THE SUBJECT MATTER OF COPYRIGHT

Transcription

1 H THE SUBJECT MATTER OF COPYRIGHT

2 Requirements for Copyright Protection Chapter I introduced some of the reasons that society might find it desirable to implement a legal rule that grants creators certain exclusive rights in their works. Translating theory into practice, however, raises a number of important questions. In this chapter, we consider the basic requirements for copyright protection. As you read the materials, think about the policies underlying the requirements. Keep in mind also that a determination of copyrightability says little or nothing about the value of the copyright or the underlying work to the creator or to society. Whether a copyright is valuable or not depends on a number of factors, including the nature of the work, the scope of the copyright and other rights in the work, whether the creator chooses to exploit the work commercially, and whether the public values the work. A. THE ELEMENTS OF COPYRIGHTABLE SUBJECT MATTER Over time, Congress has changed its answer to the question of what works should be protected by copyright. What has not changed, however, is Congress' starting point-the Constitution: The Congress shall have Power... To promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. U.S. Canst., Art. I, 8, d. 8. As you will see, Congress has broad (although not infinite) leeway in defining what the terms in the clause mean. Thus, the congressional decision about which "writings" should be the subject matter of copyright protection is primarily one of policy. 49

3 50 2. Requirements for Copyright Protection From an economic perspective, the grant of exclusive rights entails a variety of costs. First, any system of rights entails costs of administration and enforcement. In the particular case of copyright, the cost of administration (compared especially to patent law that has an extensive pre-grant examination process) is not especially significant, but the cost of enforcement, particularly if litigation is required, can be steep. Additionally, the copyright system results in so-called deadweight losses because copyright enables creators to price above the marginal cost of their works. 1 Indeed, for the rights to achieve the goal of correcting the public goods problem discussed in Chapter l, they must allow such pricing. However, the higher price means that some consumers will not be able to purchase copies of the protected work. This limits dissemination of the knowledge contained within the workknowledge that might provide the basis for further progress. This is a second cost of a copyright system, albeit one that is hard to quantify. Simple economic theory would hold that a system of exclusive rights should not incur these costs unless the benefits it produces exceed them. Granting exclusive rights in a work that would have been created in their absence imposes a loss on society; granting stronger exclusive rights than necessary to induce creation of a work also imposes a loss. Conversely, of course, failing to grant rights or granting weaker ones than necessary to induce creation also imposes a loss. Further complicating matters, different types of works and different industries have widely varying incentive structures. Is the incentive required to encourage the efficient level of software production the same as that required for novels? Should policymakers conduct a cost-benefit analysis for each individual work, for each type of work, or in the aggregate? As you will see in this and later chapters, the Act speaks in general terms but does also sometimes provide quite detailed rules for particular types of works, partly to acknowledge differences among them and the industries that produce or market them. In reality, of course, the decision to grant exclusive rights in particular works does not depend entirely on cost-benefit analysis. Other, noneconomic considerations also will militate for (or against) grants of copyright protection. Is the work of a sort that appears to require creativity to produce? Does copyright protection for that work therefore seem theoretically justified? Would extending protection to a particular kind of subject matter interfere too much with the creation of new works? l. Marginal cost is the additional cost to produce one more unit of output. Standard economic theory holds that in a competitive market, sellers will price their products at marginal cost. Deadweight loss is the loss associated with noncompetitive pricing (i.e., non-marginal cost pricing) or other factors that move the market away from the competitive output. In the case of copyrighted works, the marginal cost is the expense to produce and distribute one more unit of the medium embodying the work. Pricing at marginal cost, however, does not permit the creator of the work to recoup the fixed costs incurred in creating the work initially. Copyright gives the rightholder some market power to enable pricing above marginal cost. Copyright thus produces some amount of deadweight loss. Note that the grant of copyright protection will not necessarily result in the rightholder obtaining an economic monopoly, because market substitutes for the work may exist. The deadweight losses associated with above marginal-cost pricing will increase as the rightholder's market power increases.

4 A. The Elements of Copyrightable Subject Matter 51 Finally, once the initial cost-benefit decision to create a copyright system has been made, decisions about which works should benefit may simply reflect considerations of equity and consistency. Once some works are designated to receive copyright protection, it may seem only fair that other, similar works also receive it. As technology has developed, leading to opportunities to create works in new ways, copyright law has repeatedly had to confront the question whether to expand protection to new works. As you will see, the answer has almost always been "yes." Do you think that Congress should routinely require empirical evidence before granting new rights (or introducing limits on existing ones)? Section 102 of the Copyright Act represents the congressional judgment as to what works merit the grant of the exclusive copyright rights, identifies some of the categories of subject matter eligible for protection, and places limits on the elements of a work eligible for protection: 102. Subject matter of copyright: In general LOOKING FORWARD Note that neither registration with the Copyright Office nor use of the symbol is required to obtain or maintain copyright protection. We address the benefits of both registration and notice in Chapter 11. (a) Copyright protection subsists, in accordance with this title, in 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. Works of authorship include the following categories: ( 1) literary works; (2) musical works, including any accompanying words; ( 3) dramatic works, including any accompanying music; ( 4) pantomimes and choreographic works; ( 5) pictorial, graphic, and sculptural works; ( 6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works. (b) 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. Thus, 102 establishes three requirements for copyrightable subject matter. First, the work for which protection is sought must be "fixed" in a tangible medium of expression. Second, it must be an "original work of authorship." The third and final requirement is a negative one: Copyright protection for a work that is both fixed and original will not extend to elements of the work that constitute ideas, procedures, and the like. In other words, copyright protection does not attach to every element of a work. Section 102 also provides a nonexclusive categorization of works of authorship eligible for protection so long as they meet the three requirements. As you will see in later chapters, categorization can be important in

5 52 2. Requirements for Copyright Protection determining the scope of protection. For now, as you read the cases, think about how the work at issue would be classified. I. Fixation Always look first to the statute for a definition of terms used in the Act. You will in a tangible medium of expression" to be eligible Section 102(a) requires that a work be "fixed find many terms- e.g., "fixed," and most for copyright protection. The Berne Convention of the subject matter categories - defined in 101. Other terms are defined elsewhere in the Act. Sometimes, however, ation to member countries (see Berne Conv. leaves the decision about whether to require fix as in the case of"original works of authorship," there is no definition in the Act. Treaty nor the TRIPS Agreement requires fixa Art. 2(2) ), and neither the WIPO Copyright tion. Many, if not most, countries' copyright laws do not include a fixation requirement. As you read the following, consider why the U.S. requires fixation as a condition of copyright protection. Congress defined "fixed" in the 1976 Copyright Act in 101: A work is "fixed" in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is "fixed" for purposes of this title if a fixation of the work is being made simultaneously with its transmission. 17 u.s.c. lol. Under 101, there are only two types of media in which a work may be fixed: copies and phonorecords. Read the definitions of"copies" and "phonorecords" in 101 now, and consider what the differences are between them and what types of works are likely to embodied in each. As Congress explained when enacting the 1976 Act, it chose the concept of fixation as a high level approach to the problem of identifying when a copy of a work could be said to exist. It also intentionally drafted the new statutory definition of "fixed" to accommodate new technologies: [The] broad language is intended to avoid the artificial and largely unjustifiable distinctions, derived from [some cases] under which statutory copyrightability has been made to depend upon the form or medium in which the work is fixed. Under the bill it makes no difference what the form, manner, or medium of fixation may be-whether it is in words, numbers, notes, sounds, pictures, or any other graphic or symbolic indicia, whether embodied in a physical object in written, printed, photographic, sculptural, punched, magnetic, or any other stable form, and whether it is capable of perception directly or by means of any machine or device "now known or later developed." H.R. Rep. No , 94th Cong., 2d Sess. 52 (1976), reprinted in 1976 U.S.C.CA.N. 5659, Note, however, that in the 101 definitions of "phonorecords" and "copies," Congress preserved the distinction between media embodying sounds and other fixed embodiments of copyrighted works.

6 A. The Elements of Copyrightable Subject Matter 53 Some complexities remained, however. Re-read the first sentence of the definition of "fixed." Despite its breadth, it did not clearly cover live transmissions of, for example, a comedy routine or song performed over the airwaves, which might not exist in a copy sufficiently stable to be perceived for a period of more than transitory duration. Yet broadcasts clearly are able to be perceived by their intended audiences and it would be paradoxical if no one could claim a copyright interest in a means of dissemination capable of reaching millions of listeners or viewers simultaneously. This problem also illustrates the difference between U.S. copyright law and that of other countries that accord protection to perceptible works regardless of fixation. To solve the problem of live broadcasts while still retaining a fixation requirement in U.S. copyright law, Congress added a second sentence to the statutory definition. That sentence adopts a narrow, situation-specific solution to resolve: the status of live broadcasts-sports, news coverage, live performances of music, etc. that are reaching the public in unfixed form but that are simultaneously being recorded.... The further question to be considered is whether there has been a fixation. If the images and sounds to be broadcast are first recorded (on a video tape, film, etc.) and then transmitted, the recorded work would be considered a "motion picture" subject to statutory protection against unauthorized reproduction or retransmission of the broadcast. If the program content is transmitted live to the public while being recorded at the same time, the case would be treated the same; the copyright owner would not be forced to rely on common law rather than statutory rights in proceeding against an infringing user of the live broadcast. Thus, assuming it is copyrightable-as a "motion picture" or "sound recording," for example-the content of a live transmission should be regarded as fixed and should be accorded statutory protection if it is being recorded simultaneously with its transmission. H.R. Rep. No , 94th Cong., 2d Sess (1976), reprinted in U.S.C.C.A.N. 5659, This clarification of the copyright status of live transmissions, however, raised another question: What about a contemporaneous recording of a live performance that is not also simultaneously being transmitted? Arguably, a contemporaneous recording of a live performance that is not being transmitted still could qualify as a fixation of the work being performed under the first sentence of the statutory definition as long as it is prepared by or under the authority of the author. However, the leading treatise on copyright law takes the opposite view. See Melville B. Nimmer & David Nimmer, 1 Nimmer on Copyright l.08[c][2], at 1-ll5 (asserting that the second sentence of the definition sets forth the only circumstances in which "the simultaneous recordation concept" can effect a fixation). If a performer cannot cause copyright to subsist in a live performance by making a simultaneous recording, an unauthorized bootleg recording made by an audience member would not violate any copyright rights belonging to the performer If the work being performed-e.g., a musical composition or dramatic monologue-were protected by copyright, the bootlegger would need permission from the copyright owner of that work to make copies of the recording and distribute them. You will learn about the complicated field of music copyrights in Chapter 7.

7 54 2. Requirements for Copyright Protection LOOKING FORWARD In 1994, Congress enacted an amendment to. the Copyright Act to implement the TRIPS In Chapter 8.B.1 we will consider whether Agreement, which requires protection for live Congress has the power to protect musical performances. Section ll01(a) prohibits "unfixed" works. the fixation or transmission of a live musical performance without the consent of the performer, and also prohibits the reproduction or distribution of copies or phonorecords of an unauthorized fixation of a live musical performance. The meaning of"fixed" seemed obvious enough both in terms of the media in which works would be embodied (e.g., books and sheet music, cassette tapes, film, and hard disks) and as a test for the initial creation of a copyrightable work. For example, a traditional literary work such as a novel exists, for purposes of federal copyright protection, from the moment that the author causes it to be fixed on paper or in a word processing file. But how should courts interpret the statutory language in the case of digital images that seem to have an ephemeral existence or that change depending on user interaction? Williams Electronics, Inc. v. Artie International, Inc. 685 F.2d 870 (3d Cir. 1982) SLOVITER, J.:... Plaintiff-appellee Williams Electronics, Inc. manufactures and sells coin-operated electronic video games. A video game machine consists of a cabinet containing, inter alia, a cathode ray tube (CRT), a sound system, hand controls for the player, and electronic circuit boards. The electronic circuitry includes a microprocessor and memory devices, called ROMs (Read Only Memory), which are tiny computer "chips" containing thousands of data locations which store the instructions and data of a computer program. The microprocessor executes the computer program to cause the game to operate.... In approximately October 1979 Williams began to design a new video game, ultimately called DEFENDER, which incorporated various original and unique audiovisual features. The DEFENDER game was introduced to the industry at a trade show in 1980 and has since achieved great success in the marketplace. One of the attractions of video games contributing to their phenomenal popularity is apparently their use of unrealistic fantasy creatures, a fad also observed in the popularity of certain current films. In the DEFENDER game, there are symbols of a spaceship and aliens who do battle with symbols of human figures. The player operates the flight of and weapons on the spaceship, and has the mission of preventing invading aliens from kidnapping the humans from a ground plane. Williams obtained three copyright registrations relating to its DEFENDER game: one covering the computer program... the second covering the audiovisual

8 A. The Elements of Copyrightable Subject Matter 55 effects displayed during the game's "attract mode" 3... and the third covering the audiovisual effects displayed during the game's "play mode." 4... Defendant-appellant Artie International, Inc. is a seller of electronic components for video games in competition with Williams. The district court made the following relevant findings which are not disputed on this appeal. Artie has sold circuit boards, manufactured by others, which contain electronic circuits including a microprocessor and memory devices (ROMs). These memory devices incorporate a computer program which is virtually identical to Williams' program for its DEFEN DER game. The result is a circuit board "kit" which is sold by Artie to others and which, when connected to a cathode ray tube, produces audiovisual effects and a game almost identical to the Williams DEFENDER game including both the attract mode and the play mode. The play mode and actual play of Artie's game, entitled "DEFENSE COMMAND," is virtually identical to that of the Williams game, i.e., the characters displayed on the cathode ray tube including the player's spaceship are identical in shape, size, color, manner of movement and interaction with other symbols. Also, the attract mode of the Artie game is substantially identical to that ofwilliams' game, with minor exceptions such as the absence of the Williams name and the substitution of the terms "DEFENSE" and/or "DEFENSE COMMAND" for the term "DEFENDER" in its display. Based on the evidence before it, the district court found that the defendant Artie had infringed the plaintiff's computer program copyright for the DEFENDER game by selling kits which contain a computer program which is a copy of plaintiff's computer program, and that the defendant had infringed both of the plaintiff's audiovisual copyrights for the DEFENDER game by selling copies of those audiovisual works. In the appeal before us, defendant does not dispute the findings with respect to copying but instead challenges the conclusions of the district court with respect to copyright infringement and the validity and scope of plaintiffs copyrights.... With respect to the plaintiff's two audiovisual copyrights, defendant contends that there can be no copyright protection for the DEFENDER game's attract mode and play mode because these works fail to meet the statutory requirement of "fixation."... Defendant claims that the images in the plaintiff 's audiovisual game are transient, and cannot be "fixed." Specifically, it contends that there is a lack of "fixation" because the video game generates or creates "new" images each time the attract mode or play mode is displayed, notwithstanding the fact that the new images are identical or substantially identical to the earlier ones. We reject this contention. The fixation requirement is met whenever the work is "sufficiently permanent or stable to permit it to be... reproduced, or otherwise communicated" for more than a transitory period. Here the original audiovisual features of the DEFENDER game repeat themselves over and over. The identical 3. The "attract mode" refers to the audiovisual effects displayed before a coin is inserted into the game. It repeatedly shows the name of the game, the game symbols in typical motion and interaction patterns, and the initials of previous players who have achieved high scores. 4. The "play mode" refers to the audiovisual effects displayed during the actual play of the game, when the game symbols move and interact on the screen, and the player controls the movement of one of the symbols (e.g., a spaceship).

9 56 2. Requirements for Copyright Protection contention was previously made by this defendant and rejected by the court in Midway Manufacturing Co. v. Artie International) Inc., supra, slip op. at Moreover, the rejection of a similar contention by the Second Circuit is also applicable here. The court stated: The [video game's] display satisfies the statutory definition of an original "audiovisual work," and the memory devices of the game satisfy the statutory requirement of a <<copy) ) in which the work is <p,xed. ))The Act defines "copies" as "material objects... in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device" and specifies that a work is "fixed" when "its embodiment in a copy... is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." 17 U.S.C. App. 101 (1976). The audiovisual work is permanently embodied in a material object ) the memory devices, from which it can be perceived with the aid of the other components of the game. Stern Electronics) Inc. v. Kaufman, 669 F.2d [852,] [(2d Cir. 1982)] (footnote omitted; emphasis added). Defendant also apparently contends that the player's participation withdraws the game's audiovisual work from copyright eligibility because there is no set or fixed performance and the player becomes a co-author of what appears on the screen. Although there is player interaction with the machine during the play mode which causes the audiovisual presentation to change in some respects from one game to the next in response to the player's varying participation, there is always a repetitive sequence of a substantial portion of the sights and sounds of the game, and many aspects of the display remain constant from game to game regardless of how the player operates the controls. See Stern Electronics) Inc. v. Kaufman, 669 F.2d at Furthermore, there is no player participation in the attract mode which is displayed repetitively without change.... NOTES AND QUESTIONS I. Why require fixation as a condition of copyright protection? Do works that are not fixed qualify as "writings" in the constitutional sense? Are there policy considerations that militate in favor of requiring fixation? 2. Williams says that player participation that changes the screen display does not make the audiovisual work "unfixed" for copyright purposes. Do you agree with the court's reasoning? What criterion does the court use to determine whether the fixation requirement has been satisfied? How would that criterion apply to newer generations of games in which artificial intelligence and virtual reality techniques allow the player to "create" the game as he or she plays? If the display may never be repeated exactly (because the same interaction may never occur), is the display copyrightable? 3. Why do you think Congress included the phrase "by or under the authority of the author" in the definition of "fixed"? If your copyright professor gives an

10 A. The Elements of Copyrightable Subject Matter 57 off-the-cuff lecture and you make an audiotape ofit, is the recording a work "fixed in a tangible medium of expression" for purposes of obtaining copyright protection? The fixation question rarely arises in the context of copyrightability; more often, it arises in cases involving alleged infringement. Infringement of the exclusive right of reproduction (covered in detail in Chapter 5) can occur only if the allegedly infringing material is itself fixed in either a copy or a phonorecord. We turn here to a case involving alleged infringement in the context of digital embodiments of works, which often have a more ephemeral existence than the embodiments with which legislators drafting the Act were familiar. Cartoon Network LP v. CSC Holdings, Inc. 536 F.3d 121 (2d Cir. 2008), cert. denied, 557 U.S. 946 (2009) WALKER, J.:... [ Cablevision provides its subscribers with a Remote Storage DVR System (the RS-DVR) to allow customers who do not own DVRs to record and play back content. Cablevision split its programming data stream into two identical streams. One is transmitted to Cablevision's customers and the other routed through a buffering device called the Broadband Media Router (BMR) (in 1.2 second increments). The BMRreformats the data stream and sends it to the Arroyo Server, which in turn consists of two data buffers and high-capacity hard disks. The data then moves through the "primary ingest buffer" (in 0.1 second increments). If a customer requests a recording of the program, the data moves from the primary ingest buffer ultimately to a part of a hard disk allocated to that customer. Otherwise, the programming data continues to pass through buffer memory, and is overwritten by new programming data.] Transmitted to Customers Overwritten every 1.2 seconds Programming stream Broadband Media Router (BMR) Primary ingest buffer ' If customer "records" v "Remote DVR" -Dedicated server space for each customer Overwritten every 0.1 seconds

