Opposition Brief — Practice Management Information Corp. v. American Medical Ass'n

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Supreme Court, U.S,

. 228 oe

No. 97-1254 WAR 2 1998

CLERK

IN THE

Supreme Cot of the United States

OCTOBER TERM, 1997

PRACTICE MANAGEMENT INFORMATION COoRP.,

Petitioner,

AMERICAN MEDICAL ASSOCIATION,

Respondent.

On Petition for Writ of Certiorari to the

United States Court of Appeals

for the Ninth Circuit

RTSPONDENT’S BRIEF IN OPPOSITION

MICHAEL L. ILE JACK R. BIERIG * ei

JOSEPH E. SIMONAITIS HENRY L. MASON, III

LEONARD A. NELSON MARK E. HADDAD

AMERICAN MEDICAL STEPHEN F. SMITH

ASSOCIATION SIDLEY & AUSTIN

515 North State Street One First National Plaza

Chicago, IL 60610 Chicago, IL 60603

(312) 464-4600 (312) 853-7000

Attorneys for Respondent

March 2, 1998 * Counsel of Record

WILSON - EPES PRINTING Co.. INC. - 789-0096 - WASHINGTON, D.C. 20001

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QUESTIONS PRESENTED

Whether a government decision to require participants

in certain federally funded health care programs to

report claims for reimbursement using the American

Medical Association’s preexisting and privately au-

thored copyrighted work of medical nomenclature, the

Physician’s Current Procedural Terminology (“CPT”),

has transformed CPT into a “law” and thereby di-

vested the AMA of its copyright in that work?

Whether CPT, a creative work of medical nomencla-

ture, is a “system” uncopyrightable under 17 U.S.C.

§ 102(b), such that it may be copied wholesale for

commercial use by competitors?

(i)

TABLE OF CONTENTS

QUESTIONS PRESENTED .......................... pamssatiatics

py i Gg Vip gt 8 3 i i -. SEE nee ee eer

COUNTERSTATEMENT OF THE CASE ..........00........

BE ILA LEAL ORT TR

SL a RS LE

REASONS FOR DENYING THE PETITION ..._.....

II.

BASED ON ESTABLISHED LEGAL PRIN-

CIPLES, THE COURT BELOW CORRECTLY

DETERMINED THAT THE AMA’S COPY-

RIGHT IN CPT WAS NOT DIVESTED BY A

GOVERNMENT DECISION TO REQUIRE

USE OF THAT WORK IN CONNECTION

WITH CERTAIN FEDERALLY FUNDED

HEALTH CARE PROGRAMS .......0000000000022.......

WHETHER CPT IS AN UNCOPYRIGHT-

ABLE “SYSTEM” UNDER SECTION 102(b)

OF THE COPYRIGHT ACT PRESENTS A

FACT-BOUND QUESTION, CORRECTLY DE-

CIDED BELOW, THAT IMPLICATES NO

DECISIONAL CONFLICT AMONG THE CIR-

ici ilbes ite aedinscdacsatiohnivolvies svehvienmshocnets

chek a dlceccdtancsl-aoengenruvaconiunin diverse

(iii)

TABLE OF AUTHORITIES

CASES Page

American Dental Ass’n v. Delta Dental Plans

Ass’n, 126 F.3d 977 (7th Cir. 1997) ................ 13,14,15 —

Atari Games Corp. Vv. Nintendo of Am. Inc., 975

Pas Bae ied, Cee. ieee) oc ae ee 14

Baker v. Selden, 101 U.S. 99 (1879) ......................... 13, 14

Banks v. Manchester, 128 U.S. 244 (1888) ........... 5

Brief English Sys., Inc. V. Owen, 48 F.2d 555 (2d

Cie SORTS nck ke a eee ee 14, 16

Building Officials & Code Admin. v. Code Tech.,

Inc., 628 F.2d 730 (1st Cir. 1980) .......................5, 9, 10

CCC Info. Servs., Inc. v. Maclean Hunter Market

Reports, Inc., 44 F.3d 61 (2d Cir. 1994) -........... 6, 8,9

CMM Cable Rep, Inc. v. Ocean Coast Properties,

Ine., 97 F.3d 1604 (ist Cir. 1996) ........................ 16

Del Madera Properties v. Rhodes & Gardner, Inc.,

637 F. Supp. 262 (N.D. Cal. 1985), aff'd, 820

sd re fore Cit. BOC) sw nie 9

Educational Testing Servs. V. Katzman, 793 F.2d

cn BEE Ee RRS st GRRE Sa elle retina Orr bente ware or 14

Feist Publications, Inc. Vv. Rural Tel. Serv., Co.,

SOS ST eet APOE hid Gaines aeons 13

Lotus Dev. Corp. Vv. Borland Int’l, Inc., 49 F.3d 807

(Ist Cir. 1995), aff’d by equally divided Court,

S16 i7,e See freee) aan ea 10, 14, 16, 17

Mazer V. Stein, 347 U.S. 201 (1954) ...................-...- 13

Publications Int’l, Ltd. v. Meredith Corp., 88 F.3d

Te Ete Sait FOOD seit oe oes 14, 15, 16

Rand McNally & Co. v. Fleet Mngmt. Sys., Inc.,

E61 F. Sane. 126 (ND. Til. WSs)... ............ 8

Ratzlaf v. United States, 510 U.S. 135 (1994) ........ 17

Roth v. Pritikin, 710 F.2d 934 (2d Cir. 1983)... - 12

Schnapper v. Foley, 667 F.2d 102 (D.C. Cir.

