Chapter 4: Limitations on Copyrightability

A. The Idea-Expression Dichotomy

The term “idea-expression dichotomy” encapsulates a fundamental precept of copyright law, which is that copyright protection is only available for the expression of ideas, not for the underlying ideas themselves.¹ The seminal articulation of the dichotomy can be found in Baker v. Selden,² a landmark decision of the Supreme Court handed down in 1879. It involved a book describing a practice known today as double-entry bookkeeping, which was apparently an important innovation in accounting practices. The owner of the copyright in the book sought to use the copyright to exclude others from commercializing the method of accounting described in the book. The Court rejected this attempted overreach, holding that the exclusive rights of the copyright only encompassed the author’s expression of the idea of double-entry bookkeeping, not the underlying idea itself. The Court explained that this would be analogous to “an author of a treatise on the composition and use of medicines attempting to use the copyright on the treatise to exclude others from the medicines and their use described therein.” As explained by the Court:

The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The former may be secured by copyright. The latter can only be secured, if it can be secured all, by [a patent].

The holding of Baker was essentially codified in 102(b), which provides the statutory basis for the idea-expression dichotomy:

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

17 U.S.C. § 102(b)

As discussed in detail later in this casebook, the idea-expression dichotomy appears in a variety of contexts throughout copyright law, including the assessment of whether a work is copyrightable, or whether the copyright in a work has been infringed. It is also the basis for some of the important doctrines of copyright law, including merger and thin³ copyright protection, which are discussed below.

The essence of the idea-expression dichotomy is that copyright law grants an author the right to exclude others from reproducing the author’s expression of an idea, but not the idea itself. Allowing copyright law to extend to ideas, facts, utilitarian processes, etc., would create serious public policy concerns. For example, it would restrict the ability of people to express and discuss ideas, potentially impinging on the First Amendment. Tying up facts and ideas with copyright could also harm the progress of science and future creativity, by denying others the right to build upon those facts and ideas, a concern discussed by the Supreme Court in Feist. Granting authors exclusive rights in their expression of ideas, on the other hand, is seen as promoting public policy by providing an incentive for the creation and dissemination of expressive works. The idea-expression dichotomy thus represents a means of providing balance, hopefully allowing sufficient incentive for authors to create expressive works without over-protecting in a manner that unduly restricts the ability of others to discuss and build upon the underlying ideas.

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Some things to consider when reading Nichols:

1. This case is often cited for Judge Hands explanation of his “abstractions” test, which is still used by courts to discern between a copyrighted work’s ideas, which are freely available for anyone to copy, and the work’s expression of those ideas, which is protected.
2. This case is also noted for Judge Hand’s discussion of the potentially copyrightable elements of a play, particularly the “characters and sequence of incidents.”
3. This case introduces the concept of copyright in characters, a topic which will come up again later in this casebook.

Nichols v. Universal Pictures Corp.

45 F.2d 119 (2d Cir. 1930)

L. HAND, Circuit Judge.

The plaintiff is the author of a play, ‘Abie’s Irish Rose,‘ which it may be assumed was properly copyrighted. The defendant produced publicly a motion picture play, ‘The Cohens and The Kellys,‘ which the plaintiff alleges was taken from it. As we think the defendant’s play too unlike the plaintiff’s to be an infringement, we may assume, arguendo, that in some details the defendant used the plaintiff’s play, as will subsequently appear, though we do not so decide. It therefore becomes necessary to give an outline of the two plays.

‘Abie’s Irish Rose‘ presents a Jewish family living in prosperous circumstances in New York. The father, a widower, is in business as a merchant, in which his son and only child helps him. The boy has philandered with young women, who to his father’s great disgust have always been Gentiles, for he is obsessed with a passion that his daughter-in-law shall be an orthodox Jewess. When the play opens the son, who has been courting a young Irish Catholic girl, has already married her secretly before a Protestant minister, and is concerned to soften the blow for his father, by securing a favorable impression of his bride, while concealing her faith and race. To accomplish this he introduces her to his father at his home as a Jewess, and lets it appear that he is interested in her, though he conceals the marriage. The girl somewhat reluctantly falls in with the plan; the father takes the bait, becomes infatuated with the girl, concludes that they must marry, and assumes that of course they will, if he so decides. He calls in a rabbi, and prepares for the wedding according to the Jewish rite.

Meanwhile the girl’s father, also a widower, who lives in California, and is as intense in his own religious antagonism as the Jew, has been called to New York, supposing that his daughter is to marry an Irishman and a Catholic. Accompanied by a priest, he arrives at the house at the moment when the marriage is being celebrated, but too late to prevent it and the two fathers, each infuriated by the proposed union of his child to a heretic, fall into unseemly and grotesque antics. The priest and the rabbi become friendly, exchange trite sentiments about religion, and agree that the match is good. Apparently out of abundant caution, the priest celebrates the marriage for a third time, while the girl’s father is inveigled away. The second act closes with each father, still outraged, seeking to find some way by which the union, thus trebly insured, may be dissolved.

The last act takes place about a year later, the young couple having meanwhile been abjured by each father, and left to their own resources. They have had twins, a boy and a girl, but their fathers know no more than that a child has been born. At Christmas each, led by his craving to see his grandchild, goes separately to the young folks’ home, where they encounter each other, each laden with gifts, one for a boy, the other for a girl. After some slapstick comedy, depending upon the insistence of each that he is right about the sex of the grandchild, they become reconciled when they learn the truth, and that each child is to bear the given name of a grandparent. The curtain falls as the fathers are exchanging amenities, and the Jew giving evidence of an abatement in the strictness of his orthodoxy.

‘The Cohens and The Kellys‘ presents two families, Jewish and Irish, living side by side in the poorer quarters of New York in a state of perpetual enmity. The wives in both cases are still living, and share in the mutual animosity, as do two small sons, and even the respective dogs. The Jews have a daughter, the Irish a son; the Jewish father is in the clothing business; the Irishman is a policeman. The children are in love with each other, and secretly marry, apparently after the play opens. The Jew, being in great financial straits, learns from a lawyer that he has fallen heir to a large fortune from a great-aunt, and moves into a great house, fitted luxuriously. Here he and his family live in vulgar ostentation, and here the Irish boy seeks out his Jewish bride, and is chased away by the angry father. The Jew then abuses the Irishman over the telephone, and both become hysterically excited. The extremity of his feelings make the Jew sick, so that he must go to Florida for a rest, just before which the daughter discloses her marriage to her mother.

On his return the Jew finds that his daughter has borne a child; at first he suspects the lawyer, but eventually learns the truth and is overcome with anger at such a low alliance. Meanwhile, the Irish family who have been forbidden to see the grandchild, go to the Jew’s house, and after a violent scene between the two fathers in which the Jew disowns his daughter, who decides to go back with her husband, the Irishman takes her back with her baby to his own poor lodgings. The lawyer, who had hoped to marry the Jew’s daughter, seeing his plan foiled, tells the Jew that his fortune really belongs to the Irishman, who was also related to the dead woman, but offers to conceal his knowledge, if the Jew will share the loot. This the Jew repudiates, and, leaving the astonished lawyer, walks through the rain to his enemy’s house to surrender the property. He arrives in great dejection, tells the truth, and abjectly turns to leave. A reconciliation ensues, the Irishman agreeing to share with him equally. The Jew shows some interest in his grandchild, though this is at most a minor motive in the reconciliation, and the curtain falls while the two are in their cups, the Jew insisting that in the firm name for the business, which they are to carry on jointly, his name shall stand first.

It is of course essential to any protection of literary property, whether at common-law or under the statute, that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations. That has never been the law, but, as soon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that, as was recently well said by a distinguished judge, the decisions cannot help much in a new case. Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas,‘ to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can. As respects plays, the controversy chiefly centers upon the characters and sequence of incident, these being the substance.

We do not doubt that two plays may correspond in plot closely enough for infringement. How far that correspondence must go is another matter. Nor need we hold that the same may not be true as to the characters, quite independently of the “plot” proper, though, as far as we know such a case has never arisen. If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare’s “ideas” in the play, as little capable of monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.

In the two plays at bar we think both as to incident and character, the defendant took no more— assuming that it took anything at all— than the law allowed. The stories are quite different. One is of a religious zealot who insists upon his child’s marrying no one outside his faith; opposed by another who is in this respect just like him, and is his foil. Their difference in race is merely an obbligato to the main theme, religion. They sink their differences through grandparental pride and affection. In the other, zealotry is wholly absent; religion does not even appear. It is true that the parents are hostile to each other in part because they differ in race; but the marriage of their son to a Jew does no apparently offend the Irish family at all, and it exacerbates the existing animosity of the Jew, principally because he has become rich, when he learns it. They are reconciled through the honesty of the Jew and the generosity of the Irishman; the grandchild has nothing whatever to do with it. The only matter common to the two is a quarrel between a Jewish and an Irish father, the marriage of their children, the birth of grandchildren and a reconciliation.

If the defendant took so much from the plaintiff, it may well have been because her amazing success seemed to prove that this was a subject of enduring popularity. Even so, granting that the plaintiff’s play was wholly original, and assuming that novelty is not essential to a copyright, there is no monopoly in such a background. Though the plaintiff discovered the vein, she could not keep it to herself; so defined, the theme was too generalized an abstraction from what she wrote. It was only a part of her “ideas.”

Nor does she fare better as to her characters. It is indeed scarcely credible that she should not have been aware of those stock figures, the low comedy Jew and Irishman. The defendant has not taken from her more than their prototypes have contained for many decades. If so, obviously so to generalize her copyright, would allow her to cover what was not original with her. But we need not hold this as matter of fact, much as we might be justified. Even though we take it that she devised her figures out of her brain de novo, still the defendant was within its rights.

There are but four characters common to both plays, the lovers and the fathers. The lovers are so faintly indicated as to be no more than stage properties. They are loving and fertile; that is really all that can be said of them, and anyone else is quite within his rights if he puts loving and fertile lovers in a play of his own, wherever he gets the cue. The Plaintiff’s Jew is quite unlike the defendant’s. His obsession in his religion, on which depends such racial animosity as he has. He is affectionate, warm and patriarchal. None of these fit the defendant’s Jew, who shows affection for his daughter only once, and who has none but the most superficial interest in his grandchild. He is tricky, ostentatious and vulgar, only by misfortune redeemed into honesty. Both are grotesque, extravagant and quarrelsome; both are fond of display; but these common qualities make up only a small part of their simple pictures, no more than any one might lift if he chose. The Irish fathers are even more unlike; the plaintiff’s a mere symbol for religious fanaticism and patriarchal pride, scarcely a character at all. Neither quality appears in the defendant’s, for while he goes to get his grandchild, it is rather out of a truculent determination not to be forbidden, than from pride in his progeny. For the rest he is only a grotesque hobbledehoy, used for low comedy of the most conventional sort, which any one might borrow, if he chanced not to know the exemplar.

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Check Your Understanding – Nichols

Question 1. True or False:  It is possible for one to copy substantially from another’s copyrighted work, without authorization, without incurring liability for copyright infringement.

Socratic Script

Why does the court assume, in the first paragraph of the decision, that plaintiff’s play “was properly copyrighted” and that “in some details the defendant used the plaintiff’s play”?

What is the “abstractions test,” and what role does it play in determining liability for copyright infringement?

Some things to consider when reading Sissom:

1. This case illustrates application of the idea-expression dichotomy with respect to historical facts, a form of “idea” that cannot be protected by copyright.
2. Even though the plaintiff’s book is copyrighted, the facts presented in the book are not, so the public is free to copy the facts without incurring liability for copyright infringement. As a general matter, it is perfectly all right to copy material from a copyrighted work, so long as only uncopyrightable elements, i.e., ideas, such as facts, are copied, not the expression of those ideas.
3. Note the court’s brief discussion of state common law copyright and its preemption by the 1976 Copyright Act, both mentioned earlier in this casebook.

Sissom v. Snow

626 F. App’x 163 (7th Cir. 2015)

The circumstances surrounding the investigation of three murders in Indianapolis, Indiana, provided the subject matter for two non-fiction books, a 2006 book by Carol Sissom, and a 2012 book by Robert Snow. In this appeal challenging the dismissal of her suit against Snow and his booksellers, Sissom contends that Snow’s book infringes on the copyright of her composition. Because Snow’s book restates only historical events, the defendants did not infringe on any protected expression, so we affirm.

In December 1971 three Indianapolis businessmen were murdered at a house on the city’s east side. Police were unable to solve the crime, which gained notoriety as the years passed and no one was identified as the assailant. The case was still cold 20 years later when Sissom, a freelance journalist, became interested in it. She first investigated the case while writing a series of newspaper articles, and then continued the investigation for its own sake. Eventually Sissom believed she had found the killers, concluding that they were motivated either by jealousy or secret payments from the Nixon Administration to cover up illegal campaign contributions from Jimmy Hoffa. The men accused by Sissom were charged with the murders, but the charges were quickly dropped, and the case remained open. In 2003 the Indianapolis police received a letter confessing to the murders. Sissom got wind of the confession, and, believing it to have validated her work, soon memorialized her investigation and conclusions in book form, first in her 2006 book The LaSalle Street Murders, and a few years later in a trilogy bearing the same name.

The 2003 letter, which had been written by an individual other than those charged in connection with Sissom’s investigation, prompted an Indianapolis detective to take a fresh look at the case. That detective ultimately concluded that the letter’s author, who claimed that he had been paid to commit the murders in order to obtain an insurance payout, was telling the truth. On the basis of the detective’s conclusion, the Indianapolis police decided to close the case. That closure precipitated Robert Snow’s Slaughter on North LaSalle, a book detailing the original investigation, Sissom’s work in the 90s, and the case’s conclusion.

Though critical of Sissom’s methods and conclusions, the middle third of Snow’s account relies heavily on Sissom’s 2006 work, and he credits Sissom’s book as his source of information about her investigation and findings. In that middle portion, Snow restates many historical facts that appear in The LaSalle Street Murders. We provide three illustrative examples.

First, early on in her book, Sissom explained how she began her investigation: “I made my first inquiry at the Marion County Public Library. It was there that a woman told me about a sensational murder case that happened when I was just a small school girl…. When I looked at my calendar I realized that the 20–year anniversary of the LaSalle Street Murders was coming up.” Snow summarized this information about Sissom’s start as follows: “Eventually, a librarian at the Indianapolis Marion County Public Library pointed [Sissom] toward the North LaSalle Street Murders, still unsolved and whose twentieth anniversary was coming up in December of that year.” A second example reflects how Sissom got her first “break” in the case. She wrote that it came when she located a potential witness: “My second goal was to find [Margo], the waitress at the bar, ‘Tommy’s Starlight Palladium’ in 1971…. With a little tenacity—and the speed of the fingers on my right hand dancing on my telephone keyboard, I found [Margo]! She was a go-go dancer at a seedy establishment near South Meridian Street, not too far from downtown Indianapolis.” Snow recapped how Sissom found Margo: “Next, [Sissom] set out to find the woman named Margo, whom she said she eventually located working at a run-down bar in Indianapolis.” As a final example, Sissom elaborated on her interaction with Floyd Chastain, a convicted murderer incarcerated in a Florida state prison and one of the men she eventually accused of the murders. About their first conversation Sissom wrote: “The next day, I received a call that I will never forget as long as I live. It was a phone call that pierced my afternoon with both excitement and terror at the same time. It was about 2:20 p.m. and a brilliant, sunny day.” Snow summarized the same events: “But then, on September 1st, 1992, Chastain called [Sissom] from the prison in Florida.”

Similarities like these in Snow’s book prompted Sissom to bring this action for copyright infringement against Snow and others in the chain of distribution. Sissom’s complaint asserted generally that part of Snow’s book was an unlawful paraphrase of her own works on the subject, and she later identified 194 specific instances (of which we have just given three representative examples) where Slaughter on North LaSalle, she believed, unlawfully copied from The LaSalle Street Murders. (Sissom also brought claims for intentional infliction of emotional distress and defamation, but she voluntarily dismissed those supplemental claims with prejudice, and then repleaded only the copyright claim, so we forgo any analysis of those supplemental claims.)

The defendants moved to dismiss the complaint for failure to state a claim, and submitted to the district court the two books that we have mentioned and that Sissom discusses throughout her complaint. The district court granted the motion, concluding that Snow’s book relied on Sissom’s only for non-copyrightable facts, and so the defendants were entitled to judgment as a matter of law.

Sissom concedes that Snow could lawfully use factual bits and pieces of her work, but contends that his extensive reliance on her book infringed upon her copyright. Sissom correctly points out that the middle portion of Snow’s book essentially restates the same chronology of events and the conclusions that Sissom reached in hers, using the third person rather than the first. Sissom appears to invoke the concept of a derivative work, which the Copyright Act defines as “a work based upon one or more preexisting works,” a definition that includes works “consisting of editorial revisions, annotations, or elaborations.” 17 U.S.C. § 101. The creator of a derivative work infringes on the protected portion of the original unless that person obtains a license from the owner of the underlying copyright.

But none of the material that Sissom says is taken from her book is derivative of protectable material. The middle part of Snow’s book, from the chronology of Sissom’s investigation to her ultimate conclusions, simply restates historical events—the murder investigation and Sissom’s role in it—and adds a bit of Snow’s own commentary about those events. It is a foundation of copyright law that only the form of an author’s expression is protectable, not the facts or ideas being expressed. This principle remains true no matter how much factual content is borrowed. Because Snow merely retold historical events using his own, more succinct style of expression, he did not appropriate any copyrightable expression. Therefore Sissom’s copyright claim fails.

Sissom counters that her book is not entirely factual, and thus Snow’s retelling necessarily infringes on her creation. To prove that her account is part fiction, she refers us to the “Disclaimer Page” that prefaces The LaSalle Street Murders. But that page undercuts her argument. There, she emphasizes that the book is “the true story” and “every part of this book is accurate,” consisting of “verif[ied] facts.” Based on her admission, then, the book’s content is unprotected factual material. It is true that later in the disclaimer she backpedals, suggesting that some parts of her book “have been fictionalized in order to move the story along.” But in her complaint and her opposition to the motion to dismiss, she asserts that the defendants infringed only on those portions of her book that describe “her feelings, perceptions, thoughts and actions.” These are actual, historical events. And since, as we have observed, historical truth is not protected expression, she fails to support her federal claim for infringement.

In addition to her federal claim, Sissom raises a host of novel, confusing, and ultimately meritless arguments generally based on Indiana common law. Asserting that Snow’s work has invaded her privacy, she first refers us to the common law of copyright. Any argument grounded in a right of privacy is puzzling, given that Sissom published her own book and inserted herself into the historical record of the case. But in any event, while the common law of copyright could be invoked in limited circumstances to protect personal privacy, it does not apply here because it was abolished for works like Sissom’s created after 1977.
⁴

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Check Your Understanding – Sissom

Question 1. True or false: The defendant in Sissom was not held liable for copyright infringement because the plaintiff could not prove that the defendant had copied more than a de minimis amount of the plaintiff’s copyrighted book.

Some things to consider when reading Lotus:

1. This case involves competing computer spreadsheet programs. Microsoft Excel is an example of a computer spreadsheet program with which today’s students are generally more familiar.
2. The basis for the district court’s determination that the Lotus menu command hierarchy was copyrightable.
3. The basis for the First Circuit’s determination that the Lotus menu command hierarchy was an uncopyrightable “method of operation.”
4. The court’s analogy between the Lotus menu command hierarchy and the buttons used to control a VCR.
5. The policy considerations at play in the case, as discussed by both the majority and the dissent.
6. Although Lotus is still good law in the First Circuit, see e-STEPS, LLC v. Americas Leading Fin., LLC, 2021 WL 1157024, at *8 (D.P.R. Mar. 24, 2021), other circuits have rejected Lotus’s holding that expression that is part of a method of operation is not copyrightable, as discussed by the Ninth Circuit in a case that appears later in this casebook, Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014).

Lotus Dev. Corp. v. Borland Int’l, Inc.

49 F.3d 807 (1st Cir. 1995)

STAHL, Circuit Judge.

This appeal requires us to decide whether a computer menu command hierarchy is copyrightable subject matter. In particular, we must decide whether, as the district court held, plaintiff-appellee Lotus Development Corporation’s copyright in Lotus 1–2–3, a computer spreadsheet program, was infringed by defendant-appellant Borland International, Inc., when Borland copied the Lotus 1–2–3 menu command hierarchy into its Quattro and Quattro Pro computer spreadsheet programs.

I.

Background

Lotus 1–2–3 is a spreadsheet program that enables users to perform accounting functions electronically on a computer. Users manipulate and control the program via a series of menu commands, such as “Copy,” “Print,” and “Quit.” Users choose commands either by highlighting them on the screen or by typing their first letter. In all, Lotus 1–2–3 has 469 commands arranged into more than 50 menus and submenus.

Lotus 1–2–3, like many computer programs, allows users to write what are called “macros.” By writing a macro, a user can designate a series of command choices with a single macro keystroke. Then, to execute that series of commands in multiple parts of the spreadsheet, rather than typing the whole series each time, the user only needs to type the single pre-programmed macro keystroke, causing the program to recall and perform the designated series of commands automatically. Thus, Lotus 1–2–3 macros shorten the time needed to set up and operate the program.

Borland released its first Quattro program to the public in 1987, after Borland’s engineers had labored over its development for nearly three years. Borland’s objective was to develop a spreadsheet program far superior to existing programs, including Lotus 1–2–3.

The district court found, and Borland does not now contest, that Borland included in its Quattro and Quattro Pro version 1.0 programs a virtually identical copy of the entire 1–2–3 menu tree. In so doing, Borland did not copy any of Lotus’s underlying computer code; it copied only the words and structure of Lotus’s menu command hierarchy. Borland included the Lotus menu command hierarchy in its programs to make them compatible with Lotus 1–2–3 so that spreadsheet users who were already familiar with Lotus 1–2–3 would be able to switch to the Borland programs without having to learn new commands or rewrite their Lotus macros.

In its Quattro and Quattro Pro version 1.0 programs, Borland achieved compatibility with Lotus 1–2–3 by offering its users an alternate user interface, the “Lotus Emulation Interface.” By activating the Emulation Interface, Borland users would see the Lotus menu commands on their screens and could interact with Quattro or Quattro Pro as if using Lotus 1–2–3, albeit with a slightly different looking screen and with many Borland options not available on Lotus 1–2–3. In effect, Borland allowed users to choose how they wanted to communicate with Borland’s spreadsheet programs: either by using menu commands designed by Borland, or by using the commands and command structure used in Lotus 1–2–3 augmented by Borland-added commands.

