Logical Operations Inc. v. 30 Bird Media, LLC et al
Filing
76
DECISION AND ORDER granting in part and denying in part 72 Defendants' Motion for Summary Judgment. With respect to Logical's claim for copyright infringement, Defendants' motion is granted, but with respect to Defendants' counterclaim for attorney's fees, their motion is denied without prejudice. SO ORDERED. Signed by Hon. Frank P. Geraci, Jr. on 12/17/2018. (MFM)
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
LOGICAL OPERATIONS INC.,
Plaintiff,
Case # 15-CV-6646-FPG
v.
DECISION AND ORDER
30 BIRD MEDIA, LLC, et al.,
Defendants.
INTRODUCTION
Logical Operations Inc. (“Logical”) brings suit for copyright infringement against 30 Bird
Media, LLC (“30 Bird”) and three of its officers—Adam A. Wilcox, Benham Tchoubineh, and
Alireza Choubineh (the CEO, President, and CFO of 30 Bird, respectively). Logical and 30 Bird
are in the business of developing and publishing instructional materials. At issue in this case are
the parties’ competing lines of instructional manuals for certain computer programs. Logical
alleges that Defendants designed their materials to mimic Logical’s series and, by doing so,
infringed on Logical’s copyrights. ECF No. 59. Presently before the Court is Defendants’ motion
for summary judgment. ECF No. 72. Plaintiff opposes the motion. ECF No. 74. For the reasons
that follow, Defendants’ motion is GRANTED IN PART, in that summary judgment is granted on
Logical’s claim of copyright infringement but denied without prejudice on Defendants’
counterclaim for attorney’s fees. 1
1
Defendants requested a hearing on the motion, ECF No. 75-9, but the Court concludes that a hearing is
unnecessary.
1
LEGAL STANDARD
Summary judgment is appropriate when the record shows that there is “no genuine dispute
as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). Disputes concerning material
facts are genuine where the evidence is such that a reasonable jury could return a verdict for the
non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In deciding
whether genuine issues of material fact exist, the court construes all facts in the light most
favorable to the non-moving party and draws all reasonable inferences in the non-moving party’s
favor. See Jeffreys v. City of New York, 426 F.3d 549, 553 (2d Cir. 2005). However, the nonmoving party “may not rely on conclusory allegations or unsubstantiated speculation.” F.D.I.C.
v. Great Am. Ins. Co., 607 F.3d 288, 292 (2d Cir. 2010) (quotation omitted).
BACKGROUND
Consistent with the applicable standard of review, the following narrative consists of the
undisputed facts and the disputed facts taken in the light most favorable to Logical. See Smolen v.
Wilkinson, No. 11-CV-6001, 2013 WL 5417099, at *1 (W.D.N.Y. Sept. 26, 2013).
Logical develops, markets, and distributes training courseware for, among other things,
various computer programs. At issue in this case are the “Axzo ILT Series line of . . . instructional
manuals” for Microsoft Excel, Outlook, and Word. ECF No. 72-28 ¶ 28. Logical obtained the
copyrights to these manuals when it acquired Axzo Press, the original publisher, in 2014. 2 Id. ¶
29; see also ECF No. 74 at 9. The manuals in the Axzo ILT Series are intended to be used “for
in-class instruction by an instructor to a student” and are sold in instructor and student versions.
2
The entire genealogy of the Axzo ILT Series is more complex, but those details do not need to be recounted
for present purposes. See ECF No. 74 at 6-9 (discussing history of Axzo ILT Series).
2
ECF No. 72-28 ¶ 33. The manuals are intended to prepare students for “specially designed
Microsoft certification exams.” Id.
Benham Tchoubineh founded 30 Bird in March 2014. Initially, 30 Bird did not publish
instructional materials for the Microsoft suite of products. ECF No. 74-2 at 23. But, as Logical
describes the sequence of events, 30 Bird undertook substantial efforts to develop a competing line
of Microsoft Office coursework beginning in January 2015. At that time, 30 Bird hired Adam
Wilcox as CEO and made him part owner of the company. ECF No. 72-28 ¶ 4. Wilcox had
previously worked at Axzo Press before its acquisition by Logical, and he had been a designer on
the Axzo ILT Series. Over the next months, 30 Bird went on to hire a number of former Logical
and Axzo Press employees. See ECF No. 74 at 9-10. The crux of Logical’s claim is that 30 Bird’s
designers had access to and used the Axzo ILT Series as the model for 30 Bird’s series,
substantially replicating its design, look, and feel.
In July 2015, Logical learned that 30 Bird was creating competing manuals, and it brought
suit in October of that year.
Logical brings one claim of copyright infringement against
Defendants. ECF No. 59 at 9-11. Defendants have raised a counterclaim requesting attorney’s
fees under 17 U.S.C. § 505.
