IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

NATIONAL CONFERENCE OF BAR :

EXAMINERS : CIVIL ACTION

Plaintiff, :

 :

v. :

:

MULTISTATE LEGAL STUDIES, : NO. 04-3282

INC., d/b/a PMBR, ROBERT :

FEINBERG, and DONA :

ZIMMERMAN :

Defendants. :

MEMORANDUM AND ORDER

Fullam, Sr. J. July 21, 2005

Plaintiff, the non-profit group that develops and owns the

Multistate Bar Examination (“MBE”), filed suit against

Defendants, a national bar exam preparation course and its owners

(collectively “PMBR”), alleging copyright infringement in

violation of 17 U.S.C. § 101 et seq., and unfair business

practices in violation of the California Business and Professions

Code. 

The MBE, a 200 question multiple-choice test that takes six

hours to complete, tests a variety of common law subjects and is

administered twice a year to bar applicants around the country. 

In most states, applicants must achieve a minimum score on the

MBE and on a separate state-specific essay examination in order

to be admitted to the state’s bar. Plaintiff contracts with

various law professors and writers to develop suitable questions

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for the examination. Plaintiff also owns the copyrights to all

of the questions, many of which are re-used over a number of

years. 

Many of the questions are known as “equator” questions. In

other words, Plaintiff compares how test-takers at a given exam

perform on those questions compared to previous groups, and

develops a scaled score for each exam. This ensures that one

group of test-takers will not receive lower scores because that

exam was more difficult than earlier exams. Because re-using

questions is an integral part of ensuring consistent scoring of

the MBE, Plaintiff goes to great lengths to maintain the security

of those questions. While “retired” questions are made available

to the public for licensing or purchase, Defendants have not

licensed or purchased any materials.

Defendants operate a bar exam preparation course known as

PMBR, the goal of which is to prepare students for the MBE. As

part of the course, students are given several practice exams

designed to mimic both the test conditions and the subject matter

of the actual MBE. PMBR maintains a bank of more than 3,000

questions for this purpose and has representatives sit for a bar

exam nearly every year.

The events giving rise to this lawsuit began with the

February 2003 administration of the Alaska Bar exam, which was

taken by Defendant Robert Feinberg, the PMBR creator and CEO, and

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Dorothy Benson, another PMBR employee. After time was called,

Feinberg attempted to leave the examination room with handwritten

notes and Benson was found to have similar notes on her desk. 

Although Alaska is one of the few jurisdictions that allows note

taking during the MBE, removal of those notes from the exam site

is forbidden. After disclosure of the Alaska incident, Plaintiff

obtained PMBR materials and found, so it alleges, many questions

similar to those used on the MBE. 

Plaintiff has now moved for partial summary judgment seeking

to establish liability on both counts of the complaint and to

limit further proceedings to a determination of damages. For the

reasons that follow, the motion will be denied.

By Order dated April 13, 2005, I denied Defendants’ motion

for summary judgment. In that Order, I held that Defendants have

no standing to contest Plaintiff’s copyright ownership of the

questions in suit, that Plaintiff is entitled to seek any remedy

available under the Copyright Act, and that the state law claim

is not preempted by the Copyright Act.

In order to establish a claim for copyright infringement a

Plaintiff must show ownership and unauthorized copying of

original elements of a work. Dun & Bradstreet Software Services

v. Grace Consulting, Inc., 307 F.3d 197, 206 (3d Cir. 2002). 

Because it has already been determined that Defendants lack

standing to challenge copyright ownership, the only question is

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whether unauthorized copying and distribution took place in this

case. 

Copying is proven by showing access to the work and

substantial similarity between the two works. Dam Things from

Denmark v. Russ Berris & Co., 290 F.3d 548, 561 (3d Cir. 2002). 

Because the parties do not dispute Defendants’ access to the

copyrighted questions, the focus of the inquiry here is on

similarity.

The standard used to detect substantial similarity is

“whether an ordinary lay observer would detect a substantial

similarity between the works.” Association of Am. Med. Colleges

v. Mikaelian, 571 F. Supp. 144, 149 (E.D. Pa. 1983). 

“Substantial similarity does not require verbatim copying. .

.immaterial variations do not alter the conclusion that

infringing material is substantially similar to copyrighted

material.” Educational Testing Service v. Simon, 95 F. Supp. 2d

1081, 1088 (C.D. Cal. 1999); see also Gallup Inc., v. TalentPoint

Inc., 2001 WL 1450592 (E.D. Pa. 2001)(noting that even striking

similarity is not dispositive because Plaintiff must still show

that similarity is “not a result of both parties drawing from the

same sources in the public domain.”)

