Petition for Writ of Certiorari — Association of American Medical Colleges v. Cuomo

Supreme Court brief1991

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No.0 1 = ¥Q § Bape ‘tout, OS

‘ILLES

IN THE JUL ? 4 199)

Supreme Court of the United Ste ie

THE CLERK

OCTOBER TERM, 1991 itll

ASSOCIATION OF AMERICAN MEDICAL COLLEGES,

¥. Petitioner,

MARIO CuoMo, Ind., and as Governor of the State of New

York; THEODORE M. BLACK, Ind., and as Chancellor,

Board of Regents of the University of the State of

New York; WILLARD A. GENRICH, Ind., and as Vice

Chancellor, Board of Regents of the University of the

State of New York; KENNETH B. CLARK, HAROLD E.

NEWCOMB, EMLYN I. GRIFFITH, MARY ALICE KENDALL,

JORGE L. BATISTA, LOUIS E. YAVNER, LAURA BRADLEY

CHopos, MARTIN C. BARELL, JOSEPH R. BONGIORNO,

LOUISE P. MATTEONI, J. EDWARD MEYER, ARLENE B.

REED-DELANEFY, R. CARLOS CARP LLADA, Ind., and as

Members of the Board of Regents of the University of

the State of New York; GORDON M. AMBACH, Ind., and

as Commissioner of Education, the University of the

State of New York; and Roperr ArRAMS, Ind., and as

Attorney General,

Respondents.

Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Second Circuit

PETITION FOR A WRIT Of CERTIORARI

Of Counsel: KEITH A. JONES *

JOSEPH A. KEYES, JR. CARL W. —

ASSOCIATION OF AMERICAN ROBERT A. BURGOYNE

MEDICAL COLLEGES AMEE F. V ERMILYE

One Dupont Circle, N.W. FULBRIGHT & JAWORSKI

Washington, D.C. 20036 801 Pennsylvania Ave., N.W.

(202) 828-0555 Washington, D.C. 20004

(202) 662-0200

* Counsel of Record

WILSON - EPES PRINTING Co., INC. - 789-0096 - WASHINGTON, D.C. 20001

QUESTION PRESENTED

hed. Ro App. P. (8) +e) provides that a “notice of

appeal shall specify the party or parties taking the ap-

peal.’ This case presents the question, on which the cir-

cuits are in conflict, whether that Rule is satisfied by a

notice of appeal that states, under a short-form caption,

that the appeal is being taken by “the defendants in the

above matter” but does not identify any particular

appellant.

PARTIES TO THIS PROCEEDING

All parties to this proceeding are identified in the cap-

tion of this case. Petitioner Association of American

Medical Colleges is a nonprofit corporation that does not

have any parent company or subsidiaries.

TABLE OF CONTENTS

QUESTION PRESENTED

PARTIES TO THIS PROCEEDING

TABLE OF CONTENTS

TABLE OF AUTHORITIES

OPINIONS BELOW

JURISDICTION ..........

FEDERAL RULE INVOLVED

STATEMENT .

REASONS FOR GRANTING THE WRIT

CONCLUSION

APPENDIX A

Mandate of the Court of Appeals (May 7, 1991)

APPENDIX B

Opinion of the Court of Appeals on the Merits (928

F.2d 519)

APPENDIX C

Opinion of the Court of Appeals on the Jurisdic-

tion Question (913 F.2d 55)

APPENDIX D

Opinion of the District Court on the Merits (728

F. Supp. 873)

(iil)

Page

ill

23a

26a

TABLE OF CONTENTS—Continued

APPENDIX E Page

Final Judgment of the District Court (February

Bey WE exec te ce Neat Res RNS 60a

APPENDIX F

Opinion of the District Court Granting a Prelimi-

nary Injunction (482 F. Supp. 1358) _ 62a

_~APPENDIX G

Order of the Court of Appeals Denying Petition

for Rehearing and Suggestion for Rehearing In

Banc (April 26, 1991) Nearer col Ss co 85a

APPENDIX H

Notice of Appeal Filed by the Defendants (March

ree ee HEARS taka SPC _ 86a

APPENDIX I =

Federal Rules of Procedure Involved PAD. SE: 88a

APPENDIX J

Compilation of Various Post-Torres Cases Address-

ing the Adequacy of Notices of Appeal 89a

TABLE OF AUTHORITIES

CASES Page

Cammack v. Waihee, 932 F.2d 765 (9th Cir. 1991 7

Ford v. Nicks, 866 F.2d 865 (6th Cir.), reh’g de-

nied (6th Cir. 1989) 4)

Marin-Piazza v. Aponte-Roque, 873 F.2d 432 (1st

Cir. 1989) 4, 5,6

Minority Employees of Tennessee Dept. of E'm-

ployment Sec., Inc. v. State of Tennessee, Dept.

of Employment Sec., 901 F.2d 1327 (6th Cir.

1990) (en banc), cert. denied sub nom. Davis »

Tennessee Dept. of Employment See., 111 8. Ct.

210 (1990) . 4,5,6,9

National Center for Immigrants’ Rights, Inc. v.

I.N.S., 892 F.2d 814 (9th Cir. 1989) 9

Pride v. Venango River Corp., 916 F.2d 1250 (7th

Cir. 1990), cert. denied, 111 S. Ct. 1696 (1991). passim

Resolution Trust Corp. v. Sonny’s Old Land Corp.,

—— F.2d , 1991 WL 128583 (5th Cir. July

17, 1991) 4,5,6

Santos-Martinez v. Soto-Santiago, 863 F.2d 174

(1st Cir. 1988) a

Storage Technology Corp. v. U.S. Dist. Court for

the Dist. of Colorado, 934 F.2d 244 (10th Cir.

1991) . 7

Torres v. Oakland Scavenger Co., 487 U.S. 312

(1988) passim

Zamora v. Hart, 883 F.2d 1025 (9th Cir. 1989)

(TABLE, TEXT IN WESTLAW, No. 88-15277), mod-

ified, 902 F.2d 42 (9th Cir. 1990) (TABLE, TEXT

IN WESTLAW } 4)

STATUTES

28 U.S.C. § 1254(1) (1988) 2

28 U.S.C. § 1331 2

28 U.S.C. § 1338 (a) 2

28 U.S.C. § 1343 (3) 2

New York Standardized Testing Act, N.Y. Educ.

Law §§ 340-348 2

FEDERAL RULES

Fed. R. App. P. 3(c) passim

Fed. R. Civ. P. 10 (a) 8

IN THE

Supreme Court of the United States

OCTOBER TERM, 1991

No. 91-

ASSOCIATION OF AMERICAN MEDICAL COLLEGES,

” Petitioner,

MARIO Cuomo, Ind., and as Governor of the State of New

York; THEODORE M. BLAck, Ind., and as Chancellor,

Board of Regents of the University of the State of

New York; WILLARD A. GENRICH, Ind., and as Vice

Chancellor, Board of Regents of the University of the

State of New York; KENNETH B. CLARK, HAROLD EF.

NEWCOMB, EMLYN I. GRIFFITH, MARY ALICE KENDALL,

JORGE L. BATISTA, LOUIS E. YAVNER, LAURA BRADLEY

CHOoDOS, MARTIN C. BARELL, JOSEPH R. BONGIORNO,

LOUISE P. MATTEONI, J. EDWARD MEYER, ARLENE B.

REED-DELANEY, R. CARLOS CARBALLADA, Ind., and as

Members of the Board of Regents of the University of

the State of New York; GORDON M. AMBACH, Ind., and

as Commissioner of Education, the University of the

State of New York; and ROBERT ABRAMS, Ind., and as

Attorney General,

Respondents.

Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Second Circuit

PETITION FOR A WRIT OF CERTIORARI

The Association of American Medical Colleges

(“AAMC”) hereby petitions for a writ of certiorari to the

United States Court of Appeals for the Second Circuit.

OPINIONS BELOW

The opinion of the court of appeals on the merits (App.

B) is reported at 928 F.2d 519. The opinion of the

court of appeals denying AAMC’s motion to dismiss the

appeal for lack of jurisdiction (App. C) is reported at

913 F.2d 55. The opinion of the district court from

which the appeal was taken (App. D) is reported at

728 F. Supp. 873. The opinion of the district court

awarding preliminary injunctive relief (App. F) is re-

ported at 482 F. Supp. 1358.

JURISDICTION

The judgment of the court of appeals was entered on

March 12, 1991. A timely petition for rehearing was de-

nied on April 26, 1991 (App. G). This Court’s jurisdic-

tion is invoked under 28 U.S.C. § 1254/1) (1988).

FEDERAL RULE INVOLVED

Federal Rule of Appellate Procedure 3(c) provides, in

pertinent part, as follows:

The notice of appeal shall specify the party or parties

taking the appeal. ... An appeal shall not be dis-

missed for informality of form or title of the notice

of appeal.

STATEMENT

Petitioner AAMC brought this action against 18 named

officers of the State of New York im 1979, seeking among

other relief, a declaratory judgment that portions of New

York’s Standardized Testing Act, N.Y. Educ. Law §§ 340-

348, are preempted by federal copyright law and _in-

fringe AAMC’s copyrights. The action was filed in the

United States District Court for the Northern District

of New York, where jurisdiction rested on 28 U.S.C.

$$ 1331, 1338(a) and 1343(3). See App. F at 63a. In

1990, the district court granted AAMC’s motion for sum-

mary judgment and entered final judgment in favor of

AAMC. Apps. D and E at 59a, 60a.

A timely notice of appeal, captioned “Association of

American Colleges v. Mario Cuomo, Governor of the

State of New York, et al.,” was filed with the clerk of

the district court. App. H at 86a. The body of the no-

tice read as follows:

PLEASE TAKE NOTICE that the defendants in the

above matter hereby appeal to the United States

Court of Appeals for the Second Circuit, from the

final order of judgment entered by the Court on Feb-

ruary 13, 1990.

Id. The notice did not identify the specific defendants on

whose behalf the notice was being filed, either by name

or in any other manner.

Relying on Torres v. Oakland Scavenger Co., 487 U.S.

312 (1988), AAMC moved to dismiss the appeal on the

ground that the notice did not satisfy the specificity re-

quirements of Fed. R. App. P. 3(¢). The Second Circuit

denied AAMC’s motion, holding that “the phrase ‘the de-

fendants in the above matter hereby appeal’ was the func-

tional equivalent of naming each and every defendant in

this action.” App. C at 25a.

On the merits, the court of appeals agreed with much

of the district court’s analysis. See App. B at 9a-16a.

Nevertheless, it reversed and remanded on the ground

that a genuine issue of material fact precluded summary

judgment. /d. at 15a-16a.

REASONS FOR GRANTING THE WRIT

The Second Circuit’s jurisdictional ruling directly con-

flicts with decisions in at least four other circuits. Jf

this case had been pending in the Seventh Circuit, the

entire appeal would have been dismissed. See Pride v.

Venango River Corp., 916 F.2d 1250, 1251 (7th Cir.

1990), cert. denied, 111 S. Ct. 1696 (1991). The First,

Fifth, and Sixth Circuits would have dismissed the ap-

peal at least as to all defendants other than the one

defendant named in the caption of the notice of appeal.

See Marin-Piazza v. Aponte-Roque, 873 F.2d 432, 433

n.l (1st Cir. 1989); Resolution Trust Corp. v. Sonny’s

Old Land Corp., —— F.2d ——, 1991 WL 128583 (5th

Cir. July 17, 1991); Minority Employees of Tennessee

Dept. of Employment Sec., Inc. v. State of Tennessee,

Dept. of Employment Sec., 901 F.2d 1327, 1330, 1335-

36 (6th Cir. 1990) ‘en bane), cert. denied sub nom.

Davis v. Tennessee Dept. of Employment Sec., 111 S. Ct.

210 (1990). This Court should grant certiorari in order

to resolve this conflict and clarify the specificity require-

ment of Fed. R. App. P. 3/c). On a question of such

basic and everyday importance as the jurisdictionally

necessary content of a notice of appeal, a clear and uni-

form rule is essential.

Review is warranted because the courts of appeals

-fundamentally disagree concerning how this Court’s de-

cision in Torres should be implemented. In Torres the

Court held that to confer jurisdiction a notice of appeal

must give “fair notice of the specific individual or en-

tity seeking to appeal.” 487 U.S. at 318. The Court

ruled, in particular, that “use of the phrase ‘et al.,’ which

literally means ‘and others,’ utterly fails to provide such

notice.” Jd. In short, “vague designation|s]” are in-

sufficient. Jd.

Nevertheless, certain circuits, including -the court be-

low, continue to allow the use of vague generic descrip-

tions in notices of appeal. In addition, the circuits are

split on whether an appellate court may lock to the cap-

tion of the notice to resolve ambiguity. This case affords

an opportunity to resolve these matters once and for all.

Clarification will assist practitioners, ensure fairness and

uniformity of result, and conserve judicial resources.

1. The decision below directly conflicts with decisions

in the First, Fifth, Sixth, and Seventh Circuits. The split

in the circuits may be demonstrated by comparing the

notice of appeal in this case with the notices in Marin-

Piazza, Sonny’s Old Land, Minority Employees, and Pride

(emphasis supplied) :

AAMC

PLEASE TAKE NOTICE THAT the defendants in

the above matter hereby appeal to the United States

Court of Appeals for the Second Circuit. . .

Marin-Piazza

|T |he codefendants in this action hereby appeal... .

Sonny’s Old Land

Notice is hereby given that the defendants in this ac-

tion, hereby appeal.

Minority Employees

Now come plaintiffs in the above case and appeal t

the United States Court of Appeals for the Sixth

Circuit... .

Pride

Come now the plaintiffs by their attorney, Amiel

Cueto, and .. . hereby notices that plaintiffs are ap-

pealing to the U.S. Seventh Circuit Court of

Appeals. ...

As can be seen, all five notices use generic phrases to

designate the appealing parties. Furthermore, the cap-

tions of all five notices name only one plaintiff or de-

fendant, followed by et al. Despite these similarities, the

five courts reached three distinctly different results.

In Marin-Piazza the First Circuit held that the phrase

“the codefendants in this action” does not satisfy Fed. R.

App. P. 3(¢). 873 F.2d at 482-33. The court allowed

the appeal, however, of the one defendant named in the

caption.

The Fifth Circuit in Sonny’s Old Land similarly al-

lowed the appeal of only the single defendant named in

the caption. The court rejected the language used in the

body of the notice (“the defendants in this action’) be-

cause the court could not ‘“‘say with any degree of cer-

tainty which of the six other defendants below join in

this appeal.’””’ ——— F.2d , 1991 WL 128583 at 2.

Sitting en banc, the Sixth Circuit held in Minority

Employees that the generic phrase “plaintiffs in the above

case’ does not satisfy Fed. R. App. P. 3/e). 901 F.2d

at 1335. In so holding, the court expressly overruled Ford

v. Nicks, 866 F.2d 865 (6th Cir. 1989), which had ac-

cepted use of the phrase “the defendants.” See 901 F.2d

at 1330, 1332. Thus, in the Sixth Circuit, neither “de-

fendants” nor “the defendants” passes muster under Fed.

R. App. P. 3c). The Sixth Circuit dismissed the ap-

peal in Minority Employees as to the unnamed plaintiffs

but heard the appeal of the one plaintiff named in the

caption. '

The use of a generic description—“the plaintiffs’ —

_alsq_was_ rejected by the Seventh Circuit in Pride. Un-

like the First, Fifth and Sixth Circuits, however, the

1 The Sixth Circuit noted in Minority Employees that, “| plainly

after Torres, the safest way of securing an appeal is for the party

or parties seeking to appeal to state in the body of the notice of

appeal the name of each and every party taking the appeal.” 901

F.2d at 12335 (original emphasis). Nevertheless, the court concluded

that the-caption of the notice could be consulted in determining ap-

pellate jurisdiction. Jd. at 1335-36. It did so “reluctantly,” however,

and held that a caption will rescue an otherwise deficient notice

“only where the caption is not inconsistent with the body of the

notice. Any ambiguity will defeat the notice.” Jd. at 1336.

Seventh Circuit dismissed the entire appeal, holding that

the defect in the body of the notice could not be cured,

even in part, by the identification, in the caption, of at

least one potential appellant. 916 F.2d at 1253.

The Second Circuit’s holding in this case conflicts with

all of these decisions. The court below held that the

generic phrase “the defendants in the above matter” sat-

isfies Fed. R. App. P. 3(c) and thus serves to designate

each and every defendant as a party to the appeal.’

Of these three variant approaches adopted by the courts

of appeals, only that of the Seventh Circuit is faithful

to the text and purpose of Fed. R. App. -P. 3c). As

this Court noted in Torres, the rule’s specificity require-

ment is designed to provide both certitude and fair no-

tice regarding the identity of the parties taking the ap-

peal. 487 U.S. at 318. If courts accept notices of appeal

using vague designations and generic phases such as “‘de-

fendants” or “the defendants,” this objective will not be

met. Generic phrasing can be particularly problematic in

a complex case involving many parties, some of whom

may have been joined, substituted or dismissed subse-

quent to the filing of the original complaint. See, ¢.y4.,

Storage Technology Corp. v. U.S. Dist. Court for the

Dist. of Colorado, 934 F.2d 244, 248 (10th Cir. 1991).

’

The Seventh Circuit’s refusal to consider the caption of

the notice of appeal also furthers the purpose of Fed. R.

App. P. 3'c). Neither the opposing party nor the court

can assume that the particular party named in a short-

“The Ninth Circuit, like the Second Circuit, allows such generic

phrases. App. J at 9la. For example, in Cammacie v. Waihee, 932

F.2d 765, 768 (9th Cir. 1991), the notice of appeal stated that

“Plaintiffs above-named hereby appeal.” The Ninth Circuit noted

that “{t|he compound adjective ‘above-named’ apparently refer| red |

to the notice’s caption,” /d., and that only one individual was named

in the caption, followed by et al. Nevertheless, the court ruled that

the notice Was “sufficiently clear to alert the court and defendants

that all plaintiffs are seeking to appeal.” /d. at 769.

form caption is actually an appellant. Generally, the

party named in the caption is simply the first party

named in the complaint, and that party may not even be

appealing. See Santos-Martinez v. Soto-Santiago, 863

- F.2d 174, 175-76 (1st Cir. 1988) (party named in short-

form caption was not in fact appealing; entire appea!

dismissed in light of Torres). Indeed, because notices of

appeal are filed in the district court, the appearance of

the initial party’s name in the caption probably reflects

nothing more than compliance with Fed. R. Civ. P. 10(a).