DISCUSSION
Defendants seek judgment as a matter of law on both Logical’s claim and their
counterclaim for attorney’s fees. Because Defendants develop no argument as to why they are
entitled to attorney’s fees under 17 U.S.C. § 505, the Court denies their motion on that issue
without prejudice. See Baker v. Urban Outfitters, Inc., 431 F. Supp. 2d 351, 357 (S.D.N.Y. 2006)
(stating that “[a]n award of attorney’s fees and costs is not automatic” under § 505 and listing
factors that a court should consider).
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Turning to the claim for copyright infringement, Defendants argue, among other things,
that summary judgment is appropriate because Logical cannot demonstrate that the 30 Bird
manuals are substantially similar to the Axzo ILT series. More specifically, Defendants contend
that the similarities between the competing series largely relate to unprotected elements.
Defendants assert that once those unprotected elements are filtered out, there is no “room to find
substantial similarity.” ECF No. 72-29 at 11.
While not conceding that many of the similarities between 30 Bird’s and Logical’s manuals
relate to unprotected elements, Logical focuses its opposition more on the argument that the Court
should compare the works based on their total concept and feel, as opposed to dissecting the works
into their component parts. Logical argues that under that standard, Defendants are not entitled to
summary judgment.
In analyzing this dispositive issue, the Court begins by setting forth the relevant law. It
then proceeds to analyze the elements of Logical’s and 30 Bird’s works that purportedly give rise
to a claim for copyright infringement. Finally, the Court addresses the question of total concept
and feel, concluding that Defendants are entitled to summary judgment.
I.
Relevant Law
To prove a claim of copyright infringement, a plaintiff must establish three elements: “1)
that his work is protected by a valid copyright, 2) that the defendant copied his work, and 3) that
the copying was wrongful.” Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 100 (2d Cir. 2014).
The third element—wrongful copying—is at issue here.
a. Wrongful Copying
Wrongful copying exists “where two works are ‘substantially similar.’” Laspata DeCaro
Studio Corp. v. Rimowa GmbH, No. 16 Civ. 934, 2018 WL 3059650, at *3 (S.D.N.Y. June 20,
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2018). The Second Circuit has articulated three standards that bear on the question of substantial
similarity. “In most cases, the test for substantial similarity is the ‘ordinary observer test,’ which
queries whether an average lay observer would recognize the alleged copy as having been
appropriated from the copyrighted work.” Hamil Am. Inc. v. GFI, 193 F.3d 92, 100 (2d Cir. 1999);
see also Zalewski, 754 F.3d at 102 (stating that the question is whether “the ordinary observer,
unless he set out to detect the disparities, would be disposed to overlook them, and regard their
aesthetic appeal as the same”). “Although dissimilarity between some aspects of the works will
not automatically relieve the infringer of liability, numerous differences tend to undercut
substantial similarity.” Disney Enters., Inc. v. Sarelli, 322 F. Supp. 3d 413, 442 (S.D.N.Y. 2018)
(internal citations and quotation marks omitted); see Williams v. Crichton, 84 F.3d 581, 588 (2d
Cir. 1996) (stating that no liability attaches “when the similarities between the protected elements
of plaintiff’s work and the allegedly infringing work are of ‘small import quantitatively or
qualitatively’”).
The second standard is the “more discerning observer” test, which is used when a work is
not “wholly original” and “incorporates elements from the public domain.” Boisson v. Banian,
Ltd, 273 F.3d 262, 272 (2d Cir. 2001); see also Zalewski, 754 F.3d at 102. That test requires
“substantial similarity between those elements, and only those elements, that provide
copyrightability to the allegedly infringed work.” Belair v. MGA Ent., Inc., 503 F. App’x 65, 66
(2d Cir. 2012) (summary order) (internal quotation marks and brackets omitted). That is, “where
the allegedly infringed work contains both protectible and unprotectible elements, the test must be
more discerning, excluding the unprotectible elements from consideration.” Lynx Ventures, LLC
v. Miller, 45 F. App’x 68, 69 (2d Cir. 2002) (summary order) (internal quotation marks omitted).
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The third standard—known as the “total concept and feel” standard—operates to clarify
and limit the “more discerning observer” test. Taken to an extreme, the “more discerning
observer” test could be understood to require a court to “dissect the works at issue into separate
components and compare only the copyrightable elements.” Boisson, 273 F.3d at 272. But a
“piecemeal comparison” of each copyrightable element, viewed in isolation, may fail to fully
account for the author’s original expression. Mena v. Fox Entertainment Grp., Inc., No. 11 Civ.
5501, 2012 WL 4741389, at *5 (S.D.N.Y. Sept. 29, 2012). For example, a street map consists of
a number of unprotectible, public-domain facts—“such as street locations, landmasses, bodies of
water and landmarks, as well as color”—but through the creative arrangement, structure, and
organization of those facts, the street map may warrant protection under copyright law. Boisson,
273 F.3d at 272-73. Any analysis of substantial similarity must therefore account for the fact that
copyright infringement may result “not only through literal copying of a portion of [a work], but
also by parroting properties that are apparent only when numerous aesthetic decisions embodied
in the plaintiff’s work of art—the excerpting, modifying, and arranging of public domain
compositions, if any, together with the development and representation of wholly new motifs and
the use of texture and color, etc.—are considered in relation to one another.”
