IP Law Daily, COPYRIGHT—D.N.J.: Are the answers derivative of the questions? A discovery dispute might provide a clue, (Jun 7, 2023)

By Matthew Hersh, J.D.

Discovery was also relevant to the question of fair use.

A maker of educational study solutions was entitled to discovery in connection with its argument that it was entitled to reprint a textbook publisher’s end-of-chapter questions along with its suggested answers to those questions, a special master has ruled. The special master, in granting the study tool maker’s motion to compel the discovery, reasoned that the textbook maker’s understanding of the custom and practice within the educational industry would inform the debate over whether the republication of the questions—and the allegedly infringing derivation of the answers from those questions—was protected by fair use (Pearson Education, Inc. v. Chegg, Inc., June 2, 2023, Linares, J.).

The lawsuit might bring to mind French philosopher Voltaire, who once said: “Judge a man by his questions rather than by his answers.” (Gertrude Stein, the legend has it, uttered a similar aphorism from her deathbed.) In this case, however, it is the answers and not the questions that are subject to judgment. Textbook publisher Pearson Education filed suit against Chegg, a self-styled maker of “study tools,” for copyright infringement. The complaint alleged, in short, that the study tool maker came up with—and marketed—the answers for the end-of-chapter questions to Pearson’s textbooks. Thus, the textbook publisher claimed, the answers infringed on its exclusive right to make derivative works. Moreover, the textbook publisher alleged, the study tools maker further infringed by reprinting the questions themselves along with its self-derived answers.

The particular dispute addressed in this opinion involved a discovery matter. The study tools maker sought discovery from the textbook publisher into the reasonableness of its solutions “and whether industry custom and practice informs that analysis.” When the publisher balked on that discovery, the study tools maker moved to compel, leading to this opinion.

Discovery. The special master granted the motion to compel. The motion revolved around the study tools maker’s claim that it was engaging in a fair use of the end-of-chapter questions when it reprinted the questions along with the textbook questions. The study tools maker claimed that “the solutions business” was entirely lawful and consistent with industry custom and practice. Thus, study tools maker contended, it was entitled into discovery into these industry customs and practices. Was the discovery warranted? The special master concluded that it was.

The special master’s opinion drew largely from Google LLC v. Oracle America, Inc., 141 S. Ct. 1183 (2021), a recent Supreme Court opinion addressing fair use. In that opinion, the Court found that it was fair use for Google to make use of certain lines of Oracle’s API software code in order to develop an operating system that was compatible with Oracle’s Java programming language. To be sure, the special master acknowledged, the opinion in Google v. Oracle did not specifically use the words “custom and practice.” Nonetheless, the special master reasoned, the doctrine of fair use is an “equitable rule of reason, whose determination the Supreme Court has repeatedly indicated depends on the facts of each case.” Here, the special master noted, Google’s use of the Java code, “as it enabled the creation of a new platform and allowed programmers to utilize their existing skills in new ways,” aligned with industry custom and practice as it “expressly recognized the established methods utilized by software developers.” The study maker’s fair use argument, the special master noted, whether or not meritorious in the end run, was along the same lines—and thus the discovery should be allowed.

The special master gave two additional reasons for compelling the discovery. First, the special master noted, the discovery was relevant to the “effect upon the potential market” of the use, an express fair use factor under the Copyright Act. In Google v. Oracle, the special master noted, the Court determined that Google’s use of the API code did not usurp or harm Oracle's market for licensing the Java platform. This assessment, the special master noted, “implicitly took into account the reasonableness of Google’s actions based on industry custom and practice.”

Moreover, the special master reasoned, the discovery was also relevant to the textbook publisher’s request for a permanent injunction—relief that is not automatically granted, but is evaluated on a case-by-case basis. If the study tools maker was able to establish that it is accepted industry practice for a third party to provide solutions to textbooks, “it could mitigate a charge of willful infringement and establish a custom relevant to determining whether the use was fair, thereby potentially negating any damages that would flow from ‘willful’ infringement.” Thus, for this reason too, the discovery was warranted.

The Case is No. 2:21-cv-16866-MEF-ESK.

Attorneys: Paul W. Kalish (Fox Rothschild LLP) for Pearson Education, Inc. Adam K. Derman (Chiesa Shahinian & Giantomasi PC) for Chegg, Inc.

Companies: Pearson Education, Inc.; Chegg, Inc.

Cases: Copyright TechnologyInternet NewJerseyNews