On July 31, 1992, the district court ruled that the Lotus menu command hierarchy was copyrightable expression because

[a] very satisfactory spreadsheet menu tree can be constructed using different commands and a different command structure from those of Lotus 1–2–3. In fact, Borland has constructed just such an alternate tree for use in Quattro Pro’s native mode. Even if one holds the arrangement of menu commands constant, it is possible to generate literally millions of satisfactory menu trees by varying the menu commands employed.

The district court demonstrated this by offering alternate command words for the ten commands that appear in Lotus’s main menu. For example, the district court stated that “[t]he ‘Quit’ command could be named ‘Exit’ without any other modifications,” and that “[t]he ‘Copy’ command could be called ‘Clone,’ ‘Ditto,’ ‘Duplicate,’ ‘Imitate,’ ‘Mimic,’ ‘Replicate,’ and ‘Reproduce,’ among others.” Because so many variations were possible, the district court concluded that the Lotus developers’ choice and arrangement of command terms, reflected in the Lotus menu command hierarchy, constituted copyrightable expression.

II.

Discussion

D. The Lotus Menu Command Hierarchy: A “Method of Operation”

Borland argues that the Lotus menu command hierarchy is uncopyrightable because it is a system, method of operation, process, or procedure foreclosed from copyright protection by 17 U.S.C. § 102(b). Section 102(b) states: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” Because we conclude that the Lotus menu command hierarchy is a method of operation, we do not consider whether it could also be a system, process, or procedure.

We think that “method of operation,” as that term is used in § 102(b), refers to the means by which a person operates something, whether it be a car, a food processor, or a computer. Thus a text describing how to operate something would not extend copyright protection to the method of operation itself; other people would be free to employ that method and to describe it in their own words. Similarly, if a new method of operation is used rather than described, other people would still be free to employ or describe that method.

We hold that the Lotus menu command hierarchy is an uncopyrightable “method of operation.” The Lotus menu command hierarchy provides the means by which users control and operate Lotus 1–2–3. If users wish to copy material, for example, they use the “Copy” command. If users wish to print material, they use the “Print” command. Users must use the command terms to tell the computer what to do. Without the menu command hierarchy, users would not be able to access and control, or indeed make use of, Lotus 1–2–3’s functional capabilities.

The Lotus menu command hierarchy does not merely explain and present Lotus 1–2–3’s functional capabilities to the user; it also serves as the method by which the program is operated and controlled. The Lotus menu command hierarchy is The different from the underlying computer code, because while code is necessary for the program to work, its precise formulation is not. In other words, to offer the same capabilities as Lotus 1–2–3, Borland did not have to copy Lotus’s underlying code (and indeed it did not); to allow users to operate its programs in substantially the same way, however, Borland had to copy the Lotus menu command hierarchy. Thus the Lotus 1–2–3 code is not a uncopyrightable “method of operation.”

The district court held that the Lotus menu command hierarchy, with its specific choice and arrangement of command terms, constituted an “expression” of the “idea” of operating a computer program with commands arranged hierarchically into menus and submenus. Under the district court’s reasoning, Lotus’s decision to employ hierarchically arranged command terms to operate its program could not foreclose its competitors from also employing hierarchically arranged command terms to operate their programs, but it did foreclose them from employing the specific command terms and arrangement that Lotus had used. In effect, the district court limited Lotus 1–2–3’s “method of operation” to an abstraction.

Accepting the district court’s finding that the Lotus developers made some expressive choices in choosing and arranging the Lotus command terms, we nonetheless hold that that expression is not copyrightable because it is part of Lotus 1–2–3’s “method of operation.” We do not think that “methods of operation” are limited to abstractions; rather, they are the means by which a user operates something. If specific words are essential to operating something, then they are part of a “method of operation” and, as such, are unprotectable. This is so whether they must be highlighted, typed in, or even spoken, as computer programs no doubt will soon be controlled by spoken words.

The fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a “method of operation.” In other words, our initial inquiry is not whether the Lotus menu command hierarchy incorporates any expression. Rather, our initial inquiry is whether the Lotus menu command hierarchy is a “method of operation.” Concluding, as we do, that users operate Lotus 1–2–3 by using the Lotus menu command hierarchy, and that the entire Lotus menu command hierarchy is essential to operating Lotus 1–2–3, we do not inquire further whether that method of operation could have been designed differently. The “expressive” choices of what to name the command terms and how to arrange them do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter.

In many ways, the Lotus menu command hierarchy is like the buttons used to control, say, a video cassette recorder (“VCR”). A VCR is a machine that enables one to watch and record video tapes. Users operate VCRs by pressing a series of buttons that are typically labelled “Record, Play, Reverse, Fast Forward, Pause, Stop/Eject.” That the buttons are arranged and labeled does not make them a “literary work,” nor does it make them an “expression” of the abstract “method of operating” a VCR via a set of labeled buttons. Instead, the buttons are themselves the “method of operating” the VCR.

When a Lotus 1–2–3 user chooses a command, either by highlighting it on the screen or by typing its first letter, he or she effectively pushes a button. Highlighting the “Print” command on the screen, or typing the letter “P,” is analogous to pressing a VCR button labeled “Play.”

Just as one could not operate a buttonless VCR, it would be impossible to operate Lotus 1–2–3 without employing its menu command hierarchy. Thus the Lotus command terms are not equivalent to the labels on the VCR’s buttons, but are instead equivalent to the buttons themselves. Unlike the labels on a VCR’s buttons, which merely make operating a VCR easier by indicating the buttons’ functions, the Lotus menu commands are essential to operating Lotus 1–2–3. Without the menu commands, there would be no way to “push” the Lotus buttons, as one could push unlabeled VCR buttons. While Lotus could probably have designed a user interface for which the command terms were mere labels, it did not do so here. Lotus 1–2–3 depends for its operation on use of the precise command terms that make up the Lotus menu command hierarchy.

One might argue that the buttons for operating a VCR are not analogous to the commands for operating a computer program because VCRs are not copyrightable, whereas computer programs are. VCRs may not be copyrighted because they do not fit within any of the § 102(a) categories of copyrightable works; the closest they come is “sculptural work.” Sculptural works, however, are subject to a “useful-article” exception whereby “the design of a useful article … 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. § 101. A “useful article” is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Whatever expression there may be in the arrangement of the parts of a VCR is not capable of existing separately from the VCR itself, so an ordinary VCR would not be copyrightable.

Computer programs, unlike VCRs, are copyrightable as “literary works.” 17 U.S.C. § 102(a). Accordingly, one might argue, the “buttons” used to operate a computer program are not like the buttons used to operate a VCR, for they are not subject to a useful-article exception. The response, of course, is that the arrangement of buttons on a VCR would not be copyrightable even without a useful-article exception, because the buttons are an uncopyrightable “method of operation.” Similarly, the “buttons” of a computer program are also an uncopyrightable “method of operation.”

That the Lotus menu command hierarchy is a “method of operation” becomes clearer when one considers program compatibility. Under Lotus’s theory, if a user uses several different programs, he or she must learn how to perform the same operation in a different way for each program used. For example, if the user wanted the computer to print material, then the user would have to learn not just one method of operating the computer such that it prints, but many different methods. We find this absurd. The fact that there may be many different ways to operate a computer program, or even many different ways to operate a computer program using a set of hierarchically arranged command terms, does not make the actual method of operation chosen copyrightable; it still functions as a method for operating the computer and as such is uncopyrightable.

Consider also that users employ the Lotus menu command hierarchy in writing macros. Under the district court’s holding, if the user wrote a macro to shorten the time needed to perform a certain operation in Lotus 1–2–3, the user would be unable to use that macro to shorten the time needed to perform that same operation in another program. Rather, the user would have to rewrite his or her macro using that other program’s menu command hierarchy. This is despite the fact that the macro is clearly the user’s own work product. We think that forcing the user to cause the computer to perform the same operation in a different way ignores Congress’s direction in § 102(b) that “methods of operation” are not copyrightable. That programs can offer users the ability to write macros in many different ways does not change the fact that, once written, the macro allows the user to perform an operation automatically. As the Lotus menu command hierarchy serves as the basis for Lotus 1–2–3 macros, the Lotus menu command hierarchy is a “method of operation.”

We also note that in most contexts, there is no need to “build” upon other people’s expression, for the ideas conveyed by that expression can be conveyed by someone else without copying the first author’s expression. In the context of methods of operation, however, “building” requires the use of the precise method of operation already employed; otherwise, “building” would require dismantling, too. Original developers are not the only people entitled to build on the methods of operation they create; anyone can. Thus, Borland may build on the method of operation that Lotus designed and may use the Lotus menu command hierarchy in doing so.

Reversed.

BOUDIN, Circuit Judge, concurring.

Most of the law of copyright and the “tools” of analysis have developed in the context of literary works such as novels, plays, and films. In this milieu, the principal problem—simply stated, if difficult to resolve—is to stimulate creative expression without unduly limiting access by others to the broader themes and concepts deployed by the author. The middle of the spectrum presents close cases; but a “mistake” in providing too much protection involves a small cost: subsequent authors treating the same themes must take a few more steps away from the original expression.

The problem presented by computer programs is fundamentally different in one respect. The computer program is a means for causing something to happen; it has a mechanical utility, an instrumental role, in accomplishing the world’s work. Granting protection, in other words, can have some of the consequences of patent protection in limiting other people’s ability to perform a task in the most efficient manner. Utility does not bar copyright (dictionaries may be copyrighted), but it alters the calculus.

Of course, the argument for protection is undiminished, perhaps even enhanced, by utility: if we want more of an intellectual product, a temporary monopoly for the creator provides incentives for others to create other, different items in this class. But the “cost” side of the equation may be different where one places a very high value on public access to a useful innovation that may be the most efficient means of performing a given task. Thus, the argument for extending protection may be the same; but the stakes on the other side are much higher.

Requests for the protection of computer menus present the concern with fencing off access to the commons in an acute form. A new menu may be a creative work, but over time its importance may come to reside more in the investment that has been made by users in learning the menu and in building their own mini-programs—macros—in reliance upon the menu. Better typewriter keyboard layouts may exist, but the familiar QWERTY keyboard dominates the market because that is what everyone has learned to use. The QWERTY keyboard is nothing other than a menu of letters.

Thus, to assume that computer programs are just one more new means of expression, like a filmed play, may be quite wrong. The “form”—the written source code or the menu structure depicted on the screen—look hauntingly like the familiar stuff of copyright; but the “substance” probably has more to do with problems presented in patent law or, as already noted, in those rare cases where copyright law has confronted industrially useful expressions. Applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces do not quite fit.

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Check Your Understanding – Lotus

Question 1. What did Borland copy from Lotus 1-2-3?

Question 2. Why did the First Circuit hold that Lotus’s copyright in Lotus 1–2–3 was not infringed when Borland copied the Lotus 1–2–3 menu command hierarchy into its competing computer spreadsheet programs?

Question 3. True or false: The First Circuit opined that it could have, in the alternative, found the Lotus menu command hierarchy to be uncopyrightable under the “useful article exception.”

B. Merger and Thin Protection

What happens when there is only one means of expressing an idea, such that it would be impossible to grant the author an exclusive right in her expression of the idea without at the same time giving her an exclusive right in the underlying idea? Under the doctrine of merger, courts have held that when there is only one way, or a very small number of ways, to express an idea, then that expression cannot be copyrighted. To allow copyright on the expression would unduly restrict access to the underlying idea, and thus as a matter of policy the courts will invoke the merger doctrine to deny copyright protection to any expression of the idea.

Closely related to the doctrine of merger is the doctrine of thin copyright protection. Courts will afford thin copyright protection to the expression of an idea when there are only a limited number of ways of expressing the idea. The difference between merger and thin protection is that merger applies when there are only a very small number of ways (perhaps only one way) of expressing an idea, and results in a denial of copyright protection altogether. Thin protection occurs when there are enough different ways to express the idea that merger does not apply, but still the number of different ways of expressing the idea is sufficiently limited that “thicker” protection of the expression would threaten to unduly tie up the idea itself. When a court says that it will afford a copyrighted work only thin protection, what it means is that it will only find infringement by an unauthorized copy of the work that is identical, or at least very nearly identical, to the copyrighted work.

As stated by Judge Kozinski:

If there’s a wide range of expression (for example, there are gazillions of ways to make an aliens-attack movie), then copyright protection is “broad” [editor’s note, i.e., “thick”] and a work will infringe if it’s “substantially similar” to the copyrighted work. If there’s only a narrow range of expression (for example, there are only so many ways to paint a red bouncy ball on blank canvas), then copyright protection is “thin” and a work must be “virtually identical” to infringe.⁵

Some examples help illustrate this principle. A book in the Harry Potter series would receive relatively thick/broad protection, since there are a vast number of different ways of expressing the underlying ideas in these books, e.g., a school for young wizards and witches. The copyright in a Harry Potter book could be infringed by another book that is quite different in the details, but nonetheless deemed substantially similar by a court. This would be an example of non-literal infringement, which is discussed later in this casebook, along with the “substantial similarity” standard used in assessing copyright infringement.

On the other hand, a copyrighted database of factual information will typically be afforded only thin protection, if a court concludes that there are only a limited number of ways of expressing the underlying idea, i.e., the factual information. As a consequence of thin protection, a court would only find the copyrighted database to be infringed by a database presenting the factual information in an identical (or near identical) manner. This is basically the scenario invoked by the Supreme Court in Feist, which the reader is encouraged to revisit at this point to review the Supreme Court’s discussion of thin protection in that case. Other examples of subject matter likely to be afforded thin protection would be a recipe or the rules for a contest.

The doctrines of thin protection and merger, and their role in enforcing the idea-expression dichotomy, are illustrated in the following cases.

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Some things to consider when reading Morrissey:

1. The court’s invocation of the idea-expression dichotomy to find that the plaintiff’s description of the rules of its “sweepstakes” contest is not copyrightable. The court does not use the word “idea,” but that is what it is getting at when it holds that the “substance” of the contest is not copyrightable.
2. Although the court does not use the word “thin” protection, that is what it’s getting at when it refers to “the principle of a stringent standard for showing infringement which some courts apply when the subject matter involved admits of little variation in form of expression.”
3. The court does not use the word “merger,” but that was the basis of its decision, and to this day Morrissey is considered to be one of the seminal examples of a court applying the merger doctrine. Take note of the court’s discussion of the policy underlying the merger doctrine.

Morrissey v. Procter & Gamble Co.

379 F.2d 675 (1st Cir. 1967)

ALDRICH, Chief Judge.

This is an appeal from a summary judgment for the defendant. The plaintiff, Morrissey, is the copyright owner of a set of rules for a sales promotional contest of the ‘sweepstakes’ type involving the social security numbers of the participants. Plaintiff alleges that the defendant, Procter & Gamble Company, infringed, by copying, almost precisely, Rule 1. In its motion for summary judgment defendant denies that plaintiff’s Rule 1 is copyrightable material. The district court held for the defendant.

[As a preliminary matter,] we recite plaintiff’s Rule 1, and defendant’s Rule 1, the italicizing in the latter being ours to note the defendant’s variations or changes.

Plaintiff’s Rule:

1. Entrants should print name, address and social security number on a boxtop, or a plain paper. Entries must be accompanied by * * * boxtop or by plain paper on which the name * * * is copied from any source. Official rules are explained on * * * packages or leaflets obtained from dealer. If you do not have a social security number you may use the name and number of any member of your immediate family living with you. Only the person named on the entry will be deemed an entrant and may qualify for prize.

Use the correct social security number belonging to the person named on entry * * * wrong number will be disqualified.

Defendant’s Rule:

1. Entrants should print name, address and Social Security number on a Tide boxtop, or on (a) plain paper. Entries must be accompanied by Tide boxtop (any size) or by plain paper on which the name ‘Tide’ is copied from any source. Official rules are available on Tide Sweepstakes packages, or on leaflets at Tide dealers, or you can send a stamped, self-addressed envelope to: Tide ‘Shopping Fling’ Sweepstakes, P.O. Box 4459, Chicago 77, Illinois.

If you do not have a Social Security number, you may use the name and number of any member of your immediate family living with you. Only the person named on the entry will be deemed an entrant and may qualify for a prize.

Use the correct Social Security number, belonging to the person named on the entry- wrong numbers will be disqualified.

The district court took the position that since the substance of the contest was not copyrightable, which is unquestionably correct, Baker v. Selden, 101 U.S. 99 (1879), and the substance was relatively simple, it must follow that plaintiff’s rule sprung directly from the substance and ‘contains no original creative authorship.’ This does not follow. Copyright attaches to form of expression, and defendant’s own proof established that there was more than one way of expressing even this simple substance. Nor, in view of the almost precise similarity of the two rules, could defendant successfully invoke the principle of a stringent standard for showing infringement which some courts apply when the subject matter involved admits of little variation in form of expression.⁶

Nonetheless, we must hold for the defendant. When the uncopyrightable subject matter is very narrow, so that the topic necessarily requires, if not only one form of expression, at best only a limited number, to permit copyrighting would mean that a party or parties, by copyrighting a mere handful of forms, could exhaust all possibilities of future use of the substance. In such circumstances it does not seem accurate to say that any particular form of expression comes from the subject matter. However, it is necessary to say that the subject matter would be appropriated by permitting the copyrighting of its expression. We cannot recognize copyright as a game of chess in which the public can be checkmated.

Upon examination the matters embraced in Rule 1 are so straightforward and simple that we find this limiting principle to be applicable. Furthermore, its operation need not await an attempt to copyright all possible forms. It cannot be only the last form of expression which is to be condemned, as completing defendant’s exclusion from the substance. Rather, in these circumstances, we hold that copyright does not extend to the subject matter at all, and plaintiff cannot complain even if his particular expression was deliberately adopted.

Affirmed.

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Check Your Understanding – Morrissey

Question 1. The defendant in Morrissey prevailed by successfully invoking this doctrine of copyright law.

Some things to consider when reading Satava:

1. The court’s invocation of the idea-expression dichotomy to find that the plaintiff’s jellyfish sculptures are only eligible for thin copyright protection.
2. The court’s discussion of the “standard elements,” or “scenes a faire” doctrine.
3. The basis of the court’s determination of non-infringement.
4. How valuable the thin copyright protection afforded to the sculptures by the court is, and whether it restricts others from creating similar sculptures.

Satava v. Lowry

323 F.3d 805 (9th Cir. 2003)

GOULD, Circuit Judge.

In the Copyright Act, Congress sought to benefit the public by encouraging artists’ creative expression. Congress carefully drew the contours of copyright protection to achieve this goal. It granted artists the exclusive right to the original expression in their works, thereby giving them a financial incentive to create works to enrich our culture. But it denied artists the exclusive right to ideas and standard elements in their works, thereby preventing them from monopolizing what rightfully belongs to the public. In this case, we must locate the faint line between unprotected idea and original expression in the context of realistic animal sculpture. We must decide whether an artist’s lifelike glass-in-glass sculptures of jellyfish are protectable by copyright. Because we conclude that the sculptures are composed of unprotectable ideas and standard elements, and also that the combination of those unprotectable elements is unprotectable, we reverse the judgment of the district court.

I

Plaintiff Richard Satava is a glass artist from California. In the late 1980s, Satava was inspired by the jellyfish display at an aquarium. He began experimenting with jellyfish sculptures in the glass-in-glass medium and, in 1990, began selling glass-in-glass jellyfish sculptures. The sculptures sold well, and Satava made more of them. By 2002, Satava was designing and creating about three hundred jellyfish sculptures each month. Satava’s sculptures are sold in galleries and gift shops in forty states, and they sell for hundreds or thousands of dollars, depending on size. Satava has registered several of his works with the Register of Copyrights.

Satava describes his sculptures as “vertically oriented, colorful, fanciful jellyfish with tendril-like tentacles and a rounded bell encased in an outer layer of rounded clear glass that is bulbous at the top and tapering toward the bottom to form roughly a bullet shape, with the jellyfish portion of the sculpture filling almost the entire volume of the outer, clearglass shroud.” Satava’s jellyfish appear lifelike. They resemble the pelagia colorata that live in the Pacific Ocean:

​

During the 1990s, defendant Christopher Lowry, a glass artist from Hawaii, also began making glass-in-glass jellyfish sculptures. Lowry’s sculptures look like Satava’s, and many people confuse them:

 ​

In Hawaii, Satava’s sculptures have appeared in tourist brochures and art magazines. The sculptures are sold in sixteen galleries and gift shops, and they appear in many store windows. Lowry admits he saw a picture of Satava’s jellyfish sculptures in American Craft magazine in 1996. And he admits he examined a Satava jellyfish sculpture that a customer brought him for repair in 1997.

Glass-in-glass sculpture is a centuries-old art form that consists of a glass sculpture inside a second glass layer, commonly called the shroud. The artist creates an inner glass sculpture and then dips it into molten glass, encasing it in a solid outer glass shroud. The shroud is malleable before it cools, and the artist can manipulate it into any shape he or she desires.

Satava filed suit against Lowry accusing him of copyright infringement. Satava requested, and the district court granted, a preliminary injunction, enjoining Lowry from making sculptures that resemble Satava’s. Lowry appealed to us.

II

We hold that the district court based its decision on an erroneous legal standard, so we reverse.

Copyright protection is available for “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 102(a). Copyright protection does not, however, “extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery….” 17 U.S.C. § 102(b).

Any copyrighted expression must be “original.” Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). The originality requirement mandates that objective “facts” and ideas are not copyrightable. Similarly, expressions that are standard, stock, or common to a particular subject matter or medium are not protectable under copyright law.⁷

It follows from these principles that no copyright protection may be afforded to the idea of producing a glass-in-glass jellyfish sculpture or to elements of expression that naturally follow from the idea of such a sculpture. See Aliotti v. R. Dakin & Co., 831 F.2d 898, 901 (9th Cir.1987) (“No copyright protection may be afforded to the idea of producing stuffed dinosaur toys or to elements of expression that necessarily follow from the idea of such dolls.”). Satava may not prevent others from copying aspects of his sculptures resulting from either jellyfish physiology or from their depiction in the glass-in-glass medium.

Satava may not prevent others from depicting jellyfish with tendril-like tentacles or rounded bells, because many jellyfish possess those body parts. He may not prevent others from depicting jellyfish in bright colors, because many jellyfish are brightly colored. He may not prevent others from depicting jellyfish swimming vertically, because jellyfish swim vertically in nature and often are depicted swimming vertically. See id. at 901 n. 1 (noting that a Tyrannosaurus stuffed animal’s open mouth was not an element protected by copyright because Tyrannosaurus “was a carnivore and is commonly pictured with its mouth open”).

Satava may not prevent others from depicting jellyfish within a clear outer layer of glass, because clear glass is the most appropriate setting for an aquatic animal. See id. (noting that a Pterodactyl stuffed animal’s depiction as a mobile hanging from the ceiling was not protectable because Pterodactyl “was a winged creature and thus is appropriate for such treatment”). He may not prevent others from depicting jellyfish “almost filling the entire volume” of the outer glass shroud, because such proportion is standard in glass-in-glass sculpture. And he may not prevent others from tapering the shape of their shrouds, because that shape is standard in glass-in-glass sculpture.