Tufenkian
Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 134 (2d Cir. 2003).
For that reason, the Second Circuit requires courts to be “principally guided by comparing
the contested design’s total concept and overall feel with that of the allegedly infringed work, as
instructed by [their] good eyes and common sense.” Peter F. Gaito Architecture, LLC v. Simone
Dev. Corp., 602 F.3d 57, 66 (2d Cir. 2010) (citations and internal quotation marks omitted). A
court must analyze not only whether a defendant has misappropriated particular protectible
elements of the plaintiff’s work, but also “whether the alleged infringer has misappropriated the
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original way in which the author has selected, coordinated, and arranged the elements of his or her
work.” Id. (internal quotation marks omitted); see also Tufenkian, 338 F.3d at 134 (“[T]he totalconcept-and-feel locution functions as a reminder that, while the infringement analysis must begin
by dissecting the copyrighted work into its component parts in order to clarify precisely what is
not original, infringement analysis is not simply a matter of ascertaining similarity between
components viewed in isolation.”).
Regardless of the standard being applied, summary judgment on a claim of copyright
infringement is appropriate “[i]f the similarity between the two works ‘concerns only
noncopyrightable elements’ or ‘no reasonable trier of fact could find the works substantially
similar.’” Porto v. Guirgis, 659 F. Supp. 2d 597, 610 (S.D.N.Y. 2009) (quoting Crane v. Poetic
Prods. Ltd., 549 F. Supp. 2d 566, 569 (S.D.N.Y. 2008)).
b. Protectible and Nonprotectible Elements
The “more discerning observer” test is premised on the observation that “even works which
express enough originality to be protected also contain material that is not original, and hence that
may be freely used by other designers.” Tufenkian, 338 F.3d at 132. A “fundamental rule of
copyright law is that it protects only . . . those aspects of the work that originate with the author
himself,” and an author obtains no monopoly over elements derived from the public domain merely
because he incorporates them into a creative work. Zalewski, 754 F.3d at 102 (quoting 17 U.S.C.
§ 102(a)). In applying the “more discerning observer” test, a court must examine the elements of
the plaintiff’s work and determine which elements are protectible and which are unprotectible. See
Tufenkian, 338 F.3d at 134 & n.8; see also Zalewski, 754 F.3d at 106-07.
“Numerous doctrines separate protectable expression from elements of the public domain.”
Zalewski, 754 F.3d at 102. The basic “raw materials” of creative works, including colors, letters,
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and geometric forms, are unprotected. Tufenkian, 338 F.3d at 132. Similarly, “ideas, concepts,
principles [and] processes” are “in the common domain” and are “the inheritance of everyone.”
Rogers v. Koons, 960 F.2d 301, 308 (2d Cir. 1992). This is so even if the idea originates with the
author. Muller v. Twentieth Century Fox Film Corp., 794 F. Supp. 2d 429, 440 (S.D.N.Y. 2011)
(“[O]nly a copyright owner’s particular expression of his or her idea is protected, not the idea
itself.”); see also Tufenkian, 338 F.3d at 132 n.4.
Other principles include “scènes-à-faire” and the “merger” doctrine. The former “teaches
that elements of a work that are ‘indispensable, or at least standard, in the treatment of a given
topic’—like cowboys, bank robbers, and shootouts in stories of the American West—get no
protection.” Zalewski, 754 F.3d at 102; see, e.g., Civility Experts Worldwide v. Molly Manners,
LLC, 167 F. Supp. 3d 1179, 1196 (D. Colo. 2016) (finding selection of topics in instructional
manuals on manners and etiquette unprotected scènes-à-faire where any such manual “will likely
cover these sorts of topics”). The merger doctrine “instructs that some ideas can only be expressed
in a limited number of ways—single words or colors for example. When expression is so limited,
idea and expression ‘merge.’ Expressions merged with ideas cannot be protected, lest one author
own the idea itself.” Zalewski, 754 F.3d at 102-03; see, e.g., Nat’l Nonwovens, Inc. v. Consumer
Prods. Enters., Inc., 397 F. Supp. 2d 245, 256-57 (D. Mass. 2005) (unadorned step-by-step
instruction on boiling wool felt implicated merger doctrine, because of limited number of ways in
which to convey the relevant information).
However, as noted above, even unprotectible elements or features may receive protection
to the extent that the author selects, coordinates, arranges, or otherwise expresses those elements
in an original way. See Gaito, 602 F.3d at 66; see also Feist Publ’ns, Inc. v. Rural Tel. Serv. Co,
Inc., 499 U.S. 340, 349 (1991) (“[I]f the selection and arrangement [of a factual compilation] are
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original, these elements of the work are eligible for copyright protection.”). For example, while
facts are unprotectible, the expression of those facts in an original way may be. The Seventh
Circuit provides a helpful illustration:
Einstein’s articles laying out the special and general theories of relativity were
original works even though many of the core equations, such as the famous E=mc2,
express “facts” and therefore are not copyrightable. Einstein could have explained
relativity in any of a hundred different ways; another physicist could expound the
same principles differently.
