`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`
`
`Civil Action No.: 09-cv-00528-PAB-BNB
`
`DATAWORKS, LLC, a Colorado limited liability company,
`
`
`
`Plaintiff,
`
`
`
`
`v.
`
`COMMLOG LLC, an Arizona limited liability company,
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DEFENDANT COMMLOG, LLC’S MOTION FOR PARTIAL SUMMARY JUDGMENT
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Defendant Commlog, LLC (“Commlog”) respectfully moves for partial summary
`
`judgment, pursuant to Fed. R. Civ. P. 56, to dismiss Plaintiff’s claims for copyright infringement,
`
`unfair trade practices, CCPA and injunctive relief as there are no genuine issues of material fact
`
`and Commlog is entitled to judgment as a matter of law as to those claims. Consistent with
`
`D.C.Colo.LCivR. 56.1(A), Commlog states the following:
`
`I. STATEMENT OF UNDISPUTED FACTS
`
`1. Manager’s logs (calendar based diaries) are used throughout the restaurant trade to record
`
`restaurant operations and conditions such as weather, sales, shift meetings, to-do lists, repair and
`
`maintenance, personnel issues, and other traditional general topics. Before pre-printed forms,
`
`restaurants used a commonly bound diary named the Standard Diary with blank pages that
`
`managers would format with headings or stamped boxes. They were called “manager’s red book”
`
`because the Standard Diary was red. (Ex. A-1, Streiff Affidavit, ¶ 3.)
`
`{00332030.DOC9}
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 2 of 21
`
`2. Dataworks and Commlog are both suppliers of pre-printed logs and custom logs. They
`
`independently developed their products in a similar manner. Mr. Streiff for Commlog and Mr.
`
`Drennan for Dataworks were experienced managers for different restaurant chains, Mr. Streiff at
`
`TGI Fridays and Mr. Drennan at Chili’s. Each used his experience as a manager working with his
`
`respective company’s manager’s log to arrive at forms that he then sold to his company and
`
`others. (Ex. A-1, ¶ 4; and Ex. A-2, Drennan Deposition, 6:18 – 9:6.)
`
`3. Mr. Streiff for Commlog uses Excel for the various logs. He does not scan forms or
`
`pages, but directly inputs the programming or instructions. (Ex. A-1, ¶12.)
`
`4.
`
` Commlog’s logs have evolved from his original input and came from customer input and
`
`his personal experience in the restaurant and hotel industry for over 20+ years. Each of the
`
`generic Commlog logs were independently developed without copying any logs from any other
`
`publisher, and specifically he did not use, refer to or copy any generic logs from Dataworks.
`
`Similarities with Dataworks’s generic logs are due to the common idea, encompassing the general
`
`terminology in the industry and function inherent in the use and purpose of manager’s logs and
`
`other types of logs. (Ex. A-1, ¶11.)
`
`5.
`
` In order to be useable to the largest market segment, the generic logs necessarily are not
`
`specific as each restaurant may have different procedures, issues, or operations. As a result the
`
`generic logs use common, traditional, and generic categories that are conventional in the industry
`
`with general headings and short phrases such as weather, repair and maintenance, shift notes,
`
`personnel, food and beverage supply, injuries and sales figures. The arrangement by Mr. Streiff
`
`came from his experience and developed over time since he first encountered manager’s logs.
`
`Before his pre-printed logs, they used logs that were using the Standard Diary with formatting
`
`done by him or others in the restaurant or hotel.) (Ex. A-1, ¶3.)
`
`{00332030.DOC9}
`
`- 2 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 3 of 21
`
`6. For customized forms or books, Dataworks and Commlog take customers instructions,
`
`choices, formats and other information from customers. The customer instructions may be sent
`
`by fax, electronic means or hard copy. (Ex. A-1, ¶14.)
`
`7.
