Educational Testing Service v. Simon

• Decision Date: 12 April 1999
• Docket Number: No. CV 97 7237 CBM (RZx).,CV 97 7237 CBM (RZx).
• Citation: 95 F.Supp.2d 1081
• Court: U.S. District Court — Central District of California
• Parties: EDUCATIONAL TESTING SERVICE, Plaintiff, v. Marilyn K. SIMON, Scott Bornstein, and Best-Prep, Defendants.

95 F.Supp.2d 1081

EDUCATIONAL TESTING SERVICE, Plaintiff, v. Marilyn K. SIMON, Scott Bornstein, and Best-Prep, Defendants.

No. CV 97 7237 CBM (RZx).

United States District Court, C.D. California.

April 12, 1999.

COPYRIGHT MATERIAL OMITTED

Thomas P. Olson (Wilmer, Cutler & Pickering), Washington, DC, for Plaintiff.

Carl R. Stevens and Addison K. Adams (Stevens & Kramer), Irvine, CA, and Mitchell Kamarck (Rosenfeld, Meyer & Susman), Beverly Hills, CA, for Defendants.

AMENDED [PROPOSED] ORDER AND PERMANENT INJUNCTION

CONSUELO BLAND MARSHALL, District Judge.

Based on the submission of the parties relating to Plaintiff's motion for summary judgment, the Court hereby makes the following findings of fact and conclusions of law:

A. FINDINGS OF FACT

1. Plaintiff ETS is a nonprofit educational corporation, chartered under New York law, that develops and administers standardized tests, including the MSAT. Declaration of Charlotte Solomon, attached to Plaintiffs' Memorandum in Support of Preliminary Injunction ("Original Solomon Decl."), ¶ 2.

2. The MSAT is a two-part examination consisting of multiple choice and essay questions that test general knowledge and skills that an elementary school teacher should possess in areas such as math, science, art, literature, and physical education. Id. The MSAT essay section contains approximately 18 to 20 questions. ETS currently offers the MSAT four times per year. Id.

3. The MSAT is relied on by the California Commission on Teacher Credentialing ("CCTC")—the state entity responsible for licensing teachers in the state of California —in determining who may teach children in California's kindergarten through sixth grade public school classrooms. Id.

4. First drafts of MSAT essay questions fall into two categories: (a) those developed by ETS employees within the scope of their employment and (b) those developed by individuals who are not ETS employees pursuant to a written contract stating that they are "works for hire" (i.e., in which ETS owns the copyright), and that ETS will be the exclusive owner of all rights in the items. Supplemental Declaration of Charlotte Solomon, attached to Plaintiffs' Reply Memorandum in Support of Preliminary Injunction ("Solomon Reply Decl."), ¶ 3.

5. ETS invests substantial effort in developing MSAT questions and test forms. Original Solomon Decl., ¶ 2.

6. Each draft question undergoes rigorous reviews and analyses, including an extensive sensitivity review process designed to eliminate language or content that might offend or otherwise be inappropriate for a subgroup of the test-taking population, and each is "pretested" with the relevant population to ensure that it functions properly before being included in a test. Id. at ¶ 6. In some cases, test questions are revised based on the results of pretesting. Id.

7. Once the questions are finalized, ETS expends further time and resources in compiling them into test forms and ensuring that the combination of questions on each form tests the correct balance of subject areas and represents the appropriate level of difficulty. Id. at ¶ 7.

8. ETS must also create scoring guides and training to score each question. Id.

9. As is common (and necessary) practice in the standardized testing industry, ETS sometimes reuses MSAT test forms and test questions from administration to administration. See Educational Testing Serv. v. Katzman, 793 F.2d 533, 544 (3d Cir.1986) (ability to reuse SAT and Achievement Test questions and forms is "`central to the essence of plaintiff's operations'"); Association of Am. Med. Colleges v. Mikaelian, 571 F.Supp. 144 (E.D.Pa.1983) (reuse of Medical College Admission Test forms), aff'd mem., 734 F.2d 3 (3d Cir.1984); Educational Testing Service v. Miller, 1991 Copr. L. Dec. ¶ 26,811, 21 U.S.P.Q.2d 1467, 1991 WL 212181 (D.D.C.1991) ("the 1988 Foreign Service Exam contained 41 questions that appeared in the 1987 Exam").

10. The reasons for reuse of MSAT test forms and questions include equating (i.e., ensuring that the same score on different forms of the MSAT has the same meaning) and cost reduction. Original Solomon Decl., ¶ 2.

11. ETS registers its MSAT test forms with the U.S. Copyright Office under special procedures for "secure tests," which ensure that security of the tests will not be jeopardized by making them available to the public. 37 C.F.R. § 202.20(c)(vi) (1999).

12. The agreement between ETS and the California Commission on Teacher Credentialing—the entity for whom ETS administers the MSAT examination—specifies that "all test questions, test forms, and related test materials ... that are developed or provided by ETS ... shall be owned and copyrighted by ETS." CCTC Agreement (attached as Exhibit C to Solomon Reply Decl.), at 12.