RE ee ies ha aaa pershhila te oreo aa 12

Toro Co. Vv. R & R Prods. Co., 787 F.2d 1208 (8th

are a ee 13, 14, 15

Warren Publ’g, Inc. Vv. Microdos Data Corp., 115

F.3d 1509 (11th Cir.) (en banc), cert. denied,

eB See ME SBA: gS YulRirmtunstts Weenie een co rte NT 15, 17

TABLE OF AUTHORITIES—Continued

STATUTES, LEGISLATIVE MATERIALS AND

_ REGULATIONS Page

BE Ee ae BE AisriectnnediocssevcosiGncilenind eninieboteciane passim

GS TT © TR Ce) CD acces pee ines 3

H.R. Rep. No. 94-1476 (1976), reprinted in 1976

aN Red eee Ce Ry Renee Rte ee canner eo er. 13

BCFA: OS Gee wt ieadeeieenae nas 11

AS Vad, Wee: TE ce 1 Ae veces cinco aeionen 4

ee nde, Bee, BT Ge FE css cients 11

COURT RULE

a eR Sin tke Mn ee 1

ei TOE Th BE GD oss wise an spetacanttenspnenierpercinamaearidietne 17

OTHER AUTHORITY

1 Melville B. Nimmer & David Nimmer, Nimmer

on Copyright (1997 ed.) .........--.-.-.0cc--ecccs-eeceeeeeee LI, 18

IN THE

Siren Court of the United States

OCTOBER TERM, 1997

Ne. 97-1254

PRACTICE MANAGEMENT INFORMATION Corp.,

: Petitioner,

AMERICAN MEDICAL ASSOCIATION,

Respondent.

On Petition for Writ of Certiorari to the

United States Court of Appeals

for the Ninth Circuit

RESPONDENT’S BRIEF IN OPPOSITION

Four months ago, this Court denied a substantively

identical petition for certiorari filed by petitioner Practice

Management Information Corp. in this case. Practice

Mngmt. Info. Corp. v. American Medical Ass’n, 118 S. Ct.

339 (1997) (No. 97-401). Petitioner now makes this

successive filing, asserting that its first petition was denied

only on “ripe[ness]” grounds (Pet. 1). Whether or not

that is true, of course, is known only to the Court. The

fact that the Clerk filed the first petition rather than re-

turning it to petitioner as untimely suggests, however,

that the prior denial of certiorari was on the merits, not

merely procedural. See Sup. Ct. R. 13.2 (Clerk may not

file untimely petitions for certiorari).

In any event, this second petition offers no more reason

for Supreme Court review than did the first. Now, as

then, petitioner seeks review of fact-bound questions cor-

rectly decided by the court of appeals under settled law,

as to which there is no conflict among the Circuits. Ac-

cordingly, the petition for certiorari should be denied.

COUNTERSTATEMENT OF THE CASE

The background section of the petition gives but scant

attention to CP7, the work here at issue. It focuses in-

stead on the supposed “history” of “privately drafted

laws” (Pet. 4-6) and a reargument of petitioner’s claims

(Pet. 7-10), rejected by the court of appeals below, that

CPT has been “adopted into law at both the federal and

state levels” (Pet. 10). Respondent American Medical

Association (“AMA”) therefore sets forth the following

factual statement.’

Factual Background

1. Since 1966, the AMA has published Physicians’

Current Procedural Terminology (“CPT”). As the dis-

trict court found (Pet. App. E7), CPT sets forth “origi-

nal” textual descriptions of medical procedures. It also

assigns a five-digit numeric code to each description and

includes two-digit modifiers to indicate common variations

in such factors as extensiveness of medical service.

Like other works of medical nomenclature, CPT enables

physicians to communicate concisely with colleagues, pa-

tients, and insurers about the procedures that they have

performed. It enables use of a concise, multi-digit code

instead of a time-consuming verbal description. Conse-

quently, CPT is used for a variety of purposes, including

widespread application in connection with internal hospital

record-keeping systems and medical research. CPT’s use

in state and federal reimbursement programs is just one

1In citing the record, the AMA cites two sources in addition to

the opinion of the court of appeals: (1) volume II of PMIC’s

Excerpts of Record, abbreviated simply as “ER,” and (2) the

AMA’s Supplemental Excerpts of Record, abbreviated as “SER.”

The numeral following this designation indicates the tab in cither

ER or SER corresponding to the clerk’s record on appeal. A copy

of the 1994 CPT appears as-volume I of PMIC’s Excerpts of Record.

of its many uses. See SER 20-1, pp. 3-4, € 6; SER 22,

D, 2, 9 3.