Am. Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d 977, 979 (7th Cir. 1997); see also
Zalewski, 754 F.3d at 102 (“[A]ny author may draw from the history of English-speaking peoples,
but no one may copy from A History of the English–Speaking Peoples. Any artist may portray the
Spanish Civil War, but no one may paint another Guernica.”). Copyright protection can be
afforded to the manner in which an author selects, coordinates, or expresses unprotectible elements
in a work so long as it possesses “some minimal degree of creativity.” Kregos v. Associated Press,
937 F.2d 700, 703 (2d Cir. 1991) (quoting Feist, 499 U.S. at 345).
The works in dispute in this case occupy a similar place to nonfiction literature.
Instructional manuals, textbooks, guides, and the like present factual information or functional
directions. Those facts and directions, standing alone, are not copyrightable. See Churchill
Livingstone, Inc. v. Williams & Wilkins, a Div. of Waverly, Inc., 949 F. Supp. 1045, 1051 (S.D.N.Y.
1996) (comparing two science textbooks and noting that “the facts underlying the science of
embryology . . . are not copyrightable”); see also Lambing v. Godiva Chocolatier, 142 F.3d 434,
1998 WL 58050, at *1 (6th Cir. Feb. 6, 1998) (table opinion) (stating that recipes are not afforded
copyright protection because they are functional directions for achieving a result). Even the
expression, selection, and arrangement of the facts in such a work may not be protectible to the
extent they are driven by demands outside of the author’s originality. See, e.g., McGraw-Hill, Inc.
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v. Worth Publishers, Inc., 335 F. Supp. 415, 420-21 (S.D.N.Y. 1971) (noting factors that restrict
the range of “literary options in creating an economics textbook,” including the nature of the
subject matter and the demands of the market); cf. Zalewski, 754 F.3d at 106 (finding that certain
elements of architectural designs were unprotected because they were a “function of consumer
expectations and standard house design generally”). That being said, an author’s “creative choices
in describing [factual] processes and systems, including the works’ overall arrangement and
structure, are subject to copyright protection.” Situation Mgmt. Sys., Inc. v. ASP Consulting LLC,
560 F.3d 53, 61 (1st Cir. 2009).
II.
Comparison of Exemplar Works
The Court now applies the law to the present works. The Court does not possess the
approximately seventy books that are in dispute, but Logical has provided a copy of its book,
Microsoft Excel 2010, Basic, Instructor’s Edition (the “Axzo Manual”), and a copy of 30 Bird’s
competing volume, Microsoft Excel 2010 Level 1, Instructor Edition (the “30 Bird Manual”).
Given that these books contain the alleged similarities underlying Logical’s claim, and because
the parties do not argue otherwise, the Court treats these books as exemplars of all of the books in
dispute.
The Court uses the “more discerning observer” test, as the Axzo Manual contains both
protectible and unprotectible elements. See Boisson, 273 F.3d at 272. The Court first examines
the relevant elements of the manuals to determine which are protectible and which are
unprotectible. The Court does not engage in an exhaustive comparison of each and every minute
detail—as such an analysis would be unnecessary and counterproductive—but rather confines its
evaluation to the most salient elements. See Gaito, 602 F.3d at 66; Universal Athletic Sales Co. v.
Salkeld, 511 F.2d 904, 909 (3d Cir. 1975) (“The more the court is led into the finer points of the
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[work], the less likely it is to stand upon the firmer, if more naive, ground of its considered
impressions after its own perusal.” (citing Nichols v. Universal Pictures Corp., 45 F.2d 119, 123
(2d Cir. 1930)). After determining which elements are protectible, the Court examines the total
concept and feel of the manuals.
a. Elements in the Parties’ Works
i. Overall Page Appearance, Layout, and Approach
Logical contends that the manuals are similar in their “overall page appearance, layout, and
approach.” ECF No. 59 ¶ 30(a). By this, Logical appears to assert that the internal formatting of
the manuals—spacing, page width, font, headers, etc.—are similar. There is authority for the
proposition that book designs are not in themselves copyrightable. See, e.g., F. A. Davis Co. v.
Wolters Kluwer Health, Inc., 413 F. Supp. 2d 507, 513-14 (E.D. Pa. 2005); 2 Patry on Copyright
§ 4:19 (noting that Copyright Office denies registration to the “arrangement, spacing, or
juxtaposition of text matter that is involved in book design”). This is because a layout “falls within
the realm of uncopyrightable ideas.” Registration of Claims to Copyright: Notice of Termination
of Proposed Rulemaking Regarding Registration of Claims to Copyright in the Graphic Elements
Involved in the Design of Books and Other Printed Publications, 46 Fed. Reg. 30651, 30653 (June
10, 1981).