`
` Ms. JB Bettinger was VP of Human Resources for Black-Eyed Pea (hereafter BEP) from
`
`Jan. 2005 to August 2008. (Ex. A-3, Bettinger Affidavit, ¶ 1.)
`
`8. As part of Ms. Bettinger’s duties, she created standardized processes for BEP’s employee
`
`and training manuals, risk management, and other human resource initiatives, as contained in
`
`DW3-00081 through -00123 of Ex. 44. She personally created forms for such activities as
`
`worker’s comp claims, witness forms, charts and explanations of claim handling procedures, and
`
`other topics. In 2005 and 2007 Ms. Bettinger started working on a customized manager’s log,
`
`incorporating many of the standardized forms and guidelines that she had previously created.
`
`(Ex. A-3, ¶¶ 1, 4 and 7.)
`
`9. Ms. Bettinger was responsible for review and alterations to the BEP manager’s log and
`
`trainer’s log. She was responsible for the creation of all corporate policies and procedures. She
`
`was the point person for all changes to corporate documents. (Ex. A-3, ¶ 1.)
`
`10. Prior to the customized manager’s log, BEP used a generic log from Dataworks. She
`
`considered it, as well as the generic trainer’s log from Dataworks, to be ordinary in the selection
`
`of categories and organization, consistent with average restaurant business. Because generic logs
`
`were used by all different types of restaurants, they had to be general and include the common
`
`topics. Other suppliers of logs had similar generic logs covering the same information in the
`
`same way. Because Dataworks offered custom logs, BEP decided to customize its manager’s log.
`
`Dataworks generic did not meet existing operations/company procedures, handbook and training
`
`materials used by BEP and developed over 30 years of BEP’s existence. It was easier and her
`
`{00332030.DOC9}
`
`- 3 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 4 of 21
`
`choice for Ms. Bettinger to develop a custom log that was not just the same generic log used by
`
`and published by others. (Ex. A-3, ¶ 2.)
`
`11. BEP wanted something tailored to its needs, so that is why Ms. Bettinger worked on the
`
`development of the custom logs. Dep. Ex. 44 (Ex. A-6) appears to be the last version that she
`
`approved before she left. From the start to when she left, she reviewed the logs quarterly and
`
`there were always changes. Every quarter she met with Operations to review the logs. In
`
`addition at every business meeting and conference call, Ms. Bettinger would review the
`
`manager’s logs and trainer’s logs and keep a file on recommendations and updates. (Ex. A-3, ¶¶
`
`2 and 4.)
`
`12. Over the years Ms. Bettinger was involved in 90% of the work on the customized logs.
`
`She estimates BEP invested 150 to 200 hours of expended time. (Ex. A-3, ¶ 4.)
`
`13. In developing the trainer’s log, Ms. Bettinger designed a two-page per day format to
`
`include a first page that she created. She created a mock-up of the page with headings,
`
`categories, and arrangement. She sent the mock-up to Dataworks to combine it with their generic
`
`page. Dataworks sent back example pages for approval. Ms. Bettinger made some additional
`
`changes and sent it back. Once it was as she intended it, she gave approval. (Ex. A-3, ¶ 3.)
`
`14. The customized BEP manager’s log included 41 pages (DW3-00081 through -00123 of
`
`Deposition Exhibit 44, attached hereto as Exhibit A-6) of pre-existing forms and procedures
`
`created by Ms. Bettinger. Ms. Bettinger sent Dataworks copies of the forms that she wanted
`
`included in the customized manager’s log. Each of them, as sent, had a copyright notice, on
`
`behalf of BEP, aka Restaurants Acquisitions I, LLC or RAI Holdings, LLC. (Ex. A-3, ¶¶ 4, 5 and
`
`7.)
