King-Devick Test Inc. v. Nyu Langone Hosps.
| Decision Date | 02 January 2019 |
| Docket Number | 17-CV-9307 (JPO) |
| Parties | KING-DEVICK TEST INC., Plaintiff, v. NYU LANGONE HOSPITALS, et al., Defendants. |
| Court | U.S. District Court — Southern District of New York |
Plaintiff and Counterclaim-Defendant King-Devick Test Inc. ("King-Devick") has filed the instant lawsuit against Defendants and Counter Claimants New York University, NYU Langone Hospitals, Steven L. Galetta, and Laura J. Balcer (collectively, "Defendants"), claiming among other things that Defendants have infringed its registered copyright in an eye-movement test that can aid in detecting concussions. Defendants, in turn, have asserted several counterclaims, one of which seeks a declaration that King-Devick's copyright is invalid. (Dkt. No. 52 ("CC") ¶¶ 73-85.) King-Devick now moves to dismiss that counterclaim for failure to state a claim. (Dkt. No. 35.) For the following reasons, the motion is denied.
For purposes of resolving King-Devick's partial motion to dismiss, the Court assumes the truth of the factual allegations in Defendants' counterclaim complaint.1 See Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 174-75 (1965).
In 1976, two students at the Illinois College of Optometry, Alan King and Steve Devick, developed an eye-movement test, known as the King-Devick test (the "K-D Test"), as part of a senior project. (CC ¶¶ 2, 19.) The K-D Test, which asks a participant to read strings of single-digit numbers from left to right off a series of three successively administered test cards as rapidly and accurately as possible, can be used to detect eye-movement impairments linked to dyslexia or abnormal brain function. (CC ¶¶ 2, 18-20; see also Compl. ¶¶ 9-10.)
While creating the K-D Test, King and Devick studied the Pierce Saccade Test, an earlier eye-movement test developed in 1972. (CC ¶¶ 19, 25.) Like the K-D Test, the Pierce Saccade Test consists of: (1) a demonstration card containing five rows of single-digit numbers joined by arrows that direct the participant to read from left to right and top to bottom; (2) one test card that contains multiple rows of single-digit numbers, with the digits in each row connected by a horizontal line; (3) a second test card that is similar to the first, but that has no horizontal lines connecting the digits in each row; and (4) a third test card that is similar to the second, but in which the horizontal rows of unconnected digits are vertically spaced closer together. (CC ¶ 21.)
The K-D Test, though, differs in some ways from the Pierce Saccade Test. For example, the K-D Test changes the Pierce Saccade Test by changing the number of horizontal rows contained on each test card and by increasing the number of digits contained within each row. (CC ¶ 22.) A side-by-side visual comparison of the two tests is reproduced below2:
Pierce Saccade Test
Image materials not available for display.
Image materials not available for display.
(CC ¶ 21.)
According to Defendants, King and Devick also drew inspiration from a reading-speed test, known as the Gilbert Test, which was developed in 1953. (CC ¶ 23.) The spatial arrangement of single-digit numerals on one of the Gilbert Test's test cards resembles the arrangement of the numbers in the K-D Test's second and third test cards. (Id.) A comparison of the relevant Gilbert Test card and the K-D Test's third test card is reproduced below:
Gilbert Test, Digit Card 3
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King-Devick Test, Test III Card
Image materials not available for display.
(Id.)
After King and Devick completed their senior project in March 1976, they allowed the Illinois College of Optometry Press to publish their final paper—with the K-D Test attached asan appendix—and to place at least four copies in the school library. (CC ¶¶ 26-29.) Over the next few years, the K-D Test drew attention from New York-based researchers as a possible tool for detecting visual impairments in schoolchildren (CC ¶¶ 31-34), and on or around August 23, 1983, King and Devick successfully registered the K-D Test with the United States Copyright Office. (CC ¶¶ 37-40; Dkt. No. 41-1 at 2.) In doing so, Defendants contend, King and Devick intentionally failed to disclose their reliance on the Pierce Saccade and Gilbert Tests, as well as their prior publication of the K-D Test without a notice of copyright in 1976. (CC ¶ 38.)
