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December 16, 1996

CHURCHILL LIVINGSTONE, INC., Plaintiff, against WILLIAMS & WILKINS, a division of Waverly, Inc. and THOMAS W. SADLER, Defendants.

The opinion of the court was delivered by: MUKASEY


 Plaintiff Churchill Livingstone, Inc., sues defendants Williams & Wilkins and Thomas W. Sadler for copyright infringement. Plaintiff moves and defendants cross-move for summary judgment on the issue of substantial similarity. For the reasons stated below, defendants' motion is granted and plaintiff's motion is denied.


 The following facts are drawn from the pleadings, affidavits and Local Rule 3(g) statements submitted with the parties' motion papers and are construed in the light most favorable to the non-movant in each instance:

 A. Human Embryology

 Churchill Livingstone, Inc. is a book publisher, incorporated in the state of Delaware with its principal place of business in New York, New York. (Compl. P 2) In 1993, Churchill published a medical textbook entitled Human Embryology written by Dr. William J. Larsen ("Larsen's"). *fn1" Larsen assigned Larsen's copyright to Churchill when it was registered in 1993. (Compl. PP 5-6) Larsen is a professor in the Department of Anatomy and Cell Biology at the University of Cincinnati, and a faculty member of the Developmental Biology Graduate Program at the University of Cincinnati College of Medicine. (3/29/96 Larsen Aff. P 2-3)

 Larsen began writing his book in 1988. Each of the chapters in the textbook contains three sections: descriptive medical embryology; clinical applications; and experimental principles. (Id. P 12) Larsen describes the textbook as follows:

The textbook I envisioned, and ultimately wrote and designed, used a variety of different kinds of illustrations to assist students in learning and recalling information they were being taught. I paid special attention to avoiding gaps in the embryo's developmental processes . . .

 (Id. P 6) The illustrations Larsen used included three-dimensional, air-brushed drawings ("3-D drawings"), scanning electron micrographs ("SEMS") and photographs. (Id. P 18) Larsen claims that the 3-D drawings "showed the asymmetrical bilateral nature of embryological development" and presented sophisticated topics that had not previously been addressed in embryology textbooks. (Id. P 19-20) According to Larsen, SEMS, which are high resolution photographs of anatomic surfaces, showed the "actual shape and appearance of the subject." (Id. P 24) Photographs illustrated developmental malformations. (Id. P 27) Larsen included also tables to present various information, and new topics that had not previously been included in embryology texts. (Id. P 29)

 Larsen's was published in 1993 and was "hailed as a major advancement in embryology textbooks." (Id. P 30) Reviewers praised the illustrations and the inclusion of clinical material. Larsen's won the 1993 Award of Excellence of the Association of Medical Illustrators. (Id. PP 31-32) In addition, according to plaintiff, Larsen's was a great commercial success. (Id. P 33)

 In 1995, Williams & Wilkins, a division of Waverly, Inc. and a book publisher incorporated in the state of Maryland, published the seventh edition of Langman's Medical Embryology ("Langman's 7th"). (Compl. P 3) Dr. Thomas W. Sadler edited the volume, which he has edited since the fifth edition in 1985. (5/28/96 Sadler Aff. P 2-4). Sadler has been a professor of embryology since 1976 and now teaches at the University of North Carolina at Chapel Hill. (Id. P 9) Sadler has considerable expertise in teratology, the study of birth defects and congenital malformations. Since 1992 he has been the Director of the Birth Defects Center at the University of North Carolina and since 1993 the editor of the Teratology Journal of Abnormal Development. (Id. P 10)

 According to Sadler, Langman's 7th is concise and confines the study of embryology to "what students need to know in terms of what is taught in the classroom and what is covered by the national exams." (Id. P 27) Sadler claims that Langman's always has been well illustrated and every edition has included ample drawings and photos. Sadler claims also that Langman's always has included 3-D drawings, and that in 1985 Sadler added SEMS to the fifth edition to complement drawings already in the book. (Id. P 29) Langman's 7th competes with Larsen's in the medical school textbook market. (Pl. 3(g) P 10)

 C. Plaintiff's Claims

 Plaintiff claims that in revising Langman's 7th, defendants copied plaintiff's selection and arrangement of illustrations, tables and topics. Plaintiff claims defendants copied Larsen's: 1) in the selection of which embryological topics to illustrate with 3-D drawings, SEMS and photographs; 2) in the selection of what topics to present in tabular form; and 3) in the choice of which new topics to add to Langman's 7th. (Pl. Reply Mem. at 5) Plaintiff does not claim literal infringement -- i.e., plaintiff does not claim that any particular illustration or text in Larsen's was copied directly in Langman's 7th. (Id. at 16)

 To support its copyright infringement claim, plaintiff makes six distinct factual claims relating to defendants' book. First, plaintiff claims that 40 of the 46 new 3-D drawings added to Langman's 7th illustrate the same subjects illustrated by 3-D drawings in Larsen's. (3/29/96 Larsen Aff. P 38) Second, plaintiff claims that 36 of the 65 new SEMS added to Langman's 7th illustrate topics illustrated with SEMS in Larsen's. (3/29/96 Larsen Aff. P 39) *fn2" Third, plaintiff claims that 14 of the 39 new photographs added to Langman's 7th illustrate topics illustrated with photographs in Larsen's. (3/29/96 Larsen Aff. P 39) Fourth, plaintiff claims that the three new tables added to Langman's 7th -- treating lung development, cranial nerves and neural crest cells -- are the subjects of similar tables in Larsen's. (Id. P 41) Fifth, plaintiff claims that two-thirds -- 33 -- of the new topics added to Langman's 7th were topics addressed in Larsen's. (Id. P 42; Ex. 7) Sixth, plaintiff claims that Langman's 7th was revised to resemble Larsen's in that clinical material was added to Langman's 7th and set apart in chapter sections called "Clinical Correlates" which copied Larsen's use of separate clinical applications sections. (Id. P 40) Finally, plaintiff claims that defendants copied not only plaintiff's method of illustrating specific facts, but also its "strategy" for illustrating difficult embryological concepts with series of drawings. *fn3" (Id. P 43)