`
`15. Exhibit A-10 are copies of some of the 41 BEP forms, with the copyright notice on the
`
`bottom, along with the comparable pages from the 3rd quarter 2008 manager’s log (Deposition
`
`{00332030.DOC9}
`
`- 4 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 5 of 21
`
`Exhibit 44, pages DW3-00081 through -00123). The pages are the same but for the size of the
`
`page and instead of BEP’s copyright notice, the DW3 documents have only a copyright notice by
`
`Dataworks. (Ex. A-3, ¶ 5 and attached Ex. A-10.)
`
`16. Ms. Bettinger did not authorize the removal of BEP’s copyright notice. Ms. Bettinger
`
`considered the customized manager’s and trainer’s logs as proprietary to BEP and she understood
`
`that Dataworks agreed that it was owned by BEP. (Ex. A-3, ¶¶ 5 and 17.)
`
`17. For page DW3-126 of the manager’s log, Ms. Bettinger states that Dataworks provided
`
`menus from which to choose for some limited sections dealing with weather icons, weather notes,
`
`date and notes at the top. BEP gave instruction or created and organized the sections identified in
`
`hand lettering as B, C, E, F and G. (Ex. A-3, ¶ 6.)
`
`18. Ms. Bettinger identified the following section of DW3-00127 of the manager’s log that
`
`she states “BEP independent of Dataworks, came up with the topics, wording, organization on the
`
`page”, of Sections A, C, E, F, and G. (Ex. A-3, ¶ 9.)
`
`19. For the In-Store Manager’s Meeting page (DW3-00135 of the manager’s log) Ms.
`
`Bettinger, “independent of Dataworks, came up with the topics, wording, organization on the
`
`page” of the sections labeled A, B, and C. On page DW3-00136 BEP created and did a mock-up
`
`of Sections F-J, as Dataworks’s generic form did not meet their needs. Ninety percent of the
`
`selection and organization was created by BEP. (Ex. A-3, ¶ 10.)
`
`20. On page DW3-00141of the manager’s log which appears to be Dataworks generic form,
`
`Ms. Bettinger did add the spaces for general and district managers to initial that they had
`
`reviewed the form. (Ex. A-3, ¶ 11.)
`
`21. On page DW3-00423 of the manager’s log, Ms Bettinger states that she supplied section
`
`A-E and selected Section F from Dataworks menu. The overall selection and arrangement of this
`
`{00332030.DOC9}
`
`- 5 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 6 of 21
`
`page was done by Ms. Bettinger and the Training Manager, Alex Castillo. Ms. Bettinger created
`
`the final mock-up which was forwarded to Dataworks. (Ex. A-3, ¶ 15.)
`
`22. There were times when Dataworks sent back the copy for approval; it needed to be sent
`
`back to Dataworks with corrections to change the form provided by Dataworks to meet company
`
`requirements or goals. (Ex. A-3, ¶¶ 3 and 4.)
`
`23. Both Dataworks and BEP intended that the contributions by BEP would be an integral
`
`part of the customized manager’s log and the trainer’s log printed by Dataworks. (Ex. A-3, ¶ 18.)
`
`24. Dataworks cannot tell who or when any particular elements within their logs were
`
`created. (Ex. A-5, Thiesen Dep. 119:19 – 120:16.)
`
`25. For the 4th quarter of 2008, BEP selected Commlog to supply the two customized logs.
`
`BEP gave Commlog copies of BEP’s customized logs as printed by Dataworks for the 3rd quarter
`
`manager’s log and trainer’s log. These were Deposition Exhibits 44 (Ex. A-6) and 45 (Ex. A-19).
`
`Commlog was directed to produce similar logs. As Commlog used different software and had
`
`other differences in the general headings and layouts, there are differences. In both the
`
`customized management log and trainer’s log, Commlog recognized that they included BEP’s
`
`proprietary content. It considered that BEP authorized Commlog to print them. (Ex. A-1, ¶¶ 15-
`
`16.)
`
`26. The Plaintiff has identified only the two works, the customized BEP manager’s log and
`
`trainer’s log produced by Commlog in 2008 that it claims infringe Dataworks’s copyrights. (Ex.
