THE IDEA-EXPRESSION DICHOTOMY IN COPYRIGHT LAW
Edward Samuels*
56 Tenn. L. Rev. 321 (1989)
Copyright (c) Tennessee Law Review Association, Inc. 1989
The University of Tennessee
[Part 1]
I. Introduction
II. The Idea-Expression Dichotomy: History and Development
A. Formal Origin: Baker v. Selden
1. The Holding
a. The Use Test
b. The Merger Theory
c. The Categorical Approach
d. The Exclusive Rights Test
2. Precedential Authority
B. Early Uses of the Doctrine: 1853-1924
C. The “Abstractions” or “Patterns” Tests
D. Statutory Development
1. Copyright Office Regulations
2. Codification in Section 102(b)
E. Recent Cases
F. The Computer Cases
1. The First Phase: Concerns with Copyrightability
2. The Second Phase: Scope of Protection
3. Application of the Idea-Expression Dichotomy
To Computer Programs
III. Analysis and Critique of the Idea-Expression Dichotomy
A. Excluding Categories of Works
1. Protection Against Exact Copying
2. Proposed Federal Scheme of Protection
B. Merger Theory
[Click on Headings 4-6 to go to Part 2]
IV. Constitutional Considerations
V. Beyond the Idea-Expression Dichotomy
VI. Conclusion
Introduction
322
325
326
327
327
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329
330
331
334
339
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351
355
356
360
366
370
371
372
375
382
395
407
462
I.
There is hardly a single principle of copyright law that is more basic or more
often repeated than the so-called idea-expression dichotomy.[FN1] The doctrine is
followed dutifully as an unquestioned [p. 323] principle in hundreds of cases: the
"ideas" that are the fruit of an author's labors go into the public domain, while only
the author's particular expression remains the author's to control. This principle,
sometimes described as having constitutional origins, was developed by the common
law, and has now been incorporated into the copyright act itself.[FN2]
Some commentators who have studied the idea-expression dichotomy in the
greatest detail have criticized it, arguing that continued recognition of the dichotomy
is neither justified nor helpful in deciding cases.[FN3] Yet, not only have the courts
continued to embrace [p. 324] the idea-expression dichotomy, they have extended it to
explain related copyright problems, which over the years had also led to
confusion.[FN4] Nevertheless, the cases generally do not analyze the principle in
detail; and rarely (if ever) is the doctrine actually decisive of particular cases. Perhaps
this should not be surprising, since the doctrine is so general in its statement as to defy
particular application. It is not a doctrine that could be used predictably to put a
particular work either into the public domain or within the author's exclusive rights;
instead, it seems to be an ex post facto characterization that justifies an outcome based
upon other, more concrete, factors. Thus, if the outcome in a particular case is to be
infringement, the work is deemed to be protectable expression; if the outcome is to be
noninfringment, then the work is described as an "idea."[FN5]
Given the difficulty of defining the terms of the doctrine, some courts and
commentators have developed an "abstractions" test[FN6] or a "patterns"
analysis,[FN7] which purports to place a given work along a continuum between idea
and expression. Although it is impossible to state precisely when a particular work has
crossed the threshold from one end to the other, the courts are nonetheless supposed
to struggle to apply the terms. These terms may not be precise, but they are no more
imprecise than general concepts of negligence or fault, which the courts must also
deal with on a case-by-case basis.[FN8] The general principle embodied in the ideaexpression dichotomy is supposed to help in focusing the inquiry and resolving
particular cases in accord with fundamental copyright values.
If the characterization, the abstraction, or the continuum is too vague to determine
particular cases, however, then this principle is not as important as it might first
appear. It is helpful to have a model that explains why certain decisions have to be
made, and why not all cases will be easy to decide. But if other factors are at work in
the idea-expression cases, then those specific factors should be examined more
closely rather than blindly repeating the principle as dogma.
[p.325] This discussion of the idea-expression dichotomy is divided into four
sections. Part II traces the history and development of the doctrine; Part III analyzes
and criticizes the doctrine; Part IV discusses the constitutional considerations
involved in the doctrine; and Part V analyzes the relationship between the ideaexpression dichotomy and other basic principles of copyright law.
II. The Idea-Expression Dichotomy: History and Development
Some of the early copyright cases, from which the idea-expression dichotomy
developed, purported to establish a true dichotomy between the idea and the
expression of a copyrighted work. Copyright in the early days protected only against
literal copying, and not against a more abstract taking of a copyrighted work. Judge
Learned Hand explained the idea-expression dichotomy by means of a less precise
"abstractions" test. He stated: "Upon any work . . . a great number of patterns of
increasing generality will fit equally well, as more and more of the incident is left
out."[FN9] At its most concrete level, a work was protected by copyright; but at some
level of abstraction, it became more of an "idea," to which the protection of copyright
did not extend. The abstractions test was significant because copyrighted works were
given protection on some level of abstraction, although that protection did not extend
to the greatest level of abstraction. Judge Hand's abstractions test thus has expanded
the eligibility for copyright by protecting those works that might be somewhere along
the continuum between the expression and the idea of a work.
Some recent computer copyright cases have expanded the scope of the ideaexpression dichotomy even further, indicating a tolerance for protection of
copyrighted computer programs at such an abstract level that one might wonder
whether there is any vitality left in the idea-expression dichotomy at all.[FN10] The
courts in these cases did not purport to lay down a special rule for computer
programs; rather, they framed their analysis in terms of generally applicable copyright
principles.[FN11] In order to understand the historical shift in the idea-expression
dichotomy—from a presumption leaning toward the "idea" (and thus, nonprotection)
to a presumption leaning toward the "expression" (and thus, protection)—it is first
necessary to trace the idea-expression dichotomy to its roots.
[p. 326] A. Formal Origin: Baker v. Selden
The idea-expression dichotomy in America is said to have originated in the
United States Supreme Court case of Baker v. Selden.[FN12] The case was based in
large measure upon others that were somewhat suspect, or that have been at least
partially repudiated in this country as well as in England. Even if the reasoning in
Baker may be attributed to a faulty or rejected reading of the law, the case has never
been overruled; in fact, it has been so enthusiastically incorporated into the fabric of
copyright law as perhaps to render its origins irrelevant.[FN13] In its explanation and
development of what has come to be known as the idea-expression dichotomy, the
case is shrouded in the limited view of copyright that was typical of its day. The
weakness (or obsolescence) of the Supreme Court's argument does not necessarily
compel a rejection of its holding. A careful analysis of the case, however, sheds light
upon the role of the doctrine, and perhaps imposes upon those advocating the doctrine
the burden of finding a more contemporary justification for its existence.
In Baker, Selden[FN14] obtained a copyright in a book which disclosed his
particular bookkeeping system.[FN15] The book contained forms "consisting of ruled
lines, and headings, illustrating the system and showing how it is to be used and
carried out in practice."[FN16] Baker published a book on accounting, which "use[d]
a similar plan so far as results are concerned; but ma[de] a different arrangement of
the columns, and use[d] different headings."[FN17] The complainant alleged Baker
had used Selden's system of accounting, but did not allege that Baker had actually
copied the particular forms contained in Selden's book.[FN18] The Supreme Court
concluded that Selden had no [p. 327] exclusive rights under the copyright laws to
prevent the use of the accounting system.[FN19] The Court noted that "there is a clear
distinction between the book, as such, and the art which it is intended to
illustrate."[FN20] The former could be copyrighted, the latter could not.[FN21] The
Court's conclusion can be characterized in four different ways:(1) a "use" test; (2) a
"merger" theory; (3) a "categorical" approach; and (4) an "exclusive rights" test.
1. The Holding
a. The Use Test
The Court distinguished between the use of a work and the statement or
explanation of it, implying that infringement depended upon the purpose for which a
copy is made.[FN22] This approach, to the extent that it focuses upon the purpose of
the actual user in making the copy (whether for use or for explanation), has been
criticized.[FN23] Although the nature of the use might be relevant in determining
otherwise relevant issues of fair use under section 107 of the Copyright Act,[FN24] or
other specific limitations under other sections, the copyrightability of the subject
matter in the first instance should not [p. 328] otherwise depend upon the nature of the
use by a particular user.[FN25]
To the extent that the Supreme Court focused upon the use that the creator makes
of the work, or to the extent that the only purpose of a given work is in its use rather
than its explanation, the distinction between explanation and use offered in the Baker
case has been followed by later courts.[FN26] Even in this limited context, however,
the continued vitality of the Baker case has been questioned.[FN27]
[p. 329] b. The Merger Theory
The Court in Baker invoked a merger theory by focusing upon the utilitarian or
practical nature of the original work. The Court concluded that "where the art it
teaches cannot be used without employing the methods and diagrams used to illustrate
the book, or such as are similar to them, such methods and diagrams are to be
considered as necessary incidents to the art, and given therewith to the public."[FN28]
If this theory is the primary justification for the Baker outcome, Baker might be
limited to particular kinds of works—architectural works, fashion designs, charts and
forms—which by their nature merge idea and expression. Thus, the Baker holding
need not be viewed as one that would apply to the broader category of works that are
capable of more than one type of expression.
The merger theory has also been criticized. Professor Nimmer, for example, has
argued that "it is factually erroneous to conclude that there is any system or method
which can be performed by the use of only one particular form of written
expression.[FN29]
c. The Categorical Approach
By invoking a categorical approach, the Supreme Court in Baker concluded that
"blank account books are not the subject of [p. 330] copyright"[FN30]—thereby
excluding blank account books from copyright protection, whether the books are
copied for purposes of use or statement. On an analytical level, this conclusion must
be drawn from some broader principles (such as the idea-expression, "works of
utility," or merger principles). The explanation uses an ad hoc approach, however, so
that categories of works other than blank account books are not necessarily affected.
Another valid reason for finding that blank forms are not copyrightable is that they do
not reflect sufficient originality to constitute copyrightable material.[FN31] The Court
in Baker, however, did not address this argument.
d. The Exclusive Rights Test
The Supreme Court stated that the copyright in the book, although effective to
protect the book, "did not confer upon [the author] the exclusive right to make and use
account-books, ruled and arranged as designated by [the author] and described and
illustrated in said book."[FN32] This explanation seems to address itself more to the
scope of the exclusive rights that might otherwise be granted copyright protection
than to the threshold question whether blank account books could ever, under any
circumstances, be copyrighted.
According to Professor Nimmer, this limited explanation is the true holding of
Baker, with the other explanations representing expansions by later courts.[FN33]
Professor Nimmer stated that "[s]ince the defendant's forms . . . were not substantially
similar to plaintiff's, the decision could have rested simply on the basis of absence of
similarity in the expression of an idea, even though there may have been similarity in
the idea of a bookkeeping system."[FN34] Professor Nimmer also noted that many of
the courts invoking Baker, particularly for the merger rationale, "have found that the
writings in issue were in themselves by no means substantially similar."[FN35]
Although he criticized the Baker opinion and certain interpretations of it, and argues
that it and other cases could have been decided as easily by focusing upon substantial
similarity, Professor Nimmer nonetheless has acknowledged the importance of the
idea-expression dichotomy generally, and does not seem to view the fallacy of the
cases as an opportunity for questioning the validity of the doctrine itself.[FN36]
[p. 331] 2. Precedential Authority
The precedents cited by the Supreme Court in the Baker case are of dubious
vitality today [FN37] The Court first cited Clayton v. Stone,[FN38] which held that
daily price quotes were not copyrightable.[FN39] The court in Clayton observed the
constitutional prerequisite that copyright "promote the progress of science,"[FN40]
and concluded that "[t]he term 'science' cannot, with any propriety, be applied to a
work of so fluctuating and fugitive a form as that of a newspaper or price-current, the
subject-matter of which is daily changing, and is of mere temporary use."[FN41] The
court stated that the Copyright Act "was not intended for the encouragement of mere
industry, unconnected with learning and the sciences."[FN42] Such a rule, if read over
broadly, would exclude a large number of works from copyright. Although there have
been recurring reminders of the begrudging approach exemplified in Clayton, it has
been established that newspaper articles and price-quotes are not per se excluded from
copyrightability, at least not on the ground that they are "temporal" or merely the
result of "industry" rather than "learning."[FN43]
[p. 332] The Court next cited the British case of Cobbett v. Woodward,[FN44]
which held that a claim to copyright in a catalogue of furniture sold by the plaintiff
was not valid.[FN45] The court in Cobbett found under English law a "mere
advertisement" for the sale of particular articles was not a proper subject of
copyright.[FN46] The Baker opinion does not even mention that Cobbett was
specifically overruled in Maple & Company v. Junior Army and Navy Stores.[FN47]
Further, that Cobbett was not to be decisive of American law was made clear in the
leading case of Bleistein v. Donaldson Lithographing Company,[FN48] in which
Justice Holmes, writing in a deceptively offhanded manner, dismissed the argument
that advertisements were not sufficiently part of the "useful arts" to qualify for
copyright protection.[FN49]
The third case cited in Baker was Page v. Wisden,[FN50] an 1869 English case,
which held that a cricket-scoring sheet was not a fit subject for copyright. Although
the English court did make some statements which might imply that cricket-scoring
sheets are generally ineligible for copyright,[FN51] the case actually was decided on
the particular [p. 333] facts, primarily the lack of any novelty in the particular scoring
sheet: in one example, there was evidence of the use of earlier similar scoring sheets,
which evidence presumably would not have been necessary if scoring sheets were
categorically excluded from protection.[FN52] The Page court also seemed to be
influenced by an earlier suit before the same judge, in which the Page plaintiff was a
defendant and had himself claimed that the scoring sheet lacked originality.[FN53]
The Court's use of Drury v. Ewing[FN54] is somewhat confusing. In Drury, the
circuit court of appeals held that a chart for cutting dresses was copyrightable under
the existing copyright law, and that the defendant's chart was substantially similar and
thus infringing.[FN55] Although the Supreme Court could have disregarded this
lower court opinion, or limited it to the procedural setting (in which the issue of
copyrightability of the charts had already been conclusively conceded by the
defendant), the Court in Baker nonetheless refused to decide whether it would follow
the case on the same issue. Instead, the Supreme Court purported to distinguish it. The
Supreme Court stated that
Such designs could only be printed and published for information, and
not for use in themselves. Their practical use could only be
exemplified in cloth on the tailor's board and under his shears . . . .
Surely the exclusive right to this practical use was not reserved to the
publisher by his copyright of the chart. Without undertaking to say
whether we should or should not concur in the decision in that case, we
think it cannot control the present.[FN56]
The Supreme Court in Baker seemed to conclude that the dress pattern case was
easier to decide, because it could only be described as "information" (and thus
protected). After all, the case did not involve a suit against a tailor who used the
pattern to make clothes, but a suit against a woman who had made copies of the chart,
and was selling them in competition with the plaintiff. [FN57] Such an observation
does not, however, distinguish the Drury case from the Baker [p. 334] setting.
Defendant Baker was not sued for actually implementing the ledger system on his
own account books, just as Ewing was not accused of actually cutting the cloth
patterns; rather, both of them were sued for competing with the original works by
making "informational" use of them and describing their use to others. There may be
distinctions between the cases, but they do not seem to be along the informational/use
lines the Court described.
Although the cases cited by the Supreme Court in Baker do not compel the
conclusion that the Court reaches, there may be something more compelling about the
several examples that the Court used to illustrate what is not the proper subject of
copyright. The Court never used the words "idea" and "expression" to describe the
distinction it is drawing between unprotectable and protectable works. It developed
instead the dichotomy between the informational use of a work (to convey the content
or "art" of the work) and the use of the work in practice. The Court applied this
distinction to state that the author of a work on medicine, ploughs, perspective, or
mathematical science has rights in the precise form of describing the subject, but no
legal rights, absent a patent,[FN58] in the actual operation of the art communicated.
Yet, even conceding all of the examples, the outcome in the Baker case is still not
compelled. There is no indication that Baker was a mere passive user of the system
described by Selden's book; instead, Baker was making his money by selling books
that served the same informational function as that served by Selden's book. Whether
there was infringement should not have depended upon the existence of a distinction
between the communication of information and its use, but rather upon the extent to
which Baker's communication of the information was in fact similar to Selden's.
B. Early Uses of the Doctrine:1853-1924
Although Baker was the seminal Supreme Court case that seemed to be based, at
least in part, on what might be thought of as the idea-expression dichotomy, other
American courts were also citing [p. 335] the doctrine during the latter part of the
nineteenth and the first part of the twentieth centuries. Before the courts embarked
upon analyses of the facts of each case (usually to determine the substantial similarity
between the two works involved), the doctrine was usually cited as a basic principle
of copyright law.[FN59] Curiously, there were still some cases that articulated the
principle in a way that was significantly different from what it has become today.
These cases stated that copyright was not really in either ideas or expression, but only
in the embodiment of the former in the latter.[FN60] Some cases then emphasized that
the protection of the copyright law was focused not upon the abstract work, but upon
the existence of a physical manuscript that was capable of being copied. For example,
in the case of Johnson v. Donaldson,[FN61] the court described the basic principle as
follows:
[p. 336] The law of copyright originated in the recognition of the right
of another to be protected in the manuscript which is the title of his
literary property. . . . It does not rest upon any theory that the author
has an exclusive property in his ideas, or in the words in which he has
clothed them. If each of two persons should compose a poem
identically alike, he who first composed it would have no priority of
title over the other, nor would he acquire priority by first publishing it.
The law of copyright would protect each in his own manuscript, but
would not prevent either from using his own.[FN62]
The latter part of this quote would sound familiar to modern students of copyright
as a statement of the basic principle that copyright only protects against actual
copying.[FN63] The earlier part of the quote, by contrast, focuses attention upon the
physical manuscript, which represents the embodiment of the idea in a particular
expression. The statement purports to disavow that copyright covers "expression" as
an abstract concept apart from a physical manuscript, as much as it disavows the
protectability of ideas. Similarly, in Stowe v. Thomas,[FN64] the court read the scope
of copyright narrowly, limiting it to a literal transcript of the language in which the
conceptions of the author are embodied in a tangible form.[FN65] Accordingly, the
court found that a translation of Harriet Beecher Stowe's Uncle Tom's Cabin was not
an infringement of the copyright in the original book, because the translated work was
expressed in different words.[FN66]
[p. 337] Another famous case involving the protectability of copyrighted works is
White-Smith Music Publishing Company v. Apollo Company.[FN67] Here, the
United States Supreme Court held that a copyright in a musical work was not
infringed by the making of a piano roll which was to be used in a player piano to play
the music depicted in the copyrighted sheet music.[FN68] Although the holding of the
case speaks more directly to the issue of what constitutes a copy for purposes of
infringement, this matter also relates to a conception of the copyrighted work in its
most narrow, physical sense. The Court stated that "[t]he statute has not provided for
the protection of the intellectual conception apart from the thing produced, . . . but has
provided for the making and filing of a tangible thing, against the publication and
duplication of which it is the purpose of the statute to protect the composer."[FN69]
Thus, this view of the idea-expression dichotomy, or a concept inextricably
intertwined with it, denies protection of ideas and protects expression only in the most
narrow, physical, perceptible sense.
The narrow holding of the White-Smith case was overturned legislatively by the
almost immediate passage of the 1909 Copyright Act,[FN70] which protected musical
works against duplication by phonorecords[FN71] and also created a compulsory
license to avoid a monopoly in the sound recording industry.[FN72] Additionally, the
reasoning of the Supreme Court in White-Smith and similar cases was rejected in
1976 by a definitional structure that made clear that a copyrighted work is not merely
the physical, tangible copy, but exists on a more abstract level.[FN73] The point can
be illustrated by contrasting [p. 338] the definition of "literary works" (one of the
categories in which copyright can exist) with the definition of "copies." Whereas
literary works are somewhat abstract "works . . . regardless of the nature of the
material objects . . . in which they are embodied, [copies are] material objects . . . in
which a work is fixed."[FN74] As explained by the House Report:
The definitions of these terms in section 101, together with their usage
in section 102 and throughout the bill, reflect a fundamental distinction
between the "original work" which is the product of "authorship" and
the multitude of material objects in which it can be embodied. Thus, in
the sense of the bill, a "book" is not a work of authorship, but is a
particular kind of "copy."[FN75]
Under the approach adopted by the Stowe and White-Smith cases, the ideaexpression dichotomy was a true dichotomy. Anything beyond the exact language or
physical form in which a work was embodied or expressed was not within the scope
of copyright; only exact takings were prohibited. Thus, there were no shades of
ambiguity between the idea and its expression.
There were other cases during this early period in which courts held that even a
nonliteral copying could constitute copyright infringement.[FN76] These cases
implied that to some extent the idea of a work—or at least something more than the
literal expression of it—could be the subject of copyright. One of the more broadly
worded cases was King Features Syndicate v. Fleischer,[FN77] in which the United
[p. 339] States Court of Appeals for the Second Circuit held that the making of a
three-dimensional doll embodying the image of a copyrighted cartoon character was
an infringement of copyright.[FN78] The court stated that "[t]he appellees did not
take all of the copyrighted matter, or all its principal characters, but took one, the idea
of the horse 'Sparky.'"[FN79]
The court in Fleischer purported to be protecting ideas. In any event, it certainly
adopted a much broader concept of protectable expression than did the Stowe case.
The court in Fleischer created a problem, however, that did not exist under the
simplistic approach of the Stowe case: if something more than the exact expression is
to be protected, where should the line be drawn? The answer is ostensibly given in an
opinion written by Judge Learned Hand, a recognized expert in copyright law.
C. The "Abstractions" or "Patterns" Tests
In Nichols v. Universal Pictures Corporation,[FN80] Judge Hand attempted to set
the standard by describing an "abstractions" test. After a lengthy recitation of the plots
of the two plays involved in the suit, Judge Hand stated:
It is of course essential to any protection of literary property, whether
at common-law or under the statute, that the right cannot be limited
literally to the text, else a plagiarist would escape by immaterial
variations. That has never been the law, but, as soon as literal
appropriation ceases to be the test, the whole matter is necessarily at
large, so that, as was recently well said by a distinguished judge, the
decisions cannot help much in a new case.[FN81]
[p. 340] Judge Hand thus presumably rejected cases like the Stowe case, which
applied such a literal test.[FN82] Yet, in recognizing a principle of law which
concededly "cannot help much in a new case," Judge Hand opted for almost no rule at
all. This may be the price paid for extending protection beyond mere literal copying.
Judge Hand also observed that there are at least some relatively easy cases: for
example, if a plagiarist lifts a whole scene or a part of the dialogue, "[t]hen the
question is whether the part so taken is 'substantial,' and therefore not a 'fair use' of the
copyrighted work."[FN83] [p. 341] When a plagiarist takes not a literal portion, but
"an abstract of the whole, decision is more troublesome."[FN84] Judge Hand then
announced his "abstractions" test, which is meant to explain the nature of the ideaexpression dichotomy:
Upon any work, and especially upon a play, a great number of patterns
of increasing generality will fit equally well, as more and more of the
incident is left out. The last may perhaps be no more than the most
general statement of what the play is about, and at times might consist
only of its title; but there is a point in this series of abstractions where
they are no longer protected, since otherwise the playwright could
prevent the use of his "ideas", to which, apart from their expression,
his property is never extended. Nobody has ever been able to fix that
boundary, and nobody ever can. In some cases the question has been
treated as though it were analogous to lifting a portion out of the
copyrighted work; but the analogy is not a good one, because, though
the skeleton is a part of the body, it pervades and supports the whole.
In such cases we are rather concerned with the line between expression
and what is expressed. As respects plays, the controversy chiefly
centers upon the characters and sequence of incident, these being the
substance.[FN85]
Judge Hand stated that the taking of either plot[FN86] or characters[FN87] might be
sufficient to constitute a copyright infringement. He held, [p. 342] however, that in
the instant case, both as to incident and character, "the defendant took no more—
assuming that it took anything at all—than the law allowed."[FN88]
Judge Learned Hand seemed to say that the concepts of substantial similarity and
idea-expression should be applied in different types of infringement cases, and that
the tests are distinguishable. Substantial similarity is appropriate for determining
whether portions taken directly from the original work are infringing; but this test is
inapplicable, however, when the plot outline or generalized character is taken. In such
cases, a different test—that of idea-expression—must be used to determine the extent
to which the copyrighted work represents an idea or its expression. The difference
between these two tests seems to be that the idea of a play or a character can be
determined by reference to how well delineated it is in the original: "the less
developed . . ., the less they can be copyrighted; that is the penalty an author must
bear for marking them too indistinctly."[FN89] The test of substantial similarity
works best in the situation in which something has been literally taken, and the
observer can weigh the substantiality of the amount taken by comparing the two
works.
This distinction simply does not work.[FN90] In fact, the lower court had found
relatively easily, without resort to the abstractions test that Judge Hand propounded,
that there was no infringement in the Nichols case[FN91]—a holding affirmed by the
United States Court of Appeals for the Second Circuit.[FN92] In explaining that
undeveloped [p. 343] characters—or, by extension, plots—would not be protected if
they were not sufficiently delineated, Judge Hand used as examples Sir Toby Belch
and Malvolio from Shakespeare's Twelfth Night.[FN93] In fact, the two Shakespeare
characters are quite well delineated, and one might suppose that they would not be
considered mere ideas as developed by Shakespeare. The problem with Judge Hand's
abstractions test is that it does not look at the characters as developed by Shakespeare,
but instead asks us to make successive abstractions of those characters, which on the
most abstract level—as the riotous knight or the foppish steward—will not be
protected. If the abstraction at issue is not determined by the characters or plot as
developed, how does one determine the level of an abstraction upon which to focus?
