IP Law Daily, COPYRIGHT—D. Mass.: Copying 70% of dictionary for reading comprehension “textbook” would infringe, (Sep 30, 2014)

By Thomas Long, J.D.

An individual’s use of approximately 70% of the definitions in the Merriam-Webster’s Collegiate Dictionary, Eleventh Edition in his own “textbook dictionary” would infringe Merriam-Webster’s copyright, the federal district court in Boston has ruled (Richards v. Merriam-Webster, Inc., September 26, 2014, Talwani, I.). Merriam-Webster held a valid copyright in at least some of the material the individual sought to use, and the copying would not be protected by the fair use doctrine.

In 2012, James T. Richards began developing a “textbook dictionary,” intended to improve the reading comprehension of its users. Richards converted an electronic copy of Merriam-Webster’s Collegiate Dictionary, Eleventh Edition (“the Dictionary”) into a group of Microsoft Word files. He modified the dictionary entries by increasing the font size, underlining words for emphasis, increasing spacing between entries, redacting some etymological information, and inserting examples of how words might be used in sentences. Richards did not modify Merriam-Webster’s definitions. In total, Richards copied 109,725 of the Dictionary’s entries—approximately 70%. The remaining 30% were left out because Richards thought those words were rare and anachronistic and therefore less helpful to a textbook user.

In 2013, Richards asked Merriam-Webster for permission to use “virtually all the material” in its Dictionary for his planned textbook. Merriam-Webster declined to grant this permission. Richards then filed suit against Merriam-Webster seeking a declaration that publication of his textbook would not violate Merriam-Webster’s copyright. Merriam-Webster moved for summary judgment.

Validity of copyright. Merriam-Webster submitted a copyright registration certificate for the Dictionary, which was prima facie evidence that it held a valid copyright. In an attempt to counter this evidence, Richards argued that at least some portion of the Dictionary was composed of definitions copied from earlier dictionary versions that had entered the public domain.

However, even if this claim were accepted as true, the fact that some dictionary entries were in the public domain would not allow the court to grant Richards’ requested remedy, the court said. To issue a declaratory judgment, the court would have to find that Merriam-Webster had no claim of copyright infringement over any portion of the material Richards sought to use. Richards did not make that assertion; nor did he allege that the registration certificate was invalid. Therefore, his contention that some entries may have entered the public domain was an insufficient ground for a declaratory judgment of noninfringement of the Dictionary as a whole.

Fair use. Richards also asserted that his proposed reproduction of the Dictionary materials would be permitted under the fair use doctrine. The factors relevant to determining whether copying was protected by fair use were: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

Three of the four factors strongly disfavored a fair use determination, the court said. With regard to the nature of the copyrighted work, the definitions chosen by Merriam-Webster were the result of a creative process, which weighed against a fair use finding. As to the amount of the work used, Richards admitted to copying, largely verbatim, about 70% of the Dictionary, which contained over 225,000 definitions in total.

With regard to market effect, Merriam-Webster asserted that it derived income from advertising on the webpage of its online dictionary, the rate of which depended on the number of visits to the page. According to Merriam-Webster, providing access to nearly the entirety of the Dictionary on an alternative site would clearly impede the market share and profitability of its online dictionary. Richards did not dispute this claim.

Finally, the court turned to the purpose and character of Richards’ proposed use of the Dictionary materials. Richards argued that his textbook would be transformative because the changes in font size and formatting, the insertion of examples of words used in context, and the deletion of “unnecessary” words substantively changed the work. According to Richards, his changes made his textbook easier to use and converted the Dictionary from its original form into a reading comprehension tool.

Some level of transformation may have taken place, the court said. In addition, Richards had disavowed any attempt to profit or enhance his reputation from publication of his textbook. According to Richards, the textbook would be distributed online for free. However, because the other three factors strongly disfavored a determination of fair use, this factor did not make Richards’ proposed use permissible under the fair use doctrine, the court concluded.

Therefore, Merriam-Webster’s motion for summary judgment was granted.

The case is Civil Action No. 13-cv-13092-IT.

Attorneys: Douglas M. Eveleigh (Encyclopedia Britannica, Inc.) and Kevin V. Maltby (Bacon & Wilson, PC) for Merriam Webster, Inc.

Companies: Merriam Webster, Inc.

Cases: Copyright TechnologyInternet MassachusettsNews