`
`A-7, Response to Int. #1, first set of Discovery requests; Ex. A-20, Pg. 1, Davis letter dated
`
`August 20, 2010, wherein she states: “no additional supplementation is necessary.”)
`
`27. Dataworks, through their attorney, applied for copyright registrations for the two BEP
`
`custom logs in December of 2008. (Ex. A-21, Weinstein Report, pg. 11-13; Ex. A-11, copy of
`
`{00332030.DOC9}
`
`- 6 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 7 of 21
`
`application and registration for the Trainer’s Log; Ex. A-12, copy of application and registration
`
`for the Manager’s Red Book.)
`
`28. In the BEP manager’s log application and resulting registration, Dataworks states the first
`
`version of the manager’s log was published in 1996. As part of its application, Dataworks did not
`
`disclose BEP was an author; instead it claimed to be the sole author. With the application
`
`Dataworks deposited a third-quarter 2008 BEP manager’s log. (Ex. A-6, partial of the full
`
`deposit.)
`
`29. At the time of the application and as of now, Dataworks does not have a copy of the 1996
`
`version of the work for which it applied for a copyright registration. Because the original version
`
`was not available, Dataworks did not and could not compare the version deposited with the
`
`Copyright Office with the original version. Dataworks admits that it could not reconstruct the
`
`first version. (Ex. A-5, 111:2 – 111:6; 123:12 – 123:16.)
`
`30. The deposit copy submitted to the Copyright office included pgs. DW3-00081- 00123 of
`
`Dep. Ex. 44 (Ex. A-6), which are the BEP documents that BEP had created prior to the custom
`
`log and had provided to Dataworks, with BEP’s copyright notice. Between the time that BEP had
`
`provided its 41 pages of forms, with its copyright notice, and submission of the copies of those
`
`pages to the Copyright Office as part of the application process, Dataworks had replaced BEP’s
`
`copyright notice with Dataworks’s copyright notice. (Ex. A-3, ¶5.)
`
`31. For the application of the BEP trainer’s log, Dataworks did not disclose that BEP had
`
`authored the first page of the daily, rather, Dataworks claimed to be the sole author. The deposit
`
`submitted with the application was a third quarter 2008 version of the BEP trainer’s log, not the
`
`2007 version for which it had applied for. (Ex. A-19, partial of the full deposit.)
`
`32. At the time of the application and up to the present, Dataworks does not have a copy of
`
`the trainer’s log that is being registered, as it existed when first published in 2007. Dataworks did
`
`{00332030.DOC9}
`
`- 7 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 8 of 21
`
`not and could not compare the deposit copy and the original version. Dataworks admits that it
`
`could not reconstruct any earlier version. (Ex. A-5, 111:2 – 111:6, 123:12 – 123:16.)
`
`33. Commlog did not use any Dataworks’s trademarks in any text or in any other way on its
`
`website or in any ads. There was never any confusion or intent to confuse with metatags.
`
`Commlog’s use of metatags was the same as a similar use by Dataworks of “Commlog” in its
`
`website’s metatags. Commlog’s removal in 2007 of these metatags was a compromise of a
`
`dispute to avoid litigation. The matter was resolved and Commlog has not used any Dataworks’s
`
`trademarks as metatags. (Ex. A-1, ¶¶18-19.)
`
`34. Until the fall of 2008 Commlog had been a subscriber using Google keyword ads. When
`
`setting up the ad account, among other words, Google suggested to Commlog that it use
`
`“Dataworks” and “manager’s” and “red book”. Again when Dataworks requested that Commlog
`
`stop, it stopped in the fall of 2008 as a compromise of a dispute to avoid litigation. The matter
`
`was resolved and Commlog has not used Dataworks’ trademarks in keyword ads. (Ex. A-1, ¶20.)