On the other hand, there is also authority that the creative arrangement and coordination of
textual and graphic elements is protectible. See Eagle Access Control Sys., Inc. v. USA Power
Gate, Inc., No. CV 07-3789, 2008 WL 11334485, at *4 (C.D. Cal. Dec. 18, 2008) (discussing
layouts of manuals in addressing substantial similarity); Livingstone, 949 F. Supp. at 1054 (stating
that author’s selection and arrangement of illustrations in medical textbook can be creative and
original); see also Sadhu Singh Hamdad Trust v. Ajit Newspaper Advertising, Mktg. & Commc’ns,
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Inc., 503 F. Supp. 2d 577, 589-90 (E.D.N.Y. 2007) (collecting cases where layout and manner of
presentation were considered in concluding that work was entitled to copyright protection). Thus,
while an abstract book design may not, standing alone, provide grounds for infringement, the
manner in which specific text and graphics are selected and arranged in the Axzo and 30 Bird
Manuals may be considered in evaluating total concept and feel.
ii. Content
Importantly, Logical does not assert that Defendants engaged in any verbatim copying of
its textual or graphical content. Nor does it point to any instances where Defendants reproduced
such content with minor or immaterial variations. Its allegations are narrower. Logical argues
that, like the Axzo Manual, the 30 Bird Manual: (1) uses some of the same words in its exercise
instructions (e.g., instructing students to “Click,” “Select,” or “Press”); (2) tells students to include
the word “My” in document names (e.g., instructing students to save a file as “My Workbook”);
and (3) uses fake companies as part of its exercises. Logical also contends that the 30 Bird Manual
adheres to the same bolding, italicization, and font conventions as the Axzo Manual.
These elements are not protectible. Single words, short phrases, and standard fonts are not
generally protectible subject matter. See TufAmerica, Inc. v. WB Music Corp., 67 F. Supp. 3d 590,
594 n.18 (S.D.N.Y. 2014); Sadhu, 503 F. Supp. 2d at 589. The idea of italicizing or bolding certain
important words is not copyrightable. And the idea of using fake companies in exercises is not
copyrightable: while a particular instructional fact pattern may be protectible, the mere notion of
using such hypothetical scenarios is not. Cf. Nat’l Conference of Bar Exam’rs v. Multistate Legal
Studies, Inc., 458 F. Supp. 2d 252, 259 (E.D. Pa. 2006) (discussing multiple-choice questions).
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iii. Topics and Topic Structure
Logical identifies “the generalized topic structure” as one element of similarity between its
manuals and 30 Bird’s manuals. ECF No. 59 ¶ 30(e). If Logical is simply arguing that its selection
of topics is protectible, the Court is not convinced. Both manuals contain a similar selection of
topics, but that appears to be a function of the subject matter and the manuals’ particular purpose—
i.e., to prepare students for Microsoft certification exams. One would expect that a manual
teaching basic skills for Microsoft Excel would, necessarily or customarily, embrace certain topics,
making the selection of topics akin to scènes-à-faire. See Molly Manners, 167 F. Supp. 3d at 1196;
see also McGraw-Hill, Inc., 335 F. Supp. at 420-21. This is so particularly if the manual is geared
toward preparing students for a certain examination. Cf. Lyons v. Am. Coll. Of Veterinary Sports
Medicine & Rehab., Inc., 997 F. Supp. 2d 92, 110-11 (D. Mass. 2014) (selection of topics not
entitled to protection because they were dictated by policies and procedures of organization). This
expectation is borne out by the record: other competing manuals adopt a similar selection of topics.
See ECF Nos. 72-7, 72-8, 72-13.
The arrangement of topics is another matter, however. Granted, Defendants are on strong
ground when they argue that a topic structure that starts “with the simplest lessons and mov[es]
through to more complex lessons” is unprotectible. ECF No. 75-8 at 7. The idea of using such a
progression in an instructional text is certainly not protectible, and the other manuals in the record
establish that, in this context, such progression amounts to scènes-à-faire. See ECF Nos. 72-7, 728, 72-13; see also Hassett v. Hasselbeck, 177 F. Supp. 3d 626, 631 (D. Mass. 2016) (order of topics
in recipe book—“introductory chapters providing general tips followed by chapters of recipes
organized by types of meals”—constituted unprotected scènes-à-faire). Indeed, structuring a
manual or guide in this way would seem to be attributable more to common-sense notions of
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instructional design than to a creative or aesthetic decision. 3 Cf. Costello, Erdlen & Co., Inc. v.
Winslow, King, Richards & Co., 797 F. Supp. 1054, 1063 (D. Mass. 1992) (noting that similarities
in the organization of job guides stemmed in part from the “natural progression” of obtaining
employment).
