The Idea-Expression Dichotomy

In Copyright Law

[Part 2]

 [Click on Headings 1-3 to go to Part 1]

I. Introduction                                                                                                     322

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

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

IV. Constitutional Considerations                                                                        395

V. Beyond the Idea-Expression Dichotomy                                                         407

            A. The Idea-Expression Cases and Other Copyright Principles                408

                        1. Substantial Similarity                                                               409

                                    a. False Substantial Similarity Case                                  410

                                    b. False Idea-Expression Cases                                      413

                                    c. The Relationship Between Substantial Similarity

                                                And Idea-Expression                                          419

                                    d. Other Tests of Infringement                                         424

                        2. Originality                                                                               426

                                    a. Derivative Works and “Junk Art”                                429

                                    b. The “Purpose of Copyright Law”:

                                                Creativity versus Industry                                    434

                                    c. De Minimis Works                                                      436

                        3. Fair Use                                                                                 438

            B. Categories of Works and the Idea-Expression Dichotomy                   440

                        1. Works of Utility                                                                      440

                                    a. Systems and Procedures                                             441

                                    b. Pictorial, Graphic, and Sculptural Works                     445

                                                i. Items of Manufacture and Mechanical Works    448

                                                ii. Works Depicting Useful Articles                       450

                        2. Factual Works: News, History, Scientific Facts, and Discoveries  454

                        3. Characters                                                                              458

V. Conclusion                                                                                                     462


IV. Constitutional Considerations


The Constitution contains some apparent limitations on copyright that would prevent Congress from expanding the law beyond its constitutional limits.[FN330] For example, Congress could not pass a copyright law that granted copyrights in perpetuity (as at common law).[FN331] The reference to authors and their writings has been thought to embody a minimal test of originality, so that Congress could not pass a copyright or related law that protected non-original works.[FN332] The reference to writings could conceivably limit Congress to protecting [p. 396] works that have been fixed in a tangible means of expression,[FN333] but it has not been interpreted to limit Congress to the protection of written or verbal works alone.[FN334] Nothing in the copyright clause, however, necessarily compels the idea-expression dichotomy, and Congress could, consistently with the copyright clause, protect ideas.[FN335]


There is another potential constitutional source for the idea-expression dichotomy that came into vogue during the 1970s—the first amendment to the Constitution.[FN336] Although initially popularized [p. 397] primarily by Professor Nimmer,[FN337] the concept has obtained a certain degree of judicial approval.[FN338] In order to challenge successfully the validity of the idea-expression dichotomy, it has become necessary to deal with the purported first amendment overtones.


Professor Nimmer suggested that advocacy of both a pro-copyright and a freedom of expression bias "may, in fact, be contradictory."[FN339] Although he discussed the possibility that copyright is ipso facto a violation of free speech and therefore unconstitutional, he seemed to concede that the dilemma is inevitable only if one takes an absolutist view of the first amendment.[FN340] Even though "no one really believes that every law which abridges speech falls before the First Amendment,"[FN341] Professor Nimmer nevertheless felt compelled to provide a framework for resolving the presumed constitutional dilemma.[FN342] Rejecting an ad hoc balancing test between speech and non-speech interests,[FN343] Professor Nimmer proceeded to find a "definitional balance" based upon the idea-expression dichotomy.[FN344] It would appear that Professor Nimmer has used the dichotomy to resolve a largely fictitious dilemma.[FN345]


[p. 398] The definitional balance that Professor Nimmer sought is, like the dilemma he perceived, broad and simplistic. The idea-expression dichotomy, he asserted, automatically (and in almost all cases) resolved the copyright-free speech dilemma, because the idea-expression dichotomy accommodates the perceived interests in both the copyright clause and the first amendment.[FN346] To provide a solution that automatically resolves most of the perceived dilemma is neat, but ultimately unconvincing. The idea-expression dichotomy simply does not lend itself to the precise and easy application that Professor Nimmer purported to find. Even in the definition of what is idea and what is expression, the doctrine probably incorporates just as many perplexing issues as does the first amendment itself. In Professor Nimmer's own terms, the idea-expression dichotomy is not compelled by the first amendment; rather, it just happens, by chance, to protect many of the interests represented by the first amendment.[FN347]


Another (and preferable) analysis was proposed by Professor Goldstein.[FN348] Instead of analyzing the possibility of an inherent conflict [p. 399] between copyright and the first amendment, Professor Goldstein analyzed the potential for such conflict, which derives from the two "monopolies" of copyright—statutory and enterprise.[FN349] He concluded, however, that the potential for conflict is largely inhibited by various limitations upon the copyright law other than the idea-expression dichotomy.[FN350] Professor Goldstein then considered the effect of the idea-expression dichotomy; however, rather than viewing the dichotomy in absolute terms, as Professor Nimmer did, he characterized the dichotomy as an "elastic" rule, since the difference between idea and expression is not absolute but a question of degree.[FN351] Apparently, it is only because of this elasticity that Professor Goldstein concluded that the idea-expression dichotomy can accommodate some of the first amendment considerations.[FN352] Indeed, Professor Goldstein generally attacked any "inelastic" rule that forecloses [p. 400] the protectability of works based upon their "status";[FN353] he favored a flexible approach, which broadly recognizes the copyrightability of works and thereby leaves a flexible determination of individual cases based upon other principles (such as substantial similarity).[FN354] In this sense, Professor Goldstein's criticism is similar to my criticism of the idea-expression dichotomy when that doctrine is applied inelastically to foreclose categories of works generally.[FN355]


In Harper & Row, Publishers v. Nation Enterprises,[FN356] the United States Supreme Court considered the claim by The Nation magazine that its unauthorized excerpts from President Ford's memoirs prior to its publication were protected by the first amendment.[FN357] The Court, while overruling the United States Court of Appeals for the Second Circuit, approved of the appellate court's statement that the idea-expression dichotomy accommodates first amendment principles: "The Second Circuit noted, correctly, that copyright's idea/expression dichotomy 'strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author's expression.'"[FN358] The Court [p. 401] then focused not upon the taking of President Ford's ideas, but upon the taking of exact language in several short but significant quotations.[FN359] By thus focusing the issue upon the exact copying, which was admitted by The Nation, the Court effectively avoided having to characterize the extent to which the taking of a mere idea would have been protected by either the idea-expression dichotomy or the first amendment. The Supreme Court's approval of the idea-expression dichotomy as embodying first amendment interests was not for the purpose of finding an idea unprotectable, but for demonstrating the theoretically limited nature of the copyright monopoly. Having demonstrated this, the Court proceeded to a decision that, arguably, illustrates the expansive scope of copyright. An apparently limiting rule was turned around to allow for an expansive reading of copyright interests.[FN360]


Furthermore, the Court recognized that not merely the idea-expression dichotomy, but "copyright itself," might "be the engine of free expression.”[FN361] The Court cited approvingly the suggestion of Chief Judge Fuld of the New York Court of Appeals that "[t]here is necessarily, and within suitably defined areas, a concomitant freedom not to speak publicly, one which serves the same ultimate end as freedom of speech in its affirmative aspect."[FN362] The Court then concluded: "Courts and commentators have recognized that copyright, and the right of first publication in particular, serve this countervailing First Amendment value."[FN363] Thus, far from seeing a [p. 402] conflict between copyright and the first amendment that required accommodation, as suggested by Professor Nimmer,[FN364] the Court viewed a broad consistency in the interests protected by each.


The weakness of the Court's approval of the Nimmer approach to the idea-expression dichotomy is underscored by the Harper & Row dissent. The dissent argued that the majority found "no need to resolve the threshold copyrightability issue," but instead focused upon the impropriety of applying fair use in the particular case.[FN365] The dissent concluded, however, that the majority's "exceedingly narrow approach to fair use permits Harper & Row to monopolize information."[FN366] If the taking of a few hundred words from a book constitutes enough of a taking of expression to pass the idea-expression test, then indeed very little expression need be taken to justify a copyright infringement action, and any first amendment favoritism for the taking of ideas does not tolerate even a slight taking of the expression.[FN367]


Even if the case does tend to endorse Professor Nimmer's approach, it is quite clear—even clearer in the language of the Second Circuit—that the first amendment considerations are based upon the characterization of President Ford's memoirs as "historical" or "factual."[FN368] As such, the first amendment considerations are the strongest. The broader rule about ideas is not compelled, however, even if the nonprotectability of historical facts—especially those of a clearly political nature—is accepted.[FN369]


[p. 403] Another case that appears to have adopted the Nimmer approach is Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corporation.[FN370] In Krofft, the defendant argued that its copying of certain cartoon characters was protected by the first amendment.[FN371] The United States Court of Appeals for the Ninth Circuit stated in response:


[T]he impact, if any, of the first amendment on copyright has not been discussed by the [United States Supreme] Court. We believe this silence stems not from neglect but from the fact that the idea-expression dichotomy already serves to accommodate the competing interests of copyright and the first amendment. The "marketplace of ideas" is not limited by copyright because copyright is limited to protection of expression.[FN372]


Applying the rule to the more abstract and fictional work before it, which was not subject (like news or facts) to strong first amendment overtones,[FN373] the court of appeals seemed to recognize the principle—not in order to deny protection to an idea, but to grant protection to what it found to be expression. The statement was used not to analyze first amendment considerations so much as to excuse them from consideration. While recognizing that there may be rare instances, such as graphic or photographic depictions of newsworthy events, where first amendment concerns may be valid, the court simply concluded that the "[p]laintiffs' work in this case is neither a graphic expression nor concerning newsworthy events. Therefore, no first amendment considerations operate."[FN374]


[p. 404] In final analysis, the first amendment considerations seem not to be as pervasive as Professor Nimmer has proposed. His solution, based upon the idea-expression dichotomy, seems to be primarily an easy option that has been adopted by some courts without much criticism or analysis in order to dispose of fairly frivolous first amendment claims. Some rare cases may indeed raise particularly perplexing first amendment considerations. Professor Nimmer argued that graphic or photographic depictions of newsworthy events, such as the assassination of President Kennedy or the My Lai massacre, require particular attention to the first amendment, and he even proposed an elaborate compulsory licensing scheme to accommodate the freer use of such works.[FN375] An additional problem may exist whenever copyrights are accumulated in order to aggregate a monopoly greater than that contemplated for any one copyrightable work, but such problems probably can best be resolved by reference to the antitrust laws or to regulation of specific industries.[FN376] Another troublesome case might be the use of copyright law not ultimately to disseminate a work, but rather to suppress its dissemination. Arguably, this suppression undermines the policy of the copyright law, which is to promote the advancement of arts and sciences.[FN377] [p. 405] Nevertheless, none of these rare cases seem to depend in their analysis upon the idea-expression dichotomy; instead, they require particular rules to handle particular settings.


As identified by Professor Goldstein, there are numerous other copyright principles that accommodate first amendment principles as easily as, or more easily than, the idea-expression dichotomy. These limitations come from


the constitutional mandate (1) that the period of protection not exceed "limited times" and (2) that protection be accorded only to "writings." Furthermore, though the Constitution's copyright clause authorizes an "exclusive right" in authors, the legislative and judicial method has been to dilute exclusivity by (3) sanctioning many unauthorized uses of copyright subject matter, (4) premising infringement upon actual copying rather than incidental replication, (5) depriving the copyright owner of control over copies of his work once they have entered the market place, and (6) treating the injunction as a discretionary rather than a mandatory remedy.[FN378]


[p. 406] In short, the first amendment hardly depends upon the idea-expression dichotomy for its vitality, since the first amendment either is implicated in numerous other principles of copyright law, or is capable of specific attention on its own terms in those few situations in which first amendment interests are extreme.[FN379]


The various categories of works that involve the idea-expression dichotomy suggest that there may be categories in which copyright is only begrudgingly recognized, or in which the scope of protection may properly be reduced.[FN380] Some of these categories are more likely to raise first amendment problems than others. For example, there is, arguably, a stronger interest in protecting free speech and limiting the scope of copyright in the case of factual, historical, or political works than in the case of fictional or purely artistic works.[FN381] Although [p. 407] the first amendment requires a particularly sensitive analysis of copyright interests in these cases, this does not mean that the same analysis should be extended to all types of "ideas" generally.


In any event, the accommodation of first amendment considerations should never require that a category of works be denied copyrightability in its entirety. Because the first amendment interests seem to be related particularly to the nature of the use of the work (rather than merely to the nature of the copyrighted work), a rule that eliminates whole categories of works from protection seems to be too broad. As Professor Goldstein argued, the "elastic" rule that is to be favored is one that recognizes the copyrightable status of works generally, and places limitations, if at all, on the scope of protection for works.[FN382] The idea-expression dichotomy, if it is to be retained, should be interpreted as a flexible one. But if it is so flexible, it could be subsumed under the tests of substantial similarity or fair use, which traditionally have dealt more clearly with determinations of the scope of protection.


V. Beyond the Idea-Expression Dichotomy


The idea-expression dichotomy rarely arises in a pure form. Instead, the cases usually involve other basic principles of copyright law[FN383] or particular types of copyrighted works that help to explain the outcome of the particular cases, and which could have been used as the primary reason for decision. As a result, other policy considerations [p. 408] have become engrafted upon the idea-expression dichotomy that do not serve to justify the dichotomy. Section (A) reviews several legal principles that have been confused with or implicated in the idea-expression dichotomy, or that might be used in lieu of that dichotomy: the principles of substantial similarity, originality, and fair use. Section (B) reviews special rules that have been developed for handling particular categories of works: works of utility (including systems and procedures, and pictorial, graphic, and sculptural works), factual works, and characters.


A. The Idea-Expression Cases and Other Copyright Principles


Many of the cases discussed in this section purported to apply the idea-expression dichotomy, either in conjunction with one of the other principles or in lieu of such other principles. Even when the cases did not specifically cite the idea-expression dichotomy, it is tempting, in trying to discern an overriding principle that unites these separate doctrines, to hypothesize that they are all specific applications of the idea-expression dichotomy. Such attempts to derive a general unified theory are unnecessary or misleading. The purpose of the idea-expression dichotomy—to protect the marketplace of ideas against undue monopoly—is adequately served by the other basic copyright principles that are more clearly and narrowly delineated.


The idea-expression dichotomy suffers from historical, definitional, and conceptual problems that largely negate its usefulness in deciding particular cases.[FN384] One of the primary features of the idea-expression dichotomy is that it purportedly views a copyrighted work in isolation, applying a threshold test before considering issues of infringement[FN385] On the other hand, some of the doctrines discussed in this section—substantial similarity, fair use, and, to some extent, [p. 409] works of utility—involve the comparison of a copyrighted work with an allegedly infringing work. This comparison inevitably will focus the inquiry, and thus is preferable to rules of categorical exclusion—such as the idea-expression dichotomy. It might be suggested that the idea-expression dichotomy is itself flexible, and therefore can be used as a test for determining the scope of copyright protection, instead of acting as a mere categorical threshold test of copyrightability.[FN386] If so limited, however, the dichotomy becomes indistinguishable from other tests of infringement—particularly, substantial similarity—in which event a requiem for the dichotomy may be more straightforward and honest than an assimilation.


            1. Substantial Similarity[FN387]


Probably the greatest number of cases that are improperly or unnecessarily described as idea-expression cases actually deal with, or could have been decided on the basis of, substantial similarity (or lack of substantial similarity) between two works.[FN388] Frequently the doctrines are stated in such a way as to combine them unnecessarily.[FN389] [p. 410] The danger of misdescribing a case as based upon idea-expression, or describing the doctrine in a way that seems to equate the two tests, is that it makes the task of analysis more difficult. In some cases this misdescription leads to the exclusion of works from copyright that are entitled to at least some degree of protection.

a. False Substantial Similarity Cases


There is at least one formulation of the substantial similarity test that incorporates some of the shortcomings of the idea-expression dichotomy, arguably invoking the same outcome in a disguised terminology. These cases may be referred to as "false substantial similarity" cases, because they ultimately turn on a characterization of the copyrighted work as idea or expression. Indeed, the formulation was developed by the same court that first propounded the abstractions test of idea-expression. In the case of Arnstein v. Porter,[FN390] Ira Arnstein, a frequent and unsuccessful plaintiff in copyright suits,[FN391] sued Cole Porter for copyright infringement in several musical works.[FN392] On a summary judgment motion, the district court had dismissed the case.[FN393] On appeal, the United States Court of Appeals for the Second Circuit reversed and remanded with instructions to proceed to trial.[FN394] The case has since been repudiated in part for its holding on the issue of summary judgment,[FN395] and has been severely criticized as well for its test of copyright infringement.[FN396]


[p. 411] The test that the court developed was a two-part test. In weighing the appropriateness of summary judgment, the court stated that "it is important to avoid confusing two separate elements essential to a plaintiff's case in such a suit: (a) that defendant copied from plaintiff's copyrighted work and (b) that the copying (assuming it to be proved) went so far as to constitute improper appropriation."[FN397] The first issue of copying could be evidenced by defendant's admission or by circumstantial evidence of access and copying.[FN398] As a test of infringement that embodies the standard of substantial similarity, the first part of the test is not objectionable. Regarding the second element, however, the court stated that "[i]f copying is established, then only does there arise the second issue, that of illicit copying."[FN399] Although the purpose for making the distinction—to determine the proper delegation of authority between the judge and the jury, and the proper role of expert testimony[FN400]—was perhaps valid, it is not clear what the court meant by "improper appropriation." To put it another way, what appropriation, once proven, would ever be "proper"?


[p. 412] The court of appeals purported to explain its analysis by paraphrasing the question as follows: "The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff."[FN401] Interestingly, the court relied primarily upon Nichols v. Universal Pictures Corporation[FN402] and other cases dealing with the idea-expression dichotomy.[FN403] In other words, once it has been determined that copying has occurred, the next step is to determine whether the copied material is protected by copyright. After comparing the works, the portion actually taken must somehow be characterized in isolation.


The only plausible explanation is that the court was discussing the idea-expression dichotomy, which is the test developed to characterize the portion of a work that is protected and the portion that is not.[FN404] The only difference here is that in the traditional idea-expression case, the work is usually characterized first, and the issue of copying is then raised. Under the two-part test of Arnstein, when the issue is one of summary judgment, the order of inquiry must be reversed, although the most important portion of the test in that case—the portion that was held to be inappropriate for use as a basis for summary judgment[FN405]—was that which characterized whether what was taken was "improper."[FN406]


In addressing the confusion of the Arnstein case, other courts and commentators have explained it as being little more than "an alternative way of formulating the issue of substantial similarity";[FN407] as basically the same thing as the idea-expression dichotomy;[FN408] or as [p. 413] something of a de minimis test.[FN409] It has even been dismissed outright.[FN410]


                        b. False Idea-Expression Cases


By some formulations, the idea-expression dichotomy is nothing more than a test of substantial similarity. These may be called "false idea-expression" cases, because the formulation of the test actually requires reference to a copying work, and a weighing of the degree of similarity with the copyrighted work.


One example of such a case is Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corporation,[FN411] in which the court [p. 414] held that television commercials produced by McDonald's Corporation infringed the copyright in plaintiff's television series, "H. R. Pufnstuf."[FN412] The United States Court of Appeals for the Ninth Circuit, citing Arnstein v. Porter[FN413] more or less approvingly, set forth a bifurcated test for determining the substantial similarity between two works.[FN414] The first part of the test required a determination whether there was substantial similarity of ideas.[FN415] The court observed that the answer to this question frequently is a simple one: a statue of a horse, for example, is sufficiently different from a statue of a person to constitute substantial dissimilarity even of ideas.[FN416] The court called the test an "extrinsic" one, which could be determined on the basis of analytic dissection.[FN417] Presumably, in a case in which there is not substantial similarity of ideas, the inquiry is ended and the defendant is entitled to win, perhaps even on a summary judgment motion.[FN418]


If there is sufficient similarity in ideas, then the next step is to determine whether there is substantial similarity of expression. According to the Ninth Circuit, this is often more difficult to determine but necessarily involves an "intrinsic" test that is based upon the more subjective response of the factfinder, and not subject, in theory, to analytic dissection or expert testimony.[FN419] In explaining the bifurcated test, the court purported merely to be paraphrasing Arnstein, or applying what it understood Arnstein to have meant.[FN420] But both parts of the bifurcated test required a comparison of the two works before the court. Of course, if two [p. 415] works are significantly dissimilar, they may be said to be different even in their ideas—thus supporting summary treatment by a judge. In Krofft, because the defendants had conceded that the works were similar in idea, the only remaining issue before the court was the degree of similarity of the expression, or precisely what has been thought of as the test of substantial similarity between two works.[FN421] The real lesson of the case is that the defendant, having admitted similarity of idea, could not rely upon analytic dissection of the works as it attempted to do; instead, the defendant had to submit itself to an intrinsic test comparing the more subjective "concept and feel" of the two works.[FN422] On this test, before the trier of fact, it lost.[FN423]


The court in Krofft perceived the need for a test that would avoid overextending copyright law.[FN424] According to the court, the test of substantial similarity was inadequate to provide this protection.[FN425] The proposed cure for the problem was the now-bifurcated idea-expression dichotomy, which alone was supposed to be sufficient to protect against a monopoly of ideas. Yet when, if ever, would there be substantial similarity of expression and not of idea? If two [p. 416] sculptures are of different animals (or of a horse and a human, as illustrated by the court[FN426]), then isn't the substantial dissimilarity of expression sufficient to guarantee dissimilarity of ideas?


The court's distinction between idea and expression may be useful to provide a two-step mechanism for deciding the easy cases, but it simply is not true that the substantial similarity test is inadequate to protect against the cited "untenable results."[FN427] If two works are dissimilar enough to be different ideas, then presumably a court would have little difficulty concluding that they were dissimilar in expression. Thus, the practical fear that plaintiffs would have only a minimal burden of proof in making out a copyright infringement case is not much of a problem. Because Krofft ultimately depended upon a finding of substantial similarity even of the expression of the two works,[FN428] one must wonder what was gained by all the discussion of the potential dissimilarity of ideas. The substantial similarity doctrine was not only adequate to the task, but was the test ultimately used by the court in reaching the conclusion that defendant's work infringed on plaintiff's copyright.[FN429]


Another false idea-expression case is Herbert Rosenthal Jewelry Corporation v. Kalpakian.[FN430] In that case, the United States Court of Appeals for the Ninth Circuit discussed the idea-expression dichotomy at length, and held that the plaintiff's bee pin was not copyrightable because it represented the mere "idea" of a bee, or because the idea and the expression of the bee were inseparable.[FN431] [p. 417] In Herbert Rosenthal Jewelry Corporation v. Grossbardt,[FN432] which involved a similar pin, the United States Court of Appeals for the Second Circuit found that the pin was protected and had been infringed.[FN433]


Although the cases may superficially seem in conflict, an analysis of the facts reveals that they are probably reconcilable, given the nature of the defendants' activities. In Grossbardt, the defendant had "obtained one of Rosenthal's bees, made a rubber mold from it, duplicated the bee, allegedly with inferior gems, and sold it at lower prices."[FN434] Grossbardt's activity thus represented exact copying of the pin. In Kalpakian, the defendant's activity did not represent exact copying, but only the making of a pin that was similar in some respects to plaintiff's. Indeed, the court of appeals admitted that the case "could be disposed of on the district court's finding that defendants did not copy plaintiff's bee pin," but that it "was in fact an independent creation."[FN435] The court concluded that "the production of jeweled bee pins is a larger private preserve than Congress intended to be set aside in the public market without a patent. A jeweled bee pin is therefore an 'idea' that defendants were free to copy."[FN436] The court may have been prompted in its analysis by the plaintiff's claims that


its copyright [was] infringed by defendants' entire line of a score or more jeweled bees in three sizes decorated with from nine to thirty jewels of various sizes, kinds, and colors.

