IP Law Daily, COPYRIGHT—E.D.N.Y.: Online study guide provider’s copyright infringement claims against competitors dismissed, (Jun 28, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Court finds insufficient originality in plaintiff’s study guide modifications.

The federal district court in Brooklyn, New York, dismissed an online study guide provider’s copyright infringement claims against two individual defendants, ruling that the plaintiff failed to allege sufficient originality in the claimed copyrighted work. However, the court granted the plaintiff leave to file a second amended complaint to potentially address these deficiencies (FEMA Test Answers, LLC v. Smith, No. 1:22-cv-01108-MKB-CLP (E.D.N.Y. June 26, 2024)).

Background. The plaintiff, FEMA Test Answers, LLC, creates and markets online study guides for students preparing for the Federal Emergency Management Agency’s (FEMA) Independent Study Courses exams. The defendants, Forest Smith and Samien Bissessar are also involved in creating and selling similar study guides. The third-party defendant, David Pickelhaupt, owns copyright registration No. TXu001809215 (the '215 registration), covering specific modifications made to the FEMA study guides. Pickelhaupt granted an exclusive license to the plaintiff to use the Study Guide Additions, including the right to enforce the copyright.

The plaintiff initiated this lawsuit on March 1, 2022, alleging that Smith and Bissessar had infringed upon it copyrighted study guides by copying their format, which included highlighting correct answers and adding review references. The defendants allegedly marketed and sold competing study guides employing a similar method but highlighted answers in bold and blue rather than in bold and red. Smith moved to dismiss the amended complaint on October 13, 2023, arguing the lack of originality in the copyrighted work and contending that the study materials and their format were in the public domain and, therefore, not subject to copyright protection.

’215 registration. The asserted copyright registration included modifications identifying the correct answer for each FEMA question by highlighting it in bold and red and adding a reference next to each correct answer, pointing students to the location in the course materials that is the source for the correct answer.

Scope of copyright. The court examined whether the ’215 registration covered the unique aspects of FEMA Test Answers, LLC's study guides, specifically the format and added references. The court found that the registration covered only the identification of correct answers in red text but did not extend to the references added to the study guides. Smith supported his argument with documents from the U.S. Copyright Office, including the deposit copy, which did not indicate the inclusion of the references in the copyrighted material.

Originality requirement. Referencing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), the court observed that a work must possess at least some minimal degree of creativity to qualify for copyright protection. To claim copyright infringement, the court further noted that the plaintiff must prove ownership of a valid copyright and copying of original work elements. The court opined that highlighting correct answers in bold and red did not demonstrate the necessary level of creativity. Thus, the court ruled that the plaintiff failed to meet the originality requirement.

Compilation and creativity. The court noted that while compilations of preexisting materials can be protected if selected and arranged in a way that demonstrates originality, the plaintiff did not sufficiently allege such creativity. The court referenced Silverstein v. Penguin Putnam, Inc., 368 F.3d 77 (2d Cir. 2004) to elucidate the standards for originality in compilations and emphasize that routine or garden-variety selections do not qualify for copyright protection. The arrangement of FEMA’s multiple-choice questions and answers, merely collected and highlighted in a specific color, did not satisfy the originality requirement. The court cited Matthew Bender & Co. v. W. Publ’g Co., 158 F.3d 674 (2d Cir. 1998) to emphasize that creativity must involve non-obvious choices from available options.

Conclusion. The court concluded that the plaintiff did not adequately demonstrate the originality of the Study Guide Additions and, therefore, did not possess a valid copyright. Consequently, Smith's motion to dismiss was granted. However, the court provided the plaintiff the opportunity to amend its complaint.

The Case is No. 1:22-cv-01108-MKB-CLP.

Judge: Brodie, M.

Attorneys: Joel Howard Rosner (Tarter Krinsky & Drogin LLP) for FEMA Test Answers, LLC. Christie Rita Mcguinness (Saul Ewing LLP) for Forest Smith.

Companies: FEMA Test Answers, LLC

Cases: Copyright NewYorkNews