Satava’s glass-in-glass jellyfish sculptures, though beautiful, combine several unprotectable ideas and standard elements. These elements are part of the public domain. They are the common property of all, and Satava may not use copyright law to seize them for his exclusive use.

It is true, of course, that a combination of unprotectable elements may qualify for copyright protection. But it is not true that any combination of unprotectable elements automatically qualifies for copyright protection. Our case law suggests, and we hold today, that a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.

The combination of unprotectable elements in Satava’s sculpture falls short of this standard. The selection of the clear glass, oblong shroud, bright colors, proportion, vertical orientation, and stereotyped jellyfish form, considered together, lacks the quantum of originality needed to merit copyright protection. These elements are so commonplace in glass-in-glass sculpture and so typical of jellyfish physiology that to recognize copyright protection in their combination effectively would give Satava a monopoly on lifelike glass-in-glass sculptures of single jellyfish with vertical tentacles. Because the quantum of originality Satava added in combining these standard and stereotyped elements must be considered “trivial” under our case law, Satava cannot prevent other artists from combining them.

We do not mean to suggest that Satava has added nothing copyrightable to his jellyfish sculptures. He has made some copyrightable contributions: the distinctive curls of particular tendrils; the arrangement of certain hues; the unique shape of jellyfishes’ bells. To the extent that these and other artistic choices were not governed by jellyfish physiology or the glass-in-glass medium, they are original elements that Satava theoretically may protect through copyright law. Satava’s copyright on these original elements (or their combination) is “thin,” however, comprising no more than his original contribution to ideas already in the public domain. Stated another way, Satava may prevent others from copying the original features he contributed, but he may not prevent others from copying elements of expression that nature displays for all observers, or that the glass-in-glass medium suggests to all sculptors. Satava possesses a thin copyright that protects against only virtually identical copying.

We do not hold that realistic depictions of live animals cannot be protected by copyright. We recognize, however, that the scope of copyright protection in such works is narrow. Nature gives us ideas of animals in their natural surroundings: an eagle with talons extended to snatch a mouse; a grizzly bear clutching a salmon between its teeth; a butterfly emerging from its cocoon; a wolf howling at the full moon; a jellyfish swimming through tropical waters. These ideas, first expressed by nature, are the common heritage of humankind, and no artist may use copyright law to prevent others from depicting them.

An artist may, however, protect the original expression he or she contributes to these ideas. An artist may vary the pose, attitude, gesture, muscle structure, facial expression, coat, or texture of animal. An artist may vary the background, lighting, or perspective. Such variations, if original, may earn copyright protection. Because Satava’s jellyfish sculptures contain few variations of this type, the scope of his copyright is narrow.

We do not mean to short-change the legitimate need of creative artists to protect their original works. After all, copyright law achieves its high purpose of enriching our culture by giving artists a financial incentive to create. But we must be careful in copyright cases not to cheat the public domain. Only by vigorously policing the line between idea and expression can we ensure both that artists receive due reward for their original creations and that proper latitude is granted other artists to make use of ideas that properly belong to us all.

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Check Your Understanding – Satava

Question 1. True or false: The court’s decision in Satava leaves the plaintiff with no copyright protection for his sculptures.

Some things to consider when reading Silvertop Assocs.:

1. This decision applies the “merger” and “scenes a faire” doctrines to a full-body banana costume.
2. Other aspects of this decision addressing the useful article doctrine appear later in this casebook.

Silvertop Assocs. Inc. v. Kangaroo Mfg. Inc.

931 F.3d 215 (3d Cir. 2019)

HARDIMAN, Circuit Judge.

This interlocutory appeal involves the validity of a copyright in a full-body banana costume. Appellant Kangaroo Manufacturing Inc. concedes that the banana costume it manufactures and sells is substantially similar to the banana costume created and sold by Appellee Rasta Imposta. See infra Appendix A. We hold that, in combination, the Rasta costume’s non-utilitarian, sculptural features are copyrightable.

* * *

Kangaroo invokes two copyright doctrines—merger and scenes a faire—to argue the banana costume is ineligible for protection. Both arguments address the same question: whether copyrighting the banana costume would effectively monopolize an underlying idea, either directly or through elements necessary to that idea’s expression.

Because Congress has excluded “any idea, procedure, process, system, method of operation, concept, principle, or discovery” from copyright protection, 17 U.S.C. § 102(b), courts deny such protection when a work’s underlying idea can effectively be expressed in only one way. Courts term this rare occurrence “merger,” and find it only when “there are no or few other ways of expressing a particular idea.”

Here, copyrighting Rasta’s banana costume would not effectively monopolize the underlying idea because there are many other ways to make a costume resemble a banana. Indeed, Rasta provided over 20 non-infringing examples. As the District Court observed, one can easily distinguish those examples from Rasta’s costume based on the shape, curvature, tips, tips’ color, overall color, length, width, lining, texture, and material. We agree and hold the merger doctrine does not apply here.

Courts also exclude scenes a faire from copyright protection, which include elements standard, stock, or common to a particular topic or that necessarily follow from a common theme or setting. The doctrine covers those elements of a work that necessarily result from external factors inherent in the subject matter of the work.” As with merger, the scenes a faire doctrine seeks to curb copyright’s potential to allow monopolizing an underlying idea—via features that are so common or necessary to that idea’s expression that copyrighting them effectively copyrights the idea itself. E.g., Mitel, 124 F.3d 1366, 1374–75 (10^th Cir. 1997)(citing foot chases as a scene a faire of police fiction).

Here too, copyrighting the banana costume’s non-utilitarian features in combination would not threaten such monopolization. Kangaroo points to no specific feature that necessarily results from the costume’s subject matter (a banana). Although a banana costume is likely to be yellow, it could be any shade of yellow—or green or brown for that matter. Although a banana costume is likely to be curved, it need not be—let alone in any particular manner. And although a banana costume is likely to have ends that resemble a natural banana’s, those tips need not look like Rasta’s black tips (in color, shape, or size). Again, the record includes over 20 examples of banana costumes that Rasta concedes would be non-infringing. The scenes a faire doctrine does not apply here either.

* * *

Because Rasta established a reasonable likelihood that it could prove entitlement to protection for the veritable fruits of its intellectual labor, we will affirm.

APPENDIX A

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Check Your Understanding – Silvertop Assocs.

Socratic Script

How was the idea-expression dichotomy applied by the courts in Silvertop Assocs. and Lanard Toys to arrive at the opposite result with respect to separability?

Can you rationalize the divergent outcomes with respect to the copyrightability of a banana-shaped costume versus a pencil-shaped chalk holder?

Some things to consider when reading CDN:

1. This case appeared earlier in the book in the section on originality. In the part of the decision excerpted below, the court finds that merger does not preclude copyright protection for CDN’s wholesale coin prices.
2. What does the court identify as the idea in this case? And what does it identify as the expression?

CDN Inc. v. Kapes

197 F.3d 1256 (9th Cir. 1999)

O’SCANNLAIN, Circuit Judge.

[Editor’s note: The facts of this case, and the court’s decision finding CDN’s wholesale coin prices copyrightable, appear earlier in this casebook.]

IV

In his defense, Kapes argues that a price is an idea of the value of the product, which can be expressed only using a number. Thus the idea and the expression merge and neither qualifies for copyright protection. This is the doctrine of merger. In order to protect the free exchange of ideas, courts have long held that when expression is essential to conveying the idea, expression will also be unprotected. But accepting the principle in all cases, including on these facts, would eviscerate the protection of the copyright law. Cf. CCC, 44 F.3d at 70 (noting that every compilation represents an idea, which in order to be conveyed accurately must be conveyed only by its expression).

Conceptually, the problem arises because the critical distinction between “idea” and “expression” is difficult to draw. We have endorsed Judge Hand’s abstractions formulation laid out in Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930). The formulation recognizes that every work can be described at varying levels of abstraction, and the higher the level of abstraction copied, the less likely this taking will be infringement of a copyright.

As Judge Hand noted, the difference between idea and expression is one of degree. This circuit has held that “[t]he guiding consideration in drawing the line is the preservation of the balance between competition and protection reflected in the patent and copyright laws.” Rosenthal, 446 F.2d at 742. In this case, the prices fall on the expression side of the line. CDN does not, nor could it, claim protection for its idea of creating a wholesale price guide, but it can use the copyright laws to protect its idea of what those prices are. Drawing this line preserves the balance between competition and protection: it allows CDN’s competitors to create their own price guides and thus furthers competition, but protects CDN’s creation, thus giving it an incentive to create such a guide. The doctrine of merger does not bar copyright protection in this case.

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Check Your Understanding – CDN

Question 1. In the excerpt from CDN provided above, what rationale did the court provide for its rejection of the defendant’s argument that the plaintiff’s wholesale coin prices constituted “ideas,” as opposed to the expression of those ideas?

Some things to consider when reading Kregos:

1. The fact that Kregos is not asserting copyright protection of the actual statistics, but rather “the particular selection of categories of statistics appearing on his form.”
2. The court’s application of Feist to Krego’s pitching forms, and the question of whether the plaintiff’s selection of categories of baseball statistics was sufficiently original. Feist came out shortly before Kregos was decided.
3. The court’s comparison of the facts in this case with the Second Circuit’s earlier decisions in Eckes and FII.
4. The significance of the fact that the district court decided the case on a motion for summary judgment.
5. The court’s application of Judge Hand’s “abstractions test” from Nichols, and the significance of the judges’ different definitions of the “idea” of the pitching forms.
6. The fact that the case ultimately hinges on the judges’ determination of where to draw the line between idea and expression when the purported copyright is based on the author’s selection and arrangement of facts.
7. The significance of the court’s observation that Kregos “does not present his selection of nine statistics as a method of predicting the outcome of baseball games.”
8. The court’s discussion of “the continuum spanning matters of pure taste to matters of predictive analysis,” and the potential policy concerns raised by the hypothetical “doctor who publishes a list of symptoms that he believes provides a helpful diagnosis of a disease.”
9. Although the court does not use the term “thin protection,” that is what it is getting at in subsection I.D, i.e., “Extent of Protection.”
10. An example of one of the plaintiff’s baseball pitching forms, taken from an appendix of the district court decision, is presented below.

Kregos v. Associated Press

937 F.2d 700 (2d Cir. 1991)

JON O. NEWMAN, Circuit Judge:

The primary issue on this appeal is whether the creator of a baseball pitching form is entitled to a copyright. The appeal requires us to consider the extent to which the copyright law protects a compiler of information. George L. Kregos appeals from the April 30, 1990, judgment of the District Court for the Southern District of New York (Gerard L. Goettel, Judge) dismissing on motion for summary judgment his copyright claims against the Associated Press (“AP”) and Sports Features Syndicate, Inc. (“Sports Features”). We conclude that Kregos is entitled to a trial on his copyright claim, though the available relief may be extremely limited.

Facts

The facts are fully set forth in Judge Goettel’s thorough opinion, 731 F.Supp. 113 (S.D.N.Y.1990). The reader’s attention is particularly called to the appendices to that opinion, which set forth Kregos’ pitching form and the allegedly infringing forms. Id. at 122–24 (Appx. 1–4). Kregos distributes to newspapers a pitching form, discussed in detail below, that displays information concerning the past performances of the opposing pitchers scheduled to start each day’s baseball games. The form at issue in this case, first distributed in 1983, is a redesign of an earlier form developed by Kregos in the 1970’s. Kregos registered his form with the Copyright Office and obtained a copyright. Though the form, as distributed to subscribing newspapers, includes statistics, the controversy in this case concerns only Kregos’ rights to the form without each day’s data, in other words, his rights to the particular selection of categories of statistics appearing on his form.

In 1984, AP began publishing a pitching form provided by Sports Features. The AP’s 1984 form was virtually identical to Kregos’ 1983 form. AP and Sports Features changed their form in 1986 in certain respects, which are discussed in part I(d) below.

Kregos’ 1983 form lists four items of information about each day’s games—the teams, the starting pitchers, the game time, and the betting odds, and then lists nine items of information about each pitcher’s past performance, grouped into three categories. Since there can be no claim of a protectable interest in the categories of information concerning each day’s game, we confine our attention to the categories of information concerning the pitchers’ past performances. For convenience, we will identify each performance item by a number from 1 to 9 and use that number whenever referring to the same item in someone else’s form.

The first category in Kregos’ 1983 form, performance during the entire season, comprises two items—won/lost record (1) and earned run average (2). The second category, performance during the entire season against the opposing team at the site of the game, comprises three items—won/lost record (3), innings pitched (4), and earned run average (5). The third category, performance in the last three starts, comprises four items—won/lost record (6), innings pitched (7), earned run average (8), and men on base average (9). This last item is the average total of hits and walks given up by a pitcher per nine innings of pitching.

It is undisputed that prior to Kregos’ 1983 form, no form had listed the same nine items collected in his form. It is also undisputed that some but not all of the nine items of information had previously appeared in other forms.

District Court decision. The District Court granted summary judgment for the defendants on Kregos’ copyright claim. The Court ruled that Kregos lacked a copyrightable interest in his pitching form on three grounds. First, the Court concluded that Kregos’ pitching form was insufficiently original in its selection of statistics to warrant a copyright as a compilation. Second, the Court concluded that, in view of the limited space available for displaying pitching forms in newspapers, the possible variations in selections of pitching statistics were so limited that the idea of a pitching form had merged into its expression.

Discussion

I. Copyright Claim

A. Copyright for a Compilation of Facts. The basic principles concerning copyright protection for compilations of facts are clear and have recently been authoritatively restated in the Supreme Court’s decision rejecting copyright protection for telephone book white pages. Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991) (“Feist ”).

As to compilations of facts, independent creation as to selection and arrangement will not assure copyright protection; the requirement of minimal creativity becomes an important ingredient of the test for copyright entitlement.

Prior to Feist, we had applied these principles to require some minimal level of creativity in two fairly recent cases that illustrate compilations of facts one of which is and one of which is not entitled to a copyright, Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir.1984), and Financial Information, Inc. v. Moody’s Investors Service, 808 F.2d 204 (2d Cir.1986) ( “FII ”). In Eckes we upheld a District Court’s finding, made after trial, that a selection of 5,000 out of 18,000 baseball cards to be considered “premium” was entitled to a copyright. In FII we upheld a District Court’s finding, also made after trial, that the listing of five items of information concerning municipal bond calls lacked sufficient selection to warrant a copyright; in almost all instances, the five items for the various bond issues had all appeared in “tombstone” ads, and only “minor additional research” was needed to complete the listings.

Kregos’ pitching form presents a compilation of facts that falls between the extremes illustrated by Eckes and FII. Kregos has selected nine items of information concerning a pitcher’s performance. The universe of known facts available only from inspection of box scores of prior games is considerably greater than nine, though perhaps not as great as the quantity of 18,000 cards in Eckes. For example, Kregos could have selected past performances from any number of recent starts, instead of using the three most recent starts. And he could have chosen to include strikeouts, walks, balks, or hit batters. By consulting play-by-play accounts of games, instead of box scores, he could have counted various items such as the number of innings in which the side was retired in order, or in which no runner advanced as far as second base. Or he could have focused on performance under pressure by computing the percentage of innings in which a runner scored out of total innings in which a runner reached second base, and he could have chosen to calculate this statistic for any number of recent starts. In short, there are at least scores of available statistics about pitching performance available to be calculated from the underlying data and therefore thousands of combinations of data that a selector can choose to include in a pitching form.

It cannot be said as a matter of law that in selecting the nine items for his pitching form out of the universe of available data, Kregos has failed to display enough selectivity to satisfy the requirement of originality. Whether in selecting his combination of nine items he has displayed the requisite degree of creativity is a somewhat closer question. Plainly he has done better than the compiler in FII who “selected” only the five facts about bond calls already grouped together in nearly all tombstone ads. Judge Goettel was persuaded to rule against Kregos, at least in part, because “most of the statistics … had been established in previously existing forms.” But that observation is largely irrelevant to the issue of whether Kregos’ selection of statistics displays sufficient creativity to warrant a copyright. Nearly all copyrighted compilations of facts convey facts that have been published elsewhere. Each of the cards selected for the “premium” category in Eckes had previously been published. To hold a valid copyright, a compiler of facts need not be a discoverer of facts. Indeed, any discovered fact, or, in Kregos’ case, any newly devised statistic, would not, in and of itself, be eligible for copyright protection.

The prior publication of some of the statistics on Kregos’ form might indicate, however, that his selection is not sufficiently different from those grouped in earlier publications to satisfy minimal creativity. That conclusion cannot rest on just the prior appearance of the statistics Kregos chose to use, but might rest on the prior appearance of a selection of those statistics that either is identical to Kregos’ selection or varies from his only to a trivial degree. In that event, the first issue would be whether Kregos could demonstrate originality, i.e., persuade the trier that he had not copied from the similar selection. Even if Kregos could satisfy that burden, the issue would then arise as to whether the previously published selections of statistics had reached the point where it could be said that Kregos’ selection was insufficiently creative, or in the words of Feist, “entirely typical,” “garden-variety,” or “obvious.” In view of the variety of pitching forms disclosed in the record, it is unlikely that such a conclusion could be reached and certainly could not be reached as a matter of law.

But these issues are not even likely to arise because the record discloses no prior pitching form with more than three of the pitching performance statistics that are included in Kregos’ selection of nine statistics. There is no prior form that is identical to his nor one from which his varies in only a trivial degree. The validity of his copyright in a compilation of facts cannot be rejected as a matter of law for lack of the requisite originality and creativity.

B. Idea/Expression Merger. The fundamental copyright principle that only the expression of an idea and not the idea itself is protectable has produced a corollary maxim that even expression is not protected in those instances where there is only one or so few ways of expressing an idea that protection of the expression would effectively accord protection to the idea itself.

In one sense, every compilation of facts can be considered to represent a merger of an idea with its expression. Every compiler of facts has the idea that his particular selection of facts is useful. If the compiler’s idea is identified at that low level of abstraction, then the idea would always merge into the compiler’s expression of it. Under that approach, there could never be a copyrightable compilation of facts. However, if the idea is formulated at a level of abstraction above the particular selection of facts the compiler has made, then merger of idea and expression is not automatic. Even with an idea formulated at a somewhat high level of abstraction, circumstances might occur where the realistic availability of differing expressions is so drastically limited that the idea can be said to have merged in its expression.

In this case, Judge Goettel understood Kregos’ idea to be “to publish an outcome predictive pitching form.” In dissent, Judge Sweet contends that Kregos’ idea is that the nine statistics he has selected are the most significant ones to consider when attempting to predict the outcome of a baseball game. Unquestionably, if that is the idea for purposes of merger analysis, then merger of that idea and its expression has occurred—by definition.

Though there is room for fair debate as to the identification of the pertinent idea whenever merger analysis is applied to a compilation of facts, we think the “idea” in this case is the one as formulated by Judge Goettel. Kregos has not devised a system that he seeks to withdraw from the public domain by virtue of copyright. He does not present his selection of nine statistics as a method of predicting the outcome of baseball games. His idea is that of “an outcome predictive pitching form” in the general sense that it selects the facts that he thinks newspaper readers should consider in making their own predictions of outcomes. He does not purport to weight the nine statistics, much less provide a method for comparing the aggregate value of one pitcher’s statistics against that of the opposing pitcher in order to predict an outcome or even its probability of occurring. He has not devised a system, as had the deviser of a bookkeeping system in Baker v. Selden. He has compiled facts, or at least categories of facts.

Though formulating the idea as “an outcome predictive pitching form,” Judge Goettel applied the merger doctrine, concluding that the idea of selecting outcome predictive statistics to rate pitching performance was capable of expression in only a very limited number of ways.

As the various pitching forms in the record indicate, the past performances of baseball pitchers can be measured by a variety of statistics, as can the past performances of race horses. Kregos’ selection of categories includes three statistics for the pitcher’s current season performance against the day’s opponent at the site of the day’s game; other charts select “at site” performance against the opponent during the prior season, and some select performance against the opponent over the pitcher’s career, both home and away. Some charts include average men on base per nine innings; others do not. The data for most recent starts could include whatever number of games the compiler thought pertinent. These variations alone (and there are others) abundantly indicate that there are a sufficient number of ways of expressing the idea of rating pitchers’ performances to preclude a ruling that the idea has merged into its expression.

In reaching this conclusion, we confess to some unease because of the risk that protection of selections of data, or, as in this case, categories of data, have the potential for according protection to ideas. Our concern may be illustrated by an example of a doctor who publishes a list of symptoms that he believes provides a helpful diagnosis of a disease. There might be many combinations of symptoms that others could select for the same purpose, but a substantial question would nonetheless arise as to whether that doctor could obtain a copyright in his list, based on the originality of his selection. If the idea that the doctor is deemed to be expressing is the general idea that the disease in question can be identified by observable symptoms, then the idea might not merge into the doctor’s particular expression of that idea by his selection of symptoms. That general idea might remain capable of many other expressions. But it is arguable that the doctor has conceived a more precise idea—namely, the idea that his selection of symptoms is a useful identifier of the disease. That more limited idea can be expressed only by his selection of symptoms, and therefore might be said to have merged into his expression. Thus, as with the idea/expression dichotomy itself, see Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930) (Judge Learned Hand’s formulation of the “abstractions test”), application of the doctrine of an idea merging with its expression depends on the level of abstraction at which the idea is formulated.

As long as selections of facts involve matters of taste and personal opinion, there is no serious risk that withholding the merger doctrine will extend protection to an idea. That was surely the case with the selection of premium baseball cards in Eckes.  However, where a selection of data is the first step in an analysis that yields a precise result or even a better-than-average probability of some result, protecting the “expression” of the selection would clearly risk protecting the idea of the analysis.

Kregos’ pitching form is part way along the continuum spanning matters of pure taste to matters of predictive analysis. He is doing more than simply saying that he holds the opinion that his nine performance characteristics are the most pertinent. He implies that his selections have some utility in predicting outcomes. On the other hand, he has not gone so far as to provide a system for weighing the combined value of the nine characteristics for each of two opposing pitchers and determining a probability as to which is more likely to win. Like the compilers of horse racing statistics, Kregos has been content to select categories of data that he obviously believes have some predictive power, but has left it to all sports page readers to make their own judgments as to the likely outcomes from the sets of data he has selected. His “idea,” for purposes of the merger doctrine, remains the general idea that statistics can be used to assess pitching performance rather than the precise idea that his selection yields a determinable probability of outcome. Since there are various ways of expressing that general idea, the merger doctrine need not be applied to assure that the idea will remain in the public domain.