The AMA has devoted enormous original effort to the

creation, development, and updating of this work over

the past thirty years. The first edition of CPT, published

in 1966, described 3,634 surgical, medical, radiology and

laboratory procedures, and assigned each a four-digit code.

The second edition of CPT, published in 1970, introduced

five-digit codes and assigned numbers to many newly

described medical procedures. A third edition in 1973

added the use of two-digit modifier codes to allow physi-

cians greater precision in reporting. The fourth edition,

first published in 1977, incorporated many revisions re-

flecting rapid technological developments. By 1993, CPT

included, in addition to textual description, 6,925 codes

and 26 types of modifiers. SER 20-2, p. 1.

The AMA revises CPT each year to reflect on-going

medical developments. The AMA staff initially reviews

all suggestions for change. Suggestions that raise new

issues about medical nomenclature—or shed new light on

previously considered issues—are forwarded to members

of the AMA’s CPT Advisory Committee. Final decisions

on changes are made by the AMA’s CPT Editorial Panel,

a 14-member body. In a typical year, the AMA staff

adds, deletes, and substantially revises hundreds of codes.

See SER 20-1, pp. 4-7, €€ 7-10.

2. The Health Care’ Financing Administration

(“HCFA”) is the federal subagency that administers the

Medicare and Medicaid pregrams. In 1977, HCFA rec-

ognized that it needed a uniform code for Medicare and

Medicaid to facilitate the processing of reimbursement

requests. See generally 42 U.S.C. § 1395w-4(c)(5). It

examined three options: (1) developing its own code at

taxpayer expense; (2) using CPT; or (3) using one of

many other privately developed codes of medical nomen-

clature that compete with CPT, such as “SNOMED,”

maintained by the College of American Pathologists, or

ICD-9-CM. SER 20-2, pp. A-1 to A-2; see also SER

20-1, pp. 7-8, © 12. After much study, HCFA concluded

that the best option was to use CPT. Id.; see also 48

Fed. Reg. 16,750, 16,753 (1983); SER 47, p. 3, 46.

Accordingly, in 1983 HCFA and the AMA entered

into a licensing agreement (“the Agreement”) under

which the AMA has given HCFA a royalty-free, non-

exclusive license to use CPT. Pet. App. A3. The Agree-

ment provides that HCFA will require the use of CPT in

a variety of federal programs. Significantly, HCFA may

terminate the Agreement at any time upon 90 days notice.

ER 76, p. 4; SER 3-2, p. 4, €10. Thus, at any time,

HCFA is free to require use of another work of medical

nomenclature instead of CPT.

CPT, like other works of medical nomenclature, does

not prescribe whether or not a physician is entitled to pay-

ment for medical procedures performed. Moreover, it

does not prescribe the amount of any payment that may

be due. CPT simply makes it easier to communicate the

information needed to evaluate a claim for payment.

3. Although petittener nakedly asserts (Pet. 17-18)

that it is “undisputed” that the AMA has “restrict{ed]

publication and distribution” of CPT, that assertion is

both false and contrary to the record. As the court of

appeals concluded (Pet. App. A7-A8), CPT is broadly

disseminated and is not in short supply. Petitioner itself,

which prior to this litigation purchased in excess of

100,000 copies of CPT each year, is among the largest

purchasers of CPT. SER 20-1, pp. 7, 9-10, 4€11, 16;

ER 76, p. 6. It thus is hardly surprising that, as the court

of appeals noted (Pet. App. A7), “[t]here is no evidence

that anyone wishing to use the CPT has any difficulty ob-

taining access to it.”

Procedural Background

1. Three days after informing the AMA that it was

“disappointed that PMIC was not provided with a better

discount” (SER 21, p. 4, €8) and failing to extract fur-

ther price concessions beyond the 35% discount offered

by the AMA, petitioner filed this lawsuit. Petitioner sought

preliminary injunctive relief, a declaration that the AMA’s

filed a counterclaim, asserting copyright infringement and

other federal and state law claims not relevant here.

The district court denied petitioner’s motion for prelimi-

nary injunction on both legal and equitable grounds.

The court, inter alia, rejected petitioner’s claim that CPT

is a “ ‘system’ falling outside the scope of copyright pro-

tection.” ER 34, pp. 16-20. Thereafter, on cross-motions

for summary judgment, the district court also rejected

petitioner’s contention that the decision by the government

to require use of CPT in connection with certain federal

programs transformed CPT into an uncopyrightable “law”

and thereby divested the AMA of its copyright in that

work. ER 76. Accordingly, the court granted partial

summary judgment in favor of the AMA and enjoined

PMIC from copying CPT.

