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It is well-established that blank forms which do not convey information or contain original pictorial expression are not copyrightable. Examples of blank forms include time cards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms and the like, which are designed for recording information and do not in themselves convey information. 37 C.F.R. § 202.1(c). Courts look to the "convey information" test to analyze whether a work is copyrightable, and does not end the analysis merely by labeling it a blank form.
In August 2001, Dr. Michael S. McHale and Joshua Plummer created a prototype template from which they would develop "ED Maximus," a system of templates for use in hospital emergency departments. McHale and Plummer sought to license ED Maximus to Pro-Med, a marketing agent, which would sell the template to hospitals. On August 23, McHale and Plummer formed Utopia to own and manage the rights in ED Maximus. In September 2001, Utopia and Pro-Med entered into the License Agreement, effective October 1, 2001. Pursuant to this Agreement, Utopia granted Pro-Med "an exclusive royalty-bearing license to sell, market, service, distribute and otherwise use" its rights associated with the ED Maximus charts (the "Licensed Materials"). Pro-Med would use the Licensed Materials to formulate a product called "Pro-Med Maximus"; Pro-Med Maximus would refer to any software product "which uses or employs a full or partial copy of any Licensed Material." Such a product could include "the printing and manual completion of Charts, as well as the creation of an electronic medical record based on or derived from the Charts." The Agreement specified that Pro-Med would owe Utopia 50% of the revenue it collected from the "sale, licensing or other distribution of the Pro-Med Maximus Module" in "any form . . . distributed by [Pro-Med] either as a component. . . or on a stand-alone basis." The License Agreement would remain in effect for five years, unless sooner terminated in accordance with its terms, and would automatically renew for an additional one-year period each year thereafter absent notification of nonrenewal by either party. Once terminated, Pro-Med had to stop using the Licensed Materials. In October 2001, McHale and Plummer created 56 ED Maximus templates to "capture a patient encounter." On October 29, 2001, McHale and Plummer submitted the ED Maximus templates to the United States Copyright Office, requesting a Certificate of Registration. McHale and Plummer ultimately received a Certificate of Registration for ED Maximus as a compilation of terms.
Meanwhile, in creating Pro-Med Maximus, Pro-Med copied the ED Maximus templates verbatim, changing only the name of the product. On November 1, 2001, Pro-Med began selling Pro-Med Maximus templates to hospitals throughout the United States. About a year later, Pro-Med began the development of its Electronic Physician Documentation system ("EPD") based on the Pro-Med (and thus ED) Maximus templates. Pro-Med copied directly from the Pro-Med Maximus templates to create the first version of EPD, but modified the second version. Pro-Med began marketing the full version of EPD in September 2003. In February 2006, Pro-Med reduced the amount of royalties it paid Utopia on Pro-Med Maximus from 50% to 30% of its sales. The License Agreement expired on October 1, 2006, after unsuccessful negotiations to extend the Agreement. Pro-Med continued to sell Pro-Med Maximus until mid-June 2007. Pro-Med continues to sell EPD. Pro-Med has never paid Utopia royalties on the sale of EPD.
Thus, Utopia filed suit against Pro-Med for breach of contract, i.e., the License Agreement. After Pro-Med moved the court to dismiss the case on the ground that Utopia's claim arose under copyright law, and thus had to be brought in federal court, Utopia voluntarily dismissed the case without prejudice. On May 8, 2007, Utopia sued Pro-Med in the United States District Court for the Southern District of Florida for copyright infringement, breach of fiduciary duties, and breach of contract, all based on Pro-Med's use of Pro-Med Maximus and EPD beyond the period of the License Agreement and Pro-Med's failure to pay royalties. On February 2, 2009, the district court denied Utopia's motion for summary judgment and granted Pro-Med's motion on the copyright infringement count. The court concluded that ED Maximus was not subject to copyright protection because ED Maximus was a series of blank forms, which did not convey information.
Did the district court err in granting Pro-Med’s motion for summary judgment on Utopia’s copyright infringement claim?
ED Maximus is a set of charts for a physician to use to record a patient's medical history and present symptoms. The charts contain headings such as "History of Present Illness" and room thereunder for a physician to fill out the patient's unique medical information. The relevant test for copyrightability of ED Maximus, therefore, is whether its forms "convey information." The forms, before they are filled out, most certainly do not convey any information about a patient. The only way that the ED Maximus forms could convey information would be in the selection of the terms on the forms; that is, if they convey information to the doctors about what questions they should be asking.
For one, the originality claimed in the forms is in the "selection and arrangement of the terminology" used in the templates. However, the selection and arrangement of the terms does not convey information and is not sufficiently original. As a starting point, if the correct way to perform an action is well established in a profession, the court fails to see how a description of how to perform that action can be original. Looking to the forms themselves, the first section on the forms is the same regardless of the ailment, calling for personal information such as the patient's name, date of birth, sex, and chief complaint. The forms then call for the history of the present illness, a review of systems, medical and social history, physical exam, medical decision making, clinical impressions, and finally, consultation, disposition, and instructions. The subcategories on the forms are often very similar, even when the complaints are very different. For example, the history of present illness subcategories (e.g., timing, duration, location) are identical on the forms for "Lower Extremity/Ankle/Foot" and "Chest Pain" with the exception of "Cardiac Risk Factors" being listed as an additional subcategory on the latter form. The questions in these categories differ only inasmuch as would be expected given the different type of complaint. A review of the forms and McHale's testimony indicates that the headings and subcategories on the ED Maximus forms are what one would expect to find on such a medical template. The ED Maximus forms, therefore, are better analogized to the non-copyrightable baseball scorecard or travel diary with generic headings described by the Second Circuit than to a possibly copyrightable book about a baby's first year or the file structures used to organize a dental laboratory.
For more, the question of whether the headings actually conveyed information to treating physicians was answered in the negative by McHale’s testimony. McHale agreed that the function of the ED Maximus template was to record or capture the information gathered during a patient encounter. McHale stated that the template could "prompt" a patient encounter in that "some people need to be prompted" to capture all of the elements of a patient encounter, including billing, coding, and medical legal aspects. When McHale was asked whether the "prompting" he described referred to capturing information or adequately addressing the needs of the patient, however, he conceded that the template did not do the latter--the template did not have "anything to do with the actual patient care." In sum, McHale agreed that the "template doesn't prompt the physician to adequately care for the patient" but rather "prompts the physician to capture the information that derives from providing the care." Indeed, when McHale was directly asked whether the forms conveyed information, he agreed that the forms do not "[c]onvey information" before they are filled out nor "tell an emergency physician how to do his job." He characterized them instead as a "means for capturing and retaining information."
Between the court’s independent review of the ED Maximus forms and especially the uncontradicted evidence gleaned through depositions, the court is unconvinced that the selection or arrangement of terms in the ED Maximus forms is original or conveys information. Therefore, ED Maximus forms are not copyrightable. Accordingly, the district court did not err in granting Pro-Med's motion for summary judgment on Utopia's copyright infringement claim.