclose their tests in New York at the same rate as they had in the past. In addition, the moving plaintiffs would offer New York residents additional administrations of their tests with the understanding that these additional administrations would not be subject to the STA's disclosure requirements.⁶

The terms of the stipulation were to expire when all appellate proceedings were concluded in AAMC I. The Second Circuit reversed the judgment of this court, vacated the permanent injunction, and remanded the case for further proceedings on March 12, 1991. However, the court enjoined the State from enforcing the STA provisions against AAMC during the pendency of the remand proceedings. Association of Am. Medical Colleges, 928 F.2d 519, 526 (2d Cir.), cert. denied, 502 U.S. 862, 112 S.Ct. 184, 116 L.Ed.2d 146 (1991) ("AAMC II"). AAMC then applied for a writ of certiorari which the Supreme Court denied on October 7, 1991. Due to the fact that the appellate proceedings in AAMC I extended into the 1991-1992 test year, plaintiffs had a right, under the stipulation, to curtail the disclosure and filing of their test forms in that year. Only GMAC availed itself of that opportunity. While the moving plaintiffs continued to disclose tests at their historic rates, GMAC cut the number of disclosed tests in half, from four tests to two tests.

In November 1991, plaintiffs initiated discussions with the State to extend the stipulation regarding preliminary injunctive relief for a period of one more year. All of the plaintiffs, with the exception of GMAC, were willing to continue to disclose their tests at the same rates as they had done in the 1990-1991 test year. GMAC, on the other hand, was willing to disclose only two of the four tests that it would administer in the 1992-1993 test year. A stipulation extending the original compromise was executed by all of the plaintiffs except GMAC on December 24, 1991, and filed on January 21, 1992. GMAC then filed a motion for preliminary injunction on February 20, 1992.

Since GMAC sought exactly the same relief in its 1992 motion as the moving plaintiffs presently seek, it is important to understand what this court did and did not decide in that instance. Like the moving plaintiffs, GMAC asserted that "the only basis for finding that the disclosure requirements of the STA do not constitute infringement must be founded on the fair use doctrine provided for in section 107 of the Copyright Act." See College Entrance Examination Board v. Cuomo, 788 F.Supp. 134, 139 (N.D.N.Y.1992) (hereinafter referred to as "GMAC Decision"). Unlike the moving plaintiffs, however, GMAC rested its entire argument that the STA's disclosure requirements infringed upon its rights under the Copyright Act upon the fourth fair use factor. Although the court noted that it would discuss the other three factors, it concentrated its discussion, as GMAC had, on the fourth factor to determine whether or not GMAC had met its burden to demonstrate a likelihood of success on the merits of its copyright infringement claim. See id. at 140. After discussing each of the fair use factors, this court concluded that because "factor one favors the State, factor two favors GMAC, and factors three and four favor neither party, ... GMAC has not demonstrated a likelihood of success on the merits of its copyright infringement claim." Id. at 143.

Although this conclusion precluded a grant of preliminary relief, the court, nonetheless, went on to discuss whether GMAC had demonstrated that it would suffer irreparable injury if such relief were not granted. In this regard, GMAC argued, inter alia, that because it had established a prima facie case of copyright infringement; i.e., that the STA's disclosure requirements did not constitute fair use, it was entitled to a preliminary injunction. The court rejected this contention, however, based upon its previous finding that GMAC had not shown a likelihood of success on the merits of its claim of copyright infringement. Therefore, the court held that GMAC had failed to demonstrate that it would suffer irreparable injury if this court failed to grant its motion. Id. at 144.

Finally, although not necessary to its decision, this court noted that there were other equitable considerations which mitigated against the court granting GMAC's motion for a preliminary injunction. In this regard, the court stated that "delays in seeking preliminary injunction serve as a ground for denying such relief." GMAC Decision, 788 F.Supp. at 145. The court found that GMAC, as well as the other plaintiffs, had waited ten years before commencing a suit challenging the STA. See id. Moreover, once the suit had been filed, GMAC, by stipulation, voluntarily continued to comply with the disclosure requirements for an additional year and then agreed to disclose two of its four tests for another year before moving for preliminary relief. See id. In addition, the court found that GMAC's argument that it sought preliminary relief to protect future violations of its copyrights was the same argument...