            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.[FN437]


[p. 418] Nevertheless, the court deduced a rule of law that would, on its face, foreclose the plaintiff even from protecting against exact copying.[FN438] The better rule, as developed in Grossbardt, would allow federal protection of the bee pins, and determine issues of infringement on a case-by-case basis.[FN439] For exact copies, at least if they are mechanically-produced copies, infringement should be found. For less than exact copies, the test of substantial similarity must be used.


Another line of cases that sometimes invokes the idea-expression dichotomy, but is better understood in terms of substantial similarity, concerns the protection of doll designs. Most of the recent cases, at least as characterized by the courts that decided them, involved defendants who did not copy a doll or character exactly, but who attempted to "cash in" on a generally popular trend.[FN440] In such cases, invoking the test of substantial similarity, the "lay observer" test,[FN441] and sometimes the idea-expression dichotomy, the courts generally have concluded that no infringement has occurred.[FN442] Characterizing [p. 419] aspects of the dolls as idea or expression, however, does not seem nearly as helpful in deciding the cases as comparing the substantial similarity between the particular dolls presented to the courts.


                        c. The Relationship Between Substantial Similarity

                                    and Idea-Expression


By this point it should be clear that some of the idea-expression cases really do not hinge ultimately upon a characterization of a work in isolation, but instead involve a close comparison of a copyrighted work with an allegedly infringing work. It may be the judge who makes this comparison at a preliminary stage, based upon analytic dissection; it may be the jury, or judge as factfinder, who makes the comparison on the ultimate merits, based upon a more subjective test. Even if the court finds that the two works are similar enough to pass the first hurdle of a summary judgment analysis, the substantial similarity of the two works must be weighed before infringement can be found, so that it is the substantial similarity test that ultimately protects copyright users against the overly broad reach of copyright. To the extent that Krofft enunciates a public policy to protect potential copyright defendants against frivolous claims, it is sufficient that some mechanism exists for allowing summary dismissal of such claims;[FN443] it is not necessary that the mechanism be based upon the idea-expression dichotomy.


There are other substantial similarity cases that purportedly focused upon whether "what was taken" was properly subject to copyright, but for reasons other than the general idea-expression dichotomy.[FN444] For example, in Durham Industries, Inc. v. Tomy [p. 420] Corporation,[FN445] the United States Court of Appeals for the Second Circuit held that copying only the utilitarian aspects of a work, or that part of a work that was itself based upon pre-existing material (and thus was not original), did not constitute a copyright infringement even if there was substantial similarity between the copied and copying works.[FN446] In Hoehling v. Universal City Studios, Inc.,[FN447] the Second Circuit upheld summary dismissal of a suit in which the only similarity between the works was in the recitation of either actual historical events or hypotheses explaining such events.[FN448] There are some cases in which the idea that was taken was never sufficiently defined to qualify for copyright protection because it was too abstract.[FN449] These other bases for excusing the copying of a work in substantially similar form are more compelling than the idea-expression dichotomy generally, and account for a large number of the reported cases.[FN450]


[p. 421] Nevertheless, there are presumably some cases in the interplay between idea-expression and substantial similarity that are not disposed of, or are not capable of being disposed of, on grounds of substantial similarity, lack of originality, works of utility, lack of concreteness, or some other basic copyright principle. There is apparently no definitive case, however, in which none of the other principles is decisive, in which substantial similarity was found, and in which the defendant's copying was nonetheless excused because the substantial similarity was only of idea.[FN451]


The approach is perhaps best suggested in Warner Brothers Inc. v. American Broadcasting Companies,[FN452] in which the United States Court of Appeals for the Second Circuit upheld a summary judgment motion that the television series The Greatest American Hero did not infringe rights in the Superman character.[FN453] The court of appeals concluded that summary judgment in favor of the defendant was appropriate on either of two bases:


[W]e have recognized that a court may determine non-infringement as a matter of law on a motion for summary judgment, either because the similarity between two works concerns only "non-copyrightable elements of the plaintiff's work," . . . or because no reasonable jury, properly instructed, could find that the two works are substantially similar.[FN454]


 In the court's subsequent analysis, the second basis—lack of substantial similarity—was the most decisive.[FN455] Under the first basis, which emphasized the idea-expression dichotomy, it would have been possible to itemize the elements of the two characters that were substantially similar—primarily several of the characters' traits—and then dismiss them as merely idea.[FN456] The appellate court rejected that [p. 422] approach, however, emphasizing that it was not the individual traits that were to be characterized as idea or expression, but rather the combination or "overall perception" of all the traits.[FN457] If courts must look to the totality of the characters and not compare individual traits, when will such a totality ever be characterized as idea, not subject to protection? The first basis that the court in Warner Brothers identified as a potential ground for granting summary judgment to defendants is hardly ever an appropriate basis for decision, at least in the case of characters.[FN458]


In Reyher v. Children's Television Workshop,[FN459] the United States Court of Appeals for the Second Circuit held that defendant's television segment and magazine stories entitled The Most Beautiful Woman in the World did not infringe plaintiff's book, My Mother Is the Most Beautiful Woman in the World, "on the ground that any similarities between the two works related only to non-copyrightable matter."[FN460] Because the court recited the substantial similarity doctrine and the idea-expression dichotomy in detail, one might assume that the case involved a potentially substantial taking that was excused by the idea-expression dichotomy.[FN461] Yet, the court of appeals apparently rejected the trial court's finding of substantial similarity.[FN462] After the court of appeals stated that it would affirm [p. 423] the lower court on the ground that the similarities "related only to non-copyrightable matter," the court went on to state that it "must overturn the trial court's factual finding that there were substantial similarities between the two works."[FN463] It is not clear whether the court effectively accepted the finding of substantial similarity and held that the substantial similarity was only of ideas, or whether the court meant to say that there simply was no substantial similarity in the first instance. In any event, the court did give a detailed account of the two stories, and found that the works were different in mood, detail, and characterization, and in their "total feel"[FN464]—a particularly appropriate test inasmuch as the intended audience for both works was children (who would not be expected to be sensitive to nuances). The court also characterized the similarity of events as "scenes a faire, . . . which necessarily result from identical situations."[FN465] In short, although the decision certainly was influenced by the characterization of the similarities as relating mainly to ideas, the court of appeals probably would have reached the same result even if the idea-expression dichotomy had not been available.


What accounts for the tendency of courts to frame these substantial similarity cases in terms of the idea-expression dichotomy? Part of the answer is in the apparent ease with which the doctrine is stated. It is fairly straightforward to say, "Expression is protected, ideas are not." Almost the same thing is achieved by saying, "If you have a copyright, others may paraphrase what you say, so long as they don't copy your words in substantially similar form." Yet, there is still a difference. The latter statement implies that the essence of legitimate copying is the use of different expression, and that any copying that does not express the work differently will infringe. The former statement, in contrast, implies that even some exact copying will be tolerated, so long as the exact copying is only of unprotectable ideas. Yet, the latter statement, together with narrowly confined rules based upon other copyright policies or the particular types of copyrighted works, should be adequate to explain most, if not all, of the existing cases.


[p. 424] d. Other Tests of Infringement


In this Article, the term "substantial similarity" has been used to represent the general approach taken by courts to determine cases at the infringement stage—comparing the degree of similarity between two particular works—rather than at the threshold stage, which is represented theoretically by the idea-expression dichotomy. Yet, substantial similarity is not the only test for determining whether one work infringes the copyright in another. Two alternatives are a "literal similarity" test, which is much stricter against copyright owners; and a "total concept and feel" test, which, arguably, is more lenient in favor of copyright owners.


The idea-expression dichotomy and the substantial similarity test have evolved in preference to literal similarity or verbatim copying as the appropriate test for judging infringement.[FN466] Nevertheless, there are contexts in which literal similarity may be the preferred test. For example, in the case of historical or factual works, some courts have intimated that the test of infringement should be one of literal copying, and not one of substantial similarity.[FN467] In the case of sound recordings, added to the federal copyright statute in 1971,[FN468] the only effective protection is against literal copying.[FN469]


In some recent cases, the emphasis has shifted beyond the test of substantial similarity to the total concept and feel test.[FN470] It is possible that this test is no more than a restatement of the substantial similarity and "lay observer" tests.[FN471] Yet, in its emphasis upon the [p. 425] overall impression of similarity between two works, rather than the need for any specific similarities, the total concept and feel test tends to free the hands of the factfinder to find infringement even though it is hard to articulate the precise similarities between two works.[FN472] This test may therefore represent an extension of the historical trend away from literal copying and towards substantial similarity as the test of infringement, thereby expanding the rights of copyright holders.[FN473]


[p. 426] The existence of different standards for determining infringement is not necessarily a sign of inconsistency. The different standards can be applied to different types of works, or otherwise to balance the competing policy considerations that affect any copyright case. The different standards allow courts a certain degree of flexibility at the infringement stage of a copyright suit. This flexibility is precisely what is lost, however, when the idea-expression dichotomy is invoked as a threshold issue. Some of the recent total concept and feel cases that evidence a flexibility in approach are thus inconsistent in spirit with the idea-expression dichotomy—which is, at best, a throwback to a climate less protective of the interests of copyright owners.


2. Originality


One of the fundamental questions of copyright law concerns the threshold level of authorship required by the federal act or the Constitution [FN474] The courts have consistently insisted that originality is the sine qua non of copyright protection.[FN475] The requirement arises [p. 427] in two contexts. For some types of works, there is a categorical threshold test to determine whether there is any original work that is capable of protection.[FN476] Additionally, for works that pass the threshold categorical test but nonetheless contain unoriginal portions, it is appropriate to say that only the original portions of those works are protected.[FN477]


Some of the originality cases contain language that also refers to the idea-expression dichotomy.[FN478] Other originality cases seem to be [p. 428] based upon a purpose that overlaps with the purpose of the idea-expression dichotomy.[FN479] Yet, as a threshold test, the originality doctrine is preferable to the idea-expression dichotomy. While the determination of whether a work is idea or expression is by its nature almost a metaphysical one, the test for originality—like the test for substantial similarity—will necessarily involve the comparison of two or more works. In the case of substantial similarity, the comparison is between the copyrighted work and the allegedly infringing work; in the case of originality, it is between the copyrighted work and prior works.[FN480] By focusing upon the particular works, the issue is narrowed and analysis is made more concrete.


[p. 429] The interface between idea-expression and originality is best analyzed in several particular settings, which will be discussed in separate subsections. First, the requirement of originality is examined in one of its most troublesome settings—that of derivative works. The significance of the originality test in weighing the "purpose" of copyright law—be it to protect creativity or "mere" industry—is addressed next. Finally, I look at the flip side of originality—de minimus works which show insufficient originality to warrant copyright protection.


a. Derivative Works and "Junk Art"


Within the basic requirement that a work of authorship must be original, and that only the original portions of the work are protected by copyright, there are competing strains of interpretation. On the one hand, the threshold is said to be extremely low, with even the slightest originality sufficient to support the grant of copyright.[FN481] On the other hand, there are recurring cases, frequently involving derivative works or "junk art,"[FN482] in which the courts or commentators have struggled to maintain a minimal test.[FN483] One of the primary battlegrounds for these different approaches is in the case of derivative [p. 430] works, which by definition are at least partially unoriginal and copied.[FN484]


In L. Batlin & Son, Inc. v. Snyder,[FN485] the United States Court of Appeals for the Second Circuit held that the defendant's purported claim to copyright in a plastic replica of an "Uncle Sam" bank was invalid for lack of originality.[FN486] The court found that any variations that might have existed between Snyder's bank and the public domain Uncle Sam bank were trivial, and resulted from the transfer of the work from one medium (metal) to another (plastic).[FN487]


The Batlin case is hard to distinguish from other cases, such as Alva Studios, Inc. v. Winninger[FN488] In the Alva case, the court held that a replica of a public domain work was entitled to copyright protection even if there were no distinguishable variations except for a change in size and medium.[FN489] Indeed, the mere inclusion in the copyright statute of a category such as reproductions of works of art implies that the threshold of originality must be low for such works.[FN490] The court in Batlin purported to distinguish Alva by the degree of skill required to produce the copy, citing Professor Nimmer for the proposition that "the mere reproduction of a work of art in a different medium should not constitute the required originality for the reason that no one can claim to have independently evolved any [p. 431] particular medium."[FN491] The citation to Professor Nimmer was to a criticism of Doran v. Sunset House Distributing Corporation,[FN492] which held that a plastic three-dimensional figure of the public domain character of Santa Claus was original because of "the form—three-dimensional—and the medium—plastic."[FN493] If these were the only elements of originality, then the court's conclusion in Doran might indeed be erroneous, because it implies that the first person to transfer a public domain work into a new medium has a monopoly in that medium.[FN494] One can criticize the holding of the case, however, without having to conclude that any transfer to another medium is per se not eligible for copyright. As evidenced by the Alva or Catalda cases, some reproductions of works of art can require considerable skill in their creation.[FN495] Without the protection of copyright, artists might not be encouraged to invest the time that such copies would require, with a resulting diminution in the numbers of reproductions of works of art—thus presumably undermining the whole purpose behind including reproductions as a category of copyrightable work.[FN496]


There was probably an alternative basis by which the court in Batlin could have found in favor of the plaintiff. The description of the evidence seems to indicate that L. Batlin & Son, when it ordered its plastic banks from its foreign source, had not actually seen the plastic banks made by Snyder.[FN497] Thus, there was no showing that [p. 432] L. Batlin & Son had access to Snyder's bank, or that L. Batlin & Son in fact copied it. A finding of noninfringement would have been justified even without testing for originality. As the court in Batlin applied the law, however, not only was Snyder prevented from protecting his work against imitation; Snyder was also prevented from protecting against exact copying—for example, by making a mold of the Snyder bank, which had admittedly taken at least some effort to produce.[FN498]


The court in Batlin also created an implausible distinction when it stated that "appellants' plastic bank [was] neither in the category of exactitude required by Alva nor in a category of substantial originality; it falls within what has been suggested . . . is a copyright no-man's land."[FN499] It seems illogical to argue that reproductions of works of art are protectable if they are exact copies or if they are distinguishable copies, but not if they fall in between by evidencing some aspects of both originality and skill. The rationale given for the Batlin rule was that


[a]bsent a genuine difference between the underlying work of art and the copy of it for which protection is sought, the public interest in promoting progress in the arts—indeed, the constitutional demand—could hardly be served. To extend copyrightability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain work.[FN500]


The rationale sounds similar to that given for the idea-expression dichotomy.[FN501] Indeed, the court may even have implied a connection between the doctrines.[FN502]


            The Batlin case has been cited and followed in more recent cases. For example, in Durham Industries, Inc. v. Tomy Corporation,[FN503] Tomy Corporation claimed that Durham Industries copied its version of Disney character wind-up toys.[FN504] The court found that the level of originality of the wind-up toys, as derivative works based upon [p. 433] the Disney characters, was too low to qualify for separate copyright.[FN505] The court stated that the test of substantial similarity was inadequate to protect against abuse: although other persons licensed by Disney would theoretically be free to develop their own derivative works, the likelihood of access (and at least some similarity) would as a practical matter either subject the second party to harassment or require the second party to avoid even any similarity in the works.[FN506] Thus, while conceding that the test of infringement was theoretically sufficient to prevent overreaching by owners of copyrights in derivative works, the court feared the practical impediment raised by even the possibility of lawsuits.[FN507]


            A similar concern was at the heart of Gracen v. The Bradford Exchange.[FN508] Jorie Gracen, as part of a competition, had produced paintings based upon the movie The Wizard of Oz.[FN509] The court held that Ms. Gracen's painting of Dorothy, as a derivative work taken from photographs of the movie, lacked sufficient originality to qualify for protection in its own right as against another artist who was commissioned to prepare similar derivative works.[FN510] The purpose for the rule was "to prevent overlapping claims" in derivative works.[FN511] The court was clear to limit its analysis to derivative works, however, so as not to represent too significant a departure from the general rule of Bleistein.[FN512]


            [p. 434] It is much easier to apply the originality test in this context than to characterize the cases in idea-expression terms. One could argue, after all, that the derivative works captured only the idea of the original works and not their expression; or that the idea and expression of the works had merged, thus importing idea-expression language into the test for originality. It is much easier to see the issue in terms of originality: focusing upon the lack of original elements in the plaintiffs' works, based upon a comparison of the derivative work with the work from which it was taken.[FN513]


            Nevertheless, it might have been better in each of the three cases—Batlin, Durham Industries, and Gracen—to base the analysis upon the plaintiff's failure to prove that the defendant had actually copied the plaintiff's works instead of the originals. As in the idea-expression context, the creator of a derivative work should be afforded some protection, even if only against mechanical reproduction of plaintiffs' works. For example, in Durham Industries, there were at least some elements of choice in determining how to expand the two-dimensional cartoons to three-dimensional form, despite the fact that Disney owned all rights in the underlying characters.[FN514] Yet, if a court finds the additions and variations obvious, the outcome is less objectionable in the context of originality, where at least there are two or three works to serve as a basis for comparison. If the purpose common to the two principles—that is, to protect against overexpansion of copyright claims—is better served by the test of originality, then there is one less reason to invoke idea-expression analysis when the more precise test is available.


                                    b. The "Purpose of Copyright Law": Creativity versus Industry


            Some of the cases involving originality reflect an arguably separate policy that might be cited to justify a narrow view of originality or [p. 435] the idea-expression dichotomy. The purported policy is that copyright should protect a certain degree of creativity, or "fancifulness," but not mere "industry" or the expense, time, and effort that falls short of a certain creative level of authorship.[FN515] It might also be argued that while copyright protects both types of effort, copyright law is not as adept as, say, state laws that regulate unfair competition in promoting the proper constitutional role of copyright[FN516]—an observation that is bound to lead to a begrudging approach toward granting federal copyright protection.


            Such a purported policy, however, does not reflect the historical role played by copyright law.[FN517] That federal copyright does indeed protect industry as well as creativity is evidenced by the protection of maps, directories, and fact works, as well as photographs and other subject matter for which it has been held that the threshold level of originality or creativity is quite low.[FN518] Additionally, the fact [p. 436] that federal copyright law now protects sound recordings, regardless of the level of creativity of the musical or other works embodied in them,[FN519] indicates that industry as well as creativity can serve as an adequate basis for granting federal protection. As proposed by Professor Gorman and others, the work that reflects industry instead of fancifulness should not be foreclosed from copyright, although it may be appropriate (for some categories of works) to view the protection as "thin," and therefore scrutinize closely the work at the infringement stage.[FN520]


                                    c. De Minimis Works


            Many of the originality cases may be viewed as imposing the following rule: For a work to be copyrightable, something more than a minimal effort is required. The copyrighted work need not be new or novel, but it must be something that the author has created—that is, something that would not exist but for the efforts of the author.[FN521] Whereas the originality standard seems to work well when applied to individual works, there have also been efforts to set forth categorical rules to shield the copyright system from frivolous claims. Some of these rules may be based upon an originality requirement; others may be viewed as ad hoc rules—founded in principle upon the originality requirement, but not necessarily limited in individual cases to that doctrine.[FN522]


            Many of the rules for handling de minimis works have been addressed by the Copyright Office. This is not surprising; although a copyrighted work need not be registered with the Copyright Office, as a practical matter threshold issues will be first raised when a [p. 437] copyright owner attempts to register such a work. The Copyright Office has stated that it will not register certain works primarily because of their de minimis nature.[FN523] These works include the following:


(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.[FN524]


            This apparently simple listing incorporates items which must be viewed as excluded for different reasons. Some of the categories might be excluded because they represent works of utility,[FN525] or because they lack the requisite level of originality.[FN526] With other [p. 438] works, exclusion seems to be based upon the idea-expression dichotomy directly.[FN527] Finally, some works can only be explained by imposing a de minimis rule: that works of insufficient quantity or length will not be protected even if they are original, presumably because copyright is not to be used to create a monopoly in "trite" (albeit original) works of authorship.[FN528] These de minimis works include several of those listed in subsection (a)—words and short phrases, names, titles, slogans, or typography.[FN529] If these regulations are a correct interpretation of copyright law, at least some of the categories reveal a de minimis test that is related to, but not entirely co-extensive with, the originality doctrine and the idea-expression dichotomy.


                        3. Fair Use


            The fair use doctrine, though of common-law origin,[FN530] has now been ratified in the copyright law itself.[FN531] It certainly has its critics, [p. 439] and has been even at its best an elusive or confusing doctrine. In some ways, fair use reflects some of the same purposes and considerations that are generally attributed to the idea-expression dichotomy.[FN532] Indeed, one commentator who has advocated abolition of the idea-expression "fallacy" argued that the fair use doctrine is well suited to filling any gap which might otherwise be created in the copyright law.[FN533] Such an approach would have the positive effect of shifting the inquiry away from the plaintiff's work in isolation, and [p. 440] toward a comparison of two works—thereby incorporating the nature of the copyrighted work as only one factor among several. The fair use doctrine is so flexible, however, that it runs the risk of incorporating all of the shortcomings of the idea-expression dichotomy as well. Other theories, primarily that of substantial similarity, can substitute for most of the idea-expression analysis; however, fair use could serve the function of a safety valve to protect against overextension in particular cases aside from the idea-expression dichotomy itself.


            B. Categories of Works and the Idea-Expression Dichotomy


            In Part V(A) the idea-expression dichotomy was discussed as it related to certain other basic principles of copyright law—the doctrines of substantial similarity, originality, and fair use. The present section considers the special principles that have been developed for particular categories of copyrighted works—works of utility, factual works, and characters. Although each of these special principles bears some relationship to the idea-expression dichotomy, they are preferable to the idea-expression dichotomy precisely because they are focused upon particular types of works that maintain more compelling public policy justifications for close scrutiny than exist for the idea-expression dichotomy generally.