To demonstrate substantial similarity, Plaintiff points to a

side-by-side comparison of several of the questions in suit to

Case 2:04-cv-03282-JF Document 66 Filed 07/21/05 Page 4 of 9
1Because all motions and exhibits containing test questions

have been filed under seal, I do not provide sample comparison

questions within the text of this opinion. 

5

highlight what it contends are nearly identical question forms.1

Defendants do not argue that similarities do not exist, in fact

Defendants admit that some of the questions do have a similar

tone and style. Instead, Defendants argue that this similarity

is inevitable and permissible, and that if their questions did

not have some resemblance to the MBE, the PMBR review course

would be of little value. 

Defendants contend that the similarities stem from the fact

that both Plaintiff and Defendants draw from the same pool of

material when creating questions, such as hornbooks, law

treatises, and case law, and that such similarity is entirely

permissible. See Dun & Bradstreet, 307 F.3d at 214 (holding that

“copyright protection is denied to those expressions that are

standard stock, or common to a particular topic or that

necessarily follow from a common theme or setting”). While

Plaintiff agrees that some similarity is acceptable, it points

out that the pool is so large that something more than

coincidence must explain how both the MBE and PMBR feature

questions based on the same 1908 Vermont Supreme Court case. 

Certainly, both Plaintiff and Defendant are entitled to draw

upon the same source material to design a question. It is

reasonable that both parties might, for example, draw from the

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facts of United States v. Lopez, 514 U.S. 549 (1995), in

formulating a commerce clause question. What is impermissible is

for PMBR to copy Plaintiff’s wording and tone in such a question. 

In the context of a summary judgment motion, I cannot determine

as a matter of law that an observer would find the questions

impermissibly similar or whether any such similarity can be

attributed to both parties’ reliance on the same public material. 

These are issues of fact to be determined at trial.

I also deny summary judgment on the state law unfair

business practices claim. The parties disagree as to whether

Pennsylvania or California law governs. Applying Pennsylvania’s

choice of law rules to the facts of this case, I conclude that

California law governs. California has a governmental interest

in the regulation of its businesses, and PMBR has its principal

place of business in that state, which is also where Mr. Feinberg

resides. Pennsylvania has no interests that would be impaired by

the application of California law. Defendants’ argument that

California courts lack subject matter jurisdiction is irrelevant,

as subject matter jurisdiction does not determine choice of law,

especially where, as here, the California court decision rested

on the continuing jurisdiction of Pennsylvania’s courts. 

California law prohibits any conduct that attempts to

subvert a licensing examination. Cal. Bus. & Prof. Code § 123

(2004). Prohibited business acts are defined as acts that are

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unfair, unlawful or fraudulent. Cal. Bus. & Prof. Code §

17200(2004). Section 17200 borrows violations of other laws and

treats them as independently actionable under the Act. State

Farm Fire & Casualty Co. V. Superior Ct. of L.A., 45 Cal. App.

4th 1093, 1003 (1996) Thus, while the Act itself does not

require an intent to injure, the Act does require a violation of

other state law, and a defense to the underlying offense is a

defense under the Act. People v. Duz-Mor Diagnostic Lab., Inc.,

69 Cal. App. 4th 654, 673 (1998).

Plaintiff argues that Feinberg’s alleged attempt to leave

the Alaska bar exam with notes, the allegedly unauthorized

reproduction of examination material, and the alleged sale of

portions of an administered exam all constitute violations of the

Act. Defendants respond that Plaintiff has not shown any intent

to subvert as required by California law. Defendants note that

the State of California has never accused Feinberg of subverting

an examination or the licensing process of attorneys. At the

very least, Defendants argue that triable issues of fact remain

about Feinberg’s intent.

I agree that triable issues exist. California law requires

intent be part of the case, and Plaintiff has not established

that Feinberg acted with any subversive intentions at the bar

exam. Feinberg’s intent, as well as the intent of Ms. Benson and

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of PMBR in general, is a question for the finder of fact to

examine.

Because there are triable issues of fact remaining in the

case on both the copyright and state law claims, it is not

necessary to address Defendants’ arguments regarding laches and

waiver at this time.

An Order follows.

Case 2:04-cv-03282-JF Document 66 Filed 07/21/05 Page 8 of 9
IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

NATIONAL CONFERENCE OF BAR :

EXAMINERS : CIVIL ACTION

Plaintiff, :

 :

v. :

:

MULTISTATE LEGAL STUDIES, : NO. 04-3282

INC., d/b/a PMBR, ROBERT :

FEINBERG, and DONA :

ZIMMERMAN :

Defendants. :

ORDER

AND NOW, this day of July, 2005, upon consideration

of Plaintiff’s Motion for Partial Summary Judgment, IT is ORDERED

that the motion is DENIED.

 

John P. Fullam, Sr. J.

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