11 58 2. Requirements for Copyright Protection I. The Buffer Data Discussion... It is undisputed that Cablevision, not any customer or other entity, takes the content from one stream of programming, after the split, and stores it, one small piece at a time, in the BMR buffer and the primary ingest buffer. As a result, the information is buffered before any customer requests a recording, and would be buffered even if no such request were made. The question is whether, by buffering the data that make up a given work, Cablevision "reproduce[ s ]" that work "in copies," 17 U.S.C. 106(1), and thereby infringes the copyright holder's reproduction right. "Copies," as defined in the Copyright Act, "are material objects... in which a work is fixed by any method... and from which the work can be... reproduced." Id The Act also provides that a work is " 'fixed' in a tangible medium of expression when its embodiment... is sufficiently permanent or stable to permit it to be... reproduced... fo r a period of more than transitory duration." I d. (emphasis added). We believe that this language plainly imposes two distinct but related requirements: the work must be embodied in a medium, i.e., placed in a medium such that it can be perceived, reproduced, etc., from that medium (the "embodiment requirement"), and it must remain thus embodied "for a period of more than transitory duration" (the "duration requirement"). See 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 8.02[B][3], at 8-32 (2007). Unless both requirements are met, the work is not "fixed" in the buffer, and, as a result, the buffer data is not a "copy" of the original work whose data is buffered. The district court mistakenly limited its analysis primarily to the embodiment requirement. As a result of this error, once it determined that the buffer data was "[ c ]learly... capable of being reproduced," i.e., that the work was embodied in the buffer, the district court concluded that the work was therefore "fixed" in the buffer, and that a copy had thus been made. In doing so, it relied on a line of cases beginning with MAl Systems Corp. v. Peak Computer Inc., 991 F.2d 511 (9th Cir.1993)... The district court's reliance on cases like MAl Systems is misplaced. In general, those cases conclude that an alleged copy is fixed without addressing the duration requirement; it does not follow, however, that those cases assume, much less establish, that such a requirement does not exist. Indeed, the duration requirement, by itself, was not at issue in MAl Systems and its progeny.... In MAl Systems, defendant Peak Computer, Inc., performed maintenance and repairs on computers made and sold by MAl Systems. In order to service a customer's computer, a Peak employee had to operate the computer and run the computer's copyrighted operating system software. The issue in MAl Systems was whether, by loading the software into the computer's RAM, the repairman created a "copy" as defined in 101. The resolution of this issue turned on whether the

12 A. The Elements of Copyrightable Subject Matter 59 software's embodiment in the computer's RAM was "fixed," within the meaning of the same section. The Ninth Circuit concluded that by showing that Peak loads the software into the RAM and is then able to view the system error log and diagnose the problem with the computer, MAl has adequately shown that the representation created in the RAM is "sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." Id. at 518 (quoting 17 U. S.C. 101). The MAl Systems court referenced the "transitory duration" language but did not discuss or analyze it. The opinion notes that the defendants "vigorously" argued that the program's embodiment in the RAM was not a copy, but it does not specify the arguments defendants made. Id. at 517. This omission suggests that the parties did not litigate the significance of the "transitory duration" language, and the court therefore had no occasion to address it. This is unsurprising, because it seems fair to assume that in these cases the program was embodied in the RAM for at least several minutes. Accordingly, we construe MAl Systems and its progeny as holding that loading a program into a computer's RAM can result in copying that program. We do not read MAl Systems as holding that, as. a matter of law, loading a program into a form of RAM always results in copying. Such a holding would read the "transitory duration" language out of the definition, and we do not believe our sister circuit would dismiss this statutory language without even discussing it. It appears the parties in MAl Systems simply did not dispute that the duration requirement was satisfied; this line of cases simply concludes that when a program is loaded into RAM, the embodiment requirement is satisfied-an important holding in itself, and one we see no reason to quibble with here. At least one court, relying on MAl Systems in a highly similar factual setting, has made this point explicitly. In Advanced Computer Services of Michigan, Inc. v. MAl Systems Corp., the district court expressly noted that the unlicensed user in that case ran copyrighted diagnostic software "for minutes or longer," but that the program's embodiment in the computer's RAM might be too ephemeral to be fixed if the computer had been shut down "within seconds or fractions of a second" after loading the copyrighted program. 845 F. Supp. 356, 363 (E.D. Va. 1994). We have no quarrel with this reasoning.... Cablevision does not seriously dispute that copyrighted works are "embodied" in the buffer. Data in the BMR buffer can be reformatted and transmitted to the other components of the R S-DVRsystem. Data in the primary ingest buffer can be copied onto the Arroyo hard disks if a user has requested a recording of that data. Thus, a work's "embodiment" in either buffer "is sufficiently permanent or stable to permit it to be perceived, reproduced," (as in the case of the ingest buffer) "or otherwise communicated" (as in the BMR buffer). The result might be different if only a single second of a much longer work was placed in the buffer in isolation. In such a situation, it might be reasonable to conclude that only a minuscule portion of a work, rather than "a work" was embodied in the buffer. Here, however, where

13 60 2. Requirements for Copyright Protection every second of an entire work is placed, one second at a time, in the buffer, we conclude that the work is embodied in the buffer. Does any such embodiment last "for a period of more than transitory duration"? No bit of data remains in any buffer for more than a fleeting 1.2 seconds. And unlike the data in cases like MAl Systems, which remained embodied in the computer's RAM memory until the user turned the computer off, each bit of data here is rapidly and automatically overwritten as soon as it is processed. While our inquiry is necessarily fact-specific, and other factors not present here may alter the duration analysis significantly, these facts strongly suggest that the works in this case are embodied in the buffer for only a "transitory" period, thus failing the duration requirement. Against this evidence, plaintiffs argue only that the duration is not transitory because the data persist "long enough for Cablevision to make reproductions from them." Br. ofpls.-appellees the Cartoon Network et al. at 51. As we have explained above, however, this reasoning impermissibly reads the duration language out of the statute, and we reject it. Given that the data reside in no buffer for more than 1.2 seconds before being automatically overwritten, and in the absence of compelling arguments to the contrary, we believe that the copyrighted works here are not "embodied" in the buffers for a period of more than transitory duration, and are therefore not "fixed" in the buffers. Accordingly, the acts of buffering in the operation of the RS-DVR do not create copies, as the Copyright Act defines that term.... NOTES AND QUESTIONS l. Do you agree with the Cartoon Network court's reasoning? Why, or why not? Does the court convincingly distinguish MAl? 2. The House Report accompanying the 1976 Act states: [T]he definition of fixation would exclude from the concept purely evanescent or transient reproductions such as those projected briefly on a screen, shown electronically on a television or other cathode ray tube, or captured momentarily in the memory of a computer. H.R. Rep. No , 94th Cong., 2d Sess. 53 (1976), reprinted in 1976 U. S.C.C.A.N. 5659, Does Cartoon Network or MAl seem more faithful to the legislative intent expressed in this passage? PROBLEMS a. Andy takes photos with his iphone and sends them via Snapchat to his distribution list. The photos are only temporarily stored on Snapchat's servers and the recipients' devices. A "snap" is deleted from Snapchat's and the recipients' systems

14 A. The Elements of Copyrightable Subject Matter 61 after all recipients have viewed it, although a Snapchat user may set his or her device to store the photo indefinitely. Are the snaps fixed? Do Andy's settings matter to this inquiry? b. Would your answer to Question a change if Andy uses Instagram instead? Assume that Instagram stores images on its own servers and in the sender's account (at the sender's option) but not on the recipients' devices. 2. Originality The second requirement for copyrightability is that a work be an "original work[] of authorship." 17 U. S.C. 102(a). Once again, neither the Berne Convention nor the TRIP S Agreement expressly imposes any requirement of originality or creativity, although both agreements assume an authorial presence. Nonetheless, nearly all countries require some level of creativity as a prerequisite for copyright protection. To see why, consider whether it would make sense to grant exclusive rights to someone who merely copies a preexisting work. From an economic perspective, the mere copyist has supplied nothing to justify the cost of a grant of copyright; from a noneconomic perspective, the copyist has supplied nothing of his or her "own." But it is difficult to quantify the level of originality that is most likely to accomplish copyright law's goals. Indeed, as you will see, it is possible to define. the term "originality" in different ways. a. Classic Cases Although U. S. copyright law has always required originality as a condition of copyright protection, it has not always done so expressly. Instead, courts found an originality requirement implicit in the statutes and in the underlying language of the constitutional grant of authority to enact copyright laws. The following three cases, while now quite old, are part of every copyright lawyer's lexicon and good examples of early judicial approaches to defining originality. Burrow-Giles Lithographic Co. v. Sarony 111 u.s. 53 (1884) MILLER, J.:... The suit was commenced by an action at law in which Sarony was plaintiff and the lithographic company was defendant, the plaintiff charging the defendant with violating his copyright in regard to a photograph, the title of which is "Oscar Wilde No. 18."... [The defendant assigns as error the finding of] the court below... that Congress had and has the constitutional right to protect photographs and negatives thereof by copyright.... The constitutional question is not free from difficulty.... The argument here is, that a photograph is not a writing nor the production of an author. Under the acts of Congress designed to give effect to this section, the persons who are to be benefited are divided into two classes, authors and inventors. The monopoly which is granted

15 62 2. Requirements for Copyright Protection to the former is called a copyright, that given to the latter, letters patent.... It is insisted in argument, that a photograph being a reproduction on paper of the exact features of some natural object or of some person, is not a writing of which the producer is the author. Section 4952 of the Revised Statutes places photographs in the same class as things which may be copyrighted with "books, maps, charts, dramatic or musical compositions, engravings, cuts, prints, paintings, drawings, statues, statuary, and models or designs intended to be perfected as works of the fine arts." "According to the practice of legislation in England and America," says Judge Bouvier, 2 Law Dictionary, 363, "the copyright is confined to the exclusive right secured to the author or proprietor of a writing or drawing which may be multiplied by the arts of printing in any of its branches." The first Congress of the United States, sitting immediately after the formation of the Constitution, enacted that the "author or authors of any map, chart, book, or books, being a citizen or resident of the United States, shall have the sole right and liberty of printing, reprinting, publishing, and vending the same for the period of fourteen years from the recording of the title thereof in the clerk's office, as afterwards directed." 1 Stat. 124, 1. This statute not only makes maps and charts subjects of copyright, but mentions them before books in the order of designation. The second section of an act to amend this act, approved April 29, 1802, 2 Stat. 171, enacts that from the first day ofjanuary thereafter, he who shall invent and design, engrave, etch, or work, or from his own works shall cause to be designed and engraved, etched or worked, any historical or other print or prints shall have the same exclusive right for the term of fourteen years from recording the title thereof as prescribed by law.... The construction placed upon the Constitution by the first act of 1790, and the act of 1802, by the men who were contemporary with its formation, many of whom were members of the convention which framed it, is of itself entitled to very great weight, and when it is remembered that the rights thus established have not been disputed during a period of nearly a century, it is almost conclusive. Unless, therefore, photographs can be distinguished in the classification on this point from the maps, charts, designs, engravings, etchings, cuts, and other prints, it is difficult to see why Congress cannot make them the subject of copyright as well as the others. These statutes certainly answer the objection that books only, or writing in the limited sense of a book and its author, are within the constitutional provision. Both these words are susceptible of a more enlarged definition than this. An author in that sense is "he to whom anything owes its origin; originator; maker; one who completes a work of science or literature." Worcester. So, also, no one would now claim that the word writing in this clause of the Constitution, though the only word used as to subjects in regard to which authors are to be secured, is limited to the actual script of the author, and excludes books and all other printed matter. By writings in that clause is meant the literary productions of those authors, and Congress very properly has declared these to include all forms of writing, printing, engraving, etching, &c., by which the ideas in the mind of the author are given visible expression. The only reason why photographs were not included in the extended list in the act of 1802 is probably that they did not exist, as photography

16 A. The Elements of Copyrightable Subject Matter 63 as an art was then unknown, and the scientific principle on which it rests, and the chemicals and machinery by which it is operated, have all been discovered long since that statute was enacted.... Oscar Wilde No. 18 We entertain no doubt that the Constitution is broad enough to cover an act authorizing copyright of photographs, so far as they are representatives of original intellectual conceptions of the author. But it is said that an engraving, a painting, a print, does embody the intellectual conception of its author, in which there is novelty, invention, originality, and therefore comes within the purpose of the Constitution in securing its exclusive use or sale to its author, while the photograph is the mere mechanical reproduction of the physical features or outlines of some object, animate or inanimate, and involves no

17 64 2. Requirements for Copyright Protection originality of thought or any novelty in the intellectual operation connected with its visible reproduction in shape of a picture. That while the effect of light on the prepared plate may have been a discovery in the production of these pictures, and patents could properly be obtained for the combination of the chemicals, for their application to the paper or other surface, for all the machinery by which the light reflected from the object was thrown on the prepared plate, and for all the improvements in this machinery, and in the materials, the remainder of the process is merely mechanical, with no place for novelty, invention or originality. It is simply the manual operation, by the use of these instruments and preparations, of transferring to the plate the visible representation of some existing object, the accuracy of this representation being its highest merit. This may be true in regard to the ordinary production of a photograph, and, further, that in such case a copyright is no protection. On the question as thus stated we decide nothing.... The third finding of facts says, in regard to the photograph in question, that it is a "useful, new, harmonious, characteristic, and graceful picture, and that plaintiff made the same... entirely from his own original mental conception, to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by plaintiff, he produced the picture in suit." These findings, we think, show this photograph to be an original work of art, the product of plaintiff 's intellectual invention, of which plaintiff is the author, and of a class of inventions for which the Constitution intended that Congress should secure to him the exclusive right to use, publish and sell, as it has done by section 4952 of the Revised Statutes.... Does the standard of originality identified by the Burrow-Giles Court suggest that copyright protects unposed photographs? How about representational art intended for use in advertising? Consider the Supreme Court's next pronouncement on originality. Bleistein v. Donaldson Lithographing Co. 188 U.S. 239 (1903) HoLMES,]. : This case comes here from the United States Circuit Court of Appeals for the Sixth Circuit by writ of error. It is an action brought by the plaintiffs in error to recover the penalties prescribed for infringements of copyrights. The alleged infringements consisted in the copying in reduced form of three chromolithographs prepared by employees of the plaintiffs for advertisements of a circus owned by one Wallace. Each of the three contained a portrait ofwallace in the corner and lettering bearing some slight relation to the scheme of decoration, indicating the subject of the design and the fact that the reality was to be seen at the circus. One of the designs

18 A. The Elements of Copyrightable Subject Matter 65 was of an ordinary ballet, one of a number of men and women, described as the Stirk family, performing on bicycles, and one of groups of men and women whitened to represent statues. The Circuit Court directed a verdict for the defendant on the ground that the chromolithographs were not within the protection of the copyright law, and this ruling was sustained by the Circuit Court of Appeals. Courier Lithographing Co. v. Donaldson Lithographing Co., 104 Fed. Rep We shall do no more than mention the suggestion that painting and engraving unless for a mechanical end are not among the useful arts, the progress of which Congress is empowered by the Constitution to promote. The Constitution does not limit the useful to that which satisfies immediate bodily needs. Burrow-Giles Lithographing Co. v. Sarony, 111 U. S. 53. It is obvious also that the plaintiffs' case is not affected by the fact, if it be one, that the pictures represent actual groups-visible things. They seem from the testimony to have been composed from hints or description, not from sight of a performance. But even if they had been drawn from the life, that fact would not deprive them of protection. The opposite proposition would mean that a portrait by Velasquez or Whistler was common property because others might try their hand on the same face. Others are free to copy the original. They are not free to copy the copy. The copy is the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man's alone. That something he may copyright unless there is a restriction in the words of the act.... We assume that the construction of Rev. Stat. 4952, allowing a copyright to the "author, inventor, designer, or proprietor... of any engraving, cut, print... [or] chromo" is affected by the act of 1874, c. 301, 3, 18 Stat. at L. 78, 79. That section provides that, "in the construction of this act the words 'engraving,' 'cut' and 'print' shall be applied only to pictorial illustrations or works connected with the fine arts.' ' We see no reason for taking the words "connected with the fine arts" as qualifying anything except the word "works,'' but it would not change our decision if we should assume further that they also qualified "pictorial illustrations," as the defendant contends. These chromolithographs are "pictorial illustrations." The word "illustrations" does not mean that they must illustrate the text of a book, and that the etchings of Rembrandt or Steinla's engraving of the Madonna di San Sisto could not be protected today if any man were able to produce them. Again, the act however construed, does not mean that ordinary posters are not good enough to be considered within its scope. The antithesis to "illustrations or works connected with the fine arts" is not works oflittle merit or ofhumble degree, or illustrations addressed to the less educated classes; it is "prints or labels designed to be used for any other articles of manufacture." Certainly works are not the less connected with the fine arts because their pictorial quality attracts the crowd and therefore gives them a real use-if use means to increase trade and to help to make money. A picture is none the less a picture and none the less a subject of copyright that it is used for an advertisement. And if pictures may be used to advertise soap, or the theatre, or monthly magazines, as they are, they may be used to advertise a circus. Of course, the ballet is

19 66 2. Requirements for Copyright Protection as legitimate a subject for illustration as any other. A rule cannot be laid down that would excommunicate the paintings of Degas. Circus Poster Finally, the special adaptation of these pictures to the advertisement of the Wallace shows does not prevent a copyright. That may be a circumstance for the jury to consider in determining the extent of Mr. Wallace's rights, but it is not a bar. Moreover, on the evidence, such prints are used by less pretentious exhibitions when those for whom they were prepared have given them up. 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. At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. Yet if they command the interest of any public, they have a commercial value-it would be bold to say that they have not an aesthetic and educational value-and the taste of any public is not to be treated with contempt. It is an ultimate fact for the moment, whatever may be our hopes for a change. That these pictures had their worth and their success is sufficiently shown by the desire to reproduce them without regard to the plaintiffs' rights. We are of opinion that there was evidence that the plaintiffs have rights entitled to the protection of the law.