                        1. Works of Utility


            Works of utility might be viewed as a subset of a more generalized idea-expression dichotomy: in works of utility, the idea involves something that has utility in the "real world."[FN534] The next subsection addresses those situations in which the idea is the implementation of [p. 441] a system or procedure. The subsection following treats the more traditional types of works of utility: pictorial, graphic, or sculptural works, including items of manufacture and mechanical works as well as works depicting such useful articles.


                                    a. Systems and Procedures


            A copyrighted work may have utility as a system or procedure for organizing or doing things in the real world, and it is in this context that the works of utility doctrine comes closest to the idea-expression dichotomy. For example, Baker v. Selden[FN535] may be viewed as a work of utility case because it involved the use of a system of bookkeeping as well as the potential copying of the particular forms used to implement the system.[FN536] Most of the other types of statutorily uncopyrightable subject matter under section 102(a) would come under this heading: "procedure, process, system, method of operation, concept, principle, or discovery."[FN537]


            Many cases claiming copyright in systems or procedures could also have been decided on principles that do not require a general works of utility doctrine. For example, many such claims to copyright protection can be dismissed because the systems are simply too abstract or insufficiently delineated to provide a meaningful basis for protection.[FN538] At the very least, the system would have to be fixed [p. 442] in a tangible medium of expression to qualify for protection under section 102(a).[FN539] Other claims of copyright in systems or procedures can be dismissed on the ground that the two works in issue are simply not substantially similar so that there is insufficient proof of copying.[FN540] If the concept passes these hurdles, it may also be attacked as a work lacking sufficient originality to qualify for copyright protection.[FN541]


            [p. 443] Because these other doctrines could apply to many of the cases involving systems and procedures, the primary domain of the works of utility doctrine will be original systems and procedures that are sufficiently delineated and are copied in substantially similar form. Perhaps such delineated concepts should be protected by copyright: a sufficiently delineated idea (to use idea-expression language) is more like expression than idea. Yet, unless the work meets the higher patentability standards, protection of such systems is eschewed for fear that grant of a monopoly in the expression of such works of utility might somehow inhibit users from putting the described systems into operation.[FN542]


            One possible interpretation of the works of utility doctrine, as applied to systems and procedures, is that it is more or less subsumed under section 106 of the 1976 Copyright Act, which defines the exclusive rights of copyright and does not include the exclusive right to use a copyrighted work.[FN543] Yet, the works of utility doctrine might [p. 444] be given a wider role.[FN544] The right of a user to use a copyrighted work might be so powerful a policy that this right should override the competing rights of a copyright owner whenever the exclusive rights of copyright conflict with the rights of the user. This analysis is similar to the merger argument which presumes that otherwise infringing activity should be allowed in order to protect the presumed right of another person to make use of the copyrighted work.[FN545]


            The works of utility doctrine, however, should not be construed to foreclose copyright protection if such protection merely affects incidentally the rights of users to make effective use of the systems disclosed.[FN546] An illustrative case is Cash Dividend Check Corporation v. Davis,[FN547] in which a check was used as part of a stamp redemption plan.[FN548] Although checks generally were uncopyrightable, the court held that the particular check in that case (which had language that was not contained on most checks) was eligible for copyright.[FN549] The check did have original elements, and it did not "hamper the business world in its use of bank checks or other instruments of commercial activity."[FN550] Thus, an idea or scheme was not ineligible for protection in all cases—it simply had to have separately copyrightable elements.[FN551] The otherwise copyrightable elements were not lost simply because the scheme had a utilitarian application, so long as others were free to devise their own schemes or to use the basic commercial components in which a copyright was not claimed.


            Systems and procedures need a rule similar to that developed for pictorial, graphic, and sculptural works of utility: namely, such works [p. 445] should not be foreclosed from protection, but protection should extend only to the aesthetic or expressive features of the work that are severable from the utilitarian aspect of the work.[FN552] The other copyright principles previously discussed—the requirement of concreteness, the test of substantial similarity, and the test of originality—together with the rule that copyright does not generally extend to use,[FN553] are sufficient to protect the rights of users in most cases. If, in a particular case, use of a system or procedure really requires the violation of an exclusive right of a copyright owner, it is the fair use test that should be applied, taking into account not only the nature of the use but all of the other factors embodied in section 107 of the 1976 Copyright Act.[FN554]


                                    b. Pictorial, Graphic, and Sculptural Works


            The copyright law has been consistently interpreted to cover visual works, despite the potential argument that Congress's power to protect the writings of an author covers only verbal or literary works.[FN555] Although earlier copyright law made a distinction between works of "fine" art,[FN556] which were protected, and works of applied art, which were not, amendments to the copyright act over the years have clearly extended protection to cover works of craftsmanship or applied art.[FN557] Pictorial, graphic, and sculptural works that are works [p. 446] of utility or "useful" articles, however, are subject to special limitations under the 1976 Copyright Act.[FN558] Presumably these limitations are based upon the assumption that allowing a monopoly in a utilitarian work may lead to an improper monopoly in the use of the work. Such fears are largely misplaced. The copyright law defines the exclusive rights that it grants, and such rights do not include the exclusive right to use the copyrighted work.[FN559]


            [p. 447] The works of utility doctrine might be viewed as a subset of the idea-expression dichotomy.[FN560] Applying idea-expression language to pictorial, graphic and sculptural works might lead to the conclusion that a copyright owner is entitled to a monopoly only in the expressive or aesthetic portions of the copyrighted work (the form), not in the idea (which represents, in this context, the functional aspects of the copyrighted work).[FN561] If there is an area of overlap between the idea-expression dichotomy and the works of utility doctrine, the doctrine that directly addresses works of utility is probably better designed to handle the perceived problems in this area than is a generalized idea-expression dichotomy.[FN562]


            To some extent, the special rules for pictorial, graphic, and sculptural works share some of the same shortcomings as the idea-expression dichotomy: they require a characterization of a work itself (or its form), as opposed to the function of the work, without reference to either the infringing work, or the extent to which the original work's function could be or is utilized by using a different form.[FN563] Although the definition of a pictorial, graphic, or sculptural work would seem to be a threshold determination, the definition in [p. 448] section 101 of the 1976 Copyright Act allows protection of a work of utility "to the extent that" it can be identified separately, so that partial inclusion within the sphere of protection is possible.[FN564] Thus, courts may in fact peek at the allegedly infringing work when making the threshold determination.


                                                i. Items of Manufacture and Mechanical Works


            Some of the judicial reluctance to allow broad copyright protection for works of utility can be traced to an earlier doctrine that denied copyrightability of "commercial" works and "mere" advertisements.[FN565] This narrow doctrine was abandoned, however, by such cases as Bleistein v. Donaldson Lithographing Company,[FN566] which allowed copyright protection for a circus poster used as an advertisement.[FN567] In the 1954 case of Mazer v. Stein,[FN568] the United States Supreme Court held that a copyrightable work did not lose its protection simply because it was ultimately destined to be included in a "useful" article.[FN569] The 1976 Copyright Act continues to allow the protection of works of craftsmanship within the terms of sections 101 and 113.[FN570]


            [p. 449] Although copyright has been extended to cover three-dimensional works that represent works of craftsmanship,[FN571] a more difficult issue is raised if the three-dimensional work has a mechanical as well as an aesthetic function. The most graphic example might be the mechanical games and wind-up toys that were the subject of Durham Industries, Inc. v. Tomy Corporation.[FN572] The policy is quite strong that a copyright in the sculptural aspects of actively mechanical toys and games should not prevent others from making toys and games that incorporate the function, but not the form, of the copyrighted work.[FN573] It might be argued that Mazer was decided in favor of the copyright owner because the statuette at issue, although ultimately incorporated into a lamp, didn't do anything; rather, it was a stationary object having nothing to do with the lighting function of the lamp.[FN574] There are, of course, bound to be difficult cases that are midway along the continuum between "active" and "passive" utilitarian works. For example, the light fixture at issue in Esquire, Inc. v. Ringer[FN575] was relatively passive, and yet it was difficult for the United States Court of Appeals for the D.C. Circuit to identify any aesthetic aspect of the lamp that was not totally subsumed in its aspect as a lighting fixture.[FN576]


            [p. 450] In any event, to the extent that cases such as Durham Industries seem to raise compelling arguments in support of the idea-expression dichotomy, they are more properly decided on the narrower works of utility doctrine, and are on the strongest theoretical foundation when used to foreclose works that actively perform a mechanical function.


                                                ii. Works Depicting Useful Articles


            According to the classic interpretation of Baker v. Selden,[FN577] even drawings or plans that are protectable under the 1976 Copyright Act as pictorial works[FN578] do not include any rights to build or make the article depicted in the drawing. For example, an architect may have a copyright in the plans of a building, but the plans do not necessarily give any exclusive rights to build the building that is depicted in them;[FN579] a fashion designer may have a copyright in a pictorial [p. 451] portrayal of dress designs, but the drawing does not necessarily extend any rights in making the actual dress;[FN580] or a car designer may have a copyright in the drawing or model of a car, but obtains no rights to make the automobile of the same design.[FN581]


            This doctrine may be seen as related to the idea-expression dichotomy. For example, the leading cases of Scholz Homes, Inc. v. Maddox[FN582] and Imperial Homes Corporation v. Lamon[FN583] took the Baker case as their starting point.[FN584] Thus, it might be said that the two-dimensional plans represent the idea of the three-dimensional structure.


            The rule that drawings of useful articles convey no rights in the articles depicted has been justified on two different grounds. Under one interpretation, the drawing or plan is uncopyrightable precisely because (and to the extent that) the work depicted in the drawing is itself not eligible for copyright.[FN585] According to the other interpretation, [p. 452] the drawing or plan can never create rights in the depicted work, even if the depicted work were itself eligible for copyright.[FN586] [p. 453] In the recent passage of the Berne Convention Implementation Act of 1988,[FN587] Congress considered and rejected bills that explicitly would have extended copyright protection to architectural works.[FN588]


            [p. 454] If categorical protection of the two-dimensional ideas of three-dimensional expressions is considered to be inappropriate, such an outcome is more solidly founded upon the narrower works of the utility doctrine than upon the generalized idea-expression doctrine. Yet, in the case of two-dimensional representations of three-dimensional works of utility, the best approach may be the one suggested above in the case of the idea-expression dichotomy generally; categorical exclusion from copyright protection is hardly ever appropriate.


                        2. Factual Works: News, History, Scientific Facts, and Discoveries


            Closely related to the idea-expression dichotomy is the so-called "fact-expression" dichotomy. Under this basic principle, "factual information is in the public domain,"[FN589] or, alternatively, "copyright protection extends only to an author's expression of facts and not to the facts themselves."[FN590] A primary justification for the nonprotection of facts echoes the reason often given for the nonprotection of ideas: using the example of history, the United States Court of [p. 455] Appeals for the Second Circuit stated in Hoehling v. Universal City Studios, Inc.,[FN591] that copyright does not afford protection because "the cause of knowledge is best served when history is the common property of all, and each generation remains free to draw upon the discoveries and insights of the past."[FN592]


            Although exhibiting some parallels to the idea-expression dichotomy,[FN593] the nonprotectability of news, history, scientific facts, or discoveries is much more compelling than the nonprotectability of ideas in that news, history, scientific facts, and discoveries are all ineligible for protection because they are necessarily unoriginal, owing their origin not to the author, but to an external reality.[FN594] For example, in Miller v. Universal City Studios, Inc.,[FN595] the United States Court of Appeals for the Fifth Circuit explained:


Obviously, a fact does not originate with the author of a book describing the fact. Neither does it originate with one who "discovers" the fact. . . . Thus, since facts do not owe their origin to any individual, they may not be copyrighted and are part of the public domain available to every person.[FN596]


            The suggestion of a broader-based fact-expression justification, either by direct reference or by a policy statement that sounds like the policy statement justifying the idea-expression dichotomy, does not add very much to the analysis in terms of originality. Indeed, the court of appeals in Hoehling, although analyzing the case in idea-expression terms, recognized that the history-expression dichotomy has a firmer policy basis than the broader idea-expression dichotomy. The court recited its reliance upon the traditional idea-expression cases of Sheldon[FN597] and Detective Comics,[FN598] and then observed:


[p. 456] Sheldon and Detective Comics . . . dealt with works of fiction, where the distinction between an idea and its expression is especially elusive. But, where, as here, the idea at issue is an interpretation of an historical event, our cases hold that such interpretations are not copyrightable as a matter of law.[FN599]


Even here, however, the court may have overstated the case. It is not true that works of history or fact are "not copyrightable as a matter of law";[FN600] rather, despite a valid copyright in the expressive aspects of such a work, another work will be given wide latitude if it only uses the factual or historical materials.


            Despite the presumed nonprotectability of factual works, the courts have managed to grant protection on one theory or another. Under the copyright law itself, while facts are not per se protectable, [p. 457] compilations of facts are specifically protected.[FN601] Outside the copyright law, the United States Supreme Court, in International News Service v. Associated Press,[FN602] held that news reports, even though not protected by copyright, were at least partially protected against misappropriation by competitors in the news-gathering business.[FN603] Additionally, state law can in some circumstances protect ideas, news, and history under theories of contract law (express or implied) or confidential relationships.[FN604]


            Recently, several commentators have explored the scope of copyright protection in the collection and representation of facts—less extensive than the broadest idea, but certainly more extensive than the narrowest expression.[FN605] At least one of these commentators has proposed in the context of protection of factual works precisely what I am proposing on a broader scale: that there be a de-emphasis on the question of copyrightability, and increased attention to the test of substantial similarity between two works,[FN606] with perhaps some [p. 458] different standard required for different types of copyrighted works.[FN607] If one looks at what the cases have actually included as protectable under one theory or another, such a change of emphasis does not represent a radical departure from existing law, notwithstanding the purported exclusion of ideas and facts from the 1976 Copyright Act.[FN608]


                        3. Characters


            Another category of works that has raised some threshold questions of copyrightability is that of characters. Again, it is possible to present the issue in terms of the idea-expression dichotomy, treating a character as an idea apart from its expression in a particular work. For example, in the context of cartoon characters, the United States Court of Appeals for the Ninth Circuit in Walt Disney [p. 459] Productions v. Air Pirates[FN609] stated that "while many literary characters may embody little more than an unprotected idea . . ., a comic book character, which has physical as well as conceptual qualities, is more likely to contain some unique elements of expression."[FN610] In the context of literary characters, the United States Court of Appeals for the Second Circuit in Warner Brothers Inc. v. American Broadcasting Companies[FN611] recognized the overlap with the idea-expression dichotomy: "When, as in this case, the claim concerns infringement of a character, rather than a story, the idea-expression distinction has proved to be especially elusive."[FN612] Most character cases do not purport to be applying the idea-expression dichotomy; even then, however, one can argue that the theoretical underpinning for treating characters as unprotected works lies in the implicit recognition that characters generally represent idea rather than expression.[FN613]


            There are dozens of cases holding that cartoon characters, in the form of comic strips or three-dimensional representations of such characters, are a proper subject for copyright.[FN614] There are even hints [p. 460] in some of the earlier cases that literary characters would be eligible for protection if sufficiently original.[FN615]


            Yet, any discussion of the protectability of literary characters inevitably centers on the United States Court of Appeals for the Ninth Circuit decision in Warner Brothers Pictures v. Columbia Broadcasting System,[FN616] which suggested that characters were not separately protectable under the copyright law.[FN617] In that case, Dashiel Hammett, creator of the Sam Spade character, had sold the rights in his book entitled The Maltese Falcon—the original work that developed the character—to Warner Brothers.[FN618] Subsequently, Hammett wrote further adventures using the Sam Spade character, and contracted with CBS to use the characters in such sequels.[FN619] Warner Brothers sued to preserve what it thought was its exclusive right as purchaser of the copyright in the original work, to prevent Hammett from writing and licensing others to create sequels using that character.[FN620] The court of appeals held that Warner Brothers did not have any such exclusive rights.[FN621] The first basis for such a conclusion was substantial and unobjectionable—that the contract between Hammett and Warner Brothers[FN622] never conveyed such rights, so that Hammett retained the use of the characters he created.[FN623] The court then stated that it would be "profitable to consider whether it was ever intended by the copyright statute that characters with their names should be under its protection."[FN624] The court answered the question in the negative, concluding that characters, unless perhaps they constitute "the story being told," are not a proper subject for protection under copyright.[FN625] As a result, the creator of the character had the right [p. 461] to produce sequels.[FN626] The law in this area has been clouded ever since, although many courts since the Warner Brothers case have disagreed with its assessment of the protectability of characters.[FN627]


            No real harm was done by the decision of the Ninth Circuit in Warner Brothers, insofar as the protection of characters is concerned. The television, radio, and movie industries generally have ignored any principles that may be gleaned from the holding (or dictum) of the Warner Brothers case, since producers invariably pay large amounts of money for sequel and character rights that are perceived to be of value[FN628] The industry is supported in its assessment by other cases that have considered the protectability even of noncartoon characters.[FN629] State protection on the basis of contract or unfair competition [p. 462] theories may be available where gaps in federal protection exist.


            The Warner Brothers case represents yet another instance in which an idea-expression type of distinction has been used to complicate the rights of copyright owners. According to the Ninth Circuit, the characters were supposed to be categorically foreclosed from protection under the federal law, no matter how literally they may have been taken.[FN630] The case thus encouraged analysis of copyright infringement in terms of categories which are within or without the act, rather than focusing upon the nature of the infringing activity.[FN631]


VI. Conclusion


            A survey of the history of the idea-expression dichotomy and a comparison with the application and policies of related doctrines suggest that the idea-expression dichotomy simply does not work very well as a categorical test of copyrightability. Does this mean that section 102(b) of the 1976 Copyright Act should be repealed? Such an outcome is unlikely.


            Nevertheless, several suggestions can be applied for idea-expression cases. First, the idea-expression dichotomy should be referred to only as a last resort. There usually are other doctrines—substantial similarity, originality, and fair use; or doctrines involving works of utility, factual works, and characters—that can lead to findings of noninfringement in particular cases. These doctrines are based upon firmer policy considerations, and they retain the flexibility that is often lacking in the idea-expression cases. Second, if the idea-expression dichotomy is retained, it should be viewed as a flexible test: whenever possible, it should be applied at the infringement stage in order to allow the comparison of the copyrighted work with an allegedly infringing work, rather than applied at the threshold stage to a copyrighted work in isolation. Third, the expression required by the idea-expression dichotomy should be a minimal amount. Much like the test for originality, which requires only a modest degree of originality for a work to be protected,[FN632] a work should require only a modest expressive content to be copyrightable.


            Even if a work embodies much that might be called idea, it should still be entitled to protection to the extent that it embodies expression. Finally, the [p. 463] merger argument—by which even expressive content is supposed to remain unprotected in order to maintain free access to the unprotected portion—should be viewed with particular caution. As with the test for works of utility,[FN633] a work that combines elements of idea and expression should be protected to the extent that it contains expressive elements which can be identified separately (at least in theory). Even without congressional repeal, the idea-expression dichotomy can be appreciated as a statement of what happens at the extreme; but it need not be, and should not be, and has not been decisive of most cases that do not approach that extreme. If it is understood that copyright law protects expression and not idea, we are free to grant protection to borderline categories of works that combine elements of idea and expression—since, after all, it is only the expressive elements that are protected. Understood in its historical context, the role of the idea-expression dichotomy in copyright law is thus not a limiting one, but an expansive one.

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FN330 The copyright clause of the Constitution states: "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. I, §8.


FN331 See generally 1 M. Nimmer, supra note 23, §1.05[A]. Because no federal copyright law has ever granted rights in perpetuity, no case has ever directly addressed the issue. However, in Goldstein v. California, 412 U.S. 546 (1973), the Supreme Court considered whether a state law violated the constitutional limitation, and held that the limitation applied only to congress, not to the states. Id. at 560-61. The provision under 17 U.S.C. §303 (1982) that even unpublished works go into the public domain is arguably compelled by the constitutional provision, now that unpublished as well as published works are covered by the federal statute. See 17 U.S.C. §303 (1982).


FN332 See, e.g., The Trade-Mark Cases, 100 U.S. 82 (1879) (invalidating as unconstitutional an early trademark law based upon the patent and copyright clause, because trademarks did not presume the requisite degree of originality to qualify under the Constitution).


FN333 See generally 1 M. Nimmer, supra note 23, §1.08 (only those works that qualify as writings are given copyright legislation protection).


FN334 For example, in Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884), the Supreme Court upheld the protection of photographs as being within the constitutional ambit of writings. Id. at 61. Similarly, writings have been interpreted to include audiovisual works, sculpture, music, painting, sound recordings, and similar nonverbal forms of communication. E.g., 17 U.S.C. §102(a)(2), (5), (6), (7) (1982).


FN335 It has been suggested that ideas are beyond the scope of copyright because they are not writings. See 1 M. Nimmer, supra note 23, §1.08[D]. The suggestion is attributed to the following discussion by Justice Holmes in the case of Kalem v. Harper Bros., 222 U.S. 55 (1911), which held that a movie of Ben Hur infringed the book of that name:

            It is argued that the law construed as we have construed it goes beyond the power conferred upon Congress by the Constitution . . . . It is suggested that to extend the copyright to a case like this is to extend it to the ideas as distinguished from the words in which those ideas are clothed. But there is no attempt to make a monopoly of the ideas expressed. The law confines itself to a particular, cognate and well known form of reproduction. If to that extent a grant of monopoly is thought a proper way to secure the right to the writings this court cannot say that Congress was wrong.

Id. at 63. The suggestion of a constitutional limitation was that of counsel, not that of the Court. Appellant cited to outmoded cases which the Supreme Court in Kalem rejected: White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 17 (1908); Holmes v. Hurst, 174 U.S. 86 (1899); Baker v. Selden, 101 U.S. 99 (1880); Stowe v. Thomas, 23 F. Cas. 201 (C.C.E.D. Pa. 1853) (No. 13,514). Cf. supra note 64 and accompanying text. Justice Holmes pointed out that an idea was not protected in the abstract; nor, to the extent that it was, is such an outcome violative of the constitutional clause. Kalem, 222 U.S. at 62. This is hardly authority for the finding of such a constitutional limitation.

            After suggesting the possibility that the idea-expression dichotomy might be required by the copyright clause, Professor Nimmer concluded—although concededly without authority one way or the other—that Congress could constitutionally protect ideas if it found such protection necessary to promote arts and science; an idea, if it is reduced to written form, is sufficiently a writing to be eligible for protection as such. 1 M. Nimmer, supra note 23, §1.08[D].