See App. I at 88a.

In the present case, neither the body of the notice read

alone, nor the body read together with the caption, pro-

vide the certitude required by Torres. Confirming the

insufficiency of the defendants’ notice can thus clarify

Torres and standardize the circuits’ divergent treatment

of generic phrases * and captions.*

2. The issue is important. There has been an unpro-

ductive explosion of appellate litigation over the spec-

ificity requirement of Fed. R. App. P. 3(c). In the

three years since Torres was decided, the adequacy of

notices of appeal has been an issue in at least 145 re-

ported cases in the courts of appeals.’ In at least 13

cases, a petition for certiorari has been filed raising a

Torres-related issue. See App. J at 95a. Clarification is

needed to prevent the additional wasteful expenditure of

* Compare App. J at 91a (cases that have allowed the use of

generic phrases), and id. at 92a (cases that have allowed the use of

modified generic phrases), with id. at 90a (cases that have not

allowed the use of generic phrases).

‘Compare App. J at 93a (cases in which the caption has been

consulted), with id. (cases in which the court has held that the

caption may not be consulted).

® This number is based on computer searches for post-Torres cases

that have construed Rule 3(c)’s specificity requirement. Additional,

unpublished decisions no doubt exist. See App. J at 89a.

Bie

judicial and party resources on what should be a straight-

forward, bright-line jurisdictional rule."

In grappling with this issue, the circuits have fallen

into disarray. Most circuits insist upon more than the

catch-all “et al.” as a means of identifying the parties

taking an appeal. Some, however, do not, at least if there

are only two parties to the appeal, or the named party

is a parent and the al. refers to his or her children, or

the named party is a class representative and the al. re-

fers to the other members of the class. See App. J at

89a. Also, if the al. is replaced by uw., the notice of ap-

peal is adequate. /d. at 90a. Most circuits also hold that

generic phrases such as “the defendants” or, simply,

“defendants” do not satisfy Fed. R. App. 3(e). See id.

at 90a. In the Second and Ninth Circuits, however,

phrases like “the defendants” are usually, but not al-

ways, sufficient. See id. at 91a, 92a. In other circuits, a

generic phrase may be adequate if it is modified by cer-

tain key words. See id. at 92a. Even in those circuits,

however, the notice of appeal may still fail if the caption

does not include the phrase “ef a/.” Jd. at 91a. And some

circuits have looked to documents other than the notice of

appeal to identify the appellants. /d. at 94a.

This Court should restore order to this area of the law

by granting review in this case and explicitly endorsing

*The waste of judicial resources is graphically illustrated by

a series of Sixth and Ninth Circuit cases addressing the juris-

dictional significance of the definite article “the” in the phrase “the

defendants.” See Ford v. Nicks, 866 F.2d 865, 869-70 (6th Cir.)

(phrase “the defendants” satisfies Rule 3(c)), reh’g denied (6th

Cir. 1989), overruled, Minority Employees, 901 F.2d at 12320 (en

banc) (addressing the notice of appeal filed in that case for a

fourth time’; and Zamora v. Hart, 883 F.2d 1025 (9th Cir. 1989)

(TABLE, TEXT IN WESTLAW) (unlike the phrase “the defendants,”

phrase “defendants” does not satisfy Rule 3(c)), modified, 902 F.2d

42 n.1 (9th Cir, 1990) (TABLE, TEXT IN WESTLAW) (original panel

reversed its prior position and held that the phrase “defendants”

does satisfy Rule 3(c) (citing National Center for Immigrants’

tights v. ILN.S., 892 F.2d 814 (9th Cir. 1989) ),

the clear-cut reading of Fed. R. App. P. 3(c) that is

implied by Torres and has been adopted by the Seventh

Circuit in Pride. That reading of the rule best furthers

the goals of certainty and predictability. Its endorse-

ment by this Court will ensure that appellate courts and

parties need not continue to waste valuable time and re-

sources addressing the adequacy of notices of appeal.

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted,

Of Counsel: KEITH A. JONES *

JOSEPH A. KEYES, JR. CARL W. VoGT

ASSOCIATION OF AMERICAN ROBERT A. BURGOYNE

MEDICAL COLLEGES AMEE F. VERMILYE

One Dupont Circle, N.W. FULBRIGHT & JAWORSKI

Washington, D.C. 20036 801 Pennsylvania Ave., N.W.

(202) 828-0555 Washington, D.C. 20004

(202) 662-0200

* Counsel of Record

APPENDICES

APPENDIX A

UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

At a Stated Term of the United States Court of Ap-

peals for the Second Circuit, held at the United States

(ourthouse in the City of New York, on the 12th day of

March, one thousand nine hundred and _ ninety-one.

Present: HON FRANK X. ALTIMARI

Hon. J. DANIEL MAHONEY

Circuit Judges,

Hon. T.F. GILROY DALY

District Judge *

90-7269, -7309

~ ASSOCIATION OF AMERICAN MEDICAL COLLEGES,

Plainti ff-A ppellee,

Cross-A ppellan f

-against-

Mario CuoMo, Ind., and as Governor of the State of New

York; THEODORE M. BLAck, Ind., and as Chancellor,

Board of Regents of the University of the State of New

York; WILLARD A. GENRICH, Ind., and as Vice Chancel]-

lor, Board of Regents of the University of the State of

New York; KENNETH B. CLARK, HAROLD E. NEw-

COMB, EMLYN I. GRIFFITH, MARY ALICE KENDALL,

JORGE L. BATISTA, LoUIS E. YAVNER, LAURA BRADLEY

CHopos, MARTIN C. BARELL, JOSEPH R. BONGIORNO,

LOUISE P. MATTEONI, J. EDWARD MEYER, ARLENE B.

REED-DELANEY, R. CARLOS CARBALLADA, Ind., and as

Members of the Board of Regents of the University

of the State of New York, GORDON M. AMBACH, Ind.,

and as Commissioner of Education, the University of

the State of New York, and ROBERT ABRAMS, Ind., and

as Attorney General,

Defendants-A ppellants.

Appeal from the United States District Court

from the Northern District of New York

This cause came on to be heard on the transcript of

the record from the United States District Court for the

Northern District of New York and was argued by

counsel.

ISSUED AS MANDATE: May 7, 1991

APPENDIX B

UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

Nos. 595, 690—August Term, 1990

(Argued: November 26, 1990 Decided: March 12, 1991)

Docket Nos. 90-7269, -7309

ASSOCIATION OF AMERICAN MEDICAL COLLEGES,

Plaintiff-A ppellee,

Cross-A ppellant,

—V.—

MARIO CuoMO, Ind., and as Governor of the State of New

York; THEODORE M. BLACK, Ind., and as Chancellor,

Board of Regents of the University of the State of New

York; WILLARD A. GENRICH, Ind., and as Vice Chancel-

lor, Board cf Regents of the University of the State of

New York; KENNETH B. CLARK, HAROLD E. NEw-

COMB, EMLYN I. GRIFFITH, MARY ALICE KENDALL,

JORGE L. BATISTA, LOUIS E. YAVNER,-LAURA BRADLEY

CHODOS, MARTIN C. BARELL, JOSEPH R. BONGIORNO,

LOUISE P. MATTEONI, J. EDWARD MEYER, ARLENE B.

REED-DELANEY, R. CARLOS CARBALLADA, Ind., and as

Members of the Board of Regents of the University

of the State of New York, GorDON M. AMBACH, Ind..,

and as Commissioner of Education, the University of

the State of New York, and Ropert ABRAMS, Ind., and

as Attorney General,

_ Defendants-A ppellants,

Cross-A ppellees.,

EE Ise

Before:

ALTIMARI and MAHONEY, Circuit Judges,

and DALY, District Judge."

Appeal from judgment, entered in the United States

District Court for the Northern District of New York

(Neil P. McCurn, C./.), granting plaintiff’s motion for

summary judgment and permanently enjoining defend-

ants from enforcing various provisions of the New York

Standardized Testing Act, N.Y. Educ. L. § 340 et seq.

‘McKinney 1988).

Reversed, vacated and remanded.

Judge Mahoney concurs in part and dissents in part in

a separate opinion.

ROBERT A. BURGOYNE, Washington, D.C. (Carl W. Vogt,

Fulbright & Jaworski, Washington, D.C.; Joseph A. Keyes,

Jr., Association of American Medical Colleges, Washing-

ton, D.C.; Carroll J. Mealey, Christopher Massaroni, De-

Graff, Foy, Conway, Holt-Harris & Mealey, Albany, N.Y.,

of counsel), for Plaintiff-Appellee, Cross-Appellant.

DANIEL SMIRLOCK, Assistant Attorney General, Albany,

N.Y. (Robert Abrams, Attorney General of the State of

New York, O. Peter Sherwood, Solicitor General, Peter

H. Schiff, Deputy Solicitor General, Albany, N.Y., of coun-

sel), for Defendants-Appellants, Cross-Appellees.

Bruck P. KELLER, New York, N.Y. (Lorin L. Reisner,

Debevoise & Plimpton, New York, N.Y.; Alan B. Morri-

son, David C. Vladeck, Publie Citizen Litigation Group,

Washington, D.C., of counsel), for amici curiae National

* The Honorable T.F. Gilroy Daly, District Judge of the United

States District Court for the District of Connecticut, sitting by

designation.

Center for Fair & Open Testing, Public Citizen Litigation

Group, The Center for Women Policy Studies, Arthur O.

Eve, The Fund for the Feminist Majority, Golden Rule

Insurance Company, Mexican American Legal Defense

and Educational Fund, National Education Association,

The National Women’s Law Center, New York Public

Interest Research Group, and NOW Legal Defense and

Education Fund.

Davip M. WHITE, Berkley, C.A., for amici curiae Test-

ing for the Public, Puerto Rican Legal Defense and Edu-

cation Fund, United States Students Association, and The

Equality in Testing Project.

EDWARD W. KEANE, New York, N.Y. (Henry Chris-

tensen III, David G. Feher, Sullivan & Cromwell, New

York, N.Y., of counsel), for amicus curiae College En-

trance Examination Board.

ALTIMARI, Circuit Judge:

The central] question presented by this appeal is whether

the district court erred in holding that the disclosure

requirements of New York’s Standardized Testing Act,

N.Y. Educ. L. § 340 et seg. (McKinney 1988) i“STA”),

are pre-empted by the federal Copyright Act of 1976, 17

U.S.C. $ 101 et seg. (1988) (“Copyright Act’). Defend-

ants-appellants, cross-appellees Mario Cuomo et al. (the

“State’’) appeal from a judgment, entered in the United

States District Court for the Northern District of New

York (Neil P. McCurn, Chief Judge), granting plaintiff-

appellee, cross-appellant American Association of Medi-

cal Colleges” (“AAMC”) motion for summary judgment

and enjoining the State from enforcing various provisions

of the STA against AAMC. Association of American

Medical Colleges v. Carey, 728 F. Supp. 873 (N.D.N.Y.

1990) (“AAMC IT’).

In 1979, AAMC initiated this action for declaratory and

injunctive relief, alleging that the STA operates to in-

fringe its federal copyright in the test forms, questions,

answers, and reports prepared in connection with the ad-

ministration of the Medical College Admission Test

(“MCAT”). It further alleged that, as a result of the

conflict between the STA and the Copyright Act, the

former was preempted pursuant to the Constitution’s Su-

premacy Clause, U.S. Const., art. VI, cl. 2. The State

responded that the STA’s treatment of the MCAT con-

stitutes a “fair use” under the Copyright Act, 17 U.S.C.

$3 107 (1988), and, therefore, that the STA was not pre-

empted.

On October 25, 1988, after nearly ten years of litiga-

tion, AAMC moved for summary judgment on its com-

plaint. The State opposed this motion and cross-moved

for dismissal of AAMC’s pendent claims based on the

New York State Constitution. On January 12, 1990, the

district court granted AAMC’s motion for summary judg-

ment and enjoined enforcement of certain STA provisions

which it found to conflict with the Copyright Act. The

court also granted the State’s motion to dismiss AAMC’s

pendent state constitutional claims and denied AAMC’s

request for attorney’s fees.

On appeal, the State contends that the district court

erred in granting summary judgment in favor of AAMC.

It argues that genuine issues of material fact exist, par-

ticularly with regard to the effect of the STA’s disclosure

provisions on the copyrighted material’s market value.

The State also contends that the scope of the court’s in-

junction is overly broad, even if the Copyright Act is

deemed to preempt some STA provisions. AAMC, in its

cross-appeal, argues that the court improperly denied its

request for attorney’s fees under section 505 of the Copy-

right Act. For the reasons set forth below, we reverse the

judgment of the district court, vacate the permanent in-

junction, and remand for further proceedings.

BACKGROUND

AAMC is a non-profit educational association com-

prised of medical schools, teaching hospitals, and aca-

demic societies. It sponsors a testing program for medi-

‘al school applicants which is designed to provide medical

school admissions committees with a uniform standard for

measuring aptitude. The central feature of this program

is the MCAT, a test developed at AAMC’s request by the

American Institutes for Research in the Behavioral Sci-

ences (“AIR”). The exam consists of some 300 questions

and is designed to measure a test-taker’s knowledge of

chemistry, biology, and physics, as well as his or her read-

ing and quantitative skills. Virtually every medical school

in the United States requires applicants to take the MCAT.

The AAMC holds copyrights in MCAT test forms, test

questions, answer sheets, and reports. It has never made

the MCAT or test answers available to the genera! public.

AAMC does, however, make one “practice test”—a previ-

ously-used test that was compromised through unauthor-

ized disclosure—available to interested applicants. After

the exams are graded, AAMC sends examinees only their

MCAT scores and does not permit them access to test

questions or answer keys.

In 1979, the State of New York enacted the STA in

order to open the standardized testing process to public

scrutiny. In its present form, the STA provides that

“|wlhenever any test agency prepares or causes to have

prepared research which is used in any study, evaluation

or statistical report pertaining to a test... , such study,

evaluation or report shall be filed with” the Commissioner

of Education. N.Y. Educ. L. § 341. Test agencies also

must prepare and file reports analyzing test scores accord-

ing to race, ethnicity, gender and linguistic background

for tests given between July 1, 1988 and July 1, 1989.

N.Y. Educ. L. § 341l-a. In addition, “|wJithin thirty

days after the results of any standardized test are re-

leased,” a test agency must file “a copy of all test ques-

tions used in calculating the test subject’s raw score” and

“the corresponding acceptable answers to those questions”

with the Commissioner of Education. N.Y. Educ. L.

S$ 341, 342(7), subjecting them to public inspection upon

request under the New York Freedom of Information

Law, N.Y. Pub. Off. L. § 84 et seg. (McKinney 1988).

Finally, the STA requires that, after the test has been

filed with the Commissioner, the test agency must “pro-

vide to the test subject the opportunity to secure” test

questions and answers, and “may charge a nominal fee

for providing such information.” N.Y. Educ. L. § 342(2).

Following enactment of the STA, AAMC commenced

an action for declaratory and injunctive relief, alleging

that the STA facilities infringement of its copyrights in

MCAT forms, questions, answers, and reports. AAMC

contended that, as a result, the STA is preempted by the

federal Copyright Act, 17 U.S.C. § 101 et seg. In Janu-

ary 1980, finding AAMC to have satisfied the prerequi-

sites to obtain preliminary injunctive relief, the district

court granted AAMC’s motion for a preliminary injunc-

tion against enforcement of sections 341 and 342 of the

STA. Association of American Medical Colleges v. Carey,

482 F. Supp. 1358 (N.D.N.Y. 1980) (“AAMC I’). Fol-

lowing a lengthy period of discovery, AAMC amended its

complaint to allege, inter alia, that sections 341, 341-a,

and 342 of the STA are preempted by the federal Copy-

right Act. In addition, AAMC alleged that the STA’s

provisions infringed its copyright, in violation of 17 U.S.C.

: 501(a) (1988), and constituted a seizure of its exclusive

rights, in violation of 17 U.S.C. § 201l(e) (1988). AAMC

also alleged that the STA violated several provisions of

the New York and federal constitutions.

AAMC moved for summary judgment in October 1988.

The State opposed the motion and cross-moved for dis-

missal of AAMC’s pendent state constitutional claims. On

January 12, 1990, the district court granted AAMC’s mo-

tion for summary judgment and the State’s motion to dis-

miss the pendent claims. AAMC I], 728 F. Supp. at 8&9.

The court found thai the STA’s requirement that AAMC

disclose its test materials conflicts with the copyright pro-

tection due those materials under the federal Copyright

Act. It further found that this disclosure does not consti-

tute a “fair use” of the MCAT under the Copyright Act.

Accordingly, it concluded that the STA is preempted by

the Copyright Act and permanently enjoined the State

from enforcing the STA against AAMC. The court denied

AAMC’s request for attorney’s fees and costs. This ap-

peal and cross-appeal followed.

DISCUSSION

I]. Defining the issue.

As the district court stated, “|t]he central legal ques-

tion presented is whether the disclosure requirements of

New York’s Standardized Testing Act clash with rights

conferred upon plaintiff by the Federal Copyright Act. of

1976, 17 U.S.C. § 101 ef seq., in a manner which compels

this court to find the State Act invalid by virtue of the

Supremacy Clause of the U.S. Constitution.” AAMC I,

728 F. Supp. at 74. The Constitution’s Supremacy Clause

may compel invalidation of state law in several ways:

First, Congress may in express terms declare its

intention to preclude state regulation in a given

area... . Second, in the absence of an express dec-

laration, preemption may be implied when the fed-

eral law is “sufficiently comprehensive to make

reasonable the inference that Congress ‘left no room’

for supplementing state regulation.” .. . Finally,

state law may be preempted “to the extent that it

actually conflicts with a valid federal statute.”

Darling v. Mobil Oil Corp., 864 F.2d 981, 985-86 (2d

Cir. 1989) (citations omitted). The third type of state

law preemption enumerated in Darling, so-called “conflict

10a

bd ‘

preemption,” occurs either when “ ‘compliance with both

federal and state regulations is a physical impossibility,’

. or where state Jaw ‘stands as an obstacle to the ac-

complishnent and execution of the full purposes and ob-

jectives of Congress.’” Jd. at 986 (citations omitted) ;

see Perez v. Campbell, 402 U.S. 637, 649 (1971).

