PresenceLearning Ordered to Pay Super Duper $3.25M in Copyright and Trademark Infringement Suit
Lawsuit Claimed PresenceLearning Platform Illegally Included Hundreds of SD-Owned Titles That Must Be Removed
- By Kristal Kuykendall
- 04/28/22
A federal judge in New York this week approved a judgment against PresenceLearning, provider of online special education and therapy services for K–12 schools, in a copyright and trademark infringement lawsuit brought by a competitor, Super Duper Inc. based in Greenville, S.C.
Super Duper, which has published original educational material for PreK–5 children since 1986 with an emphasis in content for use in speech therapy, special education, and occupational therapy, will receive $3.25 million from PresenceLearning, plus legal fees to be determined, according to the judgment finalized Monday in U.S. District Court Southern District of New York.
The court also ordered PresenceLearning to permanently delete all copies of all works owned by Super Duper that were on PresenceLearning’s platform, which included 363 different titles owned by Super Duper; the complaint filed by Super Duper stated that copyright management information had been intentionally removed from at least 140 of those titles.
The judgment was offered by PresenceLearning after about a year and a half of contested litigation, said Super Duper’s attorney James Weinberger told THE Journal today. “The way this works, the offer of judgment basically is a tool that allows defendants to say, ‘All right, we give up, and we're going to make you a proposal that we think is fair,’” Weinberger said. “Frankly, the result was exactly what my client was looking for. So Super Duper was basically able to shortcut having to take the case to trial, because the defendant capitulated and gave our client what it wanted: a judgment that PresenceLearning should not have done what it did, together with fair compensation.”
In its complaint, Super Duper also accused PresenceLearning of unfair competition through its use of SD materials in numerous marketing and advertising promotions to create the false impression that Super Duper had sponsored and approved of Presence’s services.
“We have worked very hard for 36 years to create unique, fun, and colorful products to help children with speech and language delays, developmental learning disabilities, and autism, improve their lives,” Super Duper President Sharon Webber said in a statement. “We were shocked to learn PresenceLearning had thousands of Super Duper custom illustrations, photos, and text-based content in its digital library.”
PresenceLearning declined an interview request today but sent the following statement to THE Journal via email:
“We are pleased that our offer of judgment was accepted, resolving all allegations and ending the disruption of litigation prior to a trial. This was the right decision for PresenceLearning and our providers, allowing us to maintain our focus on serving the children who need us. We respect the rights of all publishers and have continued to make improvements to our platform to prevent the uploading and sharing of content without permission. The complaint primarily related to individuals privately uploading materials for use in their online therapy sessions with children with special needs. We felt strongly that resolving this issue before trial was important to protecting our clinical network, who we believe have always acted with good intentions.”
In the initial complaint filed in District Court, Super Duper noted that PresenceLearning’s platform “widely displays the well-known Super Duper marks in connection with the copies of the SD works made available for widespread use on the platform,” the complaint stated. This likely leads users to mistakenly believe that PresenceLearning or its services were affiliated with or approved by Super Duper, when the opposite was true, the lawsuit said.
The use of Super Duper’s content in PresenceLearning marketing materials also increased the likelihood that consumers would incorrectly assume that PresenceLearning or its services were approved by Super Duper, and unfairly benefited PresenceLearning, the lawsuit said.
“Defendant’s marketing of its services heavily showcases the infringing platform … and prominent displays of certain Super Duper works and trademarks,” the plaintiff’s lawsuit stated. The complaint included screenshots of PresenceLearning’s website pages and promotional materials — including videos on YouTube and Vimeo, that have since been removed — that show children and therapists using Super Duper works or simply show a collection of works including Super Duper content available on the PresenceLearning platform.
“Defendant is well aware of the infringement taking place on the platform and, worse, encourages it by providing detailed training to users on how to maintain access to published works of third parties that defendant has been advised are subject to copyright protection and owned by third parties, and how to ‘hide’ these works from defendant’s search engines so the defendant does not ‘know’ that users have access to these infringing materials.
“In a publicly available training video for platform users, defendant advises users that defendant is unable to see what is in users’ ‘private queues’ and instructs the users that they can save any materials on the platform to their queues, even content that a publisher specifically told defendant not to share on the platform. … This video was uploaded on Sept. 18, 2020, just weeks after plaintiff made defendant aware of the infringement of Super Duper works on the platform. It is evident that the infringing platform and defendant’s entire business is dependent on infringing works produced by publishers like Super Duper.”
Super Duper’s registered trademark brands of children’s instructional and therapy content include Super Duper Publications, Webber, Chipper Chat, Fun Deck, Artic Quickies, Color Me Fluent, Say And Do, Ask And Answer, Fold & Say, Granny’s Candies, Auditory Adventures, Awesome Artic, Bubble Pop, Can Do, Cool In School, Flamingo Bingo, FLiPS (Flips for Learning Intelligible Production of Speech), Fluency River, Funalogies, Funny FLiPS, Funzee, Go For The Dough, Grammar Gumballs, Handy Handouts, Hearbuilder, Jeepers Peepers, Language Lab, Look Who’s Listening, Magnetalk, Merry-Go-Sound, Pirate Talk, Positive Pragmatic, Quick Stories, Quick Take Along Mini-Book, Roll N Talk, Say & Glue, Skill Strips, The Question Challenge, Tickle Stories, Turtle Talk, Twisto Tommy, Webber Story Builder, What Do You Say…What Do You Do…, Word Joggers, Wordy Wheels, and Yogarilla.
The lawsuit was filed in late 2020, after Super Duper discovered its copyrighted and trademarked content was published on PresenceLearing’s password-protected platform and was available for use to PresenceLearning subscribers. Super Duper attempted to reach an agreement with PresenceLearning, the lawsuit said, but was unsuccessful, and six months after the lawsuit was initially filed, hundreds of Super Duper’s works listed in the lawsuit were still accessible to PresenceLearning subscribers, an amended lawsuit document stated.
During the early negotiations, Super Duper discovered more of its copyrighted materials on PresenceLearning, including one title that the platform’s counter showed had been accessed 9,534 times. When Super Duper demanded the newly discovered titles be removed, PresenceLearning instead removed the counter function for all materials on its platform, in late August 2020, the lawsuit stated. The title itself was still accessible on PresenceLearning’s platform a year later, according to court documents.
Super Duper, founded by the Webbers in 1986 with more than 1,700 titles published, was represented by Weinberger and Nicole Lieberman of Fross Zelnick Lehrman & Zissu in the lawsuit. PresenceLearning, founded in 2009, has received investment funding from Spectrum Equity, TPG’s Rise Fund, Catalyst Investors, New Markets, Venture Partners, Catamount Ventures, and Bain Capital Double Impact.