FN336 U.S. Const. amend. I. See, e.g., 1 M. Nimmer, supra note 23, §1.10[A]; Goldstein, supra note 265; Nimmer, Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?, 17 UCLA L. Rev. 1180 (1970); Sobel, Copyright and the First Amendment: A Gathering Storm?, 19 Copyright L. Symp. 43 (1971); see also Denicola, Copyright and Free Speech: Constitutional Limitations on the Protection of Expression, 67 Calif. L. Rev. 283 (1979); Note, Copyright Infringement and the First Amendment, 79 Colum. L. Rev. 320 (1979); Note, Constitutional Law—Commercial Speech—Copyright and the First Amendment, 1979 Wis. L. Rev. 242.


FN337 1 M. Nimmer, supra note 23, §1.10[A] at 1-62.1 to -63.


FN338 See, e.g., Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977).


FN339 See 1 M. Nimmer, supra note 23, §1.10[A], at 1-62 (developed from Nimmer, supra note 336).


FN340 Id. §1.10[A], at 1-64.


FN341 Id.


FN342 Id. at 1-65.


FN343 Id. at 1-66.


FN344 Id. §1.10[B][2], at 1-72.


FN345 That there are some isolated contexts in which first amendment interests may conflict with assertions of copyright in particular works may be conceded. Such isolated cases do not, however, indicate an inevitable or systematic conflict that requires an automatic and systematic resolution. As one commentator concluded:

[T]he literal meaning of the first amendment has never been the law. Moreover, because the copyright clause, the first copyright act, and the first amendment were all contemporaneous with one another, it is clear the Founding Fathers intended the Copyright Act and the first amendment to have entirely separate spheres of influence. There are a variety of reasons as to why freedom of expression is important and desirable. However none of those reasons is violated by copyright laws.

Sobel, supra note 336, at 80.

            Other cases have concluded that there is no necessary conflict between first amendment and copyright interests. For example, in Robert Stigwood Group, Ltd. v. O'Reilly, 346 F. Supp. 376 (D. Conn. 1972), aff'd mem., No. 72-1826 (2d Cir. May 30, 1973), the trial court stated, in response to the defendant's first amendment claim:

            The short answer to the defendants' absolutist approach to the meaning of the First Amendment is that it is simply not the law. . . . While the Court must be alert to protect the defendants' right to a free exercise of their religious beliefs, it must recognize that the "free exercise" does not include the wholesale appropriation of another's literary, artistic and musical works. In the balance must be weighed the constitutional right of authors to have "the exclusive right" to their "writings[,]" U.S. Const. art. 1, §8, cl. 8, and the need to protect those of ability who justifiably seek compensation for their ingenuity and labor.

Id. at 383.


FN346 Professor Nimmer has identified the copyright interests as being (1) the promotion of authors in the creation of their works, and (2) the protection of privacy interests, primarily in unpublished works. 1 M. Nimmer, supra note 23, §1.10[B][2], at 1-73 to -74.1. He identified the free speech interests as being (1) the promotion of a self-governing, or democratic, society, (2) an "end in itself," and (3) a "safety-valve" against violence and other anti-social behavior. Id. §1.10[B][2], at 1-75 to 1-76. Cf. Denicola, supra note 336, at 286. Professor Nimmer concludes that the idea-expression dichotomy, by protecting expression but leaving ideas free for use by others, adequately incorporates and preserves all of the above interests. 1 M. Nimmer, supra note 23, §1.10[B][2], at 1-76. Professor Nimmer has several suggestions for adjusting the existing law to better identify and serve those interests. He stated: "Here, then, is a definitional balance under which ideas per se fall on the free speech side of the line, while the statement of an idea in specific form, as well as the selection and arrangement of ideas, fall on the copyright side of the line." Id. §1.10[B][2], at 1-74. The neatness of the formulation in which "per se" resolves almost all potential conflicts may be admired.


FN347 Professor Nimmer described his suggestion as an acceptable (if de facto) definitional balance in the law as it presently exists. 1 M. Nimmer, supra note 23, §1.10[B][2], at 1-72, 1-74 (referring to the de facto nature of the balance). The same could probably be said of the fair use doctrine. Cf. Denicola, supra note 336, at 299.


FN348 Goldstein, supra note 265. Professor Goldstein's theory, however, is perhaps as unsatisfying in its own complexity, subtlety, and "elasticity" as is Professor Nimmer's theory in its broadness and simplicity.


FN349 Professor Goldstein has used the term "statutory monopoly" to describe the entire statutory scheme for copyright law. Id. at 985. He recognized, however, that the potential for conflict arises not by the nature of copyright in all cases, but by the expansion of copyright over the years to effect "a gradual widening of authors' rights and a consequent diminution in the public's right to speak and to hear previously unprotected expressions." Id.

            Professor Goldstein used the term "enterprise monopoly" to describe the expansion of a legal copyright monopoly to cover more than a single work, such as the attempted pyramiding of individual copyright monopolies. Id. at 986. Interestingly, this possible misuse of copyrights is precisely that which is addressed by the antitrust laws, which can be used to prevent what Professor Goldstein described as the primary problem of enterprise monopoly. Id. See United States v. Paramount Pictures, Inc., 334 U.S. 131, 156 (1948) (prohibiting "block-booking" as a violation of the antitrust laws).


FN350 Professor Goldstein identified at least eight such principles which inhibit copyright and thus accommodate first amendment interests. See Goldstein, supra note 265; infra text accompanying note 378.


FN351 Goldstein, supra note 265, at 1017-22.


FN352 Professor Goldstein criticized any inflexible resolution of the "three governing questions," which he defined as "whether a particular work is deserving of protection in the first instance; if so, how to distinguish the work's protectable content from its unprotectable content; and, whether a work accused of infringing the protected work does or does not infringe." Id. at 1016. Goldstein then stated:

            Each of copyright's three governing questions is resolved flexibly, and the resolution of any one will necessarily bear upon the resolution of the other two. Judicial failure to appreciate the interrelationship of the three questions accounts for certain inelastic developments in the law. Deficient in the light of first amendment analysis, these developments are also improper in terms of general copyright theory.

Id. at 1017. Cf. Gorman, supra note 43, at 561. Although Professor Goldstein did not substantiate that the doctrines are in fact elastically applied, he certainly assumed it in such statements as the following: "[C]opyright's elastic administration of the idea-expression distinction assures that the components of public interest and economic incentive will be fluently correlated in any case." Goldstein, supra note 265, at 1018.


FN353 Professor Goldstein characterized the question of status as one frequently invoking an "inelastic" rule. He stated that "negative status [which 'withholds the protection of the federal scheme entirely'] may also be determined in an inelastic fashion." Goldstein, supra note 348, at 1024. This inelastic determination undermines the accommodative principle that Professor Goldstein identified as at the heart of copyright law: "More generally, denial of protected status to a species of expression affronts first amendment values by discouraging the species' production and dissemination, with a consequent diminution in the range of expression available for public consideration." Id. Thus, Professor Goldstein implicitly allies first amendment interests with copyright interests: he sees a failure to promote the progress of arts and sciences (by granting copyright protection) as effectively diminishing the range of expression which is encouraged by the first amendment. Cf. Sobel, supra note 336, at 66 (discussing Lamont v. Postmaster General, 381 U.S. 301 (1965) and the first amendment's protection of the right to receive information).


FN354 See Goldstein, supra note 265, at 1016-22.


FN355 Compare Goldstein, supra note 265 with supra notes 246-62. Professor Goldstein criticized the "absolute rule" that denies the copyrightability of titles and typography on the basis that such exclusions

convert questions of degree into questions of status . . . These are particular examples of the distinctions generally governed by the elastic rules of originality and the idea-expression distinction; they should not be subjected to status decisions. That works of minimal art may be accorded a low degree of protection under rules of elasticity is no argument for denying them copyright status altogether.

Goldstein, supra note 265, at 1027-28. Professor Goldstein seems to assume the elasticity of the idea-expression dichotomy: he cited the countervailing "first amendment considerations and general copyright precepts" as if copyright and first amendment considerations were, in this respect, united. See supra note 353.


FN356 471 U.S. 539 (1985).


FN357 Id.


FN358 Id. at 556. The Court also concluded the discussion of this section by noting the "First Amendment protections already embodied in the Copyright Act's distinction between copyrightable expression and uncopyrightable facts and ideas, and the latitude for scholarship and comment traditionally afforded by fair use." Id. at 560.


FN359 Id. at 557-58.


FN360 The idea-expression dichotomy simply is not decisive of the case, since both the judges who favored a finding of copyright infringement (Judge Meskill dissenting in the court of appeals, and the majority in the U.S. Supreme Court) and those who favored a finding of fair use (the Second Circuit majority and the Supreme Court dissenters) recognized the presumed validity of the idea-expression dichotomy. Compare 723 F.2d 195 (2d Cir.) with 471 U.S. 539. If the dichotomy is consistent with either outcome in the case, the doctrine's usefulness as an analytic tool must be questioned.


FN361 Harper & Row, 471 U.S. at 558.


FN362 Id. at 559 (citing Estate of Hemingway v. Random House, Inc., 23 N.Y.2d 341, 348, 244 N.E.2d 250, 255, 296 N.Y.S.2d 771, 776 (1968)).


FN363 Id. at 560 (citing Schnapper v. Foley, 667 F.2d 102 (D.C. Cir. 1981), cert. denied, 455 U.S. 948 (1982)). See W. Patry, The Fair Use Privilege in Copyright Law 140-42 (1985); 1 M. Nimmer, supra note 23, §1.10[B], at 1-70; see also Dallas Cowboys Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184 (5th Cir. 1979), in which the court of appeals stated:

First amendment values . . . are not the only interests of constitutional dimension in this litigation. Congress has an affirmative constitutional duty "To 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." The judgment of the constitution is that free expression is enriched by protecting the creations of authors from exploitation by others, and the Copyright Act is the congressional implementation of that judgment.

Dallas Cowboys Cheerleaders, 600 F.2d at 1187 (citation omitted).


FN364 1 M. Nimmer, supra note 23, §1.10[B], at 1-70.


FN365 Harper & Row, 471 U.S. at 580.


FN366 Id. at 605.


FN367 This does not indicate my disapproval of the Court's entire opinion, but only of its reference to (and apparent acceptance of) the idea-expression dichotomy as embodying first amendment interests. See Harper & Row, 471 U.S. at 556. In fact, the case may be a very wise decision, although limited to the particular setting which involved prepublication rights. To the extent that the Supreme Court focused upon the actual literal taking of small portions of the copyrighted work, the Court was not concerned at all with the taking of a mere idea.


FN368 The Second Circuit repeatedly referred to and emphasized the factual, biographical, and newsworthy nature of the work. See Harper & Row, Publishers v. Nation Enters., 723 F.2d 195, 202-04 (2d Cir. 1983), rev'd., 471 U.S. 539 (1985). The court of appeals also emphasized that noncopyrightability might be found because parts of the work were already published as part of a government document, and because they were not (as facts) original with President Ford. Id. at 205.


FN369 See infra notes 589-608 and accompanying text (discussing the protection of factual works).


FN370 562 F.2d 1157 (9th Cir. 1977).


FN371 Id. at 1170.


FN372 Id. at 1170 (citing Nimmer, supra note 336, at 1192-93).


FN373 Id. at 1171.


FN374 Id. Cases involving graphic works have also managed to avoid or dismiss the constitutional issue. See, e.g., Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132 (1979), in which defendant's first amendment claim was summarily dismissed by the same court on the authority of the Krofft case. Air Pirates, 581 F.2d at 758-59. In Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 626 F.2d 1171 (5th Cir. 1980), a three-judge panel unanimously held that the defendant's reproduction of the cover of TV Guide in its advertising was a fair use, overruling the district court on this point. Id. at 1178. The judges offered differing opinions as to whether separate resort to the first amendment was ever appropriate. Id. at 1178-84. Judge Tate, concurring in the result, expressed the opinion that such first amendment claims could be considered, aside from the idea-expression and fair use accommodations in the copyright act; but Judge Tate admitted that a "pure" first amendment case had never been presented. Id. at 1184. He stated:

I agree that we should not now decide that the idea-expression dichotomy is the sole touchstone for applying the sensitive and fundamental First Amendment values so as to permit use of copyrighted material in public discussion and expression of thoughts. Instead, I would wait until squarely faced with the attempted prohibition of a use of copyrighted expression not protected by fair use but necessary for the adequate expression of thought. . . . That conflict is not presently before us, and we properly did not reach it in our panel opinion.



FN375 1 M. Nimmer, supra note 23, §1.10[C][2]. Professor Nimmer also has identified a possible constitutional problem in the extension of the term of copyright in the 1976 Copyright Act. Id. §1.10[C][1]. Such speculations, however, have never been seriously adopted by any court. See also Krofft, 562 F.2d at 1171 (arguing that first amendment considerations attending newsworthy events may require freer use of such works).     Professor Denicola observed that news photographs are most likely to raise first amendment problems which are not otherwise resolvable by the idea-expression dichotomy or fair use doctrine, citing the Zapruder film as the most compelling situation. Denicola, supra note 336, at 302 (discussing Time Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968)). He correctly noted that it is not the idea-expression dichotomy that preserves the first amendment considerations in this case. Rather, "[t]hat the ideas contained in a copyrighted work can be expressed in alternative forms simply ensures access to the ideas themselves. The purpose of the first amendment privilege, however, is to ensure access to expression when it too is needed for a meaningful public dialogue." Id. at 307.


FN376 Professor Goldstein discussed this "enterprise" monopoly at length. Goldstein, supra note 265, at 1035-57.


FN377 In the case of an individual work, it is quite clear that under the 1976 Copyright Act (which covers unpublished as well as published works) there is no requirement of publication, nor even encouragement of it, aside from whatever economic gain one might be able to obtain, or from the incidental loss of any copyright-based protection 50 years after the death of the author. 17 U.S.C. §104 (1982). The case of Harper & Row, Publishers v. Nation Enterprises, 471 U.S. 539 (1985), clearly recognized the importance of the right of first publication in the new federal act and the protection, to a certain extent, of the right of privacy or the right to be silent. See Harper & Row, 471 U.S. at 552.

            There is similar uneasiness in the patent field over the argument that a patent owner could use a patent monopoly not for economic gain, but to withhold a desparately needed invention (such as a medicine) from the public. See supra note 329. The cases of withholding of works, as opposed to the conditioning of release on tying arrangements or other conditions that can be dealt with under the antitrust laws, seem to be rare. But if there is a strain on the general policy of patent and copyright law to promote the arts and sciences, then the solution may be in the development of either an "abandonment" theory, or a compulsory licensing scheme, or some other statutory arrangement—not simply in the implementation of the idea-expression dichotomy.


FN378 Goldstein, supra note 265, at 1007. The other copyright doctrine which has most often been associated with the first amendment, and which arguably accommodates any potential conflict, is the fair use doctrine. For example, in Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 626 F.2d 1171 (5th Cir. 1980), one judge cited not only the idea-expression dichotomy but also the fair use doctrine as accommodating first amendment considerations: "[A]s we demonstrated above, the fair use doctrine provides protection for the Herald's conduct. Thus, the asserted 'tension' between the Copyright Act and the First Amendment simply does not exist in this case. The Copyright Act itself provides a safety valve—fair use—to minimize this potential tension." Id. at 1181 (Brown, J., concurring in part and dissenting in part). In the view of this judge, "the First Amendment will rarely prevail over a copyright interest." Id. at 1182.

            See also Wainwright Secs., Inc. v. Wall St. Transcript Corp., 558 F.2d 91 (2d Cir. 1977), cert. denied, 434 U.S. 1014 (1978). Professor Denicola argued that both the idea-expression dichotomy and the fair use doctrine offer an "internal accommodation" within the copyright law of first amendment considerations. He also analyzes the "external constraint" upon copyright law, which requires reference to principles outside of copyright law itself. See generally Denicola, supra note 336, at 289, 299.

            Not only have first amendment principles been accommodated by the fair use doctrine, but some of the language of the first amendment cases has been incorporated into the fair use analysis, thus arguably distorting fair use in order to achieve the accommodation. For example, in Time Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968), Judge Wyatt incorporated a "public interest" test into the fair use factors. Id. at 146. See also Consumers Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044 (2d Cir. 1983), cert. denied, 469 U.S. 823 (1984) (importing commercial speech notions into a fair use analysis); Keep Thomson Governor Comm. v. Citizens for Gallen Comm., 457 F. Supp. 957 (D.N.H. 1978) (holding that prejudice to the plaintiff was outweighed by the public interest in full and free discussion of issues in a political campaign). Such "public interest" or first amendment considerations might also be implicated in cases such as 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); and Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984). See generally A. Latman, R. Gorman & J. Ginsberg, Copyright for the Eighties: Cases and Materials 476 (2d ed. 1985).


FN379 Professor Denicola particularly has argued that there are cases which require "an external constraint," found outside the copyright law itself, to reflect first amendment considerations. See Denicola, supra note 336, at 293. He claimed that the idea-expression dichotomy will not always achieve the accommodation, and fair use should not be manipulated to do so either. See id. at 302. He concluded that "[i]t is necessary therefore to recognize an independent first amendment privilege that would operate as an external limitation on the scope of the proprietary interest established by copyright." Id. at 304. Professor Denicola recognized, however, that most courts that have considered such an independent first amendment limitation have rejected it—either because of "the inappropriateness of the defense in the situations in which it has been raised," id. at 304, or because the courts "treated first amendment interests as coextensive with the fair use defense." Id. at n. 101. The only case he cited that specifically relies upon the independent defense is the trial court opinion in Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 445 F. Supp. 875 (S.D. Fla. 1978) (providing various opinions about the viability of an independent first amendment defense), aff'd on other grounds, 626 F.2d 1171 (5th Cir. 1980).


FN380 See infra notes 534-631 and accompanying text.


FN381 I would advocate, however, that even in the field of factual and historical works, the first amendment does not weigh against the recognition of copyright interests. See, e.g., Harper & Row, Publishers v. Nation Enters., 471 U.S. 539, 546 (1985) (noting that the principle of copyright protection "applies equally to works of fiction and nonfiction)." The Court in Harper & Row also observed that "[i]t is fundamentally at odds with the scheme of copyright to accord lesser rights in those works that are of greatest importance to the public. Such a notion ignores the major premise of copyright and injures author and public alike." Id. at 559.


FN382 See Goldstein, supra note 265. Professor Goldstein has favored the idea-expression dichotomy as an accommodating rule because he believed that it embodies this elasticity. See id. at 1017-20.


FN383 Professor Gorman described several of the basic doctrines which limit copyrightability: the idea-expression dichotomy, the substantial similarity doctrine, and the fair use doctrine. Gorman, supra note 43, at 560-61. He related some policy reasons behind these copyright principles:

            All of these doctrines mitigate the rigors of what might otherwise be an overreaching monopolistic control by the copyright owner, thus promoting society's interest in enriching the public domain. Although there is a natural temptation to think of the three stages of copyright analysis—copyrightability, infringement, and defenses of privilege—as water-tight compartments, they are not; there is a common substratum of social policy under all three of these issues, and each of the mitigating doctrines just recounted is expanded or contracted depending upon a court's weighing of the competing policies of protectionism and dissemination.

Id. at 561.


FN384 See supra notes 230-32 and accompanying text.


FN385 See, e.g., Brown, supra note 3, at 602. Professor Brown also stated:

Still, the idea, system, and process proscription of §102(b) is, I would argue, the most powerful category of ineligibility for copyright. Of course Congress could create property rights in purportedly new ways of managing a business, or running a school or commanding an army that would be of great pecuniary value. Fortunately, however, potential value does not automatically give rise to new rights.

Id. Professor Nimmer has stated, however, the following:

            Copyright may be claimed only in the "expression" of a work of authorship, and not in its "idea". This fundamental distinction, arguably required by the freedom of speech guarantee of the First Amendment, constitutes not so much a limitation on the copyrightability of works, as it is a measure of the degree of similarity which must exist as between a copyrightable work and an unauthorized copy, in order to constitute the latter an infringement.

1 Nimmer, supra note 23, §2.03 [D], at 2-34 (footnotes omitted).


FN386 Goldstein, supra note 348, at 1016.


FN387 Throughout this section, the term "substantial similarity" refers broadly to any test for infringement that involves the comparison between a copyrighted work and an allegedly copying work—in short, a test that is made at the infringement stage of a lawsuit rather than at the threshold stage of copyrightability. In fact, various different standards for testing infringement have been proposed other than "substantiality." See infra notes 466-73 and accompanying text.


FN388 For example, the leading case of Baker v. Selden, 101 U.S. 99 (1880), could have been decided more accurately on the basis of lack of substantial similarity between the two works. See 1 M. Nimmer, supra note 23, §2.18[B], at 2-198.


FN389 For example, in Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977), the court of appeals stated the rule as requiring "substantial similarity not only of the general ideas but of the expressions of those ideas as well." Id. at 1164. See infra note 411 and accompanying text; see also Gaye v. Gillis, 167 F. Supp. 416 (D. Mass. 1958). The court in Gaye appears to have combined the tests:

The public is free to use the idea or method of doing business and hence, while the copyrighted description of the idea may not be slavishly copied, the copyright is not infringed by an expression of the idea which is substantially similar where such similarity is necessary because the idea or system being described is the same.

Gaye, 167 F. Supp. at 418.

            In Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904 (3d Cir.), cert. denied, 423 U.S. 863 (1975), the court of appeals seems to have based its opinion upon both the idea-expression dichotomy and the substantial similarity test of Arnstein v. Porter, 154 F.2d 464 (1946). The court in Salkeld, however, proceeded to a detailed discussion of the major differences between plaintiff's and defendant's wall charts (showing how to use their respective weight-lifting machines), and concluded that "a lay observer could not find such a substantial similarity between the two charts as would amount to an appropriation of the plaintiff's independent work." Salkeld, 511 F.2d at 909. Professor Nimmer described the idea-expression dichotomy as "more appropriately analyzed" as related to substantial similarity. 1 M. Nimmer, supra note 23, §2.03[D], at 2-34. See supra note 385 (quoting 1 M. Nimmer). Although Professor Nimmer placed the discussion of the idea-expression dichotomy within the section on substantial similarity, he nonetheless provided a traditional explication of the dichotomy without suggesting that its usefulness as a separate doctrine is limited. See id.


FN390 154 F.2d 464 (1946). The majority opinion was written by Judge Frank, who was joined by Judge Learned Hand. Id. at 467. There was a dissent by Judge Clark. Id. Judge Hand authored the majority opinion in Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931), in which he formulated the abstractions test. See supra notes 9, 80-88 and accompanying text.


FN391 See Arnstein v. Broadcast Music, Inc., 137 F.2d 410 (2d Cir. 1943); Arnstein v. Edward B. Marks Music Corp., 82 F.2d 275 (2d Cir. 1936); Arnstein v. Twentieth Century Fox Film Corp., 52 F. Supp. 114 (S.D.N.Y. 1943); Arnstein v. American Soc'y of Composers, Authors & Publishers, 29 F. Supp. 388 (S.D.N.Y. 1939). A related action based upon state law is Arnstein v. Crestview Music Corp., 88 N.Y.S.2d 174 (Sup. Ct. 1949).


