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