D. Extent of Protection. Our ruling that Kregos’ copyright claim survives defendants’ motion for summary judgment does not, of course, mean that he will necessarily obtain much of a victory. “Even if a work qualifies as a copyrightable compilation, it receives only limited protection…. [C]opyright protects only the elements that owe their origin to the compiler—the selection, coordination, and arrangement of facts.” Feist, 111 S.Ct. at 1294. If Kregos prevails at trial on the factual issues of originality and creativity, he will be entitled to protection only against infringement of the protectable features of his form. Only the selection of statistics might be entitled to protection. We agree entirely with Judge Goettel that nothing in Kregos’ arrangement of the selected statistics displays the requisite creativity. As to the arrangement, Kregos’ form is surely a “garden-variety” pitching form. The statistics are organized into the “obvious” arrangement of columns, and the form follows the pattern of most other forms: the statistics are organized into three groups, first the statistics about each pitcher’s performance for the season, then the statistics about the pitcher’s performance against the day’s opponent, and finally the statistics concerning the pitcher’s recent starts.

Even as to the selection of statistics, if Kregos establishes entitlement to protection, he will prevail only against other forms that can be said to copy his selection. That would appear to be true of the AP’s 1984 form, which, as Judge Goettel noted, is “identical in virtually every sense to plaintiff’s form.” Whether it is also true of the AP’s current form, revised in 1986, is far less certain. That form contains six of Kregos’ nine items (1, 2, 6, 7, 8, 9). It also includes four items that Kregos does not have. Three of these items concern performance against the day’s opposing team—won-lost record, innings pitched, and earned run average; though these three statistics appear on Kregos’ form, the AP’s 1986 form shows data for the current season both home and away, whereas Kregos’ form shows data for the pitcher’s current season at the site of that day’s game. The fourth item on the AP’s 1986 form and not on Kregos’ form shows the team’s record in games started by that day’s pitcher during the season.

The reason for doubting that the AP’s 1986 form infringes Kregos’ form arises from the same consideration that supports Kregos’ claim to a copyright. Kregos can obtain a copyright by displaying the requisite creativity in his selection of statistics. But if someone else displays the requisite creativity by making a selection that differs in more than a trivial degree, Kregos cannot complain.⁸ Kregos contends that the AP’s 1986 form makes insignificant changes from its 1984 form. But Kregos cannot have it both ways. If his decision to select, in the category of performance against the opposing team, statistics for the pitcher’s current season at the site of today’s game displays, in combination with his other selections, enough creativity to merit copyright protection, then a competitor’s decision to select in that same category performance statistics for the pitcher’s season performance both home and away may well insulate the competitor from a claim of infringement. Thus, though issues remain to be explored before any determination can be made, it may well be that Kregos will have a valid claim only as to the AP’s 1984 form.

II

Conclusion

The judgment of the District Court is reversed and remanded with respect to the copyright claim.

SWEET, District Judge, concurring in part and dissenting in part:

While I concur in the majority’s conclusion that Kregos has displayed sufficient creativity to satisfy the Feist Publications standard for copyrightability, I would affirm the district court’s grant of summary judgment because I conclude that Kregos’ idea here has merged into his expression.

1. Kregos’ Idea

I agree with the majority that Kregos displayed at least some creativity in selecting his nine statistics for his pitching form, and thereby satisfied the creativity standards of Feist Publications. However, I believe that this selection was not simply an expression of the idea that this information might be of interest to sports fans, but instead represented his very specific idea that these nine statistics were the most significant ones to consider when attempting to predict the outcome of a baseball game. I respectfully disagree with the majority’s statement that Kregos’ idea was the abstract “general idea that statistics can be used to assess pitching performance,” because while I agree that the application of the merger doctrine will always depend on the level at which the idea is formulated, I do not believe that the majority has set forth convincing grounds for its determination as to the idea at issue here.

I have difficulty distinguishing between Kregos’ work and the example of a doctor’s identification of the symptoms to use in diagnosing a disease, which the majority suggests would be unprotectible because of merger. In making this suggestion, the majority eschews the notion that the doctor’s idea is the “general idea that the disease in question can be identified by observable symptoms” in favor of the more precise formulation that the idea is that “his selection of symptoms is a useful identifier of the disease.” This reasoning would appear to apply equally well to Kregos’ case. In both cases, the creators have conceived very precise “ideas” concerning the significant data which ought to be considered in predicting a given result, and those ideas can be expressed only by identifying the relevant data. Of course, there is the obvious distinction that a system for making medical diagnoses is more socially beneficial than system for estimating sports odds, but such a distinction does not offer a basis for denying copyright protection to one while granting it to the other.

In my opinion, Kregos’ form constitutes an explanation of his preferred system of handicapping baseball games, and he seeks to use his copyright here to prevent others from practicing that system.

The majority characterizes Kregos’ work as dealing with “matters of taste and opinion,” and therefore compares it to the list of baseball card prices in Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir.1984) rather than to the hypothetical doctor’s diagnostic chart. In my view, both the pitching form and the diagnostic chart are expressions intended to assist in predicting particular outcomes, with the data intended to be used as a basis for that prediction. In contrast, neither the card price list nor the social register is associated with any defined event or result, and the information reported—the card prices—is itself the primary feature or attraction.

Therefore, because I believe that the district court was correct in holding that Kregos’ form is uncopyrightable because his idea has merged with his expression of that idea, I respectfully dissent.

__________

Check Your Understanding – Kregos

Question 1. What was the point of disagreement between the majority and dissent in Kregos?

Question 2. True or false: The distinction between what constitutes an unprotectable “idea” and what qualifies as a copyrightable “expression” of that idea is often difficult to draw in close cases.

Socratic Script

Some things to consider when reading Oracle v. Google:

1. The basis for the district court’s determination that the declaring code and the structure, sequence, and organization of Oracle’s API packages were not copyrightable.
2. The basis for the Ninth Circuit’s determination that the declaring code and the structure, sequence, and organization of Oracle’s API packages were entitled to copyright protection.
3. The Ninth Circuit’s rejection of the “bright line approaches” of Lotus v. Borland, a decision that appears earlier in this casebook, and Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222 (3^rd Cir. 1986).
4. The discussion of the “short phrases” doctrine.

Oracle Am., Inc. v. Google Inc.

750 F.3d 1339 (Fed. Cir. 2014)

O’MALLEY, Circuit Judge.

This copyright dispute involves 37 packages of computer source code. The parties have often referred to these groups of computer programs, individually or collectively, as “application programming interfaces,” or API packages, but it is their content, not their name, that matters. The predecessor of Oracle America, Inc. (“Oracle”) wrote these and other API packages in the Java programming language, and Oracle licenses them on various terms for others to use. Many software developers use the Java language, as well as Oracle’s API packages, to write applications (commonly referred to as “apps”) for desktop and laptop computers, tablets, smartphones, and other devices.

Oracle filed suit against Google Inc. (“Google”) in the United States District Court for the Northern District of California, alleging that Google’s Android mobile operating system infringed Oracle’s patents and copyrights. [The district court found that the replicated elements of the 37 API packages—including the declaring code and the structure, sequence, and organization—were not subject to copyright protection, and entered final judgment in favor of Google on Oracle’s copyright infringement claims.]

Because we conclude that the declaring code and the structure, sequence, and organization of the API packages are entitled to copyright protection, we reverse the district court’s copyrightability determination.

BACKGROUND

On May 31, 2012, the district court issued the primary decision at issue in this appeal, finding that the replicated elements of the Java API packages—including the declarations and their structure, sequence, and organization—were not copyrightable. As to the declaring code, the court concluded that “there is only one way to write” it, and thus the “merger doctrine bars anyone from claiming exclusive copyright ownership of that expression.” The court further found that the declaring code was not protectable because “names and short phrases cannot be copyrighted.”

Although it acknowledged that the overall structure of Oracle’s API packages is creative, original, and “resembles a taxonomy,” the district court found that it “is nevertheless a command structure, a system or method of operation—a long hierarchy of over six thousand commands to carry out pre-assigned functions”—that is not entitled to copyright protection under Section 102(b) of the Copyright Act. The court dismissed Oracle’s copyright claims, concluding that “the particular elements replicated by Google were free for all to use under the Copyright Act.”

DISCUSSION

It is undisputed that Google copied 7,000 lines of declaring code and generally replicated the overall structure, sequence, and organization of Oracle’s 37 Java API packages. The central question before us is whether these elements of the Java platform are entitled to copyright protection. The district court concluded that they are not, and Oracle challenges that determination on appeal.

For the reasons that follow, we conclude that the declaring code and the structure, sequence, and organization of the 37 Java API packages are entitled to copyright protection.

A. Copyrightability

The Copyright Act provides protection to “original works of authorship fixed in any tangible medium of expression,” including “literary works.” 17 U.S.C. § 102(a). It is undisputed that computer programs—defined in the Copyright Act as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result,” 17 U.S.C. § 101—can be subject to copyright protection as “literary works.”

It is well established that copyright protection can extend to both literal and non-literal elements of a computer program. The literal elements of a computer program are the source code and object code. Courts have defined source code as the spelled-out program commands that humans can read. Object code refers to the binary language comprised of zeros and ones through which the computer directly receives its instructions.

The non-literal components of a computer program include, among other things, the program’s sequence, structure, and organization, as well as the program’s user interface. As discussed below, whether the non-literal elements of a program are protected depends on whether, on the particular facts of each case, the component in question qualifies as an expression of an idea, or an idea itself.

In this case, Oracle claims copyright protection with respect to both: (1) literal elements of its API packages—the 7,000 lines of declaring source code; and (2) non-literal elements—the structure, sequence, and organization of each of the 37 Java API packages.

In assessing copyrightability, the district court is required to ferret out apparent expressive aspects of a work and then separate protectable expression from unprotectable ideas, facts, processes, and methods of operation. Of course, as with many things, in defining this task, the devil is in the details. Circuit courts have struggled with, and disagree over, the tests to be employed when attempting to draw the line between what is protectable expression and what is not. Compare Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3^rd Cir. 1986) (everything not necessary to the purpose or function of a work is expression), with Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807, 815 (1^st Cir. 1995)(methods of operation are means by which a user operates something and any words used to effectuate that operation are unprotected expression). When assessing whether the non-literal elements of a computer program constitute protectable expression, the Ninth Circuit has endorsed an “abstraction-filtration-comparison” test formulated by the Second Circuit and expressly adopted by several other circuits. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1525 (9th Cir. 1992) (“In our view, in light of the essentially utilitarian nature of computer programs, the Second Circuit’s approach is an appropriate one.”). This test rejects the notion that anything that performs a function is necessarily uncopyrightable. See Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1372 (10th Cir. 1997)(rejecting the Lotus court’s formulation, and concluding that, “although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection.”). And it also rejects as flawed the Whelan assumption that, once any separable idea can be identified in a computer program everything else must be protectable expression, on grounds that more than one idea may be embodied in any particular program. Computer Assoc. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 705-06 (2d Cir. 1992).

Thus, this test eschews bright line approaches and requires a more nuanced assessment of the particular program at issue in order to determine what expression is protectable and infringed. As the Second Circuit explains, this test has three steps. In the abstraction step, the court first breaks down the allegedly infringed program into its constituent structural parts. In the filtration step, the court sifts out all non-protectable material, including ideas and expression that is necessarily incidental to those ideas. In the final step, the court compares the remaining creative expression with the allegedly infringing program.

In the second step, the court is first to assess whether the expression is original to the programmer or author. The court must then determine whether the particular inclusion of any level of abstraction is dictated by considerations of efficiency, required by factors already external to the program itself, or taken from the public domain—all of which would render the expression unprotectable. These conclusions are to be informed by traditional copyright principles of originality, merger, and scenes a faire.

While the trial court mentioned the abstraction-filtration-comparison test when describing the development of relevant law, it did not purport to actually apply that test. Instead, it moved directly to application of familiar principles of copyright law when assessing the copyrightability of the declaring code and interpreted Section 102(b) to preclude copyrightability for any functional element “essential for interoperability” “regardless of its form.”

Oracle argues that its Java API packages are entitled to protection under the Copyright Act because they are expressive and could have been written and organized in any number of ways to achieve the same functions. Specifically, Oracle argues that the district court erred when it: (1) concluded that each line of declaring code is uncopyrightable because the idea and expression have merged; (2) found the declaring code uncopyrightable because it employs short phrases; and (3) found all aspects of the SSO devoid of protection as a “method of operation” under 17 U.S.C. § 102(b). For the reasons explained below, we agree with Oracle on each point.

1. Declaring Source Code

The district court specifically found that the declaring code was not entitled to copyright protection under the merger and short phrases doctrines. We address each in turn.

a. Merger

Under the merger doctrine, a court will not protect a copyrighted work from infringement if the idea contained therein can be expressed in only one way. Satava v. Lowry, 323 F.3d 805, 812 n. 5 (9th Cir. 2003). For computer programs, this means that when specific parts of the code, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to infringement. We have recognized, however, applying Ninth Circuit law, that the “unique arrangement of computer program expression … does not merge with the process so long as alternate expressions are available.” Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 840 (Fed. Cir. 1992).

In Atari, for example, Nintendo designed a program—the 10NES—to prevent its video game system from accepting unauthorized game cartridges. Nintendo chose arbitrary programming instructions and arranged them in a unique sequence to create a purely arbitrary data stream which serves as the key to unlock the NES. Because Nintendo produced expert testimony showing a multitude of different ways to generate a data stream which unlocks the NES console, we concluded that Nintendo’s specific choice of code did not merge with the process.

Here, the district court found that, “no matter how creative or imaginative a Java method specification may be, the entire world is entitled to use the same method specification (inputs, outputs, parameters) so long as the line-by-line implementations are different.” Because the district court found that there was only one way to write the declaring code for each of the Java packages, it concluded that “the merger doctrine bars anyone from claiming exclusive copyright ownership” of it. Accordingly, the court held there could be “no copyright violation in using the identical declarations.”

On appeal, Oracle argues that the district court: (1) misapplied the merger doctrine; and (2) failed to focus its analysis on the options available to the original author. We agree with Oracle on both points. First, we agree that merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them. The evidence showed that Oracle had unlimited options as to the selection and arrangement of the 7000 lines Google copied. Because alternative expressions were available, there is no merger.

We further find that the district court erred in focusing its merger analysis on the options available to Google at the time of copying. It is well-established that copyrightability and the scope of protectable activity are to be evaluated at the time of creation, not at the time of infringement. The focus is, therefore, on the options that were available to Sun/Oracle at the time it created the API packages. As the court acknowledged, nothing prevented Google from writing its own declaring code, along with its own implementing code, to achieve the same result. In such circumstances, the chosen expression simply does not merge with the idea being expressed.

b. Short Phrases

The district court also found that Oracle’s declaring code consists of uncopyrightable short phrases. Specifically, the court concluded that, “while the Android method and class names could have been different from the names of their counterparts in Java and still have worked, copyright protection never extends to names or short phrases as a matter of law.”

The district court is correct that “[w]ords and short phrases such as names, titles, and slogans” are not subject to copyright protection. 37 C.F.R. § 202.1(a). The court failed to recognize, however, that the relevant question for copyrightability purposes is not whether the work at issue contains short phrases—as literary works often do—but, rather, whether those phrases are creative. And, by dissecting the individual lines of declaring code at issue into short phrases, the district court further failed to recognize that an original combination of elements can be copyrightable.

By analogy, the opening of Charles Dickens’ A Tale of Two Cities is nothing but a string of short phrases. Yet no one could contend that this portion of Dickens’ work is unworthy of copyright protection because it can be broken into those shorter constituent components. The question is not whether a short phrase or series of short phrases can be extracted from the work, but whether the manner in which they are used or strung together exhibits creativity.

Although the district court apparently focused on individual lines of code, Oracle is not seeking copyright protection for a specific short phrase or word. Instead, the portion of declaring code at issue is 7,000 lines, and Google’s own “Java guru” conceded that there can be “creativity and artistry even in a single method declaration.” Because Oracle exercised creativity in the selection and arrangement of the method declarations when it created the API packages and wrote the relevant declaring code, they contain protectable expression that is entitled to copyright protection. Accordingly, we conclude that the district court erred in applying the short phrases doctrine to find the declaring code not copyrightable.

2. The Structure, Sequence, and Organization of the API Packages

The district court found that the SSO of the Java API packages is creative and original, but nevertheless held that it is a “system or method of operation … and, therefore, cannot be copyrighted” under 17 U.S.C. § 102(b). In reaching this conclusion, the district court seems to have relied upon language contained in a First Circuit decision: Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807 (1st Cir.1995), aff’d without opinion by an equally divided Supreme Court, 516 U.S. 233 (1996).

In Lotus, it was undisputed that the defendant copied the menu command hierarchy and interface from Lotus 1–2–3, a computer spreadsheet program that enables users to perform accounting functions electronically on a computer. The menu command hierarchy referred to a series of commands—such as “Copy,” “Print,” and “Quit”—which were arranged into more than 50 menus and submenus. Although the defendant did not copy any Lotus source code, it copied the menu command hierarchy into its rival program. The question before the court was whether a computer menu command hierarchy is copyrightable subject matter.

Although it accepted the district court’s finding that Lotus developers made some expressive choices in selecting and arranging the command terms, the First Circuit found that the command hierarchy was not copyrightable because, among other things, it was a “method of operation” under Section 102(b). In reaching this conclusion, the court defined a “method of operation” as “the means by which a person operates something, whether it be a car, a food processor, or a computer.” Because the Lotus menu command hierarchy provided “the means by which users control and operate Lotus 1–2–3,” it was deemed unprotectable. For example, if users wanted to copy material, they would use the “Copy” command and the command terms would tell the computer what to do. According to the Lotus court, the “fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a ‘method of operation.’ ” The court further indicated that, “[i]f specific words are essential to operating something, then they are part of a ‘method of operation’ and, as such, are unprotectable.”

On appeal, Oracle argues that the district court’s reliance on Lotus is misplaced because it is distinguishable on its facts and is inconsistent with Ninth Circuit law. We agree. First, while the defendant in Lotus did not copy any of the underlying code, Google concedes that it copied portions of Oracle’s declaring source code verbatim. Second, the Lotus court found that the commands at issue there (copy, print, etc.) were not creative, but it is undisputed here that the declaring code and the structure and organization of the API packages are both creative and original. Finally, while the court in Lotus found the commands at issue were “essential to operating” the system, it is undisputed that—other than perhaps as to the three core packages—Google did not need to copy the structure, sequence, and organization of the Java API packages to write programs in the Java language.

More importantly, however, the Ninth Circuit has not adopted the court’s “method of operation” reasoning in Lotus, and we conclude that it is inconsistent with binding precedent. Specifically, we find that Lotus is inconsistent with Ninth Circuit case law recognizing that the structure, sequence, and organization of a computer program is eligible for copyright protection where it qualifies as an expression of an idea, rather than the idea itself. And, while the court in Lotus held “that expression that is part of a ‘method of operation’ cannot be copyrighted,” 49 F.3d at 818, this court—applying Ninth Circuit law—reached the exact opposite conclusion, finding that copyright protects “the expression of [a] process or method,” Atari, 975 F.2d at 839.

We find, moreover, that the hard and fast rule set down in Lotus and employed by the district court here—i.e., that elements which perform a function can never be copyrightable—is at odds with the Ninth Circuit’s endorsement of the abstraction-filtration-comparison analysis discussed earlier. As the Tenth Circuit concluded in expressly rejecting the Lotus “method of operation” analysis, in favor of the Second Circuit’s abstraction-filtration-comparison test, “although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection.” Mitel, 124 F.3d at 1372. Specifically, the court found that Section 102(b) “does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation at a higher level of abstraction.”

Other courts agree that components of a program that can be characterized as a “method of operation” may nevertheless be copyrightable. For example, the Third Circuit rejected a defendant’s argument that operating system programs are “per se” uncopyrightable because an operating system is a “method of operation” for a computer. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1250–52 (3d Cir.1983). The court distinguished between the “method which instructs the computer to perform its operating functions” and “the instructions themselves,” and found that the instructions were copyrightable. In its analysis, the court noted: “[t]hat the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.” The court focused “on whether the idea is capable of various modes of expression” and indicated that, “[i]f other programs can be written or created which perform the same function as [i]n Apple’s operating system program, then that program is an expression of the idea and hence copyrightable.” Notably, no other circuit has adopted the First Circuit’s “method of operation” analysis.

Courts have likewise found that classifying a work as a “system” does not preclude copyright for the particular expression of that system. See Toro Co. v. R & R Prods. Co., 787 F.2d 1208, 1212 (8th Cir.1986) (rejecting the district court’s decision that “appellant’s parts numbering system is not copyrightable because it is a ‘system’ ” and indicating that Section 102(b) does not preclude protection for the “particular expression” of that system); see also Am. Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d 977, 980 (7th Cir.1997) (“A dictionary cannot be called a ‘system’ just because new novels are written using words, all of which appear in the dictionary. Nor is word-processing software a ‘system’ just because it has a command structure for producing paragraphs.”).

Here, the district court recognized that the SSO “resembles a taxonomy,” but found that “it is nevertheless a command structure, a system or method of operation—a long hierarchy of over six thousand commands to carry out pre-assigned functions.” In other words, the court concluded that, although the SSO is expressive, it is not copyrightable because it is also functional. The problem with the district court’s approach is that computer programs are by definition functional—they are all designed to accomplish some task. Indeed, the statutory definition of “computer program” acknowledges that they function “to bring about a certain result.” See 17 U.S.C. § 101 (defining a “computer program” as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result”). If we were to accept the district court’s suggestion that a computer program is uncopyrightable simply because it “carr[ies] out pre-assigned functions,” no computer program is protectable. That result contradicts Congress’s express intent to provide copyright protection to computer programs, as well as binding Ninth Circuit case law finding computer programs copyrightable, despite their utilitarian or functional purpose. Though the trial court did add the caveat that it “does not hold that the structure, sequence and organization of all computer programs may be stolen,” it is hard to see how its method of operation analysis could lead to any other conclusion.

While it does not appear that the Ninth Circuit has addressed the precise issue, we conclude that a set of commands to instruct a computer to carry out desired operations may contain expression that is eligible for copyright protection. We agree with Oracle that, under Ninth Circuit law, an original work—even one that serves a function—is entitled to copyright protection as long as the author had multiple ways to express the underlying idea. Section 102(b) does not, as Google seems to suggest, automatically deny copyright protection to elements of a computer program that are functional. Instead, as noted, Section 102(b) codifies the idea/expression dichotomy and the legislative history confirms that, among other things, Section 102(b) was “intended to make clear that the expression adopted by the programmer is the copyrightable element in a computer program.” H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5670. Therefore, even if an element directs a computer to perform operations, the court must nevertheless determine whether it contains any separable expression entitled to protection.

