In addition, Kepner claims that some of EDI's clients are
current or former clients of Kepner, whom Kepner provided with
the Genco II and/or Apex II materials. Kepner alleges that
Guberud, and/or his co-author Mary Osgood, had access to the
Genco II and Apex II materials at the time they wrote the
DECISION FOCUS materials.
Kepner states that a comparison of DECISION FOCUS and the
Kepner materials demonstrates that the DECISION FOCUS materials
are not a work of independent creation. Kepner argues that EDI
has helped itself intentionally to the expression contained in
Kepner's copyrighted materials. Specifically, Kepner points out
that at his deposition, Hiller, in response to a request from
EDI's counsel, went through each page of the DECISION FOCUS
materials and identified the copied portions during his
deposition. See Pl.'s Br. at 26. Kepner's interrogatory
responses identify further instances of copying by EDI. Kepner's
two copyright registrations at issue are Nos. A 550,878 and A
550, 880. Kepner claims that copies of these copyright
registration certificates were produced to EDI during discovery.
In addition, Kepner produced to EDI copies of the Genco II and
Apex II materials covered by these two registrations. See
Bostock Decl., Exs. 3 and 4. The respective first pages of
exhibits three (3) and four (4), duplicate the cover letters from
the Copyright Office, which state that they are certified copies
of the materials submitted to the Copyright office with the two
copyright registration applications. See id. The copies of the
materials are stamped with the same registration number that is
printed on their respective copyright registration certificates.
Furthermore, the titles of exhibits three (3) and four (4)
match the titles found on the copyright registration
certificates. Kepner contends that it has not only identified the
APEX II and GENCO II copyrighted materials to EDI, but also has
produced to EDI copies of those materials. The copy of Kepner's
materials that the Copyright office received is plainly marked
with the Copyright Office certification. Kepner states that it
explicitly identified the Copyright Office's copies of these
materials to EDI.
In sum, Kepner alleges that EDI's DECISION FOCUS materials
infringe Kepner's works, GENCO II AND APEX II, which relate to
problem-solving and decision-making. Kepner contends that EDI
purposefully concealed the DECISION FOCUS materials from Kepner.
Kepner claims that EDI knew that Kepner would have alleged
infringement had EDI disclosed the DECISION FOCUS materials to
Kepner. Kepner alleges that because EDI did not rely in any
manner upon any conduct of Kepner in introducing and marketing
the DECISION FOCUS materials, EDI has suffered no harm. Finally,
Kepner submits, that in view of the striking similarity between
the copyrighted and contested materials, EDI's denials of access
and copying constitute disputed factual questions that should be
resolved by the jury.
This case raises a federal copyright question, bestowing upon
this Court subject matter jurisdiction, pursuant to 28 U.S.C. § 1331
and 1338. To establish copyright infringement, a plaintiff
must prove two elements: "(1) ownership of a valid copyright, and
(2) copying*fn7 of constituent elements of the work that are
original" by the defendant. Feist Publications, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d
(1991) (citation omitted); Novelty Textile Mills, Inc. v. Joan
Fabrics Corp., 558 F.2d 1090, 1092 (2d Cir. 1977); Database
Am., Inc. v. Bellsouth Adver. & Publishing Corp., 825 F. Supp. 1216,
1225 (D.N.J. 1993) (citing Feist Publications, 499 U.S.
at 361, 111 S.Ct. 1282). Kepner, therefore, must prove first that
it owns a valid copyright protecting the expression claimed to be
infringed. "Without proper copyright protection any infringement
claim is moot and summary judgment rejecting the alleged
infringement claim is appropriate." Entertainment Research
Group, Inc. v. Genesis Creative Group, Inc., 853 F. Supp. 319,
321 (N.D.Cal. 1994) aff'd, 122 F.3d 1211 (9th Cir. 1997),
cert. denied, 523 U.S. 1021, 118 S.Ct. 1302, 140 L.Ed.2d 468
EDI disputes both the ownership and validity of Kepner's
copyrights for the purpose of this motion.*fn8 Copyright
Registration Certificates, however, "issued by the U.S. Copyright
Office comprise prime facie evidence of the validity and
ownership of the material." Ford Motor Co., 930 F.2d at 290-91
(citing Andrien v. Southern Ocean County Chamber of Commerce,
927 F.2d 132, 134 (3d Cir. 1991); Williams Elec., Inc. v. Artic
Int'l, Inc., 685 F.2d 870, 873 (3d Cir. 1982)).
Second, after Kepner successfully proves that it owns a valid
copyright, Kepner must prove that EDI copied original parts of
Kepner's work. Typically, direct evidence of copying is rarely
available. Courts, therefore, allow plaintiffs to infer copying
"by showing that the defendant had access to the allegedly
infringed work, . . . that the allegedly infringing work is
substantially similar to the copyrighted work, and . . . that one
of the rights guaranteed to copyright owners by
17 U.S.C. § 106*fn9 is implicated by the defendant's actions." Ford Motor
Co., 930 F.2d at 291 (internal citations and quotations
The two prevailing tests used to determine "substantial
similarity," must each be satisfied. See Whelan Assoc., Inc. v.