20 A. The Elements of Copyrightable Subject Matter 67 NOTES AND QUESTIONS l. IdentifY and compare the originality standards that Burrow-Giles and Bleistein employ. Which makes more sense in light of the copyright system's goals? 2. Focus on the statement in Bleistein: "Others are free to copy the original. They are not free to copy the copy." Why not? Suppose, for example, that an artist travels to Colorado and paints a landscape of the Colorado Rockies. A company based in New York wishes to use the landscape to advertise its product. Why should the company incur the costs of sending someone to Colorado to paint the same landscape? 3. In Bleistein, the court states, "That these pictures had their worth and their success is sufficiently shown by the desire to reproduce them without regard to the plaintiffs' rights.... We are of the opinion that there was evidence that the plaintiffs have rights entitled to the protection of the law." Should evidence of value be relevant to the question of copyrightability? Why, or why not? 4. Perhaps the most famous part of the Bleistein opinion is Justice Holmes's discussion of the dangers of requiring judges to evaluate aesthetic merit. His conclusion that judges should not do so has become known as the Bleistein nondiscrimination principle. Is this principle justified for all types of works? In particular, why should the artwork in advertisements be protected by copyright? Are copyright incentives required for the creation of advertisements? The first time that Congress attempted a comprehensive statement of the sorts of works entitled to copyright protection, it chose language that mirrored that of the constitutional grant. Section 4 of the 1909 Act provided that "[t]he works for which copyright may be secured under this title shall include all the writings of the author." Cases decided under the 1909 Act continued to follow the Court's guidance about the nature of the originality requirement implicit in that formulation. Alfred Bell & Co. v. Catalda Fine Arts, Inc. 191 F.2d 99 (2d Cir. 1951) [The plaintiff asserted copyrights in eight mezzotint engravings of paintings from the late eighteenth and early nineteenth centuries. The mezzotint process involved drawing a hand tool across a copper plate, tracing a photograph of the original work, pressing the tracing on the copper plate, and hand-scraping the picture on the plate to produce images oflight and shadow. The plate was then covered with steel. Color would be applied by hand before the production of each print. The artist's goal was to reproduce the paintings as accurately as possible in the mezzotints. The paintings on which the mezzotints were based were no longer protected by copyright. The defendants produced and sold color lithographs of the mezzotints.

21 68 2. Requirements for Copyright Protection The district court found that [i]t is possible by this [mezzotint] process to make quite a satisfactory rep roduction of the original painting in whatever size desired... preserving the softness of line which is characteristic of the oil painting. It is not, however, possible to make a photographic copy of the painting by this method exact in all its details. The work of the engraver upon the plate requires the individual conception, judgment and execution by the engraver on the depth and shape of the depressions in the plate to be made by the scraping process in order to produce in this other medium the engraver's concept of the effect of the oil painting. No two engravers can produce identical interpretations of the same oil painting. 74 F. Supp. 973, 975 (S.D.N.Y. 1947). The district court found the plaintiff 's copyright valid and infringed. Defendant appealed.] FRANK, J.: Congressional power to authorize both patents and copyrights is contained in Article 1, 8 of the Constitution. In passing on the validity of patents, the Supreme Court recurrently insists that this constitutional provision governs. On this basis, pointing to the Supreme Court's consequent requirement that, to be valid, a patent must disclose a high degree of uniqueness, ingenuity and inventiveness, the defendants assert that the same requirement constitutionally governs copyrights. As several sections of the Copyright Act-e.g., those authorizing copyrights of "reproductions of works of art," maps, and compilations-plainly dispense with any such high standard, defendants are, in effect, attacking the constitutionality of those sections. But the very language of the Constitution differentiates (a) "authors" and their "writings" from (b) "inventors" and their "discoveries." Those who penned the Constitution, 2 of course, knew the difference. The prerevolutionary English statutes had made the distinction. In 1783, the Continental Congress had passed a resolution recommending that the several states enact legislation to "secure" to authors the "copyright" of their books. Twelve of the thirteen states (in ) enacted such statutes. Those of Connecticut and North Carolina covered books, pamphlets, maps, and charts. Moreover, in 1790, in the year after the adoption of the Constitution, the first Congress enacted two statutes, separately dealing with patents and copyrights. The patent statute, enacted April 10, 1790, 1 Stat. 109, provided that patents should issue only if the Secretary of State, Secretary ofw ar and the Attorney General, or any two of them "shall deem the invention or discovery sufficiently useful and important"; the applicant for a patent was obliged to file a specification "so particular" as "to distinguish the invention or discovery from other things before known and used... "; the patent was to constitute prima fa cie evidence that the patentee was "the first and true inventor or... discoverer... of the thing so specified." The Copyright Act, enacted May 31, 1790, 1 Stat. l24, covered "maps, charts, and books." A printed copy of the title of any map, chart or book was to be recorded in the Clerk's office of the District Court, and a copy of the map, chart or book was to be delivered to the Secretary of State within six months after publication. Twelve years later, Congress in 1802, 2 Stat. 171, added,.to matters that might be copyrighted, engravings, etchings and prints. 2. Many of them were themselves authors.

22 A. The Elements of Copyrightable Subject Matter 69 Thus legislators peculiarly familiar with the purpose of the Constitutional grant, by statute, imposed far less exacting standards in the case of copyrights. They authorized the copyrighting of a mere map which, patently, calls for no considerable uniqueness. They exacted far more from an inventor. And, while they demanded that an official should be satisfied as to the character of an invention before a patent issued, they made no such demand in respect of a copyright.... [T]he Constitution, as so interpreted, recognizes that the standards for patents and copyrights are basically different. The defendants' contention apparently results from the ambiguity of the word "original." It may mean startling, novel or unusual, a marked departure from the past. Obviously this is not what is meant when one speaks of"the original package," or the "original bill," or (in connection with the "best evidence" rule) an "original" document; none of those things is highly unusual in creativeness. "Original" in reference to a coryrighted work means that the particular work "owes its origin" to the "author." No large measure of novelty is necessary [N]othing in the Constitution commands that copyrighted matter be strikingly unique or novel. Accordingly, we were not ignoring the Constitution when we stated that a "copy of something in the public domain" will support a copyright if it is a "distinguishable variation"; or when we rejected the contention that "like a patent, a copyrighted work must be not only original, but new," adding, "That is not... the law as is obvious in the case of maps or compendia, where later works will necessarily be anticipated." All that is needed to satisfy both the Constitution and the statute is that the "author" contributed something more than a "merely trivial" variation, something recognizably "his own." Originality in this context "means little more than a prohibition of actual copying." No matter how poor artistically the "author's" addition, it is enough if it be his own. Bleistein v. Donaldson Lithographing Co., 188 U.S We consider untenable defendants' suggestion that plaintiff's mezzotints could not validly be copyrighted because they are reproductions of works in the public domain. Not only does the Act include "Reproductions of a work of art," butwhile prohibiting a copyright of "the original text of any work... in the public domain"-it explicitly provides for the copyrighting of "translations, or other versions of works in the public domain." The mezzotints were such "versions." They "originated" with those who made them, and-on the trial judge's findings well supported by the evidence-amply met the standards imposed by the Constitution and the statute. Z2 There is evidence that they were not intended to, and did not, 8. Burrow-Giles Lithographic Co. v. Sarony, Ill U.S. 53, See Copinger, The Law of Copyrights (7th ed. 1936) 46: "Again, an engraver is almost invariably a copyist, but although his work may infringe copyright in the original painting if made without the consent of the owner of the copyright therein, his work may still be original in the sense that he has employed skill and judgment in its production. He produces the resemblance he is desirous of obtaining by means very different from those employed by the painter or draughtsman from whom he copies: means which require great labour and talent. The engraver produces his effects by the management oflight and shade, or, as the term of his art expresses it, the chiaroscuro. The due degrees oflight and shade are produced by different lines and dots; he who is the engraver must decide on the choice of the different lines or dots for himself, and on his choice depends the success of his print."

23 70 2. Requirements for Copyright Protection imitate the paintings they reproduced. But even if their substantial departures from the paintings were inadvertent, the copyrights would be valid?3 A copyist's bad eyesight or defective musculature, or a shock caused by a clap of thunder, may yield sufficiently distinguishable variations. Having hit upon such a variation unintentionally, the "author" may adopt it as his and copyright it. Accordingly, defendants' arguments about the public domain become irrelevant. They could be relevant only in their bearing on the issue of infringement, i.e., whether the defendants copied the mezzotints. But on the findings, again well grounded in the evidence, we see no possible doubt that defendants, who did deliberately copy the mezzotints, are infringers. For a copyright confers the exclusive right to copy the copyrighted work-a right not to have others copy it. Nor were the copyrights lost because of the reproduction of the mezzotints in catalogues.... NOTES AND QUESTIONS l. Should copyright protect the result of"[ a] copyist's bad eyesight or defective musculature, or a shock caused by a clap of thunder"? 2. What role did the provisions of the 1909 Act play in the Second Circuit's determination of copyrightability? 3. Should the fact that the creator is copying a preexisting work that is in the public domain affect the evaluation of what is required to obtain a copyright in the new work? How does the court resolve this question? We return to this question, which involves what are known in copyright law as "derivative works," later in this chapter. Note on Nonobviousness and Originality In Burrow-Giles, the Court hinted at some of the differences between copyright law and patent law, which offers protection to certain technological innovations. Copyright law requires that a work of expression be "original" to be protected. Patent law, in contrast, requires that an invention be new, useful, and nonobvious to qualify for protection. Section 103 of the Patent Act, which defines nonobviousness, specifies that a patent may not issue "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious... to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. 103(a). Under the 1976 Copyright Act, 23. See Kallen, Art and Freedom ( 1942) 977 to the effect that "the beauty of the human singing voice, as the western convention of music hears it, depends upon a physiological dysfunction of the vocal cords... " Plutarch tells this story: A painter, enraged because he could not depict the foam that filled a horse's mouth from champing at the bit, threw a sponge at his painting; the sponge splashed against the wall-and achieved the desired result.

24 A. The Elements of Copyrightable Subject Matter 71 no prior assessment of the work's level of originality is required; instead, copyright automatically subsists in an original work of authorship at the time the work is fixed in a tangible medium of expression. In contrast, to obtain a patent, the inventor must file an application with the Patent and Trademark Office (PTO). An examiner will assess whether the application meets the statutory requirements. Often, the examiner will determine that the application as written does not meet the nonobviousness standard, and the inventor will need to narrow the claims to avoid rejection. As both the Patent Act and the patent practice of examination make clear, the requirement of nonobviousness is significantly more stringent than the copyright requirement of originality. In Graham v. John Deere Co., 383 U.S. l (1966), the Supreme Court indicated that the nonobviousness threshold for patentability is constitutionally mandated: The [Intellectual Property] clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the "useful arts." It was written against the backdrop of the practices-eventually curtailed by the Statute of Monopolies-of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public. See Meinhardt, Inventions, Patents and Monopoly, pp (London, 19 46). The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must "promote the Progress of... useful Arts." This is the standard expressed in the Constitution and it may not be ignored. And it is in this light that patent validity "requires reference to a standard written into the Constitution." A. & P. Tea Co. v. Supermarket Corp., [340 U.S. 147,] 154 [(19 50)] (concurring opinion). 383 U.S. at 5-6. One consequence of the difference in threshold standards for protectability is that the copyright and patent systems have very different rules about the treatment of independently created works and inventions, respectively. Recall again Justices Holmes's statement in Bleistein that "[ o ]thers are free to copy the original. They are not free to copy the copy." Because copyright law requires simply that a work not have been copied, a copyright owner cannot obtain relief against another author who independently generates expression that replicates the copyrighted work. Instead, a second comer who is an independent creator may receive her own copyright. Because patent law requires that a patentable invention represent a nonobvious advance over all existing prior art, a second comer who independently generates an already patented invention may not receive a patent. Further, a patent confers the exclusive right to make, use, or sell the invention; thus, the second comer who independently generates a patented invention may not make, use, or sell it without infringing the patent.

25 72 2. Requirements for Copyright Protection NOTES AND QUESTIONS l. Why do you think patent law and copyright law have such different threshold standards and such different rules about independent creation? If patented works are more expensive to develop than copyrighted works, might that explain the differences? See Dan L. Burk, Patenting Speech, 79 Tex. L. Rev. 99, 153 (2000). Or do the threshold requirements reflect a trade-off between quality (patent) and quantity (copyright)? See Paul Goldstein, Infringement of Copyright in Computer Programs, 47 U. Pitt. L. Rev. 1119, 1121 (1986). If so, why choose this trade-off? Does copyright law's threshold standard differ from that of patent law because copyright protects aesthetic works rather than useful ones? See Douglas Y'Barbo, The Heart of the Matter: The Property Right Conferred by Copyright, 49 Mercer L. Rev. 643, (1998). 2. Consider, again, whether a higher standard of originality would be appropriate. Should the copyright originality standard perform the sort of gatekeeping function that the patent nonobviousness standard performs? For discussion of this question, see Joseph Scott Miller, Hoisting Originality) 31 Cardozo L. Rev. 451 (2009) (arguing that the social cost of copyright protection has grown as copyright's reach has expanded, and that such cost can be mitigated by recalibrating originality to reward the production of unconventional expression). b. Establishing the Modern Originality Standard In the Act, Congress deliberately chose new language to describe the sorts of works eligible for copyright protection: "original works of authorship." 17 U.S.C. l02(a). As the legislative history of the Act explains: [A] recurring question [under the 1909 Act] has been whether the statutory and the constitutional provisions are coextensive. If so, the courts would be faced with the alternative of holding copyrightable something that Congress clearly did not intend to protect, or of holding constitutionally incapable of copyright something that Congress might one day want to protect. To avoid these equally undesirable results, the courts have indicated that "all the writings of an author" under the [ 1909 Act] is narrower in scope than the "writings" of "authors" referred to in the Constitution. The bill avoids this dilemma by using a different phrase-"original works of authorship"-in characterizing the general subject matter of statutory copyright protection. H.R. Rep. No , 94th Cong., 2d Sess. 51 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, In other words, the intent of the 1976 Act was to "avoid exhausting the constitutional power of Congress to legislate in [the] field" of copyrightable subject matter. Id. But the 1976 Act does not indicate exactly what Congress meant by "original works of authorship." According to the legislative history, "[t]he phrase 'original works of authorship,' which is purposely left undefined, was intended to incorporate without change the standard of originality established by the courts under the [1909 Act]. This standard does not include requirements of novelty, ingenuity, or esthetic merit, and there is no intention to enlarge the standard of copyright

26 A. The Elements of Copyrightable Subject Matter 73 protection to require them." I d. The task of interpreting the scope of the statutory grant of copyright protection was thus left, once again, to the courts. In the United States, both as a statutory matter and as a constitutional matter, the modern definition of "originality" requires more than mere independent creation, but not much more. In the following case, the Supreme Court articulated the modern definition of originality. Feist Publications, Inc. v. Rural Telephone Service Co. 499 U.S. 340 (1991) O'CONNOR, J.:... I Rural Telephone Service Company, Inc., is a certified public utility that provides telephone service to several communities in northwest Kansas. It is subject to a state regulation that requires all telephone companies operating in Kansas to issue annually an updated telephone directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical telephone directory, consisting of white pages and yellow pages. The white pages list in alphabetical order the names of Rural's subscribers, together with their towns and telephone numbers. The yellow pages list Rural's business subscribers alphabetically by category and feature classified advertisements of various sizes. Rural distributes its directory free of charge to its subscribers, but earns revenue by selling yellow pages advertisements. Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories. Unlike a typical directory, which covers only a particular calling area, Feist's areawide directories cover a much larger geographic range, reducing the need to call directory assistance or to consult multiple directories. The Feist directory that is the subject of this litigation covers 11 different telephone service areas in 15 counties and contains 46,878 white pages listings-compared to Rural's approximately 7,700 listings. Like Rural's directory, Feist's is distributed free of charge and includes both white pages and yellow pages. Feist and Rural compete vigorously for yellow pages advertising.... Of the 11 telephone companies, only Rural refused to license its listings to Feist. Rural's refusal created a problem for Feist, as omitting these listings would have left a gaping hole in its area-wide directory, rendering it less attractive to potential yellow pages advertisers.... Unable to license Rural's white pages listings, Feist used them without Rural's consent. Feist began by removing several thousand listings that fell outside the geographic range of its area-wide directory, then hired personnel to investigate the 4,935 that remained. These employees verified the data reported by Rural and sought to obtain additional information. As a result, a typical Feist listing includes the individual's street address; most of Rural's listings do not. Notwithstanding these additions, however, 1,309 of the 46,878 listings in Feist's

27 Requirements for Copyright Protection 1983 directory were identical to listings in Rural's white pages. Four of these were fictitious listings that Rural had inserted into its directory to detect copying.... A II This case concerns the interaction of two well-established propositions. The first is that facts are not copyrightable; the other, that compilations offacts generally are. Each of these propositions possesses an impeccable pedigree.... There is an undeniable tension between these two propositions. Many compilations consist of nothing but raw data-i.e.) wholly factual information not accompanied by any original written expression. On what basis may one claim a copyright in such a work? Common sense tells us that 100 uncopyrightable facts do not magically change their status when gathered together in one place.... The key to resolving the tension lies in understanding why facts are not copyrightable. The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author.... Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. 1 M. Nimmer & D. Nimmer, Copyright 2.01[A], [B] (1990) (hereinafter Nimmer). To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, "no matter how crude, humble or obvious" it might be. Id., l.08[c][1].... Originality is a constitutional requirement. The source of Congress' power to enact copyright laws is Article I, 8, d. 8, of the Constitution, which authorizes Congress to "secur[ e] for limited Times to Authors... the exclusive Right to their respective Writings." In two decisions from the late 19th century-the Trade-Mark Cases, 100 U.S. 82 (1879); and Burrow-Giles Lithographic Co. v. Sarony, lll U.S. 53 (1884)-this Court defined the crucial terms "authors" and "writings." In so doing, the Court made it unmistakably clear that these terms presuppose a degree of originality.... It is this bedrock principle of copyright that mandates the law's seemingly disparate treatment of facts and compilations. "No one may claim originality as to facts." [Nimmer], 2.ll[A], p This is because facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: The first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence.... Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws....

28 A. The Elements of Copyrightable Subject Matter 75 This inevitably means that the copyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement.... It may seem unfair that much of the fruit of the compiler's labor may be used by others without compensation. As Justice Brennan has correctly observed, however, this is not "some unforeseen byproduct of a statutory scheme." Harper & Row, 471 U.S., at 589 (dissenting opinion). It is, rather, "the essence of copyright," ibid., and a constitutional requirement. The primary objective of copyright is not to reward the labor of authors, but "[ t ]o promote the Progress of Science and useful Arts." Art. I, 8, d. 8. Accord, Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 ( 1975 ). To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. Harper & Row, supra, 471 U.S., at This principle, known as the idea/ expression or fact/expression dichotomy, applies to all works of authorship. As applied to a factual compilation, assuming the absence of original written expression, only the compiler's selection and arrangement may be protected; the raw facts may be copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.... B As we have explained, originality is a constitutionally mandated prerequisite for copyright protection. The Court's decisions announcing this rule predate the Copyright Act of 1909, but ambiguous language in the 1909 Act caused some lower courts temporarily to lose sight of this requirement [T]hese courts developed a new theory to justify the protection of factual compilations. Known alternatively as "sweat of the brow" or "industrious collection," the underlying notion was that copyright was a reward for the hard work that went into compiling facts. The classic formulation of the doctrine appeared in Jeweler)s Circular Publishing Co. [v. Keystone Publishing Co.], 281 F. [83 (2d Cir. 1922)], at 88: The right to copyright a book upon which one has expended labor in its preparation does not depend upon whether the materials which he has collected consist or not of matters which are publici juris, or whether such materials show literary skill or originality, either in thought or in language, or anything more than industrious collection. The man who goes through the streets of a town and puts down the names of each of the inhabitants, with their occupations and their street number, acquires material of which he is the author (emphasis added). The "sweat of the brow" doctrine had numerous flaws, the most glaring being that it extended copyright protection in a compilation beyond selection and arrangement-the compiler's original contributions-to the facts themselves. Under the doctrine, the only defense to infringement was independent creation. A subsequent compiler was "not entitled to take one word of information previously published," but rather had to "independently wor[k] out the matter for himself, so as to arrive at the same result from the same common sources of information."

