ROSS, BROVINS & OEHMKE, P.C., doing business as LawMode, Plaintiff-Appellant, v. LEXIS NEXIS GROUP, a DIVISION OF REED ELSEVIER GROUP, PLC, and Owner of Matthew Bender and Company, Inc., Defendant-Appellee.
No. 05-1513
United States Court of Appeals, Sixth Circuit
Argued: April 25, 2006. Decided and Filed: Sept. 15, 2006.
461 F.3d 478
Before: SUHRHEINRICH, GILMAN, and ROGERS, Circuit Judges.
OPINION
ROGERS, Circuit Judge.
This is a copyright dispute regarding software for filling out legal forms. LawMode compiled and organized a number of Michigan legal forms and, using a Lexis-owned program, created templates for filling out the forms. After marketing LawMode‘s product for five years, Lexis ter
I. Background
Doing business as LawMode, the firm of Ross, Brovins & Oehmke, P.C., entered an agreement with Lexis to create and market a system of automated Michigan legal forms. LawMode entered a contract with Lexis in 1997, later modified in 1999, which required LawMode to create various templates for filling in the required information for selected Michigan legal forms. LawMode also organized those templates into a user-friendly software program. This program allowed users to keyboard case-specific data into а series of on-screen dialog boxes. Users save the information entered into the dialog boxes into a data file, and the program automatically inserts the information into corresponding data fields on signature-ready legal forms. Most of the actual forms were forms approved by the Michigan State Court Administrative Office (SCAO), and therefore in the public domain.
The advantage of LawMode‘s templates was that case-specific information from one form could be easily transferred to another form as the case progressed. This eliminated the need for retyping. The product contained 576 individual forms. While most of the forms were SCAO forms, LawMode indеpendently created some of its own forms. This case pertains only to the automation of the SCAO forms because LawMode does not allege that Lexis copied any of its independently created forms.
Under the 1999 agreement, LawMode promised to supply and update “form templates” using Lexis‘s proprietary software called HotDocs Pro. These templates were defined in the 1999 agreement as “Content.” Lexis would then publish those templates in the finished product, which was a CD or software available for download over the internet. The 1999 agreement defined the packaged CD or download as “Product.” During 1997-2002, Lexis paid LawMode $77,273 in royalties fоr sales of Product.
Pursuant to the terms of the 1999 agreement, Lexis terminated its contract with LawMode in February of 2002. After the contract was terminated, LawMode was to retain all ownership of “Content,” defined as “HotDocs templates created by [LawMode].” On June 17, 2003, LawMode registered a copyright for its templates. Starting in July 2002, Lexis published its own version of the Product called Lexis-Nexis Automated SCAO Forms (the “2002 Lexis Product“). The 2002 Lexis Product contained 406 SCAO forms. Three hundred fifty of the forms that LawMode had selected also appear in Lexis‘s work.
Lexis claims that the templates contained in the 2002 Lexis Product were created independently of LawMode. LawMode argues that Lеxis copied their templates, defined as “Content” in the 1999 agreement. It is undisputed that Lexis
LawMode filed a seven-count complaint against Lexis, alleging claims for copyright infringement, state-law claims for breach of contract, and various state-law claims alleging business torts. After filing the complaint, LawMode voluntarily dismissed its claims for unjust enrichment, unfair competition, breach of the duty of good faith and fair dealing, and most of its breach-of-contract claims. The remaining claims included a copyright claim and a breach-of-contract claim. LawMode alleges that Lexis infringed a compilation copyright (i.e., a copyright in the оrganization and selection of forms) and a copyright in the automating of the forms (i.e., creative choices in how the screen looks and how the variables are inter-related). The contract claim was for an alleged breach of Lexis‘s promise not to misappropriate LawMode‘s Content and not to continue to distribute Content after the termination of the agreement.
After discovery, Lexis moved for summary judgment. Lexis argued that the templates were not protected by copyright, and, in the alternative, that Lexis did not copy them. In addition, Lexis argued that the contract claim did not meet the jurisdictional amount-in-controversy requirement, that thе claim was preempted by copyright law, and that the complaint did not state that Lexis breached the agreement. In a December 9, 2004, order, the district court granted summary judgment for Lexis on the copyright claim but denied summary judgment on the contract claim. The district court reasoned that LawMode‘s compilation of forms was copyrightable but that Lexis did not copy the compilation. The district court held that the organization of the forms, the look of the screen, and the interrelationship of the variables were not copyrightable. The district court denied all three of Lexis‘s grounds for dismissing the contract claims. First, the district court held that the contract clаim exceeded the jurisdictional minimum and that there was supplemental jurisdiction over it. Second, the district court held that the state-law contract claim was not preempted by the
Lexis then filed a motion for reconsideration of the order denying summary judgment on the contract claim in paragraph 48.b of the complaint, arguing that the district court did not specify any contractual promise that would support a finding of breach of contract. On December 22, 2004, the district court denied the motion for reconsideration on the ground that a party is not permitted to raise, in a motion for reconsideration, new legal arguments that could have been raised in the initial summary judgment motion. Lexis does not challenge that order on appeal.