AAMC contends that the STA conflicts with its exclu-

sive right to publish, copy end distribute MCAT materi-

als, see 17 U.S.C. $106 (1988), by requiring disclosure

of those materials to test-takers and by facilitating pub-

lic distribution of those materials. According to AAMC,

this conflict between state law and federally-created

rights renders the state law preempted. See Goldstein v.

California, 412 U.S. 546, 559 (1973); Allied Artists Pic-

tures Corp. v. Rhodes, 496 F. Supp. 408, 441-42 (S.D.

Ohio 1980), aff'd in pertinent part, 679 F.2d 656 (6th

Cir. 1982).

In response, the defendants argue that the disclosure

envisioned by the STA does not infringe upon the copy-

rights held by AAMC. They argue that the STA merely

facilitates “fair uses” of the copyrighted material and,

therefore, is consistent with the federal Copyright Act,

which contains a ‘fair use” defense to copyright infringe-

ment. See 17 U.S.C. §$ 107; see also Sony Corp. of Amer-

ica v. Universal City Studios, Inc., 464 U.S. 417, 433

(1984) (‘{A]nyone who trespasses into [the copyright

owner’s| exclusive domain by using or authorizing the use

of the copyrighted work... “is an infringer of the copy-

right.” [17 U.S.C.] §501(a). Conversely, anyone who

is authorized by the copyright owner to use the copy-

righted work . . . or who makes a fair use of the work

is not an infringer of the copyright... .”).

“Our task is ‘to determine whether, under the circum-

stances of this particular case, [the State’s] law stands

as an obstacle to the accomplishment and execution of the

full nurposes and objectives of Congress.

> 99

Jones v.

lla

Rath Packing Co., 430 U.S. 519, 526 (1977) (citation

omitted). Thus, we must determine whether the disclo-

sure of the MCAT facilitated by the STA infringes on

the copyrights held by AAMC. If the STA facilitates

infringement, it conflicts with the federal Copyright Act

and is preempted. Such a determination is made in light

of the ‘fair use’ defense since “{t]he existence of a

hypothetical or potential conflict is insufficient to war-

rant the pre-emption of the state statute.” Rice v. Nor-

man Williams Co., 458 U.S. 654, 659 (1982).

JI. The fair use doctrine.

It has_long been recognized that certain unauthorized

but “fair” uses of copyrighted material do not consti-

tute copyright infringement. See Harper & Row, Pub-

lishers, Inc. v. Nation Enterprises, 471 U.S. 539, 549

(1985) (defining fair use as “privilege . . . to use the

copyrighted material in a reasonable manner without

[the copyright owner’s] consent”) (quoting H. Ball, Law

of Copyright and Literary Property 260 (19441); 3 M.

Nimmer & D. Nimmer, Nimmer on Copyright § 13.05, at

13-79 (1990) (“Nimmer on Copyright’). This “fair use”

doctrine “permits courts to avoid rigid application of the

very creativity which that law is designed to foster.”

Iowa State Univ. Research Foundation, Inc. v. American

Broadcasting Cos., 621 F.2d 57, 60 (2d Cir. 1980).

The fair use defense was expressly recognized in the

determining the applicability of the doctrine. See Nimmer

on Copyright § 13.05 [A], at 13-82 to 13-83. Section 107

of the Copyright Act, in pertinent part, provides:

Notwithstanding the provisions of section t)6, the

fair use of a copyrighted work .. . for purposes such

as criticism, comment, . . . scholarship, or research,

is not an infringement of copyright. In determining

EEE

12a

whether the use made of a work in any particular

case is a fair use the factors to be considered shall

include—

(1) the purpose and character of the use, including

whether such use is of a commercial nature or is for

nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion

used in relation to the copyrighted work as a whole;

and

(4) the effect of the use upon the potential market

for or value of the copyrighted work.

17 U.S.C. § 107. “The factors enumerated in [section

107] are not meant to be exclusive: ‘|S|ince the doctrine

lof fair use] is an equitable rule of reason, no generally

applicable definition is possible, and each case raising

the question musi be decided on its own facts.’” Harper

& Row, 471 U.S. at 560 (quoting H.R. Rep. No.

1476 94th Cong., 2d Sess. 65, reprinted in 1976 U.S.

Code Cong. & Admin. News 5659, 5679). “Fair use is a

mixed question of law and fact.” Jd. at 560. Evaluation

of the statutory fair use factors “in a particular case is

obviously a fact specific inquiry for which summary

judgment is ill-suited.” Diamond v. Am-Law Publishing

Corp., 745 F.2d 142, 147 (2d Cir. 1984); accord DC

Comics, Inc. v. Reel Fantasy, Inc., 696 F.2d 24, 28 (2d

Cir. 1982); Meeropol v. Nizer, 560 F.2d 1061, 1070-71

2d Cir. 1977), cert. denied, 484 U.S. 1013 (1978).

In the present case, the district court appraised the

statutory fair use factors in the following manner. Ini-

tially, it held that “the purpose and character of the

use[s|” envisioned by the STA serve important public

interests. AAMC II, 728 F. Supp. at 884-885. As the

State explains, the STA is “intended to serve the public

interest in the validity and objectivity of tests, to en-

13a

courage development of better test instruments, and to

assure the accuracy of the scoring process.” The State

does not seek to exploit disclosed MCAT materials com-

mercially, cf. Association of American Medical Colleges v.

Mikaelian, 571 F. Supp. 144, 151-53 (E.D. Pa. 1983),

aff'd without opinion, 734 F.2d 3 (38d Cir, 1984), but

rather to foster the “criticism, comment, .. . scholarship,

[and] research” contemplated by section 107. See Mar-

tone-Graham v. Burtchaell, 803 F.2d 1253, 1260 (2d Cir.

1986), cert. denied, 481 U.S. 1059 (1987). Thus, the

court concluded that the first “fair use” factor favors

the position asserted by the State. See Sony Corp. of

America, 464 U.S. at 449. This conclusion is essentially

uncontested by the parties, and we find no reason to

disturb it.

Next, the district court held that “the second | fair

use|] factor cuts in favor of’ AAMC, since the MCAT is

an unpublished work. AAMC II, 728 F. Supp. at &&5-

86. See New Era Publications Int’l v. Henry Holt and

Co., 873 F.2d 576, 583 (2d Cir. 1989), cert. denied, 110

S. Ct. 1168 (1990); Salinger v. Random House, Ine., 811

F.2d 90, 97 (2d Cir.), cert. denied, 484 U.S. 890 (1987).

On appeal, the State reiterates its contention that the

MCAT does not fall within the traditional published

unpublished dichotomy because of the limited exposure

to the test regularly granted to test-takers. However, we

are inclined to agree with the district court that the

secure nature of the MCAT weighs in favor of AAMC.

See Naional Conference of Bar Examiners v. Multistate

Legal Studies, Inc., 692 F.2d 478, 486 n.8 (7th Cir.

1982) (in upholding validity of Copyright Office’s secure

test deposit regulation, court noted: “We agree with the

would probably be classified as an unpublished work

under 17 U.S.C. $101... ."), cert. denied, 464 U.S.

814 (1983); Association of American Medical Colleges v.

Mikaelian, 571 F. Supp. at 153. Moreover, we recognize

l4a

that the MCAT is not a mere compilation of facts; it is

a “creative, imaginative, and original’? work, MCA, Inc.

v. Wilson, 677 F.2d 180, 182 (2d Cir. 1981) (citation

omitted), and reflects a substantial investment aimed at

accurately discerning the aptitude of medical school ap-

plicants, Association of American Medical Colleges v.

Mikaelian, 571 F. Supp. at 150.

Furthermore, the district court held that the third fair

use factor, 7.e., “the amount and substantiality of the

portion used in relation to the copyrighted work as a

whole,” Harper & Row, 471 U.S. at 564, favored

AAMC’s position. AAMC II, 728 F. Supp. at 886-87.

The State does not seriously contest this conclusion since

the STA would permit comprehensive disclosure and dis-

tribution of the MCAT and related materials. Although

the STA would not require disclosure of ungraded ques-

tions used solely for field-testing purposes, the amount

and substantiality of disclosure desired by the State is

obviously extensive. Thus, we are inclined to agree with

the court’s evaluation of the third fair use factor.

Finally, the district court considered the fourth fair

use factor, 7.e., the “effect of the use upon the potential

market for or value of the copyrighted work.” 17 U.S.C.

§ 107(4). The fourth fair use factor is considered “the

single most important element of fair use.” Harper &

Row, 471 U.S. at 566. It requires appraisal of whether

“some meaningful likelihood of future harm |to the mar-

ket for or value of the copyrighted work] exists. If the

intended use is for commercial gain, that likelihood may

be presumed. But if it is for a noncommercial purpose,

the likelihood must be demonstrated.” Sony Corp. of

America, 464 U.S. at 451; see Salinger v. Random House,

811 F.2d at 99; Nimmer on Copyright § 13.05[A], at

13-88.12. Adverse impact that results from criticism

or unfavorable comment on the copyrighted work is not

considered in evaluating this factor. See New Era Pub-

lications Int’l v. Carol Publishing Group, 904 F.2d 152,

15a

160 (2d Cir. 1990) (“New Era IT’); Consumers Union

of United States, Inc. v. General Signal Corp., 724 F.2d

1044, 1051 (2d Cir. 1983), cert. denied, 469 U.S. 823

(1984).

Applying these standards, the court held that “disclo-

sure of the MCAT test questions would prevent them

from being reused by the plaintiff.” AAMC IJ, 728 F.

Supp. at &%&. Accordingly, it concluded that the disclo-

sure and distribution contemplated by the STA “would

seriously impair or even destroy the value of the copy-

righted exams.” /d. The State challenges this conclu-

sion, and asserts t.at expert testimony to the contrary

created genuine issues of material fact that precluded

summary judgment. We agree.

In opposition to AAMC’s claim that disclosure would

negatively affect the value of the MCAT, the State pre-

sented the testimony of Professor Walter M. Haney,

Director of the Educational Technology Program at Bos-

ton College. Professor Haney testified that it was “en-

tirely conceivable” that disclosed MCAT questions would

be reusable. In a later affidavit, Professor Haney referred

to a study concerning the effects of disclosure on per-

formance on the Test of English as a Foreign Language

(“TOEFL”) which stated: “{a]s more and more dis-

closed TOEFL tests become available . .. the effect of

test disclosure should diminish to a_ negligible level,

eventually allowing disclosed TOEFL items to be reused in

institutional test forms.” Professor Haney also testified

that various equating strategies might be employed to

reduce any scoring deviations resulting from re-use of

MCAT questions. This testimony consisted of highly tech-

nical evaluations of alternative equating strategies, in-

cluding embedded anchor test equating, item response

theory equating, and section pre-equating. The district

court dismissed this testimony as “irresolute’ and

“equivocal.” Jd, at &&87, &%8. While the trier of fact

may ultimately reach this same conclusion, summary

16a

judgment is not the appropriate moment for resolving

issues of witness credibility. See Anderson v. Liberty

Lobby, Ine., 477 U.S. 242, 255 (1986).

Moreover, we reject the district court’s conclusion that

a copyright owner, such as AAMC, should not be “re-

quired to change its operations when another individual

or entity is interfering with its ownership rights under

the Federal Copyright Act in order to make the fair use

exception fit.” AAMC II, 728 F. Supp. at 888. Fair use

is an “equitable rule of reason,” Harper & Row, 471 U.S.

at 560 (quotation omitted), which is not amenable to

such mechanical application. Generally, a copyright

owner should not be expected to take steps to minimize

the potential harm that a particular unauthorized use

might cause to the copyrighted material’s value. How-

ever, given the laudable goals of the State in enacting the

STA, this is a case in which some accommodation by the

Inc. v. Wilson, 677 F.2d at 183 (“[W]here a claim of fair

use is made, a balance must sometimes be struck between

the benefit the public will derive if the use is permitted

and the personal gain the copyright owner will receive if

the use is denied.’’).

This case does not present the relatively straightfor-

ward situation in which the potential harm to a copy-

righted work flows from direct competition with the as-

sertedly fair use. In such circumstances, we have noted

our concern that “creation will be discouraged if demand

can be undercut by copiers.” Consumers Union, 724 F.2d

at 1051 (quoted in New Fra IJ, 904 F.2d at 160). In

the present case, however, the purported harm to the

MCAT stems from a non-commercial, non-competing use.

Moreover, the degree of potential harm to the MCAT

and the availability of means to minimize that harm are

sharply in dispute. Accordingly, there remain factual

issues which deserve further elucidation before the dis-

trict court,

17a

CONCLUSION

In light of the foregoing, we reverse the judgment of

the district court, vacate the permanent injunction, and

remand for further proceedings. The State shall be en-

joined from enforcing the STA provisions against AAMC

during the pendency of the remand proceedings.

Given our decision to remand this case to the district

court, it would be inappropriate to address the State’s

contentions regarding the breadth of the court’s injunc-

tion or AAMC’s cross-appeal from the denial of attor-

ney’s fees. Accordingly, we express no view on those issues

at this time.

18a

MAHONEY, Circuit Judge, coneurring in part and dis-

senting in part:

Addressing the issue as framed by the parties on

appeal, I generally agree with my colleagues’ conclusion

that summary judgment was improper because there

existed genuine issues of material fact regarding New

York State’s fair use defense. Because it is challenging

noncommercial use by the state, AAMC has the burden

of proving “that some meaningful likelihood of future

harm {to marketability] exists.” Sony Corp. v. Universal

City Studios, 464 U.S. 417, 451 (1984). I agree that

Professor Haney’s testimony was sufficient to create a

factual issue in this regard, and that the availability of

means to minimize any such harm is also in dispute.

Further, at least two requirements of the STA--filing

any research reports used in preparing the MCAT, and

filing statistical reports that categorize scores by race

and gender with a committee that reports to the state

legislature—appear unrelated to the district court’s con-

cern with the AAMC’s ability to reuse questions.

I write separately to express my doubt concerning a

more fundamental aspect of the district court’s opinion,

the recognition of a preemption-type conflict between the

STA and the Copyright Act. The district court reasoned

as follows on this issue:

|T|he New York statute will require the AAMC as

owner of a copyrighted standardized test to disclose

an exam which it wishes to retain as confidential.

The State Act will also make the disclosed MCAT

materials “public records’ with respect te New

York’s Freedom of Information Law, and therefore

subject these documents to reproduction and disclo-

sure to members of the public. As such, unless the

disclosure provisions of the New York statute fall

into an exception to the exclusive rights of a copy-

right owner, those provisions will directly conflict

with federal law and thereby be preempted.

19a

Association of Am. Medical Colleges v. Carey, 728 F. Supp.

873, 881 (N.D.N.Y. 1990). My colleagues, apparently

in substantial agreement with this analysis, conclude:

“If the STA facilitates infringement, it conflicts with

the federal Copyright Act and is preempted” (subject, of

course, to defenses, such as fair use, provided by the

[I would not find a fatal conflict so easily. There is a

meaningful distinction between AAMC’s exclusive right

to reproduce and distribute its copyrighted MCAT and

the business of administering, and evaluating students’

responses to, the MCAT as a means of ranking medical

school applicants. The former is protected by the copy-

right laws, and New York cannot create its own scheme

whereby an author establishes and protects the reproduc-

tion and distribution of his work. But when the AAMC

seeks to administer the MCAT and rank applicants on the

results, it enters a field of conduct that, as I view the

matter, New York may permissibly regulate. Specifically,

it seems to me that New York may require that the au-

thor of such an examination surrender a limited amount

of his copyright protection in exchange for the privilege

of administering the examination within the state.

The district court addressed this matter briefly:

Defendants... contend that the State Act does not

force |AAMC]! to disclose the MCAT materials, but

rather presents the AAMC with a choice: avoid

disclosure by not administering the exam within

New York or administer the MCAT within New

York and be subject to the State’s disclosure require-

ments. This argument, while of potential use in

situations where the State is seeking to regulate

an area left open by the federal government, has no

merit where the State law is preempted by the fed-

eral jaw pursuant to the Supremacy Clause. A state

not answer an assertion of federal rights with

sere a

20a

the reply that one should go elsewhere to exercise

those rights. Cf. Capital Cities Cable v. Crisp, 467

U.S. at 711, 104 S. Ct. at 2706.

728 S. Supp. at 888. There is, however, no federal regu-

lation of standardized testing that would displace New

York’s statutory scheme. Capital Cities, by contrast,

involved cable television, an area of pervasive federal

regulation.

I would rule that a limited degree of interference with

poses wholly unrelated to the policies that underly the

protection of intellectual property, endeavors to regulate

the manner in which an author markets his expression.

Here. the chosen means of marketing the MCAT results

in a secretive method of ranking medical school appli-

cants. The State’s policy is directed at that marketing

strategy, and any interference with copyrights is inci-

dental.

An analogy can be found in state statutes that regu-

late the licensing arrangements between movie distribu-

utors and theatre operators. In Allied Artists Pictures

Corp. v. Rhodes, 496 F. Supp. 408 (S.D. Ohio 1980),

aff'd in pertinent part and remanded in part, 679 F.2d

656 (6th Cir. 1982), Ohio had enacted a statute that,

inter alia: (1) required distributors to provide potential

exhibitors with a “trade screening” of a film prior to

the commencement of bidding or negotiation for a

license, and (2) prohibited distributors from exacting a

minimum guaranteed payment in connection with any

licensing agreement that based payments upon a division

of box office receipts. 496 F. Supp. at 419-20. The dis-

tributors contended that the statute conflicted with the

preempted.

The district court rejected the preemption challenge,

pointing out that “{t]he Supreme Court has long recog-

21a

nized the distinction between the rights composing copy-

right and the property produced and marketed by virtue

of the copyright.” Jd. at 446. Reviewing cases that

upheld the taxation and antitrust regulation of copy-

righted materials, id. at 446-47, the court concluded that

“lt}he authority of the states to regulate market prac-

tices dealing with copyrighted subject matter is well-

established.” Jd. at 447.

With respect to the requirement of a trade screening,

the distributors argued that the state statute unlawfully

compelled a performance, an exclusive right under the

Artists court engaged in the same analysis that the de-

fendants herein urged upon the district court below:

|'T|he trade sereening requirement only affects copy-

right holders who wish to license their films in

Ohio; it does not compel performance in any other

circumstances.

The provision does not deprive the plaintiffs of their

right to decide whether or not to perform the work.

