Addressing a copyright dispute involving the copyrightability of medical forms, the U.S. Court of Appeals for the Eleventh Circuit affirmed a summary judgment ruling that the medical forms were not copyrightable because the selection and arrangement of well-known medical terms was not sufficiently original. Utopia Provider Systems, Inc. v. Pro-Med Clinical Systems, LLC, 2010 U.S. App. LEXIS 3280 (11th Cir. Feb. 19, 2010) (Tjoflat, J.).

In 2001, a doctor and an administrator created a system of template medical forms for use in hospital emergency departments. They sought to license the form to defendant Pro-Med, a marketing agent. The doctor and administrator formed plaintiff Utopia for the purpose of marketing these forms. The parties entered into a five-year license agreement.

The system consisted of 56 paper templates to capture patient encounters, with each template consisting of a two- or three-page set of charts for documenting a patient’s symptoms, the doctor’s conclusions and directions to the patient. Utopia received a copyright registration for the system. Pro-Med began selling the templates and making royalty payments to Utopia. In 2006, after the license expired, Pro-Med, on its own, began marketing its own electronic version of the forms, a version that had been developed during and under the earlier license agreement with Utopia. After Utopia sued for breach and copyright infringement, Pro-Med filed a summary judgment motion seeking a ruling that the Utopia forms were not copyrightable. After the district court granted summary judgment it sua sponte dismissed the rest of the case as raising only state law claims. Utopia appealed.

The Eleventh Circuit affirmed, explaining that “blank forms which do not convey information or contain original pictorial expressions are not copyrightable.” While some courts, such as the Ninth Circuit, have taken a bright-line approach that blank forms can never be copyrightable, the Eleventh Circuit reaffirmed its rule that blank forms are copyrightable only if they “convey information.”

In this case, the court found that the only information conveyed by the forms at issue was the selection of questions to be asked by doctors about a patient’s symptoms. The Eleventh Circuit reasoned that the forms lacked origination in that they only conveyed questions that any doctor would have asked a patient and were therefore not copyrightable. The court also dismissed the contention that the selection and arrangement of the questions were copyrightable, finding that such selection does not convey information to render a blank form copyrightable. The court explained that if an action is well established in a profession (e.g., a doctor asking questions), the description of how to perform that action is not original and thus not copyrightable. The court concluded that the forms did not tell a doctor how to perform his or her job and thus did not “convey information.”

Finally, turning to the district court’s sua sponte dismissal of the state claims, the Eleventh Circuit noted that while the state contract claims were not pre-empted by the Copyright Act, neither was the district court’s decision not to exercise supplemental jurisdiction an abuse of discretion.

Practice Note: In most circuits, blank forms cannot be copyrightable unless they convey original information to the user.