As the district court acknowledged, Google could have structured Android differently and could have chosen different ways to express and implement the functionality that it copied. Given the court’s findings that the SSO is original and creative, and that the declaring code could have been written and organized in any number of ways and still have achieved the same functions, we conclude that Section 102(b) does not bar the packages from copyright protection just because they also perform functions.

__________

Check Your Understanding – Oracle

Question 1. What elements of Oracle’s API packages were found to be copyrightable?

Question 2. Which of these tests does the Ninth Circuit endorse in Oracle v. Google for assessing the copyrightability of computer programs and drawing a line between what is protectable expression and what is not?

Question 3. Which of the following did the Ninth Circuit hold in Oracle v. Google?

C. Government Works

Section 105(a) of the Copyright Act (17 U.S.C. § 105(a)) provides:

Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.

Section 105(a) is an exception to the “work made for hire” doctrine, pursuant to which the “a work prepared by an employee within the scope of his or her employment” is generally treated as a “work made for hire.”⁹ The ownership of copyright in a “work made for hire” vests initially with the employer, not with the creator(s).¹⁰ The work made for hire doctrine is addressed later in this casebook.

Although § 105(a) precludes copyright protection for works of the federal government, this prohibition does not prevent the government from holding copyrights that it acquires from others. Furthermore, there is no statutory prohibition against state or local governments holding copyright in their own works. However, as explained in the following decision, the Supreme Court has concluded, pursuant to its government edicts doctrine, that “copyright does not vest in works that are (1) created by judges and legislators (2) in the course of their judicial and legislative duties.”

__________

Some things to consider when reading Georgia v. Public.Resource.Org:

1. The source of the government edicts doctrine. Is it required by statute, or the Constitution?
2. The Court’s application and expansion of the government edicts doctrine in this case.
3. The “work made for hire” doctrine comes up in this case—the contours of this doctrine will be addressed extensively in the next section of this book. Why was it relevant in this case?
4. The practical and policy implications of this decision.

Georgia v. Public.Resource.Org, Inc.

140 S. Ct. 1498 (2020)

Chief Justice ROBERTS delivered the opinion of the Court.

The Copyright Act grants potent, decades-long monopoly protection for “original works of authorship.” 17 U.S.C. § 102(a). The question in this case is whether that protection extends to the annotations contained in Georgia’s official annotated code.

We hold that it does not. Over a century ago, we recognized a limitation on copyright protection for certain government work product, rooted in the Copyright Act’s “authorship” requirement. Under what has been dubbed the government edicts doctrine, officials empowered to speak with the force of law cannot be the authors of—and therefore cannot copyright—the works they create in the course of their official duties.

We have previously applied that doctrine to hold that non-binding, explanatory legal materials are not copyrightable when created by judges who possess the authority to make and interpret the law. See Banks v. Manchester, 128 U.S. 244 (1888). We now recognize that the same logic applies to non-binding, explanatory legal materials created by a legislative body vested with the authority to make law. Because Georgia’s annotations are authored by an arm of the legislature in the course of its legislative duties, the government edicts doctrine puts them outside the reach of copyright protection.

I

A

The State of Georgia has one official code—the “Official Code of Georgia Annotated,” or OCGA. The first page of each volume of the OCGA boasts the State’s official seal and announces to readers that it is “Published Under Authority of the State.”

The OCGA includes the text of every Georgia statute currently in force, as well as various non-binding supplementary materials. At issue in this case is a set of annotations that appear beneath each statutory provision. The annotations generally include summaries of judicial decisions applying a given provision, summaries of any pertinent opinions of the state attorney general, and a list of related law review articles and similar reference materials. In addition, the annotations often include editor’s notes that provide information about the origins of the statutory text, such as whether it derives from a particular judicial decision or resembles an older provision that has been construed by Georgia courts.

The OCGA is assembled by a state entity called the Code Revision Commission. In 1977, the Georgia Legislature established the Commission to recodify Georgia law for the first time in decades. The Commission was (and remains) tasked with consolidating disparate bills into a single Code for reenactment by the legislature and contracting with a third party to produce the annotations. A majority of the Commission’s 15 members must be members of the Georgia Senate or House of Representatives. The Commission receives funding through appropriations “provided for the legislative branch of state government.” And it is staffed by the Office of Legislative Counsel, which is obligated by statute to provide services “for the legislative branch of government.” Under the Georgia Constitution, the Commission’s role in compiling the statutory text and accompanying annotations falls “within the sphere of legislative authority.” Harrison Co. v. Code Revision Comm’n, 244 Ga. 325 (1979).

Each year, the Commission submits its proposed statutory text and accompanying annotations to the legislature for approval. The legislature then votes to do three things: (1) “enact[ ]” the “statutory portion of the codification of Georgia laws”; (2) “merge[ ]” the statutory portion “with [the] annotations”; and (3) “publish[ ]” the final merged product “by authority of the state” as “the ‘Official Code of Georgia Annotated.’”

The annotations in the current OCGA were prepared in the first instance by Matthew Bender & Co., Inc., a division of the LexisNexis Group, pursuant to a work-for-hire agreement with the Commission. The agreement between Lexis and the Commission states that any copyright in the OCGA vests exclusively in “the State of Georgia, acting through the Commission.” Lexis and its army of researchers perform the lion’s share of the work in drafting the annotations, but the Commission supervises that work and specifies what the annotations must include in exacting detail. Under the agreement, Lexis enjoys the exclusive right to publish, distribute, and sell the OCGA. In exchange, Lexis has agreed to limit the price it may charge for the OCGA and to make an unannotated version of the statutory text available to the public online for free. A hard copy of the complete OCGA currently retails for $412.00.

B

Public.Resource.Org (PRO) is a nonprofit organization that aims to facilitate public access to government records and legal materials. Without permission, PRO posted a digital version of the OCGA on various websites, where it could be downloaded by the public without charge. PRO also distributed copies of the OCGA to various organizations and Georgia officials.

In response, the Commission sent PRO several cease-and-desist letters asserting that PRO’s actions constituted unlawful copyright infringement. When PRO refused to halt its distribution activities, the Commission sued PRO on behalf of the Georgia Legislature and the State of Georgia for copyright infringement. The Commission limited its assertion of copyright to the annotations described above; it did not claim copyright in the statutory text or numbering. PRO counterclaimed, seeking a declaratory judgment that the entire OCGA, including the annotations, fell in the public domain.

The District Court sided with the Commission[.]

The Eleventh Circuit reversed[.]

We granted certiorari.

II

We hold that the annotations in Georgia’s Official Code are ineligible for copyright protection, though for reasons distinct from those relied on by the Court of Appeals. A careful examination of our government edicts precedents reveals a straightforward rule based on the identity of the author. Under the government edicts doctrine, judges—and, we now confirm, legislators—may not be considered the “authors” of the works they produce in the course of their official duties as judges and legislators. That rule applies regardless of whether a given material carries the force of law. And it applies to the annotations here because they are authored by an arm of the legislature in the course of its official duties.

A

We begin with precedent. The government edicts doctrine traces back to a trio of cases decided in the 19th century. In this Court’s first copyright case, Wheaton v. Peters, 8 Pet. 591, 8 L.Ed. 1055 (1834), the Court’s third Reporter of Decisions, Wheaton, sued the fourth, Peters, unsuccessfully asserting a copyright interest in the Justices’ opinions. In Wheaton’s view, the opinions “must have belonged to some one” because “they were new, original,” and much more “elaborate” than law or custom required. Wheaton argued that the Justices were the authors and had assigned their ownership interests to him through a tacit “gift.” The Court unanimously rejected that argument, concluding that “no reporter has or can have any copyright in the written opinions delivered by this court” and that “the judges thereof cannot confer on any reporter any such right.”

That conclusion apparently seemed too obvious to adorn with further explanation, but the Court provided one a half century later in Banks v. Manchester, 128 U.S. 244 (1888). That case concerned whether Wheaton’s state-court counterpart, the official reporter of the Ohio Supreme Court, held a copyright in the judges’ opinions and several non-binding explanatory materials prepared by the judges. The Court concluded that he did not, explaining that “the judge who, in his judicial capacity, prepares the opinion or decision, the statement of the case and the syllabus or head note” cannot “be regarded as their author or their proprietor, in the sense of [the Copyright Act].” Pursuant to “a judicial consensus” dating back to Wheaton, judges could not assert copyright in “whatever work they perform in their capacity as judges.” Rather, “the whole work done by the judges constitutes the authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all.”

In a companion case decided later that Term, Callaghan v. Myers, 128 U.S. 617 (1888), the Court identified an important limiting principle. As in Wheaton and Banks, the Court rejected the claim that an official reporter held a copyright interest in the judges’ opinions. But, resolving an issue not addressed in Wheaton and Banks, the Court upheld the reporter’s copyright interest in several explanatory materials that the reporter had created himself: headnotes, syllabi, tables of contents, and the like. Although these works mirrored the judge-made materials rejected in Banks, they came from an author who had no authority to speak with the force of law. Because the reporter was not a judge, he was free to “obtain a copyright” for the materials that were “the result of his own intellectual labor.”

These cases establish a straightforward rule: Because judges are vested with the authority to make and interpret the law, they cannot be the “author” of the works they prepare “in the discharge of their judicial duties.” This rule applies both to binding works (such as opinions) and to non-binding works (such as headnotes and syllabi).  It does not apply, however, to works created by government officials (or private parties) who lack the authority to make or interpret the law, such as court reporters.

The animating principle behind this rule is that no one can own the law. Every citizen is presumed to know the law, and “it needs no argument to show … that all should have free access” to its contents. Our cases give effect to that principle in the copyright context through construction of the statutory term “author.” Rather than attempting to catalog the materials that constitute “the law,” the doctrine bars the officials responsible for creating the law from being considered the “author[s]” of “whatever work they perform in their capacity” as lawmakers. Because these officials are generally empowered to make and interpret law, their “whole work” is deemed part of the “authentic exposition and interpretation of the law” and must be “free for publication to all.”

If judges, acting as judges, cannot be “authors” because of their authority to make and interpret the law, it follows that legislators, acting as legislators, cannot be either. Courts have thus long understood the government edicts doctrine to apply to legislative materials. See, e.g., Nash, 142 Mass. at 35 (judicial opinions and statutes stand “on substantially the same footing” for purposes of the government edicts doctrine); Howell v. Miller, 91 F. 129, 130–131, 137–138 (CA6 1898) (Harlan, J., Circuit Justice, joined by then-Circuit Judge Taft) (analyzing statutes and supplementary materials under Banks and Callaghan and concluding that the materials were copyrightable because they were prepared by a private compiler).

Moreover, just as the doctrine applies to “whatever work [judges] perform in their capacity as judges,” Banks, 128 U.S., at 253, it applies to whatever work legislators perform in their capacity as legislators. That of course includes final legislation, but it also includes explanatory and procedural materials legislators create in the discharge of their legislative duties. In the same way that judges cannot be the authors of their headnotes and syllabi, legislators cannot be the authors of (for example) their floor statements, committee reports, and proposed bills. These materials are part of the “whole work done by [legislators],” so they must be “free for publication to all.”

Under our precedents, therefore, copyright does not vest in works that are (1) created by judges and legislators (2) in the course of their judicial and legislative duties.

B

1

Applying that framework, Georgia’s annotations are not copyrightable. The first step is to examine whether their purported author qualifies as a legislator.

As we have explained, the annotations were prepared in the first instance by a private company (Lexis) pursuant to a work-for-hire agreement with Georgia’s Code Revision Commission. The Copyright Act therefore deems the Commission the sole “author” of the work. 17 U.S.C. § 201(b). Although Lexis expends considerable effort preparing the annotations, for purposes of copyright that labor redounds to the Commission as the statutory author. Georgia agrees that the author is the Commission.

The Commission is not identical to the Georgia Legislature, but functions as an arm of it for the purpose of producing the annotations. The Commission is created by the legislature, for the legislature, and consists largely of legislators. The Commission receives funding and staff designated by law for the legislative branch. Significantly, the annotations the Commission creates are approved by the legislature before being “merged” with the statutory text and published in the official code alongside that text at the legislature’s direction.

2

The second step is to determine whether the Commission creates the annotations in the “discharge” of its legislative “duties.” Banks, 128 U.S. at 253. It does. Although the annotations are not enacted into law through bicameralism and presentment, the Commission’s preparation of the annotations is under Georgia law an act of “legislative authority,” and the annotations provide commentary and resources that the legislature has deemed relevant to understanding its laws. Georgia and Justice GINSBURG emphasize that the annotations do not purport to provide authoritative explanations of the law and largely summarize other materials, such as judicial decisions and law review articles. But that does not take them outside the exercise of legislative duty by the Commission and legislature. Just as we have held that the “statement of the case and the syllabus or head note” prepared by judges fall within the “work they perform in their capacity as judges,” so too annotations published by legislators alongside the statutory text fall within the work legislators perform in their capacity as legislators.

In light of the Commission’s role as an adjunct to the legislature and the fact that the Commission authors the annotations in the course of its legislative responsibilities, the annotations in Georgia’s Official Code fall within the government edicts doctrine and are not copyrightable.

III

Georgia appeals to the overall purpose of the Copyright Act to promote the creation and dissemination of creative works. Georgia submits that, without copyright protection, Georgia and many other States will be unable to induce private parties like Lexis to assist in preparing affordable annotated codes for widespread distribution. That appeal to copyright policy, however, is addressed to the wrong forum. As Georgia acknowledges, “[I]t is generally for Congress, not the courts, to decide how best to pursue the Copyright Clause’s objectives.” Eldred v. Ashcroft, 537 U.S. 186, 212 (2003). And that principle requires adherence to precedent when, as here, we have construed the statutory text and “tossed [the ball] into Congress’s court, for acceptance or not as that branch elects.” Kimble, 576 U.S. at 456.

Turning to our government edicts precedents, Georgia insists that they can and should be read to focus exclusively on whether a particular work has “the force of law.” Justice THOMAS appears to endorse the same view. But that framing has multiple flaws.

Most obviously, it cannot be squared with the reasoning or results of our cases—especially Banks. Banks, following Wheaton and the “judicial consensus” it inspired, denied copyright protection to judicial opinions without excepting concurrences and dissents that carry no legal force. As every judge learns the hard way, “comments in [a] dissenting opinion” about legal principles and precedents “are just that: comments in a dissenting opinion.” Railroad Retirement Bd. v. Fritz, 449 U.S. 166, 177, n. 10 (1980). Yet such comments are covered by the government edicts doctrine because they come from an official with authority to make and interpret the law.

Indeed, Banks went even further and withheld copyright protection from headnotes and syllabi produced by judges. Surely these supplementary materials do not have the force of law, yet they are covered by the doctrine. The simplest explanation is the one Banks provided: These non-binding works are not copyrightable because of who creates them—judges acting in their judicial capacity.

The same goes for non-binding legislative materials produced by legislative bodies acting in a legislative capacity. There is a broad array of such works ranging from floor statements to proposed bills to committee reports. Under the logic of Georgia’s “force of law” test, States would own such materials and could charge the public for access to them.

Georgia minimizes the OCGA annotations as non-binding and non-authoritative, but that description undersells their practical significance. Imagine a Georgia citizen interested in learning his legal rights and duties. If he reads the economy-class version of the Georgia Code available online, he will see laws requiring political candidates to pay hefty qualification fees (with no indigency exception), criminalizing broad categories of consensual sexual conduct, and exempting certain key evidence in criminal trials from standard evidentiary limitations—with no hint that important aspects of those laws have been held unconstitutional by the Georgia Supreme Court. See OCGA §§ 21–2–131, 16–6–2, 16–6–18, 16–15–9 (available at www.legis.ga.gov). Meanwhile, first-class readers with access to the annotations will be assured that these laws are, in crucial respects, unenforceable relics that the legislature has not bothered to narrow or repeal. See §§ 21–2–131, 16–6–2, 16–6–18, 16–15–9 (available at https://store.lexisnexis.com/products/official – code – of – georgia – annotated – skuSKU6647 for $412.00).

If everything short of statutes and opinions were copyrightable, then States would be free to offer a whole range of premium legal works for those who can afford the extra benefit. A State could monetize its entire suite of legislative history. With today’s digital tools, States might even launch a subscription or pay-per-law service.

There is no need to assume inventive or nefarious behavior for these concerns to become a reality. Unlike other forms of intellectual property, copyright protection is both instant and automatic. It vests as soon as a work is captured in a tangible form, triggering a panoply of exclusive rights that can last over a century. 17 U.S.C. §§ 102, 106, 302. If Georgia were correct, then unless a State took the affirmative step of transferring its copyrights to the public domain, all of its judges’ and legislators’ non-binding legal works would be copyrighted. And citizens, attorneys, nonprofits, and private research companies would have to cease all copying, distribution, and display of those works or risk severe and potentially criminal penalties. §§ 501–506. Some affected parties might be willing to roll the dice with a potential fair use defense. But that defense, designed to accommodate First Amendment concerns, is notoriously fact sensitive and often cannot be resolved without a trial. Cf. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 552, 560–561 (1985). The less bold among us would have to think twice before using official legal works that illuminate the law we are all presumed to know and understand.

Thankfully, there is a clear path forward that avoids these concerns—the one we are already on. Instead of examining whether given material carries “the force of law,” we ask only whether the author of the work is a judge or a legislator. If so, then whatever work that judge or legislator produces in the course of his judicial or legislative duties is not copyrightable. That is the framework our precedents long ago established, and we adhere to those precedents today.

* * *

For the foregoing reasons, we affirm the judgment of the Eleventh Circuit.

__________

Check Your Understanding – Georgia v. PublicResource.org

Question 1. Which of these does the Court identify as the legal basis for the government edicts doctrine?

Question 2. What are the steps in determining whether the government edicts doctrine applies to a work?

Question 3. True or false: Although under the government edicts doctrine judges cannot copyright materials explaining, summarizing, or commenting on a judicial decision, a non-judge court reporter can.

D. The Useful Article Doctrine

The useful article doctrine imposes another important limitation on the scope of copyrightable subject matter. The doctrine only applies to works that, if copyrightable, would fall within the “pictorial, graphic, and sculptural works” (i.e., “PGS works”) category enumerated in § 102(a). PGS works are defined in § 101 of the Act as “includ[ing] 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.”

The statutory basis for the useful article doctrine can be found in § 101’s definition of PGS works, which goes on to state that ”[s]uch 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.”

The useful article comes into play when the creator of a useful article of manufacture, such as a belt buckle,¹¹ mannequin,¹² bicycle rack,¹³ or furniture,¹⁴ seeks copyright protection for the article of manufacture as a PGS work, based on the alleged original aesthetic expression embodied in the item. As stated in the § 101 definition, the design of a useful article can be copyrighted as a PGS work, but only if, and only to the extent that, the PGS features can be identified separately from, and are capable of existing independently of, the article’s utilitarian aspects.

The key concept in assessing the copyrightability of a useful article as a PGS work is separability—can the copyrightable, non-utilitarian attributes of the article be separated from its utilitarian attributes? If so, those non-utilitarian attributes can be copyrighted, but not the utilitarian attributes. If non-utilitarian and utilitarian attributes cannot be identified separately, then copyright protection for the article is precluded absolutely. This is the essence of the useful article doctrine.

In 1954, the Supreme Court addressed the question of whether the expressive attributes of a utilitarian article can be copyrighted in the following case. Note that the applicable copyright statute at the time specifically identified “works of art” and “reproductions of a work of art” as copyrightable subject matter—these categories of copyrightable subject matter are not mentioned in the 1976 Act.

Some things to consider when reading Mazer:

1. The Court’s rationale for rejecting the defendant’s argument that an otherwise copyrightable sculpture is rendered uncopyrightable when the sculpture is intended for use as a component of a useful article (in this case the base of a lamp).
2. The Court’s discussion of the relationship between design patents and copyright. Design patents basically provide intellectual property rights for the ornamental, nonfunctional design of a product.
3. The Court’s review of how the definition of copyrightable subject matter under the Copyright Acts has evolved over time.
4. The significance the Court attributes to the Copyright Office’s interpretation of the statute.
5. The Court’s reference to the utilitarian justification for copyright.
6. Whether you see any parallels between some of the statements made in Mazer with those made in Burrow-Giles and Bleistein.

Mazer v. Stein

347 U.S. 201 (1954)

REED, Justice.

This case involves the validity of copyrights obtained by respondents for statuettes of male and female dancing figures made of semivitreous china. The controversy centers around the fact that although copyrighted as “works of art,” the statuettes were intended for use and used as bases for table lamps, with electric wiring, sockets and lamp shades attached.

Petitioners in their petition for certiorari present a single question:

Can statuettes be protected in the United States by copyright when the copyright applicant intended primarily to use the statuettes in the form of lamp bases to be made and sold in quantity and carried the intentions into effect?

Stripped down to its essentials, the question presented is: Can a lamp manufacturer copyright his lamp bases?

The first paragraph accurately summarizes the issue. The last gives it a quirk that unjustifiably, we think, broadens the controversy. The case requires an answer, not as to a manufacturer’s right to register a lamp base but as to an artist’s right to copyright a work of art intended to be reproduced for lamp bases. As petitioners say in their brief, their contention “questions the validity of the copyright based upon the actions of respondents.” Petitioners question the validity of a copyright of a work of art for “mass” production. Their position is that a copyright does not cover industrial reproduction of the protected article.

[A] review of the development of copyright coverage will make clear the purpose of the Congress in its copyright legislation. In 1790 the First Congress conferred a copyright on ‘authors of any map, chart, book or books already printed’. Later, designing, engraving and etching were included; in 1831 musical composition; dramatic compositions in 1856; and photographs and negatives thereof in 1865.

The Act of 1870 defined copyrightable subject matter as:

* * * any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statute, statuary, and of models or designs intended to be perfected as works of the fine arts. (Emphasis supplied.)¹³

The italicized part added three-dimensional work of art to what had been protected previously. In 1909 Congress again enlarged the scope of the copyright statute. The new Act provided in s 4:

That the works for which copyright may be secured under this Act shall include all the writings of an author.

Some writers interpret this section as being coextensive with the constitutional grant, but the House Report, while inconclusive, indicates that it was “declaratory of existing law” only. Significant for our purposes was the deletion of the fine-arts clause of the 1870 Act. Verbal distinctions between purely aesthetic articles and useful works of art ended insofar as the statutory copyright language is concerned.

The practice of the Copyright Office, under the 1870 and 1874 Acts and before the 1909 Act, was to allow registration “as works of the fine arts” of articles of the same character as those of respondents now under challenge. The current pertinent regulation reads:

Works of art (Class G)—(a)—In General. This class includes works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and sculpture.

So we have a contemporaneous and long-continued construction of the statutes by the agency charged to administer them that would allow the registration of such a statuette as is in question here.