[T]he plaintiffs are free to choose not to per-

form their work publicly, and may continue to en-

join others from performing it. Thus they retain

complete control over the rights granted by the Copy-

right Act: to prohibit display, performance, repro-

duction and distribution. It is only after the copy-

right owner has made the decision to perform the

work—to release the motion picture—in Ohio that

the Ohio Act steps in and compels a_ performance

before exhibitors as a condition to the distribution

of films in Ohio.

496 F. Supp. at 447.

On appeal, the Sixth Circuit expressly adopted the

analvsis of the Ohio district court with respect to the

distributors’ copyright preemption challenge. See 679

22a

F.2d at 662-63 & n.4. Further, in addressing a similar

Pennsylvania statute against which the same copyright

preemption argument was advanced, the Third Circuit

“agree[d] with the framework of analysis set forth by

the Ohio district court and adopted by the Sixth Circuit

[in Allied Artists].” Associated Film Distribution Corp.

v. Thornburgh, 683 F.2d 808, 816-17 (3d Cir. 1982); see

also Associated Film Distribution Corp. v. Thornburgh,

614 F. Supp. 1100, 1121-24 (D. Pa. 1985) (following

Allied Artists and finding no preemption), aff'd, 800

F.2d 369 (3d Cir. 1986), cert. denied, 480 U.S. 933

(1987); Warner Bros., Inc. v. Wilkinson, 533 F. Supp.

105, 108 (D. Utah 1981) (similar ruling), appeal dis-

missed and case remanded, 782 F.2d 136 (10th Cir.

1985).

In sum, I cannot agree that a preemptive conflict

between the Copyright Act and the STA results if the

STA is deemed to “facilitate” copyright infringement,

subject only to the defenses accorded by the Copyright

Act. Rather, I would direct the district court to address

the threshold preemption question on remand in accord-

ance with the principles and authorities set forth herein-

above.

23a

APPENDIX C

UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

No. 595 August Term, 1990

(Submitted: September 11, 1990 Decided: Sep. 14, 1990)

Docket No. 90-7269

ASSOCIATION OF AMERICAN MEDICAL COLLEGES,

Plaintiff-Appellee,

Cross-A ppellant,

Vv.

MARIO Cuomo, Individually, and as Governor of the

State of New York, Theodore M. Black, Individually,

and as Chancellor, Board of Regents of the University

of the State of New York, WILLARD A. GENRICH, In-

dividually and as Vice Chancellor, Board of Regents of

the University of the State of New York, KENNETH

B. CLARK, HAROLD E. NEWCOMB, EMLYN I. GRIFFITH,

MarRY ALICE KENDALL, JORGE L. BATISTA, LOUIS E.

YAVNER, LAURA BRADLEY CHODOS, MARTIN C. BARELL,

JOSEPH R. BONGIORNO, LOUISE P. MATTEONI, J. Ep-

WARD MEYER, ARLENE B. REED-DELANEY, R. CARLOS

CARBALLADA, Individually, and as Members of the Board

of Regents of the University of the State of New York,

GORDON M. AMBACH, Individually, and as Commissioner

of Education, the University of the State of New York,

and ROBERT ABRAMS, Individually, and as Attorney

General,

Defendants-A ppellants,

Cross-A ppellees.

24a

Before: LUMBARD, WINTER and MINER, Circuit

Judges.

Motion to dismiss an appeal from a judgment of the

United States District Court for the Northern District of

New York (Neal P. McCurn, Chief Judge), for failure

to comply with the notice provision of Fed. R. App. P.

3(c). We deny the motion because the phrase “the de-

fendants in the above matter hereby appeal’’ sufficiently

specifies that all of the defendants are appealing.

Robert A. Burgoyne, Washington, D.C. (Carl W. Vogt,

Fulbright & Jaworski, Washington, D.C., of counsel), jor

Cross-A ppellant.

Daniel Smirlock, Assistant Attorney General, A!bany,

New York (Robert Abrams, Attorney General of the

State of New York, O. Peter Sherwood, Soliciltor Gen-

eral, Peter H. Schiff, Deputy Solicitor General, Albany,

New York, of counsel), for Cross-Appellees.

PER CURIAM:

Cross-appellees, eighteen New York State officials, ap-

peal from a grant of summary judgment in favor of

cross-appellant Association of American Medical Colleges

(“AAMC”). Cross-appellees filed a timely notice of ap-

peal stating

PLEASE TAKE NOTICE that the defendants in the

above matter hereby appeal to the United States

Court of Appeals for the Second Circuit, from the

final order of judgment entered by the Court on Feb-

ruary 13, 1990.

AAMC moves for an order dismissing the appeal for

lack of jurisdiction on the ground that the notice of ap-

peal failed to comply with the specificity requirements

of Federal Rule of Appellate Procedure 3(c) because it

did not list the appealing parties individually. We deny

the motion.

25a

Rule 3(c) requires in relevant part that “[t|he no-

tice of appeal shall specify the party or parties taking

the appeal.” Although failure to name a party in a

notice of appeal constitutes a failure of that party to

appeal, see Torres v. Oakland Scavenger Co., 487 USS.

312, 314 (1988), such defect may be immaterial if the

notice of appeal contains the “functional equivalent” of

a listing of each appealing party’s name, see id. at 317.

We hold that the phrase “the defendants in the above

matter hereby appeal” was the functional equivalent of

naming each and every defendant in this action. See

Baylis v. Marriott Corp., 906 F.2d 874 (2d Cir. 1990)

(holding that “the specification that the appeal was taken

by ‘all of the plaintiffs in this action’ was the functional

equivalent of a plaintiff-by-plaintiff listing’). The notice

of appeal was thus sufficiently precise to fulfill the specifi-

city requirement of Rule 3/c).

Motion denied.

26a

APPENDIX D

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF NEW YORK

79-CV-730

ASSOCIATION OF AMERICAN MEDICAL COLLEGES,

oe Plaintiff,

HuGH L. Carey, Individually and as Governor, et al.,

Defendants.

OF COUNSEL:

FULBRIGHT & JAWORSKI ROBERT A. BURGOYNE, Esq.

Attorneys for Plaintiff

1150 Connecticut Avenue, N.W.

Washington, D.C. 20036

HON. ROBERT ABRAMS DAVID B. ROBERTS

Attorney General of the Assistant Attorney General

State of New York

Attorney for Defendants

The Capitol

Albany, NY 12224

NEAL P. McCURN, C.J.

MEMORANDUM-DECISION AND ORDER

{Filed Jan. 12, 1990]

: Introduction

The plaintiff is moving for summary judgment on its

claims that portions of New York’s Standardized Testing

Act, N.Y. Educ. Law §§ 340-348, (generally known as

the “Truth-in-Testing” Act), are (1) invalid due to pre-

27a

emption by federal copyright law and regulations, (2)

infringe upon plaintiff's ownership rights under federal

tion. Plaintiff, the Association of American Medical Col-

leges (the “AAMC’’), seeks a declaratory judgment as

well as a permanent injunction barring enforcement of

what has been termed the “disclosure provisions” of the

State Act. The AAMC is the copyright owner of the

Medical College Admission Test (the “MCAT”) as well

as a number of MCAT related studies. The disclosure

provisions, N.L. Educ. Law §§ 341, 341-a, and 342, gen-

erally require the plaintiff to disclose MCAT test ques-

tions, answers, answer sheets, and related research re-

ports which are employed by plaintiff as part of its

sponsorship of the MCAT. In short, the plaintiff seeks

to use federal copyright laws as a shield against enforce-

ment of the State Act—thereby keeping the MCAT test

questions secret. The central legal question presented is

whether the disclosure requirements of New York’s Stand-

ardized Testing Act clash with rights conferred upon

plaintiff by the Federal Copyright Act of 1976, 17 U.S.C.

$101 et seg., in a manner which compels this court to

find the State Act invalid by virtue of the Supremacy

Clause of the U.S. Constitution.

This matter has now been pending for almost a decade.

Upon the plaintiff's Rule 65 application, this court, on

January 21, 1980, preliminarily enjoined the enforcement

of N.Y. Educ. Law §§ 341 and 342 as against the plain-

tiff until resolution of this action. Association of Ameri-

can Medical Colleges v. Carey, 482 F.Supp. 1358, 1364

(N.D.N.Y. 1980). The Standardized Testing Act has sub-

sequently been amended, incorporating additional disclo-

sure requirements which have also been challenged by the

AAMC.

IT. Issue

The amended complaint asserts twelve separate causes

of action against the Governor of the State of New York,

the State Attorney General, the Board of Regents of the

28a

University of the State of New York, and New York’s

Commissioner of Education. The defendants have been

found to be proper parties due to their enforcement re-

sponsibilities with respect to the education law. See As-

sociation of American Medical Colleges v. Carey, 482

F.Supp. at 1362-64.

The first five counts assert that the disclosure provi-

sions are invalid because they encroach upon ownership

rights granted to plaintiff by the Federal Copyright Act

of 1976. Count T asserts that the challenged portions of

the New York Standardized Testing Act conflict with

the exclusive ownership rights granted to the plaintiff

under the Federal Copyright Act, 17 U.S.C. § 106/1),

(3), and (5), and are thereby preempted under the Su-

premacy Clause of the U.S. Constitution. Plaintiff also

claims that the New York Act is preempted due to a

conflict with validly promulgated federal copyright regu-

lations. Count II alleges that defendants, by acting in

accordance with the disclosure provisions of the New York

Act, will compel the plaintiff to reproduce and distribute

copyrighted MCAT test forms and studies, thereby aiding

in the unauthorized distribution of these documents. By

so doing, the defendants allegedly will be interfering in

federal rights conferred by the Copyright Act—statu-

tory activity which plaintiff believes is expressly pre-

emtped by section 301 of the Copyright Act, 17 U.S.C.

§ 301(a). Count IIT alleges that the disputed provisions

of the New York Act will require the plaintiff to dis-

close MCAT materials. This forced disclosure will al-

legedly constitute an infringement upon plaintiff's own-

ership rights in copyrighted material in violation of 17

U.S.C. §501(a). Count IV asserts that the disclosure

provisions of the New York Act will cause the defend-

ants to engage in vicarious and contributory infringe-

ment upon plaintiff's ownership rights. Count V asserts

that the New York Act will cause the defendants, as part

of a governmental entity, to seize and expropriate the

29a

plaintiff's ownership rights, a violation of 17 U.S.C.

§ 201 (e).

The remaining allegations of the complaint assert claims

for relief under provisions of the Federal and State Con-

stitutions. The parties, however, have focused their argu-

ment here on the merits of the copyright claims, agreeing

that this court must attempt to resolve the statutory is-

sues before reaching the constitutional causes of action.

See Hagans v. Lavine, 415 U.S. 528, 543 (1974). De-

fendants assert and plaintiff admits, see Plaintiff's Reply

Memorandum of Law at 2, that the claims based on the

New York State Constitution are not properly before this

court. Therefore, Counts VII, VIII, X, and XII are dis-

missed.

III. Legal Background

A. The Standardized Testing Act

The Standardized Testing Act imposes a number of

obligations on organizations which develop or sponsor

“any test that is given in New York at the expense of the

test subject and |which is] designed for use and is used

in the process of selection for post-secondary or profes-

sional school admissions.” N.Y. Educ. Law § 340/1).

The Act specifically includes within its provisions the

Medical College Admission Test. /d. It is undisputed that

the AAMC is a “test agency” as that term is defined by

$ 34014) of the Act and therefore properly subject to its

dictates.' In this action plaintiff is challenging the dis-

closure provisions of the Truth in Testing Act, namely

sections 341, 341-a, and 342.

Section 341 (entitled “Background reports’) requires

that ‘“|w]henever any test agency prepares or causes to

have prepared research which is used in any study, evalu-

ation or statistical report pertaining to a test operational

Research in the Behavoriai Sciences to develop and test MCAT

questions. The exam is actuaily administered, again through con-

tract, by the American College Testing Program.

30a

after January first, nineteen hundred eighty, such study,

evaluation or report shall be filed” with the New York

State Commissioner of Education (“the Commissioner’’).

Id. at § 341(1). These reports must have all information

with respect to a test subject or user institution redacted

from the document. /d. at § 341(2). All testing agencies,

within thirty days after the results of a standardized

test are released, must also file with the Commissioner

(1) a copy of all test questions actually used in caleulat-

ing a test taker’s raw score (experimental or develop-

mental questions are excluded from disclosure), (2) the

correct answers to these questions, and (3) the rules

governing the method by which a raw score is calculated

along with an explanation of these rules. /d. at § 342/1).

Within ninety days after the filing required by

§ 342(1), the test agency must provide a test taker with

the “opportunity to secure” (1) a copy of the test ques-

tions used to calculate the test subject’s raw score, (2)

a copy of the test subject’s answer sheet along with a

copy of the correct answers, and (3) the test subject’s

raw score. Jd. at § 342(2). Due to a concern that stand-

ardized tests may be biased in some manner, section 341-a

was added to the Standardized Testing Act in 1987. This

provision requires the testing agency to prepare detailed

statistical reports—categorized by race, ethnicity, gen-

der and linguistic background—relating to performance

on tests and test questions given between July 1, 1988,

and July 1, 1989. /d. at §$§ 841-a(4), 341-a(5). These

reports are to be filed with a ten-person advisory com-

mittee to the state legislature not later than September 1,

1989. The advisory committee, in turn, is required to

report to the legislature. Jd. at §§ 341-a(5), 346-a. “Any

test agency which violates any section of [the Act] shall

be liable for a civil penalty of not more than five hundred

dollars for each violation.” Jd. at § 347. It should be

noted that the Standardized Testing Act only applies to

exams administered within New York. Z/d. at § 340(1).

3la

The disclosure provisions of the Act designate all docu-

ments filed with the Commisssioner of Education or with

the legislative advisory committee as “public records.”

The parties do not dispute that the New York Freedom of

Information Law (“FOIL”), N.Y. Pub. Off. Law § 84

et seqg., provides that all documents designated as “public

records” must be made available to the public for inspec-

tion upon request. /d. at § 87(2). Therefore, as plaintiff

points out, the Truth in Testing Act, if applied, would

make MCAT test questions available to the Commissioner

of Education, the examinees, the legislative advisory com-

mittee, and the general public. It would also make these

materials available for review by organizations engaged

in the business of coaching students for the MCAT.

B. The Copyright Act of 1976

Congress, through the Copyright Act of 1976, 17 U.S.C.

§ 101 et seqg., set out to “accomplish a fundamental and

significant change” in the law of copyright.” “Instead of

a dual system of ‘common law copyright’ for unpublished

works and statutory copyright for published works, which

ha[d] been the system in effect in the United States

since the first copyright statute in 1790, the bill adopte[d]

a single system of Federal statutory copyright from cre-

ation.” Committee cn the Judiciary, House Report No.

94-1476, reprinted in 17 U.S.C.A. $301 (West 1989).

See also Roth v. Pritikin, 710 F.2d 934, 938-39 (2nd

Cir.), cert. denied, 464 U.S. 961 (1983) (legislative his-

tory). Part and parcel of this new federal copyright

scheme was the express preemption provision of 17 U.S.C.

2 Art. I, $8, cl. 8 of the U.S. Constitution has served as the source

of federal authority to promulgate copyright law, empowering Con-

gress “[tlo promote the Progress of Science and useful Arts, by

securing for limited Times to Authors and Inventors the exclusive

Right to their respective Writings and Discoveries.” See Sears,

Roebuck & Co. v. Stiffel Company, 376 U.S. 225, 228, reh’g den. 376

U.S. 973 (1964).

32a

s 301, which, through its terms and the legislative history

surrounding its enactment, “makes clear a congressional

intent to preempt previous law and replace the labyrinth

of statutory and common law authority with a single,

generally applicable federal statute.” Roth v. Pritikin,

710 F.2d at 938.

The scope of federal copyright protection extends to

“original works of authorship fixed in any tangible me-

dium of expression, now known or later develoned, from

which they can be perceived, reproduced, or otherwise

communicated, either directly or with the aid of a machine

or device.” 17 U.S.C. $ 102(a). Included within the pro-

tection of the Copyright Act are products of authorship

such as literary, musical, or dramatic works, id. at § 102

(a), as well as compilations and derivative works, id. at

$103. Compilations and derivative works are defined as

works “formed by the collection and assembling of pre-

existing materials or of data that are selected, coordinated

or arranged in such a way that the resulting work as a

whole constitutes an original work of authorship.” Jd. at

$101. However, facts, ideas, and concepts themselves are

not provided copyright protection. 17 U.S.C. § 102(b);

see Financial Information Inc. v. Moody’s Investors Serv-

ice Inc., 808 F.2d 204, 207 (2nd Cir. 1986), cert. denied,

108 S.Ct. 79 (1987).

Plaintiff owns a registered copyright to the MCAT and

many of the MCAT-related studies which are subject to

the disclosure provisions of the State Act. ‘Section 106

of the Copyright Act confers a bundle of exclusive rights

to the owner of the copyright. Under the Copyright Act,

these rights—to publish, copy, and distribute the author’s

work—vest in the author of an original work from the

time of its creation.” Harper & Row Publishers v. Nation

Enterprises, 471 U.S. 539, 547 (1985) (emphasis added) .®

3 The text of 17 U.S.C. § 106 (“Exclusive rights in copyrighted

works’’) reads in applicable part as follows:

34a

The defendants do, however, submit an affidavit from

their expert witness, Dr. Walter Haney, in which some

of the factual assertions presented by the plaintiff are

contested to some degree.

Plaintiff, the American Association of Medical Colleges,

is a non-profit association whose members include nu-

merous colleges of medicine, teaching hospitals, academic

societies, and individuals. One aspect of AAMC’s activi-

ties is the sponsorship of the Medical College Achievement

Test. The MCAT is widely used by medical colleges as a

measure of the academic achievement of applicants to

their institutions. According to the defendants, this exam

acts, more or less, as a “gatekeeper” to medical school.

The MCAT tests potential medical students on 54 aca-

demic subtopics which the AAMC believes to be relevant

when determining an individual’s potential for success in

medical school. Approximately 3,170 examinees in 32 test

centers took the MCAT in New York in 1987. Beyond the

MCAT itself, the AAMC also authors and commissions

various MCAT related studies as part of its sponsorship

and continued development of the exam. The AAMC as

serts, and the defendants do not dispute, that the develop-

ment of quality exams involves significant investments of

both time and money.

