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IP/Entertainment Case Law Updates

Harris v. Simon & Schuster, Inc., et al.

Court holds that standardized tests constitute compilations, fonts are not protected by copyright, and an author and sole copyright owner who grants an exclusive license to another party has standing to sue as a beneficial owner

The plaintiff was a Ringling Bros. clown and wrote a children’s book, published by Atheneum Publishers in 1985. Simon & Schuster, the successor in interest to Atheneum, licensed excerpts of the plaintiff’s book for use in standardized tests to co-defendant CTB/McGraw-Hill in 1998, 2003 and 2006. CTB changed the font of the excerpts, added questions to illustrate what was being tested, and included excerpts from other authors.

The plaintiff, claiming that his publishing agreement did not allow the publisher to license the work in standardized tests, sued for direct and contributory copyright infringement, and the defendants moved for summary judgment. The court held that the publishing agreements between the plaintiff and Atheneum authorized Simon & Schuster to license the work for use in standardized tests because these works are compilations and the publishing agreements specifically gave Atheneum the right to license the work in compilations.

The court, however, denied the defendants’ motion for summary judgment because there was not enough evidence to determine if CTB exceeded the scope of the license from Simon & Schuster by uses of the work in geographical areas not listed in the original license from Simon & Schuster. The court also rejected the defendant’s argument that the plaintiff does not having standing to sue for copyright infringement because it had granted an exclusive license to Simon & Schuster; the court stated that the plaintiff, as the author of the work and the sole copyright owner, is a beneficial owner of the copyright and has standing to sue.

The court also rejected the defendant’s argument that exceeding the scope of a license should be the subject of a breach of contract claim rather than a copyright infringement claim, and the court stated that the plaintiff’s allegation that the defendant infringed his copyright by changing the font when it published the excerpts was without merit because federal copyright law does not protect fonts and because the license did not prohibit the use of different fonts.

Finally, the court rejected the plaintiff’s claim that CTB exceeded the scope of the licenses by sublicensing the right to reprint the collective work to another publisher because the publishing agreement was exclusive and non-transferable. The court noted that section 201(c) of the Copyright Act states that the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that collective work and any later collective work in the same series. According to the court, the 201(c) privilege is a component of the copyright in the collective work, not the copyright in the individual contributions, and any arguable “sublicense” in the work as it was used in the tests is statutorily privileged and does not constitute copyright infringement.

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