The successive acts, the legislative history of the 1909 Act and the practice of the Copyright Office unite to show that “works of art” and “reproductions of works of art” are terms that were intended by Congress to include the authority to copyright these statuettes. Individual perception of the beautiful is too varied a power to permit a narrow or rigid concept of art.

But petitioners assert that congressional enactment of the design patent laws should be interpreted as denying protection to artistic articles embodied or reproduced in manufactured articles.

As petitioner sees the effect of the design patent law:

If an industrial designer cannot satisfy the novelty requirements of the design patent laws, then his design as used on articles of manufacture can be copied by anyone.

Petitioner has furnished the Court a booklet of numerous design patents for statuettes, bases for table lamps and similar articles for manufacture, quite indistinguishable in type from the copyrighted statuettes here in issue. Petitioner urges that overlapping of patent and copyright legislation so as to give an author or inventor a choice between patents and copyrights should not be permitted. We assume petitioner takes the position that protection for a statuette for industrial use can only be obtained by patent, if any protection can be given.

As we have held the statuettes here involved copyrightable, we need not decide the question of their patentability. Though other courts have passed upon the issue as to whether allowance by the election of the author or patentee of one bars a grant of the other, we do not. We do hold that the patentability of the statuettes, fitted as lamps or unfitted, does not bar copyright as works of art. Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted. We should not so hold.

Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself. Thus, in Baker v. Selden, 101 U.S. 99, the Court held that a copyrighted book on a peculiar system of bookkeeping was not infringed by a similar book using a similar plan which achieved similar results where the alleged infringer made a different arrangement of the columns and used different headings. The copyright protects originality rather than novelty or invention—conferring only the sole right of multiplying copies. Absent copying there can be no infringement of copyright. Thus, respondents may not exclude others from using statuettes of human figures in table lamps; they may only prevent use of copies of their statuettes as such or as incorporated in some other article. The dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the invention of original and ornamental design for design patents. We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration. We do not read such a limitation into the copyright law.

The copyright law, like the patent statutes, makes reward to the owner a secondary consideration. However, it is intended definitely to grant valuable, enforceable rights to authors, publishers, etc., without burdensome requirements; to afford greater encouragement to the production of literary (or artistic) works of lasting benefit to the world.

The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in “Science and useful Arts.” Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered.

Affirmed.

DOUGLAS, Justice, concurring (in which Justice BLACK joins).

An important constitutional question underlies this case—a question which was stirred on oral argument but not treated in the briefs. It is whether these statuettes of dancing figures may be copyrighted.

…

The interests involved in the category of ‘works of art,’ as used in the copyright law, are considerable. The Copyright Office has supplied us with a long list of such articles which have been copyrighted—statuettes, book ends, clocks, lamps, door knockers, candlesticks, inkstands, chandeliers, piggy banks, sundials, salt and pepper shakers, fish bowls, casseroles, and ash trays. Perhaps these are all ‘writings’ in the constitutional sense. But to me, at least, they are not obviously so. It is time that we came to the problem full face. I would accordingly put the case down for reargument.

__________

After Mazer the lower courts struggled in applying the useful article doctrine, with the various circuits (and even individual judges) coming up with a variety of different tests for assessing whether the alleged expressive elements of a useful article were sufficiently separable from the utilitarian attributes of the article to qualify for copyright protection. The following case, Brandir, discusses a number of approaches that courts have taken in applying the useful article doctrine. It is important to note at the outset that the majority’s decision in Brandir was effectively overturned by the Supreme Court’s 2017 Star Athletica decision, which appears in this casebook immediately after Brandir. Nonetheless, this author believes that it is worth reading the decision because of its discussion and critique of various approaches for assessing the key question of separability, including a disagreement between the majority and dissenting judge. The subject matter of the dispute, often referred to as a ribbon bike rack, presents a particularly close case that undeniably straddles the line between “copyrightable works of applied art and uncopyrighted works of industrial design.”

Check Your Understanding – Mazer

Question 1. True or False: It is possible to obtain both patent and copyright protection for a single item.

Some things to consider when reading Brandir:

1. The various tests for conceptual separability described and critiqued by the court.
2. The majority’s rationale for adopting the test that it chooses to use in this case to assess separability.
3. The reason why the majority concluded that the bike rack at issue was uncopyrightable.
4. Whether the outcome might have been different if Brandir had merely adopted one of his original sculptures as a bicycle rack, without modifying it in order to address functional concerns.
5. Why the dissent rejects the majority’s approach, and what approach the dissent endorses.

Brandir Int’l, Inc. v. Cascade Pac. Lumber Co.

834 F.2d 1142 (2d Cir. 1987)

OAKES, Circuit Judge:

In passing the Copyright Act of 1976 Congress attempted to distinguish between protectable “works of applied art” and “industrial designs not subject to copyright protection.” The courts, however, have had difficulty framing tests by which the fine line establishing what is and what is not copyrightable can be drawn. Once again we are called upon to draw such a line, this time in a case involving the “RIBBON Rack,” a bicycle rack made of bent tubing that is said to have originated from a wire sculpture. (A photograph of the rack is contained in the appendix to this opinion.) We are also called upon to determine whether there is any trademark protection available to the manufacturer of the bicycle rack, appellant Brandir International, Inc. The Register of Copyright, named as a third-party defendant under the statute, 17 U.S.C. § 411, but electing not to appear, denied copyrightability. In the subsequent suit brought in the United States District Court for the Southern District of New York, Charles S. Haight, Jr., Judge, the district court granted summary judgment on both the copyright and trademark claims to defendant Cascade Pacific Lumber Co., d/b/a Columbia Cascade Co., manufacturer of a similar bicycle rack. We affirm as to the copyright claim, but reverse and remand as to the trademark claim.

Against the history of copyright protection well set out in the majority opinion in Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 415–18 (2d Cir.1985), and in Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn.L.Rev. 707, 709–17 (1983), Congress adopted the Copyright Act of 1976. The “works of art” classification of the Copyright Act of 1909 was omitted and replaced by reference to “pictorial, graphic, and sculptural works,” 17 U.S.C. § 102(a)(5). According to the House Report, the new category was intended to supply “as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design.” The statutory definition of “pictorial, graphic, and sculptural works” states that “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. § 101. The legislative history added gloss on the criteria of separate identity and independent existence in saying:

On the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the Committee’s intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies’ dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill.

In Kieselstein–Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.1980), this court accepted the idea that copyrightability can adhere in the “conceptual” separation of an artistic element. Indeed, the court went on to find such conceptual separation in reference to ornate belt buckles that could be and were worn separately as jewelry.

In Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985), a divided panel of this circuit affirmed a district court grant of summary judgment of noncopyrightability of four life-sized, anatomically correct human torso forms. Carol Barnhart distinguished Kieselstein–Cord, but it surely did not overrule it. The distinction made was that the ornamented surfaces of the Kieselstein–Cord belt buckles “were not in any respect required by their utilitarian functions,” but the features claimed to be aesthetic or artistic in the Carol Barnhart forms were “inextricably intertwined with the utilitarian feature, the display of clothes.”

“Conceptual separability” is thus alive and well, at least in this circuit. The problem, however, is determining exactly what it is and how it is to be applied. Judge Newman’s illuminating discussion in dissent in Carol Barnhart, see 773 F.2d at 419–24, proposed a test that aesthetic features are conceptually separable if “the article … stimulate[s] in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function.” This approach has received favorable endorsement by at least one commentator, W. Patry, Latman’s The Copyright Law 43–45 (6th ed. 1986), who calls Judge Newman’s test the “temporal displacement” test. It is to be distinguished from other possible ways in which conceptual separability can be tested, including whether the primary use is as a utilitarian article as opposed to an artistic work, whether the aesthetic aspects of the work can be said to be “primary,” and whether the article is marketable as art, none of which is very satisfactory. But Judge Newman’s test was rejected outright by the majority as “a standard so ethereal as to amount to a ‘nontest’ that would be extremely difficult, if not impossible, to administer or apply.”

Perhaps the differences between the majority and the dissent in Carol Barnhart might have been resolved had they had before them the Denicola article on Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles. There, Professor Denicola points out that although the Copyright Act of 1976 was an effort “ ‘to draw as clear a line as possible,’ ” in truth “there is no line, but merely a spectrum of forms and shapes responsive in varying degrees to utilitarian concerns.” Denicola argues that “the statutory directive requires a distinction between works of industrial design and works whose origins lie outside the design process, despite the utilitarian environment in which they appear.” He views the statutory limitation of copyrightability as “an attempt to identify elements whose form and appearance reflect the unconstrained perspective of the artist,” such features not being the product of industrial design. “Copyrightability, therefore, should turn on the relationship between the proffered work and the process of industrial design.” He suggests that “the dominant characteristic of industrial design is the influence of nonaesthetic, utilitarian concerns” and hence concludes that copyrightability “ultimately should depend on the extent to which the work reflects artistic expression uninhibited by functional considerations.” To state the Denicola test in the language of conceptual separability, if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.

We believe that Professor Denicola’s approach provides the best test for conceptual separability and, accordingly, adopt it here for several reasons. First, the approach is consistent with the holdings of our previous cases. In Kieselstein-Cord, for example, the artistic aspects of the belt buckles reflected purely aesthetic choices, independent of the buckles’ function, while in Carol Barnhart the distinctive features of the torsos—the accurate anatomical design and the sculpted shirts and collars—showed clearly the influence of functional concerns. Though the torsos bore artistic features, it was evident that the designer incorporated those features to further the usefulness of the torsos as mannequins. Second, the test’s emphasis on the influence of utilitarian concerns in the design process may help, as Denicola notes, to “alleviate the de facto discrimination against nonrepresentational art that has regrettably accompanied much of the current analysis.” Finally, and perhaps most importantly, we think Denicola’s test will not be too difficult to administer in practice. The work itself will continue to give “mute testimony” of its origins. In addition, the parties will be required to present evidence relating to the design process and the nature of the work, with the trier of fact making the determination whether the aesthetic design elements are significantly influenced by functional considerations.

Turning now to the facts of this case, we note first that Brandir contends, and its chief owner David Levine testified, that the original design of the RIBBON Rack stemmed from wire sculptures that Levine had created, each formed from one continuous undulating piece of wire. These sculptures were, he said, created and displayed in his home as a means of personal expression, but apparently were never sold or displayed elsewhere. He also created a wire sculpture in the shape of a bicycle and states that he did not give any thought to the utilitarian application of any of his sculptures until he accidentally juxtaposed the bicycle sculpture with one of the self-standing wire sculptures. It was not until November 1978 that Levine seriously began pursuing the utilitarian application of his sculptures, when a friend, G. Duff Bailey, a bicycle buff and author of numerous articles about urban cycling, was at Levine’s home and informed him that the sculptures would make excellent bicycle racks, permitting bicycles to be parked under the overloops as well as on top of the underloops. Following this meeting, Levine met several times with Bailey and others, completing the designs for the RIBBON Rack by the use of a vacuum cleaner hose, and submitting his drawings to a fabricator complete with dimensions. The Brandir RIBBON Rack began being nationally advertised and promoted for sale in September 1979.

In November 1982 Levine discovered that another company, Cascade Pacific Lumber Co., was selling a similar product. Thereafter, beginning in December 1982, a copyright notice was placed on all RIBBON Racks before shipment and on December 10, 1982, five copyright applications for registration were submitted to the Copyright Office. The Copyright Office refused registration by letter, stating that the RIBBON Rack did not contain any element that was “capable of independent existence as a copyrightable pictorial, graphic or sculptural work apart from the shape of the useful article.” An appeal to the Copyright Office was denied by letter dated March 23, 1983, refusing registration on the above ground and alternatively on the ground that the design lacked originality, consisting of “nothing more than a familiar public domain symbol.” In February 1984, after the denial of the second appeal of the examiner’s decision, Brandir sent letters to customers enclosing copyright notices to be placed on racks sold prior to December 1982.

Between September 1979 and August 1982 Brandir spent some $38,500 for advertising and promoting the RIBBON Rack, including some 85,000 pieces of promotional literature to architects and landscape architects. Additionally, since October 1982 Brandir has spent some $66,000, including full-, half-, and quarter-page advertisements in architectural magazines such as Landscape Architecture, Progressive Architecture, and Architectural Record, indeed winning an advertising award from Progressive Architecture in January 1983. The RIBBON Rack has been featured in Popular Science, Art and Architecture, and Design 384 magazines, and it won an Industrial Designers Society of America design award in the spring of 1980. In the spring of 1984 the RIBBON Rack was selected from 200 designs to be included among 77 of the designs exhibited at the Katonah Gallery in an exhibition entitled “The Product of Design: An Exploration of the Industrial Design Process,” an exhibition that was written up in the New York Times.

Sales of the RIBBON Rack from September 1979 through January 1985 were in excess of $1,367,000. Prior to the time Cascade Pacific began offering for sale its bicycle rack in August 1982, Brandir’s sales were $436,000. The price of the RIBBON Rack ranges from $395 up to $2,025 for a stainless steel model and generally depends on the size of the rack, one of the most popular being the RB–7, selling for $485.

Applying Professor Denicola’s test to the RIBBON Rack, we find that the rack is not copyrightable. It seems clear that the form of the rack is influenced in significant measure by utilitarian concerns and thus any aesthetic elements cannot be said to be conceptually separable from the utilitarian elements. This is true even though the sculptures which inspired the RIBBON Rack may well have been—the issue of originality aside—copyrightable.

Brandir argues correctly that a copyrighted work of art does not lose its protected status merely because it subsequently is put to a functional use. The Supreme Court so held in Mazer v. Stein, 347 U.S. 201 (1954), and Congress specifically intended to accept and codify Mazer in section 101 of the Copyright Act of 1976. The district court thus erred in ruling that, whatever the RIBBON Rack’s origins, Brandir’s commercialization of the rack disposed of the issue of its copyrightability.

Had Brandir merely adopted one of the existing sculptures as a bicycle rack, neither the application to a utilitarian end nor commercialization of that use would have caused the object to forfeit its copyrighted status. Comparison of the RIBBON Rack with the earlier sculptures, however, reveals that while the rack may have been derived in part from one of more “works of art,” it is in its final form essentially a product of industrial design. In creating the RIBBON Rack, the designer has clearly adapted the original aesthetic elements to accommodate and further a utilitarian purpose. These altered design features of the RIBBON Rack, including the spacesaving, open design achieved by widening the upper loops to permit parking under as well as over the rack’s curves, the straightened vertical elements that allow in- and above-ground installation of the rack, the ability to fit all types of bicycles and mopeds, and the heavy-gauged tubular construction of rustproof galvanized steel, are all features that combine to make for a safe, secure, and maintenance-free system of parking bicycles and mopeds. Its undulating shape is said in Progressive Architecture, January 1982, to permit double the storage of conventional bicycle racks. Moreover, the rack is manufactured from 2 ⅜–inch standard steam pipe that is bent into form, the six-inch radius of the bends evidently resulting from bending the pipe according to a standard formula that yields bends having a radius equal to three times the nominal internal diameter of the pipe.

Brandir argues that its RIBBON Rack can and should be characterized as a sculptural work of art within the minimalist art movement. Minimalist sculpture’s most outstanding feature is said to be its clarity and simplicity, in that it often takes the form of geometric shapes, lines, and forms that are pure and free of ornamentation and void of association. As Brandir’s expert put it, “The meaning is to be found in, within, around and outside the work of art, allowing the artistic sensation to be experienced as well as intellectualized.” People who use Foley Square in New York City see in the form of minimalist art the “Tilted Arc,” which is on the plaza at 26 Federal Plaza. Numerous museums have had exhibitions of such art, and the school of minimalist art has many admirers.

It is unnecessary to determine whether to the art world the RIBBON Rack properly would be considered an example of minimalist sculpture. The result under the copyright statute is not changed. Using the test we have adopted, it is not enough that, to paraphrase Judge Newman, the rack may stimulate in the mind of the reasonable observer a concept separate from the bicycle rack concept. While the RIBBON Rack may be worthy of admiration for its aesthetic qualities alone, it remains nonetheless the product of industrial design. Form and function are inextricably intertwined in the rack, its ultimate design being as much the result of utilitarian pressures as aesthetic choices. Indeed, the visually pleasing proportions and symmetricality of the rack represent design changes made in response to functional concerns. Judging from the awards the rack has received, it would seem in fact that Brandir has achieved with the RIBBON Rack the highest goal of modern industrial design, that is, the harmonious fusion of function and aesthetics. Thus there remains no artistic element of the RIBBON Rack that can be identified as separate and “capable of existing independently, of, the utilitarian aspects of the article.” Accordingly, we must affirm on the copyright claim.

APPENDIX

​

APPENDIX

​

WINTER, Circuit Judge, concurring in part and dissenting in part:

Although I concur in the reversal of the district court’s grant of summary judgment on the trademark and unfair competition claims, I respectfully dissent from the majority’s discussion and disposition of the copyright claim.

My colleagues, applying an adaptation of Professor Denicola’s test, hold that the aesthetic elements of the design of a useful article are not conceptually separable from its utilitarian aspects if “[f]orm and function are inextricably intertwined” in the article, and “its ultimate design [is] as much the result of utilitarian pressures as aesthetic choices.” Applying that test to the instant matter, they observe that the dispositive fact is that “in creating the Ribbon Rack, [Levine] has clearly adapted the original aesthetic elements to accommodate and further a utilitarian purpose.” (emphasis added). The grounds of my disagreement are that: (1) my colleagues’ adaptation of Professor Denicola’s test diminishes the statutory concept of “conceptual separability” to the vanishing point; and (2) their focus on the process or sequence followed by the particular designer makes copyright protection depend upon largely fortuitous circumstances concerning the creation of the design in issue.

With regard to “conceptual separability,” my colleagues deserve considerable credit for their efforts to reconcile Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985) with Kieselstein–Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.1980). In my view, these cases are not reconcilable. Carol Barnhart paid only lip service to the fact that the “conceptual separability” of an article’s aesthetic utilitarian aspects may render the design of a “useful article” a copyrightable “sculptural work.” 17 U.S.C. § 101 (1982). Actually, the Carol Barnhart majority applied a test of physical separability. They thus stated:

What distinguishes [the Kieselstein Cord ] buckles from the Barnhart forms is that the ornamented surfaces of the buckles were not in any respect required by their utilitarian functions; the artistic and aesthetic features could thus be conceived of as having been added to, or superimposed upon, an otherwise utilitarian article. The unique artistic design was wholly unnecessary to performance of the utilitarian function. In the case of the Barnhart forms, on the other hand, the features claimed to be aesthetic or artistic, e.g., the life-size configuration of the breasts and the width of the shoulders are inextricably intertwined with the utilitarian feature, the display of clothes.

773 F.2d at 419 (emphasis added). In contrast, Kieselstein–Cord focused on the fact that the belt buckles at issue could be perceived as objects other than belt buckles:

We see in appellant’s belt buckles conceptually separable sculptural elements, as apparently have the buckles’ wearers who have used them as ornamentation for parts of the body other than the waist.

632 F.2d at 993.

My colleagues’ adaptation of the Denicola test tracks the Carol Barnhart approach, whereas I would adopt that taken in Kieselstein–Cord, which allows for the copyrightability of the aesthetic elements of useful articles even if those elements simultaneously perform utilitarian functions. The latter approach received its fullest elaboration in Judge Newman’s dissent in Carol Barnhart, where he explained that “[f]or the [artistic] design features to be ‘conceptually separate’ from the utilitarian aspects of the useful article that embodies the design, the article must stimulate in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function.”

In other words, the relevant question is whether the design of a useful article, however intertwined with the article’s utilitarian aspects, causes an ordinary reasonable observer to perceive an aesthetic concept not related to the article’s use. The answer to this question is clear in the instant case because any reasonable observer would easily view the Ribbon Rack as an ornamental sculpture. Indeed, there is evidence of actual confusion over whether it is strictly ornamental in the refusal of a building manager to accept delivery until assured by the buyer that the Ribbon Rack was in fact a bicycle rack. Moreover, Brandir has received a request to use the Ribbon Rack as environmental sculpture, and has offered testimony of art experts who claim that the Ribbon Rack may be valued solely for its artistic features. As one of those experts observed: “If one were to place a Ribbon Rack on an island without access, or in a park and surround the work with a barrier, … its status as a work of art would be beyond dispute.”

My colleagues also allow too much to turn upon the process or sequence of design followed by the designer of the Ribbon Rack. They thus suggest that copyright protection would have been accorded “had Brandir merely adopted … as a bicycle rack” an enlarged version of one of David Levine’s original sculptures rather than one that had wider upper loops and straightened vertical elements. I cannot agree that copyright protection for the Ribbon Rack turns on whether Levine serendipitously chose the final design of the Ribbon Rack during his initial sculptural musings or whether the original design had to be slightly modified to accommodate bicycles. Copyright protection, which is intended to generate incentives for designers by according property rights in their creations, should not turn on purely fortuitous events. For that reason, the Copyright Act expressly states that the legal test is how the final article is perceived, not how it was developed through various stages. It thus states in pertinent part:

the design of a useful article … shall be considered a … sculptural work only if, and only to the extent that, such design incorporates … 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. § 101 (1982) (emphasis added).

I therefore dissent from the decision so far as it relates to copyrightability.

_________

Check Your Understanding – Brandir

Socratic Script

What are the various tests for conceptual separability mentioned by the court in Brandir?

What are some advantages and disadvantages of the test applied by the majority in Brandir?

In 2017 the Supreme Court, in an attempt to “resolve widespread disagreement over the proper test” to be used in applying the useful article doctrine, granted certiorari in the following case involving copyright on two-dimensional designs appearing on cheerleading uniforms.

Some things to consider when reading Star Athletica:

1. The holding of the case, and how the Court arrived at it.
2. The basis of Varsity’s argument that separability analysis is not necessary in this case, and why the majority rejected it. Note that Justice Ginsburg, writing in concurrence, appears to agree with Varsity’s argument.
3. The objections that the petitioner (Star Athletica) and the Government raise to the majority’s approach, and the majority’s explanation as to why it finds these objections lacking in merit.
4. The objections raised in the dissenting opinion, and the majority’s response to those objections.
5. The impact this decision had on the various tests for separability that had been developed in the lower courts, e.g., the tests set forth in Brandir.
6. Note that the Court chose to grant certiorari in a useful article case involving highly anomalous subject matter, i.e., two-dimensional “pictorial/graphic” features. The useful article doctrine generally comes up in the context of three-dimensional “structural” features, e.g., bike racks, belt buckles, mannequins, etc. Justice Ginsburg points out the problem with this in her concurrence.

Star Athletica, L.L.C. v. Varsity Brands, Inc.

137 S. Ct. 1002 (2017)

Justice THOMAS delivered the opinion of the Court.