The plaintiff makes extensive efforts to keep the MCAT

secure from disclosure to the general public. It is undis-

puted that the AAMC neither publishes nor distributes

the MCAT beyond the administration of the exam to

examinees. Stringent security measures govern the as-

sembly, printing, and distribution of the test booklets,

admission to test centers, and collection and accounting of

test booklets. The AAMC owns copyrights in the MCAT

test forms, test questions, and answer sheets, as well as

in some of the MCAT-related studies which contain past

or potential MCAT questions. An important fact is that

the AAMC frequently re-uses test questions from past

exams. All these copyrighted documents would be made

35a

available to review by the general public if the AAMC

Was required to comply with the disclosure provisions of

N.Y. Educ. Law §§ 341, 341-a, and 342. However, MCAT

test questions which have yet to be used in the actual

calculation of an examinee’s grade would not be subject

to disclosure. A detailed description of the MCAT, includ-

ing the process by which it is developed and administered,

is contained in Association of American Medical Colleges

". Milkaelian, 571 F.Supp. 144, 145-48 (E.D.Pa. 1983),

afd, 734 F.2d 3 (8rd Cir. 1984). The description found

in Mikaelian is largely consistent with the undisputed

facts presented to this court.

Plaintiff’s central factual assertion is that disclosure

of MCAT test questions would make impossible the reuse

of test questions—thereby diminishing or destroying the

value of these documents. In response, the defendants’

expert witness forwards the opinion that “under certain

circumstances it is entirely possible that previously dis-

closed [questions] might be validly reused.” Affidavit

Haney, par. 5-6. This would be so, according to Dr.

Haney, in situations where there is a broad disclosure of

test questions which, over time, would dilute the available

market of practice questions so much so that selected

past questions could be used again. Plaintiff, for its part,

asserts flatly that no disclosed questions could or would

be reused,

There is also some contention between the parties over

whether the disclosure of the test questions would seri-

ously deplete a “finite pool” of potential test questions—

particularly with respect to the areas of general science.

The defendants also point out that test agencies which

administer other standardized tests, such as the Law

School Admissions Test and Scholastic Aptitude Test, have

compliet with the Act’s disclosure requirement without

causing any serious injury to the quality of those exams.

The parties also dispute the degree to which disclosure of

the text of the MCAT will harm the AAMC’s ability to

36a

equate the results of one exam with that of past exams—

apparently an important criterion in evaluating the ac-

curacy of a standardized test over time. Of course, all

properly disputed factual issues must be viewed in the

light most favorable to the party opposing summary judg-

ment. In any event, plaintiff asserts that the fact that

the State Act will cause disclosure of the copyrighted

MCAT questions, with a result that the AAMC will not

be free to reuse these questions on later exams, is the key

undisputed fact which will allow this court to grant sum-

mary judgment as a matter of law.

V. Discussion

Summary Judgment Standard

It is appropriate to grant summary judgment when

the record viewed in the light most favorable to the non-

moving party presents a situation where there “is no

genuine issue as to any material fact and... the moving

party is entitled to a judgment as a matter of law.”

Fed.R.Civ.P. 56(¢c); see also Anderson v. Liberty Lobby,

Inc., 477 U.S. 242, 247 (1986); United States v. Diebold,

Inc., 369 U.S. 654, 655 (1962). To survive such a motion,

the party opposing summary judgment must provide the

court with “ ‘concrete evidence from which a reasonable

[trier of fact] could return a verdict in his favor.’ ”

Dister v. Coiutinentai Group, Inc., 859 F.2d 1108, 1114

(2nd Cir. 1988) (quoting Anderson v. Liberty Lobby, 477

U.S. at 256).

Federal Preemption

Under the Supremacy Clause of the United States Con-

stitution,’ the authority of state law must yield to validly

4The Supremacy Clause, U.S. Const. Art. VI, cl. 2. states:

This Constitution and the Laws of the United States ... shall

be the supreme Law of the Land; and the Judges in every State

shall be bound thereby, any Thing in the Constitution or Laws

of any State to the Contrary notwithstanding.

37a

enacted federal statutes and regulations with which state

law conflicts. This has generally been termed federal pre-

emption. Plaintiff asserts numerous legal theories under

which it believes the disclosure provisions of the Stand-

ardized Testing Act should be held invalid .s preempted

by federal law. The Second Circuit, in Darling v. Mobil

Oil Corp., 864 F.2d 981 (2nd Cir. 1989), recently sum-

marized the various ways in which federal law can pre-

empt state law. The court stated:

Id.

Under the Supremacy Clause of Article VI federal

law may preempt state or local law in at least three

ways. ... First, Congress may in express terms

declare its intention to preclude state regulation in a

given area. .. Second, in the absence of an express

declaration, preemption may be implied when the

federal law is “sufficiently comprehensive to make

reasonable the inference that Congress ‘left no room’

for supplementing state regulation.” ... Of course,

“courts should not lightly infer preemption.”

Finally, state law may be preempted ‘‘to the extent

that it actually conflicts with a valid federal stat-

ute.” .. . “Conflict preemption” may occur either

when “compliance with both federal and state regu-

lations is a physical impossibility,” . . . or where

state law “stands as an obstacle to the accomplish-

ment and execution of the full purposes and objec-

tives of Congress.”

A determination that federal law preempts a state

statute should be reached in a careful and judicious

manner to avoid unwarranted disruption of impor-

tant state policies. ... In areas traditionally regu-

lated by state law, “we start with the assumption

that the historic police powers of the States were not

superseded by the Federal Act unless that was the

clear and manifest purpose of Congress.”

at 985-86 (citations omitted). With respect to the

particular issue before this court, it is clear that “a state

38a

may neither abrogate nor in any way diminish the fed-

erally granted and protected rights of a copyright holder.”

Mills Music, Inc. v. Arizona, 591 F.2d 1278, 1285 (9th

Cir. 1979); see also Bell v. Combined Registry Co., 397

F.Supp. 1241, 1245 (N.D. Ill. 1975) (“the operation of

state law cannot defeat the validity of a federal copy-

right”), aff'd 536 F.2d 164 (7th Cir.) cert. denied, 429

U.S. 1001 (1976) ; 17 U.S.C. § 201.5

Conflict Preemption and Federal Copyright

The AAMC asserts that the most clear cut legal basis

upon which this court could find the disclosure provisions

of the State Act preempted is what has been termed “con-

flict preemption.” This type of preemption ‘‘may occur

either when ‘compliance with both federal and state reg-

ulations is a physical impossibility,’. . . or where state

law ‘stands as an obstacle to the accomplishment and ex-

ecution of the full purposes and objectives of Congress.”

Darling v. Mobil Oil Corp., 864 F.2d at 985-86. The

federal copyright and patent law is “the supreme law

of the land. ... When state law touches upon the area

of those federal statutes, it is ‘familiar doctrine’ that the

federal policy ‘may not be set at naught, or its benefits

denied’ by state law.” Sears, Roebuck & Co. v. Stiffel

Co., 376 U.S. 225, 229 (1964) (emphasis added, cita-

° Courts have been willing to hold state laws invalid as preempted

by the Federal Copyright Act on numerous occasions. See e.y.,

Capital Cittes Cable, Inc. v. Crisp, 467 U.S. 691, 710-11 (1984)

(Oklahoma statute that banned cable operators from carrying out-

of-state alcoholic beverage advertising preempted by federal law

because, among other things, the state statute interfered with right

granted cable operators by the Copyright Act.) ; Financial Informa-

tion Inc., v. Moody’s Investors Service, 808 F.2d 204, 208 (2nd Cir.

1986), cert. denied, 108 S.Ct. 79 (1987) ‘publisher’s state law mis-

appropriation claim preempted by Copyright Act); Walker v. Time

Life Films, Inc., 784 F.2d 44, 53 (2nd Cir.), cert. denied, 476 U.S.

1159 (1986) (state law cause of action for unfair competition is

preempted by the federal copyright laws to the extent it seeks pro-

tection against copying of a book).

maaan al ennai ai

39a

tions omitted). Just as a “State cannot encroach upon

the federal patent law directly,” id. at 231, it may not

encroach upon federal copyright law. See Goldstein v.

California, 412 U.S. 546, 559 (1973) (with respect to

that which Congress intended to be free from —

to free that which Congress ha[s] protected”). See

also 1 Nimmer on Copyright, $101 {B] at 1-12 n. 43.2

(‘A state law is preempted whether it ‘creates, grants or

destroys’ rights which are ‘equivalent’ to the exclusive

rights of copyright”). Therefore, a state law which safe-

guards or injures property rights protected by the Fed-

eral Copyright Act is preempted. It is plaintiff’s position

that the New York Act is preempted because it operates

to deny the AAMC benefits which are conferred by 17

U.S.C. § 106 of the Wedersl 6 Copyright Act.’

® There are the numerous instances in wh

declared invalid as preempted by federal |

priate to refer” to patent cases when conducting an analysis

the Copyright Act due to “the historic kinship t

and copyright law.” Sony Corp Universal City Studies, Inc., 464

U.S. 417, 439 (1984). Recently, the Supreme Court held a Flor

statute, which prohibited the use of a particular manufacturing

process in the duplication of unpatented boat hulls, invalid as

empted by federal patent law. Bonito B 3, Inc. v. Thunder Craft

Boats, Inc., 109 S.Ct. 971 (1989). The Court held that the stat

law operated to regulate an area which Congress decided to |

free to open competition—that is, the full use by all of ids as and

designs which are unpatented or unpatentable, and therefore withi1

the public domain. See also Sears, Roebuck & C . Stiffel Co., 376

U.S. 225 (1964) (Illinois unfair competition law | reempted by

patent law because copied article was unpatentable and thus could

be “‘made and sold by whoever chooses to do so,” id. at 231.) : Con pe

Corp. v. Day-Brite Lighting, Inc., 376 U.S. 84 (1964 same). How-

ever, the Bonito Boats court was careful to point out that state laws.

such as those which prevent deceptive simulation of another’s

product so as to prevent consumer confusion or protect trade secret

are proper exercises of state authority so long as the “nature and

degree of state protection does not conflict with federal policies.

109 S.Ct. at 979-80.

40a

Subject Matter of Copyright

As an initial matter it is clear to the court that the

MCAT and the various MCAT related reports and studies,

which have been copyrighted by the plaintiff and which

are subject to disclosure under the New York Truth in

Testing Act, N.Y. Educ. Law §§ 341, 341-a, and 342, are

well within the “subject matter’ of the Federal Copy-

right Act of 1976. See 17 U.S.C. $$ 102 and 103 (dis-

cussed previously) ; Association of American Medical Col-

leges v. Mikaelian, 571 F.Supp. 144, 150 (1983) aff'd,

734 F.2d 3 (8rd Cir. 1984) (‘finding that the MCAT is

within the subject matter of Federal Copyright law) ; see

also Educational Testing Servs. v. Katzman, 793 F.2d

533, 539 (3rd Cir. 1986) (Scholastic Aptitude Test and

Achievement Test are “original works of authorship”

within the meaning of federal copyright laws. 17 U.S.C.

§102(a) and “compilations” within the meaning of

§ 103); National Conference of Bar Examiners v. Multi-

state Legal Studies, Inc., 692 F.2d 478, 484 n.6 (7th

Cir.) (the Multistate Bar Exam, as ‘‘confidential creative

material,” was a “secure test” to which it was likely that

“Congress intended the Copyright Act to afford protec-

tion”), cert. denied, 464 U.S. 814 (1983); Applied In-

novations Inc., v. Regents of the Univ. of Minn., 876

F.2d 626, 635 (8th Cir. 1989) (psychological tests within

the subject matter of copyright). The rationale and rea-

soning presented in these cases leads this court to con-

clude that the studies and research reports which have

been copyrighted by the AAMC and which contain MCAT

exam questions are within the subject matter of the Fed-

eral Copyright Act. The defendants have not contested

plaintiff's assertion that the AAMC has complied with

the Copyright Act’s registration requirements. See 17

U.S.C. § 408. Since this court has found the MCAT ma-

terials to be within the subject matter of copyright, to

the extent defendants contend that the MCAT material

is somehow not validly copyrighted, their contention is

rejected.

4la

State Law Conflicts With § 106 Rights

The MCAT and the MCAT-related research reports are

within the subject matter of federal copyright law. More-

over, it is not disputed that the AAMC owns valid copy-

rights to this material. Therefore, barring a statutory

exception, 17 U.S.C. § 106 will confer upon the plaintiff

the exclusive right to publish, copy, and distribute these

materials, as well as to prepare derivative works with

respect to these documents. See Harper & Row Publish-

ers v. Nation Enterprises, 471 U.S. 539, 547 (1985). The

dictates of the Standardized Testing Act would interfere

with the AAMC’s exclusive ownership rights as outlined

in § 106 of the Federal Copyright Act. As already dis-

cussed, the New York statute will require the AAMC as

owner of a copyrighted standardized test to disclose an

exam which it wishes to retain as confidential. The State

Act will also make the disclosed MCAT materials ‘‘public

records” with respect to New York’s Freedom of Infor-

mation Law, and therefore subject these documents to

reproduction and disclosure to members of the public. As

such, unless the disclosure provisions of the New York

statute fall into an exception to the exclusive rights of a

with federal law and thereby be preempted. Defendants’

central contention is that ‘New York’s Standardized Test-

ing Act does not conflict with and frustrate the objectives

of federal law, because it is tailored to fit within the fair

use and archive exceptions of the Copyright Act.” De-

fendants’ Mem. at 15.

The Fair Use Defense

The defendants contend that the disclosure required by

the Standardized Testing Act is properly characterized

as a fair use. As such, the State Act cannot be preempted

—the “use” being within a statutory exception to the

exclusivity of ownership rights outlined in 17 U.S.C.

§ 106. If the disclosure required by the State Act con-

42a

stitutes a “use” within the “fair use” exception of § 107

of the Federal Copyright Act, then the State Act does not

conflict with, and is not preempted by, federal copyright

law. The drafters of section 107 viewed the fair use

exception to the Copyright Act as an affirmative defense;

the party asserting the exception, therefore, bears the

burden of production and persuasion to show that the ex-

ception applies. See Harper & Row, 471 U.S. at 561;

Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1255 (2nd

Cir. 1986), cert. denied, 107 S.Ct. 2201 (1987) ; Mikaelian,

571 F.Supp. at 151.

Section 107 (“Limitations on exclusive rights: Fair

use’) states:

Notwithstanding the provisions of section 106, the

fair use of a copyrighted work, including such use

by reproduction in copies or phonorecords or by any

other means specified by that section, for purposes

such as criticism, comment, news reporting, teaching

(including multiple copies for classroom use), schol-

arship, or research, is not an infringement of copy-

right. In determining whether the use made of a

work in any particular case is a fair use the factors

to be considered shall include—

(1) the purpose and character of the use, including

whether such use is of a commercial nature or is

for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion

used in relation to the copyrighted work as a whole;

and

(4) the effect of the use upon the potential market

for or value of the copyrighted work.

(Emphasis added). “The factors enumerated in [section

107] are not meant to be exclusive: ‘{[S]ince the doctrine

{of fair use|] is an equitable rule of reason, no generally

43a

applicable definition is possible, and each case raising the

question must be decided on its own facts.” Harper &

Row, 471 U.S. at 560; see also Iowa State Univ. Re-

search Foundation v. American Broadcasting, 621 F.2d

57, 60 (2nd Cir. 1980).

The issue of whether a use of a copyrighted work is a

fair use “is a mixed question of law and fact.” Jd. As

a result, “the appraisal of these four factors in a particu-

lar case is obviously a fact specific inquiry for which

summary judgment is ill-suited.” Diamond v. Am-Law

Publishing Corp., 745 F.2d 142, 147 (2nd Cir. 1984)

(citing DC Comics v. Reel Fantasy, Inc., 696 F.2d 24

(2nd Cir. 1982)). However, “{c]ourts in this Circuit

have approved the resolution of the fair use question at

the summary judgment stage on several occasions.” Maz-

tone-Graham v. Burtchaell, 803 F.2d 1253, 1258 (2nd Cir.

1986) (finding in favor of a party who had raised a fair

use defense), cert. denied, 107 S.Ct. 2201 (1987).

‘“*!T}he mere fact that a determination of the fair use

question requires an examination of the specific facts of

each case does not necessarily mean that in each case

involving a fair use there are facts to be tried.” Td.

(quoting Meeropol v. Nizer, 417 F.Supp. 1201, 1208

(S.D.N.Y. 1976) ).

As a general matter the fair use doctrine operates to

permit uses of copyrighted material to which a “reason-

able copyright owner would have consented.” Harper &

Row, 471 U.S. at 550. It is an “equitable rule of reason,”

Sony Corp. of America v. Universal City Studios, Ine.,

464 U.S. at 448, which “permits courts to avoid rigid

application of the copyright statute when, on occasion, it

would stifle the very creativity which that law is designed

to foster.” Jowa State Univ. Research Foundation, 621

f.2d at 60. When analyzing a fair use issue courts have

generally employed the four-part statutory analysis con-

tained in § 107. As an initial matter, however, it is clear

that the “use” envisioned by the disclosure provisions of

44a

the State Act would be for one of the activities enun-

ciated in section 107, that is, for “criticism,” “comment,”

or “research.” Therefore, the ‘use’ to which the State of

New York would put the MCAT materials is for a pur-

pose that meets with the threshold requirement set out in

$ 107’s introductory paragraph.

Fair Use Cases. The tension between the Copyright

Act’s dual goals of greater access to information and its

provision for exclusivity of ownership rights makes the

question of fair use “ ‘the most troublesome in the whole

law of copyright.’” Mazxtone-Graham v. Burtchaell, 803

F.2d at 1255 (quoting Dellar v. Samuel Goldwyn, Inc.,

104 F.2d 661, 662 (2nd Cir. 1939)). Therefore, as a

predicate to the four-part analysis it is helpful to review

some of pertinent cases which have applied the fair use

doctrine.

Commercial infrinzement on the AAMC’s copyright in

the MCAT was addressed in Association of American

Medical Colleges v. Mikaelian, 571 F.Supp. 144 (E.D.Pa.

1983), aff'd, 734 F.2d 3 (3rd Cir. 1984). There, the same

plaintiff as the one in the present action claimed copy-

right infringement by an individual who was engaged in

the business of preparing students to take the MCAT.

