APPEAL from the Circuit Court of the United States for the Southern District of Ohio.

The facts are stated in the opinion of the court.

Mr. Alphonso Taft and Mr. H. P. Lloyd for the appellant.

Mr. C. W. Moulton and Mr. M. I. Southard for the appellee.

MR. JUSTICE BRADLEY delivered the opinion of the court.

Charles Selden, the testator of the complainant in this case, in the year 1859 took the requisite steps for obtaining the copyright [100] 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 parties went into proofs, and the various books of the complainant, as well as those sold and used by the defendant, were exhibited before the examiner, and witnesses were examined on both sides. A decree was rendered for the complainant, and the defendant appealed.

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 banks, 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 [101] 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 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 of book-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.

It cannot be pretended, and indeed it is not seriously urged, that the ruled lines of the complainant's account-book can be claimed under any special class of objects, other than books, named in the law of copyright existing in 1859. The law then in force was that of 1831, and specified only books, maps, charts, musical compositions, prints, and engravings. An account-book, consisting of ruled lines and blank columns, cannot be called by any of these names unless by that of a book.

There is no doubt that a work on the subject of book-keeping, [102] 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 subject-matter. 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 of letters-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 difference between the two things, letters-patent and copyright, may be illustrated by reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to the [103] public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a new art, manufacture, or composition of matter. He may copyright his book, if he pleases; but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries.

The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no exclusive right to the modes of drawing described, though they may never have been known or used before. By publishing the book, without getting a patent for the art, the latter is given to the public. The fact that the art described in the book by illustrations of lines and figures which are reproduced in practice in the application of the art, makes no difference. Those illustrations are the mere language employed by the author to convey his ideas more clearly. Had he used words of description instead of diagrams (which merely stand in the place of words), there could not be the slightest doubt that others, applying the art to practical use, might lawfully draw the lines and diagrams which were in the author's mind, and which he thus described by words in his book.

The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever occasion requires. 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 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, [104] 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 [105] 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.

The remarks of Mr. Justice Thompson in the Circuit Court in Clayton v. Stone & Hall (2 Paine, 392), in which copyright was claimed in a daily price-current, are apposite and instructive. He says: 'In determining the true construction to be given to the act of Congress, it is proper to look at the Constitution of the United States, to aid us in ascertaining the nature of the property intended to be protected. 'Congress shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their writings and discoveries.' The act in question was passed in execution of the power here given, and the object, therefore, was the promotion of science; and it would certainly be a pretty extraordinary view of the sciences to consider a daily or weekly publication of the state of the market as falling within any class of them. They are of a more fixed, permanent, and durable character. The term 'science' cannot, with any propriety, by applied to a work of so fluctuating and fugitive a form as that of a newspaper or price-current, the subject-matter of which is daily changing, and is of mere temporary use. Although great praise may be due to the plaintiffs for their industry and enterprise in publishing this paper, yet the law does not contemplate their being rewarded in this way: it must seek patronage and protection from its utility to the public, and not a work of science. The title of the act of Congress is, 'for the encouragement of learning,' and was not intended for the encouragement of mere industry, unconnected with learning and the sciences. . . . We are, accordingly, of opinion that the paper in question is not [106] a book the copyright to which can be secured under the act of Congress.'

The case of Cobbett v. Woodward (Law Rep. 14 Eq. 407) was a claim to copyright in a catalogue of furniture which the publisher had on sale in his establishment, illustrated with many drawings of furniture and decorations. The defendants, being dealers in the same business, published a similar book, and copied many of the plaintiff's drawings, though it was shown that they had for sale the articles represented thereby.

The court held that these drawings were not subjects of copyright. Lord Romilly, M. R., said: 'This is a mere advertisement for the sale of particular articles which any one might imitate, and any one might advertise for sale. If a man not being a vendor of any of the articles in question were to publish a work for the purpose of informing the public of what was the most convenient species of articles for household furniture, or the most graceful species of decorations for articles of home furniture, what they ought to cost, and where they might be bought, and were to illustrate his work with designs of each article he described,—such a work as this could not be pirated with impunity, and the attempt to do so would be stopped by the injunction of the Court of Chancery; yet if it were done with no such object, but solely for the purpose of advertising particular articles for sale, and promoting the private trade of the publisher by the sale of articles which any other person might sell as well as the first advertiser, and if in fact it contained little more than an illustrated inventory of the contents of a warehouse, I know of no law which, while it would not prevent the second advertiser from selling the same articles, would prevent him from using the same advertisement; provided he did not in such advertisement by any device suggest that he was selling the works and designs of the first advertiser.'

Another case, that of Page v. Wisden (20 L. T. N. S. 435), which came before Vice-Chancellor Malins in 1869, has some resemblance to the present. There a copyright was claimed in a cricket scoring-shett, and the Vice-Chancellor held that it was not a fit subject for copyright, partly because it was not new, but also because 'to say that a particular [107] mode of ruling a book constituted an object for a copyright is absurd.'

These cases, if not precisely in point, come near to the matter in hand, and, in our view, corroborate the general proposition which we have laid down.

In Drury v. Ewing (1 Bond, 540), which is much relied on by the complainant, a copyright was claimed in a chart of patterns for cutting dresses and basques for ladies, and coats, jackets, &c., for boys. It is obvious that such designs could only be printed and published for information, and not for use in themselves. Their practical use could only be exemplified in cloth on the tailor's board and under his shears; in other words, by the application of a mechanical operation to the cutting of cloth in certain patterns and forms. Surely the exclusive right to this practical use was not reserved to the publisher by his copyright of the chart. Without undertaking to say whether we should or should not concur in the decision in that case, we think it cannot control the present.

The conclusion to which we have come is, that blank account-books are not the subject of copyright; and that the mere copyright of Selden's book did not confer upon him the exclusive right to make and use account-books, ruled and arranged as designated by him and described and illustrated in said book.

The decree of the Circuit Court must be reversed, and the cause remanded with instructions to dismiss the complainant's bill; and it is

So ordered

O'Brien, Malevinsky & Driscoll, of New York City (Isaac R. Oeland and M. L. Malevinsky, both of New York City, of counsel), for appellant.

Siegfried F. Hartman, of New York City (Nathan L. Miller and Siegfried F. Hartman, both of New York City, of counsel), for appellees.

[120] Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

L. HAND, Circuit Judge.

The plaintiff is the author of a play, "Abie's Irish Rose," which it may be assumed was properly copyrighted under section five, subdivision (d), of the Copyright Act, 17 USCA § 5(d). The defendant produced publicly a motion picture play, "The Cohens and The Kellys," which the plaintiff alleges was taken from it. As we think the defendant's play too unlike the plaintiff's to be an infringement, we may assume, arguendo, that in some details the defendant used the plaintiff's play, as will subsequently appear, though we do not so decide. It therefore becomes necessary to give an outline of the two plays.

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

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

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

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

On his return the Jew finds that his daughter has borne a child; at first he suspects the lawyer, but eventually learns the truth and is overcome with anger at such a low alliance. Meanwhile, the Irish family who have been forbidden to see the grandchild, go to the Jew's house, and after a violent scene between the two fathers in which the Jew disowns his daughter, who decides to go back with her husband, the Irishman takes her back with her baby to his own poor lodgings. [121] The lawyer, who had hoped to marry the Jew's daughter, seeing his plan foiled, tells the Jew that his fortune really belongs to the Irishman, who was also related to the dead woman, but offers to conceal his knowledge, if the Jew will share the loot. This the Jew repudiates, and, leaving the astonished lawyer, walks through the rain to his enemy's house to surrender the property. He arrives in great dejection, tells the truth, and abjectly turns to leave. A reconciliation ensues, the Irishman agreeing to share with him equally. The Jew shows some interest in his grandchild, though this is at most a minor motive in the reconciliation, and the curtain falls while the two are in their cups, the Jew insisting that in the firm name for the business, which they are to carry on jointly, his name shall stand first.

It is of course essential to any protection of literary property, whether at common-law or under the statute, that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations. That has never been the law, but, as soon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that, as was recently well said by a distinguished judge, the decisions cannot help much in a new case. Fendler v. Morosco, 253 N. Y. 281, 292, 171 N. E. 56. When plays are concerned, the plagiarist may excise a separate scene [Daly v. Webster, 56 F. 483 (C. C. A. 2); Chappell v. Fields, 210 F. 864 (C. C. A. 2); Chatterton v. Cave, L. R. 3 App. Cas. 483]; or he may appropriate part of the dialogue (Warne v. Seebohm, L. R. 39 Ch. D. 73). Then the question is whether the part so taken is "substantial," and therefore not a "fair use" of the copyrighted work; it is the same question as arises in the case of any other copyrighted work. Marks v. Feist, 290 F. 959 (C. C. A. 2); Emerson v. Davies, Fed. Cas. No. 4436, 3 Story, 768, 795-797. But when the plagiarist does not take out a block in situ, but an abstract of the whole, decision is more troublesome. Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his "ideas," to which, apart from their expression, his property is never extended. Holmes v. Hurst, 174 U. S. 82, 86, 19 S. Ct. 606, 43 L. Ed. 904; Guthrie v. Curlett, 36 F.(2d) 694 (C. C. A. 2). Nobody has ever been able to fix that boundary, and nobody ever can. In some cases the question has been treated as though it were analogous to lifting a portion out of the copyrighted work (Rees v. Melville, MacGillivray's Copyright Cases [1911-1916], 168); but the analogy is not a good one, because, though the skeleton is a part of the body, it pervades and supports the whole. In such cases we are rather concerned with the line between expression and what is expressed. As respects plays, the controversy chiefly centers upon the characters and sequence of incident, these being the substance.

We did not in Dymow v. Bolton, 11 F. (2d) 690, hold that a plagiarist was never liable for stealing a plot; that would have been flatly against our rulings in Dam v. Kirk La Shelle Co., 175 F. 902, 41 L. R. A. (N. S.) 1002, 20 Ann. Cas. 1173, and Stodart v. Mutual Film Co., 249 F. 513, affirming my decision in (D. C.) 249 F. 507; neither of which we meant to overrule. We found the plot of the second play was too different to infringe, because the most detailed pattern, common to both, eliminated so much from each that its content went into the public domain; and for this reason we said, "this mere subsection of a plot was not susceptible of copyright." But we do not doubt that two plays may correspond in plot closely enough for infringement. How far that correspondence must go is another matter. Nor need we hold that the same may not be true as to the characters, quite independently of the "plot" proper, though, as far as we know, such a case has never arisen. If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare's "ideas" in the play, as little capable of monopoly as Einstein's Doctrine of Relativity, or Darwin's theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.

In the two plays at bar we think both as to incident and character, the defendant took no more — assuming that it took anything at all — than the law allowed. The stories are quite different. One is of a religious zealot [122] who insists upon his child's marrying no one outside his faith; opposed by another who is in this respect just like him, and is his foil. Their difference in race is merely an obbligato to the main theme, religion. They sink their differences through grandparental pride and affection. In the other, zealotry is wholly absent; religion does not even appear. It is true that the parents are hostile to each other in part because they differ in race; but the marriage of their son to a Jew does not apparently offend the Irish family at all, and it exacerbates the existing animosity of the Jew, principally because he has become rich, when he learns it. They are reconciled through the honesty of the Jew and the generosity of the Irishman; the grandchild has nothing whatever to do with it. The only matter common to the two is a quarrel between a Jewish and an Irish father, the marriage of their children, the birth of grandchildren and a reconciliation.

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

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

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

The defendant argues that the case is controlled by my decision in Fisher v. Dillingham (D. C.) 298 F. 145. Neither my brothers nor I wish to throw doubt upon the doctrine of that case, but it is not applicable here. We assume that the plaintiff's play is altogether original, even to an extent that in fact it is hard to believe. We assume further that, so far as it has been anticipated by earlier plays of which she knew nothing, that fact is immaterial. Still, as we have already said, her copyright did not cover everything that might be drawn from her play; its content went to some extent into the public domain. We have to decide how much, and while we are as aware as any one that the line, whereever it is drawn, will seem arbitrary, that is no excuse for not drawing it; it is a question such as courts must answer in nearly all cases. Whatever may be the difficulties a priori, we have no question on which side of the line this case falls. A comedy based upon conflicts between Irish and Jews, into which the marriage of their children enters, is no more susceptible of copyright than the outline of Romeo and Juliet.

The plaintiff has prepared an elaborate analysis of the two plays, showing a "quadrangle" of the common characters, in which each is represented by the emotions which he discovers. She presents the resulting parallelism as proof of infringement, but the adjectives employed are so general as to be quite useless. Take for example the attribute of "love" ascribed to both Jews. The plaintiff has depicted her father as deeply attached [123] to his son, who is his hope and joy; not so, the defendant, whose father's conduct is throughout not actuated by any affection for his daughter, and who is merely once overcome for the moment by her distress when he has violently dismissed her lover. "Anger" covers emotions aroused by quite different occasions in each case; so do "anxiety," "despondency" and "disgust." It is unnecessary to go through the catalogue for emotions are too much colored by their causes to be a test when used so broadly. This is not the proper approach to a solution; it must be more ingenuous, more like that of a spectator, who would rely upon the complex of his impressions of each character.

We cannot approve the length of the record, which was due chiefly to the use of expert witnesses. Argument is argument whether in the box or at the bar, and its proper place is the last. The testimony of an expert upon such issues, especially his cross-examination, greatly extends the trial and contributes nothing which cannot be better heard after the evidence is all submitted. It ought not to be allowed at all; and while its admission is not a ground for reversal, it cumbers the case and tends to confusion, for the more the court is led into the intricacies of dramatic craftsmanship, the less likely it is to stand upon the firmer, if more naïve, ground of its considered impressions upon its own perusal. We hope that in this class of cases such evidence may in the future be entirely excluded, and the case confined to the actual issues; that is, whether the copyrighted work was original, and whether the defendant copied it, so far as the supposed infringement is identical.

The defendant, "the prevailing party," was entitled to a reasonable attorney's fee (section 40 of the Copyright Act [17 USCA § 40]).

Decree affirmed.

[618 F.2d 974] James C. Eastman, Washington, D. C., for plaintiff-appellant.

Coudert Bros., New York City (Eugene L. Girden, New York City, of counsel), for defendant-appellee Universal City Studios, Inc.

Peter A. Flynn, and Myron M. Cherry, Chicago, Ill. (Cherry, Flynn & Kanter, Chicago, Ill., Hervey M. Johnson, White Plains, N. Y.), and James J. McEnroe, New York City (Watson, Leavenworth, Kelton & Taggert, New York City), for defendant-appellee Michael M. Mooney.

Before KAUFMAN, Chief Judge, TIMBERS, Circuit Judge, and WERKER, District Judge.^[*]

IRVING R. KAUFMAN, Chief Judge:

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 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, 1937. Thirty-six passengers and [618 F.2d 975] 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 destruction of the Hindenburg marked the concluding chapter in the chronicle of airship passenger service, for after the tragedy at Lakehurst, the Nazi regime permanently grounded the Graf Zeppelin I and discontinued its plan to construct an even larger dirigible, the Graf Zeppelin II.

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 full-length book based on his exhaustive research in 1962. 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.

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 of hydrogen, 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. [618 F.2d 976] 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-as-saboteur" 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.^[2] 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 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 [618 F.2d 977] by New York City police, and an advertising executive rushing to close a business deal in America.

Upon learning of Universal's plans to release the film, Hoehling instituted this action against Universal for copyright infringement and common law unfair competition in the district court for the District of Columbia in October 1975. Judge Smith declined to issue an order restraining release of the film in December, and it was distributed throughout the nation.

In January 1976, Hoehling sought to amend his complaint to include Mooney as a defendant. The district court, however, decided that it lacked personal jurisdiction over Mooney.^[3] In June 1976, Hoehling again attempted to amend his complaint, this time to add Mooney's publishers as defendants. Judge Smith denied this motion as well, but granted Hoehling's request to transfer the litigation to the Southern District of New York, 28 U.S.C. § 1404(a), where Mooney himself was successfully included as a party. Judge Metzner, with the assistance of Magistrate Sinclair, supervised extensive discovery through most of 1978. After the completion of discovery, both Mooney and Universal moved for summary judgment, Fed.R.Civ.P. 56, which was granted on August 1, 1979.

II.

It is undisputed that Hoehling has a valid copyright in his book. To prove infringement, however, he must demonstrate that defendants "copied" his work and that they "improperly appropriated" his "expression." See Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Ordinarily, wrongful appropriation is shown by proving a "substantial similarity" of copyrightable expression. See Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931). Because substantial similarity is customarily an extremely close question of fact, see Arnstein, supra, 154 F.2d at 468, summary judgment has traditionally been frowned upon in copyright litigation, id. at 474. Nevertheless, while Arnstein 's influence in other areas of the law has been diminished, see SEC v. Research Automation Corp., 585 F.2d 31 (2d Cir. 1978); 6 Moore's Federal Practice P 56.17(14) (2d ed. 1976), a series of copyright cases in the Southern District of New York have granted defendants summary judgment when all alleged similarity related to non -copyrightable elements of the plaintiff's work, see, e. g., Alexander v. Haley, 460 F.Supp. 40 (S.D.N.Y.1978); Musto v. Meyer, 434 F.Supp. 32 (S.D.N.Y.1977); Gardner v. Nizer, 391 F.Supp. 940 (S.D.N.Y.1975); Fuld v. National Broadcasting Co., 390 F.Supp. 877 (S.D.N.Y.1975). These cases signal an important development in the law of copyright, permitting courts to put "a swift end to meritless litigation" and to avoid lengthy and costly trials. Quinn v. Syracuse Model Neighborhood Corp., 613 F.2d 438, 445 (2d Cir. 1980); accord, Donnelly v. Guion, 467 F.2d 290, 293 (2d Cir. 1972); American Manufacturers Mutual Insurance Co. v. American Broadcasting-Paramount Theatres, Inc., 388 F.2d 272, 278 (2d Cir. 1967). Drawing on these cases, Judge Metzner assumed both copying and substantial similarity, but concluded that all similarities pertained to various categories of non-copyrightable material. Accordingly, he granted appellees' motion for summary judgment. We affirm the judgment of the district court.

A

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 4. In their briefs, and at oral argument, appellees have labored to convince us that their plots are not substantially similar to Hoehling's. While Hoehling's Spehl destroys the airship to please his communist girlfriend, Mooney's character is motivated by an aversion to the technological age. Universal's [618 F.2d 978] Boerth, on the other hand, is a fervent anti-fascist who enlists the support of a Luftwaffe colonel who, in turn, unsuccessfully attempts to defuse the bomb at the eleventh hour.

Although this argument has potential merit when presented to a fact finder adjudicating the issue of substantial similarity, it is largely irrelevant to a motion for summary judgment where the issue of substantial similarity has been eliminated by the judge's affirmative assumption. Under Rule 56(c), summary judgment is appropriate only when "there is no genuine issue as to any material fact." Accord, Heyman v. Commerce & Industry Insurance Co., 524 F.2d 1317 (2d Cir. 1975). Perhaps recognizing this, appellees further argue that Hoehling's plot is an "idea," and ideas are not copyrightable as a matter of law. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir.), cert. denied, 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392 (1936).

Hoehling, however, correctly rejoins that while ideas themselves are not subject to copyright, his "expression" of his idea is copyrightable. Id. at 54. He relies on Learned Hand's opinion in Sheldon, supra, at 50, holding that Letty Lynton infringed Dishonored Lady by copying its story of a woman who poisons her lover, and Augustus Hand's analysis in Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940), concluding that the exploits of "Wonderman" infringed the copyright held by the creators of "Superman," the original indestructible man. Moreover, Hoehling asserts that, in both these cases, the line between "ideas" and "expression" is drawn, in the first instance, by the fact finder.

Sheldon and Detective Comics, however, dealt with works of fiction,^[4] where the distinction between an idea and its expression is especially elusive. 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 of law. In Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967), 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, 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 [618 F.2d 979] 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 himself of the 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 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 faire, 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, supra, 460 F.Supp. at 45; 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 a 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, 97 S.Ct. 492, 50 L.Ed.2d 588 (1976).

D

All of Hoehling's allegations of copying, therefore, encompass material that is non-copyrightable as a matter of law, rendering summary judgment entirely appropriate. We are aware, however, that in distinguishing between themes, facts, and scenes a faire 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 non-copyrightable elements, a court runs the [618 F.2d 980] 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 Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91 (2d Cir. 1977), cert. denied, 434 U.S. 1014, 98 S.Ct. 730 (1978). 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 laws the 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. E. C. Publications, Inc., 329 F.2d 541, 543-44 (2d Cir.), cert. denied, 379 U.S. 822, 85 S.Ct. 46, 13 L.Ed.2d 33 (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.^[7]

III

Finally, we affirm Judge Metzner's rejection of Hoehling's claims based on the common law of "unfair competition." Where, as here, historical facts, themes, and research have been deliberately exempted from the scope of copyright protection to vindicate the overriding goal of encouraging contributions to recorded knowledge, the states are pre-empted from removing such material from the public domain. See, e. g., Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 83 S.Ct. 1868, 10 L.Ed.2d 1050 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964). "To forbid copying" in this case, "would interfere with the federal policy . . . of allowing free access to copy whatever the federal patent and copyright laws leave in the public domain." Id. at 237, 84 S.Ct. at 782.

The judgment of the district court is affirmed.

---------------

[*] Of the United States District Court for the Southern District of New York, sitting by designation.

[1] 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.

[2] Mooney, his publishers, and Universal entered into an agreement under which (1) Universal acquired the film rights to Mooney's book, (2) Universal agreed to promote sales of the book, and (3) Mooney would receive a percentage fee, tied to sales of his book. Hoehling claims that because of this arrangement, Universal is vicariously liable if Mooney's book, but not the motion picture, is held to infringe his copyright. In view of our disposition of the appeal, however, we need not address this issue.

[3] At the same time, Judge Smith denied Universal's motion for summary judgment, concluding it was inappropriate prior to the completion of requested discovery.

[4] In Sheldon, both works were loosely based on an actual murder committed by a young Scottish girl. Judge Hand, however, clearly dealt only with the fictional plots conceived by the respective authors. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir.), cert. denied, 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392 (1936).

[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 § 2.11(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: (1) Eric Spehl's age and birthplace; (2) Crew members had smuggled monkeys on board the Graf Zeppelin; (3) Germany's ambassador to the United States 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.

[7] We note that publication of Mooney's book and release of the motion picture revived long dormant interest in the Hindenburg. As a result, Hoehling's book, which had been out of print for some time, was actually re-released after the film was featured in theaters across the country.

460 F. Supp. 40

Margaret Walker ALEXANDER, Plaintiff,
v.
Alex HALEY, Doubleday & Company, Inc., and Doubleday Publishing Company, Defendants.

Nos. 77 Civ. 1907 (M.E.F.), 77 Civ. 1908 (M.E.F.).
United States District Court, S. D. New York.
September 20, 1978.
As Amended September 21, 1978.

[42] Gilbert A. Holmes, New York City, Brown, Alexander & Sanders, Jackson, Miss., for plaintiff; Firnist J. Alexander, Jr., Everett T. Sanders, Jackson, Miss., of counsel.

Phillips, Nizer, Benjamin, Krim & Ballon, New York City, for defendant Alex Haley; George Berger, New York City, of counsel.

Satterlee & Stephens, New York City, for defendants Doubleday & Co., Inc., and Doubleday Publishing Co.; Robert M. Callagy, New York City, of counsel.

OPINION

FRANKEL, District Judge.

Defendants' motions for summary judgment were held by the court pending an evidentiary hearing and report by Magistrate Gershon on one possibly material question of fact. The reports and recommendations are now before the court along with comments and objections by the parties. Upon all the original submissions, as thus amplified, the court concludes that defendants' motions should be granted.

I.

The plaintiff, Margaret Walker Alexander, initiated twin copyright infringement and unfair competition actions against Alex Haley and Doubleday Publishing Company and Doubleday & Co., Inc., his publishers, based upon alleged similarities between the book Roots, written by Haley, and the novel Jubilee and the pamphlet How I Wrote Jubilee ("HIWJ"), both written by the plaintiff. Jubilee was copyrighted in 1966, and HIWJ in 1972. The copyright for Roots was registered in 1976, although a portion of the material which later became Roots appeared under copyright in The Reader's Digest in 1974.

Both Roots and Jubilee are amalgams of fact and fiction derived from the sombre history of black slavery in the United States. Each purports to be at least loosely based on the lives of the author's own forbears. Differences in scope are, however, more striking than the similarities. Jubilee is a historical novel which recounts the life of Vyry (described as the author's great grandmother) starting around 1835, from her childhood and early adulthood in slavery, through the Civil War years and into Reconstruction. The novel is divided roughly into thirds, marked out by the beginning and the end of the Civil War. HIWJ, as its title suggests, is an account of the author's career, including her awakening interest in her family's and people's past, her many years of research, her struggle to complete the manuscript amidst other obligations, and an explanation of the mixture of fact and fiction in Jubilee.

Roots covers a much broader canvas, commencing its narrative in Africa and continuing through multiple generations of a single family, described as the ancestors of the author. The story commences in about 1750 and continues through the birth and life of the author. Well over a fifth of the book is set in Africa, and approximately three-quarters covers a period antedating the time of Jubilee. In the closing pages the author relates the story of his own life, the evolution of his concern with his family's past, his developing interest in writing, his research and the completion of his manuscript. Particular emphasis is placed upon an account of the trail the author says was followed to the unearthing of the African roots of his family tree.

II.

The case came before the court initially on defendants' motions for summary [43] judgment. In order to succeed in her claims of infringement plaintiff has the burden of proving two elements: actual copying of her works by the defendant and substantial similarity between the accused work and the original. Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946); Heim v. Universal Pictures Co., 154 F.2d 480, 487 (2d Cir. 1946). Actual copying may be established by direct proof or by proof of access plus a demonstration of similarities or other factors circumstantially evidencing copying. Arnstein v. Porter, supra, 154 F.2d at 468.

Recognizing that the question of actual copying is not susceptible of resolution on papers, defendants chose to proffer a concession of this element to clear the way for a motion predicated on the argument that the kind of similarities relied upon by the plaintiff are not actionable as a matter of law. Finding the defendants' papers highly compelling, the court was nonetheless reluctant to decide the motion solely on the papers concerning the question of similarity, doubting that this question is necessarily sealed off hermetically from the question of copying on which defendants offered to concede arguendo.^[1] Cf. MacDonald v. Du Maurier, 144 F.2d 696, 701 (2d Cir. 1944); Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661 (2d Cir. 1939). As against the proposed concession, plaintiff pressed for an opportunity "to demonstrate the strength of her case on copying." Perhaps out of excessive caution, but believing at any rate that the case should be as ripe as possible for decision here and on appeal, the court concluded that an evidentiary record should be made on that subject. Accordingly, the court declined to adopt the proffered concession and referred the charge of actual copying to Magistrate Gershon pursuant to 28 U.S.C. § 636(b)(1)(B), to hold an evidentiary hearing and report recommended findings and conclusions. The order of reference directed that the Magistrate was to consider only direct proof of access and copying. The court reserved to itself the issue of substantial similarity and the question of whether any similarities supported an inference of actual copying from proof of access, should the latter be established before the Magistrate.

III.

The Magistrate has reported that the plaintiff has met her burden of proof as to the defendant Haley's access to Jubilee, but has failed to establish this essential element of her prima facie case as to HIWJ. Both recommended findings are fully supported by the record, and are adopted by the court.^[2]

But this carries plaintiff only a small and totally insufficient way toward the vindication of her claims. Upon the record as a [44] whole, including the helpful Report, if it were necessary to do so, the court would now be prepared to find that Haley did not in fact copy anything, or attempt to copy anything, or inadvertently reproduce anything, from plaintiff's works. But even that is not necessary now to defeat plaintiff's charges. What is decisive is that, after full opportunity to portray the strength of her accusation of copying, plaintiff has failed. She has shown access to her novel, if not her pamphlet, and, as will appear, a catalogue of alleged similarities that is strained, insignificant, and devoid of factual or legal substance. Apart from Haley's wholly credible denials of copying, we are now comfortably past any speculation as to possible interrelations between the issue as to copying and the issue, on which defendants moved, as to substantial similarities. Whether or not these issues can be always and everywhere tightly separated, it is clear now that there is no trace of "spillover" in plaintiff's favor from the claim of copying to the claim of similarities sufficient in law to ground a charge of infringement. If, as is now to be recorded, the court would decide the latter issue, standing alone, for defendants, that ruling is now ripe as a basis for summary judgment without any lurking concern whether a mere "concession" as to copying for the sake of argument might serve to obscure factors pointing toward a different result.

IV.

In order to demonstrate the alleged similarity between Roots on the one hand and Jubilee and HIWJ on the other, plaintiff submitted several sets of affidavits and answers to interrogatories setting forth passages from Roots along with passages from the plaintiff's works, with certain portions underscored to highlight the asserted similarities. Plaintiff also submitted an affidavit commenting seriatim on the alleged similarities.

After consideration of each of the numerous similarities suggested in the plaintiff's submissions, the court concludes that none supports the claim of infringement. By this the court means both that (1) no support is given to the claim of copying by such similarity as is shown,^[3] and (2) that the claimed similarities do not, as a matter of law, constitute actionable substantial similarity between the works.^[4]

Substantial similarity is ordinarily a question of fact, not subject to resolution on a motion for summary judgment. Arnstein v. Porter, supra, 154 F.2d at 469. In the instant case, however, defendants' argument is that such similarities as are claimed by the plaintiff are irrelevant because they relate solely to aspects of the plaintiff's works which are not protectable by copyright. The law seems clear that summary judgment may be granted when such circumstances are demonstrated. Gardner v. Nizer, 391 F.Supp. 940 (S.D.N.Y.1975); Fuld v. National Broadcasting Co., 390 F.Supp. 877 (S.D.N.Y.1975); Gethers v. Blatty, 283 F.Supp. 303, 305 (C.D.Cal.1968); Consumers Union Inc. v. Hobart Manufacturing Co., 199 F.Supp. 860, 861 (S.D.N.Y. 1961); Buckler v. Paramount Pictures, Inc., 133 F.Supp. 223 (S.D.N.Y.1955); Millstein v. Leland Hayward, Inc., 10 F.R.D. 198, 199 (S.D.N.Y.1950). Cf. Bevan v. Columbia Broadcasting System, Inc., 329 F.Supp. 601 (S.D.N.Y.1971).

The court agrees with defendants; each of the similarities asserted by the plaintiff is in one or more of several categories of attributes of written work which are not subject to the protection of the copyright laws.

Many of the claimed similarities are based on matters of historical or contemporary [45] fact.^[5] No claim of copyright protection can arise from the fact that plaintiff has written about such historical and factual items, even if we were to assume that Haley was alerted to the facts in question by reading Jubilee. See Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303, 309 (2d Cir. 1966), cert. denied, 385 U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967); Gardner v. Nizer, supra, 391 F.Supp. at 942; Fuld v. National Broadcasting Co., supra, 390 F.Supp. at 882; Greenbie v. Noble, 151 F.Supp. 45, 65-66 (S.D.N.Y.1957); Lake v. Columbia Broadcasting System, Inc., 140 F.Supp. 707, 708-09 (S.D.Cal.1956).

Another major category of items consists of material traceable to common sources, the public domain, or folk custom. Thus, a number of the claimed infringements are embodiments of the cultural history of black Americans, or of both black and white Americans playing out the cruel tragedy of white-imposed slavery.^[6] Where common sources exist for the alleged similarities, or the material that is similar is otherwise not original with the plaintiff, there is no infringement. Fuld v. National Broadcasting Co., supra, 390 F.Supp. at 877; Costello v. Loew's Inc., 159 F.Supp. 782 (S.D.N.Y.1958); Greenbie v. Noble, supra, 151 F.Supp. at 65. This group of asserted infringements can no more be the subject of copyright protection than the use of a date or the name of a president or a more conventional piece of historical information.

A third species of the alleged similarities constitutes what have been called scenes a faire. Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir. 1976). These are incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic. Attempted escapes, flights through the woods pursued by baying dogs, the sorrowful or happy singing of slaves, the atrocity of the buying and selling of human beings, and other miseries are all found in stories at least as old as Mrs. Stowe's. This is not, and could not be, an offense to any author. Nobody writes books of purely original content. In any event, the plaintiff misconceives the protections of the copyright law in her listing of infringements by including such scenes a faire.^[7]Reyher v. Children's Television [46] Workshop, supra; Fuld v. National Broadcasting Co., supra, 300 F.Supp. at 881; Greenbie v. Noble, supra, 151 F.Supp. at 65, 69; Warshawsky v. Carter, 132 F.Supp. 758, 760 (D.D.C.1955).

Yet another group of alleged infringements is best described as cliched language, metaphors and the very words of which the language is constructed. Words and metaphors are not subject to copyright protection; nor are phrases and expressions conveying an idea that can only be, or is typically, expressed in a limited number of stereotyped fashions. Reyher v. Children's Television Workshop, supra, 533 F.2d at 91; Bein v. Warner Brothers Pictures, Inc., 105 F.2d 969 (2d Cir. 1939); Richards v. Columbia Broadcasting System, Inc., 161 F.Supp. 516, 518 (D.D.C.1958). Cf. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971). Nor is the later use of stock ideas copyright infringement. Bevan v. Columbia Broadcasting System, Inc., supra, 329 F.Supp. 601, at 606; Burnett v. Lambino, 204 F.Supp. 327, 332 (S.D.N.Y. 1962); Echevarria v. Warner Brothers Pictures, Inc., 12 F.Supp. 632, 635 (S.D.Cal. 1935); Lowenfels v. Nathan, 2 F.Supp. 73, 80 (S.D.N.Y.1934). Plaintiff collides with these principles over and over again as she extracts widely scattered passages from her book and pamphlet, and juxtaposes them against similarly scattered portions of Haley's Roots, only to demonstrate the use by both authors of obvious terms to describe expectable scenes.^[8]

Other alleged infringements display no similarity at all in terms of expression or language, but show at most some similarity of theme or setting.^[9] These items, the skeleton of a creative work rather than the flesh, are not protected by the copyright laws. Dellar v. Samuel Goldwyn, Inc., 150 F.2d 612 (2d Cir. 1945), cert. denied, 327 U.S. 790, 66 S.Ct. 802, 90 L.Ed. 1016 (1946). It is only the means of expressing these elements that is protected by the copyright laws. Reyher v. Children's Television Workshop, supra, 533 F.2d at 91; Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64, 64-65 (2d Cir. 1974).

Finally, some of the allegations of similarity are seen upon inspecting the books to be totally and palpably devoid of any factual basis. Cf. Arnstein v. Porter, supra, 154 F.2d at 473.^[10]

Every one of the alleged similarities between the plaintiff's two works and the defendants' book falls into at least one of the aforementioned categories of non-actionable material. Many fall into more than one. The review of the alleged similarities points unmistakably to the conclusion that no actionable similarities exist between the works.

V.

The plaintiff has advanced claims of unfair competition in addition to her [47] claims of infringement. The facts alleged for the alternative theories are the same and are insufficient for the same reasons. Gethers v. Blatty, supra, 283 F.Supp. at 307; Miller v. Goody, 139 F.Supp. 176, 187 (S.D. N.Y.1956), rev'd on other grounds, 248 F.2d 260 (2d Cir. 1957); Columbia Pictures Corp. v. National Broadcasting Co., 137 F.Supp. 348, 354 (S.D.Cal.1955); Alexander v. Irving Trust Co., 132 F.Supp. 364, 368 (S.D.N.Y.), aff'd 228 F.2d 221 (2d Cir. 1955), cert. denied, 350 U.S. 966, 76 S.Ct. 545, 100 L.Ed. 860 (1956). Consumers Union v. Hobart Manufacturing Co., supra, 199 F.Supp. 860, 862, wherein summary judgment was granted on an infringement claim but denied on an unfair competition claim, is not to the contrary. In Consumers Union there were factual allegations regarding allegedly unfair competitive practices extrinsic to the infringement claimed. No such allegations appear in the instant actions.

The defendants' motions for summary judgment are granted. The complaints are dismissed.

It is so ordered.

--------

Notes:

[1] Looking at things from the opposite direction, it is commonplace that similarity may be probative of copying. Arnstein v. Porter, supra, 154 F.2d at 468.

[2] In objecting to the Magistrate's Report, counsel for plaintiff have deviated more often than they should from fundamental rules of evidence and procedure. Their objections arrived late, and should perhaps be ruled out of consideration altogether, as defendants suggest. Though that drastic course is not followed, other blemishes must be noted and improper portions disregarded. Having had ample opportunity to be at the evidentiary hearing, plaintiff did not testify there. It was indicated that she might appear on rebuttal or be available to defendants if they wanted her. It was never intimated that she wished to testify and could not, or that she might desire an adjournment for such a purpose. Now, with the hearing long closed, she submits an affidavit on the issue of access, observing toward the end: "Because of my husband's illness, I was unable to attend the Evidentiary hearing in this cause." This won't do. She could have been deposed. She could have sought other relief. Her affidavit will be given no weight. If it were weighed, it might have negative impact anyhow. One startling aspect is its verbatim quotation of what is sworn to have been a letter from defendant Haley. No copy is attached.

In a comparably informal fashion, plaintiff's counsel include in their objections an alleged quotation of the defendant Haley from Playboy Magazine. But this was offered at the hearing, after Mr. Haley had testified, and objected to. The offer was withdrawn.

Then, the same set of objections appends a purported analysis of another lawsuit in The Village Voice. This was not offered at the hearing. It certainly has no place here now.

[3] Thus further failing to support the element defendants were willing to concede for this motion.

[4] So that, in the strict logic defendants pursued from the outset, plaintiff would lose even if she had proved copying. The logic was not unsound. But if the court has proceeded properly, this may be another case of the kind in which logic alone is not enough.

[5] This category covers a large number of what plaintiff cites as assertedly infringing passages. For instance, the passages from page 32 of Jubilee and page 521 of Roots cited by the plaintiff share only a reference to New Orleans and the women of mixed race found there. Another example reveals only two treatments of the theme of the westward movement and settlement in the United States (Jubilee, p. 43; Roots, pp. 287, 595.) Yet another is based on the historical fact of slave uprisings and the repressive measures taken to combat them. (Jubilee, pp. 51, 83; Roots, pp. 279, 282.) The record is replete with other examples which the court need not discuss. See, e. g., Jubilee, p. 91, Roots, p. 277 (Quakers as abolitionists); Jubilee, p. 146, Roots, p. 282 (process of manumission); Jubilee, p. 184, Roots, p. 626; Jubilee, p. 19, Roots, p. 373; Jubilee, p. 47, Roots, p. 429; Jubilee, p. 82, Roots, p. 387; Jubilee, p. 192, Roots, p. 572; HIWJ, p. 18, Roots, p. 671. This listing, like those that follow, is not intended to be exhaustive. With respect to each category, the court has made the judgment reported — that the instances embraced are non-actionable because they are thus classifiable under at least one such heading.

[6] One example is the references to laying out the body of a deceased on a "cooling board." (Jubilee, pp. 68-69; Roots, p. 355.) Uncontroverted affidavits show that this is an authentic piece of folk custom. See, also, Jubilee, p. 110, Roots, p. 518 (folk herbal medicines); Jubilee, p. 119, Roots, pp. 562-63 (cockfighting); Jubilee, p. 143, Roots, p. 310 ("jumping the broom" as a folk rite of marriage); Jubilee, p. 285, Roots, p. 644; Jubilee, p. 20, Roots, p. 364; Jubilee, p. 341, Roots, p. 365; Jubilee, p. 339, Roots, p. 247; Jubilee, p. 319, Roots, p. 212; Jubilee, p. 484, Roots, p. 327; Jubilee, p. 39, Roots, p. 383; Jubilee, p. 98, Roots, p. 396; Jubilee, p. 36, Roots, pp. 236, 438; Jubilee, p. 138, Roots, p. 439; Jubilee p. 100, Roots, p. 480; Jubilee, pp. 67, 83, 100, Roots, p. 418.

[7] Examples include scenes portraying sex between male slaveowners and female slaves and the resentment of the female slave owners (Jubilee, p. 44, Roots, p. 436); the sale of a slave child away from her family and the attendant agonies (Jubilee, pp. 84-85, Roots, pp. 424-26); the horror of punitive mutilation (Jubilee, p. 114, Roots, p. 224); and slave owners complaining about the high price of slaves (Jubilee, p. 113, Roots, p. 397). See, also, Jubilee, p. 145, Roots, p. 403; Jubilee, p. 169, Roots, p. 232; Jubilee, pp. 172-73, Roots, p. 234; Jubilee, pp. 278-280, Roots, p. 644; Jubilee, p. 328, Roots, p. 649; Jubilee, p. 461, Roots, p. 361; HIWJ, p. 12, Roots, p. 664.

[8] Among the many examples are: "poor white trash" (Jubilee, p. 60, Roots, p. 294), and the fluffiness of cotton (Jubilee, p. 36, Roots, pp. 205, 207, 236). See, also, Jubilee, pp. 25-26, Roots, pp. 204, 221; Jubilee, p. 149, Roots, p. 435; Jubilee, p. 164, Roots, p. 243; Jubilee, p. 199, Roots, p. 628; Jubilee, p. 172, Roots, p. 209; HIWJ, pp. 15-16, Roots, pp. 673-75; Jubilee, p. 22, Roots, pp. 677, 679; HIWJ, p. 24, Roots, p. 686.

[9] Examples of such alleged similarities include descriptions of puberty (Jubilee, pp. 53-54, Roots, pp. 412-13); hypocrisy in sermons delivered to slaves (Jubilee, p. 123, Roots, p. 451); and sexuality among the young (Jubilee, p. 136, Roots, p. 444). See, also, Jubilee, pp. 71, 80, Roots, pp. 449-453; Jubilee, p. 104, Roots, p. 594; Jubilee, p. 137, Roots, p. 265; Jubilee, p. 290, Roots, p. 219; Jubilee, p. 93, Roots, p. 210; HIWJ, p. 12, Roots, p. 668; HIWJ, p. 19, Roots, p. 682.

[10] A good example is found in the allegedly similar passages at page 48 of Jubilee and pages 226-227 of Roots. Plaintiff claims that both concern secret organized religious meetings, but the scene in Roots does not portray an organized meeting, nor is the gathering secret or religious in nature. See, also, Jubilee, p. 179, Roots, p. 358; Jubilee, p. 83, Roots, p. 290; Jubilee, pp. 460, 496, 440, Roots, p. 327; Jubilee, pp. 129-130, Roots, p. 358.

536 F.3d 121

The CARTOON NETWORK LP, LLLP and Cable News Network L.P., L.L.L.P., Plaintiffs-Counter-Claimants-Defendants-Appellees,
Twentieth Century Fox Film Corporation, Universal City Studios Productions LLLP, Paramount Pictures Corporation, Disney Enterprises Inc., CBS Broadcasting Inc., American Broadcasting Companies, Inc., NBC Studios, Inc., Plaintiffs-Counter-Defendants-Appellees,
v.
CSC HOLDINGS, INC. and Cablevision Systems Corporation, Defendants-Counterclaim-Plaintiffs-Third-Party Plaintiffs-Appellants,
v.
Turner Broadcasting System, Inc., Cable News Network LP, LLP, Turner Network Sales, Inc., Turner Classic Movies, L.P., LLLP, Turner Network Television LP, LLLP, Third-Party-Defendants-Appellees.

Docket No. 07-1480-cv(L).
Docket No. 07-1511-cv(CON).
United States Court of Appeals, Second Circuit.
Argued: October 24, 2007.
Decided: August 4, 2008.

[122] Jeffrey A. Lamken (Robert K. Kry and Joshua A. Klein, on the brief), Baker Botts L.L.P., Washington, D.C., and Timothy A. Macht (on the brief), New York, N.Y., for Defendants-Appellants.

Katherine B. Forrest (Antony L. Ryan, on the brief), Cravath, Swaine & Moore LLP, New York, N.Y., for Plaintiffs-Appellees The Cartoon Network LP, LLLP, et al.