 Defendants explain each of the additions to Langman's 7th. First, defendants claim that the addition of 3-D drawings stemmed from Sadler's access to his sister's, Susan Sadler-Redmond's, computer generated art, and that most of the 3-D art added to Langman's 7th is merely stylized drawings of two-dimensional art which appeared in Langman's 6th and which relate to fundamental concepts and stages of embryological development. (Id. PP 67, 72, 77, 79) Second, defendants claim that the increased use of SEMS was planned before Larsen's was published, in part because Sadler had access to a collection of SEMS owned by his colleague and co-teacher of embryology, Dr. Kathleen Sulik. (Id. P 48) Third, defendants claim that the photographs selected for inclusion in Langman's 7th relate to common abnormalities or birth defects, or fundamental embryological concepts or phenomena, which are routinely taught in medical school with the use of photographs. (Id. PP 105-107) Fourth, defendants claim that the use of tables in medical textbooks is a convention and that in selecting and arranging their tables defendants did not copy Larsen's. (Id. P 118) Fifth, defendants claim that the new topics added to Langman's 7th were either found in Langman's 6th or in other embryology textbooks, or were subjects that had received increased emphasis or attention in the field and warranted inclusion in Langman's 7th. (Id. PP 142-144) Finally, defendants argue that the clinical correlates section is different from the clinical applications section in Larsen's because it is set off in pink and included within the chapter, rather than appearing at the end. (Id. P 164)

 Defendants have submitted an enormous and extensive filtration and comparison book, comprising seven volumes, which compares the allegedly infringing drawings, SEMS, photographs and topics from Langman's 7th with other embryology textbooks including Larsen's. Defendants' filtration book establishes essentially that 3-D drawings, SEMS and photographs have been used to illustrate embryology textbooks prior to Larsen's, and that Larsen's was not the first to illustrate certain subjects.

 Plaintiff filed suit on October 10, 1995. As noted, the parties cross-move for summary judgment on substantial similarity.


 To prove copyright infringement, a plaintiff must prove ownership of a valid copyright and defendant's infringement by unauthorized copying. Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139 (2d Cir. 1992). Here, there is no dispute that plaintiff owns a valid copyright in both the text of Larsen's and the selection and arrangement of illustrations. (5/30/96 Moran Aff., Exs. 1, 2) A plaintiff can prove unauthorized copying if he can prove access and a substantial similarity between the protected or original elements of the works. Feist Pubs., Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 361, 113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991). The substantial similarity tends to prove actual copying. Here, defendants do not dispute that they had access to plaintiff's book. (5/28/96 Sadler Aff. P 35) The sole issue on this motion, then, is whether there is a substantial similarity between defendant's book and the protected elements of plaintiff's book.

 Although substantial similarity is often a fact issue for jury resolution, a court may "determine non-infringement as a matter of law on a motion for summary judgment, either because the similarity between two works concerns only non-copyrightable elements of plaintiff's work or because no reasonable jury, properly instructed could find the two works are substantially similar." Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 239-40 (2d Cir. 1983). Thus, if the similarity between plaintiff's and defendants' books concerns non-copyrightable material, or if the substantiality of the similarity between the copyrightable elements is or is not "so clear as to fall outside the range of reasonably disputed fact questions requiring resolution by a jury," summary judgment is appropriate. Id. at 239. However, as long as reasonable minds could differ on the issue of substantial similarity, summary judgment is inappropriate.

 The determination of substantial similarity is necessarily fact intensive and requires a detailed examination of both works. Williams v. Crichton, 84 F.3d 581, 583 (2d Cir. 1996). However, when a copyrighted work includes both protectible and unprotectible elements, a court must filter out all unprotectible elements and "take care to inquire only whether 'the protectible elements, standing alone, are substantially similar.'" Id. at 588 (citing Knitwaves, Inc. v. Lollytogs Ltd, 71 F.3d 996, 1002 (2d Cir. 1995).

 To evaluate claims of nonliteral infringement of a computer program, the Second Circuit in Computer Assocs. Int'l., Inc. v. Altai, Inc., 982 F.2d 693, 706 (2d Cir. 1992), applied an abstraction-filtration-comparison test to decide the issue of substantial similarity. The Court stated that courts should first abstract the allegedly infringed work into its constituent parts, filter out non-copyrightable or unprotected elements, and then compare the "remaining kernel" of protected expression with the allegedly infringing program. Id. One prominent copyright scholar has called for the application of this test to all copyright cases. See 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright ยง 13.03[F][1], at 13-120 (1996). However, as the Altai Court itself noted, its abstraction-filtration-comparison test was nothing new. Rather, in creating the test the Court drew upon familiar copyright doctrines such as merger and scenes-a-faire. Altai, 982 F.2d at 706. Indeed the abstraction component of the test was based on Judge Learned Hand's opinion in Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d. Cir. 1930), cert. denied, 282 U.S. 902, 75 L. Ed. 795, 51 S. Ct. 216 (1931). An elaborate abstraction-filtration-comparison for each and every element of an alleged infringement, which may be helpful to deal with a complex computer program when the ...

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