Thereafter, Devick pursued no further research associated with the K-D Test until 2009, when he read an article about a New Zealand study that connected head concussions to certain eye-movement impairments. (CC ¶¶ 43-44.) After discussing the article with Len Messner, Director of the Illinois Eye Institute, Devick grew interested in the K-D Test's potential as a screening tool for detecting concussions in injured athletes. (CC ¶¶ 44-45.) Messner identified Defendants Dr. Steven Galetta and Dr. Laura Balcer (together, the "Doctors")—both at that time neurology professors at the University of Pennsylvania—as two of the nation's leading neuro-ophthalmologists, and in 2010 Messner approached the Doctors about the possibility of their studying the K-D Test. (CC ¶¶ 46, 48.)
After meeting Devick, the Doctors agreed to conduct two studies to assess the K-D Test's ability to screen for head trauma. (CC ¶ 48-49.) To facilitate these studies, Devick provided the Doctors with free copies of the K-D Test and related materials, along with raw data that he and his colleagues had previously collected. (CC ¶¶ 50-51, 53.) The Doctors' initial studies showed the K-D Test to be potentially useful in concussion detection, and over the next few years the Doctors began to study the K-D Test's possible applications to other neurological disorders. (CC¶¶ 51, 58.) During the course of these studies, the Doctors continued to use and distribute the materials Devick had provided. (CC ¶ 60.)
As their studies proceeded, the Doctors started to develop their own eye-movement test, known as the Mobile Universal Lexicon Evaluation System ("MULES"). (CC ¶¶ 63-64.) Rather than asking a participant to read numbers off a series of test cards, as the K-D Test does, MULES asks the participant to name a series of colored images. (CC ¶¶ 64-65.) The Doctors began to test MULES in 2016, and toward the end of that year they published an article assessing the test as an alternative to the K-D Test for use in concussion screening. (CC ¶¶ 66-67.)
On November 28, 2017, King-Devick, a Delaware company that now holds the copyright in the K-D Test, initiated this lawsuit against the Doctors and their present employers, New York University and NYU Langone Hospitals.3 (Dkt. No. 1; see also Compl. ¶¶ 1, 4-5, 11.) After Defendants moved to dismiss certain of King-Devick's claims (Dkt. No. 24), King-Devick mooted the motion by filing a First Amended Complaint (Dkt. No. 27; Apr. 2, 2018 Minute Entry). The case proceeded to discovery, and King-Devick amended the complaint once more to ensure that it named the proper institutional defendants. (Dkt. Nos. 40-41.) The resultant, presently operative Second Amended Complaint raises a number of claims against Defendants, including a claim that Defendants have infringed King-Devick's copyright in the K-D Test by using and distributing the test in the course of developing MULES. (Compl. ¶¶ 88-97.)
On May 31, 2018, Defendants answered the Second Amended Complaint and asserted three counterclaims, one of which seeks a declaratory judgment that King-Devick's registeredcopyright in the K-D Test is invalid. (CC ¶¶ 73-85.) King-Devick has moved to dismiss this counterclaim pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. (Dkt. No. 35.) The motion has been fully briefed and is fit for resolution. (Dkt. Nos. 36, 38-39.)
To survive a motion to dismiss, Defendants' counterclaim complaint "must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Defendant's allegations, in other words, must "allow[] the court to draw the reasonable inference" that King-Devick's copyright is invalid. Id. To determine whether Defendants have cleared this hurdle, the Court may consider not only the counterclaim itself but also any "documents attached to the [counterclaim] as exhibits, and any documents incorporated in the [counterclaim] by reference." Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010) (quoting McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 191 (2d Cir. 2007)). In doing so, however, the Court is "mindful that a motion to dismiss does not involve consideration of whether 'a [claimant] will ultimately prevail' on the merits, but instead solely 'whether the claimant is entitled to offer evidence' in support of his claims." Id. at 65 (quoting Villager Pond, Inc. v. Town of Darien, 56 F.3d 375, 378 (2d Cir. 1995)).
Under the Copyright Act of 1976, 17 U.S.C. § 101 et seq., King and Devick's 1983 registration of a copyright in the K-D Test (see Dkt. No. 41-1 at 2) creates a rebuttable presumption that the copyright is valid, see 17 U.S.C. § 410(c); Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997). The counterclaim presently at issue, though, alleges that the copyright is invalid notwithstanding that presumption for three reasons. First, Defendants allege that the K-D Test is insufficiently original to merit copyright protection. (CC ¶ 77.) Second,Defendants allege that the K-D Test is ineligible for copyright protection due to its publication without notice of copyright in 1976. (CC ¶ 78.) And third, Defendants allege that King and Devick secured their registered copyright fraudulently, by withholding material information from the Copyright Office in...
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