Presumably, the copying work is examined, and determine whether the character or
plot, at the level of abstraction at which it is copied, represents idea or expression (or
where along the idea-expression continuum it lies). But if the copying work must be
examined anyway, how is the test distinguishable from the substantial similarity test,
which has as its essence a comparison of the two works? Judge Hand implied that
comparison, as used in the substantial similarity test, was not appropriate where a
separate portion is not taken; some different test was required. [FN94]
Perhaps the major significance of the abstractions test is not in its ability to work
as a tool for deciding cases—indeed, Judge Hand himself admitted that each case
must be decided on its own facts, and developed the abstractions test more as a model
for guidance in deciding cases than a rigid rule for determining the outcome of the
case.[FN95] Rather, the significance of the doctrine rests in its rejection [p. 344] of
the Stowe approach to copyright protection.[FN96] If a simplistic approach is
adopted, an abstractions test would not be necessary; but "as soon as literal
appropriation ceases to be the test," there are no simple answers.[FN97] The Nichols
case signaled a willingness by Judge Hand, and the United States Court of Appeals
for the Second Circuit, to take that more difficult road. After Nichols, there are hardly
any more cases like Stowe, in which copying is an infringement only if it is
literal.[FN98]
Although the facts of the Nichols case may not have required the development of
a new test, the test that Judge Hand developed did pave the way for later cases which
clarified the continued expansion of copyright law to protect against nonliteral
copying.[FN99] The most celebrated such case was Sheldon v. Metro-Goldwyn
Pictures Corporation,[FN100] in which Judge Learned Hand, speaking for a [p. 345]
unanimous court, found copyright infringement where there was no identifiable
language that was actually copied.[FN101] The district court had dismissed Sheldon's
claim that defendant's movie, based partly on a celebrated murder trial in England,
had infringed its copyright in a play based upon the same real-life incident.[FN102]
The United States Court of Appeals for the Second Circuit, in reversing, found that
there was substantial similarity in the characters and "parallelism of
incident."[FN103] The court criticized the defendants (and implicitly, the lower court)
for overemphasizing the extent to which the play was based upon public domain
materials.[FN104] Judge Hand found that at [p. 346] several key points, what the
defendant took from the play was not similar to what was contained in the previous
materials but instead was material original with the plaintiff.[FN105]
Another prime example of how the abstractions test came to be used as a means
of expanding rather than contracting the universe of works eligible for copyright is the
case of Mazer v. Stein.[FN106] In Mazer, the United States Supreme Court recited a
classic statement of the idea-expression dichotomy and characterized the Baker case
as standing for that dichotomy.[FN107] Because the Court upheld Stein's claim of
infringement, however, the Court necessarily viewed the infringing work as having
taken the expression and not the mere idea.[FN108] The dichotomy was recited
primarily to justify the expansion of copyright to include even utilitarian works: that
was, the expansion was possible precisely because, as the idea-expression dichotomy
reminds us, the resulting copyright is limited. In this sense, an apparent limitation on
the scope of copyright law has been used to accomplish an expansion of the subject
matter of copyright.[FN109]
[p. 347] The genius of the abstractions test is that it appears to answer the major
criticism of the idea-expression dichotomy: namely, that it is obsolete because it was
developed at a time when Stowe was a correct interpretation of the copyright
law.[FN110] Because the abstractions test seems to accommodate the very expansion
of copyright law that had led to the criticism, it appears less objectionable than the
older formulation of the idea-expression dichotomy. Yet, if the result of the
abstractions test is to perpetuate the arguably outmoded doctrine, then this test is
justified only to the extent that new reasons are given which substantiate the
continued need for the doctrine. Judge Learned Hand does not supply these new
reasons. The genius of the case masks the mischief that it does.
D. Statutory Development
1. Copyright Office Regulations
Even prior to the Copyright Act of 1976,[FN111] the Copyright Office issued
regulations purporting to describe certain material that is not copyrightable.[FN112]
These regulations draw upon and expand upon several related doctrines, including the
idea-expression dichotomy, [p. 348] the works of utility doctrine, the requirement of
originality, and the exclusion of certain categories that are thought to represent de
minimis contributions.[FN113] This section focuses upon that portion of the current
regulation which purports to recite the idea-expression dichotomy.[FN114] The
pertinent regulation concerning registration of claims provides that" [t]he following
are examples of works not subject to copyright and applications for registration of
such works cannot be entertained: . . . (b) Ideas, plans, methods, systems, or devices,
as distinguished from the particular manner in which they are expressed or described
in a writing . . . ."[FN115]
It is clear that the Copyright Office is empowered to establish regulations "not
inconsistent with law for the administration of the functions and duties made the
responsibility of the Register under this title."[FN116] Although entitled to some
weight in deciding issues of law, the regulations are not binding on the
courts.[FN117] Yet the Register of Copyrights presumably is in the best position to
weigh the validity of certain classifications of copyrightable works, and must of
necessity make a preliminary determination in deciding whether to register a
work.[FN118]
The Copyright Office has explained the regulation in the following terms: "Ideas,
Methods, or Systems cannot be copyrighted. Copyright protection is not available for:
ideas or procedures for doing, making, or building things; scientific or technical
methods or discoveries; business operations or procedures; mathematical principles;
formulas; or any other sort of concept, process, or method of operation."[FN119]
Interestingly, by its reference to "ideas. . . for doing, [p. 349] making, or building
things,"[FN120] and to scientific, technical, business or mathematical methods, the
Copyright Office's explanation seems to emphasize that aspect of the idea-expression
dichotomy that incorporates the works of the utility doctrine. This aspect of the ideaexpression dichotomy does not resemble the abstractions test that was propounded by
Judge Learned Hand, but is a more carefully and narrowly drawn description of the
idea-expression dichotomy. If it is applied only in the context of works of utility, the
doctrine will not be used to foreclose ideas that have been embedded in otherwise
expressive works. Abie's Irish Rose, the play that was the subject of the Nichols case
(which led to the abstractions test),[FN121] would not have been, and was not,
refused registration under the Copyright Office regulations. Since there are clearly
expressive aspects of the play, it is eligible for copyright even though in its most
abstract outline it is not protected against nonliteral "copying." Although the
Copyright Office has not directly repudiated the use of the abstractions test, it
certainly has not adopted any regulations that are designed to reflect that test, and the
existing regulations appear to allow much less room for the exercise of
judgment.[FN122] It may be inferred that the abstractions test is inappropriate at the
registration or "subject matter" stage, and that it is more a test of substantial
similarity—requiring a copying work for its application.[FN123]
[p. 350] 2. Codification in Section 102(b)
The idea-expression dichotomy was codified for the first time in 1976. Section
102(b) of the Copyright Act of 1976 provides: "In no case does copyright protection
for an original work of authorship extend to any idea, procedure, process, system,
method of operation, concept, principle, or discovery, regardless of the form in which
it is described, explained, illustrated, or embodied in such work."[FN124]
There is extremely little legislative history on subsection (b), indicating perhaps
that it was not viewed as particularly controversial. The House Report states that it
was merely a codification of existing law, and was not intended to change the test in
any way.[FN125] Since it is contained in section102 (dealing with copyrightable
subject matter), rather than being contained in or following section 106 (dealing with
the scope of the exclusive rights in copyright), Congress presumably intended to
relate the idea-expression dichotomy to the nature of a work, and not simply to the
test of substantial similarity.[FN126]
There is some indication, however, that section 102(b) was intended to emphasize
the narrow scope of protection in order to allow expansion of copyright to new
technologies. [FN127] The language of section [p. 351] 102(b) was added in the 1969
version of the copyright bill.[FN128] The primary relevant testimony that would seem
to explain why the section was added deals almost exclusively with the issues raised
by inclusion of computer programs within the copyright scheme.[FN129] The section
was particularly designed to assure that copyrightable programs would create a
monopoly only in the particular implementation of a method, not in an entire method
for accomplishing a particular task.[FN130] The basic concern prompting the
inclusion of section 102 was one involving a work of utility, a concern to which the
dichotomy seems best suited.[FN131] Ultimately, section 102 would allow the
expansion of copyright law specifically to cover a new subject matter.
E. Recent Cases
Despite the criticism of commentators,[FN132] the idea-expression dichotomy,
which was seemingly approved by Congress in 1976, has also shown a staying power
in the case law. The United States Court of Appeals for the Ninth Circuit, in Sid &
Marty Krofft Television Productions, Inc. v. McDonald's Corporation,[FN133]
concluded that "the distinction accurately conceptualizes the fundamental elements in
an artistic creation and balances the competing interests inherent in the copyright
law."[FN134] Thus, the necessity of the doctrine rests upon the [p. 352] danger that
copyright law would otherwise be extended too far. As the court stated:
Application of [the substantial similarity test] would produce some
untenable results. For example, a copyright could be obtained over a
cheaply manufactured plaster statue of a nude. Since ownership of a
copyright is established, subsequent manufacturers of statues of nudes
would face the grave risk of being found to be infringers if their statues
were substantially similar and access were shown. The burden of proof
on the plaintiff would be minimal, since most statues of nudes would
in all probability be substantially similar to the cheaply manufactured
plaster one.[FN135]
So the court is trying to say that even if the idea is substantially similar
the idea- expression dichotomy would prevent it from being
monopolised.
The Ninth Circuit seemed willing to concede that the limited scope of protection,
covering only original elements of expression, theoretically militates against an over
extensive application of the copyright laws. Yet, the court perceived that a substantial
practical burden is placed upon manufacturers of products: in a copyright suit with a
clear prima facie case, the burden would be upon the defendant to prove that the work
was his own or to prove a lack of originality in the plaintiff's work. The court was
unwilling to impose this burden upon the marketplace.[FN136] The court concluded
that a "limiting principle is needed," and that "the classic distinction between an 'idea'
and the 'expression' of that idea" provides the needed limitation.[FN137]
The court cited Mazer v. Stein[FN138] as an example of the idea-expression
dichotomy,[FN139] and explained the necessity of the doctrine by the example of the
nude figures incorporated into a utilitarian article that was involved in that
case.[FN140] As later developed more fully in Part V(B)(1)(b), the necessity of a
limiting doctrine in the case of a utilitarian work does not require that the doctrine by
any [p. 353] more extensive than the works of utility doctrine itself.[FN141] Krofft
did not involve a work of utility; it was therefore worth asking if the same limiting
doctrine was really necessary in the case that was actually before the court.[FN142]
Because the court in Krofft concluded that the copyright law was infringed by a
nonliteral taking of the characters involved in the suit,[FN143] the court obviously
thought that the expression of the characters itself had been taken, so that subtle
distinctions between idea and expression were not necessary to a determination of the
case.
Indeed, Krofft represents about the farthest judicial extreme in finding that the
nonliteral taking of expression, which arguably borders upon the taking of an idea
only, can constitute an infringement of copyright. The court in Krofft, following
Arnstein v. Porter,[FN144] found that an intrinsic(or relatively subjective) test of
infringement is the relevant test.[FN145] Therefore, even if the works are not
substantially similar (which the court did not concede), the test is one of "total
concept and feel," which, in the given case, appropriately was found by the jury to be
substantially similar.[FN146] Krofft, if it is seen as an idea-expression case, makes
clear that protection may be granted even for works which tend toward the idea side
of the idea-expression continuum.
The Krofft case can best be categorized as a false idea-expression case, since it
focuses analysis upon the substantial similarity test of infringement, or proposes a rule
that effectively interrelates the two doctrines.[FN147] The case does not ultimately
rest upon a characterization of the fantasy characters in isolation; rather, it necessarily
involves a close comparison of the two works, and is dependent upon the impression
created in the minds of the intended viewers that the works are substantially similar.
In Durham Industries, Inc. v. Tomy Corporation,[FN148] the United States Court
of Appeals for the Second Circuit also purported to find a need to continue using the
"imprecise tool" of the idea-expression dichotomy, because of its apparently unique
ability to balance societal interests in the use of copyrighted works with the author's—
and society's—interests in protecting the work.[FN149] In Durham [p. 354]
Industries, however, the court managed to find and apply several other theories that
seemed to fulfill the balancing function. First, some of the mechanical toys were
ineligible for protection because they were slavish copies of licensed Disney
characters and added no original non-utilitarian elements.[FN150] Second, regarding
some of the other mechanical toys involved in the case, the court found that the works
of utility doctrine was sufficient to bar protection of the mechanical or utilitarian
features of the works.[FN151] Finally, the court emphasized the flexibility of the
substantial similarity doctrine, which required more than trivial or incidental
similarities to be actionable.[FN152] Applying these tests (as well as the elusive ideaexpression dichotomy), the court had little difficulty finding that, although pairs of
plaintiff's and defendant's toys were "mechanically identical and structurally similar,"
they were "distinguishable in many respects," or "in every articulable
respect."[FN153] Thus, although the case was permeated with idea-expression
language, the Second Circuit found other, narrower bases for preserving the desired
balance.
[p. 355] F. The Computer Cases
In recent years, computer software copyright cases have led to some of the most
interesting applications of the idea-expression dichotomy. The major recent cases
have generally held that computer programs are protectable notwithstanding the
dichotomy.[FN154] Thus, while these cases seem to approve of the idea-expression
dichotomy generally, the dichotomy is not sufficient to bar computer software
programs from copyright protection. Furthermore, some of the cases enunciate a
standard for the idea-expression dichotomy that is so liberal as practically to nullify
its impact. From the early idea-expression cases, in which expression was taken only
by a near-literal copying—the presumption being that any other taking was only of
idea, and thus not a copyright infringement—the courts seem to have come 180
degrees to the point where almost any taking is of expression, so long as there is at
least some other way of expressing the idea. Thus, in the historical development of the
idea-expression dichotomy, the courts have moved from a characterization that is
strongly shifted toward the idea (which is unprotected) to one that is strongly shifted
toward the expression (which is protected).
The recent computer copyright cases can be divided into two distinct periods: the
early phase, which dealt primarily with copyrightability of computer programs in
various formats (eventually leading to a consensus that programs are protectable
notwithstanding the form in which they are fixed); and the more recent cases, which
concern primarily the scope of copyright protection.[FN155]
[p.356] 1. The First Phase: Concerns with Copyrightability
A short discussion of the application of the idea-expression dichotomy to
computer programs was contained in the final report of the National Commission on
New Technological Uses of Copyrighted Works.[FN156] The Commission
distinguished between "programs," [p. 357] which were protectable, and "processes,"
which were not. The Commission observed that the Baker case "is often misconstrued
as imposing a limit on the copyrightability of works which express ideas, systems or
processes," and instead adopted Professor Nimmer's approach that Baker "in no event
justifies the denial of copyrightability to any work."[FN157] Rather, Baker "stands for
the proposition that using the system does not infringe the copyright in the
description."[FN158]
The Commission separately identified the "idea-expression identity" exception to
copyrightability of works.[FN159] This exception provides that "copyrighted
language may be copied without infringing when there is but a limited number of
ways to express a given idea."[FN160] The Commission concluded, however, that
"[t]he availability [p. 358] of alternative non-infringing language is the rule rather
than the exception,"[FN161] so that most computer programs would remain protected
notwithstanding the presumed exception.
The leading case that clearly established that computer programs were
copyrightable was Apple Computer, Inc. v. Franklin Computer Corporation,[FN162]
in which the United States Court of Appeals for the Third Circuit held that Apple
Computer's operating system programs, in object code as well as source code, which
were embedded in ROM (Read Only Memory) chips as well as stored on disk, were
"literary works" subject to copyright.[FN163] The court found that Franklin
Computer's programs were copied from Apple Computer's, and therefore constituted a
copyright infringement.[FN164]
One of the arguments raised by Franklin Computer was that the operating system
programs could not be copyrighted because they represented idea and not expression.
The court discussed the Baker[FN165] [p. 359] case, as well as Nichols[FN166] and
other idea-expression cases;[FN167] the court of appeals concluded that the line
between idea and expression "must be a pragmatic one. . . ."[FN168] The court
adopted a "suggestion" contained in Dymow v. Bolton[FN169] and focused on
"whether the idea is capable of various modes of expression. If other programs can be
written or created which perform the same function as an Apple Computer's operating
system program, then that program is an expression of the idea and hence
copyrightable."[FN170] Curiously, the court equated the typical idea-expression case
with one involving the merger of idea and expression: "In essence, this inquiry is no
different than that made to determine whether the expression and idea have merged,
which has been stated to occur where there are no or few other ways of expressing a
particular idea."[FN171]
By jumping to the merger argument, the court, much like the CONTU Report
when it focused upon the "idea-expression identity,"[FN172] emphasized not whether
the work as copied constituted idea or expression, but shifted the focus to whether the
idea of the copyrighted work was capable of expression in other forms.[FN173] The
court in Apple Computer then remanded the case to the trial court for a determination
whether some or all of Apple Computer's operating system programs represented the
only means of expression of the idea underlying them.[FN174]
In discussing how the trial court should apply the test on remand, however, the
court in two ways seemed to tilt the determination in favor of Apple Computer. First,
it rejected Franklin Computer's major argument—that there were a limited number of
ways "to arrange operating systems to enable a computer to run the vast body of
Apple-compatible software."[FN175] The court found that the purpose of making a
100% compatible machine was a "commercial and [p. 360] competitive object which
does not enter into the somewhat metaphysical issue of whether particular ideas and
expressions have merged."[FN176]
Second, the court seemed to tilt toward Apple Computer in characterizing the
"idea" of the operating system programs extremely broadly. As its only example, the
court suggested that "[t]he idea of one of the operating system programs is . . . how to
translate source code into object code. If other methods of expressing that idea are not
foreclosed as a practical matter, then there is no merger."[FN177] Such a broad
statement of the idea almost assures that there will be other means for achieving the
same result. It is no wonder that Franklin Computer settled shortly after the case was
decided![FN178]
2. The Second Phase: Scope of Protection
The leading case focusing upon the scope of protection of copyrighted computer
programs is Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc.[FN179] In
Whelan, the defendant Rand Jaslow had not literally copied plaintiff's program, but
had taken only the "structure, sequence, and organization" of files, screen outputs, and
five particularly significant subroutines.[FN180] The United States Court of Appeals
for the Third Circuit focused upon the test for substantial similarity and the ideaexpression dichotomy; [FN181] according to the Court's analysis, the defendant did
copy the structure, sequence, and organization of plaintiff's program, and thus
infringed.[FN182]
The court accepted as "axiomatic that copyright does not protect ideas, but only
expressions of ideas."[FN183] The court reviewed Baker and concluded that "the line
between idea and expression may be drawn with reference to the end sought to be
achieved by the work in question."[FN184] The court then described the "idea" of a
utilitarian work:
[p. 361] In other words, the purpose or function of a utilitarian work
would be the work's idea, and everything that is not necessary to that
purpose or function would be part of the expression of the idea. Where
there are various means of achieving the desired purpose, then the
particular means chosen is not necessary to the purpose; hence, there is
expression, not idea.[FN185]
The court then characterized the purpose of the computer program before it as
assisting "in the business operations of a dental laboratory."[FN186]
The court of appeals considered the rhetorical question asked by Judge
Higginbotham in Synercom Technology, Inc. v. University Computing
Company[FN187]—"if sequencing and ordering [are] expression, what separable idea
is being expressed?"[FN188]—and concluded: "Our answer has already been given,
however: the idea is the efficient organization of a dental laboratory . . . . Because
there are a variety of program structures through which that idea can be expressed, the
structure is not a necessary incident to that idea."[FN189] It is almost as if the court
found that the structure of the program was not the idea, because at least one more
level of abstraction existed beyond the program's structure. But that definition of
idea—"the efficient organization of a dental laboratory"—is so broad as to immunize
from attack under the idea-expression dichotomy almost any more specific expression
of that idea. This is certainly a long way from Stowe in the historical march from the
expression end of the continuum to the idea end![FN190]
The Whelan case probably was correctly decided. A proper appreciation of the
case, however, does not depend so much upon the test that the court in Whelan
developed for applying the idea-expression dichotomy, as it does upon the particular
facts of the [p. 362] case. The defendant had admitted having access to the plaintiff's
program, and had even been under contract with the plaintiff to promote and sell the
plaintiff's program.[FN191] Whereas the plaintiff was a professional programmer
who had spent a considerable amount of time developing the program to manage the
defendant's dental laboratory, the defendant was a relative newcomer to computer
programming;[FN192] it was therefore plausible to assume that the defendant would
not have been capable of writing an advanced non-infringing program.
Subsequent courts have appeared to split on whether to follow the liberal
approach of Whelan. Some courts have found, on an analysis of the programs before
them, that the copying program did not infringe because it took only the idea and not
the expression of the program.[FN193] For example, in Plains Cotton Cooperative
Association v. Goodpasture Computer Service, Inc.,[FN194] the United States Court
of Appeals for the Fifth Circuit declined to embrace Whelan, instead deferring to
Judge Higginbotham's opinion in the Synercom case.[FN195] The defendants in
Plains Cotton had "presented evidence [p. 363] that many of the similarities between
the GEMS and Telcot programs are dictated by the externalities of the cotton market.
. . The record supports the inference that market factors play a significant role in
determining the sequence and organization of cotton marketing software. . . ."[FN196]
The court of appeals declined "to hold that those patterns cannot constitute 'ideas' in a
computer context."[FN197] As noted by the editors of the Patent, Trademark &
Copyright Journal, the reasoning of the court is not inconsistent with Whelan; rather,
the case seems to turn upon a factual finding about the extent of the copying.[FN198]
[p. 364] On the other hand, some district courts have clearly embraced the Whelan
reasoning.[FN199] At least one district court case has even extended it. In
Broderbund Software, Inc. v. Unison World, Inc.,[FN200] [p. 365] a California
district court specifically applied the broad Whelan idea-expression test and rejected
the narrow Synercom test by which only literal copying represented
infringement.[FN201] After finding another computer program that accomplished a
similar result using different screen formats, the court concluded that screen formats
represented expression and not idea.[FN202] As in Apple Computer and Whelan, if
[p. 366] there were different ways of accomplishing the same result—here, by the
existence of one other version—then the screen formats were protectable as
expression and not idea.[FN203]
3. Application of the Idea-Expression Dichotomy to Computer
Programs
There appears to be some disagreement about the appropriateness of applying
traditional copyright principles, particularly the idea-expression dichotomy, to some
of the new technologies—especially computer programs. One of the major premises
of the Whelan case was that computer programs were subject to general copyright
principles such as the idea-expression dichotomy;[FN204] despite some difficulties in
application, the dichotomy was no more difficult to apply in the context of computer
programs than in other contexts. [FN205]
[p. 367] A much narrower view of the idea-expression dichotomy was advocated
in a recent study published by the Office of Technology Assessment[FN206] (OTA
Report). Although conceding that the 1976 Copyright Act "treats all informationbased products and services the same for purposes of copyrightability,"[FN207] the
OTA Report stated that "[t]he central problem of copyright law's continued
accommodation to new technologies lies in the indiscriminate application of the
doctrine of idea and expression to three fundamentally different categories of works:
works of art, works of fact, and works of function."[FN208] The OTA Report argued
that works of art have been amenable to an analysis of idea and expression under the
abstractions test because the intrinsic value of such works "depends heavily on the
particular expression adopted, . . . [and such works] have always had a fixity and
completeness to them."[FN209] By contrast, "works of function are seldom valued for
their intrinsic or aesthetic qualities,"[FN210] and "electronic technologies permit a
new dynamism that makes [p. 368] proprietary boundaries for many works of art
indistinct, elusive, and subject to constant change."[FN211]
The difficulties of applying the traditional doctrines to computer programs stem
from the "hybrid" nature of such programs. Computer programs, according to the
OTA Report, "are hybrid functional works insofar as they employ words and symbols
to implement and control a process."[FN212] Thus, with computer software programs
the difficulty is protecting their descriptive aspect—the symbols used
in the program—without at the same time protecting their functional
aspect—what the symbols do in a computer. Because programs possess
both a symbolic and functional nature, copyright may either protect too
little if the copyrightable expression is limited to the literal program
code, or too much if the copyrightable expression extends beyond the
program code.[FN213]
The OTA Report reviewed some of the cases indicating that courts are choosing the
broad definition of expression to include "the logic, design, structure, performance or
even the output of the computer program."[FN214] The OTA Report concluded by
observing:
In theory, none of these rulings is permitted under traditional copyright
principles. This is not because the courts have misinterpreted copyright
law, but because copyright law cannot be successfully applied to
computer programs. Unlike artistic or factual works, which are subject
to the "abstractions" test between idea and expression, copyright in
computer software is an either/or choice. . . . The "clear distinction"
made in Baker v. Selden, "between the book, as such, and the art it is
intended to illustrate," collapses in a computer program, because the
program embodies both "the book" and "the art."[FN215]
The idea-expression dichotomy is viewed logically as a limitation on the
copyrightability of works.[FN216] If one did away with the dichotomy, then one
might expect that more, not fewer, works would be amenable to protection under
copyright law.[FN217] How is it, then, that [p. 369] the OTA Report, after criticizing
the applicability of the idea-expression dichotomy to computer programs, seemed to
conclude that the protection of computer programs is thereby made less
appropriate?[FN218] The Report stated, after all, that it is "wrong" to include "the
logic, design, structure, performance or even the output" of a program within the
protection of the copyright law.[FN219]
Apparently, the OTA Report viewed the abstractions test of the idea-expression
dichotomy not as a limitation on the protectability of works, but as an accommodative
principle that allows the copyright law to be expanded to new fields.[FN220] The
abstractions test, according to the OTA Report, does not accommodate very well in
the case of functional works.[FN221] Therefore, there is not enough flexibility
remaining in the clear distinction test of Baker v. Selden,[FN222] and the expansive
protection road that Judge Hand was willing to follow for other works where the
accommodative principle was available[FN223] should not be followed for computer
programs.