`
`35. Commlog always sought to distinguish its products and Commlog as the source of its
`
`goods. There has never been any instance of any misleading or deceitful statements or other form
`
`of misrepresentation as to Commlog’s products or source of its product. (Ex. A-1, ¶22.)
`
`36. There has never been any misrepresentation of any association, sponsorship or
`
`relationship between Commlog and Dataworks. There has never been any attempt to trade-off of
`
`Dataworks’ goodwill. Instead Commlog has always distinguished itself from Dataworks and
`
`truthfully explained why its products are superior to the Dataworks products. (Ex. A-1, ¶23.)
`
`37. The use of metatags and keywords was in Commlog’s view no different than placement
`
`of Commlog’s truthful ads (which did not state or imply a relationship with Dataworks) where
`
`restaurants could see them. Search engines provide users (in this case the users would be
`
`restaurants who are themselves using the internet to advertise) with competitive products and
`
`{00332030.DOC9}
`
`- 8 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 9 of 21
`
`suppliers. It is the electronic version of the yellow pages. Metatags are no longer being used by
`
`search engines, as they have evolved to more complex criteria. Keywords, and the results as
`
`displayed, clearly show that the listed company has purchased the ad, as they are set apart as
`
`“sponsored ads.” In Mr. Streiff’s experience, restaurants of all types that use logs such as sold by
`
`Commlog and Dataworks are sophisticated in the use of internet ads as they use advertising
`
`through the internet. (Ex. A-1, ¶21.)
`
`38. The Plaintiff does not have any evidence of actual confusion or proof of likelihood of
`
`confusion. (Ex. A-14, Response to Int. #10, first set of Discovery requests.)
`
`
`
`II.
`
`ARGUMENT
`
`A.
`
`Summary Judgment Standard
`
`A court should grant a moving party’s motion for summary judgment where the party
`
`shows that “there is no genuine issue as to any material fact and that the movant is entitled to
`
`judgment as a matter of law.” Fed. R. Civ. P. 56(c)(2). The moving party’s initial burden on a
`
`motion for summary judgment is slight. Allen v. Dayco Prods., Inc., 758 F. Supp. 630, 631 (D.
`
`Colo. 1990). Rule 56(c) does not require the moving party to prove the absence of issues of
`
`material fact or actively negate the non-moving party’s claim in order to meet its initial burden.
`
`Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 2552, 91 L. Ed. 2d 265, 274
`
`(1986). The moving party need only allege an absence of evidence supporting the non-moving
`
`party’s case and indicate where it believes such evidence is lacking. Id. Thereafter the party
`
`opposing the motion bears the burden of proving the existence of a genuine, material, and
`
`factual dispute. Allen, 758 F. Supp. at 631.
`
`{00332030.DOC9}
`
`- 9 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 10 of 21
`
` Because Dataworks has not provided, and cannot provide, any proof as to the key
`
`elements of its claims, and because certain of its claims are preempted as a matter of law,
`
`summary judgment must be granted in favor of Commlog. See Celotex Corp., 477 U.S. at 323,
`
`106 S. Ct. at 2552, 91 L. Ed. 2d at 273 (noting that “there can be ‘no genuine issue as to any
`
`material fact,’ since a complete failure of proof concerning an essential element of the non-
`
`moving party’s case necessarily renders all other facts immaterial”).
`
`B.
`Commlog is immune from any Copyright Claim for the only works identified by
`Dataworks as infringing, as the similarity was dictated by an Owner, Black-Eyed Pea.
`
`
`Although Dataworks has referenced numerous logs in its Amended Complaint, during
`
`discovery it has identified only two works that it alleges are similar and infringe. The two are the
`
`BEP manager’s log and the trainer’s log. See Answer to Interrogatory 1 (Ex. A-7) and report of
`
`Mr. Weinstein. (Ex. A- 20, Weinstein Report, pgs. 11-13.) As of Aug. 20, 2010, in response to
`
`Defendant’s request for any supplementation, Plaintiff stated that there was nothing to add to
`
`their prior answer to this interrogatory. (Ex. A-21, pg. 1.)