Robert Alan Garrett (Hadrian R. Katz, Jon Michaels, Peter L. Zimroth, and Eleanor Lackman, on the brief), Arnold & Porter LLP, Washington, D.C., for Plaintiffs-Appellees Twentieth Century Fox Film Corporation, et al.

Marc E. Isserles, Cohen & Gresser LLP, New York, N.Y., for Amici Curiae Law Professors.

Henry A. Lanman, Trachtenberg Rodes & Friedberg LLP, New York, N.Y., for Amicus Curiae Professor Timothy Wu.

Solveig Singleton, The Progress & Freedom Foundation, Washington, D.C., for Amicus Curiae Progress & Freedom Foundation.

Carol A. Witschel, White & Case LLP, and Richard H. Reimer, New York, N.Y., for Amicus Curiae The American Society of Composers, Authors & Publishers.

Michael E. Salzman, Hughes Hubbard & Reed LLP, and Marvin Berenson, Broadcast Music Inc., New York, N.Y., for Amicus Curiae Broadcast Music, Inc.

David Sohn, Center for Democracy & Technology, Washington, D.C., Fred von Lohman, Electronic Freedom Foundation, San Francisco, Cal., Sherwin Siy, Public Knowledge, Washington D.C., William P. Heaston, Broadband Service Providers Association Regulatory Committee, Jonathan Band PLLC, Washington, D.C., Julie

[123] Kearney, Consumer Electronics Association, Arlington, Va., Michael F. Altschul et al., CTIA-The Wireless Association®, Washington, D.C., Jonathan Banks, USTelecom, Washington, D.C., Michael K. Kellogg et al., Kellogg, Huber, Hansen, Todd, Evans & Figel, P.L.L.C., Washington D.C., for Amici Curiae Center for Democracy & Technology et al.

Donald B. Verrilli, Jr., et al., Jenner & Block LLP, Washington, D.C., Kenneth L. Doroshow & Scott A. Zebrak, Recording Industry Association of America, Washington, D.C., Jacqueline C. Charlesworth, National Music Publishers' Association, Washington, D.C., Victor S. Perlman, American Society of Media Photographers, Inc., Philadelphia, Pa., Allan Robert Adler, Association of American Publishers, Washington, D.C., Linda Steinman, Davis Wright Tremaine LLP, New York, N.Y., David Korduner, Directors Guild of America, Inc., Los Angeles, Cal., Frederic Hirsch & Chun T. Wright, Entertainment Software Association, Washington, D.C., Susan Cleary, Independent Film & Television Alliance, Los Angeles, Cal., Gary Gertzog, National Football League, New York, N.Y., Thomas Ostertag, Office of the Commissioner of Baseball, New York, N.Y., Duncan Crabtree-Ireland, Screen Actors Guild, Inc., Los Angeles, Cal., John C. Beiter, Loeb & Loeb, LLP, Nashville, Tenn., Anthony R. Segall, Writers Guild of America, West, Inc., Los Angeles, Cal., for Amici Curiae American Society of Media Photographers, Inc. et al.

Steven J. Metalitz & J. Matthew Williams, Washington, D.C., for Amicus Curiae Americans for Tax Reform.

Before: WALKER, SACK, and LIVINGSTON, Circuit Judges.

JOHN M. WALKER, JR., Circuit Judge:

Defendant-Appellant Cablevision Systems Corporation ("Cablevision") wants to market a new "Remote Storage" Digital Video Recorder system ("RS-DVR"), using a technology akin to both traditional, set-top digital video recorders, like TiVo ("DVRs"), and the video-on-demand ("VOD") services provided by many cable companies. Plaintiffs-Appellees produce copyrighted movies and television programs that they provide to Cablevision pursuant to numerous licensing agreements. They contend that Cablevision, through the operation of its RS-DVR system as proposed, would directly infringe their copyrights both by making unauthorized reproductions, and by engaging in public performances, of their copyrighted works. The material facts are not in dispute. Because we conclude that Cablevision would not directly infringe plaintiffs' rights under the Copyright Act by offering its RS-DVR system to consumers, we reverse the district court's award of summary judgment to plaintiffs, and we vacate its injunction against Cablevision.

BACKGROUND

Today's television viewers increasingly use digital video recorders ("DVRs") instead of video cassette recorders ("VCRs") to record television programs and play them back later at their convenience. DVRs generally store recorded programming on an internal hard drive rather than a cassette. But, as this case demonstrates, the generic term "DVR" actually refers to a growing number of different devices and systems. Companies like TiVo sell a stand-alone DVR device that is typically connected to a user's cable box and television much like a VCR. Many cable companies also lease to their subscribers "set-top storage DVRs," which combine many of the functions of a standard cable box and a stand-alone DVR in a single device.

[124] In March 2006, Cablevision, an operator of cable television systems, announced the advent of its new "Remote Storage DVR System." As designed, the RS-DVR allows Cablevision customers who do not have a stand-alone DVR to record cable programming on central hard drives housed and maintained by Cablevision at a "remote" location. RS-DVR customers may then receive playback of those programs through their home television sets, using only a remote control and a standard cable box equipped with the RS-DVR software. Cablevision notified its content providers, including plaintiffs, of its plans to offer RS-DVR, but it did not seek any license from them to operate or sell the RS-DVR.

Plaintiffs, which hold the copyrights to numerous movies and television programs, sued Cablevision for declaratory and injunctive relief. They alleged that Cablevision's proposed operation of the RS-DVR would directly infringe their exclusive rights to both reproduce and publicly perform their copyrighted works. Critically for our analysis here, plaintiffs alleged theories only of direct infringement, not contributory infringement, and defendants waived any defense based on fair use.

Ultimately, the United States District Court for the Southern District of New York (Denny Chin, Judge), awarded summary judgment to the plaintiffs and enjoined Cablevision from operating the RS-DVR system without licenses from its content providers. See Twentieth Century Fox Film Corp. v. Cablevision Sys. Corp. (Cablevision I), 478 F.Supp.2d 607 (S.D.N.Y.2007). At the outset, we think it helpful to an understanding of our decision to describe, in greater detail, both the RS-DVR and the district court's opinion.

I. Operation of the RS-DVR System

Cable companies like Cablevision aggregate television programming from a wide variety of "content providers"—the various broadcast and cable channels that produce or provide individual programs—and transmit those programs into the homes of their subscribers via coaxial cable. At the outset of the transmission process, Cablevision gathers the content of the various television channels into a single stream of data. Generally, this stream is processed and transmitted to Cablevision's customers in real time. Thus, if a Cartoon Network program is scheduled to air Monday night at 8pm, Cartoon Network transmits that program's data to Cablevision and other cable companies nationwide at that time, and the cable companies immediately re-transmit the data to customers who subscribe to that channel.

Under the new RS-DVR, this single stream of data is split into two streams. The first is routed immediately to customers as before. The second stream flows into a device called the Broadband Media Router ("BMR"), id. at 613, which buffers the data stream, reformats it, and sends it to the "Arroyo Server," which consists, in relevant part, of two data buffers and a number of high-capacity hard disks. The entire stream of data moves to the first buffer (the "primary ingest buffer"), at which point the server automatically inquires as to whether any customers want to record any of that programming. If a customer has requested a particular program, the data for that program move from the primary buffer into a secondary buffer, and then onto a portion of one of the hard disks allocated to that customer. As new data flow into the primary buffer, they overwrite a corresponding quantity of data already on the buffer. The primary ingest buffer holds no more than 0.1 seconds of each channel's programming at any moment. Thus, every tenth of a second, the data residing on this buffer are automatically erased and replaced. The [125] data buffer in the BMR holds no more than 1.2 seconds of programming at any time. While buffering occurs at other points in the operation of the RS-DVR, only the BMR buffer and the primary ingest buffer are utilized absent any request from an individual subscriber.

As the district court observed, "the RS-DVR is not a single piece of equipment," but rather "a complex system requiring numerous computers, processes, networks of cables, and facilities staffed by personnel twenty-four hours a day and seven days a week." Id. at 612. To the customer, however, the processes of recording and playback on the RS-DVR are similar to that of a standard set-top DVR. Using a remote control, the customer can record programming by selecting a program in advance from an on-screen guide, or by pressing the record button while viewing a given program. A customer cannot, however, record the earlier portion of a program once it has begun. To begin playback, the customer selects the show from an on-screen list of previously recorded programs. See id. at 614-16. The principal difference in operation is that, instead of sending signals from the remote to an on-set box, the viewer sends signals from the remote, through the cable, to the Arroyo Server at Cablevision's central facility. See id. In this respect, RS-DVR more closely resembles a VOD service, whereby a cable subscriber uses his remote and cable box to request transmission of content, such as a movie, stored on computers at the cable company's facility. Id. at 612. But unlike a VOD service, RS-DVR users can only play content that they previously requested to be recorded.

Cablevision has some control over the content available for recording: a customer can only record programs on the channels offered by Cablevision (assuming he subscribes to them). Cablevision can also modify the system to limit the number of channels available and considered doing so during development of the RS-DVR. Id. at 613.

II. The District Court's Decision

In the district court, plaintiffs successfully argued that Cablevision's proposed system would directly infringe their copyrights in three ways. First, by briefly storing data in the primary ingest buffer and other data buffers integral to the function of the RS-DVR, Cablevision would make copies of protected works and thereby directly infringe plaintiffs' exclusive right of reproduction under the Copyright Act. Second, by copying programs onto the Arroyo Server hard disks (the "playback copies"), Cablevision would again directly infringe the reproduction right. And third, by transmitting the data from the Arroyo Server hard disks to its RS-DVR customers in response to a "playback" request, Cablevision would directly infringe plaintiffs' exclusive right of public performance. See id. at 617. Agreeing with all three arguments, the district court awarded summary declaratory judgment to plaintiffs and enjoined Cablevision from operating the RS-DVR system without obtaining licenses from the plaintiff copyright holders.

As to the buffer data, the district court rejected defendants' arguments 1) that the data were not "fixed" and therefore were not "copies" as defined in the Copyright Act, and 2) that any buffer copying was de minimis because the buffers stored only small amounts of data for very short periods of time. In rejecting the latter argument, the district court noted that the "aggregate effect of the buffering" was to reproduce the entirety of Cablevision's programming, and such copying "can hardly be called de minimis." Id. at 621.

[126] On the issue of whether creation of the playback copies made Cablevision liable for direct infringement, the parties and the district court agreed that the dispositive question was "who makes the copies"? Id. at 617. Emphasizing Cablevision's "unfettered discretion" over the content available for recording, its ownership and maintenance of the RS-DVR components, and its "continuing relationship" with its RS-DVR customers, the district court concluded that "the copying of programming to the RS-DVR's Arroyo servers ... would be done not by the customer but by Cablevision, albeit at the customer's request." Id. at 618, 620, 621.

Finally, as to the public performance right, Cablevision conceded that, during the playback, "the streaming of recorded programming in response to a customer's request is a performance." Id. at 622. Cablevision contended, however, that the work was performed not by Cablevision, but by the customer, an argument the district court rejected "for the same reasons that [it] reject[ed] the argument that the customer is `doing' the copying involved in the RS-DVR." Id. Cablevision also argued that such a playback transmission was not "to the public," and therefore not a public performance as defined in the Copyright Act, because it "emanates from a distinct copy of a program uniquely associated with one customer's set-top box and intended for that customer's exclusive viewing in his or her home." Id. The district court disagreed, noting that "Cablevision would transmit the same program to members of the public, who may receive the performance at different times, depending on whether they view the program in real time or at a later time as an RS-DVR playback." Id. at 623 (emphasis added). The district court also relied on a case from the Northern District of California, On Command Video Corp. v. Columbia Pictures Industries, 777 F.Supp. 787 (N.D.Cal.1991), which held that when the relationship between the transmitter and the audience of a performance is commercial, the transmission is "to the public," see Cablevision I, 478 F.Supp.2d at 623 (citing On Command, 777 F.Supp. at 790).

Finding that the operation of the RS-DVR would infringe plaintiffs' copyrights, the district court awarded summary judgment to plaintiffs and enjoined Cablevision from copying or publicly performing plaintiffs' copyrighted works "in connection with its proposed RS-DVR system," unless it obtained the necessary licenses. Cablevision I, 478 F.Supp.2d at 624. Cablevision appealed.

DISCUSSION

We review a district court's grant of summary judgment de novo. Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 607 (2d Cir.2006).

"Section 106 of the Copyright Act grants copyright holders a bundle of exclusive rights...." Id. at 607-08. This case implicates two of those rights: the right "to reproduce the copyrighted work in copies," and the right "to perform the copyrighted work publicly." 17 U.S.C. § 106(1), (4). As discussed above, the district court found that Cablevision infringed the first right by 1) buffering the data from its programming stream and 2) copying content onto the Arroyo Server hard disks to enable playback of a program requested by an RS-DVR customer. In addition, the district court found that Cablevision would infringe the public performance right by transmitting a program to an RS-DVR customer in response to that customer's playback request. We address each of these three allegedly infringing acts in turn.

I. The Buffer Data

[127] 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. § 101. 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 ... for a period of more than transitory duration." Id. (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. Cablevision I, 478 F.Supp.2d at 621-22. In doing so, it relied on a line of cases beginning with MAI Systems Corp. v. Peak Computer Inc., 991 F.2d 511 (9th Cir.1993). It also relied on the United States Copyright Office's 2001 report on the Digital Millennium Copyright Act, which states, in essence, that an embodiment is fixed "[u]nless a reproduction manifests itself so fleetingly that it cannot be copied." U.S. Copyright Office, DMCA Section 104 Report 111 (Aug.2001) ("DMCA Report") (emphasis added), available at http://www.copyright.gov/reports/studies/dmca/sec-104-report-vol-1.pdf.

The district court's reliance on cases like MAI 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 MAI Systems and its progeny. As a result, they do not speak to the issues squarely before us here: If a work is only "embodied" in a medium for a period of transitory duration, can it be "fixed" in that medium, and thus a copy? And what constitutes a period "of more than transitory duration"?

In MAI Systems, defendant Peak Computer, Inc., performed maintenance and repairs on computers made and sold by MAI 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. See MAI Sys., 991 F.2d at 513. The issue in MAI Systems was whether, [128] by loading the software into the computer's RAM,^[1] the repairman created a "copy" as defined in § 101. See id. at 517. The resolution of this issue turned on whether the 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, MAI 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 MAI 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 MAI 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 MAI 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 MAI 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.^[2]

At least one court, relying on MAI Systems in a highly similar factual setting, has made this point explicitly. In Advanced Computer Services of Michigan, Inc. v. MAI 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 [129] 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; it merely makes explicit the reasoning that is implicit in the other MAI Systems cases. Accordingly, those cases provide no support for the conclusion that the definition of "fixed" does not include a duration requirement. See Webster v. Fall, 266 U.S. 507, 511, 45 S.Ct. 148, 69 L.Ed. 411 (1924) ("Questions which merely lurk in the record, neither brought to the attention of the court nor ruled upon, are not to be considered as having been so decided as to constitute precedents.").

Nor does the Copyright Office's 2001 DMCA Report, also relied on by the district court in this case, explicitly suggest that the definition of "fixed" does not contain a duration requirement. However, as noted above, it does suggest that an embodiment is fixed "[u]nless a reproduction manifests itself so fleetingly that it cannot be copied, perceived or communicated." DMCA Report, supra, at 111. As we have stated, to determine whether a work is "fixed" in a given medium, the statutory language directs us to ask not only 1) whether a work is "embodied" in that medium, but also 2) whether it is embodied in the medium "for a period of more than transitory duration." According to the Copyright Office, if the work is capable of being copied from that medium for any amount of time, the answer to both questions is "yes." The problem with this interpretation is that it reads the "transitory duration" language out of the statute.

We assume, as the parties do, that the Copyright Office's pronouncement deserves only Skidmore deference, deference based on its "power to persuade." Skidmore v. Swift & Co., 323 U.S. 134, 140, 65 S.Ct. 161, 89 L.Ed. 124 (1944). And because the Office's interpretation does not explain why Congress would include language in a definition if it intended courts to ignore that language, we are not persuaded.

In sum, no case law or other authority dissuades us from concluding that the definition of "fixed" imposes both an embodiment requirement and a duration requirement. Accord CoStar Group Inc. v. LoopNet, Inc., 373 F.3d 544, 551 (4th Cir. 2004) (while temporary reproductions "may be made in this transmission process, they would appear not to be `fixed' in the sense that they are `of more than transitory duration'"). We now turn to whether, in this case, those requirements are met by the buffer data.

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 RS-DVR system. 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). 17 U.S.C. § 101. 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 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"? Id. No bit of data remains in any buffer for more than a fleeting 1.2 seconds. And unlike the data in cases like MAI [130] 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. of Pls.-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. Our resolution of this issue renders it unnecessary for us to determine whether any copies produced by buffering data would be de minimis, and we express no opinion on that question.

II. Direct Liability for Creating the Playback Copies

In most copyright disputes, the allegedly infringing act and the identity of the infringer are never in doubt. These cases turn on whether the conduct in question does, in fact, infringe the plaintiff's copyright. In this case, however, the core of the dispute is over the authorship of the infringing conduct. After an RS-DVR subscriber selects a program to record, and that program airs, a copy of the program—a copyrighted work—resides on the hard disks of Cablevision's Arroyo Server, its creation unauthorized by the copyright holder. The question is who made this copy. If it is Cablevision, plaintiffs' theory of direct infringement succeeds; if it is the customer, plaintiffs' theory fails because Cablevision would then face, at most, secondary liability, a theory of liability expressly disavowed by plaintiffs.

Few cases examine the line between direct and contributory liability. Both parties cite a line of cases beginning with Religious Technology Center v. Netcom On-Line Communication Services, 907 F.Supp. 1361 (N.D.Cal.1995). In Netcom, a third-party customer of the defendant Internet service provider ("ISP") posted a copyrighted work that was automatically reproduced by the defendant's computer. The district court refused to impose direct liability on the ISP, reasoning that "[a]lthough copyright is a strict liability statute, there should still be some element of volition or causation which is lacking where a defendant's system is merely used to create a copy by a third party." Id. at 1370. Recently, the Fourth Circuit endorsed the Netcom decision, noting that

to establish direct liability under ... the Act, something more must be shown than mere ownership of a machine used by others to make illegal copies. There must be actual infringing conduct with a nexus sufficiently close and causal to the illegal copying that one could conclude that the machine owner himself trespassed on the exclusive domain of the copyright owner."

CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 550 (4th Cir.2004).

[131] Here, the district court pigeon-holed the conclusions reached in Netcom and its progeny as "premised on the unique attributes of the Internet." Cablevision I, 478 F.Supp.2d at 620. While the Netcom court was plainly concerned with a theory of direct liability that would effectively "hold the entire Internet liable" for the conduct of a single user, 907 F.Supp. at 1372, its reasoning and conclusions, consistent with precedents of this court and the Supreme Court, and with the text of the Copyright Act, transcend the Internet. Like the Fourth Circuit, we reject the contention that "the Netcom decision was driven by expedience and that its holding is inconsistent with the established law of copyright," CoStar, 373 F.3d at 549, and we find it "a particularly rational interpretation of § 106," id. at 551, rather than a special-purpose rule applicable only to ISPs.

When there is a dispute as to the author of an allegedly infringing instance of reproduction, Netcom and its progeny direct our attention to the volitional conduct that causes the copy to be made. There are only two instances of volitional conduct in this case: Cablevision's conduct in designing, housing, and maintaining a system that exists only to produce a copy, and a customer's conduct in ordering that system to produce a copy of a specific program. In the case of a VCR, it seems clear — and we know of no case holding otherwise — that the operator of the VCR, the person who actually presses the button to make the recording, supplies the necessary element of volition, not the person who manufactures, maintains, or, if distinct from the operator, owns the machine. We do not believe that an RS-DVR customer is sufficiently distinguishable from a VCR user to impose liability as a direct infringer on a different party for copies that are made automatically upon that customer's command.

The district court emphasized the fact that copying is "instrumental" rather than "incidental" to the function of the RS-DVR system. Cablevision I, 478 F.Supp.2d at 620. While that may distinguish the RS-DVR from the ISPs in Netcom and CoStar, it does not distinguish the RS-DVR from a VCR, a photocopier, or even a typical copy shop. And the parties do not seem to contest that a company that merely makes photocopiers available to the public on its premises, without more, is not subject to liability for direct infringement for reproductions made by customers using those copiers. They only dispute whether Cablevision is similarly situated to such a proprietor.

The district court found Cablevision analogous to a copy shop that makes course packs for college professors. In the leading case involving such a shop, for example, "[t]he professor [gave] the copyshop the materials of which the coursepack [was] to be made up, and the copyshop [did] the rest." Princeton Univ. Press v. Mich. Document Servs., 99 F.3d 1381, 1384 (6th Cir.1996) (en banc). There did not appear to be any serious dispute in that case that the shop itself was directly liable for reproducing copyrighted works. The district court here found that Cablevision, like this copy shop, would be "doing" the copying, albeit "at the customer's behest." Cablevision I, 478 F.Supp.2d at 620.

But because volitional conduct is an important element of direct liability, the district court's analogy is flawed. In determining who actually "makes" a copy, a significant difference exists between making a request to a human employee, who then volitionally operates the copying system to make the copy, and issuing a command directly to a system, which automatically obeys commands and engages in no volitional conduct. In cases like Princeton [132] University Press, the defendants operated a copying device and sold the product they made using that device. See 99 F.3d at 1383 ("The corporate defendant ... is a commercial copyshop that reproduced substantial segments of copyrighted works of scholarship, bound the copies into `coursepacks,' and sold the coursepacks to students. ..."). Here, by selling access to a system that automatically produces copies on command, Cablevision more closely resembles a store proprietor who charges customers to use a photocopier on his premises, and it seems incorrect to say, without more, that such a proprietor "makes" any copies when his machines are actually operated by his customers. See Netcom, 907 F.Supp. at 1369. Some courts have held to the contrary, but they do not explicitly explain why, and we find them unpersuasive. See, e.g., Elektra Records Co. v. Gem Elec. Distribs., Inc., 360 F.Supp. 821, 823 (E.D.N.Y.1973) (concluding that, "regardless" of whether customers or defendants' employees operated the tape-copying machines at defendants' stores, defendant had actively infringed copyrights).

The district court also emphasized Cablevision's "unfettered discretion in selecting the programming that it would make available for recording." Cablevision I, 478 F.Supp.2d at 620. This conduct is indeed more proximate to the creation of illegal copying than, say, operating an ISP or opening a copy shop, where all copied content was supplied by the customers themselves or other third parties. Nonetheless, we do not think it sufficiently proximate to the copying to displace the customer as the person who "makes" the copies when determining liability under the Copyright Act. Cablevision, we note, also has subscribers who use home VCRs or DVRs (like TiVo), and has significant control over the content recorded by these customers. But this control is limited to the channels of programming available to a customer and not to the programs themselves. Cablevision has no control over what programs are made available on individual channels or when those programs will air, if at all. In this respect, Cablevision possesses far less control over recordable content than it does in the VOD context, where it actively selects and makes available beforehand the individual programs available for viewing. For these reasons, we are not inclined to say that Cablevision, rather than the user, "does" the copying produced by the RS-DVR system. As a result, we find that the district court erred in concluding that Cablevision, rather than its RS-DVR customers, makes the copies carried out by the RS-DVR system.

Our refusal to find Cablevision directly liable on these facts is buttressed by the existence and contours of the Supreme Court's doctrine of contributory liability in the copyright context. After all, the purpose of any causation-based liability doctrine is to identify the actor (or actors) whose "conduct has been so significant and important a cause that [he or she] should be legally responsible." W. Page Keeton et al., Prosser and Keeton on Torts § 42, at 273 (5th ed.1984). But here, to the extent that we may construe the boundaries of direct liability more narrowly, the doctrine of contributory liability stands ready to provide adequate protection to copyrighted works.

Most of the facts found dispositive by the district court—e.g., Cablevision's "continuing relationship" with its RS-DVR customers, its control over recordable content, and the "instrumental[ity]" of copying to the RS-DVR system, Cablevision I, 478 F.Supp.2d at 618-20—seem to us more relevant to the question of contributory liability. In Sony Corp. of America v. Universal City Studios, Inc., the lack of an [133] "ongoing relationship" between Sony and its VCR customers supported the Court's conclusion that it should not impose contributory liability on Sony for any infringing copying done by Sony VCR owners. 464 U.S. 417, 437-38, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). The Sony Court did deem it "just" to impose liability on a party in a "position to control" the infringing uses of another, but as a contributory, not direct, infringer. Id. at 437, 104 S.Ct. 774. And asking whether copying copyrighted material is only "incidental" to a given technology is akin to asking whether that technology has "commercially significant noninfringing uses," another inquiry the Sony Court found relevant to whether imposing contributory liability was just. Id. at 442, 104 S.Ct. 774.

The Supreme Court's desire to maintain a meaningful distinction between direct and contributory copyright infringement is consistent with congressional intent. The Patent Act, unlike the Copyright Act, expressly provides that someone who "actively induces infringement of a patent" is "liable as an infringer," 35 U.S.C. § 271(b), just like someone who commits the underlying infringing act by "us[ing]" a patented invention without authorization, id. § 271(a). In contrast, someone who merely "sells ... a material or apparatus for use in practicing a patented process" faces only liability as a "contributory infringer." Id. § 271(c). If Congress had meant to assign direct liability to both the person who actually commits a copyright-infringing act and any person who actively induces that infringement, the Patent Act tells us that it knew how to draft a statute that would have this effect. Because Congress did not do so, the Sony Court concluded that "[t]he Copyright Act does not expressly render anyone liable for infringement committed by another." 464 U.S. at 434, 104 S.Ct. 774. Furthermore, in cases like Sony, the Supreme Court has strongly signaled its intent to use the doctrine of contributory infringement, not direct infringement, to "identify[] the circumstances in which it is just to hold one individual accountable for the actions of another." Id. at 435, 104 S.Ct. 774. Thus, although Sony warns us that "the lines between direct infringement, contributory infringement, and vicarious liability are not clearly drawn," id. at 435 n. 17, 104 S.Ct. 774 (internal quotation marks and citation omitted), that decision does not absolve us of our duty to discern where that line falls in cases, like this one, that require us to decide the question.

The district court apparently concluded that Cablevision's operation of the RS-DVR system would contribute in such a major way to the copying done by another that it made sense to say that Cablevision was a direct infringer, and thus, in effect, was "doing" the relevant copying. There are certainly other cases, not binding on us, that follow this approach. See, e.g., Playboy Enters. v. Russ Hardenburgh, Inc., 982 F.Supp. 503, 513 (N.D.Ohio 1997) (noting that defendant ISP's encouragement of its users to copy protected files was "crucial" to finding that it was a direct infringer). We need not decide today whether one's contribution to the creation of an infringing copy may be so great that it warrants holding that party directly liable for the infringement, even though another party has actually made the copy. We conclude only that on the facts of this case, copies produced by the RS-DVR system are "made" by the RS-DVR customer, and Cablevision's contribution to this reproduction by providing the system does not warrant the imposition of direct liability. Therefore, Cablevision is entitled to summary judgment on this point, and the district court erred in awarding summary judgment to plaintiffs.

III. Transmission of RS-DVR Playback

[134] Plaintiffs' final theory is that Cablevision will violate the Copyright Act by engaging in unauthorized public performances of their works through the playback of the RS-DVR copies. The Act grants a copyright owner the exclusive right, "in the case of ... motion pictures and other audiovisual works, to perform the copyrighted work publicly." 17 U.S.C. § 106(4). Section 101, the definitional section of the Act, explains that

[t]o perform or display a work "publicly" means (1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

Id. § 101.

The parties agree that this case does not implicate clause (1). Accordingly, we ask whether these facts satisfy the second, "transmit clause" of the public performance definition: Does Cablevision "transmit ... a performance ... of the work ... to the public"? Id. No one disputes that the RS-DVR playback results in the transmission of a performance of a work—the transmission from the Arroyo Server to the customer's television set. Cablevision contends that (1) the RS-DVR customer, rather than Cablevision, does the transmitting and thus the performing and (2) the transmission is not "to the public" under the transmit clause.

As to Cablevision's first argument, we note that our conclusion in Part II that the customer, not Cablevision, "does" the copying does not dictate a parallel conclusion that the customer, and not Cablevision, "performs" the copyrighted work. The definitions that delineate the contours of the reproduction and public performance rights vary in significant ways. For example, the statute defines the verb "perform" and the noun "copies," but not the verbs "reproduce" or "copy." Id. We need not address Cablevision's first argument further because, even if we assume that Cablevision makes the transmission when an RS-DVR playback occurs, we find that the RS-DVR playback, as described here, does not involve the transmission of a performance "to the public."

The statute itself does not expressly define the term "performance" or the phrase "to the public." It does explain that a transmission may be "to the public ... whether the members of the public capable of receiving the performance ... receive it in the same place or in separate places and at the same time or at different times." Id. This plain language instructs us that, in determining whether a transmission is "to the public," it is of no moment that the potential recipients of the transmission are in different places, or that they may receive the transmission at different times. The implication from this same language, however, is that it is relevant, in determining whether a transmission is made to the public, to discern who is "capable of receiving" the performance being transmitted. The fact that the statute says "capable of receiving the performance," instead of "capable of receiving the transmission," underscores the fact that a transmission of a performance is itself a performance. Cf. Buck v. Jewell-La Salle Realty Co., 283 U.S. 191, 197-98, 51 S.Ct. 410, 75 L.Ed. 971 (1931). [135] The legislative history of the transmit clause supports this interpretation. The House Report on the 1976 Copyright Act states that

[u]nder the bill, as under the present law, a performance made available by transmission to the public at large is "public" even though the recipients are not gathered in a single place, and even if there is no proof that any of the potential recipients was operating his receiving apparatus at the time of the transmission. The same principles apply whenever the potential recipients of the transmission represent a limited segment of the public, such as the occupants of hotel rooms or the subscribers of a cable television service.

H.R.Rep. No. 94-1476, at 64-65 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5678 (emphases added).

Plaintiffs also reference a 1967 House Report, issued nearly a decade before the Act we are interpreting, stating that the same principles apply where the transmission is "capable of reaching different recipients at different times, as in the case of sounds or images stored in an information system and capable of being performed or displayed at the initiative of individual members of the public." H.R.Rep. No. 90-83, at 29 (1967) (emphases added). We question how much deference this report deserves. But we need not belabor the point here, as the 1967 report is consistent with both legislative history contemporaneous with the Act's passage and our own interpretation of the statute's plain meaning.

From the foregoing, it is evident that the transmit clause directs us to examine who precisely is "capable of receiving" a particular transmission of a performance. Cablevision argues that, because each RS-DVR transmission is made using a single unique copy of a work, made by an individual subscriber, one that can be decoded exclusively by that subscriber's cable box, only one subscriber is capable of receiving any given RS-DVR transmission. This argument accords with the language of the transmit clause, which, as described above, directs us to consider the potential audience of a given transmission. We are unpersuaded by the district court's reasoning and the plaintiffs' arguments that we should consider a larger potential audience in determining whether a transmission is "to the public."

The district court, in deciding whether the RS-DVR playback of a program to a particular customer is "to the public," apparently considered all of Cablevision's customers who subscribe to the channel airing that program and all of Cablevision's RS-DVR subscribers who request a copy of that program. Thus, it concluded that the RS-DVR playbacks constituted public performances because "Cablevision would transmit the same program to members of the public, who may receive the performance at different times, depending on whether they view the program in real time or at a later time as an RS-DVR playback." Cablevision I, 478 F.Supp.2d at 623 (emphasis added). In essence, the district court suggested that, in considering whether a transmission is "to the public," we consider not the potential audience of a particular transmission, but the potential audience of the underlying work (i.e., "the program") whose content is being transmitted.

We cannot reconcile the district court's approach with the language of the transmit clause. That clause speaks of people capable of receiving a particular "transmission" or "performance," and not of the potential audience of a particular "work." Indeed, such an approach would render the "to the public" language surplusage. Doubtless the potential audience for every [136] copyrighted audiovisual work is the general public. As a result, any transmission of the content of a copyrighted work would constitute a public performance under the district court's interpretation. But the transmit clause obviously contemplates the existence of non-public transmissions; if it did not, Congress would have stopped drafting that clause after "performance."

On appeal, plaintiffs offer a slight variation of this interpretation. They argue that both in its real-time cablecast and via the RS-DVR playback, Cablevision is in fact transmitting the "same performance" of a given work: the performance of the work that occurs when the programming service supplying Cablevision's content transmits that content to Cablevision and the service's other licensees. See Br. of Pls.-Appellees Twentieth Century Fox Film Corp. et al. at 27 ("Fox Br.") ("The critical factor ... is that the same performance is transmitted to different subscribers at different times .... more specifically, the performance of that program by HBO or another programming service." (third emphasis added)).

Thus, according to plaintiffs, when Congress says that to perform a work publicly means to transmit ... a performance ... to the public, they really meant "transmit ... the `original performance' ... to the public." The implication of this theory is that to determine whether a given transmission of a performance is "to the public," we would consider not only the potential audience of that transmission, but also the potential audience of any transmission of the same underlying "original" performance.

Like the district court's interpretation, this view obviates any possibility of a purely private transmission. Furthermore, it makes Cablevision's liability depend, in part, on the actions of legal strangers. Assume that HBO transmits a copyrighted work to both Cablevision and Comcast. Cablevision merely retransmits the work from one Cablevision facility to another, while Comcast retransmits the program to its subscribers. Under plaintiffs' interpretation, Cablevision would still be transmitting the performance to the public, solely because Comcast has transmitted the same underlying performance to the public. Similarly, a hapless customer who records a program in his den and later transmits the recording to a television in his bedroom would be liable for publicly performing the work simply because some other party had once transmitted the same underlying performance to the public.

We do not believe Congress intended such odd results. Although the transmit clause is not a model of clarity, we believe that when Congress speaks of transmitting a performance to the public, it refers to the performance created by the act of transmission. Thus, HBO transmits its own performance of a work when it transmits to Cablevision, and Cablevision transmits its own performance of the same work when it retransmits the feed from HBO.

Furthermore, we believe it would be inconsistent with our own transmit clause jurisprudence to consider the potential audience of an upstream transmission by a third party when determining whether a defendant's own subsequent transmission of a performance is "to the public." In National Football League v. PrimeTime 24 Joint Venture (NFL), 211 F.3d 10 (2000), we examined the transmit clause in the context of satellite television provider PrimeTime, which captured protected content in the United States from the NFL, transmitted it from the United States to a satellite ("the uplink"), and then transmitted it from the satellite to subscribers in both the United States and Canada ("the downlink"). PrimeTime had a license to [137] transmit to its U.S. customers, but not its Canadian customers. It argued that although the downlink transmission to its Canadian subscribers was a public performance, it could not be held liable for that act because it occurred entirely outside of the United States and therefore was not subject to the strictures of the Copyright Act. It also argued that the uplink transmission was not a public performance because it was a transmission to a single satellite. See id. at 12.

The NFL court did not question the first assumption, but it flatly rejected the second on a specific and germane ground:

We believe the most logical interpretation of the Copyright Act is to hold that a public performance or display includes each step in the process by which a protected work wends its way to its audience. Under that analysis, it is clear that PrimeTime's uplink transmission of signals captured in the United States is a step in the process by which NFL's protected work wends its way to a public audience.

Id. at 13 (emphasis added) (internal quotation and citation omitted). Thus, while the uplink transmission that took place in the United States was not, in itself, "to the public," the NFL court deemed it so because it ultimately resulted in an undisputed public performance. Notably, the NFL court did not base its decision on the fact that an upstream transmission by another party (the NFL) might have been to the public. Nor did the court base its decision on the fact that Primetime simultaneously transmitted a performance of the work to the public in the United States. Because NFL directs us to look downstream, rather than upstream or laterally, to determine whether any link in a chain of transmissions made by a party constitutes a public performance, we reject plaintiffs' contention that we examine the potential recipients of the content provider's initial transmission to determine who is capable of receiving the RS-DVR playback transmission.

Plaintiffs also rely on NFL for the proposition that Cablevision publicly performs a work when it splits its programming stream and transmits the second stream to the RS-DVR system. Because NFL only supports that conclusion if we determine that the final transmission in the chain (i.e., the RS-DVR playback transmission) is "to the public," plaintiffs' reliance on NFL is misplaced. NFL dealt with a chain of transmissions whose final link was undisputedly a public performance. It therefore does not guide our current inquiry.

In sum, none of the arguments advanced by plaintiffs or the district court alters our conclusion that, under the transmit clause, we must examine the potential audience of a given transmission by an alleged infringer to determine whether that transmission is "to the public." And because the RS-DVR system, as designed, only makes transmissions to one subscriber using a copy made by that subscriber, we believe that the universe of people capable of receiving an RS-DVR transmission is the single subscriber whose self-made copy is used to create that transmission.

Plaintiffs contend that it is "wholly irrelevant, in determining the existence of a public performance, whether `unique' copies of the same work are used to make the transmissions." Fox Br. at 27. But plaintiffs cite no authority for this contention. And our analysis of the transmit clause suggests that, in general, any factor that limits the potential audience of a transmission is relevant.

Furthermore, no transmission of an audiovisual work can be made, we assume, without using a copy of that work: to transmit a performance of a movie, for [138] example, the transmitter generally must obtain a copy of that movie. As a result, in the context of movies, television programs, and other audiovisual works, the right of reproduction can reinforce and protect the right of public performance. If the owner of a copyright believes he is injured by a particular transmission of a performance of his work, he may be able to seek redress not only for the infringing transmission, but also for the underlying copying that facilitated the transmission. Given this interplay between the various rights in this context, it seems quite consistent with the Act to treat a transmission made using Copy A as distinct from one made using Copy B, just as we would treat a transmission made by Cablevision as distinct from an otherwise identical transmission made by Comcast. Both factors—the identity of the transmitter and the source material of the transmission—limit the potential audience of a transmission in this case and are therefore germane in determining whether that transmission is made "to the public."

Indeed, we believe that Columbia Pictures Industries, Inc. v. Redd Horne, Inc., 749 F.2d 154 (3d Cir.1984), relied on by both plaintiffs and the district court, supports our decision to accord significance to the existence and use of distinct copies in our transmit clause analysis. In that case, defendant operated a video rental store, Maxwell's, which also housed a number of small private booths containing seats and a television. Patrons would select a film, enter the booth, and close the door. An employee would then load a copy of the requested movie into a bank of VCRs at the front of the store and push play, thereby transmitting the content of the tape to the television in the viewing booth. See id. at 156-57.

The Third Circuit found that defendants' conduct constituted a public performance under both clauses of the statutory definition. In concluding that Maxwell's violated the transmit clause, that court explicitly relied on the fact that defendants showed the same copy of a work seriatim to its clientele, and it quoted a treatise emphasizing the same fact:

Professor Nimmer's examination of this definition is particularly pertinent: "if the same copy ... of a given work is repeatedly played (i.e., `performed') by different members of the public, albeit at different times, this constitutes a `public' performance." 2 M. Nimmer, § 8.14[C][3], at 8-142 (emphasis in original). ... Although Maxwell's has only one copy of each film, it shows each copy repeatedly to different members of the public. This constitutes a public performance.

Id. at 159 (first omission in original).

Unfortunately, neither the Redd Horne court nor Prof. Nimmer explicitly explains why the use of a distinct copy affects the transmit clause inquiry. But our independent analysis confirms the soundness of their intuition: the use of a unique copy may limit the potential audience of a transmission and is therefore relevant to whether that transmission is made "to the public." Plaintiffs' unsupported arguments to the contrary are unavailing.

Given that each RS-DVR transmission is made to a given subscriber using a copy made by that subscriber, we conclude that such a transmission is not "to the public," without analyzing the contours of that phrase in great detail. No authority cited by the parties or the district court persuades us to the contrary.

In addition to Redd Horne, the district court also cited and analyzed On Command Video Corp. v. Columbia Pictures Industries, 777 F.Supp. 787 (N.D.Cal. 1991), in its transmit clause analysis. In that case, defendant On Command developed [139] and sold "a system for the electronic delivery of movie video tapes," which it sold to hotels. Id. at 788. The hub of the system was a bank of video cassette players, each containing a copy of a particular movie. From his room, a hotel guest could select a movie via remote control from a list on his television. The corresponding cassette player would start, and its output would be transmitted to that guest's room. During this playback, the movie selected was unavailable to other guests. See id. The court concluded that the transmissions made by this system were made to the public "because the relationship between the transmitter of the performance, On Command, and the audience, hotel guests, is a commercial, `public' one regardless of where the viewing takes place." Id. at 790.

Thus, according to the On Command court, any commercial transmission is a transmission "to the public." We find this interpretation untenable, as it completely rewrites the language of the statutory definition. If Congress had wished to make all commercial transmissions public performances, the transmit clause would read: "to perform a work publicly means ... to transmit a performance for commercial purposes." In addition, this interpretation overlooks, as Congress did not, the possibility that even non-commercial transmissions to the public may diminish the value of a copyright. Finally, like Redd Horne, On Command is factually distinguishable, as successive transmissions to different viewers in that case could be made using a single copy of a given work. Thus, at the moment of transmission, any of the hotel's guests was capable of receiving a transmission made using a single copy of a given movie. As a result, the district court in this case erred in relying on On Command.

Plaintiffs also rely on Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277 (3d Cir.1991), in which the Third Circuit interpreted § 106(3) of the Copyright Act, which gives the copyright holder the exclusive right "to distribute copies ... of the copyrighted work to the public," 17 U.S.C. § 106(3) (emphasis added). The court concluded that "even one person can be the public for the purposes of section 106(3)." Ford, 930 F.2d at 299 (emphasis added). Commentators have criticized the Ford court for divesting the phrase "to the public" of "all meaning whatsoever," 2 Nimmer & Nimmer, supra, § 8.11[A], at 8-149, and the decision does appear to have that result. Whether this result was justified in the context of the distribution right is not for us to decide in this case. We merely note that we find no compelling reason, in the context of the transmit clause and the public performance right, to interpret the phrase "to the public" out of existence.

In sum, we find that the transmit clause directs us to identify the potential audience of a given transmission, i.e., the persons "capable of receiving" it, to determine whether that transmission is made "to the public." Because each RS-DVR playback transmission is made to a single subscriber using a single unique copy produced by that subscriber, we conclude that such transmissions are not performances "to the public," and therefore do not infringe any exclusive right of public performance. We base this decision on the application of undisputed facts; thus, Cablevision is entitled to summary judgment on this point.

This holding, we must emphasize, does not generally permit content delivery networks to avoid all copyright liability by making copies of each item of content and associating one unique copy with each subscriber to the network, or by giving their subscribers the capacity to make their own individual copies. We do not address whether such a network operator would be [140] able to escape any other form of copyright liability, such as liability for unauthorized reproductions or liability for contributory infringement.

In sum, because we find, on undisputed facts, that Cablevision's proposed RS-DVR system would not directly infringe plaintiffs' exclusive rights to reproduce and publicly perform their copyrighted works, we grant summary judgment in favor of Cablevision with respect to both rights.

CONCLUSION

For the foregoing reasons, the district court's award of summary judgment to the plaintiffs is REVERSED and the district court's injunction against Cablevision is VACATED. The case is REMANDED for further proceedings consistent with this opinion.

---------------

Notes:

[1] To run a computer program, the data representing that program must be transferred from a data storage medium (such as a floppy disk or a hard drive) to a form of Random Access Memory ("RAM") where the data can be processed. The data buffers at issue here are also a form of RAM.

