Copyright Fundamentals Copyrightability Victor H. Bouganim WCL, American University

Victor H. Bouganim, WCL, American University, Spring 2001 Copyrigtability Requirements F Original Works of Authorship F Fixation in a Tangible Medium of Expression F Formalities –Notice –Publication –Registration –Deposit

Victor H. Bouganim, WCL, American University, Spring 2001 Fixation in a Tangible Medium of Expression F “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.” [Copyright Act, Section 101]

Victor H. Bouganim, WCL, American University, Spring 2001 Original Works of Authorship F “The phrase ‘original works of authorship,’ which is purposively left undefined, is intended to incorporate without change the standard of originality established by the courts under the present copyright statute. This standard does not include requirements of novelty, ingenuity, or esthetic merit, and there is no intention to enlarge the standard of copyright protection to require them…” H.R. Rep. No (1976)

Victor H. Bouganim, WCL, American University, Spring 2001 Feist Publications v. Rural Telephone Service Supreme Court (1991) F The Court found that Rural’s copyright in its listings did not protect the names and numbers copied by Feist F Protection of a factual compilation extends only to its original arrangement or selection F A work must possess at least some minimal degree of creativity F The Court discarded the “sweat of the brow” doctrine as the standard for copyrightability

Victor H. Bouganim, WCL, American University, Spring 2001 Class Discussion F Does Feist provide any guidelines for determining the precise threshold of originality? F What is the meaning of creativity in the copyright context? Is it distinctive from the demonstration of skill and labor in creating works? F Do sweat of the brow works merit protection?

Victor H. Bouganim, WCL, American University, Spring 2001 Limitations on Copyrightability F Government Works F The Idea-Expression Dichotomy F The Useful Article Doctrine

Victor H. Bouganim, WCL, American University, Spring 2001 Government Works F Copyright protection is not available “for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.” Section 105. F A work of the United States Government is “a work prepared by an officer or employee of the United States Government as part of that person’s official duties.” Section 101.

Victor H. Bouganim, WCL, American University, Spring 2001 Scope of Copyright Protection F Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such. [TRIPS, Article 9.2] F Copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such. [WCP, Article 2]

Victor H. Bouganim, WCL, American University, Spring 2001 Copyright Scope - USA Copyright Act, § 102 (b) F 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.

Victor H. Bouganim, WCL, American University, Spring 2001 The Idea-Expression Dichotomy 17 U.S.C. Section 102(b) F Copyright protection for an original work of authorship does not extend to: –ideas –procedures –processes –systems –methods of operation –concepts –principles –discoveries F Regardless of the form in which, in the original work, it is: –described –explained –illustrated –embodied

Victor H. Bouganim, WCL, American University, Spring 2001 Baker v. Selden Supreme Court (1879) F Functional works sometimes integrate idea and expression, and protection would conflict with objective of protecting only original expression. F Protection of a functional work will be limited to avoid granting a monopoly over utilitarian aspects of the work. F The Court determined that the ledger at issue was utilitarian rather than expressive. F If use of an idea requires copying the work itself, such copying is not infringement.

Victor H. Bouganim, WCL, American University, Spring 2001 No copyright protection for blank forms, such as: F time cards F graph paper F account books F diaries F bank checks F scorecards F address books F report forms F order forms Consequences of Baker v Selden What are the implications for computer programs?

Victor H. Bouganim, WCL, American University, Spring 2001 Class Discussion F Under the holding of this case, what protection is there for Selden? F At what point does the taking of elements of a work constitute copyright infringement? Where should the line be drawn between idea and expression? F What does this case suggest regarding the relationship between patent and copyright protection?

Victor H. Bouganim, WCL, American University, Spring 2001 Morrissey v. Proctor & Gamble First Circuit (1967) F Morrissey was the copyright owner of a set of promotional sweepstakes rules and alleged that P&G copied one of the rules verbatim. F The court sustained summary judgment for P&G, holding that the number of ways available to express the idea of a sweepstakes rule was limited. F The sweepstakes rule was unprotectible because the idea and expression had merged, not because the rule lacked sufficient originality. F This view is encompassed by the Merger Doctrine, an extension of the rationale behind Baker v. Selden.

Victor H. Bouganim, WCL, American University, Spring 2001 Merger Doctrine F When there is only one or a limited number of ways to express an idea, courts will generally find that the idea behind the work merges with its expression and therefore, that resulting expression is not copyrightable.

Victor H. Bouganim, WCL, American University, Spring 2001 Class Discussion F Are there, in fact, alternative ways to express the contest rule in this case? F Is there really any idea, system, or method that cannot be expressed in a variety of ways? F What is the justification for the Merger Doctrine? Is the Merger Doctrine consistent with the incentive basis for copyright protection?

Victor H. Bouganim, WCL, American University, Spring 2001 The Useful Article Doctrine 17 U.S.C. Section 101 F Copyright protection available for pictorial, graphic, and sculptural works, which include “works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned.” F A “useful article” is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” F If a pictorial work is a useful article, then certain limitations on copyrightability apply [Sec. 113], but may be protected as an original design under Chapter 13.

Victor H. Bouganim, WCL, American University, Spring 2001 Brandir Int’l Co. v. Cascade Pacific Second Circuit (1987) F The court assessed the copyrightability of a design for a bicycle rack made of metal tubing in serpantine form. F The majority adapted a test for “ conceptual separability ” [Based on Prof Denicola article] –“If design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian aspects. Conversely, where the design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.”

Victor H. Bouganim, WCL, American University, Spring 2001 Brandir Case Bicycle

Victor H. Bouganim, WCL, American University, Spring 2001 Class Discussion F Which of the opinions (majority/dissent) in the Brandir Case is more convincing? F Is there any way to decide a separability question without involving the courts in artistic value judgments? F Are there alternative tests for conceptual separability, which can produce better predictable results and promote innovation?