Jaslow Dental Lab. Inc., 797 F.2d 1222, 1232 (3d Cir. 1986).
First is the "extrinsic test," which queries "whether there is
sufficient similarity between the two works in question to
conclude that the alleged infringer used the copyrighted work in
making his own." Id. To satisfy this test, expert testimony and
a visual comparison between both the allegedly infringing work
and the copyrighted work are often employed. See Universal
Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975).
The second test of the "substantial similarity" inquiry is
called the "intrinsic test," and it queries, from a lay
perspective, whether the copying was an unlawful appropriation of
the copyrighted material. Whelan Assoc., 797 F.2d at 1232; See
Universal Athletic Sales Co., 511 F.2d at 907. "Unlawful
appropriation" is "a taking of the independent work of the
copyright owner which is entitled to the statutory protection."
Universal Athletic Sales Co., 511 F.2d at 907. When determining
whether an appropriation has occurred, the analysis should
consider "the nature of the protected material and the setting in
which it appears." Id. at 908. Thus, copying is established
when a person who has access to the copyrighted material uses
material substantially similar to the copyright
work in a manner that interferes with a right protected by
17 U.S.C. § 106.
Congress, however, mandated that no copyright protection can be
claimed for any "idea, procedure, process, system, method of
operation, concept, [or] principle, regardless of the form in
which it is described, explained [or] illustrated."
17 U.S.C. § 102(b) (1994). In addition, the Third Circuit has held that
similarities in expression will not establish infringement under
A copyright does not cover an idea or a system of
doing business but only the particular mode of
expression of the idea embodied in the copyrighted
material. The public is free to use the idea or
method of doing business and hence, while the
copyrighted description of the idea may not be
slavishly copied, the copyright is not infringed by
an expression of the idea which is substantially
similar where such similarity is necessary because
the idea or system being described is the same.
Universal Athletic Sales Co., 511 F.2d at 908 (citation
omitted). Furthermore, the Supreme Court of the United States has
held that "[n]ot all copying . . . is copyright infringement."
Feist Publications, 499 U.S. at 361, 111 S.Ct. 1282. In that
case, the Court determined that the defendant's admitted taking
of "substantial amounts of factual information" from the
plaintiff failed to establish infringement. Id.
The Copyright Office has explicitly stated that, although they
may constitute "expression," "[w]ords and short phrases such as
names, titles, and slogans" are unprotectable.
37 C.F.R. § 202.1(a); see, e.g., Becker v. Loew's Inc., 133 F.2d 889 (7th
Cir. 1943) (denying protection to phrase: "We who are young");
Warner Bros. Pictures, Inc. v. Majestic Pictures Corp.,
70 F.2d 310 (2d Cir. 1934) (finding phrase "Gold Diggers"
uncopyrightable); Magic Mktg. Inc. v. Mailing Svcs. of
Pittsburgh Inc., 634 F. Supp. 769, 772 (W.D.Pa. 1986) ("Terse
phrases . . . [and] even more colorful descriptions . . . are not
accorded copyright protection".)
The federal courts have previously faced Kepner's allegations
of copyright infringement regarding the same materials at issue
in this case. In Kepner-Tregoe v. Carabio, the court held that
the worksheets relied upon by Kepner in this case "contain so
little expression and there is so much difficulty separating the
expression from the idea; the protection they enjoy extends
little beyond xerographic reproduction." 203 U.S.P.Q. at
133.*fn10 In Kepner-Tregoe v. Ford, No. 88-2385, Judge
Debevoise analyzed the same materials on which Kepner now bases
its claims and granted Kepner some preliminary injunctive relief,
but denied its claims of broad rights. Judge Debevoise rejected
entirely Kepner's claims of infringement of its worksheets.
Relying on Carabio, he described a very narrow range of
protection granted to works like those, which Kepner claims are
infringed in this case:
The special problems involved with instructional
materials of this nature are addressed in Carabio.
There the court dealt with similar [Kepner] material
and noted that the substantial similarity test must
be applied with an eye to the subject matter in
issue. In literary works, where there is a wide range
of ways to give expression to the content of the
material, less similarity is needed to
suggest copying. In materials describing a useful art
or scientific or other process, the ideas themselves
cannot be copyrighted and there are fewer ways
available to express these ideas than in the case of
literary works. Thus considerable similarity may be
tolerated without giving rise to an inference of
copying simply because there are only limited ways to
express the same ideas or to explain the process.
Kepner-Tregoe v. Ford, No. 88-2385 at 15. The court noted also
that "[Kepner] cannot prevent others from teaching the processes
which it teaches. Some similarity of language is inevitable. . .
." Id. at 16. Judge Debevoise concluded that