[2] The same reasoning also distinguishes this court's opinion in Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693 (2d Cir. 1998). Language in that opinion, taken out of context, suggests that the definition of "fixed" imposes only an embodiment requirement: "Under § 101's definition of `copies,' a work satisfies the fixation requirement when it is fixed in a material object from which it can be perceived or communicated directly or with the aid of a machine." Id. at 702. Like the MAI Systems cases, Matthew Bender only addresses the embodiment requirement: specifically, whether West's copyrighted arrangement of judicial opinions was "embedded" in a CD-ROM compilation of opinions when the cases were normally arranged differently but could be manipulated by the user to replicate West's copyrighted arrangement. Id. at 703. The opinion merely quotes the duration language without discussing it, see id. at 702; that case therefore does not compel us to conclude that the definition of "fixed" does not impose a duration requirement.

188 U.S. 239
23 S.Ct. 298
47 L.Ed. 460

GEORGE BLEISTEIN, John W. Bridgman, John A. Rudolph, Ansley Wilcox, Gerritt B. Lansing, and Edwin Fleming, Doing Business under the Name of The Courier Company and the Courier Lithographing Company, Plffs. in Err.,
v.
DONALDSON LITHOGRAPHING COMPANY.

No. 117.
Argued January 13, 14, 1903.
Decided February 2, 1903.

Messrs. Ansley Wilcox and Arthur Von Briesen, and Messrs. Wilcox & Miner for plaintiffs in error.

[Argument of Counsel from pages 239-246 intentionally omitted]

[246] Messrs. Edmund W. Kittredge and Joseph Wilby for defendant in error.

[Argument of Counsel from pages 246-248 intentionally omitted]

[248] Mr. Justice Holmes delivered the opinion of the court:

This case comes here from the United States circuit court of appeals for the sixth circuit by writ of error. Act of March 3, 1891 (26 Stat. at L. 828, shap. 517, § 6, U. S. Comp. Stat. 1901, pp. 549, 550). It is an action brought by the plaintiffs in error to recover the penalties prescribed for infringements of copyrights. Rev. Stat. §§ 4952, 4956, 4965 (U. S. Comp. Stat. 1901, pp. 3406, 3407, 3414), amended by act of March 3, 1891 (26 Stat. at L. 1109, chap. 565), and act of March 2, 1895 (28 Stat. at L. 965, chap. 194). 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 of Wallace 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 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. 44 C. C. A. 296, 104 Fed. 993.

There was evidence warranting the inference that the designs belonged to the plaintiffs, they having been produced by persons employed and paid by the plaintiffs in their establishment to make those very things. Gill v. United States, 160 U. S. 426, [249] 435, 40 L. ed. 480, 483, 16 Sup. Ct. Rep. 322; Colliery Engineer Co. v. United Correspondence Schools Co. 94 Fed. 152; Carte v. Evans, 27 Fed. 861. It fairly might be found, also, that the copyrights were taken out in the proper names. One of them was taken out in the name of the Courier Company and the other two in the name of the Courier Lithographing Company. The former was the name of an unincorporated joint-stock association formed under the laws of New York (Laws of 1894, chap. 235), and made up of the plaintiffs, the other a trade variant on that name. Scribner v. Clark, 50 Fed. 473, 474, 475, S. C., sub nom. Belford, C. & Co. v. Scribner 144 U. S. 488, 36 L. ed. 514, 12 Sup. Ct. Rep. 734.

Finally, there was evidence that the pietures were copyrighted before publication. There may be a question whether the use by the defendant for Wallace was not lawful within the terms of the contract with Wallace, or a more general one as to what rights the plaintiff reserved. But we cannot pass upon these questions as matter of law; they will be for the jury when the case is tried again, and therefore we come at once to the ground of decision in the courts below. That ground was not found in any variance between pleading and proof, such as was put forward in argument, but in the nature and purpose of the designs.

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, 28 L. ed. 349, 4 Sup. Ct. Rep. 279. It is obvious also that the plaintiff's 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. Blunt v. Patten, 2 Paise, 397, 400, Fed. Cas. No. 1,580. See Kelly v. [250] Morris 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.

If there is a restriction it is not to be found in the limited pretensions of these particular works. The least pretentious picture has more originality in it than directories and the like, which may be copyrighted. Drone, Copyright, 153. See Henderson v. Tompkins, 60 Fed. 758, 765. The amount of training required for humbler efforts than those before us is well indicated by Ruskin. 'If any young person, after being taught what is, in polite circles, called 'drawing,' will try to copy the commonest piece of real work,—suppose a lithograph on the title page of a new opera air, or a woodcut in the cheapest illustrated newspaper of the day,—they will find themselves entirely beaten.' Elements of Drawing, first ed. 3. There is no reason to doubt that these prints in their ensemble and in all their details, in their design and particular combinations of figures, lines, and colors, are the original work of the plaintiffs' designer. If it be necessary, there is express testimony to that effect. It would be pressing the defendant's right to the verge, if not beyond, to leave the question of originality to the jury upon the evidence in this case, as was done in Hegeman v. Springer, 49 C. C. A. 86, 110 Fed. 374.

We assume that the construction of Rev. Stat. § 4952 (U. S. Comp. Stat. 1901, p. 3406), allowing a copyright to the 'author, designer, or proprietor . . . of any engraving, cut, print . . . [or] chromo' is affected by the act of 1874 (18 Stat. at L. 78, 79, chap. 301, § 3, U. S. Comp. Stat. 1901, p. 3412). 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.

[251] 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 Muller'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 of little merit or of humble 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 as legitimate a subject for illustration as any other. A rule cannot be laid down that would excommunicate the paintings of Degas.

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 [252] 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. See Henderson v. Tompkins, 60 Fed. 758, 765. We are of opinion that there was evidence that the plaintiffs have rights entitled to the protection of the law.

The judgment of the Circuit Court of Appeals is reversed; the judgment of the Circuit Court is also reversed and the cause remanded to that court with directions to set aside the verdict and grant a new trial.

Mr. Justice Harlan, dissenting:

Judges Lurton, Day, and Severens, of the circuit court of appeals, concurred in affirming the judgment of the district court. Their views were thus expressed in an opinion delivered by Judge Lurton: 'What we hold is this: That if a chromo, lithograph, or other print, engraving, or picture has no other use than that of a mere advertisement, and no value aside from this function, it would not be promotive of the useful arts, within the meaning of the constitutional provision, to protect the 'author' in the exclusive use thereof, and the copyright statute should not be construed as including such a publication, if any other construction is admissible. If a mere label simply designating or describing an article to which it is attached, and which has no value separated from the article, does not come within the constitutional clause upon the subject of copyright, it must follow that a pictorial illustration designed and useful only as an advertisement, and having no intrinsic value other than its function as an advertisement, must be equally without the obvious meaning of the Constitution. [253] It must have some connection with the fine arts to give it intrinsic value, and that it shall have is the meaning which we attach to the act of June 18, 1874 (18 Stat. at L. 78, chap. 301, U. S. Comp. Stat. 1901, p. 3411), amending the provisions of the copyright law. We are unable to discover anything useful or meritorious in the design copyrighted by the plaintiffs in error other than as an advertisement of acts to be done or exhibited to the public in Wallace's show. No evidence, aside from the deductions which are to be drawn from the prints themselves, was offered to show that these designs had any original artistic qualities. The jury could not reasonably have found merit or value aside from the purely business object of advertising a show, and the instruction to find for the defendant was not error. Many other points have been urged as justifying the result reached in the court below. We find it unnecessary to express any opinion upon them, in view of the conclusion already announced. The judgment must be affirmed.' Courier Lithographing Co. v. Donaldson Lithographing Co. 44 C. C. A. 296, 104 Fed. 993, 996.

I entirely concur in these views, and therefore dissent from the opinion and judgment of this court. The clause of the Constitution giving Congress power to promote the progress of science and useful arts, by securing for limited terms to authors and inventors the exclusive right to their respective works and discoveries, does not, as I think, embrace a mere advertisement of a circus.

Mr. Justice McKenna authorizes me to say that he also dissents.

499 U.S. 340 (1991)

Feist Publications, Inc.
v.
Rural Telephone Service Co., Inc.

No. 89-1909

Supreme Court of the United States

Argued January 9, 1991

Decided March 27, 1991

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE TENTH CIRCUIT

Kyler Knobbe argued the cause and filed briefs for petitioner.

James M. Caplinger, Jr., argued the cause and filed a brief for respondent.^[1]

JUSTICE O'CONNOR delivered the opinion of the Court.

This case requires us to clarify the extent of copyright protection available to telephone directory white pages.

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 area-wide directories cover a much larger geographical range, reducing the need to call directory assistance or 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.

As the sole provider of telephone service in its service area, Rural obtains subscriber information quite easily. Persons desiring telephone service must apply to Rural and provide their names and addresses; Rural then assigns them a telephone number. Feist is not a telephone company, let alone one with monopoly status, and therefore lacks independent access to any subscriber information. To obtain white pages listings for its area-wide directory, Feist approached each of the 11 telephone companies operating in northwest Kansas and offered to pay for the right to use its white pages listings.

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. In a decision subsequent to that which we review here, the District Court determined that this was precisely the reason Rural refused to license its listings. The refusal was motivated by an unlawful purpose "to extend its monopoly in telephone service to a monopoly in yellow pages advertising." Rural Telephone Service Co. v. Feist Publications, Inc., 737 F. Supp. 610, 622 (Kan. 1990).

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 1983 directory were identical to listings in Rural's 1982-1983 white pages. App. 54 (¶ 15-16), 57. Four of these were fictitious listings that Rural had inserted into its directory to detect copying.

Rural sued for copyright infringement in the District Court for the District of Kansas taking the position that Feist, in compiling its own directory, could not use the information contained in Rural's white pages. Rural asserted that Feist's employees were obliged to travel door-to-door or conduct a telephone survey to discover the same information for themselves. Feist responded that such efforts were economically impractical and, in any event, unnecessary because the information copied was beyond the scope of copyright protection. The District Court granted summary judgment to Rural, explaining that "[c]ourts have consistently held that telephone directories are copyrightable" and citing a string of lower court decisions. 663 F. Supp. 214, 218 (1987). In an unpublished opinion, the Court of Appeals for the Tenth Circuit affirmed "for substantially the reasons given by the district court." App. to Pet. for Cert. 4a, judgt. order reported at 916 F. 2d 718 (1990). We granted certiorari, 498 U.S. 808 (1990), to determine whether the copyright in Rural's directory protects the names, towns, and telephone numbers copied by Feist.

II

A

This case concerns the interaction of two well-established propositions. The first is that facts are not copyrightable; the other, that compilations of facts generally are. Each of these propositions possesses an impeccable pedigree. That there can be no valid copyright in facts is universally understood. The most fundamental axiom of copyright law is that "[n]o author may copyright his ideas or the facts he narrates." Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985). Rural wisely concedes this point, noting in its brief that "[f]acts and discoveries, of course, are not themselves subject to copyright protection." Brief for Respondent 24. At the same time, however, it is beyond dispute that compilations of facts are within the subject matter of copyright. Compilations were expressly mentioned in the Copyright Act of 1909, and again in the Copyright Act of 1976.

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. Yet copyright law seems to contemplate that compilations that consist exclusively of facts are potentially within its scope.

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. See Harper & Row, supra, at 547-549. 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., § 1.08[C][1]. Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F. 2d 49, 54 (CA2 1936).

Originality is a constitutional requirement. The source of Congress' power to enact copyright laws is Article I, § 8, cl. 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, 111 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.

In The Trade-Mark Cases, the Court addressed the constitutional scope of "writings." For a particular work to be classified "under the head of writings of authors," the Court determined, "originality is required." 100 U.S., at 94. The Court explained that originality requires independent creation plus a modicum of creativity: "[W]hile the word writings may be liberally construed, as it has been, to include original designs for engraving, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like." Ibid. (emphasis in original).

In Burrow-Giles, the Court distilled the same requirement from the Constitution's use of the word "authors." The Court defined "author," in a constitutional sense, to mean "he to whom anything owes its origin; originator; maker." 111 U. S., at 58 (internal quotation marks omitted). As in The Trade-Mark Cases, the Court emphasized the creative component of originality. It described copyright as being limited to "original intellectual conceptions of the author," 111 U. S., at 58, and stressed the importance of requiring an author who accuses another of infringement to prove "the existence of those facts of originality, of intellectual production, of thought, and conception." Id., at 59-60.

The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles remains the touchstone of copyright protection today. See Goldstein v. California, 412 U. S. 546, 561-562 (1973). It is the very "premise of copyright law." Miller v. Universal City Studios, Inc., 650 F. 2d 1365, 1368 (CA5 1981). Leading scholars agree on this point. As one pair of commentators succinctly puts it: "The originality requirement is constitutionally mandated for all works." Patterson & Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations, 36 UCLA L. Rev. 719, 763, n. 155 (1989) (emphasis in original) (hereinafter Patterson & Joyce). Accord, id., at 759-760, and n. 140; Nimmer § 1.06[A] ("[O]riginality is a statutory as well as a constitutional requirement"); id., § 1.08[C][1] ("[A] modicum of intellectual labor . . . clearly constitutes an essential constitutional element").

It is this bedrock principle of copyright that mandates the law's seemingly disparate treatment of facts and factual compilations. "No one may claim originality as to facts." Id., § 2.11[A], p. 2-157. 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. To borrow from Burrow-Giles, one who discovers a fact is not its "maker" or "originator." 111 U.S., at 58. "The discoverer merely finds and records." Nimmer § 2.03[E]. 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. Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516, 525 (1981) (hereinafter Denicola). Census data therefore do not trigger copyright because these data are not "original" in the constitutional sense. Nimmer § 2.03[E]. 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." Miller, supra, at 1369.

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. Nimmer §§ 2.11[D], 3.03; Denicola 523, n. 38. Thus, even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement. See Harper & Row, 471 U.S., at 547. Accord, Nimmer § 3.03.

This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author. Patterson & Joyce 800-802; Ginsburg, Creation and Commercial Value: Copyright Protection of Works of Information, 90 Colum. L. Rev. 1865, 1868, and n. 12 (1990) (hereinafter Ginsburg). Thus, if the compilation author clothes facts with an original collocation of words, he or she may be able to claim a copyright in this written expression. Others may copy the underlying facts from the publication, but not the precise words used to present them. In Harper & Row, for example, we explained that President Ford could not prevent others from copying bare historical facts from his autobiography, see 471 U. S., at 556-557, but that he could prevent others from copying his "subjective descriptions and portraits of public figures." Id., at 563. Where the compilation author adds no written expression but rather lets the facts speak for themselves, the expressive element is more elusive. The only conceivable expression is the manner in which the compiler has selected and arranged the facts. Thus, if the selection and arrangement are original, these elements of the work are eligible for copyright protection. See Patry, Copyright in Compilations of Facts (or Why the "White Pages" Are Not Copyrightable), 12 Com. & Law 37, 64 (Dec. 1990) (hereinafter Patry). No matter how original the format, however, the facts themselves do not become original through association. See Patterson & Joyce 776.

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. As one commentator explains it: "[N]o matter how much original authorship the work displays, the facts and ideas it exposes are free for the taking . . . . [T]he very same facts and ideas may be divorced from the context imposed by the author, and restated or reshuffled by second comers, even if the author was the first to discover the facts or to propose the ideas." Ginsburg 1868.

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, cl. 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, at 556-557. 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.

This Court has long recognized that the fact/expression dichotomy limits severely the scope of protection in fact-based works. More than a century ago, the Court observed: "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." Baker v. Selden, 101 U.S. 99, 103 (1880). We reiterated this point in Harper & Row:

"[N]o author may copyright facts or ideas. The copyright is limited to those aspects of the work—termed 'expression'—that display the stamp of the author's originality.

"[C]opyright does not prevent subsequent users from copying from a prior author's work those constituent elements that are not original—for example . . . facts, or materials in the public domain—as long as such use does not unfairly appropriate the author's original contributions." 471 U.S., at 547-548 (citation omitted).

This, then, resolves the doctrinal tension: Copyright treats facts and factual compilations in a wholly consistent manner. Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves.

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.

The 1909 Act embodied the originality requirement, but not as clearly as it might have. See Nimmer § 2.01. The subject matter of copyright was set out in §§ 3 and 4 of the Act. Section 4 stated that copyright was available to "all the writings of an author." 35 Stat. 1076. By using the words "writings" and "author"—the same words used in Article I, § 8, of the Constitution and defined by the Court in The Trade-Mark Cases and Burrow-Giles—the statute necessarily incorporated the originality requirement articulated in the Court's decisions. It did so implicitly, however, thereby leaving room for error.

Section 3 was similarly ambiguous. It stated that the copyright in a work protected only "the copyrightable component parts of the work." It thus stated an important copyright principle, but failed to identify the specific characteristic—originality—that determined which component parts of a work were copyrightable and which were not.

Most courts construed the 1909 Act correctly, notwithstanding the less-than-perfect statutory language. They understood from this Court's decisions that there could be no copyright without originality. See Patterson & Joyce 760-761. As explained in the Nimmer treatise: "The 1909 Act neither defined originality, nor even expressly required that a work be 'original' in order to command protection. However, the courts uniformly inferred the requirement from the fact that copyright protection may only be claimed by 'authors'. . . . It was reasoned that since an author is 'the . . . creator, originator' it follows that a work is not the product of an author unless the work is original." Nimmer § 2.01 (footnotes omitted) (citing cases).

But some courts misunderstood the statute. See, e.g., Leon v. Pacific Telephone & Telegraph Co., 91 F. 2d 484 (CA9 1937); Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83 (CA2 1922). These courts ignored §§ 3 and 4, focusing their attention instead on § 5 of the Act. Section 5, however, was purely technical in nature: It provided that a person seeking to register a work should indicate on the application the type of work, and it listed 14 categories under which the work might fall. One of these categories was "[b]ooks, including composite and cyclopædic works, directories, gazetteers, and other compilations." § 5(a). Section 5 did not purport to say that all compilations were automatically copyrightable. Indeed, it expressly disclaimed any such function, pointing out that "the subject-matter of copyright [i]s defined in section four." Nevertheless, the fact that factual compilations were mentioned specifically in § 5 led some courts to infer erroneously that directories and the like were copyrightable per se, "without any further or precise showing of original—personal—authorship." Ginsburg 1895.

Making matters worse, these 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., 281 F., 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." Id., at 88-89 (internal quotation marks omitted). "Sweat of the brow" courts thereby eschewed the most fundamental axiom of copyright law—that no one may copyright facts or ideas. See Miller v. Universal City Studios, Inc., 650 F. 2d, at 1372 (criticizing "sweat of the brow" courts because "ensur[ing] that later writers obtain the facts independently . . . is precisely the scope of protection given . . . copyrighted matter, and the law is clear that facts are not entitled to such protection").

Decisions of this Court applying the 1909 Act make clear that the statute did not permit the "sweat of the brow" approach. The best example is International News Service v. Associated Press, 248 U. S. 215 (1918). In that decision, the Court stated unambiguously that the 1909 Act conferred copyright protection only on those elements of a work that were original to the author. International News Service had conceded taking news reported by Associated Press and publishing it in its own newspapers. Recognizing that § 5 of the Act specifically mentioned "'periodicals, including newspapers,'" § 5(b), the Court acknowledged that news articles were copyrightable. Id., at 234. It flatly rejected, however, the notion that the copyright in an article extended to the factual information it contained: "[T]he news element—the information respecting current events contained in the literary production—is not the creation of the writer, but is a report of matters that ordinarily are publici juris; it is the history of the day." Ibid.^[2]

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 (CA2 1966), cert. denied, 385 U. S. 1009 (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. 3-23 (footnote omitted).

C

"Sweat of the brow" decisions did not escape the attention of the Copyright Office. When Congress decided to over-haul the copyright statute and asked the Copyright Office to study existing problems, see Mills Music, Inc. v. Snyder, 469 U. S. 153, 159 (1985), the Copyright Office promptly recommended that Congress clear up the confusion in the lower courts as to the basic standards of copyrightability. The Register of Copyrights explained in his first report to Congress that "originality" was a "basic requisit[e]" of copyright under the 1909 Act, but that "the absence of any reference to [originality] in the statute seems to have led to misconceptions as to what is copyrightable matter." Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm. Print 1961). The Register suggested making the originality requirement explicit. Ibid.

Congress took the Register's advice. In enacting the Copyright Act of 1976, 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: "The two fundamental criteria of copyright protection [are] originality and fixation in tangible form . . . . The phrase 'original works of authorship,' which is purposely left undefined, is intended to incorporate without change the standard of originality established by the courts under the present [1909] copyright statute." H. R. Rep. No. 94-1476, p. 51 (1976) (emphasis added) (hereinafter H. R. Rep.); S. Rep. No. 94-473, p. 50 (1975) (emphasis added) (hereinafter S. Rep.). This sentiment was echoed by the Copyright Office: "Our intention here is to maintain the established standards of originality. . . ." Supplementary Report of the Register of Copyrights on the General Revision of U.S. Copyright Law, 89th Cong., 1st Sess., pt. 6, p. 3 (H. Judiciary Comm. Print 1965) (emphasis added).

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 1976 Act deleted this section and replaced it with § 102(b), which identifies specifically those elements of a work for which copyright is not available: "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." Section 102(b) is universally understood to prohibit any copyright in facts. Harper & Row, supra, at 547, 556. Accord, Nimmer § 2.03[E] (equating facts with "discoveries"). As with § 102(a), Congress emphasized that § 102(b) did not change the law, but merely clarified it: "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., at 57; S. Rep., at 54.

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 § 103.

The definition of "compilation" is found in § 101 of the 1976 Act. It defines a "compilation" in the copyright sense as "a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship" (emphasis added).

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, as emphasized above by the italics. The statute identifies three distinct elements and requires each to be met for a work to qualify as a copyrightable compilation: (1) the collection and assembly of pre-existing material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination, or arrangement, of an "original" work of authorship. "[T]his tripartite conjunctive structure is self-evident, and should be assumed to 'accurately express the legislative purpose.'" Patry 51, quoting.

At first glance, the first requirement does not seem to tell us much. It merely describes what one normally thinks of as a compilation—a collection of pre-existing material, facts, or data. What makes it significant is that it is not the sole requirement. 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."

The third requirement is also illuminating. It emphasizes that a compilation, like any other work, is copyrightable only if it satisfies the originality requirement ("an original work of authorship"). Although § 102 states plainly that the originality requirement applies to all works, the point was emphasized with regard to compilations to ensure that courts would not repeat the mistake of the "sweat of the brow" courts by concluding that fact-based works are treated differently and measured by some other standard. As Congress explained it, the goal was to "make plain that the criteria of copyrightable subject matter stated in section 102 apply with full force to works . . . containing preexisting material." H. R. Rep., at 57; S. Rep., at 55.

The key to the statutory definition is the second requirement. It instructs courts that, in determining whether a fact-based work is an original work of authorship, they should focus on the manner in which the collected facts have been selected, coordinated, and arranged. This is a straightforward application of the originality requirement. Facts are never original, so the compilation author can claim originality, if at all, only in the way the facts are presented. To that end, the statute dictates that the principal focus should be on whether the selection, coordination, and arrangement are sufficiently original to merit protection.

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. See Patry 57, and n. 76. Otherwise, the phrase "in such a way" is meaningless and Congress should have defined "compilation" simply as "a work formed by the collection and assembly of preexisting materials or data that are selected, coordinated, or arranged." That Congress did not do so is dispositive. In accordance with "the established principle that a court should give effect, if possible, to every clause and word of a statute," Moskal v. United States, 498 U. S. 103, 109-110 (1990) (internal quotation marks omitted), we conclude that the statute envisions that there will be some fact-based works in which the selection, coordination, and arrangement are not sufficiently original to trigger copyright protection.

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. See generally Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (referring to "the narrowest and most obvious limits"). 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." § 103(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 most important point here is one that is commonly misunderstood today: copyright. . . has no effect one way or the other on the copyright or public domain status of the preexisting material." H. R. Rep., at 57; S. Rep., at 55. 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. See, e.g., Jeweler's Circular Publishing Co., 281 F., at 88-89. 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 1976 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, § 101.

The 1976 revisions have proven largely successful in steering courts in the right direction. A good example is Miller v. Universal City Studios, Inc., 650 F. 2d, at 1369-1370: "A copyright in a directory . . . is properly viewed as resting on the originality of the selection and arrangement of the factual material, rather than on the industriousness of the efforts to develop the information. Copyright protection does not extend to the facts themselves, and the mere use of information contained in a directory without a substantial copying of the format does not constitute infringement" (citation omitted). Additionally, the Second Circuit, which almost 70 years ago issued the classic formulation of the "sweat of the brow" doctrine in Jeweler's Circular Publishing Co., has now fully repudiated the reasoning of that decision. See, e.g., Financial Information, Inc. v. Moody's Investors Service, Inc., 808 F. 2d 204, 207 (CA2 1986), cert. denied, 484 U. S. 820 (1987); Financial Information, Inc. v. Moody's Investors Service, Inc., 751 F. 2d 501, 510 (CA2 1984) (Newman, J., concurring); Hoehling v. Universal City Studios, Inc., 618 F. 2d 972, 979 (CA2 1980). Even those scholars who believe that "industrious collection" should be rewarded seem to recognize that this is beyond the scope of existing copyright law. See Denicola 516 ("[T]he very vocabulary of copyright is ill suited to analyzing property rights in works of nonfiction"); id., at 520-521, 525; Ginsburg 1867, 1870.

III

There is no doubt that Feist took from the white pages of Rural's directory a substantial amount of factual information. At a minimum, Feist copied the names, towns, and telephone numbers of 1,309 of Rural's subscribers. Not all copying, however, is copyright infringement. To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. See Harper & Row, 471 U.S., at 548. The first element is not at issue here; Feist appears to concede that Rural's directory, considered as a whole, is subject to a valid copyright because it contains some foreword text, as well as original material in its yellow pages advertisements. See Brief for Petitioner 18; Pet. for Cert. 9.

The question is whether Rural has proved the second element. In other words, did Feist, by taking 1,309 names, towns, and telephone numbers from Rural's white pages, copy anything that was "original" to Rural? Certainly, the raw data does not satisfy the originality requirement. Rural may have been the first to discover and report the names, towns, and telephone numbers of its subscribers, but this data does not "'ow[e] its origin'" to Rural. Burrow-Giles, 111 U. S., at 58. Rather, these bits of information are uncopyrightable facts; they existed before Rural reported them and would have continued to exist if Rural had never published a telephone directory. The originality requirement "rule[s] out protecting . . . names, addresses, and telephone numbers of which the plaintiff by no stretch of the imagination could be called the author." Patterson & Joyce 776.

Rural essentially concedes the point by referring to the names, towns, and telephone numbers as "preexisting material." Brief for Respondent 17. Section 103(b) states explicitly that the copyright in a compilation does not extend to "the preexisting material employed in the work."

The question that remains is whether Rural selected, coordinated, or arranged these uncopyrightable facts in an original way. As mentioned, originality is not a stringent standard; it does not require that facts be presented in an innovative or surprising way. It is equally true, however, that the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever. The standard of originality is low, but it does exist. See Patterson & Joyce 760, n. 144 ("While this requirement is sometimes characterized as modest, or a low threshold, it is not without effect") (internal quotation marks omitted; citations omitted). As this Court has explained, the Constitution mandates some minimal degree of creativity, see The Trade-Mark Cases, 100 U. S., at 94; and an author who claims infringement must prove "the existence of . . . intellectual production, of thought, and conception." Burrow-Giles, supra, at 59-60.

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. Persons desiring telephone service in Rural's service area fill out an application and Rural issues them a telephone number. 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. See 737 F. Supp., at 612. Accordingly, one could plausibly conclude that this selection was dictated by state law, not by Rural.

Nor can Rural claim originality in its coordination and arrangement of facts. The white pages do nothing more than list Rural's subscribers in alphabetical order. This arrangement may, technically speaking, owe its origin to Rural; no one disputes that Rural undertook the task of alphabetizing the names itself. But there is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course. See Brief for Information Industry Association et al. as Amici Curiae 10 (alphabetical arrangement "is universally observed in directories published by local exchange telephone companies"). It is not only unoriginal, it is practically inevitable. This time-honored tradition does not possess the minimal creative spark required by the Copyright Act and the Constitution.

We conclude that the names, towns, and telephone numbers copied by Feist were not original to Rural and therefore were not protected by the copyright in Rural's combined white and yellow pages directory. As a constitutional matter, copyright protects only those constituent elements of a work that possess more than a de minimis quantum of creativity. Rural's white pages, limited to basic subscriber information and arranged alphabetically, fall short of the mark. As a statutory matter, 17 U.S.C. § 101 does not afford protection from copying to a collection of facts that are selected, coordinated, and arranged in a way that utterly lacks originality. Given that some works must fail, we cannot imagine a more likely candidate. Indeed, were we to hold that Rural's white pages pass muster, it is hard to believe that any collection of facts could fail.

Because Rural's white pages lack the requisite originality, Feist's use of the listings cannot constitute infringement. This decision should not be construed as demeaning Rural's efforts in compiling its directory, but rather as making clear that copyright rewards originality, not effort. As this Court noted more than a century ago, "'great praise may be due to the plaintiffs for their industry and enterprise in publishing this paper, yet the law does not contemplate their being rewarded in this way.'" Baker v. Selden, 101 U. S., at 105.

The judgment of the Court of Appeals is

Reversed.

JUSTICE BLACKMUN concurs in the judgment.

[1] Briefs of amici curiae urging reversal were filed for the Association of North American Directory Publishers et al. by Theodore Case Whitehouse; for the International Association of Cross Reference Directory Publishers by Richard D. Grauer and Kathleen McCree Lewis; and for the Third-Class Mail Association by Ian D. Volner.

Briefs of amici curiae urging affirmance were filed for Ameritech et al. by Michael K. Kellogg, Charles Rothfeld, Douglas J. Kirk, Thomas P. Hester, and Harlan Sherwat; for the Association of American Publishers, Inc., by Robert G. Sugarman and R. Bruce Rich; for GTE Corp. by Kirk K. Van Tine, Richard M. Cahill, and Edward R. Sublett; for the National Telephone Cooperative Association by L. Marie Guillory and David Cosson; for the United States Telephone Association by Richard J. Rappaport and Keith P. Schoeneberger; and for West Publishing Co. by Vance K. Opperman and James E. Schatz.

Briefs of amici curiae were filed for Bellsouth Corp. by Anthony B. Askew, Robert E. Richards, Walter H. Alford, and Vincent L. Sgrosso; for the Direct Marketing Association, Inc., by Robert L. Sherman; for Haines and Co., Inc., by Jeremiah D. McAuliffe, Bernard A. Barken, and Eugene Gressman; and for the Information Industry Association et al. by Steven J. Metalitz and Angela Burnett.

[2] The Court ultimately rendered judgment for Associated Press on non-copyright grounds that are not relevant here. See 248 U.S., at 235, 241-242.

[446] Mary D. Dorman, for Plaintiff.

S. Raye Mitchell, The Mitchell Law Group, PC, for Defendants.

KAPLAN, District Judge.

The parties dispute whether a photograph used in billboard advertisements for [447] Coors Light beer infringes the plaintiff's copyright in a photograph of a basketball star. The defendants almost certainly imitated the plaintiff's photograph. The major question is whether and to what extent what was copied is protected. The case requires the Court to consider the nature of copyright protection in photographs. The matter is before the Court on cross motions for summary judgment.

Jonathan Mannion is a freelance photographer who specializes in portraits of celebrity athletes and musicians in the rap and rhythm-and-blues worlds.^[1] In 1999 he was hired by SLAM, a basketball magazine, to photograph basketball star Kevin Garnett in connection with an article that the magazine planned to publish about him.^[2] The article, entitled "Above the Clouds," appeared as the cover story of the December 1999 issue of the magazine.^[3] 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.^[4]

The Garnett Photograph, which is reproduced below,^[5] 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 close-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.^[6]

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.^[7] One of CHWA's "comp boards" — a "comp board" is an image created by an advertising company to convey a proposed design^[8] — used a manipulated version of the Garnett Photograph and superimposed on it the words "Iced Out" ("ice" being slang for diamonds^[9]) and a picture of a can of Coors Light beer (the "Iced Out Comp Board").^[10] [448] CHWA obtained authorization from Mannion's representative to use the Garnett Photograph for this purpose.^[11]

The Iced Out Comp Board, reproduced below, 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.^[12] CHWA 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.^[13]

Coors and CHWA selected for a Coors billboard a photograph (the "Coors Billboard"), reproduced below, that resembles the Iced Out Comp Board.^[14] The Coors Billboard depicts, in black-and-white, the torso of a muscular black man, albeit a model other than Garnett,^[15] 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.^[16]

Mannion subsequently noticed the Coors Billboard at two locations in the Los Angeles area.^[17] He applied for registration of his copyright of the Garnett Photograph in 2003^[18] and brought this action for infringement in February of 2004. The registration was completed in May 2004.^[19] The parties each move for summary judgment.

A. Summary Judgment Standard

Summary judgment is appropriate if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law.^[20] The moving party has the burden of demonstrating the absence of a genuine issue of material fact,^[21] and the Court must view the facts in the light most favorable to the nonmoving party.^[22] "Where cross-motions for summary judgment are filed, a court `must evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration.'"^[23]  [449]

B. The Elements of Copyright Infringement

"To prove infringement, a plaintiff with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectible elements of plaintiff's."^[24] "Actual copying" — which is used as a term of art to mean that "the defendant, in creating its work, used the plaintiff's material as a model, template, or even inspiration"^[25] — may be shown by direct evidence, which rarely is available, or by proof of access and probative similarities (as distinguished from "substantial similarity") between the two works.^[26]

Mannion concededly owns a valid copyright in the Garnett photograph.^[27] Access is undisputed. There is ample evidence from which a trier of fact could find that CHWA actually copied the Garnett Photograph for the Coors Billboard. Thus, the major questions presented by these motions are whether a trier of fact could or must find substantial similarity between protected elements of the Garnett Photograph and the Coors Billboard.^[28] If no reasonable trier could find such similarity, [450] the defendants' motion must be granted and the plaintiff's denied. If any reasonable trier would be obliged to find such similarity (along with actual copying), the plaintiff's motion must be granted and the defendants' denied. If a reasonable trier could, but would not be required to, find substantial similarity (and actual copying), both motions must be denied.

C. 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 is well-established that "[t]he sine qua non of copyright is originality"^[29] and, accordingly, that "copyright protection may extend only to those components of a work that are original to the author."^[30] "Original" in the copyright context "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."^[31]

It sometimes is said that "copyright in the photograph conveys no rights over the subject matter conveyed in the photograph."^[32] 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.^[33] 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.^[34]

Almost any photograph "may claim the necessary originality to support a copyright."^[35] Indeed, ever since the Supreme Court considered an 1882 portrait by the celebrity photographer Napoleon Sarony of the 27-year-old Oscar Wilde,^[36] courts have articulated lists of potential components of a photograph's originality.^[37] [451] 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,"^[38] "lens and filter selection,"^[39] and "the kind of camera, the kind of film, [and] the kind of lens."^[40] 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.^[41] Protection derives from the features of the work itself, not the effort that goes into it.

This point is illustrated by Bridgeman Art Library, Ltd. v. Corel Corp.,^[42] in which this Court held that there was no copyright in photographic transparencies that sought to reproduce precisely paintings in the public domain. To be sure, a great deal of effort and expertise may have been poured into the production of the plaintiff's images, including decisions about camera, lens, and film. But the works were "slavish copies." They did not exhibit the originality necessary for copyright.^[43]

The Court therefore will examine more closely the nature of originality in a photograph. In so doing, it draws on the helpful discussion in a leading treatise on United Kingdom copyright law,^[44] which is [452] similar to our own with respect to the requirement of originality.^[45]

A photograph may be original in three respects.^[46] 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."^[47] 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.^[48]

It was originality in the rendition that was at issue in SHL Imaging, Inc. v. Artisan House, Inc.^[49] That case concerned photographs of the defendants' mirrored picture frames that the defendants commissioned from the plaintiff. The photographs were to be used by the defendants' sales force for in-person pitches. When the defendants reproduced the photographs in their catalogues and brochures, the court found infringement: "Plaintiff cannot prevent others from photographing the same frames, or using the same lighting techniques and blue sky reflection in the mirrors. What makes plaintiff's photographs original is the totality of the precise lighting selection, angle of the camera, lens and filter selection."^[50] Again, what made the photographs original was not the lens and filter selection themselves. It was the effect produced by the lens and filters selected, among other things. In any case, those effects were the basis of the originality of the works at issue in SHL Imaging.

By contrast, in Bridgeman Art Library, the goal was to reproduce exactly other works. The photographs were entirely unoriginal in the rendition, an extremely unusual circumstance. Unless a photograph replicates another work with total or near-total fidelity, it will be at least somewhat original in the rendition.

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."^[51] I will [453] refer to this type of originality as originality in timing.

One case that concerned originality in timing, among other things, was Pagano v. Chas. Beseler Co.,^[52] which addressed the copyrightability of a photograph of a scene in front of the New York Public Library at Fifth Avenue and Forty-Second Street:

The question is not, as defendant suggests, whether the photograph of a public building may properly be copyrighted. Any one may take a photograph of a public building and of the surrounding scene. It undoubtedly requires originality to determine just when to take the photograph, so as to bring out the proper setting for both animate and inanimate objects.... The photographer caught the men and women in not merely lifelike, but artistic, positions, and this is especially true of the traffic policeman.... There are other features, which need not be discussed in detail, such as the motor cars waiting for the signal to proceed.^[53]

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.^[54] An older example is Alfred Eisenstaedt's photograph of a sailor kissing a young woman on VJ Day in Times Square,^[55] 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^[56] — 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."^[57] 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^[58] and Gross v. Seligman.^[59]

[454] 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.^[60] 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"^[61] — in other words, because it was original in the rendition — its originality in the creation of the subject was more salient.^[62] 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^[63] 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."^[64]

* * * * * *

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. Thus, the copyright at issue in SHL Imaging does not protect against subsequent photographs of the picture frames because the originality of the plaintiffs' photographs was almost purely in the rendition of those frames, not in their creation or the timing of the scene captured. In Pagano, the timing of the capture of the scene in front of the New York Public Library and its rendition were original, but the copyright in the Pagano photograph does not protect against future attempts to capture a scene in front of the same building, just as a copyright in Catch of the Day would not protect against other photographers capturing images of salmon-eating bears.

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.^[65]

2. Originality of the Garnett Photograph

There can be no serious dispute that the Garnett Photograph is an original [455] 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.'"^[66] 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.^[67] 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. The Second Circuit has rejected the proposition that:

in comparing designs for copyright infringement, we are required to dissect them into their separate components, and compare only those elements which are in themselves copyrightable.... [I]f we took this argument to its logical conclusion, we might have to decide that `there can be no originality in a painting because all colors of paint have been used somewhere in the past.^[68]

3. The Idea / Expression Difficulty

Notwithstanding the originality of the Garnett Photograph, the defendants argue that the Coors Billboard does not infringe because the two, insofar as they are similar, share only "the generalized idea and concept of a young African American man wearing a white T-shirt and a large amount of jewelry."^[69]

It is true that an axiom of copyright law is that copyright does not protect "ideas," only their expression.^[70] Furthermore, when "a given idea is inseparably tied to a particular expression" so that "there is a `merger' of idea and expression," [456] courts may deny protection to the expression in order to avoid conferring a monopoly on the idea to which it inseparably is tied.^[71] But the defendants' reliance on these principles is misplaced.

The "idea" (if one wants to call it that) postulated by the defendants does not even come close to accounting for all the similarities between the two works, which extend at least to angle, pose, background, composition, and lighting. It is possible to imagine any number of depictions of a black man wearing a white T-shirt and "bling bling" that look nothing like either of the photographs at issue here.

This alone is sufficient to dispose of the defendants' contention that Mannion's claims must be rejected because he seeks to protect an idea rather than its expression. But the argument reveals an analytical difficulty in the case law about which more ought to be said. One of the main cases upon which the defendants rely is Kaplan v. Stock Market Photo Agency, Inc.,^[72] in which two remarkably similar photographs of a businessman's shoes and lower legs, taken from the top of a tall building looking down on a street below (the plaintiff's and defendants' photographs are reproduced below), were held to be not substantially similar as a matter of law because all of the similarities flowed only from an unprotected idea rather than from the expression of that idea.

But what is the "idea" of Kaplan's photograph? Is it (1) a businessman contemplating suicide by jumping from a building, (2) a businessman contemplating suicide by jumping from a building, seen from the vantage point of the businessman, with his shoes set against the street far below, or perhaps something more general, such as (3) a sense of desperation produced by urban professional life?

If the "idea" is (1) or, for that matter, (3), then the similarities between the two photographs flow from something much more than that idea, for it have would been possible to convey (1) (and (3)) in any number of ways that bear no obvious similarities to Kaplan's photograph. (Examples are a businessman atop a building seen from below, or the entire figure of the businessman, rather than just his shoes or pants, seen from above.) If, on the other hand, the "idea" is (2), then the two works could be said to owe much of their similarity to a shared idea.^[73]

[457] To be sure, the difficulty of distinguishing between idea and expression long has been recognized. Judge Learned Hand famously observed in 1930:

Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his `ideas,' to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can.^[74]

Three decades later, Judge Hand's views were essentially the same: "The test for infringement of a copyright is of necessity vague.... Obviously, no principle can be stated as to when an imitator has gone beyond copying the `idea,' and has borrowed its `expression.' Decisions must therefore inevitably be ad hoc."^[75] Since then, the Second Circuit and other authorities repeatedly have echoed these sentiments.^[76]

But there is a difference between the sort of difficulty Judge Hand identified in Nichols and Peter Pan Fabrics and the one presented by the Kaplan rationale and the defendants' argument about ideas in this case. The former difficulty is essentially one of line-drawing, and, as Judge Hand taught, is common to most cases in most areas of the law.^[77] The latter difficulty, [458] however, is not simply that it is not always clear where to draw the line; it is that the line itself is meaningless because the conceptual categories it purports to delineate are ill-suited to the subject matter.

The idea/expression distinction arose in the context of literary copyright.^[78] For the most part, the Supreme Court has not applied it outside that context.^[79] The classic Hand formulations reviewed above also were articulated in the context of literary works. And it makes sense to speak of the idea conveyed by a literary work and to distinguish it from its expression. To take a clear example, two different authors each can describe, with very different words, the theory of special relativity. The words will be protected as expression. The theory is a set of unprotected ideas.

In the visual arts, the distinction breaks down. For one thing, it is impossible in most cases to speak of the particular "idea" captured, embodied, or conveyed by a work of art because every observer will have a different interpretation.^[80] Furthermore, it is not clear that there is any real distinction between the idea in a work of art and its expression. An artist's idea, among other things, is to depict a particular subject in a particular way. As a demonstration, a number of cases from this Circuit have observed that a photographer's "conception" of his subject is copyrightable.^[81] By "conception," the courts must mean originality in the rendition, timing, and creation of the subject — for that is what copyright protects in photography. But the word "conception" is a cousin of "concept," and both are akin to "idea." In other words, those elements of a photograph, or indeed, any work of visual art protected by copyright, could just as [459] easily be labeled "idea" as "expression."^[82]

This Court is not the first to question the usefulness of the idea/expression terminology in the context of non-verbal media. Judge Hand pointed out in Peter Pan Fabrics that whereas "[i]n the case of verbal `works', it is well settled that ... there can be no copyright in the `ideas' disclosed but only in their `expression[,]'" "[i]n the case of designs, which are addressed to the aesthetic sensibilities of the observer, the test is, if possible, even more intangible."^[83] Moreover, Judge Newman has written:

I do not deny that all of these subject matters [computer programs, wooden dolls, advertisements in a telephone directory] required courts to determine whether the first work was copyrightable and whether the second infringed protectable elements. What I question is whether courts should be making those determinations with the same modes of analysis and even the same vocabulary that was appropriate for writings.... [I]t is not just a matter of vocabulary. Words convey concepts, and if we use identical phrases from one context to resolve issues in another, we risk failing to notice that the relevant concepts are and ought to be somewhat different.^[84]

He then referred to dicta from his own decision in Warner Bros. v. American Broadcasting Companies,^[85] explaining: "I was saying ... [that] one cannot divide a visual work into neat layers of abstraction in precisely the same manner one could with a text."^[86] The Third Circuit has made a similar point:

Troublesome, too, is the fact that the same general principles are applied in claims involving plays, novels, sculpture, maps, directories of information, musical compositions, as well as artistic paintings. Isolating the idea from the expression and determining the extent of copying required for unlawful appropriation necessarily depend to some degree on whether the subject matter is words or symbols written on paper, or paint brushed onto canvas.^[87]

For all of these reasons, I think little is gained by attempting to distinguish an unprotectible "idea" from its protectible "expression" in a photograph or other work of visual art. It remains, then, to consider just what courts have been referring to [460] when they have spoken of the "idea" in a photograph.

