Published by Thompson Bukher - April 4, 2013 - Firm News

Firm partner Tim Bukher has secured a summary judgment decision against top publishers Pearson Education, John Wiley & Sons, Cengage Learning and The McGraw-Hill Companies. The Southern District of New York ruled that that copying of unregistered derivative works does not infringe the copyrights of the registered originals when the derivatives reproduce no protected material from the originals. Pearson Education, Inc., et al. v. Frances, 11-cv-6081 (S.D.N.Y., April 3, 2013).


The plaintiffs brought action against the firm’s client for copyright infringement arising out of the alleged sales of instructors’ solution manuals (ISMs) to their registered textbooks. ISMs are supplementary materials containing answers to the problems in the textbooks which are given, freely, to college professors who teach the textbooks in their classes. ISMs are also easily available online to via Google search. Nevertheless, the publishers have sued parties who allegedly traded in these freely available documents.

Obstacles For Plaintiffs

Most of the ISMs were not independently registered for copyright by the publishers and the publishers, therefore, could not sue defendants on the theory that they infringed on the ISMs by trading copies. Instead, the publishers sued on the theory that reproduction of the ISMs infringed on the derivative work right of the registered textbooks (the Copyright Act provides authors with the exclusive right to prepare derivative works based on their existing copyrighted works).

The problem with this theory is that a vast majority of the ISMs did not contain any protected materials from their underlying textbooks. So in this case, Mr. Bukher successfully argued that 71 of the 74 claims against should be dismissed on summary judgment because 71 of the allegedly infringed ISMs did not reproduce anything protected (e.g., questions) from their respective textbooks. The Court agreed.

The Decision

Citing Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F.Supp. 2d 147, 157 (E.D.N.Y. 2002), aff’d, 354 F.3d 112 (2d Cir. 2003), the Court confirmed that “a suit for infringement [of an unregistered derivative work] may be maintained as to any protected element contained in the registered preexisting work, but not as to any element original to the unregistered derivative work.” Thus, alleged copying of unregistered ISMs that did not reproduce any protected element from the underlying textbooks did not constitute copyright infringement.

Tim Bukher leads the firm’s Intellectual Property and Internet & Data Practice Groups.


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