But the doctrine of scènes-à-faire does not extend to the creative arrangement of specific
topics within that overall progression. This is because the Court cannot conclude as a matter of
law that the Axzo Manual’s specific grouping and arrangement of topics is indispensable or
standard for this subject matter. The manuals in the record follow an overall progression from
simple to more complex topics, but they vary in how they group and order topics. See, e.g., ECF
No. 72-7 at 4-7; ECF No. 72-8 at 4-5. Therefore, the Court declines to exclude the Axzo Manual’s
particular arrangement of topics from the “total concept and feel” calculus.
iv. Organization of Each Chapter
Logical next identifies the organization of each chapter as a similar element between the
manuals. Both manuals do share a parallel arrangement. Each chapter begins with a page that
displays the objectives for the chapter and estimates the time to complete the chapter. A chapter
is then divided into a number of subchapters on specific topics. A subchapter starts with an
explanation of the topic, which may be accompanied by charts, graphics, and step-by-step
instructions. The subchapter provides an exercise for the student to reinforce the topic. Finally,
each chapter ends with a summary of the lessons learned in the chapter and an additional exercise
for the student to complete. In addition, both manuals include review questions.
3
Logical’s instructional-design expert notes that “courseware that is organized with general, lower-level
concepts first with content progressing in complexity” is evidence of the use of “Subsumption Theory”—a
theory of learning. ECF No. 72-6 at 12.
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The Court is skeptical that copyright protection could be afforded to the use of this general
arrangement, as it appears to reflect a pedagogical method or technique. See 17 U.S.C. § 102(b)
(barring from copyright protection “any idea, procedure, process, system, method of operation,
concept, [or] principle”). Adam Wilcox stated in his deposition that “everyone” in the industry
uses the same basic instructional-design theory, which he attributed to David Ausubel. ECF No.
74-2 at 12. As Michelle L. Wescott—Logical’s instructional-design expert—explains, this theory
contemplates a particular arrangement for a lesson: a lesson should begin with a short summary of
the lesson’s aim and how the lesson relates to current knowledge, followed by an explanation of
the relevant concepts and “[m]eaningful practice.” ECF No. 72-6 at 12. Wescott opines that “a
book’s overall structure and use of features . . . is usually driven by the learning theory used.” Id.
That is, the sequence and manner of instruction depends in part on the “learning theory” to which
the author adheres. 4 See id. at 11-12. Under § 102(b), however, Logical can hold no monopoly
over the idea of using a specified pedagogical technique—that is, the use of a particular sequence
and structure of instruction—to teach Microsoft Excel skills. The overall structure of each chapter
is not, standing alone, protectible. See Kepner-Tregoe, Inc. v. Carabio, No. 8-71025, 1979 WL
1072, at *6 (E.D. Mich. Apr. 20, 1979) (concluding that company that developed management
training program had “no monopoly on any pedagogical technique” that it used in its program).
But again, recognizing that the overall structure of each lesson is perhaps unprotectible
does not mean that the Court may not consider the disputed works’ lesson structures in assessing
the total concept and feel. Many creative decisions must be made in the course of laying out a
lesson in accordance with that general framework. Among other things, one must select how many
4
To be sure, Wescott also emphasizes that “there is still much room for variation” and that “learning
theory does not dictate the overall look and feel of a book.” ECF No. 72-6 at 12.
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concepts to include in a single lesson; decide how much explanation to provide before giving an
exercise; decide how many exercises and activities to include; and, of course, decide how to
express the content of the lesson—how a topic is explained, what sorts of graphics are used to
illustrate concepts, the particular phrasing and instructions for exercises and review questions, etc.
These creative choices are not excluded when assessing substantial similarity.
v. Two-Column Table for Exercises
An exercise in the 30 Bird Manual. ECF No. 74-2 at 171.
An exercise in the Axzo Manual. ECF No. 74-2 at 366.
An element of particular concern to Logical is Defendants’ use of a two-column table to
convey exercises to readers. As can be seen above, to reinforce the topic of each lesson, both
manuals have activities for students to perform, and they present those exercises in tabular form.
Logical identifies the following similarities between the tables used in the manuals: (1) use of a
two-column vertical format; (2) use of a shaded background; 5 (3) instruction on the left and
5
The 30 Bird Manual uses three shades of blue to divide each section of their tables, while the Axzo Manual
uses one uniform shade of gray. Compare ECF No. 74-2 at 171, with id. at 366.
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explanation on the right; (4) similar column headers (“Do This” and “How & Why” in the 30 Bird
Manual as compared to “Here’s how” and “Here’s why” in the Axzo Manual); (5) use of bolding
to highlight certain words in the exercises; (6) directing students to rename files with the word
“My” (e.g., asking students to save a worksheet as “My Budget”); (7) use of similar words,
including “Click,” “Select,” “Observe,” “Press,” and “Enter”; and (8) use of fake companies in
exercises.
Logical correctly concedes that it can hold no copyright over the idea of using a twocolumn table to present instructional exercises. ECF No. 74 at 19; Molly Manners, 167 F. Supp.