A good example is Rogers v. Koons, in which the court observed that "[i]t is not ... the idea of a couple with eight small puppies seated on a bench that is protected, but rather Rogers' expression of this idea — as caught in the placement, in the particular light, and in the expressions of the subjects...."^[88] But "a couple with eight small puppies seated on a bench" is not necessarily the idea of Puppies, which just as easily could be "people with dogs on their laps," "the bliss of owning puppies," or even a sheepishly ironic thought such as "Ha ha! This might look cute now, but boy are these puppies going to be a lot of work!"

Rather, "a couple with eight small puppies seated on a bench" is nothing more or less than what "a young African American man wearing a white T-shirt and a large amount of jewelry"^[89] is: a description of the subject at a level of generality sufficient to avoid implicating copyright protection for an original photograph. Other copyright cases that have referred to the "idea" of a photograph also used "idea" to mean a general description of the subject or subject matter.^[90] The Kaplan decision even used these terms interchangeably: "The subject matter of both photographs is a businessperson contemplating a leap from a tall building onto the city street below. As the photograph's central idea, rather than Kaplan's expression of the idea, this subject matter is unprotectable in and of itself."^[91] Thus another photographer [461] may pose a couple with eight puppies on a bench, depict a businessman contemplating a leap from an office building onto a street, or take a picture of a black man in white athletic wear and showy jewelry. In each case, however, there would be infringement (assuming actual copying and ownership of a valid copyright) if the subject and rendition were sufficiently like those in the copyrighted work.

This discussion of course prompts the question: at what point do the similarities between two photographs become sufficiently general that there will be no infringement even though actual copying has occurred? But this question is precisely the same, although phrased in the opposite way, as one that must be addressed in all infringement cases, namely whether two works are substantially similar with respect to their protected elements. It is nonsensical to speak of one photograph being substantially similar to another in the rendition and creation of the subject but somehow not infringing because of a shared idea. Conversely, if the two photographs are not substantially similar in the rendition and creation of the subject, the distinction between idea and expression will be irrelevant because there can be no infringement. The idea/expression distinction in photography, and probably the other visual arts, thus achieves nothing beyond what other, clearer copyright principles already accomplish.

I recognize that those principles sometimes may pose a problem like that Judge Hand identified with distinguishing idea from expression in the literary context. As Judge Hand observed, however, such line-drawing difficulties appear in all areas of the law. The important thing is that the categories at issue be useful and relevant, even if their precise boundaries are sometimes difficult to delineate. In the context of photography, the idea/expression distinction is not useful or relevant.

D. Comparison of the Coors Billboard and the Garnett Photograph

The next step is to determine whether a trier of fact could or must find the Coors Billboard substantially similar to the Garnett Photograph with respect to their protected elements.

Substantial similarity ultimately is a question of fact. "The standard test for substantial similarity between two items is whether an `ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.'"^[92] The Second Circuit sometimes has applied a "more discerning observer" test when a work contains both protectible and unprotectible elements. The test "requires the court to eliminate the unprotectible elements from its consideration and to ask whether the protectible elements, standing alone, are substantially similar."^[93] The Circuit, however, is ambivalent about this test. In several cases dealing with fabric and garment designs, the Circuit has cautioned that:

[462] a court is not to dissect the works at issue into separate components and compare only the copyrightable elements.... To do so would be to take the `more discerning' test to an extreme, which would result in almost nothing being copyrightable because original works broken down into their composite parts would usually be little more than basic unprotectible elements like letters, colors and symbols.^[94]

Dissecting the works into separate components and comparing only the copyrightable elements, however, appears to be exactly what the "more discerning observer" test calls for.

The Circuit indirectly spoke to this tension in the recent case of Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc.^[95] There the trial court purported to use the more discerning observer test but nonetheless compared the "total-concept-and-feel" of carpet designs.^[96] The Circuit observed that the more discerning observer test is "intended to emphasize that substantial similarity must exist between the defendant's allegedly infringing design and the protectible elements in the plaintiff's design."^[97] In making its own comparison, the Circuit did not mention the "more discerning observer" test at all, but it did note that:

"the total-concept-and-feel locution functions as a reminder that, while the infringement analysis must begin by dissecting the copyrighted work into its component parts in order to clarify precisely what is not original, infringement analysis is not simply a matter of ascertaining similarity between components viewed in isolation.... The court, confronted with an allegedly infringing work, must analyze the two works closely to figure out in what respects, if any, they are similar, and then determine whether these similarities are due to protected aesthetic expressions original to the allegedly infringed work, or whether the similarity is to something in the original that is free for the taking."^[98]

In light of these precedents, the Court concludes that it is immaterial whether the ordinary or more discerning observer test is used here because the inquiries would be identical. The cases agree that the relevant comparison is between the protectible elements in the Garnett Photograph and the Coors Billboard, but that those elements are not to be viewed in isolation.

The Garnett Photograph is protectible to the extent of its originality in the rendition and creation of the subject. Key elements of the Garnett Photograph that are in the public domain — such as Kevin Garnett's likeness — are not replicated in the Coors Billboard. Other elements arguably in the public domain — such as the existence of a cloudy sky, Garnett's pose, his white T-shirt, and his specific jewelry — may not be copyrightable in and of themselves, but their existence and arrangement in this photograph indisputably contribute to its originality. Thus the fact that the Garnett Photograph includes certain elements that would not be copyrightable in isolation does not affect the nature of the comparison. The question is whether the aesthetic appeal of the two images is the same.

The two photographs share a similar composition and angle. The lighting is similar, and both use a cloudy sky as backdrop. [463] The subjects are wearing similar clothing and similar jewelry arranged in a similar way. The defendants, in other words, appear to have recreated much of the subject that Mannion had created and then, through imitation of angle and lighting, rendered it in a similar way. The similarities here thus relate to the Garnett Photograph's originality in the rendition and the creation of the subject and therefore to its protected elements.

There of course are differences between the two works. The similarity analysis may take into account some, but not all, of these. It long has been the law that "no plagiarist can excuse the wrong by showing how much of his work he did not pirate."^[99] Thus the addition of the words "Iced Out" and a can of Coors Light beer may not enter into the similarity analysis.

Other differences, however, are in the nature of changes rather than additions. One image is black and white and dark, the other is in color and bright. One is the mirror image of the other. One depicts only an unidentified man's torso, the other the top three-fourths of Kevin Garnett's body. The jewelry is not identical. One T-shirt appears to fit more tightly than the other. These changes may enter the analysis because "[i]f the points of dissimilarity not only exceed the points of similarity, but indicate that the remaining points of similarity are, within the context of plaintiff's work, of minimal importance... then no infringement results."^[100]

The parties have catalogued at length and in depth the similarities and differences between these works. In the last analysis, a reasonable jury could find substantial similarity either present or absent. As in Kisch v. Ammirati & Puris Inc.,^[101] which presents facts as close to this case as can be imagined, the images are such that infringement cannot be ruled out — or in — as a matter of law.

The defendants' motion for summary judgment dismissing the complaint (docket item 18) is granted to the extent that the complaint seeks relief for violation of the plaintiff's exclusive right to prepare derivative works and otherwise denied. The plaintiff's cross motion for summary judgment is denied.

SO ORDERED.

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Notes:

[1] Mannion Decl. ¶ 1.

[2] Id. ¶ 3.

[3] See Pl.Ex. A.

[4] See id.; Def. Ex. A; Am. Cpt. Ex. B.

[5] Published opinions in copyright cases concerning graphical works do not often include reproductions of those works. Two exceptions are Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1014-17 (2d Cir.1995) and Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 237 F.Supp.2d 376, 390-93 (S.D.N.Y.2002). Such reproductions are helpful in understanding the opinions, even if the images are not ideal because the West reporters print in black and white.

[6] Def. Ex. A; Pl.Ex. A; Am. Cpt. Ex. B; Mannion Decl. ¶¶ 4-5, 7-8.

[7] Cook Decl. ¶ 2.

[8] See Mannion Decl. ¶ 12; Cook Decl. ¶ 4; Fournier v. Erickson, 202 F.Supp.2d 290, 292 (S.D.N.Y.2002).

[9] See, e.g., AMERICAN HERITAGE DICTIONARY 868 (4th ed.2000).

[10] See Cook Decl. ¶¶ 3, 5; Pl.Ex. B.

[11] See Cook Decl. ¶ 5; Def. Ex. B.

The authorization was for "[u]sage in internal corporate merchandising catalog," Def. Ex. B, which Mannion concedes extended to the Iced Out Comp Board. See Pl. Opening Mem. 2; Pl. Reply Mem. 2.

[12] See Pl.Ex. B.

[13] Cook Decl. ¶ 6; Mannion Decl. ¶¶ 12, 17-19.

[14] See Def. Ex. C; Am. Cpt. Ex. C.

[15] Cook Decl. ¶ 7.

[16] See Def. Ex. C; Am. Cpt. Ex. C.

[17] Mannion Decl. ¶ 20.

[18] Am. Cpt. Ex. A.

[19] Id.

[20] FED.R.CIV.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); White v. ABCO Eng'g Corp., 221 F.3d 293, 300 (2d Cir.2000).

[21] Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970).

[22] United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962); Hetchkop v. Woodlawn at Grassmere, Inc., 116 F.3d 28, 33 (2d Cir.1997).

[23] Hotel Employees & Restaurant Employees Union, Local 100 v. City of New York Dep't of Parks & Recreation, 311 F.3d 534, 543 (2d Cir.2002) (quoting Heublein, Inc. v. United States, 996 F.2d 1455, 1461 (2d Cir.1993) (internal quotation marks omitted)); accord Make the Road by Walking, Inc. v. Turner, 378 F.3d 133, 142 (2d Cir.2004).

[24] Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995) (second emphasis added) (quoting Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122-23 (2d Cir.1994)); accord Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir.2003) (citing Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137-38 (2d Cir.1998)); Boisson v. Banian, Ltd., 273 F.3d 262, 267-68 (2d Cir.2001) (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) and Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir.1998)); Fournier v. Erickson, 202 F.Supp.2d 290, 294 (S.D.N.Y.2002).

[25] 4 NIMMER ON COPYRIGHT § 13.01[B], at 13-8 ("NIMMER").

[26] E.g., Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir.2003); Boisson, 273 F.3d at 267-68 (citing Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992)).

[27] See Def. Opening Mem. 7; Def. Supp. Mem. 5.

[28] Contrary to the implication in some of the plaintiff's papers, see Am. Cpt. ¶¶ 27-29; Pl. Opening Mem. 6; Pl. Supp. Mem. 6-10; see also Tr. (1/27/05) 8-11, 14-19, 25, 30-32, 34-36 ("Tr."), this case does not require a determination whether the defendants have violated the plaintiff's exclusive right under 17 U.S.C. § 106(2) to prepare derivative works based upon the Garnett Photograph. The image used on the Iced Out Comp Board may have been a derivative work based upon the Garnett Photograph, see 17 U.S.C. § 101 (2005), but CHWA obtained the right to use the Garnett Photograph in connection with the Iced Out Comp Board.

The question whether the Coors Billboard is a derivative work based upon the Garnett Photograph is immaterial. "[A] work will be considered a derivative work only if it would be considered an infringing work" absent consent. 1 NIMMER § 3.01, at 3-4. That is, the infringement inquiry logically precedes or at least controls the derivative work inquiry.

Finally — again contrary to the plaintiff's suggestion, see Pl. Opening Mem. 9; Pl. Reply Mem. 2-4; Tr. 21-24 — also immaterial is the question whether the Coors Billboard may infringe Mannion's copyright if the Coors Billboard is not substantially similar to the Garnett Photograph but is substantially similar to the Garnett Photograph's hypothesized derivative on the Iced Out Comp Board. Mannion has no registered copyright in the image on the Iced Out Comp Board, which precludes a suit for infringement based upon that image. Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115-117 (2d Cir.2003); 17 U.S.C. § 411(a) (2005).

The only question in this case is whether the Coors Billboard infringes the copyright in the Garnett Photograph. The only material comparison therefore is between those two images. Accordingly, the complaint is dismissed to the extent that it asserts a violation of Mannion's exclusive right to prepare derivative works.

[29] Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

[30] Id. at 348, 111 S.Ct. 1282.

[31] Id. at 345, 111 S.Ct. 1282 (citing 1 NIMMER §§ 2.01[A], [B] (1990)).

[32] 1 NIMMER § 2.08[E][1], at 2-130.

[33] E.g., Caratzas v. Time Life, Inc., No. 92 Civ. 6346(PKL), 1992 WL 322033, at *4 (S.D.N.Y. Oct.23, 1992) (observing, in the context of photographs of historic sites, that "Justice Holmes made it clear almost ninety years ago that actionable copying does not occur where a photographer takes a picture of the subject matter depicted in a copyrighted photograph, so long as the second photographer does not copy original aspects of the copyrighted work, such as lighting or placement of the subject.").

[34] See Rogers v. Koons, 960 F.2d 301 (2d Cir.1992); Gross v. Seligman, 212 F. 930 (2d Cir.1914).

[35] 1 NIMMER § 2.08[E][1], at 2-129; see also Bridgeman Art Library, Ltd. v. Corel Corp., 36 F.Supp.2d 191, 196 (S.D.N.Y.1999).

[36] See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 4 S.Ct. 279, 28 L.Ed. 349 (1884); SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301, 307-08 (S.D.N.Y.2000) (recounting the history of Burrow-Giles with reference to THE WAKING DREAM: PHOTOGRAPHY'S FIRST CENTURY 339-40 (Met. Museum of Art 1993)).

The photograph at issue in Burrow-Giles is reproduced in MELVILLE B. NIMMER ET AL., CASES AND MATERIALS ON COPYRIGHT 11 (6th ed. 2000) ("CASES AND MATERIALS ON COPYRIGHT").

[37] See Burrow-Giles Lithographic Co., 111 U.S. at 60, 4 S.Ct. 279 (originality of Wilde portrait founded upon overall composition, including pose, clothing, background, light, and shade, "suggesting and evoking the desired expression"); Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 116 (2d Cir.1998) ("Leibovitz is entitled to protection for such artistic elements as the particular lighting, the resulting skin tone of the subject, and the camera angle that she selected."); Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992) ("Elements of originality in a photograph may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved."); Gross v. Seligman, 212 F. 930, 931 (2d Cir.1914) ("exercise of artistic talent" reflected in "pose, light, and shade, etc."); SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301, 311 (S.D.N.Y.2000) ("What makes plaintiff's photographs original is the totality of the precise lighting selection, angle of the camera, lens and filter selection."); E. Am. Trio Prods., Inc. v. Tang Elec. Corp., 97 F.Supp.2d 395, 417 (S.D.N.Y.2000) ("The necessary originality for a photograph may be founded upon, among other things, the photographer's choice of subject matter, angle of photograph, lighting, determination of the precise time when the photograph is to be taken, the kind of camera, the kind of film, the kind of lens, and the area in which the pictures are taken."); Kisch v. Ammirati & Puris Inc., 657 F.Supp. 380, 382 (S.D.N.Y.1987) (copyrightable elements of a photograph "include such features as the photographer's selection of lighting, shading, positioning and timing.").

Even these lists are not complete. They omit such features as the amount of the image in focus, its graininess, and the level of contrast.

[38] Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992).

[39] SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301, 311 (S.D.N.Y.2000).

[40] E. Am. Trio Prods., Inc. v. Tang Elec. Corp., 97 F.Supp.2d 395, 417 (S.D.N.Y.2000) (Kaplan, J.)

[41] Feist, 499 U.S. at 359-60, 111 S.Ct. 1282.

[42] 36 F.Supp.2d 191 (S.D.N.Y.1999).

[43] Id. at 197; Bridgeman Art Library, Ltd. v. Corel Corp., 25 F.Supp.2d 421, 427 & nn. 41, 47 (S.D.N.Y.1998).

[44] HON. SIR HUGH LADDIE ET AL., THE MODERN LAW OF COPYRIGHT AND DESIGNS (3d ed. Butterworths 2000) ("LADDIE").

[45] See Copyright, Designs and Patents Act 1988, c. 48, § 1(1)(a); 1 LADDIE § 1.8.

[46] See 1 LADDIE § 4.57, at 229.

[47] Id.

[48] See Caratzas v. Time Life, Inc., No. 92 Civ. 6346(PKL), 1992 WL 322033, at *4 (S.D.N.Y. Oct.23, 1992); Leigh v. Warner Bros., 212 F.3d 1210, 1214 (11th Cir.2000); see also Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249, 23 S.Ct. 298, 47 L.Ed. 460 (1903) ("It is obvious also that the plaintiff's 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.... 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."); Franklin Mint Corp. v. Nat'l Wildlife Art Exchange, Inc., 575 F.2d 62, 65 (3d Cir.1978) (same); F.W. Woolworth Co. v. Contemporary Arts, 193 F.2d 162, 164 (1st Cir.1951) ("It is the well established rule that a copyright on a work of art does not protect a subject, but only the treatment of a subject."); BENJAMIN KAPLAN, AN UNHURRIED VIEW OF COPYRIGHT 56 (1967) (observing that, with respect to "works of `fine art,'" "the manner of execution is usually of more interest than the subject pictured.").

[49] 117 F.Supp.2d 301 (S.D.N.Y.2000).

[50] Id. at 311.

[51] 1 LADDIE § 4.57, at 229.

[52] 234 F. 963 (S.D.N.Y.1916).

[53] Id. at 964.

[54] A digital image of the photograph may be found at http://www.fulcrumgallery.com/print — 38089.aspx (last visited July 20, 2005).

[55] A digital image appears at http://www.gallerym.com/work.cfm? ID=69 (last visited July 20, 2005).

[56] See, e.g., http://www.raydoan.com/6140.asp (last visited July 20, 2005); http://www .shusterimages.net/BearsätBrooksFalls.htm (last visited July 20, 2005).

[57] 1 LADDIE § 4.57, at 229.

[58] 960 F.2d 301 (2d Cir.1992).

[59] 212 F. 930 (2d Cir.1914).

[60] For a reproduction of the works at issue in Rogers v. Koons, see ROBERT C. OSTERBERG & ERIC C. OSTERBERG, SUBSTANTIAL SIMILARITY IN COPYRIGHT LAW A-24, A-25 (Practising Law Institute 2003).

[61] 960 F.2d at 304.

[62] See id. ("When Rogers went to [Jim Scanlon's] home... he decided that taking a picture of the puppies alone [as Scanlon originally had requested] would not work successfully, and chose instead to include [the Scanlons] holding them.... [Rogers] selected the light, the location, the bench on which the Scanlons are seated and the arrangement of the small dogs.").

[63] The two photographs are reproduced in CASES AND MATERIALS ON COPYRIGHT 211.

[64] 212 F. at 930-31.

Also part of the court's analysis was the observation that there were "many close identities of ... light[] and shade." Id.

[65] I recognize that the preceding analysis focuses on a medium — traditional print photography — that is being supplanted in significant degree by digital technology. These advancements may or may not demand a different analytical framework.

[66] Mannion Decl. ¶¶ 4-7, 9.

[67] Def. Reply Mem. 10-11.

The defendants complain as well that Mannion's declaration does not mention, among other things, the type of film, camera, and filters that he used to produce the Garnett Photograph. Id. at 11. These omissions are irrelevant. As discussed above, originality in the rendition is assessed with respect to the work, not the artist's specific decisions in producing it.

[68] Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003 (2d Cir.1995) (citation omitted).

[69] Def. Br. 6.

[70] See 4 NIMMER § 13.03[B][2][a]; 17 U.S.C. § 102(b).

[71] 4 NIMMER § 13.03[B][3].

[72] 133 F.Supp.2d 317 (S.D.N.Y.2001).

[73] The Kaplan decision itself characterized the "idea" as "a businessperson contemplating a leap from a tall building onto the city street below," see id. at 323, but this characterization does not fully account for the disposition of the case. The court agreed with the defendants that:

"in order to most accurately express th[is] idea ..., the photograph must be taken from the `jumper's' own viewpoint, which would (i) naturally include the sheer side of the building and the traffic below, and (ii) logically restrict the visible area of the businessperson's body to his shoes and a certain portion of his pants legs.... Thus, the angle and viewpoint used in both photographs are essential to, commonly associated with, and naturally flow from the photograph's unprotectable subject matter.... [T]he most common, and most effective, viewpoint from which the convey the idea of the `jumper' ... remains that of the `jumper' himself." Id. at 326.

The Kaplan court's observations about the angle and viewpoint "essential to" and "commonly associated with," that "naturally flow from," "most accurately express," and "most effective[ly]" convey the "idea of a businessperson's contemplation of a leap" are unpersuasive. Thus, the opinion is best read to hold that the "idea" expressed was that of a businessperson contemplating suicide as seen from his own vantage point because only this reading explains the outcome.

[74] Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930) (citation omitted).

This passage is often referred to as the abstractions test, but it is no such thing. Judge Newman has lamented this parlance and the underlying difficulty it elides: "Judge Hand manifestly did not think of his observations as the enunciation of anything that might be called a `test.' His disclaimer (for himself and everyone else) of the ability to `fix the boundary' should have been sufficient caution that no `test' capable of yielding a result was intended." Hon. Jon O. Newman, New Lyrics for an Old Melody: The Idea/Expression Dichotomy in the Computer Age, 17 CARDOZO ARTS & ENT. L.J. 691, 694 (1999).

[75] Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960).

[76] See, e.g., Attia v. Soc'y of the N.Y. Hosp., 201 F.3d 50, 54 (2d Cir.1999) (quoting Peter Pan Fabrics0; Williams v. Crichton, 84 F.3d 581, 587-588 (2d Cir.1996) ("The distinction between an idea and its expression is an elusive one."); Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 912 (2d Cir.1980) (quoting Peter Pan Fabrics and characterizing "the idea/expression distinction" as "an imprecise tool"); Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir.1976) (acknowledging that "the demarcation between idea and expression may not be susceptible to overly helpful generalization"); Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971) ("At least in close cases, one may suspect, the classification the court selects may simply state the result reached rather than the reason for it."); Fournier v. Erickson, 202 F.Supp.2d 290, 295 (S.D.N.Y.2002) ("the distinction between the concept and the expression of a concept is a difficult one"); see also BENJAMIN KAPLAN, AN UNHURRIED VIEW OF COPYRIGHT 48 (1967) ("We are in a viscid quandary once we admit that `expression' can consist of anything not close aboard the particular collocation in its sequential order. The job of comparison is not much eased by speaking of patterns, nor is the task of deciding when the monopoly would be too broad for the public convenience made much neater by speaking of ideas and expression. The polarity proposed by Hand is indeed related geneologically to the ancient opposition of idea to form, but the ancestor is not readily recognized in the ambiguous and elusive descendant.").

[77] "[W]hile we are as aware as any one that the line, whereever it is drawn, will seem arbitrary, that is no excuse for not drawing it; it is a question such as courts must answer in nearly all cases." Nichols, 45 F.2d at 122.

[78] There appears to be no Supreme Court case explicitly making the distinction any earlier than Holmes v. Hurst, 174 U.S. 82, 19 S.Ct. 606, 43 L.Ed. 904 (1899), in which the Court observed that the Copyright Act protects "that arrangement of words which the author has selected to express his ideas." Id. at 86, 19 S.Ct. 606.

[79] One non-literary case in which the Supreme Court referred to the idea/expression distinction was Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460, 98 L.Ed. 630 (1954), which is described below in footnote 80.

[80] In cases dealing with toys or products that have both functional and design aspects, courts sometimes use "idea" to refer to a gimmick embodied in the product. See, e.g., Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460, 98 L.Ed. 630 (1954) (court, after introducing idea/expression dichotomy, stated that plaintiffs, who had copyrights in statuettes of human figures used as table lamps, "may not exclude others from using statuettes of human figures in table lamps; they may only prevent use of copies of their statuettes as such or as incorporated in some other article."); Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971) (bejeweled gold pin in the shape of a bee was an unprotected "idea"); Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64, 65-66 (2d Cir.1974) (same for turtle pins); Great Importations, Inc. v. Caffco Int'l, Inc., No. 95 Civ. 0514, 1997 WL 414111, at *4 (S.D.N.Y. July 24, 1997) (M.J.) ("To the degree the similarities between the two sculptures herein are simply because they are both three-piece sets of candleholders in the shape of the letters J, O and Y with baby angels and holly, those similarities are non-copyrightable ideas....").

This case does not concern any kind of gimmick, and the Court ventures no opinion about the applicability of the idea/expression dichotomy to any product that embodies a gimmick, including toys or other objects that combine function and design.

[81] See Gross v. Seligman, 212 F. 930, 931 (2d Cir.1914); Kaplan v. Stock Market Photo Agency, Inc., 133 F.Supp.2d 317, 323 (S.D.N.Y.2001); Andersson v. Sony Corp. of Am., No. 96 Civ. 7975(RO), 1997 WL 226310, at *2 (S.D.N.Y. May 2, 1997); Kisch v. Ammirati & Puris Inc., 657 F.Supp. 380, 382 (S.D.N.Y.1987); Pagano v. Chas. Beseler Co., 234 F. 963, 964 (S.D.N.Y.1916).

[82] The terminology can be still more confused. Consider this sentence, in a section of an opinion analyzing what was original, and hence protectible, in a photograph created by a freelancer in accordance with instructions from a defendant: "[D]efendants conclude that Fournier cannot assert copyright protection, to the extent that he does, over the expression of businessmen in traditional dress on their way to work, an idea which originated with McCann in any event." Fournier v. Erickson, 202 F.Supp.2d 290, 295 (S.D.N.Y.2002) (emphases added).

[83] 274 F.2d at 489.

[84] Newman, New Lyrics for an Old Melody, supra, at 697.

[85] 720 F.2d 231 (2d Cir.1983).

In that case, which considered the question whether the protagonist of the television series The Greatest American Hero infringed the copyright in the Superman character, Judge Newman observed that a tension between two different propositions dealing with the significance of differences between an allegedly infringing work and a copyrighted work "perhaps results from [those propositions'] formulation in the context of literary works and their subsequent application to graphic and three-dimensional works." Id. at 241.

[86] Newman, New Lyrics for an Old Melody, supra, at 698.

[87] Franklin Mint Corp. v. Nat'l Wildlife Art Exchange, Inc., 575 F.2d 62, 65 (3d Cir.1978); accord Kisch v. Ammirati & Puris Inc., 657 F.Supp. 380, 383 (S.D.N.Y.1987).

[88] 960 F.2d at 308 (first emphasis added).

[89] Def. Br. 6. See supra.

[90] See SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301, 314 (S.D.N.Y.2000) ("defendants' instructions were so general as to fall within the realm of unprotectible ideas. Thus, they cannot substantiate a work-for-hire authorship defense." (emphasis added)); Andersson v. Sony Corp., No. 96 Civ. 7975(RO), 1997 WL 226310, at *3 (S.D.N.Y. May 2, 1997) ("What these two photos may arguably share, the idea of a woman in futuristic garb becoming fascinated with an object held in her hand, is simply not protectible." (emphasis added)); Gentieu v. Tony Stone Images/Chicago, Inc., 255 F.Supp.2d 838, 849 (N.D.Ill.2003) ("Gentieu cannot claim a copyright in the idea of photographing naked or diapered babies or in any elements of expression that are intrinsic to that unprotected idea. Clearly the `poses' at issue in Gentieu's images capture the natural movements and facial expressions of infants.... Such poses are implicit in the very idea of a baby photograph and are not proper material for protection under Gentieu's copyrights." (emphases added)).

It is interesting to note that United Kingdom law faces a similar terminological problem and that the solution of Laddie and supporting authorities is to conclude that the generality of an "idea" is what determines its protectability:

"Confusion is caused in the law of copyright because of the use of the catchphrase `There is no copyright in ideas but only in the form of their expression'. Unless one understands what this means its utility is non-existent, or it is positively misleading. An artistic work of the imagination presupposes two kinds of ingredients: the conception of one or more ideas, and artistic dexterity and skill in their representation in the chosen medium. It is not the law that copyright protects the second kind of ingredient only. If that were so a debased copy which failed to capture the artist's dexterity and skill would not infringe, which plainly is not the case. Unless an artist is content merely to represent a pre-existent object (eg a building) or scene, it is part of his task as artist to exercise his imagination and in so doing he may create a pattern of ideas for incorporation in his finished work. This idea-pattern may be as much part of his work, and deserving of copyright protection, as the brushstrokes, pencil-lines, etc. The true proposition is that there is no copyright in a general idea, but that an original combination of ideas may [be protected]." 1 LADDIE § 4.43, at 212 (footnote omitted).

[91] 133 F.Supp.2d at 323 (emphases added).

[92] Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir.2001) (quoting Hamil America, Inc. v. GFI, 193 F.3d 92, 100 (2d Cir.1999) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960)) (internal quotation marks omitted)); accord Boisson v. Banian, Ltd., 273 F.3d 262, 272 (2d Cir.2001) (quoting Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 765 (2d Cir.1991)).

[93] Hamil America, Inc., 193 F.3d at 101; accord Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995); Folio Impressions, 937 F.2d at 765-66; see also Boisson, 273 F.3d at 272.

[94] Boisson, 273 F.3d at 272 (citing Knitwaves, 71 F.3d at 1003); accord Hamil America, 193 F.3d at 101.

[95] 338 F.3d 127 (2d Cir.2003).

[96] See 237 F.Supp.2d 376, 386-88 (S.D.N.Y.2002).

[97] 338 F.3d at 130 (emphasis in original).

[98] Id. at 134-35 (emphasis in original).

[99] Id. at 132-33 (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.1936)) (internal quotation marks omitted).

[100] 4 NIMMER § 13.03[B][1][a], at 13-63.

[101] 657 F.Supp. 380, 384 (S.D.N.Y.1987).

554 F.3d 914

INTERVEST CONSTRUCTION, INC., a Florida corporation, Plaintiff-Appellant,
v.
CANTERBURY ESTATE HOMES, INC., a Florida corporation, Defendant-Appellee.

No. 07-12596.
United States Court of Appeals, Eleventh Circuit.
December 22, 2008.

[916] Kelly J.H. Garcia and Virginia Bullerman Townes, Akerman Senterfitt, Orlando, FL, for Plaintiff-Appellant.

Sidney M. Nowell, Nowell & Associates, P.A., Bunnell, FL, for Defendant-Appellee.

Appeal from the United States District Court for the Middle District of Florida.

Before BIRCH and DUBINA, Circuit Judges, and GOLDBERG,^[*] Judge.

BIRCH, Circuit Judge:

In this copyright infringement action the appellant contends that the district court erred when it examined the two floor-plans at issue, and, emphasizing the differences between the two, concluded "that, as a matter of law, no reasonable fact-finder could conclude" that appellant's floor-plan ("The Kensington") was substantially similar to appellee's floor-plan ("The Westminister"). More specifically, appellant ("Intervest") argues that the district court employed a "heightened 'substantial similarly' standard" by itself focusing upon certain dissimilarities between the two floor-plans at issue,^[1] based upon a misinterpretation of Howard v. Sterchi, 974 F.2d 1272 (11th Cir.1992). For the reasons that follow we find no error and AFFIRM the judgment of the district court.

I. BACKGROUND

In point of time, the floor plan for The Westminster was created in 1992 as a work-made-for-hire by Intervest Construction, Inc. ("Intervest"). The putatively infringing floor-plan, The Kensington, was created in 2002 by Canterbury Estate Homes, Inc. ("Canterbury"). Each floor-plan depicts a four-bedroom house, with one bedroom being denominated as a "master" bedroom or suite. Each floor plan includes a: two-car garage; living room; dining room; "family" room; foyer; "master" bathroom; kitchen; second bathroom; nook; and porch/patio. Each floorplan also reflects certain "elements" common to most houses: doors; windows; walls; bathroom fixtures (toilet, tub, shower, and sink); kitchen fixtures (sink, counter, refrigerator, stovetop, and pantry/cabinets); utility rooms and fixtures (washer, dryer, and sink); and closets. A cursory examination of the two floor-plans reveals that the square footage of both is approximately the same. Also, as is common to houses, there are placements of entrances, exits, hallways, openings, and utilities (furnace, air conditioner, hot water heater, and telephone hardware).

After identifying all of these unassigned components and elements of the floor-plans, the district court undertook a careful comparative analysis of the selection, coordination, and arrangement of these common components and elements. The district court focused upon the dissimilarities in such coordination and arrangement:

First, Canterbury represents that the square footage of the rooms in the two [917] designs is different, and visual examination of the floor plans appears to confirm that. In any event, Intervest seemingly does not contest the point.

Second, the garage in The Westminster has a front entrance, while The Kensington's has a side entrance. Further, Intervest's design has an attic access from the garage, while Canterbury's version has a "bonus room" above the garage, something The Westminster lacks entirely. Moreover, the inside air conditioning unit and water heater are placed differently in the two floor plans. Additionally, The Kensington has two windows in the garage, while The Westminster has none. In The Westminster, there is a bedroom closet to the left of the utility room, whereas in The Kensington, there is a hallway in that location.

There are three bedrooms on the left side of the two designs, with a master bedroom across the house on the right side. (Confusingly, The Kensington drawing identifies the bedroom closest to the garage and the one farthest from the garage as "Bedroom 3.") There are significant differences between the left-side bedrooms in the two drawings.

The bedroom closest to the garage ("Bedroom 2" in The Westminster and one of two "Bedroom 3"'s in The Kensington) is shaped differently in the two designs. In The Westminster, this room's longest wall abuts the garage, whereas in The Kensington, a shorter wall separates the room from the garage. Additionally, in The Westminster, one would enter this particular room straight through a door at the end of a hallway, whereas in The Kensington, one would have to turn 90 degrees off the hallway to enter the room. Additionally, the entrance doors swing in opposite directions in the two designs. Moreover, the closets in this bedroom are situated on completely different walls in the two drawings.

Regarding the middle bedroom on the left side ("Bedroom 3" in The Westminster and "Bedroom 2" in The Kensington), the entrances and closets are different in the two floor plans. The closet in The Westminster runs nearly the length of one wall, while the closet in The Kensington is deeper, smaller, and occupies only a corner of the bedroom. The room in The Westminster has a 45 degree entrance, beyond which is an angled wall (followed by the aforementioned long closet). The Kensington's counterpart room has a 90 degree entrance which opens flush against a 90 degree wall. Finally, the bedroom in The Westminster appears more rectangular overall than its counterpart in The Kensington.

Moving to the last left-side bedroom ("Bedroom 4" in The Westminster and the other "Bedroom 3" in The Kensington), the same differences identified regarding the preceding bedroom also exist regarding this room, except that the smaller closet in The Kensington is located near the room's entrance, rather than in a corner.

The hallway bathroom situated next to this bedroom is also different in the two designs. The bathroom in The Westminster appears larger. Additionally, the alignment of the right wall vis-a-vis the hallway wall is different in the two plans. Further, "the bathtubs face opposite ways in the two designs," "the bathroom sink counter space in [The Kensington] is much smaller than in [The Westminster]," and "[The Kensington's] sink is oval shaped whereas [The Westminster's] is round." Doc. 50 at 16. Finally, although the bathroom door leading to the exterior of the house swings in the same direction in both [918] plans, Canterbury notes that this is required by the fire code.

Proceeding to the center portion of the homes, the nooks in the two plans are markedly different. In that regard,

[The Westminster's] nook feeds into a ninety degree angle adjacent to the Porch and has windows looking both to the outside and to the Porch. On the other hand, [The Kensington's] design is rounded into the porch and is completely made of glass. There is no window to the outside or into the Covered Patio. Moreover, the entrance from the Nook into the Living Room in [The Westminster's] design has an elongated wall which travels much further into the Living Room than in [The Kensington's] design, and also fails to break inward at a ninety degree angle like in [The Kensington's] design.

Id. at 17. Further, the shapes of the living rooms are different, in part due to the dissimilarities in the layout of the nooks.

The kitchens in the two plans are also substantially different. In that connection,

the wall placement in the southeast corner of the kitchens is significantly different. [The Kensington's] design pushes this wall further into the Living Room and pushes the Kitchen Counter much further north than in [The Westminster's] design. This allows [The Kensington's] design to have a much larger Pantry than [The Westminster's] design.

[Further, The Westminster's] design has a retractable door on its pantry which opens at a ninety degree angle while [The Kensington's] has a solid door which opens at a forty-five degree angle. Additionally, . . . [The Kensington's] kitchen counter is much thinner and longer than [The Westminster's] which places the dishwasher in a different location. Finally, . . . [The Kensington's] Kitchen has an Island as well as an entrance to a hallway running down the left side of the Utility Room while [The Westminster's] design has none of these features.

Id. at 17-18.

Moving to the right side of the house, there are material dissimilarities in the foyer, the master bedroom, and the master bath. The front entrance to The Westminster "has one solid door with windows on either side while [The Kensington's] front entrance has a pair of glass French Doors." Id. at 18. Further, "the Master Bedroom in [The Kensington's] design contains glass French Doors on the far left side of the back wall which opens into a Covered Patio," whereas The Westminster "simply has a sliding glass door in the center of the back wall which opens to an uncovered Porch." Id. Additionally, in The Kensington's master bath, "the doors to the walk-in closets . . . are solid and open in different directions than those [in the Westminster], which uses a retractable door." Id. Finally, the sinks in the master bath are placed differently in the two designs. In The Kensington, the sinks are centered; in The Westminster, they are not. R1-69 at 5-8. (footnotes omitted).

Given the number of dissimilarities in the respective coordination and arrangement of these non-original, commonplace elements and components, the district court ruled that no reasonable observer could conclude that the copyrightable elements of the two floor-plans were substantially similar. [919]

II. DISCUSSION

Since we are dealing with a specific type of copyrightable work, here an architectural work, we begin by examining the statutory definition of an "architectural work," to wit: "the design of a building as embodied in any tangible medium of expression, including a building, architectural plans or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features." 17 U.S.C. § 101 (2008). A review of the legislative history discloses that such "individual standard features" include "common windows, doors, and other staple building components." H.R.Rep. No. 101-735 (1990) as reprinted in 1990 U.S.C.C.A.N. 6935, 6949. Including the phrase "the arrangement and composition of spaces and elements in the design" demonstrates Congress' appreciation that "creativity in architecture frequently takes the form of a selection, coordination, or arrangement of unprotectible elements into an original, protectible whole." Id. Accordingly, while individual standard features and architectural elements classifiable as ideas or concepts are not themselves copyrightable, an architect's original combination or arrangement of such elements may be. See Corwin v. Walt Disney Co., 475 F.3d 1239, 1251 (11th Cir.2007). Thus, the definition of an architectural work closely parallels that of a "compilation" under the statute, that is: "[A] work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. § 101. The Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), and our court in BellSouth Adver. & Publ'g Corp. v. Donnelley Info. Publ'g, Inc., 999 F.2d 1436 (11th Cir.1993) (en banc) and Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218 (11th Cir. 2008), indicated that the compiler's choices as to selection coordination, or arrangement are the only portions of a compilation, or here, architectural work, that are even entitled to copyright protection. Accordingly, any similarity comparison of the works at issue here must be accomplished at the level of protected expression^[2] — that is, the arrangement and coordination of those common elements ("selected" by the market place, i.e., rooms, windows, doors, and "other staple building components"). In undertaking such a comparison it should be recalled that the copyright protection in a compilation is "thin." Feist, 499 U.S. at 349, 111 S.Ct. at 1289. Moreover, as the Second Circuit has noted, the substantial similarity inquiry is "narrowed" when dealing with a compilation. Key Publications, Inc. v. Chinatown Today Publ'g Enter., Inc., 945 F.2d 509, 514 (2d Cir.1991).

Thus, when viewed through the narrow lens of compilation analysis only the original, and thus protected arrangement and coordination of spaces, elements and other staple building components should be compared.^[3] We have recognized [920] that summary judgment may be inappropriate in certain types of copyright infringement cases. However, we have approved the use of summary judgment particularly in cases where: (1) because access has been established, the crucial issue is substantial similarity; (2) there may be substantial similarity with respect to the non-copyrightable elements of the two works compared; and, (3) as to the protectable elements, there is substantial dissimilarity. See Oravec 527 F.3d at 1223; Beal v. Paramount Pictures, Corp. 20 F.3d 454, 459-60 (11th Cir.1994). In fact, when the crucial question in a dispute involving compilations is substantial similarity at the level of protectable expression, it is often more reliably and accurately resolved in a summary judgment proceeding. This is so because a judge is better able to separate original expression from the non-original elements of a work where the copying of the latter is not protectable and the copying of the former is protectable. The judge understands the concept of the idea/expression dichotomy and how it should be applied in the context of the works before him. As we have observed: "This distinction — known as the idea/expression dichotomy — can be difficult to apply, as there is no bright line separating the ideas conveyed by a work from the specific expression of those ideas." Oravec, 527 F.3d at 1224. Moreover, in examining compilations wherein only the arrangement and coordination of elements which by the nature of the work (here architectural floor plans) are sure to be common to each of the works and are not copyrightable themselves (spacial depictions of rooms, doors, windows, walls, etc.), the already difficult tasks may become even more nuanced. Because a judge will more readily understand that all copying is not infringement, particularly in the context of works that are compilations, the "substantial-similarity" test is more often correctly administered by a judge rather than a jury — even one provided proper instruction. The reason for this is plain — the ability to separate protectable expression from non-protectable expression is, in reality, a question of law or, at the very least, a mixed question of law and fact. It is difficult for a juror, even properly instructed, to conclude, after looking at two works, that there is no infringement where, say, 90% of one is a copy of the other, but only 15% of the work is protectable expression that has not been copied. Part of the problem, which we have recognized, is that the term "substantial similarity" has not always been used with precision. Beal, 20 F.3d at 459 n. 4. When courts have dealt with copyright infringement claims involving creative types of works, "substantial similarity" has been defined as existing "where an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 (11th Cir.1982) (quotation marks and citation omitted) (the first copyright case decided by the Eleventh Circuit after its split-off [921] from the "old" Fifth Circuit involving a soft sculpture doll, a creative work that was to be later known as a "Cabbage Patch Kid"). However, as noted above, while a creative work is entitled to the most protection, a compilation is entitled to the least, narrowest or "thinnest" protection. See Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1271 (11th Cir. 2001); see also Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569, 586, 114 S.Ct. 1164, 1175, 127 L.Ed.2d 500 (1994); Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 563, 105 S.Ct. 2218, 2232, 85 L.Ed.2d 588 (1985). Accordingly, when courts have examined copyright infringement claims involving compilations the definition of "substantial similarity" has been appropriately modified to accentuate the narrower scope of protection available, to wit:

Not all copying constitutes infringement, however, see Feist, 499 U.S. at 361, 111 S.Ct. at 1296, and therefore we have emphasized that the substantial similarity analysis "must focus on similarity of expression, i.e., material susceptible of copyright protection." Beal, 20 F.3d at 459, n. 4; see also Leigh [v. Warner Bros., Inc., 212 F.3d 1210] at 1214 (stating that a copyright plaintiff "must establish specifically that the allegedly infringing work is substantially similar to the plaintiff's work with regard to its protected elements").