2. The court of appeals unanimously affirmed the dis-

trict court’s ruling that CPT is copyrightable. 121 F.3d

516 (9th Cir. 1997). The court first addressed petition-

er’s “argument that the CPT became law and entered the

public domain when HCFA by regulation required its

use.” Pet. App. A5. Noting that this argument “rests

ultimately upon Banks v. Manchester,-128 U.S. 244

(1888),” which held that judicial opinions are not copy-

rightable, the court noted that CPT is hardly analogous

to judicial opinions. Pet. App. A5. Observing that the

rule that “laws” are not copyrightable “grew out of a

much different set of circumstances than do [privately

authored works whose use is legally mandated],” the court

refused to inhibit the “‘important public function’” that

the drafters of such works perform. Pet. App. A9 (quot-

ing Building Officials & Code Admin. v. Code Tech., Inc.,

628 F.2d 730, 736 (ist Cir. 1980) (“BOCA”)). The

contrary result, the court noted, “ ‘would raise very sub-

stantial problems under the Takings Clause of the Con-

bie

Stitution’” and would produce absurd results. Conse-

quently, the court of appeals joined the Second Circuit in

rejecting the view “ ‘that a state’s reference to a copy-

righted work . . . results in loss of the copyright.’” Pet.

App. AlO (quoting CCC Info. Servs., Inc. v. Maclean

Hunter Market Reports, Inc., 44 F.3d 61, 74 (2d Cir.

1994) ).

Next, the court of appeals turned to an argument made

only in cursory fashion by petitioner—that “the CPT is an

uncopyrightable industry standard or ‘idea’ under Section

102(b) of the Copyright Act[, 17 U.S.C. § 102(b)].”

Pet. App. All n.8. The court held that the AMA has

not sought to monopolize the “idea” of “coding” medical

procedures. /d. Instead, the AMA merely seeks to pre-

vent “wholesale copying” of its particular expression of

the idea of medical coding, i.e., CPT. Petitioner and

others remain entirely free to develop their own works of

medical nomenclature and to ask HCFA to require that

such other works be used instead of CPT. Id.

3. While the AMA’s timely petition for rehearing and

suggestion for rehearing en banc on the independent copy-

right misuse issue~ was pending before the court of ap-

peals, petitioner filed its first petition for certiorari. This

Court denied certiorari on October 20, 1997. Practice

Mnemt. Info. Corp. v. American Medical Ass'n, 118

S. Ct. 339 (1997) (No. 97-401). Petitioner filed the

instant petition raising the same issues presented in its

first petition.

REASONS FOR DENYING THE PETITION

The petition for certiorari should be denied because

the decision of the court of appeals merely involves the

* The court of appeals also ruled that although the AMA’s copy-

right in CPT was and is valid, the AMA had “misused” its copy-

right by negotiating an agreement with HCFA to require the use

of CPT in connection with certain government programs. Pet. App.

A12-Al4. The AMA plans to seek a writ of certiorari on that

independent issue.

application of settled law to facts specific to this case.

Although petitioner asserts that the court below held that

“laws drafted by private organizations” are copyrightable

(Pet. 17), that was not the ruling of the court of appeals.

To the contrary, the court below expressly acknowledged

the venerable rule that “laws” are not copyrightable (e.g.,

Fet. App. A5). Rather, the court held that CPT is not

a “law” and that it was not transformed into a “law” when

the government required its use in connection with certain

public programs. The core holding in this case—that CPT

is not a “law”—is a case-specific determination unworthy

of this Court’s review, and there is no conflict on the

question whether government-mandated use of a privately

authored work transforms the work into a “law” and

thereby divests the author of its copyright.

The second question presented also does not merit re-

view by this Court. The court of appeals’ rejection of

petitioner's argument that CPT should be deemed an un-

copyrightable “system” under section 102(b) rests on the

fact that CPT is merely one of any number of possible

expressions of a work of medical nomenclature. Pet. App.

All n.8. This holdirg also reflects the application of a

settled rule of law to the specific characteristics of CPT

and the medical coding industry. Accordingly, the Peti-

tion should be denied.

I. BASED ON ESTABLISHED LEGAL PRINCIPLES,

THE COURT BELOW CORRECTLY DETERMINED

THAT THE AMA’S COPYRIGHT IN CPT WAS NOT

DIVESTED BY A GOVERNMENT DECISION TO

REQUIRE USE OF THAT WORK IN CONNECTION

WITH CERTAIN FEDERALLY FUNDED HEALTH

CARE PROGRAMS.

A. The Petition rests on the unsupportable assump-

tion that CPT is a “law” for purposes of the “laws”

exception to copyright. The court of appeals properly

rejected that assumption as erroneous. For more than a

century, the exception for “laws” has “remained limited to

Statutes and opinions promulgated by government officials

for general application.” Rand McNally & Co. v. Fleet

Mnemt. Sys., Inc., 591 F. Supp. 726, 736 (N.D. Ill.

1983). CPT does not even remotely resemble any of

these classic forms of law.