3d at 1197 n.11 (idea of sticker chart to encourage good behavior in children is unprotectable idea).
Any protection extends, if at all, only to Logical’s particular expression of that idea. But
Defendants contend that the merger doctrine renders Logical’s exercise tables unprotectible
because “there are a limited amount of ways to convey information in a table.” ECF No. 72-29 at
14. The Court disagrees that the merger doctrine is appropriately applied here.
As discussed previously, the merger doctrine applies to bar protection of expression “in
those instances where there is only one or so few ways of expressing an idea that protection of the
expression would effectively accord protection to the idea itself.” Kregos, 937 F.2d at 705. Here,
the record shows that there are numerous ways of designing and organizing a two-column table to
convey information on Microsoft Excel topics. See ECF No. 72-7 at 13; ECF No. 72-8 at 11; ECF
No. 72-9 at 10. Choices include, of course, the content conveyed in the table, but also the colors,
shading, italicization, and bolding used, the graphics employed, the sizing of each cell, row, and
column, and the size of the table as a whole. Like other restrictive instructional methods—for
example, multiple-choice questions—presenting information in a two-column table certainly
confines the range of creative expression, but it does not preclude or so limit such expression as to
17
implicate the merger doctrine. See Nat’l Conference of Bar Exam’rs, 458 F. Supp. 2d at 259
(noting that test questions can constitute original expression by virtue of their “wording,
particularized facts, and answer choices”).
The Axzo Manual’s unique expression of its
instructional exercises—i.e., the content of those exercises in conjunction with the design of its
two-column tables—may be considered in assessing substantial similarity.
vi. Instructor Cues and Exam Objectives
Logical identifies the inclusion and arrangement of instructor cues and exam objectives as
similar elements. Both manuals use what the parties call an “instructor cue,” which is a phrase or
icon set off in the left margin that alerts the instructor to particular material. For example, one of
the instructor cues is a small icon that indicates to the instructor that there is a PowerPoint slide
associated with the adjacent item. See ECF No. 74-2 at 349. In the Axzo Manual, that icon is an
image of an overhead projector with no color, shading, or border. In the 30 Bird Manual, that icon
is an image of a projection screen with a blue background and black border. Both manuals also
have an instructor cue to alert the instructor that the adjacent material is associated with a Microsoft
Office Specialist exam objective. In the Axzo Manual, the instructor cue is the italicized number
of the objective (e.g., “Objective 1.1.1”). In the 30 Bird Manual, the instructor cue is an icon of a
black checkmark with a purple background and black border. In addition, both manuals identify
exam objectives in the body of the text: the Axzo Manual identifies all of the pertinent exam
objectives at the beginning of each subchapter, while the 30 Bird Manual identifies each objective
number with the applicable material.
Defendants argue that the use of instructor cues constitutes scènes-à-faire. The idea of
using instructor cues is unprotectible, but even stock concepts can be protectible to the extent that
their selection, coordination, and arrangement “reflect[] a particular expression of ideas.” Williams
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v. A & E Television Networks, 122 F. Supp. 3d 157, 162 (S.D.N.Y. 2015). Here, the issue is
whether the 30 Bird Manual copies the look and arrangement of the Axzo Manual’s instructor
cues. It is an appropriate element to consider in evaluating total concept and feel. For the same
reasons and to the same extent, the Court may consider the element of exam objectives.
b. Total Concept and Feel
Having determined which of the salient individual elements are protectible, the Court now
turns to the task of “comparing the contested [work’s] ‘total concept and overall feel’ with that of
the allegedly infringed work.” Gaito, 602 F.3d at 66 (quoting Tufenkian, 338 F.3d at 133). In
doing so, the Court may not rely on amorphous notions of “feel” and “look,” but must instead
“identify precisely the particular [creative] decisions—original to the plaintiff and copied by the
defendant[s]—that might be thought to make the [works] similar in the aggregate.” Tufenkian,
338 F.3d at 134.
The Court concludes that a reasonable observer could not find the Axzo Manual and 30
Bird Manual substantially similar. Although the Court is persuaded that the Axzo Manual contains
protectible expression, the Court is not convinced that the 30 Bird Manual has copied such
expression to the point of substantial similarity. In arguing to the contrary, Logical does not assert
that the 30 Bird Manual copied any particular exercise, mimicked any particular topic, or
replicated any particular review question. 6 In short, Logical does not argue that the 30 Bird
6
Wescott identifies two similarities in content. First, she notes that the 30 Bird Manual contains a list of
certain aspects of the Excel interface which, in part, follows the same order as a list contained in the Axzo
Manual. Compare ECF No. 74-2 at 170, with id. at 363. The lists do not fully overlap, however, and each
manual provides different descriptive content of the Excel interface. In short, it is a very minor similarity.
Second, Wescott states that in one exercise, both the 30 Bird Manual and the Axzo Manual instruct students
to hover over the “Bold” button to reveal a “screen tip.” See ECF No. 72-6 at 18-19. Again, this is a minor
similarity that does not change the Court’s analysis.