FN392 Arnstein, 154 F.2d at 467.


FN393 Id.


FN394 On remand, Arnstein ultimately lost on the merits. See Arnstein v. Porter, 158 F.2d 795 (2d Cir. 1946), cert. denied, 330 U.S. 851 (1947).


FN395 First Nat'l Bank v. Cities Serv. Co., 391 U.S. 253, 288-90 (1968); Beal v. Lindsay, 468 F.2d 287, 291 (2d Cir. 1972); Janis v. Wilson, 385 F. Supp. 1143, 1147 (D.S.D. 1974); Keller v. California Liquid Gas Corp., 363 F. Supp. 123, 126 (D. Wyo. 1973).


FN396 See Hartnick, Summary Judgment in Copyright: From Cole Porter to Superman, 3 Cardozo Arts & Ent. L.J. 53, 70 (1984). Mr. Hartnick noted that summary judgment frequently is granted to defendants in copyright cases, and concluded that "Arnstein is dead but not buried." Id. at 70. But see Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904 (3d Cir.) (reaffirming the Arnstein two-step approach, and underscoring its relationship to the idea-expression dichotomy), cert. denied, 423 U.S. 863 (1975).

            In Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1165 (9th Cir. 1977), the Ninth Circuit concluded that "Arnstein is still good law." The court of appeals noted that Arnstein's "tests for infringement have consistently been approved by this court." Id. at 1165. (citing e.g., Goodson-Todman Enters., Inc. v. Kellogg Co., 513 F.2d 913, 914 (9th Cir. 1975)). In a curious footnote, however, the court of appeals stated:

We do not resurrect the Arnstein approach today. Rather, we formulate an extrinsic-intrinsic test for infringement based on the idea-expression dichotomy. We believe that the Arnstein court was doing nearly the same thing. But the fact that it may not have been does not subtract from our analysis.

Id. at 1165 n.7.


FN397 Arnstein, 154 F.2d at 468.


FN398 Id. at 468.


FN399 Id.


FN400 According to the court, expert testimony was appropriate on the first issue—copying—and a judge presumably could weigh the testimony to determine whether any reasonable jury might conclude that there was copying against overwhelming evidence to the contrary. But the second element, the "illicitness" or impropriety of the taking, was more subjective; accordingly, it did not lend itself as well to expert "dissection" analysis or summary judgment dismissal. Id. at 469.


FN401 Arnstein, 154 F.2d at 473.


FN402 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931).


FN403 E.g., Dymow v. Bolton, 11 F.2d 690 (2d Cir. 1926).


FN404 See Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir. 1977). The Arnstein case cannot be explained in terms of works of utility, lack of originality, fair use, or any of the other doctrines discussed elsewhere in this Article.


FN405 Arnstein, 154 F.2d at 469.


FN406 Id. at 473.


FN407 Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021 (2d Cir. 1966). The court explained: "This is evident from the court's further comment that 'on that issue * * * (i.e., improper appropriation) the test is the response of the ordinary lay hearer * * *,' ibid., although the use of the term 'improper appropriation' somewhat obscures the issue." Id. at 1023 n.2.


FN408 Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977). The court of appeals stated:

            We believe that the court in Arnstein was alluding to the idea-expression dichotomy which we make explicit today. When the court in Arnstein refers to "copying" which is not itself an infringement, it must be suggesting copying merely of the work's idea, which is not protected by the copyright. To constitute an infringement, the copying must reach the point of "unlawful appropriation," or the copying of the protected expression itself. We analyze this distinction in terms both of the elements involved—idea and expression—and of the tests to be used—extrinsic and intrinsic—in an effort to clarify the issues involved.

Id. at 1165.


FN409 In Heim v. Universal Pictures Co., 154 F.2d 480 (2d Cir. 1946), decided one week after Arnstein and also written by Judge Frank, the test was described as one of determining how "material" or "substantial" the appropriation was. The court in Heim used the example of plagiarists who take quantitatively insubstantial portions as illustrating the point. Id. at 487 n.8.


FN410 See id. at 491 (Clark, J., concurring) (referring to "the novel conceptions of legal plagiarism first announced in the Arnstein case and now repeated here"). Judge Clark characterized the illicit copying test as being "decided blindly on a mere cacophony of sounds." Id.

            Of considerable interest are the number of recent major cases, several of them Second Circuit cases, in which summary judgment has been granted to a defendant after an extensive analysis of the lack of substantial similarity and the application of the idea-expression dichotomy, but without even a mention of the Arnstein case and its two-step test. See, e.g., Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231 (2d Cir. 1983); Reyher v. Children's Television Workshop, 533 F.2d 87 (2d Cir.), cert. denied, 429 U.S. 980 (1976); Musto v. Meyer, 434 F. Supp. 32 (S.D.N.Y. 1977), aff'd mem., 598 F.2d 609 (2d Cir. 1979). In other cases, the Second Circuit has recognized the import of Arnstein, but has also noted the subsequent increasing tolerance for summary judgment in copyright cases. See, e.g., Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir.), cert. denied, 449 U.S. 841 (1980). Cf. Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904 (3d Cir.) (purporting to follow Arnstein, although the showing of similarity was sufficiently weak that summary judgment was nonetheless awarded to defendant), cert. denied, 423 U.S. 863 (1975). See generally Hartnick, supra note 396, at 70.

            In contrast to the above trend, the Ninth Circuit, in Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir.), cert. denied, 108 S. Ct. 346 (1987), reversed a lower court grant of summary judgment for defendant and remanded the case for a jury trial. Baxter, 812 F.2d at 425. The district court, after listening to plaintiff's song "Joy" and defendant's "Theme from E.T.", had concluded that "the similarity of expression (or impression as a whole) is totally lacking and could not be submitted to a jury." Id. at 423. The Ninth Circuit, in reversing, found that reasonable persons could disagree about the substantial similarity between the works. Id. at 425. The court of appeals relied primarily upon the Krofft approach, mentioning Arnstein only as quoted in Krofft. Id. at 424.


FN411 562 F.2d 1157 (9th Cir. 1977). See also Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir.), cert. denied, 108 S. Ct. 346 (1987), which adopted the Krofft approach to the idea-expression dichotomy. In Baxter, the issue was squarely focused upon the appropriateness of summary judgment dismissal, with the court of appeals concluding that such dismissal was not appropriate in that case. 812 F.2d at 425. However, since the "defendants . . . assumed for purposes of their motion that there was substantial similarity of ideas as between the two compositions," id. at 424, the issue in the Baxter case (as well as the Krofft case) was one of substantial similarity. (One wonders what is meant by "substantial similarity of ideas"—if the music is to some extent similar in expression, then the issue will always be the substantiality of that similarity in expression.) The Krofft test was applied to similar effect in Aliotti v. R. Dakin & Co., 831 F.2d 898, 900 (9th Cir. 1987) (reciting the two-part test of Krofft, but finding non-similarity between the "protectable" elements of plaintiff's and defendant's stuffed toy dinosaurs).


FN412 Krofft, 562 F.2d at 1167.


FN413 154 F.2d 464 (1946).


FN414 Krofft, 562 F.2d at 1166. See supra note 396.


FN415 Krofft. at 1164.


FN416 Id.


FN417 Id.


FN418 Id. (noting that "this question may often be decided as a matter of law").


FN419 Id.


FN420 Krofft, 562 F.2d at 1165.


FN421 Id.


FN422 See id. at 1167.


FN423 Id. at 1169.


FN424 The court observed:

A limiting principle is needed. This is provided by the classic distinction between an "idea" and the "expression" of that idea. It is an axiom of copyright law that the protection granted to a copyrighted work extends only to the particular expression of the idea and never to the idea itself. This principle attempts to reconcile two competing social interests: rewarding an individual's creativity and effort while at the same time permitting the nation to enjoy the benefits and progress from use of the same subject matter.

Id. at 1163 (citation omitted).


FN425 Krofft, 562 F.2d at 1162. The court recited the rule that copying may be proven by circumstantial evidence of access and substantial similarity, and went on to observe the following:

Application of this rule, however, 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.

            Clearly the scope of copyright protection does not go this far. A limiting principle is needed.

Id. at 1162-63 (footnote omitted). This limiting principle seems to be based upon the fear of overweighting the circumstantial evidence of access and similarity, and on the assumption that statues of nudes are "in all probability" going to be substantially similar.


FN426 Id. at 1164.


FN427 See id. at 1162.


FN428 See id. at 1169.


FN429 Id. If the case is viewed as a pure idea-expression case, then it may represent a perceptible shift toward protecting the idea side of the dichotomy. In describing the items of substantial similarity between the two works, the court listed the following: similarity of locale ("both imaginary worlds inhabited by anthromorphic [sic] plants and animals and other fanciful creatures"), id. at 1169 n.9; topographical features ("trees, caves, a pond, a road, and a castle," as well as "a forest with talking trees that have human faces and characteristics"), id; and characters ("mayors who have disproportionately large round heads dominated by long wide mouths," "'Keystone cop' characters," and "strikingly similar crazy scientists and a multi-armed evil creature"), id. at 1167 n.9. These similarities, by a verbal description, sound more like idea than expression. One could, for example, have talking trees that look different from those in the copyrighted work, or mayors with large round heads and long wide mouths that nonetheless look different, or "Keystone Cop" characters who, in other contexts, would be thought of as scenes a faire (and thus incapable of copyright protection). See supra note 290.


FN430 446 F.2d 738 (9th Cir. 1971). This case is probably a false merger case as well. See supra notes 297-99 and accompanying text. Kalpakian is also related to other "junk art" cases discussed in the section on originality. See infra notes 481-84 and accompanying text.


FN431 Kalpakian, 446 F.2d at 742.


FN432 436 F.2d 315 (2d Cir. 1970). See also Herbert Rosenthal Jewelry Corp. v. Zale Corp., 323 F. Supp. 1234 (S.D.N.Y. 1971) (granting plaintiff's motion for summary judgment in a lawsuit against the retailer of the pin made by Grossbardt); Herbert Rosenthal Jewelry Corp. v. Grossbardt, 428 F.2d 551 (2d Cir. 1970) (upholding a grant of preliminary injunction in a lawsuit over duplication of a turtle shaped pin).


FN433 Grossbardt, 436 F.2d at 318.


FN434 Id. at 316.


FN435 Kalpakian, 446 F.2d at 741.


FN436 Id. at 742. The court noted that the trial court's "resolution of the problem [was] not entirely satisfactory." Id. at 741. The court's basis of its dissatisfaction was the fact that copying could be subconscious, so that evidence of conscious intent not to copy would not be decisive; thus, a finding of copying would not necessarily lead to a finding of infringement. See id. at 742. Since there was no substantial similarity between the two works involved, either consciously or unconsciously copied, the troublesome situation suggested by the court was simply not present. Accordingly, the court should not have sought out a holding that was designed primarily to resolve issues that were not raised by the case—that is, whether infringement would exist even if there had been copying.


FN437 Id. at 740.


FN438 See id. at 741.


FN439 See Grossbardt, 436 F.2d at 378.


FN440 E.g., Mattell, Inc. v. Azrak-Hamway Int'l, Inc., 724 F.2d 357 (2d Cir. 1983); Original Appalachian Artworks, Inc. v. Blue Box Factory Ltd., 577 F. Supp. 625 (S.D.N.Y. 1983); Ideal Toy Corp. v. Kenner Prods. Div., 443 F. Supp. 291 (S.D.N.Y. 1977).


FN441 See Azrak-Hamway, 724 F.2d at 360; Blue Box Factory, 577 F. Supp. at 631; Kenner Prods., 443 F. Supp. at 303; Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966).


FN442 See, e.g., Azrak-Hamway, 724 F.2d at 360 (finding that "Masters of the Universe" dolls were not infringed by dolls that took only the general figure of "a superhuman muscleman crouching in what since Neanderthal times has been a traditional fighting pose"); Blue Box Factory, 577 F. Supp. at 628 (finding that "Cabbage Patch Kids" were not infringed by "Flower Kids," even though the defendant "undeniably attempted to capitalize on consumer demand for 'soft sculpture' infant-size dolls, a demand presently generated in large part by [plaintiff's] product"); Kenner Prods., 443 F. Supp. 291 (finding that "Star Wars" characters were not infringed by defendant's humanoid robot or small robot dolls). Cf. Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231 (2d Cir. 1983) (finding that the Superman character was not infringed by "Greatest American Hero"). For the general proposition that the issue in character protection cases should not be copyrightability but rather substantial similarity, see Kurtz, supra note 266, at 440, 472; infra notes 609-31 and accompanying text.

            A case that does not fit the above pattern is Uneeda Doll Co. v. Regent Baby Prods Corp., 355 F. Supp. 438 (E.D.N.Y. 1972). The court there conceded that "the dolls are by no means identical," based on "differences in sculptural detail" and the fact that "one doll would not be mistaken for the other." Id. at 447, 448. Indeed, the court concluded: "It is evident that the most original elements in plaintiff's doll, those which give it its characteristic of difference from the common run of dolls, is what the defendant's Iwai doll maker tended to reject in favor of conventional pleasingness." Id. at 448. The court granted plaintiff's motion for a preliminary injunction, however, based on its view that the "severe" substantial similarity test in Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960), had become more liberal in favor of the copyright owner. Uneeda Doll, 355 F. Supp. at 450. For those enamored of idea-expression analysis, Uneeda Doll may be viewed as overextending copyright to protect the "idea" of the doll, since protection was granted despite a lack of substantially similarity. See id. at 451. If the case was incorrectly decided, however, it was because the works in the case were not substantially similar but rather were distinguishable by the lay observer.


FN443 Cf. Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2d Cir.), cert. denied, 449 U.S. 841 (1980), in which the court of appeals stated:

[A] series of copyright cases in the Southern District of New York have granted defendants summary judgment when all alleged similarity related to non-copyrightable elements of the plaintiff's work. These cases signal an important development in the law of copyright, permitting courts to put "a swift end to meritless litigation" and to avoid lengthy and costly trials.

Hoehling, 618 F.2d at 977 (citations omitted).


FN444 Some commentators have identified a "some lack of uniformity" that "prevails in judicial application of the substantial-similarity test." A. Latman, R. Gorman & J. Ginsburg, supra note 378, at 346. The authors stated:

Under one view, the fact-finder judges substantial similarity with respect to the whole of the copied portions of the plaintiff's work, including portions that viewed in isolation might not be eligible for copyright. Under another view, the fact-finder first removes from consideration the uncopyrightable elements of the copied material. Such elements include facts, ideas, and "scenes a faire" . . . . The application of one or the other approach will frequently affect the outcome of the case, for any copyrighted literary work is likely to contain some, if not all, of these individually unprotectible elements.

Id. The former view is represented by Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir.), cert. denied, 298 U.S. 699 (1936), and is paralleled in the "total concept and feel" cases. E.g., Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2d Cir.), cert. denied, 449 U.S. 841 (1980); Alexander v. Haley, 460 F. Supp. 40 (S.D.N.Y. 1978). The text focuses upon cases that follow the latter approach. See also Harper & Row, Publishers v. Nation Enters., 471 U.S. 539 (1985). In Harper & Row the Supreme Court stated:

Especially in the realm of factual narrative, the law is currently unsettled regarding the ways in which uncopyrightable elements combine with the author's original contributions to form protected expression. Compare Wainwright Securities Inc. v. Wall Street Transcript Corp., 558 F.2d 91 (CA2 1977) (protection accorded author's analysis, structuring of material and marshaling of facts), with Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (CA2 1980) (limiting protection to ordering and choice of words).

Id. at 548.


FN445 630 F.2d 905 (2d Cir. 1980).


FN446 Id. at 911.


FN447 618 F.2d 972, 977 (2d Cir.), cert. denied, 449 U.S. 841 (1980).


FN448 Hoehling, 618 F.2d at 978.


FN449 The lack of "concreteness" as a bar to copyrightability seems most often to occur in the context of systems and procedures that are not sufficiently developed, or characters that are not sufficiently delineated. See infra note 538; Kurtz, supra note 266, at 463.


FN450 See infra text accompanying notes 534-77 (works of utility); 474-514 (works lacking sufficient originality); 589-608 (factual or historical works); 538 (abstract works).


FN451 If the defendant's work infringes, as was held in the Krofft case (see supra notes 411-19 and accompanying text), then obviously the idea-expression dichotomy (to the extent that it has been invoked and is related to the substantial similarity doctrine) has not led to a limitation of copyright. This may ultimately represent something of a subterfuge to allow for the expansion of copyright to cover previously uncovered works. Cf. supra text accompanying notes 96-98 (discussing the impact of the Nichols case).


FN452 720 F.2d 231 (2d Cir. 1983).


FN453 Id. at 248.


FN454 Id. at 240.


FN455 The court observed that "the total perception of the Hinkley character is not substantially similar to that of Superman. On the contrary, it is profoundly different. . . . In this case . . . a reasonable jury could not conclude that Hinkley is substantially similar to the Superman character with only a change of name." Id. at 243.


FN456 The lower court identified various "ideas" or "attributes" common to both characters, and "other ideas common to the works," and concluded that "what defendants took from plaintiff's works . . . were unprotected ideas." Warner Bros. Inc. v. American Broadcasting Cos., 530 F. Supp. 1187, 1190-91 (S.D.N.Y. 1982), aff'd, 720 F.2d 231 (2d Cir. 1983). Judge Motley, claiming that "the proof here is in the viewing," held that no reasonable jury could find the works to be substantially similar. Warner Bros., 530 F. Supp. at 1192, 1195.


FN457 Although holding for defendant, the court of appeals stated:

[W]e do not accept defendants' mode of analysis whereby every skill the two characters share is dismissed as an idea rather than a protected form of expression. That approach risks elimination of any copyright protection for a character, unless the allegedly infringing character looks and behaves exactly like the original. A character is an aggregation of the particular talents and traits his creator selected for him. That each one may be an idea does not diminish the expressive aspect of the combination.

Warner Bros., 720 F.2d at 243.


FN458 The Warner Brothers case may depend to a considerable extent upon the special nature of character protection, where the "graphic rendering of a character" or the "visual perception of the character tends to create a dominant impression against which the similarity of a defendant's character may be readily compared . . . ." Id. at 241, 242. The court of appeals recognized that "the idea-expression distinction has proved to be especially elusive" in the case of character protection. Id. at 240. Thus, the case may be more properly viewed as a special type of work than as a general idea-expression case. See generally infra text accompanying notes 609-31.


FN459 533 F.2d 87 (2d Cir.), cert. denied, 429 U.S. 980 (1976).


FN460 Reyher, 553 F.2d at 88.


FN461 See id. at 90-91.


FN462 The district court had found that although there was no literal copying, or even close paraphrasing, there was substantial similarity because "both stories present an identical sequence of events." Reyher v. Children's Television Workshop, 387 F. Supp. 869, 870 (S.D.N.Y. 1975), aff'd on other grounds, 533 F.2d 87 (2d Cir.), cert. denied, 429 U.S. 980 (1976). The trial judge held that the plaintiff's work was essentially a derivative work based upon a Russian folk story plaintiff's mother had told her as a child, so that the story was not entitled to copyright protection. Reyher, 387 F. Supp. at 870. The Second Circuit rejected both the finding of substantial similarity and the district court judge's derivative work rationale, but affirmed the decision on the grounds that any similarities related only to noncopyrightable material. Reyher, 533 F.2d at 89-90.


FN463 Reyher, 533 F.2d at 90.


FN464 Id. at 91-92. Cf. Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977).


FN465 Reyher, 533 F.2d at 92. See generally supra notes 289-90 (discussing scenes a faire).


FN466 See supra text accompanying notes 80-110.


FN467 See infra text accompanying notes 601-08. The characterization has not been universally recognized. See Harper & Row, Publishers v. Nation Enters., 471 U.S. 539 (1985).


FN468 See Sound Recording Amendment of 1971, 17 U.S.C.A. §§101, 102, 114 (West 1977 & Supp. 1989).


FN469 The copyright in sound recordings extends only to copying "that directly or indirectly recapture[s] the actual sounds fixed in the recording." Id. §114.


FN470 See, e.g., Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 241 (2d Cir. 1983); Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1167 (9th Cir. 1977) (purporting to apply the substantial similarity test, but incorporating the "total concept and feel" test of Roth); Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1970). The former two cases involved alleged character infringements, in which the youth of the audience was one factor weighing in favor of applying a more liberal test for infringement. See Krofft, 562 F.2d at 1166; Warner Bros., 720 F.2d at 244. Some of the recent "look and feel" computer cases might also suggest that copyright protection is being given a wider scope. See supra text accompanying notes 179-203.


FN471 Some recent Ninth Circuit cases equate the total concept and feel test with the second half of the test found in Krofft, which itself purported to be applying the substantial similarity test. See Krofft, 562 F.2d at 1164. For example, in Berkic v. Crichton, 761 F.2d 1289 (9th Cir.), cert. denied, 474 U.S. 826 (1985), the court of appeals applied the two-step approach of Krofft, and looked first at the "extrinsic test" to determine whether the works were substantially similar in their "general ideas." Berkic, 761 F.2d at 1292. According to the court, this meant "articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events." Id. The court continued:

The second part of the substantial similarity inquiry, the "intrinsic test," is used to determine whether two works are substantially similar in their "forms of expression." The intrinsic test is subjective; it depends solely "on the response of the ordinary reasonable person." To that extent, expert testimony or the comparison of individual features of the work is inappropriate in applying the intrinsic test. Rather, the trier of fact ordinarily decides whether the "total concept and feel" of the two works is substantially similar.

Id. (citations omitted). See also Baxter v. MCA, Inc., 812 F.2d 421, 424 (9th Cir.), cert. denied, 108 S. Ct. 346 (1987); Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1984), cert. denied, 470 U.S. 1052 (1985); Overman v. Universal City Studios, Inc., 605 F. Supp. 350, 352-53 (C.D. Cal. 1984), aff'd, 767 F.2d 933 (9th Cir. 1985). Cf. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (involving the substantial similarity and ordinary observer tests). In emphasizing the "aesthetic appeal" of the fabrics in suit, however, the Peter Pan Fabrics case seems to anticipate the total concept and feel language. See id. at 489.

            It is rather curious that the Ninth Circuit in Berkic attributes to the idea part of the analysis the comparison of "plot, themes, dialogue, mood, setting, pace, characters, and sequence of events." Berkic, 761 F.2d at 1292. At least some of these aspects, if substantially similar enough, would seem to go to similarity of expression. Cf. Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir.) ("the essence of infringement lies in taking not a general theme but its particular expression through similarities of treatment, details, scenes, events and characterization"), cert. denied, 429 U.S. 980 (1976); Universal City Studios, Inc. v. Film Ventures Int'l, Inc., 543 F. Supp. 1134, 1141 (C.D. Cal. 1982) (attributing "the basic story points, the major characters, the sequence of incident, and the development and interplay of the major characters and story points" to expression, not idea).


