Newport-Mesa Unified v. State of Cal. Dept. of Ed.

• Decision Date: 24 May 2005
• Docket Number: No. SACV 04-512-GLT (ES).,SACV 04-512-GLT (ES).
• Citation: 371 F.Supp.2d 1170
• Parties: NEWPORT-MESA UNIFIED SCHOOL DISTRICT, Plaintiff, v. STATE OF CALIFORNIA DEPARTMENT OF EDUCATION et al., Defendants.
• Court: U.S. District Court — Central District of California

371 F.Supp.2d 1170

NEWPORT-MESA UNIFIED SCHOOL DISTRICT, Plaintiff, v. STATE OF CALIFORNIA DEPARTMENT OF EDUCATION et al., Defendants.

No. SACV 04-512-GLT (ES).

United States District Court, C.D. California, Southern Division.

May 24, 2005.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

John E. Hayashida, Parker & Covert, Tustin, Cynthia J. Larsen, Orrick Herrington & Sutcliffe (Intervenor Plaintiff), Sacramento, CA, for plaintiff.

Jack H. Anthony, Law Offices, Newport Beach, Rebecca Phillips Freie, Esq., (California Dept. Of Education), Sacramento, CA, for defendants.

ORDER ON CROSS-MOTIONS FOR SUMMARY JUDGMENT

TAYLOR, District Judge.

On apparent first impression, and contrary to the body of law on competitive admission testing, the Court holds a state statute requiring copies of test protocols to be provided to parents of special education students falls within acceptable "fair use" under federal copyright law, and the federal copyright law does not preempt the state statute.

I. BACKGROUND

California Education Code section 56504 provides parents of special education students may have copies of their child's test protocols.¹ Defendant Jack Anthony's son is a seven-year-old with special education needs who lives in Plaintiff Newport-Mesa Unified School District. Mr. Anthony requested copies of his son's test protocols before a scheduled Individualized Education Program ("IEP") meeting. The District declined to provide him with the copyrighted test protocol for the Woodcock-Johnson Test of Achievement III.

Mr. Anthony filed a complaint with Defendant California Department of Education, which found the District out of compliance with California Education Code section 56504 by failing to provide Mr. Anthony with records within five days of his request. The Department ordered the District to revise its policies and procedures on student record requests to comply with section 56504 and to send it a copy of the new written policy within sixty days. The Department denied a request for reconsideration of this compliance report. Plaintiff brought the matter to this Court, contending United States copyright law prevents it from providing copies of copyrighted test protocols.

The District requested a declaration of its rights under copyright law and an injunction to prevent the Department from enforcing its compliance report. At the Court's invitation, Harcourt Assessment Inc., the publisher and copyright owner of the Weschler Intelligence Scale for Children-III, and Riverside Publishing Co., the publisher and copyright owner of the Woodcock-Johnson III, intervened in the case to assert the copyright interest.²

After an early hearing, the parties held lengthy conferences to create a plan accommodating both interests: providing adequate information to special education parents under the state's section 56504, while safeguarding protected works under federal copyright law. Ultimately, the parties failed to work out a plan, and the Court now rules on all parties' cross-motions for summary judgment.

II. DISCUSSION

A. School District's Standing

Defendants challenge the District's standing to sue for a claimed copyright violation. The District sues in its own right as a party that fears violating the copyright law by distributing another party's copyrighted material. The Court is satisfied the District has standing to assert its own interest in avoiding civil liability for copyright infringement.³

To have standing to bring a declaratory relief action, the plaintiff must show "under all the circumstances of the case, there is a substantial controversy between parties having adverse legal interests, and the controversy is of sufficient immediacy and reality to warrant declaratory relief." Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1555 (9th Cir.1989). For copyright matters, this requirement is satisfied if the plaintiff has a "`real and reasonable apprehension'" it will be subject to liability if it continues to engage in allegedly infringing conduct. Id. at 1555-56 (quoting a patent case, Societe de Conditionnement v. Hunter Eng'g Co., 655 F.2d 938, 944 (9th Cir.1981), and applying it in the copyright context). The District has made this showing here.

The threat to the District of future injury is both "`real and immediate.'" Am.-Arab Anti-Discrimination Comm. v. Thornburgh, 970 F.2d 501, 507 (9th Cir.1991) (quoting City of Los Angeles v. Lyons, 461 U.S. 95, 102, 103 S.Ct. 1660, 75 L.Ed.2d 675 (1983)). If the Department enforces its compliance report, the District will have to give a copy of the test protocol to Mr. Anthony or lose state funding. If it distributes a copy, it risks being a copyright infringer, liable to the copyright owner for actual or statutory damages. 17 U.S.C. §§ 501, 504 (1996 & Supp.2005).