CPT, which the AMA authored seventeen years before

HCFA chose to require its use for Medicaid and Medicare

purposes, does not prescribe whether, or to what extent,

physicians or patients may receive reimbursement for a

particular medical procedure. Rather, Congress and

HCFA make the determination whether any given pro-

cedure, as described by a specific numeric code, will be

reimbursed.* CPT, then, does not alter or affect anyone’s

legal rights in any respect. Instead, it performs but one

role: It enables physicians and others to communicate

effectively and concisely about medical services performed

for patients. Thus, the court of appeals properly rejected

petitioner’s argument that CPT is a “law.”

B. Once it is understood that CPT is not a “law,” it

becomes clear that the purported circuit split on the “copy-

rightability of privately drafted laws” (Pet. 19) is non-

existent. Contrary to petitioner’s claim, there is no con-

flict between the decision below and CCC Info. Servs.,

Inc. V. Maclean Hunter Market Reports, Inc., 44 F.3d 61

(2d Cir. 1994) (“CCC”), on the one hand, and the

’ Petitioner attempts to obscure this fact by citing HCFA’s use

of CPT in the Medicare Fee Schedule (Pet. 8). As even a glance

at the Fee Schedule reveals, however, CPT is used simply as a

shorthand to communicate, after the fact. the medical services t

which the government has assigned a particular level of reimburse-

ment. Nothing in CPT itself affects the degree of reimbursement

to which anyone is entitled. It also bears emphasis that petitioner

does not simply wish to copy the Medicare Fee Schedule as it

appears in the Federal Register. Instead, as petitioner stressed in

the district court, it seeks the right to distribute the entirety of

CPT’s written descriptions of medical procedures and numeric

codes. See PMIC’s Reply Brief In Support of Its Motion for Pre-

liminary Injunction, at 4 (July 20, 1994).

a ah ie,

decision in Building Officials & Code Admin. v. Code

Tech., Inc., 628 F.2d 730, 736 (ist Cir. 1980), on the

other.

First, unlike this case and CCC, BOCA involved an

actual model law—a building code drafted for the purpose

of enactment into law—that was, with only “minor” ex-

ceptions, adopted as the official building code for the

Commonwealth of Massachusetts. Jd. at 732. Once

promulgated by the state building authorities, the build-

ing code became a “self-executing ordinance” (Del Madera

Properties v. Rhodes & Gardner, Inc., 637 F. Supp. 262,

264 (N.D. Cal. 1985), aff'd, 820 F.2d 973 (9th Cir.

1987)), in the sense that it set forth binding legal rules

governing the conduct of the public, the violation of which

was punishable by “sanctions.” 628 F.2d at 734.

In contrast, this case and CCC involve privately au-

thored reference works not written for government enact-

ment (here, CPT, a work of medica] nomenclature: in

CCC, a work of used-car valuations) whose use iS fre-

quired by the government in conjunction with certain pro-

grams. See CCC, 44 F.3d at 74: Pet. App. Al0O (same).

Because this case and CCC involved mere government-

mandated use of preexisting reference works, not “laws,”

neither court reached the question discussed in BOCA.

Second, quite apart from whether CPT is a “law,”

there is no split with BOCA because BOCA did not an-

nounce the holding petitioner attributes to it. Petitioner

asserts that in BOCA “[t]he First Lace squarely

held that privately drafted laws are not protectable by

below (Pet. App. A9) and in CCC (44 F.3d at 73-74)

correctly noted, BOCA was not a decision on the merits,

but rather a ruling on preliminary injunctive relief. The

First Circuit reversed the preliminary injunction issued

in BOCA’s favor, concluding that “BOCA has not

demonstrated a sufficient probability that it will succeed

in distinguishing the BOCA CODE materials promulgated

by Massachusetts in its building code from statutes and

judicial opinions which, under existing law, may not re-

ceive copyright protection.” 628 F.2d at 736.

In so holding, the First Circuit expressly (and repeat-

edly) disclaimed the broad holding petitioner erroneously

attributes to it (Pet. 13), stressing that it did nor defini-

tively rule on the merits. See, e.g., id. at 732 (“We stop

short, however, of ruling definitively on the underlying

legal issues, since we feel that our final judgment should

await the more complete hearing on the merits which may

be anticipated in due course.”).* Because BOCA explic-

itly limited its ruling to likelihood of success, without

expressing a final view on the merits of any substantive

the decisions below and in CCC, which, unlike BOCA,

were rulings on the merits that did not involve mere deci-

sions as to the propriety of preliminary injunctive relief.

For each of these reasons, the supposed conflict that

petitioner has identified is illusory—which is why the

court below did not deem BOCA inconsistent with its

opinion and explicitly relied on BOCA and CCC alike.

Pet. App. A9-All. Accordingly, the first question pre-

sented does not merit this Court’s review.

