DICHOTOMY OF IDEA & EXPRESSION AND DOCTRINE OF MERGER
– Anandita Naidu1
INTRODUCTION
The concept of idea-expression doctrine is one of the most often quoted principles in various copyright-related suits. The establishment ofthe distinction between one’s idea and its expression are what brings finality on whether there subsists copyright or not. It is an accepted principle that copyright subsists only in the expression of an idea and not the idea. The reason an idea is never copyrighted is because copyrighting the same will only deny the other potential artists and creats an opportunity to exploit on an existing idea and produce something bigger and better.
The basic notion behind having the copyright law governing works and creations is because that the general public will not be denied access to the many corks that will help replenish their stock of knowledge and recreation. Once monopoly is established in the same then people will be denied having any sort of right to use the same. Also, it will deny other makers and creators the ability to put their knowledge at in to the public. Copyright will not only ensure that the author or creator receives the reward for his work, but at the same time see to it that people have access to the same. It is in order to establish this that the doctrine of idea- expression dichotomy holds such relevance.
It is when a work renders it impossible in bringing out a difference in the idea and in the expression of that idea that the doctrine of merger comes into picture. The doctrine of merger states that when there exists a thin line of difference between the idea and the expression, i.e., the manner of expressing an idea is quite limited to maybe one or two, then no copyright can be granted on such a work. Copyright will be granted only if there are many means through which an idea can be expressed.
For instance, an alien can be conceptualized, fixated and expressed in the form of a story book, a non-fiction book on extra-terrestrial beings, a movie, a tele-serial etc. Copyright can subsist in all of these works, and the many variations of each of these modes since the idea of an alien can be expressed so.
However, if we are to take the word “DOG”, the same can be written in only one manner, i.e., “D.O.G”. One cannot claim a copyright on that since others will be denied the use of that word in their works or the statement “Narendra Modi is the Prime Minister of India” is another statement one cannot claim a copyright on since there are hardly one or two other ways in which that information can be expressed.
DICHOTOMY OF IDEA-EXPRESSION DOCTRIN
In the earlier days, copyright only protected against literal copying, and not against a more abstract taking of a copyrighted work. Judge Learned Hand explained the idea-expression dichotomy by means of a less precise “abstractions” test. He stated: “Upon any work . . . a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out.” At its most concrete level, a work was protected by copyright; but at some level of abstraction, it became more of an “idea,” to which the protection of copyright did not extend. The abstractions test was significant because copyrighted works were given protection on some level of abstraction, although that protection did not extend to the highest levelof abstraction. Judge Hand’s abstractions test thus has expanded the eligibility for copyright byprotecting those works that might be somewhere along the continuum between the expression and the idea of a work.
This abstractions test is a mode by which substantial similarity between the works in issue can be established. Learned Hand had brought to life this test in his case Nichols v. Universal Pictures2. His opinions have had a tremendous influence on copyright law. In his era, music, publishing, and theater were concentrated in New York, so in his 50 years on the bench, he heard numerous copyright cases both as a trial and an appellate judge. Hand understood that copyright cases are not easily decided by bright line rules.
The idea-expression dichotomy in America is said to have originated in the United States Supreme Court case of Baker v. Selden3. The reasoning, in this case, is wrought with a faulty or rejected reading of the law, yet the case has never been overruled; in fact, it has been often enthusiastically incorporated into the fabric ofcopyright law in a manner such that it renders its origin irrelevant.
In its explanation and development of what has come to be known as the idea-expression dichotomy, the case is shrouded in the limited view of copyright that was typical ofits day. The obsolescence in the Supreme Court’s argument does not necessarily compel a rejection of its holding.
Acareful analysis of the case, however, sheds light upon the role of the doctrine and perhaps imposes upon those advocating the doctrine the burden of finding a more contemporary justification for its existence. The fact of this case is such that copyright was obtained in a book which disclosed Baker’s particular bookkeeping system. The book contained forms “consisting of ruled lines, and headings, illustrating the system and showing how it is to be used and carried out in practice.” Baker published a book on accounting, which “used a similar plan so far as results are concerned, but made a different arrangement of the columns, and used different headings.”
The complainant alleged Baker had used Selden’s system of accounting but did not allege that Baker had copied the particular forms contained in Selden’s book. The Supreme Court had decided that Selden had no exclusive rights under the copyright laws to prevent the use of the accounting system. The Court noted that “there is a clear distinction between the books and the art which it is intended to illustrate.” The former could be copyrighted, the latter could not. The Court’s conclusion can be characterized in four different ways:
(1) A Use Test – The Court distinguished between the use of a work and the statement or explanation of it, implying that infringement depended upon the purpose for which a copy is made. This approach, to the extent that it focuses upon the purpose of the actual user in making the copy (whether for use or for explanation), has been criticized.