FN472 The cases emphasize that there must be substantial similarity of both idea and expression. See Berkic, 761 F.2d at 1292; Litchfield, 736 F.2d at 1356. Although similar ideas may find different expressions, however, it seems implausible to assume that dissimilar ideas could ever result in "substantially similar" expression. Cf. supra text accompanying notes 424-29. Therefore, the total concept and feel test is not an additional test that is imposed after some already high hurdle has been met; instead, the total concept and feel test is the determinative test that is applied only after a minimal threshold determination by the factfinder that the case is appropriate for consideration.


FN473 The test is frequently cited in cases in which the defendant is ultimately held not to have infringed. Many of these cases represent what might be called a defensive use of the total concept and feel test. For example, in Original Appalachian Artworks, Inc. v. Blue Box Factory Ltd., 577 F. Supp. 625, 628 (S.D.N.Y. 1983), the trial court conceded that "at first glance" the defendant's Flower Kids were "superficially similar" to plaintiff's Cabbage Patch Kids, based upon similarities of size, hair, material, and facial and bodily features. Indeed, plaintiff's survey evidence indicated that 64% of children in a particular test described the defendant's doll as "some variant of Cabbage Patch Kid." Id. at 630. Yet the court denied plaintiff's motion for a preliminary injunction, emphasizing that "[t]he differences and similarities are not to be assessed separately, but rather the dolls should be evaluated in 'total concept and feel.'" Id. at 628. Such cases hardly depend upon whether the test is more liberal than the substantial similarity test standing alone.

            In cases such as Roth and Krofft, infringement was found where it might not otherwise have been found if the emphasis had not been upon the total concept and feel of the works. See Roth, 429 F.2d at 1110; Krofft, 562 F.2d at 1167. Yet, each of these cases could presumably have been decided using language of substantial similarity without reference to total concept and feel. Thus, even if emphasis upon total concept and feel has a liberalizing influence, the shift is admittedly not a major one and may not be decisive of many cases.


FN474 The Constitution presumably requires some minimal level of originality under the copyright clause, in order to constitute either an "author" or a "writing" entitled to protection. See, e.g., The Trade-Mark Cases, 100 U.S. 82, 94 (1879). Similarly, the definition of "original works of authorship" under the statute requires a minimal degree of originality. See H.R. Rep. 1476, 94th Cong., 2d Sess., 1, 51-53, reprinted in 1976 U.S. Code & Admin. News 5659, 5664-66.


FN475 See Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 910 (2d Cir. 1980); see also L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 489-90 (2d Cir.), cert. denied, 429 U.S. 857 (1976). Batlin cited Professor Nimmer to the effect that "'the one pervading element prerequisite to copyright protection regardless of the form of the work' is the requirement of originality." Id. at 489-90. In declining to define the key phrase "original works of authorship" in the 1976 Copyright Act, Congress intended "to incorporate without change the standard of originality established by the courts under the present copyright statute." H.R. Rep. No. 1476 at 51, reprinted in 1976 U.S. Code Cong. & Admin. News at 5664.


FN476 Many of the early leading cases involved challenges to the originality that was evidenced in particular types of work, and thus represented categorical determinations on the nature of originality. See, e.g., Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903) (advertisements protectable); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) (photographs protectable); The Trade-Mark Cases, 100 U.S. 82 (1879) (trademarks not protectable under the copyright clause); Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951) (mezzotint engravings of previously existing paintings protectable). The inclusion of sound recordings under federal copyright law in 1971 represented a legislative determination that the fixation of sounds was categorically entitled to protection, apparently without regard to the amount of originality embodied in the underlying work or in the manner of fixation. See Sound Recording Amendment of 1971, Pub. L. No. 92-140, 85 Stat. 391 (codified as amended at 17 U.S.C.A. §§101, 102, 114 (West 1977 & Supp. 1989).


FN477 "The protection afforded by a copyright extends generally only to those elements of a work which are original." Musto v. Meyer, 434 F. Supp. 32, 36 (S.D.N.Y. 1977), aff'd, 598 F.2d 609 (2d Cir. 1979). This rule is particularly applicable in the case of derivative works, which by definition contain both unoriginal and original portions.

            There is a parallel between the use of originality and the idea-expression dichotomy as either threshold tests or tests of the proportion of works that are to be protected. Of the two, the originality test is more susceptible of application at the threshold stage. For example, it might have been determined that photographs or sound recordings by their nature (i.e., "capturing" images or sound that exist outside the work) involve insufficiently original creativity to meet the test of copyrightability, no matter how inventively made. In fact, however, almost all cases dealing with originality as a threshold test have found that a particular medium is capable of sufficient originality to sustain copyright, thereby leaving for determination in the individual case whether sufficient originality exists—or, more often, leaving to the infringement stage the issue whether the original portions have in fact been copied. See supra note 476.


FN478 See, e.g., Chamberlin v. Uris Sales Corp., 150 F.2d 512 (2d Cir. 1945). Chamberlin purported to relate the doctrines as follows:

The defendant contends that the rules drafted by plaintiff are not copyrightable for lack of the requisite "originality." But the cases indicate that the "originality" required refers to the form of expression and not to novelty in the subject matter. . . . Precisely, however, because it is the form of expression and not the idea that is copyrightable, we hold that the defendant did not infringe on the plaintiff's statement of the rules.

Id. at 513 (citation and footnote omitted). See also National Comics Publications, Inc. v. Fawcett Publications, Inc., 191 F.2d 594 (2d Cir. 1951) (recognizing copyright in some Superman comic strips despite lack of notice on other particular strips depicting the same character). Judge Hand concluded in National Comics that

the absence of any notice . . . had no effect upon the copyright upon another "strip" depicting a different exploit. . . . [W]e [do not] forget that every copyrighted "work" must be original . . . . [T]he copyright of a later exploit of "Superman" was valid, in so far as the picture differed from those that had gone before. That follows from §7 [of the pre-1976 Copyright Act] which provides for the copyright of "abridgments, adaptations, arrangements * * * or other versions"; for all of these are variants of some already published "work." The same result also follows from the fact that a copyright never extends to the "idea" of the "work," but only to its "expression" . . . .

Id. at 599-600 (emphasis added). The logic of the "strip-by-strip" protection found in National Comics might be superseded by some more recent cases granting broader rights in characters generally. See infra text accompanying notes 609-31.

            In determining the substantial similarity between a copyrighted work and an allegedly infringing work, it is appropriate for a court to distinguish between the protected portion of the work and that portion which, for one reason or another, is not protected. See supra notes 444-50 and accompanying text. Perhaps lack of originality is the most common and logical reason why a portion of the work might be deemed unprotected.


FN479 See infra notes 500-02 and accompanying text (dealing with the originality required for derivative works).


FN480 Students seem to confuse the standards for determining originality and infringement: they assume that a work is original if and only if it would not itself infringe the prior work. Authority for this proposition is found in the frequently quoted statement that "[o]riginality in this context 'means little more than a prohibition of actual copying.'" Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951) (citing authority). Nevertheless, a licensed derivative work, or a copy of a work in the public domain, might contain enough original elements to deserve separate protection of those elements, while at the same time containing sufficiently copying elements to constitute an infringement but for the license or the public domain status of the copied work. The tests for originality and infringement must therefore be different. The requirement of originality is low—any amount of new material is sufficient—whereas the test for infringement—usually requiring substantial similarity—is not as commensurately low.


FN481 The minimalist test has been used to justify the expansion of protection into areas in which the existence of originality might at first have been doubted. For example, Congress and the courts have allowed protection for maps and charts, reproductions of works of art, photographs of real objects, and derivative works such as translations—all of which, at least in some cases, are valued precisely to the extent that they suppress creativity in favor of loyalty to the original work. See e.g., Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884); Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951). The cases usually have emphasized that even trivial variations are sufficient to support protection.


FN482 See B. Kaplan & R. Brown, Cases on Copyright 157-58 (3d ed. 1978) (describing the cases involving "junk" jewelry in a section entitled "Useful and Useless Articles"). Many of the cases involving junk jewelry presented problems involving the works of utility doctrine. See generally infra text accompanying notes 555-77. That jewelry generally is subject to copyrightability despite its utilitarian or commercial nature is made clear in Boucher v. Du Boyes, Inc., 253 F.2d 948 (2d Cir.), cert. denied, 357 U.S. 936 (1958).


FN483 See, e.g., L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.), cert. denied, 429 U.S. 857 (1976); National Comics Publications, Inc. v. Fawcett Publications, Inc., 191 F.2d 594 (2d Cir. 1951); B. Kaplan, supra note 3, at 45-46 (concluding that "to make the copyright turnstile revolve, the author should have to deposit more than a penny in the box"). Some of these cases will be dealt with in the subsection on de minimus works. See infra notes 521-29 and accompanying text. Other cases involving "junk" art might be related to the works of utility doctrine. See infra notes 555-77 and accompanying text. See, e.g., Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 155 F. Supp. 932 (S.D.N.Y. 1957), aff'd in part, rev'd in part, 260 F.2d 637 (2d Cir. 1958) (involving design of watch faces).


FN484 Section 101 of the Copyright Act of 1976 defines a derivative work as one "based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." 17 U.S.C.A. §101 (West 1977 & Supp. 1989).


FN485 536 F.2d 486 (2d Cir.), cert. denied, 429 U.S. 857 (1976).


FN486 L. Batlin & Son, Inc., a competitor in the importation and sale of replica Uncle Sam banks, had been prohibited from importing its banks because of a claim of copyright by Snyder filed with the United States Customs Service. Id. at 488. Batlin brought suit to compel the cancellation of the recordation of copyright. See L. Batlin & Son, Inc. v. Snyder, 394 F. Supp. 1389 (S.D.N.Y. 1975), aff'd, 536 F.2d 486 (2d Cir.), cert. denied, 429 U.S. 857 (1976). The trial court granted a preliminary injunction compelling Snyder to cancel the recordation, and restraining Snyder from enforcing its copyright. Batlin, 394 F. Supp. at 1391.


FN487 Batlin, 536 F.2d at 491.


FN488 177 F. Supp. 265 (S.D.N.Y. 1959). The Alva case upheld the copyright in a reproduction of Rodin's famous "Hand of God," based not upon distinguishable variations, but upon the skill required to produce an exact replica of so intricate a statue. Id. at 267.


FN489 Id. at 267.


FN490 See e.g., Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951). The court in Catalda held that mezzotint engravings of Old Masters were copyrightable, based upon the skill required to duplicate them and the necessary originality in the mezzotint techniques for simulating the effect of oil paintings. Id. at 104-05. The court emphasized that even minimal variations could constitute sufficient originality in such a context, because the overall impression of the works was obviously not original. Id. at 105.


FN491 Batlin, 536 F.2d at 491 (citing 1 M. Nimmer, The Law of Copyright, §20.2 at 94 (1975)).


FN492 197 F. Supp. 940 (S.D. Cal. 1961), aff'd, 304 F.2d 251 (9th Cir. 1962).


FN493 Doran, 197 F. Supp. at 944.


FN494 See id. at 947.


FN495 See Alva Studios, Inc. v. Winninger, 177 F. Supp. 265, 266 (S.D.N.Y. 1959); Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 99-100 (2d Cir. 1951).


FN496 The 1909 Act included reproductions of works of art. See Act of Mar. 4, 1909, ch. 320, §5(h), 35 Stat. 1075, 1077. The 1976 Copyright Act incorporated art reproductions through the definition of "pictorial, graphic, and sculptural works." See 17 U.S.C.A. §101 (West 1977 & Supp. 1989).


FN497 According to the Second Circuit, Batlin had ordered cast iron banks from Taiwan on August 9, 1974—before the October 15, 1974, date that Snyder claimed for publication of its bank. Batlin, 536 F.2d at 488. The court noted that

Batlin . . . ordered 30 cartons of cast iron Uncle Sam mechanical banks from Taiwan where its president had seen the bank made. When he became aware of the existence of a plastic bank, which he considered "an almost identical copy" of the cast iron bank, Batlin's trading company in Hong Kong procured a manufacturer and the president of Batlin ordered plastic copies also.

Id. It is not clear what the president of L. Batlin & Son, Inc. saw being made; because Snyder's bank was produced in Hong Kong, however, it was presumably not Snyder's bank. The apparent coincidence in the timing of the production of the banks is perhaps explained by the upcoming bicentenniel celebration of the American Revolution, as well as the centennial of the original Uncle Sam mechanical bank—the popularity of which both parties obviously understood.


FN498 The court of appeals cited testimony that Batlin's representative took between one and one-half to two days to produce the plastic mold sculpture from the metal bank. Batlin, 536 F.2d at 491.


FN499 Id. at 492.


FN500 Id. (citation omitted).


FN501 See, e.g., supra note 425 and accompanying text (discussing the rationale suggested in the Krofft case).


FN502 The court stated: "Even in Mazer v. Stein . . . the Court expressly held that the objects to be copyrightable, 'must be original, that is, the author's tangible expression of his ideas.' . . . No such originality, no such expression, no such ideas here appear." Batlin, 536 F.2d at 492.


FN503 630 F.2d 905 (2d Cir. 1980).


FN504 Id. at 907-08. Durham Industries had sued for a declaratory judgment that Tomy Corporation's copyrights were not valid, and Tomy Corporation had counterclaimed alleging copyright infringement of its wind-up toys and other toys.


FN505 Durham Indus., 630 F.2d at 910-11.


FN506 Id. at 911-18.


FN507 Id. at 911. This is basically the same concern raised by the Krofft court in the idea-expression context.


FN508 698 F.2d 300 (7th Cir. 1983).


FN509 Id. at 301.


FN510 Id. at 304-05.


FN511 Id. at 304. The court elaborated its holding:

Suppose Artist A produces a reproduction of the Mona Lisa, a painting in the public domain, which differs slightly from the original. B also makes a reproduction of the Mona Lisa. A, who has copyrighted his derivative work, sues B for infringement. B's defense is that he was copying the original, not A's reproduction. But if the difference between the original and A's reproduction is slight, the difference between A's and B's reproductions will also be slight, so that if B had access to A's reproductions the trier of fact will be hard-pressed to decide whether B was copying A or copying the Mona Lisa itself.

Id. at 304. If this is true, however, what happens to Justice Holmes's classic statement: "Others are free to copy the original. They are not free to copy the copy"? Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249 (1903). It would seem that others are free to copy the copy, because the courts can't be bothered with trying to figure out which work was in fact copied.


FN512 Gracen, 698 F.2d at 305. The court of appeals stated that it was "speaking . . . only of the requirement of originality in derivative works. If a painter paints from life, no court is going to hold that his painting is not copyrightable because it is an exact photographic likeness." Id. at 305. The limitation, however, is not all that convincing. Some of the earlier "liberal" cases had also involved derivative works. E.g., Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951). Additionally, the court in Graceu stated:

The requirement of originality is significant chiefly in connection with derivative works, where if interpreted too liberally it would paradoxically inhibit rather than promote the creation of such works by giving the first creator a considerable power to interfere with the creation of subsequent derivative works from the same underlying work.

Gracen, 698 F.2d at 305. If this is true, then the derivative works cases represent the chief context in which originality is a problem, so that carving out a derivative works exception to originality analysis creates an exception that swallows the rule.


FN513 In most originality cases involving derivative works there will be at least three works before the court: the first work (which is not the subject of the litigation); the plaintiff's derivative work, and the defendant's work. This allows for a triangular comparison.


FN514 Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 914-15 (2d Cir. 1980).


FN515 The parallel in terms of the idea-expression dichotomy would involve a de-emphasis on the protection of raw "ideas" (which may have minimal "fancifulness," particularly for fact-based or derivative works) and an emphasis upon the need for a particularly expressive form as the basis for protection.


FN516 See, e.g., Gorman, supra note 208. Professor Gorman stated:

[I]t must be recognized that the law of copyright, which avowedly protects expression only, may not be the ideal vehicle for the protection of fact works, the value of which is generally attributable to the labor they embody rather than their mode of expression. Where it is clear that it is labor, effort, and expense that is sought to be protected, the most apt body of protective principles might be found in that branch of the law of unfair competition dealing with misappropriation.

Id. at 1571. Professor Gorman noted that there is nothing necessarily improper about viewing such interests in terms of copyright law. Id. He argued, however, that the copyright law should be modified to reflect the different interests that are fostered in the case of different kinds of works, particularly factual works. Id. at 1570-71.


FN517 There may be some parallel between this principle and the "flash of genius" test in patent law. That test, for a time, implied that novelty for purposes of patent law could be found only in the "spark" or "flash" of genius, and not in the discovery by an industrious artisan. See Cuno Eng'g Corp. v. Automatic Devices Corp., 314 U.S. 84, 90-01 (1941). The test was rejected by Congress in the 1952 Patent Act, which provided that "[p]atentability shall not be negatived by the manner in which the invention was made." Act of July 19, 1952, Pub. L. No. 593, §103, 66 Stat. 792, 798 (codified as amended at 35 U.S.C. §103 (Supp. II 1984)). See Graham v. John Deere Co., 383 U.S. 1 (1966). If the manner of invention does not undermine patentability (for which the level of novelty is relatively high), it should certainly not undermine copyrightability (for which the level of originality is extremely low).


FN518 See supra note 481. Industriousness alone, however, does not entitle one to a copyright if the resulting work is not original. In Miller v. Universal City Studios, Inc., 650 F.2d 1365 (5th Cir. 1981), the court of appeals held that research was not copyrightable. Id. at 1370-72. Commenting upon the "exceptional" directory cases that suggested a contrary rule, the court stated that "[a] copyright in a directory, however, is properly viewed as resting on the originality of the selection and arrangement of the factual material, rather than on the industriousness of the efforts to develop the information." Id. at 1369. Directories are protected even if there is no independent verification of the information, however, so that the originality may consist only of the work required in assembling the information. See, e.g., Schroeder v. William Morrow & Co., 566 F.2d 3 (7th Cir. 1977); National Business Lists, Inc. v. Dun & Bradstreet, Inc., 552 F. Supp. 89, 94 (N.D. Ill. 1982) (observing that the plaintiff had "made unmistakenly clear the 'work product' foundation of that protection"). In short, industriousness does not guarantee copyrightability; but if a work is original, it is protected whether the effort in creating it was artistically "creative" or "merely" laborious compilation.


FN519 See 17 U.S.C. §§102(a)(7), 114 (1982).


FN520 See Gorman, supra note 43, at 567-80 (referring to the "thin" protection which is extended to various fact works, such as maps, directories, and legal and business forms).


FN521 To some extent, the only way to understand what is meant by "originality" is to contrast it with the novelty standard that is required of patents. See, e.g., Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884); Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951).


FN522 See, e.g., Material Not Subject to Copyright, 37 C.F.R. §202.1(d) (1988).


FN523 Id. §202.1.


FN524 Id.


FN525 The items listed in 37 C.F.R. §202.1(c) (1988) seem to be justified primarily because of their utilitarian function. Because they are excluded when they "are designed for recording information and do not in themselves convey information," id., a registrant would contest nonregistration by pointing out aspects in which the item in fact conveys information. A Copyright Office circular explained the exclusion of computing and measuring devices as follows: "Since the contents of a device are predetermined by functional considerations, they lack creative authorship, which is the basic requirement of copyright protection." Copyright Office, Computing and Measuring Devices, Circular 33 (1979).


FN526 The items listed under 37 C.F.R. §202.1(d) (1988) seem to be justified primarily by their lack of originality: they are excluded only if they consist "entirely of information that is common property containing no original authorship" or (in the case of lists or tables) are "taken from public documents or other common sources." Id. The registrant who contests an adverse determination would try to demonstrate aspects of the work that contained information which was not "common property." See id. The "mere listing of ingredients or contents," prohibited under subsection (a), could also be based upon a lack of originality, since a straightforward list of ingredients contained in a product would not be creative at all, but would reflect the actual contents of the product. "Familiar symbols or designs" in subsection (a) could be viewed as lacking originality, if the term means specific symbols or designs which are already "familiar."

            Circular 32 of the Copyright Office excluded blank forms and similar works "designed to record rather than to convey information" from copyright protection; "names, titles, and short phrases or clauses such as column headings or simple checklists"; and the "format, arrangement, or typography of a work" by requiring that "a work must contain at least a certain minimum amount of original literary, pictorial, or musical expression." Copyright Office, Blank Forms and Other Works Not Protected by Copyright, Circular 32 (1988).


FN527 See supra text accompanying notes 111-23 (discussing 37 C.F.R. §202.1(b) (1988)).


FN528 In Circular 34, the Copyright Office listed the following categories as noncopyrightable:

            Names, titles, and short phrases or expressions are not subject to copyright protection. Even if a name, title, or short phrase is novel, distinctive, or lends itself to a play on words, it cannot be protected by copyright. The Copyright Office cannot register claims to exclusive rights in brief combinations of words, such as:

*Names of products or services;

*Names of businesses, organizations, or groups (including the name of a group of performers);

*Names or pseudonyms of individuals (including a pen name or stage name);

*Titles of works;

*Catchwords, catch phrases, mottoes, slogans, or short advertising expressions . . . .

Copyright Office, Copyright Protection Not Available for Names, Titles, or Short Phrases, Circular 34 (1986). The circular explained the reason for the exclusions as follows:

            Copyright protection under the copyright law . . . extends only to "original works of authorship." The statute states clearly that ideas and concepts cannot be protected by copyright. To be protected by copyright, a work must contain at least a certain minimum amount of authorship in the form of original literary, musical, or graphic expression. Names, titles, and other short phrases do not meet these requirements.

Id. The law of trademark and unfair competition should be consulted for possible protection of brand names, trade names, slogans, and phrases. Id.


FN529 See Material Not Subject to Copyright, 37 C.F.R. §202.1(a) (1988).


FN530 E.g., Folsom v. Marsh, 9 F. Cas. 342, 348. (C.C.D. Mass. 1841) (No. 4901); Rosemont Enters., Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 1009 (1967). See Latman, Fair Use of Copyrighted Works, reprinted in 2 Studies on Copyright 781 (1963).


FN531 The 1976 Copyright Act provides the following:

[T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1)   the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2)   the nature of the copyrighted work;

(3)    the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4)   the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. §107 (1982).


FN532 Fair use is said to be founded upon the "public interest in the development of art, science and industry." Berlin v. E.C. Publications, Inc., 329 F.2d 541, 544 (2d Cir.), cert. denied, 379 U.S. 822 (1964). The public interest in such development is part of the rationale given for the idea-expression dichotomy—copyright owners cannot be allowed to monopolize ideas lest they inhibit rather than promote art, science and industry. See generally Gorman, supra note 43, at 560-563 (identifying the separate doctrines of copyrightability, infringement, and defense of privilege, and demonstrating how they are interrelated). The fair use doctrine is presumably broader than the idea-expression dichotomy, and encompasses a much wider variety of circumstances.


