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Minimal creativity required to secure copyright protection

Cantor Colburn June / July 2023 IP Newsletter

Cantor Colburn June / July 2023 IP Newsletter

A dispute between two testing companies in ACT, Inc. v. Worldwide Interactive Network, Inc., is the latest example of the bar for how much creativity is necessary to secure copyright protection. Here’s what you need to know.

Copyright claims

The testing company ACT partnered for many years with Worldwide Interactive Network (WIN) to develop career-readiness assessments. After their relationship soured, WIN began marketing its own career-readiness assessments.

WIN’s assessments claimed to test various “learning objectives,” which are descriptions of workplace skills. ACT sued WIN, alleging its competitor infringed ACT’s copyright in its “skill definitions” — descriptions of the various workplace skills ACT tests with its assessments.

The trial court granted partial summary judgment to ACT on its infringement claims before trial. WIN then tried to salvage its learning objectives by revising them.

After COVID-19 delayed trial on the remaining issues, including whether the revised learning objectives were infringing, the court issued a preliminary injunction restraining WIN from continued infringement. WIN appealed the injunction.

Passing grade

To determine whether an injunction was appropriate, the U.S. Court of Appeals for the Sixth Circuit largely focused on ACT’s likelihood of success in its infringement claim. In particular, it considered WIN’s argument that ACT’s selection, description and arrangement of the skill definitions weren’t creative and therefore weren’t copyrightable.

The appellate court found that ACT’s mere selection of its three skills to test — locating information, reading for information and applied mathematics — was likely unprotectable. It explained that copyright protects only an author’s expression of a system, not the system itself. The short labels given the skills also didn’t warrant protection, as they were noncreative descriptions of the relevant fields.

But all wasn’t lost. According to the appellate court, ACT’s descriptions of the skills, which compiled all of the various “subskills” tested to assess competency in the overarching skill, probably were protectable. As the U.S. Supreme Court has noted, the requisite level of creativity to secure a copyright is low. The decision to compile specific subskills into a skill definition wasn’t inevitable; different collective descriptions of the skills were possible. The court concluded that ACT’s creative choices in compiling the various subskills merited copyright protection.

ACT’s arrangement of subskills across skill levels in the skill definitions was also sufficiently creative to warrant protection. For example, the court said, ACT made the nonobvious, and not inevitable, decision to place the “Use the reading material to figure out the meaning of words that are not defined” subskill in Level 4 of the “reading for information” skill definition, rather than in Level 5. Its arrangement didn’t follow some “blindingly obvious scheme (like alphabetization) that would have vitiated copyright protection.”

The Sixth Circuit thus found that WIN’s learning objectives were likely to infringe at least ACT’s description and arrangement of its skills and subskills, as the objectives were virtually identical copies of ACT’s skill definitions. As for WIN’s revisions, the court said they represented only “immaterial variations” that couldn’t insulate them from infringement.

Challenge fails

The Sixth Circuit also found that WIN’s infringement threatened irreparable harm to ACT and that the balance of the equities and public interest favored an injunction. It therefore affirmed the lower court.

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