Oravec, 527 F.3d at 1224 (emphasis in original) (involving a dispute over architectural plans); see also BellSouth, 999 F.2d 1436 (telephone directories); Warren Publ'g Inc., 115 F.3d 1509 (cable television fact books); Bateman v. Mnemonics, Inc., 79 F.3d 1532 (11th Cir.1996) (computer code); MiTek Holdings, Inc. v. Arce Eng'g, Inc., 89 F.3d 1548 (11th Cir.1996) (computer code); Leigh, 212 F.3d 1210 (photographs).

Here the district court carefully compared the protectable aspects of the two floor-plans at issue, thus focusing only on the narrow arrangement and coordination of otherwise standard architectural features. At the conclusion of its analysis identifying many dissimilarities or differences in the two floor plans, the court made essentially the same ruling that we approved of in Oravec: "At the level of protected expression, the differences between the designs are so significant that no reasonable, properly instructed jury could find the works substantially similar." Oravec, 527 F.3d at 1227.

III. CONCLUSION

Here the appellant, plaintiff below, contends that the district court erred in focusing its comparison of common architectural elements in two designs for a four-bedroom house on the dissimilarities between the two floor plans. Given that the plans at issue were protected by compilation copyrights which were "thin," the district court correctly determined that the differences in the protectable expression were so significant that, as a matter of law, no reasonable properly-instructed jury of lay observers could find the works substantially similar. Accordingly, the district court did not err in granting summary judgment to the appellee, the putative infringer.

AFFIRMED. [922]

APPENDIX

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

[*] Honorable Richard W. Goldberg, United States Court of International Trade Judge, sitting by designation.

[1] The two floor-plans at issue are attached hereto as an appendix.

[2] The Feist Court further explained:

This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright: accordingly, copyright protection may extend only to those components of a work that are original to the author.

Feist at 348, 111. S.Ct. at 1289.

[3] There are three types of work that are entitled to copyright protection—creative, derivative, and compiled. Copyrights in these three distinct works are known as creative, derivative, and compilation copyrights. An example of a creative work is a novel. An example of a derivative work is a screenplay based on a novel; it is called "derivative" because it is based on a preexisting work that has been recast, transformed, or adapted. An example of a compilation is [the floor plans at issue in this case.] The [Copyright] Act has created a hierarchy in terms of the protection afforded to these different types of copyrights. A creative work is entitled to the most protection, followed by a derivative work, and finally by a compilation. This is why the Feist Court emphasized that the copyright protection in a factual compilation is "thin."

Warren Publishing, Inc. v. Microdos Data Corp., 115 F.3d 1509, 1515 n. 16 (11th Cir. 1997) (citation omitted).

372 F.3d 913

PIVOT POINT INTERNATIONAL, INCORPORATED, Plaintiff-Appellant, Cross-Appellee,
v.
CHARLENE PRODUCTS, INCORPORATED and Peter Yau, Defendants-Appellees, Cross-Appellants.

No. 01-3888.
No. 02-1152.
United States Court of Appeals, Seventh Circuit.
Argued June 6, 2003.
Decided June 25, 2004.
Rehearing En Banc Denied August 10, 2004.^[1]

[915] Robert E. Browne (Argued), Neal, Gerber & Eisenberg, Chicago, IL, for Plaintiff-Appellant, Cross-Appellee.

James B. Meyer (Argued), Meyer & Wyatt, Gary, IN, Martin H. Redish (Argued), Mayer, Brown, Rowe & Maw, Chicago, IL, for Defendants-Appellees, Cross-Appellants.

Before RIPPLE, KANNE and DIANE P. WOOD, Circuit Judges.

RIPPLE, Circuit Judge. Pivot Point International, Inc. ("Pivot Point"), brought this cause of action against Charlene Products, Inc., and its president Peter Yau (collectively "Charlene"), for copyright infringement pursuant to 17 U.S.C. § 501(b). The district court granted summary judgment for the defendants on the ground that the copied subject matter, a mannequin head, was not copyrightable under the Copyright Act of 1976 ("1976 Act"), 17 U.S.C. § 101 et seq. For the reasons set forth in the following opinion, we reverse the judgment of the district court and remand the case for proceedings consistent with this opinion. 

I. BACKGROUND

A. Facts

Pivot Point develops and markets educational techniques and tools for the hair design industry. It was founded in 1965 by Leo Passage, an internationally renowned hair designer. One aspect of Pivot Point's business is the design and development of mannequin heads, "slip-ons" (facial forms that slip over a mannequin head) and component hair pieces.

In the mid-1980s, Passage desired to develop a mannequin that would imitate the "hungry look" of high-fashion, runway models. Passage believed that such a mannequin could be marketed as a premium item to cutting-edge hair-stylists and to stylists involved in hair design competitions. Passage then worked with a German artist named Horst Heerlein to create an original sculpture of a female human head. Although Passage discussed his vision with Heerlein, Passage did not give Heerlein any specific dimensional requirements. From Passage's description, Heerlein created a sculpture in plaster entitled "Mara."

Wax molds of Mara were made and sent to Pivot Point's manufacturer in Hong Kong. The manufacturer created exact reproductions of Mara in polyvinyl chloride ("PVC"). The manufacturer filled the PVC form with a liquid that expands and hardens into foam. The process of creating the Mara sculpture and of developing the mannequin based on the sculpture took approximately eighteen months.

In February of 1988, when Pivot Point first inspected the PVC forms of Mara, it discovered that the mannequin's hairline had been etched too high on the forehead. The manufacturer corrected the mistake by adding a second, lower hairline. Although the first, higher hairline was visible upon inspection, it was covered with implanted hair. The early PVC reproductions of Mara, and Pivot Point's first shipment of the mannequins in May of 1988, possessed the double hairlines.

About the same time that it received its first shipment of mannequins, Pivot Point obtained a copyright registration for the design of Mara, specifically the bareheaded female human head with no makeup or hair. Heerlein assigned all of his rights in the Mara sculpture to Pivot Point. Pivot Point displayed the copyright notice in the name of Pivot Point on each mannequin.

Pivot Point enjoyed great success with its new mannequin. To respond to customer demand, Pivot Point began marketing the Mara mannequin with different types and lengths of hair, different skin [916] tones and variations in makeup; however, no alterations were made to the facial features of the mannequin. For customer ease in identification, Pivot Point changed the name of the mannequin based on its hair and skin color; for instance, a Mara mannequin implanted with yak hair was called "Sonja," and the Mara mannequin implanted with blonde hair was called "Karin."

At a trade show in 1989, Charlene, a wholesaler of beauty products founded by Mr. Yau,^[2] displayed its own "Liza" mannequin, which was very close in appearance to Pivot Point's Mara. In addition to the strikingly similar facial features, Liza also exhibited a double hairline that the early Mara mannequins possessed.

On September 24, 1989, Pivot Point noticed Charlene for copyright infringement. When Charlene refused to stop importing and selling the Liza mannequin, Pivot Point filed this action.^[3]

B. District Court Proceedings

Pivot Point filed a multi-count complaint in district court against Charlene. It alleged violations of federal copyright law as well as state-law claims; Charlene both answered the complaint and counterclaimed. After extensive discovery, Pivot Point filed a comprehensive motion for summary judgment on its complaint and Charlene's counterclaims. Charlene filed several cross-motions for summary judgment as well. The district court tentatively ruled on these motions in July 2001 and issued a final ruling in October 2001.

1. Merits

In its opinion, the district court stated that "[t]he principal dispute is whether a human mannequin head is copyrightable subject matter. If it is, then there must be a trial on the question whether Liza is a knock off of Mara." R.401 at 1. The district court explained that, although sculptural works are copyrightable under 17 U.S.C. § 102(a)(5), sculptures that may be copyrighted are limited by the language of 17 U.S.C. § 101, which provides in relevant part:

Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

According to the district court, there was no question that Mara was a sculpture. However, in the district court's view, the sculpture served utilitarian ends. "Students in beauty schools practice styling hair on Mara's head and may practice other skills by applying makeup to Mara's eyes, lips, and cheeks. The parties dispute which functions are primary." R.401 at 2.

The district court then explored whether the artistic and utilitarian aspects of Mara were "separable" for purposes of the piece's copyrightability: "The statutory separability requirement confines copyright protection to those aspects of the design that exist apart from its utilitarian value, and that could be removed without reducing the usefulness of the item." Id. at 3. The district court observed that [917] drawing this line is particularly troublesome.

The statute, continued the district court, is generally recognized to suggest two types of separability: physical separability and conceptual separability. The district court explained that physical separability occurs when the ornamental nature of the object can be physically removed from the object and that

[c]onceptual separability differs from physical separability by asking not whether the features to be copyrighted could be sliced off for separate display, but whether one can conceive of this process. Relying on a comment in the House Report on the 1976 amendments, the second circuit in Kieselstein-Cord [v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.1980),] purported to adopt conceptual separability as the exclusive test (632 F.2d at 992, contrasting that approach with Esquire [v. Ringer, 591 F.2d 796 (D.C.Cir.1978)], which opted for physical separability, 591 F.2d at 803-04). Why a court should repair to the legislative history is unclear; the second circuit did not identify any ambiguity in § 101 that needed to be resolved, and a statement in the House Report that what appears on the face of the statutory text to be two requirements (physical and conceptual separability) should be administered as just one is not a proposition that in today's legal climate can be indulged. The Supreme Court does not permit the use of legislative history to alter, as opposed to elucidate, a statutory text.

Id. at 4.

Despite this lack of statutory moorings, the district court nevertheless reviewed the differing formulations for conceptual separability and determined that the definition proposed by Professor Paul Goldstein was the best one: "a pictorial, graphic or sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it." R.401 at 5 (quoting 1 Paul Goldstein, Copyright: Principles, Law & Practice § 2.5.3, at 109 (1989)). The district court believed that the strength of this definition "comes from the fact that it differs little, if at all, from the test of physical separability embraced by the D.C. Circuit in Esquire and by the majority in Carol Barnhart [Inc., v. Economy Cover Corp., 773 F.2d 411, 418 (2d Cir.1985)]." Id. Applying this test led the district court to conclude that

Mara cannot be copyrighted because, even though one can conceive of Mara as a sculpture displayed as art, it would not be equally useful if the features that Pivot Point want to copyright were removed. So long as a utilitarian function is makeup tutoring and practice and the fact that Pivot Points sells Mara without eye or lip coloring shows that this is a function even if not, in Pivot Point's view, the "primary" one — the utilitarian value would be diminished by removing the aesthetic features that Pivot Point wants to protect by copyright.

Id.

As a final matter, the district court distinguished two cases, Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir.1996), and Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488 (4th Cir.1996), which upheld the copyrightability of animal and fish mannequins. The district court found the Hart case unpersuasive, but concluded that "one cannot say of Mara what the fourth circuit said of animal mannequins: Mara is valued not for 'its own appearance' but for what it enables students to do and learn. Mara is a 'useful article' as § 101 and Superior Form Builders deploy that term." Id. at 6.

2. Fee Petition

[918] Although fees are available under the 1976 Act, the district court's order made no provision for fees. Charlene, therefore, sought an award of attorneys' fees of approximately $421,915 pursuant to 17 U.S.C. § 505. Charlene submitted its fees to Pivot Point and sought to confer and exchange information as required by Northern District of Illinois Local Rule 54.3(d). Pivot Point would not participate in this exercise on the basis that any fee request would be untimely because Charlene had missed the fourteen-day deadline for filing a fee motion set forth in Federal Rule of Civil Procedure 54(d)(2)(B).

Charlene then moved for an instruction from the district court ordering Pivot Point to participate in the fee request process but the district court refused. It explained that its "opinion and declaratory judgment resolving this case on the merits did not make any provision for attorneys' fees." R.413 at 1. Because the judgment did not contain an order with respect to an attorneys' fee petition, the district court did not believe Local Rule 54.3 was applicable. Instead, the parties were bound by the fourteen-day deadline set forth in Federal Rule 54(d)(2)(B). Furthermore, the district court believed that its reading of Local Rule 54.3 — as not extending the time period allowed in Federal Rule 54 — saved the local rule because otherwise it would be inconsistent with Federal Rule 54 and therefore invalid pursuant to Federal Rule 83.^[4]

Finally, the district court acknowledged that it had the discretion to extend the time to file such a motion; however, it stated that it was "not even slightly disposed to grant any [extension], because the parties knew well before October 2 what the judgment was likely to provide." Id. at 1.

Pivot Point now appeals from the district court's summary judgment in favor of Charlene; Charlene appeals from the district court's judgment with respect to its attorneys' fee petition.

II. ANALYSIS

A. Standard of Review

This court reviews de novo a district court's grant of summary judgment. See Silk v. City of Chicago, 194 F.3d 788, 798 (7th Cir.1999). In evaluating the judgment, we "construe all facts in the light most favorable to the non-moving party and draw all reasonable and justifiable inferences in favor of that party." Bellaver v. Quanex Corp., 200 F.3d 485, 491-92 (7th Cir.2000). If the record shows "that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law," summary judgment is appropriate. Fed.R.Civ.P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

B. Copyrightability

[919] The central issue in this case is whether the Mara mannequin is subject to copyright protection. This issue presents, at bottom, a question of statutory interpretation. We therefore begin our analysis with the language of the statute. Two provisions contained in 17 U.S.C. § 101 are at the center of our inquiry. The first of these is the description of pictorial, graphic and sculptural works:

Pictorial, graphic, and sculptural works" include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

The definition section further provides that "[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. An article that is normally a part of a useful article is considered a 'useful article.'" 17 U.S.C. § 101. As is clear from the definition of pictorial, graphic and sculptural work, only "useful article[s]," as the term is further defined, are subject to the limitation contained in the emphasized language above. If an article is not "useful" as the term is defined in § 101, then it is a pictorial, graphic and sculptural work entitled to copyright protection (assuming the other requirements of the statute are met).

1. Usefulness

Pivot Point submits that the Mara mannequin is not a "useful article" for purposes of § 101 because its "inherent nature is to portray the appearance of runway models. Its value," continues Pivot Point, "resides in how well it portrays the appearance of runway models, just as the value of a bust — depicting Cleopatra, for example, ... — would be in how well it approximates what one imagines the subject looked like." Appellant's Br. at 19. Pivot Point relies upon the decisions of the Fourth Circuit in Superior Form Builders and of the Second Circuit in Hart for the proposition that mannequins, albeit in those cases animal and fish mannequins, are not useful articles. Specifically, the Fourth Circuit explained that

[a] mannequin provides the creative form and expression of the ultimate animal display.... Even though covered with a skin, the mannequin is not invisible but conspicuous in the final display. The angle of the animal's head, the juxtaposition of its body parts, and the shape of the body parts in the final display is little more than the portrayal of the underlying mannequin. Indeed, the mannequin can even portray the intensity of flexed body parts, or it can reveal the grace of relaxed ones. None of these expressive aspects of a mannequin is lost by covering the mannequin with a skin. Thus, any utilitarian aspect of the mannequin exists "merely to portray the appearance" of the animal.

Superior Form Builders, 74 F.3d at 494; see also Hart, 86 F.3d at 323 ("The function of the fish form is to portray its own appearance, and that fact is enough to bring it within the scope of the Copyright Act."). Consequently, in Pivot Point's view, because the Mara mannequin performs functions similar to those of animal [920] and fish mannequins, it is not a useful article and is therefore entitled to full copyright protection.

Charlene presents us with a different view. It suggests that, unlike the animal mannequins at issue in Superior Form Builders and in Hart, the Mara mannequin does have a useful function other than portraying an image of a high-fashion runway model. According to Charlene, Mara also is marketed and used for practicing the art of makeup application. Charlene points to various places in the record that establish that Mara is used for this purpose and is, therefore, a useful article subject to the limiting language of § 101.

Pivot Point strongly disputes that the record establishes such a use and argues that the district court's reliance on Charlene's alleged proof improperly resolves an issue of fact against the non-moving party in contravention of Federal Rule of Civil Procedure 56.^[5] Indeed, our own review of the record leads us to believe that many of the documents cited by Charlene are susceptible to more than one interpretation.

Nevertheless, we shall assume that the district court correctly ruled that Mara is a useful article and proceed to examine whether, despite that usefulness, it is amenable to copyright protection.

2. Separability

We return to the statutory language. A useful article falls within the definition of pictorial, graphic or sculptural works "only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. § 101.^[6] It is common [921] ground between the parties and, indeed, among the courts that have examined the issue, that this language, added by the 1976 Act, was intended to distinguish creative works that enjoy protection from elements of industrial design that do not. See H.R.Rep. No. 94-1476, at 55 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5668 (stating that the purpose behind this language was "to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design"). Although the Congressional goal was evident, application of this language has presented the courts with significant difficulty. Indeed, one scholar has noted: "Of the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectible pictorial, graphic and sculptural works and unprotectible utilitarian elements of industrial design." Paul Goldstein, 1 Copyright § 2.5.3, at 2:56 (2d ed.2004).

The difficulty in the application of this language would not have come, in all likelihood, as a surprise to the Congressional drafters. The language employed by Congress is not the language of a bright-line rule of universal application. Indeed, the circuits that have addressed the interpretative problem now before us uniformly have recognized that the wording of the statute does not supply categorical direction, but rather requires the Copyright Office and the courts "to continue their efforts to distinguish applied art and industrial design." Robert C. Denicola, Applied Art & Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn. L.Rev. 707, 730 (1983). In short, no doubt well-aware of the myriad of factual scenarios to which its policy guidance would have to be applied, Congress wisely chose to provide only general policy guidance to be implemented on a case-by-case basis through the Copyright Office and the courts.

Even though the words of the statute do not yield a definitive answer, we believe that the statutory language nevertheless provides significant guidance in our task. We therefore shall examine in more detail what that language has to tell us, and we return to the necessary starting point of our task, § 101.

The statutory language provides that "the design of a useful article ... shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article." Although the italicized clause contains two operative phrases — "can be identified separately from" and "are capable of existing independently of" — we believe, as have the other courts that have grappled with this issue,^[7] that Congress, in amending the statute, intended these two phrases to state a single, integrated standard to determine when there is sufficient separateness between the utilitarian and artistic aspects of a work to justify copyright protection.

[922] Certainly, one approach to determine whether material can be "identified separately," and the most obvious, is to rely on the capacity of the artistic material to be severed physically from the industrial design. See Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954) (holding that a statuette incorporated into the base of a lamp is copyrightable). When a three-dimensional article is the focus of the inquiry, reliance on physical separability can no doubt be a helpful tool in ascertaining whether the artistic material in question can be separated from the industrial design. As Professor Denicola points out, however, such an approach really is not of much use when the item in question is two-dimensional. See Denicola, supra, at 744. Indeed, because this provision, by its very words, was intended to apply to two-dimensional material, it is clear that a physical separability test cannot be the exclusive test for determining copyrightability.

It seems to be common ground between the parties and, indeed, among the courts and commentators, that the protection of the copyright statute also can be secured when a conceptual separability exists between the material sought to be copyrighted and the utilitarian design in which that material is incorporated.^[8] The [923] difficulty lies not in the acceptance of that proposition, which the statutory language clearly contemplates, but in its application. As noted by Pivot Point, the following tests have been suggested for determining when the artistic and utilitarian aspects of useful articles are conceptually separable: 1) the artistic features are "primary" and the utilitarian features "subsidiary," Kieselstein-Cord, 632 F.2d at 993; 2) the useful article "would still be marketable to some significant segment of the community simply because of its aesthetic qualities," Melville B. Nimmer & David Nimmer, 1 Nimmer on Copyright § 2.08[B][3], at 2-101 (2004); 3) the article "stimulate[s] in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function," Carol Barnhart, 773 F.2d at 422 (Newman, J., dissenting); 4) the artistic design was not significantly influenced by functional considerations, see Brandir Int'l, 834 F.2d at 1145 (adopting the test forwarded in Denicola, supra, at 741); 5) the artistic features "can stand alone as a work of art traditionally conceived, and ... the useful article in which it is embodied would be equally useful without it," Goldstein, 1 Copyright § 2.5.3, at 2:67; and 6) the artistic features are not utilitarian, see William F. Patry, 1 Copyright Law & Practice 285 (1994).

Pivot Point submits that "the test for conceptual separability should reflect the focus of copyright law — the artistic, not the marketability, design process, or usefulness." Appellant's Br. at 26. According to Pivot Point, the central inquiry is whether the article is a "'work of art.'" Id. Pivot Point further explains:

Conceptual separability would inhere in a "work of art" integrated into a useful article, or a "work of art" put to unexpected use, since the independent concepts of art and utility coexist. Conceptual separability would not exist in a useful article rendered simply aesthetically pleasing, since the independent concept of art does not exist, only the "artistic" embellishment to its utility, so that such "artistic" features are actually utilitarian. Should the "artistic" embellishment of utility reach the level of a "work of art," however, conceptual separability may exist.

Id. at 26-27. This test, Pivot Point suggests, has the additional benefit of "satisf[ying] most, if not all, of the current definitions of conceptual separability." Id. at 27.

Charlene, by contrast, lauds the district court's adoption of Professor Goldstein's test. "Under Goldstein's test," Charlene [924] asserts, "'a pictorial, graphic or sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as a work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it.'" Appellees' Br. at 26 (quoting R.401 at 5; emphasis added). Charlene contends that this approach mirrors that adopted by the majority in Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985), "the most closely related precedent to the case at bar." Appellees' Br. at 26.

Although both sides present thoughtful explanations for their proposed tests, we perceive shortcomings in the parties' choices. With respect to Pivot Point's focus on the article as a "work of art," it is certainly correct that Congress, in enacting § 101, attempted to separate the artistic from the utilitarian. However, this approach necessarily involves judges in a qualitative evaluation of artistic endeavors — a function for which judicial office is hardly a qualifier. With respect to the Charlene's approach, we believe that the test, at least when applied alone, is tied too closely to physical separability and, consequently, does not give a sufficiently wide berth to Congress' determination that artistic material conceptually separate from the utilitarian design can satisfy the statutory mandate.

In articulating a meaningful approach to conceptual separability, we note that we are not the first court of appeals to deal with this problem. The work of our colleagues in the other circuits provides significant insights into our understanding of Congressional intent. Indeed, even when those judges have disagreed on the appropriate application of the Congressional mandate to the case before them, their insight yield a bountiful harvest for those of us who now walk the same interpretative path.

Among the circuits, the Court of Appeals for the Second Circuit has had occasion to wrestle most comprehensively with the notion of "conceptual separability." Its case law represents, we believe, an intellectual journey that has explored the key aspects of the problem. We therefore turn to a study of the key stages of doctrinal development in its case law.

a.

The Second Circuit first grappled with the issue of conceptual separability in Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.1980). In that case, Kieselstein-Cord, a jewelry designer, had created a line of decorative and jeweled belt buckles inspired by works of art; he obtained copyright registrations for his designs. When the line was successful, Accessories by Pearl, Inc., ("Pearl") copied the designs and marketed its own, less-expensive versions of the belt buckles. Kieselstein-Cord then sued Pearl for copyright infringement; however, Pearl claimed that the belt buckles were not copyrightable because they were "'useful articles' with no 'pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects' of the buckles." Id. at 991-92. The Second Circuit disagreed. Although it did not articulate a specific test for evaluating conceptual separability, it focused on the "primary" and "subsidiary" elements of the article and concluded:

We see in appellant's belt buckles conceptually separable sculptural elements, as apparently have the buckles' wearers who have used them as ornamentation for parts of the body other than the waist. The primary ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function. This conclusion is not at variance with the [925] expressed congressional intent to distinguish copyrightable applied art and uncopyrightable industrial design. Pieces of applied art, these buckles may be considered jewelry, the form of which is subject to copyright protection.

Id. at 993 (internal citations omitted).^[9]

b.

The Second Circuit revisited the issue of conceptual separability in Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985). In that case, Carol Barnhart, a provider of retail display items, developed four mannequins consisting of human torsos for the display of shirts and jackets. It obtained copyright registrations for each of the forms.^[10] When a competitor, Economy Cover, copied the designs, Carol Barnhart claimed infringement of that copyright. The Second Circuit held that the designs were not copyrightable. It explained:

[W]hile copyright protection has increasingly been extended to cover articles having a utilitarian dimension, Congress has explicitly refused copyright protection for works of applied art or industrial design which have aesthetic or artistic features that cannot be identified separately from the useful article. Such works are not copyrightable regardless of the fact that they may be "aesthetically satisfying and valuable.

Applying these principles, we are persuaded that since the aesthetic and artistic features of the Barnhart forms are inseparable from the forms' use as utilitarian articles the forms are not copyrightable.... [Barnhart] stresses that the forms have been responded to as sculptural forms, and have been used for purposes other than modeling clothes, e.g., as decorating props and signs without any clothing or accessories. While this may indicate that the forms are "aesthetically satisfying and valuable," it is insufficient to show that the forms possess aesthetic or artistic features that are physically or conceptually separable from the forms' use as utilitarian objects to display clothes. On the contrary, to the extent the forms possess aesthetically pleasing features, even when these features are considered in the aggregate, they cannot be conceptualized as existing independently of their utilitarian function.

Id. at 418 (internal citations omitted). The court also rejected the argument that Kieselstein-Cord was controlling. The majority explained that what distinguished the Kieselstein-Cord buckles from the Barnhart forms was "that the ornamented surfaces of the buckles were not in any respect required by their functions; the artistic and aesthetic features would thus be conceived as having been added to, or superimposed upon, an otherwise utilitarian article." Id. at 419.

Perhaps the most theoretical and comprehensive discussion of "conceptual separability," as opposed to physical separability, can be found in the dissenting opinion of Judge Newman in Carol Barnhart, 773 F.2d at 419. After reviewing the possible ways to determine conceptual separability, Judge Newman set forth his choice and rationale:

How, then, is "conceptual separateness" to be determined? In my view, the answer derives from the word "conceptual." For the design features to be "conceptually separate" from the utilitarian [926] aspects of the useful article that embodies the design, the article must stimulate in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function. The test turns on what may reasonably be understood to be occurring in the mind of the beholder or, as some might say, in the "mind's eye" of the beholder....

The "separateness" of the utilitarian and non-utilitarian concepts engendered by an article's design is itself a perplexing concept. I think the requisite "separateness" exists whenever the design creates in the mind of the ordinary observer two different concepts that are not inevitably entertained simultaneously. Again, the example of the artistically designed chair displayed in a museum may be helpful. The ordinary observer can be expected to apprehend the design of a chair whenever the object is viewed. He may, in addition, entertain the concept of a work of art, but, if this second concept is engendered in the observer's mind simultaneously with the concept of the article's utilitarian function, the requisite "separateness" does not exist. The test is not whether the observer fails to recognize the object as a chair but only whether the concept of the utilitarian function can be displaced in the mind by some other concept. That does not occur, at least for the ordinary observer, when viewing even the most artistically designed chair. It may occur, however, when viewing some other object if the utilitarian function of the object is not perceived at all; it may also occur, even when the utilitarian function is perceived by observation, perhaps aided by explanation, if the concept of the utilitarian function can be displaced in the observer's mind while he entertains the separate concept of some non-utilitarian function. The separate concept will normally be that of a work of art.

Id. at 422-23.

c.

The Second Circuit soon addressed conceptual separability again in Brandir International, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir.1987). That case involved the work of an artist, David Levine; specifically, Levine had created a sculpture of thick, interwoven wire. A cyclist friend of Levine's realized that the sculpture could, with modification, function as a bicycle rack and thereafter put Levine in touch with Brandir International, Inc. ("Brandir"). The artist and the Brandir engineers then worked to modify the sculpture to produce a workable and marketable bicycle rack. Their work culminated in the "Ribbon Rack," which Brandir began marketing in 1979. Shortly thereafter, Cascade Pacific Lumber Co. ("Cascade") began selling a similar product, and, in response, Brandir applied for copyright protection and began placing copyright notices on its racks. The Copyright Office, however, rejected the registration on the ground that the rack did not contain any element that was "capable of independent existence as a copyrightable pictorial, graphic or sculptural work apart from the shape of the useful article." Id. at 1146.

The court first considered the possible tests for conceptual separability in light of its past decisions and, notably, attempted to reconcile its earlier attempts:

Perhaps the differences between the majority and the dissent in Carol Barnhart might have been resolved had they had before them the Denicola article on Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, [67 Minn. L.Rev. 707 (1983)].... Denicola argues that "the statutory directive requires a distinction [927] between works of industrial design and works whose origins lie outside the design process, despite the utilitarian environment in which they appear." He views the statutory limitation of copyrightability as "an attempt to identify elements whose form and appearance reflect the unconstrained perspective of the artist," such features not being the product of industrial design. Id. at 742. "Copyrightability, therefore, should turn on the relationship between the proffered work and the process of industrial design." Id. at 741. He suggests that "the dominant characteristic of industrial design is the influence of nonaesthetic, utilitarian concerns" and hence concludes that copyrightability "ultimately should depend on the extent to which the work reflects artistic expression uninhibited by functional considerations." Id. To state the Denicola test in the language of conceptual separability, if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists.

We believe that Professor Denicola's approach provides the best test for conceptual separability and, accordingly, adopt it here for several reasons. First, the approach is consistent with the holdings of our previous cases. In Kieselstein-Cord, for example, the artistic aspects of the belt buckles reflected purely aesthetic choices, independent of the buckles' function, while in Carol Barnhart the distinctive features of the torsos — the accurate anatomical design and the sculpted shirts and collars — showed clearly the influence of functional concerns.... Second, the test's emphasis on the influence of utilitarian concerns in the design process may help ... "alleviate the de facto discrimination against nonrepresentational art that has regrettably accompanied much of the current analysis." Id. at 745.

Id. at 1145 (footnotes omitted).

Applying Professor Denicola's test to the Ribbon Rack, the court found that the rack was not copyrightable. The court stated that, "[h]ad Brandir merely adopted one of the existing sculptures as a bicycle rack, neither the application to a utilitarian end nor commercialization of that use would have caused the object to forfeit its copyrighted status." Id. at 1147. However, when the Ribbon Rack was compared to earlier sculptures, continued the court, it was "in its final form essentially a product of industrial design." Id.

In creating the RIBBON Rack, the designer ... clearly adapted the original aesthetic elements to accommodate and further a utilitarian purpose. These altered design features of the RIBBON Rack, including the spacesaving, open design achieved by widening the upper loops ..., the straightened vertical elements that allow in- and above-ground installation of the rack, the ability to fit all types of bicycles and mopeds, and the heavy-gauged tubular construction of rustproof galvanized steel, are all features that combine to make for a safe, secure, and maintenance-free system of parking bicycles and mopeds.

. . .

... While the RIBBON Rack may be worthy of admiration for its aesthetic qualities alone, it remains nonetheless the product of industrial design. Form and function are inextricably intertwined in the rack, its ultimate design being as much the result of utilitarian pressures as aesthetic choices.... Thus there remains no artistic element of the RIBBON Rack that can be identified as [928] separate and "capable of existing independently, of, the utilitarian aspects of the article.

Id. at 1146-47.

d.

We believe that the experience of the Second Circuit is also reflected in the more recent encounter of the Fourth Circuit with the same problem. In Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488 (4th Cir.1996), the court considered whether animal mannequins qualified for copyright protection. The Fourth Circuit first considered whether the mannequins were useful articles as defined by § 101 and concluded that they were not:

A mannequin provides the creative form and expression of the ultimate animal display.... Even though covered with a skin, the mannequin is not invisible but conspicuous in the final display. The angle of the animal's head, the juxtaposition of its body parts, and the shape of the body parts in the final display is little more than the portrayal of the underlying mannequin.... None of these expressive aspects of a mannequin is lost by covering the mannequin with a skin. Thus, any utilitarian aspect of the mannequin exists "merely to portray the appearance" of the animal. See 17 U.S.C. § 101.

... It is the portrayal of the animal's body expression given by the mannequin that is thus protectable under the Copyright Act. We therefore agree with the district court in this case because "the usefulness of the forms is their portrayal of the appearance of animals." The mannequin forms "by definition are not useful articles.

Id. at 494 (quoting Superior Form Builders v. Dan Chase Taxidermy Supply Co., Inc., 851 F.Supp. 222, 223 (E.D.Va.1994)).

The court, however, also considered whether, if useful, the utilitarian and aesthetic aspects of the mannequin were separable:

To the extent that an argument can be made that the mannequins in this case perform a utilitarian function — other than portraying themselves — by supporting the mounted skins, we believe the function to be conceptually separable from the works' sculptural features. See Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir.1987) ("Where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists."); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.1980) (finding sculptural element of belt buckle conceptually separable from utilitarian function).

Id. Thus, without specifically adopting one of the tests of conceptual separability, the Fourth Circuit determined that artistic work put into the design of the animal frame was copyrightable; the fact that a skin was placed on the model and that the model, therefore, was useful in the display of the skin did not negate the artistic elements of the design.^[11]

e.

[929] There is one final Second Circuit case that bears comment. In Mattel, Inc. v. Goldberger Doll Manufacturing Co., 365 F.3d 133 (2d Cir.2004), the Second Circuit rejected the idea that a particular expression of features on a doll's face was not subject to copyright protection. The case arose out of the alleged copying of the facial features of Mattel's Barbie dolls by Goldberger Doll Manufacturing when creating its "Rockettes 2000" doll. On Goldberger's motion for summary judgment, the district court held that "copyright protection did not extend to Barbie's eyes, nose, and mouth ...." Id. at 134. The Second Circuit reversed. Although it did not speak specifically in terms of conceptual separability, the court's reasoning is nevertheless instructive; it stated:

The proposition that standard or common features are not protected is inconsistent with copyright law. To merit protection from copying, a work need not be particularly novel or unusual. It need only have been "independently created" by the author and possess "some minimal degree of creativity." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).... There are innumerable ways of making upturned noses, bow lips, and widely spaced eyes. Even if the record had shown that many dolls possess upturned noses, bow lips, and wide-spread eyes, it would not follow that each such doll — assuming it was independently created and not copied from others — would not enjoy protection from copying.

Id. at 135 (footnotes and parallel citations omitted). Additionally, the court noted the scope of the copyright protection that the Barbie dolls enjoyed:

The copyright does not protect ideas; it protects only the author's particularized expression of the idea. Thus, Mattel's copyright in a doll visage with an upturned nose, bow lips, and widely spaced eyes will not prevent a competitor from making dolls with upturned noses, bow lips, and widely spaced eyes, even if the competitor has taken the idea from Mattel's example, so long as the competitor [930] has not copied Mattel's particularized expression. An upturned nose, bow lips, and wide eyes are the "idea" of a certain type of doll face. That idea belongs not to Mattel but to the public domain. But Mattel's copyright will protect its own particularized expression of that idea and bar a competitor from copying Mattel's realization of the Barbie features.

Id. at 136 (citations omitted).

C. Application

Each of these cases differs in the object at issue and the method by which the court evaluated whether the object was entitled to copyright protection. Yet, each court attempted to give effect to "the expressed congressional intent to distinguish copyrightable applied art and uncopyrightable industrial design." Kieselstein-Cord, 632 F.2d at 993; see also Carol Barnhart, 773 F.2d at 417-18 (reviewing legislative history in detail and concluding that, although "copyright protection has increasingly been extended to cover articles having a utilitarian dimension," Congress did not intend all useful articles that are "aesthetically satisfying or valuable" to be copyrightable); Brandir Int'l, 834 F.2d at 1145 (adopting Professor Denicola's test that makes copyrightability dependent upon "the extent to which the work reflects artistic expression uninhibited by functional considerations" (internal quotation marks and citations omitted)); Superior Form Builders, 74 F.3d at 494 (distinguishing the animal mannequins at issue from "aesthetically pleasing articles of industrial design").

The Second Circuit cases exhibit a progressive attempt to forge a workable judicial approach capable of giving meaning to the basic Congressional policy decision to distinguish applied art from uncopyrightable industrial art or design. In Kieselstein-Cord, the Second Circuit attempted to distinguish artistic expression from industrial design by focusing on the present use of the item, i.e., the "primary ornamental aspect" versus the "subsidiary utilitarian function" of the object at issue. 632 F.2d at 993. In Carol Barnhart, the Second Circuit moved closer to a process-oriented approach:

What distinguishes those [Kieselstein-Cord] buckles from the Barnhart forms is that the ornamented surfaces of the buckles were not in any respect required by their utilitarian functions; the artistic and aesthetic features could thus be conceived of as having been added to, or superimposed upon, an otherwise utilitarian article. The unique artistic design was wholly unnecessary to performance of the utilitarian function. In the case of the Barnhart forms, on the other hand, the features claimed to be aesthetic or artistic, e.g., the life-size configuration of the breasts and the width of the shoulders, are inextricably intertwined with the utilitarian feature, the display of clothes. Whereas a model of a human torso, in order to serve its utilitarian function, must have some configuration of the chest and some width of shoulders, a belt buckle can serve its function satisfactorily without any ornamentation of the type that renders the Kieselstein-Cord buckles distinctive.

773 F.2d at 419. Thus, it was the fact that the creator of the torsos was driven by utilitarian concerns, such as how display clothes would fit on the end product, that deprived the human torsos of copyright protection.

This process-oriented approach for conceptual separability — focusing on the process of creating the object to determine whether it is entitled to copyright protection — is more fully articulated in Brandir and indeed reconciles the earlier case law pertaining to conceptual separability.

[T]he approach is consistent with the holdings of our previous cases. In Kieselstein-Cord, [931] for example, the artistic aspects of the belt buckles reflected purely aesthetic choices, independent of the buckles' function, while in Carol Barnhart the distinctive features of the torsos — the accurate anatomical design and the sculpted shirts and collars — showed clearly the influence of functional concerns. Though the torsos bore artistic features, it was evident the designer incorporated those features to further the usefulness of the torsos as mannequins.

Brandir, 834 F.2d at 1145.

Furthermore, Brandir is not inconsistent with the more theoretical rendition of Judge Newman in his Carol Barnhart dissent — that "the requisite 'separateness' exists whenever the design creates in the mind of an ordinary observer two different concepts that are not inevitably entertained simultaneously." 773 F.2d at 422. When a product has reached its final form as a result of predominantly functional or utilitarian considerations, it necessarily will be more difficult for the observer to entertain simultaneously two different concepts — the artistic object and the utilitarian object. In such circumstances, Brandir has the added benefit of providing a more workable judicial methodology by articulating the driving principle behind conceptual separability — the influence of industrial design. When the ultimate form of the object in question is "as much the result of utilitarian pressures as aesthetic choices," "[f]orm and function are inextricably intertwined," and the artistic aspects of the object cannot be separated from its utilitarian aspects for purposes of copyright protection. Brandir, 834 F.2d at 1147.

Conceptual separability exists, therefore, when the artistic aspects of an article can be "conceptualized as existing independently of their utilitarian function." Carol Barnhart, 773 F.2d at 418. This independence is necessarily informed by "whether the design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences." Brandir, 834 F.2d at 1145. If the elements do reflect the independent, artistic judgment of the designer, conceptual separability exists. Conversely, when the design of a useful article is "as much the result of utilitarian pressures as aesthetic choices," id. at 1147, the useful and aesthetic elements are not conceptually separable.

Applying this test to the Mara mannequin, we must conclude that the Mara face is subject to copyright protection. It certainly is not difficult to conceptualize a human face, independent of all of Mara's specific facial features, i.e., the shape of the eye, the upturned nose, the angular cheek and jaw structure, that would serve the utilitarian functions of a hair stand and, if proven, of a makeup model. Indeed, one is not only able to conceive of a different face than that portrayed on the Mara mannequin, but one easily can conceive of another visage that portrays the "hungry look" on a high-fashion runway model. Just as Mattel is entitled to protection for "its own particularized expression" of an "upturned nose[], bow lips, and widely spaced eyes," Mattel, 365 F.3d at 136, so too is Heerlein (and, therefore, Pivot Point as assignee of the copyright registration) entitled to have his expression of the "hungry look" protected from copying.

Mara can be conceptualized as existing independent from its use in hair display or make-up training because it is the product of Heerlein's artistic judgment. When Passage approached Heerlein about creating the Mara sculpture, Passage did not provide Heerlein with specific dimensions or measurements; indeed, there is no evidence that Heerlein's artistic judgment was constrained by functional considerations. [932] Passage did not require, for instance, that the sculpture's eyes be a certain width to accommodate standard-sized eyelashes, that the brow be arched at a certain angle to facilitate easy make-up application or that the sculpture as a whole not exceed certain dimensional limits so as to fit within Pivot Point's existing packaging system. Such considerations, had they been present, would weigh against a determination that Mara was purely the product of an artistic effort. By contrast, after Passage met with Heerlein to discuss Passage's idea for a "hungry-look" model, Heerlein had carte blanche to implement that vision as he saw fit. Consequently, this is not a situation, such as was presented to the Second Circuit in Carol Barnhart, in which certain features ("accurate anatomical design and the sculpted shirts and collars") were included in the design for purely functional reasons. Brandir, 834 F.2d at 1145. Furthermore, unlike "the headless, armless, backless styrene torsos" which "were little more than glorified coat-racks used to display clothing in stores," Hart, 86 F.3d at 323, the creative aspects of the Mara sculpture were meant to be seen and admired. Thus, because Mara was the product of a creative process unfettered by functional concerns, its sculptural features "can be identified separately from, and are capable of existing independently of," its utilitarian aspects. It therefore meets the requirements for conceptual separability and is subject to copyright protection.

Conclusion

The Mara mannequin is subject to copyright protection. We therefore must reverse the summary judgment in favor of Charlene Products and Mr. Yau; the case is remanded for a trial on Pivot Point's infringement claim. Furthermore, because Charlene Products and Mr. Yau have not prevailed on the merits at this point, the judgment of the district court with respect to attorneys' fees must be vacated. The cross-appeal with respect to attorneys' fees is moot. Pivot Point may recover its costs in this court.

REVERSED AND REMANDED; CROSS-APPEAL DISMISSED

__________

KANNE, Circuit Judge, dissenting.

Writing for the majority, Judge Ripple has applied his usual thorough and scholarly approach to this difficult intellectual property problem; however, I cannot join the majority opinion because I am not persuaded that the "Mara" mannequin is copyrightable. All functional items have aesthetic qualities. If copyright provided protection for functional items simply because of their aesthetic qualities, Congress's policy choice that gives less protection in patent than copyright would be undermined. See American Dental Ass'n v. Delta Dental Plans Ass'n, 126 F.3d 977, 980 (7th Cir.1997).

The majority rightly assumes that Mara is a "useful article" as defined in 17 U.S.C. § 101. Opinion at 920. To receive copyright protection as a "sculptural work," then, Mara must come within the narrow restrictions placed on "useful articles" in the definition of pictorial, graphic, and sculptural works:

[T]he design of a useful article ... shall be considered a... sculptural work only if, and only to the extent that, such design incorporates ... sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

17 U.S.C. § 101 (emphasis added). As the district court noted, the statute requires, on its face, that sculptural features must be separately identified from the utilitarian aspects of the article ("conceptual separability") and they must exist independently from the utilitarian aspects of the article [933] ("physical separability") in order to receive copyright protection. As to whether both conceptual and physical separability are required for copyrightability, most courts and commentators have concluded that only one or the other test is appropriate. But that issue is not presented here because Mara is not copyrightable regardless of whether both or either is applied.

Taking physical separability first, the district court used examples from case law to illustrate that the sculptural features in many useful items can be physically removed from the object and sold separately without affecting the functionality of the useful article. See, e.g., Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954) (holding that a sculpture of a dancer carved into the base of a lamp may be copyrighted); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.1980) (holding that decorative belt buckles could be copyrighted as separate objects sold not to hold up one's pants).

Mara, on the other hand, has only functional attributes. Thus, any physical separation of a portion of her would not be independent of her utilitarian aspects. She is sold to beauty schools as a teaching device; students style her hair and apply makeup as realistic training for such pursuits on live subjects. A mannequin head without a neck, or with different eyes and musculature, would not serve the utilitarian purpose of applying makeup or teaching the art of matching hair styles to facial features. As the district court explained: "Beauty students style hair to flatter the face, not to be worn on featureless ovoids. The use of a mannequin head in training students of beauty schools lies in its aesthetic qualities." There is nothing in Mara that we could physically remove that would not be part of Mara's utility as a teaching aid. Like mannequins of human torsos, Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 418-19 (2d Cir.1985), mannequins of human faces are not physically separable from their functional purpose and are therefore not copyrightable.