Although the nature of the use might be relevant in determining otherwise relevant issues of fair use under section 107 of the United States Copyright Act, or other specific limitations under other sections, the copyright ability of the subject matter in the first instance should not otherwise depend upon the nature of the use by a particular user.
(2) A Merger Theory – where the art is taught, it cannot be communicated without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art and given therewith to the public. If this theory is the primary justification for the baker outcome, baker might be limited to particular kinds of works-architecturalworks, fashion designs, charts and forms-which by their nature merge idea and expression. Thus, the Baker holding need not be viewed as one that would apply to the broader category of works that are capable of more than one type of expression.
(3) A Categorical Approach – By invoking a categorical approach, the Supreme Court in Baker concluded that “blank account books are not the subject of copyright” – thereby excluding blank account books from copyright protection, whether the books are copied for purposes of use or statement. On an analytical level, this conclusion must be drawn from some broader principles (such as the idea-expression, “works of utility” or merger principles).
The explanation uses an ad hoc approach, however, so that categories of works other than blank account books are not necessarily affected. Another valid reason for finding that blank forms are not copyrightable is that they do not reflect sufficient originality to constitute copyrightable material.
(4) An Exclusive Rights Test – The Supreme Court had stated that the copyright in the book, although effective to protect the book, did not confer upon the author the exclusive right to make and use account-books, ruled and arranged as designated by the author and described and illustrated in said book. This explanation seems to address itself more to the scope of the exclusive rights that can otherwise be granted copyright protection than to the threshold question whether blank account books could ever, under any circumstances, be copyrighted.
SOME LANDMARK CASES ON IDEA-EXPRESSION DICHOTOMY
In Cobbett v. Woodward4 copyright was sought for a catalogue on furniture that was manufactured by the plaintiff. The court found under English law that a “mere advertisement” for the sale of particular Articles was not a proper subject of copyright.
In Page v. Wisden5, it was held that copyright does not subsist, and cannot be granted, on cricket scoring sheets.
In Drury v. Ewing6 the court had held that a chart for cutting dresses was copyrightable under the copyright law existing back then and concluded that the defendant’s chart was substantially similar to that of the plaintiffs.
In King Features Syndicate v. Fleischer7 it was held that the making of a three-dimensional doll embodying the image of a copyrighted cartoon character was indeed an infringement of copyright.
Sheldon v. Metro Goldwyn Pictures Corp.8 was a dispute regarding the Sheldon (plaintiffs) brought a copyright infringement suit against Metro-Goldwyn Pictures Corp. (MGM) (defendant). Sheldon claimed that MGM made a movie that infringed upon the plaintiffs’ play. The court of appeals agreed with MGM’s contention that the movie was profitable not because of the underlying copyrighted material, but because of what MGM had added to the story in its production: popular actors, professional scenery, and expert producers and directors.
The Supreme Court ruled that the picture did not bear the title of the copyrighted play and that it was not presented or advertised as having any connection whatever with the play and hence infringing of the author’s copyright. It was also shown that the picture had been ‘sold’, that is, licensed to almost all the exhibitors as identified merely with the name of a popular motion picture actress before even the title Letty Lynton was used.
In Apple Computer, Inc. v. Franklin Computer Corp.9 was the first time an appellate level court in the United States held that a computer’s operating system could be protected by copyright.
Franklin Computer Corporation introduced the Franklin Ace 1000, a clone of Apple Computer’sApple II, in 1982. Apple quicklydetermined that substantial portions of the Franklin ROM and operating system had been copied directly from Apple’s versions. It cited the presence of some of the same embedded strings, such as the name “James Huston” (an Apple programmer), and “Apple soft” on both the Apple and Franklin system disks.
THE DOCTRINE OF MERGER
Although there has been considerable difficulty in defining and applying the idea-expression dichotomy in general, there has been even more than the usual difficulty in applying it within a particular setting – where idea and expression are said to merge, or become a “unity.” In the language of Baker, “Where the art that the book teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public.”
The merger doctrine in copyright states that if an idea and the expression of the idea are so tied together that the idea and its expression are one – there is only one conceivable way or a drastically limited number of ways to express and embody the idea in a work – then the expression of the idea is uncopyrightable because ideas may not be copyrighted. The scenes a fair doctrine complements the merger doctrine by providing that particular subject matter – stock images, tried and true storylines, fables and folklore, scenes of nature, common visual and cultural references, all of which fall under the description of scenes that must be done – are not copyrightable because they are part of the public domain, and no one can obtain a monopoly on such images by putting them into a fixed and tangible medium of expression.