`
`As BEP was the majority, if not sole, author and owner of any copyrightable portion or
`
`part of the two BEP logs, Commlog cannot infringe the BEP custom logs it printed at the
`
`direction of BEP. The BEP manager’s log included at least 41 pages of BEP proprietary forms
`
`and guidelines, DW3-00081-000123, and additional content, selections and arrangement to the
`
`calendar pages and other pages independently created by Ms. Bettinger, VP of BEP’s Human
`
`Resources. (Ex. A-3, ¶¶ 6, 9-11.) For the custom BEP trainer’s log, Ms. Bettinger altered
`
`Dataworks’s one-page format and created the two-page per day format. The additional page,
`
`complete with the selections and arrangement, was done by Ms. Bettinger. (Ex. A-3, ¶13-15.)
`
`{00332030.DOC9}
`
`- 10 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 11 of 21
`
`The content created by Ms. Bettinger was intended by Dataworks and BEP to be
`
`integrated in the BEP custom logs printed by Dataworks. The intent of both Ms. Bettinger and
`
`Dataworks was clear, to make a unified work. BEP considered it to be its proprietary work,
`
`something that Dataworks could not duplicate and sell to anyone else. (Ex. A-3, ¶17.)
`
` The copyright statute defines a joint work as: “a work prepared by two or more authors
`
`with the intention that their contributions be merged into inseparable or interdependent parts of a
`
`unitary whole.” 17 U.S.C. § 101.
`
`
`
`Both works are at a minimum joint works. If Dataworks’ contributions are not
`
`copyrightable subject matter, then BEP is the sole author. Whether it is the sole author or a joint
`
`author, BEP is empowered to direct or license Commlog or any publisher to make its custom
`
`logs. Commlog’s printing of BEP’s works cannot be infringing as Commlog is clothed with
`
`BEP’s license.
`
` "[A] license from a co-holder of a copyright immunizes the licensee from
`liability to the other co-holder for copyright infringement."
`Davis v. Bilge, 505 F.3d 90, 100. (2d Cir. 2007), citing McKay v. Columbia
`Broad. Sys. Inc., 324 F.2d 762, 763 (2d Cir. 1963).
`
` The immunity applies for all purposes as any copying was authorized.
`
`“A licensee is not liable to a non-licensing co-owner for use authorized by the
`license, because the licensee's rights rest on the license conveyed by the licensing
`co-owner. See McKay at 763. Likewise, a licensee need not pay any royalties or
`other consideration to the co-owners who are not parties to the license agreement.
`See Piantadosi v. Loew's, Inc., 137 F.2d 534, 537 (9th Cir. 1943) (holding that a
`third party granted a non-exclusive copyright license by one co-owner had no
`duty to the other co-owner).” Davis v. Bilge, id. at 100.
`
` As these two are the only Commlog logs that Plaintiff has identified as infringing,
`
`Dataworks’s copyright claims fail, for those works were authorized.
`
`{00332030.DOC9}
`
`- 11 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 12 of 21
`
`C.
`Dataworks’s Copyright Infringement Claims Fail Because Nothing Dataworks may
`have Authored warrants Copyright Protection.
`
`
`Any contributions by Dataworks to the BEP logs are not copyrightable.
`
`“The court's inquiry does not end with a finding that the defendant copied
`portions of the plaintiff's program. Liability for copyright infringement will only
`attach where protected elements of a copyrighted work are copied. Baker v.
`Selden, 101 U.S. 99, 101-03, 25 L. Ed. 841 (1880). The mere fact that a work is
`copyrighted does not mean that every element of the work may be protected."
`Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S. Ct.
`1282, 1289, 113 L. Ed. 2d 358 (1991).” Gates v. Bando, 9 F.3d 823, 833 (10th
`Cir. 1993).