The damage threat is real and immediate, not merely hypothetical or conjectural. See Thornburgh, 970 F.2d at 507 (quoting O'Shea v. Littleton, 414 U.S. 488, 494, 94 S.Ct. 669, 38 L.Ed.2d 674 (1974)). The test publishers have intervened in this action and have asserted that giving a copy of test protocols to parents of special education students is not fair use. They have sent a letter to the District stating they would consider any failure to maintain confidentiality of their test materials as a contractual violation subjecting the District to liability. By intervening, the publishers have shown their willingness to litigate to protect their interests. See Virginia v. Am. Booksellers Ass'n, 484 U.S. 383, 392, 108 S.Ct. 636, 98 L.Ed.2d 782 (1988) (plaintiffs identified a sufficient threatened or actual injury when the challenged law was "aimed directly at plaintiffs, who, if their interpretation of the statute is correct, will have to take significant and costly compliance measures or risk criminal prosecution").

To have standing, the District need not first copy and distribute the test protocols and wait for the publishers to sue. Thornburgh, 970 F.2d at 508 ("It is not necessary that [it] currently be subject to the challenged provisions in order to have standing; nor need [it] actually commit the forbidden provisions" to establish standing). The District has standing now.

B. Fair Use

California Education Code section 56504 states, in the context of special education, "[t]he parent shall have the right and opportunity to examine all school records of the child and to receive copies pursuant to this section ... within five days after such request is made by the parent, either orally or in writing."⁴ At the same time, federal copyright law grants copyright owners the exclusive right to copy and distribute copies of copyrighted works. 17 U.S.C. § 106(1), (3) (1996). This case presents a clash of those two valid but competing interests. The central issue is whether the doctrine of "fair use" avoids preemption of California Education Code section 56504 by the federal copyright law.

The parties agree the test protocols sought by Mr. Anthony are "school records" under section 56504 because, after students write answers on the test protocols, they are identifiable with the students.⁵ The parties do not dispute the test protocols, other than the students' answers, are copyrighted works.

The small body of law on the topic of fair use of tests has uniformly indicated copying or distribution of copyrighted standardized tests is not "fair use" under federal copyright law. See Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624 (7th Cir.2003) (six Chicago Academic Standards Exams published in newspaper); Ass'n of Am. Med. Colleges v. Cuomo, 928 F.2d 519 (2d Cir.1991) (state statute required providing copy of standardized Medical College Admission Test ("MCAT"), a competitive admission test); Educ. Testing Services v. Katzman, 793 F.2d 533 (3d Cir.1986) (test preparation company copied tests to prepare students); Educ. Testing Service v. Simon, 95 F.Supp.2d 1081 (C.D.Cal.1999) (test preparation company copied tests to prepare students); Coll. Entrance Examination Bd. v. Pataki, 889 F.Supp. 554 (N.D.N.Y.1995) (state statute required providing copy of standardized competitive admissions tests); Ass'n of Am. Med. Colleges v. Mikaelian, 571 F.Supp. 144 (E.D.Pa.1983) (test preparation company copied tests to prepare students).

However, these cases involved standardized competitive admission testing where future test-takers were given access to the tests before taking them. For this and other reasons, the situation presented in this case is quite different, and this line of cases is not applicable here.

The Court finds giving a copy of the test protocols to parents of special education students falls within 17 U.S.C. § 107, commonly referred to as the "fair use doctrine."

Fair use is a mixed question of law and fact that may be decided on summary judgment. Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 1110, 1115 (9th Cir.2000).

If there are no genuine issues of material fact, or if, even after resolving all issues in favor of the opposing party, a reasonable trier of fact can reach only one conclusion, a court may conclude as a matter of law whether the challenged use qualifies as a fair use of the copyrighted work.

Id. (citing Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1150-51 (9th Cir.1986)).

Under the fair use doctrine, copying a copyrighted work "for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research," is a fair use of the copyrighted work and is not a copyright infringement. 17 U.S.C. § 107 (1996). The doctrine is necessary "to fulfill copyright's very purpose, `[t]o promote the Progress of Science and useful Arts ....'" Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (alterations in original) (quoting U.S. Const. art. I, § 8, cl. 8); see also Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539,...