In decisions issued two days apart, the U.S. Court of Appeal for the Seventh and Ninth Circuits expressed divergent views on the scope of copyright protection for collections of standard or generic elements. Following a recent case of its own, the Ninth Circuit affirmed that such works are entitled to only "thin" protection. In an analogous case, the Seventh Circuit articulated a broader scope of protection, holding that copyright protection lies even where minimal original elements are added to standard elements.
In Bucklew v. Hawkins, Ash, Baptie, & Co., Case Nos. 02-2244, 02-2299, 2003 U.S. App. LEXIS 10485 (7th Cir. May 27, 2003), Bucklew charged two affiliated companies (HAB) with infringing his copyright in software designed for use with standard spreadsheet applications for generating tables for use with forms required by the U.S. Department of Housing and Urban Development (HUD). Bucklew did not claim a copyright over the spreadsheet per se, but claimed protection for such elements as choice and size of font, the size of cells and columns, use of color in particular places, the wording of labels and headings (other than those prescribed by HUD) and the use of boldface or italics for column headings.
At trial, the jury heard evidence that HAB's form included numerous apparently arbitrary details also found in Bucklew's form, including information that had no function. Moreover, as circumstantial evidence of copying, Bucklew presented evidence that the font HAB used was the same as that used on Bucklew's and was not a font available on the Windows operating system that HAB had used to develop its software. The jury returned a verdict for Bucklew. HAB appealed.
HAB argued that Bucklew's work represented a merger of idea and expression and was, therefore, entitled to no copyright protection. Declining to apply the merger doctrine on these facts, the court held that whether Bucklew's choices were highly original was irrelevant; copyright protection required only enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguishable from its predecessors. According to the Seventh Circuit, to require more would be burdensome to enforce and would involve judges in making aesthetic judgments, which few judges are competent to make. The court went on to state that when similarities between a copyrighted work and a work alleged to infringe it concern details of such an arbitrary character, the probability that the infringer had duplicated them independently is remote, and an inference of copying may be drawn without any additional evidence. The court also held that the scenes a faire doctrine did not apply because the format choices made by Bucklew were not generic. The court was unmoved by the fact that HAB had introduced a number of variations to the template copied from Bucklew. The court reasoned that this simply made the work derivative, not non-infringing.
In Rice v. Fox Broadcasting Co., Case Nos. 01-56582, 01-56846, 2003 U.S. App. LEXIS 10668 (9th Cir. May 29, 2003), Rice sued to protect his copyright in a home video entitled "The Mystery Magician." Several years after the video was released, Fox developed a series of television specials about magic that, like Rice's video, revealed the secrets behind famous magic illusions.
Affirming the district court's entry of judgment against Rice, the Ninth Circuit discussed two elements required to establish infringement: ownership of a valid copyright and copying of constituent elements of the work that are original. The latter element may be established by showing that the works in question are substantially similar in their protected elements and that the infringing party had access to the copyrighted work.
In determining whether the works are substantially similar, the Ninth Circuit applies both an extrinsic and an intrinsic test. In applying the extrinsic test, the court must distinguish between the protectable and unprotectable material because a party claiming infringement may not rely upon any similarity in expression resulting from unprotectable elements.
Specifically, the court noted that under copyright principles, ideas are not protectable, only the expression is protectable. Similarly the scenes a faire doctrine holds that expressions indispensable and naturally associated with the treatment of a given idea are treated like ideas and, therefore, not protected. Thus, the mere fact that both The Mystery Magician and the Fox Specials reveal the secrets behind magic tricks does not, by itself, give rise to infringement. Rather, infringement could be found only if Fox copied the presentation and stylistic elements of The Mystery Magician.
The Ninth Circuit held that, under the doctrines of merger and scenes a faire, the mere fact that both works feature a masked magician revealing magic tricks did not constitute infringement. Likewise, the court found that the dialogue, plot sequence and magic tricks themselves were either subject to the limiting doctrines of merger and scenes a faire or were quite different. Finally, the court found that the overall mood and secrecy were generic, which constitute scenes a faire that merge with the idea of revealing magic tricks.
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