`
`Even though the degree of creativity can be minimal, Feist still requires some degree of
`
`originality, as it is a constitutional requirement for protection. Run of the mill compilations, such
`
`as the compilation in Feist, with arrangements and selections that are common, industry
`
`standard, typical or conventional choices, as a matter of law are not sufficiently original or
`
`creative. In interpreting the Copyright Statute Feist stated there are three critical elements set
`
`forth by the Statute’s definition of protected compilations, 17 U.S.C. 101. One of the three
`
`requirements for protection is that Plaintiff must show “that the assemblying of preexisting
`
`material or data that are selected, coordinated, or arranged in such a way that the resulting work
`
`as a whole constitutes an original work of authorship” Feist, id. at 356 (emphasis in the original).
`
`
`
`In the present case, the compilations for which Dataworks seeks protection are not
`
`compilation of facts or data, as was Feist. Rather the compilation is, at least as to what
`
`Dataworks contributed, are diary calendar pages with categories and spaces, a special category
`
`under copyright law called “blank forms.” The blank form doctrine denies copyright protection
`
`for blank forms unless they “themselves convey information.” 37 C.F.R. 202.1(c) (Copyright
`
`Office regulations listing examples of works that are not subject to copyright.) Although the
`
`{00332030.DOC9}
`
`- 12 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 13 of 21
`
`components for blank forms differ from the Feist components for compilations of facts, Feist
`
`does provide guidance as to the originality standard, which transcends and is the hallmark of
`
`copyrightability. The blank form doctrine of Baker v Selden, 101 U.S. 99 (1880) and the issue of
`
`originality each have applicability in the present case.
`
`In Feist the Court found that the compilation lacked creativity in the selection and
`
`arrangement of facts, as it was “so mechanical or routine as to require no creativity whatsoever
`
`…an author who claims infringement must prove "the existence of . . . intellectual production, of
`
`thought, and conception." Burrow-Giles, supra, at 59-60. Id 362.
`
`Feist’s focus on the term “in such a way” and the existence therein of intellectual
`
`production for blank forms, the originality threshold of Feist becomes a second and independent
`
`test of copyrightability after first determining if the forms convey information. The originality
`
`requirement, just as in Feist, seeks to measure the creativity for the forms and whether they are
`
`arranged or selected “in such a way” that through creativity they convey information in an
`
`original way, one that is not routine or common. If they are standard, traditional and
`
`conventional, then the necessary creativity is lacking.
`
`In blank forms, just as in compilation of facts:
`
`“Not every selection, coordination, or arrangement will pass muster. This is plain
`from the statute. It states that, to merit protection, the facts must be selected,
`coordinated, or arranged "in such a way" as to render the work as a whole
`original. This implies that some "ways" will trigger copyright, but that others will
`not.” Feist, id. at 357.
`
` In some circumstances, a third bar to copyright protection may apply. The blank form
`
`doctrine is very close to the merger doctrine, whereby works are not protected because to do so
`
`impermissibly would grant copyright protection to ideas or processes, both of which are
`
`{00332030.DOC9}
`
`- 13 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 14 of 21
`
`expressly denied copyright protection pursuant to § 102(b). The Copyright Regs, 37 C.F.R. §
`
`202.1(b) gives as examples of works not protected, “ c) ideas, plan, methods, systems, or
`
`devices….” Again the Baker v. Selden case provides the judicial foundation for the exclusion.
`
`“The description of the art in a book, though entitled to the benefit of copyright,
`lays no foundation for an exclusive claim to the art itself. The object of the one is
`explanation; the object of the other is use. The former may be secured by
`copyright. The latter can only be secured, if it can be secured at all, by letters-
`patent.” Baker v. Selden, 101 U.S. 99, at 105 (1879).