Lexis then made the same argument in a motion for judgment on the pleadings
LawMode filed a timely notice of appeal.
II. Copyright
LawMode‘s templates are a compilation protected by copyright, but, even taking the facts in the light most favorable to LawMode, Lexis did not infringe that copyright. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (describing the summary judgment standard). A compilation is a “work formed by the collection and assembling of preexisting materials . . . that are selected, coordinated or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”
A. LawMode‘s selection of forms
While LawMode‘s selection of forms is sufficiently crеative to warrant copyright protection, LawMode‘s and Lexis‘s selections are not similar enough to constitute copying. The two elements for copyright infringement are: (1) ownership of a valid copyright, and (2) copying of that expression. See Stromback v. New Line Cinema, 384 F.3d 283, 293 (6th Cir. 2004). The first element is met,1 but the second is not.
Lexis did not copy any “protectable” elements of LawMode‘s compilation. Id. at 294 (holding that the substantial similarity inquiry requires the court to look at protectable elements of the plaintiff‘s work and determine whether the allegedly infringing work is “substantially similar” to the protectable elements). This conclusion is compelled by the differences between LawMode‘s and Lexis‘s compilations. The differences show that Lexis used sufficient judgment and creativity to compel a reasonable fact finder to conclude that one compilation is not a copy of the other. Our conclusion in this regard is supported by two related considerations. First, Lexis did not include a sufficiently large percentage of the same forms to permit a finding of copying. Second, nonquantitative aspects of the two compilations support the conclusion that Lexis created a new work rather than a copy of LawMode‘s.
The percentage of forms in LawMode‘s compilation that may be found in Lexis‘s
In Feist the Supreme Court indicated that “notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in an author‘s publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement.” Feist, 499 U.S. at 349 (emphasis added). Subsequent cases have interpreted Feist to mean that compilation copyright protection is very limited and usually requires substantial verbatim coрying. Key Publ‘ns v. Chinatown Today, 945 F.2d 509, 514 (2d Cir. 1991). Sixty-one percent can hardly be considered the “same” selection. See, e.g., Schoolhouse, Inc. v. Anderson, 275 F.3d 726, 729-30 (8th Cir. 2002) (holding that a ratio of seventy-four percent of the same items was not substantial similarity in light of Feist).
To be sure, in Eckes v. Card Prices Update, 736 F.2d 859, 863-64 (2d Cir. 1984), the Second Circuit found that a directory that copied 5,000 out of 18,000 (28%) of plaintiff‘s baseball card listings constituted copyright infringement. But in that case the defendant copied all of plaintiff‘s listings of “premium” cards. Thus, the relevant percentage was more like 100%. This is not a case where Lexis replicated a discrete portion of LawMode‘s work in its entirety.
The Eckes case shows that careful attention must be paid to the nature of the creative expression that has allegedly been cоpied, and that sheer numbers out of context can be misleading. In this case, the nature of the material used by Lexis shows that there was no copying as a matter of law. The two works are so dissimilar in expression that reasonable minds could not differ as to the absence of substantial similarity. See Stromback, 384 F.3d at 294-95; see also Schoolhouse, 275 F.3d at 729 (basing its decision on the response that a reasonable person would have toward the two works). It is undisputed that Lexis made the decision to add at least 35 forms to its database. It is also undisputed that Lexis chose not to include various forms used by LawMode in its compilation. The professional judgment used in selecting forms that gave LawMode copyright protection also gives Lexis protection from LawMode‘s allegation of infringement.
B. LawMode‘s arrangement of forms
Lexis‘s arrangement and classification of the forms are also not sufficiently
Because Lexis‘s classification system is not substantially similar to LawMode‘s classification system, it is not necessary to rely on Lexis‘s argument that LawMode‘s arrangement of forms is not copyrightable. Again, LawMode must provide sufficient evidence to show substantial similarity between its arrangement of the forms and Lexis‘s arrangement. See Feist, 499 U.S. at 361. While there are some similarities, they result from both parties’ copying the public Michigan forms index. Lexis did not copy LawMode‘s original classification or arrangement.
Many of LawMode‘s table of contents headings are not original. The website with all Michigan-approved forms already groups forms under headings like “alternative dispute resolution,” “corporate” or “landlord tenant.” LawMode cannot claim creative expression when it used the same obvious classification headings as the Michigan public-domain classification because those classifications are not original. See Kregos v. Associated Press, 937 F.2d 700, 709 (2d Cir. 1991) (holding that arrangements following conventions that have been used before are not copyrightable).
