Bibbero Systems, Inc., a California Corporation, Plaintiff-Appellant-Cross-Appellee v. Colwell Systems, Inc., a Delaware Corporation, Defendant-Appellee-Cross-Appellant

Citation: 893 F.2d 1104Docket: 88-1925

Court: Court of Appeals for the Ninth Circuit; February 19, 1990; Federal Appellate Court

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The case involves Bibbero Systems, Inc., a California corporation, appealing against Colwell Systems, Inc., a Delaware corporation, regarding alleged copyright infringement of a medical insurance claim form. The United States Court of Appeals for the Ninth Circuit examined the applicability of the blank forms rule under 37 C.F.R. § 202.1(c), which states that blank forms are not copyrightable. The district court granted summary judgment to Colwell, ruling that Bibbero's superbill was an uncopyrightable blank form meant for recording information.

Bibbero designs and markets superbills used by doctors to obtain insurance reimbursements, which include instructions, patient information boxes, benefit assignment clauses, and checklists for diagnoses, treatments, and fees. These forms are tailored to different medical specialties and can be customized by doctors. Bibbero claims copyright over its superbills, including those designed by its customers, and has been supplying the specific family practice superbill in question since 1984, which is copyrighted.

Colwell's catalog featured a nearly identical superbill, differing only in typeface, shading, and sample doctor's information. After discovering this, Bibbero registered its superbill with the Copyright Office and demanded Colwell cease its distribution, which Colwell refused, prompting Bibbero to file suit. Colwell subsequently sought summary judgment, arguing that the superbill was not copyrightable as a blank form. The court affirmed the district court's decision, maintaining that the superbill was not eligible for copyright protection. Additionally, Colwell cross-appealed the denial of its request for attorney's fees.

The district court granted summary judgment to Colwell, denied Bibbero's motion for a preliminary injunction, and dismissed Bibbero's complaint. The court ruled that Bibbero's superbill is a blank form, which is not copyrightable under the doctrine established in Baker v. Selden and codified in 37 C.F.R. Sec. 202.1(c). Bibbero argues that the superbill is not merely a blank form, as it includes specific descriptions of medical procedures, assignment of claims, release of information, and instructions for use. Bibbero holds a certificate of registration for the superbill, which provides prima facie evidence of copyrightability and shifts the burden to the defendant to prove otherwise, as per 17 U.S.C. Sec. 410(c). It is recognized that blank forms lacking conveying information are not copyrightable, supported by the precedent set in John H. Harland Co. v. Clarke Checks, Inc. However, an exception exists for works where text is integrated with blank forms, as noted in various cases. Bibbero cites Norton Printing Co. v. Augustana Hospital and Harcourt Brace, World, Inc. v. Graphic Controls Corp. to argue for the copyrightability of forms that convey information through their design and arrangement. The district court acknowledged inconsistencies in the application of the blank forms rule in previous cases.

Norton is deemed indistinguishable from the current case, but its disapproval is warranted. The Norton case criticized the "blank forms rule," suggesting it lacks foundation. Harcourt Brace is distinguishable due to the unique symbols on its answer sheets, but it contradicts principles from Baker, which the court chooses not to follow. The Copyright Office upheld Baker and declined to revise the blank forms regulation, finding no compelling arguments against its validity despite supplier comments. The court aligns with the Eleventh Circuit's strict interpretation of the blank forms rule. Norton’s assertion that a medical laboratory test form communicates information is seen as overly broad, as all forms seek specific information and imply its importance. Bibbero's superbill is deemed non-copyrightable since it does not convey patient-specific information until completed, serving merely as a record-keeping tool. The presence of printed information does not alter its status as a blank form. The "text with forms" exception is also found inapplicable, as the instructions on the superbill are too simplistic to warrant copyright protection, unlike more comprehensive instructions in other cases. The court affirms the district court's ruling that Bibbero’s superbill is not subject to copyright. Regarding Colwell's cross-appeal for attorney's fees, a prevailing defendant must demonstrate that the infringement claim was frivolous or made in bad faith to qualify for such fees, following precedent set in previous cases.

Colwell alleges that Bibbero has acted in bad faith by harassing competitors through copyright litigation and threats, citing numerous cease and desist letters and lawsuits. However, there is no evidence that Bibbero's litigation was intended to harass or that it faced adverse judgments in those cases. The district court noted that decisions regarding the blank forms rule are complex and that case law, including Norton and Harcourt Brace, supports Bibbero's position, with no explicit Ninth Circuit rejection of these cases. Consequently, Colwell's claim for attorney's fees under the Jartech standard is unsupported. Colwell argues that the court should eliminate the distinction between prevailing plaintiffs and defendants, but this would require an en banc review, and the court is bound by existing precedent. Additionally, Colwell suggests that a defendant who prevails on summary judgment regarding the invalidity of a copyright should not need to demonstrate frivolousness or bad faith. However, allowing this could deter legitimate copyright claims, as the determination of a copyright's invalidity does not negate the existence of a colorable claim. While the district court ruled Bibbero's superbill as uncopyrightable, Bibbero asserts it has sufficient creative effort to warrant copyright protection, and also claims it is copyrightable as a compilation. Nonetheless, the ruling that the superbill falls under the blank forms rule prevents it from being considered a compilation. The definition of a compilation requires an original arrangement of preexisting materials, which is not applicable here as the superbill consists solely of an uncopyrightable form. Other circuits have adopted less stringent standards for prevailing defendants, but the court maintains its position. The denial of Colwell's request for attorney's fees and costs is affirmed.