FN533 See Libott, supra note 3, at 769-72. Mr. Libott stated:

If properly applied in the idea cases, the fair use reasoning would not only deny recovery where what has been taken by the defendant is only those general ideas that classify as super-objective ideas and therefore part of the public commons, but also would act, with perfect consistency, to prevent monopoly in such expressions as the general policy behind the law would seek to avoid, as in the E=mc instance or in the detailed verbal description of a work of visual art; such uses are either intrinsically noncompetitive or are so important a part of the intellectual wealth of the world as to invoke a contravening policy to override the potential constitutional monopoly.

Id. at 769. Mr. Libott further argued that emphasis upon fair use instead of idea-expression would correctly shift the issue to an affirmative defense, with the appropriate burdens upon the defendant. Id. at 770. Additionally, Mr. Libott observed that remedies should be administered flexibly so as to avoid overreaching where "ideas" might be involved. Id. at 771-72.


FN534 For example, the United States Supreme Court appears to view the doctrine on works of utility as a specific application of the idea-expression dichotomy. See, e.g., Mazer v. Stein, 347 U.S. 201, 217 (1954) (citing Baker v. Selden, 101 U.S. 99 (1880), and stating the classic idea-expression doctrine of that time).

            Some courts have attempted to equate the idea-expression dichotomy and the works of utility doctrine in the context of computer programs. In Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984), the court of appeals stated that "[t]he idea of one of the operating system programs is, for example, how to translate source code into object code." Apple Computer, 714 F.2d at 1253. Even more graphically, in Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987), the court observed that "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 works of utility doctrine provides a better theoretical framework for analysis than does the idea-expression dichotomy. See supra text accompanying notes 384-86; infra text accompanying notes 535-54.


FN535 101 U.S. 99 (1880).


FN536 See generally id.; see also Griggs v. Perrin, 49 F. 15 (C.C.N.D.N.Y. 1892) (stating that a book on stenography does not protect against other books describing a similar system in different words); Downes v. Culbertson, 153 Misc. 14, 275 N.Y.S. 233 (Sup. Ct. 1934) (holding that books on contract bridge create no exclusive rights in the system of playing bridge). But see Harper House, Inc. v. Thomas Nelson, Inc., Copyright L. Dec. (CCH) P26,203 (C.D. Cal. 1987) (granting a multimillion dollar copyright recovery for infringement of a copyrighted day organizer "for organizing daily life"). The computer cases are a prime example of the interplay between the idea-expression dichotomy and the works of utility doctrine. See supra text accompanying notes 206-13, 226.


FN537 17 U.S.C. §102(b) (1982). In this sense, §102(b) is not correctly described as a mere embodiment of the idea-expression dichotomy, inasmuch as seven of the eight listed categories involve concepts that involve manipulating or understanding the world (as opposed to pure, abstract ideas). It might even be argued that the general term "idea" as it appears in §102(b) should be construed in a narrow sense (applying the maxim noscitur a sociis—i.e., words are to be construed in the context of the surrounding words). Thus, the idea that is not protected by §102(b) is the idea that may be thought of as a system or procedure—it describes something, or how to do something, or how to organize things in the "real world." The idea of an otherwise copyrightable work (such as a developed outline of a play or book), on the other hand, might be subject to protection to the extent that it is sufficiently delineated and copied in substantially similar form.


FN538 It has been said that "[i]deas not reduced to concrete form are not protected." Bowen v. Yankee Network, Inc. 46 F. Supp. 62, 62 (D. Mass. 1942). See also Stone v. Liggett & Myers Tobacco Co., 260 A.D. 450, 451, 23 N.Y.S.2d 210, 212 (1940) ("[i]t is familiar law that owing to the difficulties of enforcing such rights, the courts have uniformally refused . . . to protect property in ideas that have not been reduced to a concrete form"). Because the copyright law prior to 1976 required publication of a work for federal protection, such cases of nonconcrete ideas rarely arose in federal copyright cases. See 17 U.S.C. §10 (1976). More often the issue was one of state-law protection—either under state copyright law or under related state laws that protected ideas. As such, the concreteness that the courts talked about was not the same thing as fixation under the modern federal copyright act. See 17 U.S.C. §102(a) (1982). For an analysis of the requirement of concreteness that some, but not all, state courts require in the state idea protection cases, see 3 M. Nimmer, supra note 258, §16.08.


FN539 See 17 U.S.C. §102(a) (1982).


FN540 Many cases that appear to stand for the proposition that systems are not copyrightable depend to some extent, or could have been decided, on the basis of nonsimilarity. See, e.g., Seltzer v. Sunbrock, 22 F. Supp. 621 (S.D. Cal. 1938) (setting forth sufficient portions of both the plaintiff's and defendants' works so that the dissimilarity could be judged by a reader). In Chautauqua School of Nursing v. National School of Nursing, 238 F. 151 (2d Cir. 1916), the Second Circuit found that a series of photographs and a lecture about the administration of medicines using hypodermic needles did not infringe plaintiff's work. Id. at 152-53. The court stated:

            In respect to the pictures, if Maj. Reynolds had rephotographed the complainant's [picture], he would have been clearly availing himself of the complainant's work, and so an infringer. The evidence, however, is clear that he had original photographs taken of his own hands manipulating the instruments from the beginning to the end of the operation.

Id. at 153. See Crume v. Pacific Mut. Ins. Co., 140 F.2d 182, 184 (7th Cir.), cert. denied, 322 U.S. 755 (1944); Long v. Jordan, 29 F. Supp. 287, 288-89 (N.D. Cal. 1939).

            Some courts have blended the substantial similarity test and the idea-expression dichotomy test. In Chamberlin v. Uris Sales Corp., 150 F.2d 512 (2d Cir. 1945), the Second Circuit noted that "because it is the form of expression and not the idea that is copyrightable, we hold that the defendant did not infringe on the plaintiff's [work]." Id. at 513. In Brief English Sys., Inc. v. Owen, 48 F.2d 555 (2d Cir.), cert. denied, 283 U.S. 858 (1931), the court of appeals stated: "Once [we] concede that the defendant Owen could lawfully write, or write about, any system of shorthand his ability permitted and his book has nothing of consequence in common with what is covered by the plaintiff's copyrights. The manner of treatment is substantially dissimilar and original." Id. at 556. The court, however, made it clear that "[t]he validity of the copyrights [in the booklets] is not seriously questioned." Their "breadth or scope" was, however, contested. Id. at 555. Cf. Affiliated Enters., Inc. v. Gruber, 86 F.2d 958 (1st Cir. 1936) (involving no allegation that defendant's lottery system copied any of the language of plaintiff's publications describing its "Bank Night" system).


FN541 For example, in Powell v. Stransky, 98 F. Supp. 434 (D.S.D. 1951), the trial court observed that "[i]t is undoubtedly true that there is nothing novel as to most if not all of the ideas involved in the instructions, rules and admonitions set forth in plaintiff's publication. For that reason plaintiff could not obtain copyright protection as to such ideas . . . ." Id. at 436. The court upheld the copyrightability of plaintiff's publication, which consisted of a course of study on mail order businesses, by noting that the originality which is required is not in the system or process but rather in the description. See also Chamberlin v. Uris Sales Corp., 150 F.2d 512 (2d Cir. 1945) (involving a game known as "Acey-Ducy").


FN542 Systems and procedures are not generally eligible for copyright protection. See 17 U.S.C. §102(a) (1982) ("[i]n 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"); supra text accompanying note 537. Courts have nevertheless granted protection to systems in the proper circumstances. For example, in Nutt v. National Inst. Inc. for the Improvement of Memory, 31 F.2d 236 (2d Cir. 1929), the Second Circuit held that a copyright in a series of lectures on memory improvement was infringed by the defendant's similar series of lectures. Id. at 239. The court stated:

A comparison of the appellant's lectures with the copyrighted lectures shows similarity and copying of the association, presentation, and combination of the ideas and thought which go to make up the appellee's literary composition. Such appropriation and use of them is an unlawful infringement. The infringement need not be a complete or exact copy. Paraphrasing or copying with evasion is an infringement, even though there may be little or no conceivable identity between the two.

Id. at 237. The court thus found a copyright infringement even without an analysis of the substantial similarity in the actual language of the lectures, thereby coming close to protection of the ideas themselves. The court emphasized the similarity in the "underlying theme of the lectures," similar treatment of "ideas and topics," "identical associations and key words," the use of the "same manner of approach," and the "same method of general treatment." Id. at 238. See also Harper House Inc. v. Thomas Nelson, Inc., Copyright L. Dec. (CCH) P26,203 (C.D. Cal. 1987).


FN543 The exclusive rights enumerated in 17 U.S.C. §106 (1982) are the rights to reproduce the work in copies, to prepare derivative works, to distribute copies to the public, and to perform or display the work publicly. Id. They do not include the exclusive right to use the copyrighted work—in contrast to the patent law, which covers the exclusive right to make, use, or sell patented works. Cf. 35 U.S.C. §271 (1982).


FN544 As applied to useful articles, the works of utility doctrine is supplemented by the definition of a useful article in 17 U.S.C.A. §§101, 103 (West 1977 & Supp. 1989). See infra notes 555-59 and accompanying text. As applied to systems and procedures, the works of utility doctrine is obviously supplemented by §102(b), which addresses the subject matter of copyright. See 17 U.S.C. §102(b) (1982).


FN545 See text accompanying notes 280-329.


FN546 Professor Nimmer believed that "the mere fact that rights granted under the Copyright Act may indirectly result in a monopoly of use of the copyrighted work will not prevent the enforcement of such rights, notwithstanding the absence of an expressly granted 'right of use.'" 1 M. Nimmer, supra note 23, §2.18[A], at 2-196. Professor Nimmer also discussed the "more sophisticated" issue which is raised when the enforcement of the copyright "results in a monopoly of use not only of the copyrighted work itself, but also of the system, function, process of art (i.e., the 'idea') upon which the work is based or for which it is fitted[.]" Id.


FN547 247 F.2d 458 (9th Cir. 1957).


FN548 Id. at 460.


FN549 Id.


FN550 Id.


FN551 Id.


FN552 For a fuller exposition of this view, see infra text accompanying notes 555-64.


FN553 See, e.g., 3 M. Nimmer, supra note 258, §13.05, at 13-62.4.


FN554 See 17 U.S.C. §107 (1982). The doctrine is called the fair use doctrine, and is designed to consider a proposed use at the infringement stage, when all of the factors involved in a fair use defense can be addressed. See, e.g., 3 M. Nimmer, supra note 258, §13.05, at 13-62.4.


FN555 "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.

            Literary works are defined in §101 of the 1976 Copyright Act 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 definition of "pictorial, graphic, and sculptural works" in §101 "include[s] two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans." Id. In the case of Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884), the Supreme Court held that Congress had the power under the copyright clause to protect photographs, even though they might not commonly be described as "writings." Id. at 58.


FN556 See Act of July 8, 1870, ch. 230, §86, 16 Stat. 198, 212; Act of June 18, 1874, ch. 301, §3, 18 Stat. 78, 79. See infra note 557.


FN557 The first copyright act protected not only books, but also maps and charts. Act of May 31, 1790, ch. 15, §1, 1 Stat. 124, 124. Prints and engravings were added to these categories in 1802. Act of Apr. 29, 1802, ch. 306, §§2, 3, 2 Stat. 171, 171-72. Photographs were added in 1865. Act of Mar. 3, 1865, ch. 126, §2, 13 Stat. 540, 540. Paintings, drawings, chromos, statuary, and "models or designs intended to be perfected as works of the fine arts" were included in 1870. Act of July 8, 1870, ch. 230, §86, 16 Stat. 198, 212. The Copyright Act of 1874, which granted protection to engravings, cuts, and prints, similarly limited such protection to apply "only to pictorial illustrations or works connected with the fine arts." Act of June 18, 1874, ch. 301, §3, 18 Stat. 78, 79. The maps and charts already covered since 1790 obviously included certain types of applied art. The 1909 Copyright Act dropped the 1874 references to "fine" arts in favor of protection for "works of art" generally. Act of Mar. 4, 1909, ch. 320, §5(g), (h), 35 Stat. 1075, 1077.

            The classification of works for registration purposes under the 1909 Copyright Act included the following:

            (g) Works of art; models or designs for works of art;

             . . . .

            (i) Drawings or plastic works of a scientific or technical character;

            . . . .

            (k) Prints and pictorial illustration . . . .

Id. §5, 35 Stat. at 1076-77. Regulations by the Copyright Office, however, continued to distinguish between "fine arts" and "industrial arts." See Copyright Office, Rules and Regulations for the Registration of Claims to Copyright, Bull. No. 15, at 8 (1910); 37 C.F.R. §201.4(7) (1939); Mazer v. Stein, 347 U.S. 201, 211-14 (1954) (reviewing the history of the Copyright Office regulations).


FN558 The 1976 Copyright Act provides the following:

            "Pictorial, graphic, and sculptural works" include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

17 U.S.C.A. §101 (West 1977 & Supp. 1989). This definition is supplemented by §102 (listing pictorial, graphic, and sculptural works as one category of protected works of authorship) and §113 (providing that the exclusive right to reproduce such works in copies "includes the right to reproduce the work in or on any kind of article, whether useful or otherwise"). 17 U.S.C. §§102, 113 (1982).


FN559 See supra note 543 (describing the exclusive rights contained in §106). In addition, under the 1976 Copyright Act, copyright is completely distinct from any rights of ownership of material objects in which the work might be incorporated, and owners of particular copies of works are free to further dispose of them as they wish. See 17 U.S.C.A. §§109, 202 (West 1977 & Supp. 1989).


FN560 See supra text accompanying note 534.


FN561 See, e.g., Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 913 (2d Cir. 1980) (applying both the idea-expression dichotomy and the works of utility doctrine to certain mechanical toys). The Second Circuit in Durham Industries stated that "similarity of idea or function must be distinguished from similarity of artistic expression." Id. A large portion of the opinion seems to treat the tests interchangeably or synonymously. For example, the court noted "that only the artistic rather than the mechanical aspects of Tomy's dolls are copyrightable, [and] that only Tomy's expression of its ideas is protected." Id. at 917. The court also seemed to treat "idea" almost synonymously with "function," and "expression" synonymously with "art." See id. at 915-18.


FN562 One of the assumptions behind granting copyright only in the expressive portions of works of utility is that patent law is the proper repository for protection of the product in its use. See, e.g., Baker v. Selden, 101 U.S. 99, 100-01 (1880) (distinguishing between patent and copyright law). The relevance of the idea-expression dichotomy in explaining this federal structure of protection is quite limited, however, since even in patent law an idea per se is not protectable. But see supra notes 276-77 and accompanying text. Instead, an invention must be related to a useful process (i.e., one having some practical application) and must be "reduced to practice." 35 U.S.C. §§101, 102(g) (1982). Thus, a utility-aesthetic dichotomy between patent and copyright comes closer to describing the subject-matter difference between the two protective schemes than does the idea-expression dichotomy.

            Design patents raise different issues. The fact that design patent protection, covering the ornamental design of articles of manufacture, is contained in the patent laws instead of the copyright laws might be thought to be an historical accident. See generally P. Goldstein, supra note 268, at 540-43. Accordingly, there may be no logical theory which would explain the copyright-patent boundary insofar as design patents are concerned.


FN563 See supra note 558.


FN564 See 17 U.S.C.A. §101 (West 1977 & Supp. 1989) (defining "pictorial, graphic, and sculptural works").


FN565 See supra notes 45-49 and accompanying text (discussing Baker v. Selden, 101 U.S. 99 (1880), and Cobbett v. Woodward, 14 L.R.-Eq. 487 (1892)). When copyright in certain types of works extended only to works of the "fine arts," the limitation was perhaps understandable. A "fine arts" requirement, however, has been abandoned in the federal statutes. See supra note 557.


FN566 188 U.S. 239 (1903).


FN567 Id. at 251-52.


FN568 347 U.S. 201 (1954).


FN569 Id. at 218. The Court in Mazer technically only dealt with the copyright in a statue which was intended for later use as a lamp base, and reserved decision on a work that was first created in a useful article. Id. at 205. The 1976 Copyright Act and the distinction now drawn between a work of authorship and a copy of that work have extended the Mazer doctrine to include works first embodied in useful articles as well. See 17 U.S.C.A. §§101, 113 (West 1977 & Supp. 1989); supra text accompanying notes 73-75 (distinguishing between work of authorship and a copy of that work).


FN570 The design of useful articles may be protected to some extent by federal design patent law. See 35 U.S.C. §§171-173 (1982). The effectiveness of such protection is limited, however, by several factors. First, design patents for articles of manufacture must meet the patent standards of novelty and non-obviousness, which preclude most designs that might meet the lower originality test of copyright. Id. §§101-103. Design patent protection is only for a term of 14 years, instead of life plus 50 years or 75 years under the 1976 Copyright Act, thus making the costly investment in a patent application and search less worthwhile. Compare 35 U.S.C. §173 (1982) with 17 U.S.C. §302 (1982). The fatality rate for design patents that are the subject of litigation has been, at least until recently, even higher than the already notoriously high fatality rate of patents generally, thus making these investments quite risky. See generally Cooch, The Standard of Invention in the Courts, in Dynamics of the Patent System 34, 56 (W. Ball ed. 1960). Although there have been periodic proposals to consolidate design protection within a separate federal scheme, or to fill some of the perceived gaps by a specialized design protection act, such efforts have so far proven unsuccessful. The copyrightability of ornamental features of articles of manufacture will therefore probably continue to be of major importance for many years.


FN571 17 U.S.C.A. §§101, 113 (West 1977 & Supp. 1989).


FN572 630 F.2d 905, 911-18 (2d Cir. 1980) (discussing "miscellaneous toys").


FN573 The statute provides 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." 17 U.S.C.A. §101 (West 1977 & Supp. 1989) (defining "pictorial, graphic, and sculptural works"). The "mechanical" aspects are the easiest to identify, whereas nonmechanical "utilitarian" aspects may get a bit metaphysical.


FN574 Mazer v. Stein, 347 U.S. 201, 217-18 (1954).


FN575 591 F.2d 796 (D.C. Cir. 1978), cert. denied, 440 U.S. 908 (1979). The court upheld the Copyright Office's refusal to register Esquire's lighting fixture as a copyrightable work of art. Id. at 806.


FN576 Esquire, 591 F.2d at 806. The exact holding of the Esquire case is difficult to articulate. Tests that seem to require delineation between the "form" and "function" of a work, without reference to an infringing work, are unsatisfactory—as is the application of the idea-expression dichotomy. If the Esquire case was correctly decided, it was because the design of the lamp was a basic shape that had insufficient original elements to be copyrightable under the originality standard. In other words, copyright should not depend upon the fact that Esquire, Inc. was using its shape as a lamp, since that aspect was clearly utilitarian; rather, the test should have been whether the shape, standing alone (even as abstract art) was eligible for copyright.

            Even more troublesome was the standard enunciated in Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980), in which the Second Circuit developed a "conceptually separable" standard. Id. at 993. The court attributed the standard to the legislative history that specifically referred to elements which "'physically or conceptually, can be identified as separable from the utilitarian aspects of' a useful article." Id. See H. Rep. No. 1476, 94th Cong., 2d Sess. 1, 55, reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5668. Although physical separability might be subject to a relatively objective standard, "conceptual" separability sounds very much like trying to separate the "idea" from the "expression"—a task that eludes definition and is probably doomed to ultimate failure. If the cases are characterized along an "active-passive" continuum, the belt buckles in Kieselstein-Cord might be more active in buckling belts than was the Esquire lamp in providing illumination, so that either case is not explained by the level of activity contemplated by the copyrighted work.

            If the works of utility doctrine in this context echoes some of the idea-expression concerns, such an analogy could lead to a more liberal approach in allowing copyright protection for such works of utility. The idea-expression cases, particularly in the context of computer programs, which are also works of utility, sometimes evince an incredibly flexible approach. See supra text accompanying notes 179-203. If the approach of Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987), is applied, one could argue that "[w]here there are various means of achieving the desired purpose"—for example, a street lamp in the shape of a circle—"then the particular means chosen is not necessary to the purpose; hence, there is expression, not idea." Whelan, 797 F.2d at 1236. I would submit that there are different ways of embodying the shape of a circle in a street lamp, since the function of a street lamp does not represent all that severe a design limitation (as compared with an airplane, for example, for which aerodynamic considerations are often determinative of the shape). By such reasoning, perhaps the street lamp in Esquire should have been protectable—at least as a threshold issue of copyrightability.


FN577 101 U.S. 99, 102-05 (1880).


FN578 See 17 U.S.C.A. §§101, 102(a)(5) (West 1977 & Supp. 1989).


FN579 See, e.g., Imperial Homes Corp. v. Lamont, 458 F.2d 895 (5th Cir. 1972); Aitken, Hazen, Hoffman & Miller, P.C. v. Empire Constr. Co., 542 F. Supp. 252 (D. Neb. 1982); Schuchart & Assocs., Inc. v. Solo Serve Corp., 540 F. Supp. 928 (W.D. Tex. 1982). See generally Hellmuth, Obsolescence Ab Initio: The New Act and Architectural Copyright, 22 Bull. Copyright Soc'y 169 (1975); Comment, Copyright Protection for the Architect: Leaks in a Legal Lean-To, 8 Cal. W.L. Rev. 458 (1972); Strauss, Copyright in Architectural Works, reprinted in 1 Studies on Copyright 87 (1956); Katz, Copyright Protection of Architectural Plans, Drawings, and Designs, 19 Law & Contemp. Probs. 224 (1954).


FN580 See Note, Protection for Pirates?—Lack of Statutory and Common Law Safeguards Against Copying in the Fashion Industry, 5 Suffolk U.L. Rev. 487 (1971).


FN581 The House Report cited the example of cars, and seemed to answer the issue by quoting from the 1961 Report of the Register of Copyrights that the copyright in a pictorial, graphic, or sculptural work portraying a useful article "does not extend to the manufacture of the useful article itself." H.R. Rep. No. 1476, 94th Cong., 2d Sess. 1, 105, reprinted in 1976 U.S. Code Cong. & Admin News 5659, 5720 (quoting the 1961 Report of the Register of Copyrights).


FN582 379 F.2d 84 (6th Cir. 1967). The court of appeals recognized the copyrightability of architectural plans, but concluded that the protection did not extend to the building of the structure disclosed in the plans, and that perhaps even the plans themselves could not be protected against copying if use of the plans were necessary to build the structure (based upon a merger theory). Id. at 86. The court avoided making such a choice by finding that plaintiff's booklet that described its plans was "copyrighted to preserve its value as an advertising medium, and not to give Scholz the exclusive right to copy the plans depicted therein." Id. at 87. The court thus endorsed the most suspect of several possible explanations of the Baker case: that protectability depends upon the purpose of the work. See supra text accompanying notes 12-36.


