NAT. CONF. OF BAR EXAMINERS v. MULTISTATE, ETC., 78 C 4217.

• Citation: 495 F. Supp. 34
• Decision Date: 31 July 1980
• Docket Number: No. 78 C 4217.,78 C 4217.
• Parties: NATIONAL CONFERENCE OF BAR EXAMINERS and Educational Testing Service, Plaintiffs, v. MULTISTATE LEGAL STUDIES, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

495 F. Supp. 34

NATIONAL CONFERENCE OF BAR EXAMINERS and Educational Testing Service, Plaintiffs, v. MULTISTATE LEGAL STUDIES, INC., Defendant.

No. 78 C 4217.

United States District Court, N. D. Illinois, E. D.

January 28, 1980.

On Motion to Dismiss Amended Counterclaim July 31, 1980.

Robert M. Newbury, Martin R. Greenstein, Chicago, Ill., for plaintiffs; Pattishall, McAuliffe & Hofstetter, Baker & McKenzie, Chicago, Ill., of counsel.

Paul F. Stack, John H. Shurtleff, Chicago, Ill., for defendant; Stack & Filpi, Chicago, Ill., of counsel.

DECISION

McMILLEN, District Judge.

Plaintiffs have filed a motion pursuant to F.R.C.P. 12(b)(6) to strike the First, Second and Third affirmative defenses in the defendant's answer and to dismiss the corresponding Counts I, II and III of defendant's counterclaim. Defendant has filed a motion for summary judgment on Count III of its counterclaim which would also dispose of Count I of the Complaint.

Count I of the Complaint seeks to enforce plaintiffs' copyright of the Multistate Bar Examination. Count II, alleging unfair competition, is not involved in the pending motions, and defendant has filed an answer denying the substantive allegations of both counts of the complaint. The counterclaim contains three counts, any one of which would defeat Count I of the complaint if successful.

Defendant seeks summary judgment on Count III of its counterclaim and Count I of the Complaint on the theory that 37 C.F.R. § 202.20(b)(4) and (c)(vi) exceed the statutory authority of the Register of Copyrights. These regulations were issued pursuant to 17 U.S.C. § 408(c), and defendant alternatively claims that this section of the statute is unconstitutional as being in excess of power granted to Congress by Article I, Section 8, Cl. 8 of the United States Constitution.

Although we are tentatively of the opinion that the statute and the regulations are both valid, a contrary decision would result in setting aside either the regulation or both the statute and the regulation. This would merely result in an advisory opinion insofar as the Register of Copyrights is concerned and would leave the validity of the regulation and statute in a questionable posture. Therefore, before acting on such a claim, we prefer to give the Register of Copyrights an opportunity to be heard, as was done, for example, in Boles v. Greeneville Housing Authority, 468 F.2d 476 (6th Cir. 1972) and Guesnon v. McHenry, 539 F.2d 1075 (5th Cir. 1976). Since the Register has not intervened in this case and may not even be aware of it, we will require the defendant to join her in her official capacity pursuant to F.R.C.P. 19(a).

Defendant's motion for summary judgment on Count III of its counterclaim and on Count I of the complaint is therefore entered and continued, to the extent that the validity of the foregoing statute and regulations are involved. For the same reasons, plaintiffs' motions to dismiss Count III of the counterclaim and to strike the Third Affirmative Defense in the answer are likewise entered and continued.

Remaining for decision are plaintiffs' motion to dismiss Counts I and II of the counterclaim and to strike the corresponding First and Second Affirmative Defenses in defendant's answer. These motions of the plaintiffs should be granted, for the following reasons.

Count I of the counterclaim and the First Affirmative Defense of the answer allege that the work done by plaintiffs in preparing and making available the Multistate Bar Examination is in effect the work of state bar examiners, and that state agencies do not have the statutory right to obtain copyrights. This is the law with respect to work of the United States government (17 U.S.C. § 105), but there is no such provision relating to state governments. The statute relating to copyrights, 17 U.S.C. § 102, is not restricted to private parties and there is no reason to believe that such a restriction should be implied. In fact, the opposite inference is required when only one specific governmental entity, the United States of America, is excluded from the protection of the Act.

Therefore, as a matter of law, defendant's First Affirmative Defense and Count I of its counterclaim do not state a claim upon which relief can be granted. Since this conclusion is based upon the statute, it is not necessary to determine whether the plaintiff corporations act only as agents of state governments or whether their customers, the bar examiners of the various states, are themselves state agencies.

Count II of the counterclaim and the Second Affirmative Defense in defendant's answer allege that the Multistate Bar Examination is not copyrightable under 17 U.S.C. § 102(a). This section provides in its entirety:

Subject matter of copyright: In general

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works (6) motion pictures and other audiovisual works; and

(7) sound recordings.

Defendant does not contend that the plaintiffs' examination is not original but contends it is not a "literary work" and not an "original work of authorship," as defined in the above section. Thus the plaintiffs' motion to strike is based on a question of statutory interpretation, not a question of fact. We find and conclude that bar examinations are "writings" prepared by "authors" which are copyrightable under Article I, Section 8, Cl. 8 of the Constitution of the United States. See Goldstein v. California, 412 U.S. 546, 561, 93 S.Ct. 2303, 2312, 37 L.Ed.2d 163 (1973).

The categories contained in subparagraphs (1) through (7) of the above section are not all-inclusive. On the contrary, the second sentence of subparagraph (a) merely states that works of authorship include the specified categories. The House Report which accompanied this statute in 1976 stated:

The use of the word "include" . . . makes clear that the listing is "illustrative and not limitative," and that the seven categories do not necessarily exhaust the scope of "original works of authorship" that the bill is intended to protect. Rather, the list sets out the general area of copyrightable subject matter, but with sufficient flexibility to free the courts from rigid or outmoded concepts of the scope of particular categories. . . . 1976 U.S. Code Cong. & Ad. News at 5659, 5666.

Thus as a matter of law, Count II does not state a claim upon which relief can be granted. Plaintiffs' motion to strike admits the well-pleaded allegations of Count II, but we do not understand defendant's allegations to be pleading any issue of fact, such as whether the plaintiffs' examinations are "original." If such an issue had been raised by a motion for summary judgment, our approach to this matter would be different, but defendant itself has treated plaintiffs' motion as raising only questions of law.

IT IS THEREFORE ORDERED, ADJUDGED AND DECREED that plaintiffs' motion to dismiss Count I and Count II of the counterclaim and to strike the First and Second Affirmative Defenses of defendant's answer is granted. Defendant is ordered to amend Count III of its counterclaim to make the Register of Copyrights a party defendant and to issue summons against him, within ten (10) days hereof.

ON MOTION TO DISMISS AMENDED COUNTERCLAIM

This is a complaint charging defendant with copyright infringement and unfair competition, to which the defendant has filed an Amended Counterclaim. The Amended Counterclaim in essence alleges that plaintiffs' copyright is invalid and unenforceable. The Register of Copyrights was joined in order to contest the validity of the regulations under which plaintiffs' copyright was obtained. The parties have filed motions to dismiss Count III of the Amended Counterclaim and the pleadings related thereto, all involving the validity of the Register's regulations.

Involved in the registration is the Multistate Bar Examination which has been produced by the plaintiff corporation and filed with the Register of Copyrights in such form that...