29 Requirements for Copyright Protection Id., at "Sweat of the brow" courts thereby eschewed the most fundamental axiom of copyright law-that no one may copyright facts or ideas.... Without a doubt, the "sweat of the brow" doctrine flouted basic copyright principles. Throughout history, copyright law has "recognize[d] a greater need to disseminate factual works than works of fiction or fantasy." Harper & Row, 471 U.S., at 563. Accord, Gorman, Fact or Fancy: The Implications for Copyright, 29 J. Copyright Soc. 560, 563 (1982). But "sweat of the brow" courts took a contrary view; they handed out proprietary interests in facts and declared that authors are absolutely precluded from saving time and effort by relying upon the facts contained in prior works. In truth, "[ i ]t is just such wasted effort that the proscription against the copyright of ideas and facts... [is] designed to prevent." Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303, 310 ( CA ), cert. denied, 385 U.S ( 1967). "Protection for the fruits of such research... may in certain circumstances be available under a theory of unfair competition. But to accord copyright protection on this basis alone distorts basic copyright principles in that it creates a monopoly in public domain materials without the necessary justification of protecting and encouraging the creation of 'writings' by 'authors."' Nimmer 3.04, p c In enacting the Copyright Act of 197 6, Congress dropped the reference to "all the writings of an author" and replaced it with the phrase "original works of authorship." 17 U.S.C. 102(a). In making explicit the originality requirement, Congress announced that it was merely clarifying existing law.... To ensure that the mistakes of the "sweat of the brow" courts would not be repeated, Congress took additional measures. For example, 3 of the 1909 Act had stated that copyright protected only the "copyrightable component parts" of a work, but had not identified originality as the basis for distinguishing those component parts that were copyrightable from those that were not. The Act deleted this section and replaced it with l02(b ), which identifies specifically those elements of a work for which copyright is not available.... Section 102(b) is universally understood to prohibit any copyright in facts.... Congress took another step to minimize confusion by deleting the specific mention of "directories... and other compilations" in 5 of the 1909 Act. As mentioned, this section had led some courts to conclude that directories were copyrightable per se and that every element of a directory was protected. In its place, Congress enacted two new provisions. First, to make clear that compilations were not copyrightable per se, Congress provided a definition of the term "compilation." Second, to make clear that the copyright in a compilation did not extend to the facts themselves, Congress enacted The purpose of the statutory definition is to emphasize that collections of facts are not copyrightable per se. It conveys this message through its tripartite structure.... The statute identifies three distinct elements and requires each to be met for a work to qualify as a copyrightable compilation: ( l) the collection and assembly of pre-existing material, facts, or data; ( 2) the selection, coordination,

30 A. The Elements of Copyrightable Subject Matter 77 or arrangement of those materials; and ( 3) the creation, by virtue of the particular selection, coordination, or arrangement, of an "original" work of authorship It is not enough for copyright purposes that an author collects and assembles facts. To satisfy the statutory definition, the work must get over two additional hurdles. In this way, the plain language indicates that not every collection of facts receives copyright protection. Otherwise, there would be a period after "data."... Not every selection, coordination, or arrangement will pass muster. This is plain from the statute. It states that, to merit protection, the facts must be selected, coordinated, or arranged "in such a way" as to render the work as a whole original. This implies that some "ways" will trigger copyright, but that others will not... As discussed earlier, however, the originality requirement is not particularly stringent. A compiler may settle upon a selection or arrangement that others have used; novelty is not required. Originality requires only that the author make the selection or arrangement independently (i.e., without copying that selection or arrangement from another work), and that it display some minimal level of creativity. Presumably, the vast majority of compilations will pass this test, but not all will. There remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent. Such works are incapable of sustaining a valid copyright. Nimmer 2.01[B]. Even if a work qualifies as a copyrightable compilation, it receives only limited protection. This is the point of 103 of the Act. Section 103 explains that "[t]he subject matter of copyright... includes compilations," 103(a), but that copyright protects only the author's original contributions-not the facts or information conveyed: The copyright in a compilation... extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. l03 (b ). As 103 makes clear, copyright is not a tool by which a compilation author may keep others from using the facts or data he or she has collected.... The 1909 Act did not require, as "sweat of the brow" courts mistakenly assumed, that each subsequent compiler must start from scratch and is precluded from relying on research undertaken by another. Rather, the facts contained in existing works may be freely copied because copyright protects only the elements that owe their origin to the compiler-the selection, coordination, and arrangement of facts. In summary, the 1976 revisions to the Copyright Act leave no doubt that originality, not "sweat of the brow," is the touchstone of copyright protection in directories and other fact-based works. Nor is there any doubt that the same was true under the 1909 Act. The revisions were a direct response to the Copyright Office's concern that many lower courts had misconstrued this basic principle, and Congress emphasized repeatedly that the purpose of the revisions was to clarify, not change, existing law. The revisions explain with painstaking clarity that copyright requires originality, 102(a); that facts are never original, 102(b); that the copyright in a compilation does not extend to the facts it contains, 103(b); and that a compilation is copyrightable only to the extent that it features an original selection, coordination, or arrangement,

31 78 2. Requirements for Copyright Protection III... The selection, coordination, and arrangement of Rural's white pages do not satisfy the minimum constitutional standards for copyright protection. As mentioned at the outset, Rural's white pages are entirely typical.... In preparing its white pages, Rural simply takes the data provided by its subscribers and lists it alphabetically by surname. The end product is a garden-variety white pages directory, devoid of even the slightest trace of creativity. Rural's selection of listings could not be more obvious: It publishes the most basic information-name, town, and telephone number-about each person who applies to it for telephone service. This is "selection" of a sort, but it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression. Rural expended sufficient effort to make the white pages directory useful, but insufficient creativity to make it original. We note in passing that the selection featured in Rural's white pages may also fail the originality requirement for another reason. Feist points out that Rural did not truly "select" to publish the names and telephone numbers of its subscribers; rather, it was required to do so by the Kansas Corporation Commission as part of its monopoly franchise. Accordingly, one could plausibly conclude that this selection was dictated by state law, not by Rural.... NOTES AND QUESTIONS l. If the originality threshold is so low, what is its point? How does such a low standard fit with the justifications for copyright discussed in Chapter l? 2. We will return to the Feist opinion in SectionB.2, infra, which addresses the copyrightability of compilations like those involved in Feist. For now, note that the originality standard announced in Feist applies generally, not only in the context of compilations. PROBLEMS Consider whether the following items meet the modern standard of originality and, if so, whether copyright's goals are served by providing protection (remember, for the item to be copyrighted it must be fixed as well as original): a. A tweet that expresses your opinion about the New York Yankees offseason: "NYY got Beltran, McCann & Tanaka; BoSox need to watch out" Tweets are limited generally to 140 characters and Twitter stores every users' tweet on its servers for 30 days after a user deactivates its account. Neither the sender's nor followers' devices store tweets. b. A comment that you have posted on a travel website reviewing a restaurant at which you recently dined: "Went to this restaurant for a special occasion and was so disappointed - it was almost a parody. Just because it's a celebrity chef doesn't mean that it's automatically great. The flavors didn't work together and every dish was over-salted.

32 A. The Elements of Copyrightable Subject Matter 79 The chef was flirting with customers- who was running the kitchen? Maybe it is great but on this night, it was a waste of time and money that I found offensive." c. A label on a shampoo bottle that reads, "Directions for use: Lather. Rinse. Repeat." c. Some Contemporary Originality Problems After Feist, just how minimal can an author's creative contribution be and still qualify as copyrightable? Photography and digital technology can capture reality in exact detail. The following cases address originality in these contexts. KAPLAN, J.:... Mannion v. Coors Brewing Company 377 F. Supp. 2d 444 (S.D.N.Y 2006) FACTS Jonathan Mannion is a freelance photographer who specializes in portraits of celebrity athletes and musicians in the rap and rhythm-and-blues worlds. In 1999 he was hired by SLAM, a basketball magazine, to photograph basketball star Kevin Garnett in connection with an article.... The article, entitled "Above the Clouds," appeared as the cover story of the December 1999 issue of the magazine. It was accompanied by a number of Mannion's photographs of Garnett, including the one at issue here (the "Garnett Photograph"), which was printed on a two-page spread introducing the article. The Garnett Photograph... is a three-quarter-length portrait of Garnett against a backdrop of clouds with some blue sky shining through. The view is up and across the right side of Garnett's torso, so that he appears to be towering above earth. He wears a white T -shirt, white athletic pants, a black dose-fitting cap, and a large amount of platinum, gold, and diamond jewelry ("bling bling" in the vernacular), including several necklaces, a Rolex watch and bracelet on his left wrist, bracelets on his right wrist, rings on one finger of each hand, and earrings. His head is cocked, his eyes are closed, and his heavily-veined hands, nearly all of which are visible, rest over his lower abdomen, with the thumbs hooked on the waistband of the trousers. The light is from the viewer's left, so that Garnett's right shoulder is the brightest area of the photograph and his hands cast slight shadows on his trousers. As reproduced in the magazine, the photograph cuts off much of Garnett's left arm. In early 2001, defendant Carol H. Williams Advertising ("CHWA") began developing ideas for outdoor billboards that would advertise Coors Light beer to young black men in urban areas. One of CHWA's "comp boards"-a "comp board" is an image created by an advertising company to convey a proposed design-used a manipulated version of the Garnett Photograph and superimposed on it the words "Iced Out" ("ice" being slang for diamonds) and a picture of a can of Coors Light beer (the "Iced Out Comp Board"). CHW A obtained authorization from Mannion's representative to use the Garnett Photograph for this purpose.

33 80 2. Requirements for Copyright Protection The Iced Out Comp Board... used a black-and-white, mirror image of the Garnett Photograph, but with the head cropped out on top and part of the fingers cropped out below. CHW A forwarded its comp boards to, and solicited bids for the photograph for the Coors advertising from, various photographers including Mannion, who submitted a bid but did not receive the assignment. Coors and CHW A selected for a Coors billboard a photograph (the "Coors Billboard")... that resembles the Iced Out Comp Board. The Coors Billboard depicts, in black-and-white, the torso of a muscular black man, albeit a model other than Garnett, shot against a cloudy backdrop. The pose is similar to that in the Garnett Photograph, and the view also is up and across the left side of the torso. The model in the billboard photograph also wears a white T -shirt and white athletic pants. The model's jewelry is prominently depicted; it includes a necklace of platinum or gold and diamonds, a watch and two bracelets on the right wrist, and more bracelets on the left wrist. The light comes from the viewer's right, so that the left shoulder is the brightest part of the photograph, and the right arm and hand cast slight shadows on the trousers. Mannion subsequently noticed the Coors Billboard at two locations in the Los Angeles area. He... brought this action for infringement in February of The parties each move for summary judgment. Garnett Photograph 0@@ Iced Out Como Board Coors Billboard and Billboard Detail

34 A. The Elements of Copyrightable Subject Matter 81 DISCUSSION DETERMINING THE PROTECTIBLE ELEMENTS OF THE GARNETT PHOTOGRAPH The first question must be: in what respects is the Garnett Photograph protectible? 1. Protectible Elements of Photographs... It sometimes is said that "copyright in the photograph conveys no rights over the subject matter conveyed in the photograph." But this is not always true. It of course is correct that the photographer of a building or tree or other pre-existing object has no right to prevent others from photographing the same thing. That is because originality depends upon independent creation, and the photographer did not create that object. By contrast, if a photographer arranges or otherwise creates the subject that his camera captures, he may have the right to prevent others from producing works that depict that subject. Almost any photograph "may claim the necessary originality to support a copyright." Indeed, ever since the Supreme Court considered an 1882 portrait by the celebrity photographer Napoleon Sarony of the 27 -year-old Oscar Wilde, courts have articulated lists of potential components of a photograph's originality. These lists, however, are somewhat unsatisfactory. First, they do not deal with the issue, alluded to above, that the nature and extent of a photograph's protection differs depending on what makes that photograph original. Second, courts have not always distinguished between decisions that a photographer makes in creating a photograph and the originality of the final product. Several cases, for example, have included in lists of the potential components of photographic originality "selection of film and camera," "lens and.filter selection," and "the kind of camera, the kind of film, [and] the kind oflens." Having considered the matter fully, however, I think this is not sufficiently precise. Decisions about film, camera, and lens, for example, often bear on whether an image is original. But the fact that a photographer made such choices does not alone make the image original. "Sweat of the brow" is not the touchstone of copyright. Protection derives from the features of the work itself, not the effort that goes into it.... A photograph may be original in three respects. They are not mutually exclusive. a. Rendition First, "there may be originality which does not depend on creation of the scene or object to be photographed... and which resides [instead] in such specialties as angle of shot, light and shade, exposure, effects achieved by means of filters, developing techniques etc." I will refer to this type of originality as originality in the rendition because, to the extent a photograph is original in this way, copyright protects not what is depicted, but rather how it is depicted.... b. Timing A photograph may be original in a second respect. "[A] person may create a worthwhile photograph by being at the right place at the right time." I will refer to this type of originality as originality in timing.

35 82 2. Requirements for Copyright Protection... A modern work strikingly original in timing might be Catch of the Day, by noted wildlife photographer Thomas Mangelsen, which depicts a salmon that appears to be jumping into the gaping mouth of a brown bear at Brooks Falls in Katmai National Park, Alaska. An older example is Alfred Eisenstaedt's photograph of a sailor kissing a young woman on VJ Day in Times Square, the memorability of which is attributable in significant part to the timing of its creation. Copyright based on originality in timing is limited by the principle that copyright in a photograph ordinarily confers no rights over the subject matter. Thus, the copyright in Catch of the Day does not protect against subsequent photographs of bears feasting on salmon in the same location. Furthermore, if another photographer were sufficiently skilled and fortunate to capture a salmon at the precise moment that it appeared to enter a hungry bear's mouth-and others have tried, with varying degrees of success-that photographer, even if inspired by Mangelsen, would not necessarily have infringed his work because Mangelsen's copyright does not extend to the natural world he captured. In practice, originality in timing gives rise to the same type of protection as originality in the rendition. In each case, the image that exhibits the originality, but not the underlying subject, qualifies for copyright protection. c. Creation of the Subject The principle that copyright confers no right over the subject matter has an important limitation. A photograph may be original to the extent that the photographer created "the scene or subject to be photographed." This type of originality, which I will refer to as originality in the creation of the subject, played an essential role in Rogers v. Koons [960 F.2d 301(2d Cir. 1992)] and Gross v. Seligman [212 F. 930 (2d Cir. 1914)]. In Rogers, the court held that the copyright in the plaintiff's photograph Puppies, which depicted a contrived scene of the photographer's acquaintance, Jim Scanlon, and his wife on a park bench with eight puppies on their laps, protected against the defendants' attempt to replicate precisely, albeit in a three dimensional sculpture, the content of the photograph. Although the Circuit noted that Puppies was original because the artist "made creative judgments concerning technical matters with his camera and the use of natural light" -in other words, because it was original in the rendition-its originality in the creation of the subject was more salient. The same is true of the works at issue in Gross v. Seligman, in which the Circuit held that the copyright in a photograph named Grace of Youth was infringed when the same artist created a photograph named Cherry Ripe using "the same model in the identical pose, with the single exception that the young woman now wears a smile and holds a cherry stem between her teeth." * * * * * * To conclude, the nature and extent of protection conferred by the copyright in a photograph will vary depending on the nature of its originality. Insofar as a photograph is original in the rendition or timing, copyright protects the image but does not prevent others from photographing the same object or scene....

36 A. The Elements of Copyrightable Subject Matter 83 By contrast, to the extent that a photograph is original in the creation of the subject, copyright extends also to that subject. Thus, an artist who arranges and then photographs a scene often will have the right to prevent others from duplicating that scene in a photograph or other medium Originality of the Garnett Photograph There can be no serious dispute that the Garnett Photograph is an original work. The photograph does not result from slavishly copying another work and therefore is original in the rendition. Mannion's relatively unusual angle and distinctive lighting strengthen that aspect of the photograph's originality. His composition-posing man against sky-evidences originality in the creation of the subject. Furthermore, Mannion instructed Garnett to wear simple and plain clothing and as much jewelry as possible, and "to look 'chilled out."' His orchestration of the scene contributes additional originality in the creation of the subject. Of course, there are limits to the photograph's originality and therefore to the protection conferred by the copyright in the Garnett Photograph. For example, Kevin Garnett's face, torso, and hands are not original with Mannion, and Mannion therefore may not prevent others from creating photographic portraits of Garnett. Equally obviously, the existence of a cloudy sky is not original, and Mannion therefore may not prevent others from using a cloudy sky as a backdrop. The defendants, however, take this line of reasoning too far. They argue that it was Garnett, not Mannion, who selected the specific clothing, jewelry, and pose. In consequence, they maintain, the Garnett Photograph is not original to the extent of Garnett's clothing, jewelry, and pose. They appear to be referring to originality in the creation of the subject. There are two problems with the defendants' argument. The first is that Mannion indisputably orchestrated the scene, even if he did not plan every detail before he met Garnett, and then made the decision to capture it. The second difficulty is that the originality of the photograph extends beyond the individual clothing, jewelry, and pose viewed in isolation. It is the entire image-depicting man, sky, clothing, and jewelry in a particular arrangement-that is at issue here, not its individual components.... Meshwerks, Inc. v. Toyota Motor Sales U. S.A., Inc. 528 F. 3d 1258 (loth Cir. 2008) GoRSUCH, J.:... [Toyota and its advertising agency, Saatchi & Saatchi, hired Grace & Wild, Inc., to supply digital models of Toyota's vehicles for its model- 65. I recognize that the preceding analysis focuses on a medium-traditional print photographythat is being supplanted in significant degree by digital technology. These advancements may or may not demand a different analytical framework.