The оriginal classification headings are not copied and, as a whole, Lexis‘s and LawMode‘s classification systems are not substantially similar. LawMode‘s original work can be seen in classifications like “concealed weapon license” or “land contract forfeiture.” Those original classifications are not used by the public-domain Michigan classification. Lexis did not copy the nonobvious and nonpublic-use classifications in its table of contents. Thus, there has been no copying of LawMode‘s creative expression. This conclusion is supported by the Second Circuit‘s reasoning in Key Publications, 945 F.2d at 516, where the Second Circuit held that the arrangements of two direсtories were not substantially similar because a consumer faced with the two directories would instantly realize that they were different. Just as in Key Publications, a reasonable fact finder is compelled to conclude that LawMode‘s and Lexis‘s classification headings are not substantially similar.
In sum, the district court properly granted summary judgment on the compilation-copyright claim because there was not sufficient evidence of copying of LawMode‘s protectable expression.
C. LawMode‘s automation of the forms
LawMode‘s automation is not sufficiently original to warrant copyright protection. By “automation” we here mean the selection and placement of input fields for the form templates such that the desired information appears in the proper places on the SCAO forms. This copyright claim has two parts. First, LawMode claims that Lexis copied the appearance of the dialog boxes where a user enters information. LawMode does not have a valid copyright in the appearance of the dialog boxes because LawMode used the default settings on HotDocs, the tool used to create the templates. Choosing the default setting on an underlying authoring tool is not sufficiently creative to warrant copyright protection. Second, LawMode claims that Lexis copied the “automation” by сopying the interrelationship of variables in the program. LawMode‘s automation is not sufficiently creative to support a copyright because the choices that can be made to create templates to automate the SCAO forms are very limited. In fact, the choices are limited by the express dictates of the forms themselves. Thus, there is not enough originality in the “automation” to support a copyright.
1. The appearance of dialog boxes
Copyright law does not afford LawMode protection for the appearance of the dialog boxes because the appearance is not sufficiently original. The appearance is largely a result of thе default settings on HotDocs, the template‘s authoring tool.
LawMode‘s and Lexis‘s dialog boxes look very similar, such that a user who looked at LawMode‘s and Lexis‘s dialog boxes would have a hard time telling the two products apart. Both of the dialog boxes are rectangular and have a blue-shaded header. The area in between text boxes is gray and the fonts are the same. In the table of contents, folders are dis
The appearance of the dialog boxes is not original because it is a function of HotDocs’ default settings. It is undisputed that the appearance of the dialog boxes is a function of the default settings on HotDocs. LawMode, however, points out that Lexis could have changed the appearance of the dialog boxes by not opting for the default settings. LawMode argues that Lexis chose the default settings, and thus Lexis copied LawMode‘s “creative” choice by also using HotDocs’ default settings in its product.
LawMode‘s choice to use the default settings is not subject to copyright protection. Some programming choiсes are either too trivial to support a finding of originality or are so constrained by practical reality as to lack originality. See generally Lexmark Int‘l Inc. v. Static Control Components, Inc., 387 F.3d 522, 540-41 (6th Cir. 2004). LawMode‘s “choice” to use HotDocs’ default settings was too trivial to be original because using the default setting amounted to no more than adopting the choices made by the developer of HotDocs. Copyright law extends protection to works that are “independently created by the author (as opposed to copied from other works).” See Feist, 499 U.S. at 345-46. LawMode‘s choice to use the default settings is more in the nature of copying from other works than independent creation. In the instant case, as Lexis‘s software developer stated in her affidavit, HotDocs’ default settings are the most efficient choice. LawMode‘s choice to use the default settings is not copyrightable because the decision to copy another
2. The interactive aspect of the computer program
Copyright law also does not afford protection to LawMode‘s interrelation of variables in the templates, because the interrelation of variables is too basic and is compelled by the express terms of the underlying forms. A software designer might have copyrightable creative expression in the way that variables interact, particularly where the interrelationship of variables communicates information to the user that is not contained within the express terms of the form. LawMode‘s programming choices, however, communicate no information and thus are not copyrightable.
The variables in LawMode‘s templates are interrelated. By “interrelated” we mean that the data entered on one template will affect the choices available on future templates. For example, if a user indicates that the user will be filing in a district court, the drop down box containing specific courts is activated so that the user can select the specific court. Correspondingly, the fields related to circuit courts are deactivated such that the user is not prompted to enter a specific circuit court. This makes sense because a case cannot be simultaneously filed both in a district court and in a circuit court.