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Manual copied any of the Axzo Manual’s substantive content. Rather, Logical principally asserts
that the 30 Bird Manual copied certain design and layout features of the Axzo Manual.
This is problematic because, as the Court has already noted, there is authority for the
proposition that book designs are unprotectible ideas. In targeting the 30 Bird Manual’s design
and layout in the abstract, divorced from any particular textual or graphical content, Logical veers
into the realm of challenging Defendants’ use of similar ideas, rather than Defendants’ use of its
expression.
This is not to say that the selection, arrangement, and coordination of substantive elements
is irrelevant to the analysis. As discussed above, creative choices can be made with respect to the
selection and arrangement of text, graphics, and topics within a book. Indeed, the substantive
content of an instructional text must be expressed through layout and design choices. But the
Court cannot simply disregard content and compare the abstract design principles on which the
manuals are based. Just as it would be difficult to conclude that one wrongfully copied another’s
chart without considering the content of each chart, the Court cannot analyze whether Defendants
wrongfully copied the total concept and feel of the Axzo Manual without considering the
substantive content of each manual. When the issue is framed in this way, there is no reasonable
inference of substantial similarity.
Some examples may be helpful. Regarding the two-column tables, while Logical lists
several design elements that make the 30 Bird Manual’s tables look similar to the Axzo Manual’s,
omitted from its discussion is the fact that the content of the tables—i.e., the instructions, the
explanatory content, and graphics—are largely dissimilar. The tables displayed in Section II(a)(v)
above are illustrative. Both tables instruct students on certain basic components of the Excel
interface. Although there is some minor overlap in their respective directions, as a whole the tables
20
diverge in their expression of and emphasis on certain concepts. The 30 Bird Manual highlights
the column and row numbers and the quick access toolbar, while the Axzo Manual highlights the
title bar, illustrations tab, and status bar. In explaining the ribbon tab, the Axzo Manual states:
“By default, Home is active.” ECF No. 74-2 at 366. The 30 Bird Manual states: “This is the large
area of buttons, lists, menus, and palettes at the top of the window. It’s organized into tabs (File,
Home, Insert, and so on), and within in [sic] a tab, into groups.” Id. at 171. The tables also differ
as to which graphics they include: the Axzo Manual’s only graphic is of the title bar, while the 30
Bird Manual has graphics of a “screen tip” and the quick access toolbar. These differences in the
tables only increase in later chapters, as each manual creates its own hypothetical scenarios to test
students in the applicable concepts. Compare, e.g., id. at 195-96, with id. at 383.
When substantive content is considered along with the design features, the manuals’ tables
do not convey substantially similar expression. It is akin to multiple-choice questions: one
instructor is free to use the same format to test students in the same topics as another instructor, so
long as he does not copy the particular wording and answers of the other. See Nat’l Conference of
Bar Exam’rs, 458 F. Supp. 2d at 259.
The same can be said of the 30 Bird Manual’s overall arrangement of topics and
organization of each chapter. Similarities in chapter arrangement or structure matter less than the
expressive content contain therein. Cf. Morrison v. Solomons, 494 F. Supp. 218, 225 (S.D.N.Y.
1980) (“The significant question is not whether titles of subchapters and chapters are the same but
rather whether the explanation or treatment of the subject matter within them is substantially
similar.”). On the topic of functions, for example, the manuals display different graphics and
provide different explanations, exercises, and review questions.
Indeed, the Axzo Manual
provides instruction on several functions that are omitted from the 30 Bird Manual. Similarly,
21
although both manuals use instructor cues and arrange them in a similar manner, the cues
themselves are aesthetically distinct. In these respects, the expression contained in each manual’s
“function” topic is distinct, notwithstanding similar design features and subject matter.
The Court arrives at the same conclusion with respect to the total concept and feel of the
works as a whole. The similarities that exist between these manuals largely relate to unprotectible
ideas or minor elements like layout and arrangement. In terms of substantive content, Logical fails
to identify any significant similarities between the manuals, and the Court’s review does not
suggest otherwise. Because the overall expression contained in the manuals is so dissimilar—even
considering substantive content and design together—the Court concludes, as a matter of law, that
the manuals cannot be found substantially similar.
Accordingly, the Court concludes that a reasonable trier of fact could not find in Logical’s
favor on the element of wrongful copying, and Defendants are entitled to summary judgment on
the copyright infringement claim.
CONCLUSION
For the reasons discussed above, Defendants’ motion for summary judgment (ECF No. 72)
is GRANTED IN PART. With respect to Logical’s claim for copyright infringement, Defendants’
motion is granted, but with respect to Defendants’ counterclaim for attorney’s fees, their motion
is denied without prejudice.
IT IS SO ORDERED.
Dated: December 17, 2018
Rochester, New York
______________________________________
HON. FRANK P. GERACI, JR.
Chief Judge
United States District Court
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