13. Since approximately 1982 or 1983, defendants Simon and Bornstein have jointly offered test preparation seminars under the name "Best-Prep" (see Deposition of Scott J. Bornstein, excerpts attached as Exhibit A to the Declaration of Thomas Olson submitted with Plaintiff's Memorandum in Support of Summary Judgment ("Bornstein Dep. Tr."), at 9), and, since approximately 1994, they have jointly offered preparation courses specifically aimed at preparation for the MSAT examination, see Bornstein Dep. Tr. at 69. See also Best-Prep Course Announcements, attached as Exhibit A to the Declaration of Thomas Olson submitted with Plaintiff's Memorandum in Support of Preliminary Injunction ("Olson P.I. Decl."), at B000780-784, B000348, B000738 (listing Simon and Bornstein as principals of Best-Prep); Letter from Patti Yee, National University, to Scott Bornstein, Aug. 14, 1996 (Olson P.I. Decl. Exh. A), at B000796 ("I am very excited to have you and Marilyn here on site to do these prep courses"); Letter from Scott Bornstein to Steve Brandick, Jan. 17, 1997 (Olson P.I. Decl. Exh. A), at B000797 ("Dr. Simon and I would be very pleased to work with you in providing our MSAT program to your students. ... The instruction is conducted personally by Dr. Simon and myself. ..."); Agreement to Teach, UC-Riverside, with Marilyn Simon (1997) (Olson P.I. Decl. Exh. A), at S00234 ("The team of Scott J. Bornstein and Marilyn K. Simon, co-founders of Best-Prep, conducts test preparation for UC campuses as well as 28 school districts in seven states."); Letter from Scott J. Bornstein, Co-Founder, Best-Prep, to Alan Crawford, Cal State Universities, Sept. 3, 1997 (Olson P.I. Decl. Exh. A), at B000802 ("Dr. Simon and I would be very pleased to work with you in providing our MSAT program ... It is our understanding that Best-Prep will be paid a per person basis of $117.50 for the first 50 students and $65 for each additional student thereafter."); Amendment to Personal Services Contract Between Los Angeles Unified School District and Best-Prep (Olson P.I. Decl. Exh. A), at B000804 (listing Bornstein's home address for Best-Prep) (emphasis added in each case).

14. Simon and Bornstein are co-founders of Best-Prep. Although Simon prepared all of the written materials containing the questions, they sell their services as a combined package, share the revenues from their common efforts, and carefully coordinate their MSAT preparation activities as a unified "team." See Bornstein Dep. Tr. 78 (coordination of teaching activities); Deposition of Marilyn K. Simon, excerpts attached as Exhibit B to Olson Decl. submitted with Plaintiff's Memorandum in Support of Summary Judgment ("Simon Dep. Tr."), 53-58 (agreement regarding division of income); id. at 36 (Simon and Bornstein have signature authority on Best-Prep bank account). See also Best-Prep Course Announcements (Olson P.I. Decl. Exh. A), at B000781 (describing Bornstein as "co-founder" of "Best-Prep"); Bornstein Biography (Olson P.I. Decl. Exh. A), at B000778 (same).

15. Between 1995 to 1997, Simon, Bornstein, and/ or Best-Prep entered into approximately twenty-five contracts with universities and other clients to provide their joint MSAT preparation course. Bornstein Dep. Tr. 75.

16. Part of defendants' course materials consists of a workbook containing a section entitled "MSAT—Hot Questions" or "Hot Essay Q & A á la MSAT." Declaration of Gregory Avak, attached to Plaintiff's Memorandum in Support of Preliminary Injunction ("Avak Decl."), ¶ 3; Original Solomon Decl., ¶¶ 3-4 & Exhs. B & C. These questions are substantially similar to actual MSAT questions that may be used again and which were obtained from former students who have recently taken the MSAT. Avak Decl., ¶ 3; Declaration of Anthony T. DiBari, attached to Plaintiffs' Reply Memorandum in Support of Preliminary Injunction ("DiBari Decl."), ¶ 3. Defendants also provide students with sample answers to the MSAT questions that they learn of from their students.

17. Defendants learn of MSAT questions used on past exams relayed to them by students who have recently taken the MSAT exam. See Bornstein Dep. Tr. 126, 127; Simon Dep. Tr. at 200 ("During the course, students will share what they remember from the test."); id. at 211-12 (Q: "Your students, over and over and over again, from 1992 to the present, have told you, to the best of their recollection, the— the nature and the form and the substance of the questions on the actual MSAT, have they not?" A: "Students have talked about what was on the test, yes."); id. at 212-13 (Q: "Have your students ever ... told you in writing what the subject matter was on any question or questions on the MSAT?" A: "I believe so."); id. at 213-14 (when asked for a best estimate regarding the number of times Simon received written information with respect to the subject matter of the MSAT, responding "I would say that happens frequently,"); id. at 216 ("Students would provide me frequently with written information saying that the hurricane question was on the test."); id. at 321 (admitting that Simon told class that she obtained test questions from students who recalled questions by using their memory).

18. Defenda...