C. The decision of the court below on this issue also

reflects sound public policy. If the court had adopted peti-

tioner’s unprecedented view of what constitutes a “law,”

the implications would have been radical. Petitioner's

view that government-required use of a copyrighted work

transforms that work into a “law” would, if adopted, in-

validate copyrights in a large number of works whose use

*See also BOCA, 628 F.2d at 735 (“we do not rule finally on

the question”); td. at 736 (although the court would “!n]ormallv

. expect to rule finally on such a ‘legal’ issue,” “{wle think it

inadvisable to do so here”); td. (“we leave the matter open for

consideration by the district court when the merits are reached’).

is mandated by the government.’ In this connection, the

court of appeals specifically noted that several prominent

non-profit organizations that develop copyrighted codes

and standards filed a brief amicus curiae in support of the

AMA “warn[ing] that they will be unable to continue to

do so if the codes and standards enter the public domain

when adopted by a public agency.” Pet. App. A7.

Use by the government of privately copyrighted works

is widely regarded as desirable. See CCC, 44 F.3d at 74

n.30; 1 Melville B. Nimmer & David Nimmer, Nimmer on

of Management and Budget (“OMB”) has directed all

federal agencies to “adopt[]” private works “whenever

practicable and appropriate.” 58 Fed. Reg. 57,643,

57,644-45 (1993). The court of appeals’ conclusion that

the government may require use of a copyrighted work in

connection with a government program without divesting

the work of its copyright thus reflects sound public policy.

Petitioner’s novel rule would essentially deprive govern-

ment agencies of the ability to rely on privately authored

works. Authors would lose any incentive voluntarily to

allow the government royalty-free use of their works.

* For instance, many courts require attorneys filing briefs to

ensure that all citations conform to the current edition of the

Harvard Law Review’s The Bluebook, A Uniform System of Cita-

tion, a copyrighted publication colloquially referred to as the “Blue-

book.” See, e.g., 11th Cir. R. 28-2(k); U.S. Ct. Mil. App. R.

24(c)(3) (1996 ed.). Even though such court rules mandate use

of the Bluebook, it would be absurd to sugeest that the Bluebook

has thereby become an uncopyrightable “law” subject to copying

for commercial uses. Other examples of copyrighted works that

would become “laws” on petitioner’s unprecedented view are: the

Scholastic Aptitude Test (which is required by many public col-

leges and universities as a condition for admission) and certain

word-processing programs (which must be used in reporting data

to certain federal agencies). See, e.g., 47 C.F.R. § 61.23 (1998)

(requiring carriers making tariff filings at the Federal Communi-

cations Commission to “us[e] MS DOS 5.0 and WordPerfect 5.1

software’”’).

Moreover, the consequence of permitting such use—for-

feiture of copyright royalties—would eliminate the reve-

nue that many authors (especially non-profit organiza-

tions) need to produce their work and perform their in-

Stitutional missions. In addition, any government decision

to appropriate the copyright in a private work would raise

a substantial issue under the Takings Clause. See generally

Roth v. Pritikin, 710 F.2d 934, 939 (2d Cir. 1983). For all

of these reasons, it would be contrary to the dictates of both

the Copyright Act and public policy to “cabin the discre-

tion of government agencies” to use privately authored

works (with the authors’ consent) instead of independ-

ently producing their own works at substantial effort and

public expense. Schnapper v. Foley, 667 F.2d 102, 109

(D.C. Cir. 1981). These considerations underscore that

the lower courts’ resolution of the first question presented

is fully consistent with the policies of the Copyright Act,

and thus does not merit review by this Court.

Il. WHETHER CPT IS AN UNCOPYRIGHTABLE

“SYSTEM” UNDER SECTION 102(b) OF THE

QUESTION, CORRECTLY DECIDED BELOW,

THAT IMPLICATES NO DECISIONAL CONFLICT

AMONG THE CIRCUITS.

With regard to section 102(b), the court of appeals

concluded that CPT is not an uncopyrightable “system”

but rather merely one expression of the idea of a work

of medical nomenclature. Pet. App. All n.8. Several

other works of medical nomenclature exist, see id., and an

infinite number are possible. The court's fact bound con-

clusions in this regard are correct, and there is no con-

flict among the circuits on the proper scope and appli-

cation of section 102(b)’s exclusion from copyright for

“systems.” Therefore, there is no reason for this Court to

reexamine the court of appeals’ decision on this issue.

A. This Court has concluded that section 102(b)’s

exclusion of “systems,” inter alia, from copyright “re-

state[s]” the “basic dichotomy between expression and

idea.” Feist Publications, Inc. v. Rural Tel. Serv., Co.,

499 U.S. 340, 356 (1991) (internal quotation omitted)

(citing H.R. Rep. No. 94-1476, at 57 (1976), re-

printed in 1976 U.S.C.C.A.N. 5659, 5670); see gen-

erally Toro Co. v. R & R Prods. Co., 787 F.2d 1208,

1212 (8th Cir. 1986). Thus, it would “be a misreading

of Section 102(b) to interpret it to deny copyright pro-

tection to ‘the expression’ of a work, even if that work

happens to consist of an ‘idea, procedure, process, [sys-

tem,] etc.”” 1 Melville B. Nimmer & David Nimmer,

(footnote omitted); see also Baker v. Selden, 101 U.S.

99, 104 (1879) (literary expression of a system copy-

rightable although system itself is not). Under Mazer v.