37 84 2. Requirements for Copyright Protection year 2004 advertising campaign.]... G&W subcontracted with Meshwerks to assist with two initial aspects of the project-digitization and modeling. Digitizing involves collecting physical data points from the object to be portrayed. In the case of Toyota's vehicles, Meshwerks took copious measurements of Toyota's vehicles by covering each car, truck, and van with a grid of tape and running an articulated arm tethered to a computer over the vehicle to measure all points of intersection in the grid. Based on these measurements, modeling software then generated a digital image resembling a wire-frame model.... At this point, however, the on-screen image remained far from perfect and manual "modeling" was necessary. Meshwerks personnel fine-tuned or, as the company prefers it, "sculpted," the lines on screen to resemble each vehicle as closely as possible. Approximately 90 percent of the data points contained in each final model, Meshwerks represents, were the result not of the first-step measurement process, but of the skill and effort its digital sculptors manually expended at the second step. For example, some areas of detail, such as wheels, headlights, door handles, and the Toyota emblem, could not be accurately measured using current technology; those features had to be added at the second "sculpting" stage, and Meshwerks had to recreate those features as realistically as possible by hand, based on photographs. Even for areas that were measured, Meshwerks faced the challenge of converting measurements taken of a three-dimensional car into a twodimensional computer representation; to achieve this, its modelers had to sculpt, or move, data points to achieve a visually convincing result. The purpose and product of these processes, after nearly 80 to l 00 hours of effort per vehicle, were twodimensional wire-frame depictions of Toyota's vehicles that appeared threedimensional on screen, but were utterly unadorned-lacking color, shading, and other details. Attached to this opinion as Appendix A are sample screen-prints of one of Meshwerks' digital wire-frame models. With Meshwerks' wire-frame products in hand, G&W then manipulated the computerized models by, first, adding detail, the result of which appeared on screen as a "tightening" of the wire frames, as though significantly more wires had been added to the frames, or as though they were made of a finer mesh. Next, G&W digitally applied color, texture, lighting, and animation for use in Toyota's advertisements.... [Meshwerks sued Toyota, Saatchi & Saatchi, and G&W, asserting that it had. contracted for only a one-time use of its models and that subsequent, unauthorized uses infringed its copyrights in the models. The district court granted defendants' motion for summary judgment, and Meshwerks appealed.] A... II... The parties focus most of their energy in this case on the question whether Meshwerks' models qualify as independent creations, as opposed to copies of

38 A. The Elements of Copyrightable Subject Matter 85 Toyota's handiwork. But what can be said, at least based on received copyright doctrine, to distinguish an independent creation from a copy? And how might that doctrine apply in an age of virtual worlds and digital media that seek to mimic the "real" world, but often do so in ways that undoubtedly qualify as (highly) original?... [P]hotography was initially met by critics with a degree of skepticism: a photograph, some said, "copies everything and explains nothing," and it was debated whether a camera could do anything more than merely record the physical world.... [In Burrow-Giles], the Court indicated [that] photographs are copyrightable, if only to the extent of their original depiction of the subject. Wilde's image [was] not copyrightable; but to the extent a photograph reflects the photographer's decisions regarding pose, positioning, background, lighting, shading, and the like, those elements can be said to "owe their origins" to the photographer, making the photograph copyrightable, at least to that extent. As the Court more recently explained in Feist, the operative distinction is between, on the one hand, ideas or facts in the world, items that cannot be copyrighted, and a particular expression of that idea or fact, that can be.... So, in the case of photographs, for which Meshwerks' digital models were designed to serve as practically advantageous substitutes, authors are entitled to copyright protection only for the "incremental contribution," SHL Imaging, Inc. [ v. Artisan House, Inc.], 117 F. Supp. 2d at 311 [(S.D.N.Y. 2000)] (internal quotation omitted), represented by their interpretation or expression of the objects of their attention. B Applying these principles, evolved in the realm of photography, to the new medium that has come to supplement and even in some ways to supplant it, we think Meshwerks' models are not so much independent creations as (very good) copies of Toyota's vehicles.... l Key to our evaluation of this case is the fact that Meshwerks' digital wire- frame computer models depict Toyota's vehicles without any individualizing features: they are untouched by a digital paintbrush; they are not depicted in front of a palm tree, whizzing down the open road, or climbing up a mountainside. Put another way, Meshwerks' models depict nothing more than un-adorned Toyota vehicles-the car as car. See Appendix A.... [I]n short, its models reflect none of the decisions that can make depictions of things or facts in the world, whether Oscar Wilde or a Toyota Camry, new expressions subject to copyright protection. The primary case on which Meshwerks asks us to rely actually reinforces this conclusion. In Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000) ( Skyy I), the Ninth Circuit was faced with a suit brought by a plaintiff photographer who alleged that the defendant had infringed on his commercial photographs of a Skyybrand vodka bottle. The court held that the vodka bottle, as a "utilitarian object,"

39 86 2. Requirements for Copyright Protection a fact in the world, was not itself (at least usually) copyrightable. I d. at 1080 (citing 17 U.S.C. 101). At the same time, the court recognized that plaintiff's photos reflected decisions regarding "lighting, shading, angle, background, and so forth," id. at 1078, and to the extent plaintiff's photographs reflected such original contributions the court held they could be copyrighted. In so holding, the Ninth Circuit reversed a district court's dismissal of the case and remanded the matter for further proceedings, and Meshwerks argues this analysis controls the outcome of its case. But Skyy itells only half the story. The case soon returned to the court of appeals, and the court held that the defendant's photos, which differed in terms of angle, lighting, shadow, reflection, and background, did not infringe on the plaintiff's copyrights. Ets-Hokin v. Skyy Spirits1 Inc F.3d 763, 765 (9th Cir.2003) ( Skyy II). Why? The only constant between the plaintiff's photographs and the defendant's photographs was the bottle itself, id. at 766, and an accurate portrayal of the unadorned bottle could not be copyrighted.... The teaching of Skyy I and II, then, is that the vodka bottle, because it did not owe its origins to the photographers, had to be filtered out to determine what copyrightable expression remained. And, by analogy-though not perhaps the one Meshwerks had in mind-we hold that the unadorned images of Toyota's vehicles cannot be copyrighted by Meshwerks and likewi e must be filtered out. To the extent that Meshwerks' digital wire-frame models depict only those unadorned vehicles, having stripped away all lighting, angle, perspective, and "other ingredients" associated with an original expression, we conclude that they have left no copyrightable matter. Confirming this conclusion as well is the peculiar place where Meshwerks stood in the model-creation pecking order. On the one hand, Meshwerks had nothing to do with designing the appearance of Toyota's vehicles, distinguishing them from any other cars, trucks, or vans in the world.... On the other hand, how the models Meshwerks created were to be deployed in advertising-including the backgrounds, lighting, angles, and colors-were all matters left to those ( G & W, Saatchi, and 3D Recon) who came after Meshwerks left the scene It is certainly true that what Meshwerks accomplished was a peculiar kind of copying. It did not seek to recreate Toyota vehicles outright-steel, rubber, and all; instead, it sought to depict Toyota's three-dimensional physical objects in a twodimensional digital medium. But we hold, as many before us have already suggested, that, standing alone, "[ t ]he fact that a work in one medium has been copied from a work in another medium does not render it any the less a 'copy."' Nimmer on Copyright 8.01[B]. After all, the putative creator who merely shifts the medium in which another's creation is expressed has not necessarily added anything beyond the expression contained in the original. In reaching this conclusion, we do not for a moment seek to downplay the considerable amount of time, effort, and skill that went into making Meshwerks'. 8. We are not called upon to, and do not, express any view on the copyrightability of the work products produced by those who employed and adorned Meshwerks' models.

40 A. The Elements of Copyrightable Subject Matter 87 digital wire-frame models. But, in assessing the originality of a work for which copyright protection is sought, we look only at the final product, not the process, and the fact that intensive, skillful, and even creative labor is invested in the process of creating a product does not guarantee its copyrightability. See Feist, 499 U.S. at Meshwerks' intent in making its wire-frame models provides additional support for our conclusion. "In theory, the originality requirement tests the putative author's state of mind: Did he have an earlier work in mind when he created his own?" Paul Goldstein, Goldstein on Copyright If an artist affirmatively sets out to be unoriginal-to make a copy of someone else's creation, rather than to create an original work-it is far more likely that the resultant product will, in fact, be unoriginal. Of course, this is not to say that the accidental or spontaneous artist will be denied copyright protection for not intending to produce art; it is only to say that authorial intent sometimes can shed light on the question of whether a particular work qualifies as an independent creation or only a copy. In this case, the undisputed evidence before us leaves no question that Meshwerks set out to copy Toyota's vehicles, rather than to create, or even to add, any original expression. The purchase order signed by G & W asked Meshwerks to "digitize and model" Toyota's vehicles, and Meshwerks' invoice submitted to G & W for payment reflects that this is exactly the service Meshwerks performed. Aplt's App. at 113, 115. Meshwerks itself has consistently described digitization and modeling as an attempt accurately to depict real-world, three-dimensional objects as digital images viewable on a computer screen. See, e.g., id. at 369 ("the graphic sculptor is not intending to 'redesign' the product, he or she is attempting to depict that object in the most realistic way").... c Although we hold that Meshwerks' digital, wire-frame models are insufficiently original to warrant copyright protection, we do not turn a blind eye to the fact that digital imaging is a relatively new and evolving technology and that Congress extended copyright protection to "original works of authorship fixed in any tangible medium of expression, now known or later developed." 17 U.S.C. 102(a) (emphasis added).... Digital modeling can be, surely is being, and no doubt increasingly will be used to create copyrightable expressions. Yet, just as photographs can be, but are not per se, copyrightable, the same holds true for digital models. There's little question that digital models can be devised of Toyota cars with copyrightable features, whether by virtue of unique shading, lighting, angle, background scene, or other choices. The problem for Meshwerks in this particular case is simply that the uncontested facts reveal that it wasn't involved in any such process.... For this reason, we do not envision any "chilling effect" on creative expression based on our holding today....

41 88 2. Requirements for Copyright Protection =... - Appendix A NOTES AND QUESTIONS I. How distinct are the different dimensions of originality described by the decision in Mannion? Was the photograph in Burrow-Giles original in rendition, original in creation of the subject, or both? Does assessment of originality in

42 A. The Elements of Copyrightable Subject Matter 89 "rendition" or "creation of the subject" violate the Bleistein nondiscrimination principle? Should the Mannion taxonomy, or one like it, be used for other types of works? Would it have been helpful in evaluating the lithographs in Bleistein? How about the digital models in Meshwerks? 2. Is the decision in Meshwerks consistent with that in Alfred Bell? What explains the different results in the two cases? Why aren't the features added by hand by Meshwerks at the "sculpting" stage sufficient to establish originality? 3. Is it appropriate to consider intent in determining originality? Why, or why not? If so, what type of intent is relevant? IfMeshwerks had created its digital models for an art exhibit rather than for an advertising campaign, should the result change? 4. In Bridgeman Art Library, Ltd. v. Corel Corp., 36 F. Supp. 2d 191 (S.D.N.Y. 1999), Bridgeman had been authorized to prepare and sell color reproductions of public domain paintings residing in museums and private collections. Corel allegedly copied Bridgeman's color transparencies to produce its own CD-ROM product. The court dismissed Bridgeman's copyright infringement claim, ruling that the transparencies did not contain the required "distinguishable variation," but reflected only "slavish copying." Do you agree with the court's conclusion? Why, or why not? Many photographs, including a large number in the public domain, are held in private collections and made available to the public only as digital replicas. For example, Corbis, a company founded by Bill Gates, acquired the Bettman Archive's collection of 16.5 million photographs, including 30 years' worth of United Press International photographs. To preserve the original photographs, Corbis stores them in an underground, climate controlled storage facility. Digital reproductions are available via license. Can Corbis copyright the digital images? Would it make any difference to your answer if Corbis digitally watermarks each image? If Corbis cannot copyright the images under the Copyright Act, should it be able to place contractual restrictions on access to and use of them? 5. Is an Andy Warhol painting of a Campbell's soup can original? If yes, how does it differ from the reproductions at issue in Bridgeman Art Library and Meshwerks? PROBLEMS Consider whether and to what extent copyright would (or should) protect the following: a. A photograph by acclaimed documentary photographer Walker Evans of riders on the New York City subway. b. Photographs on a restaurant menu depicting dishes available at the restaurant. c. A digital photograph of a dining room table taken for the purpose of offering the table for sale on craigslist.org. d. A live broadcast of the Super Bowl, recorded simultaneously with its transmission.

43 90 2. Requirements for Copyright Protection 3. The "Idea/Expression Distinction" The third requirement for copyrightable subject matter is a negative one: Certain items are categorically excluded from receiving copyright protection. According to 1 02(b) of the Act: "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). Many countries' laws have similar provisions, and the rule mandating exclusion of certain items from copyright protection also is expressly recognized in international copyright agreements. Both the TRIPS Agreement and WIPO Copyright Treaty specify that copyright protection extends "to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such." TRIPS, art. 9(2 ); WIPO Copyright Treaty, art. 2. Courts and commentators often describe 1 02(b) as implementing a venerable precept of copyright law: An idea can never be copyrightable, but its expression may be. In fact, 102(b) seems to have two purposes: (1) to define the line between what is eligible for copyright protection and what belongs to the public domain; and (2) to define the line between copyrightable and patentable subject matter. The phrase "idea/expression distinction" is thus shorthand for a rule requiring the exclusion of a variety of elements of a work from copyright protection. Both economic and noneconomic approaches to copyright view the items listed in 1 02(b) as basic building blocks of copyrightable expression, and hold that granting copyright in these items would be counterproductive. Consider, for example, the idea of a pair of doomed lovers whose families oppose their marriage, or the scientific concepts embodied in Einstein's theory of relativity, or the steps that need to be performed to change a tire or bake an apple pie. Would it be efficient to give exclusive rights in any of these "ideas" to the first person to write about it? Would it be fair, or morally justifiable, to do so? While the goal of protecting "expression" rather than "idea" is simple enough to state, implementing it in practice is much harder. As in the case of 102(a)'s originality requirement, the legislative history of 1 02(b) is somewhat vague, indicating primarily that the provision was intended to continue the status quo: "Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. Its purpose is to restate... that the basic dichotomy between expression and idea remains unchanged." H.R Rep. No , 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, Once again, therefore, the courts must develop their own guiding principles. As you read the cases in this section, keep 102(b )'s twofold purpose in mind, and think about whether that helps to explain the results in particular cases that might otherwise seem difficult to understand. a. The Classic Case The landmark Supreme Court decision on the "idea/expression distinction" is Baker v. Selden, 101 U.S. 99 (1879). Indeed, the legislative history of 102(b)

44 A. The Elements of Copyrightable Subject Matter 91 indicates that Congress intended 102(b) in part to codify the holding of Baker. H.R. Rep. No , 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, As you read the case, try to identify where the Court draws the line between copyrightable and uncopyrightable subject matter. Baker v. Selden 101 u. s. 99 (1879) BRADLEY, J.: Charles Selden, the testator of the complainant in this case, in the year 1859 took the requisite steps for obtaining the copyright of a book, entitled "Selden's Condensed Ledger, or Book-keeping Simplified," the object of which was to exhibit and explain a peculiar system of book-keeping. In 1860 and 1861, he took the copyright of several other books, containing additions to and improvements upon the said system. The bill of complaint was filed against the defendant, Baker, for an alleged infringement of these copyrights. The latter, in his answer, denied that Selden was the author or designer of the books, and denied the infringement charged, and contends on the argument that the matter alleged to be infringed is not a lawful subject of copyright.... The book or series of books of which the complainant claims the copyright consists of an introductory essay explaining the system of book-keeping referred to, to which are annexed certain forms or blanks, consisting of ruled lines, and headings, illustrating the system and showing how it is to be used and carried out in practice. This system effects the same results as book-keeping by double entry; but, by a peculiar arrangement of columns and headings, presents the entire operation, of a day, a week, or a month, on a single page, or on two pages facing each other, in an account-book. The defendant uses a similar plan so far as results are concerned; but makes a different arrangement of the columns, and uses different headings. If the complainant's testator had the exclusive right to the use of the system explained in his book, it would be difficult to contend that the defendant does not infringe it, notwithstanding the difference in his form of arrangement; but if it be assumed that the system is open to public use, it seems to be equally difficult to contend that the books made and sold by the defendant are a violation of the copyright of the complainant's book considered merely as a book explanatory of the system. Where the truths of a science or the methods of an art are the common property of the whole world, any author has the right to express the one, or explain and use the other, in his own way. As an author, Selden explained the system in a particular way. It may be conceded that Baker makes and uses account-books arranged on substantially the same system; but the proof fails to show that he has violated the copyright of Selden's book, regarding the latter merely as an explanatory work; or that he has infringed Selden's right in any way, unless the latter became entitled to an exclusive right in the system. The evidence of the complainant is principally directed to the object of showing that Baker uses the same system as that which is explained and illustrated in Selden's

45 92 2. Requirements for Copyright Protection books. It becomes important, therefore, to determine whether, in obtaining the copyright of his books, he secured the exclusive right to the use of the system or method of book-keeping which the said books are intended to illustrate and explain. It is contended that he has secured such exclusive right, because no one can use the system without using substantially the same ruled lines and headings which he has appended to his books in illustration of it. In other words, it is contended that the ruled lines and headings, given to illustrate the system, are a part of the book, and, as such, are secured by the copyright; and that no one can make or use similar ruled lines and headings, or ruled lines and headings made and arranged on substantially the same system, without violating the copyright. And this is really the question to be decided in this case. Stated in another form, the question is, whether the exclusive property in a system ofbook-keeping can be claimed, under the law of copyright, by means of a book in which that system is explained? The complainant's bill, and the case made under it, are based on the hypothesis that it can be.... There is no doubt that a work on the subject of book-keeping, though only explanatory of well-known systems, may be the subject of a copyright; but, then, it is claimed only as a book. Such a book may be explanatory either of old systems, or of an entirely new system; and, considered as a book, as the work of an author, conveying information on the subject of book-keeping, and containing detailed explanations of the art, it may be a very valuable acquisition to the practical knowledge of the community. But there is a clear distinction between the book, as such, and the art which it is intended to illustrate. The mere statement of the proposition is so evident, that it requires hardly any argument to support it. The same distinction may be predicated of every other art as well as that of book-keeping. A treatise on the composition and use of medicines, be they old or new; on the construction and use of ploughs, or watches, or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of perspective,-would be the subject of copyright; but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. The copyright of the book, if not pirated from other works, would be valid without regard to the novelty, or want of novelty, of its subjectmatter. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province ofletters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and it can only be secured by a patent from the government The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are

46 A. The Elements of Copyrightable Subject Matter 93 similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public; not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application. Of course, these observations are not intended to apply to ornamental designs, or pictorial illustrations addressed to the taste. Of these it may be said, that their form is their essence, and their object, the production of pleasure in their contemplation. This is their final end. They are as much the product of genius and the result of composition, as are the lines of the poet or the historian's periods. On the other hand, the teachings of science and the rules and methods of useful art have their final end in application and use; and this application and use are what the public derive from the publication of a book which teaches them. But as embodied and taught in a literary composition or book, their essence consists only in their statement. This alone is what is secured by the copyright. The use by another of the same methods of statement, whether in words or illustrations, in a book published for teaching the art, would undoubtedly be an infringement of the copyright. Recurring to the case before us, we observe that Charles Selden, by his books, explained and described a peculiar system of book-keeping, and illustrated his method by means of ruled lines and blank columns, with proper headings on a page, or on successive pages. Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book intended to convey instruction in the art, any person may practise and use the art itself which he has described and illustrated therein. The use of the art is a totally different thing from a publication of the book explaining it. The copyright of a book on book-keeping cannot secure the exclusive right to make, sell, and use account-books prepared upon the plan set forth in such book. Whether the art might or might not have been patented, is a question which is not before us. It was not patented, and is open and free to the use of the public. And, of course, in using the art, the ruled lines and headings of accounts must necessarily be used as incident to it. The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas produced by the peculiar nature of the art described in the books which have been made the subject of copyright. In describing the art, the illustrations and diagrams employed happen to correspond more closely than usual with the actual work performed by the operator who uses the art. Those illustrations and diagrams consist of ruled lines and headings of accounts; and it is similar ruled lines and headings of accounts which, in the application of the art, the book-keeper makes with his pen, or the stationer with his press; whilst in most other cases the diagrams and illustrations can only be represented in concrete forms of wood, metal, stone, or some other physical embodiment. But the principle is the same in all. 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 at all, by letters-patent....