Congress has provided copyright protection for original works of art, but not for industrial designs. The line between art and industrial design, however, is often difficult to draw. This is particularly true when an industrial design incorporates artistic elements. Congress has afforded limited protection for these artistic elements by providing that “pictorial, graphic, or sculptural features” of the “design of a useful article” are eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101.

We granted certiorari to resolve widespread disagreement over the proper test for implementing § 101’s separate-identification and independent-existence requirements. We hold that a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated. Because that test is satisfied in this case, we affirm.

I

Respondents Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc., design, make, and sell cheerleading uniforms. Respondents have obtained or acquired more than 200 U.S. copyright registrations for two-dimensional designs appearing on the surface of their uniforms and other garments. These designs are primarily “combinations, positionings, and arrangements of elements” that include “chevrons …, lines, curves, stripes, angles, diagonals, inverted [chevrons], coloring, and shapes.” At issue in this case are Designs 299A, 299B, 074, 078, and 0815. See Appendix, infra.

Petitioner Star Athletica, L.L.C., also markets and sells cheerleading uniforms. Respondents sued petitioner for infringing their copyrights in the five designs. The District Court entered summary judgment for petitioner on respondents’ copyright claims on the ground that the designs did not qualify as protectable pictorial, graphic, or sculptural works. It reasoned that the designs served the useful, or “utilitarian,” function of identifying the garments as “cheerleading uniforms” and therefore could not be “physically or conceptually” separated under § 101 “from the utilitarian function” of the uniform.

The Court of Appeals for the Sixth Circuit reversed. 799 F.3d 468, 471 (2015). In its view, the “graphic designs” were “separately identifiable” because the designs “and a blank cheerleading uniform can appear ‘side by side’—one as a graphic design, and one as a cheerleading uniform.” Id., at 491 (quoting Compendium of U.S. Copyright Office Practices § 924.2(B) (3d ed. 2014) (Compendium)). And it determined that the designs were “ ‘capable of existing independently’ ” because they could be incorporated onto the surface of different types of garments, or hung on the wall and framed as art.

Judge McKeague dissented. He would have held that, because “identifying the wearer as a cheerleader” is a utilitarian function of a cheerleading uniform and the surface designs were “integral to” achieving that function, the designs were inseparable from the uniforms.

II

A valid copyright extends only to copyrightable subject matter. The Copyright Act of 1976 defines copyrightable subject matter as “original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a).

“Works of authorship” include “pictorial, graphic, and sculptural works,” § 102(a)(5), which the statute defines to 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,” § 101. And a work of authorship is “ ‘fixed’ in a tangible medium of expression when it[ is] embodi[ed] in a” “material objec[t] … from which the work can be perceived, reproduced, or otherwise communicated.” Ibid. (definitions of “fixed” and “copies”).

The Copyright Act also establishes a special rule for copyrighting a pictorial, graphic, or sculptural work incorporated into a “useful article,” which is defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” The statute does not protect useful articles as such. Rather, “the design of a useful article” is “considered a pictorial, graphical, 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.”

Courts, the Copyright Office, and commentators have described the analysis undertaken to determine whether a feature can be separately identified from, and exist independently of, a useful article as “separability.” In this case, our task is to determine whether the arrangements of lines, chevrons, and colorful shapes appearing on the surface of respondents’ cheerleading uniforms are eligible for copyright protection as separable features of the design of those cheerleading uniforms.

A

As an initial matter, we must address whether separability analysis is necessary in this case.

1

Respondents argue that “[s]eparability is only implicated when a [pictorial, graphic, or sculptural] work is the ‘design of a useful article.’ ” They contend that the surface decorations in this case are “two-dimensional graphic designs that appear on useful articles,” but are not themselves designs of useful articles. Consequently, the surface decorations are protected two-dimensional works of graphic art without regard to any separability analysis under § 101. See 2 W. Patry, Copyright § 3:151, p. 3–485 (2016) (Patry) (“Courts looking at two-dimensional design claims should not apply the separability analysis regardless of the three-dimensional form that design is embodied in”). Under this theory, two-dimensional artistic features on the surface of useful articles are “inherently separable.”

This argument is inconsistent with the text of § 101. The statute requires separability analysis for any “pictorial, graphic, or sculptural features” incorporated into the “design of a useful article.” “Design” refers here to “the combination” of “details” or “features” that “go to make up” the useful article. 3 Oxford English Dictionary 244 (def. 7, first listing) (1933) (OED). Furthermore, the words “pictorial” and “graphic” include, in this context, two-dimensional features such as pictures, paintings, or drawings. See 4 id., at 359 (defining “[g]raphic” to mean “[o]f or pertaining to drawing or painting”); 7 id., at 830 (defining “[p]ictorial” to mean “of or pertaining to painting or drawing”). And the statute expressly defines “[p]ictorial, graphical, and sculptural works” to include “two-dimensional … works of … art.” § 101. The statute thus provides that the “design of a useful article” can include two-dimensional “pictorial” and “graphic” features, and separability analysis applies to those features just as it does to three-dimensional “sculptural” features.

B

We must now decide when a feature incorporated into a useful article “can be identified separately from” and is “capable of existing independently of” “the utilitarian aspects” of the article. This is not a free-ranging search for the best copyright policy, but rather “depends solely on statutory interpretation.” Mazer v. Stein, 347 U.S. 201, 214 (1954). The controlling principle in this case is the basic and unexceptional rule that courts must give effect to the clear meaning of statutes as written. We thus begin and end our inquiry with the text, giving each word its ordinary, contemporary, common meaning. We do not, however, limit this inquiry to the text of § 101 in isolation. Interpretation of a phrase of uncertain reach is not confined to a single sentence when the text of the whole statute gives instruction as to its meaning. We thus look to the provisions of the whole law to determine § 101’s meaning.

1

The statute provides that a “pictorial, graphic, or sculptural featur[e]” incorporated into the “design of a useful article” is eligible for copyright protection if it (1) “can be identified separately from,” and (2) is “capable of existing independently of, the utilitarian aspects of the article.” § 101. The first requirement—separate identification—is not onerous. The decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.

The independent-existence requirement is ordinarily more difficult to satisfy. The decisionmaker must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article. In other words, the feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in § 101 once it is imagined apart from the useful article. If the feature is not capable of existing as a pictorial, graphic, or sculptural work once separated from the useful article, then it was not a pictorial, graphic, or sculptural feature of that article, but rather one of its utilitarian aspects.

Of course, to qualify as a pictorial, graphic, or sculptural work on its own, the feature cannot itself be a useful article or “[a]n article that is normally a part of a useful article” (which is itself considered a useful article). § 101. Nor could someone claim a copyright in a useful article merely by creating a replica of that article in some other medium—for example, a cardboard model of a car. Although the replica could itself be copyrightable, it would not give rise to any rights in the useful article that inspired it.

2

The statute as a whole confirms our interpretation. The Copyright Act provides “the owner of [a] copyright” with the “exclusive righ[t] … to reproduce the copyrighted work in copies.” § 106(1). The statute clarifies that this right “includes the right to reproduce the [copyrighted] work in or on any kind of article, whether useful or otherwise.” § 113(a). Section 101 is, in essence, the mirror image of § 113(a). Whereas § 113(a) protects a work of authorship first fixed in some tangible medium other than a useful article and subsequently applied to a useful article, § 101 protects art first fixed in the medium of a useful article. The two provisions make clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles. The ultimate separability question, then, is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.

3

This interpretation is also consistent with the history of the Copyright Act. In Mazer, a case decided under the 1909 Copyright Act, the respondents copyrighted a statuette depicting a dancer. The statuette was intended for use as a lamp base, “with electric wiring, sockets and lamp shades attached.” Copies of the statuette were sold both as lamp bases and separately as statuettes. The petitioners copied the statuette and sold lamps with the statuette as the base. They defended against the respondents’ infringement suit by arguing that the respondents did not have a copyright in a statuette intended for use as a lamp base.

Two of Mazer ‘s holdings are relevant here. First, the Court held that the respondents owned a copyright in the statuette even though it was intended for use as a lamp base. In doing so, the Court approved the Copyright Office’s regulation extending copyright protection to works of art that might also serve a useful purpose.

Second, the Court held that it was irrelevant to the copyright inquiry whether the statuette was initially created as a freestanding sculpture or as a lamp base. Mazer thus interpreted the 1909 Act consistently with the rule discussed above: If a design would have been copyrightable as a standalone pictorial, graphic, or sculptural work, it is copyrightable if created first as part of a useful article.

Shortly thereafter, the Copyright Office enacted a regulation implementing the holdings of Mazer. As amended, the regulation introduced the modern separability test to copyright law:

“If the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art. However, if the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration.” 37 C.F.R. § 202.10(c) (1960) (punctuation altered).

Congress essentially lifted the language governing protection for the design of a useful article directly from the post-Mazer regulations and placed it into § 101 of the 1976 Act. Consistent with Mazer, the approach we outline today interprets §§ 101 and 113 in a way that would afford copyright protection to the statuette in Mazer regardless of whether it was first created as a standalone sculptural work or as the base of the lamp.

C

In sum, a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.

Applying this test to the surface decorations on the cheerleading uniforms is straightforward. First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as “two-dimensional … works of … art,” § 101. And imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself. Indeed, respondents have applied the designs in this case to other media of expression—different types of clothing—without replicating the uniform. The decorations are therefore separable from the uniforms and eligible for copyright protection.

The dissent argues that the designs are not separable because imaginatively removing them from the uniforms and placing them in some other medium of expression—a canvas, for example—would create “pictures of cheerleader uniforms.” Petitioner similarly argues that the decorations cannot be copyrighted because, even when extracted from the useful article, they retain the outline of a cheerleading uniform.

This is not a bar to copyright. Just as two-dimensional fine art corresponds to the shape of the canvas on which it is painted, two-dimensional applied art correlates to the contours of the article on which it is applied. A fresco painted on a wall, ceiling panel, or dome would not lose copyright protection, for example, simply because it was designed to track the dimensions of the surface on which it was painted. Or consider, for example, a design etched or painted on the surface of a guitar. If that entire design is imaginatively removed from the guitar’s surface and placed on an album cover, it would still resemble the shape of a guitar. But the image on the cover does not “replicate” the guitar as a useful article. Rather, the design is a two-dimensional work of art that corresponds to the shape of the useful article to which it was applied. The statute protects that work of art whether it is first drawn on the album cover and then applied to the guitar’s surface, or vice versa. Failing to protect that art would create an anomaly: It would extend protection to two-dimensional designs that cover a part of a useful article but would not protect the same design if it covered the entire article. The statute does not support that distinction, nor can it be reconciled with the dissent’s recognition that “artwork printed on a t-shirt” could be protected.

To be clear, the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. Even if respondents ultimately succeed in establishing a valid copyright in the surface decorations at issue here, respondents have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear. They may prohibit only the reproduction of the surface designs in any tangible medium of expression—a uniform or otherwise.

D

Petitioner and the Government raise several objections to the approach we announce today. None is meritorious.

1

Petitioner first argues that our reading of the statute is missing an important step. It contends that a feature may exist independently only if it can stand alone as a copyrightable work and if the useful article from which it was extracted would remain equally useful. In other words, copyright extends only to “solely artistic” features of useful articles. According to petitioner, if a feature of a useful article “advance[s] the utility of the article,” then it is categorically beyond the scope of copyright. The designs here are not protected, it argues, because they are necessary to two of the uniforms’ “inherent, essential, or natural functions”—identifying the wearer as a cheerleader and enhancing the wearer’s physical appearance. Because the uniforms would not be equally useful without the designs, petitioner contends that the designs are inseparable from the “utilitarian aspects” of the uniform

The Government raises a similar argument, although it reaches a different result. It suggests that the appropriate test is whether the useful article with the artistic feature removed would “remai[n] similarly useful.” In the view of the United States, however, a plain white cheerleading uniform is “similarly useful” to uniforms with respondents’ designs.

The debate over the relative utility of a plain white cheerleading uniform is unnecessary. The focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction. The statute does not require the decisionmaker to imagine a fully functioning useful article without the artistic feature. Instead, it requires that the separated feature qualify as a nonuseful pictorial, graphic, or sculptural work on its own.

Of course, because the removed feature may not be a useful article—as it would then not qualify as a pictorial, graphic, or sculptural work—there necessarily would be some aspects of the original useful article “left behind” if the feature were conceptually removed. But the statute does not require the imagined remainder to be a fully functioning useful article at all, much less an equally useful one. Indeed, such a requirement would deprive the Mazer statuette of protection had it been created first as a lamp base rather than as a statuette. Without the base, the “lamp” would be just a shade, bulb, and wires. The statute does not require that we imagine a nonartistic replacement for the removed feature to determine whether that feature is capable of an independent existence.

Petitioner’s argument follows from its flawed view that the statute protects only “solely artistic” features that have no effect whatsoever on a useful article’s utilitarian function. This view is inconsistent with the statutory text. The statute expressly protects two- and three-dimensional “applied art.” § 101. “Applied art” is art “employed in the decoration, design, or execution of useful objects,” Webster’s Third New International Dictionary 105 (1976) (emphasis added), or “those arts or crafts that have a primarily utilitarian function, or … the designs and decorations used in these arts,” Random House Dictionary 73 (1966) (emphasis added). An artistic feature that would be eligible for copyright protection on its own cannot lose that protection simply because it was first created as a feature of the design of a useful article, even if it makes that article more useful.

Indeed, this has been the rule since Mazer. In holding that the statuette was protected, the Court emphasized that the 1909 Act abandoned any “distinctions between purely aesthetic articles and useful works of art.” Congress did not enact such a distinction in the 1976 Act. Were we to accept petitioner’s argument that the only protectable features are those that play absolutely no role in an article’s function, we would effectively abrogate the rule of Mazer and read “applied art” out of the statute.

Because we reject the view that a useful article must remain after the artistic feature has been imaginatively separated from the article, we necessarily abandon the distinction between “physical” and “conceptual” separability, which some courts and commentators have adopted based on the Copyright Act’s legislative history. According to this view, a feature is physically separable from the underlying useful article if it can “be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact.” Compendium § 924.2(A); see also Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 329 (C.A.2 2005). Conceptual separability applies if the feature physically could not be removed from the useful article by ordinary means. See Compendium § 924.2(B); but see 1 P. Goldstein, Copyright § 2.5.3, p. 2:77 (3d ed. 2016) (explaining that the lower courts have been unable to agree on a single conceptual separability test); 2 Patry §§ 3:140–3:144.40 (surveying the various approaches in the lower courts).

The statutory text indicates that separability is a conceptual undertaking. Because separability does not require the underlying useful article to remain, the physical-conceptual distinction is unnecessary.

2

Petitioner next argues that we should incorporate two “objective” components, into our test to provide guidance to the lower courts: (1) “whether the design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influence,” and (2) whether “there is [a] substantial likelihood that the pictorial, graphic, or sculptural feature would still be marketable to some significant segment of the community without its utilitarian function.”

We reject this argument because neither consideration is grounded in the text of the statute. The first would require the decisionmaker to consider evidence of the creator’s design methods, purposes, and reasons. The statute’s text makes clear, however, that our inquiry is limited to how the article and feature are perceived, not how or why they were designed. See Brandir Int’l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142, 1152 (C.A.2 1987) (Winter, J., concurring in part and dissenting in part) (The statute “expressly states that the legal test is how the final article is perceived, not how it was developed through various stages”).

The same is true of marketability. Nothing in the statute suggests that copyrightability depends on market surveys. Moreover, asking whether some segment of the market would be interested in a given work threatens to prize popular art over other forms, or to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act. See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits”).

3

Finally, petitioner argues that allowing the surface decorations to qualify as a “work of authorship” is inconsistent with Congress’ intent to entirely exclude industrial design from copyright. Petitioner notes that Congress refused to pass a provision that would have provided limited copyright protection for industrial designs, including clothing, when it enacted the 1976 Act, and that it has enacted laws protecting designs for specific useful articles—semiconductor chips and boat hulls, see 17 U.S.C. §§ 901–914, 1301–1332—while declining to enact other industrial design statutes. From this history of failed legislation petitioner reasons that Congress intends to channel intellectual property claims for industrial design into design patents. It therefore urges us to approach this question with a presumption against copyrightability.

We do not share petitioner’s concern. As an initial matter, congressional inaction lacks persuasive significance in most circumstances. Moreover, we have long held that design patent and copyright are not mutually exclusive. See Mazer, 347 U.S., at 217. Congress has provided for limited copyright protection for certain features of industrial design, and approaching the statute with presumptive hostility toward protection for industrial design would undermine Congress’ choice.  In any event, as explained above, our test does not render the shape, cut, and physical dimensions of the cheerleading uniforms eligible for copyright protection.

III

We hold that an artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article. Because the designs on the surface of respondents’ cheerleading uniforms in this case satisfy these requirements, the judgment of the Court of Appeals is affirmed.

It is so ordered.

Justice GINSBURG, concurring in the judgment.

I concur in the Court’s judgment but not in its opinion. Unlike the majority, I would not take up in this case the separability test appropriate under 17 U.S.C. § 101. Consideration of that test is unwarranted because the designs at issue are not designs of useful articles. Instead, the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles.

A pictorial, graphic, or sculptural work (PGS work) is copyrightable. § 102(a)(5). PGS works include “two-dimensional and three-dimensional works of fine, graphic, and applied art.” § 101. Key to this case, a copyright in a standalone PGS work “includes the right to reproduce the work in or on any kind of article, whether useful or otherwise.” § 113(a). Because the owner of a copyright in a pre-existing PGS work may exclude a would-be infringer from reproducing that work on a useful article, there is no need to engage in any separability inquiry to resolve the instant petition.

The designs here in controversy are standalone pictorial and graphic works that respondents Varsity Brands, Inc., et al. (Varsity) reproduce on cheerleading uniforms. Varsity’s designs first appeared as pictorial and graphic works that Varsity’s design team sketched on paper. Varsity then sought copyright protection for those two-dimensional designs, not for cheerleading costumes; its registration statements claimed “2–Dimensional artwork” and “fabric design (artwork).” Varsity next reproduced its two-dimensional graphic designs on cheerleading uniforms, also on other garments, including T-shirts and jackets.

In short, Varsity’s designs are not themselves useful articles meet for separability determination under § 101; they are standalone PGS works that may gain copyright protection as such, including the exclusive right to reproduce the designs on useful articles.

Justice BREYER, with whom Justice KENNEDY joins, dissenting.

I agree with much in the Court’s opinion. But I do not agree that the designs that Varsity Brands, Inc., submitted to the Copyright Office are eligible for copyright protection. Even applying the majority’s test, the designs cannot “be perceived as … two- or three-dimensional work[s] of art separate from the useful article.”

Look at the designs that Varsity submitted to the Copyright Office. See Appendix to opinion of the Court, ante. You will see only pictures of cheerleader uniforms. And cheerleader uniforms are useful articles. A picture of the relevant design features, whether separately “perceived” on paper or in the imagination, is a picture of, and thereby “replicate[s],” the underlying useful article of which they are a part. Hence the design features that Varsity seeks to protect are not “capable of existing independently o[f] the utilitarian aspects of the article.” 17 U.S.C. § 101.

. . . With respect, I dissent.

__________

To sum things up, in Star Athletica, the Supreme Court held that a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature:

(1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and

(2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.

The question remains as to how the lower courts and Copyright Office will apply this rather cryptic test. For the Copyright Office’s interpretation of Star Athletica, see U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 924 et seq. (3d ed. 2021). The following decision out of the Central District of California represents one of the most recent instances in which a court examined and applied Star Athletica.

Check Your Understanding – Star Athletica

Question 1. True or false: The useful article doctrine precludes copyright protection for useful computer programs.

Question 2. How did the Court in Star Athletica arrive at its two-part test for determining whether a feature incorporated into the design of a useful article is eligible for copyright protection?

Question 3. True or false: As a general matter, fashion design cannot be copyrighted.

Question 4. True or false: An artistic feature of the design of a useful article is only copyrightable if it can stand alone as a copyrightable work and if the useful article from which it was extracted would remain equally useful

Question 5. In Star Athletica, which of the following “objective” components did the Court incorporate into its test in order to provide guidance to the lower courts?

Question 6. Which of the following limit the applicability of the Star Athletica two-part test?

Some things to consider when reading Liaigre:

1. The court’s review of Star Athletica and its application of Star Athletica’s two-part test to the useful articles at issue in this case, i.e., pieces of furniture.
2. The district court’s review of Star Athletica and several district court decisions applying Star Athletica’s two-part test.
3. The district court’s use of these earlier district court decisions as persuasive (albeit nonbinding) precedent in resolving the case at hand.
4. The court’s focus on the extent to which purportedly sculptural elements of the furniture represented identifiable subject matter from the natural world, such as the legs of horses or fishhooks.
5. The line drawn by the court between copyrightable “decorative and artistic elements” and uncopyrightable “basic geometric shapes.”

Liaigre, Inc. v. California Furniture Collection, Inc.

2023 WL 4316881 (C.D. Cal. June 2, 2023)

KRONSTADT, United States District Judge.

Liaigre USA alleges that “Christian Liaigre SAS (‘Liaigre France’) is one of the most renowned furniture design companies in the world.” Liaigre USA alleges that “Liaigre France’s items of furniture are considered standalone works of art and are so distinctive as to be identified with Liaigre France and Liaigre France’s United States subsidiary, Liaigre USA, which holds the exclusive rights to exploit Liaigre France’s furniture in the United States.” This Order refers to Liaigre France and Liaigre USA collectively as “Liaigre.” Liaigre generally sells furniture to interior designers and architectural professionals, who make purchases on behalf of individuals with substantial wealth.

California Furniture Collection, Inc. (“CFC”) also designs furniture and, like Liaigre, primarily sells its furniture to interior designers who make purchases on behalf of individuals with substantial wealth.

Liaigre USA alleges that CFC “has brazenly and impermissibly copied at least eight [ ] distinct pieces of furniture, each of which were designed and first exploited by Liaigre France in France and subsequently sold in the United States by Liaigre USA (the ‘Liaigre Furniture’) pursuant to an exclusive license from Liaigre France.” Liaigre alleges that CFC sells its infringing furniture (the “CFC Furniture”) as part of its “Robert James Collection.”

Liaigre USA alleges that, because “CFC [is] selling the Infringing Furniture just steps from Liaigre USA’s Orange County-based showroom, potential customers that view the Liaigre Furniture in its showroom (Suite 139) can then go to the [CFC] showroom (Suite 136) and purchase the [CFC Furniture] from Defendants.”

The Complaint includes the following images of each Liaigre Furniture product at issue next to the corresponding CFC Furniture.

 ​

…

III. Analysis

Defendants move for reconsideration of the determination in the Prior Order that there is a triable issue of fact as to the validity of Plaintiff’s copyrights. Defendants argue that Plaintiff is effectively claiming copyright protection in the overall shape of the pieces of Liaigre furniture.