The court found clear, if not overwhelming, evidence that

defendant Mikaelian had made verbatim copies of hun-

dreds of MCAT exam questions and distributed them to

persons enrolled in his course. The court held that the

MCAT was within the subject matter of federal copy-

right law and that the owners of the MCAT copyright

were entitled, pursuant to § 106, to the exclusive rights

of ownership. Despite finding that it was highly unlikely

that the commercial use to which the defendant sought to

subject the MCAT was even covered by the fair use doc-

trine, the court went on to consider and reject the de-

fendant’s fair use defense. The court held that the com-

mercial nature of the defendant’s use, the massive size

of the appropriation of MCAT material, the strict secu-

45a

rity employed to prevent test disclosure, the unfair ad-

vantage conferred upon those students in the test coach-

ing course, and the destruction in the value of the copy-

righted materials, were strong factors weighing against

a finding of fair use. /d.-at 152-53. A similar analysis

is found in Educational Testing Services v. Katzman, 793

F.2d 533 (3rd Cir. 1986), with respect to a test-coaching

company’s use of copies of the Scholastic Aptitude Test

and the Achievement Tests.

The most comprehensive Supreme Court decision con-

cerning the fair use doctrine is Harper & Row Publish-

ers v. Nation Enterprises, 471 U.S. 539 (1985). There

the Court held that a news magazine’s use of approxi-

mately 300 words from the unpublished manuscript of

President Ford’s autobiography constituted a copyright

infringement to which the fair use doctrine did not apply.

The 300-word excerpt from the book-length manuscript

was found to have been the “heart” of the book, publica-

tion of which directly injured the marketability of the

document. Jd. at 569. However, the Court in Sony Corp.

v. Universal City Studios, Inc., 464 U.S. 417 (1984),

held that the manufacturer of video tape recorders could

not be held liable for copyright infringement. The non-

commercial taping of copyrighted television programming

for home use was found to be a “fair use” of the mate-

rial. In Capital Cities Cable, Inc. v. Crisp, 467 U.S. 691

(1984), an Oklahoma statute that banned cable operators

from carrying out-of-state alcoholic beverage advertising

was held to be preempted by federal law because, among

other things, the state statute interfered with rights

granted cable operators by the Copyright Act. Jd. at

710-11.

A lively debate was touched off by the Second Circuit's

recent decision in New Era Publications Intl. v. Henry

Holt & Co., 873 F.2d 576 (2nd Cir.), reh’g and reh’g in

hane denied, 884 F.2d 659 (2nd Cir. 1989). The plaintiff

in New Era held a copyright in the published and un-

annie

GC Oe

46a

published writings of L. Ron Hubbard, the founder of

the Church of Scientology. The defendant published a

scathing biography cf the late Mr. Hubbard which in-

cluded extensive reproduction of Hubbard’s published and

unpublished writings. Defendant responded to plaintiff’s

claim of copyright infringement by raising the defense

of fair use. The district court held that the vast majority

of the copied material was fairly used—with money dam-

ages, rather than an injunction, granted as a remedy for

that small portion of unpublished copyrighted material

which was found to be outside of the fair use exception.

The panel majority affirmed the district court’s decision

on the basis of laches. However, the panel majority went

on to express strong “disagreement with a great deal

of what is said in the [lower court’s] opinion” concern-

ing the doctrine of fair use as it applied to unpublished

material. New Era, 873 F.2d at 583.

With respect to the first fair use factor. the “purpose

and charavicr of the use,” the New Era majority ap-

peared to be of the opinion that differences in degree,

that is, differences in the substance or importance of the

work as viewed by the court, are of no weight in a fair

use analysis. Rather, once the work can be classified as

“criticism,’ ‘scholarship’ or ‘research” the analysis ends

and the “factor cuts in favor of the book’s publisher.”

Id.; see also New Era, 884 F.2d at 661 (coneurrence in

denial of rehearing in banc) (“If a book falls into one

of these categories, assessment of the first fair use factor

should be at an end’), In regard to the second fair use

factor, “the nature of the copyrighted work.” the panel

majority stated that “unpublished works normally enjoy

complete protection” and therefore, “[w]here use is made

of materials of an ‘unpublished nature,’ the second fair

use factor has yet to be applied in favor of an infringer.”’

New Era, 873 F.2d at 583. The majority also found the

second factor to weigh “heavily” in favor of the copy-

right holder. 7d.

‘

48a

471 U.S. at 553. The fair use defense is more properly

raised by litigants who use copyrighted materia! for non-

commercial comment, research, and criticism. as opposed

to those who employ such material in commercial, profit-

oriented, activity. 17 U.S.C. $107(1); see Harper &«

Row, 471 U.S. at 562 (1985); Sony Corp. of America »v.

Universal City Studios, Inc.. 464 US. 417, 449 (1984)

(“commercial use of copyrighted material is presump-

tively .. . unfair” while the “contrary presumption is

appropriate” in the case of “noncommercial. nonprofit ac-

tivity.” ); Jowa State Univ. Research Foundation»,

American Broadcasting, 621 F.2d 57,61 (2nd Cir. 1980) :

Mikaelian, 571 F.Supp. at 152-53.

The common name of the N.Y. Educ. Law £ 340 ef Seq.,

the “Truth in Testing Act,” Says much about its purpose.

It is clear that the goal of the State Act is to subject

the MCAT to non-commercial comment and criticism. The

defendants assert that it is particularly important to

subject the MCAT to disclosure becanse it is “not simply

some literary creation over which AAMC claims exclusive

ownership. It is a vehicle by which the AAMC exercises

a monopoly over the screening process which determines

the select few who are admitted to medical school.” De-

fendants’ Mem. at 13-14. The disclosure provisions, ac-

cording to the defendants, are a legitimate exercise of

police power to “open up” a process that has a major

impact on the careers of many students. Furthermore,

defendants assert that “[t]he law is intended to serve

the public interest in the validity and objectivity of tests,

to encourage development of better test instruments, and

to assure the accuracy of the scoring process.” Defend-

ants’ Mem. at 3.

With reference to N.Y. Educ. Law s 341-a, defendants

also contend that the purpose of the use is to review

whether the MCAT has a discriminatory impact on test

takers who are women and minorities. Section 341-a of

the State Act requires the AAMC to prepare statistical

49a

ae)

reports on test performance with respect to race, sex

thnicity, and linguistic background, and to provide the

report to an ad Isory committee to the state legislature.

Defendants assert that the State of New York has a clear

interest, encompassed in “fair use” principles, which per-

mits it to require the AAMC to develop and disclose re-

rts which n ay expose a disparate Impact on women and

norities who take the test.’

This rt | determined, and plaintiff concedes, that

( trong public purpose serve (| by the Standardized Test-

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ture is more properly subject to a fair use than an un-

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necesarily determinative factor’ tending to negate

defer of fair use” and “|[t]he law generally recog-

ny! a greater need to disseminate factual works than

vor f fiction or fantasy.” Harper & Row, 471 U.S. at

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50a

rights encompassed “not only the choice of “when,”

“where,” and “in what form,” to publish, but “whether

to publish at all.” Harper & Row, 471 U.S. at 564.* In

Educational Testing Services v. Katzman, the Third Cir-

cuit held that the “unique nature of secure tests means

that any use is destructive’ of the copyright owner’s

rights under federal law. 793 F.2d 533, 543 (8rd Cir.

1986). In National Conference of Bar~ Examiners v.

Multistate Legal Studies, the Seventh Circuit “agree/d]

with the Register of Copyrights that the [Multistate Bar

Exam] would probably be classified as an unpublished

work under 17 U.S.C. § 101.” 692 F.2d at 486 n.8 (em-

phasis added).

While admitting that the MCAT is an ‘unpublished’

work, the defendants assert that this court should not

place too much emphasis on the published ‘unpublished

distinction because that analysis was developed in cases

which reviewed charges of infringement of works which

were going to be made public at a later date. The plain-

8 Defendants also contend that the purpose of the State Act does

not conflict with the central purpose of the Federal Copyright Act.

As explained in Sony Corp. of America v. Universal City Studios,

Inc., this purpose is not “primarily designed to provide a special

private benefit,” 464 U.S. 417, 429 (1984), but rather, to benefit the

public by “motivat{ing] the creative activity of the authors and

inventors by the provision of a special reward, and to allow the

public access to the products of their genius after the limited period

of exclusive control has expired.” Jd. (emphasis added); see Harper

& Row, 471 U.S. at 545-46; see also United States v. Paramount

Pictures, Inc., 334 U.S. 131, 158 (1948) (“The sole interest of the

United States and the primary object in conferring the [copyright |

monoply lie in the general benefits derived by the public from the

labors of authors”). Here, the Federal Copyright Act is being used

to keep ‘creative work’ secret. According to the defendants, holders

of a copyright may not employ such material in a manner which has

a major impact on an individual test taker’s future, yet shield that

same material from comment and criticism by the very persons

whose careers are impacted by the MCAT. However, as stated in

Harper & Row, one of the necessary effects of federal copyright law

is that owners of copyrights will be able to keep their work secret.

5la

tiff here, as defendants point out, is attempting to use

the copyright laws to shield the MCAT from meaningful

publie scrutiny. This court agrees that it would be hard

pressed to provide an example of an “unpublished” work

which more deeply affects the lives and careers of indi-

viduals. And, though the MCAT is unpublished, it clearly

is exposed to the public to a limited extent. Equitable

considerations may operate to temper the generally nower-

ful effect that the designation “unpublished” normally

has on a fair use analysis. In Salinger, the Second Cir-

cuit was presented with a somewhat analogous situation.

There, the famous author’s unpublished letters could be

reviewed by the public because the persons who received

the letters placed them in libraries. The court found a

biographer’s use of quotations from and paraphrases of

the letters did not constitute a fair use. In this manner

the Second Circuit indicated that the unpublished nature

of a work, even one exposed to the public for limited

purposes, is still a factor weighing against fair use. This

is so because the copyright owner “has a right to protect

the expressive content of his unpublished writings for the

term of his copyright.” Jd. at 100.

Defendants appear to argue that the AAMC’s admin-

istration of the exam constitutes a first publication of the

document and that therefore the state, by requiring dis-

closure subsequent to the administration of the exam, is

not interfering with plaintiff’s right of first publication.

The argument misses the mark to the extent that courts

have strongly endorsed the use of federal copyright law

as a device to protect the privacy or secrecy of documents.

See Harper & Row, 471 U.S. at 564.

Defendants also assert that the factual nature of the

MCAT is a factor operating in favor of disclosure. It is

true that “no author may copyright facts or ideas.”

Harper & Row, 471 U.S. at 547; see 17 U.S.C. § 102.

However, “!elreation of a nonfiction work, even a com-

pilation of pure fact, entails originality” which may be

52a

copyrighted. Jd. As previously noted, the MCAT is a

creative compilation which fits well within the subject

matter of federal copyright and is of the sort which has

been protected from commercial infringement on many

occasions. Simply because the MCAT employs facts in

its questions does not operate against its status as a work

which may be copyrighted.

Cognizant that “unpublished works normally enjoy com-

plete protection” and that “[w]here use is made of ma-

terials of an “unpublished nature, ‘the second fair use

factor has yet to be applied in favor of an infringer,”

New Era, 873 F.2d at 583, this court finds that the sec-

ond factor cuts in favor of the plaintiff.

C. Amount and Substantiality of the Portion Used.

The third statutory factor directs the court to “examine

the amount and substantiality of the portion used in rela-

tion to the copyrighted work as a whole.” Harper & Row,

471 U.S. at 564. Both parties agree that the disclosure

provisions of the State Act would cause most of the copy-

righted material to be subject to a ‘use’ be it a fair use

or not. The defendants admit that this factor leans in

favor of the plaintiff, but notes that the state Act only

requires disclosure of questions actually used in calculat-

ing the raw score of an examinee—permitting the con-

tinuation of AAMC’s practice of field testing proposed,

non-graded, questions without risk of disclosure.

In Harper & Row, the Supreme Court held that copying

300 words from a book-length manuscript, though nor-

mally an insubstantial portion, was substantial in that

particular instance because defendant copied the “heart”

of the document. 471 U.S. at 565. In Jowa State Uni-

versity Research Foundation, the Second Circuit found

that an appropriation of only 8% of a film was a sig-

nificant use with respect to a fair use analysis. 621 F.2d

57, 61 (2nd Cir. 1980). However, as noted by the Second

Circuit:

58a

There are no absolute rules as to how much of a copy-

righted work may be copied and still be considered a

fair use. In some instances, copying a work whole-

sale has been held tu be a fair use, Sony Corp.; Wil-

liams & Wilkins Co. v. United States, 487 F.2d 1345,

203 Ct.Cl. 74 (1973), aff'd (per curiam), 420 U.S.

376, 95 S.Ct. 1844 (1975), while in other cases tak-

ing only a tiny portion of the original work has been

held unfair.

Maxtone-Grahm v. Burtchaell, 803 F.2d at 1263 (finding

that use of 4.3% of published book was “not incom-

patible with fair use’’).

This court is compelled to find that the third factor

operates strongly in favor of the plaintiff. The disclosure

provisions require the AAMC to make available to the

general public, as “public documents,” all former MCAT

test questions. The disclosure provisions are very broad,

containing no limitation as to who may view the materials

or the period over which exams must be disclosed. This

court could envision a more narrowly tailored disclosure,

particularly with respect to the advisory committee’s re-

view of the potential for bias in standardized testing,

that might well be compatible with fair use; however, the

scope of the forced disclosure of unpublished, copyrighted

material dictated by the State Act, clearly is not.

D. Effect on the Market. The last statutory factor

focuses on the “effect of the use upon the potential market

for or value of the copyrighted work.” 17 U.S.C. § 107(4).

“This last factor is undoubtedly the single most important

element of fair use” ... and, “ ‘when properly applied

[to a fair use analysis], is limited to copying by others

which does not materially impair the marketability of

the work which is copied.’” Harper & Row, 471 USS.

at 566-67 (citing 3 Nimmer on Copyright § 13.05[A], at

13-76, quoting 1 Nimmer § 1.10[D], at 1-87). The frame-

work ‘or analyzing this factor was thoroughly set out in

54a

Sony Corp. v. Universal City Studios, Inc., where the

Supreme Court stated:

The purpose of copyright is to create incentives for

creative effort. Even copying for noncommercial pur-

poses may impair the copyrignt holder’s ability to ob-

tain the rewards that Congress intended him to have.

But a use which has no demonstrable effect upon the

potential market for, or value of, the copyrighted

work need not be prohibited in order to protect the

author’s incentive to create. The prohibition of such

noncommercial uses would merely inhibit access to

ideas without any countervailing benefit. ... A chal-

lenge to a noncommercial use of a copyrighted work

requires proof either that the particular use is harm-

ful, or that if it should become widespread, it would

adversely affect the potential market for the copy-

righted work. Actual present harm need not be

shown .... Nor is it necessary to show with cer-

tainty that future harm will result. What is neces-

sary is a showing by a preponderance of the evidence

that some meaningful likelihood of future harm exists.

If the intended use is for commercial gain, that likeli-

hood may be presumed. But if it is for a noncom-

mercial purpose, the likelihood must be demonstrated.

464 U.S. at 450-51; see also Harper & Row, 471 U.S.

at 568.

The AAMC asserts that both the copyrighted MCATs

and MCAT-related studies will be “harmed” if it is re-

quired to comply with the State Act’s disclosure provi-

sions. This injury is in addition to that which plaintiff

claims would inure to its ownership rights under federal

or copy copyrighted works and to distribute them by sale

or transfer, to prepare derivative works and to display

copyrighted works publicly. See 17 U.S.C. $107. In

plaintiff’s view the marketability of copyrighted MCAT

material would be destroyed because the questions and

55a

question “stimulus’—the fact pattern on which a ques-

tion is based—could not be reused on subsequent exams.

At oral argument counsel for AAMC stated flatly that no

portion of disclosed MCAT questions would be reused

since examinees who had read the questions would have

an unfair advantage over those who had not.

This assertion is supported with extensive record evi-

dence: Mitchell Aff. at pars. 26-29; Shepard Dep. at

26-27; Stancavage Dep. at 37-39; Wilson-Pessano Dep.

at 87-88, 99-100; Plaintiff's Mem., Ex. 4 at 2 and Ex.

5 at 8. As previously noted, the plaintiff believes that

the only salient fact necessary for a finding that the

fourth factor favors the AAMC is that disclosure of the

test questions would prevent their reuse. The Third Cir-

cuit has held that public disclosure of standardized tests

such as the Scholastic Aptitude Test and Achievement

Tests would “render the material worthless” to the copy-

right holder. Katzman, 793 F.2d at 543. The plaintiff

also maintains, and defendants do not dispute, that the

development of effective questions costs a good deal of

both time and money—an investment which wou!d be lost

with disclosure.

Defendants’ assertion that the marketability of the

copyrighted material would not be affected is, at best,

irresolute. Essentially, defendants put forward a theory

that if the plaintiff took certain steps some of the ques-

tions, over time, could be reused. After ten years of

discovery it behooves the defendants to come forward

with more substantial “concrete evidence,” Anderson v.

Liberty Lobby, 477 U.S. at 256, as to their position on

this material fact than the equivocal opinion of their

expert. Without more, this court is well positioned to

find on summary jucgment that disclosure of the MCAT

test questions would prevent them from being reused by

the plaintiff. Therefore, the plaintiff has demonstrated

“that some meaningful likelihood of future harm [to the

56a

potential market for the copyrighted work] exists.” Sony

Corp. v. Universal City Studios, Inc., 464 U.S. at 51.

Defendants also contend that the State Act does not

force the plaintiff to disclose the MCAT materials, but

rather presents the AAMC with a choice: avoid dis-

closure by not administering the exam within New York

or administer the MCAT within New York and be sub-

ject to the State’s disclosure requirements. This argu-

ment, while of potential use in situations where the State

is seeking to regulate an area left open by the federal gov-

ernment, has no merit when the state law is preempted

by the federal law pursuant to the Supremacy Clause.

A state may not answer an assertion of federal rights

with the reply that one should go elsewhere to exercise

those rights. Cf. Capital Cities Cable v. Crisp, 467 U.S.

at 711.