Stein, 347 U.S. 201, 218 (1954), an expression of a

system remains copyrightable even if others use the work

as a system (e.g., a system for reporting medical proce-

dures). See, e.g., American Dental Ass'n v. Delta Dental

Plans Ass'n, 126 F.3d 977, 980-81 (7th Cir. 1997)

(holding that a work of dental nomenclature used for

reporting dental procedures for payment purposes is not

an uncopyrightable “system” under section 102(b) ).

As the court of appeals correctly noted, enforcement of

the AMA’s copyright would not monopolize the “idea” of

preparing descriptions of medical procedures and assigning

numeric codes to these descriptions. In fact, the undis-

puted existence of competing works in the area of medical

nomenclature shows that “the AMA’s copyright does not

stifle independent creative expression in the medical cod-

ing industry” (Pet. App. All n.8). To the contrary, all

the AMA seeks to prohibit is “wholesale copying” of CPT

(id.). Therefore, CPT is not an uncopyrightable system

under section 102(b).°

* Petitioner also makes a “merger” argument in passing, arguing

under section 102(b) that in CPT “idea and . . . expression in a

B. Petitioner claims that several Circuits, including the

court below, have ruled that functional works that would

otherwise be uncopyrightable “systems” under section

102(b) are entitled to the protections of copyright as

long as it is possible to create competing works,’ whereas

other Circuits deem the availability of alternative forms

of expression immaterial on this score.“ Petitioner does

not explain how such a conflict could exist in light of this

Court’s explicit recognition in Feist, 499 U.S. at 356, that

section 102(b) “restate[s]” the “basic dichotomy between

expression and idea”—an approach that mandates an in-

quiry into whether copyright protection in a particular

case would foreclose alternative expressions of an idea.

See also Baker v. Selden, 101 U.S. at 104. In fact, review

of the cases cited by petitioner demonstrates that no such

conflict exists.

1. Tellingly, petitioner’s discussion of the case law is

bereft of any quotations from the cases that petitioner

law are merged” ( Pet. 23-24). The “merger” claim, however, merely

calls for an application of settled law to facts, and even petitioner

has not claimed any conflict on the merger issue. In any event, the

merger argument fails for the same reason the idea, expression argu-

ment is unavailing: CPT admittedly does not represent the only way

of expressing the idea of a compendium of medical nomenclature and

codes. See, e.g., Atari Games Corp. vy. Nintendo of Am. Inc., 975

F.2d 832, 840 (Fed. Cir. 1992) (merger doctrine inapplicable “so

long as alternate expressions are available’); Educational Testing

Servs. Vv. Katzman, 793 F.2d 5338, 540 (3d Cir. 1986) (same). In

arguing otherwise, petitioner simply assumes, without analysis, that

CPT is a “law’—the very fact-bound question correctly decided

against petitioner by the courts below.

7See Pet. 26-28 (citing American Dental Ass’n vy. Delta Dental

Plans Ass'n, 126 F.3d 977 (7th Cir. 1997); Toro Co. v. R&R

Prods. Co., 787 F.2d 1208 (8th Cir. 1986); Pet. App. All n.8).

’ See Pet. 26-28 (citing Warren Publ’g, Inc. v. Microdos Data

Corp., 115 F.3d 1509 (11th Cir.) (en banc), cert. denied, 118 S. Ct.

397 (1997); Publications Int'l, Ltd. v. Meredith Corp., 88 F.3d 473

(7th Cir. 1996); Lotus Dev. Corp. Vv. Borland Int'l, Inc., 49 F.3d

807 (1st Cir. 1995), aff'd by equally divided Court, 516 U.S. 233

(1996); Brief English Sys., Inc. Vv. Owen, 48 F.2d 555 (2d Cir.

1931) ).

Eee

believes are in conflict. This omission reflects, and analy-

sis of the cases confirms, that petitioner has wrenched

from the cases overbroad legal principles that were not

articulated by the courts that decided them. Unlike peti-

tioner, these courts recognize that whether a particular

work may be copyrighted turns chiefly on the particular

characteristics of the work in question rather than on

broad legal rules. See, e.g., Meredith, 88 F.3d at 480

(“The prerequisites for copyright protection necessitate

Case-specific inquiries, and the doctrine is not suited to

broadly generalized prescriptive rules.”). Consistent with

this reality of copyright law, all of the decisions that peti-

tioner finds conflicting turn not on broad legal rules, but

rather on a careful, fact-intensive assessment of the work

in question.

