By Suzanna M. M. Morales
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In a case that highlights the level of creativity required for copyright protection, the U.S. District for the Northern District of Illinois held that a company that sells bonds may have valid copyrights in documents relating to offering those bonds.
Plaintiff UIRC-GAS Holdings, Inc. sells bonds to finance the purchase and operation of property leased to the federal government. UIRC created forms related to the offering of those bonds (“UIRC Forms”) and obtained federal copyright registrations for these works from the U.S. Copyright Office. Defendant William Blair & Company, LLC, an investment banking firm, acted as the placement agent for UIRC and used the UIRC Forms for some of those bond offerings. Blair also assisted Rainier, a competitor of plaintiff, with a similarly-structured bond offering. UIRC sued Rainier for copyright infringement of the URIC Forms and subsequently settled. Then, plaintiff sued Blair and a former employee of Blair, alleging copyright infringement of the same URIC Forms.
The decision
Blair moved to dismiss UIRC’s claims related to the content of the URIC Forms, claiming that some of the definitions contained therein were sentence fragments and definitions that are “driven entirely by utilitarian considerations” based on the structure of the bond and are therefore not eligible for copyright protection. Blair argued that the plaintiff was trying to own a concept for the type of bond offering. Blair also claimed that descriptions of the U.S. government’s leasing structure, necessary to the type of transaction covered by the URIC Forms, are not protectable under copyright law because they are simply facts about the transaction.
To survive a motion to dismiss, a plaintiff only needs to show that its complaint contains enough facts to state a plausible claim. Blair argued that UIRC did not do this because the URIC Forms did not possess the minimal level of creativity necessary for copyright protection. The court, however, held that UIRC had at least included sufficient facts and assertions in its complaint to allege viable copyright rights in the UIRC Forms and to support a viable claim for copyright infringement of those rights.
Ideas v. expression in copyright law
The case highlights a critical dichotomy in copyright law, that copyright law protects the expression of an idea, not the idea itself. For example, copyright protection is not available for the idea of a fictional detective character. On the other hand, copyright law protects movies and books expressing the story of such a detective. Further, a copyrighted work must contain a minimal level of creativity for that expression to be eligible for protection under the copyright laws.
Here, Blair claimed that the UIRC Forms, by their nature, had to describe the underlying concept of government leases, which are non-protectable facts. Blair argued that UIRC was the first to offer this type of bond, and that, by claiming copyright protection in the UIRC Forms, UIRC actually is trying to monopolize the market for this type of transaction. Blair claimed that there was no other way to express the underlying idea of the bond, and that UIRC’s complaint did not even claim the minimal level of creativity in the content of the UIRC Forms necessary for copyright protection. The court disagreed, holding that the terms and definitions in the UIRC Forms contained at least a minimal level of creativity in expressing the leasing structure.
Although a contract or other legal document can be copyrightable, such documents frequently contain relatively common terms and language, so that it may be difficult to prove that the document, or portions thereof, was an original creative work. This case seems to differ because the type of transaction is new, and UIRC apparently created the documents specific to the purpose of effectuating the sale of these bonds.
Following this motion to dismiss, the case will now go forward. We will monitor this case for a decision on whether UIRC’s bond documents are original works entitled to copyright and whether Blair copied a copyrighted work of UIRC. Subsequent decisions in this case may have a lasting impact on the scope of copyright protection for transactional documents and forms in the future.