Yet, what kind of accommodative principle is the abstractions test if it does not
help to resolve the difficult cases as well as the straightforward ones? One might have
expected that in the face of new technologies, the idea-expression dichotomy and the
abstractions test would be embraced, not rejected, as an accommodative
principle.[FN224] Perhaps the OTA Report's emphasis upon the role of the
abstractions test in resolving the idea-expression dichotomy for works of art
overstates the usefulness of that principle even in that context.[FN225] If the
traditional principles do not work in the case of [p. 370] computer programs, perhaps
it is not because computer programs raise truly unique issues but rather because the
principles never worked well in any of the contexts in which they were proposed.
In questioning the applicability of the abstractions test to computer programs, and
in drawing the distinction between the application of the idea-expression dichotomy
for works of art and works of function, the OTA Report seems to shift its emphasis
away from the idea-expression dichotomy in isolation, and toward the works of utility
doctrine.[FN226] In another context, the OTA Report considered the possibly
accommodating application of the "fair use" doctrine in resolving some of the tough
computer copyright issues.[FN227] If further accommodation of competing interests
is needed, then other, perhaps legislative accommodations, may be needed.[FN228]
For example, copyright protection in computer programs could be granted for only a
very short time—say, five years. Or protection might be granted while imposing a
compulsory licensing scheme to allow for commercial uses of such copyrighted
works.
In any event, as conceded by the OTA Report, there is a whole range of doctrines
and legislative responses that might help to resolve the difficult issues raised by the
copyrightability of computer programs. The idea-expression dichotomy was never a
good tool for deciding these issues, and any suggestion that this doctrine barred
computer programs from being copyrighted "is now dormant."[FN229] If such a
conclusion is reached for computer programs, then perhaps a similar verdict should be
rendered for the idea-expression doctrine generally.
III. Analysis and Critique of the Idea-Expression Dichotomy
Earlier critiques of the idea-expression dichotomy have focused upon the lack of
an adequate definition of what constitutes an idea, [p. 371] and have suggested that
different judges have in mind different concepts in applying the doctrine;[FN230] or
have argued that the doctrine simply does not reflect the marketplace that in fact pays
handsomely for ideas.[FN231] These other critiques provide a full development of the
definitional and market problems.
A. Excluding Categories of Works
The problem with the idea-expression dichotomy goes beyond the typical
difficulties in defining the terms. To explain this criticism, it is first necessary to
review some basics of copyright. As developed in subsection (1) below, it is quite
clear that copyright protects against exact copying, as well as against other particular
uses of works listed in the exclusive rights of copyright. The idea-expression
dichotomy was developed to apply to, and indeed only makes sense when applied to,
persons who infringe by making nonliteral copies of copyrighted works. Yet, the
dichotomy presumably forecloses certain works or certain categories of work from
federal copyright law entirely—excluding them not only from protection against
nonliteral copying, but also from protection against exact copying. Subsection (2)
presents a scheme that would grant federal protection for most types of works,
although the scope of protection might vary depending upon the category of work
involved. Almost all works otherwise eligible for federal copyright, including some
works that might be described as "ideas," should be protected against exact copying.
What is appropriate in the context of the idea-expression dichotomy, is also
appropriate as a general premise: that is, a decrease in emphasis upon rules of law
(such as that of idea-expression) that purport to foreclose entire categories of works
from copyright protection; and an increase in emphasis upon rules (such as that of
substantial similarity) that focus both upon the facts of particular cases, and upon a
comparison of two particular works.[FN232]
[p. 372] 1. Protection Against Exact Copying
The federal copyright law[FN233] provides five exclusive rights in a copyrighted
work: the rights (1) to reproduce the work, (2) to make derivative works of it, (3) to
distribute it, (4) to perform it publicly, or (5) to display it publicly.[FN234] The first
right, to "reproduce the copyrighted work in copies or phonorecords,"[FN235] clearly
covers the "pirating" or exact duplication of copyrighted works (for example, by
technological means such as photocopying, tape recording, or video
recording[FN236]). Although the term "reproduce" is not defined in the act, the term
"copies" is. Copies are "material objects . . . from which the work can be perceived,
reproduced, or otherwise communicated, either directly or with the aid of a machine
or device."[FN237] Thus, what we might call "exact copying" of copyrighted [p. 373]
works is clearly prohibited by the act, unless the case is covered by an exemption or
limitation in the other sections of the act.[FN238]
[p. 374] Additionally, it is an infringement of copyright for another person to
make a nonliteral copy of a protected work, such as by incorporating it into a new and
independent work using a portion that is "substantially similar"[FN239] to the
copyrighted work.[FN240] As copyright expanded to cover nonliteral
infringement,[FN241] major principles of copyright law were required to determine
which nonliteral copies should constitute infringements and which should not. For
example, the doctrine of substantial similarity, which is used to determine if a person
has "copied" a work, really has application only in the case of a nonliteral copy: if
someone copies a work exactly, then we need not look to the substantiality of the
copying, since it is identical.[FN242] One of the subtests of substantial similarity—
proof of access—is hardly likely to be a problem if the copying is so exact as almost
to preclude the possibility of independent creation.[FN243] The [p. 375] doctrine of
fair use might arguably have more applicability in the case of nonliteral copying than
in the case of exact copying, in which the contribution to society is arguably
less.[FN244] The idea-expression dichotomy, while relevant in weighing the
infringing nature of a nonliteral copy, would not be particularly helpful in the case of
an exact copy—by definition an exact copy is copied literally, and thus clearly
includes expression as well as idea.[FN245]
In short, many of the traditional tests of copyright infringement—substantial
similarity, access, idea-expression dichotomy, and fair use—seem to have been
developed precisely to handle the case of the nonliteral copier. The case against the
person making an exact copy on most of these principles is almost a per se case, as
compared to that of the person making the nonliteral copy, for whom a rule of
reason—and a case by case determination of liability—may be more appropriate.
2. Proposed Federal Scheme of Protection
There may be nothing wrong in principle with excluding a category of works
from protection under the federal act. Yet, if a work is excluded from federal
copyright based upon its general character—as lacking sufficient originality, not
being fixed in a tangible medium [p. 376] of expression, or, for present purposes,
because it constitutes an unprotectable idea—then the work presumably is ineligible
for federal protection against exact copying as well as against nonliteral copying. To
the extent that the exclusion is based upon a rationale (such as the idea-expression
dichotomy) that is directed primarily to the problems of nonliteral copying, it is
unfortunate that protection against exact copying is sacrificed as well. The problem is
not just a recent one,[FN246] although it is particularly exacerbated now that the
technology for exact copying—for example, audio and video tape recorders,
photocopying machines, and computers—has come within the price range of the
typical consumer.
There are three possible responses to such a categorical approach to exclusion of
works from the federal copyright law. First, an observer might conclude that lack of
protection is tolerable or desirable, and that the pre-emptive effect of the federal law
logically should preclude the states from extending protection to fill the gap. Second,
one might conclude that the federal copyright law does not prohibit the states from
granting protection against "misappropriation" of a work that is otherwise ineligible
for federal protection. Third, one might try to construe the federal copyright act (or
amend it if necessary) to include the category of work involved, but limit the scope of
protection if necessary to cover only (or at least) exact copying. Among these
approaches, I recommend the third, for the following reasons.
The first approach—disqualification from all protection—seems inappropriate
because it withdraws protection on too broad a scale: the penalty is too great when
based upon a principle that seems addressed primarily to the case of the nonliteral
copier. The potential harm that results from exact copying, which has the greatest
likelihood of displacing an existing market for a work, is much greater than the
potential harm from nonliteral copying. Exact copying would seem to be the type of
activity least deserving of any first amendment or "marketplace of idea"
claims,[FN247] since it contributes nothing to the stock of ideas in the marketplace,
but only appropriates the profit or advantage from one party in favor of another.
Although there may be legitimate fair-use contexts that would protect even exact
copying,[FN248] such contexts require an examination of all relevant [p. 377] fair use
factors—the "nature of the work" as idea should not alone be determinative.
The second approach, which would preclude federal relief of ideas, but allow the
states to grant limited protection under a misappropriation theory, has a surface
appeal. Such an approach, however, also has serious conceptual drawbacks. To
understand the problem, it is necessary to review the cases that attempted to preserve
state record piracy laws against preemption for sound recordings made prior to
adoption of the federal Sound Recording Amendment of 1971.[FN249]
Some of the lower courts, in refusing to follow the broad preemptive reach of the
Supreme Court's Sears-Compco cases[FN250] (primarily in the context of state record
piracy laws), raised arguments in favor of state misappropriation laws and against
federal preemption of the field.[FN251] In particular, some lower courts held that the
Sears-Compco cases prevented the states from passing laws involving the copying of
copyrighted works, but not their "misappropriation" of such works.[FN252] In this
sense, misappropriation meant the same [p. 378] thing as the "exact" copying
discussed previously—exact duplication without the independent creation of a new
work. Unfortunately, these cases represented a fundamental misunderstanding of
federal copyright law.[FN253] They implied, curiously, that federal copyright law
protected against nonliteral copying, but not against misappropriation, or exact
copying: if federal copyright covered both types of copying, there would be no basis
for distinguishing between them for preemption purposes. Yet, the protection under
federal copyright law for those works that are within the scope of federal copyright
law protects as clearly against exact copying as against nonliteral copying.[FN254]
The approach illustrated by these record piracy cases, although typical of judicial
attempts to expand state coverage where federal protection seems lacking,[FN255]
presumably would not work in the case of the idea-expression dichotomy. Because
ideas are specifically dealt with in the federal copyright law by way of exclusion in
section 102(b), they are not, arguably, an appropriate subject for state protection
based upon an "omitted category" approach under section [p. 379] 301(b)(1).[FN256]
The states would have to base protection upon the other prong of section 301, which
provides that preemption does not apply to "activities violating legal or equitable
rights that are not equivalent to any of the exclusive rights within the general scope of
copyright as specified by section 106."[FN257] Indeed, states traditionally have
protected ideas, in appropriate situations, under theories of contract, implied contract,
trade secret, or related doctrines.[FN258]
One of the problems with judicial attempts to fill the gaps in federal protection is
that one of the purposes of a unified federal copyright law—to replace the old "dual
system" of common law and federal statutory copyright[FN259]—is strained, if not
defeated. The strain is eliminated if we adopt the third approach suggested above—
construction of the federal act to include ideas, but limited, if necessary, in the scope
of protection granted. Under this approach, at least a minimal role—protection against
exact copying—can be played by the federal copyright law even for categories of
works, such as ideas, that for one reason or another are excluded from the broadest
federal protection.[FN260] The federal copyright law should be structured or
interpreted to include the broadest range of categories of works, including works that
may appear to be ideas;[FN261] if limitations in rights are appropriate,[FN262] they
should be reflected in the federal act as limitations upon the scope of protection.
[p. 380] This approach parallels other suggestions and developments that recently
have taken place in the field of copyright and related fields of intellectual property
protection. Professor Gorman proposed, in the context of recognizing copyright in
fact works,[FN263] that the scope of copyright might be "thin," but that "it ought not .
. . be treated as nonexistent."[FN264] He concluded that "[t]he better approach [for
legal and business forms], as with maps and directories, would be to grant copyright
for forms in the generality of cases, so as to provide an incentive for their creation and
to permit a finding of infringement for some of the more 'piratical' takings."[FN265]
In the context of character protection, Professor Kurtz made a similar
suggestion.[FN266] She concluded:
By focusing on the copyrightability of a character, courts have blurred
the distinction between the concepts of infringement and
copyrightability. This focus shifts the court's attention from comparing
the characters in the allegedly infringed and infringing work, to
analyzing whether a character is sufficiently distinctive or welldeveloped to deserve protection. This requires judges to become
literary and artistic critics, a dangerous undertaking for those whose
education and experience are in the law. . . .
.
.
.
.
Much of the confusion and lack of clarity in the standards used to
protect fictional characters under copyright can be avoided by
recognizing that the "copyrightability" of a fictional character, whether
literary, pictorial or audio-visual, is not the issue.[FN267]
In trademark law, there has been a slight trend away from foreclosure of federal
protection for package designs, distinctive [p. 381] names for ingredients, or location
of labels on garments, and toward an analysis of the particular facts of each case,
examining whether the asserted basis for trademark protection has in fact achieved
secondary meaning.[FN268] A similar trend can perhaps be seen in the preemption
field in the movement from the Sears-Compco[FN269] cases (which in 1964
foreclosed state protection of works that were ineligible for federal patent or copyright
protection) to Goldstein v. California[FN270] (which allowed for state protection of
categories left unattended by federal law[FN271]). Although the result was a
categorical approach to the scope of federal law, it nonetheless represented a
liberalizing trend away from a blanket foreclosure of state relief and toward a more ad
hoc approach.
In the context of computer programs, the proposal parallels to some extent a
development that has occurred in the patentability of computer programs. Early (for
computers) Supreme Court cases had held that computer programs were not
patentable as such.[FN272] The cases raised questions whether computer programs
could ever be a proper subject for patents. The questions were resolved in the United
States Supreme Court case of Diamond v. Diehr,[FN273] in which the Court held that
a process for molding raw, uncured synthetic rubber into cured products was not
ineligible for patent protection merely because a computer program was involved as a
key step in the invention. As contemplated in Diehr, the issue in computer patent
cases is not whether the process including a computer calculation can be patented, but
whether the other tests of patentability and infringement have been met.[FN274]
Extending upon the case of Diamond v. Chakrabarty,[FN275] the Patent Office
recently has been granting patents even in computer programs that have no
"postsolution activity" as contemplated in Diehr.[FN276] Chakrabarty had allowed
patent protection for a human-made micro-organism on the premise that "the patentee
has produced [p. 382] a new bacterium with markedly different characteristics from
any found in nature and one having the potential for significant utility. His discovery
is not nature's handiwork, but his own; accordingly it is patentable subject matter. . .
."[FN277]
By similar reasoning, the Patent Office has granted patents for several complex
mathematical equations that require the number-crunching abilities of a
computer.[FN278] For example, a patent was granted to AT&T in 1988 for a
"pioneering algorithm used by large organizations to decide the best way to allocate
resources."[FN279]
Thus, the expansion of copyright law to cover computer programs, and perhaps
even the "algorithms" embodied in them, corresponds to a similar development that
has occurred in the field of patents, and raises the same basic question: whether the
traditional prohibition of copyright or patent protection for "ideas" is really necessary,
or ever was.
B. Merger Theory
Although there has been considerable difficulty in defining and applying the ideaexpression dichotomy in general, there has been even more than the usual difficulty in
applying it within a particular setting—where idea and expression are said to merge,
or become a "unity." In the language of Baker, "Where the art [that the book] teaches
cannot be used without employing the methods and diagrams used to illustrate the
book, or such as are similar to them, such methods and diagrams are to be considered
as necessary incidents to the art, and given therewith to the public."[FN280]
Whereas the focus of the idea-expression dichotomy is upon whether the work
constitutes idea or expression, the merger doctrine focuses upon whether the work is
capable of alternative expressions. [p. 383] Thus, the doctrine requires reference not
only to a given work, or to two given works, but to a whole range of works that might
use the idea of the original work. The doctrine seems to impose upon the copyright
claimant the task of demonstrating that the idea of the work is capable of other
noninfringing expressions, which will then presumably be compared to the
defendant's work in determining whether the particular taking will be allowed.
Professor Nimmer has summarily concluded that, unlike the situation in the
Baker case, the problem will never arise because "it is factually erroneous to conclude
that there is any system or method which can be performed by the use of only one
particular form of written expression."[FN281] This overly simplistic dismissal of the
entire problem is factually questionable.[FN282] It has the virtue of avoiding the
characterization of when an expression has merged with its idea—a characterization
that is bound to be abstract if attempted, and fairly outcome determinative.
From one perspective, the merger theory represents a harsh application of the
idea-expression dichotomy. The idea-expression dichotomy will be sufficient to
handle the situation in which only an idea has been taken. If the merger theory is
invoked, it is presumably because the expression has been copied, but it is necessary
to excuse the taking because there is no other way to allow the use of the
idea.[FN283] Since it is copying of expression that will be excused, the consequences
to the copyright owner will be fairly great.[FN284]
From another perspective, the merger doctrine is not as much of a problem as the
idea-expression dichotomy generally. The theory, after all, applies in a smaller
number of cases than the idea-expression dichotomy;[FN285] it seems to focus to
some extent upon an allegedly infringing work (or a range of potentially infringing
works) instead of the copyrighted work in isolation. Both the substantial similarity of
two works and the context of the works are considered, thus effectively testing
whether the idea can be separated from its expression.[FN286]
[p. 384] On balance, the merger doctrine is no clearer than the idea-expression
dichotomy, but it is simply a "somewhat metaphysical issue . . . whether particular
ideas and expressions have merged."[FN287] As with the idea-expression dichotomy
generally, any apparent advantages of the merger analysis may be more easily
achieved by reference to other principles,[FN288] such as substantial
similarity,[FN289] [p. 385] originality,[FN290] the works of utility doctrine,[FN291]
or, if necessary in a particular situation, the fair use doctrine.[FN292] And even the
merger theory, [p. 386] like the idea-expression dichotomy generally,[FN293] might
be viewed more appropriately at the infringement stage than at the copyrightability
stage.[FN294]
Some of the merger cases are so steeped in other theories that they may be
referred to as false merger cases. Most notable are the cases that do not involve works
which are capable of only one or only a few expressions. For example, some of the
cases which have held that scenes a faire (such as stock treatments of stock ideas) are
not copyrightable based their reasoning upon the theory that the expression of stock
scenes is merged with their idea.[FN295] A better analysis would be that the stock
treatments are not original, or that the second treatment does not copy the first
because it is based upon the generalized treatment that is in the public domain. In
these cases, the merger of expression with idea is based upon the failure of the author
to add anything original to the stock idea, rather than upon the impossibility of
expressing the stock idea in a new form.[FN296]
[p. 387] Similarly, the leading case of Herbert Rosenthal Jewelry Corporation
v. Kalpakian[FN297] is a false merger case. The court stated:
The difficulty . . . is that on this record the "idea" and its "expression"
appear to be indistinguishable. . . .
When the "idea" and its "expression" are thus inseparable, copying
the "expression" will not be barred, since protecting the "expression" in
such circumstances would confer a monopoly of the "idea" upon the
copyright owner free of the conditions and limitations imposed by the
patent law.[FN298]
However, the jeweled pins were capable of precise expression. The problem in
Kalpakian was that the plaintiff stated his claim too broadly, so that on the record the
distinction between idea and expression was not clear. The court noted:
Although plaintiff's counsel asserted that the originality of plaintiff's
bee pin lay in a particular arrangement of jewels on the top of the pin,
the elements of this arrangement were never identified. . . . Plaintiff's
counsel, repeatedly pressed by the district judge, was unable to suggest
how jewels might be placed on the back of a pin in the shape of a bee
without infringing plaintiff's copyright. He eventually conceded, "not
being a jeweler, I can't conceive of how he might rearrange the design
so it is dissimilar."[FN299]
Many of the appellate cases that analyze the merger doctrine have been confined
to a few specific factual settings,[FN300] and usually have affirmed the
copyrightability of the given work, notwithstanding any theoretical merger problems.
Indeed, the merger doctrine, much like the idea-expression dichotomy, seems to have
been used as much to expand copyright protection into new areas as to foreclose
categories of works from protection.[FN301] In a series of cases dealing with the
copyrightability of computer programs, the courts generally have held that computer
programs are not denied copyright protection on a merger theory so long as the ideas
are expressible in other particular forms.[FN302]
Some of the cases involving forms have suggested that the merger rationale of
Baker is of limited applicability. For example, in Continental [p. 388] Casualty
Company v. Beardsley,[FN303] the United States Court of Appeals for the Second
Circuit found that language constituting protectable expression was inseparably
merged into the blanket bond forms in which Beardsley claimed a copyright.[FN304]
The court, purporting to distinguish the Baker case, held that the copyright was not
thereby lost:
In Baker v. Selden . . . the subject-matter was such that the explanation
of the system could be treated as separable from account books
prepared and arranged for the practice of the system. But not so here.
For inseparably included in Beardsley's bonds and affidavits, which
constitute the means for the practice of his Plan, is language
explanatory of the Plan. Consequently, the holding of Baker v. Selden
is not applicable here. And since the Constitution and Copyright Act
read directly upon all the forms here involved, we hold them to be
copyrightable.[FN305]
The court went on to find that the scope of protection of insurance and similar
forms should be narrowly construed, invoking a "stiff standard for proof of
infringement."[FN306] Citing cases that appeared to be based upon the ideaexpression dichotomy, the court in Beardsley concluded that courts should not
prohibit similarity of language that "would have the effect of giving the copyright
owner a monopoly on his idea—which the cases uniformly deny to copyright
owners."[FN307] However, the court in Beardsley concluded that the cases
"uniformly are decided by holdings of non-infringement and leave undecided the
copyrightability point."[FN308] In other words, in the [p. 389] context of merger of
idea and expression in insurance and similar forms, the courts do not invoke a merger
theory to prohibit all protection, as was suggested by the merger language of Baker.
Rather, the courts generally allow copyright protection in the merged work, and leave
to the infringement stage the accommodation of any limitations that might be
necessary to prevent overreaching. The court in Beardsley found that "the proper
standard of infringement is one which will protect as far as possible the copyrighted
language and yet allow free use of the thought beneath the language."[FN309]
[p. 390] Similarly, in Edwin K. Williams & Company v. Williams,[FN310] the
court held that instruction books together with account forms were copyrightable,
because "the instructions and the blank forms constituted an integrated work [and
were thus] entitled to copyright protection."[FN311] In other words, the merger of
idea and expression did not undermine the copyrightability of the work.[FN312]
[p. 391] The merger doctrine sometimes may be invoked simply because it is
difficult in a given instance to distinguish between an idea and its expression.[FN313]
Using the doctrine to handle difficult cases, however, creates a bias within the ideaexpression dichotomy against copyright protection.
Even assuming that there is ever such a thing as a true merger or unity of idea and
expression, it is not inevitable that copyright protection of the expression must give
way to assure the presumed freedom of the idea. Although ideas should not be per se
protected under copyright law, copyrightability need not be forfeited just because the
expression incidentally tends to create a potential monopoly in the use of an idea.
The merger theory is said to balance the interests of the copyright owner in
controlling or profiting from the work against the interests of society in gaining access
to the work.[FN314] But the forfeiture of otherwise valid expressions that merge with
ideas seems to suppose that the interest of the public in free access is more important
than the interest of the author, so that if the two cannot be accommodated by
separating idea (left to the public) from expression (left to the author), the author's
interest must yield.[FN315] This presumed hierarchy of interests, however, is not
reflected in the law of copyright generally. Aside from the merger of idea and
expression, copyright law does not provide that an author's rights must yield in order
to protect society's freedom of access to works that incidentally may be impeded by
the author's rights.
[p. 392] Although limitations[FN316] and compulsory licenses[FN317]exist, as
well as occasional liberal applications of the fair use doctrine that protect the user's
access in particular circumstances,[FN318] other situations preclude exact copying of
a work—even if exact copying is necessary in order to implement the ideas (using
idea-expression language) or to use the work of utility. Of direct relevance are cases
dealing with the scope of protection for architectural works. It is axiomatic, since
Baker, that copyright in architectural plans may protect the architect against
duplication of the plans themselves; but the copyright in the plans does not prevent
others from constructing the building described in the plans.[FN319] It is next to
impossible, however, to construct a building without making copies of the plans for
use by the construction crews. If a copyright in building plans is not to create a
monopoly in the right to construct the building depicted, it therefore would be
necessary (if the merger theory of Baker were followed) to hold that a builder who is
entitled to construct the building would have a right to make copies of the plans in
order to make use of the ideas disclosed in the drawings. Yet, many courts that have
faced the issue have held that the copying of copyrighted plans will not be allowed,
even if the plans are necessary for construction.[FN320] Such a conclusion implicitly
rejects the merger argument contained in Baker.[FN321]
Other examples support the same result. The owner of a rare copy of a movie that
has gone into the public domain may effectively monopolize the distribution of copies
of that movie, even though the [p. 393] owner of the copy clearly has no exclusive
rights in the movie under the copyright law. This is accomplished by retaining
physical control over the only sources for making new copies, perhaps supplementing
their arrangement by contracting with others to prevent the making of further
copies.[FN322] Likewise, the owner of the only physical copy of a painting may
control the rights to make and distribute copies of the work, even if the painting as
such has gone into the public domain.[FN323] Thus, even though an idea is "free as
the air" because no one has exclusive rights in it, it does not follow that a copier is
free to take another's expression of that idea, even if that particular expression is
absolutely essential to the rendering of the idea. Consider the case of Burrow-Giles
Lithographic Company v. Sarong,[FN324] in which photographs were held to be
copyrightable.[FN325] Others are free to find Oscar Wilde and pose him however
they may wish; but if he is dead, or aged, or in jail, or simply no longer looks like
Sarony's photograph of him, there may be a substantial impediment to their ability to
exercise their presumed rights to make their own photograph of Wilde.[FN326] Such
impediments would not require that [p. 394] Sarony lose his copyright based upon a
merger theory, simply because his copyrighted photograph is now the only means of
reproducing a likeness of Wilde.