Although the courts have from time to time acknowledged that the standards for originality and creativity required for copyright are intentionally low, and that there are a myriad of ways to express themes and ideas visually, half of the circuits of the United States Courts ofAppeals have applied a reductionist, dissection and filtration approach in their consideration of infringement of visual works that is driven by an expanded view of the applicability of the merger and scenes a fair doctrines to visual tasks. This Article will argue that the merger octrine and scenes a fair doctrine as perfectly well adapted to verbal and literary works, but they have no meaning and no proper application about visual works and should be discarded the consideration of infringement of visual works.
Whereas the focus of the idea-expression dichotomy is upon whether the work constitutes idea or expression, the merger doctrine focuses upon whether the work is capable of alternative expressions. Thus, the doctrine requires reference not only to a given work, or to two given works, but to a whole range of works that might use the idea of the original work. The doctrine seems to impose upon the copyright claimant the task of demonstrating that the idea of the work is capable of other non-infringing expressions, which will then presumably be compared to the defendant’s work in determining whether the particular taking will be allowed.
From one perspective, the merger theory represents a harsh application of the idea-expression dichotomy. The idea-expression dichotomy will be sufficient to handle the situation in which only an idea has been taken. If the merger theory is invoked, it is presumably because the expression has been copied, but it is necessary to excuse the taking because there is no other way to allow the use of the idea. Since it is copying of expression that will be excused, the consequences to the copyright owner will be reasonably high.
From another perspective, the merger doctrine is not as much of a problem as the idea- expression dichotomy generally. The theory, after all, applies in a smaller number of cases than the idea-expressiondichotomy; it seems to focus to some extent upon an allegedlyinfringing work (or a range of potentially infringing works) instead of the copyrighted work in isolation. Both the substantial similarity of two works and the context of the works are considered, thus effectively testing whether the idea can be separated from its expression.
SOME LANDMARK CASES PERTAINING TO THE DOCTRINE OF MERGER
In Edwin K. Williams & Company v. Williams10, the court held that instruction books together with account forms were copyrightable, because “the instructions and the blank forms constituted an integrated work and were thus entitled to copyright protection.” In other words, the merger of idea and expression did not undermine the copyright ability of the work.
In Morrissey v. Procter & Gamble Co.11, a manufacturer claimed copyright in the text describing the rules of a contest wherein consumers could mail in a box top to be entered to win a prize. The First Circuit determined that the manufacturer had no copyright in the contest terms, holding that the expression had “merged” with the idea.
The court reasoned that because there are only a small, finite and limited number of ways to express the idea of such a contest and because the contest itself is not protectable subject matter, a finding of ownership of the expression would have granted ownership of the idea of a contest.
In Herbert Rosenthal Jewelry Corp. v. Kalpakian12 the plaintiff alleged that the defendant’s jeweled bee pins, which were similar in appearance to plaintiff’s own pins, infringed its copyright. The Ninth Circuit held that the pins did not infringe, because it was impossible to create a pin using a small number of jewels that looks like a bee without the pin looking similar to all other such jeweled bee pins. Therefore, the idea of a jeweled bee pin and the expression had merged. The court said that the intellectual property rights in such an item would properly be the subject of protection under patent law, not copyright law.
In Time Inc. v. Bernard Geis Assocs.13, the plaintiff owned the copyright in the Zapruder film, which happened to be the only direct video footage of President John F. Kennedy’s assassination. The defendant copied frames of the Zapruder film and used them as illustrations in a book that put forward a particular forensic theory regarding the assassination. The plaintiff sued, alleging copyright infringement.
The judge held that such use ofthe plaintiff’s film was a “fair use” outside the limits of copyright protection, but perhaps the court could have arrived at the same conclusion under the merger doctrine’s reasoning since only a single video of the assassination exists. If there was factual visual information about the assassination contained in the film for which there was no substitute, then enforcing the plaintiffs copyright in some circumstances could provide the copyright- holder control over non-copyrightable visual aspects of the JFK assassination, therefore indicating that the fact and the expression had merged.
CONCLUSION
While the idea-expression dichotomy is based upon whether a work constitutes an idea or expression, the merger doctrine focuses upon whether the work is capable of alternative expressions. Even assuming that there is ever such a thing as a true merger or unity of idea and expression, it is not inevitable that copyright protection of the expression must give way to assure the presumed freedom of the idea.
Although ideas should not be per se protected under copyright law, copyright ability need not be forfeited just because the expression incidentally tends to create a potential monopoly in the use of an idea.
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