47 ! i ;5 IBIIEI'S foiji.i A I D I T O R ' S I I & I S T E R. A II D I T O R ' S S T E R. DISBL"RSEMENTS. RECEIPTS. To>. Pclr. j J l J 1' 1111o For..li 1 0 A e. J"otal. ADDmONAL DISBURSEMENTS. z FUNDS 'c:oumy. r-. Bridp. - T...,hlp. Coorpcwodon.... Londt. T..-,. loltiinrc. Showuhddlcr' Uccnc-. va Socdanlll.,.. -. a-it..._ Buifdios Mlaltor7 Soklion'l'.,-...,. 8"'-ioT...-y. TOIII. : c..;;.., T.Gca.oJ -. J li - '2 i 0 Tolll i- BALAN CE. SHEJ!.T... llllo4' 1 T..._, ;-;; j.;;,"... ADDJTIO!IIAL RECEIPTS.... j.;;, "3 l.uf HAND PAC RIGHT HA&'I D PACE

48 A II D I T 0 B, s B E ' 8 B D. ISElBEN'S FORM) C 0 N D E N SE D l E D 6 E B. DISBURSEMENTS. RECEIPTS. Bro'gllt Dlltrl Dale: fmm to.... indusive. Tulul. B:dlm 3.. Q Cowuy l und. a f 0 "' z: ro. I "' For. < <( H II:\ \:ll l.\(,1:, d 7. I l'of'wilnl. or. For. } < '5.:..:.: < c u Q I! buiiod. la _a Swutries 10 Sundries. CC5. TREASURER. Dr. Cr. c5..:..:..:..:.... $ $ Q (,. Q u c...,, Bllqel'und. c...,lnlh>... ry. 111o1141nc FlUid.,,..,., Fum!. Kind Fund. Sale RICkmpllom..,,.,_ T.. o- Forfdluns. lltqlikalt. Socllon 16. S.Ctlonn. Ptddlcn' l.lc- Sllowu... Sl tt FvruL School fund. co.,...llon l"\\nd. ToiOftllllplbnol. Tteasurcr's '""" SIIICORIIItf l"\\nd, Soldlon' P'...t D01111ft"uul4. _..._ C.URIW I'ORWAAD. Rl<.ITf IL\.'>1>!..\(,1.

49 96 2. Requirements for Copyright Protection NOTES AND QUESTIONS l. What exactly is the Baker holding? What (if anything) in Selden's book is copyrightable and what is not? 2. While Baker is often cited as the foundational case establishing the idea/ expression distinction, does it in fact do so? According to Professor Pamela Samuelson, "[T]he main message the Court was trying to convey was that bookkeeping systems and other useful arts were beyond the scope of copyright protection in any text that might explain them or any drawing that might illustrate them." Pamela Samuelson, Why Copyright Excludes Systems and Processes from the Scope of Its Protection, 85 Tex. L. Rev. 1921, 1926 (2007). Do you agree? Examine 102(b) again. Which of the listed items are most closely related to the Baker Court's holding? Does Baker mean that the more useful a work is, the less likely it is to be copyrightable? If courts interpret Baker in the way that Professor Samuelson recommends, will they inevitably have to evaluate artistic merit? 3. In Baker the defendant was a direct competitor of the copyright holder. Should that matter to the copyright analysis? 4. Section 101 of the Patent Act defines patentable subject matter to include "any new and useful process" that meets the statute's requirements. Selden's bookkeeping system could be considered a process, but courts during Selden's time most likely would have held the system unpatentable based on a judicially created doctrine excluding business methods from patent protection. In Bilski v. Kappos, 561 U.S. 593 (2010), the Court held that "the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under 101." Id. at 609. Note on the Merger Doctrine and Thin Copyright Closely related to the exclusionary principle expressed in 102(b) is the doctrine of merger: Where only one or a limited number of ways exist to express an idea, the idea and expression merge, and copyright cannot be used to prevent another from using the same or similar expression. The merger doctrine commands universal agreement, but courts differ in the way they apply it. Some decisions treat merger as a bar to copyrightability. For example, in Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967), the court held that instructions for a sweepstakes contest could not be copyrighted: When the uncopyrightable subject matter i 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. Cf. Baker v. Selden....

50 A. The Elements of Copyrightable Subject Matter F.2d at 679. According to others, the doctrine supplies a defense to copyright infringement liability. See, e.g., Kregos v. Associated Press, 937 F.2d 700, 705 (2d Cir. 1991) ("Assessing merger in the context of alleged infringement will normally provide a more detailed and realistic basis for evaluating the claim that protection of expression would invariably accord protection to an idea."). Sometimes, there are more than a few ways to express an idea, but the scope for variation is quite limited. In such cases, a court may conclude that the particular expression is copyrightable but that the scope of the copyright is "thin"-so thin that infringement only occurs in the case of a virtually identical copy. See, e.g., Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989) ("Where an idea and the expression 'merge,' or are 'inseparable,' the expression is not given copyright protection.... In addition, where an expression is, as a practical matter, indispensable, or at least standard, in the treatment of a given idea, the expression is protected only against verbatim, or virtually identical copying."). Finally, note that in its regulations, the Copyright Office has indicated its view that certain items should always be excluded from copyright protection: Material not subject to copyright The following are examples of works not subject to copyright and applications for registration of such works cannot be entertained: (a) Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents; (b) Ideas, plans, methods, systems, or devices, as distinguished from the particular manner in which they are expressed or described in a writing; (c) Blank forms, such as time cards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms and the like, which are designed for recording information and do not in themselves convey information; (d) Works consisting entirely of information that is common property containing no original authorship, such as, for example: Standard calendars, height and weight charts, tape measures and rulers, schedules of sporting events, and lists or tables taken from public documents or other common sources. (e) Typeface as typeface. 37 C.P.R NOTES AND QUESTIONS l. What are the practical differences, if any, to litigants of the different approaches to the merger doctrine? What incentives does the "thin copyright" approach create?

51 98 2. Requirements for Copyright Protection 2. Section 1 02(b) explains some, but not all, of the items on the Copyright Office's list of excluded items. Does the merger doctrine explain all of the others? PRACTICE EXERCISE: COUNSEL A CLIENT If Selden's book were still under copyright, how would you advise a client who wanted to do the following: a. implement an accounting system requiring the client to use exact copies of the forms; b. publish a book of blank forms containing exact copies of Selden's forms; c. publish a book comparing different accounting systems, and including (i) a description of Selden's system, (ii) exact copies of the forms, and (iii) examples of how to modify the forms to meet different needs. b. Complications Baker and 102(b) might be read to suggest that information separates neatly into three categories: copyrightable, patentable, and public domain. The reality is more complicated. As we noted at the outset of this section, the phrase "idea/ expression distinction" is shorthand for a rule requiring the exclusion of a variety of elements of a work from copyright protection. Within copyright law, the conceptual difficulties in separating those elements from protectable expression can be substantial. We begin by considering the line between fact and fiction. Some works blend the two, making the scope of copyright protection in such works difficult to assess. Many nonfictional historical works, meanwhile, include some material that rests, at least in part, on hypothesis or conjecture. Additionally, many expressive works, both fictional and nonfictional, employ standard expressions to conjure up certain images. Does copyright bar duplication of such expressions? Consider what the next case has to say about these questions. A.A. Hoehling v. Universal City Studios, Inc. 618 F.2d 972 (2d Cir.), cert. denied, 449 U. S. 841 (1980) KAUFMAN, C.J.: A grant of copyright in a published work secures for its author a limited monopoly over the expression it contains. The copyright provides a financial incentive to those who would add to the corpus of existing knowledge by creating original works. Nevertheless, the protection afforded the copyright holder has never extended to history, be it documented fact or explanatory hypothesis. The rationale for this doctrine is that the cause of knowledge is best served when history is the common property of all, and each generation remains free to draw upon the discoveries and insights of the past. Accordingly, the scope of copyright in historical accounts is narrow indeed, embracing no more than the author's original expression of particular facts and theories already in the public domain. As the case before us

52 A. The Elements of Copyrightable Subject Matter 99 illustrates, absent wholesale usurpation of another's expression, claims of copyright infringement where works of history are at issue are rarely successful. I. This litigation arises from three separate accounts of the triumphant introduction, last voyage, and tragic destruction of the Hindenburg, the colossal dirigible constructed in Germany during Hitler's reign. The zeppelin, the last and most sophisticated in a fleet of luxury airships, which punctually floated its wealthy passengers from the Third Reich to the United States, exploded into flames and disintegrated in 35 seconds as it hovered above the Lakehurst, New Jersey Naval Air Station at 7:25 P.M. on May 6, Thirty-six passengers and crew were killed but, fortunately, 52 persons survived. Official investigations conducted by both American and German authorities could ascertain no definitive cause of the disaster, but both suggested the plausibility of static electricity or St. Elmo's Fire, which could have ignited the highly explosive hydrogen that filled the airship. Throughout, the investigators refused to rule out the possibility of sabotage.... The final pages of the airship's story marked the beginning of a series of journalistic, historical, and literary accounts devoted to the Hindenburg and its fate. Indeed, weeks of testimony by a plethora of witnesses before the official investigative panels provided fertile source material for would-be authors. Moreover, both the American and German Commissions issued official reports, detailing all that was then known of the tragedy. A number of newspaper and magazine articles had been written about the Hindenburg in 1936, its first year of trans-atlantic service, and they, of course, multiplied many fold after the crash. In addition, two passengers, Margaret Mather and Gertrud Adelt, published separate and detailed accounts of the voyage, C. E. Rosendahl, commander of the Lakehurst Naval Air Station and a pioneer in airship travel himself, wrote a book titled What About the Airship?, in which he endorsed the theory that the Hindenburg was the victim of sabotage. In 1957, Nelson Gidding, who would return to the subject of the Hindenburg some 20 years later, wrote an unpublished "treatment" for a motion picture based on the deliberate destruction of the airship. In that year as well, John Toland published Ships in the Sky which, in its seventeenth chapter, chronicled the last flight of the Hindenburg. In 1962, Dale Titler released Wings of Mystery, in which he too devoted a chapter to the Hindenburg. 1 Appellant A. A. Hoehling published Who Destroyed the Hindenburg?, a fulllength book based on his exhaustive research in Mr. Hoehling studied the investigative reports, consulted previously published articles and books, and conducted interviews with survivors of the crash as well as others who possessed information about the Hindenburg. His book is presented as a factual account, written in an objective, reportorial style. l. Titler's account was published after the release of appellant's book. In an affidavit in this litigation, Titler states that he copied Hoehling's theory of sabotage. Hoehling, however, has never instituted a copyright action against Titler.

53 l Requirements for Copyright Protection The first half recounts the final crossing of the Hindenburg, from Sunday, May 2, when it left Frankfurt, to Thursday, May 6, when it exploded at Lakehurst. Hoehling describes the airship, its role as an instrument of propaganda in Nazi Germany, its passengers and crew, the danger ofhydrogen, and the ominous threats received by German officials, warning that the Hindenburg would be destroyed. The second portion, headed The Quest, sets forth the progress of the official investigations, followed by an account of Hoehling's own research. In the final chapter, spanning eleven pages, Hoehling suggests that all proffered explanations of the explosion, save deliberate destruction, are unconvincing. He concludes that the most likely saboteur is one Eric Spehl, a "rigger" on the Hindenburg crew who was killed at Lakehurst. According to Hoehling, Spehl had motive, expertise, and opportunity to plant an explosive device, constructed of dry-cell batteries and a flashbulb, in "Gas Cell 4," the location of the initial explosion. An amateur photographer with access to flashbulbs, Spehl could have destroyed the Hindenburg to please his ladyfriend, a suspected communist dedicated to exploding the myth of Nazi invincibility. Ten years later appellee Michael MacDonald Mooney published his book, The Hindenburg. Mooney's endeavor might be characterized as more literary than historical in its attempt to weave a number of symbolic themes through the actual events surrounding the tragedy. His dominant theme contrasts the natural beauty of the month of May, when the disaster occurred, with the cold, deliberate progress of "technology." The May theme is expressed not simply by the season, but also by the character of Spehl, portrayed as a sensitive artisan with needle and thread. The Hindenburg, in contrast, is the symbol of technology, as are its German creators and the Reich itself. The destruction is depicted as the ultimate triumph of nature over technology, as Spehl plants' the bomb that ignites the hydrogen. Developing this theme from the outset, Mooney begins with an extended review of man's efforts to defy nature through flight, focusing on the evolution of the zeppelin. This story culminates in the construction of the Hindenburg, and the Nazis' claims of its indestructibility. Mooney then traces the fateful voyage, advising the reader almost immediately of Spehl's scheme. The book concludes with the airship's explosion. Mooney acknowledges, in this case, that he consulted Hoehling's book, and that he relied on it for some details. He asserts that he first discovered the "Spehl-assaboteur" theory when he read Titler's Wings of Mystery. Indeed, Titler concludes that Spehl was the saboteur, for essentially the reasons stated by Hoehling. Mooney also claims to have studied the complete National Archives and New York Times files concerning the Hindenburg, as well as all previously published material. Moreover, he traveled to Germany, visited Spehl's birthplace, and conducted a number of interviews with survivors. After Mooney prepared an outline of his anticipated book, his publisher succeeded in negotiations to sell the motion picture rights to appellee Universal City Studios. Universal then commissioned a screen story by writers Levinson and Link, best known for their television series, Columbo, in which a somewhat disheveled, but wise detective unravels artfully conceived murder mysteries. In their screen story, Levinson and Link created a Columbo-like character who endeavored to identify the saboteur on board the Hindenburg. Director Robert Wise, however, was not

54 A. The Elements of Copyrightable Subject Matter 101 satisfied with this version, and called upon Nelson Gidding to write a final screenplay. Gidding, it will be recalled, had engaged in preliminary work on a film about the Hindenburg almost twenty years earlier. The Gidding screenplay follows what is known in the motion picture industry as a "Grand Hotel" formula, developing a number of fictional characters and subplots involving them. This formula has become standard fare in so-called "disaster" movies, which have enjoyed a certain popularity in recent years. In the film, which was released in late 1975, a rigger named "Boerth," who has an anti-nazi ladyfriend, plans to destroy the airship in an effort to embarrass the Reich. Nazi officials, vaguely aware of sabotage threats, station a Luftwaffe intelligence officer on the-zeppelin, loosely resembling a Colonel Erdmann who was aboard the Hindenburg. This character is portrayed as a likable fellow who soon discovers that Boerth is the saboteur. Boerth, however, convinces him that the Hindenburg should be destroyed and the two join forces, planning the explosion for several hours after the landing at Lakehurst, when no people would be on board. In Gidding's version, the airship is delayed by a storm, frantic efforts to defuse the bomb fail, and the Hindenburg is destroyed. The film's subplots involve other possible suspects, including a fictional countess who has had her estate expropriated by the Reich, two fictional confidence men wanted by New York City police, and an advertising executive rushing to close a business deal in America.... [Hoehling sued Universal and Mooney for copyright infringement. The district court granted summary judgment in favor of the defendants.] A II.... Hoehling's principal claim is that both Mooney and Universal copied the essential plot of his book-i.e., Eric Spehl, influenced by his girlfriend, sabotaged the Hindenburg by placing a crude bomb in Gas Cell [A ]ppellees... argue that Hoehling's plot is an "idea," and ideas are not copyrightable as a matter oflaw. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir.), cert. denied, 298 U.S Hoehling, however, correctly rejoins that while ideas themselves are not subject to copyright, his "expression" of his idea is copyrightable. Id. at But, where, as here, the idea at issue is an interpretation of an historical event, our cases hold that such interpretations are not copyrightable as a matter oflaw. In Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S , we held that the defendant's biography of Howard Hughes did not infringe an earlier biography of the reclusive alleged billionaire. Although the plots of the two works were necessarily similar, there could be no infringement because of the "public benefit in encouraging the development of historical and biographical works and their public distribution." Id. at 307; accord, Oxford Book Co. v. College Entrance Book Co., 98 F.2d 688 (2d Cir. 1938). To avoid a chilling effect on authors who contemplate tackling an historical issue or event,

55 Requirements for Copyright Protection broad latitude must be granted to subsequent authors who make use of historical subject matter, including theories or plots. Learned Hand counseled in Myers v. Mail & Express Co., 36 C.O. Bull. 478, 479 (S.D.N.Y. 1919), "[t]here cannot be any such thing as copyright in the order of presentation of the facts, nor, indeed, in their selection. "5 In the instant case, the hypothesis that Eric Spehl destroyed the Hindenburg is based entirely on the interpretation of historical facts, including Spehl's life, his girlfriend's anti-nazi connections, the explosion's origin in Gas Cell 4, Spehl's duty station, discovery of a dry-cell battery among the wreckage, and rumors about Spehl's involvement dating from a 1938 Gestapo investigation. Such an historical interpretation, whether or not it originated with Mr. Hoehling, is not protected by his copyright and can be freely used by subsequent authors. B The same reasoning governs Hoehling's claim that a number of specific facts, ascertained through his personal research, were copied by appellees. 6 The cases in this circuit, however, make clear that factual information is in the public domain. See, e.g., Rosemont Enterprises, Inc., supra, 366 F.2d at 309; Oxford Book Co., supra, 98 F.2d at 691. Each appellee had the right to "avail himselfofthe facts contained" in Hoehling's book and to "use such information, whether correct or incorrect, in his own literary work." Greenbie v. Noble, 151 F. Supp. 45, 67 (S.D.N.Y. 1957). Accordingly, there is little consolation in relying on cases in other circuits holding that the fruits of original research are copyrightable. See, e.g., Toksvig v. Bruce Publications Corp., 181 F.2d 664, 667 (7th Cir. 1950); Miller v. Universal City Studios, Inc., 460 F. Supp. 984 (S.D. Fla. 1978). Indeed, this circuit has clearly repudiated Toksvig and its progeny. In Rosemont Enterprises, Inc., supra, 366 F.2d at 310, we refused to "subscribe to the view that an author is absolutely precluded from saving 5. This circuit has permitted extensive reliance on prior works of history. See, e.g., Gardner v. Nizer, 391 F. Supp. 940 (S.D.N.Y. 1975) (the story of the Rosenberg trial not copyrightable); Fuld v. National Broadcasting Co., 390 F. Supp. 877 (S.D.N.Y. 1975) ("Bugsy" Siegel's life story not copyrightable); Greenbie v. Noble, 151 F. Supp. 45 (S.D.N.Y. 1957) (the life of Anna Carroll, a member of Lincoln's cabinet, not copyrightable). The commentators are in accord with this view. See, e.g., 1, Nimmer on Copyright 2.ll[A] (1979); Chafee, Reflections on the Law of Copyright: I, 45 Colum. L. Rev. 503, 511 (1945). 6. In detailed comparisons of his book with Mooney's work and Universal's motion picture, Hoehling isolates 266 and 75 alleged instances of copying, respectively: Judge Metzner correctly pointed out that many of these allegations are patently frivolous. The vast majority of the remainder deals with alleged copying of historical facts. It would serve no purpose to review Hoehling's specific allegations in detail in this opinion. The following ten examples, however, are illustrative: (l) Eric Spehl's age and birthplace; (2) Crew members had smuggled monkeys on board the GrafZeppelin; (3) Germany's ambassador to the U.S. dismissed threats of sabotage; (4) A warning letter had been received from a Mrs. Rauch; ( 5) The Hindenburg's captain was constructing a new home in Zeppelinheim; (6) Eric Spehl was a photographer; (7) The airship flew over Boston; (8) The Hindenburg was "tail heavy" before landing; (9) A member of the ground crew had etched his name in the zeppelin's hull; and (10) The navigator set the Hindenburg's course by reference to various North Atlantic islands.

