Copyright protection subsists, in original works of authorship fi xed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. 17 U.S.C. § 102(a). According to a leading treatise on copyright, a work is “original” if it “was independently created by the author” and “possesse[d] at least some minimal degree of creativity.” Nimmer on Copyright, §§ 2.01[A], [B].

Thus, there can be no doubt that this newsletter is a work of authorship subject to copyright protection under federal law.

Does that mean that a “blank” form produced by an author is copyrightable and subject to protection? According to a recent Eleventh Circuit opinion, to the extent the form is a blank form, the answer is likely to be “no.”

In Utopia Provider Sys., the plaintiff had created 56 templates designed to capture a patient encounter with a treating physician. The templates were used for, among other purposes, documenting a patient’s personal data, medical and social history, symptoms and a physician’s impressions, conclusions and discharge directions to a patient. Each of the templates consisted of a set of charts tailored to a particular type of ailment, such as chest pain, burns, head injury, etc. Other than what necessarily differed from chart to chart based on the particular ailment addressed, the charts were identical.

The plaintiff copyrighted the templates and entered into a royalty-bearing license with the defendant. When the defendant refused to pay royalties for its use of the templates in its Electronic Physician Documentation system, things got ugly. At trial, the defendant asserted that the copyrights in the templates were invalid because the templates themselves were not subject to copyright protection. The trial court granted summary judgment in the defendant’s favor and the plaintiff appealed to the Eleventh Circuit.

On appeal, the Eleventh Circuit turned to the Supreme Court and noted that the “sine qua non of copyright is originality” and that originality has the defi nition provided above. It further noted that copyright protection does not, however, extend to anything in the work of authorship that constitutes an “idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b).

The court went on to explain that it is further well established that forms which do not convey information or contain original expression are not copyrightable. According to the court, most blank forms such as bank checks, scorecards, address books, etc., have headings that are so obvious that their selection cannot be said to satisfy even minimal creativity. Such a work conveys no information, not just because it contains blanks, but because its selection of headings is totally uninformative.

In the present case, the court concluded that the forms were indeed “blank forms” that were intended to be populated by a physician and that the forms themselves did not convey information about a patient or about what procedures the doctors were to follow in evaluating a patient. For instance, the forms called for the same information that any reasonable physician would ask a patient with the given ailment. At best, the court noted that the templates merely described the correct and established way of performing an action in the medical profession and that such a procedure cannot be original. Moreover, the evidence showed that the templates did not prompt the physician to care for the patient but rather prompted the physician to capture the information that derives from providing the care, and thus they did not actually convey any information to the physician. Put another way, the forms were not responsible for walking a physician through the steps because physicians are supposed to know these steps.

Accordingly, the Eleventh Circuit affi rmed the decision and upheld the finding of invalidity.

Practice Tip:

Notwithstanding the prima facie evidence of copyrightability of a work that accompanies a certifi cate of registration from the U.S. Copyright Offi ce, copyrights can be found invalid if not suffi ciently original. Therefore, it is important for copyright licensors to include an express acknowledgement of ownership and validity provision in copyright license agreements to avoid the copyright validity problems facing the plaintiff/licensor in the case summarized above. An exemplary provision is provided below:

“Licensee is estopped from challenging the validity of the licensed work(s) or from asserting any claim adverse to Licensor regarding its ownership in the work(s) and the validity of any copyright persisting in such work(s).”