For unpublished works as well as published works, copyright generally expires
fifty years after the death of the author.[FN327] If the work remains unpublished at
that time, then there is no principle of law that requires the owner of the work (which
is then in the public domain) to forfeit possession of remaining copies, or to permit
copying of the "expression" of the work in order to allow the idea to be made
available to the public.[FN328]
If a work is published, it is possible for the copyright proprietor, to some extent,
to block the further dissemination of a copyrighted work by exercising whatever
exclusive rights are available under the copyright—even if there is a strong public
interest in the work, and even if the copyright owner's demands or purposes in
withholding dissemination are frivolous or extravagant.[FN329] Therefore, copyright
[p. 395] law generally allows the exclusive rights of a copyright owner incidentally to
affect the presumed rights of users to have access to the work. The merger theory,
based upon the contrary assumption, is not consistent with these other areas of
copyright law. Aside from the copyright law itself, the major source of law that might
mandate a forfeiture of otherwise valid exclusive rights of copyright is the first
amendment to the United States Constitution.
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* Professor of Law, New York Law School. B.A., 1971, Yale University; J.D., 1974,
Columbia University. The author wishes to thank Ralph Brown, Simeon E. Baldwin
Professor Emeritus at Yale Law School, and Visiting Distinguished Professor at New
York Law School, for his extensive criticism of an early draft of this Article, which
has been greatly improved as a result of his comments. I suspect that he will still
disagree with my conclusions.
[FN1] The definition(s) of the idea-expression dichotomy should become apparent
during the course of discussion. A starting point is the basic statement contained on
the first page of text of the Report of the Register of Copyrights on the General
Revision of the United States Copyright Law (1961), reprinted in 3 G. Grossman,
Omnibus Copyright Revision Legislative History 3 (1976) [hereinafter 3 Omnibus
Copyright Revision Legislative History], which formally started the 15-year process
of recodification of the federal copyright laws. The Report stated:
Copyright does not preclude others from using the ideas or
information revealed by the author's work. It pertains to the literary,
musical, graphic, or artistic form in which the author expresses
intellectual concepts. It enables him to prevent others from reproducing
his individual expression without his consent. But anyone is free to
create his own expression of the same concepts, or to make practical
use of them, as long as he does not copy the author's form of
expression.
Id.
[FN2] Copyright Act of 1976, 17 U.S.C. §102(b) (1982).
[FN3] A classic and straightforward argument was made by Charles Collins in 1928
that the idea-expression dichotomy was explainable only by reference to obsolete
copyright statutes, and that the doctrine should simply be abandoned. Collins, Some
Obsolescent Doctrines of the Law of Copyright, 1 S. Cal. L. Rev. 127 (1928). See
also Libott, Round the Prickly Pear: The Idea-Expression Fallacy in a Mass
Communications World, 14 UCLA L. Rev. 735 (1967) (a revised version of a
National Nathan Burkan Award winner, published in 16 Copyright L. Symp. 30
(1968)). In almost lyrical style, Mr. Libott took on the dichotomy directly and
concluded that it "is a semantic and historic fallacy without meaningful application to
the creative process, and that it results at best in judicial anomaly and at worst in
substantial injustice." Id. at 736. See also Umbreit, A Consideration of Copyright, 87
U. Pa. L. Rev. 932 (1939); Note, Copyright Protection for Mass-Produced,
Commercial Products: A Review of the Developments Following Mazer v. Stein, 38
U. Chi. L. Rev. 807 (1971).
In a similar vein, Professor Kaplan suggested in 1966 that the expansion of
copyright to include the exclusive rights to translate and dramatize copyrighted works
was inconsistent with the idea-expression dichotomy:
In 1870 the statute was amended to allow authors to reserve the
right not only to translate their works . . . but also to dramatize them.
The latter enlargement of the monopoly to cover the conversion of a
work from one to another artistic medium, taken together with the Daly
decision, put the question whether any line could really be held, even
as to imaginative works, between "idea," long supposed to be outside
copyright protection, and "form," assumed to be the only thing within
it. Was a copyrighted work now to be protected according to its
"principle," as McLean thought it should be? The question will recur.
B. Kaplan, An Unhurried View of Copyright 32 (1966) (footnotes omitted). See also
infra notes 90, 100.
Professor Ralph Brown, Simeon E. Baldwin Professor Emeritus at Yale Law
School, and Visiting Distinguished Professor at New York Law School, has made the
best case in favor of the idea-expression dichotomy. See, e.g., Brown, Eligibility for
Copyright Protection: A Search for Principled Standards, 70 Minn. L. Rev. 579
(1985).
[FN4] See, e.g., infra text accompanying notes 411-42 (discussing "false" ideaexpression cases).
[FN5] At least in close cases, the classification that the court selects may simply state
the result reached rather than the reason for it. See Herbert Rosenthal Jewelry Corp. v.
Kalpakian, 446 F.2d 738, 742 (9th Cir.1971).
[FN6] See infra notes 80-110 and accompanying text.
[FN7] See infra note 81.
[FN8] Cf. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2dCir. 1930)
(observing that decisions on the scope of copyright protection are necessarily
imprecise, and "the decisions cannot help much in a new case"), cert. denied, 282 U.S.
902 (1931).
[FN9] Nichols, 45 F.2d at 121. By his test, Hand repudiated some of the earlier, more
narrow idea-expression cases. See id.
[FN10] See infra notes 179-203 and accompanying text.
[FN11] Id.
[FN12] 101 U.S. 99 (1880). Mr. Libott, following Professor Nimmer's lead, traced the
origins to Seneca in the first century A.D., and the British origins to the famous cases
of Millar v. Taylor, 98 Eng. Rep. 201, 229 (K.B. 1769) (Yates, J., dissenting) and
Donaldson v. Beckett, 1 Eng. Rep.837 (H.L. 1774). See Libbott, supra note 3; see also
B. Kaplan, supra note 3, at 9-25 (providing an excellent summary of the British law).
I use American cases as my starting point, although I make tangential reference to
British cases where appropriate.
[FN13] Cf. Cardozo's classic defense of the common-law doctrine that a landlord's
covenant to repair does not create tort liability in the landlord: "The doctrine, wise or
unwise in its origin, has worked itself by common acquiescence into the tissues of our
law. It is too deeply imbedded to be superseded or ignored." Cullings v. Goetz, 256
N.Y. 287, 291, 176 N.E.397, 398 (1931).
[FN14] Charles Selden was the testator of the complainant in the case. Baker, 101
U.S. at 99.
[FN15] Id. at 100. The book was entitled "Selden's Condensed Ledger, or
Bookkeeping Simplified." Id.
[FN16] Id.
[FN17] Id.
[FN18] Id. at 101.
[FN19] Baker, 101 U.S. at 104.
[FN20] Id. at 102.
[FN21] For example, a book on medicines or perspective would create no rights in the
author to the use of the disclosed art.
[FN22] The Court stated:
Now, whilst no one has a right to print or publish his book, or any
material part thereof, as a book intended to convey instruction in the
art, any person may practise and use the art itself which he has
described and illustrated therein. The use of the art is a totally different
thing from a publication of the book explaining it.
Baker, 101 U.S. at 104. The Court may have been influenced by the differences in the
wording of the copyright act and the patent act, the latter of which covers the
exclusive rights to "make, sell, and use" the work. Id. Cf. 35 U.S.C. §271 (1982).
[FN23] See, e.g., 1 M. Nimmer, Nimmer on Copyright §2.18[C], at2-202 (1988).
Professor Nimmer argued that the Supreme Court in Mazer v. Stein, 347 U.S. 201
(1954), interpreted the Baker case narrowly, and "[b]y implication, at least . . .
suggests that the Baker v. Selden distinction between copying for use and copying for
explanation was a dictum which will no longer be followed." 1 M. Nimmer, supra,
§2.18[D], at 2-206. This conclusion is drawn from the Supreme Court's
characterization in Mazer of the issue in Baker: "Thus, in Baker v. Selden, the Court
held that a copyrighted book on a peculiar system of bookkeeping was not infringed
by a similar book using a similar plan which achieved similar results where the
alleged infringer made a different arrangement of the columns and used different
headings . . . ." Mazer, 347 U.S. at 217. The negative implication of this cursory
reference may be exaggerated, although the Court does lean toward the fourth
explanation of the Baker case—namely, the exclusive rights test.
[FN24] 17 U.S.C. §107 (1982).
[FN25] Because the use test requires a look not only at the copyrighted work but at
the copying work as well, it is more directly related to the exclusive rights test
discussed infra at notes 32-36 and accompanying text.
[FN26] For example, in Taylor Instr. Cos. v. Fawley-Brost Co., 139 F.2d 98 (7th Cir.
1943), cert. denied, 321 U.S. 785 (1944), the court found that the form of a chart
which recorded temperature and other information was not a proper subject for
copyright. The court stated:
This brings us to a consideration of whether plaintiff's copyrighted
chart is an object of explanation or an object of use. If the former, it is
subject to copyright protection; if the latter, it is not entitled to such
protection. . . .
....
. . . [T]he chart neither teaches nor explains the use of the art.
Taylor, 139 F.2d at 100. Similarly, in Amberg File & Index Co. v. Shea Smith & Co.,
82 F. 314 (7th Cir. 1897), the court, citing Baker, and holding that a system of
indexing was uncopyrightable, stated the following:
In this case there is no explanation accompanying the indexes. The
arrangement of letters is the thought of the author. These indexes or socalled books are not made for explanation, but for use. They do not
convey information. They are of no possible service until subjected to
use in the filing of letters.
Id. at 315. See also Brown Instr. Co. v. Warner, 161 F.2d 910 (D.C. Cir.) (holding that
charts created by an apparatus for mechanically recording such variables as
temperature and pressure were not copyrightable), cert. denied, 352 U.S. 801 (1947).
These cases dealt with blank forms, and are distinguishable from cases in which a
copyright is claimed in completed forms covering the information as well as, or
instead of, the form in which it is contained. See, e.g., infra note 27.
[FN27] In Harcourt, Brace & World, Inc. v. Graphic Controls Corp., 329 F. Supp. 517
(S.D.N.Y. 1971), the court found that answer sheets to standardized tests were
copyrightable:
[I]t is evident that the answer sheet is not merely a form upon which
information is recorded . . . . The answer sheets here contain a mix of
inherent meaning, of information conveyed, and the utility for the
recording of responses. There is no clear division between the
"explanation" of a system (how to use the answer sheet in taking the
examination) and its "use" (using the answer sheet as a form upon
which responses are recorded) as appeared to the court in Baker v.
Selden . . . .
Id. at 524. The court also suggested the following:
The distinction between "explanation" and "use" in any event is an
awkward one which has not been reviewed by the Supreme Court in
nearly a century. Almost always, as here in the case of answer sheets,
"forms" are a mixture of explanation and use. In light of the clear
mandate of the Copyright Act to register all "writings," and following
Continental Casualty Co. v. Beardsley, the distinction between
explanation and use should be limited to forms which are merely pages
for mechanically recording data.
Id. at 524 n.4 (citation omitted).
[FN28] Baker v. Selden, 101 U.S. 99, 103 (1880). This "merger" theory is
emphasized in some later cases. See infra text accompanying notes 280-329.
[FN29] 1 M. Nimmer, supra note 23, §2.18[C], at 2-202. Professor Nimmer
continued:
The mischief of the doctrine of Baker v. Selden is that by reason of the
false assumption that the underlying "art" will be monopolized unless
the written expression may be copied, the courts permit copying of
such expression when the copier could have obtained use of the "art"
without such copying if he had exercised ingenuity in creating his own
original form of written expression.
Id. §2.18[C], at 2-204.
In Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1251 (3d
Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984), the court of appeals characterized
the merger argument as an "expansive" reading given to the Baker language by
subsequent courts. The court interpreted Mazer v. Stein, 347 U.S. 201 (1954), as
rejecting the Baker doctrine which implies that utilitarian use alone should invalidate
a copyright. Apple Computer, 714 F.2d at 1252. In resolving the issue before them
(i.e., the copyrightability of computer programs representing operating systems), the
court in Apple Computer inquired whether there are other "expressions" that could be
used to implement the ideas of the Apple computer programs. Id. at 1253. The case
was ultimately remanded for a determination of this issue. See infra text
accompanying note 174. The merger doctrine will be discussed in more detail at infra
notes 280-329 and accompanying text.
[FN30] Baker v. Selden, 101 U.S. 99, 107 (1880).
[FN31] See 1 M. Nimmer, supra note 23, §2.18[C], at 2-201.
[FN32] Baker, 101 U.S. at 107.
[FN33] 1 M. Nimmer, supra note 23, §2.18[B], [B][1], at 2-198,-199.
[FN34] Id. §2.18[B], at 2-198.
[FN35] Id. §2.18[C], at 2-203.
[FN36] Id. §2.18[C], at 2-204.
[FN37] Mr. Collins, while not focusing on the Baker case in particular, argued that
the old cases developing the idea-expression dichotomy in the United States and
England were made obsolete by subsequent changes in the applicable statutes.
Collins, supra note 3, at 127.
[FN38] 5 F. Cas. 999 (C.C.S.D.N.Y. 1829) (No. 2872).
[FN39] Id. at 1003.
[FN40] The constitutional phrase is, "The Congress shall have Power. . . [t]o promote
the Progress of Science and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and Discoveries[.]" U.S.
Const. art. 1, §8. Although the word "science" might today have a more restrictive
meaning, the meaning usually attributed to the drafters of the constitution is
knowledge or learning generally, including even fictional and non-scientific works.
See B. Bugbee, Genesis of American Patent and Copyright Law 1-3 (1967); R.
DeWolf, An Outline of Copyright Law 15-16 (1925); Rich, Principles of
Patentability, 28 Geo. Wash. L. Rev. 393 (1960); H.R. Rep. No. 1923, 82d Cong., 2d
Sess. 4 (1952); S. Rep. No. 1979, 82d Cong., 2d Sess. 3 (1952). The interpretation is
not the only possible one. See generally, A. Latman, The Copyright Law 16 (5th ed.
1979).
[FN41] Clayton, 5 F. Cas. at 1003.
[FN42] Id.
[FN43] See infra text accompanying notes 515-20. The protection of price-quotes has,
to be sure, developed into two diverging lines of cases. Some of the cases have
concluded that price quotes can be copyrighted, at least insofar as the work consists of
a compilation of price-quotes and not mere isolated facts. See generally Gorman, Fact
or Fancy? The Implications for Copyright, 29 J. Copyright Soc'y 560 (1982). The
issue is related to the protection of forms (as in the Baker case), facts, and systems.
See infra notes 534-631 and accompanying text. The cases denying protection
generally emphasize lack of originality, the de minimis amount of originality, lack of
substantial similarity, or other factors, and rarely base the decision upon as broad a
statement as that contained in the Clayton case. The only "permanence" currently
required by the copyright act is that the work be fixed in a tangible medium of
expression sufficiently fixed to allow it to be perceived for "a period of more than
transitory duration." 17 U.S.C.A. §101 (West 1977 & Supp. 1989) (defining "fixed").
Even in the case of patents, which have a higher standard of creativity than the
copyright act (requiring novelty and nonobviousness in 35 U.S.C. §§102, 103 (1982)),
"mere" industry can be sufficient to meet the tests. See 35 U.S.C. §103 (1952)
(rejecting the "flash of creative genius" test of Cuno Eng'g Corp. v. Automatic
Devices Corp., 314 U.S. 84 (1941)).
[FN44] 14 L.R.-Eq. 407 (1872).
[FN45] Id. at 414.
[FN46] Id. at 413.
[FN47] 21 Ch. D. 369 (1882). The Maple case is mentioned in the lower court
opinions in Courier Lithographing Co. v. Donaldson Lithographing Co., 104 F. 993
(6th Cir. 1900), rev'd sub. nom. Bleistein v. Donaldson Lithographing Co., 188 U.S.
239 (1903), and J.L. Mott Iron Works v. Clow, 82 F. 316 (7th Cir. 1897). Those
courts distinguished the Maple case on the ground that it was based upon British law
(and thus not subject to the limitations of the United States Constitution), a reasoning
which was ultimately rejected by the Supreme Court. See Courier Lithographing, 104
F. at 995; Clow, 82 F. at 320; Bleistein v. Donaldson Lithographing Co., 188 U.S. 239
(1903).
[FN48] 188 U.S. 239 (1903).
[FN49] It is interesting to note that Justice Holmes saw the copyright law as triggering
the "useful arts" clause of the Constitution rather than the "science" clause, which is
the one more usually attributed to copyright. See supra note 40.
[FN50] 20 L.T.R. 435 (V.C. 1869). The historical importance of Wisden's work on
cricket, for those who care about such matters, was recently brought home to
American television audiences by a series on Masterpiece Theater, in which the
authenticity of an entry in a volume of Wisden played a major role in the plot
development. See Charters and Caldicott (BBC program broadcast in the United
States on Public Broadcasting System stations).
[FN51] The court stated: "On the question whether this is a fit subject for a copyright
I have no doubt whatever that it is not." The court also speculated that "indeed to say
that a particular mode of ruling a book constituted an object for a copyright is
absurd." Id. at 436.
[FN52] Id.
[FN53] Id. Having found a technical but fatal error in the registration, which claimed
copyright in the entire scoring sheet, the judge also focused upon a claimed copyright
in a single line (showing the total of the aggregate of runs scored) which was found to
lack the requisite degree of inventiveness to qualify for protection. Id. at 436.
[FN54] 7 F. Cas. 1113 (C.C.S.D. Ohio 1862) (No. 4095).
[FN55] Id. at 1117.
[FN56] Baker v. Selden, 101 U.S. 99, 107 (1880).
[FN57] Drury, 7 F. Cas. at 1113-14.
[FN58] The Court in Baker explained the difference between patents and copyrights
as if Selden's rights could arise only under patent law. Baker, 101 U.S. at 102. Yet,
even the patent law has not traditionally extended protection to ideas. See Diamond v.
Diehr, 450 U.S. 175 (1981); Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Funk
Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948); Rubber-Tip Pencil
Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874). Theories of perspective or
abstract scientific principles, for example, discussed by the Court in Baker, are no
more capable of patent protection than copyright protection. See Baker, 101 U.S. at
103. Some recent developments have suggested that patent law may protect ideas
more readily than the traditional view allowed. See infra text accompanying notes
275-79.
[FN59] For example, in Eichel v. Marcin, (S.D. N.Y. 1917), reprinted in Copyright
Office, Decisions of the United States Courts Involving Copyright, 1914-1917, Bull.
No. 18, at 551 (1918) [hereinafter 18 Copyright Dec.], the district court found that
defendant's play did not infringe the plaintiff's work. Citing the case of Holmes v.
Hurst, 174 U.S. 82 (1899), the court explained the policy behind the dichotomy as
follows: "If an author by originating a new arrangement and form of expression of
certain ideas or conceptions could withdraw these ideas or conceptions from the stock
of materials to be used by other authors, each copyright would narrow the field of
thought open for development and exploitation." Eichel, 18 Copyright Dec. at 559.
The bulk of the Eichel case is devoted to a detailed description of the play, leading to
the conclusion that what was taken from plaintiff's play (if anything) was only the
stock "ideas." See also Dymow v. Bolton, 11 F.2d 690 (2d Cir. 1926); Ornstein v.
Paramount Prods., Inc., 9 F. Supp. 896 (S.D.N.Y. 1935).
[FN60] For example, in Holmes v. Hurst, 174 U.S. 82 (1899), the Court stated:
The right thus secured by the copyright act is not a right to the use of
certain words, because they are the common property of the human
race, and are as little susceptible of private appropriation as air or
sunlight; nor is it the right to ideas alone, since in the absence of means
of communicating them they are of value to no one but the author. But
the right is to that arrangement of words which the author has selected
to express his ideas.
Id. at 86. The Court then quoted from Lord Mansfield, who observed that the
copyright is "an incorporeal right to print a set of intellectual ideas or modes of
thinking, communicated in a set of words and sentences and modes of expression. It is
equally detached from the manuscript, or any other physical existence whatsoever."
Millar v. Taylor, 98 Eng. Rep. 201 (K.B. 1769), cited in Holmes, 174 U.S. at 86. The
Court summarized by quoting from Jefferys v. Boosey, 10 Eng. Rep. 681 (H.L. 1854):
The subject of property is the order of words in the author's
composition; not the words themselves, they being analogous to the
elements of matter, which are not appropriated unless combined, nor
the ideas expressed by those words, they existing in the mind alone,
which is not capable of appropriation.
Id. at 702, cited in Holmes, 174 U.S. at 86. Although again a paraphrase of the classic
statement, the quote nonetheless states that, to some extent, ideas are at the heart of
copyright, and that the copyright is neither the physical embodiment of a particular
work nor the idea of the work.
[FN61] 3 F. 22, 24 (C.C.S.D.N.Y. 1880).
[FN62] Id. at 24.
[FN63] See 2 M. Nimmer, Nimmer on Copyright §8.01[A] (1988).
[FN64] 23 F. Cas. 201 (C.C.E.D. Pa. 1853) (No. 13,514).
[FN65] Id. at 207. The court there also stated that the copyright "does not consist
merely in the ideas, knowledge or information communicated, but in the same
conceptions clothed in the same words, which make it the same composition." The
court went on to present a broader and more familiar statement of the idea-expression
dichotomy:
[W]hen [the author] has published his book, and given his thoughts,
sentiments, knowledge or discoveries to the world, he can have no
longer an exclusive possession of them. . . . The author's conceptions
have become the common property of his readers, who cannot be
deprived of the use of them, nor of their right to communicate them to
another clothed in their own language, by lecture or by treatise.
Id. at 206.
[FN66] See also Story v. Holcombe, 23 F. Cas. 171 (C.C.D. Ohio 1847) (No. 13,497).
The cases have been legislatively overruled, now that translation rights have been
specifically added to the exclusive rights of copyright. Act of August 18, 1856, ch.
169, 11 Stat. 138 (current version at 17 U.S.C.A. §§101, 106 (West 1977 & Supp.
1989)) (creating the exclusive right to prepare derivative works, and defining
derivative works to include translations). Similarly, the copyright law was expanded
as early as 1870 to include the exclusive right to dramatize a copyrighted work. Act of
July 8, 1870, ch. 230, §86, 16 Stat. 198, 212.
The Stowe case is fully in accord with a long line of British cases that held that
translations and abridgements were not infringements of a copyrighted work. See,
e.g., Newbery's Case, 98 Eng. Rep. 913 (Ch. 1773) (abridgment); Dodsley v.
Kinnersley, 27 Eng. Rep. 270 (Ch. 1761) (abridgment); Gyles v. Wilcox, 26 Eng.
Rep. 489, 27 Eng. Rep. 682 (Ch. 1740) (abridgment); Burnett v. Chetwood, 35 Eng.
Rep.1008 (Ch. 1720) (translation). The British history is traced eloquently in B.
Kaplan, supra note 3, at 9-12. Professor Kaplan even suggested that a reductio ad
absurdum argument in the dissent in Millar v. Taylor, 98 Eng. Rep. 201, 229 (K.B.
1769), and in the case of Donaldson v. Beckett, 1 Eng. Rep. 837 (H.L. 1774), which
overruled Millar, assumed that abridgments and translations could not be protected. B.
Kaplan, supra note 3, at 12-16. Professor Kaplan characterized the translation and
abridgement cases as being perhaps the exceptional ones, which were still followed in
such cases as Stowe, but which by that time were already overtaken by a more liberal
view of copyright generally. See id. at 28-31.
[FN67] 209 U.S. 1 (1908).
[FN68] Id. at 18.
[FN69] Id. at 17.
[FN70] Act of Mar. 4, 1909, ch. 320, 35 Stat. 1075.
[FN71] Id. §1(e), 35 Stat. at 1075-76 (codified as amended at 17 U.S.C. §114 (1982)).
[FN72] Id. §1(e), 35 Stat. at 1075-76 (codified as amended at 17 U.S.C. §115 (1982)).
[FN73] See, e.g., 17 U.S.C. §102(a) (1982), which provides copyright protection in
"works of authorship," an intentionally abstract term. See 17 U.S.C.A. §101 (West
1977 & Supp. 1989).
[FN74] 17 U.S.C.A. §101 (West 1977 & Supp. 1989) (defining "literary works" and
"copies"). Similar principles apply to the other categories of works, and to
"phonorecords," which are, like "copies," the "material object in which sounds . . . are
fixed." Id. (defining "phonorecords").
[FN75] H.R. Rep. No. 1476, 94th Cong., 2d Sess. 1, 53, reprinted in 1976 U.S. Code
Cong. & Admin. News 5659, 5666. The House Report makes clear that it rejected the
logic of White-Smith. The broad language defining fixation in a tangible medium of
expression "is intended to avoid the artificial and largely unjustifiable distinctions,
derived from cases such as White-Smith Publishing Co. v. Apollo Co., 209 U.S. 1
(1908), under which statutory copyrightability in certain cases has been made to
depend upon the form of medium in which the work is fixed." Id. at 53.
[FN76] In describing the expansion that had earlier taken place in the development of
the English law of copyright, Professor Kaplan associated with Lord Mansfield the
view that copyright should be limited to a fairly literal copying: "Recalling the
decisions so far, we can say that the infringement problem was being answered,
seventy-five years after the basic statute, by looking not so much to what the
defendant had taken as to what he had added or contributed." B. Kaplan, supra note 3,
at 17. From the time of Lord Mansfield until 1842, "Lord Mansfield's opinion was
soon brought into question . . . ." Id. at 18. Focus shifted to that portion of the work
that was taken, so that "productive" uses of copyrighted works, such as abridgements
and translations, were looked upon less favorably. Id. At 24. Presumably, the
divergent American cases reflect traces of these two lines of analysis.
[FN77] 299 F. 533 (2d Cir. 1924).
[FN78] Id. at 538.
[FN79] Id. at 535. The court also stated:
Copying is not confined to a literal repetition but includes various
modes in which the matter of any publication may be adopted,
imitated, or transferred with more or less colorable alteration. . . .