Next, the district court considered various restatements of the meaning of "conceptual separability" (whether features can be identified or conceived of separately from the utilitarian aspects) and applied the most appropriate one to Mara. Professor Goldstein, in his treatise, Copyright: Principles, Law & Practice, presents a reasonable explanation of the statutory text: "a ... sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as a work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it." Mara has no conceptually separable features to which copyright protection could be granted. Her features are incapable of being identified separately from the utilitarian use of those features. Without features, the mannequin's head and neck would be little more than an egg on a stick, useless for its intended purpose. Mara possesses neither physical nor conceptual separability.

The majority, concluding that Congress intended "to state a single, integrated standard," deduced that the standard must be "conceptual separability." This may be correct, as it is very difficult to divine the distinction between physical and conceptual separability if those standards are properly stated. In my view, however, the majority's explanation of conceptual separability lacks a basis in the statute. As the majority sees it, conceptual separability "exists ... when the artistic aspects of an article can be conceptualized as existing independently of their utilitarian function." Opinion at 931. The majority further explains that the way to determine if this is the case is to look to the process of design: if independent "artistic" choices were made in the sculpture's creation, and such [934] choices were not later sullied by the influence of industrial design, then some of the useful article is a conceptually separable sculpture and therefore copyrightable, Opinion at 931-32.

Problematically, the majority's test for conceptual separability seems to bear little resemblance to the statute. The statute asks two questions: Does the useful article incorporate "sculptural features that can be identified separately from the utilitarian aspects" of the article? And are these features "capable of existing independently" from the utilitarian aspects? The copyright statute is concerned with protecting only non-utilitarian features of the useful article. To be copyrightable, the statute requires that the useful article's functionality remain intact once the copyrightable material is separated. In other words, Pivot Point needs to show that Mara's face is not a utilitarian "aspect" of the product "Mara," but rather a separate non-utilitarian "feature." The majority, by looking only to whether the features could also "be conceptualized as existing independently of their utilitarian function" and ignoring the more important question of whether the features themselves are utilitarian aspects of the useful article, mistakenly presupposes that utilitarian aspects of a useful article can be copyrighted. If we took away Mara's facial features, her functionality would be greatly diminished or eliminated, thus proving that her features cannot be copyrighted.

Moreover, the "process-oriented approach," advocated by the majority drifts even further away from the statute. Opinion at 930. The statute looks to the useful article as it exists, not to how it was created. I believe it simply is irrelevant to inquire into the origins of Mara's eyes, cheekbones, and neck. If such features have been fully incorporated as functional aspects of the mannequin, then copyright does not provide protection. Even if we were to look at the "process" that led to the creation of Mara, it is undeniable that, from the beginning, Pivot Point intended Mara to serve a functional purpose and commissioned her creation to fulfill that purpose (not to create a work of art for aesthetic beauty).

The majority, as evidenced by its emphasis on the fact that Charlene Products apparently copied Mara with its doll, "Liza," seems unduly concerned in this context with Charlene's questionable business practices. This is immaterial to the determination of whether the Mara doll is protected by copyright law. Importantly, other possible legal protections for Pivot Point's intellectual property — design patent, trademark, trade dress, and state unfair competition law — are available to address the majority's concerns. Copyright does not protect functional products. Charlene is free, under its own brand name, to copy and sell copies of useful articles that do not have patent protection. See, e.g., TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964). I fear that the majority's opinion grants copyright protection to functional aspects of a useful article. I would, therefore, affirm the district court's grant of summary judgment in favor of Charlene Products and Mr. Yau.

__________

[1] Chief Judge Joel M. Flaum, The Honorable Frank H. Easterbrook and The Honorable Ann Claire Williams did not participate in the consideration of the petition for rehearing en banc.

[2] Mr. Yau was not unfamiliar with Pivot Point. Shortly before founding Charlene Products in 1985, Mr. Yau had worked for Pivot Point.

[3] Charlene eventually obtained a copyright registration for its Liza mannequin.

[4] Federal Rule of Civil Procedure 83 provides:

(1) Each district court, acting by a majority of its district judges, may, after giving appropriate public notice and an opportunity for comment, make and amend rules governing its practice. A local rule shall be consistent with — but not duplicative of — Acts of Congress and rules adopted under 28 U.S.C. §§ 2072 and 2075, and shall conform to any uniform numbering system prescribed by the Judicial Conference of the United States. A local rule takes effect on the date specified by the district court and remains in effect unless amended by the court or abrogated by the judicial council of the circuit. Copies of rules and amendments shall, upon their promulgation, be furnished to the judicial council and the Administrative Office of the United States Courts and be made available to the public.

Fed.R.Civ.P. 83(a)(1) (emphasis added).

[5] The district court relied heavily on this fact in concluding that Mara is a useful object:

Mara is a work of "applied art" and displays "artistic craftsmanship" — Pivot Point commissioned a sculptor to design a mannequin head that emulates features of runway models — but serves utilitarian ends: Students in beauty schools practice styling hair on Mara's head and may practice other skills by applying makeup to Mara's eyes, lips, and cheeks. The parties dispute which functions are primary. Charlene Products says that Mara is used primarily for practicing makeup; Pivot Point insists that its primary use is hair styling. This factual dispute might have legal significance if Pivot Point were contending that Mara's sole use is hair styling; then it is (barely) possible to imagine a suitable mannequin head devoid of human features. (The legal significance of this possibility is explicated below.) But Pivot Point contends only that Mara's "primary" use is hair styling; it does not deny that a use (if only, in its view, a secondary one) is the application of makeup and other beauty-school arts, and the evidence would not permit a reasonable jury to conclude that Mara has no utilitarian value for makeup practice. (Pivot Point says that it "generally" sells Mara with painted-on makeup, which reveals by negative implication that it also sells Mara without eye or cheek coloring, so that beauty-school students can add their own.)

R.401 at 2.

[6] Prior to the addition of this language in the 1976 Act, Congress had not explicitly authorized the Copyright Office to register "useful articles." Indeed, when Congress first extended copyright protection to three-dimensional works of art in 1870, copyright protection was limited to objects of fine art; objects of applied art still were not protected. See Paul Goldstein, 1 Copyright § 2.5.3 at 2:58 (2d ed.2004). This changed with the adoption of the Copyright Act of 1909 ("1909 Act"); Professor Goldstein explains:

The 1909 Act, which continued protection for three-dimensional works of art, dropped the requirement that they constitute fine art and thus opened the door to protection of useful works of art. In 1948, the Copyright Office broadened the scope of protection for three-dimensional works of art to cover "works of artistic craftsmanship insofar as their form but not their utilitarian aspects are concerned." The United States Supreme Court upheld this interpretation in Mazer v. Stein, [347 U.S. 201, 213, 74 S.Ct. 460, 98 L.Ed. 630 (1954),] holding that the fact that statuettes in issue were intended for use in articles of manufacture — electric lamp bases — did not bar them from copyright. Five years later, in 1959, the Copyright Office promulgated a rule that if "the sole intrinsic function of an article is its utility, the fact that the work is unique and attractively shaped will not qualify it as a work of art." The regulation did, however, permit registration of features of a utilitarian article that "can be identified separately and are capable of existing independently as a work of art.

Id. (quoting 37 C.F.R. § 207.8(a) (1949) and 37 C.F.R. § 202.10(c) (1959); footnotes omitted).

[7] See infra note 8.

[8] Although the district court was skeptical that the statutory language encompassed both physical and conceptual separability, circuits have been almost unanimous in interpreting the language of § 101 to include both types of separability. See Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488, 494 (4th Cir.1996) (asking whether functional aspects of animal mannequins are "conceptually separable from the works' sculptural features"); Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1144 (2d Cir.1987) (stating that "'[c]onceptual separability' is alive and well"); Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 418 (2d Cir.1985) (judging copyrightability of mannequin torsos based on whether "forms possess aesthetic or artistic features that are physically or conceptually separable from the forms' use as utilitarian objects to display clothes"); Norris Indus., Inc. v. Int'l Tel. & Tel. Corp., 696 F.2d 918, 923 (11th Cir.1983) ("Both case law and legislative history indicate that separability encompasses works of art that are either physically severable from the utilitarian article or conceptually severable."); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.1980) (applying test of conceptual separability).

Only one appellate court has rejected the idea of conceptual separability. See Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C.Cir.1978). In that case, arising under the 1909 Act, the Copyright Office had refused to register a design for outdoor lighting fixtures. The district court, however, believed the fixtures were copyrightable and issued a writ of mandamus that the copyright issue. However, the D.C. Circuit reversed. The precise question before the court was whether the regulation implementing the 1909 Act mandated that the Copyright Office register a copyright for the lighting fixtures. The regulation at issue provided:

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

Id. at 800 (quoting 37 C.F.R. § 202.10(b) (1976)). The Copyright Office took the position that the regulation barred "copyright registration for the overall shape or configuration of a utilitarian article, no matter how aesthetically pleasing that shape or configuration may be." Id. In determining whether to accept or reject the proffered interpretation, the court noted that "[c]onsiderable weight is to be given to an agency's interpretation of its regulations," especially when "an administrative interpretation relates to a matter within the field of administrative expertise." Id. at 801. The court concluded that the Copyright Office had adopted a "reasonable and well-supported interpretation of § 202.10(c)." Id. at 800. In the court's view, the interpretation was grounded in "the principle that industrial designs are not eligible for copyright." Id. The court also believed that the interpretation found support in the legislative history of the newly enacted 1976 Act. The court acknowledged, however, that the legislative history was not "free from ambiguity"; it explained:

Esquire could arguably draw some support from the statement that a protectable element of a utilitarian article must be separable "physically or conceptually" from the utilitarian aspects of the design. But any possible ambiguity raised by this isolated reference disappears when the excerpt is considered in its entirety. The underscored passages indicate unequivocally that the overall design or configuration of a utilitarian object, even if it is determined by aesthetic as well as functional considerations, is not eligible for copyright. Thus the legislative history, taken as congressional understanding of existing law, reinforces the Register's position.

Id. at 803-04.

As is evident from the passages set forth above, the issue addressed by the D.C. Circuit in Esquire arose in a much different procedural and legal environment than the issue in the present case. The court's focus in Esquire was a regulation adopted pursuant to the former law and its obligation to defer to the agency's interpretation of the law embodied in that regulation. Furthermore, the court acknowledged that the 1976 Act was "not applicable to the case before" it. Id. at 803. Given these differences, we do not believe that the D.C. Circuit would conclude that its decision in Esquire disposed of the issue of conceptual separability presently before this court.

[9] Judge Weinstein (sitting by designation) dissented. See Kieselstein-Cord, 632 F.2d at 993.

[10] There were a total of four mannequins at issue, two male and two female. Of those four, two of the mannequin forms were unclothed, and two were formed with one layer of clothing and were meant specifically for the display of outerwear.

[11] Notably, in Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir.1996), the Second Circuit shortly thereafter addressed the question whether a fish mannequin was copyrightable. Although the court did not address specifically the issue before us today, its analysis is nevertheless helpful. Referring to its decision in Carol Barnhart, the Second Circuit posed the question rather simplistically: "Is taxidermy different [for purposes of copyright protection]?" Id. at 321. The Second Circuit resolved that it is:

We do not agree that Barnhart mandates a finding that fish mannequins are "useful articles" undeserving of copyright protection.... [W]e do not believe that the Barnhart torsos can be analogized to the fish in this case. In Barnhart, the headless, armless, backless styrene torsos were little more than glorified coat-racks used to display clothing in stores. The torsos were designed to present the clothing, not their own forms. In taxidermy, by contrast, people look for more than a fish skin; they wish to see a complete "fish." The superficial characteristics of the fish, such as its color and texture, are admittedly conveyed by the skin, but the shape, volume, and movement of the animal are depicted by the underlying mannequin. Whether the fish is shown as resting, jumping, wiggling its tail, or preparing to munch on some plankton, is dictated by the mannequin and by its particular form, not by the skin.

In short, the fish mannequin is designed to be looked at. That the fish mannequin is meant to be viewed clothed by a fish skin, rather than naked and on its own, makes no difference. The function of the fish form is to portray its own appearance, and that fact is enough to bring it within the scope of the Copyright Act. 17 U.S.C. § 101; accord Superior Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488 (4th Cir.1996) (distinguishing Barnhart and holding that mammal taxidermy mannequins are "sculptural works" rather than "useful articles" because their utilitarian aspects serve "merely to portray the appearance" of the animal)....

We conclude that fish mannequins even if considered "useful articles," are useful insofar as they "portray the[ir] appearance." 17 U.S.C. § 101. That makes them copyrightable.

Id. at 323 (internal citation omitted). Thus, the Second Circuit distinguished fish mannequins from human mannequins; however, it did so on the basis that the fish mannequins were not "useful articles" as that term is defined in § 101, not on the basis that, although useful, the artistic aspects were physically or conceptually separable from the useful aspects of the article.

[695] Stephen D. Kahn, New York City (Stuart D. Levi, Beth K. Neelman, Carol A. Motyka, Weil, Gotshal & Manges, Michael A. [696] McElroy, Computer Associates Intern., Inc., of counsel), for plaintiff-appellant, cross-appellee.

Susan G. Braden, Washington, DC (Christ M. Kacoyannakis, Anderson Kill Olick & Oshinshy, Washington, DC, Stephen D. Susman, Susman Godfrey, Houston, TX, of counsel), for defendant-appellee, cross-appellant.

Bruce A. Lehman, Swidler & Berlin, Washington, DC, filed a brief amicus curiae, on behalf of The Software Publishers Ass'n.

Peter M.C. Choy, Mountain View, CA, filed a brief amicus curiae, on behalf of the American Committee for Interoperable Systems.

J. David Cabello, Houston, TX, David R. Bradford, Provo, UT, Robert H. Kohn, Scotts Valley, CA, filed a brief amici curiae, on behalf of Compaq Computer Corp., Novell, Inc., and Borland Intern., Inc.

Before ALTIMARI, MAHONEY and WALKER, Circuit Judges.

WALKER, Circuit Judge:

In recent years, the growth of computer science has spawned a number of challenging legal questions, particularly in the field of copyright law. As scientific knowledge advances, courts endeavor to keep pace, and sometimes--as in the area of computer technology--they are required to venture into less than familiar waters. This is not a new development, though. "From its beginning, the law of copyright has developed in response to significant changes in technology." Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 430, 104 S.Ct. 774, 782, 78 L.Ed.2d 574 (1984).

Article I, section 8 of the Constitution authorizes Congress "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." The Supreme Court has stated that "[t]he economic philosophy behind the clause ... is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare...." Mazer v. Stein, 347 U.S. 201, 219, 74 S.Ct. 460, 471, 98 L.Ed. 630 (1954). The author's benefit, however, is clearly a "secondary" consideration. See United States v. Paramount Pictures, Inc., 334 U.S. 131, 158, 68 S.Ct. 915, 929, 92 L.Ed. 1260 (1948). "[T]he ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good." Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 2044, 45 L.Ed.2d 84 (1975).

Thus, the copyright law seeks to establish a delicate equilibrium. On the one hand, it affords protection to authors as an incentive to create, and, on the other, it must appropriately limit the extent of that protection so as to avoid the effects of monopolistic stagnation. In applying the federal act to new types of cases, courts must always keep this symmetry in mind. Id.

Among other things, this case deals with the challenging question of whether and to what extent the "non-literal" aspects of a computer program, that is, those aspects that are not reduced to written code, are protected by copyright. While a few other courts have already grappled with this issue, this case is one of first impression in this circuit. As we shall discuss, we find the results reached by other courts to be less than satisfactory. Drawing upon long-standing doctrines of copyright law, we take an approach that we think better addresses the practical difficulties embedded in these types of cases. In so doing, we have kept in mind the necessary balance between creative incentive and industrial competition.

This appeal comes to us from the United States District Court for the Eastern District of New York, the Honorable George C. Pratt, Circuit Judge, sitting by designation. By Memorandum and Order entered August 12, 1991, Judge Pratt found that defendant Altai, Inc.'s ("Altai"), OSCAR 3.4 computer program had infringed plaintiff Computer Associates' ("CA"), copyrighted computer program entitled CA-SCHEDULER. Accordingly, the district court awarded CA $364,444 in actual damages and apportioned profits. Altai has [697] abandoned its appeal from this award. With respect to CA's second claim for copyright infringement, Judge Pratt found that Altai's OSCAR 3.5 program was not substantially similar to a portion of CA-SCHEDULER called ADAPTER, and thus denied relief. Finally, the district court concluded that CA's state law trade secret misappropriation claim against Altai had been preempted by the federal Copyright Act. CA appealed from these findings.

Because we are in full agreement with Judge Pratt's decision and in substantial agreement with his careful reasoning regarding CA's copyright infringement claim, we affirm the district court's judgment on that issue. However, we vacate the district court's preemption ruling with respect to CA's trade secret claim, and remand the case to the district court for further proceedings.

BACKGROUND

We assume familiarity with the facts set forth in the district court's comprehensive and scholarly opinion. See Computer Assocs. Int'l., Inc. v. Altai, Inc., 775 F.Supp. 544, 549-55 (E.D.N.Y.1991). Thus, we summarize only those facts necessary to resolve this appeal.

I. COMPUTER PROGRAM DESIGN

Certain elementary facts concerning the nature of computer programs are vital to the following discussion. The Copyright Act defines a computer program as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result." 17 U.S.C. § 101. In writing these directions, the programmer works "from the general to the specific." Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1229 (3d Cir.1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987). See generally Steven R. Englund, Note, Idea, Process, or Protected Expression?: Determining the Scope of Copyright Protection of the Structure of Computer Programs, 88 MICH.L.REV. 866, 867-73 (1990) (hereinafter "Englund"); Peter S. Menell, An Analysis of the Scope of Copyright Protection for Application Programs, 41 STAN.L.REV. 1045, 1051-57 (1989) (hereinafter "Menell"); Mark T. Kretschmer, Note, Copyright Protection For Software Architecture: Just Say No!, 1988 COLUM.BUS.L.REV. 823, 824-27 (1988) (hereinafter "Kretschmer"); Peter G. Spivack, Comment, Does Form Follow Function? The Idea/Expression Dichotomy In Copyright Protection of Computer Software, 35 U.C.L.A.L.REV. 723, 729-31 (1988) (hereinafter "Spivack").

The first step in this procedure is to identify a program's ultimate function or purpose. An example of such an ultimate purpose might be the creation and maintenance of a business ledger. Once this goal has been achieved, a programmer breaks down or "decomposes" the program's ultimate function into "simpler constituent problems or 'subtasks,' " Englund, at 870, which are also known as subroutines or modules. See Spivack, at 729. In the context of a business ledger program, a module or subroutine might be responsible for the task of updating a list of outstanding accounts receivable. Sometimes, depending upon the complexity of its task, a subroutine may be broken down further into sub-subroutines.

Having sufficiently decomposed the program's ultimate function into its component elements, a programmer will then arrange the subroutines or modules into what are known as organizational or flow charts. Flow charts map the interactions between modules that achieve the program's end goal. See Kretschmer, at 826.

In order to accomplish these intra-program interactions, a programmer must carefully design each module's parameter list. A parameter list, according to the expert appointed and fully credited by the district court, Dr. Randall Davis, is "the information sent to and received from a subroutine." See Report of Dr. Randall Davis, at 12. The term "parameter list" refers to the form in which information is passed between modules (e.g. for accounts receivable, the designated time frame and particular customer identifying number) and the information's actual content (e.g. [698] 8/91-7/92; customer No. 3). Id. With respect to form, interacting modules must share similar parameter lists so that they are capable of exchanging information.

"The functions of the modules in a program together with each module's relationships to other modules constitute the 'structure' of the program." Englund, at 871. Additionally, the term structure may include the category of modules referred to as "macros." A macro is a single instruction that initiates a sequence of operations or module interactions within the program. Very often the user will accompany a macro with an instruction from the parameter list to refine the instruction (e.g. current total of accounts receivable (macro), but limited to those for 8/91 to 7/92 from customer No. 3 (parameters)).

In fashioning the structure, a programmer will normally attempt to maximize the program's speed, efficiency, as well as simplicity for user operation, while taking into consideration certain externalities such as the memory constraints of the computer upon which the program will be run. See id.; Kretschmer, at 826; Menell, at 1052. "This stage of program design often requires the most time and investment." Kretschmer, at 826.

Once each necessary module has been identified, designed, and its relationship to the other modules has been laid out conceptually, the resulting program structure must be embodied in a written language that the computer can read. This process is called "coding," and requires two steps. Whelan, 797 F.2d at 1230. First, the programmer must transpose the program's structural blue-print into a source code. This step has been described as "comparable to the novelist fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas." Kretschmer, at 826. The source code may be written in any one of several computer languages, such as COBAL, FORTRAN, BASIC, EDL, etc., depending upon the type of computer for which the program is intended. Whelan, 797 F.2d at 1230. Once the source code has been completed, the second step is to translate or "compile" it into object code. Object code is the binary language comprised of zeros and ones through which the computer directly receives its instructions. Id. at 1230-31; Englund, at 868 & n. 13.

After the coding is finished, the programmer will run the program on the computer in order to find and correct any logical and syntactical errors. This is known as "debugging" and, once done, the program is complete. See Kretschmer, at 826-27.

II. FACTS

CA is a Delaware corporation, with its principal place of business in Garden City, New York. Altai is a Texas corporation, doing business primarily in Arlington, Texas. Both companies are in the computer software industry--designing, developing and marketing various types of computer programs.

The subject of this litigation originates with one of CA's marketed programs entitled CA-SCHEDULER. CA-SCHEDULER is a job scheduling program designed for IBM mainframe computers. Its primary functions are straightforward: to create a schedule specifying when the computer should run various tasks, and then to control the computer as it executes the schedule. CA-SCHEDULER contains a sub-program entitled ADAPTER, also developed by CA. ADAPTER is not an independently marketed product of CA; it is a wholly integrated component of CA-SCHEDULER and has no capacity for independent use.

Nevertheless, ADAPTER plays an extremely important role. It is an "operating system compatibility component," which means, roughly speaking, it serves as a translator. An "operating system" is itself a program that manages the resources of the computer, allocating those resources to other programs as needed. The IBM System 370 family of computers, for which CA-SCHEDULER was created, is, depending upon the computer's size, designed to contain one of three operating systems: DOS/VSE, MVS, or CMS. As the district court noted, the general rule is that "a [699] program written for one operating system, e.g., DOS/VSE, will not, without modification, run under another operating system such as MVS." Computer Assocs., 775 F.Supp. at 550. ADAPTER's function is to translate the language of a given program into the particular language that the computer's own operating system can understand.

The district court succinctly outlined the manner in which ADAPTER works within the context of the larger program. In order to enable CA-SCHEDULER to function on different operating systems, CA divided the CA-SCHEDULER into two components:

--a first component that contains only the task-specific portions of the program, independent of all operating system issues, and

--a second component that contains all the interconnections between the first component and the operating system.

In a program constructed in this way, whenever the first, task-specific, component needs to ask the operating system for some resource through a "system call", it calls the second component instead of calling the operating system directly.

The second component serves as an "interface" or "compatibility component" between the task-specific portion of the program and the operating system. It receives the request from the first component and translates it into the appropriate system call that will be recognized by whatever operating system is installed on the computer, e.g., DOS/VSE, MVS, or CMS. Since the first, task-specific component calls the adapter component rather than the operating system, the first component need not be customized to use any specific operating system. The second, interface, component insures that all the system calls are performed properly for the particular operating system in use.

Id. at 551.

ADAPTER serves as the second, "common system interface" component referred to above.

A program like ADAPTER, which allows a computer user to change or use multiple operating systems while maintaining the same software, is highly desirable. It saves the user the costs, both in time and money, that otherwise would be expended in purchasing new programs, modifying existing systems to run them, and gaining familiarity with their operation. The benefits run both ways. The increased compatibility afforded by an ADAPTER-like component, and its resulting popularity among consumers, makes whatever software in which it is incorporated significantly more marketable.

Starting in 1982, Altai began marketing its own job scheduling program entitled ZEKE. The original version of ZEKE was designed for use in conjunction with a VSE operating system. By late 1983, in response to customer demand, Altai decided to rewrite ZEKE so that it could be run in conjunction with an MVS operating system.

At that time, James P. Williams ("Williams"), then an employee of Altai and now its President, approached Claude F. Arney, III ("Arney"), a computer programmer who worked for CA. Williams and Arney were longstanding friends, and had in fact been co-workers at CA for some time before Williams left CA to work for Altai's predecessor. Williams wanted to recruit Arney to assist Altai in designing an MVS version of ZEKE.

At the time he first spoke with Arney, Williams was aware of both the CA-SCHEDULER and ADAPTER programs. However, Williams was not involved in their development and had never seen the codes of either program. When he asked Arney to come work for Altai, Williams did not know that ADAPTER was a component of CA-SCHEDULER.

Arney, on the other hand, was intimately familiar with various aspects of ADAPTER. While working for CA, he helped improve the VSE version of ADAPTER, and was permitted to take home a copy of ADAPTER'S source code. This apparently developed into an irresistible habit, for when Arney left CA to work for Altai in January, 1984, he took with him copies of [700] the source code for both the VSE and MVS versions of ADAPTER. He did this in knowing violation of the CA employee agreements that he had signed.

Once at Altai, Arney and Williams discussed design possibilities for adapting ZEKE to run on MVS operating systems. Williams, who had created the VSE version of ZEKE, thought that approximately 30% of his original program would have to be modified in order to accommodate MVS. Arney persuaded Williams that the best way to make the needed modifications was to introduce a "common system interface" component into ZEKE. He did not tell Williams that his idea stemmed from his familiarity with ADAPTER. They decided to name this new component-program OSCAR.

Arney went to work creating OSCAR at Altai's offices using the ADAPTER source code. The district court accepted Williams' testimony that no one at Altai, with the exception of Arney, affirmatively knew that Arney had the ADAPTER code, or that he was using it to create OSCAR/VSE. However, during this time period, Williams' office was adjacent to Arney's. Williams testified that he and Arney "conversed quite frequently" while Arney was "investigating the source code of ZEKE" and that Arney was in his office "a number of times daily, asking questions." In three months, Arney successfully completed the OSCAR/VSE project. In an additional month he developed an OSCAR/MVS version. When the dust finally settled, Arney had copied approximately 30% of OSCAR's code from CA's ADAPTER program.

The first generation of OSCAR programs was known as OSCAR 3.4. From 1985 to August 1988, Altai used OSCAR 3.4 in its ZEKE product, as well as in programs entitled ZACK and ZEBB. In late July 1988, CA first learned that Altai may have appropriated parts of ADAPTER. After confirming its suspicions, CA secured copyrights on its 2.1 and 7.0 versions of CA-SCHEDULER. CA then brought this copyright and trade secret misappropriation action against Altai.

Apparently, it was upon receipt of the summons and complaint that Altai first learned that Arney had copied much of the OSCAR code from ADAPTER. After Arney confirmed to Williams that CA's accusations of copying were true, Williams immediately set out to survey the damage. Without ever looking at the ADAPTER code himself, Williams learned from Arney exactly which sections of code Arney had taken from ADAPTER.

Upon advice of counsel, Williams initiated OSCAR's rewrite. The project's goal was to save as much of OSCAR 3.4 as legitimately could be used, and to excise those portions which had been copied from ADAPTER. Arney was entirely excluded from the process, and his copy of the ADAPTER code was locked away. Williams put eight other programmers on the project, none of whom had been involved in any way in the development of OSCAR 3.4. Williams provided the programmers with a description of the ZEKE operating system services so that they could rewrite the appropriate code. The rewrite project took about six months to complete and was finished in mid-November 1989. The resulting program was entitled OSCAR 3.5.

From that point on, Altai shipped only OSCAR 3.5 to its new customers. Altai also shipped OSCAR 3.5 as a "free upgrade" to all customers that had previously purchased OSCAR 3.4. While Altai and Williams acted responsibly to correct Arney's literal copying of the ADAPTER program, copyright infringement had occurred.

After CA originally instituted this action in the United States District Court for the District of New Jersey, the parties stipulated its transfer in March, 1989, to the Eastern District of New York where it was assigned to Judge Jacob Mishler. On October 26, 1989, Judge Mishler transferred the case to Judge Pratt who was sitting in the district court by designation. Judge Pratt conducted a six day trial from March 28 through April 6, 1990. He entered judgment on August 12, 1991, and this appeal followed.

[701] DISCUSSION

While both parties originally appealed from different aspects of the district court's judgment, Altai has now abandoned its appellate claims. In particular, Altai has conceded liability for the copying of ADAPTER into OSCAR 3.4 and raises no challenge to the award of $364,444 in damages on that score. Thus, we address only CA's appeal from the district court's rulings that: (1) Altai was not liable for copyright infringement in developing OSCAR 3.5; and (2) in developing both OSCAR 3.4 and 3.5, Altai was not liable for misappropriating CA's trade secrets.

CA makes two arguments. First, CA contends that the district court applied an erroneous method for determining whether there exists substantial similarity between computer programs, and thus, erred in determining that OSCAR 3.5 did not infringe the copyrights held on the different versions of its CA-SCHEDULER program. CA asserts that the test applied by the district court failed to account sufficiently for a computer program's non-literal elements. Second, CA maintains that the district court erroneously concluded that its state law trade secret claims had been preempted by the federal Copyright Act. See 17 U.S.C. § 301(a). We shall address each argument in turn.

I. COPYRIGHT INFRINGEMENT

In any suit for copyright infringement, the plaintiff must establish its ownership of a valid copyright, and that the defendant copied the copyrighted work. See Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 (2d Cir.1977); see also 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01, at 13-4 (1991) (hereinafter "Nimmer"). The plaintiff may prove defendant's copying either by direct evidence or, as is most often the case, by showing that (1) the defendant had access to the plaintiff's copyrighted work and (2) that defendant's work is substantially similar to the plaintiff's copyrightable material. See Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986).

For the purpose of analysis, the district court assumed that Altai had access to the ADAPTER code when creating OSCAR 3.5. See Computer Assocs., 775 F.Supp. at 558. Thus, in determining whether Altai had unlawfully copied protected aspects of CA's ADAPTER, the district court narrowed its focus of inquiry to ascertaining whether Altai's OSCAR 3.5 was substantially similar to ADAPTER. Because we approve Judge Pratt's conclusions regarding substantial similarity, our analysis will proceed along the same assumption.

As a general matter, and to varying degrees, copyright protection extends beyond a literary work's strictly textual form to its non-literal components. As we have said, "[i]t is of course essential to any protection of literary property ... that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations." Nichols v. Universal Pictures Co., 45 F.2d 119, 121 (2d Cir.1930) (L. Hand, J.), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931). Thus, where "the fundamental essence or structure of one work is duplicated in another," 3 Nimmer, § 13.03[A], at 13-24, courts have found copyright infringement. See, e.g., Horgan v. Macmillan, 789 F.2d 157, 162 (2d Cir.1986) (recognizing that a book of photographs might infringe ballet choreography); Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1329 (9th Cir.1983) (motion picture and television series); Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1167 (9th Cir.1977) (television commercial and television series); Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 55 (2d Cir.), cert. denied, 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392 (1936) (play and motion picture); accord Stewart v. Abend, 495 U.S. 207, 238, 110 S.Ct. 1750, 1769, 109 L.Ed.2d 184 (1990) (recognizing that motion picture may infringe copyright in book by using its "unique setting, characters, plot, and sequence of events"). This black letter proposition is the springboard for our discussion.

[702] A. Copyright Protection for the Non-literal Elements of Computer Programs

It is now well settled that the literal elements of computer programs, i.e., their source and object codes, are the subject of copyright protection. See Whelan, 797 F.2d at 1233 (source and object code); CMS Software Design Sys., Inc. v. Info Designs, Inc., 785 F.2d 1246, 1247 (5th Cir.1986) (source code); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1249 (3d Cir.1983), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984) (source and object code); Williams Elecs., Inc. v. Artic Int'l, Inc., 685 F.2d 870, 876-77 (3d Cir.1982) (object code). Here, as noted earlier, Altai admits having copied approximately 30% of the OSCAR 3.4 program from CA's ADAPTER source code, and does not challenge the district court's related finding of infringement.

In this case, the hotly contested issues surround OSCAR 3.5. As recounted above, OSCAR 3.5 is the product of Altai's carefully orchestrated rewrite of OSCAR 3.4. After the purge, none of the ADAPTER source code remained in the 3.5 version; thus, Altai made sure that the literal elements of its revamped OSCAR program were no longer substantially similar to the literal elements of CA's ADAPTER.

According to CA, the district court erroneously concluded that Altai's OSCAR 3.5 was not substantially similar to its own ADAPTER program. CA argues that this occurred because the district court "committed legal error in analyzing [its] claims of copyright infringement by failing to find that copyright protects expression contained in the non-literal elements of computer software." We disagree.

CA argues that, despite Altai's rewrite of the OSCAR code, the resulting program remained substantially similar to the structure of its ADAPTER program. As discussed above, a program's structure includes its non-literal components such as general flow charts as well as the more specific organization of inter-modular relationships, parameter lists, and macros. In addition to these aspects, CA contends that OSCAR 3.5 is also substantially similar to ADAPTER with respect to the list of services that both ADAPTER and OSCAR obtain from their respective operating systems. We must decide whether and to what extent these elements of computer programs are protected by copyright law.

The statutory terrain in this area has been well explored. See Lotus Dev. Corp. v. Paperback Software Int'l, 740 F.Supp. 37, 47-51 (D.Mass.1990); see also Whelan, 797 F.2d at 1240-42; Englund, at 885-90; Spivack, at 731-37. The Copyright Act affords protection to "original works of authorship fixed in any tangible medium of expression...." 17 U.S.C. § 102(a). This broad category of protected "works" includes "literary works," id. at § 102(a)(1), which are defined by the Act as

works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film tapes, disks, or cards, in which they are embodied.

17 U.S.C. § 101. While computer programs are not specifically listed as part of the above statutory definition, the legislative history leaves no doubt that Congress intended them to be considered literary works. See H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5667 (hereinafter "House Report" ); Whelan, 797 F.2d at 1234; Apple Computer, 714 F.2d at 1247.

The syllogism that follows from the foregoing premises is a powerful one: if the non-literal structures of literary works are protected by copyright; and if computer programs are literary works, as we are told by the legislature; then the non-literal structures of computer programs are protected by copyright. See Whelan, 797 F.2d at 1234 ("By analogy to other literary works, it would thus appear that the copyrights of computer programs can be infringed even absent copying of the literal elements of the program."). We have no reservation in joining the company of those courts that have already ascribed to this logic. See, e.g., Johnson Controls, Inc. v. [703] Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir.1989); Lotus Dev. Corp., 740 F.Supp. at 54; Digital Communications Assocs., Inc. v. Softklone Distrib. Corp., 659 F.Supp. 449, 455-56 (N.D.Ga.1987); Q-Co Industries, Inc. v. Hoffman, 625 F.Supp. 608, 615 (S.D.N.Y.1985); SAS Inst., Inc. v. S & H Computer Sys., Inc., 605 F.Supp. 816, 829-30 (M.D.Tenn.1985). However, that conclusion does not end our analysis. We must determine the scope of copyright protection that extends to a computer program's non-literal structure.

As a caveat, we note that our decision here does not control infringement actions regarding categorically distinct works, such as certain types of screen displays. These items represent products of computer programs, rather than the programs themselves, and fall under the copyright rubric of audiovisual works. If a computer audiovisual display is copyrighted separately as an audiovisual work, apart from the literary work that generates it (i.e., the program), the display may be protectable regardless of the underlying program's copyright status. See Stern Elecs., Inc. v. Kaufman, 669 F.2d 852, 855 (2d Cir.1982) (explaining that an audiovisual works copyright, rather than a copyright on the underlying program, extended greater protection to the sights and sounds generated by a computer video game because the same audiovisual display could be generated by different programs). Of course, the copyright protection that these displays enjoy extends only so far as their expression is protectable. See Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 209 (9th Cir.1988). In this case, however, we are concerned not with a program's display, but the program itself, and then with only its non-literal components. In considering the copyrightability of these components, we must refer to venerable doctrines of copyright law.

1) Idea vs. Expression Dichotomy

It is a fundamental principle of copyright law that a copyright does not protect an idea, but only the expression of the idea. See Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879); Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954). This axiom of common law has been incorporated into the governing statute. Section 102(b) of the Act provides:

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). See also House Report, at 5670 ("Copyright does not preclude others from using ideas or information revealed by the author's work.").

Congress made no special exception for computer programs. To the contrary, the legislative history explicitly states that copyright protects computer programs only "to the extent that they incorporate authorship in programmer's expression of original ideas, as distinguished from the ideas themselves." Id. at 5667; see also id. at 5670 ("Section 102(b) is intended ... to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of copyright law.").

Similarly, the National Commission on New Technological Uses of Copyrighted Works ("CONTU") established by Congress to survey the issues generated by the interrelationship of advancing technology and copyright law, see Pub.L. No. 93-573, § 201, 88 Stat. 1873 (1974), recommended, inter alia, that the 1976 Copyright Act "be amended ... to make it explicit that computer programs, to the extent that they embody the author's original creation, are proper subject matter for copyright." See National Commission on New Technological Uses of Copyrighted Works, Final Report 1 (1979) (hereinafter "CONTU Report" ). To that end, Congress adopted CONTU's suggestions and amended the Copyright Act by adding, among other things, a provision to 17 U.S.C. § 101 which defined the term "computer program." See Pub.L. No. 96-517, § 10(a), 94 Stat. [704] 3028 (1980). CONTU also "concluded that the idea-expression distinction should be used to determine which aspects of computer programs are copyrightable." Lotus Dev. Corp., 740 F.Supp. at 54 (citing CONTU Report, at 44).

Drawing the line between idea and expression is a tricky business. Judge Learned Hand noted that "[n]obody has ever been able to fix that boundary, and nobody ever can." Nichols, 45 F.2d at 121. Thirty years later his convictions remained firm. "Obviously, no principle can be stated as to when an imitator has gone beyond copying the 'idea,' and has borrowed its 'expression,' " Judge Hand concluded. "Decisions must therefore inevitably be ad hoc." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960).

The essentially utilitarian nature of a computer program further complicates the task of distilling its idea from its expression. See SAS Inst., 605 F.Supp. at 829; cf. Englund, at 893. In order to describe both computational processes and abstract ideas, its content "combines creative and technical expression." See Spivack, at 755. The variations of expression found in purely creative compositions, as opposed to those contained in utilitarian works, are not directed towards practical application. For example, a narration of Humpty Dumpty's demise, which would clearly be a creative composition, does not serve the same ends as, say, a recipe for scrambled eggs--which is a more process oriented text. Thus, compared to aesthetic works, computer programs hover even more closely to the elusive boundary line described in § 102(b).

The doctrinal starting point in analyses of utilitarian works, is the seminal case of Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879). In Baker, the Supreme Court faced the question of "whether the exclusive property in a system of bookkeeping can be claimed, under the law of copyright, by means of a book in which that system is explained?" Id. at 101. Selden had copyrighted a book that expounded a particular method of bookkeeping. The book contained lined pages with headings intended to illustrate the manner in which the system operated. Baker's accounting publication included ledger sheets that employed "substantially the same ruled lines and headings...." Id. Selden's testator sued Baker for copyright infringement on the theory that the ledger sheets were protected by Selden's copyright.

The Supreme Court found nothing copyrightable in Selden's bookkeeping system, and rejected his infringement claim regarding the ledger sheets. The Court held that:

The fact that the art described in the book by illustrations of lines and figures which are reproduced in practice in the application of the art, makes no difference. Those illustrations are the mere language employed by the author to convey his ideas more clearly. Had he used words of description instead of diagrams (which merely stand in the place of words), there could not be the slightest doubt that others, applying the art to practical use, might lawfully draw the lines and diagrams which were in the author's mind, and which he thus described by words in his book.

The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever occasion requires.

Id. at 103.

To the extent that an accounting text and a computer program are both "a set of statements or instructions ... to bring about a certain result," 17 U.S.C. § 101, they are roughly analogous. In the former case, the processes are ultimately conducted by human agency; in the latter, by electronic means. In either case, as already stated, the processes themselves are not protectable. But the holding in Baker goes farther. The Court concluded that those aspects of a work, which "must necessarily be used as incident to" the idea, system or process that the work describes, are also not copyrightable. 101 U.S. at 104. Selden's ledger sheets, therefore, enjoyed [705] no copyright protection because they were "necessary incidents to" the system of accounting that he described. Id. at 103. From this reasoning, we conclude that those elements of a computer program that are necessarily incidental to its function are similarly unprotectable.

While Baker v. Selden provides a sound analytical foundation, it offers scant guidance on how to separate idea or process from expression, and moreover, on how to further distinguish protectable expression from that expression which "must necessarily be used as incident to" the work's underlying concept. In the context of computer programs, the Third Circuit's noted decision in Whelan has, thus far, been the most thoughtful attempt to accomplish these ends.

The court in Whelan faced substantially the same problem as is presented by this case. There, the defendant was accused of making off with the non-literal structure of the plaintiff's copyrighted dental lab management program, and employing it to create its own competitive version. In assessing whether there had been an infringement, the court had to determine which aspects of the programs involved were ideas, and which were expression. In separating the two, the court settled upon the following conceptual approach:

[T]he line between idea and expression may be drawn with reference to the end sought to be achieved by the work in question. In other words, the purpose or function of a utilitarian work would be the work's idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea.... Where there are various means of achieving the desired purpose, then the particular means chosen is not necessary to the purpose; hence, there is expression, not idea.

797 F.2d at 1236 (citations omitted). The "idea" of the program at issue in Whelan was identified by the court as simply "the efficient management of a dental laboratory." Id. at n. 28.

So far, in the courts, the Whelan rule has received a mixed reception. While some decisions have adopted its reasoning, see, e.g., Bull HN Info. Sys., Inc. v. American Express Bank, Ltd., 1990 Copyright Law Dec. (CCH) p 26,555 at 23,278, 1990 WL 48098 (S.D.N.Y.1990); Dynamic Solutions, Inc. v. Planning & Control, Inc., 1987 Copyright Law Dec. (CCH) p 26,062 at 20,912, 1987 WL 6419 (S.D.N.Y.1987); Broderbund Software Inc. v. Unison World, Inc., 648 F.Supp. 1127, 1133 (N.D.Cal.1986), others have rejected it, see Plains Cotton Co-op v. Goodpasture Computer Serv., Inc., 807 F.2d 1256, 1262 (5th Cir.), cert. denied, 484 U.S. 821, 108 S.Ct. 80, 98 L.Ed.2d 42 (1987); cf. Synercom Technology, Inc. v. University Computing Co., 462 F.Supp. 1003, 1014 (N.D.Tex.1978) (concluding that order and sequence of data on computer input formats was idea not expression).

Whelan has fared even more poorly in the academic community, where its standard for distinguishing idea from expression has been widely criticized for being conceptually overbroad. See, e.g., Englund, at 881; Menell, at 1074, 1082; Kretschmer, at 837-39; Spivack, at 747-55; Thomas M. Gage, Note, Whelan Associates v. Jaslow Dental Laboratories: Copyright Protection for Computer Software Structure--What's the Purpose?, 1987 WIS.L.REV. 859, 860-61 (1987). The leading commentator in the field has stated that "[t]he crucial flaw in [Whelan 's] reasoning is that it assumes that only one 'idea,' in copyright law terms, underlies any computer program, and that once a separable idea can be identified, everything else must be expression." 3 Nimmer § 13.03(F), at 13-62.34. This criticism focuses not upon the program's ultimate purpose but upon the reality of its structural design. As we have already noted, a computer program's ultimate function or purpose is the composite result of interacting subroutines. Since each subroutine is itself a program, and thus, may be said to have its own "idea," Whelan 's general formulation that a program's overall purpose equates with the program's idea is descriptively inadequate.

