Edward Samuels*

56 Tenn. L. Rev. 321 (1989)

Copyright (c) Tennessee Law Review Association, Inc. 1989
The University of Tennessee
[Part 1]

I. Introduction                                                                                       322

II. The Idea-Expression Dichotomy: History and Development              325

            A. Formal Origin: Baker v. Selden                                            326

                        1. The Holding                                                              327

                                    a. The Use Test                                                327

                                    b. The Merger Theory                                      329

                                    c. The Categorical Approach                            329

                                    d. The Exclusive Rights Test                              330

                        2. Precedential Authority                                               331

            B. Early Uses of the Doctrine: 1853-1924                                 334

            C. The “Abstractions” or “Patterns” Tests                                 339

            D. Statutory Development                                                         347

                        1. Copyright Office Regulations                                     347

                        2. Codification in Section 102(b)                                   350

            E. Recent Cases                                                                       351

            F. The Computer Cases                                                            355

                        1. The First Phase: Concerns with Copyrightability        356

                        2. The Second Phase: Scope of Protection                    360

                        3. Application of the Idea-Expression Dichotomy

                                    To Computer Programs                                    366

III. Analysis and Critique of the Idea-Expression Dichotomy                  370

            A. Excluding Categories of Works                                            371

                        1. Protection Against Exact Copying                             372

                        2. Proposed Federal Scheme of Protection                   375

            B. Merger Theory                                                                     382

[Click on Headings 4-6 to go to Part 2]

IV. Constitutional Considerations                                                          395

V. Beyond the Idea-Expression Dichotomy                                           407

VI. Conclusion                                                                                     462

[p. 322] I. Introduction

       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 idea-expression 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 idea-expression 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 idea-expression 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 idea-expression 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 idea-expression 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 idea-expression 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]

       The Ninth Circuit seemed willing to concede that the limited scope of protection, covering only original elements of expression, theoretically militates against an overextensive 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 idea-expression 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 idea-expression 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 information-based 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 preemptive 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 well-developed 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 idea-expression 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 idea-expression 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 idea-expression 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.


[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" idea-expression 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 so-called 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.


[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 Irish-Jewish 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 743-49. 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 socio-economic 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 idea-expression 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. Bandai-America, 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 mass-market 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.


       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 state-based 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 idea-expression 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.


[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 video-recording); 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 idea-submission 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 80-110 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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