The interrelation of variables is dictated by the express terms of the forms and is not creative expression. By the express terms of the form, a case can be filed only in one court. Thus, the programming choice to permit the user the option of choosing a circuit court or a district court does not convey any information that is not expressly dictated by the terms of the forms. There is nothing original in translating the express terms of a form into HotDocs. See Feist, 499 U.S. at 345-46. LawMode‘s programming choices that merely follow the instructions on the underlying form are not creative expression protected by copyright.
Though LawMode refers to Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923 (7th Cir. 2003), in supрort of its argument that LawMode‘s automation is copyrightable, Bucklew actually favors Lexis because it illustrates that interrelationship of variables dictated by the express terms of the forms is not creative expression. Bucklew developed a software program using a standard spreadsheet application (e.g., Excel) that filled in Housing and Urban Development (HUD) forms. Id. at 925-26. The HUD forms required some arithmetic manipulations of salary data and other expenditures. Id. at 926. Bucklew‘s program automatically performed required arithmetic after the user entered the raw data. Id. The Seventh Circuit held that three computerized forms were not copyrightable. Id. at 930-31. Though there was limited discussion of the role of interrelated variables in the court‘s decision, the Seventh Circuit reversed despite the fact that Bucklew‘s forms had interrelated variables. In many respects Bucklew‘s forms were very similar to LawMode‘s forms. Both were computerized templates that filled in preexisting forms. Both had interrelated variables where an entry in one section would affect the result in another section. Yet, the interactive varia
Cases where interrelation of variables did support a copyright are distinguishable from this case because in those cases the interrelated variables communicated information to the user not contained within the express terms of a form. For example, in Manufacturers Technologies, Inc. v. Cams, Inc., 706 F. Supp. 984 (D. Conn. 1989), a computerized form for estimating repair costs was held copyrightable where the form communicated information to the user about how parts needed to be identified, and the identification of parts affected the derivation of an estimate. Id. at 997. That the forms in Manufacturers Technologies cоmmunicated information not contained on the face of the form to the user is the key distinction between copyrightable computerized forms and the uncopyrightable forms in this case. LawMode‘s programming is not copyrightable because LawMode‘s programming communicated no information not expressly contained on the face of the underlying forms.
LawMode‘s “automation” is not copyrightable because it merely translates the express terms of the underlying forms and does not convey new information.
III. Contract claims dismissed under Rule 12(c)
Because the agreement contained a promise not to sell LawMode‘s Content after the agreement was terminated, LawMode can prove a set of facts (i.e., that Lexis continued to sell LawMode‘s Content) that would entitle LawMode to relief. Thus, the dismissal of the remaining contract claim under
Unlike summary judgment, which requires evidence that creates a material issue of fact, a motion under
In its complaint, LawMode alleges that Lexis promised not to misappropriate LawMode‘s “Content” by converting some or all of it to Lexis‘s own use. LawMode also alleges that Lexis promised not to distribute the Content after the termination of the agreement. In LawMode‘s Complaint, paragraph 48.b, LawMode alleges that Lexis breached that promise by
The 1997 contract, as modified in 1999, contains a promise that Lexis will not continue to sell LawMode‘s content after termination of the agreement. The contract stated, “Upon termination of this Agrеement for any reason, [Lexis] shall cease marketing and distribution of . . . Content which has been prepared by [Lexis] for distribution.” As noted above, “Content” means “HotDocs templates created by [LawMode].” In sum, even after the contract had been terminated Lexis agreed not to continue selling the HotDocs templates that LawMode created and Lexis packaged for sale.
It was not proper to dismiss the remaining contract claim under
LawMode alleges in its complaint that Lexis misappropriated its forms and that Lexis was selling forms belonging to LawMode. Assuming Lexis actually did copy forms that LawMode delivered, LawMode could prove a set of facts in support of its contract claim. The contract claim therefore should not have been dismissed under
IV. The computer demonstration and reply brief
LawMode‘s two final arguments pertaining to the district court‘s discretionary decision to strike a reply brief and not to permit a computer demonstration are without merit because the district court did not abuse its discretion. The district court reasonably concluded that a computer demonstration was not necessary considering the pleadings, affidavits, and screen shots in evidence. LawMode did not seek leave to file a supplemental/reply brief. The district court does not have to accept every filing submitted by a party. Jones v. Northcoast Behavioral Healthcare Sys., 84 Fed. Appx. 597, 599 (6th Cir. 2003). There was no prejudice to LawMode and it was not an abuse of discretion to strike the “supplemental” brief.
V. Conclusion
We AFFIRM the district court‘s grant of summary judgment as to plaintiff LawMode‘s copyright claims. We REVERSE the March 17, 2005, order dismissing the contract claim under
Jeffrey SWIECICKI, Plaintiff-Appellant, v. Jose DELGADO, Defendant-Appellee.
No. 05-4036
United States Court of Appeals, Sixth Circuit
Argued: May 31, 2006. Decided and Filed: Sept. 15, 2006.