We do not think it avoids the infringement of the copyright to take
the substance or idea, and produce it through a different medium, and
picturing in shape and details in sufficient imitation to make it a true
copy of the character thought of by the appellant's employee.
Id.
[FN80] 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931).
[FN81] Nichols, 45 F.2d at 121 (citing Fendler v. Morosco, 253 N.Y. 281, 292, 171
N.E. 56, 60 (1930)). Judge Hand similarly described the doctrine in Peter Pan Fabrics,
Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir.1960):
The test for infringement of copyright is of necessity vague. In the
case of verbal "works" it is well settled that although the "proprietor's"
monopoly extends beyond an exact reproduction of the words, there
can be no copyright in the "ideas" disclosed but only in their
"expression." Obviously, no principle can be stated as to when an
imitator has gone beyond copying the "idea," and has borrowed its
"expression." Decisions must therefore inevitably be ad hoc. In the
case of designs, which are addressed to the aesthetic sensibilities of an
observer, the test is, if possible, even more intangible. No one disputes
that the copyright extends beyond a photographic reproduction of the
design, but one cannot say how far an imitator must depart from an
undeviating reproduction to escape infringement.
Id. at 489. Judge Hand found infringement where the "aesthetic appeal" of two fabrics
was "the same." Id.
Another classic formulation of the rule is contained in Chafee, Reflections on the
Law of Copyright: I, 45 Colum. L. Rev. 503 (1945). Professor Chafee there described
his "patterns" test:
Even when there is access, the precise boundaries of this defensive
ideal of independent creation are hard to fix. Everybody agrees that the
ideas in the copyrighted book are not protected. Another physicist can
read Einstein's book and write about relativity. But he must not tell
about it in Einstein's words. Should protection be limited to the precise
words? If so, a translation, which uses entirely different words, would
not infringe. Yet, if we protect more than precise words, where shall
we stop? The line is sometimes drawn between an idea and its
expression. This does not solve the problem, because "expression" has
too wide a range. To some extent, the expression of an abstract idea
should be free for use by others. No doubt, the line does lie somewhere
between the author's idea and the precise form in which he wrote it
down. I like to say that the protection covers the "pattern" of the work.
This is not a solution, but I find it helpful as an imaginative description
of what should not be imitated. For example, the idea of an IrishJewish marriage in a play may be borrowed. With this theme, some
resemblance in characters and situations is inevitable, but the line of
infringement may not yet be crossed. On the other hand, the pattern of
the play—the sequence of events and the development of the interplay
of the characters—must not be followed scene by scene. Such a
correspondence of pattern would be an infringement although every
word of the spoken dialogue was changed.
Id. at 513-14. For purposes of analysis, although it is presented as an alternative to the
idea-expression dichotomy which is specifically criticized, the patterns test is subject
to the same criticisms as Judge Hand's abstractions test, and I would treat Professor
Chafee's test as covered by my analysis.
[FN82] See, e.g., Stowe v. Thomas, 23 F. Cas. 201 (C.C.E.D. Pa. 1853) (No. 13,514).
[FN83] Nichols, 45 F.2d at 121. The quote seems to speak to the issue of substantial
similarity rather than idea-expression in the case of such "lifting." Indeed, Judge
Hand's formulation seems to blend the two concepts in such circumstances,
particularly as "clarified" by the Sheldon case. See infra. Substantial similarity is
probably the better theoretical basis for all such cases.
It is unfortunate that Judge Hand used the term "fair use" to indicate a use that is
not an infringement, confusingly relating issues of fair use with both idea-expression
and substantial similarity. Fair use should not be used to describe what is simply not
an infringement, but should weigh specific factors after an initial determination of
copyrightability and infringement. In the case of Sheldon v. Metro-Goldwyn Pictures
Corp., 81 F.2d 49 (2d Cir.), cert. denied, 298 U.S. 669 (1936), Judge Hand attempted
to clarify a misinterpretation of the Nichols case advocated by counsel:
The plaintiffs challenge [the lower court opinion, which follows
Nichols] because we said that "copying" might at times be a "fair use";
but it is convenient to define such a use by saying that others may
"copy" the "theme," or "ideas," or the like, of a work, though not its
"expression." At any rate so long as it is clear what is meant, no harm
is done.
Sheldon, 81 F.2d at 54. Conversely, if a person cannot figure out what was meant
because the concepts are intermingled, then harm has been done!
[FN84] Nichols, 45 F.2d at 121.
[FN85] Id. (citations omitted).
[FN86] Judge Hand stated: "[W]e do not doubt that two plays may correspond in plot
closely enough for infringement. How far that correspondence must go is another
matter." Id.
[FN87] Judge Hand continued by stating:
Nor need we hold that the same may not be true as to characters, quite
independently of the "plot" proper, though, as far as we know, such a
case has never arisen. If Twelfth Night were copyrighted, it is quite
possible that a second comer might so closely imitate Sir Toby Belch
or Malvolio as to infringe, but it would not be enough that for one of
his characters he cast a riotous knight who kept wassail to the
discomfort of the household, or a vain and foppish steward who
became amorous of his mistress. These would be no more than
Shakespeare's "ideas" in the play, as little capable of monopoly as
Einstein's Doctrine of Relativity, or Darwin's theory of the Origin of
Species. It follows that the less developed the characters, the less they
can be copyrighted; that is the penalty an author must bear for marking
them too indistinctly.
Nichols, 45 F.2d at 121.
[FN88] Id.
[FN89] Id.
[FN90] Professor Kaplan has observed the following concerning the Nichols case:
Hand's explanation does, I think, sharpen our awareness of what
we are about, but surely the technique described lacks precision. We
are in a viscid quandary once we admit that "expression" can consist of
anything not close aboard the particular collocation in its sequential
order. The job of comparison is not much eased by speaking of
patterns, nor is the task of deciding when the monopoly would be too
broad for the public convenience made much neater by speaking of
ideas and expression. The polarity proposed by Hand is indeed related
genealogically to the ancient opposition of idea to form, but the
ancestor is not readily recognized in the ambiguous and elusive
descendant.
B. Kaplan, supra note 3, at 48.
[FN91] Nichols v. Universal Pictures Corp., 34 F.2d 145 (S.D.N.Y. 1929).
[FN92] Nichols v. Universal Pictures Corp., 45 F.2d 119, 123 (2d Cir.1930), cert.
denied, 282 U.S. 902 (1931).
[FN93] Nichols, 45 F.2d at 121.
[FN94] See id. In delineating the different test, he required a reference to the copying
work and the "abstractions" level upon which it is copied, thus undermining the
presumption that a separate test was needed. Judge Hand criticized the length of the
record, which was due chiefly to the use of expert witnesses, and argued that expert
"dissection" testimony was not helpful in resolving the relevant issues: "We hope that
in this class of cases such evidence may in the future be entirely excluded, and the
case confined to the actual issues; that is, whether the copyrighted work was original,
and whether the defendant copied it, so far as the supposed infringement is identical."
Id. at 123. Curiously, Judge Hand here cited, as the major issues, originality and the
extent of copying—substantial similarity. If the idea-expression dichotomy is
somehow different, as Judge Hand claimed in the case, (see id. at 122), why wasn't
this stated separately in the summary of the issues? If the idea-expression dichotomy
is supposed to be viewed as a test of originality, there is no evidence of that view in
the body of the case. The court stated that it assumed, for purposes of the case, that
the play was "altogether original, even to an extent that in fact it is hard to believe."
Id. at 122.
[FN95] With the abstractions test, the difficulties of definition are explained away as
inevitable, so that judges need not particularly even try to delineate the relevant terms.
Both Learned Hand (conceding that "the decisions cannot help much in a new case,"
Nichols, 45 F.2d at 121) and Professor Chafee (conceding that his patterns test is "not
a solution, "but "helpful as an imaginative description," supra note 81, at 513) adopted
the abstractions test as basically an imprecise one, which automatically provides a
defense against any close criticism.
[FN96] Cf. Stowe v. Thomas, 23 F. Cas. 201 (C.C.E.D. Pa. 1853) (No.13,514); see
supra notes 64-66 and accompanying text.
[FN97] See Nichols, 45 F.2d at 121.
[FN98] However, there are exceptions for particular types of works. For example, in
the case of forms in which particular language is essential to the use of the forms,
most courts have held that the test for infringement should be almost a literal taking,
rather than substantial similarity. See infra notes 303-09 and accompanying text
(discussing Beardsley and other forms cases).
[FN99] Mr. Libott identified the role of the idea-expression dichotomy in expanding
the scope of protection and attempts to explain the reason for the shift. Libott, supra
note 3, at 743-47. He rejected Mr. Umbreit's argument that "the moving force behind
the expansion of the infringement frontier was the Nineteenth Century switch from
literary classicism with its emphasis on form and style to romanticism with its
concern for inspiration, originality, and invention." Id. (citing Umbreit, supra note 3,
at 947). Instead, Mr. Libott presented a more pragmatic rationale relating to the
expansion of copyright into new outlets and media. See Libott, supra note 3, at 74349. See also A. Birrell, Seven Lectures on the Law and History of Copyright in Books
157 (1899). See generally B. Kaplan, supra note 3, at 22-25 (discussing both socioeconomic changes and changes in literary and artistic outlook).
[FN100] 81 F.2d 49 (2d Cir.), cert. denied, 298 U.S. 669 (1936). Professor Kaplan
found the Sheldon case sufficiently puzzling that it prompted a personal need to learn
about the evolution of copyright. See Kaplan, supra note 3, at 743-49. He used that
case as the introductory example of the extent to which copyright law had been
expanded, and he seems not to have satisfied himself that it was rightly decided. Id. at
1-2 (the extension of copyright law "was not at all obvious or self-proving"), 48
(Sheldon "on any view is harder than Nichols"), 48-50 (criticizing Sheldon and
suggesting its limited usefulness in analyzing several other types of copyrighted
material).
Yet, the Sheldon case was hardly the first to find that copyright protected more
than a literal taking under similar circumstances. In Daly v. Palmer, 6 F. Cas. 1132
(C.C.S.D.N.Y.1868) (No. 3552), Daly's copyright in his "railroad scene" was upheld,
and an injunction issued against a performance that was not literally similar but which
used "the same series of events, to excite, by representation, the same emotions, in the
same sequence." Id. at 1138. Two related cases upholding the validity of Daly's
copyright were Daly v. Webster, 56 F.483 (2d Cir. 1892), app. dismissed, 163 U.S.
155 (1896), and Brady v. Daly, 175 U.S.148 (1899) (upholding the award of damages,
but treating the issue of liability as res judicata). See also Kalem Co. v. Harper Bros.,
222 U.S. 55 (1911) (holding that a silent motion picture infringed the copyrighted
novel Ben Hur).
[FN101] Sheldon, 81 F.2d at 55-56.
[FN102] Sheldon v. Metro-Goldwyn Pictures Corp., 7 F. Supp. 837 (S.D.N.Y. 1934).
Judge Woolsey held that certain elements of the play were unprotected by copyright,
including the "structure of the plot," the "theme" or "basic idea" of the play, the
locale, and the dress or appearance of the actors. Id. at 842-43. There were, to be sure,
similarities in the "arrangement" of the literary material. Id. at 842. However, such
similarities as existed were attributable to the "basic plot" of the actual events, from
which both play and movie were ultimately taken. Id. at 844.
[FN103] The similarity of character is based primarily upon the parallelism in motive
and feeling. Sheldon, 81 F.2d at 54-55. The parallelism in incident is based primarily
upon the "sequence of event and actuation," particularly in several key scenes. Id. at
55. The court of appeals noted: "Surely the sequence of these details is pro tanto the
very web of the authors' dramatic expression; and copying them is not 'fair use.' . . .
[T]hese details in the same sequence embody more than the 'idea' of the play; they are
its very raiment." Id. at 55. The pivotal introduction of the same basic alibi "is the
essence of the authors' expression, the very voice with which they speak." Id. Yet, the
descriptions which Judge Hand provided of the character, the incident, and the alibi,
are at a fairly abstract level—they are characterizations of the story supplied by Judge
Hand, and not directly embodied in any particular language of the play or the movie.
This is a long way from the "literal copying" test of Stowe. See supra note 64.
[FN104] The court of appeals explained the irrelevance of "earlier instances of the
same dramatic incidents and devices":
At times, in discussing how much of the substance of a play the
copyright protects, courts have indeed used language which seems to
give countenance to the notion that, if a plot were old, it could not be
copyrighted. But we understand by this no more than that in its broader
outline a plot is never copyrightable, for it is plain beyond
peradventure that anticipation as such cannot invalidate a copyright.
Borrowed the work must indeed not be, for a plagiarist is not himself
pro tanto an "author"; but if by some magic a man who had never
known it were to compose anew Keats's Ode on a Grecian Urn, he
would be an "author," and, if he copyrighted it, others might not copy
that poem, though they might of course copy Keats's.
Sheldon, 81 F.2d at 53-54 (citation omitted). Judge Hand seemed to favor a rule that
focuses upon the scope of copyright protection for works that pass a minimal
threshold test of copyrightability, and does not seem to favor the categorical loss of
copyright simply because the subject matter is taken, in part, from earlier works.
[FN105] This case is criticized by Professor Kaplan as follows:
[O]ne quickly sees how formulation of the common pattern of greatest
specificity can be decisively altered by shifts of emphasis that come in
almost imperceptibly; and what is to count as a detail or a larger
structure is similarly biased. In fact we do not get from Hand . . . an
articulated statement of what the common pattern was . . . . Had the
whole operation been literally carried out, it might appear that there
were few similarities that could figure as unexcused imitations of
"expressions," and those so discrete and of such a dimension as to be
nonactionable. . . . I think Hand . . . allowed himself some dubious
judgments about which turns of plot or aspects of character were
peculiarly important in making the play highly actable and account for
its success.
B. Kaplan, supra note 3, at 49-50. Professor Kaplan further suggested that for many
types of works—such as novels, music, graphic works, paintings and sculpture, "fact"
works, "news," and maps—"the eduction of patterns would be an exceedingly
slippery business and in the end futile." Id. At 52-63.
[FN106] 347 U.S. 201 (1954).
[FN107] Id. at 217.
[FN108] Id. at 217-19.
[FN109] The Court in Mazer also cited the inherent limitation of copyright law that
arises from the requirements of originality and substantial similarity. Id. at 217-218.
The legislative history of the1976 Copyright Act indicates that the ideaexpression dichotomy can serve as an assurance that copyright in computer programs
does not extend to the functional aspects of the programs, answering objections that
computer programs should not be included within the copyright law. The result is to
allow the expansion of copyright to include protection of computer programs. See
infra note 127.
[FN110] Mr. Collins's criticism on these grounds in 1928 apparently preceded the
Nichols case by only two years. See Collins, supra note 3, at 132-33.
[FN111] Pub. L. No. 94-553, 90 Stat. 2541 (codified as amended at 17 U.S.C.A.
§§101-914 (West 1977 & Supp. 1989)).
[FN112] The relevant regulation provides as follows:
The following are examples of works not subject to copyright and
applications for registration of such works cannot be entertained:
(a) Words and short phrases such as names, titles, and slogans;
familiar symbols or designs; mere variations of typographic
ornamentation, lettering or coloring; mere listing of ingredients or
contents;
(b) Ideas, plans, methods, systems, or devices, as distinguished
from the particular manner in which they are expressed or described in
a
writing;
(c) Blank forms, such as time cards, graph paper, account books,
diaries, bank checks, scorecards, address books, report forms, order
forms and the like, which are designed for recording information and
do
not
in
themselves
convey
information;
(d) Works consisting entirely of information that is common
property containing no original authorship, such as, for example:
Standard calendars, height and weight charts, tape measures and rulers,
schedules of sporting events, and lists or tables taken from public
documents or other common sources.
Material Not Subject to Copyright, 37 C.F.R. §202.1 (1988). The regulations were
essentially the same prior to passage of the 1976 Copyright Act. See Registration of
Claims to Copyright, 24 Fed. Reg. 4956 (1959), as amended at 38 Fed. Reg. 3045
(1973); 21 Fed. Reg. 6022 (1956). This commentary in the Federal Register does not
contain any helpful explanation, nor does the notice of proposed rulemaking. See 24
Fed. Reg. 3546 (proposed May 2, 1959).
[FN113] See infra notes 523-29 and accompanying text.
[FN114] Material Not Subject to Copyright, 37 C.F.R. §202.1(b)(1988). Section
202.1(c) relates to blank forms and might more closely incorporate the specific
holding of the Baker case. Nonetheless, the Copyright Office obviously felt it
necessary to adopt the idea-expression dichotomy more broadly.
[FN115] Id. §202.1.
[FN116] 17 U.S.C. §702 (1982). See also Act of July 30, 1947, ch. 391, 61 Stat. 666.
[FN117] See Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941 (2d Cir. 1975). But see
Eltra Corp. v. Ringer, 579 F.2d 294 (4th Cir. 1978). To the extent that the regulations
have been codified in the statute, they are of course entitled to greater weight. For a
discussion of 17 U.S.C.§102(b), see infra notes 124-31 and accompanying text.
[FN118] Court review of a denial of registration may not be available by a mandamus
action. See Nova Stylings, Inc. v. Ladd, 695 F.2d 1179 (9th Cir. 1983). Court review is
available, however, by way of a copyright suit, which is allowed despite denial of
registration (17 U.S.C. §411(a)(1982)); or by the Administrative Procedure Act, 17
U.S.C. §701(d) (1982). See Nova Stylings, 695 F.2d at 1181.
[FN119] Copyright Office, Ideas, Methods, or Systems, Circular R31 (1985) is a
document that is presumably of less authority than the regulation itself. The circular
also describes the difference between idea and expression:
Copyright protection extends to a description, explanation, or
illustration of an idea or system, assuming that the requirements of the
copyright law are met. Copyright in such a case protects the particular
literary or pictorial expression chosen by the author. However, it gives
the copyright owner no exclusive rights in the idea, method, or system
involved.
Id. The explanation implies that the dichotomy is not appropriately applied at the
registration stage—nor, arguably, as a "threshold" test of copyright. An illustration is
provided, which also emphasizes the works of utility doctrine:
Suppose, for example, that an author writes a book explaining a
new system for food processing. The copyright . . . will prevent others
from publishing the text and illustrations describing the author's ideas
for machinery, processes, and merchandising methods. However, it
will not give the author any rights against others who adopt the ideas
for commercial purposes, or who develop or use the machinery,
processes, or methods described in the book.
Id. The excerpt states that an author is protected not only in the text but in the
illustrations describing the idea, a statement that might indicate a different outcome in
the Baker case if the charts ("illustrations") had been more closely copied.
[FN120] Id. (emphasis added).
[FN121] Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930), cert.
denied, 282 U.S. 902 (1931).
[FN122] If, as Judge Hand stated, the abstractions test requires a case by case
analysis, it is an analysis that is not appropriately conducted by the Copyright Office
at the registration stage. The policy of the Copyright Office should be to weed out
only those works that are clearly ineligible for copyright. Even borderline cases
should be allowed registration, leaving for a later court case the fine line-drawing
contemplated by Hand.
[FN123] The Copyright Office looks at the work at the time of registration, usually
before any copying works have been made. A court, however, will usually examine a
case at the infringement stage, so that there is another work with which to compare
the copyrighted work; indeed, the court may be using the idea-expression dichotomy
to accomplish the same thing as the substantial similarity doctrine—namely, finding
that the two works are simply not similar. See infra notes 411-42 and accompanying
text.
[FN124] 17 U.S.C. §102(b) (1982).
[FN125] The report states that "Section 102(b) in no way enlarges or contracts the
scope of copyright protection under the present law. Its purpose is to restate, in the
context of the new single Federal system of copyright, that the basic dichotomy
between expression and idea remains unchanged." H.R. Rep. No. 1476, 94th Cong.,
2nd Sess. 1, 57, reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5670.
[FN126] Compare 17 U.S.C. §102 (1982) with 17 U.S.C. §106 (1982).
[FN127] The House Report accompanying the 1976 copyright legislation stated the
following:
Some concern has been expressed lest copyright in computer
programs should extend protection to the methodology or processes
adopted by the programmer, rather than merely to the "writing"
expressing his ideas. Section 102(b) is intended, among other things, to
make clear that the expression adopted by the programmer is the
copyrightable element in a computer program, and that the actual
processes or methods embodied in the program are not within the
scope of the copyright law.
H.R. Rep. No. 1476 at 57, reprinted in 1976 U.S. Code Cong. & Admin. News at
5670. The implication of this passage is that computer programs are protectable
precisely because the copyright protects only a limited aspect of the program.
The court in M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 434-35 (4th Cir.
1986) cited the "limited scope of the subsection," concluding that under §102(b)
"computer programs are not to be denied copyrightability as a 'process,' or 'system.'"
Id. Rather, "[t]he legislative purpose thus declared was to accord copyrightability to
such of the computer program . . . as might be considered 'expression' under the
enlarged definition given such term in the fixation clause of the Act." Id. Cf. 17
U.S.C. §101 (1982) (stating that pictorial, graphic, and sculptural works "shall include
works of artistic craftsmanship insofar as their form but not their mechanical or
utilitarian aspects are concerned").
[FN128] See S. 543, 91st Cong., 1st Sess. (1969); S. Rep. No. 1219, 91st Cong., 2d
Sess. 4 (1970).
[FN129] See Omnibus Copyright Revision: Hearings on S. 597 before the Subcomm.
on Patents, Trademarks and Copyrights of the Senate Comm. on the Judiciary 90th
Cong., 1st Sess. 192-200 (1967), reprinted in 9 Omnibus Copyright Legislative
History 196-98, 570 (1976) (statement of Prof. Arthur R. Miller).
[FN130] Id. at 570-73. See also supra note 127 (refering to computer programs).
[FN131] See generally infra notes 534-88 and accompanying text.
[FN132] See generally supra note 3.
[FN133] 562 F.2d 1157 (9th Cir. 1977).
[FN134] Id. at 1163 n.6. The court cited several commentators who described the
idea-expression dichotomy as "outmoded because it was developed under older,
narrower statutes which have since been considerably broadened." Id. The court
nonetheless embraced the dichotomy as good law:
We have surveyed the literature and have found that no better
formulation has been devised. Moreover, most of these criticisms are
directed at the fact that the courts tend to pay only lipservice to the
idea-expression distinction without it being fairly descriptive of the
results of modern cases. This is a criticism more of the application of
the distinction than of the distinction itself, and can be alleviated by the
courts being more deliberate in their consideration of this issue.
Id. The court then quoted with approval Judge Hand's abstractions test from the
Nichols case. Id.
[FN135] Id. at 1162-63. The court of appeals reached the exact opposite conclusion
from Professor Nimmer about the number of different expressions that are available
for a given idea. The court assumed that, at least for some ideas, there are only
minimally varying expressions, whereas Professor Nimmer stated as a basic premise
that it is rarely the case that methods of expression are so limited. See 1 M. Nimmer,
supra note 23, §2.18[C], at 2-202.
[FN136] Krofft, 562 F.2d at 1165. The reasoning seems similar to the cases protecting
free speech, where the burden of even successfully defending suits is thought to be
too great an inhibition on free speech to tolerate under the first amendment. See, e.g.,
New York Times Co. v. Sullivan, 376 U.S. 254, 279, 282 (1964). Whether the
copyright policy fostering the dissemination of works in the marketplace is of such a
fundamental character as to require the same caution is debatable.
[FN137] Krofft, 562 F.2d at 1163.
[FN138] 347 U.S. 201 (1954).
[FN139] Krofft, 562 F.2d at 1163.
[FN140] Id. at 1168.
[FN141] See infra notes 555-77 and accompanying text.
[FN142] Krofft, 562 F.2d at 1163.
[FN143] Id. at 1172.
[FN144] 154 F.2d 464 (2d Cir. 1946).
[FN145] Krofft, 562 F.2d at 1164. The court particularly emphasized the immature
audience at which the works were directed. Id. at 1166.
[FN146] See id. at 1167 (quoting Roth Greeting Cards v. United Card Co., 429 F.2d
1106, 1110 (9th Cir. 1970)).
[FN147] See infra notes 411-12 and accompanying text.
[FN148] 630 F.2d 905 (2d Cir. 1980).
[FN149] The court in Durham Industries observed:
The idea/expression distinction, although an imprecise tool, has
not been abandoned because we have as yet discovered no better way
to reconcile the two competing societal interests that provide the
rationale for the granting of and the restrictions on copyright
protection: "rewarding an individual's ingenuity and effort while at the
same time permitting the nation to benefit from further improvements
or progress resulting from others' use of the same subject matter."
Id. at 912 (citing Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2d Cir.
1976)). In Reyher, which involved two stories that were loosely based upon a
common source, the court held that one did not infringe the copyright in the other.
The case briefly traced the history of the "axiom of copyright law that the protection
granted to a copyrightable work extends only to the particular expression of an idea
and never to the idea itself." Reyher, 533 F.2d at 90. The court also emphasized the
broadness of the rule: "While the demarcation between idea and expression may not
be susceptible to overly helpful generalization, it has been emphasized repeatedly that
the essence of infringement lies in taking not a general theme but its particular
expression through similarities of treatment, details, scenes, events and
characterization." Id. at 91. Although purporting to apply the idea-expression
dichotomy, the court nonetheless carefully compared the works, and overturned the
trial court's "factual finding that there were substantial similarities between the two
works." Id. at 90.
[FN150] Durham Indus., 630 F.2d at 908-11.
[FN151] Id. at 913 (citing Mazer v. Stein, 347 U.S. 201 (1954), and the statutory
definition of pictorial, graphic, and sculptural works).