56 A. The Elements of Copyrightable Subject Matter I 03 time and effort by referring to and relying upon prior published material.... It is just such wasted effort that the proscription against the copyright of ideas and facts... are designed to prevent." Accord, 1 Nimmer on Copyright 2.11 (1979). c The remainder of Hoehling's claimed similarities relate to random duplications of phrases and sequences of events. For example, all three works contain a scene in a German beer hall, in which the airship's crew engages in revelry prior to the voyage. Other claimed similarities concern common German greetings of the period, such as "Heil Hitler," or songs, such as the German National anthem. These elements, however, are merely scenes a fa ire, that is, "incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic." Alexander [v. Haley], 460 F. Supp. [40, 45 S.D.N.Y.1977); accord, Bevan v. Columbia Broadcasting System, Inc., 329 F. Supp. 601, 607 (S.D.N.Y. 1971). Because it is virtually impossible to write about a particular historical era or fictional theme without employing certain "stock" or standard literary devices, we have held that scenes ci faire are not copyrightable as a matter of law. See Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir.), cert. denied, 429 U.S. 980 (1976).... D All of Hoehling's allegations of copying, therefore, encompass material that is non-copyrightable as a matter oflaw, rendering summary judgment entirely appropriate. We are aware, however, that in distinguishing between themes, facts, and scenes ci fa ire on the one hand, and copyrightable expression on the other, courts may lose sight of the forest for the trees. By factoring out similarities based on noncopyrightable elements, a court runs the risk of overlooking wholesale usurpation of a prior author's expression. A verbatim reproduction of another work, of course, even in the realm of nonfiction, is actionable as copyright infringement. See Wa inwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91 (2d Cir. 1977), cert. denied, 434 U.S Thus, in granting or reviewing a grant of summary judgment for defendants, courts should assure themselves that the works before them are not virtually identical. In this case, it is clear that all three authors relate the story of the Hindenburg differently. In works devoted to historical subjects, it is our view that a second author may make significant use of prior work, so long as he does not bodily appropriate the expression of another. Rosemont Enterprises, Inc., supra, 366 F.2d at 310. This principle is justified by the fundamental policy undergirding the copyright lawsthe encouragement of contributions to recorded knowledge. The "financial reward guaranteed to the copyright holder is but an incident of this general objective, rather than an end in itself." Berlin v. B. C. Publications, Inc., 329 F.2d 541, (2d Cir.), cert. denied, 379 U.S. 822 (1964).... Knowledge is expanded as well by granting new authors of historical works a relatively free hand to build upon the work of their predecessors....

57 l Requirements for Copyright Protection NOTES AND QUESTIONS l. Why should the plot of a fictional work receive copyright protection? Why isn't it enough for copyright to extend only to the literal textual wording? 2. Examine the text of l02(b) again. Which word or words in the statute exclude facts from copyright protection? According to the Feist Court: [t]o borrow from Burrow-Giles, one who discovers a fact is not its "maker" or "originator."... 'The discoverer merely finds and records." Census takers, for example, do not "create" the population figures that emerge from their efforts; in a sense, they copy these figures from the world around them... The same is true of all facts-scientific, historical, biographical, and news of the day. "[T]hey may not be copyrighted and are part of the public domain available to every person." Feist, 499 U.S. at Are historical theories also "discoveries"? Are historians less creative than painters or novelists? Should a work that is held out to the public as a work of historical fiction receive stronger copyright protection than a work that is held out to the public as a work of history? 3. The Hoehling court notes that it is attempting to avoid the wasted effort incurred when a second comer is required to research factual events anew. How is this wasted effort any different from that discussed in Question 2, Section A.2.9 supra, in which two artists each had to travel to Colorado to depict the same landscape? Each was free to copy the original but the second artist was not free to copy the copy painted by the first. Why doesn't the same rule apply to historical facts? Why doesn't it apply to historical theories? Note that historians are subject to separate ethical norms that prohibit plagiarism and require citation of sources. Do these norms serve the same purposes that copyright law serves? 4. The merger doctrine applies when it is necessary to copy expression because the underlying idea may not be effectively expressed in another way. The doctrine of scenes a fa ire protects a second comer's use of literary devices that are not literally necessary to express an idea, but that the audience has come to expect. What are the justifications for these doctrines? Are they equally compelling? Next, we consider how the law should separate unprotectable systems or processes from copyrightable expression. Many industries develop new approaches to classifying information. When, if ever, are the results of such efforts copyrightable? Put differently, is l02(b) simply an elaboration of l02(a) or does it add something-i.e., could there be subject matter that qualifies for copyright protection under l 02( a) (because it is sufficiently original), but that nevertheless is excluded by l02(b)?

58 A. The Elements of Copyrightable Subject Matter 105 ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc. 402 F.3d 700 (6th Cir. 2005) Opinion BoGGs, C.J. [ATC, a company selling transmission parts, had purchased another firm's assets, including a catalog with illustrations and a numbering system for transmission parts. Kenny Hester, a former ATC employee, formed his own competitive company, Whatever It Takes Transmissions ("WITT"). Hester obtained an electronic version of the catalog and developed a similar one. ATC sued for copyright infringement and the court granted summary judgment for WITT. This appeal followed.] II We review a district court's order granting summary judgment de novo, and its findings of fact for clear error. A. Copyrigh t infringement.... ATC claims that WITT and Hester infringed its copyrights in the parts catalog, the individual part numbers contained in the catalog, the illustrations contained in the catalog, and its self-described "Numbering System Manual." Appellees do not contest the allegation that they copied these works and items. Rather, they raise the affirmative defense that... none of the works or items listed are eligible for copyright protection. The district court... agreed that the catalog, part numbers, illustrations, and the manual lacked the originality required for copyright protection, and that Appellees' admitted copying of these works and items could not have constituted copyright infringement as a matter of law. The district court therefore held that Appellees were entitled to summary judgment on ATC's claim of copyright infringement.... [W]e agree.... l. Catalog and Part Numbers.... ATC argues that its catalog is a creative classification scheme, or taxonomy, which sorts parts into categories and sub-categories, and allocates numbers to each part. Under this theory, the individual part numbers would be protected as the copyrightable expressions of the overall taxonomy.... ATC's parts-classification scheme divides transmission parts into a series of categories and sub-categories. There are three basic categories: brand, transmission

59 Requirements for Copyright Protection type, and type of part. In addition, a suffix field is available to further sub-divide a particular part when appropriate. Within each category, several sub-categories have been created. In the brand category the sub-categories are relatively obvious: the transmissions are listed by manufacturer. In the part category the sub-categories are less obvious, and require decisions such as whether to have a single category of rings, of which some are sealing rings and some are 0-rings, or to have two distinct categories, sealing rings and 0-rings. Each of the three basic categories and the optional suffix are represented in each part number by a two-digit or three-digit field (with the occasional letter), within which the transmission types or parts are numbered in order, with gaps being left in each sub-category to accommodate new parts in the future. Although all parts within a sub-category are numbered sequentially, the ordering of the sub-categories within a field, or the parts within a sub-category appears to be random. As such, the fact that an "0-ring pump" and an "0-ring pump bolt" are in the same general range of numbers is no accident. But the fact that 0-rings in general are numbered in the 300's, and the fact that these two parts are numbered 311 and 312 rather than 341 and 342, are accidental. Each discrete transmission part will have a number that is between five and nine digits and/or letters. ATC claims that its numbering scheme involves several different types of creativity: ( 1) deciding what kind of information to convey in part numbers; ( 2) predicting future developments in the transmission parts industry and deciding how many slots to leave open in a given sub-category to allow for those developments; (3) deciding whether an apparently novel part that does not obviously fit in any of the existing classifications should be assigned a new category of its own or placed in an existing category, and, if the latter, which one; ( 4) designing the part numbers; and ( 5) devising the overall taxonomy of part numbers that places the parts into different categories. An example of this last type of creativity would be the decision to include in the catalog entries for "Pressure Plate, Intermediate (Top)" (assigned number 144) and "Pressure Plate, Intermediate (Bottom)" (145), as opposed to using one unitary entry for "Pressure Plate, Intermediate," but adding a suffix to that part number that differentiates between top (1441) and bottom (1442) plates. a. The ATC Catalog as a Taxonomy. Classification schemes can in principle be creative enough to satisfy the originality requirement of copyright protection. See Am. Dental Ass)n v. Delta Dental Plans Ass)n, 126 F.3d 977, 979 (7th Cir.1997) ("Facts do not supply their own principles of organization. Classification is a creative endeavor.... There can be multiple, and equally original, biographies of the same person's life, and multiple original taxonomies of a field of knowledge."). None of ATC's claimed creative endeavors seem particularly creative when compared to a great painting or novel, but the Supreme Court has made clear that only a bare minimum amount of creativity is required to satisfy the constitutional originality requirement. See Feist, 499 U.S. at 345. At least some of the decisions made by ATC are arguably "non-obvious choices" made from "among more than a few options." See Matthew Bender & Co. v. West PubPg Co., 158 F.3d 674, 682 (2d Cir.1998).

60 A. The Elements of Copyrightable Subject Matter l 07 Original and creative ideas, however, are not copyrightable, [under] 17 U.S.C. 102(b ).... And all of the creative aspects of the ATC classification scheme are just that: ideas. ATC cannot copyright its prediction of how many types of sealing ring will be developed in the future, its judgment that 0-rings and sealing rings should form two separate categories of parts, or its judgment that a new part belongs with the retainers as opposed to the pressure plates. The expression of ATC's ideas about part classification and the future of the transmission parts market is not barred from copyright protection by the ideaexpression distinction. It is barred, however, in part by the "merger doctrine," and in part by the originality requirement. For almost all of the types of creativity claimed by ATC, there is only one reasonable way to express the underlying idea. For example, the only way to express the prediction that a maximum of four additional types of sealing ring might be developed is to leave four numbers unallocated, and the only way to express the idea that a novel part should be placed with the sealing rings rather than with the gaskets is to place that part with the sealing rings. Under the merger doctrine, "when there is essentially only one way to express an idea, the idea and its expression are inseparable [i.e., they merge,] and copyright is no bar to copying that expression." Kobus v. Mario!, 328 F.3d 848, 856 (6th Cir.2003) (alteration in original, internal citation omitted). The only aspect of the numbering system that does not merge with the underlying idea is the allocation of numbers to each sub-category, and ultimately to each part. ATC argues that its individual part numbers are copyright protected as expressions of the catalog as a whole, and cites as authority the Seventh Circuit's holding in American Dental, which held that the American Dental Association's Code on Dental Procedures and Nomenclature was copyrightable. See 126 F.3d at 979. The Code classified dental procedures into groups, with each procedure receiving a number, a short description, and a long description. Id. at The Seventh Circuit held that the numbers assigned to each procedure were copyrightable, in addition to the long and short descriptions of each procedure. I d. at 979. The American Dental court's rationale for holding that the individual procedure numbers were copyrightable is rather opaque: Number reads "guided tissue regeneration-nonresorbable barrier, per site, per tooth" but could have read "regeneration of tissue, guided by nonresorbable barrier, one site and tooth per entry." Or "use ofbarrier to guide regeneration of tissue, without regard to the number of sites per tooth and whether or not the barrier is resorbable." The first variation is linguistic, the second substantive; in each case the decision to use the actual description is original to the ADA, not knuckling under to an order imposed on language by some "fact" about dental procedures. Blood is shed in the ADA's committees about which description is preferable. The number assigned to any one of the three descriptions could have had four or six digits rather than five; guided tissue regeneration could have been placed in the 2500 series rather than the 4200 series; again any of these choices is original to the author of a taxonomy, and another author could do things differently. Every number in the ADA's Code begins with zero, assuring a large supply of unused numbers for procedures to be devised or reclassified in the future; an author could have elected instead to leave wide gaps inside the sequence. A catalog that initially assigns 04266, 04267, to three procedures will over time depart substantively

61 l Requirements for Copyright Protection from one that initially assigns 42660, 42670, and to the same three procedures. So all three elements of the Code-numbers, short descriptions, and long descriptions, are copyrightable subject matter under 17 U.S.C. 102(a). Ibid. Almost all of this passage concerns either the wording of the descriptions, or the creative thought that went into the underlying taxonomy, such as the decision to leave gaps in the numbering system. The discussion of the numbers themselves is limited to two immaterial observations: that numbers in the 4200's rather than the 2500's were assigned to guided tissue regeneration; and that the numbers assigned to a particular procedure in a catalog will differ depending on the prior allocation of numbers to other procedures. Neither of these facts evidences any creativity by the ADA that would render the numbers eligible for copyright protection. The mere fact that numbers are attached to, or are a by-product of categories and descriptions that are copyrightable does not render the numbers themselves copyrightable. Even assuming, arguendo, that some strings of numbers used to designate an item or procedure could be sufficiently creative to merit copyright protection, the parts numbers at issue in the case before us do not evidence any such creativity. ATC's allocation of numbers to parts was an essentially random process, serving only to provide a useful shorthand way of referring to each part. The only reason that a "sealing ring, pump slide" is allocated number 176 is the random ordering of subcategories of parts, and the random ordering of parts within that sub-category. Were it not for a series of random orderings within each category field, a given part could be or As such, the particular numbers allocated to each part do not express any of the creative ideas that went into the classification scheme in any way that could be considered eligible for copyright protection. These numbers are no more copyrightable than would be the fruit of an author's labors if she wrote a book and then "translated" it into numbers using a random number generator for each letter in every word. Even if the text in English was copyrightable, the randomly generated list of numbers that comprised the "translation" could not be. Originality aside, there are other sound reasons for denying copyright protection to short "works," such as part numbers. Although the fact that ATC had a copyright in the number might not ultimately preclude other people or entities from using that number in other contexts, given the defenses of fair use and independent creation available to those accused of copyright infringement, anyone using that number in a commercial context would face the time-consuming and expensive prospect of having to defend themselves against such claims. This would not only be extremely inefficient, but would provide a way for the creators of otherwise uncopyrightable ideas or works to gain some degree of copyright protection through the back door simply by assigning short numbers or other shorthand phrases to those ideas or works (or their component parts). Indeed, the Copyright Office will not register a short name, phrase, or expression, such as the name of a product or service, even if it is novel or distinctive. See 37 C.F.R While the use without compensation of one's labors may seem unfair, "this is not 'some unforeseen byproduct of a statutory scheme.' It is, rather, 'the essence of copyright,' and a constitutional requirement. The primary objective of copyright is not to reward the labor of authors, but 'to promote the Progress of Science and useful

62 B. Two Special Cases: Derivative Works and Compilations 109 Arts."' Feist, 499 U.S. at 349 (internal citations omitted). Permitting uncopyrightable materials to receive protection simply by virtue of adding a number or label would allow an end run around that constitutional requirement. As a last resort, ATC suggested during oral argument that even if neither the ideas that gave rise to the parts numbers, nor the individual part numbers, qua expressions of those ideas, are copyrightable, the part numbers taken as a whole were somehow copyrightable as a middle ground between the two, much in the same way that while neither the basic idea behind a novel nor the individual words used to write it are protected, the story that those words form when taken together is copyrightable. The flaw in this argument is that there is no such middle ground in this case. Unlike the words that comprise a novel, which add up to a story, the numbers used in ATC's catalog only add up to a long list of numbers. Putting all the numbers together does not make them expressive in the way that putting words together makes a narrative.... NOTES AND QUESTIONS l. Why didn't the merger doctrine dictate the same result in American Dental that it did in ATC? The American Dental court did not simply address the copyrightability of the plaintiffs procedure numbers, but also considered the accompanying short descriptions and the classification system as a whole. It observed: "Dental procedures could be classified by complexity, or by the tools necessary to perform them, or by the parts of the mouth involved, or by the anesthesia employed, or in any of a dozen different ways. The Code's descriptions don't 'merge with the facts' any more than a scientific description of butterfly attributes is part of a butterfly." Am. Dental Ass)n v. Delta Dental Plans Ass)n, 126 F.3d 977, 979 (7th Cir. 1997). Which reasoning-the ATC court's or the American Dental court's-do you find more persuasive and why? 2. Should a taxonomy be considered a "process" or "method of operation" and therefore categorically barred from copyrightability under 102(b )? Should this be the rule even if the taxonomy is highly original-in other words, is there a kind of originality that is noncopyrightable? 3. Might the scenes a faire doctrine be relevant in a taxonomy case? If a taxonomy becomes an industry standard, should that militate against copyright protection? B. TWO SPECIAL CASES: DERIVATIVE WORKS AND COMPILATIONS In addition to the basic copyrightable subject matter provisions of 102, the Copyright Act contains a separate section that accords copyright protection to two special types ofworks:

63 ll 0 2. Requirements for Copyright Protection 103. Subject matter of copyright: Compilations and derivative works (a) The subject matter of copyright as specified by section I02 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully. (b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material. As you read the following materials, consider whether authors of compilations and derivative works are or should be held to different standards of originality than authors of other works. 1. Derivative Works U.S. copyright law has long recognized copyrights in works based on other works. For example, the Copyright Act of I909 extended copyright protection to "[ r ]eproductions of a work of art" and to "abridgements, adaptations, arrangements, dramatizations, translations, or other versions" of preexisting works. Pub. L. No , 60th Cong., 2d Sess. 5(h), 6, 35 Stat. I075, I077 (I909). In the I976 Act, Congress adopted the term derivative work and set forth a broad definition that encompasses any work based on or derived from another work: A "derivative work" is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work." I7 u.s.c International copyright treaties similarly require protection of works based on other works, but the international copyright community has not adopted the "derivative work" terminology. The Berne Convention mandates protection for "[t]ranslations, adaptations, arrangements of music and other alterations of a literary or artistic work." Berne Conv., art. 2( 3 ). The TRIPS Agreement incorporates this provision by reference. Section I 03(b) of the Act indicates that copyright in a derivative work subsists only in the new material contributed by the author of the derivative work. Neither I 03(b) nor the definition in I 0 I, however, indicates when the derivative material is sufficiently distinguishable from the underlying work to constitute a copyrightable work in its own right. Review the excerpt from Feist, supra page 73, which sets forth the standard that a work must satisfy to be considered an "original work of authorship." Then consider the standards of originality applied in the following cases.