FN583 458 F.2d 895 (5th Cir. 1972). The court of appeals concluded that copyright in the plans was infringed if the plans were copied, but not if the building were built without copying the plans themselves (a difficult undertaking). Id. at 899. See also Demetriades v. Kaufmann, 680 F. Supp. 658 (S.D.N.Y. 1988) (discussing protection under state law for an interior design of a house).


FN584 See Scholz Homes, 379 F.2d at 86-87; Imperial Homes, 458 F.2d at 899.


FN585 Architectural works present a special situation in copyright law. As stated in a congressional report:

An architect's plans and drawings would, of course, be protected by copyright, but the extent to which that protection would extend to the structure depicted would depend on the circumstances. Purely non-functional or monumental structures would be subject to full copyright protection under the bill, and the same would be true of artistic sculpture or decorative ornamentation or embellishment added to a structure. On the other hand, where the only elements of shape in an architectural design are conceptually inseparable from the utilitarian aspects of the structure, copyright protection for the design would not be available.

H.R. Rep. No. 1476, 94th Cong., 2d Sess., 1, 55, reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5668. The report implies only that the drawing suffers the same fate as the work depicted: if the work depicted has protectable elements, the drawing of those protectable elements may be sufficient to include the right to build them. See id. at 55.

            Many of the leading cases can be explained on the ground that the work depicted in the drawing or plan was itself a "system" or "design" rather than a structure with separate ornamental features. See, e.g., DeSilva Constr. Corp. v. Herrald, 213 F. Supp. 184 (M.D. Fla. 1962); Muller v. Triborough Bridge Auth. 43 F. Supp. 298 (S.D.N.Y. 1942) (involving a design for a bridge approach). Similarly, the cases holding that drawings of dress designs do not extend protection to the making of the dresses depicted can be explained by the fact that dresses, even when rendered three-dimensionally, are not eligible for copyright under the works of utility doctrine. See, e.g., National Cloak & Suit Co. v. Standard Mail Order Co., 191 F. 528 (C.C. S.D.N.Y. 1911); National Cloak & Suit Co. v. Kaufman, 189 F. 215 (C.C.M.D. Pa. 1911). See also Lamb v. Grand Rapids School Furniture Co., 39 F. 474 (C.C.W.D. Mich. 1889) (involving copyrightability of furniture).

            Professor Chisum made the following suggestion:

            Under the broad definition of "copies" in Section 101 of the Copyright Act, a building arguably constitutes a "copy" of the copyrighted architectural plan since the building is a "material object . . . from which the work can be perceived." Thus, unauthorized construction of a building according to the plan might infringe the exclusive right to reproduce copies of the work secured by Section 106(1). This view is supported by decisions finding infringement where a two-dimensional work is copied in a three-dimensional form.

D. Chisum, Intellectual Property: Copyright, Patent and Trademark §1.02, at 1-35 to -36 (1980) (citing King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924) (holding that a toy horse infringed a cartoon horse)). Professor Chisum also pointed out the possibly limiting effect of §113(b) of the 1976 Copyright Act. Id. §1.02, at 1-36 (citing the House Report explanation of it contained in the next footnote). See also Jones Bros. Co. v. Underkoffler, 16 F. Supp. 729 (M.D. Pa. 1936) (holding that a picture of a cemetery monument was infringed by construction of a monument based upon the picture); A. Latman, supra note 40, at 53 (1979 treatise) (finding that the category of pictorial, graphic, and sculptural works "undoubtedly poses the most unresolved substantive issues of copyrightability"). Professor Latman has concluded that "[i]t would thus be venturesome, though not foolhardy . . . to contend that Mazer permits copyright for the shape of a dress or of a piece of furniture." Id. at 53.


FN586 See supra note 579 (listing the architectural plan cases). The 1976 Copyright Act is not particularly helpful. It provides:

This title does not afford, to the owner of copyright in a work that portrays a useful article as such, any greater or lesser rights with respect to the making, distribution, or display of the useful article so portrayed than those afforded to such works under the law, whether title 17 or the common law or statutes of a State, in effect on December 31, 1977, as held applicable and construed by a court in an action brought under this title.

17 U.S.C. §113(b) (1982). Because the law was apparently not entirely clear in 1977, the retention of the status quo is hardly helpful. The confusion is exacerbated by the reference to state common law and statutory law, because the standards may well have been different for the two sets of laws. Indeed, many of the cases specifically turned on the issue of whether particular plans were "published" for purposes of divesting state-law protection and investing federal protection—a determination that is certainly not supposed to be decisive since passage of the 1976 Copyright Act.

            Some of the legislative history of the 1976 Copyright Act seems to assume that rights are never created in the depicted work, even if it might be separately copyrightable. The House Report cited approvingly the statement from the 1961 Report of the Register of Copyrights that copyright in portrayals does not extend to "the manufacture of the useful article itself." H.R. Rep. No. 1476, 94th Cong., 2d Sess. 1, 105, reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5719-20. The Report then noted that the Register's Supplementary Report had characterized the cases as being relatively clear, and that the Register of Copyrights had warned that there would be insuperable difficulty finding "any statutory formulation that would express the distinction satisfactorily." Id. at 105, 1976 U.S. Code Cong. & Admin. News at 5720. The House Report then concluded: "Section 113(b) reflects the Register's conclusion that 'the real need is to make clear that there is no intention to change the present law with respect to the scope of protection in a work portraying a useful article as such.'" Id., 1976 U.S. Code Cong. & Admin. News at 5720. By this interpretation the deference to prior law in §113(b) is not prompted by the ambiguity perceived in the existing law, but by the difficulty of formulating a statement of the law which would adequately summarize the subtleties of the case law on the subject. See 17 U.S.C. §113(b) (1982).

            The Copyright Office has consistently described §113(b) as standing for the proposition that "copyright in a pictorial, graphic, or sculptural work, portraying a useful article as such does not extend to the reproduction of the useful article itself." Copyright Office Notice of Inquiry on Architectural Work Protections, 53 Fed. Reg. 21,536 (1988).


FN587 Pub. L. No. 100-568, 102 Stat. 2853 (to be codified at 17 U.S.C. §§101-804).


FN588 E.g., S. 1301, 100th Cong., 1st Sess. (1987); H.R. 2962, 100th Cong., 1st Sess. (1987); H.R. 1623, 100th Cong., 1st Sess. (1987). An earlier version of S. 1301 would have added architectural works to the categories of works listed in §102(a) of the 1976 Copyright Act, and defined such works as "buildings and other three-dimensional structures of an original artistic character, and works relative to architecture, such as building plans, blueprints, designs, and models." S. 1301, 100th Cong., 1st Sess. §3(a) (1987). See 17 U.S.C. §102(a) (1982). The Bill would have added a new section to the 1976 Copyright Act limiting the new rights in several ways, including a provision that the exclusive rights "shall apply only to the artistic character and artistic design of the work, and shall not extend to processes or methods of construction." S. 1301, 100th Cong., 1st Sess. §119 (1987). Congress ultimately rejected a wholesale alteration in the treatment of architectural works, however, opting only to redefine pictorial, graphic, and sculptural works to include specifically "diagrams, models, and technical drawings, including architectural plans." Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, §4, 102 Stat. 2853, 2854 (to be codified at 17 U.S.C. §101). In an explanatory statement on the final bill, the existing law was described as follows:

Current U.S. copyright law protects architectural blueprints and similar plans, but it has not been expressly stated in American copyright law. S. 1301 will ensure continued protection for architectural plans, but copyright protection will not be extended to the architectural structure, itself. Duplication of a building will still be permissible if done by visual observance of the structure without the use of the copyrighted blueprints.

134 Cong. Rec. S14,559 (daily ed. Oct. 5, 1988) (statement of Sen. Hatch).

            Congress arguably reaffirmed its position that architectural works are not the proper subject of copyright. Alternatively, Congress may have decided only that such a change was not necessary to join the Berne Convention, so that, following the "minimalist" approach, it simply put off until another day the substantive consideration of a problem that was not necessary in the implementation legislation. See Briefs: Legislation, Copyrights, 36 Pat. Trademark & Copyright J. (BNA) 115 (June 2, 1988); cf. Preliminary Report of the Ad Hoc Working Group on U.S. Adherence to the Berne Convention, December 1985, reprinted in 33 J. Copyright Soc'y 183, 264 (1986). The issue of how far architectural works should be protected is the subject of an ongoing inquiry. See Copyright Office Notice of Inquiry on Works of Architecture, 53 Fed. Reg. 21,536 (1988).


FN589 Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d Cir.), cert. denied, 441 U.S. 841 (1980).


FN590 Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1368 (5th Cir. 1981). See Rosemont Enters., Inc. v. Random House, Inc., 366 F.2d 303, 309 (2d Cir. 1966), cert. denied, 385 U.S. 1009 (1967); Chicago Record-Herald Co. v. Tribune Ass'n, 275 F. 797, 798-99 (7th Cir. 1921).


FN591 618 F.2d 972 (2d Cir.), cert. denied, 441 U.S. 841 (1980). In the case of International News Serv. v. Associated Press, 248 U.S. 215 (1918), Justice Brandeis in dissent offered a common justification for the idea-expression and fact-expression dichotomies: "The general rule of law is, that the noblest of human productions—knowledge, truths ascertained, conceptions, and ideas—become, after voluntary communication to others, free as the air to common use." Id. at 250 (Brandeis, J., dissenting).


FN592 Hoehling, 618 F.2d at 974.


FN593 See, e.g., 1 M. Nimmer, supra note 23, §2.03[E], at 2-33 (treating discoveries of scientific or historical facts, contemporary news events, or any other facts as not protectable at least partly because they all represent ideas).


FN594 Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1368-69 (5th Cir. 1981).


FN595 650 F.2d 1365 (5th Cir. 1981). The court in Miller noted the similarity between the fact-expression dichotomy and the idea-expression dichotomy as embodied in §102 of the 1976 Copyright Act. Id. at 1368.


FN596 Id. at 1368-69.


FN597 Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir.), cert. denied, 298 U.S. 669 (1936).


FN598 Detective Comics, Inc. v. Bruns Publications, Inc. 111 F.2d 432 (2d Cir. 1940).


FN599 Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 978 (2d Cir. 1980) (footnote omitted). The court of appeals cited the need to "avoid a chilling effect on [subsequent] authors who contemplate tackling an historical issue or event." Id.


FN600 There are many historical and factual works that have been validly copyrighted, and are protected (at the very least) against literal copying. See, e.g., id. at 980; Harper & Row, Publishers v. Nation Enters., 471 U.S. 539 (1985); Wainwright Secs., Inc. v. Wall St. Transcript Corp., 558 F.2d 91 (2d Cir. 1977), cert. denied, 434 U.S. 1014 (1978); Schroeder v. William Morrow & Co., 566 F.2d 3 (7th Cir. 1977). Indeed, if the purpose of copyright law is to encourage science and the useful arts, the case for promoting factual and historical works is probably even stronger than the case for promoting fictional works. In Harper & Row, the Supreme Court observed that "[i]t is fundamentally at odds with the scheme of copyright to accord lesser rights in those works that are of greatest importance to the public." Harper v. Row, 471 U.S. at 559.

            In Harper & Row, President Ford's copyright in his memoirs was upheld against an infringing article that excerpted portions of the memoirs. Id. at 569. Although the case was flavored by the fact that the infringement "scooped" a licensed excerpt of the work prior to original publication of the memoirs, Harper & Row nevertheless underscored the need for caution in purported categorical exclusions from the copyright law. Id. at 542. There are valid reasons to severely limit the ability of others to surreptitiously obtain copies of historical works prior to their publication and then to publish substantially similar works based upon them. Indeed, only in this way can the particular sensitivity of the earlier common law to the protection of unpublished works—sometimes referred to as the "right of first publication"—be adequately reflected under the 1976 Copyright Act that now covers such unpublished works. See Harper & Row, 471 U.S. at 551 & n.5. The Supreme Court in Harper & Row recognized the inherent difference between the right of first publication and other exclusive rights under §106 of the 1976 Copyright Act, citing the "overbalancing reasons to preserve the common law protection of undisseminated works until the author or his successor chooses to disclose them." Id. at 553 (quoting Copyright Law Revision, Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law, 87th Cong., 1st Sess. 41 (Comm. Print 1941)).

            The best approach, as reflected in the Harper & Row case, is to allow protection of the historical or factual work, and decide particular cases upon other factors, such as fair use—without so expansive a reading of fair use, however, as to undermine the incentive that copyright law is supposed to provide for authors to create and publish their works.


FN601 17 U.S.C. §103 (1982). The legislative history to the 1976 Copyright Act reveals that "[a] 'compilation' results from a process of selecting, bringing together, organizing, and arranging previously existing material of all kinds, regardless of whether the individual items in the material have been or ever could have been subject to copyright." H.R. Rep. No. 1476, 94th Cong., 2d Sess. 1, 52-58, reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5661-66. Compilations can include directories, where the only expressiveness is in the arrangement itself. See Leon v. Pacific Tel. & Tel. Co., 91 F.2d 484 (9th Cir. 1937); National Business Lists, Inc. v. Dun & Bradstreet, Inc., 552 F. Supp. 89 (N.D. Ill. 1982).


FN602 248 U.S. 215 (1918). The Supreme Court upheld an injunction barring International News Service from certain uses of Associated Press reports for a limited period of time until the commercial value of the reports as news had passed. Id. at 245. As a pre-Erie diversity case, there has been continual debate about the extent to which it still represents good law under state theories of protection, or to which the reasoning may be or should be preempted by federal copyright law. The Associated Press case has remained valid on its specific facts, and has been modestly extended to protect against certain related types of activities. See generally Baird, Common Law Intellectual Property and the Legacy of International News Service v. Associated Press, 50 U. Chi. L. Rev. 411 (1983); Fetter, Copyright Revision and the Preemption of State "Misappropriation" Law, 25 Bull. Copyright Soc'y 367 (1978); R. Brown & R. Denicola, Copyright, Unfair Competition, and Other Topics Bearing on the Protection of Literary, Musical, and Artistic Works 460 (4th ed. 1985).


FN603 Associated Press, 248 U.S. at 242.


FN604 See generally Havighurst, The Right to Compensation for an Idea, 49 Nw. U.L. Rev. 295 (1954); Nimmer, supra note 231, updated in 3 M. Nimmer, supra note 258, §16.06.


FN605 See Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516 (1981); Ginsburg, Sabotaging and Reconstructiong [sic] History: A Comment on the Scope of Copyright Protection in Works of History After Hoehling v. Universal City Studios, 29 J. Copyright Soc'y 647 (1982); Gorman, supra note 208.


FN606 Professor Gorman recognized and criticized the existing emphasis on copyrightability instead of the scope of protection for factual works. Gorman, supra note 43, at 561. Alluding to the doctrine of fair use, and why it does not seem to play a dominant role in factual work cases, he stated:

Perhaps the reason the fair use defense is not often invoked by that name in connection with works of history and biography is that that doctrine is designed to cut back upon the reach of the copyright monopoly in order that there can be social progress through the expansion of the fund of human knowledge—and that is precisely the objective already achieved by courts through invocation of the dichotomy between facts and expression and through application of the provision of section 102(b) barring copyright of ideas and discoveries.

Id. at 595-96. Professor Gorman did not particularly condemn the way in which courts dealt with the problem, simply observing the existence of "a policy substratum which uniformly underlies findings of noncopyrightability, noninfringement, and fair use, such that the latter doctrine is typically superfluous in history and biography cases." Id. Professor Gorman seemed to criticize this approach, however, to the extent that it resulted in the exclusion of certain categories of works from copyright protection. Id. He argued that copyright law should extend to "certain classes of works which now go unprotected," to protect "the social contribution made by the accurate gathering, verification, and tangible representation of useful information." Id. at 597. He also believed that such an expansion

will compel courts to resolve the problems of full copyright protection under the rubric of infringement and fair use, rather than of copyrightability. This, in turn, will offer greater flexibility, enabling the courts to label as "infringement" those works which interfere unduly with the monopoly of the copyright holder without bringing a commensurate benefit to the public, and as "fair use" those works which interfere but slightly with the copyright monopoly while offering much to society.

Gorman, supra note 208, at 1603-04. Professor Gorman claimed, however, that he was urging a weighing of various interests in the protection of particular works, and not "a facile analysis of cases in terms of the 'substantiality' of the 'taking.'" Id. at 1605.


FN607 For example, Professor Gorman observed that the application of the formula for originality "will necessarily vary as the nature of the intellectual product under investigation differs from case to case." Gorman, supra note 208, at 1603.


FN608 See 17 U.S.C. §102(b) (1982).


FN609 581 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132 (1979). See also Kurtz, supra note 266. Professor Kurtz observed that "[a]lthough the similarity between literary characters does not fit easily into either 'comprehensive nonliteral similarity' or 'fragmented literal similarity,' a substantial similarity in expression between plaintiff's and defendant's characters may be sufficient to constitute infringement." Id. at 462. On the other hand, "when characters resemble one another only in idea or type, there is no infringement." Id. at 442.


FN610 Air Pirates, 581 F.2d at 755.


FN611 720 F.2d 231 (2d Cir. 1983).


FN612 Id. at 240. The court continued:

[W]e do not accept defendants' mode of analysis whereby every skill the two characters share is dismissed as an idea rather than a protected form of expression. That approach risks elimination of any copyright protection for a character, unless the allegedly infringing character looks and behaves exactly like the original. A character is an aggregation of the particular talents and traits his creator selected for him. That each one may be an idea does not diminish the expressive aspect of the combination. But just as similarity cannot be rejected by isolating as an idea each characteristic the characters have in common, it cannot be found when the total perception of all the ideas as expressed in each character is fundamentally different.

Id. at 243.


FN613 For example, in Warner Bros. Pictures v. Columbia Broadcasting Sys., 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S. 971 (1955), the court of appeals did not specifically rely upon the idea-expression dichotomy. Warner Bros., 216 F.2d at 950.


FN614 See, e.g., Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132 (1979); Detective Comics, Inc. v. Bruns Publications. Inc., 111 F.2d 432 (2d Cir. 1940); Fleischer Studios, Inc. v. Freundlich, 73 F.2d 276 (2d Cir. 1934), cert. denied, 294 U.S. 717 (1935); King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924).


FN615 See, e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931). See generally Brylawski, Protection of Characters—Sam Spade Revisited, 22 Bull. Copyright Soc'y 77 (1974).


FN616 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S. 971 (1955).


FN617 Warner Bros., 216 F.2d at 950.


FN618 Id. at 946.


FN619 Id. at 948.


FN620 Id.


FN621 Id. at 950.


FN622 Alfred A. Knopf, Inc. was also a party to the Hammett-Warner contract and to the suit, since it originally had purchased rights in the copyright from Hammett. Warner Bros., 216 F.2d at 946-47. However, Knopf's role in the transaction and the suit was not significant in determining the rights of the parties. See id. at 951.


FN623 Id. at 950.


FN624 Id. at 950. Whether the second portion of the case is the holding or merely dictum has been debated ever since the case was decided. See, e.g., Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 755 n.10 (9th Cir. 1978) (concluding that "either characterization of the language would not affect the result in this case"), cert. denied, 439 U.S. 1132 (1979).


FN625 Warner Bros., 216 F.2d at 950.


FN626 Id. Arguably, cases in which authors are sued by their assignees for infringing works that they have sold to others represent the proverbial hard cases that are capable of making bad law. See, e.g., Franklin Mint Corp. v. National Wildlife Art Exch., 575 F.2d 62 (3d Cir.), cert. denied, 439 U.S. 880 (1978) (photographer held not to have infringed on his own earlier work, because of differences between the works); Warner Bros. Pictures v. Columbia Broadcasting Sys., 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S. 971 (1955) (holding that the author did not infringe his own earlier works because contract-assigning rights did not contain an assignment of the right to use specific characters.); Gross v. Seligman, 212 F. 930 (2d Cir. 1914) (holding that the artist infringed on his own earlier work which he consciously recreated); Note, Authors Reproducing Works in Which They No Longer Own the Copyright, in A. Latman, R. Gorman & J. Ginsberg, supra note 378, at 325-27.

            One wonders whether the Warner Brothers court would have analyzed the issue the same way if the case had been one by Hammett trying to prevent a third party from writing purported sequels to his Sam Spade creation. See, e.g., Goodis v. United Artists Television, Inc., 425 F.2d 397, 406 n.1 (2d Cir. 1970) ("such a conclusion would clearly be untenable from the standpoint of public policy, for it would effectively permit the unrestrained pilfering of characters").


FN627 See infra note 629.


FN628 See, e.g., Wincor, Book Review, 76 Yale L.J. 1473, 1478-83 (1967) (reviewing B. Kaplan, An Unhurried View of Copyright (1966); Libott, supra note 3, at 755-61.


FN629 That cartoon characters constitute an exception to the rule in Warner Brothers is clear. See infra note 630. Other literary character cases either recognize protection or at least fail to follow the Ninth Circuit decision in Warner Brothers. See, e.g., Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1167 (9th Cir. 1977) (holding fantasy characters to be infringed in "total concept and feel"); Filmvideo Releasing Corp. v. Hastings, 509 F. Supp. 60, 66 (S.D.N.Y.), aff'd, 668 F.2d 91 (2d Cir. 1981) (finding infringement of "Hopalong Cassidy" and related characters, but not specific story line). In Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231 (2d Cir. 1983), "The Greatest American Hero" was held not to have infringed the Superman character because the works were not substantially similar. Id. at 244-45. The court seems to have assumed, however, that the character was eligible for federal protection apart from the story line. See id. at 243-44. In Burroughs v Metro-Goldwyn-Mayer, Inc., 683 F.2d 610, 621 (2d Cir. 1982), a "Tarzan" character license was upheld because transfer of copyright in the characters was not adequately terminated under the 1976 Copyright Act. Id. at 622. Because the court held in favor of the defendant, the issue of character protection was treated as moot. Id. at 621 n.11, 631.


FN630 Warner Bros. Pictures v. Columbia Broadcasting Sys., 216 F.2d 945, 950 (9th Cir. 1954), cert. denied, 348 U.S. 971 (1955). The result might be different, however, if the characters constituted "the story being told," a concept at least as ambiguous as the idea-expression dichotomy. The types of characters that were most easily squeezed through this loophole were the cartoon characters. See Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 755 n.11 (9th Cir. 1978), cert. denied, 439 U.S. 1132 (1979).


FN631 This approach is criticized in Kurtz, supra note 442.


FN632 See supra note 481.


FN633 See 17 U.S.C.A. §101 (West 1977 & Supp. 1989) (defining "pictorial, graphic, and sculptural works").

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