Although this blog typically focuses on legal developments in marketing and false advertising, its authors and editors are of course active legal practitioners in related areas of IP and other creative industries. Proskauer recently received a favorable summary judgment decision for the defendant, its client Elsevier, Inc., a leading publisher in the fields of science, health and nursing, in a copyright infringement case involving 500+ 3-D medical animations, in which plaintiff sought over $80 million dollars in statutory damages. Archie MD, Inc. v. Elsevier, Inc., No. 16-cv-6614 (JSR), 2017 U.S. Dist. LEXIS 37141 (S.D.N.Y. Mar. 13, 2017).

From 2005 to 2015, Plaintiff Archie MD, Inc. licensed a catalog of 3-D medical animations to Elsevier for use in Elsevier’s online learning management system, known as Evolve. As a free supplement to its nursing textbooks, Elsevier provides its customers access to digital content through Evolve. Each textbook has a companion website on Evolve that provides supplemental content, including 3-D medical animations. In 2015, Elsevier opted not to renew the license agreement with Archie, though continued to make available many of the animations using what it believed to be its post-termination rights. Elsevier also created its own 3-D animations to use on Evolve.

In response, Archie sued, bringing claims of copyright infringement, breach of contract and violation of the Defend Trade Secrets Act. Archie alleged two subsets of copyright infringement claims, alleging that Elsevier (i) continued to use 500+ Archie animations on Evolve after termination of the license agreement without authorization and (ii) copied more than 50 Archie animations in developing its own, thus creating unauthorized derivative works.

After both parties filed dueling motions for summary judgment, Judge Jed Rakoff of the Southern District of New York denied Archie’s motion in its entirety and found for Elsevier on all counts. Judge Rakoff held that Elsevier utilized Archie’s animations within its post-termination rights, Archie’s animations were not trade secrets and, for all but one of the allegedly copied animations, no reasonable jury could find the animations substantially similar.

Specifically, Judge Rakoff denied Archie’s claims based on unauthorized continued use of its animations after termination of the license agreement. The court found that the license agreement permitted Elsevier to continue to use the Archie animations under certain conditions and that there was no evidence Elsevier had not complied with those conditions.

Similarly, Judge Rakoff dismissed all but one of Archie’s 50+ copyright claims alleging that Elsevier impermissibly copied Archie’s animations in creating its own on similar or the same subjects. Under the merger doctrine, the Court found that many of the alleged similarities between the animations were depictions of non-copyrightable medical concepts and anatomy. The Court also found that many of Archie’s allegations of similarity—such as allegedly similar camera angles and monochromatic backgrounds—were not original to Archie to begin with or were unprotectable ideas. Finally, the Court recognized that the overall concept and feel between the animations was “markedly different” because Elsevier’s animations were brighter with more vibrant colors, and contained more lifelike human figures. As a result, Judge Rakoff dismissed all of Archie’s 50+ derivative work allegations, with the exception of one. Since Elsevier challenged the validity of that lone animation’s copyright registration, Judge Rakoff stayed the litigation as to that animation pending a validity opinion from the Copyright Office under the PRO IP Act.

Judge Rakoff also dismissed all breach of contract claims alleged against Elsevier, finding they either were duplicative of the copyright infringement claim, and thus preempted or, where based on the disclosure of confidential information of Archie, unsupported by any evidence. Lastly, the Court dismissed Archie’s Defend Trade Secrets Act claim, finding that the Archie animations were not trade secrets because Archie did not take reasonable measures to keep the animations secret and the animations were ultimately distributed to consumers.