Accordingly, we think that Judge Pratt wisely declined to follow Whelan. See [706] Computer Assocs., 775 F.Supp. at 558-60. In addition to noting the weakness in the Whelan definition of "program-idea," mentioned above, Judge Pratt found that Whelan 's synonymous use of the terms "structure, sequence, and organization," see Whelan, 797 F.2d at 1224 n. 1, demonstrated a flawed understanding of a computer program's method of operation. See Computer Assocs., 775 F.Supp. at 559-60 (discussing the distinction between a program's "static structure" and "dynamic structure"). Rightly, the district court found Whelan 's rationale suspect because it is so closely tied to what can now be seen--with the passage of time--as the opinion's somewhat outdated appreciation of computer science.

2) Substantial Similarity Test for Computer Program Structure: Abstraction-Filtration-Comparison

We think that Whelan 's approach to separating idea from expression in computer programs relies too heavily on metaphysical distinctions and does not place enough emphasis on practical considerations. Cf. Apple Computer, 714 F.2d at 1253 (rejecting certain commercial constraints on programming as a helpful means of distinguishing idea from expression because they did "not enter into the somewhat metaphysical issue of whether particular ideas and expressions have merged"). As the cases that we shall discuss demonstrate, a satisfactory answer to this problem cannot be reached by resorting, a priori, to philosophical first principals.

As discussed herein, we think that district courts would be well-advised to undertake a three-step procedure, based on the abstractions test utilized by the district court, in order to determine whether the non-literal elements of two or more computer programs are substantially similar. This approach breaks no new ground; rather, it draws on such familiar copyright doctrines as merger, scenes a faire, and public domain. In taking this approach, however, we are cognizant that computer technology is a dynamic field which can quickly outpace judicial decisionmaking. Thus, in cases where the technology in question does not allow for a literal application of the procedure we outline below, our opinion should not be read to foreclose the district courts of our circuit from utilizing a modified version.

In ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts. Then, by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken from the public domain, a court would then be able to sift out all non-protectable material. Left with a kernel, or possible kernels, of creative expression after following this process of elimination, the court's last step would be to compare this material with the structure of an allegedly infringing program. The result of this comparison will determine whether the protectable elements of the programs at issue are substantially similar so as to warrant a finding of infringement. It will be helpful to elaborate a bit further.

Step One: Abstraction

As the district court appreciated, see Computer Assocs., 775 F.Supp. at 560, the theoretic framework for analyzing substantial similarity expounded by Learned Hand in the Nichols case is helpful in the present context. In Nichols, we enunciated what has now become known as the "abstractions" test for separating idea from expression:

Upon any work ... a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the [work] is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the [author] could prevent the use of his "ideas," to which, apart from their expression, his property is never extended.

Nichols, 45 F.2d at 121.

While the abstractions test was originally applied in relation to literary works such [707] as novels and plays, it is adaptable to computer programs. In contrast to the Whelan approach, the abstractions test "implicitly recognizes that any given work may consist of a mixture of numerous ideas and expressions." 3 Nimmer § 13.03[F], at 13-62.34-63.

As applied to computer programs, the abstractions test will comprise the first step in the examination for substantial similarity. Initially, in a manner that resembles reverse engineering on a theoretical plane, a court should dissect the allegedly copied program's structure and isolate each level of abstraction contained within it. This process begins with the code and ends with an articulation of the program's ultimate function. Along the way, it is necessary essentially to retrace and map each of the designer's steps--in the opposite order in which they were taken during the program's creation. See Background: Computer Program Design, supra.

As an anatomical guide to this procedure, the following description is helpful:

At the lowest level of abstraction, a computer program may be thought of in its entirety as a set of individual instructions organized into a hierarchy of modules. At a higher level of abstraction, the instructions in the lowest-level modules may be replaced conceptually by the functions of those modules. At progressively higher levels of abstraction, the functions of higher-level modules conceptually replace the implementations of those modules in terms of lower-level modules and instructions, until finally, one is left with nothing but the ultimate function of the program.... A program has structure at every level of abstraction at which it is viewed. At low levels of abstraction, a program's structure may be quite complex; at the highest level it is trivial.

Englund, at 897-98; cf. Spivack, at 774.

Step Two: Filtration

Once the program's abstraction levels have been discovered, the substantial similarity inquiry moves from the conceptual to the concrete. Professor Nimmer suggests, and we endorse, a "successive filtering method" for separating protectable expression from non-protectable material. See generally 3 Nimmer § 13.03[F]. This process entails examining the structural components at each level of abstraction to determine whether their particular inclusion at that level was "idea" or was dictated by considerations of efficiency, so as to be necessarily incidental to that idea; required by factors external to the program itself; or taken from the public domain and hence is nonprotectable expression. See also Kretschmer, at 844-45 (arguing that program features dictated by market externalities or efficiency concerns are unprotectable). The structure of any given program may reflect some, all, or none of these considerations. Each case requires its own fact specific investigation.

Strictly speaking, this filtration serves "the purpose of defining the scope of plaintiff's copyright." Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475 (9th Cir.) (endorsing "analytic dissection" of computer programs in order to isolate protectable expression), cert. denied, --- U.S. ----, 113 S.Ct. 198, 121 L.Ed.2d 141 (1992). By applying well developed doctrines of copyright law, it may ultimately leave behind a "core of protectable material." 3 Nimmer § 13.03[F], at 13-72. Further explication of this second step may be helpful.

(a) Elements Dictated by Efficiency

The portion of Baker v. Selden, discussed earlier, which denies copyright protection to expression necessarily incidental to the idea being expressed, appears to be the cornerstone for what has developed into the doctrine of merger. See Morrissey v. Proctor & Gamble Co., 379 F.2d 675, 678-79 (1st Cir.1967) (relying on Baker for the proposition that expression embodying the rules of a sweepstakes contest was inseparable from the idea of the contest itself, and therefore were not protectable by copyright); see also Digital Communications, 659 F.Supp. at 457. The doctrine's underlying principle is that "[w]hen there is essentially only one way to express an idea, the idea and its expression are inseparable [708] and copyright is no bar to copying that expression." Concrete Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606 (1st Cir.1988). Under these circumstances, the expression is said to have "merged" with the idea itself. In order not to confer a monopoly of the idea upon the copyright owner, such expression should not be protected. See Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971).

CONTU recognized the applicability of the merger doctrine to computer programs. In its report to Congress it stated that:

[C]opyrighted language may be copied without infringing when there is but a limited number of ways to express a given idea.... In the computer context, this means that when specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to infringement.

CONTU Report, at 20. While this statement directly concerns only the application of merger to program code, that is, the textual aspect of the program, it reasonably suggests that the doctrine fits comfortably within the general context of computer programs.

Furthermore, when one considers the fact that programmers generally strive to create programs "that meet the user's needs in the most efficient manner," Menell, at 1052, the applicability of the merger doctrine to computer programs becomes compelling. In the context of computer program design, the concept of efficiency is akin to deriving the most concise logical proof or formulating the most succinct mathematical computation. Thus, the more efficient a set of modules are, the more closely they approximate the idea or process embodied in that particular aspect of the program's structure.

While, hypothetically, there might be a myriad of ways in which a programmer may effectuate certain functions within a program,--i.e., express the idea embodied in a given subroutine--efficiency concerns may so narrow the practical range of choice as to make only one or two forms of expression workable options. See 3 Nimmer § 13.03[F], at 13-63; see also Whelan, 797 F.2d at 1243 n. 43 ("It is true that for certain tasks there are only a very limited number of file structures available, and in such cases the structures might not be copyrightable...."). Of course, not all program structure is informed by efficiency concerns. See Menell, at 1052 (besides efficiency, simplicity related to user accommodation has become a programming priority). It follows that in order to determine whether the merger doctrine precludes copyright protection to an aspect of a program's structure that is so oriented, a court must inquire "whether the use of this particular set of modules is necessary efficiently to implement that part of the program's process" being implemented. Englund, at 902. If the answer is yes, then the expression represented by the programmer's choice of a specific module or group of modules has merged with their underlying idea and is unprotected. Id. at 902-03.

Another justification for linking structural economy with the application of the merger doctrine stems from a program's essentially utilitarian nature and the competitive forces that exist in the software marketplace. See Kretschmer, at 842. Working in tandem, these factors give rise to a problem of proof which merger helps to eliminate.

Efficiency is an industry-wide goal. Since, as we have already noted, there may be only a limited number of efficient implementations for any given program task, it is quite possible that multiple programmers, working independently, will design the identical method employed in the allegedly infringed work. Of course, if this is the case, there is no copyright infringement. See Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir.1970); Sheldon, 81 F.2d at 54.

Under these circumstances, the fact that two programs contain the same efficient structure may as likely lead to an inference of independent creation as it does to one of copying. See 3 Nimmer § 13.03[F], at 13-65; cf. Herbert Rosenthal [709] Jewelry Corp., 446 F.2d at 741 (evidence of independent creation may stem from defendant's standing as a designer of previous similar works). Thus, since evidence of similarly efficient structure is not particularly probative of copying, it should be disregarded in the overall substantial similarity analysis. See 3 Nimmer § 13.03[F], at 13-65.

We find support for applying the merger doctrine in cases that have already addressed the question of substantial similarity in the context of computer program structure. Most recently, in Lotus Dev. Corp., 740 F.Supp. at 66, the district court had before it a claim of copyright infringement relating to the structure of a computer spreadsheet program. The court observed that "the basic spreadsheet screen display that resembles a rotated 'L' ..., if not present in every expression of such a program, is present in most expressions." Id. Similarly, the court found that "an essential detail present in most if not all expressions of an electronic spreadsheet--is the designation of a particular key that, when pressed, will invoke the menu command system." Id. Applying the merger doctrine, the court denied copyright protection to both program elements.

In Manufacturers Technologies, Inc. v. Cams, Inc., 706 F.Supp. 984, 995-99 (D.Conn.1989), the infringement claims stemmed from various alleged program similarities "as indicated in their screen displays." Id. at 990. Stressing efficiency concerns in the context of a merger analysis, the court determined that the program's method of allowing the user to navigate within the screen displays was not protectable because, in part, "the process or manner of navigating internally on any specific screen displays ... is limited in the number of ways it may be simply achieved to facilitate user comfort." Id. at 995.

The court also found that expression contained in various screen displays (in the form of alphabetical and numerical columns) was not the proper subject of copyright protection because it was "necessarily incident to the idea[s]" embodied in the displays. Id. at 996-97. Cf. Digital Communications, 659 F.Supp. at 460 (finding no merger and affording copyright protection to program's status screen display because "modes of expression chosen ... are clearly not necessary to the idea of the status screen").

We agree with the approach taken in these decisions, and conclude that application of the merger doctrine in this setting is an effective way to eliminate non-protectable expression contained in computer programs.

(b) Elements Dictated By External Factors

We have stated that where "it is virtually impossible to write about a particular historical era or fictional theme without employing certain 'stock' or standard literary devices," such expression is not copyrightable. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d Cir.), cert. denied, 449 U.S. 841, 101 S.Ct. 121, 66 L.Ed.2d 49 (1980). For example, the Hoehling case was an infringement suit stemming from several works on the Hindenberg disaster. There we concluded that similarities in representations of German beer halls, scenes depicting German greetings such as "Heil Hitler," or the singing of certain German songs would not lead to a finding of infringement because they were " 'indispensable, or at least standard, in the treatment of' " life in Nazi Germany. Id. (quoting Alexander v. Haley, 460 F.Supp. 40, 45 (S.D.N.Y.1978)). This is known as the scenes a faire doctrine, and like "merger," it has its analogous application to computer programs. Cf. Data East USA, 862 F.2d at 208 (applying scenes a faire to a home computer video game).

Professor Nimmer points out that "in many instances it is virtually impossible to write a program to perform particular functions in a specific computing environment without employing standard techniques." 3 Nimmer § 13.03[F], at 13-65. This is a result of the fact that a programmer's freedom of design choice is often circumscribed by extrinsic considerations such as (1) the mechanical specifications of the computer on which a particular program [710] is intended to run; (2) compatibility requirements of other programs with which a program is designed to operate in conjunction; (3) computer manufacturers' design standards; (4) demands of the industry being serviced; and (5) widely accepted programming practices within the computer industry. Id. at 13-66-71.

Courts have already considered some of these factors in denying copyright protection to various elements of computer programs. In the Plains Cotton case, the Fifth Circuit refused to reverse the district court's denial of a preliminary injunction against an alleged program infringer because, in part, "many of the similarities between the ... programs [were] dictated by the externalities of the cotton market." 807 F.2d at 1262.

In Manufacturers Technologies, the district court noted that the program's method of screen navigation "is influenced by the type of hardware that the software is designed to be used on." 706 F.Supp. at 995. Because, in part, "the functioning of the hardware package impact[ed] and constrain[ed] the type of navigational tools used in plaintiff's screen displays," the court denied copyright protection to that aspect of the program. Id.; cf. Data East USA, 862 F.2d at 209 (reversing a district court's finding of audiovisual work infringement because, inter alia, "the use of the Commodore computer for a karate game intended for home consumption is subject to various constraints inherent in the use of that computer").

Finally, the district court in Q-Co Industries rested its holding on what, perhaps, most closely approximates a traditional scenes a faire rationale. There, the court denied copyright protection to four program modules employed in a teleprompter program. This decision was ultimately based upon the court's finding that "the same modules would be an inherent part of any prompting program." 625 F.Supp. at 616.

Building upon this existing case law, we conclude that a court must also examine the structural content of an allegedly infringed program for elements that might have been dictated by external factors.

(c) Elements taken From the Public Domain

Closely related to the non-protectability of scenes a faire, is material found in the public domain. Such material is free for the taking and cannot be appropriated by a single author even though it is included in a copyrighted work. See E.F. Johnson Co. v. Uniden Corp. of America, 623 F.Supp. 1485, 1499 (D.Minn.1985); see also Sheldon, 81 F.2d at 54. We see no reason to make an exception to this rule for elements of a computer program that have entered the public domain by virtue of freely accessible program exchanges and the like. See 3 Nimmer § 13.03[F]; see also Brown Bag Software, 960 F.2d at 1473 (affirming the district court's finding that " '[p]laintiffs may not claim copyright protection of an ... expression that is, if not standard, then commonplace in the computer software industry.' "). Thus, a court must also filter out this material from the allegedly infringed program before it makes the final inquiry in its substantial similarity analysis.

Step Three: Comparison

The third and final step of the test for substantial similarity that we believe appropriate for non-literal program components entails a comparison. Once a court has sifted out all elements of the allegedly infringed program which are "ideas" or are dictated by efficiency or external factors, or taken from the public domain, there may remain a core of protectable expression. In terms of a work's copyright value, this is the golden nugget. See Brown Bag Software, 960 F.2d at 1475. At this point, the court's substantial similarity inquiry focuses on whether the defendant copied any aspect of this protected expression, as well as an assessment of the copied portion's relative importance with respect to the plaintiff's overall program. See 3 Nimmer § 13.03[F]; Data East USA, 862 F.2d at 208 ("To determine whether similarities result from unprotectable expression, analytic dissection of similarities may be [711] performed. If ... all similarities in expression arise from use of common ideas, then no substantial similarity can be found.").

3) Policy Considerations

We are satisfied that the three step approach we have just outlined not only comports with, but advances the constitutional policies underlying the Copyright Act. Since any method that tries to distinguish idea from expression ultimately impacts on the scope of copyright protection afforded to a particular type of work, "the line [it draws] must be a pragmatic one, which also keeps in consideration 'the preservation of the balance between competition and protection....' " Apple Computer, 714 F.2d at 1253 (citation omitted).

CA and some amici argue against the type of approach that we have set forth on the grounds that it will be a disincentive for future computer program research and development. At bottom, they claim that if programmers are not guaranteed broad copyright protection for their work, they will not invest the extensive time, energy and funds required to design and improve program structures. While they have a point, their argument cannot carry the day. The interest of the copyright law is not in simply conferring a monopoly on industrious persons, but in advancing the public welfare through rewarding artistic creativity, in a manner that permits the free use and development of non-protectable ideas and processes.

In this respect, our conclusion is informed by Justice Stewart's concise discussion of the principles that correctly govern the adaptation of the copyright law to new circumstances. In Twentieth Century Music Corp. v. Aiken, he wrote:

The limited scope of the copyright holder's statutory monopoly, like the limited copyright duration required by the Constitution, reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts.

The immediate effect of our copyright law is to secure a fair return for an "author's" creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.... When technological change has rendered its literal terms ambiguous, the Copyright Act must be construed in light of this basic purpose.

422 U.S. 151, 156, 95 S.Ct. 2040, 2043-44, 45 L.Ed.2d 84 (1975) (citations and footnotes omitted).

Recently, the Supreme Court has emphatically reiterated that "[t]he primary objective of copyright is not to reward the labor of authors...." Feist Publications, Inc. v. Rural Tel. Serv. Co., --- U.S. ----, ----, 111 S.Ct. 1282, 1290, 113 L.Ed.2d 358 (1991) (emphasis added). While the Feist decision deals primarily with the copyrightability of purely factual compilations, its underlying tenets apply to much of the work involved in computer programming. Feist put to rest the "sweat of the brow" doctrine in copyright law. Id. at ----, 111 S.Ct. at 1295. The rationale of that doctrine "was that copyright was a reward for the hard work that went into compiling facts." Id. at ----, 111 S.Ct. at 1291. The Court flatly rejected this justification for extending copyright protection, noting that it "eschewed the most fundamental axiom of copyright law--that no one may copyright facts or ideas." Id.

Feist teaches that substantial effort alone cannot confer copyright status on an otherwise uncopyrightable work. As we have discussed, despite the fact that significant labor and expense often goes into computer program flow-charting and debugging, that process does not always result in inherently protectable expression. Thus, Feist implicitly undercuts the Whelan rationale, "which allow[ed] copyright protection beyond the literal computer code ... [in order to] provide the proper incentive for programmers by protecting their most valuable efforts...." Whelan, 797 F.2d at 1237 (footnote omitted). We note that Whelan was decided prior to Feist when the "sweat of the brow" doctrine still had vitality. In view of the Supreme [712] Court's recent holding, however, we must reject the legal basis of CA's disincentive argument.

Furthermore, we are unpersuaded that the test we approve today will lead to the dire consequences for the computer program industry that plaintiff and some amici predict. To the contrary, serious students of the industry have been highly critical of the sweeping scope of copyright protection engendered by the Whelan rule, in that it "enables first comers to 'lock up' basic programming techniques as implemented in programs to perform particular tasks." Menell, at 1087; see also Spivack, at 765 (Whelan "results in an inhibition of creation by virtue of the copyright owner's quasi-monopoly power").

To be frank, the exact contours of copyright protection for non-literal program structure are not completely clear. We trust that as future cases are decided, those limits will become better defined. Indeed, it may well be that the Copyright Act serves as a relatively weak barrier against public access to the theoretical interstices behind a program's source and object codes. This results from the hybrid nature of a computer program, which, while it is literary expression, is also a highly functional, utilitarian component in the larger process of computing.

Generally, we think that copyright registration--with its indiscriminating availability--is not ideally suited to deal with the highly dynamic technology of computer science. Thus far, many of the decisions in this area reflect the courts' attempt to fit the proverbial square peg in a round hole. The district court, see Computer Assocs., 775 F.Supp. at 560, and at least one commentator have suggested that patent registration, with its exacting up-front novelty and non-obviousness requirements, might be the more appropriate rubric of protection for intellectual property of this kind. See Randell M. Whitmeyer, Comment, A Plea for Due Processes: Defining the Proper Scope of Patent Protection for Computer Software, 85 Nw.U.L.REV. 1103, 1123-25 (1991); see also Lotus Dev. Corp. v. Borland Int'l, Inc., 788 F.Supp. 78, 91 (D.Mass.1992) (discussing the potentially supplemental relationship between patent and copyright protection in the context of computer programs). In any event, now that more than 12 years have passed since CONTU issued its final report, the resolution of this specific issue could benefit from further legislative investigation--perhaps a CONTU II.

In the meantime, Congress has made clear that computer programs are literary works entitled to copyright protection. Of course, we shall abide by these instructions, but in so doing we must not impair the overall integrity of copyright law. While incentive based arguments in favor of broad copyright protection are perhaps attractive from a pure policy perspective, see Lotus Dev. Corp., 740 F.Supp. at 58, ultimately, they have a corrosive effect on certain fundamental tenets of copyright doctrine. If the test we have outlined results in narrowing the scope of protection, as we expect it will, that result flows from applying, in accordance with Congressional intent, long-standing principles of copyright law to computer programs. Of course, our decision is also informed by our concern that these fundamental principles remain undistorted.

B. The District Court Decision

We turn now to our review of the district court's decision in this particular case. At the outset, we must address CA's claim that the district court erred by relying too heavily on the court appointed expert's "personal opinions on the factual and legal issues before the court."

1) Use of Expert Evidence in Determining Substantial Similarity Between Computer Programs

Pursuant to Fed.R.Evid. 706, and with the consent of both Altai and CA, Judge Pratt appointed and relied upon Dr. Randall Davis of the Massachusetts Institute of Technology as the court's own expert witness on the issue of substantial similarity. Dr. Davis submitted a comprehensive written report that analyzed the various aspects of the computer programs [713] at issue and evaluated the parties' expert evidence. At trial, Dr. Davis was extensively cross-examined by both CA and Altai.

The well-established general rule in this circuit has been to limit the use of expert opinion in determining whether works at issue are substantially similar. As a threshold matter, expert testimony may be used to assist the fact finder in ascertaining whether the defendant had copied any part of the plaintiff's work. See Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir.1946). To this end, "the two works are to be compared in their entirety ... [and] in making such comparison resort may properly be made to expert analysis...." 3 Nimmer § 13.03[E], at 13-62.16.

However, once some amount of copying has been established, it remains solely for the trier of fact to determine whether the copying was "illicit," that is to say, whether the "defendant took from plaintiff's works so much of what is pleasing to [lay observers] who comprise the audience for whom such [works are] composed, that defendant wrongfully appropriated something which belongs to the plaintiff." Arnstein, 154 F.2d at 473. Since the test for illicit copying is based upon the response of ordinary lay observers, expert testimony is thus "irrelevant" and not permitted. Id. at 468, 473. We have subsequently described this method of inquiry as "merely an alternative way of formulating the issue of substantial similarity." Ideal Toy Corp. v. Fab-Lu Ltd. (Inc.), 360 F.2d 1021, 1023 n. 2 (2d Cir.1966).

Historically, Arnstein 's ordinary observer standard had its roots in "an attempt to apply the 'reasonable person' doctrine as found in other areas of the law to copyright." 3 Nimmer § 13.03[E], at 13-62.10-11. That approach may well have served its purpose when the material under scrutiny was limited to art forms readily comprehensible and generally familiar to the average lay person. However, in considering the extension of the rule to the present case, we are reminded of Holmes' admonition that, "[t]he life of the law has not been logic: it has been experience." O.W. Holmes, Jr., THE COMMON LAW 1 (1881).

Thus, in deciding the limits to which expert opinion may be employed in ascertaining the substantial similarity of computer programs, we cannot disregard the highly complicated and technical subject matter at the heart of these claims. Rather, we recognize the reality that computer programs are likely to be somewhat impenetrable by lay observers--whether they be judges or juries--and, thus, seem to fall outside the category of works contemplated by those who engineered the Arnstein test. Cf. Dawson v. Hinshaw Music Inc., 905 F.2d 731, 737 (4th Cir.) ("departure from the lay characterization is warranted only where the intended audience possesses 'specialized expertise' "), cert. denied, 498 U.S. 981, 111 S.Ct. 511, 112 L.Ed.2d 523 (1990). As Judge Pratt correctly observed:

In the context of computer programs, many of the familiar tests of similarity prove to be inadequate, for they were developed historically in the context of artistic and literary, rather than utilitarian, works.

Computer Assocs., 775 F.Supp. at 558.

In making its finding on substantial similarity with respect to computer programs, we believe that the trier of fact need not be limited by the strictures of its own lay perspective. See Dawson, 905 F.2d at 735; Whelan, 797 F.2d at 1233; Broderbund, 648 F.Supp. at 1136 (stating in dictum: "an integrated test involving expert testimony and analytic dissection may well be the wave of the future in this area...."); Brown Bag Software, 960 F.2d at 1478-79 (Sneed, J., concurring); see also 3 Nimmer § 13.03[E]; but see Brown Bag Software, 960 F.2d at 1475 (applying the "ordinary reasonable person" standard in substantial similarity test for computer programs). Rather, we leave it to the discretion of the district court to decide to what extent, if any, expert opinion, regarding the highly technical nature of computer programs, is warranted in a given case.

In so holding, we do not intend to disturb the traditional role of lay observers in judging [714] substantial similarity in copyright cases that involve the aesthetic arts, such as music, visual works or literature.

In this case, Dr. Davis' opinion was instrumental in dismantling the intricacies of computer science so that the court could formulate and apply an appropriate rule of law. While Dr. Davis' report and testimony undoubtedly shed valuable light on the subject matter of the litigation, Judge Pratt remained, in the final analysis, the trier of fact. The district court's use of the expert's assistance, in the context of this case, was entirely appropriate.

2) Evidentiary Analysis

The district court had to determine whether Altai's OSCAR 3.5 program was substantially similar to CA's ADAPTER. We note that Judge Pratt's method of analysis effectively served as a road map for our own, with one exception--Judge Pratt filtered out the non-copyrightable aspects of OSCAR 3.5 rather than those found in ADAPTER, the allegedly infringed program. We think that our approach--i.e., filtering out the unprotected aspects of an allegedly infringed program and then comparing the end product to the structure of the suspect program--is preferable, and therefore believe that district courts should proceed in this manner in future cases.

We opt for this strategy because, in some cases, the defendant's program structure might contain protectable expression and/or other elements that are not found in the plaintiff's program. Since it is extraneous to the allegedly copied work, this material would have no bearing on any potential substantial similarity between the two programs. Thus, its filtration would be wasteful and unnecessarily time consuming. Furthermore, by focusing the analysis on the infringing rather than on the infringed material, a court may mistakenly place too little emphasis on a quantitatively small misappropriation which is, in reality, a qualitatively vital aspect of the plaintiff's protectable expression.

The fact that the district court's analysis proceeded in the reverse order, however, had no material impact on the outcome of this case. Since Judge Pratt determined that OSCAR effectively contained no protectable expression whatsoever, the most serious charge that can be levelled against him is that he was overly thorough in his examination.

The district court took the first step in the analysis set forth in this opinion when it separated the program by levels of abstraction. The district court stated:

As applied to computer software programs, this abstractions test would progress in order of "increasing generality" from object code, to source code, to parameter lists, to services required, to general outline. In discussing the particular similarities, therefore, we shall focus on these levels.

Computer Assocs., 775 F.Supp. at 560. While the facts of a different case might require that a district court draw a more particularized blueprint of a program's overall structure, this description is a workable one for the case at hand.

Moving to the district court's evaluation of OSCAR 3.5's structural components, we agree with Judge Pratt's systematic exclusion of non-protectable expression. With respect to code, the district court observed that after the rewrite of OSCAR 3.4 to OSCAR 3.5, "there remained virtually no lines of code that were identical to ADAPTER." Id. at 561. Accordingly, the court found that the code "present[ed] no similarity at all." Id. at 562.

Next, Judge Pratt addressed the issue of similarity between the two programs' parameter lists and macros. He concluded that, viewing the conflicting evidence most favorably to CA, it demonstrated that "only a few of the lists and macros were similar to protected elements in ADAPTER; the others were either in the public domain or dictated by the functional demands of the program." Id. As discussed above, functional elements and elements taken from the public domain do not qualify for copyright protection. With respect to the few remaining parameter lists and macros, the district court could reasonably conclude that they did not warrant a [715] finding of infringement given their relative contribution to the overall program. See Warner Bros., Inc. v. American Broadcasting Cos., Inc., 720 F.2d 231, 242 (2d Cir.1983) (discussing de minimis exception which allows for literal copying of a small and usually insignificant portion of the plaintiff's work); 3 Nimmer § 13.03[F], at 13-74. In any event, the district court reasonably found that, for lack of persuasive evidence, CA failed to meet its burden of proof on whether the macros and parameter lists at issue were substantially similar. See Computer Assocs., 775 F.Supp. at 562.

The district court also found that the overlap exhibited between the list of services required for both ADAPTER and OSCAR 3.5 was "determined by the demands of the operating system and of the applications program to which it [was] to be linked through ADAPTER or OSCAR...." Id. In other words, this aspect of the program's structure was dictated by the nature of other programs with which it was designed to interact and, thus, is not protected by copyright.

Finally, in his infringement analysis, Judge Pratt accorded no weight to the similarities between the two programs' organizational charts, "because [the charts were] so simple and obvious to anyone exposed to the operation of the program[s]." Id. CA argues that the district court's action in this regard "is not consistent with copyright law"--that "obvious" expression is protected, and that the district court erroneously failed to realize this. However, to say that elements of a work are "obvious," in the manner in which the district court used the word, is to say that they "follow naturally from the work's theme rather than from the author's creativity." 3 Nimmer § 13.03[F], at 13-65. This is but one formulation of the scenes a faire doctrine, which we have already endorsed as a means of weeding out unprotectable expression.

CA argues, at some length, that many of the district court's factual conclusions regarding the creative nature of its program's components are simply wrong. Of course, we are limited in our review of factual findings to setting aside only those that we determine are clearly erroneous. See Fed.R.Civ.P. 52. Upon a thorough review of the voluminous record in this case, which is comprised of conflicting testimony and other highly technical evidence, we discern no error on the part of Judge Pratt, let alone clear error.

Since we accept Judge Pratt's factual conclusions and the results of his legal analysis, we affirm his denial of CA's copyright infringement claim based upon OSCAR 3.5. We emphasize that, like all copyright infringement cases, those that involve computer programs are highly fact specific. The amount of protection due structural elements, in any given case, will vary according to the protectable expression found to exist within the program at issue.

II. TRADE SECRET PREEMPTION

In its complaint, CA alleged that Altai misappropriated the trade secrets contained in the ADAPTER program. Prior to trial, while the proceedings were still before Judge Mishler, Altai moved to dismiss and for summary judgment on CA's trade secret misappropriation claim. Altai argued that section 301 of the Copyright Act preempted CA's state law cause of action. Judge Mishler denied Altai's motion, reasoning that " '[t]he elements of the tort of appropriation of trade secrets through the breach of contract or confidence by an employee are not the same as the elements of a claim of copyright infringement.' " Computer Assocs., 775 F.Supp. at 563.

The parties addressed the preemption issue again, both in pre- and post-trial briefs. Judge Pratt then reconsidered and reversed Judge Mishler's earlier ruling. The district court concluded that CA's trade secret claims were preempted because "CA--which is the master of its own case--has pleaded and proven facts which establish that one act constituted both copyright infringement and misappropriation of trade secrets [namely, the] copying [716] of ADAPTER into OSCAR 3.4...." Id. at 565.

In our original opinion, Computer Assocs. Int'l, Inc. v. Altai, Inc., Nos. 91-7893, 91-7935, slip op. 4715, 4762-69, 1992 WL 139364 (2d Cir. June 22, 1992), we affirmed Judge Pratt's decision. CA petitioned for rehearing on this issue. In its petition for rehearing, CA brought to our attention portions of the record below that were not included in the appendix on appeal. CA argued that these documents, along with Judge Mishler's disposition of Altai's motion to dismiss and for summary judgment, established that CA advanced non-preempted trade secret misappropriation claims before both Judge Mishler and Judge Pratt. CA further contended that Judge Pratt failed to consider its theory that Altai was liable for wrongful acquisition of CA's trade secrets through Arney. Upon reconsideration, we have granted the petition for rehearing, withdrawn our initial opinion, and conclude in this amended opinion that the district court's preemption ruling on CA's trade secret claims should be vacated. We accordingly vacate the judgment of the district court on this point and remand CA's trade secret claims for a determination on the merits.

A. General Law of Copyright Preemption Regarding Trade Secrets and Computer Programs

Congress carefully designed the statutory framework of federal copyright preemption. In order to insure that the enforcement of these rights remains solely within the federal domain, section 301(a) of the Copyright Act expressly preempts

all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103....

17 U.S.C. § 301(a). This sweeping displacement of state law is, however, limited by section 301(b), which provides, in relevant part, that

[n]othing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to ... activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106....

17 U.S.C. § 301(b)(3). Section 106, in turn, affords a copyright owner the exclusive right to: (1) reproduce the copyrighted work; (2) prepare derivative works; (3) distribute copies of the work by sale or otherwise; and, with respect to certain artistic works, (4) perform the work publicly; and (5) display the work publicly. See 17 U.S.C. § 106(1)-(5).

Section 301 thus preempts only those state law rights that "may be abridged by an act which, in and of itself, would infringe one of the exclusive rights" provided by federal copyright law. See Harper & Row, Publishers, Inc. v. Nation Enters., 723 F.2d 195, 200 (2d Cir.1983), rev'd on other grounds, 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). But if an "extra element" is "required instead of or in addition to the acts of reproduction, performance, distribution or display, in order to constitute a state-created cause of action, then the right does not lie 'within the general scope of copyright,' and there is no preemption." 1 Nimmer § 1.01[B], at 1-14-15; see also Harper & Row, Publishers, Inc., 723 F.2d at 200 (where state law right "is predicated upon an act incorporating elements beyond mere reproduction or the like, the [federal and state] rights are not equivalent" and there is no preemption).

A state law claim is not preempted if the "extra element" changes the "nature of the action so that it is qualitatively different from a copyright infringement claim." Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F.Supp. 1523, 1535 (S.D.N.Y.1985); see Harper & Row, Publishers, Inc., 723 F.2d at 201. To determine whether a claim meets this standard, we must determine "what plaintiff seeks to protect, the theories in which the matter is thought to be protected and the rights sought to be enforced." 1 Roger M. Milgrim, Milgrim on Trade Secrets [717] § 2.06A, at 2-150 (1992) (hereinafter "Milgrim"). An action will not be saved from preemption by elements such as awareness or intent, which alter "the action's scope but not its nature...." Mayer, 601 F.Supp. at 1535.

Following this "extra element" test, we have held that unfair competition and misappropriation claims grounded solely in the copying of a plaintiff's protected expression are preempted by section 301. See, e.g., Walker v. Time Life Films, Inc., 784 F.2d 44, 53 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986); Warner Bros., Inc. v. American Broadcasting Cos., 720 F.2d 231, 247 (2d Cir.1983); Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 919 & n. 15 (2d Cir.1980). We also have held to be preempted a tortious interference with contract claim grounded in the impairment of a plaintiff's right under the Copyright Act to publish derivative works. See Harper & Row, Publishers, Inc., 723 F.2d at 201.

However, many state law rights that can arise in connection with instances of copyright infringement satisfy the extra element test, and thus are not preempted by section 301. These include unfair competition claims based upon breaches of confidential relationships, breaches of fiduciary duties and trade secrets. Balboa Ins. Co. v. Trans Global Equities, 218 Cal.App.3d 1327, 1339-53, 267 Cal.Rptr. 787, 793-803 (Ct.App. 3rd Dist.), cert. denied, --- U.S. ----, 111 S.Ct. 347, 112 L.Ed.2d 311 (1990).

Trade secret protection, the branch of unfair competition law at issue in this case, remains a "uniquely valuable" weapon in the defensive arsenal of computer programmers. See 1 Milgrim § 2.06A[c], at 2-172.4. Precisely because trade secret doctrine protects the discovery of ideas, processes, and systems which are explicitly precluded from coverage under copyright law, courts and commentators alike consider it a necessary and integral part of the intellectual property protection extended to computer programs. See id.; see also Integrated Cash Management Servs., Inc. v. Digital Transactions, Inc., 920 F.2d 171, 173 (2d Cir.1990) (while plaintiff withdrew copyright infringement claim for misappropriation of computer program, relief for theft of trade secret sustained); Healthcare Affiliated Servs., Inc. v. Lippany, 701 F.Supp. 1142, 1152-55 (W.D.Pa.1988) (finding likelihood of success on trade secret claim, but not copyright claim); Q-Co Indus., Inc., 625 F.Supp. at 616-18 (finding likelihood of success on trade secret claim, but no merit to copyright claim); Kretschmer, at 847-49.

The legislative history of section 301 states that "[t]he evolving common law rights of ... trade secrets ... would remain unaffected as long as the causes of action contain elements, such as ... a breach of trust or confidentiality, that are different in kind from copyright infringement." House Report, at 5748. Congress did not consider the term "misappropriation" to be "necessarily synonymous with copyright infringement," or to serve as the talisman of preemption. Id.

Trade secret claims often are grounded upon a defendant's breach of a duty of trust or confidence to the plaintiff through improper disclosure of confidential material. See, e.g., Mercer v. C.A. Roberts Co., 570 F.2d 1232, 1238 (5th Cir.1978); Brignoli v. Balch Hardy and Scheinman, Inc., 645 F.Supp. 1201, 1205 (S.D.N.Y.1986). The defendant's breach of duty is the gravamen of such trade secret claims, and supplies the "extra element" that qualitatively distinguishes such trade secret causes of action from claims for copyright infringement that are based solely upon copying. See, e.g., Warrington Assoc., Inc. v. Real-Time Eng'g Sys., Inc., 522 F.Supp. 367, 369 (N.D.Ill.1981); Brignoli, 645 F.Supp. at 1205; see also generally Balboa Ins. Co., 218 Cal.App.3d at 1346-50, 267 Cal.Rptr. at 798-802 (reviewing cases).

B. Preemption in this Case

The district court stated that:

Were CA's [trade secret] allegations premised on a theory of illegal acquisition of a trade secret, a charge that might have been alleged against Arney, who is not a defendant in this case, the [718] preemption analysis might be different, for there seems to be no corresponding right guaranteed to copyright owners by § 106 of the copyright act.

Computer Assocs., 775 F.Supp. at 565.

However, the court concluded that CA's trade secret claims were not grounded in a theory that Altai violated a duty of confidentiality to CA. Rather, Judge Pratt stated that CA proceeded against Altai solely "on a theory that the misappropriation took place by Altai's use of ADAPTER--the same theory as the copyright infringement count." Id. The district court reasoned that "the right to be free from trade secret misappropriation through 'use', and the right to exclusive reproduction and distribution of a copyrighted work are not distinguishable." Id. Because he concluded that there was no qualitative difference between the elements of CA's state law trade secret claims and a claim for federal copyright infringement, Judge Pratt ruled that CA's trade secret claims were preempted by section 301.

We agree with CA that the district court failed to address fully the factual and theoretical bases of CA's trade secret claims. The district court relied upon the fact that Arney--not Altai--allegedly breached a duty to CA of confidentiality by stealing secrets from CA and incorporating those secrets into OSCAR 3.4. However, under a wrongful acquisition theory based on Restatement (First) of Torts § 757 (1939), Williams and Altai may be liable for violating CA's right of confidentiality. Section 757 states in relevant part:

One who discloses or uses another's trade secret, without a privilege to do so, is liable to another if.... (c) he learned the secret from a third person with notice of the fact that it was a secret and that the third person discovered it by improper means or that the third person's disclosure of it was otherwise a breach of his duty to the other....

Actual notice is not required for such a third party acquisition claim; constructive notice is sufficient. A defendant is on constructive notice when, "from the information which he has, a reasonable man would infer [a breach of confidence], or if, under the circumstances, a reasonable man would be put on inquiry and an inquiry pursued with reasonable intelligence and diligence would disclose the [breach]." Id., comment 1; Metallurgical Indus., Inc. v. Fourtek, Inc., 790 F.2d 1195, 1204 (5th Cir.1986); Vantage Point, Inc. v. Parker Bros., Inc., 529 F.Supp. 1204, 1210 n. 2 (E.D.N.Y.1981), aff'd, 697 F.2d 301 (2d Cir.1982); see also Rohm and Haas Co. v. Adco Chem. Co., 689 F.2d 424, 431 (3rd Cir.1982) ("Defendants never asked where the 'Harvey process' had come from. Defendants therefore were charged 'with whatever knowledge such inquiry would have led to.' ") (citation omitted); Colgate-Palmolive Co. v. Carter Prods., Inc., 230 F.2d 855, 864 (4th Cir.) (per curiam) (defendant " 'must have known by the exercise of fair business principles' " that its employee's work was covered by an agreement not to disclose) (citation omitted), cert. denied, 352 U.S. 843, 77 S.Ct. 43, 1 L.Ed.2d 59 (1956); 1 Milgrim § 5.04[c].

We agree with the district court that New Jersey's governing governmental interest choice of law analysis directs the application of Texas law to CA's trade secret misappropriation claim. See Computer Assocs., 775 F.Supp. at 566. Texas law recognizes trade secret misappropriation claims grounded in the reasoning of Restatement section 757(c), see, e.g., Fourtek, 790 F.2d at 1204, and the facts alleged by CA may well support such a claim.

It is undisputed that, when Arney stole the ADAPTER code and incorporated it into his design of OSCAR 3.4, he breached his confidentiality agreement with CA. The district court noted that while such action might constitute a valid claim against Arney, CA is the named defendant in this lawsuit. Additionally, the district court found, as a matter of fact, that "[n]o one at Altai, other than Arney, knew that Arney had the ADAPTER code...." Computer Assocs., 775 F.Supp. at 554. However, the district court did not consider fully Altai's potential liability for improper trade secret acquisition. It did not consider the question of Altai's trade secret liability [719] in connection with OSCAR 3.4 under a constructive notice theory, or Altai's potential liability under an actual notice theory in connection with OSCAR 3.5.

The district court found that, prior to CA's bringing suit, Altai was not on actual notice of Arney's theft of trade secrets, and incorporation of those secrets into OSCAR 3.4. However, by virtue of Williams' close relationship with Arney, Williams' general familiarity with CA's programs (having once been employed by CA himself), and the fact that Arney used the ADAPTER program in an office at Altai adjacent to Williams during a period in which he had frequent contact with Williams regarding the OSCAR/VSE project, Williams (and through him Altai) may well have been on constructive notice of Arney's breach of his duty of confidentiality toward CA. The district court did not address whether Altai was on constructive notice, thereby placing it under a duty of inquiry; rather the court's finding that only Arney affirmatively knew of the theft of CA's trade secrets and incorporation of those secrets into OSCAR 3.4 simply disposed of the issue of actual notice in connection with the creation of OSCAR 3.4. CA's claim of liability based on constructive notice, never considered in the district court's opinion, must be determined on remand.

With respect to actual notice, it is undisputed that CA's first complaint, filed in August 1988, informed Altai of Arney's trade secret violations in connection with the creation of OSCAR 3.4. The first complaint alleged that Arney assisted in the development of ADAPTER, thereby obtaining knowledge of CA's related trade secrets. It also alleged that Altai misappropriated CA's trade secrets by incorporating them into ZEKE.

In response to CA's complaint, Altai rewrote OSCAR 3.4, creating OSCAR 3.5. While we agree with the district court that OSCAR 3.5 did not contain any expression protected by copyright, it may nevertheless still have embodied many of CA's trade secrets that Arney brought with him to Altai. Since Altai's rewrite was conducted with full knowledge of Arney's prior misappropriation, in breach of his duty of confidentiality, it follows that OSCAR 3.5 was created with actual knowledge of trade secret violations. Thus, with regard to OSCAR 3.5, CA has a viable trade secret claim against Altai that must be considered by the district court on remand. This claim is grounded in Altai's alleged use of CA's trade secrets in the creation of OSCAR 3.5, while on actual notice of Arney's theft of trade secrets and incorporation of those secrets into OSCAR 3.4. The district court correctly stated that a state law claim based solely upon Altai's "use", by copying, of ADAPTER's non-literal elements could not satisfy the governing "extra element" test, and would be preempted by section 301. However, where the use of copyrighted expression is simultaneously the violation of a duty of confidentiality established by state law, that extra element renders the state right qualitatively distinct from the federal right, thereby foreclosing preemption under section 301.