To the extent that the defendants assert that AAMC

should, with proper effort, be able to create new equally

valid test questions at a rate sufficient to replace the dis-

closed test questions their argument must fail. Coneress

has found that there is a public interest served by the

generally is not required to change its operations when

another individual or entity is interfering with its owner-

ship rights under the Federal Copyright Act in order to

make the fair use exception fit. Association of American

Medical Colleges v. Mikaelian, 571 F.Supp. at 155. This

court finds that the fourth fair use factor also operates

in favor of the plaintiff. The broad disclosure of the

MCAT test questions dictated by the Standardized Test-

ing Act would seriously impair or even destroy the value

of the copyrighted exams.

An additional factor supports a finding that the dis-

closure provisions of the State Act are preempted by

federal copyright law. The disclosue provisions, while not

necessarily conflicting with federal regulations, are at

cross purposes with them. Pursuant to 17 U.S.C. § 408 (e)

57a

the Register of Copyrights® has issued regulations re-

garding “secure tests’—exams, such as the MCAT, which

are non-marketed and “administered under supervision at

specified centers on specific dates, all copies of which are

accounted for and either destroyed or returned to re-

stricted locked storage following each administration.”

37 CFR § 202.20(b) (4). See Mikaelian, 571 F.Supp. at

150. To assist in maintaining the secrecy of exam ques-

tions the Register of Copyrights has promulgated 37 CFR

§ 202.20(c) (2) (iv)'® which obviates the need for the

the administration of the exam. See Educational Testing

Services v. Katzman, 793 F.2d 538, 538 (8rd Cir. 1986).

The Seventh Circuit has found this reguiation to be in

accordance with the Copyright Act’s intention to “afford

protection to confidential creative material such as secure

tests,” National Conference of Bar Examiners v. Multi-

state Leyal Studies, 692 F.2d 478, 484 n.6 (7th Cir.

1982), cert. denied, 464 U.S. 814 (1983), and thus

validly promulgated under the Copyright Act. The exist-

ence of these regulations reveal that it is the considered

opinion of the Register of Copyright that the Copyright

Act of 1976 operates to protect secure tests from public

disclosure and serves as further support for a finding

that the State Act is preempted.

This court finds that three of the four fair use factors,

as well as other equitable considerations, operate in favor

The Register of Copyrights is vested by Congress with the

authority to administer federal copyright law. Goldstein v, Cali-

fornia, 412 U.S. 546, 568-69 (1973).

1037 CFR § 202.20(c) (2) (vi) states:

Tests. In the case of tests, and answer materiai for tests, published

separately from other literary works, the deposit of one complete

copy will suffice in lieu of two copies. In the cases of any secur

test the Copyright Office will return the deposit (i.e. the test itself)

to the applicant promptly after examination: Provided that suffi-

cient portions, description, or the like are retained so as to con-

titute a sufficient archiva! record of the deposit. (Emphasis added).

58a

of the plaintiff. The disclosure provisions of the Stand-

ardized Testing Act, therefore, do not constitute a fair

use within the meaning of 17 U.S.C. § 107. Defendants’

affirmative defense fails. —

The Archive Exception 17 U.S.C. § 108

Having found that federal copyright law operates to

prohibit the State of New York from forcing the AAMC

to disclose the copyrighted MCAT and MCAT materials,

this court need spend little time on the defendants’ “ar-

chive” defense. As already noted, the New York State

Legislature amended the Standardized Testing Act so that

the State Education Department would be “considered an

archive” with respect to the retention and copying of

standardized tests. N.Y. Educ. Law § 342(7). The goal

of this amendment was to “harmonize” the State Act with

federal copyright law in a manner which would fit within

the “archive” exception codified at 17 U.S.C. § 108. The

archive clause operates as an exception to the exclusivity

of ownership rights bestowed upon a copyright owner by

permitting, under limited circumstances, the reproduction

and distribution of copyrighted works by “archives” with-

out threat of civil suit. Though there is no case law

remotely on point, it is clear that this exception would

only apply to unpublished works which are properly in

the possession of an archive in the first place. See Janu-

ary 1988 Report of the Register of Copyrights on Library

Reproduction of Copyrighted Works (17 U.S.C. 108)

(“Congress did not intend subsections 108(d) and (e) to

apply to the photocopying and distribution of unpublished

works ‘y libraries cr archives for their patrons. ...

Once the -opyright owner has made the choice not to

publish, this choice must be honored.’”). Here, the State

Act, if enforced, would cause the copyrighted materials

to be placed with the designated archive against the will

of the owner. If the archive could copy and distribute

this material it could also copy and distribute any author’s

creative work, though unpublished, so long as the mate-

59a

rials came into the archive’s possession. This would be so

even if the possession was by illegitimate means. Such a

result would be totally at odds with the intent of Con-

gress when enacting the Federal Copyright Act. On this

basis the defendants’ assertion that the State Act is some-

how saved by operation of § 108 is rejected.

Conclusion

This court finds that the “disclosure provisions” of New

York State’s Standardized Testing Act, N.Y. Educ. Law

$$341, 341-a and 342 are preempted due to a direct

conflict with Federal Copyright Law. Therefore, this

court shall issue a permanent injunction barring the de-

fendants from enforcing the disclosure provisions of the

Standardized Testing Act, N.Y. Educ. Law §§ 341, 341-a,

and 342, from being enforced against plaintiff, the Amer-

ican Association of Medical Colleges. Plaintiff is directed

to submit a proposed order to the court and to counsel

for the defendants for review and comment. The court

has considered plaintiff’s request for attorneys fees and

costs, and denies the same.

IT IS SO ORDERED

DATED: January 12, 1990

Syracuse, NY

Neal P. MeCurn

NEAL P. MCCURN

Chief, U.S. District Judge

60a

APPENDIX E

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF NEW YORK

79-CV-730

ASSOCIATION OF AMERICAN MEDICAL COLLEGES,

_ Plaintiff,

MARIO CUOMO, GOVERNOR OF THE

STATE OF NEw YORK, et al..

Defendants.

APPEARANCES: OF COUNSEL:

FULBRIGHT & JAWORSKI ROBERT A. BURGOYNE. Esq.

Attorneys for Plaintiff

1150 Connecticut Avenue, N.W.

Washington, D.C. 20036

HON. ROBERT ABRAMS DAVID B. ROBERTS

Attorney General of the Assistant Attorney Genera]

State of New York

Attorney for Defendants

The Capitol

Albany, NY 12224

NEAL P. McCurn, C.J.

FINAL JUDGMENT

| Filed Feb. 13. 1990)

The court has considered the motion for summary judg-

ment filed by plaintiff Association of American Medica

Colleges (“AAMC”) and the cross-motion to dismiss cer-

tain claims filed by the defendants: the supporting memo-

randa, exhibits and affidavits filed by the respective

parties; and the parties’ oral arguments. Having done so.

a '

6la

and in accordance with the memorandum-Decision and

Order filed by the court in this case on January 12, 1990,

it is hereby

ORDERED, ADJUDGED AND DECREED | that

AAMC’s motion for summary judgment be and hereby

is granted in part; and it is further

ORDERED, ADJUDGED AND DECREED that New

York Education Law §§ 341, 34l-a and 342 (McKinney

1988) are preempted under the Supremacy Clause of

the United States Constitution, United States Article VI,

Clause 2, and by the Copyright Act of 1976, 17 USC § 101

et seq.; and it is further

ORDERED, ADJUDGED AND DECREED that the

defendants, their agents, their employees, their attorneys,

heir successors, and al! persons acting in concert with

them, are permanently enjoined from enforcing §§ 341,

)

341-a and 342 of New York Education Law, in any way

ORDERED, ADJUDGED AND DECREED that the

defendants’ cross-motion to dismiss certain claims be and

hereby is granted; and that final judgment is hereby

entered dismissing the claims asserted by AAMC in Counts

VII, VIII, X and XII of its amended complaint, all of

hich are based upon the Constitution of the State of

New York, such dismissal being without prejudice to the

ertion of such claims in an appropriate State Court

» fur !

ORDERED, ADJUDGED AND DECREED that each

hy » ite , wn costs. includir o att ney > fa,

rE) Februarv 10. 1990

S ise, New Yor!

62a

APPENDIX F

UNITED STATES DISTRICT COURT

N. D. NEW YORK

Civ. A. No. 79-CV-730

ASSOCIATION OF AMERICAN MEDICAL COLLEGES,

Plaintiff,

V. ;

HuGH L. Carey, Individually, and as Governor; THEODORE

M. BLAckK, Individually, and as Chancellor, Board of

Regents of the University of the State New York;

WILLARD A. GENRICH, Individually, and as Vice Chan-

cellor, Board of Regents of the University of the State

of New York; KENNETH B. CLARK, Individually, and

as Member, Board of Regents of the University of the

State of New York; Harotp EK. NEwcomrp, Individually,

and as Member, Board of Regents of the University of

the State of New York: EMLYN I. GRIFFITH, Individ-

ually, and as Member, Board of Regents of the Uni-

versity of the State of New York; Mary ALICE KEN-

DALL, Individually, and as Member, Board of Regents

of the University of the State of New York; Jorce L.

BATISTA, Individually, and as Member, Board of Re-

gents of the University of the State of New York; Louis

E. YAVNER, Individually, and as Member, Board of Re-

gents of the University of the State of New York:

LAURA BRADLEY CHODOs, Individually, and as Member,

Board of Regents of the University of the State of New

York; MARTIN C. BARELL, Individually, and as Member,

Board of Regents of the University of the State of

New York; JosepH R. BONGIORNO, Individually, and

as Member, Board of Regents of the University of the

State of New York; Louise P. MATTEONI, Individually,

and as Member, Board of Regents, of the University of

the State of New York; J. Epwarp MEYER, Individ-

63a

ually, and as Member, Board of Regents of the Univer-

sity of the State of New York; ARLENE B. REED-

DELANEY, Individually, and as Member, Board of Re-

gents of the University of the State of New York; R.

CARLOS CARBALLADA, Individually, and as Member,

Board of Regents of the University of the State of

New York; GorDON M. AMBACH, Individually, and as

Commissioner of Education, University of the State of

New York, and Rosert ABRAMS, Individually and as

Attorney General,

Defendants.

Jan. 22, 1980

DeGraff, Foy, Conway, Holt-Harris & Mealey, Albany,

N.Y., Fulbright & Jaworski, Washington, D.C., for plain-

tiff; Carroll J. Mealey, Albany, N.Y., Carl W. Vogt, Joyce

E. Reback, Washington, D.C., of counsel.

Robert Abrams, Atty. Gen. of the State of New York,

Albany, N.Y., pro se and for all named defendants other

than Bongiorno, Meyer, and Newcomb, individually & as

members of the Board of Regents; Stanley Fishman,

Maurice K. Peaslee, Asst. Attys. Gen., Albany, N.Y., of

counsel.

MEMORANDUM-DECISION AND ORDER

McCURN, District Judge.

In this action for declaratory and injunctive relief,

plaintiff, Association of American Medical Colleges, chal-

lenges the legality and czonstitutionality of certain provi-

sions of the New York Standardized Testing Act, Article

7-A of the New York Education Law, as they apply to its

Medical College Admission Test (“MCAT”) and to un-

published studies, evaluations and reports pertaining to

64a

the MCAT. The lawsuit is presently before the Court on

plaintiff’s motion for a preliminary injunction.’

Plaintiff is a non-profit educational association whose

members comprise 125 United States Schools of Medicine,

418 teaching hospitals, 68 academic societies and over

1,700 individuals.

Defendant, Hugh L. Carey, is the Governor of the State

of New York, and is being sued both individually and in

his capacity as Governor.

Defendants, Black, Genrich, Clark, Newcomb, Griffith,

Kendall, Batista, Yavner, Chodos, Barell, Bongiorno, Mat-

teoni, Meyer, Reed-Delaney and Caraballada, are mem-

bers of the Board of Regents of the University of the

State of New York and are defendants in this action

both individually and in their official capacity.”

Defendant, Gordon M. Ambach, is the Commissioner

of Education for the State of New York and is named

as a defendant both individually and in his official ca-

pacity.

Defendant, Robert Abrams, is the Attorney General

for the State of New York and named as a defendant

individually and as Attorney General.

1 Plaintiff’s request for a temporary restraining order was de-

nied at the January 7, 1980, argument on the preliminary injunc-

tion motion. The application was denied for failure by plaintiff to

demonstrate the possibility of harm from enforcement of the Test-

ing Act during the petition for which a temporary restraining order

would be effective.

Argument on plaintiff’s request for a temporary restraining order

had originally been scheduled for December 28. 1979, but was ad-

journed by stipulation of the parties whereby defendants agreed

not to enforce §§ 341 and 342 of the Act prior to January 7, 1980.

2 At oral argument on the motion, defendants’ counsel indicated -

that named defendants Batista, Bongiorno and Meyer had not been

served. Affidavits of service filed with the Court, however, show

service on both Batista and Meyer. An affidavit filed by a United

States Marshall on December 28, 1979, indicates that although sev-

eral attempts at service were made on Bongiorno, none were success-

ful, and he has not been served.

65a

Jurisdiction is alleged pursuant to 28 U.S.C. §§ 1331,

1338(a) and 1343(3). Declaratory relief is sought pur-

suant to 28 U.S.C. $$ 2201 and 2202.

BACKGROUND

On July 13, 1979, Governor Carey signed into Law

Article 7-A of the Education Law, popularly referred to

as the “Truth in Testing’ Law. (N.Y.Ed. Law §§ 340

et seq.) Effective January 1, 1980, the Law applies to

“any test that is given at the expense of the test sub-

ject and designed for use in the process of selection for

post-secondary or professional school admissions.” [N.Y.

Ed.Law § 340(1)]. The MCAT given by plaintiff is spe-

cifically included under the Law. [$ 340(1) ].

In addition to provisions which set forth various notice

requirements (§ 343) and requirements for disclosure of

test results by test agencies (§ 344), the Law imposes

certain obligations on test agencies with regard to dis-

closure of studies, background reports and statistical data

pertaining to the tests (§ 341)* and of the contents of the

tests themselves (§ 342).4 It is these last two provisions

which plaintiff finds unacceptable.

3N.Y. Education Law § 341 provides that:

1. Whenever any test agency prepares, causes to have prepared or

provides the data which are used in any study, evaluation or sta-

tistical report pertaining to a test, such study, evaluation or report

shall be filed with the commissioner.

2. If any reports or other documents submitted pursuant to this

section contains information identifiable with any individual test

subject, such information shall be deleted or obliterated prior to

submission.

3. All data, reports or other documents submitted pursuant to this

section shall be public records.

4 The full text of Ed.Law § 342 reads as follows:

1. Within thirty days after the results of any standardized test

are released, the test agency shall file or cause to be filed in the

office of the commissioner:

a. a copy of all test questions used in calculating the test sub-

ject’s raw score; b. the corresponding acceptable answers to those

66a

Plaintiff alleges the advancement of medical education

and health care in the United Staies as its sole reason

for existence. In furtherance of this purpose plaintiff

has, for almost fifty years, sponsored a testing program

for medical school applicants. This program includes the

development and administration of the MCAT.’

In connection with its sponsorship of the MCAT, plain-

tiff also prepares or causes to be prepared, on an ongoing

basis, confidential unpublished studies, evaluations and re-

ports pertaining to the MCAT. These include studies of

the performance of graduates of particular undergradu-

ate schools and reports consisting of evaluations of test

subject’s performance on individual questions for use in

questions: and ¢c. all rules for transferring raw scores into those

scores reported to the test subject together with an explanation of

such rules.

2. After the test has been filed with the commissioner, and upon

the request of the test subject, the test agency shall send to the test

subject: a. a copy of the test questions used in determining the

subject’s raw score; b. the subject’s individual answer sheet to-

gether with a copy of the correct answer sheet to the same test with

questions counting toward the subject’s raw score so marked; and

c. a statement of the raw score used to calculate the scores already

sent to the subject, provided that such request has been made within

ninety days of the release of the test score to the test subject. The

agency may charge a nominal fee for sending out such informa-

tion, not to exceed the direct cost of providing the information.

3. This section shall not apply to College Board Achievement Tests

or GRE Advanced Tests.

4. Documents submitted to the commissioner pursuant to this sec-

tion shall be public records.

5In April of 1977, plaintiff began administering a newly developed

and allegedly improved MCAT. The new MCAT “consists of four

sets of test questions which permit assessment in the following

areas: (a) Biology; (b) Chemistry; (c) Physies; (d) Science

Problems; (e) Skills Analysis; Reading: and (f) Skills Analysis:

Quantitative.” Affidavit of James B. Erdmann, Ph.D., Director of

the Division of Educational Measurement and Research, Paragraph

4 (Exh. B to plaintiff’s memorandum in support of the motion).

67a

developing new questions. Both of these types of studies

are prepared on a confidential basis.

Detailed security procedures govern all phases of de-

velopment of the MCAT, including test book assembly,

printing and distribution. Beginning with the April 1978

MCAT, plaintiff has registered every test form with the

procedures set forth at 37 C.F.R. § 202.20(¢) (2) (iv)."

In 1979, the MCAT was administered four times, on

consecutive Saturdays and Sundays in the Spring and

Fall at approximately 450 test centers throughout the

world, including 26 in the State of New York. The test

was taken by approximately 48,000 individuals, 5,000

of whom took the test in New York State. Plaintiff has

indicated that a similar schedule had been planned for

1980. Plaintiff has made clear that it does not intend to

administer the MCAT in New York State in 1980 if

forced to comply with Sections 341 and 342 of the Test-

ing Act.’

‘The MCAT is a secure test as defined at 37 C.F.R. § 202.20(b) (4)

as:

“os nonmarketed test administered under supervision at specified

[test] centers on specific dates, all copies of which are accounted

for and either destroyed or returned to restricted locked storaye

following each administration. For these purposes a test is not

marketed if copies are not sold but it is distributed and used in

such manner that ownership and control of copies remains with

the test sponsor or publisher.”

87 C.F.R. § 202.20(c) (2) (vi) provides that:

“Ciln the case of tests, and answer material for tests, published

separately from other literary works, the deposit of one complete

copy will suffice in lieu of two copies. In the case of any secure

test the Copyright Office will return the deposit to the applicant

promptly after examination: Provided, that sufficient portions, de-

scription or the like are retained so as to constitute a sufficient

archival record of the deposit.”

7Upon consideration of plaintiff’s position regarding the potential

for destruction of the validity of the MCAT under the Law, the

Court is convinced that plaintiff will so act. It should be noted in

68a

DISCUSSION

In seeking to enjoin enforcement of Sections 341 and

342 of the “Truth in Testing” Law, plaintiff alleges that

the Act violates the federal Copyright Act, and further-

more, that it is, in fact, preempted by the Copyright Act.