64 B. Two Special Cases: Derivative Works and Compilations 111 L. Battin & Son, Inc. v. Snyder 536 F.2d 486 (2d Cir.) (en bane), cert. denied, 429 U.S. 857 (1976) OAKEs, J.:... Uncle Sam mechanical banks have been on the American scene at least since June 8, 1886, when Design Patent No. 16,728, issued on a toy savings bank of its type. The basic delightful design has long since been in the public domain. The banks are well documented in collectors' books and known to the average person interested in Americana.... Uncle Sam, dressed in his usual stove pipe hat, blue full dress coat, starred vest and red and white striped trousers, and leaning on his umbrella, stands on a four- or five-inch wide base, on which sits his carpetbag. A coin may be placed in Uncle Sam's extended hand. When a lever is pressed, the arm lowers, and the coin falls into the bag, while Uncle Sam's whiskers move up and down.... Appellant Jeffrey Snyder doing business as "J.S.N.Y." obtained a registration of copyright on a plastic "Uncle Sam bank" in Class G ("Works of Art") as "sculpture" on January 23, According to Snyder's affidavit, in January, 1974, he had seen a cast metal antique Uncle Sam bank with an overall height of the figure and base of 11 inches. In April 1974, he flew to Hong Kong to arrange for the design and eventual manufacture of replicas of the bank as Bicentennial items.... Snyder wanted his bank to be made of plastic and to be shorter than the cast metal sample "in order to fit into the required price range and quality and quantity of material to be used." The figure of Uncle Sam was thus shortened from 11 to nine inches, and the base shortened and narrowed. It was also decided, Snyder averred, to change the shape of the carpetbag and to include the umbrella in a one-piece mold for the Uncle Sam figure "so as not to have a problem with a loose umbrella or a separate molding process."... [Badin, a competing importer of novelty Uncle Sam mechanical banks, filed suit against Snyder after the U.S. Customs Service refused entry to a shipment of banks ordered by Badin from a Hong Kong trading company. Badin sought a declaration that Snyder's copyright was invalid. The district court granted Badin a preliminary injunction under the 1909 Act.] This court has examined both the appellants' plastic Uncle Sam bank made under Snyder's copyright and the uncopyrighted model cast iron mechanical bank which is itself a reproduction of the original public domain Uncle Sam bank. Appellant Snyder claims differences not only of size but also in a number of other very minute details: the carpetbag shape of the plastic bank is smooth, the iron bank rough; the metal bank bag is fatter at its base; the eagle on the front of the platform in the metal bank is holding arrows in his talons while in the plastic bank he clutches leaves, this change concededly having been made, however, because "the arrows did not reproduce well in plastic on a smaller size." The shape of Uncle Sam's face is supposedly different, as is the shape and texture of the hats, according to the Snyder affidavit. In the metal version the umbrella is hanging loose while in the plastic item it is included in the single mold. The texture of the clothing, the hairline, shape of the bow ties and of the shirt collar and left arm as well as the flag carrying the name on the base of the statue are all claimed to be different, along with the shape and texture of the

65 Requirements for Copyright Protection eagles on the side. Many of these differences are not perceptible to the casual observer. Appellants make no claim for any difference based on the plastic mold lines in the Uncle Sam figure which are perceptible... The test of originality is concededly one with a low threshold in that "[a]ll that is needed... is that the 'author' contributed something more than a 'merely trivial' variation, something recognizably 'his own.' " Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d at 103. But as this court said many years ago, "[ w ]hile a copy of something in the public domain will not, if it be merely a copy, support a copyright, a distinguishable variation will..." Gerlach-Barklow Co. v. Morris & Bendien, Inc., 23 F.2d 159, 161 (2d Cir. 1927)... A reproduction of a work of art obviously presupposes an underlying work of art... The underlying work of art may as here be in the public domain. But even to claim the more limited protection given to a reproduction of a work of art (that to the distinctive features contributed by the reproducer), the reproduction must contain "an original contribution not present in the underlying work of art" and be "more than a mere copy." 1 M. Nimmer, [The Law of Copyright (1975)], 20.2, at Nor can the requirement of originality be satisfied simply by the demonstration of"physical skill" or "special training"... required for the production of the plastic molds that furnished the basis for appellants' plastic bank. A considerably higher degree of skill is required, true artistic skill, to make the reproduction copyrightable... Here on the basis of appellants' own expert's testimony it took [Snyder's Hong Kong contractor] "[a]bout a day and a half, two days work" to produce the plastic mold sculpture from the metal Uncle Sam bank. If there be a point in the copyright law pertaining to reproductions at which sheer artistic skill and effort can act as a substitute for the requirement of substantial variation, it was not reached here. Appellants rely heavily upon Alva Studios, Inc. v. Winninger, [177 F. Supp. 265 (S.D.N.Y. 1959)], the "Hand of God" case, where the court held that "great skill and originality [were required] to produce a scale reduction of a great work with exactitude." 177 F. Supp. at 267. There, the original sculpture [Auguste Rodin's Hand of God-EDs.] was, "one of the most intricate pieces of sculpture ever created" with "[i]nnumerable planes, lines and geometric patterns... interdependent in [a] multidimensional work." Id. Originality was found primarily by the district court to consist primarily in the fact that "[ i]t takes 'an extremely skilled sculptor' many hours working directly in front of the original" to effectuate a scale reduction. Id. at 266. The court, indeed, found the exact replica to be so original, distinct, and creative as to constitute a work of art in itself The complexity and exactitude there involved distinguishes [sic] that case amply from the one at bar. As appellants themselves have pointed out, there are a number of trivial differences or deviations from the original public domain cast iron bank in their plastic reproduction. Thus concededly the plastic version is not, and was scarcely meticulously produced to be, an exactly faithful reproduction. Nor is the creativity in the underlying work of art of the same order of magnitude as in the case of the "Hand of God." Rodin's sculpture is, furthermore, so unique and rare, and adequate public access to it such a problem that a significant public benefit accrues from its precise, artistic reproduction. No such benefit can be imagined to accrue here

66 B. Two Special Cases: Derivative Works and Compilations 113 from the "knock -ofp' reproduction of the cast iron Uncle Sam bank. Thus appellants' plastic bank is neither in the category of exactitude required by Alva Studios nor in a category of substantial originality; it falls within what has been suggested by the amicus curiae is a copyright no-man's land To extend copyrightability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain work.... Uncle Sam Bank MESKILL, J., dissenting:... [T]he author's reasons for making changes should be irrelevant to a determination of whether the differences are trivial. As noted in Alfred Bell, supra, 191 F.2d at 105, even an inadvertent variation can form the basis of a valid copyright. After the fact speculation as to whether Snyder made changes for aesthetic or functional reasons should not be the basis of decision.... Granting Snyder a copyright protecting [his] variations would ensure only that no one could copy his particular version of the bank now in the public domain, i.e., protection from someone using Snyder's figurine to slavishly copy and make a mold.... This approach seems quite in accord with the purpose of the copyright statute to promote progress by encouraging individual effort through copyright protection....

67 Requirements for Copyright Protection SYKEs, J.:... Schrock v. Learning Curve International, Inc. 586 F.3d 513 (7th Cir. 2009) I. Background HIT is the owner of the copyright in the "Thomas & Friends" properties, and Learning Curve is a producer and distributor of children's toys. HIT and Learning Curve entered into a licensing agreement granting Learning Curve a license to create and market toys based on HIT's characters.... In 1999 Learning Curve retained Daniel Schrock to take product photographs ofits toys, including those based on HIT's characters, for use in promotional materials. On numerous occasions during the next four years, Schrock photographed several lines of Learning Curve's toys, including many of the "Thomas & Friends" toy trains, related figures, and train-set accessories.... Schrock invoiced Learning Curve for this work, and some of the invoices included "usage restrictions" purporting to limit Learning Curve's use of his photographs to two years. Learning Curve paid the invoices in full-in total more than $400,000. Learning Curve stopped using Schrock's photography services in mid-2003 but continued to use some of his photos in its printed advertising, on packaging, and on the internet. In 2004 Schrock registered his photos for copyright protection and sued HIT and Learning Curve for infringement;.... HIT and Learning Curve moved for summary judgment, arguing primarily that Schrock's photos were derivative works and not sufficiently original to claim copyright protection, and that neither HIT nor Learning Curve ever authorized Schrock to copyright the photos.... The district court granted summary judgment for the defendants.... [The judge concluded that the photographs were derivative works.] Then, following language in Gracen [v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983)], the judge held that Learning Curve's permission to make the photos was not enough to trigger Schrock's copyright in them; the judge said Schrock must also have Learning Curve's permission to copyright the photos. Schrock did not have that permission, so the judge concluded that Schrock had no copyright in the photos and dismissed his claim for copyright infringement. Schrock appealed. A. Photographs as Derivative Works II. Discussion... Whether photographs of a copyrighted work are derivative works is the subject of deep disagreement among courts and commentators alike. See 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 3.03[C][l], at (Aug. 2009).... We need not resolve the issue definitively here. The classification of Schrock's photos as derivative works does not affect the applicable legal standard for

68 B. Two Special Cases: Derivative Works and Compilations lis determining copyrightability, although as we have noted, it does determine the scope of copyright protection. Accordingly, we will assume without deciding that each of Schrock's photos qualifies as a derivative work within the meaning of the Copyright Act. B. Originality and Derivative Works... Our review of Schrock's photographs convinces us that they do not fall into the narrow category of photographs that can be classified as "slavish copies," lacking any independently created expression. To be sure, the photographs are accurate depictions of the three-dimensional "Thomas & Friends" toys, but Schrock's artistic and technical choices combine to create a two-dimensional image that is subtly but nonetheless sufficiently his own. 3 This is confirmed by Schrock's deposition testimony describing his creative process in depicting the toys. Schrock explained how he used various camera and lighting techniques to make the toys look more "life like," "personable," and "friendly." He explained how he tried to give the toys "a little bit of dimension" and that it was his goal to make the toys "a little bit better than what they look like when you actually see them on the shelf." The original expression in the representative sample is not particularly great (it was not meant to be), but it is enough under the applicable standard to warrant the limited copyright protection accorded derivative works under 103(b ). Aside from arguing that the works fail under the generally accepted test for originality, Learning Curve and HIT offer two additional reasons why we should conclude that Schrock's photographs are not original. First, they claim that the photos are intended to serve the "purely utilitarian function" of identifying products for consumers. The purpose of the photographs, however, is irrelevant. See Bleistein v. Donaldson Lithographing Co.) 188 U.S. 239, (1903). The defendants' second and more substantial argument is that it is not enough that Schrock's photographs might pass the ordinary test for originality; they claim that as derivative works, the photos are subject to a higher standard of originality. A leading copyright commentator disagrees. The Nimmer treatise maintains that the quantum of originality required for copyright in a derivative work is the same as that required for copyright in any other work. See 1 Nimmer on Copyright 3.01, at 3-2, 3.03[A], at 3-7. More particularly, Nimmer says the relevant standard is whether a derivative work contains a "nontrivial" variation from the preexisting work "sufficient to render the derivative work distinguishable from [the] prior work in any meaningful manner." Id. 3.03[A], at The caselaw generally follows this formulation. See) e.g.) Eden Toys) Inc. v. Florelee Undergarment Co.) 697 F.2d 27, (2d Cir. l982) (holding that numerous minor changes in an illustration of Paddington Bear were sufficiently nontrivial because they combined to give Paddington a "different, cleaner 'look'"); Millworth Converting Corp. v. Slifka) 3. We note, however, that a mere shift in medium, without more, is generally insufficient to satisfy the requirement of originality for copyright in a derivative work. Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905,910 (2d Cir.1980) (noting that circuit's rejection of"the contention that the originality requirement of copyrightability can be satisfied by the mere reproduction of a work of art in a different medium"); L. Battin &Son, Inc. v. Snyder, 536 F.2d 486, 49 1 (2d Cir.1976) (same).

69 Requirements for Copyright Protection 276 F.2d 443, 445 (2d Cir.1960) (holding that embroidered reproduction of a public-domain embroidery of Peter Pan was sufficiently distinguishable because the latter gave a "three-dimensional look" to the former embroidery). Learning Curve and HIT argue that our decision in Gracen established a more demanding standard of originality for derivative works. Gracen involved an artistic competition in which artists were invited to submit paintings of the character Dorothy from the Metro-Goldwyn-Mayer ("MGM") movie Tbe Wizard of Oz. Participating artists were given a still photograph of Dorothy from the film as an exemplar, and the paintings were solicited and submitted with the understanding that the best painting would be chosen for a series of collector's plates. Gracen) 698 F.2d at 30 l. Plaintiff Gracen prevailed in the competition, but she refused to sign the contract allowing her painting to be used in the collector's plates. The competition sponsor commissioned another artist to create a similar plate, and Gracen sued the sponsor, MGM, and the artist for copyright infringement. We held that Gracen could not maintain her infringement suit because her painting, a derivative work, was not "substantially different from the underlying work to be copyrightable." Id. at 305. Gracen drew this language from an influential Second Circuit decision, L. Battin & Son) Inc. v. Snyder) 536 F.2d 486 (2d Cir.1976). Read in context, however, the cited language from L. Batlin did not suggest that a heightened standard of originality applies to derivative works. 4 To the contrary, the Second Circuit said only that to be copyrightable a work must '"contain some substantial, not merely trivial originality."' Id. at 490 (quoting Chamberlin v. Uris Sales Corp.) 150 F.2d 512, 513 (2d Cir.1945) ). The court explained that for derivative works, as for any other work, "[ t ]he test of originality is concededly one with a low threshold in that all that is needed is that the author contributed something more than a merely trivial variation, something recognizably his own." Id. (internal quotation marks and ellipsis omitted). The concern expressed in Gracen was that a derivative work could be so similar in appearance to the underlying work that in a subsequent infringement suit brought by a derivative author, it would be difficult to separate the original elements of expression in the derivative and underlying works in order to determine whether one derivative work infringed another. The opinion offered the example of artists A and B who both painted their versions of the Mona Lisa, a painting in the public domain. See Gracen) 698 F.2d at 304. "[I]fthe difference between the original and A's reproduction is slight, the difference between A's and B 's reproductions will also be slight, so that if B had access to A's reproductions the trier of fact will be hardpressed to decide whether B was copying A or copying the Mona Lisa itself." Id. No doubt this concern is valid. But nothing in the Copyright Act suggests that derivative works are subject to a more exacting originality requirement than other 4. To the extent that Gracen's reading of L. Batlin and its "substantial difference" language can be understood as establishing a more demanding standard of originality for derivative works, it has received mixed reviews. Some commentators have suggested that Gracen may have inappropriately narrowed the copyrightability of derivative w rks without a statutory basis.... The Third Circuit has agreed and explicitly rejected Gracen's interpretation of L. Batlin. Dam Things from Denmark v. Russ Berrie & Co., 290 F.3d 548, 564 (3d Cir.2002).

70 B. Two Special Cases: Derivative Works and Compilations 117 works of authorship. Indeed, we have explained since Gracen that "the only 'originality' required for [a] new work to [be] copyrightable... is enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguished from its predecessors." Bucklew [ v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 929 (7th Cir. 2003)]. We emphasized in Bucklew that this standard does not require a "high degree of [incremental] originality." Id. We think Gracen must be read in light of L. Batlin, on which it relied, and Bucklew, which followed it. And doing so reveals the following general principles: ( 1) the originality requirement for derivative works is not more demanding than the originality requirement for other works; and (2) the key inquiry is whether there is sufficient nontrivial expressive variation in the derivative work to make it distinguishable from the underlying work in some meaningful way. This focus on the presence of nontrivial "distinguishable variation" adequately captures the concerns articulated in Gracen without unduly narrowing the copyrightability of derivative works. It is worth repeating that the copyright in a derivative work is thin, extending only to the incremental original expression contributed by the author of the derivative work. See 17 U.S.C. 103(b). As applied to photographs, we have already explained that the original expression in a photograph generally subsists in its rendition of the subject matter. If the photographer's rendition of a copyrighted work varies enough from the underlying work to enable the photograph to be distinguished from the underlying work (aside from the obvious shift from three dimensions to two, see supra n.3 ), then the photograph contains sufficient incremental originality to qualify for copyright. Schrock's photos of the "Thomas & Friends" toys are highly accurate product photos but contain minimally sufficient variation in angle, perspective, lighting, and dimension to be distinguishable from the underlying works; they are not "slavish copies." Accordingly, the photos qualify for the limited derivative-work copyright provided by 103(b ).... C. Authorization and Derivative Works To be copyrightable, a derivative work must not be infringing. See 17 U.S.C. 103(a). The owner of the copyright in the underlying work has the exclusive right to "prepare derivative works based upon the copyrighted work," 17 U.S.C. 106(2), and "it is a copyright infringement to make or sell a derivative work without a license from the owner of the copyright on the work from which the derivative work is derived," Bucklew, 329 F.3d at 930. This means the author of a derivative work must have permission to make the work from the owner of the copyright in the underlying work; Gracen suggested, however, that the author of a derivative work must also have permission to copyright it. 698 F.2d at ("[T]he question is not whether Miss Gracen was licensed to make a derivative work but whether she was also licensed to exhibit [her] painting and to copyright it.... Even if [ Gracen] was authorized to exhibit her derivative works, she may not have been authorized to copyright them."). The district court relied on this language from Gracen to conclude that Schrock has no copyright in his photos because he was not authorized by Learning Curve to copyright them. This was error.

71 Requirements for Copyright Protection... Gracen's language presupposing a permission-to-copyright requirement was dicta; the case was actually decided on nonoriginality grounds. Id. at 305. More importantly, the dicta was mistaken; there is nothing in the Copyright Act requiring the author of a derivative work to obtain permission to copyright his work from the owner of the copyright in the underlying work. To the contrary, the Act provides that copyright in a derivative work, like copyright in any other work, arises by operation of law once the author's original expression is fixed in a tangible medium [B ]ecause the owner of a copyrighted work has the exclusive right to control the preparation of derivative works, the owner could limit the derivative-work author's intellectual-property rights in the contract, license, or agreement that authorized the production of the derivative work.... In this case, the evidence submitted with the summary-judgment motion does not establish [whether] the parties adjusted Schrock's rights by contract... Accordingly, for all the foregoing reasons, we REVERSE the judgment of the district court and REMAND for further proceedings consistent with this opinion. [Images reproduced from the court's opinion.] Cirded Photo by OI!II'I.SOI'Iro!lk Pnotngraf'Jhy Ret!Cue H itel 2002