We are also convinced that CA adequately pled a wrongful acquisition claim before Judge Mishler and Judge Pratt. In ruling that CA failed to properly plead a non-preempted claim, Judge Pratt relied heavily upon two allegations in CA's amended complaint. Id. at 563-64. They read as follows:

p 57. By reason of the facts stated in paragraph 39 and by copying from CA-SCHEDULER into ZEKE, ZACK and ZEBB the various elements stated in paragraphs 39-51, 54 and 55, defendant Altai has infringed [CA's] copyright in CA-SCHEDULER.

* * * * * *

p 73. Defendant's incorporation into its ZEKE, ZACK and ZEBB programs of the various elements contained in the ADAPTER component of [CA's] CA-SCHEDULER program as set out in paragraphs 39-51, 54 and 55 constitutes the willful misappropriation of the proprietary property and trade secrets of plaintiff [CA].

[720] From these pleadings, Judge Pratt concluded that the very same act, i.e., Altai's copying of various elements of CA's program, was the basis for both CA's copyright infringement and trade secret claims. See id. at 564. We agree with Judge Pratt that CA's allegations are somewhat inartfully stated. However, when taken together, the terms "incorporation" and "misappropriation" in paragraph 73 above suggest to us an act of a qualitatively different nature than the infringement pled in paragraph 57. House Report, at 5748 (" '[m]isappropriation' is not necessarily synonymous with copyright infringement").

In support of our reading, we note that paragraphs 65-75 of CA's amended complaint alleged facts that reasonably comprise the elements of a wrongful acquisition of trade secrets claim. CA averred that, while he was employed at CA, Arney learned CA's trade secrets regarding the ADAPTER program. CA further alleged that, after Arney went to work for Altai, Altai misappropriated those trade secrets by incorporating CA's ADAPTER program into its own product. Finally, CA claimed that the trade secret misappropriation was carried out "in a willful, wanton and reckless manner in disregard of [CA's] rights." In other words, Altai could have reasonably inferred from CA's allegations that CA's claim, in part, rested on Williams' "wanton and reckless" behavior in the face of constructive notice.

In addition, while responding to Altai's preemption argument in its motion to dismiss and for summary judgment, CA specifically argued in its brief to Judge Mishler that "it can easily be inferred that Mr. Arney was hired by Altai to misappropriate [CA's] confidential source code for Altai's benefit." At oral argument, CA further contended that:

The circumstances of Mr. Arney's hiring suggested that Mr. Williams wanted more than Mr. Arney's ability and in fact got exactly what he wanted. And that is Computer Associates' confidential Adapter technology.

* * * * * *

[Arney testified that he] surreptitiously took that code home from Computer Associates after giving notice he was going to go to work for Altai, and after being hired by Mr. Williams to come to Altai and reconstruct Zeke, to work on the MVS operating system.

In the aftermath of Judge Mishler's ruling in its favor on Altai's motion to dismiss and for summary judgment, CA reasonably believed that it had sufficiently alleged a non-preempted claim. And, in light of CA's arguments and Judge Mishler's ruling, Altai clearly was on notice that the amended complaint placed non-preempted trade secret claims in play. See 5 Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 1215, at 136-38 (2d ed. 1990) (federal pleading standards require plaintiff to provide defendant with fair notice of claim and grounds it rests on).

Accordingly, we vacate the judgment of the district court and remand for reconsideration of those aspects of CA's trade secret claims related to Altai's alleged constructive notice of Arney's theft of CA's trade secrets and incorporation of those secrets into OSCAR 3.4. We note, however, that CA may be unable to recover damages for its trade secrets which are embodied in OSCAR 3.4 since Altai has conceded copyright liability and damages for its incorporation of ADAPTER into OSCAR 3.4. CA may not obtain a double recovery where the damages for copyright infringement and trade secret misappropriation are coextensive.

However, additional trade secret damages may well flow from CA's creation of OSCAR 3.5. Judge Pratt correctly acknowledged that "[i]f CA's claim of misappropriation of trade secrets did not fail on preemption grounds, it would be necessary to examine in some detail the conflicting claims and evidence relating to the process by which Altai rewrote OSCAR and ultimately produced version 3.5." Computer Assocs., 775 F.Supp. at 554-55; see also 1 Milgrim § 5.04[d], at 5-148 ("after notice, the [innocent] second user should cease the use, and if he does not he can be enjoined and held liable for damages arising from such use subsequent to notice"). Since we hold that CA's trade secret claims [721] are not preempted, and that, in writing OSCAR 3.5, Altai had actual notice of Arney's earlier trade secret violations, we vacate and remand for such further inquiry anticipated by the district court. If the district court finds that CA was injured by Altai's unlawful use of CA's trade secrets in creating OSCAR 3.5, CA is entitled to an award of damages for trade secret misappropriation, as well as consideration by the district court of CA's request for injunctive relief on its trade secret claim.

CONCLUSION

In adopting the above three step analysis for substantial similarity between the non-literal elements of computer programs, we seek to insure two things: (1) that programmers may receive appropriate copyright protection for innovative utilitarian works containing expression; and (2) that non-protectable technical expression remains in the public domain for others to use freely as building blocks in their own work. At first blush, it may seem counter-intuitive that someone who has benefitted to some degree from illicitly obtained material can emerge from an infringement suit relatively unscathed. However, so long as the appropriated material consists of non-protectable expression, "[t]his result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art." Feist, --- U.S. at ----, 111 S.Ct. at 1290.

Furthermore, we underscore that so long as trade secret law is employed in a manner that does not encroach upon the exclusive domain of the Copyright Act, it is an appropriate means by which to secure compensation for software espionage.

Accordingly, we affirm the judgment of the district court in part; vacate in part; and remand for further proceedings. The parties shall bear their own costs of appeal, including the petition for rehearing.

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

Because I believe that our original opinion, see Computer Assoc. Int'l v. Altai, Nos. 91-7893(L), 1992 WL 139364 (2d Cir. June 22, 1992), is a reasoned analysis of the issues presented, I adhere to the original determination and therefore concur in Part 1 and respectfully dissent from Part 2 of the amended opinion.

[808] Gary L. Reback, with whom Peter N. Detkin, Michael Barclay, Isabella E. Fu, Wilson Sonsini Goodrich & Rosati, P.C., Palo Alto, CA, Peter E. Gelhaar, Katherine L. Parks, and Donnelly Conroy & Gelhaar, Boston, MA, were on brief for appellant.

Matthew P. Poppel, Boston, MA, et al., were on brief for Computer Scientists, amicus curiae.

Dennis S. Karjala, Tempe, AZ, and Peter S. Menell, Berkeley, CA, on brief, amici curiae.

Jeffrey C. Cannon and Baker Keaton Seibel & Cannon, Walnut Creek, CA, were on brief for Computer Software Industry Ass'n, amicus curiae.

Laureen E. McGurk, David A. Rabin, Bryan G. Harrison and Morris Manning & Martin, Atlanta, GA, were on brief for Chicago Computer Soc., Diablo Users Group, Danbury Area Computer Soc., IBM AB Users Group, Kentucky-Indiana Personal Computer Users Group, Long Island PC Users Group, Napa Valley PC Users Group, Pacific Northwest PC Users Group, Palmetto Personal Computer Club, Philadelphia Area Computer Soc., Inc., Phoenix IBM PC Users Group, Pinellas IBM PC Users Group, Quad Cities Computer Soc., Quattro Pro Users Group, Sacramento PC Users Group, San Francisco PC Users Group, Santa Barbara PC Users Group, Twin Cities PC Users Group, and Warner Robbins Personal Computer Ass'n, amici curiae.

Diane Marie O'Malley and Hanson Bridgett Marcus Vlahos & Rudy, San Francisco, [809] CA, were on brief for Software Entrepreneurs' Forum, amicus curiae.

Peter M.C. Choy, Mountain View, CA, was on brief for American Committee for Interoperable Systems, amicus curiae.

Howard B. Abrams, Detroit, MI, Howard C. Anawalt, Santa Clara, CA, Stephen R. Barnett, Berkeley, CA, Ralph S. Brown, Stephen L. Carter, New Haven, CT, Amy B. Cohen, Longmeadow, MA, Paul J. Heald, Athens, GA, Peter A. Jaszi, John A. Kidwell, Madison, WI, Edmund W. Kitch, Charlottesville, VA, Roberta R. Kwall, Chicago, IL, David L. Lange, Durham, NC, Marshall Leaffer, Toledo, OH, Jessica D. Litman, Ann Arbor, MI, Charles R. McManis, St. Louis, MO, L. Ray Patterson, Athens, GA, Jerome H. Reichman, David A. Rice, Chestnut Hill, MA, Pamela Samuelson, Pittsburgh, PA, David J. Seipp, Boston, MA, David E. Shipley, Lexington, KY, Lionel S. Sobel, Santa Monica, CA, Alfred C. Yen, Newton, MA, and Diane L. Zimmerman, New York City, were on brief for Copyright Law Professors, amicus curiae.

Henry B. Gutman, Baker & Botts, LLP, with whom Kerry L. Konrad, Joshua H. Epstein, Kimberly A. Caldwell, O'Sullivan Graev & Karabell, New York City, Thomas M. Lemberg, James C. Burling, and Hale and Dorr, Boston, MA, were on brief for appellee.

Morton David Goldberg, June M. Besek, David O. Carson, Jesse M. Feder, Schwab Goldberg Price & Dannay, New York City, and Arthur R. Miller, Cambridge, MA, were on brief for Apple Computer, Inc., Digital Equip. Corp., International Business Machines Corp., and Xerox Corp., amici curiae.

Jon A. Baumgarten, Proskauer Rose Goetz & Mendelsohn, and Robert A. Gorman, New York City, were on brief for Adobe Systems, Inc., Apple Computer, Inc., Computer Associates Intern., Inc., Digital Equip. Corp., and International Business Machines Corp., amici curiae.

Herbert F. Schwartz, Vincent N. Palladino, Susan Progoff, Fish & Neave, New York City, William J. Cheeseman, and Foley Hoag & Eliot, Boston, MA, were on brief for Computer and Business Equip. Mfrs. Ass'n, amicus curiae.

Before TORRUELLA, Chief Judge, BOUDIN and STAHL, Circuit Judges.

STAHL, Circuit Judge.

This appeal requires us to decide whether a computer menu command hierarchy is copyrightable subject matter. In particular, we must decide whether, as the district court held, plaintiff-appellee Lotus Development Corporation's copyright in Lotus 1-2-3, a computer spreadsheet program, was infringed by defendant-appellant Borland International, Inc., when Borland copied the Lotus 1-2-3 menu command hierarchy into its Quattro and Quattro Pro computer spreadsheet programs. See Lotus Dev. Corp. v. Borland Int'l, Inc., 788 F.Supp. 78 (D.Mass. 1992) ("Borland I"); Lotus Dev. Corp. v. Borland Int'l, Inc., 799 F.Supp. 203 (D.Mass. 1992) ("Borland II"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831 F.Supp. 202 (D.Mass. 1993) ("Borland III"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831 F.Supp. 223 (D.Mass. 1993) ("Borland IV").

I.

Background

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

Lotus 1-2-3, like many computer programs, allows users to write what are called "macros." By writing a macro, a user can designate a series of command choices with a single macro keystroke. Then, to execute that series of commands in multiple parts of the spreadsheet, rather than typing the whole series each time, the user only needs to type the single pre-programmed macro keystroke, causing the program to recall and perform the designated series of commands automatically. Thus, Lotus 1-2-3 macros [810] shorten the time needed to set up and operate the program.

Borland released its first Quattro program to the public in 1987, after Borland's engineers had labored over its development for nearly three years. Borland's objective was to develop a spreadsheet program far superior to existing programs, including Lotus 1-2-3. In Borland's words, "[f]rom the time of its initial release ... Quattro included enormous innovations over competing spreadsheet products."

The district court found, and Borland does not now contest, that Borland included in its Quattro and Quattro Pro version 1.0 programs "a virtually identical copy of the entire 1-2-3 menu tree." Borland III, 831 F.Supp. at 212 (emphasis in original). In so doing, Borland did not copy any of Lotus's underlying computer code; it copied only the words and structure of Lotus's menu command hierarchy. Borland included the Lotus menu command hierarchy in its programs to make them compatible with Lotus 1-2-3 so that spreadsheet users who were already familiar with Lotus 1-2-3 would be able to switch to the Borland programs without having to learn new commands or rewrite their Lotus macros.

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

Lotus filed this action against Borland in the District of Massachusetts on July 2, 1990, four days after a district court held that the Lotus 1-2-3 "menu structure, taken as a whole — including the choice of command terms [and] the structure and order of those terms," was protected expression covered by Lotus's copyrights. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F.Supp. 37, 68, 70 (D.Mass.1990) ("Paperback").^[1] Three days earlier, on the morning after the Paperback decision, Borland had filed a declaratory judgment action against Lotus in the Northern District of California, seeking a declaration of non-infringement. On September 10, 1990, the district court in California dismissed Borland's declaratory judgment action in favor of this action.

Lotus and Borland filed cross motions for summary judgment; the district court denied both motions on March 20, 1992, concluding that "neither party's motion is supported by the record." Borland I, 788 F.Supp. at 80. The district court invited the parties to file renewed summary judgment motions that would "focus their arguments more precisely" in light of rulings it had made in conjunction with its denial of their summary judgment motions. Id. at 82. Both parties filed renewed motions for summary judgment on April 24, 1992. In its motion, Borland contended that the Lotus 1-2-3 menus were not copyrightable as a matter of law and that no reasonable trier of fact could find that the similarity between its products and Lotus 1-2-3 was sufficient to sustain a determination of infringement. Lotus contended in its motion that Borland had copied Lotus 1-2-3's entire user interface and had thereby infringed Lotus's copyrights.

On July 31, 1992, the district court denied Borland's motion and granted Lotus's motion in part. The district court ruled that the Lotus menu command hierarchy was copyrightable expression because

[a] very satisfactory spreadsheet menu tree can be constructed using different commands and a different command structure from those of Lotus 1-2-3. In fact, Borland has constructed just such an alternate tree for use in Quattro Pro's native mode. Even if one holds the arrangement of menu commands constant, it is possible to generate literally millions of satisfactory [811] menu trees by varying the menu commands employed.

Borland II, 799 F.Supp. at 217. The district court demonstrated this by offering alternate command words for the ten commands that appear in Lotus's main menu. Id. For example, the district court stated that "[t]he `Quit' command could be named `Exit' without any other modifications," and that "[t]he `Copy' command could be called `Clone,' `Ditto,' `Duplicate,' `Imitate,' `Mimic,' `Replicate,' and `Reproduce,' among others." Id. Because so many variations were possible, the district court concluded that the Lotus developers' choice and arrangement of command terms, reflected in the Lotus menu command hierarchy, constituted copyrightable expression.

In granting partial summary judgment to Lotus, the district court held that Borland had infringed Lotus's copyright in Lotus 1-2-3:

[A]s a matter of law, Borland's Quattro products infringe the Lotus 1-2-3 copyright because of (1) the extent of copying of the "menu commands" and "menu structure" that is not genuinely disputed in this case, (2) the extent to which the copied elements of the "menu commands" and "menu structure" contain expressive aspects separable from the functions of the "menu commands" and "menu structure," and (3) the scope of those copied expressive aspects as an integral part of Lotus 1-2-3.

Borland II, 799 F.Supp. at 223 (emphasis in original). The court nevertheless concluded that while the Quattro and Quattro Pro programs infringed Lotus's copyright, Borland had not copied the entire Lotus 1-2-3 user interface, as Lotus had contended. Accordingly, the court concluded that a jury trial was necessary to determine the scope of Borland's infringement, including whether Borland copied the long prompts^[2] of Lotus 1-2-3, whether the long prompts contained expressive elements, and to what extent, if any, functional constraints limited the number of possible ways that the Lotus menu command hierarchy could have been arranged at the time of its creation. See Borland III, 831 F.Supp. at 207. Additionally, the district court granted Lotus summary judgment on Borland's affirmative defense of waiver, but not on its affirmative defenses of laches and estoppel. Borland II, 799 F.Supp. at 222-23.

Immediately following the district court's summary judgment decision, Borland removed the Lotus Emulation Interface from its products. Thereafter, Borland's spreadsheet programs no longer displayed the Lotus 1-2-3 menus to Borland users, and as a result Borland users could no longer communicate with Borland's programs as if they were using a more sophisticated version of Lotus 1-2-3. Nonetheless, Borland's programs continued to be partially compatible with Lotus 1-2-3, for Borland retained what it called the "Key Reader" in its Quattro Pro programs. Once turned on, the Key Reader allowed Borland's programs to understand and perform some Lotus 1-2-3 macros.^[3] With the Key Reader on, the Borland programs used Quattro Pro menus for display, interaction, and macro execution, except when they encountered a slash ("/") key in a macro (the starting key for any Lotus 1-2-3 [812] macro), in which case they interpreted the macro as having been written for Lotus 1-2-3. Accordingly, people who wrote or purchased macros to shorten the time needed to perform an operation in Lotus 1-2-3 could still use those macros in Borland's programs.^[4] The district court permitted Lotus to file a supplemental complaint alleging that the Key Reader infringed its copyright.

The parties agreed to try the remaining liability issues without a jury. The district court held two trials, the Phase I trial covering all remaining issues raised in the original complaint (relating to the Emulation Interface) and the Phase II trial covering all issues raised in the supplemental complaint (relating to the Key Reader). At the Phase I trial, there were no live witnesses, although considerable testimony was presented in the form of affidavits and deposition excerpts. The district court ruled upon evidentiary objections counsel interposed. At the Phase II trial, there were two live witnesses, each of whom demonstrated the programs for the district court.

After the close of the Phase I trial, the district court permitted Borland to amend its answer to include the affirmative defense of "fair use." Because Borland had presented all of the evidence supporting its fair-use defense during the Phase I trial, but Lotus had not presented any evidence on fair use (as the defense had not been raised before the conclusion of the Phase I trial), the district court considered Lotus's motion for judgment on partial findings of fact. See Fed.R.Civ.P. 52(c). The district court held that Borland had failed to show that its use of the Lotus 1-2-3 menu command hierarchy in its Emulation Interface was a fair use. See Borland III, 831 F.Supp. at 208.

In its Phase I-trial decision, the district court found that "each of the Borland emulation interfaces contains a virtually identical copy of the 1-2-3 menu tree and that the 1-2-3 menu tree is capable of a wide variety of expression." Borland III, 831 F.Supp. at 218. The district court also rejected Borland's affirmative defenses of laches and estoppel. Id. at 218-23.

In its Phase II-trial decision, the district court found that Borland's Key Reader file included "a virtually identical copy of the Lotus menu tree structure, but represented in a different form and with first letters of menu command names in place of the full menu command names." Borland IV, 831 F.Supp. at 228. In other words, Borland's programs no longer included the Lotus command terms, but only their first letters. The district court held that "the Lotus menu structure, organization, and first letters of the command names ... constitute part of the protectable expression found in [Lotus 1-2-3]." Id. at 233. Accordingly, the district court held that with its Key Reader, Borland had infringed Lotus's copyright. Id. at 245. The district court also rejected Borland's affirmative defenses of waiver, laches, estoppel, and fair use. Id. at 235-45. The district court then entered a permanent injunction against Borland, id. at 245, from which Borland appeals.

This appeal concerns only Borland's copying of the Lotus menu command hierarchy into its Quattro programs and Borland's affirmative defenses to such copying. Lotus has not cross-appealed; in other words, Lotus does not contend on appeal that the district court erred in finding that Borland had not copied other elements of Lotus 1-2-3, such as its screen displays.

II.

Discussion

On appeal, Borland does not dispute that it factually copied the words and arrangement of the Lotus menu command hierarchy. Rather, Borland argues that it "lawfully copied the unprotectable menus of Lotus 1-2-3." Borland contends that the Lotus menu command hierarchy is not copyrightable because it is a system, method of operation, process, or procedure foreclosed from protection by 17 U.S.C. § 102(b). Borland also raises a number of affirmative defenses. [813]

A. Copyright Infringement Generally

To establish copyright infringement, a plaintiff must prove "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991); see also Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 n. 19 (1st Cir.1994); Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 605 (1st Cir.1988). To show ownership of a valid copyright and therefore satisfy Feist's first prong, a plaintiff must prove that the work as a whole is original and that the plaintiff complied with applicable statutory formalities. See Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1340 (5th Cir.1994). "In judicial proceedings, a certificate of copyright registration constitutes prima facie evidence of copyrightability and shifts the burden to the defendant to demonstrate why the copyright is not valid." Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104, 1106 (9th Cir.1990); see also 17 U.S.C. § 410(c); Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir.1991) (presumption of validity may be rebutted).

To show actionable copying and therefore satisfy Feist's second prong, a plaintiff must first prove that the alleged infringer copied plaintiff's copyrighted work as a factual matter; to do this, he or she may either present direct evidence of factual copying or, if that is unavailable, evidence that the alleged infringer had access to the copyrighted work and that the offending and copyrighted works are so similar that the court may infer that there was factual copying (i.e., probative similarity). Engineering Dynamics, 26 F.3d at 1340; see also Concrete Mach., 843 F.2d at 606. The plaintiff must then prove that the copying of copyrighted material was so extensive that it rendered the offending and copyrighted works substantially similar. See Engineering Dynamics, 26 F.3d at 1341.

In this appeal, we are faced only with whether the Lotus menu command hierarchy is copyrightable subject matter in the first instance, for Borland concedes that Lotus has a valid copyright in Lotus 1-2-3 as a whole^[5] and admits to factually copying the Lotus menu command hierarchy. As a result, this appeal is in a very different posture from most copyright-infringement cases, for copyright infringement generally turns on whether the defendant has copied protected expression as a factual matter. Because of this different posture, most copyright-infringement cases provide only limited help to us in deciding this appeal. This is true even with respect to those copyright-infringement cases that deal with computers and computer software.

B. Matter of First Impression

Whether a computer menu command hierarchy constitutes copyrightable subject matter is a matter of first impression in this court. While some other courts appear to have touched on it briefly in dicta, see, e.g., Autoskill, Inc. v. National Educ. Support Sys., Inc., 994 F.2d 1476, 1495 n. 23 (10th Cir.), cert. denied, ___ U.S. ___, 114 S.Ct. 307, 126 L.Ed.2d 254 (1993), we know of no cases that deal with the copyrightability of a menu command hierarchy standing on its own (i.e., without other elements of the user interface, such as screen displays, in issue). Thus we are navigating in uncharted waters.

Borland vigorously argues, however, that the Supreme Court charted our course more than 100 years ago when it decided Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879). In Baker v. Selden, the Court held that Selden's copyright over the textbook in which he explained [814] his new way to do accounting did not grant him a monopoly on the use of his accounting system.^[6] Borland argues:

The facts of Baker v. Selden, and even the arguments advanced by the parties in that case, are identical to those in this case. The only difference is that the "user interface" of Selden's system was implemented by pen and paper rather than by computer.

To demonstrate that Baker v. Selden and this appeal both involve accounting systems, Borland even supplied this court with a video that, with special effects, shows Selden's paper forms "melting" into a computer screen and transforming into Lotus 1-2-3.

We do not think that Baker v. Selden is nearly as analogous to this appeal as Borland claims. Of course, Lotus 1-2-3 is a computer spreadsheet, and as such its grid of horizontal rows and vertical columns certainly resembles an accounting ledger or any other paper spreadsheet. Those grids, however, are not at issue in this appeal for, unlike Selden, Lotus does not claim to have a monopoly over its accounting system. Rather, this appeal involves Lotus's monopoly over the commands it uses to operate the computer. Accordingly, this appeal is not, as Borland contends, "identical" to Baker v. Selden.

C. Altai

Before we analyze whether the Lotus menu command hierarchy is a system, method of operation, process, or procedure, we first consider the applicability of the test the Second Circuit set forth in Computer Assoc. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir.1992).^[7] The Second Circuit designed its Altai test to deal with the fact that computer programs, copyrighted as "literary works," can be infringed by what is known as "nonliteral" copying, which is copying that is paraphrased or loosely paraphrased rather than word for word. See id. at 701 (citing nonliteral-copying cases); see also 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A][1] (1993). When faced with nonliteral-copying cases, courts must determine whether similarities are due merely to the fact that the two works share the same underlying idea or whether they instead indicate that the second author copied the first author's expression. The Second Circuit designed its Altai test to deal with this situation in the computer context, specifically with whether one computer program copied nonliteral expression from another program's code.

The Altai test involves three steps: abstraction, filtration, and comparison. The abstraction step requires courts to "dissect the allegedly copied program's structure and isolate each level of abstraction contained within it." Altai, 982 F.2d at 707. This step enables courts to identify the appropriate framework within which to separate protectable expression from unprotected ideas. Second, courts apply a "filtration" step in which they examine "the structural components at each level of abstraction to determine whether their particular inclusion at that level was `idea' or was dictated by considerations of efficiency, so as to be necessarily incidental to that idea; required by factors external to the program itself; or taken from the public domain." Id. Finally, courts compare the protected elements of the infringed work (i.e., those that survived the filtration screening) to the corresponding elements of the allegedly infringing work to determine whether there was sufficient copying of protected material to constitute infringement. Id. at 710.

In the instant appeal, we are not confronted with alleged nonliteral copying of computer code. Rather, we are faced with Borland's deliberate, literal copying of the Lotus menu command hierarchy. Thus, we must determine not whether nonliteral copying occurred in some amorphous sense, but rather whether the literal copying of the Lotus [815] menu command hierarchy constitutes copyright infringement.

While the Altai test may provide a useful framework for assessing the alleged nonliteral copying of computer code, we find it to be of little help in assessing whether the literal copying of a menu command hierarchy constitutes copyright infringement. In fact, we think that the Altai test in this context may actually be misleading because, in instructing courts to abstract the various levels, it seems to encourage them to find a base level that includes copyrightable subject matter that, if literally copied, would make the copier liable for copyright infringement.^[8] While that base (or literal) level would not be at issue in a nonliteral-copying case like Altai, it is precisely what is at issue in this appeal. We think that abstracting menu command hierarchies down to their individual word and menu levels and then filtering idea from expression at that stage, as both the Altai and the district court tests require, obscures the more fundamental question of whether a menu command hierarchy can be copyrighted at all. The initial inquiry should not be whether individual components of a menu command hierarchy are expressive, but rather whether the menu command hierarchy as a whole can be copyrighted. But see Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir.1993) (endorsing Altai's abstraction-filtration-comparison test as a way of determining whether "menus and sorting criteria" are copyrightable).

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

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

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

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

The Lotus menu command hierarchy does not merely explain and present Lotus 1-2-3's functional capabilities to the user; it also serves as the method by which the program is operated and controlled. The Lotus menu command hierarchy is different from the Lotus long prompts, for the long prompts are not necessary to the operation of the program; users could operate Lotus 1-2-3 even if there were no long prompts.^[9] The Lotus [816] menu command hierarchy is also different from the Lotus screen displays, for users need not "use" any expressive aspects of the screen displays in order to operate Lotus 1-2-3; because the way the screens look has little bearing on how users control the program, the screen displays are not part of Lotus 1-2-3's "method of operation."^[10] The Lotus menu command hierarchy is also different from the underlying computer code, because while code is necessary for the program to work, its precise formulation is not. In other words, to offer the same capabilities as Lotus 1-2-3, Borland did not have to copy Lotus's underlying code (and indeed it did not); to allow users to operate its programs in substantially the same way, however, Borland had to copy the Lotus menu command hierarchy. Thus the Lotus 1-2-3 code is not a uncopyrightable "method of operation."^[11]

The district court held that the Lotus menu command hierarchy, with its specific choice and arrangement of command terms, constituted an "expression" of the "idea" of operating a computer program with commands arranged hierarchically into menus and submenus. Borland II, 799 F.Supp. at 216. Under the district court's reasoning, Lotus's decision to employ hierarchically arranged command terms to operate its program could not foreclose its competitors from also employing hierarchically arranged command terms to operate their programs, but it did foreclose them from employing the specific command terms and arrangement that Lotus had used. In effect, the district court limited Lotus 1-2-3's "method of operation" to an abstraction.

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

The fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a "method of operation." In other words, our initial inquiry is not whether the Lotus menu command hierarchy incorporates any expression.^[12] Rather, our initial inquiry is whether the Lotus menu command hierarchy is a "method of operation." Concluding, as we do, that users operate Lotus 1-2-3 by using the Lotus menu command hierarchy, and that the entire Lotus menu command hierarchy is essential to operating Lotus 1-2-3, we do not inquire further whether that method of operation could have been designed differently. The "expressive" choices of what to name the command terms and how to arrange them do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter.

Our holding that "methods of operation" are not limited to mere abstractions is bolstered by Baker v. Selden. In Baker, the Supreme Court explained that

the teachings of science and the rules and methods of useful art have their final end in application and use; and this application [817] and use are what the public derive from the publication of a book which teaches them.... 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.

Baker v. Selden, 101 U.S. at 104-05. Lotus wrote its menu command hierarchy so that people could learn it and use it. Accordingly, it falls squarely within the prohibition on copyright protection established in Baker v. Selden and codified by Congress in § 102(b).

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

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

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

One might argue that the buttons for operating a VCR are not analogous to the commands for operating a computer program because VCRs are not copyrightable, whereas computer programs are. VCRs may not be copyrighted because they do not fit within any of the § 102(a) categories of copyrightable works; the closest they come is "sculptural work." Sculptural works, however, are subject to a "useful-article" exception whereby "the design of a useful article ... shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. § 101. A "useful article" is "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." Id. Whatever expression there may be in the arrangement of the parts of a VCR is not capable of existing separately from the VCR itself, so an ordinary VCR would not be copyrightable.

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

That the Lotus menu command hierarchy is a "method of operation" becomes clearer when one considers program compatibility. Under Lotus's theory, if a user uses [818] several different programs, he or she must learn how to perform the same operation in a different way for each program used. For example, if the user wanted the computer to print material, then the user would have to learn not just one method of operating the computer such that it prints, but many different methods. We find this absurd. The fact that there may be many different ways to operate a computer program, or even many different ways to operate a computer program using a set of hierarchically arranged command terms, does not make the actual method of operation chosen copyrightable; it still functions as a method for operating the computer and as such is uncopyrightable.

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

In holding that expression that is part of a "method of operation" cannot be copyrighted, we do not understand ourselves to go against the Supreme Court's holding in Feist. In Feist, the Court explained:

The primary objective of copyright is not to reward the labor of authors, but to promote the Progress of Science and useful Arts. 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.

Feist, 499 U.S. at 349-50, 111 S.Ct. at 1290 (quotations and citations omitted). We do not think that the Court's statement that "copyright assures authors the right to their original expression" indicates that all expression is necessarily copyrightable; while original expression is necessary for copyright protection, we do not think that it is alone sufficient. Courts must still inquire whether original expression falls within one of the categories foreclosed from copyright protection by § 102(b), such as being a "method of operation."

We also note that in most contexts, there is no need to "build" upon other people's expression, for the ideas conveyed by that expression can be conveyed by someone else without copying the first author's expression.^[13] In the context of methods of operation, however, "building" requires the use of the precise method of operation already employed; otherwise, "building" would require dismantling, too. Original developers are not the only people entitled to build on the methods of operation they create; anyone can. Thus, Borland may build on the method of operation that Lotus designed and may use the Lotus menu command hierarchy in doing so.

Our holding that methods of operation are not limited to abstractions goes against Autoskill, 994 F.2d at 1495 n. 23, in which the Tenth Circuit rejected the defendant's argument that the keying procedure used in a computer program was an uncopyrightable "procedure" or "method of operation" under § 102(b). The program at issue, which was designed to test and train students with reading deficiencies, id. at 1481, required students to select responses to the program's queries "by pressing the 1, 2, or 3 keys." Id. at 1495 n. 23. The Tenth Circuit held that, "for purposes of the preliminary injunction, ... the record showed that [this] keying procedure reflected at least a minimal degree [819] of creativity," as required by Feist for copyright protection. Id. As an initial matter, we question whether a programmer's decision to have users select a response by pressing the 1, 2, or 3 keys is original. More importantly, however, we fail to see how "a student select[ing] a response by pressing the 1, 2, or 3 keys," id., can be anything but an unprotectable method of operation.^[14]

III.

Conclusion

Because we hold that the Lotus menu command hierarchy is uncopyrightable subject matter, we further hold that Borland did not infringe Lotus's copyright by copying it. Accordingly, we need not consider any of Borland's affirmative defenses. The judgment of the district court is

Reversed.

Concurrence follows.

BOUDIN, Circuit Judge, concurring.

The importance of this case, and a slightly different emphasis in my view of the underlying problem, prompt me to add a few words to the majority's tightly focused discussion.

I.

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

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

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

It is no accident that patent protection has preconditions that copyright protection does not — notably, the requirements of novelty and non-obviousness — and that patents are granted for a shorter period than copyrights. This problem of utility has sometimes manifested itself in copyright cases, such as Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879), and been dealt with through various formulations that limit copyright or create limited rights to copy. But the case law and doctrine addressed to utility in copyright have been brief detours in the general march of copyright law.

Requests for the protection of computer menus present the concern with fencing off access to the commons in an acute form. A new menu may be a creative work, but over time its importance may come to reside more in the investment that has been made by users in learning the menu and in building their own mini-programs — macros — in reliance upon the menu. Better typewriter keyboard [820] layouts may exist, but the familiar QWERTY keyboard dominates the market because that is what everyone has learned to use. See P. David, CLIO and the Economics of QWERTY, 75 Am.Econ.Rev. 332 (1985). The QWERTY keyboard is nothing other than a menu of letters.

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

All of this would make no difference if Congress had squarely confronted the issue, and given explicit directions as to what should be done. The Copyright Act of 1976 took a different course. While Congress said that computer programs might be subject to copyright protection, it said this in very general terms; and, especially in § 102(b), Congress adopted a string of exclusions that if taken literally might easily seem to exclude most computer programs from protection. The only detailed prescriptions for computers involve narrow issues (like back-up copies) of no relevance here.

Of course, one could still read the statute as a congressional command that the familiar doctrines of copyright law be taken and applied to computer programs, in cookie cutter fashion, as if the programs were novels or play scripts. Some of the cases involving computer programs embody this approach. It seems to be mistaken on two different grounds: the tradition of copyright law, and the likely intent of Congress.

The broad-brush conception of copyright protection, the time limits, and the formalities have long been prescribed by statute. But the heart of copyright doctrine — what may be protected and with what limitations and exceptions — has been developed by the courts through experience with individual cases. B. Kaplan, An Unhurried View of Copyright 40 (1967). Occasionally Congress addresses a problem in detail. For the most part the interstitial development of copyright through the courts is our tradition.

Nothing in the language or legislative history of the 1976 Act, or at least nothing brought to our attention, suggests that Congress meant the courts to abandon this case-by-case approach. Indeed, by setting up § 102(b) as a counterpoint theme, Congress has arguably recognized the tension and left it for the courts to resolve through the development of case law. And case law development is adaptive: it allows new problems to be solved with help of earlier doctrine, but it does not preclude new doctrines to meet new situations.

II.

In this case, the raw facts are mostly, if not entirely, undisputed. Although the inferences to be drawn may be more debatable, it is very hard to see that Borland has shown any interest in the Lotus menu except as a fall-back option for those users already committed to it by prior experience or in order to run their own macros using 1-2-3 commands. At least for the amateur, accessing the Lotus menu in the Borland Quattro or Quattro Pro program takes some effort.

Put differently, it is unlikely that users who value the Lotus menu for its own sake — independent of any investment they have made themselves in learning Lotus' commands or creating macros dependent upon them — would choose the Borland program in order to secure access to the Lotus menu. Borland's success is due primarily to other features. Its rationale for deploying the Lotus menu bears the ring of truth.

Now, any use of the Lotus menu by Borland is a commercial use and deprives Lotus of a portion of its "reward," in the sense that an infringement claim if allowed would increase Lotus' profits. But this is circular reasoning: broadly speaking, every limitation on copyright or privileged use diminishes the reward of the original creator. Yet not every writing is copyrightable or every use an infringement. The provision of reward is [821] one concern of copyright law, but it is not the only one. If it were, copyrights would be perpetual and there would be no exceptions.

The present case is an unattractive one for copyright protection of the menu. The menu commands (e.g., "print," "quit") are largely for standard procedures that Lotus did not invent and are common words that Lotus cannot monopolize. What is left is the particular combination and sub-grouping of commands in a pattern devised by Lotus. This arrangement may have a more appealing logic and ease of use than some other configurations; but there is a certain arbitrariness to many of the choices.

If Lotus is granted a monopoly on this pattern, users who have learned the command structure of Lotus 1-2-3 or devised their own macros are locked into Lotus, just as a typist who has learned the QWERTY keyboard would be the captive of anyone who had a monopoly on the production of such a keyboard. Apparently, for a period Lotus 1-2-3 has had such sway in the market that it has represented the de facto standard for electronic spreadsheet commands. So long as Lotus is the superior spreadsheet — either in quality or in price — there may be nothing wrong with this advantage.

But if a better spreadsheet comes along, it is hard to see why customers who have learned the Lotus menu and devised macros for it should remain captives of Lotus because of an investment in learning made by the users and not by Lotus. Lotus has already reaped a substantial reward for being first; assuming that the Borland program is now better, good reasons exist for freeing it to attract old Lotus customers: to enable the old customers to take advantage of a new advance, and to reward Borland in turn for making a better product. If Borland has not made a better product, then customers will remain with Lotus anyway.

Thus, for me the question is not whether Borland should prevail but on what basis. Various avenues might be traveled, but the main choices are between holding that the menu is not protectable by copyright and devising a new doctrine that Borland's use is privileged. No solution is perfect and no intermediate appellate court can make the final choice.

To call the menu a "method of operation" is, in the common use of those words, a defensible position. After all, the purpose of the menu is not to be admired as a work of literary or pictorial art. It is to transmit directions from the user to the computer, i.e., to operate the computer. The menu is also a "method" in the dictionary sense because it is a "planned way of doing something," an "order or system," and (aptly here) an "orderly or systematic arrangement, sequence or the like." Random House Webster's College Dictionary 853 (1991).

A different approach would be to say that Borland's use is privileged because, in the context already described, it is not seeking to appropriate the advances made by Lotus' menu; rather, having provided an arguably more attractive menu of its own, Borland is merely trying to give former Lotus users an option to exploit their own prior investment in learning or in macros. The difference is that such a privileged use approach would not automatically protect Borland if it had simply copied the Lotus menu (using different codes), contributed nothing of its own, and resold Lotus under the Borland label.

The closest analogue in conventional copyright is the fair use doctrine. E.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). Although invoked by Borland, it has largely been brushed aside in this case because the Supreme Court has said that it is "presumptively" unavailable where the use is a "commercial" one. See id. at 562, 105 S.Ct. at 2231-32. But see Campbell v. Acuff-Rose Music, Inc., ___ U.S. ___, ___, 114 S.Ct. 1164, 1174, 127 L.Ed.2d 500 (1994). In my view, this is something less than a definitive answer; "presumptively" does not mean "always" and, in any event, the doctrine of fair use was created by the courts and can be adapted to new purposes.

But a privileged use doctrine would certainly involve problems of its own. It might more closely tailor the limits on copyright protection to the reasons for limiting that protection; but it would entail a host of administrative problems that would cause [822] cost and delay, and would also reduce the ability of the industry to predict outcomes. Indeed, to the extent that Lotus' menu is an important standard in the industry, it might be argued that any use ought to be deemed privileged.

In sum, the majority's result persuades me and its formulation is as good, if not better, than any other that occurs to me now as within the reach of courts. Some solutions (e.g., a very short copyright period for menus) are not options at all for courts but might be for Congress. In all events, the choices are important ones of policy, not linguistics, and they should be made with the underlying considerations in view.

[1] Judge Keeton presided over both the Paperback litigation and this case.

[2] Lotus 1-2-3 utilizes a two-line menu; the top line lists the commands from which the user may choose, and the bottom line displays what Lotus calls its "long prompts." The long prompts explain, as a sort of "help text," what the highlighted menu command will do if entered. For example, the long prompt for the "Worksheet" command displays the submenu that the "Worksheet" command calls up; it reads "Global, Insert, Delete, Column, Erase, Titles, Window, Status, Page." The long prompt for the "Copy" command explains what function the "Copy" command will perform: "Copy a cell or range of cells." The long prompt for the "Quit" command reads, "End 1-2-3 session (Have you saved your work?)."

Prior to trial, the parties agreed to exclude the copying of the long prompts from the case; Lotus agreed not to contend that Borland had copied the long prompts, Borland agreed not to argue that it had not copied the long prompts, and both sides agreed not to argue that the issue of whether Borland had copied the long prompts was material to any other issue in the case. See Borland III, 831 F.Supp. at 208.

[3] Because Borland's programs could no longer display the Lotus menu command hierarchy to users, the Key Reader did not allow debugging or modification of macros, nor did it permit the execution of most interactive macros.

[4] See Borland IV, 831 F.Supp. at 226-27, for a more detailed explanation of macros and the Key Reader.

[5] Computer programs receive copyright protection as "literary works." See 17 U.S.C. § 102(a)(1) (granting protection to "literary works") and 17 U.S.C. § 101 (defining "literary works" as "works ... expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, phonorecords, film, tapes, disks, or cards, in which they are embodied" (emphasis added)); see also H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667 ("The term `literary works' ... includes computer data bases, and computer programs to the extent that they incorporate authorship in the programmer's expression of original ideas, as distinguished from the ideas themselves.").

[6] Selden's system of double-entry bookkeeping is the now almost-universal T-accounts system.

[7] We consider the Altai test because both parties and many of the amici focus on it so heavily. Borland, in particular, is highly critical of the district court for not employing the Altai test. Borland does not, however, indicate how using that test would have been dispositive in Borland's favor. Interestingly, Borland appears to contract its own reasoning at times by criticizing the applicability of the Altai test.

[8] We recognize that Altai never states that every work contains a copyrightable "nugget" of protectable expression. Nonetheless, the implication is that for literal copying, "it is not necessary to determine the level of abstraction at which similarity ceases to consist of an `expression of ideas,' because literal similarity by definition is always a similarity as to the expression of ideas." 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A](2) (1993).

[9] As the Lotus long prompts are not before us on appeal, we take no position on their copyrightability, although we do note that a strong argument could be made that the brief explanations they provide "merge" with the underlying idea of explaining such functions. See Morrissey v. Procter & Gamble Co., 379 F.2d 675, 678-79 (1st Cir.1967) (when the possible ways to express an idea are limited, the expression "merges" with the idea and is therefore uncopyrightable; when merger occurs, identical copying is permitted).

[10] As they are not before us on appeal, we take no position on whether the Lotus 1-2-3 screen displays constitute original expression capable of being copyrighted.

[11] Because the Lotus 1-2-3 code is not before us on appeal, we take no position on whether it is copyrightable. We note, however, that original computer codes generally are protected by copyright. See, e.g., Altai, 982 F.2d at 702 ("It is now well settled that the literal elements of computer programs, i.e., their source and object codes, are the subject of copyright protection.") (citing cases).

[12] We think that the Altai test would contemplate this being the initial inquiry.

[13] When there are a limited number of ways to express an idea, however, the expression "merges" with the idea and becomes uncopyrightable. Morrissey, 379 F.2d at 678-79.

[14] The Ninth Circuit has also indicated in dicta that "menus, and keystrokes" may be copyrightable. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1477 (9th Cir.), cert. denied, BB Asset Management, Inc. v. Symantec Corp., ___ U.S. ___, 113 S.Ct. 198, 121 L.Ed.2d 141 (1992). In that case, however, the plaintiff did not show that the defendant had copied the plaintiff's menus or keystrokes, so the court was not directly faced with whether the menus or keystrokes constituted an unprotectable method of operation. Id.