`
`Where there is information conveyed, copyright protection is possible. Where the work
`
`
`
`is used, it is properly protected by patent. Thus, in the context of blank forms there are at least
`
`two, and possibly three, separate tests as to whether a work or element is protected. The blank
`
`form doctrine of Baker v Selden, the test of originality of Feist and where the forms embody a
`
`process or system whether the merger doctrine prevents protection.
`
`Utopia Provider Sys. v. Pro-Med Clinical Sys., 596 F.3d 1313, 1320 (11th Cir. 2010)
`
`reiterated the rationale of Baker, as well as the Copyright Reg. 202.1, and provides guidance as
`
`to how blank forms are analyzed. In Utopia, the court addressed whether diagnostic medical
`
`forms would come within the areas of copyrightable subject matter or, as they decided, be
`
`merely blank forms and not protected as they did not convey information but rather were used
`
`for entering information.
`
`It is well-established that blank forms which do not convey information or contain
`original pictorial expression are not copyrightable." John H. Harland Co. v.
`Clarke Checks, Inc., 711 F.2d 966, 971 (11th Cir. 1983) (citing Baker v. Selden,
`101 U.S. 99, 107, 25 L. Ed. 841, 1880 Dec. Comm'r Pat. 422 (1880)). 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).
`
`
`{00332030.DOC9}
`
`- 14 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 15 of 21
`
`
`
`In the BEP manager’s log (Ex. A-6), the only information is contained in the 41 pages
`
`created by Ms. Bettinger, DW3-00081-00123. The remaining parts are mere repositories for
`
`information. For the trainer’s log nothing is informative or instructive. They are calendar diary
`
`pages with blank spaces with common headings for the entry of information. Just as in Baker,
`
`where the accounting forms, with their lines and headings with blank spaces, did not provide any
`
`explanation, the Dataworks forms lack the requisite extra element of conveying information.
`
`The Utopia case goes on to determine that the medical forms were not original.
`
` “In accordance with these principles, we examine whether the selection of
`information requested by the ED Maximus forms or its arrangement is
`informative or out of the ordinary. We look first to whether the headings are
`anything other than what would be expected on such a medical template, and
`second to whether the terms actually convey information to the treating physician.
`We find that each of the forms calls for the same information that any responsible
`physician would ask a patient with the given ailment.” Utopia, 596 F.3d 1313,
`1322.
`
`The selection and arrangement, as it was common, did not meet the originality standard.
`
`“The originality claimed in the forms is in the "selection and arrangement of the
`terminology" used in the templates. We find that the selection and arrangement of
`the terms does not convey information and is not sufficiently original. As a
`starting point, we note that if the correct way to perform an action is well
`established in a profession, we fail to see how a description of how to perform
`that action can be original.” Utopia, id. at 1322.
`
`Just as in Utopia, the calendar and other blank forms do not convey any information.
`
`Further they are ordinary and commonly used throughout the restaurant industry. (See Ex. A-17,
`
`Corsun report, pgs. 2-3; Ex. A-1, ¶10.) Dataworks cannot claim original authorship of said
`
`material.
`
`D.
`Copyright Registrations Asserted by Dataworks Are Invalid and Should Be
`Cancelled.
`
`
`{00332030.DOC9}
`
`- 15 -
`
`
`
`Case 1:09-cv-00528-WJM-BNB Document 91 Filed 09/21/10 USDC Colorado Page 16 of 21
`
`The registration for the two custom logs for BEP should be cancelled and declared
`
`invalid for they were obtained based upon false statements made by, or on behalf of, Dataworks.
`
`Independently, because Dataworks deceived the Copyright Office by removing the incriminating
`
`copyright notices of BEP, the registration is invalid.
`
`As set forth in Ms. Bettinger’s affidavit, she developed and created the 41 pages included
`
`in the manager’s log, as well as making changes and selecting and arranging the categories in the
`
`daily pages and other pages of both the manager’s log and trainer’s log. She placed copyright
`
`notices on the 41 pages and sent them to Dataworks to be included in t