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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1998
- **Citation:** 523 U.S. 1058

## Text

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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Le)

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 ..._.....

I,

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)

iv

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

Vv

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-

2

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.

oe
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

4

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-

5

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
copyright in CPT is invalid, and damages. The AMA
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-

6

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

8

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,

9

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
copyright” (Pet. 13). This is misleading. As the courts
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

10

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
copyright issues, BOCA simply cannot be in conflict with
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’).

1]

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
Copyright § 5.06[C], at 5-92 (1997). Indeed, the Office
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
COPYRIGHT ACT PRESENTS A FACT-BOUND
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.

13

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,
Nimmer on Copyright § 2.03[D], at 2-35 (1997 ed.)
(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

14

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

15

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).

16

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
copyright protection,” but then stating that even if the
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

17

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

|

4

.
ae

18

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

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386013_2141%3A2. Public record. Not legal advice.