[FN152] Id. at 913.
[FN153] Id. at 914, 915. The court canvassed the major cases in which copyright
infringement in toys and dolls was found, and concluded that generally "the similarity
between the protected and the accused toys was greater and the differences less
numerous and significant than is the case with the three pairs of dolls before us." Id. at
917.
[FN154] See infra note 162.
[FN155] Other computer copyright cases, beginning in the late 1970s and early 1980s,
have focused exclusively or primarily upon the audiovisual work generated by a
computer program, usually a video game. Some of these cases have also raised issues
under the idea-expression dichotomy. For example, in Atari, Inc. v. North Am. Philips
Consumer Elec. Corp., 672 F.2d 607 (7th Cir.), cert. denied, 459 U.S. 880 (1982), the
court of appeals found that there was no infringement to the extent that the
defendant's computer game "K.C. Munchkin" copied from some of the stock
computer ideas contained in plaintiff's "PAC-MAN" game (use of a maze, scoring
table, and "dots"). Atari, 672 F.2d at 617. However, the defendant infringed by also
copying the expression of the "central figure as a 'gobbler' and the pursuit figures as
'ghost monsters'" (including such elements as size, shape, manner of movement, and
the manner of disappearing when captured). Id.
In Atari, Inc. v. Amusement World, Inc. 547 F. Supp. 222 (D. Md. 1981), the
court also found an Atari game," Asteroids," to be protectable under copyright law
because "the idea of a video game in which the player shoots his way through a
barrage of space rocks is an idea that is sufficiently general so as to permit more than
one form of expression." Id. at 229. In Amusement World, however, the court found
for the defendant, because the similarities that existed between defendant's
"Meteoroids" and plaintiff's "Asteroids" games were "inevitable, given the
requirements of the idea of a game involving a spaceship combating space rocks and
given the technical demand of the medium of a video game." Id. The court articulated
the various features of each game, and why they were dictated by the idea of a
computer game involving a spaceship shooting rocks. Id. at 229-30.
In Frybarger v. International Business Machs. Corp., 812 F.2d 525 (9th Cir.
1987), the court of appeals upheld a summary judgment dismissal of a copyright
infringement claim in an audiovisual game. Id. at 529-30. The court viewed the two
games in operation, but apparently did not compare the coding of the games, since the
defendant had allegedly copied only from the "design drawings and a flow chart" that
had been submitted to defendant confidentially. Id. at 527. The court concluded that
there was insufficient similarity between the games to warrant submitting the case to a
jury, and stated:
Although there are numerous similar features in Frybarger's and
Gebelli's works, we believe that each of the similar features constitutes
a basic idea of the videogames and, to the extent each feature is
expressive, that the expression is "'as a practical matter indispenable,
or at least standard, in the treatment of a given [idea].'"
Id. at 529-30 (footnote omitted) (quoting Atari, Inc. v. North Am. Philips Consumer
Elec. Corp., 672 F.2d 607, 616 (7th Cir. 1982)). The court held that the
"indispensable" expression of these ideas, "based on the technical requirements of the
videogame medium, may be protected only against virtually identical copying." Id. at
530.
Although each case must consider the extent of substantial similarity between the
two works, it is now well settled that audiovisual computer games are protectable in
their visual depiction. See M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 435-36 (4th
Cir. 1986); Midway Mfg. Co. v. Artic Int'l, Inc., 704 F.2d 1009, 1012 (7th Cir.), cert.
denied, 464 U.S. 823 (1983); Williams Elec., Inc. v. Artic Int'l, Inc., 685 F.2d 870,
875 (3d Cir. 1982); Stern Elec., Inc. v. Kaufman, 669 F.2d 852, 856 (2d Cir. 1982);
Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127, 1133 (N.D. Cal.
1986) (see infra notes 200-03 and accompanying text); Midway Mfg. Co. v. BandaiAmerica, Inc., 546 F. Supp. 125, 139 (D.N.J. 1982). The Copyright Office announced
on June 6, 1988 the requirement of a single registration for all copyrightable
components embodied in a computer program, including both the program itself and
the graphic screen displays generated by the program. See Computer Programs and
Graphic Screen Displays Are Registrable as Single Work, 36 Pat. Trademark &
Copyright J. (BNA) 137 (June 9, 1988); Copyright Office Notice on Computer Screen
Registration, 36 Pat. Trademark & Copyright J. (BNA) 152 (June 9, 1988).
[FN156] National Commission on New Technological Uses of Copyrighted Works,
Final Report of the National Commission on New Technological Uses of Copyrighted
Works 47-51 (1978) [hereinafter CONTU Report]. The Commission also considered
the impact of the works of utility doctrine. Id.
Even before the CONTU Report, computer programs (with some qualifications
and reservations) had been granted copyright protection. In 1964, the Register of
Copyrights began accepting computer programs for copyright registration, on
condition that they (1) contained sufficient original authorship, (2) were published,
and (3) were submitted for registration in human-readable form. See Copyright
Office, Circular 31D (January 1965). Only about 2000 such programs were registered
from 1964 to the date of enactment of the 1976 Copyright Act, largely because massmarket publication of such programs was not the norm. See CONTU Report, supra, at
34.
The 1976 Copyright Act clearly protected computer programs as "literary works,"
although computer programs were not listed as a separate category. Literary works
were defined as "works . . . expressed in words, numbers, or other verbal or numerical
symbols or indicia, regardless of the nature of the material objects, such as books,
periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are
embodied." 17 U.S.C.A. §101 (West 1977 & Supp. 1989). The congressional reports,
in the same language, effectively ratified the acts of the Register of Copyrights in
including computer programs as literary works: "The term 'literary works' . . . includes
computer data bases, and computer programs to the extent that they incorporate
authorship in the programmer's expression of original ideas, as distinguished from the
ideas themselves." H.R. Rep. No. 1476, 94th Cong., 2nd Sess., 1, 54 (1976), reprinted
in 1976 U.S. Code Cong. & Admin. News 5659, 5667. The report also stated:
The history of copyright law has been one of gradual expansion in
the types of works accorded protection. . . . In some of these cases the
new expressive forms—electronic music, filmstrips, and computer
programs, for example—could be regarded as an extension of
copyrightable subject matter Congress had already intended to protect,
and were thus considered copyrightable from the outset without the
need of new legislation.
H. Rep. at 51, U.S. Code Cong. & Admin. News at 5664.
In case there were any doubt, a 1980 amendment finally made the inclusion clear.
Act of December 12, 1980, Pub. L. No. 96-517, §10, 94 Stat. 3015, 3028.
Interestingly, the amendment did not add computer programs to the list of subject
matter of copyright, since it was already assumed to be included. Instead, the 1980
amendment added a definiton of "computer program" to §101, and amended §117 in
its entirety to allow for a limited adaptation right in computer programs. 94 Stat. at
3028. The limitation on the exclusive right would hardly be necessary if computer
programs were not clearly within the scope of the statute in the first place.
[FN157] CONTU Report, supra note 156, at 19.
[FN158] Id. at 19.
[FN159] Id. at 20. This variation on the idea-expression dichotomy is the same as the
merger theory, discussed generally infra notes 280-329 and accompanying text.
[FN160] CONTU Report, supra note 156, at 20.
[FN161] The Commission cited the testimony of Dan McCracken, Vice President of
the Association for Computing Machinery, that there are an infinite number of
different ways to "produce a program." CONTU Report, supra note 156, at 20 n. 106.
[FN162] 714 F.2d 1240 (3d Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984). The
courts "have largely resolved the question of copyrightability of object code, ROMs,
and operating systems in favor of the creators of computer programs." A. Latman,
supra note 40, at 137. See also Apple Computer, Inc. v. Formula Int'l, Inc., 725 F.2d
521 (9th Cir. 1984); Williams Elec., Inc. v. Artic Int'l, Inc. 685 F.2d 870 (3d Cir.
1982); GCA Corp. v. Chance, 217 U.S.P.Q. (BNA) 718 (N.D. Cal. 1982); Tandy
Corp. v. Personal Micro Computers, Inc., 524 F. Supp. 171 (N.D. Cal. 1981); In re
Certain Personal Computers and Components Thereof, 224 U.S.P.Q. (BNA) 270
(I.T.C. 1984) (granting an exclusion order against infringing computers and
components).
Some of the early cases, on one ground or another, had denied copyright
protection to computer programs. See, e.g., Apple Computer, Inc. v. Franklin
Computer Corp., 545 F. Supp. 812 (E.D. Pa. 1982), rev'd, 714 F.2d 1240 (3d Cir.
1983) (preliminary injunction denied based on "some doubt" about copyrightability of
ROM), cert. dismissed, 464 U.S. 1033 (1984); Data Cash Sys., Inc. v. JS&A Group,
Inc., 480 F. Supp. 1063 (N.D. Ill. 1979), aff'd, 628 F.2d 1038 (7th Cir. 1980) (ROM
not subject to protection). The lingering doubts and possible limitations, eventually
swept away by the Apple case, were those created by, among other principles, the
idea-expression dichotomy and the works of utility doctrine, by the difficulties in
categorizing what constituted a "copy," and by perceived differences in the nature of
source code and object code, human-readable and machine-readable programs, and
applications and operations programs. For a discussion of the meanings of these
terms, and the general issue of copyright in computer programs, see Note, Copyright
Protection of Computer Program Object Code, 96 Harv. L. Rev. 1723 (1983). For a
general discussion of the evolving idea-expression test in computer copyright cases,
see Note, The Scope of Copyright Protection for Computer Programs: Exploring the
Idea/Expression Dichotomy, 43 Wash. & Lee L. Rev. 1373 (1986).
[FN163] Apple Computer, 714 F.2d at 1249.
[FN164] Id. at 1254.
[FN165] Baker v. Selden, 101 U.S. 99 (1880). See Apple Computer, 714 F.2d at
1250, 1252.
[FN166] Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), cert. denied,
332 U.S. 801 (1947). See Apple Computer, 714 F.2d at 1253.
[FN167] Apple Computer, 714 F.2d at 1253 (citing Morrissey v. Procter & Gamble
Co., 379 F.2d 675 (1st Cir. 1967); Freedman v. Grolier Enters., Inc., 179 U.S.P.Q.
(BNA) 476 (S.D.N.Y. 1973)).
[FN168] Apple Computer, 714 F.2d at 1253.
[FN169] 11 F.2d 690 (2d Cir. 1926). The court in Dymow observed that "it is as near
the whole truth as generalization can usually reach that, if the same idea can be
expressed in a plurality of totally different manners, a plurality of copyrights may
result, and no infringement will exist." Id. at 691.
[FN170] Apple Computer, 714 F.2d at 1253.
[FN171] Id.
[FN172] CONTU Report, supra note 156, at 20.
[FN173] Apple Computer, 714 F.2d at 1253. For a general discussion of the merger
theory as a subset of idea-expression analysis, see infra notes 280-329 and
accompanying text.
[FN174] Apple Computer, 714 F.2d at 1255.
[FN175] Id. at 1253.
[FN176] Other courts have also concluded that compatibility is not a goal that will
excuse copying. See Apple Computer, Inc. v. Formula Int'l, Inc. 725 F.2d 521 (9th
Cir. 1984); E.F. Johnson Co. v. Uniden Corp., 623 F. Supp. 1485, 1501-02 (D. Minn.
1985).
[FN177] Apple Computer, 714 F.2d at 1253.
[FN178] See Sanger, The Gavel Comes Down on Computer Copycats, N.Y. Times,
Oct. 23, 1983, at F8, col. 1.
[FN179] 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987).
[FN180] Whelan, 797 F.2d at 1224 n.1.
[FN181] Id. at 1232-1234.
[FN182] Id. at 1225.
[FN183] Id. at 1234.
[FN184] Id. at 1236. The Third Circuit observed: "The Court's test in Baker v. Selden
suggests a way to distinguish idea from expression. Just as Baker v. Selden focused
on the end sought to be achieved by Selden's book . . . ." Id.
[FN185] Whelan, 797 F.2d at 1236. In a curious footnote that has been the focus of
discussion in later computer cases, the court hedges its analysis somewhat:
We do not mean to imply that the idea or purpose behind every
utilitarian or functional work will be precisely what it accomplishes,
and that structure and organization will therefore always be part of the
expression of such works. The idea or purpose behind a utilitarian
work may be to accomplish a certain function in a certain way, and the
structure or function of a program might be essential to that task. There
is no suggestion in the record, however, that the purpose of the
Dentalab program was anything so refined; it was simply to run a
dental laboratory in an efficient way.
Id. at 1238 n.34 (citation omitted).
[FN186] Id at 1238.
[FN187] 462 F. Supp. 1003 (N.D. Tex. 1978) (holding that "input formats" were idea,
not expression, and were therefore unprotectable).
[FN188] Id. at 1012.
[FN189] Whelan, 797 F.2d at 1240.
[FN190] Cf. Stowe v. Thomas, 23 F. Cas. 201 (C.C.E.D. Pa. 1853) (No.13,514); see
supra notes 64-66 and accompanying text.
[FN191] Stowe, 23 F. Cas. at 1226.
[FN192] Id. Additionally, the plaintiff's expert witness was much more credible than
the defendant's expert. Id. at 1247. Among other things, the defendant's expert never
observed the computer programs in operation or viewed the various screens or the
user's manual, and admitted that he was not familiar with EDL coding, in which
plaintiff's original program was written. Id.
[FN193] In pre-Whelan cases, some district courts were unwilling to find that
"conversions" from one computer system to another, copying structure, sequence, or
organization, constituted infringement. See, e.g., Q-Co Indus., Inc. v. Hoffman, 625 F.
Supp. 608 (S.D.N.Y. 1985) (denying preliminary injunction even though defendant's
teleprompting program was structured around several key modules in plaintiff's
program); see also infra note 195.
[FN194] 807 F.2d 1256 (5th Cir.), cert. denied, 108 S. Ct. 109 (1987). Plaintiff's
"Telcot" program, which ran on a mainframe computer, provided users with cotton
prices and information, certain accounting services, and the ability to consummate
sales in the cotton market. Plains Cotton, 807 F.2d at 1258. Defendant's "GEMS"
program, designed to run on a personal computer, was similar to the Telcot program
in its functional specifications, programming, and documentation. Id. at 1259. As in
the Whelan case, defendant's access to the plaintiff's program was clearly established,
since the defendant had hired away some of plaintiff's employees, including one
programmer who took a complete taped record of the Telcot source code. Id.
[FN195] Synercom Technology, Inc. v. University Computing Co., 462 F. Supp. 1003
(N.D. Tex. 1978). Judge Higginbotham, who decided the Synercom case, was in 1982
appointed to the United States Court of Appeals for the Fifth Circuit, which decided
the Plains Cotton case.
The Synercom case involved the intentional duplication of input formats for a
structural analysis program. The court began its discussion of the input formats with
the Baker case, characterizing the formats as "forms" that, under Baker, were not
protectable. Id. at 1011. The court conceded that the forms might "express ideas," but
nonetheless concluded that the order and sequence of data was idea, and thus not
protectable. Id. at 1011. However, the plaintiff won on the issue of infringement of
plaintiff's computer manuals. Id. at 1014.
An interesting distinction can be made between the Synercom case and the
Broderbund case (see infra note 200 and accompanying text). Although in
Broderbund the defendant copied the screen format, including the audiovisual
depiction that was subject to a separate copyright, in Synercom the information was
apparently not displayed in a particular visible form. Cf. Broderbund Software, Inc. v.
Unison World, Inc., 648 F. Supp. 1127, 1132 (N.D. Cal. 1986). Instead, the defendant
had written a preprocessor program that accepted data in exactly the sequence and
organization of the original Synercom program. Synercom, 462 F. Supp. at 1012.
Although Judge Higginbotham held that the order and sequence alone did not
constitute expression, he did discuss the possibility that "to the extent the expressions
involve stylistic creativity above and beyond the bare expression of sequence and
arrangement," they might be copyrightable. Id. at 1014. Thus, it is possible to view
the Broderbund case as supplying the elements of stylistic creativity that were lacking
in the "bare bones" input format of Synercom. Admittedly, the court in Broderbund
did not draw any distinction between the artistic elements of the screens in that case
and in the Synercom case, conceding that the input formats served "essentially the
same function" in the two programs. Broderbund, 648 F. Supp. at 1133. See, e.g.,
Digital Communciations Assocs., Inc. v. Softklone Distrib. Corp., 659 F. Supp. 449
(N.D. Ga. 1987); infra note 200.
[FN196] Plains Cotton, 807 F.2d at 1262.
[FN197] Id.
[FN198] The comment stated that "[t]he Fifth Circuit's analysis of the copyrightability
issue does not appear inconsistent with that adopted by the Third Circuit in Whelan.
Thus, its statement that it 'decline[s] to embrace Whelan' is somewhat misleading."
Program's Sequence and Organization Not Protectable: Dictated By Function, 33 Pat.
Trademark & Copyright J. (BNA) 306 (Feb. 2, 1987). The editors attributed this
observation to footnote 34 in the Whelan case:
[T]he court noted in footnote 34 that structure and sequence will not
always be part of the expression of such works: "The idea or purpose
behind a utilitarian work may be to accomplish a certain function in a
certain way, * * * and the structure or function of a program might be
essential to that task." That seems to be the situation in the instant case.
Id. at 307.
I would not reconcile the cases based upon the Whelan footnote. The Fifth Circuit
opinion simply does not indicate a disagreement with the application of the Whelan
rule to the Whelan facts; rather, the court in Plains Cotton seemed to be unconvinced
that the rule should be applied to the facts before it, since there was a plausible
explanation of the degree of similarity between the two programs based upon the
"externalities" of the cotton market they were trying to emulate. See Plains Cotton,
807 F.2d at 1262. The refusal of the court in Plains Cotton to embrace Whelan does
not represent a categorical rejection of the reasoning of Whelan, but a finding that it
was not necessary to embrace Whelan at the preliminary injunction stage of the case,
given the evidence that had been heard as of that time.
[FN199] See, e.g. Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp.
1127 (N.D. Calif. 1986); Dynamic Solutions, Inc. v. Planning & Control, Inc.,
Copyright L. Dec. (CCH) P26,062 (S.D.N.Y. 1987); Pearl Systems, Inc. v.
Competition Elec., Inc., 8 U.S.P.Q.2d (BNA) 1520, Copyright L. Dec. (CCH)
P26,338 (S.D. Fla. 1988); Soft Computer Consultants, Inc. v. Lalehzarzadeh,
Copyright L. Dec. (CCH) P26,403 (E.D.N.Y. 1988). The most closely watched of the
so-called "look and feel" cases are those of Lotus Development Corporation against
Paperback Software and Mosaic Software, which allege that "VP-Planner" and "The
Twin" infringe the popular "Lotus1-2-3" by copying command names, screen
arrangements, and the way the program works, though not the precise programming
code. See Lotus Dev. Corp. v. Mosaic Software, Inc., No. 87-0074-K (D. Mass. filed
Jan. 12, 1987); Lotus Dev. Corp. v. Paperback Software Int'l, Inc., No. 87-0076-K (D.
Mass. Filed Jan 12, 1987). A helpful description of the cases, the programs, and some
of the industry response is presented in a series of articles in PC Magazine. See
Special Report, 6 PC Magazine, May 26, 1987, at 154-98 (Machrone, Taking the
Stand: The Look-and-Feel Issue Examined, id. at 154; Rosch, The Copyright Law on
Trial, id. at 157; Machrone, Roots: The Evolution of Innovation, id. at 166; Seymour,
Who Owns the Standards?, id. at 174; Manes, Who'll Think of Suing What Next?, id.
at 180; Taylor, You Be the Judge, id. at 186). The general response of the software
industry seems to be one of alarm. See also Ashton-Tate Corp. v. Fox Software, Inc.,
No. 88-6837-TJH (C.D. Cal. filed Nov. 18, 1988).
Some pre-Whelan district court cases also based findings of infringement, at least
in part, upon the taking of techniques or structure. See, e.g., E.F. Johnson Co. v.
Uniden Corp., 623 F. Supp. 1485 (D. Minn. 1985) (granting preliminary injunction
for program for logic trunked radio system mobile radios, based upon similarities of
method and structure as well as literally copied portions); SAS Inst., Inc. v. S&H
Computer Sys., Inc., 605 F. Supp. 816, 830 (M.D. Tenn. 1985) (finding infringement
for copying "organization and structural details" as well as literal or near literal
copying of program to perform statistical analysis).
[FN200] 648 F. Supp. 1127 (N.D. Cal. 1986). The case was decided only on the basis
of substantial similarity in the audiovisual display, rather than in the computer
program itself. As in the Whelan case, access was found easily, as well as substantial
similarity, because the defendant's programmer had been instructed to copy the
plaintiff's "Print Shop" program at a time when the two parties were negotiating to
license the defendant to adapt the plaintiff's program for use on an IBM personal
computer.
Broderbund has been criticized for holding that the copying of the screen display
constituted an infringement of the underlying program. In Digital Communications
Assocs., Inc. v. Softklone Distrib. Corp., 659 F. Supp. 449 (N.D. Ga. 1987), the
district court criticized Broderbund stating that "a computer program's copyright
protection does not extend to the program's screen displays and that copying of a
program's screen displays, without evidence of copying of the program's source code,
object code, sequence, organization or structure, does not state a claim of
infringement." Id. at 456. The court went on, however, to find that plaintiff's separate
"compilation" for the screen display, covering the specific placement, arrangement,
and design of the terms on the status screen, was protectable as a separate work but
not as part of the underlying computer program. Id. at 463. Although it rejected the
Broderbund reasoning, the court in Digital embraced the proposition that screen
displays are ultimately protectable. See id. It explained the "apparent anomaly" that a
computer program can constitute a copy of a screen display, but a screen display is
not a copy of the computer program. Id. at 456.
Although criticizing Broderbund, the court in Digital seems to have embraced the
liberal approach of Whelan, and specifically distinguished the narrower approach
discussed in Synercom:
The difference between Synercom and the instant case is that in
Synercom the sequence of the data input into the computer is relevant
to the functioning of the Synercom computer program and the plaintiff
only copied this sequence. The Synercom defendant did not, however,
create format cards with the same headings and shaded areas. . . .
Unlike the situation in Synercom, the defendants here allegedly copied
the arrangement, headings, capitalization, and highlighting of the
plaintiff's work and presented it to the user as their own work.
Id. at 460. The difference, it seems, is that the visual image in Digital adds the
creative, aesthetic element that was missing in Synercom. See also supra note 195. A
similar situation may exist in the protection of literary characters, which are only
begrudgingly protected, if at all, in their literary description, but are readily protected
if there is added a visual cartoon depiction. See infra notes 609-31 and accompanying
text.
Ironically, the Copyright Office, which issued the "compilation" copyright for the
screens in the Digital case, later refused separate registration for the textual screen
displays embodied in Lotus Development Corp.'s "Lotus 1-2-3" program, stating:
It is the position of the Copyright Office that textual screen
displays embodied within the computer program that generates them
are covered by the registration for the programs, without either the
need or justification for separate registration for the displays. Because
the displays are considered to be an integral part of the program, the
authorship in the displays appears to be the same as that contained in
the program. Moreover, the Copyright Office would not register a
claim in the format or layout.
Computer Screen Displays of Text Are Not Independently Registrable, 33 Pat.
Trademark & Copyright J. (BNA) 613, 613-14 (Apr. 9, 1987) (quoting a letter from
the Copyright Office). See also Copyright Office Notice on Computer Screen
Registration, 36 Pat. Trademark & Copyright J. (BNA) 152 (June 9, 1988) (giving
public notice of the "single registration" policy).
[FN201] Broderbund, 648 F. Supp. at 1133.
[FN202] The existence of one other program accomplishing a similar result was
sufficient to allow the court to characterize the program as protectable expression. By
contrast, in Synercom, there were "hundreds of programs available for structural
analysis, and at least fifteen are competitive with [plaintiff's] STRAN. All but EDI
and Synercom have different input formats." Synercom Technology, Inc. v.
University Computing Co., 462 F. Supp. 1003, 1007 (N.D. Tex. 1978). Yet, that
observation was apparently irrelevant in determining that plaintiff's formats were not
protectable.
In the cases involving computer games, where the audiovisual presentation is
presumably more graphically significant and distinctive than in the business program
"look and feel" cases, the courts have generally held that the visual depiction of the
audiovisual display is protected. For example, in M. Kramer Mfg. Co. v. Andrews,
783 F.2d 421, 436 (4th Cir. 1986), the court noted that "normally in the computer
field, courts are concerned with expression and not idea."
[FN203] Compare Broderbund, 648 F. Supp. at 1132 with Apple Computer, Inc. v.
Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983), cert. dismissed, 464
U.S. 1033 (1984) and Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d
1222, 1238-40 (3d Cir. 1986), cert. denied, 479 U.S.1031 (1987).
[FN204] See Whelan, 797 F.2d at 1239.
[FN205] The court in Whelan stated that "by analogy to other literary works,"
plaintiff should win. Whelan, 797 F.2d at 1234. The court then considered defendants'
argument "that what is true of other literary works is not true of computer programs."
Id. After review of the arguments, the court concluded: "We are not convinced that
progress in computer technology or technique is qualitatively different from progress
in other areas of science or the arts. . . . Thus, copyright principles derived from other
areas are applicable in the field of computer programs." Id. at 1238. Interestingly, the
court seemed to find that the rule it adopted for distinguishing idea from expression
may work even better in the computer field than in other fields. Equating "idea" with
"purpose," the court concluded that
in cases involving works of literature or "non-functional" visual
representation, defining the purpose of the work may be difficult. Since
it may be impossible to discuss the purpose or function of a novel,
poem, sculpture or painting, the rule may have little or no application
to cases involving such works. The present case presents no such
difficulties, for it is clear that the purpose of the utilitarian Dentalab
program was to aid in the business operations of a dental laboratory.