1. The Copyright Claim: Separability

a) Whether Reconsideration is Warranted

Defendants’ argument that the prior ruling erred by rejecting the position of the U.S. Copyright Office, which stated that the overall shape of a product cannot be copyrighted, is unpersuasive. The Prior Order noted that the Compendium of U.S. Copyright Office Practices is only persuasive authority, but the Prior Order did not reject the position of the U.S. Copyright Office.

Defendants’ argument that the Prior Order reflected error in holding that Plaintiff could copyright an overall product configuration is equally unpersuasive. The Prior Order did not so hold. It only determined that the legs of certain pieces of furniture, and the back of the Maritime chair, could be protectible sculptural works if imagined separately. As a result, it was determined that Defendants were not entitled to summary judgment as to the pieces of furniture to which these works were attached.

b) The Star Athletica Test

“Congress has provided copyright protection for original works of art, but not for industrial designs.” Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405, 409 (2017). However, the Supreme Court has recognized that “[t]he line between art and industrial design … is often difficult to draw,” especially “when an industrial design incorporates artistic elements.” “Congress has afforded limited protection for these artistic elements by providing that ‘pictorial, graphic, or sculptural features’ of the ‘design of a useful article’ are eligible for copyright protection as artistic works if those features ‘can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.’”(quoting 17 U.S.C. § 101).

The Supreme Court created a two-step test for applying this statutory language:

[A] feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.

“The first requirement—separate identification—is not onerous.” Id. at 414. “The decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” Id.

“The independent-existence requirement is ordinarily more difficult to satisfy.” Id. “[T]he feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in § 101 once it is imagined apart from the useful article.” Id. “If the feature is not capable of existing as a pictorial, graphic, or sculptural work once separated from the useful article, then it was not a pictorial, graphic, or sculptural feature of that article, but rather one of its utilitarian aspects.” Id.

The Supreme Court has noted at least three limitations on the applicability of this principle. First, “to qualify as a pictorial, graphic, or sculptural work on its own, the feature cannot itself be a useful article or ‘[a]n article that is normally a part of a useful article’ (which is itself considered a useful article).” (quoting 17 U.S.C. § 101). Thus, where “imaginatively removing” the feature and “applying [it] in another medium would … replicate the [useful article] itself,” copyright protection is not appropriate. For example, a shovel could be displayed in an art museum but it would not be copyrightable. Second, someone cannot “claim a copyright in a useful article merely by creating a replica of that article in some other medium—for example, a cardboard model of a car.” Third, only the separable feature can be the subject of copyright protection, not the “shape, cut, and dimensions” of the useful article. The separable feature must meet all of the criteria to be copyrightable, including originality. Nevertheless, “[i]f a design would have been copyrightable as a standalone pictorial, graphic, or sculptural work, it is copyrightable if created first as part of a useful article.”

c) Subsequent Cases

Several cases have applied the Star Athletica separability test to copyrights involving furniture. Courts have generally found a triable issue as to whether an allegedly separable feature is a protectible sculptural work so long as the allegedly separable feature has decorative and artistic elements that go beyond basic geometric shapes. For example, Jetmax found that the following decorative covers of a “Tear Drop Light Set ‘can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the Tear Drop light Set.’ ” Jetmax Ltd. v. Big Lots, Inc., 15-cv-9597 (KBF), 2017 WL 3726756 at *2 (S.D.N.Y. Aug. 28, 2017) (quoting 17 U.S.C. § 101; Star Athletica, 580 U.S. at 410).

​

Jetmax reasoned that the separate-identification requirement was met because “[t]he Tear Drop Light Set undoubtedly has three-dimensional decorative covers that have sculptural qualities.” The opinion also determined that the independent-existence requirement was met for the following reasons:

The decorative covers are sculptural works that are capable of existing apart from the utilitarian aspect of the light set, i.e. the light bulbs and other components that cause the Tear Drop Light Set to light a room. The primary purpose of the cover is artistic; once the covers are removed, the remainder is a functioning but unadorned light string.

Inhale, Inc. v. Starbuzz Tobacco, Inc., Case No. 2:11-cv-03838-ODW (FFM), 2017 WL 4163990, at *3 (C.D. Cal. May 8, 2017), reached a different outcome based on the evidence presented. It found that the utilitarian and artistic features of a hookah water container were not separable where they were “essentially geometric shapes of the most common type.” However, Inhale, Inc. includes the following dictum:

This is not to say that there are not some, if not many, useful articles composed of unique geometric shapes … or unique combinations of geometric shapes that might pass muster under the Star Athletica test. It is only to say that the water container at issue here is no Noguchi Table.

The Order contains the following image of the Noguchi Table:

Corinna Warm and Studio Warm LLC v. Innermost Ltd., Case No. CV21-4402-MWF (SHKx), 2022 WL 2062914 (C.D. Cal. Apr. 26, 2022) reached a similar conclusion. There, the plaintiff copyrighted certain lampshades and brought a copyright action against the defendant for the alleged infringement of them. Corinna noted the “extreme breadth with which something can be construed to be a sculpture or sculptural.” Although the defendant had “a strong argument that a lampshade, when conceptualized separately from a lamp, is part of a useful article,” that argument was not dispositive. “The ultimate separability question is whether the lampshades would have been protectible if they had originally been fixed in some tangible medium other than a useful article before being applied to a useful article.” Because “the lampshades could very much have been copyrighted as metal sculptures first and later converted to use as lampshades,” summary judgment was denied on separability.

Defendants argue that Jetmax and Corinna are inconsistent with Star Athletica and must be disregarded. Defendants’ position is not persuasive. With respect to Jetmax, Defendants argue that this case improperly adopted a “primarily artistic purpose” test for separability. Jetmax did not do so. Star Athletica instructs courts to ask whether the allegedly separable feature has “the capacity to exist apart from the utilitarian aspects of the article.” Star Athletica, 580 U.S. at 414. Jetmax noted that the covering at issue had a primarily artistic purpose only to help explain why that covering, imagined separately, would be a protectable sculptural work rather than a useful article. With respect to Corinna, Defendants argue that the court erred by holding that a lampshade could be a protectible sculptural work. Although Corinna presented unique facts, it appeared that the lampshades could exist apart from the utilitarian aspects of the lamp because the lampshades could have been created as metal sculptures and later used as lampshades. The opinion in Corinna does not include images of the lampshades at issue. It is possible that some lampshades are not separable. However, it cannot be said that no lampshade could ever qualify for copyright protection.

d) Application to the Liaigre Furniture

The analysis begins with the Missane Table. With respect to the first step of the analysis, the curved portion of its legs is a three-dimensional element that could be perceived as separate from the overall design of the table. With respect to the second step, Plaintiff contends that this element evokes “a sense of musculature observed from a horse’s leg” and that the base of the leg “depicts a hoof.” Plaintiff links this element to Christian Liaigre’s interest in equestrian-influenced aesthetics. Plaintiff also offered expert testimony that this component of the Missane Table would, taken separately, changed in size, and placed in a new medium, qualify as fine art.

The legs of the Missane Table, imagined separately from the rest of the table, are not obviously the legs of a table. A reasonable jury could find that the legs of this table are abstract, stylized sculptures of a horse’s leg and, therefore, not normally part of a useful article. At summary judgment, every reasonable inference must be drawn in favor of the non-moving party. Plaintiff has proffered sufficient evidence to create a genuine dispute as to whether the Missane Table has sculptural features that can be identified separately, and are capable of existing independently from the furniture itself. As in Jetmax, the sculpted legs can be determined to serve a primarily decorative and artistic purpose. Because these elements go well beyond basic geometric shapes, they are more analogous to the Noguchi Table than the hookah water container in Inhale. Finally, like the lampshades in Corinna, the sculpted legs could have been copyrighted as metal sculptures before being applied to the Liaigre Furniture.

This same analysis applies to the Gallon console and Somaria table. A reasonable jury could determine that, if one imagined the legs of those pieces of furniture separately, they would be sculptures of a horse’s leg and would not normally be part of a useful article.

The analysis is largely the same as to the Centaure table. As before, Plaintiff alleges that the leg of the table is an abstract, stylized sculpture of a horse’s leg. Although this is somewhat harder to see, the base of the leg does have a distinct, hooflike appearance. Considered in light of the standard for summary judgment, Plaintiff has made an adequate showing that there is a triable issue of fact as to this piece of furniture.

The next issue is the Calme Plat bench. The first step of the analysis is satisfied: each leg of the bench is a three-dimensional work of art that can be perceived separately from the rest of the bench. The next step is to inquire whether, imagined separately, the legs would qualify as protectible sculptural works. Plaintiff argues that they are highly stylized sculptures of hands. This is not obvious, but the standard is the “extreme breadth with which something can be construed to be a sculpture or sculptural.” It cannot be said that the leg of a bench could never be a protectible sculptural work. For example, a bench held up by two sculptures of cherubs could be protected. The bench would pass the separability analysis because the cherub sculptures would be protectible sculptural works. The legs of the Calme Plat bench go somewhat beyond basic geometric shapes and serve a primarily decorative purpose. Imagined separately, the legs of this bench are not obviously or necessarily part of a bench or other piece of furniture. Again, there is an adequate showing that there is a triable issue of fact as to whether these legs would be protectible sculptural works if they had been created first.

The next issue is the Maritime Chair. Plaintiff identifies two features that are allegedly separable. First, Plaintiff argues that the back of the chair is a sculpture of a fishnet. Second, Plaintiff argues that the base of each leg of the chair is a sculpture of a fishhook. The latter argument is not persuasive. The legs seem to taper to a point; they do not seem to resemble fishhooks. Nevertheless, Plaintiff’s first argument is sufficient to establish a triable issue of fact as to this piece of furniture. The fishnet sculpture is not normally a useful article, nor is it normally part of a useful article. Imagined separately, nothing about the fishnet sculpture indicates that it would be used as the back of a chair. It was included here for purposes of decoration. For all these reasons, Defendants are not entitled to summary judgment with respect to the Maritime Chair.

Defendants are entitled to summary judgment with respect to the Corvette desk. Plaintiff does not argue that the desk, or any portion of it, is a sculpture of something else. Plaintiff’s argument is that the base of the table could be duplicated and shown in a fine art gallery setting, which would transform the base of the table into a standalone work of art. This is insufficient to create a triable issue of fact. As Star Athletica noted, a shovel placed in a museum does not stop becoming a useful article simply because it is placed in a museum. Even imagined separately, the legs of the Corvette desk look like the legs of a piece of furniture.

Corvette Desk Legs:

Furthermore, the legs of the desk contain little, if any, decorative material. Although Plaintiff argues that the legs resemble the roman numeral II, the legs use only the most basic geometric shapes. No reasonable jury could conclude that these legs are actually sculptures. Defendants are therefore entitled to summary judgment with respect to this piece of furniture.

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Check Your Understanding – Liaigre

Question 1. According to Liaigre, under what circumstances will geometric shapes incorporated into a useful article be eligible for copyright protection?

Some things to consider when reading Silvertop Assocs.:

1. The court’s discussion of Star Athletica and its application of Star Athletica’s two-part test to the useful article at issue in this case, a full-body banana costume, a type of sculptural work.
2. Excerpts of this decision pertaining to the “merger” and “scenes a faire” doctrines appeared earlier in this casebook.

Silvertop Assocs. Inc. v. Kangaroo Mfg. Inc.

931 F.3d 215 (3d Cir. 2019)

HARDIMAN, Circuit Judge.

This interlocutory appeal involves the validity of a copyright in a full-body banana costume. Appellant Kangaroo Manufacturing Inc. concedes that the banana costume it manufactures and sells is substantially similar to the banana costume created and sold by Appellee Rasta Imposta. See infra Appendix A. Yet Kangaroo claims that Rasta cannot hold a valid copyright in such a costume’s “pictorial, graphic, or sculptural features.” 17 U.S.C. § 101. This dispute presents a matter of first impression for our Court and requires us to apply the Supreme Court’s recent decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017). We hold that, in combination, the Rasta costume’s non-utilitarian, sculptural features are copyrightable, so we will affirm the District Court’s preliminary injunction.

III

A

A valid copyright extends only to copyrightable subject matter. Copyrightable subject matter means “original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). Originality is a very low bar, requiring only a minimal amount of creativity.

A special rule applies to “useful articles,” i.e., those which have “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”  17 U.S.C. § 101. Without more, they may not receive protection as such. Instead, useful articles that incorporate pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article may be eligible for protection of those features alone. Thus, separability analysis determines whether a useful article contains copyrightable features.

A useful article’s design feature “is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” Star Athletica, 137 S. Ct. at 1012 (describing separability analysis). So we ask two questions: (1) can the artistic feature of the useful article’s design be perceived as a two- or three-dimensional work of art separate from the useful article? and (2) would the feature qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article? Id. at 1016.

The first requirement “is not onerous. The decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” Id. at 1010.

The second requirement, which is “ordinarily more difficult to satisfy,” requires “that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article.” Id.  And that separate feature “cannot itself be a useful article or ‘an article that is normally a part of a useful article’ (which is itself considered a useful article).” Id. We do not focus on “any aspects of the useful article that remain after the imaginary extraction.” Id. at 1013. Nor does the work’s marketability or artistic merit bear on our analysis. See id. at 1015. Thus, the two-part inquiry effectively turns on whether the separately imagined features are still intrinsically useful.

We have explained that we do not analyze each feature in isolation; instead, a specific combination of elements that gives a sculpture its unique look could be eligible for copyright protection. Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199, 209 (3d Cir. 2005) (emphasis added). Those combined features may include texture, color, size, and shape, among others, and it means nothing that these elements may not be individually entitled to protection.

The Supreme Court in Star Athletica found the two-dimensional design patterns on cheerleader uniforms eligible for copyright protection. The uniform’s utilitarian “shape, cut, and dimensions” were not copyrightable, but “the two-dimensional work of art fixed in the tangible medium of the uniform fabric” was. Imagining those designs apart from the uniform did not necessarily replicate the useful article even though the designs still looked like uniforms.

The Star Athletica Court also provided helpful examples addressing three-dimensional articles. First, it reaffirmed its decision in Mazer, which held that a statuette depicting a dancer, intended for use as a lamp base, was eligible for copyright protection. Second, the Court noted that a replica of a useful article (cardboard model car) could be copyrightable, although the underlying article (the car itself) could not. Finally, the Court noted that a shovel, “even if displayed in an art gallery,” still has an intrinsic utilitarian function beyond portraying its appearance or conveying information. So it could not be copyrighted, even though a drawing of a shovel or any separately identifiable artistic features could. We too have observed that “just because a sculpture is incorporated into an article that functions as other than a pure sculpture does not mean that the sculptural part of the article is not copyrightable.” Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663, 669 (3d Cir. 1990).

B

Having articulated the legal principles that govern our analysis, we turn to the particular facts of this case. To begin with, Rasta’s banana costume is a “useful article.” The artistic features of the costume, in combination, prove both separable and capable of independent existence as a copyrightable work: a sculpture. Those sculptural features include the banana’s combination of colors, lines, shape, and length. They do not include the cutout holes for the wearer’s arms, legs, and face; the holes’ dimensions; or the holes’ locations on the costume, because those features are utilitarian. Although more difficult to imagine separately from the costume’s non-appearance related utility (i.e., wearability) than many works, one can still imagine the banana apart from the costume as an original sculpture. That sculpted banana, once split from the costume, is not intrinsically utilitarian and does not merely replicate the costume, so it may be copyrighted.

Kangaroo responds that we must inspect each feature individually, find each one too unoriginal or too utilitarian in isolation for copyright, and decline to protect the whole. But Kay Berry forecloses this divide-and-conquer approach by training our focus on the combination of design elements in a work. And the Star Athletica Court did not cherry-pick the uniform designs’ colors, shapes, or lines; it too evaluated their combination. Thus, the separately imagined banana—the sum of its non-utilitarian parts—is copyrightable.

Kangaroo also contends the banana is unoriginal because its designers based the design on a natural banana. They ask us to hold that depictions of natural objects in their natural condition can never be copyrighted. This argument seeks to raise the originality requirement’s very low bar, which precedent forecloses for good reason. A judge’s own aesthetic judgments must play no role in copyright analysis. See Star Athletica, 137 S. Ct. at 1015. “Our inquiry is limited to how the article and feature[s] are perceived, not how or why they were designed.” Id. The cases Kangaroo cites in its brief confirm that whether natural objects are copyrightable depends on the circumstances. Compare Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003) (holding that a sculpture of a jellyfish was not copyrightable)¹⁵,
with Coquico, Inc. v. Rodriguez-Miranda, 562 F.3d 62, 69 (1st Cir. 2009) (holding that several elements of a plush toy depicting a tree frog were copyrightable). The essential question is whether the depiction of the natural object has a minimal level of creativity. Rasta’s banana meets those requirements.

We therefore hold that the banana costume’s combination of colors, lines, shape, and length (i.e., its artistic features) are both separable and capable of independent existence, and thus are copyrightable.

* * *

Because Rasta established a reasonable likelihood that it could prove entitlement to protection for the veritable fruits of its intellectual labor, we will affirm.

APPENDIX A

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Some things to consider when reading Lanard Toys:

1. The court’s discussion of Star Athletica and its application of Star Athletica’s two-part test to the useful article at issue in this case, a toy chalk holder designed to look like a pencil, a form of sculptural work. Note that generally the useful article doctrine comes up with respect to useful articles that are purported to be copyrighted “sculptural works.”
2. The court’s application of the “idea-expression dichotomy” as an additional ground for finding that the plaintiff does not own a valid copyright for its pencil-shaped chalk holder.
3. That the plaintiff also asserted a design patent claiming a pencil-shaped chalk holder.
4. The similarities between the facts of this case (chalkholder that looks like a pencil) and Silvertop Assocs. (a costume that looks like a banana). Note that the court arrives at the opposite outcome in this case. Can you reconcile the decisions?

Lanard Toys Ltd. v. Dolgencorp LLC

958 F.3d 1337 (Fed. Cir. May 14, 2020)

LOURIE, Circuit Judge.

Lanard Toys Limited (“Lanard”) appeals from the decision of the United States District Court for the Middle District of Florida granting summary judgment in favor of Dolgencorp LLC, Ja-Ru, Inc., and Toys “R” Us–Delaware, Inc. (collectively, “Appellees”) with respect to Lanard’s claims for design patent infringement, copyright infringement, trade dress infringement, and statutory and common law unfair competition. Lanard Toys Ltd. v. Toys “R” Us-Delaware, Inc., No. 3:15-cv-849-J-34PDB, 2019 WL 1304290 (M.D. Fla. Mar. 21, 2019) (“Decision”). For the reasons described below, we affirm.

BACKGROUND

Lanard makes and sells the “Lanard Chalk Pencil,” which is a toy chalk holder designed to look like a pencil. Lanard owns Design Patent D671,167 (the “D167 patent”), which contains five figures showing a pencil-shaped chalk holder from different angles. The D167 patent claims: “The ornamental design for a chalk holder, as shown and described.” Lanard also owns copyright Reg. VA 1-794-458 (the “’458 copyright”) for a work entitled “Pencil/Chalk Holder.” The relevant images are depicted below.

​

In 2011, Lanard began selling the Lanard Chalk Pencil to Dolgencorp LLC (“Dolgencorp”), which is a national distributor. In 2012, Lanard began selling the Lanard Chalk Pencil to Toys “R” Us–Delaware, Inc. (“TRU”), which was a large toy retailer with stores throughout the United States. All Lanard Chalk Pencils sold to Dolgencorp and TRU were marked to indicate Lanard’s copyright and patent (or pending patent) protection.

In 2012, Ja-Ru, Inc. (“Ja-Ru”) designed a toy chalk holder that looks like a pencil.

​

It is undisputed that Ja-Ru used the Lanard Chalk Pencil as a reference sample in designing its product. In late 2013, Dolgencorp and TRU stopped ordering units of the Lanard Chalk Pencil and instead began ordering and selling the Ja-Ru product.

The court granted summary judgment that Ja-Ru’s product does not infringe the D167 patent, that the ’458 copyright is invalid and alternatively not infringed by Ja-Ru’s product, that Ja-Ru’s product does not infringe Lanard’s trade dress, and that Lanard’s unfair competition claims fail because its other claims fail.

DISCUSSION

…

II

Next, we turn to Lanard’s claim for copyright infringement. For the following reasons, we agree with the district court that Lanard does not own a valid copyright, and, therefore, we need not reach the issue of infringement.

As the district court found, Lanard’s ’458 copyright for a “Pencil/Chalk Holder” has an intrinsic utilitarian function—storing and holding chalk and facilitating writing or drawing—which makes it a useful article under the Copyright Act. Thus, as the district court noted, the pertinent question is whether the copyright incorporates features that are sufficiently “separable” from the utilitarian aspects of the article to be eligible for copyright protection. Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1008 (2017)). In resolving that question, the court found that:

[T]he pencil design does not merely encase or disguise the chalk holder, it is the chalk holder. When one imagines the pencil design as a separate work of sculptural art, one is merely picturing a replica of the chalk holder.

Based on that finding, the court concluded that the features of Lanard’s copyright “are not capable of ‘existing independently’ as a work of art, and therefore, it is not protectable under copyright law.” (quoting Star Athletica, 137 S. Ct. at 1011).

Lanard argues that its ’458 copyright is a cartoonish No. 2 pencil design that can be perceived as a sculptural work separate from its function as a chalk holder and would qualify as a protectable work on its own if imagined in another medium separate from its utility as a chalk holder. Appellees respond that Lanard cannot identify any feature incorporated into the design of its copyright that is separate from the utilitarian chalk holder and that Lanard is merely attempting to assert copyright protection over the useful article itself.

We agree with Appellees. In attempting to identify separable features, “the feature cannot itself be a useful article.” Star Athletica, 137 S. Ct. at 1010. Here, Lanard’s ’458 copyright is for the chalk holder itself, and Lanard’s arguments in the district court and in this appeal merely confirm that it seeks protection for the dimensions and shape of the useful article itself. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright.

Furthermore, the ’458 copyright shows images that appear to be a pencil with the words “Chalk Pencil” on it, and the copyright is titled “Pencil/Chalk Holder.” Based on that limited information, in conjunction with its arguments in the district court and this appeal, Lanard is essentially seeking to assert protection over any and all expressions of the idea of a pencil-shaped chalk holder. But copyright protection does not extend to an “idea.” 17 U.S.C. § 102(b). For this additional reason, we conclude as a matter of law that Lanard does not own a valid copyright for a pencil-shaped chalk holder. Thus, we hold that the district court correctly granted summary judgment in favor of Appellees on Lanard’s claim for copyright infringement.

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FOOTNOTES: