Spin the World


copyrightable subject matter


As this volume's Overview the Concept of Copyright law suggested the romantic notion that underlies copyright law is that of a craftsman whose product is the original expression of ideas. The examples given were that of a playwright who crafts the dialogue of murder mystery, a poet who expresses national pride, a painter that creates a vision of heaven or a composer that arranges a waltz.

In order to understand the scope of copyrightable subject matter, it is essential to distinguish between "ideas" and "expression." A murder mystery is an idea for a play, national pride is an idea for a poem, a waltz is an idea for a piece of music. Perhaps you have referred to the underlying idea of an expression as the theme, genre or concept of a creative work. Ideas are not the subject of copyright protection. You cannot sue for copyright infringement of an idea. The expression of the idea for a play, poem or piece of music -- the words used, the arrangement of notes -- is the subject of copyright protection. The protected expression must be creative. In other words, it must be the work of a craftsman, not a mechanic.

    Functional expressions (e.g. a list of product ingredients) can take only a limited number of forms. What expressive range is necessary to allow copyright protection? Can MAGIC MARKETING and SEBASTAIN be distinguished in terms of quantitative difference? If idea and expression have merged, no copyright protection is available.

    There's some public interest in expressing functional ideas in a uniform manner. For example, it's helpful that telephone directories are similar from city to city so one does not have to consistently learn new systems.

    Originality is something more than not copying another work. FEIST suggests that there copyright protection requires a minimal level of creativity.

    Copyright law does not create a property right in ideas, only expression. Protecting ideas would limit intellectual progress. Patent law might protect an idea that is sufficiently novel. The purpose of the idea-expression distinction is to allow later authors to use prior works as building blocks for future progress.

    Decorative and aesthetic elements of utilitarian works may be copyrightable although incorporated into non-copyrightable objects. Example: statuette on lamp.

    One example of the copyrightability of blank forms is the production of answer sheets by a company that publishes standardized tests. What is the relationship between the market for tests and the market for answer sheets?

    A compilation is defined in s101. It is the assembly of previously existing materials, as in a directory or anthology. The copyrightability of the underlying material is a seperate issue from the copyrightability of the compilation.

    Compilations only protected by thin copyright. Slight variations on compilation by later authors may be enough to avoid infringement.

    One example of infringement detection strategy is Rural Telephone Service's introduction of false entries into its directory, (FEIST).

    There is no bright line between fact and expression. In FEIST, the Supreme Court emphasized the distinction "between creation and discovery: the first person to find and report a particular fact has not created the fact; he or she merely discovered its existence." But courts disagree all the time on the meaning of "fact." Distintions are often results-driven. Major court concerns are: to allow later authors to use prior discoveries as building blocks, to maintain market competition by limiting barriers to entry, and to create incentives for advancing arts sciences. For example, FEIST has not been consistently applied by the lower courts.

    Corporate competition in background of WEST PUBLISHING. Concerns control of the market for online legal research. Also raises antitrust concerns.

    Copyright owner's right to prepare derivative works is a relatively recent legal evolution. At common law, the translation or abridgement of a previous work was sufficient to qualify for an independent copyright.

    A requirement of originality in derivative works is suggested in the PADDINGTON BEAR CASE. There, the Second Circuit held that illustrations of Paddington Bear might be protected derivative works if they incorporate "non-trivial contributions" to the original work. Derivative works may have the "same aesthetic appeal."

    Note Judge Posner's economic analysis of right to make derivative work in GRACEN v. BRADFORD EXCHANGE (7th Cir. 1983) (Wizard of Oz watercolor not protected because it is not sufficiently different from original movie stills). Movie producers have real economic interest in licensing derivative works based on the film. If minor variations on undelying work received copyright protection, a license to make derivative works is less valuable and artists will have less incentive to create such works. Some questions this incentives analysis raises: What class benefits most from strongly protecting to right to license derivative works? How expansive is the range of possible derivative works?

    Separable useful and aesthetic elements may be necessary to protecting the aesthetic element of a mask or costume. Following MASQUERADE NOVELTY, the Copyright Office determined that masks are useful articles because they portray their own appearance, while costumes have the dual purpose of clothing the person and portraying a character.

    In some cases, the defendant will argue that both he and plaintiff based their work on a public domain source. Artist who copies the Mona Lisa cannot preclude other artists from doing same. Evidence of copying is a factual question and often involves circumstantial evidence.

    Note the possible strategic use of derivative works litigation: in BATLIN, plaintiff holds up distribution of defendant's product; in GRACEN, Judge Posner notes the incentive of subsequent artists to produce first derivative works to gain upper-hand in subsequent litigation.

    Context does not usually factor into an analysis of the similarity of graphical and pictoral works. Visual works are typically compared standing alone. BE: Works of parody seem to be one area sensitive to context. A well-know illustration may be used in a context which exposes the original to humorous criticism.

    There's a lot of legal finesse in defining the utilitarian purpose of an object and distinguishing its expressive elements. Consider as an example the distinction between masks and costumes drawn in MASQUERADE NOVELTY, INC. v. UNIQUE INDUSTRIES. Is this a distinction that courts should make on a case-by-case basis or are there consistent decision making principles? A "useful article" is defined in s101 as: "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." Separability of expressive elements may be tested in several ways: Can separate expressive designs be indentified? Could expressive elements exist independently? Has the manufacturer added something aesthetic or decorative to a plain object?

    The United States and the international community diverge substantially over the copyrightability of design patterns; designs received greater protection overseas.

    The seperability of an object's useful and expressive functions relates to the distinct purposes of patent and copyright laws. Copyright protection of expression should not leverage a monopoly over utilitarian products. It is difficult to obtain a design pattent in the United States.

    Note the role of critical expert opinion in the KIELSTEIN-CORD case where the belt buckles had been accepted into New York Metropolitan Museum's permanent collection.

    Typeface is not a copyrightable work of art.

    Copyright protection of architectual works is necessary for compliance to the Berne Convention. The 1990 Architectual Works Copyright Protection Act extends protection to buildings and models completed after December 1, 1990.

    Note the remedy used in DEMETRIADES is the destruction of building already under construction. Destruction of infringing works (e.g. book burning) is a statutory remedy.

    Two reasons to protect fictional characters: they are highly expressive because they are not real people; the appearance of an established character has commercial value which is a valuable incentive for creative talent.

    Note pre-emption of state-law claims for unjust enrichment and unfair competition in ANDERSON v. STALLONE as application of s301.

    What's fixation in tangible form? Consider a taped speech or performance.

    Does an author working independently ever fail to do something original? MAGIC MARKETING

    Could the Magic Marketing envelopes be protected as compilations?

    Are blank accounting books subject to copyright? There might be some room for originality, but they are primarily utilitarian devices for organizing the user's entries. Operating systems are not communicative.

    Is the merger of idea and expression a matter of fact for jury or a matter of law for the court? Differences between circuits have important impact on litigation strategy and costs. One might argue that jury resolution of the merger issue encourages excessive litigation.

    What are protected elements of a compilation? Facts and public domain material in a compilation are not protected by the compilation's copyright. According to one view, copyright protects the labor invested in producing a compilation, (the sweat of the brow theory). In FEIST, however, the Supreme Court held that copyrights protects only organization and selection and not hard work. What are the proper incentives for the production of useful compilations? On the one hand, the original author may be required to invest substantial resources to collect information. On the other hand, it would waste resources for later authors to re-create research. It might depend on the type of information.

    Does original complier have sufficient opportunity to recapture investments? What advantage to first publisher? Consider the user's familiarity with a particular presentation. Consider how easily data can be copied and how quickly data becomes outdated.

    Are facts determinative? or are facts subjective? Facts are creatively employed in arguments all the time. Statistics can be manipulated. Is there a clear distinction between fact and fiction? Many fictional works report real events in an author's life. Many biographies are dramatized. The distinction between fact and fiction becomes more blurred in artist biographies: the artist's imaginative product is the topic of factual analysis. See SALINGER.

    Is reading and interpreting raw data a discretionary, creative process? A court might decide that facts exist in the raw data, or that facts are contained in the interpreter's descriptive conclusions. If interpretation is only a suggestive estimation, does that lessen the protection available to statistical reports, or does that comport with a workable definition of "fact"? Are there other ways to protect resources invested in gathering facts? A common law theory of appropriation was rejected in NBA v. MOTOROLA (the pager service for sports junkies). But there's INTERNATIONAL NEWS SERVICE v. ASSOCIATED PRESS (rival copies the AP newswire), Supreme Court recognizes misappropriation action for unfair trade practice. Note here the pre-emptive effect of federal copyright law on conflicting state legislation, s301.

    Would Rural Telephone Service have a good claim for misappropriation or unfair trade practice? The White Pages don't contain sensitive company information and are widely circulated to the public.

    Could Congress pass legislation protecting databases consistent with the First Amendment? Would database protection be a constitutional regulation of interstate commerce?

    Should courts protect factual narratives more than compilations arranged in alphabetical order? Is a scientific treatment of an absurd hypothesis protected? Should the standards applicable to factual compilations apply to creative works?

    Is there a compelling difference between white pages and yellow pages? Are there more creative choices involves in producing a yellow page directory: specialization in business numbers, selection of business category headings, use of graphic design and navigational aids.

    How much room for creative variance exists in producing land maps? The placement of geographic features should not vary substantially from map to map, but these features can be presented in a variety of ways to emphasis particular elements. Is derivative production inherent without undiscovered territory? Are incentives necessary to encourage land surveys?

    How far does West's compilation copyright extend? Consider West's statute numbering. What alternative citation methods exist to reduce West's control of legal information? Note that other jurisdictions (like New York) have not followed the 8th Circuit.

    Are databases a public good like a library? If so, the problem of free riders means that there will not be sufficient market incentives to produce databases. Is there something special about information products?

    Is there a clear distinction between compilations and derivative works? Consider ownership of the underlying material, whether material is transformed in the production process, whether the new work attempts to reach new audience. DZ: some works borderline and distinction isn't always clear.

    What is the protectable element of a derivative work? In BATLIN, the Uncle Sam banks differed in terms of size, weight, and aesthetic details. The court divides over whether the bank are sufficiently distinct. Compare to HAND OF GOD case, where skill required to reproduce Rhodin sculpture in smaller scale is an appreciable difference worthy of copyright protection. Compare also ALFRED BELL, mezzotint reproduction protectible.

    How does defendant prove that there is "sufficient gross difference" between his work and the original? Consider the GRACEN case. Is defendant's skill level relevant? Is it important that the artist tranformed the image from movie still to watercolor or combined elements of different scenes?

    In his KIELESTEIN-CORD dissent, Judge Weinstein seems to argue that copyright protection is limited to a product's decorative overlay and does not encompass the product's physical dimensions. Is that an astute observation of aesthetics? Consider minimalist Shaker art. Weinstein's articulation is something of a bright line rule. Is a clearly blunt standard better than ad hoc decisions based on guesswork and judicial preference?

    In BRANDIR INTERNATIONAL v. CASCADE PAC. LUMBER CO. (2d Cir. 1987) the influence of utility was held to predominate the influence of aesthetics in the design of an undulating bicycle rack. How should court judge whether utilitarian or expressive concerns predominate? Is it simple a matter or personal perspective and style? Is it helpful to know the history of the object? Is expert opinion necessary?

    Is it necessary to protect the manufacturers of design clothes from cheap knock-offs? Aren't knock-off designs necessary to give status to particular labels? Brand name recognition is protected through trademark, not copyright. Are consumers likely to be confused that the knock-off clothes they purchase are produced by runway designers? Note that the American designer clothes industry is vibrant despite the lack of copyright protection. Note also the role of fashion in establishing social class lines.

    What are the elements of a fictional character? How is a recognizable character delineated from the shadowy world of fictional creation? The answer might depend on the medium; a flashy superhero costume might make-up for an utter lack of personality (good advice for young lawyer). Consider the role of stock characters as building blocks. Also consider the role of archetypal characters that transcend one author's lifetime (e.g. Stephen Hero, Holden Caulfield). According to Judge Hand, "the less developed the characters, the less they can be copyrighted," NICHOLS.

    Can an author sell exclusive right to use a fictional character he has created? The Sam Spade case involves interpretation of contract granting general rights to use a fictional character in a movie. Would it be unfair to enforce a contract where an author expressely sold his main character to "a large, experienced moving picture producer"? It might be similar to an agreement not to compete and enforceable.

Statutory Reference:
    s101: Definition of Terms.
    s102: General Subject Matter of Copyrights.
    s103: Subject matter of copyright: Compilations and derivative works
    s105: Subject matter of copyright: United States Government works
    s602: Infringing importation of copies or phonorecords

Illustrative Cases:
    Incredible Technologies, Inc. v. Virtual Technologies, Inc. (7th Cir. 2005) (Listen to Oral Arguments) (Read Opinion - PDF)
    Plaintiff arcade game developer not entitled to a preliminary injunction against the developer of a rival golfing arcade game. The "scenes a faire" and functional elements of plaintiff's Golden Tee arcade game are not subject of copyright protection and cannot be the basis of preliminary injunction.

    Kay Berry, Inc. v. Taylor Gifts (3rd Cir. 2005) (Read Opinion - PDF)
    Artificial garden rocks inscribed with poetry are the subject matter of copyright protection. Such works possess the quantum of creativity sufficient for copyright protection and do not completely merge into the idea of a sculpture.

    Magic Marketing v. Mailing Services of Pittsburgh (W. Dist. PA, 1986)
    Case concerns the protectability of envelopes with black stripe and "check inside" language. The courts holds that "there is a narrow class of cases where even admittedly indendent effort may be considered too trivial or insignificant to support copyright protection." Fragmentary words and phrases, dictated by functional considerations, do not the minimum threshold of creativity necessary to copyright protection.

    Sebastian International, Inc. v. Consumer Contacts (PTY) Ltd. (NJ Dist. Ct., 1988)
    Defendant imports stock of plaintiff's shampoo via South Africa. Plaintiff argues that importation infringes right to distribute protected expression printed on the bottles of shampoo. The court holds that a paragraph long product description "is more than simple a list of ingredients, directions, or a catchy phrase." There is a "modicum of creativity."

    Morrissey v. Procter & Gamble Co. (1st Cir. 1967)
    Because there are few useful ways to describe box-top contest rules, copyright protection is not appropriate. Court uses the Merger Doctrine: where the range of possible expressions has merged into a definite expression, that expression is not copyrightable.

    Bibbero Systems, Inc. v. Colwell Systems, Inc. (9th Cir. 1990)
    Case concerns the protectability of blank medical forms. According to court, a blank form must convey information (as opposed to record information) to be the subject matter of copyright. Expressive text integrated into a blank form is copyrightable, but but plaintiff's "superbill" form is not sufficiently expressive.

    Continental Casualty Co. v. Beardsley (2d Cir. 1958)
    The scope of protection available to blank forms is a function of the variety of expression available to potential competitors. If there are few practical ways to sort the user's data, a court may only protect original form from identical copies.

    Feist Publications, Inc. v. Rural Telephone Service (U.S. 1991) (Listen to Oral Arguments - Oyez) (Read Opinion - FindLaw)
    Rural Telephone Services publishes telephone directory to encourage service subscriptions, to fulfill legal responsibility, and to create market for directory advertising. Feist publishes rival directory incorporating RTS directory. Supreme Court rejects sweat of the brow theory; factual data not protected; ordering and selection are protected only if original. Court notes it is efficient to share facts.

    Nash v. CBS (7th Cir. 1990)
    Defendant television producers make program using elements of plaintiff's book about the conspiracy to fake the death of John Dillinger. According to court, defendants did not take protected elements of the plaintiff's book because it purports to contain "historical facts" and is not a work of fiction. Facts are not protected so authors may build on the work of his predecessors.

    Wainwright Securities v. Wall Street Transcript Corp. (2d Cir. 1977)
    Defendant publishes company reports incorporating analysis published by plaintiff. Although the newsworthy events reported by plaintiff are not copyrightable, the court holds that defendant has infringed protected expression by appropriating the manner of expression and analysis. Court concludes that infringement is likely when the defendant is "chiselling for personal profit."

    Roth Greeting Cards v. United Card Co. (9th Cir. 1970)
    Defendant produces a substantially similiar line of greeting cards but does not use the same pictures and messages. Court holds that neither the text or pictoral elements are independently protectable, but that the cards considered as a whole are original and copyrightable. Note that the subject matter is creative, not factual compilation. Relevant test is whether cards are substantial similiar from the perspective of an ordinary observer.

    Bellsouth Advertising & Publishing Corp. v. Donnelley Information Publishing, Inc. (11th Cir. en banc, 1993)
    Yellow pages case. District court held sufficient discretionary, creative choices to make yellow page directory copyrightable subject matter. Although the 11th Circuit noted the plaintiff used a creative means for discovering "facts" for a business directory, defendant did not exercise sufficient creativity in the selection, arrangement, and coordination of these facts for copyright protection. Also, the form of the yellow pages cannot be copyrighted because the variety of coherent expression is limited; protecting expression would limit access to ideas. Note that there's a substantial dissent arguing that the production of a business directory involved many creative choices.

    CCC Information Services v. MacLean Hunter Market Reports, Inc. (2d Cir. 1994)
    J. Leval. Second company uses data plaintiff produced on the used car market to publish reports for consumers, dealers, and insurance regulators. The later work uses different statistical technique to interpret same raw data. This cases presses the distinction between fact and expression. Court holds that plaintiff's statement of used car values is protected authorship because it is not computation, but rather the opinion of plaintiff's editors.

    West Publishing Co. v. Mead Data Central, Inc. (8th Cir. 1986)
    West claims that reproducing court opinions with page numbers used in its Reporter series is copyright infringement. Court opinions themselves are public domain material. Court holds that West's pagination is protected authorship: it is original (not copied) and although page numbering is not creative, including page numbers allows database subscriber to produce their own version of the West Reporters.

    Toro Co. v. R & R Products Co. (8th Cir. 1986)
    Defendant uses plaintff's product identification numbers to organize its catalog of replacement lawnmower parts. Court holds that the assignment of product numbers is not a sufficiently creative work of authorship: they are random and plaintiff has added only trivial variations to numbers that are available in the public domain.

    Mason v. Montgomery Data, Inc. (5th Cir. 1992) (Read Opinion - PDF)
    Defendant directly copied plaintiff's maps of real estate lots. Court holds that many discretionary choices involved in producing map and that second comer needs to recreate work from plaintiff's sources, or it robs plaintiff's expression.
    DZ: This might be case were fairness concerns pushed into copyright terms.

    Atari Games Corp. v. Oman (D.C. Cir. 1992)
    Even is individual audio and visual components of the video game "Breakout" are not copyrightable, the work may be protectable when the elements of the game are considered as a whole.

    Kuddle Toy, Inc. v. Pussycat-Toy, Inc. (E. Dist. NY, 1974)
    In case concerning copyrightability of stuffed teddy bear, court describes the special status of a derivative work as a labor-intensive transformative process. Restates the major principles of ALFRED BELL (mezzotints).

    Batlin & Son v. Snyder (2d Cir. 1976)
    Plaintiff produces cast-iron bank from public domain image of Uncle Sam. Defendant imports cheaper, plastic version of the Uncle Sam bank. Majority holds that importation violates plaintiff's right to make derivative works.

    John Muller & Co. v. New York Arrows Soccer Team (8th Cir. 1986)
    A graphical logo "must show minimal levels of creativity and originality" to be the subject matter of copyright.

    Kitchens of Sara Lee, Inc. v. Nifty Foods Corp. (2d Cir. 1957)
    Pictures of food items appearing on labels of plaintiff's frozen deserts "have sufficient commercial artistry to entitle them to protection against obvious copying." Other features of the product label, like its geometric shape and preparation instructions, are not the subject matter of copyright.

    Mazer v. Stein (U.S. 1954) (Read Opinion - FindLaw)
    Statuette incorporated into lamp is copyrightable work of art. Protection does not extend to separable mechanical and utilitarian aspects. Courts should not consider: the availability of patent protection, the artist's commerical intentions, the aesthetic value of the work, the scale of the product's production.

    Masquerade Novelty Inc. v. Unique Industries (3d Cir. 1990)
    Masks designed to resemble animal noses are copyrightable. That the work produces a calculated effect on the viewer (e.g. to portray an animal expression) does not make it useful. By analogy, a painting designed to arouse a particular emotion is not a useful article.

    Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co. (4th Cir. 1996) (Read Opinion - Emory) (Read Opinion - PDF)
    Animal mannequins used by taxidermists to mount animal skins have protectable expressive function in how animal skin is diplayed and not not simply useful articles.

    Kieselstein-Cord v. Accessories by Pearl, Inc. (2d Cir. 1980)
    Defendant produces inexpensive version of plaintiff's designer belt buckles. At issue in case is whether belt buckles are a useful object for which copyright protection is unavailable. The court holds that the designer belt buckles have an original and creative elements that is separable from their utilitarian purpose. The court notes that the designs are worn not as belts.

    Carol Barnhart, Inc. v. Economy Cover Corp. (2d Cir. 1985)
    Styrene chest mannequins are not protected sculptures because they are designed for the functional purpose of clothes display.

    Demetriades v. Kaufmann (So. Dist. NY, 1988)
    Case concerning copyright protection of architectual design under Copyright Act prior to the Architectural Works Copyright Protection Act of 1990. Court holds architectural plans protected, but the building that they describe is an unprotected use the protected explanation. Relies on BAKER v. SELDEN.

    Nichols v. Universal Pictures Corp. (2d Cir. 1930)
    It is for the lay observer to distinguish between illicit and permissible copying and not expert witnesses nor piece-by-piece analysis of the elements of the two works. The distinction between illicit and permissible copying is related to the distinction between expressions and ideas.

    Warner Bros., Inc. v. Columbia Broadcasting System (9th Cir. 1954)
    This case concerns the copyright protection available to the fictional detective character Sam Spade in works by Dashiell Hammett. Author does not convey exclusive right to fictional character when he grants license to make movie of fictional character. An author may depend on a central character's reappearance in a series of works.

    Anderson v. Stallone (Cen. Dist. CA, 1989)
    Case concerning treatment of Rocky Balboa character in movie sequels. For character to be protected by copyright, the character must be developed with sufficient specificity (Hand in NICHOLS) and must be central to the story being told (SAM SPADE CASE). By these tests, the Rocky Balboa character is the subject matter of copyright.

    Walt Disney Production v. Air Pirates (9th Cir. 1978)
    Disney cartoons characters such as Mickey Mouse and Goofy are subject matter of copyright. The court holds comic book characters, having a graphic component, "is more likely to contain some unique elements of expression" than a purely literary figure.

    Detective Comics, Inc. v. Bruns Publishing (2d Cir. 1940)
    When a comic book hero like Superman develops a recognizable personality, the fiction character is copyrightable. A cartoon character's personality exists in its particular antics and distinct graphic appearance.

    Mitchell Brothers Film Group v. Cinema Adult Theater (5th Cir. 1979)
    Copyright protection is not restricted based on the content of the work. In this case, it is not an affirmative defense to infringement that the films were obscene. Such a restriction would stifle creativity and impose a uniform national standard contrary to community preferences.