Id.
The court in Whelan characterized the Synercom case as resting "on the premise
that there was a difference between the copyrightability of sequence and form in the
computer context and in any other context." Id. at 1240. The court in Whelan
disagrees, finding that "[t]here is . . . no statutory basis for treating computer
programs differently from other literary works in this regard." Id. at1240.
[FN206] Office of Technology Assessment, Intellectual Property Rights in an Age of
Electronics and Information (1986) [hereinafter OTA Report]. For a thorough critique
of most of the OTA analysis and assumptions relating to computer programs, see
Baumgarten & Meyer, Program Copyright and the Office of Technology Assessment,
4 The Computer Lawyer Oct. 1987, at 8; Nov. 1987, at 1.
[FN207] OTA Report, supra note 206, at 65. The OTA Report continued: "By making
the criteria of copyrightability nonspecific and purely formal, the act gives the
necessary and sufficient conditions of statutory protection applicable to any
conceivable work, regardless of the technologies involved in its creation, distribution,
or use." Id.
[FN208] Id. The OTA Report would characterize computer programs as works of
function. The OTA Report then states: "Unless the law recognizes the inherent
differences among these types of works, technology may make the boundaries of
intellectual property ownership difficult or impossible to establish, and less relevant to
the policy goals the law seeks to further." Id. By way of analogy, it might be noted
that, in passing the Semiconductor Chip Protection Act of 1984, which granted sui
generis protection to chips instead of incorporating chips within the standard
copyright provisions, Congress specifically chose to minimize the danger that
traditional copyright principles would have to be distorted to apply them to the new
technologies. See H.R. Rep. No. 620, 98th Cong., 2nd Sess. 5, reprinted in 1984 U.S.
Code Cong. & Admin. News 5708; Semiconductor Chip Protection Act of 1984, 17
U.S.C. §§901-914 (Supp. II 1984).
Some authors, however (notably Professor Gorman), have made well-received
arguments that general copyright principles should and could be applied differently in
the case of factual works than in the case of literary works generally. See, e.g.,
Gorman, Copyright Protection for the Collection and Representation of Facts, 76
Harv. L. Rev. 1569 (1963); infra notes 589-608 and accompanying text.
[FN209] OTA Report, supra note 206, at 66. The static nature of such works of art is
attributed to a large extent to the invention of the printing press, and may "no longer
apply to works involving certain new technologies." Id.
[FN210] Id. at 78.
[FN211] Id. at 67.
[FN212] Id. at 78.
[FN213] Id.
[FN214] OTA Report, supra note 206, at 81.
[FN215] Id. at 81-83. The problems are said to be exacerbated because "copyright law
does not distinguish between the types of computer programs it protects," while the
type of program—for example, operating system or application program—may have a
major effect upon "the market power a copyright owner can possess." Id. at 83-84.
[FN216] In labeling a work as an "idea," the intent is to exclude the work, or certain
aspects of it, from copyright protection.
[FN217] For example, if 17 U.S.C. §102(b) (1982) were repealed to allow specific
protection of "ideas," the number of works subject to copyright, and the scope of
protection for those works, would be expanded.
[FN218] OTA Report, supra note 206, at 80-84.
[FN219] Id. at 81.
[FN220] Cf. supra notes 109, 127.
[FN221] OTA Report, supra note 206, at 63.
[FN222] 101 U.S. 99, 102 (1880).
[FN223] See Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930),
cert. denied, 282 U.S. 902 (1931).
[FN224] In another article, for example, Professor Goldstein, chairman of the OTA
Advisory Committee, assumed that the idea-expression dichotomy was an "elastic"
doctrine that could accommodate constitutional difficulties in the copyright field. See
infra text accompanying notes 348-55.
[FN225] For example, the OTA Report attributes the usefulness of the abstractions
test for works of art to the observation that "works of art have always had a fixity and
completeness to them," and they "did not change in appearance or structure, and
retained a distinct and perpetual identity." OTA Report, supra note 206, at 66.
Although this may be true for many such works, it is certainly not universally true.
Many books, plays, and artistic works go through numerous revisions and
permutations, and the making of numerous derivative works during their
development. It is therefore not universally true to characterize such works as "static,
individuated, and localizable," so that one might "speak in terms of the work created
by an author or authors belonging to him from the moment of creation, subject to the
laws of the country in which the work was created." Id. at 66.
Indeed, the quoted language in the text accompanying note 215 supra, referring to
the "'clear distinction' made in Baker v. Selden," seems to be characterizing the state
of the law as it existed at the time of Baker v. Selden, 101 U.S. 99 (1880), when only
literal copying of a work was considered an infringement, and not the more liberal
view of which the abstractions test was a part. See supra notes 59-110 and
accompanying text.
[FN226] OTA Report, supra note 206, at 66, 78. The works of utility doctrine is more
appropriately suited to handling these problems than is the idea-expression dichotomy
generally. See infra notes 555-62 and accompanying text.
[FN227] OTA Report, supra note 206, at 195-97 (concluding that the existing doctrine
may not be adequate to resolve the policy issues without specific legislation).
[FN228] The OTA Report suggests a whole range of policy considerations in drafting
legislative responses to the computer copyright problem. Id. at 88-94.
[FN229] The OTA Committee stated that "[a]lthough the issue of whether computer
programs could or should be either copyrighted or patented was the subject of
considerable legal controversy, it is now dormant. . . . Except for certain details, the
courts have resolved these questions in favor of copyright protection for programs."
Id. at 79.
[FN230] See generally supra note 3 (particularly Libott, at 737-43).
[FN231] See, e.g., Libott, supra note 3, at 755-61. The existence of such a
marketplace, in the absence of federal copyright protection, depends upon state law
theories, frequently based upon contracts, express or implied in law or in fact. See
generally Nimmer, The Law of Ideas, 27 S. Cal. L. Rev. 119 (1954). Even such statebased rights have their problems, in that they are not universally adopted in similar
circumstances, and there is always the specter of preemption in particular
circumstances under 17 U.S.C. §301 (1982).
[FN232] Although I tie my suggestion to proposals for interpreting the ideaexpression dichotomy, I am certainly not the first to propose that categorical
exclusions are not as helpful as rules applied at the infringement stage. See infra text
accompanying notes 263-79.
[FN233] 17 U.S.C.A. §§101-914 (West 1977 & Supp. 1989).
[FN234] Id. §106. This section provides that
the owner of copyright . . . has the exclusive rights to do and to
authorize
any
of
the
following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivitive works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to
the public by sale or other transfer of ownership, or by rental, lease, or
lending;
(4) in the case of literary, musical, dramatic, and choreographic
works, pantomimes, and motion pictures and other audiovisual works,
to
perform
the
copyrighted
work
publicly;
and
(5) in the case of literary, musical, dramatic, and choreographic
works, pantomimes, and pictorial, graphic, or sculptural works,
including the individual images of a motion picture or other
audiovisual work, to display the copyrighted work publicly.
Id.
[FN235] Id. §106(1).
[FN236] Even though many of the devices for efficiently copying works are of recent
invention, the copyright laws since 1790 have provided for protection against
reproduction in copies. See, e.g., Act of May 31, 1790, ch. 15, §1, 1 Stat. 124, 124
("sole right and liberty of printing, reprinting, publishing and vending such map,
chart, book or books"); Act of July 8, 1870, ch. 230, §86, 16 Stat. 198, 212 ("sole
liberty of printing, reprinting, publishing, completing, copying, executing, finishing,
and vending" the copyrighted works); Act of Mar. 3, 1891, ch. 565, §1, 26 Stat. 1106
(same); Act of Mar. 4, 1909, ch. 320, §1, 35 Stat.1075, 1075 (exclusive right to "print,
reprint, publish, copy, and vend the copyrighted work"); Act of Oct. 19, 1976, Pub. L.
No. 94-553, 90 Stat.2541, 2546 (exclusive right to "reproduce the copyrighted work
in copies or phonorecords"). It is somewhat surprising that the proverbial "literal
copier" who writes out in longhand a copy of a copyrighted work, although featured
prominently in the hypothetical discussions of copyright and fair use, has never been
the subject of a copyright suit. Perhaps the damage resulting from longhand copying,
without more, has been so insubstantial that no one has been motivated to bring the
test case.
[FN237] 17 U.S.C.A. §101 (West 1977 & Supp. 1989) (defining "copies"). The act
distinguishes between copyrighted "works" and the "material objects" in which the
works are embodied. Section 102 sets forth the general scope of copyright as
including "original works of authorship, fixed in any tangible medium of expression,"
but the key phrase is not otherwise defined. Thus, books or movies are not themselves
the copyrighted works, but are material objects containing the more abstract "original
works of authorship," which are presumably capable of existing in several different
forms.
[FN238] See id. §§106-118. The reluctance of courts to find copyright liability in the
case of various new reprographic technologies might lead an observer to conclude that
there is an unspoken favoritism for exact copiers under federal copyright law. See
Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (home videorecording); Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968)
(cable); White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1 (1908) (piano
rolls and, by extension, phonorecords); Williams & Wilkins Co. v. United States, 487
F.2d 1345 (Ct. Cl. 1973), aff'd by an equally divided Court, 420 U.S. 376 (1975)
(photocopying). The cases do not stand for the proposition that exact copies are not
infringements of copyright, since they were all decided on narrow grounds. The
White-Smith and Fortnightly cases involved definitions of technical terms that have
since been redefined. See Fortnightly, 392 U.S. at 395-96; White-Smith, 209 U.S. at
16-18. The Williams & Wilkins and Sony cases each involve the application of fair
use to particular situations that should not be excessively generalized. See Sony, 464
U.S. at 432-33; Williams & Wilkins, 487 F.2d at 1359. In three out of four of these
general areas—phonorecords, cable, and library photocopying—Congress ultimately
adopted legislative limitations on the scope of copyright, which might be said to have
confirmed the judicial reluctance in the particular areas. See 17 U.S.C. §§108, 111,
115 (1982). A similar limitation in the form of a compulsory license or an outright
exclusion was proposed in the case of home videorecording of copyrighted works, but
was never enacted into law. See H.R. 175, §119 (1982), reprinted in Bill Introduced in
House to Legalize Videorecording of Copyrighted Works, 25 Pat. Trademark &
Copyright J. (BNA) 211 (Jan. 13, 1983) (exempting private, noncommercial taping);
S. 31 (1983), reprinted in "Text of Home Taping Bills and Introductory Remarks," 25
Pat. Trademark & Copyright J. (BNA) 317 (Feb. 10, 1983). See also Home Audio
Taping Bill Would Create Recording Equipment Compulsory License, 30 Pat.
Trademark & Copyright J. (BNA) 332 (Aug. 1, 1985) (discussing the impact of H.R.
2911).
Furthermore, many of the new technology cases do not speak directly to the
liability of individual exact copiers, but address only the issue of contributory
infringement. For example, the Sony case does not say that an individual is free from
copyright liability if the individual records copyrighted programs from television
using a videorecorder. See Sony, 464 U.S. at 493. The individual is protected only if
the copying is "authorized" or is for the purpose of time-shifting the viewing of a
program that is broadcast over the public airwaves. Id. Since there is at least some
copying that is noninfringing, however, the manufacturers of the machine that does
the copying are not independently liable for copyright infringement. Id. at 436-42.
Similarly, the library-copyright compromise embodied in section 108 may also be
viewed as the resolution merely of the liability of libraries, not that of the primary
users of the copyrighted works. 17 U.S.C. §108 (1982). Even the 1983 New York
University copyright settlement of claims against the school can be seen as primarily
a settlement to protect the university as a third-party infringer, and not as settling the
ultimate rights of professors to make such copies. Addison-Wesley Publishing Co. v.
New York Univ., Copyright L. Dec. (CCH) P25,544 (S.D.N.Y. 1983); Latman, supra
note 40 at 491-92. Given that the secondary liability of third parties in copyright cases
was hardly firmly established even prior to the Sony case, it may not be surprising to
learn that in the technological scheme, the suppliers of the technology are not going to
be held responsible for the possibly infringing activities of the individuals who use the
technology. Sony, 464 U.S. at 436-42.
[FN239] See supra notes 59-110 and accompanying text (tracing the development of
copyright law from the literal approach evidenced in Stowe to a broader approach as
propounded by Judge Learned Hand). For a discussion of the concept of "substantial
similarity," a basic concept in determining whether copying constitutes infringement,
see infra notes 388-465 and accompanying text.
[FN240] Such infringing activity would seem most logically to fall under the right to
make derivative works, since it results in the creation of a new work, potentially
copyrightable in its own right, that is "based upon one or more preexisting works."
See 17 U.S.C.A. §101 (West 1977 & Supp. 1989) (defining "derivative work"); 17
U.S.C. §106(2) (1982).
[FN241] See supra notes 59-110 and accompanying text. The legislative history
makes clear that the exclusive rights can and do overlap in many cases. See H.R. Rep.
No. 1476, 94th Cong. 2d Sess. 1, 61-62, reprinted in 1976 U.S. Code Cong. & Admin.
News 5659, 5674-75. It is nonetheless curious to note that most of the nonliteral
copying cases (frequently resulting in the creation of a "new" work) and most of the
analysis focus upon the section dealing with the creation of "copies" of copyrighted
works, even though, in the case of a nonliteral copier, it is the creation of a new but
infringing work that is as objectionable as the distribution of the material objects
containing that work.
The OTA Report suggests that the addition of the word "copy" to the exclusive
rights to print, reprint, publish and vend a copyrighted work in the 1909 Copyright
Act was, almost by accident, instrumental in expanding copyright law to cover
nonliteral copying. It was the word "copy" that arguably allowed the expansion of
copyright law against not only commercial infringement, but also against
noncommercial infringement as well. OTA Report, supra note 206, at 191. See Act of
Mar. 4, 1909, ch. 320, §1, 35 Stat. 1075, 1075-76.
[FN242] To the extent that the substantial similarity test is a quantitative test,
measuring how much of a work has been copied, it is still relevant in the case of exact
copying of portions of a copyrighted work.
[FN243] Cf. Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946). The court in Arnstein
stated that "[i]f evidence of access is absent, the similarities must be so striking as to
preclude the possibility that plaintiff and defendant independently arrived at the same
result." Arnstein, 154 F.2d 468.
[FN244] The greater tolerance for nonliteral copying than for exact copying assumes
that nonliteral copying would weigh less heavily under the fair use factor referring to
the "amount and substantiality of the portion used" (17 U.S.C. §107 (1982)), or that
nonliteral copying may result in the "productive" creation of a new work. Cf. Seltzer,
Exemptions and Fair Use in Copyright: The "Exclusive Rights" Tensions in the New
Copyright Act, 24 Bull. Copyright Soc'y 215 (1977). Mr. Seltzer's proposed
distinction between "productive" and "unproductive" uses was rejected by the United
States Supreme Court. See Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417,
455-56 n.40 (1984).
[FN245] The discussion assumes that at least some ideas are sufficiently delineated
and fixed to be protectable by copyright (aside from the idea-expression dichotomy)
and capable of "exact copying." Some of the cases dealing with state protection of
ideas by express or implied contract, or "idea submissions," in fact require a certain
degree of "concreteness." See, e.g., Galanis v. Procter & Gamble Corp., 153 F. Supp.
34 (S.D.N.Y. 1957); Stone v. Liggett & Myers Tobacco Co., 260 A.D. 450, 23
N.Y.S.2d 210, app. denied, 260 A.D. 1006, 24 N.Y.S.2d 994 (1940); Stanley v.
Columbia Broadcasting Sys., 192 P.2d 495 (Cal. Ct. App. 1948), aff'd, 35 Cal. 2d
653, 221 P.2d 73 (1950). To some extent, this may be the idea-submission equivalent
of the idea-expression dichotomy, with "concreteness" the same as "expression"
required by copyright law. For example, in Bowen v. Yankee Network, Inc., 46 F.
Supp. 62 (D. Mass. 1942), an idea-submission case, the court explained: "There is no
property right in mere ideas. . . . Such a right can only exist in the arrangement and
combination of the ideas, i.e., in the form, sequence, and manner in which the
composition expresses the ideas, not the ideas themselves." Id. at 63. The ideasubmission cases might also be considered the state equivalent of the "work of utility"
doctrine, where the work is a system or procedure. See infra note 534 and
accompanying text.
[FN246] Several types of works have at one time been categorically excluded from
copyright based upon the idea-expression dichotomy or a related principle. See, e.g.,
supra note 162 (computer programs); infra text accompanying notes 534, 560 (works
of utility), 590 (facts), 609-31 (characters). There has been a discernible trend away
from the "categorical" approach for each of these types of works. See supra note 162
(computer programs); infra text accompanying notes 605-08 (facts), 266-67
(characters), 564 (works of utility).
[FN247] See infra text accompanying notes 263-65.
[FN248] See infra text accompanying notes 530-33.
[FN249] Act of Oct. 15, 1971, Pub. L. No. 92-140, 85 Stat. 391 (1971) (codified as
amended at 17 U.S.C.A. §§101, 102, 106, 116, 401, 402, 412, 501-504 (West 1977 &
Supp. 1989)).
[FN250] Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964); Compco Corp. v.
Day-Brite Lighting, Inc., 376 U.S. 234 (1964). Defendants had copied the design of
plaintiffs' lighting fixtures. The lower courts held that federal patents in the fixtures
were invalid. Nonetheless, the courts, in each case following the Illinois law of
misappropriation, held that the fixtures were protected under state law. The Supreme
Court reversed, finding that the states were preempted from protecting works that
were unpatentable under federal patent law. Sears, 376 U.S. at 230-34; Compco, 376
U.S. at 237-39. See also Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 109 S. Ct.
971 (1989) (holding that a state "plug mold" statute was preempted).
[FN251] See, e.g., Capitol Records, Inc. v. Greatest Records, Inc., 43 Misc. 2d 878,
252 N.Y.S.2d 553 (Sup. Ct. 1964); Capitol Records, Inc. v. Erickson, 2 Cal. App. 3d
526, 82 Cal. Rptr. 798 (1969), cert. denied, 398 U.S. 960 (1970); Capitol Records,
Inc. v. Spies, 130 Ill. App. 2d 429, 264 N.E.2d 874 (1970); Liberty/UA, Inc. v.
Eastern Tape Corp., 11 N.C. App. 20, 180 S.E.2d 414, cert. denied, 278 N.C. 702,
181 S.E.2d 600 (1971).
[FN252] See, e.g., Tape Indus. Ass'n. v. Younger, 316 F. Supp. 340 (C.D. Cal. 1970),
app. dismissed, 401 U.S. 902 (1971), where the court distinguished Sears-Compco in
the following language:
In Sears, Compco, Smith, and DeCosta, the defendants were not
subject to state control because they merely copied the design or
formula of the original producer. . . .
In contrast, plaintiffs in the instant case do not imitate the product
of the record companies. They actually take and appropriate the
product itself—the sounds recorded on the ablums[sic]—and
commercially exploit the product. Sears and Compco would cover and
immunize the plaintiffs here only if they had copied and imitated the
product—that is, if they had listened to the sounds performed and
embodied on the records and then had expended the necessary sums to
copy and imitate the sounds on their own tapes.
Younger, 316 F. Supp. at 350. See also Columbia Broadcasting Sys. v. Custom
Recording Co., 258 S.C. 465, 189 S.E.2d 305, cert. denied, 409 U.S. 1007 (1972);
Comment, Goldstein v. California: Breaking Up Federal Copyright Preemption, 74
Colum. L. Rev. 960, 962 (1974), 24 Copyright L. Symp. 51 (1980); Note, The
"Copying-Misappropriation" Distinction: A False Step in the Development of the
Sears-Compco Pre-emption Doctrine, 71 Colum. L. Rev. 1444, 1445 & 1461 n.10
(1971).
[FN253] For a critique of the distinction based upon economic analysis and the
objectives of federal copyright law, see Note, supra note 252, at 1461. See also G.
Ricordi & Co. v. Haendler, 194 F.2d 914 (2d Cir.1952) (rejecting a distinction
between "copying" a book and making a photographic copy of it); 1 M. Nimmer,
supra note 23, §2.10[B][2]; Nimmer, Copyright and Quasi-Copyright Protection for
Characters, Titles and Phonograph Records, 59 Trademark Rep. 63, 74 (1969).
The specific holdings of these cases have been made moot, since the Supreme
Court concluded in the Goldstein case that states are free to protect against record
piracy when recordings are not protected by the federal act. Goldstein v. California,
412 U.S.546, 571 (1973). The basis of the Goldstein decision was not an approval of
the state misappropriation theories in general, but rather a finding that, prior to 1972,
sound recordings were a category of writing that simply was not addressed by
Congress, so that no preemptive effect could be read into the failure of Congress to
extend federal copyright protection to sound recordings. The federal act was amended
to protect sound recordings made since 1972. The 1976 Copyright Act, which carried
forward the 1971amendment, made it clear that Congress did not intend to preempt
state record piracy statutes for records produced prior to 1972. 17 U.S.C. §301(c)
(1982).
[FN254] See supra text accompanying notes 233-45.
[FN255] See also International News Serv. v. Associated Press, 248 U.S. 215 (1918)
(expanding federal unfair competition law to protect "news" in a pre-Erie setting).
[FN256] 17 U.S.C. §301(b)(1) (1982). See Gorman, supra note 43, at 602-05.
Although Bromhall v. Rorvik, 478 F. Supp. 361 (E.D. Pa. 1979) held that states were
not preempted from protecting ideas, Professor Gorman concluded that the
"overwhelming weight of the cases is to the contrary." Gorman, supra note 43, at 605.
[FN257] 17 U.S.C. §301(b)(3) (1982). See generally A. Latman, supra note 40, at 34
(arguing that ideas as a category are not fully subject to state protection, but instead
are subject to state protection based upon distinguishable legal theories).
[FN258] See generally 3 M. Nimmer, Nimmer on Copyright §§16.01-.08(1988);
supra note 245.
[FN259] See, e.g., Brown, Unification: A Cheerful Requiem for Common Law
Copyright, 24 UCLA L. Rev. 1070 (1977).
[FN260] If this approach is adopted, some of the idea-submission cases currently
decided under state law could be subsumed under federal law. Presumably, some of
the limitations that have been developed at the state level would be appropriate at the
federal level as well.
[FN261] Applying the "abstractions" test, works that are far on the idea side of the
continuum are included already under the federal copyright law. See supra notes 80110 and accompanying text.
[FN262] There already exist many such limitations for particular types of works in the
1976 Copyright Act. See 17 U.S.C.A. §§107-119 (West 1977 & Supp. 1989). There
are compulsory licenses for cable (id. §111), sound recordings (id. §115), and
satellite-to-home dish transmissions (id. §190); there are "compelled" licenses for
noncommercial broadcasting of certain copyrighted works (id. §118) and jukeboxes
(id. §116, 116A). For an interesting analysis of the interaction between preemption of
state laws and exclusions, limitations, and compulsory licenses under the federal act,
see Goldstein, Preempted State Doctrines, Involuntary Transfers and Compulsory
Licenses: Testing the Limits of Copyright, 24 UCLA L. Rev. 1107 (1977).
Arguably, §102(b) already represents a federal resolution of the idea-expression
dichotomy that relates to the scope of protection. The problem is that it is labeled
"copyrightable subject matter" rather than "scope of exclusive rights." See supra
note126 and accompanying text.
[FN263] The relationship between the idea-expression dichotomy and the protection
of fact works is developed infra at notes 589-608 and accompanying text.
[FN264] Gorman, supra note 43, at 570.
[FN265] Id. at 579. See also Reichman, Design Protection in Domestic and Foreign
Copyright Law: From the Berne Revision of 1948 to the Copyright Act of 1976, 1983
Duke L.J. 1143 (making a similar proposal for works of utility); Goldstein, Copyright
and the First Amendment, 70 Colum. L. Rev. 983 (1970) (favoring "elastic" rules of
protection). The relationship between the idea-expression dichotomy and works of
utility is more fully developed infra at notes 534-54 and accompanying text; the
relationship between the dichotomy and the first amendment is developed infra at
notes 336-82 and accompanying text.
[FN266] See Kurtz, The Independent Legal Lives of Fictional Characters, 1986 Wis.
L. Rev. 429. The relationship between the idea-expression dichotomy and character
protection is more fully developed infra at notes 609-31 and accompanying text.
[FN267] Id. at 440, 472.
[FN268] See generally P. Goldstein, Copyright, Patent, Trademark, and Related State
Doctrines 347-51 (2d ed. 1981).
[FN269] 376 U.S. 225 (1964); 376 U.S. 234 (1964).
[FN270] 412 U.S. 546 (1973).
[FN271] See supra text accompanying notes 250-54.
[FN272] See Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972) (holding that a system
for translating binary code decimal numbers to pure binary numbers was not
patentable as a mere "algorithm," which, in this context, might be viewed as a
mathematical idea); Parker v. Flook, 437 U.S. 584, 594-95 (1978) (holding that the
use of a digital computer to calculate an "alarm limit" in connection with a catalytic
conversion process was basically only an "algorithm," thus not subject to patent).
[FN273] 450 U.S. 175 (1981).
[FN274] Id. at 192-94.
[FN275] 447 U.S. 303 (1980).
[FN276] Diamond v. Diehr, 450 U.S. 175, 191 (1981).
[FN277] Chakrabarty, 447 U.S. at 310.
[FN278] See generally Andrews, Patents on Equations: Some See a Danger, New
York Times, Feb. 15, 1989, at D1, col. 4.
