1:14-cv-05280
N.D. Ill.Nov 2, 2015Background
- 3Lions registered a 2010 copyright in an online HITECH Act overview published on its "HIPAA Survival Guide" site; AMA published a March 2011 HITECH overview by Howard Burde on its website.
- 3Lions threatened suit alleging AMA/Burde copied protectable material; AMA filed a declaratory judgment action in July 2014; 3Lions later filed (then dismissed/transferred) related litigation and asserted counterclaims here for copyright infringement and contributory infringement.
- AMA and Burde moved for judgment on the pleadings under Fed. R. Civ. P. 12(c) after pleadings were filed; court reviewed the two articles themselves as the operative record.
- The disputed overlap consisted mainly of an introductory paragraph and two sections titled "Notification of Breach" and "Electronic Health Record Access," plus a single verbatim sentence: "Under certain conditions, local media will also need to be notified."
- The court found most overlapping text to be unprotectable (short phrases, headings, merged expression) and concluded the remaining similarities were minimal in amount and qualitatively different in structure and organization.
- Court granted AMA/Burde’s Rule 12(c) motion, holding no reasonable trier of fact could find substantial similarity; 3Lions’ counterclaims were dismissed as moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether AMA/Burde copied protectable elements of 3Lions’ article (substantial similarity) | AMA: any overlap is unprotectable short phrases or minimal and not substantially similar as a whole | 3Lions: highlighted portions (and alleged paraphrasing) show copying and request discovery to show more overlap | Held for AMA — similarities are slight, mostly unprotectable, and structure/organization differ; no reasonable jury could find substantial similarity |
| Whether further discovery is needed before deciding substantial similarity | AMA: court can decide on the pleadings using the two articles; no additional evidence required | 3Lions: additional discovery needed to identify paraphrasing and other offensive material | Held for AMA — record contains the two articles; discovery unnecessary because case turns on documents already in evidence |
| Protectability of headings/short phrases and merger issues | AMA: headings/short phrases are unprotectable; merger doctrine applies | 3Lions: relied on highlighted text as infringing content | Held for AMA — short phrases and section titles not protected; merger and regulation exclude such brief expressions |
| Disposition of 3Lions’ counterclaims | AMA: counterclaims fail as a matter of law on substantial similarity and should be dismissed | 3Lions: counterclaims survive and seek damages | Held for AMA — counterclaims dismissed as moot after judgment on pleadings in favor of AMA/Burde |
Key Cases Cited
- Janky v. Lake Cnty. Convention & Visitors Bureau, 576 F.3d 356 (7th Cir.) (elements of copyright infringement)
- Atari, Inc. v. N. Am. Philips Consumer Elec. Corp., 672 F.2d 607 (7th Cir.) (access plus substantial similarity standard)
- Wildlife Express Corp. v. Carol Wright Sales, Inc., 18 F.3d 502 (7th Cir.) (ordinary observer/substantial similarity test)
- Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir.) (no need for discovery when case turns on documents already in evidence)
- Seng-Tiong Ho v. Taflove, 648 F.3d 489 (7th Cir.) (short phrases and merger doctrine limit protectability)
- Francorp, Inc. v. Siebert, 210 F. Supp. 2d 961 (N.D. Ill.) (structure and explanation differences defeat infringement where subject matter overlaps)