United States Copyrig.ht Office l 1brary ot Congress . 101 Independence A,enue SE · Washington, DC 20559-6000 • www.cop)right.gov Ri chard A. Hennan, Esq. 30850 Telegraph, Suite 250 Bingham Fanns. M1 48025 March 16, 20 17 Re: Second Request for Reconsideration for Refusal to Register 2015 EIDM Essentials List; Correspondence ID : 1-l GLHJER; SR # l-2061432731 Dear Mr. Herman: The Review Board of the United States Copyright Office ( .. Board"') has consid ered EHl M' s second request for reconsideration of th e Registrati on Progr am's refusal to register a text claim in the work tit led ·'2015 EHIM Essentials List" ("Work"). After reviewing the applicati on, deposit copy, and relevant correspo nd ence, along with the arguments in the second request for reconsideration, the Board affirms the Registration Program· s denial of registration. I. DESC RI PTION OF THE WORK The Work is 636 pages of text consisting of several introductory paragraphs foll owed by schedules of pharmaceutical products organized in alphabetical order by state. The introductory paragraphs are identical to those included in the work titled ··EHL\1 ESSENTIALS LIST (STATE OF MJCHIGAN)," registered on December 18, 20 14 under the registration number TXu 1-934-686. Within each state schedule, the pharmaceutical products are listed fi rst alphabetically according to type. For example, under the schedule fo r the State of Alabama, the first category is ··Analgesics - Nonsteroidal Anti-Inflammatory Drugs." Nineteen specific pharmaceutical products are listed under this cat egory, not in al ph abetical o rd er. but according to some other methodology. An excerpt of the Work is included in Appendix A. II. ADMI ISTRATI VE RECORD On January 15, 2015, EHIM fi led an application to register a copyright claim in the Work. ln a July 27, 2015 letter, a Copyright Office registration specialist refused to register the claim, finding that ·'the material deposited represents less than the required minimum am oun t of original authorship on which to base a claim." Letter from Duke Latkovic, Senior Registration Specialist. to Richard Hennan (July 27. 2015).
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United States Copyrig.ht Office l 1brary ot Congress . 101 Independence A,enue SE · Washington, DC 20559-6000 • www.cop)right.gov
Richard A. Hennan, Esq. 30850 Telegraph, Suite 250 Bingham Fanns. M1 48025
March 16, 2017
Re: Second Request for Reconsideration for Refusal to Register 2015 EIDM Essentials List; Correspondence ID: 1-l GLHJER; SR # l -2061432731
Dear Mr. Herman:
The Review Board of the United States Copyright Office ( .. Board"') has considered EHlM' s second request for reconsideration of the Registration Program's refusal to register a text claim in the work titled ·'2015 EHIM Essentials List" ("Work"). After reviewing the application, deposit copy, and relevant correspondence, along with the arguments in the second request for reconsideration, the Board affirms the Registration Program· s denial of registration.
I. DESCRIPTION OF THE WORK
The Work is 636 pages of text consisting of several introductory paragraphs followed by schedules of pharmaceutical products organized in alphabetical order by state. The introductory paragraphs are identical to those included in the work titled ··EHL\1 ESSENTIALS LIST (STATE OF MJCHIGAN)," registered on December 18, 2014 under the registration number TXu 1-934-686. Within each state schedule, the pharmaceutical products are listed fi rst alphabetically according to type. For example, under the schedule for the State of Alabama, the first category is ··Analgesics - Nonsteroidal Anti-Inflammatory Drugs." Nineteen specific pharmaceutical products are listed under this category, not in alphabetical order. but according to some other methodology.
An excerpt of the Work is included in Appendix A.
II. ADMI ISTRA TIVE RECORD
On January 15, 2015, EHIM fi led an application to register a copyright claim in the Work. ln a July 27, 2015 letter, a Copyright Office registration specialist refused to register the claim, finding that ·'the material deposited represents less than the required minimum amount of original authorship on which to base a claim." Letter from Duke Latkovic, Senior Registration Specialist. to Richard Hennan (July 27. 2015).
Richard A. Herman, Esq. - 2 - March 16, 2017
In a letter dated October 7, 2015, EHIM requested that the Office reconsider its initial refusal to register the Work. Letter from Richard A. Herman to U.S. Copyright Office (Oct. 7, 2015) ("First Request") . After reviewing the Work in light of the points raised in the First Request, the Office re-evaluated the claims and again concluded that the Work "does not contain any new textual authorship to support a second copyright registration," noting that "the text contained in [the Work] was the same as the text registered in EHIM ESSENTIALS LIST (STATE OF MICHIGAN) ." Letter from Stephanie Mason, AttorneyAdvisor, to Richard Herman (Mar. 3, 2016).
In a letter dated May 31, 2016, EHIM requested that, pursuant to 37 C.F.R. § 202.5(c), the Office reconsider for a second time its refusal to register the Work. Letter from Richard A. Herman to U.S. Copyright Office (May 31, 2016) ("Second Request"). In that letter, EHIM admitted that ''the introductory text is, in fact, the same." Id at 1. However, EHIM argued that "a minimum amount of originality and creativity exists, apart from the introductory text, to support registration," and that "[w]hile certain information and facts may not be copyrightable, compilations containing such information/facts may still contain that amount of originality necessary for registration." Id at 2.
Ill. DISCUSSION
A. The Legal Framework: Originality
A work may be registered if it qualifies as an "original work[] of authorship fixed in any tangible medium of expression." 17 U.S.C. § 102(a). In this context, the term "original" consists of two components: independent creation and sufficient creativity. See Feist Pub! 'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 345 (1991 ). First, the work must have been independently created by the author, i.e., not copied from another work. Id. Second, the work must possess sufficient creativity. Id. Only a modicum of creativity is necessary, but the Supreme Court has ruled that some works (such as the alphabetized telephone directory at issue in Feist) fail to meet even this low threshold. Id. The Court observed that "[a]s a constitutional matter, copyright protects only those constituent elements of a work that possess more than a de minimis quantum of creativity." Id. at 363. It further found that there can be no copyright in a work in which ''the creative spark is utterly lacking or so trivial as to be virtually nonexistent." Id. at 359.
The Office's regulations implement the longstanding requirement of originality set fo rth in the Copyright Act and described in the Feist decision. See, e.g., 37 C.F.R. § 202. l(a) (prohibiting registration of " [w]ords and short phrases such as names, titles, slogans; familiar symbols or designs; [and] mere variations of typographic ornamentation, lettering, or coloring"); id. § 202.l O(a) (stating ''to be acceptable as a pictorial, graphic, or sculptural work, the work must embody some creative authorship in its delineation or form"). Some combinations of common or standard design elements may contain sufficient creativity with respect to how they are juxtaposed or arranged to support a copyright. Nevertheless, not every combination or arrangement will be sufficient to meet thi s test. See Feist, 499 U.S. at 358 (finding the Copyright Act " implies that some ' ways' [ of selecting, coordinating, or
Richard A. Herman, Esq. -3- March 16, 2017
arranging uncopyrightable material] will trigger copyright, but that others will not"). A determination of copyrightability in the combination of standard design elements depends on whether the selection, coordination, or arrangement is done in such a way as to result in copyrightable authorship. Id; see also Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989).
A mere simplistic arrangement of non-protectable elements does not demonstrate the level of creativity necessary to warrant protection. For example, the United States District Court for the Southern District of New York upheld the Copyright Office's refusal to register simple designs consisting of two linked letter "C" shapes "facing each other in a mirrored relationship" and two unlinked letter "C" shapes "in a mirrored relationship and positioned perpendicular to the linked elements." Coach, Inc. v. Peters, 386 F. Supp. 2d 495, 496 (S.D.N.Y. 2005). Likewise, the Ninth Circuit has held that a glass sculpture of a jellyfish consisting of clear glass, an oblong shroud, bright colors, vertical orientation, and the stereotypical jellyfish form did not merit copyright protection. See Satava v. Lowry , 323 F.3d 805, 811 (9th Cir. 2003). The language in Satava is particularly instructive:
It is true, of course, that a combination of unprotectable elements may qual ify for copyright protection. But it is not true that any combination of unprotectable elements automatically qualifies for copyright protection. Our case law suggests, and we hold today, that a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.
Id. (internal citations omitted).
B. Analysis of the Work
After carefully examining the Work and applying the legal standards discussed above, the Board finds that the Work does not contain the requisite separable authorship necessary to sustain a claim to copyright.
EHIM has already acknowledged that the introductory text on the first page of the Work is identical to that prefacing the work "EHIM ESSENTIALS LIST (ST A TE OF MICHIGAN)," registered on December 18, 2014 under registration number TXu 1-934-686. Therefore, the Board considers only the lists of pharmaceutical products on pages 2 through 636.
EHIM does not seek to register a copyright claim in the name of each pharmaceutical product, of course, but solely in the selection and arrangement of these product names. See Second Request at 2. It argues that the compilations of pharmaceutical product names are "original works of authorship, maintaining the requisite amount of creativity in and of themselves." Id. It is undisputed that uncopyrightable elements may be protectable if selected and combined " in a distinctive manner indicating some ingenuity." Atari Games Corp., 888 F.2d at 883. And EHIM correctly notes that "compilations containing ...
Richard A. Herman, Esq. -4- March 16, 2017
information/facts may still contain that amount of originality necessary for registration." Second Request at 2.
However, here the Board finds that the selection, coordination, and arrangement of the Work's basic elements----<)ategories of medications and names of medications-is insufficient to render the Work original. These are concededly unprotectable facts, and, as the Ninth Circuit stated in Satava, "a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship." 323 F.3d 805 at 811. Here, the alphabetical listing of states, within which are alphabetical listings of medication categories, with sub-categories also listed alphabetically, are arranged in as commonplace a manner as possible. EHIM states that "the compilation and selection of the medications were chosen by EHIM to be included, [and] the order in which they are placed was created by EHIM." Second Request at 2. However, EHIM does not demonstrate what it is about the compilation, selection, and order of placement of the medications that constitutes creative authorship. There is no indication that EHIM selected, based on any independent criteria, only certain medications to place in each sub-category, nor that the categories and sub-categories themselves are anything more than descriptive facts. While it is true that the medications are not listed within each sub-category in alphabetical order, EHIM presents no evidence that the order of listing embodies any creativity or is based on any organizing principle. Instead, the entire Work is merely a statement of the following fact, without more: EHIM's pharmacy benefits cover the drugs listed in the Work. See COMP£ :DIUM (THIRD) § 707 (listing facts as an example of a work that does not satisfy the requirements of section 102(a) of the Copyright Act).
Accordingly, the Board finds that the Work's selection, coordination, and arrangement of unprotectable facts and information do not demonstrate the creative authorship necessary for copyright registration.
IV. CONCLUSION
For the reasons stated herein, the Review Board of the United States Copyright Office affirms the refusal to register the copyright claim in the Work. Pursuant to 37 C.F.R. § 202.S(g), this decision constitutes final agency action in this matter.
BY: Chris Weston Copyright Office Review Board
Richard A. Herman, Esq. -5 - March 16, 2017
APPENDIX:
Excerpt (pages 1-10) of "2015 EHIM Essentials List"
• .... . -Effective Date : 1/ 1/ 2015
A pharmacy plan that utilizes an Out--0f-Pocket (OOP) maximum shall be calculated based on therapy classes that are considered Essential Health Benefits (EHBs) under healthcare law.
Only out--0f-pocket expenses for prescriptions that are included on this Essentials List AND covered within a group's plan design will accumulate towards the 2015 OOP Maximum. Medications that are not included in this list may be covered by the prescription program however the out--0f-pocket costs will not accumulate toward your out--0f-pocket maximum.
Please refer to the Prescription Benefit Handbook for a detailed description of your actual plan design & copay levels.
Some of the medications included in this list will be subject to your specific plan design and formulary requirements. Clinical management, such as Step Therapy, Prior Authorization, and/or Quantity Limits and may be utilized before a drug can be covered by your prescription program.
This list applies to FDA-approved generic drugs, even if those drugs are not specifically listed as generic at the lime of distribution.
This list is subject to change at any time without notice.
State {or Territory) : ALABAMA Effective Date : 1 / 1/ 2015
ALABAMA
ANALGESICS • NONSTEROIDAL ANTI-INFLAMMATORY DRUGS
IBUPROFEN DICLOFENAC SODIUM NABUMETONE SUUNDAC
NAPROXEN ETODOLAC OXAPROZIN DIFLUNISAL
MELO XI CAM INDOMETHACIN PIROXICAM FENOPROFEN
KETOPROFEN MEFENAMIC ACID TOLMETIN
'ANALGESICS - OPIOID ANALGESICS, LONG-ACTING MORPHINE SULFATE SR
!ANALGESICS· OPIOID ANALGESICS, SHORT-ACTING
TRAMADOL
!ANESTHETICS • LOCAL ANESTHETICS UDOCAINE CREAM UDOCAINE/PRILOCAINE UDOCAINE PATCH
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EHIM 0 2014 (800) 311-3446 www.ehimf'l<.com ·
mm II Print Date: December 24, 2014 Page 7 of636
State (or Territory) : ALABAMA Effective Date : 1/1/2015
Tllll-and "'dala-intlrmationCOl'llanld in lhos doc:a.tnenl("1nlomaion1 ••- by EHllol lCCfltals logalf pririeged, -.i and~ infonn"'°"and,a nolo<*JolproponydEHIMllat 11 fl'o4ldld tom iiodowt tn,ugh .-,.nl(s) andlar - M'*l'*a 1ho r_,i1o keep h lnlorrr.*"1 ~ The 1n1ttMa1icc, may notbo repr0$JC9d, cid>sed. u»d - rtiod upon, 11 v,!lolt, or ii Pa\ -lho pnor - CC111W11 d EHIM. Tllll lnlormalion cs also inllonded sololy Jar llo reai-t .-oe.. amorized by EHIM 1D r-..e d. ff you•• notlho l1llnded r9Cipin. please notfy EHIM and mmociallt,, mm II - . otnd ---de~ 1ho lnlcrmalion. Any INUtlorillod reprO<ldo<,, cisdosre, acooss, uso ll'ld,or _,",....,..on lht lnlonnalon Is $l'ldty P'ohl>ilod and may ent,ie EHIM1D logal endJor ~-anddanagn.
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EHIM ()2014 (800) 311-3446 www.ehimrx.com
Print Date: December 24, 2014 Page 9 of636
State ( or Territory) : ALABAMA Effective Date : 1/ 1/ 2015