[FN279] Id. at D6, col. 2. According to Professor Ronald Bracewell: "By the time
you've spent six months writing 10,000 lines of computer code, you know darn well it
isn't something nature put there." Id. at D6, col.1.
[FN280] Baker v. Selden, 101 U.S. 99, 103 (1880). The situation in which a copyright
owner "forfeits" rights in otherwise protectable expression because it is "merged"
with, or a "unity" with, unprotectable idea, was not in fact before the Court. The facts
indicate that Baker was able to copy the book, or certain aspects of it, without literally
using the same charts. Id. at 100-01.
Another definition is contained in Atari, Inc. v. Amusement World, Inc., 547 F.
Supp. 222 (D. Md. 1981): "[W]hen an idea is such that any use of that idea
necessarily involves certain forms of expression, one may not copyright those forms
of expression, because to do so would be in effect to copyright the underlying idea."
Id. at 228. See also supra text accompanying notes 170-71 (quoting Apple Computer,
Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir.1983)).
[FN281] 1 M. Nimmer, supra note 23, §2.18[C], at 2-202.
[FN282] See, e.g., supra text accompanying note 135 (quoting Sid & Marty Krofft
Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1162-63 (9th Cir. 1977)).
[FN283] From this perspective, it would seem that the fair use doctrine would be the
more appropriate vehicle for determining whether a literal taking should be excused,
since it brings into play the other factors of the case—such as those listed in 17 U.S.C.
§107 (1982).
[FN284] Cf. supra text accompanying notes 246-62.
[FN285] Although every copyrighted work may be viewed as embodying an idea and
an expression, very few works would be incapable of multiple expressions.
[FN286] For an approach to the copyrightability of computer programs in terms of a
potential merger argument, see, e.g., Apple Computer, Inc. v. Franklin Computer
Corp., 714 F.2d 1240 (3d Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984) (discussed
at supra notes 162-78 and accompanying text). The issue might also be couched in
terms of substantial similarity: in determining how substantial a similarity is
infringing, we look to see how much of the expression had to be taken in order to
achieve the result. As the Apple Computer case illustrates, whenever the idea at issue
is a work of utility (such as a computer program), the works of utility doctrine also
comes into play. The inquiry then is whether the work can be used (as opposed to
copied) without taking the expression. See generally infra note 291 and accompanying
text.
[FN287] Apple Computer, 714 F.2d at 1253.
[FN288] See generally infra notes 383-631 and accompanying text (analyzing how
the purposes of the idea-expression dichotomy can be realized by reference to other
basic copyright principles).
[FN289] Some courts already couch their decisions in terms more like substantial
similarity than idea-expression. For example, in Reyher v. Children's Television
Workshop, 533 F.2d 87 (2d Cir.), cert. denied, 429 U.S. 980 (1976), the court
combined the language of idea-expression, substantial similarity, and merger (evident
in the use of the words "necessarily follow," "necessarily results," and "only capable")
to conclude that defendant's work did not infringe:
Another helpful analytic concept is that of scenes a faire, sequences of
events which necessarily follow from a common theme. "[S]imilarity
of expression . . . which necessarily results from the fact that the
common idea is only capable of expression in more or less stereotyped
form will preclude a finding of actionable similarity." Copyrights,
then, do not protect thematic concepts or scenes which necessarily
must follow from certain similar plot situations.
Reyher, 533 F.2d at 91 (citations omitted). For further discussion of the nonprotection
of scenes a faire, see 3 M. Nimmer, supra note 258, §13.03[A], at 13-32; infra text
accompanying notes 295-96.
Similarly, some of the potential merger cases involving "photograph-like"
reproductions are more logically decided by the theory of substantial similarity
(determining whether defendant copied the plaintiff's work or merely duplicated the
subject matter independently). For example, in Franklin Mint Corp. v. National
Wildlife Art Exch., Inc., 575 F.2d 62 (3d Cir.), cert. denied, 439 U.S. 880 (1978), the
court held that Albert Gilbert and the Franklin Mint did not infringe the plaintiff's
copyright in a painting of the same subject matter by Gilbert. Franklin Mint, 575 F.2d
at 67. The court recognized the "weakness" of a copyright in a "photograph-like"
reproduction as against similar reproductions, since "a scientific drawing of a bird
must necessarily be more similar to another of the same nature than it would be to an
abstract version of the creature in flight." Id. at 65. However, the court upheld the trial
court's finding that the original work was nonetheless copyrightable. Id. at 66. In
Gross v. Seligman, 212 F. 930 (2d Cir. 1914), a photographer was held to have
infringed his own copyright (which he had sold) by photographing the same model in
a consciously similar pose. Id. at 932. Thus, a photograph need not be viewed as
"merging" with the idea of the subject matter of the photograph.
[FN290] In the context of scenes a faire (see supra note 289), the requirement of
originality would also tend to prevent the extension of copyrights to include necessary
scenes a faire. See, e.g., Yankwich, Originality in the Law of Intellectual Property, 11
F.R.D. 457 (1952) (relating the scenes a faire analysis to the requirement of
originality). Judge Yankwich concluded:
What emerges from these cases is the fact that similarity of theme
so obviously calls for similarity of treatment that originality will be
made to reside in the association and grouping of materials, the
delineation of character, the conflict and the other elements which are
the very essence of a dramatic production. . . .
Id. at 464-65. In other words, stock themes (and incidental elaborations which flow
inevitably from them) do not contain sufficiently original elements to meet the test of
originality in copyright law. See also Sid & Marty Krofft Television Prods., Inc. v.
McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977) (relating the merger of idea and
expression with the amount of originality). The court in Krofft stated:
The idea and the expression will coincide when the expression
provides nothing new or additional over the idea. . . . [T]he idea of a
plaster statute [sic] of a nude will probably coincide with the
expression of that idea when an inexpensive manufacturing process is
used. There will be no separately distinguishable features in the
statute's [sic] expression over the idea of a plaster nude statute [sic].
The complexity and artistry of the expression of an idea will
separate it from even the most banal idea. Michaelangelo's David is, as
an idea, no more than a statute [sic] of a nude male. But no one would
question the proposition that if a copyrighted work it would deserve
protection even against the poorest of imitations. This is because so
much more was added in the expression over the idea.
. . . [T]he scope of copyright protection increases with the extent
expression differs from the idea.
Id. at 1168 (footnote omitted). The court found that the facts in the case did not
represent a merger of idea and expression: "The expression inherent in the H.R.
Pufnstuf series differs markedly from its relatively simple idea." Id. at 1169.
[FN291] A recent case seems to equate the idea-expression dichotomy, at least in the
context of computer programs, with works of utility. In Whelan Assocs., Inc. v.
Jaslow Dental Lab., Inc., 797 F.2d 1222 (3d Cir.1986), cert. denied, 479 U.S. 1031
(1987), the court explained Baker as follows:
The Court's test in Baker v. Selden suggests a way to distinguish
idea from expression. Just as Baker v. Selden focused on the end
sought to be achieved by Selden's book, the line between idea and
expression may be drawn with reference to the end sought to be
achieved by the work in question. In other words, the purpose or
function of a utilitarian work would be the work's idea, and everything
that is not necessary to that purpose or function would be part of the
expression of the idea.
Whelan, 797 F.2d at 1236. The court cited Apple Computer, Inc. v. Formula Int'l,
Inc., 562 F. Supp. 775, 783 (C.D. Cal. 1983), aff'd, 725 F.2d 521 (9th Cir. 1984), as
follows: "Apple seeks here not to protect ideas (i.e. making the machine perform
particular functions) but rather to protect their particular expressions . . . ." Whelan,
797 F.2d at 1236. See generally supra notes 165-74 and accompanying text
(discussing computer programs); infra notes 534-88 and accompanying text
(discussing the works of utility doctrine).
[FN292] See generally infra notes 530-33 and accompanying text (discussing the fair
use doctrine).
[FN293] See supra notes 261-62 and accompanying text.
[FN294] See NEC Corp. v. Intel Corp., Copyright L. Dec. (CCH) P26,379 (N.D. Cal.
1989). The court held that Intel's computer microcode was copyrightable, but that its
copyright was lost for lack of notice, and that NEC's work did not infringe for lack of
substantial similarity. Speaking to the merger theory, the court said:
It also seems . . . that, as a matter of practicality, the issue of a
limited number of ways to express an idea is relevant to infringement,
but should not be the basis for denying the initial copyright. The
Register of Copyrights will not know about the presence or absence of
constraints that limit ways to express an idea. The burden of showing
such constraints should be left to the alleged infringer. Accordingly, in
the absence of Ninth Circuit authority to the contrary, it is concluded
that the relationship between "idea" and "expression" will not be
considered on the issue of copyrightability, but will be deferred to the
discussion of infringement.
Id. at 22,381.
[FN295] See, e.g., Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d
Cir.), cert. denied, 449 U.S. 841 (1980); Reyher v. Children's Television Workshop,
533 F.2d 87, 91 (2d Cir.), cert. denied, 429 U.S. 980 (1976); Alexander v. Haley, 460
F. Supp. 40, 45 (S.D.N.Y. 1978).
[FN296] The Ninth Circuit stated: "The idea and expression will coincide when the
expression provides nothing new or additional over the idea." Sid & Marty Krofft
Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1168 (9th Cir. 1977). In
such a case, it is the lack of originality rather than a merger theory which is the
clearest basis for the lack of protectable expression. Clearly stock ideas are capable of
new expression, since many of the greatest classic works are based upon stock
themes. As concluded by Judge Yankwich:
The study of literature shows deliberate borrowings from common
sources by the great and near great. Many of Shakespeare's plays are
based on stories actually taken from Boccacio and other less known
writers. Romeo and Juliet found its source in an Italian "novella",
dealing with the feud between the Capulets and Montagues. Out of a
simple story came the great characterization of Romeo and Juliet . . . .
Yankwich, supra note 290, at 472-73.
[FN297] 446 F.2d 738 (9th Cir. 1971).
[FN298] Id. at 742.
[FN299] Id. at 740.
[FN300] The primary cases have involved business forms, game rules, scenes a faire,
"junk art" such as jeweled bee pins, "photographic-like" reproductions, and computer
programs. See supra notes 287-92 and accompanying text.
[FN301] Cf. supra text accompanying notes 98, 127-31 (noting the expansion of
copyright for particular types of works).
[FN302] See Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d
Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984); Whelan Assocs., Inc. v. Jaslow
Dental Lab., Inc., 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987);
supra notes 165-74 and accompanying text.
[FN303] 253 F.2d 702 (2d Cir.), cert. denied, 358 U.S. 816 (1958).
[FN304] Beardsley, 253 F.2d at 708.
[FN305] Id. at 704 (citations omitted). In Beardsley, the merger is of otherwise
protectable language into a "useful" blanket bond form; in Baker, by contrast, the
merger is of a useful form into an otherwise copyrightable book. Compare Beardsley,
253 F.2d at 704 with Baker v Selden, 101 U.S. 99, 104 (1880). Perhaps a distinction
can be made based upon what is merged into what. Yet the merger theory presented in
Baker seems to cover both cases, and logically, if the idea and expression are so
intertwined that use of the expression is not possible without use of the idea, it should
make no difference which is technically embedded in which.
The "separability" test suggested by Beardsley might have its parallel in the
separability test for determining whether the esthetic form of a pictorial, sculptural or
graphic work of utility is subject to copyright protection. See Beardsley, 253 F.2d at
705. See generally infra text accompanying notes 534-88 (discussing the works of
utility doctrine).
[FN306] Beardsley, 253 F.2d at 705.
[FN307] Id.
[FN308] Id. at 705 (citing Miner v. Employers Mut. Liab. Ins. Co., 229 F.2d 35 (D.C.
Cir. 1956); Crume v. Pacific Mut. Life Ins. Co., 140 F.2d 182 (7th Cir.), cert. denied,
322 U.S. 755 (1944); Dorsey v. Old Surety Life Ins. Co., 98 F.2d 872 (10th Cir.
1938)). The court stated: "We have had to decide the copyright question here because
one portion of the judgment appealed from enjoined Beardsley from claiming a
copyright on any of his forms." Beardsley, 253 F.2d at 705.
In the related area of copyrightability of game rules, however, the court in
Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967), specifically
rejected the option of adopting "a stringent standard for showing infringement which
some courts apply when the subject matter involved admits of little variation in form
of expression," id. at 678, and made the test one of copyrightability itself. Id. The
court explained that when only one or a few forms of expression are available,
to permit copyrighting would mean that a party or parties, by
copyrighting a mere handful of forms, could exhaust all possibilities of
future use of the substance. In such circumstances it does not seem
accurate to say that any particular form of expression comes from the
subject matter. However, it is necessary to say that the subject matter
would be appropriated by permitting the copyrighting of its expression.
We cannot recognize copyright as a game of chess in which the public
can be checkmated.
Morrissey, 379 F.2d at 678-79. The case was perhaps an extreme one, in that the rules
in which copyright was claimed were so simple and commonplace that the court
seemed unwilling to encourage the plaintiff to ever bring such an infringement action
again. See id. at 679. The court of appeals foreclosed plaintiff from ever suing, "even
if his particular expression was deliberately adopted." Id. The rule in which copyright
was claimed was as follows:
Entrants should print name, address and social security number on a
boxtop, or a plain paper. Entries must be accompanied by * * * boxtop
or by plain paper on which the name * * * is copied from any source.
Official rules are explained on * * * packages or leaflets obtained from
dealer. If you do not have a social security number you may use the
name and number of any member of your immediate family living with
you. Only the person named on the entry will be deemed an entrant and
may qualify for prize.
Use the correct social security number belonging to the person
named on entry * * * wrong number will be disqualified.
Id. at 678. Cf. text accompanying notes 521-29 (discussing de minimis works
showing minimal originality).
[FN309] Beardsley, 253 F.2d at 706. The holding of the case depends upon the
distinction, because the court of appeals modified the injunction that was granted by
the trial court: "[S]ince . . . in general insurance forms are copyrightable, the
injunction should be modified so as to extend no further than to the forms included in
the forfeiture as determined by [the trial judge]." Id. at 708.
A more recent district court case goes even further in suggesting the limited
vitality of Baker in the context of forms that are said to merge idea and expression. In
Harcourt, Brace & World, Inc. v. Graphic Controls Corp., 329 F. Supp. 517 (S.D.N.Y.
1971), the district court cited Beardsley for the proposition that "Baker v. Selden . . .
is 'inapplicable' where 'language explanatory' of the clearly copyrightable 'writing' is
'inseparably included' in the 'writings which constitute the means or usage." Id. at 524.
In a footnote, the court elaborated its rationale:
The distinction between "explanation" and "use" in any event is an
awkward one which has not been reviewed by the Supreme Court in
nearly a century. Almost always, as here in the case of answer sheets,
"forms" are a mixture of explanation and use. In light of the clear
mandate of the Copyright Act to register all "writings," and following
Continental Casualty Co. v. Beardsley, the distinction between
explanation and use should be limited to forms which are merely pages
for mechanically recording data.
Id. at 524 n.4 (citation omitted).
[FN310] 542 F.2d 1053 (9th Cir. 1976), cert. denied, 433 U.S. 908 (1977).
[FN311] Id. at 1061.
[FN312] Some of the forms cases seem to speak to the copyrightability issue as well
as the infringement issue. For example, in Crume v. Pacific Mut. Life Ins. Co., 140
F.2d 182 (7th Cir.), cert. denied, 322 U.S. 755 (1944), the court stated that "the matter
of infringement is so closely related to, if not actually dependent upon, the extent of
protection to which plaintiff was entitled by virtue of his copyrights as to require
some consideration of the latter." Crume, 140 F.2d at 183. Upon such consideration,
the court then discussed the distinction between the forms cases and other cases
involving works of utility:
Plaintiff attempts to compare the instant situation with books
containing plans and descriptions for houses, or plans for formal
gardens, or plans for interior decoration. In such instance, however, the
disclosure of the plan may be put to use by the utilization of material,
tools and equipment in the hands of the mechanic or workman. The use
to which the public is entitled is effected by means other than the
embodiment of words. In the instant situation there is no room for the
skill of the mechanic or artisan in utilizing the plan or the method
disclosed. Its use, to which the public is entitled, can be effected solely
by the employment of words descriptive thereof. In our view, where
the use can be effected only in such manner, there can be no
infringement even though the plan or method be copied. We realize
that such a view leaves little, if any, protection to the copyright owner;
in fact, it comes near to invalidating the copyright. This situation,
however, results from the fact that the practical use of the art explained
by the copyright and lodged in the public domain can be attained solely
by the employment of language which gives expression to that which
is disclosed.
Id. at 184.
The case is a good articulation of a pure merger situation, limiting the doctrine to
the forms cases in which the language—like the language in a legal form—consists of
words of art, with specific legal or practical consequences. The reasoning of the case
thus need not apply with equal validity to, for example, cases involving game rules.
For game rules, unlike legal forms, the language is not absolutely essential to the
achievement of the intended result, so that it is appropriate to catch problems that may
arise at the infringement stage. See, e.g., Morrissey v. Procter & Gamble Co., 379
F.2d 675, 678 (1st Cir. 1967); Affiliated Hosp. Prods., Inc. v. Merdel Game Mfg. Co.,
513 F.2d 1183, 1188-89 (2d Cir. 1975). Cf. Durham Indus., Inc. v. Tomy Corp., 630
F.2d 905, 914-15 (2d Cir. 1980); Goodson-Todman Enters., Ltd. v. Kellogg Co., 513
F.2d 913 (9th Cir. 1975).
[FN313] See, e.g., supra notes 298-99 and accompanying text.
[FN314] Cf. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir.
1971). The court in Kalpakian identified the goal of the idea-expression dichotomy as
"the preservation of the balance between competition and protection reflected in the
patent and copyright laws." Id. at 742. The court then applied the same consideration
to what it characterized as a merger of idea and expression. Id. at 742.
[FN315] This outcome seems to overlook the fact that copyright is the engine which
balances the interests. The framers of the Constitution did not adopt a general power
allowing the Congress to promote the arts and sciences, but provided that it might
pass patent and copyright laws to that end. U.S. Const. art. I, §8. Although this may
appear to subjugate copyright laws to interests of users ("the arts and sciences"), the
copyright clause itself aligns an author, as much as or more than a user, with the
public interest as the one whose protection will further the advancement of arts and
sciences.
If the copyright clause does not make the user's interest paramount to that of
copyright owners, the first amendment may be the source which accomplishes that
task. See infra text accompanying notes 330-82.
[FN316] See, e.g., 17 U.S.C. §§108-110, 112, 117 (1982).
[FN317] See supra note 262.
[FN318] See 17 U.S.C. §107 (1982); Rosemont Enters., Inc. v. Random House, Inc.,
366 F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 1009 (1967); Time Inc. v. Bernard
Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968).
[FN319] See generally Schuchart & Assocs., Inc. v. Solo Serve Corp., 540 F. Supp.
928, 941 (W.D. Tex. 1982); DeSilva Constr. Corp. v. Herrald, 213 F. Supp. 184, 196
(M.D. Fla. 1962); Muller v. Triborough Bridge Auth., 43 F. Supp. 298, 300 (S.D.N.Y.
1942). The prior law on the subject is preserved under 17 U.S.C. §113(b) (1982)
(dealing specifically with works depicting useful articles). See infra text
accompanying notes 578-81.
[FN320] See Imperial Homes Corp. v. Lamont, 458 F.2d 895, 899 (5th Cir. 1972);
Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Constr. Co., 542 F. Supp. 252 (D.
Neb. 1982). Cf. Scholz Homes, Inc. v. Maddox, 379 F.2d 84 (6th Cir. 1967) (possibly
holding to the contrary). The court in Scholz Homes, however, was fairly cautious in
its discussion of the application of Baker to architectural works. The court cited the
possibility that Mazer restricts the Baker case, and otherwise expressed reservations
about the applicability of Baker to limit copyright in architectural plans. Scholz
Homes, 397 F.2d at 86 n.1. The court then found it unnecessary to decide the issue,
because it was sufficient that the defendant had not had access to plaintiff's plans. Id.
at 86. The extent to which the case denied protection of plans therefore depended
upon the extent to which the plans were incorporated into a brochure to which the
defendant had access.
[FN321] Cf. Baker v. Selden, 101 U.S. 99, 105 (1880).
[FN322] Presumably, cases based upon state-law theories of contract and
misappropriation would not be preempted in such circumstances by 17 U.S.C. §301
(1982). Cf. Aronson v. Quick Point Pencil Co., 440 U.S. 257, 265 (1979).
[FN323] A case in which a monopoly over the reproduction of paintings was achieved
by controlling access to the originals is Alfred Bell & Co. v. Catalda Fine Arts, Inc.,
191 F.2d 99 (2d Cir. 1951). In that case, mezzotint engravings of Old Masters were
copied, partly because the European galleries had denied the defendant access to the
original public domain paintings to make new reproductions. Id. at 106. A defense
based upon a violation of antitrust laws, while not frivolous, was held to be premature
for consideration at the preliminary injunction stage of the case. Id. at 105. A similar
factual backdrop existed in the case of International News Serv. v. Associated Press,
248 U.S. 215 (1918), in which the International News Service (INS) had been denied
access to certain sources of news during World War I. Although the case as presented
to the United States Supreme Court was based upon misappropriation theory and not
copyright, see id. at 232, the inability of INS to get the information in any other way
was not held to prevent the Associated Press from enforcing any rights it might
otherwise have had. See id. at 245.
[FN324] 111 U.S. 53 (1884).
[FN325] Id. at 57.
[FN326] This example assumes, contrary to fact, that the Sarony photograph is still
protected by copyright. A modern example that is still under copyright would be the
Zapruder film of the Kennedy assassination. See Time Inc. v. Bernard Geis Assocs.,
293 F. Supp. 130 (S.D.N.Y. 1968). The trial court upheld Geis's right to make copies
of particular frames of the film in order to illustrate his book, by finding that the
doctrine of fair use was broad enough to cover Geis's arguably illicit copying of the
work. Id. at 146. It is doubtful, however, that the court would have imposed a duty
upon Time, Inc. to allow such a taking if the deed had not already been done. See id.
at 144. In any event, the public interest which the court weighed so heavily in the fair
use analysis was not dependent upon the merger of the idea of the film with the
expression of it. Id. at 146. Rather, the public interest was introduced by the
happenstance that Zapruder's otherwise unexceptional film coincided with the
assassination, an event which independently had significant public interest. Id. at 143.
[FN327] Under the new law, the date of publication is generally irrelevant to both the
obtaining of federal copyright protection and the duration of that protection. See 17
U.S.C. §§102(a), 301(a), 302 (1982). This is in contrast to the prior federal law, which
covered most works only from the date of publication and extended protection for a
maximum of 56 years from the date of publication (see 17 U.S.C. §§10, 24 (1976)).
Protection for most unpublished works was under state or common law copyright,
sometimes
referred
to
as
the
right
of
first
publication.
[FN328] To be sure, there are incentives to publish a work. For works created but not
published prior to 1978, the copyright will expire no earlier than December 31, 2002.
See 17 U.S.C. §303 (1982). However, if the work is published by that date, the
copyright will expire no earlier than December 31, 2027. Id. The purpose of the
extension is to encourage the publication of these older works. See H.R. Rep. No.
1476, 94th Cong., 2d Sess. 1, 138-39, reprinted in 1976 U.S. Code Cong. & Admin.
News 5659, 5754-55. Because the economic advantages of copyright can usually be
realized only by publication of the work, there is a natural incentive to publish and
obtain the protection before the copyright expires. However, the person in possession
of remaining copies is free for whatever reason to withhold publication or disclosure
of
the
work.
[FN329] The case is obviously different if the copyright has expired, and the author is
claiming only a moral right to control dissemination. Cf. Shostakovich v. Twentieth
Century-Fox Film Corp., 196 Misc. 67, 70, 80 N.Y.S.2d 575, 578 (Sup. Ct. 1948),
aff'd, 275 A.D. 692, 87 N.Y.S.2d 430 (1949). For the duration of the copyright,
however, the exclusive rights are not subject to any overriding public interest in
dissemination. Where such an outcome is intended, it is possible to establish a
compulsory license, as in the case of cable television, phonorecords, jukeboxes,
noncommercial television and satellite-to-home dish transmissions. See 17 U.S.C.
§§111, 115, 116, 118, 119 (1982). In close cases in which works have been copied by
arguably surreptitious means, fair use has been available to give some protection to a
user cloaked with a presumably great public interest. See, e.g., Time Inc. v. Bernard
Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968) (allowing an arguably surreptitious
copying of the Zapruder film of the Kennedy assassination, but still upholding
Zapruder's copyright so that he need not disclose the work unless it was subpoenaed).
But see Harper & Row, Publishers v. Nation Enters., 471 U.S. 539 (1985) (holding
that the copyright in the Ford memoirs was not lost, despite strong public interest).
The issues raised when the owner of an exclusive right chooses to suppress the
work have been more clearly articulated in the case of patents. Even in the patent
context, however, it is generally the patent owner's prerogative to suppress the
invention, or charge a prohibitively high royalty for its use. See Special Equip. Co. v.
Coe, 324 U.S. 370, 380 (1945) (Douglas, J., dissenting) (discussing the history of the
doctrine and arguing that it should be modified). Where there is a strong federal
policy, special enactments have provided for mandatory patent licensing. See, e.g., 42
U.S.C. §1857(h)(6) (1982); cf. 42 U.S.C. §2181 (1982) (denying patents for
inventions relating to atomic weapons and the utilization of nuclear material). The
right of suppression and prohibitive pricing is also restricted by the antitrust and other
laws. E.g., 42 U.S.C. §2135 (1982).
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