Plaintiff also raises constitutional issues under both the

United States and New York State Constitutions, alleg-

ing specifically a denial of due process and equal pro-

tection rights.

Claiming that it will suffer irreparable harm if forced

to comply with the challenged provisions, plaintiff asks

the Court to grant a preliminary injunction, enjoining en-

forcement of Sections 341 and 342 pending a determina-

tion on the merits.

Opposing the motion, defendants raise threshold juris-

dictional questions concerning applicability of the Elev-

enth Amendment as a bar to this action, ripeness and

whether proper defendants have been named in the ac-

tion. In addition, defendants allege laches on the part

of plaintiff in commencing this action, which according

to defendants precludes issuance of a preliminary in-

junction.*

this regard that plaintiff does not seek to avoid enforcement of the

entire Act but rather two sections only.

® Laches may be found in equitable actions upon a showing of

unreasonable delay in bringing an action with resulting undue preju-

dice to the defendant. See R. Dakin & Co. v. A & L Novelty Co.,

Inc., 444 F.Supp. 1080, 1084 (E.D.N.Y.1978).

In the present action, although there is no doubt that plaintiff

was aware of enactment of the Act in July 1979 and did not com-

mence this action until November of 1979, there is no indication

that plaintiff’s delay was unreasonable, in light of evidence indicat-

ing attempts at negotiating changes in the Law which continued

without success into November. Furthermore, it is questionable

whether prejudice could be found in light of the fact that there is

still a tremendous amount of controversy over the Law and amend-

ments to the Law including one which would postpone the effective

date of the statute, have already been introduced.

69a

Jurisdiction

Defendants, citing Edelman v. Jordan, 415 U.S. 651,

94 $.Ct. 1847, 39 L.Ed.2d 662 (1974) and Alabama v.

Pugh, 438 U.S. 781, 98 S.Ct. 3057, 57 L.Ed.2d 1114

(1978), assert that the Eleventh Amendment to the Con-

stitution bars this action against the State officials named

as defendants.”

The Eleventh Amendment provides that: “|t|he Ju-

dicial power of the United States shall not be con-

strued to extend to any suit in law or equity, com-

menced or prosecuted against one of the United

States by Citizens of another State, or Citizens or

subjects of any Foreign State.”

The principle of soveseign immunity embodied in the

Amendment has been construed to extend to suits by

private persons against State officials as well, when the

action seeks to “impose a liability which must be paid

from public funds in the state treasury ... ,” (Hdelman

v. Jordan, supra, 415 U.S. at 663, 94 S.Ct. at 1856) and

such actions have consistently been barred.

Defendants’ argument fails to recegnize, however, that

there has traditionally been a distinction made between

suits against State officials in their official capacity which

could result in liability to the State treasury, and those

seeking only declaratory and injunctive relief against the

officials. In fact, the latter has been the traditional means

of challenging the constitutionality of a State enactment.

®In Edelman v. Jordan, supra, an action against the Director of

the Illinois Department of Public Aid, plaintiffs sought and were

denied, on the basis of the Eleventh Amendment, retroactive recov-

ery of public assistance benefits wrongfully withheld. In Alabama

v. Pugh, supra, the Supreme Court held that the Eleventh Amend-

ment barred an action against the State and its Board of Correc-

tions, even though injunctive relief was involved. The action was

allowed to stand as against the individual prison officials, however.

Both cases are easily distinguishable from the present since in Edel-

man money darnages were sought, and in Alabama the State itse?*

was made a party.

70a

In the landmark decision of Ex parte Young, 209 U.S.

123, 28 S.Ct. 441, 52 L.Ed. 714 (1908), the Supreme

Court recognized the distinction, holding that a suit for

declaratory and prospective injunctive relief could be

maintined by a private party against a State official re-

sponsible for enforcement of an allegedly unconstitu-

tional enactment.'°

Plaintiff, in this action for declaratory and injunctive

relief, has not overstepped the bounds of Ex parte Young,

supra, and that being the case, the Eleventh Amendment

does not serve as a bar to the present action.

Defendants’ claim that plaintiff has commenced this

action prematurely is likewise without merit. Defend-

ants’ position, in opposing this motion, is that since none

of the defendants has as yet threatened plaintiff with

enforcement of the Testing Law, that the complaint is

fatally defective, and that injunctive relief is clearly

not warranted at this time."

This position, however, flies in the face of well estab-

lished judicial precedent which holds that a party need

not await the occurrence of a threatened injury which

10 This principle has been reaffirmed repeatedly by the Supreme

Court and followed innumerable times in the lower courts. Cf. Quern

v. Jordan, 440 U.S. 332, 99 S.Ct. 1139, 59 L.Ed.2d 358 (1979);

Hutto v. Finney, 437 U.S. 678, 98 S.Ct. 2565, 57 L.Fed.2d 522 (1978).

See also Hansbury v. Regents of Univ. of Cal., 596 F.2d 944 (10th

Cir. 1979); Trotman v. Palisades Interstate Park Com’n., 557 F.2d

35 (2d Cir. 1977) ; Allah v. Com’r. of Dept. of Correctional Serv-

ices, 448 F.Supp. 1123 (N.D.N.Y.1978).

Recently, in Ray v. Atlantic Richfield Co., 485 U.S. 151, 98 S.Ct.

988, 55 L.Ed.2d 179 (1978), the Supreme Court was asked to over-

rule Ex parte Young, supra, and declined to do so.

11 Under the United States Constitution, Art. 3, § 2, the jurisdic-

tion of the federal courts is limited to actual “cases or contro-

versies.”” Defendants argue that since there has been no threat of

enforcement, there is no controversy.

Tla

will result from enforcement of a statute under attack

before being allowed to seek preventive relief. Pierce v.

Society of Sisters, 268 U.S. 510, 45 S.Ct. 571, 69 L.Ed.

1070 (1925); Commonwealth of Pennsylvania v. West

Virginia, 262 U.S. 558, 43 S.Ct. 658, 67 L.Ed. 1117

(1923). Furthermore, the Supreme Court has found it

to be “irrelevant to the existence of a justiciable con-

troversy that there will be a time delay before the dis-

puted provisions will come into effect.” Regional Rail Re-

organization Act Cases, 419 U.S, 102, 143, 95 S.Ct. 335,

358, 42 L.Ed.2d 320 (1974).

There is no question but that plaintiff will be affected

by the Testing Law if it continues to offer the MCAT

in the State of New York, since as previously indicated,

§ 340(1) explicitly includes the MCAT as a “standard-

ized test” subject to the Act. There being nothing in-

definite with regard to the Act’s application as to plain-

tiff, the Court clearly has before it a controversy which

is ripe for determination.“

Defendants’ final jurisdictional challenge involves an

assertion that the proper parties are not now before this

Court. In this regard, defendants contend that the Gov-

ernor and the Attorney General have no statutory author-

ity to enforce the Education Law and are, therefore, im-

proper parties to the proceeding. '”

2 Defendants’ reliance upon Eccles v. Peoples Bank, 2223 U.S. 426,

68 S.Ct. 641, 92 L.Ed. 784 (1947) is completely misplaced since in

that action, there was not only no threat of enforcement but an

expression of intent on the part of the defendant that there would

be no such attempt. Defendants herein have expressed no intent to

decline enforcement of the law.

18 Defendants also claim that this action cannot go forward with-

out the presence of the Board of Regents as a named defendant.

The Court disagrees. Each member of the Board has been named

as a defendant in both his individual capacity and as a Board Mem-

72a _

In determining whether a particular State official is a

proper party in an action to enjoin enforcement of a

State law, the Court looks again to Ew parte Young,

supra, in which the Court stated that:

‘Tijm making an officer of the State a party defend-

ant in a suit to enjoin the enforcement of an act

alleged to be unconstitutional, it is plain that such

officer must have some connection with the enforce-

ment of the act, or else it is merely making him a

party as a representative of the state, and thereby

attempting to make the state a party. It has not,

however, been held that it was necessary that such

duty should be declared in the same act which is to

be enforced.” 209 U.S. at 157, 28 S.Ct. at 453.

It appears clear that in order for the Governor and

the Attorney General to be named as defendants in this

action, some connection with the enforcement of Sections

341 and 342 must be demonstrated.

Sufficient connection is found for the Governor in the

New York State Constitution, Art. 4, § 3 in which the

Governor is charged with the duty to “‘take care that the

laws are faithfully executed.” This mandate has, in

many other instances been found to provide the necessary

ber. All but one of the Members has been served at this time, and

the Board is clearly before the Court.

In any event, the Commissioner of Education, who apart from

any action by the Board of Regents, is charged with the enforcement

of the Education Law [Ed.Law § 305(1) ], is before the Court as a

defendant. See Kinsella v. Board of Ed. of Cent. Sch. Dist. No. 7

Erie Cty., 378 F.Supp. 54 (W.D.N.Y.1974), aff'd without opinion

542 F.2d 1165 (2d Cir. 1976), in which the Commissioner of Educa-

tion and not the Board of Regents was named as a defendant in a

challenge to the constitutionality of a provision of the Education

Law. There was no discussion as to whether the Board of Regents

should have been named, but clearly it was not found to be a

necessary party to the challenge.

73a

basis '* and the Court can see no reason why that should

not be the case here. Cf. Federal National Mortgage

Ass’n v. Lefkowitz, 383 F.Supp. 1294 (S.D.N.Y.1974) ;

Socialist Workers Party v. Rockefeller, 314 F.Supp. 984

(S.D.N.Y.1970) aff'd 400 U.S. 806, 91 S.Ct. 65, 27 L.Ed.

2d 38 (1970).

The Court also finds that the Attorney General has

been properly named as a defendant in this action. De-

fendants argue that the Attorney General has no express

authority to enforce the Education Law, thereby making

him an improper party. However, the duties of the At-

torney General, which are set forth in the Executive Law

§ 63, include the duty to:

(1) [p]rosecute and defend all actions and proceed-

ings in which the state is interested, and have charge

and control of all the legal business of the depart-

ments and bureaus of the state, or of any office

thereof which requires the services of attorney or

counsel in order to protect the interest of the state

”)

and

‘‘(12) Whenever any person shall engage in repeated

fraudulent or illegal acts or otherwise demonstrate

persistent fraud or illegality in the carrying on, con-

ducting or transactions of business, the attorney-

general may apply, in the name of the people of the

state of New York ... for an order enjoining the

continuance of such business activity or of any fraud-

ulent or illegal acts.”

147~n some cases Art. 4, $3 has been found to be an insufficient

connection. Cf. Oliver v. Board of Education of City of New York,

306 F.Supp. 1286 (S.D.N.Y.1969) ; Camacho v. Rogers, 199 F.Supp.

155 (S.D.N.Y.1961). However, it should also be noted that in nu-

merous cases Governors have been accepted, without discussion, as

defendants in challenges to State laws Cf. Ray v. Atlantic Richfield

Co., supra; St. Martins Press, Inc. v. Carey, 440 F.Supp. 1196

(S.D.N.Y.1977).

74a

While the Court is not prepared to state that the fore-

going provisions would in every case provide a sufficient

basis for making the Attorney General a defendant, they

suffice in this instance. Although it is true that the Com-

missioner of Education has the duty to enforce the Edu-

cation Law pursuant to § 305(1), in his initial impact

statement on the Testing Law, dated October 16, 1979,

Commissioner Ambach, while admitting an obligation to

monitor compliance with the law, stated that violations

would be brought to the attention of the Attorney Gen-

eral. Furthermore, the Court is aware that plaintiff does

not look favorably upon the testing legislation and could

conceivably choose to violate its provisions, in which case

the Attorney General would be empowered to act under

the Executive Law § 63/12) to enjoin the violations. See

Federal National Mortgage Ass'n. v. Lefkowitz, supra.

Having determined that none of defendants’ jurisdic-

tional arguments is meritorious, the Court finds that

jurisdiction is present in this action pursuant to 28 U.S.C.

§§ 1331, 1338(a) and 1343(3) as alleged by plaintiff.

Standard for Issuance of a Preliminary Injunction

The standard in the Second Circuit for issuance of a

preliminary injunction is that:

“there must be a showing of possible irreparable in-

jury and either (1) probable success on the merits

or (2) sufficiently serious questions going to the

merits to make then a fair ground for litigation and

a balance of hardships tipping decidedly toward the

party requesting the preliminary relief.” Buffalo

Courier-Express, Inc. v. Buffalo Evening News, 601

F.2d 48, 54 (2d Cir 1979) quoting from Caulfield

v. Board of Education of the City of New York, 583

F.2d 605, 610 (2d Cir. 1978).

See also Tricbwasser & Katz v. American Telephone &

Telegraph Co., 535 F.2d 1356, 1358 (1976).

The Court finds that in this case, the second criterion

has been satisfied, warranting the issuance of a prelimi-

75a

nary injunction enjoining enforcement of Sections 341

and 342 of the Education Law against plaintiff, pending

a determination on the merits.

Sufficiently Serious Questions Going to the Merits

Plaintiff in this lawsuit has raised “serious questions

going to the merits which warrant further investigation

and trial.” Gulf & Western Indus., Inc. v. Great A. &

P. Tea Co., Inc., 476 F.2d 687, 692 (2d Cir. 1973).

The federal Copyright Act of 1976 provides that copy-

right protection be conferred upon “original works of

authorship fixed in any tangible means of expression,

now known or later developed, from which they can be

perceived, reproduced or otherwise communicated, either

directly or with the aid of a machine or device.” [17

U.S.C. §102/a)]. Copyright protection attaches imme-

diately upon creation of the work.

Plaintiff claims, and defendants do not vigorously dis-

pute, that the MCAT and studies and reports related

thereto are works which are entitled to protection under

the Copyright Act.’

15 Defendants do, however, raise an issue concerning the fact that

none of plaintiff’s 1980 tests has as yet been registered. The Court

might also point out that the unpublished studies and reports which

plaintiff seeks to protect from infringement are apparently not, as

a rule, registered by plaintiff.

Although copyright protection attaches to a work at the time of

creation, an action for infringement can only be instituted if the

work has been registered under the Copyright Act. (17 U.S.C.

§ 411). However, Courts have not hesitated to enjoin the infringe-

ment of future registered works when equity has required. See

Wainright Securities, Inc. v. Wall Street Transcript Corp., 418

F.Supp. 620 (S.D.N.Y.1976), aff'd on other grounds, 558 F.2d 91

(2d Cir. 1977), cert. denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d

759 (1978); Orth-O-Vision, Inc. v. Home Box Office, 474 F.Supp. 672

(S.D.N.Y.1979).

While that should certainly be the case with regard to the tests,

it is not so clear as to the studies which have never been registered.

However, since plaintiff has also raised sufficiently serious legal

76a

As holder of a copyright on the MCAT and related

studies, plaintiff argues that it is entitled to the rights

granted at 17 U.S.C. § 106 of the Copyright Act. These

include the right to control the reproduction and distri-

bution of the copyrighted work. [17 U.S.C. § 10611) &

(3)]. Plaintiff claims that these rights will be violated

by Sections 341 and 342 of the Testing Law in that plain-

tiff, in order to comply, will be required under threat of

civil penalty, to reproduce and distribute copies of the

MCAT and will be required to file with the State, for

publie use, copies of the related studies.

In addition, plaintiff alleges that defendants, through

enforcement of Sections 341 and 324, will engage in un-

authorized reproduction and distribution of the MCAT

and related studies since the tests and studies will become

public documents pursuant to the Testing Law and

thereby available to the pub'ic under the New York State

yreedom of Information Act (Art. 6 of the N.Y. Public

Officers Law §§ 84 ef seq.). By engaging in unauthorized

reproduction and distribution of plaintiff's copyrighted

works, defendants will, according to plaintiff, be guilty

of copyright infringement under 17 U.S.C. § 501(a)."

Defendants argue, however, that plaintiff fails to recog-

nize that the use of the copyrighted material pursuant to

Sections 341 and 342 of the Testing Law falls within the

well established doctrine of “fair use’’, recently codified

in the Copyright Act of 1976 at 17 U.S.C. § 107.7 “Fair

use” has been defined as:

issues concerning preemption and constitutional violations, the Court

is not precluded from granting injunctive relief as to the studies

because of failure to register.

16 Support can be found for the position that states are not im-

mune to charges of infringement or free to violate the provisions

of the Copyright Act at will. See Mills Music, Inc. v. State of Ari-

zona, 591 F.2d 1278 (9th Cir. 1979).

17Jn addition to raising a “fair use” defense to plaintiff’s in-

fringement charge, defendants raise a First Amendment argument.

Such claims have traditionally been handled under the “fair use”

: \

77a

“a privilege in others than the owner of the copy-

right to use the copyrighted material in a reasonable

manner without his consent, notwithstanding the

monopoly granted to the owner by the copyright.”

Meeropol v Nizer, 560 F.2d 1061, 1068 (2d Cir.

1977), cert. denied 434 U.S. 1013, 98 S.Ct. 727, 54

L.Ed.2d 756 (1978), quoting from Rosemont Enter-

prises, Inc. v. Random House, Inc., 366 F.2d 303,

306 (2d Cir. 1966) cert. denied 385 U.S. 1009, 87

S.Ct. 714, 17 L.Ed.2d 546 (1967).

The doctrine has been used as a means of balancing the

exclusive rights of a copyright holder with the interest

of the public in the dissemi tion of information in areas

of universal concern including art, science, history and

industry.

The Copyright Aci of 17 U.S.C. § 107 sets forth some

of the factors which must be considered in determining

the applicability of a “fair use” defense as follows:

“(1) the purpose and character of the use, including

whether such use is of a commercial nature or

is for nonprofit educational purposes ;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion

used in relation to the copyrighted work as a

whole; and

(4) the effect of the use upon the potential market

for or value of the copyrighted work.”

In asserting the applicability of the doctrine in this

case, defendants point out that the Testing Law was en-

acted in the public interest in order to make testing

agencies more accountable to the public, in light of the

doctrine. Wainright Securities, Ine. v. Wall Street Transcript,

supra.

78a

tremendous influence which standardized admissions tests

ean have on an individual’s future. Furthermore, defend-

ants contend that since there is no commercial purpose

involved and since defendants do not intend te use plain-

tiff’s tests for test purposes, that “fair use” should apply.

Plaintiff counters with several arguments in opposition

to t

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