Of the many types of works addressed in the decisions

petitioner cites—ranging, for example, from a yogurt

recipe book (Meredith) to a lawn-mower parts-numbering

code (7oro), to a directory of cable-system operators

(Warren Publishing)——-only one case addressed a work

that is even remotely analogous to CPT. Specifically, in

American Dental Association, 126 F.3d 977, the Seventh

Circuit squarely held, inter alia, that a work of dental

nomenclature is not a “system” uncopyrightable under

section 102(b), even if one of its uses was as a short-

hand for reporting claims for reimbursement. In that

case, the court (per Easterbrook, J.) unanimously

reached the same result as the court of appeals below. It

rejected the notion that a creative work of professional

taxonomy is an uncopyrightable “system.” See, e.g., id.

at 980-81 (“The [dental] Code is a taxonomy, which may

be put to many uses. These uses may be or include Sys-

tems; the Code is not.”). Thus, the only Circuit decision

to address a work similar to CPT reached the same result

as the court below. This fact alone strongly undermines

petitioner’s claim that the Circuits are “sharply divided”

on the second question presented (Pet. 26).

2. The remaining cases, allegedly in conflict with each

other (but involving very different kinds of works), sim-

ply do not support the propositions for which petitioner

cites them. For example, petitioner asserts that Meredith

“hold[s] that systems are per se uncopyrightable under

Section 102(b), regardless of the availability of alterna-

tive systems” (Pet. 26). What petitioner fails to say

is that the Seventh Circuit explicitly “limit[ed] [its] hold-

ing today to the facts of this case” (88 F.3d at 482),

i.e., “barebones recipes” that contain nothing beyond “the

directions for producing a certain dish” (id. at 481).

The limited holding in Meredith is irreconcilable with the

broad holding attributed to it in the Petition.

Other cases that petitioner cites as in conflict on the

“system” issue under section 102(b) do not even address

that issue. See Lotus Dev. Corp. v. Borland Int'l, Inc., 49

F.3d 807, 815 (1st Cir. 1995) (“Because we conclude

that the Lotus menu command hierarchy is a method of

Operation [under § 102(b)], we do not consider whether

it could also be a system, process, or procedure [under

the statute].”) (emphasis added); see also CMM Cable

Rep, Inc. v. Ocean Coast Properties, Inc., 97 F.3d 1504,

1518-19 (Ist Cir. 1996) (ruling that radio promotional

contest lacked “the modicum of originality necessary for

contest Were original, it would be a “method of operation”

uncopyrightable under section 102(b)); Brief English Sys.,

Inc. Vv. Owen, 48 F.2d 555, 556 (2d Cir. 1931) (pre-section

102(b) case holding that no infringement had occurred due

to the “dissimilar[ity]” of the copyrighted and allegedly in-

fringing works). Although in both Lotus and CMM

Cable the First Circuit concluded that the works there at

issue were uncopyrightable under section 102(b) as a

“method of operation,” petitioner has limited itself in this

Court to the claim that CPT is a “system” under section

102(b) (see Pet. i).° The “method of operation” issue

* Any suggestion that the terms “system” and “method of opera-

tion” are synonymous would not only be wrong as a definitional

addressed by Lotus is not even remotely (much less

“fairly”) included within the second question presented,

and thus is not properly before the Court.” See Sup. Ct.

R. 14.1 (a).

Petitioner’s remaining claim that the en banc decision

of the Eleventh Circuit in Warren Publishing, Inc. Vv.

Microdos Data Corp., 115 F.3d 1509 (11th Cir. 1997),

conflicts with the ruling below rests on a misinterpretation

of Warren Publishing. Petitioner asserts that the Eleventh

Circuit ruled that the selection criteria employed by the

publisher of a directory of cable system operators was an

uncopyrightable “system” even though “other compiling

systems were clearly available” (Pet. 27). Warren Pub-

lishing, however, expressly reached the opposite con-

clusion as to the availability of competing “systems.”

Contrary to petitioner’s assertion that “other compiling

systems were clearly available” (Pet. 27), the court con-

cluded that there were “very few ways, if not only one

way, of expressing the data” contained in the directory.” ™

Id. at 1519 n.27. For this reason as well, the “system”

split that petitioner claims to exist is in fact nonexistent.

Thus the second question presented, like the first, does

not merit review by this Court.

2 * *

matter—it would violate the well-established canon of construction

that terms in a statute should not be construed to be superfluous.

See, e.g., Ratzlaf v. United States, 510 U.S. 135, 140-41 (1994).

10 The fact that the First Circuit in Lotus did not rule on the “sys-

tem” issue at all refutes petitioner’s speculation (Pet. 28) that this

Court “presumably” granted certiorari in Lotus to address the

system issue.

11 The work at issue listed cable system operators not by each

geographic area they served, but rather by the principal community

served within a given area, with other localities cross-referenced

in the index to the principal community. 115 F.3d at 1512. The

court explained that if the publisher “were given protection in its

principal community system [of selection], the concept of cross-

referencing would be subsumed in its copyright.” 115 F.3d at

1518-19 n.27. J

The issues raised in this Petition implicate straight-

forward application of established legal principles. There

is no conflict among the Circuits as to how these prin-

ciples should be applied. Further, these issues involve

fact-specific determination that do not merit this Court's

review.

CONCLUSION

The petition for a writ of certiorari should be denied.

Respectfully submitted,

MICHAEL L. ILE JACK R. Breric *

JOSEPH E. SIMONAITIS HENRY L. Mason, III

LEONARD A. NELSON MARK E. Happap